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The Ninth Circuit affirmed the district court's judgment in favor of Pinkette, which sells LUSH-branded women's fashions, in a trademark infringement action brought by CWL, which sells LUSH-branded cosmetics and related goods. The panel distinguished between Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S. Ct. 1962 (2014), and SCA Hygiene Products v. First Quality Baby Products, LLC, 137 S. Ct. 954 (2017), holding that the principle at work in these cases—a concern over laches overriding a statute of limitations—did not apply here, where the Lanham Act has no statute of limitations and expressly makes laches a defense to cancellation. In this case, the district court applied the correct standard when it applied the factors set forth in E-Sys., Inc. v. Monitek, Inc., 720 F.2d 604 (9th Cir. 1983), to CWL's claim for injunctive relief. After analyzing the E-Systems factors, the panel held that they validate the strong presumption in favor of laches created by CWL's delaying past the expiration of the most analogous state statute of limitations. Therefore, the district court did not abuse its discretion in applying laches to bar CWL's cancellation and infringement claims. The panel held that CWL's remaining arguments were without merit. View "Pinkette Cothing, Inc. v. Cosmetic Warriors Limited" on Justia Law

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The district court erred in granting Defendant’s motion to dismiss, based on an arbitration provision, Plaintiff’s claims that Defendant violated various articles of the Puerto Rico Civil Code and federal copyright and trademark laws. This suit stemmed from a songwriting contest held in Puerto Rico in 2014. As a contestant, Plaintiff agreed to the terms of the contest’s rules, which included an arbitration provision. The provision compelled the submission to arbitration of those claims that “aris[e] in connection with, touch upon or relat[e] to” those rules. The district court granted Defendant’s motion to dismiss pursuant to Fed. R. Civ. P. 12(b)(6) based on that arbitration provision. The First Circuit reversed, holding that the arbitration provision did not reveal that the parties to it intended for Defendant, a third party, to benefit from it with the requisite clarity. View "Cortes-Ramos v. Martin-Morales" on Justia Law

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Royal Crown (RC) and The Coca-Cola Company (TCCC) compete in the beverage market. Both companies and others distribute beverages that use ZERO as an element of their marks. When RC sought trademark protection for DIET RITE PURE ZERO and PURE ZERO, it disclaimed the term ZERO apart from the marks as a whole. TCCC has used ZERO as an element in its marks for at least 12 different beverage products sold in the U.S. The Patent and Trademark Office requested that TCCC disclaim the term “zero” because the term merely “describes a feature of the applicant’s goods, namely, calorie or carbohydrate content of the goods.” TCCC responded that the term had acquired distinctiveness under the Lanham Act, 15 U.S.C. 1052(f). The PTO accepted TCCC’s Section 2(f) submissions and approved the marks for publication without requiring disclaimers. The Board concluded that RC failed to demonstrate that ZERO is generic for the genus of goods identified in TCC's applications; that survey evidence indicated that TCCC’s ZERO marks had acquired distinctiveness; and that TCCC’s use of ZERO in connection with soft drinks was substantially exclusive, given the “magnitude of TCCC’s use.” The Board dismissed RC’s oppositions. The Federal Circuit vacated. The Board erred in its legal framing of the question of the claimed genericness of TCCC’s marks, and failed to determine whether, if not generic, the marks were at least highly descriptive. View "Royal Crown Co., Inc.. v. The Coca-Cola Co." on Justia Law

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More than 95% of the world’s bourbon comes from Kentucky. One distiller, Colonel Edmund Haynes Taylor, Jr., was called “the most remarkable man to enter the whiskey industry during the post-Civil War years.” Taylor built the Old Taylor Distillery in 1887 in Woodford County, to resemble a medieval limestone castle. The distillery fell into financial ruin and changed hands several times after the Colonel’s death. Production ceased in 1972. In 2014, Peristyle purchased the Old Taylor distillery, planning to renovate and resume bourbon production there. Peristyle renamed the property “Castle & Key” and intends to do business under that name, including marketing its bourbons and whiskeys. During the renovation period, the company regularly referred to its location at “the Former Old Taylor Distillery” or simply “Old Taylor.” Sazerac, which owns the trademark rights to “Old Taylor” and “Colonel E.H. Taylor” and produces bourbons under both names, sued Peristyle, alleging trademark infringement, unfair competition, and false advertising under the Lanham Act as well as common law trademark infringement, unfair competition, and passing-off violations. The Sixth Circuit affirmed summary judgment in favor of Peristyle, which used the Old Taylor name descriptively and in good faith, qualifying for shelter under the Lanham Act’s fair use defense, 15 U.S.C. 1115(b)(4). View "Sazerac Brands, LLC v. Peristyle, LLC" on Justia Law

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The Ninth Circuit reversed the district court's grant of summary judgment for McKeon in a trademark infringement action alleging that McKeon's green ear plugs infringed Moldex's green earplugs. The panel held that the existence or nonexistence of alternative designs was probative of functionality or nonfunctionality, and thus evidence of alternative colors must be considered in deciding the functionality of Moldex's mark. The panel held that there was a material dispute of material facts as to whether Moldex's bright green color earplugs was functional. Therefore, the panel remanded for the district court to consider McKeon's arguments both that Moldex's green color lacked secondary meaning and that there was no likelihood of confusion, and then if necessary go to trial. View "Moldex-Metric, Inc. v. McKeon Products, Inc." on Justia Law

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Specific elements from within a television show—as opposed to the title of the show itself—can receive trademark protection. The Fifth Circuit affirmed the district court's grant of summary judgment to Viacom on its trademark infringement and unfair competition claims related to the common law trademark of The Krusty Krab. The Krusty Krab is a fictional restaurant in the "SpongeBob SquarePants" animated television series, and IJR took steps to open seafood restaurants using the same name. The court held that The Krusty Krab's key role in "SpongeBob SquarePants" coupled with the consistent use of the mark on licensed products established ownership of the mark because of its immediate recognition as an identifier of the source for goods and services; Viacom's mark has acquired distinctiveness through secondary meaning as a matter of law; and Viacom met its burden by proving that IJR's use of The Krusty Krab created a likelihood of confusion as to source, affiliation, or sponsorship. View "Viacom International, Inc. v. IJR Capital Investments, LLC" on Justia Law

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Skechers challenged the district court's issuance of a preliminary injunction prohibiting it from selling shoes that allegedly infringe and dilute adidas America, Inc.’s Stan Smith trade dress and Three-Stripe trademark. The panel affirmed in part, holding that the district court did not abuse its discretion in issuing the preliminary injunction as to adidas's claim that Skechers's Onix shoe infringes on adidas's unregistered trade dress of its Stan Smith shoe. However, the panel reversed in part, holding that the district court erred in issuing a preliminary injunction as to adidas's claim that Skechers's Cross Court shoe infringes and dilutes its Three-Stripe mark. View "adidas America, Inc. v. Skechers USA, Inc." on Justia Law

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The Eighth Circuit considered this trademark dispute on remand. In the previous appeal, the court asked the district court to address state-law questions pertaining to the availability of attorney's fees and the ownership of a contested trademark. The district court entered orders on those questions and this appeal followed. The court held that the district court erred in determining plaintiff was entitled to attorney's fees under Iowa common law. In this case, defendant's misrepresentation to the patent office was improper, but its conduct did not rise to the level of being tyrannical, cruel, or harsh under Iowa common law. Finally, the briefs and oral arguments lead the court to conclude that defendant owned a license to use the PAKSTER mark in connection with injection-molded chicken coops, injection-molded egg baskets, and injection-molded egg flats. Accordingly, the court reversed and remanded with instructions. View "East Iowa Plastics, Inc. v. PI, Inc." on Justia Law

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The Eighth Circuit affirmed the district court's grant of summary judgment to PWD on a trademark infringement claim filed by ZW, another company that sells plastic bags for picking up and disposing of dog waste. The court held that ZW failed to produce any evidence from which a jury could find that consumers were likely to confuse ZW's ONEPUL wicket bags with PWD's BagSpot "one-pull" wicket bags. In regard to PWD's counterclaim that ZW's marks were invalid, the court held that there was a fact dispute as to whether the ONEPUL mark was generic or descriptive. Therefore, the court reversed as to the validity claim and remanded for further proceedings. View "ZW USA, Inc. v. PWD Systems, LLC" on Justia Law

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This trademark infringement action concerned whether Walmart's use of the mark "Backyard Grill" on its grills, and grilling supplies infringed on Variety's use of its registered mark, "The Backyard," and unregistered marks, "Backyard" and "Backyard BBQ." Variety appealed the district court's calculation of disgorged profits and denial of its request for a jury trial, and Walmart cross-appealed the district court's grant of summary judgment for Variety and award of profit disgorgement, costs, and attorneys' fees. The court held that the district court improperly granted summary judgment in Variety's favor because there were genuine disputes of material fact as to whether a likelihood of confusion exists. The court vacated the district court's order granting Variety's motion for partial summary judgment and affirmed the order denying Walmart's motion for summary judgment; vacated every order entered subsequent to the summary judgment rulings; vacated the award of profit disgorgement, costs, and attorneys' fees; and dismissed the parties' respective cross-appeals pertaining to disgorgement, denial of jury trial, and award of costs and fees. View "Variety Stores, Inc. v. Wal-Mart Stores, Inc." on Justia Law