Justia Trademark Opinion Summaries
LHO Chicago River, L.L.C. v. Perillo
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
Posted in: Intellectual Property, Legal Ethics, Trademark, US Court of Appeals for the Seventh Circuit
Mrs. Fields Famous Brands v. MFGPC
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
Posted in: Antitrust & Trade Regulation, Business Law, Contracts, Trademark, US Court of Appeals for the Tenth Circuit
4SEMO.COM, Inc. v. Southern Illinois Storm Shelters, Inc.
The dealer had the exclusive right to sell the manufacturer's below-ground storm shelters in Missouri and Arkansas. The dealer created a wordmark—“Life Saver Storm Shelters”— and a logo using that name, which it affixed to the shelters. In 2006, the manufacturer obtained the dealer’s permission to use these marks on shelters marketed in Illinois. The manufacturer violated the limited license by using the marks on products sold throughout the country. The manufacturer's suit for trademark infringement, claiming prior use and ownership of the wordmark, was rejected on summary judgment. The dealer counterclaimed for trademark infringement and false endorsement under the Lanham Act. The district judge found for the dealer on all claims, entered a cease-and-desist order, and awarded $17 million in disgorged profits as damages but denied vexatious-litigation sanctions under 28 U.S.C. 1927 and attorney’s fees under the Lanham Act. The Seventh Circuit affirmed in part, rejecting the manufacturer's argument that the logo violated a statute that makes it a crime to use the American Red Cross emblem. The conclusion that the manufacturer engaged in trademark infringement on a vast scale was supported by the evidence. The court granted a limited remanded; although the judge reasonably concluded that section 1927 sanctions were not warranted, his summary denial of Lanham Act fees cannot be squared with his conclusions on the merits concerning infringement. View "4SEMO.COM, Inc. v. Southern Illinois Storm Shelters, Inc." on Justia Law
Posted in: Intellectual Property, Legal Ethics, Trademark, US Court of Appeals for the Seventh Circuit
Evoqua Water Technologies, LLC v. M.W. Watermark, LLC
The parties manufacture and sell equipment that removes water from industrial waste. Gethin founded Watermark's predecessor, “J-Parts,” after leaving his position at JWI. JWI sued Gethin and J-Parts for false designation of origin, trademark dilution, trademark infringement, unfair competition, unjust enrichment, misappropriation of trade secrets, breach of fiduciary duties, breach of contract, and conversion. The parties settled. A stipulated final judgment permanently enjoined Watermark and Gethin and “their principals, agents, servants, employees, attorneys, successors and assigns” from using JWI’s trademarks and from “using, disclosing, or disseminating” JWI’s proprietary information. Evoqua eventually acquired JWI’s business and trade secrets, technical and business information and data, inventions, experience and expertise, other than software and patents, and JWI’s rights and obligations under its contracts, its trademarks, and its interest in litigation. Evoqua discontinued the J-MATE® product line. Watermark announced that it was releasing a sludge dryer product. Evoqua planned to reintroduce J-MATE® and expressed concerns that Watermark was violating the consent judgment and improperly using Evoqua’s trademarks. Evoqua sued, asserting copyright, trademark, and false-advertising claims and seeking to enforce the 2003 consent judgment. The district court held that the consent judgment was not assignable, so Evoqua lacked standing to enforce it and that the sales agreement unambiguously did not transfer copyrights. A jury rejected Evoqua’s false-advertising claim but found Watermark liable for trademark infringement. The Sixth Circuit vacated in part. The consent judgment is assignable and the sales agreement is ambiguous regarding copyrights. View "Evoqua Water Technologies, LLC v. M.W. Watermark, LLC" on Justia Law
PlayNation Play Systems, Inc. v. Velex Corp.
The Eleventh Circuit held that the district court did not abuse its considerable discretion in holding Velex and its officers in contempt or in awarding PlayNation's attorneys' fees and costs. In this case, the court had previously upheld the entry of a permanent injunction preventing Velex from infringing on PlayNation's mark. PlayNation later discovered that Velex continued to sell and distribute goods using the infringing mark. Accordingly, the court affirmed the district court's judgment. View "PlayNation Play Systems, Inc. v. Velex Corp." on Justia Law
C5 Medical Werks v. Ceramtec GMBH
Plaintiff-Appellee C5 Medical Werks sued Defendant-Appellant CeramTec, a German company that produces ceramics and ceramic components for medical prostheses, in Colorado for cancellation of CeramTec’s trademarks and a declaratory judgment of non-infringement. CeramTec moved to dismiss for lack of personal jurisdiction. The district court denied CeramTec’s motion and, after a bench trial, found in favor of C5. CeramTec appealed both the district court’s finding of personal jurisdiction and its determination on the merits. After review, the Tenth Circuit concluded the district court did not have personal jurisdiction over CeramTec: CeramTec’s attendance at various tradeshows was fortuitous and, as such, was insufficient to show purposeful availment of the forum state, Colorado. Further, to the extent CeramTec engaged in enforcement activity, it did so outside of Colorado. Accordingly, the Court reversed the district court’s denial of CeramTec’s motion to dismiss for lack of personal jurisdiction and remand with instructions that the case be dismissed. View "C5 Medical Werks v. Ceramtec GMBH" on Justia Law
Posted in: Antitrust & Trade Regulation, Civil Procedure, Trademark, US Court of Appeals for the Tenth Circuit
Affliction Holdings v. Utah Vap Or Smoke
Affliction Holdings, LLC (“Affliction”) sued Utah Vap or Smoke, LLC (“Utah Vap”) alleging trademark infringement. The district court granted Utah Vap’s motion for summary judgment, holding there was no likelihood of confusion between the parties’ marks. The Tenth Circuit concluded after review of the marks that Utah Vap did not meet its burden of showing that "no reasonable juror could find [a] likelihood of confusion." Because a genuine issue of material fact exists as to the likelihood of initial interest and post-sale confusion between the marks, the Court reversed the district court’s grant of summary judgment. View "Affliction Holdings v. Utah Vap Or Smoke" on Justia Law
Posted in: Antitrust & Trade Regulation, Business Law, Trademark, US Court of Appeals for the Tenth Circuit
4 Pillar Dynasty LLC v. New York & Co., Inc.
This appeal stemmed from the parties' dispute over plaintiffs' "Velocity" trademark for clothing and activewear. The Second Circuit held that the district court did not err by determining that defendants' infringement was willful and by awarding plaintiffs the gross profits derived by defendants' infringement; the district court did not err by amending the judgment to remove the trebled portion of the profits award; and the court clarified that, under its precedent in George Basch Co. v. Blue Coral, Inc., 968 F.2d 1532 (2d Cir. 1992), a plaintiff prosecuting a trademark infringement claim need not in every case demonstrate actual consumer confusion to be entitled to an award of an infringer's profits. However, the court vacated the district court's award of attorney's fees and prejudgment interest to plaintiffs and its determination that this was an "exceptional" case under the Lanham Act. While this appeal was pending, the court held that the standard for determining an "exceptional" case under the Patent Act applies also to cases brought under the Lanham Act. Therefore, the court remanded for the district court to apply Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545 (2014). View "4 Pillar Dynasty LLC v. New York & Co., Inc." on Justia Law
Luxottica Group v. Airport Mini Mall, LLC
Plaintiffs, luxury eyewear manufacturers holding registered trademarks, filed a contributory trademark infringement action under the Lanham Act against defendants, owners of a discount mall whose subtenants were selling counterfeit eyewear. The Eleventh Circuit affirmed the jury's verdict in favor of plaintiffs, holding that the district court correctly determined that the evidence was sufficient—even under the legal standard the defendants urge the court to adopt—to support the jury's verdict finding defendants liable for contributory trademark infringement; committed no reversible error in instructing the jury; correctly determined that the evidence was sufficient to support the jury's verdict on each defendant's individual liability; and did not abuse its discretion in the challenged evidentiary rulings. View "Luxottica Group v. Airport Mini Mall, LLC" on Justia Law
SportFuel, Inc. v. PepsiCo, Inc.
SportFuel registered its first “SportFuel” trademark for “food nutrition consultation, nutrition counseling, and providing information about dietary supplements and nutrition,” which became “incontestable” in 2013 (15 U.S.C. 1065). SportFuel later registered the trademark for “goods and services related to dietary supplements and sports drinks enhanced with vitamins.” Gatorade, created in 1965, is more widely known and is the official sports drink of the NBA, PGA, MLB, MLS, and other organizations. In addition to its traditional sports drinks, Gatorade now customizes its sports drinks by selling formulas that are tailored to the nutritional needs of individual professional athletes and sells other sports nutrition products. It began to publicly describe its products as sports fuels in 2013. In 2016 it registered the trademark “Gatorade The Sports Fuel Company.” Gatorade disclaimed the exclusive use of “The Sports Fuel Company” after being advised that the phrase was merely descriptive of its products. SportFuel sued for trademark infringement, unfair competition, and false designation of origin in violation of the Lanham Act. Gatorade sought cancellation of SportFuel’s trademark, moved to exclude SportFuel’s expert’s testimony and survey evidence concerning the likelihood of consumer confusion from Gatorade’s use of the slogan. The Sixth Circuit affirmed summary judgment for Gatorade, finding that SportFuel failed to produce evidence that demonstrated a factual dispute on any of the three elements of Gatorade’s fair use defense. Gatorade descriptively used the term “Sports Fuel” in its slogan fairly and in good faith. View "SportFuel, Inc. v. PepsiCo, Inc." on Justia Law