Justia Trademark Opinion Summaries

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Plaintiff appealed the district court's grant of summary judgment in favor of defendant on the grounds that plaintiff's trade dress registrations, which cover the shape and color scheme of its chicken feeder products, are functional and thus only eligible for patent law's protection of utilitarian inventions. The Fourth Circuit affirmed the district court's grant of summary judgment to defendant on plaintiff's claims of trade dress infringement under the Lanham Act and North Carolina common law. The court held that the total feeder profile is functional and ineligible for trade dress protection. The court explained that, because the color trade dress was placed on the supplemental trademark register, rather than the principal register, it is presumed functional, and plaintiff bears the burden of proving non-functionality. In this case, the court held that plaintiff cannot do so because its own utility patents and witness testimony establish that the red pan and gray spokes serve the functional purpose of attracting chickens to feed. Finally, the court held that the district court's order recommending a trial sanction for spoliation of evidence was moot. View "CTB, Inc. v. Hog Slat, Inc." on Justia Law

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The Eighth Circuit affirmed the district court's order granting SnugglyCat's motion to voluntarily dismiss this Lanham Act action without prejudice pursuant to Federal Rule of Civil Procedure 41(a)(2). The court rejected appellants' contention that the district court failed to consider their argument regarding legal prejudice; the court saw no need to adopt a per se rule that would bar dismissal without prejudice in all cases in which a plaintiff has sued under a fee-shifting statute and found that the district court did not commit an error of law; and the district court did not commit a clear error of judgment where it considered all the relevant factors, including SnugglyCat's purported reason for seeking dismissal of the action without prejudice—its inability as a small company to sustain the cost of continuing suit—and expressly found the motion to have been made in good faith. View "SnugglyCat, Inc. v. Opfer Communications, Inc." on Justia Law

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ICCS imported 56,616 individual butane gas canisters into the U.S. that displayed a “PREMIUM” brand label and a registered certification mark owned by Underwriters Laboratories (UL). Customs determined that the canisters were “counterfeit” in that they made unauthorized use of the UL certification mark and issued a notice ordering ICCS to redeliver the imported canisters to Customs’ custody pursuant to 19 U.S.C. 1526(e). ICCS redelivered only 29,008 canisters. UL did not consent to retroactive certification. Customs assessed damages of $41,412.00. The Trade Court granted the government summary judgment. The Federal Circuit affirmed. The canisters displayed UL’s mark without UL’s approval. ICCS’s arguments as to physical similarities between the PREMIUM model and other merchandise that UL had previously certified fail because the Service Terms dictate that UL, not ICCS, determines whether any differences from the basic product are superficial. On the date of entry, Customs had no way of ascertaining whether the PREMIUM model was the same physical product as the basic product without UL having made that determination. The court rejected an argument that, in denying ICCS’s protest, Customs relied on UL’s lack of consent to the point of delegating its statutory duty to enforce the trademark laws to UL. View "ICCS USA Corp. v. United States" on Justia Law

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Royal Palm Properties filed suit against Pink Palm Properties for infringing its registered service mark on the phrase "Royal Palm Properties." Pink Palm Properties counterclaimed, challenging the validity of the mark. The Eleventh Circuit held that the district court erred by flipping the jury's verdict and by granting judgment as a matter of law on Pink Palm Properties' trademark-invalidation counterclaim. The court held that Pink Palm Properties failed to show that no reasonable jury could have found that it failed to prove grounds for cancelling Royal Palm Properties' mark. In this case, Pink Palm Properties' argument that the service mark lacked distinctiveness, and that the mark was confusingly similar to the "Royale Palms" marks, did not entitle it to judgment as a matter of law on its claim that the "Royal Palm Properties" mark was invalid. Accordingly, the court reversed the district court's judgment. View "Royal Palm Properties, LLC v. Pink Palm Properties, LLC" on Justia Law

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Curry, the founder of “Get Diesel Nutrition,” has paid for advertising for his products, including "Diesel Test," in national fitness magazines since 2002. In 2016, the defendants began selling a sports nutritional supplement, "Diesel Test Red Series." Like Curry’s product, the defendants’ product comes in red and white packaging with right-slanted all-caps typeface bearing the words “Diesel Test.” Curry alleges that he received messages indicating that customers were confused. The defendants concocted a fake ESPN webpage touting their product and conducted all their marketing online. In about seven months, they received more than $1.6 million in gross sales. At least 767 sales were to consumers in Illinois. After Curry demanded that the defendants cease and desist, both parties filed trademark applications for "Diesel Test." The Patent Office suspended both applications. Curry filed suit, alleging violation of the Illinois Consumer Fraud and Deceptive Practices Act, violations of the Lanham Act, 15 U.S.C. 1125, violation of the Anti-Cybersquatting Consumer Protection Act, filing a fraudulent trademark application, and violation of common law trademark protections. The district court dismissed for lack of personal jurisdiction. The Seventh Circuit reversed. Revolution’s activity can be characterized as purposefully directed at Illinois, the forum state, and related to Curry's claims. Physical presence is not necessary for a defendant to have sufficient minimum contacts with a forum state. Illinois has a strong interest in providing a forum for its residents to seek redress for harms suffered within the state by an out-of-state actor. View "Curry v. Revolution Laboratories, LLC" on Justia Law

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VVV appealed the district court's dismiss of its trademark claims based on three marks and the denial of leave to amend its complaint. The Ninth Circuit assumed, without deciding, that the district court correctly applied the elements of claim preclusion to this case, but found that an exception to claim preclusion applied. The panel explained that an interparty proceeding before the TTAB is a limited proceeding involving registration of a trademark, and the TTAB has no authority to determine the right to use, or the broader questions of infringement, unfair competition, damages or injunctive relief. In this case, TTAB had no power to decide VVV's claims of infringement, dilution, and unfair competition or to grant either injunctive relief or damages. Therefore, the panel held that it would be unfair to preclude VVV from litigating these claims and seeking relief when barriers existed that prevented it from doing so in the first action. The panel reversed and remanded for the district court to consider, in the first instance, whether issue preclusion applied. The panel also reversed the denial of leave to amend the complaint, and affirmed the dismissal of plaintiff's claims as to the second and third marks. View "V.V.V. & Sons Edible Oils v. Meenakshi Overseas" on Justia Law

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Two non-competing Midwestern companies operated by brothers used marks containing the family name, Fabick. The owner of the registered mark (FI), a small manufacturer of sealants, sued JFTCO, a larger distributor of Caterpillar equipment, for trademark infringement. A jury found that JFTCO had violated the Lanham Act but had not committed common law infringement. The district court entered limited injunctive relief requiring that JFTCO issue, for five years, disclaimers clarifying that it is not associated with FI. The Seventh Circuit affirmed, rejecting FI’s claim that it was entitled to a broad permanent injunction and should have been allowed to recover JFTCO’s profits, lacking evidence that the defendants were unjustly enriched by consumers assuming that Fabick’s sealants and coatings business is the same or related to JFTCO’s business. The court also rejected JFTCO’s challenged to a jury instruction: “[D]efendant JFTCO used the FABICK mark in a manner that is likely to cause confusion as to the source or origin of plaintiff’s product or that plaintiff has somehow become connected to JFTCO.” When read in context, the language regarding whether “plaintiff has somehow become connected to JFTCO” clearly refers to the parties’ products and/or services, and is not impermissibly vague. View "Fabick, Inc. v. JFTCO, Inc." on Justia Law

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Plaintiff appealed the district court's rulings in two consolidated actions alleging that various Disney corporate entities infringed on plaintiff's "Lots of Hugs" trademark by using the "Lots-O'-Huggin' Bear" (aka "Lotso") in the Toy Story 3 movie and in the sale of merchandise. The Fifth Circuit held that plaintiff may obtain review of the adversary interlocutory rulings in its current appeal from the adverse final judgment in case No. 2:14-CV-00070. The court affirmed the district court's conclusion that plaintiff lacked personal jurisdiction over the IP entities, because plaintiff's arguments were based on two novel theories that were without merit. The court set aside the district court's order pertaining to the third amended complaint and remanded, holding that the district court abused its discretion, by sua sponte and without hearing, vacating its order granting plaintiff leave to file the third amended complaint. Finally, the court affirmed the district court's decision striking the fourth amended complaint, holding that the district court did not abuse its discretion in striking the complaint. View "Diece-Lisa Industries, Inc. v. Disney Enterprises, Inc." on Justia Law

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LHO's Chicago hotel underwent a branding change in February 2014 when the establishment became “Hotel Chicago,” a signature Marriott venue. Around May 2016, Perillo and his associated entities opened their own “Hotel Chicago” three miles from LHO’s site. LHO sued for trademark infringement and unfair competition under the Lanham Act, 15 U.S.C. 1125(a), and for trademark infringement and deceptive trade practices under Illinois law. After more than a year, LHO moved to voluntarily dismiss its claims, with prejudice. Defendants made a post‐judgment request for attorney fees, 15 U.S.C. 1117(a), for the prevailing party in “exceptional cases.” The parties identified two distinct standards for exceptionality: the Seventh Circuit’s standard, that a case is exceptional under section 1117(a) if the decision to bring the claim constitutes an “abuse of process” and the more relaxed totality‐of‐the‐circumstances approach under the Patent Act that the Supreme Court announced in Octane Fitness (2014). Other circuits have extended Octane to the Lanham Act. The district judge acknowledged Octane but adhered to the “abuse‐of‐process” standard and declined to award fees. The Seventh Circuit reversed and remanded, holding that Octane’s “exceptional case” standard controls. The court noted the legislative history, the Patent Act’s identical language, and the Supreme Court’s use of trademark law in Oc‐ tane View "LHO Chicago River, L.L.C. v. Perillo" on Justia Law

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Plaintiffs and counterclaim-defendants Mrs. Fields Famous Brands, LLC (Famous Brands) and Mrs. Fields Franchising, LLC (Fields Franchising) appealed a district court order granting a preliminary injunction in favor of defendant and counterclaim-plaintiff MFGPC Inc. (MFGPC). The sole member of Famous Brands is Mrs. Fields Original Cookies, Inc. (MFOC). MFOC entered into a Trademark License Agreement (License Agreement) with LHF, Inc. (LHF), an affiliate of MFGPC. In 2003, LHF assigned all rights under the License Agreement to MFGPC, and MFGPC agreed to be bound by and perform in accordance with the License Agreement. The License Agreement granted MFGPC a license to develop, manufacture, package, distribute and sell prepackaged popcorn products bearing the “Mrs. Fields” trademark through all areas of general retail distribution. A dispute arose after Fields Franchising allowed MFGPC to be late with a royalty payment because of a fire that destroyed some of MFGPC’s operations. The franchisor sought to terminate the licensing agreement and collect the royalties owed. Fields Franchising filed suit against MFGPC. In August 2018, the district court entered partial summary judgment in favor of MFGPC on its counterclaim for breach of a trademark license agreement that afforded MFGPC the exclusive use of the “Mrs. Fields” trademark on popcorn products. The district court’s summary judgment order left only the question of remedy to be decided at trial. MFGPC then moved for a preliminary injunction, arguing that there was a substantial likelihood that it would prevail at trial on the remedy of specific performance. After conducting a hearing, the district court granted MFGPC’s motion and ordered Fields Franchising to terminate any licenses it had entered into with other companies for the use of the Mrs. Fields trademark on popcorn products, and to instead comply with the terms of the licensing agreement it had previously entered into with MFGPC. Famous Brands and Fields Franchising argued in this appeal that the district court erred in a number of respects in granting MFGPC’s motion for preliminary injunction. The Tenth Circuit agreed with appellants, and consequently reversed the district court’s grant of a preliminary injunction in favor of MFGPC. View "Mrs. Fields Famous Brands v. MFGPC" on Justia Law