Justia Trademark Opinion Summaries

Plaintiff and her companies, Tri-Serve and Capital Concepts, brought a claim for improper use of trade name and false designation of origin under the Lanham Act, 15 U.S.C. 1125, against Sheakley Entity Defendants on the basis of e-mails and mailings Angelia Strunk-Zwick, a manager for plaintiffs and a consultant for Defendant Sheakley HR Solutions, sent to Tri-Serve clients. The court concluded that plaintiffs have stated a claim for improper use of trade name and false designation of origin for which the Sheakley Entity Defendants may be held vicariously liable. Taken together, the representations at issue could not only sow confusion but also strongly imply affiliation - and affiliation not endorsed by plaintiffs. Because the Sheakley Entity Defendants may be held vicariously liable for Strunk-Zwick’s e-mail, plaintiffs have stated a claim for false advertising against Strunk-Zwick and the Sheakley Entity Defendants. Plaintiffs further allege that Strunk-Zwick and all Sheakley Defendants violated the Racketeer Influenced and Corrupt Organizations Act (RICO), 18 U.S.C. 1962, for failure to state a claim. The court concluded that plaintiffs’ RICO conspiracy claim fails because plaintiffs failed to allege a substantive RICO violation in the first place. Accordingly, the court reversed the district court's dismissal of plaintiffs' Lanham Act claims for failure to state a claim; affirmed the dismissal of plaintiffs' RICO claims; and remanded for further proceedings where the district court may, in its discretion, reexamine whether to reinstate any of plaintiffs' state law claims. View "Grubbs v. Sheakley Group, Inc." on Justia Law

Two companies, Derma Pen, LLC and 4EverYoung, entered a sales distribution agreement. Under the agreement, Derma Pen, LLC obtained the exclusive right to use the DermaPen trademark in the United States. 4EverYoung had a contractual right of first refusal, allowing purchase of Derma Pen, LLC’s U.S. trademark rights upon termination of the distribution agreement. Derma Pen, LLC terminated the agreement, and 4EverYoung wanted to exercise its contractual right of first refusal. The parties reached an impasse, and 4EverYoung started using the DermaPen trademark in the United States. Derma Pen, LLC sued and requested a preliminary injunction to prevent 4EverYoung’s use of the trademark. The district court declined the request, concluding that 4EverYoung was likely to prevail. This appeal to the Tenth Circuit followed, presenting the question: whether Derma Pen, LLC was likely to prevail on its claims of trademark infringement and unfair competition by proving a protectable interest in the trademark. The Court concluded Derma Pen, LLC was likely to prevail by satisfying this element. The district court was reversed and the case remanded for further proceedings. View "Derma Pen v. 4EverYoung Limited" on Justia Law

Plaintiff, Bishop Macram Max Gassis, was the former Chairman of the Board of Directors of Sudan Relief Fund, Inc., formerly known as Bishop Gassis Sudan Relief Fund, Inc. The Court of Chancery found that the Board’s decision to remove Plaintiff as director of the Fund neither violated the Fund’s bylaws nor constituted a breach of fiduciary duty. This opinion concerned remaining issues involving allegations that, after Plaintiff was removed as Chairman and member of the corporation, the corporation used, without authorization, Plaintiff’s trademarked property - Plaintiff’s name and likeness - to raise funds for its charitable purposes. Plaintiff, however, sued only individual directors of the Fund, not the corporation itself. The Court of Chancery granted Defendants’ motion to dismiss as to Plaintiff’s claims based on use of his trademarks, holding that there were no allegations in the complaint that could sustain a claim that Defendants personally misappropriated Plaintiff’s name and likeness to their own use or that Defendants took actions to cause the corporation to improperly exploit Plaintiff’s name and likeness. View "Gassis v. Corkery" on Justia Law

Med-Systems, Inc., sells its products under the federally registered trademark SinuCleanse and two similar marks. Water Pik, Inc., which traditionally sold oral irrigators and showerheads, registered the trademark SINUSENSE with the intention of selling sinus-irrigation devices under the brand name “SinuSense.” It sued Med-Systems seeking a declaratory judgment that its use of the SinuSense brand name did not infringe on any of Med-Systems’ marks. Med-Systems counterclaimed for trademark infringement and unfair competition under the Lanham Act. Ruling that the SinuSense brand was not likely to cause consumer confusion, the district court awarded summary judgment to Water Pik on the counterclaims and dismissed Water Pik’s declaratory-judgment claim as moot. Finding no error in the district court's decision, the Tenth Circuit affirmed. View "Water Pik, Inc. v. Med-Systems, Inc." on Justia Law

A dispute arose among the parties in this case over internet advertising through "AdWords," a Google program whereby companies pay the search engine to feature its ads whenever a user uses certain keywords. At issue was whether the Lanham Act was violated by one of the parties' use of keywords that resembled a competitior-party's service mark. Upon review of the keywords and service marks in question here, the Tenth Circuit found no violation of the Act. View "1-800 Contacts v. Lens.com, et al" on Justia Law

Levi Strauss has stitched the back pocket of its jeans with the “Arcuate” design since 1873 and holds multiple trademarks on the design. In 2005, Abercrombie sought to register a “mirror image stitching design” for use on clothing, stating no limitations on the goods’ nature, type, channels of trade, or class of purchasers. Levi Strauss initiated an opposition to the parent application (concerning jackets and seeking Principal Registration). Levi Strauss petitioned to cancel Supplemental Registration of the child application covering other clothing. Abercrombie began selling “Ruehl jeans” with the design. Levi Strauss sued. The PTO stayed proceedings. Abercrombie claimed that its products were sold in different channels, at different prices. A jury found no infringement; the court rejected a claim of dilution by blurring. Levi Strauss did not appeal concerning infringement. The Ninth Circuit remanded, holding that dilution by blurring does not require identity or near identity of marks. Meanwhile, Abercrombie shut down the Ruehl brand, but sought to register its mirror-image design on “clothing, namely bottoms,” disclosing use of the design on denim shorts sold as “Gilley Hicks,” at different prices, and through different channels. Levi Strauss sought to amend to include the Gilley Hicks products. The district court declined and dismissed the dilution claim. The PTO opposition and cancellation proceedings were dismissed on the ground of issue preclusion. The Federal Circuit reversed, reasoning that the registrations at issue in the PTO cover a broader range of uses than were the subject of the litigation. View "Levi Strauss & Co. v. Abercrombie & Fitch Trading Co." on Justia Law

Plaintiff Creative Playthings Ltd., a Massachusetts corporation, entered into a franchising agreement with Defendant under which Defendant agreed to operate a Creative Playthings franchise store in Florida. Plaintiff later terminated its agreement with Defendant and commenced this action against Defendant in the U.S. district court for breach of contract and associated claims. Defendant filed several counterclaims against Creative. Creative moved for summary judgment on Defendant's counterclaims, asserting they were time barred under the limitations provision in the franchise agreement. The federal district court judge declined to decide Creative's motion and instead certified the question of whether contractually shortened statutes of limitations are generally enforceable under Massachusetts law. The Supreme Court answered by holding that, in a franchise agreement governed by Massachusetts law, a limitations period in the contract shortening the time within which claims must be brought is valid and enforceable under Massachusetts law if the claim arises under the contract and the agreed-upon limitations period is subject to negotiation by the parties, is not otherwise limited by controlling statute, is reasonable, is not a statute of repose, and is not contrary to public policy. View "Creative Playthings Franchising Corp. v. Reiser" on Justia Law

The Trademark Trial and Appeal Board found that a service mark, NATIONAL CHAMBER, submitted by the Chamber of Commerce of the USA, was correctly refused registration for being merely descriptive under 15 U.S.C. 1052(e)(1). The Federal Circuit affirmed, finding the decision supported by substantial evidence.View "In re: Chamber of Commerce of the United States of America" on Justia Law

Eureka Water Company contended that a 1975 agreement granted it the exclusive license in 60 Oklahoma counties to sell spring water and other products using the "Ozarka" trademark. It sued Nestle Waters North America, Inc., the current owner of the Ozarka trademark, to obtain a declaratory judgment of that right and to obtain monetary relief under several theories, including breach of contract, tortious interference with business relations, unjust enrichment, and promissory estoppel. A jury found for Eureka on its contract and tortious interference claims, and the district court entered a judgment declaring that the 1975 agreement granted Eureka the exclusive right that it claimed in the Ozarka mark. In a post-verdict ruling, the district court denied as duplicative Eureka's equitable claims based on unjust enrichment and promissory estoppel. Nestle appealed. The Tenth Circuit agreed with most of Nestle's principal arguments. First, the Court reversed the district court's denial of Nestle's motion for JMOL on the contract claim because the 1975 agreement unambiguously did not cover spring water and under Oklahoma contract law. The Court reversed the denial of JMOL on the tortious-interference claim because Eureka failed to show that Nestle's decision to charge Eureka what it charged other vendors for bottled water was not privileged or justified. Third, the Court affirmed the denial of Eureka's unjust enrichment claim because the claim is based on the false premise that Eureka's license to use the Ozarka trademark covers spring water. The Court reversed, however, the denial of Eureka's promissory-estoppel claim, and remanded that claim for further consideration by the district court. View "Eureka Water Company v. Nestle Waters North America" on Justia Law

Of the parties in this case, one of two competing car dealerships used a software program in order to compete more aggressively with the other one over the internet. The program produced a "multiplicity of mini-websites, a host of hard feelings, and of course, litigation." The mini-websites (or "microsites" would either automatically redirect users who clicked on them to Eastern Shore Toyota, LLC's official websites, or they would display a one-page website advertising Eastern Shore. Eastern Shore was sent numerous cease-and-desist letters for using any microsite address that infringed on another company's trademark. Eastern Shore blamed the person behind the creation of its microsite marketing strategy for its legal troubles with third parties. One such third party, Bob Tyler Toyota, filed suit against Eastern Shore's owner Shawn Esfahani and the "internet marketing expert" who first approached Eastern Shore with the microsite idea, David Vaughn, Jr. Bob Tyler Toyota brought six claims against Eastern Shore, seeking injunctive relief and actual and statutory damages, all relating to Eastern Shore's alleged misuse of its trademarks under state and federal law. The district court denied Bob Tyler Toyota's motion for summary judgment and its motion for judgment as a matter of law. The jury found that Eastern Shore violated at least one of Bob Tyler Toyota's six claims. At that time, Bob Tyler Toyota did not object to or even mention any inconsistencies between the jury's findings. A month after the verdict, Bob Tyler Toyota renewed its motion for judgment as a matter of law on all of its claims. It also moved for a new trial on its anticybersquatting claim, arguing, among other things, that the jury verdict was inconsistent and that it was not supported by the evidence. The district court denied both motions. Bob Tyler Toyota appealed. In light of the totality of the evidence, the Eleventh Circuit could not say that the district court erred in denying Bob Tyler Toyota's motions or abused its discretion in determining the jury's verdict was not against the weight of the evidence. Accordingly, the Court affirmed the district court's decision and jury verdict. View "Pensacola Motor Sales Inc. v. Eastern Shore Toyota" on Justia Law