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SMRI filed suit alleging that defendants, through their participation in the selling of Rushmore's unlicensed motorcycle rally-related products, had violated several provisions of the Lanham Act and related South Dakota statutes. The Eighth Circuit held that the district court did not err in declining to apply licensee estoppel against defendants; the trial record did not support a finding that SMRI owned the rally or its intellectual property, that SMRI and the Chamber before it have been the substantially exclusive users of the word "Sturgis" in relation to either the rally or rally-related goods and services, or that relevant consumers associate the word "Sturgis" with a single source of goods and services in any context; and thus the court reversed the jury's finding that defendants diluted the "Sturgis" mark and vacated the jury's finding that defendants engaged in cybersquatting. The court also held that defendants should have been granted judgment as a matter of law on the infringement claims relating to SMRI's unregistered marks, "Sturgis Motorcycle Rally" and "Sturgis Rally & Races," because the jury was not presented with sufficient evidence to find that the marks had acquired secondary meaning. Finally, the evidence at trial supported the jury's finding that SMRI's mark "Sturgis Bike Week" was valid; there was sufficient evidence to show that SMRI's "Monahan Composite Mark" was widely used in connection with the rally and that defendants' infringement of the mark was willful and intentional; the differences between the shot glass's design and the Monahan mark were so obvious that the jury did not have any basis in the record for its finding of a counterfeit; SMRI's claims for deceptive practices, false advertising and unfair competition were not time-barred; the district court did not err in granting judgment as a matter of law to JRE; the court vacated the district court's order granting defendants the defenses of laches and acquiescence; and the court reversed and remanded the permanent injunction. View "Sturgis Motorcycle Rally, Inc. v. Rushmore Photo & Gifts, Inc." on Justia Law

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The 753 trademark, issued to Converse in 2013, describes the trade-dress configuration of three design elements on the midsole of Converse’s All Star shoes. Converse filed a complaint with the International Trade Commission (ITC), alleging violations of 19 U.S.C. 337 by various companies in the importation into the U.S., the sale for importation, and the sale within the U.S. after importation of shoes that infringe its trademark. The ITC found the registered mark invalid and that Converse could not establish the existence of common-law trademark rights, but nonetheless stated that various accused products would have infringed Converse’s mark if valid. The Federal Circuit vacated. The ITC erred in failing to distinguish between alleged infringers who began infringing before Converse obtained its trademark registration and those who began afterward. With respect to the pre-registration period, Converse, as the party asserting trade-dress protection, must establish that its mark had acquired secondary meaning before the first infringing use by each alleged infringer. In addition, the ITC applied the wrong legal standard in its determination of secondary meaning. On remand, the ITC should reassess the accused products to determine whether they are substantially similar to the mark in the infringement analysis. View "Converse, Inc. v. International Trade Commission" on Justia Law

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Real Foods sought registration of two marks: “CORN THINS,” for “crispbread slices predominantly of corn, namely popped corn cakes”; and “RICE THINS,” for “crispbread slices primarily made of rice, namely rice cakes.” Frito-Lay opposed the registrations, arguing that the proposed marks should be refused as either generic or descriptive without having acquired distinctiveness. The U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board refused registration of the applied-for marks, finding the marks “are merely descriptive and have not acquired distinctiveness,” dismissing Frito-Lay’s “genericness claim. The Federal Circuit affirmed. Substantial evidence supports the finding that the proposed marks are highly descriptive. The terms “corn” and “rice,” both of which are grains, describe the primary ingredient in Real Foods’ respective goods; the term thins describes physical characteristics of the corn and rice cakes. Viewing the marks as composites does not create a different impression. Real Foods “has not demonstrated that its applied-for marks have acquired distinctiveness. Real Foods did not demonstrate that its applied-for marks have acquired distinctiveness. The court remanded in part, finding that the Board erred in its analysis of genericness. View "Real Foods Pty Ltd. v. Frito-Lay North America, Inc." on Justia Law

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The First Circuit affirmed the decision of the district court that the exercise of specific personal jurisdiction against a German corporation did not offend the Fifth Amendment’s Due Process Clause, holding that on the facts of this case the exercise of jurisdiction would not violate due process. Plaintiff, a Maine corporation, sued Defendant, a German corporation, in federal district court in Maine for trademark infringement. As a basis for personal jurisdiction over Defendant, Plaintiff said that Defendant’s nationwide contacts with the United States supported specific jurisdiction under Fed. R. Civ. P. 4(k)(2). On prima facie review, the district court concluded that it could constitutionally exercise specific personal jurisdiction over Defendant under Rule 4(k)(2). The First Circuit affirmed, holding that Plaintiff met all three requirements to establish personal jurisdiction. View "Plixer International, Inc. v. Scrutinizer GMBH" on Justia Law

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DACo, a sports specialty shop, sells souvenirs and apparel associated with Detroit professional sports teams. Since at least 2004, DACo has used the DETROIT ATHLETIC CO. mark in connection with its retail services. In 2015, DACo sought to register the standard character mark DETROIT ATHLETIC CO. on the Principal Register for “[o]n-line retail consignment stores featuring sports team related clothing and apparel; [r]etail apparel stores; [r]etail shops featuring sports team related clothing and apparel; [r]etail sports team related clothing and apparel stores.” In response to a non-final refusal, DACo disclaimed ATHLETIC CO. and amended to seek registration on the Supplemental Register. The examining attorney refused registration under the Lanham Act, 15 U.S.C. 1052(d), finding that DETROIT ATHLETIC CO. is likely to be confused with DETROIT ATHLETIC CLUB, which is on the Principal Register for “[c]lothing, namely athletic uniforms, coats, golf shirts, gym suits, hats, jackets, sweatpants, sweatshirts, polo shirts, and T-shirts,” and is owned by the Detroit Athletic Club, a private social club organized in 1887. The Federal Circuit affirmed. The Board balanced the DuPont factors; substantial evidence supports its finding that, “because the marks are similar, the goods and services are related, and the channels of trade and consumers overlap, . . . confusion is likely between Applicant’s mark DETROIT ATHLETIC CO. and the mark DETROIT ATHLETIC CLUB.” View "In re: Detroit Athletic Co." on Justia Law

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Every winter for about 60 years, Tawas, Michigan has been the home of the “Perchville” festival, including a polar bear swim and a fishing contest. The Chamber of Commerce organizes the event and registered the name Perchville as a trademark. While dues-paying members of the Chamber may use the Perchville mark, non-members must pay a ($750) licensing fee to use it. A local company, AuSable, wants to make Perchville-branded tee-shirts, and sued the Chamber to invalidate its mark. The district court declined. The Sixth Circuit affirmed. “Perchville” is a distinctive term eligible for protection under the Lanham Act, which protects “any word, name, symbol, or device, or any combination thereof” that a person uses “to identify and distinguish his or her goods” in the marketplace, 15 U.S.C. 1127. “No matter how you slice it, the term ‘Perchville’ is inherently distinctive. The name does not refer to a place. It serves only ‘to identify a particular’ event, namely the annual winter festival in Tawas. … The word almost certainly counts as fanciful, and at the very least is sufficiently suggestive to qualify as an inherently distinctive trademark.” View "AuSable River Trading Post v. Dovetail Solutions, Inc." on Justia Law

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Diamond Hong petitioned for cancellation of Cai’s mark, “WU DANG TAI CHI GREEN TEA,” based on a likelihood of confusion with its registered TAI CHI mark. The U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB) found a likelihood of confusion, giving limited consideration to Cai’s briefing because it contravened provisions of the Trademark Trial and Appeal Board Manual of Procedure (TBMP). The Federal Circuit affirmed the cancellation of Cai’s mark under 15 U.S.C. 1052(d). The TBMP states that the TTAB is not required to permit “a party in the position of defendant” to file a reply brief. Diamond Hong initiated the cancellation proceedings by filing a petition;Cai was in the position of a defendant and was not entitled to file a reply brief. In its likelihood of confusion analysis, the TTAB considered the first three "DuPont factors," treating the rest as neutral because neither party submitted evidence related to them. Substantial evidence supports the TTAB’s findings with respect to each DuPont factor: the similarity of the nature of the goods, the similarity of established trade channels, and the similarity of the marks. View "Zheng Cai v. Diamond Hong, Inc." on Justia Law

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Alliance filed suit seeking to enjoin Coalition's use of its logo for federal trademark infringement under the Lanham Act. The district court granted summary judgment in favor of Alliance and enjoined Coalition from using both its name and logo in political advertisements. The Fifth Circuit affirmed and held that Coalition failed to properly raise threshold questions concerning the applicability of the Lanham Act to what it characterized as political non-commercial speech. Therefore, the court declined to reach those questions. The court also held that the district court did not err in deciding that the birds on the logos at issue were identical. The panel held that the evidence established without dispute that Alliance's logo was a valid composite mark and that the use of Coalition's logo infringed Alliance's composite mark as a matter of law. The panel did modify the court's injunction in one respect, finding that the injunction restrained Coalition from using its name as well as its logo. Therefore, that aspect of the injunction was overbroad. View "Alliance for Good Government v. Coalition for Better Government" on Justia Law

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The First Circuit affirmed the district court’s summary judgment findings, evidentiary rulings, and denials of various motions on claims brought by a member of the rock band BOSTON against a former BOSTON guitarist alleging trademark infringement and breach of contract and on the guitarist’s counterclaims alleging breach of contract and abuse of process. Donald Thomas Scholz sued Barry Goudreau alleging claims related to impermissible inferences that Goudreau had allegedly made regarding his former association with BOSTON. Goudreau counterclaimed. After the district court granted in part the parties’ respective motions for summary judgment, the remaining claims proceeded to trial. The jury found in favor of the respective defendants on the remaining claims. The parties cross-appealed. The First Circuit affirmed the district court and denied the appeals, holding that there was no error or abuse of discretion requiring reversal. View "Scholz v. Goudreau" on Justia Law

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This appeal stemmed from a dispute between a paleta company in Mexico (Prolacto) and a paleta company in northern California (PLM) over a phrase "La Michoacana" and an image of a girl in traditional dress holding a paleta ("Indian Girl"). At issue was whether Prolacto or PLM owned the contested phrase and image and which paleta company unfairly competed or otherwise infringed the other's trademark rights. The DC Circuit held that Prolacto's false-association claim failed because Prolacto failed to establish a right to the "La Michoacana" mark or injury from PLM's use sufficient to establish false association in violation of Section 43(a) of the Lanham Act. Therefore, the court affirmed the district court's judgment for PLM on that claim. The court also affirmed the district court's conclusion that Prolacto failed to establish that PLM's use of the Tocumbo Statements and other advertising materials constituted false advertising in violation of Prolacto's rights under section 43(a)(1)(B). Finally, the court affirmed the district court's conclusion that Prolacto infringed PLM's use of its registered marks. The court found no merit in Prolacto's remaining arguments. View "Paleteria La Michoacana, Inc. v. Productos Lacteos Tocumbo S.A" on Justia Law