Justia Trademark Opinion Summaries

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

This appeal stemmed from numerous trademark and unfair competition claims over the name "Patsy's." Patsy's Italian Restaurant appealed, and Patsy's Pizzeria cross-appealed, from a judgment of the district court after a jury trial on claims brought pursuant to trademark and unfair competition law. The court upheld the district court's jury instructions; affirmed the district court's refusal to grant a new trial on the issue of whether Patsy's Pizzeria made fraudulent statements to the Patent and Trademark Office, as well as its refusal to vacate the jury's verdict that Patsy's Italian Restaurant did not fraudulently obtain its trademark registrations; affirmed the district court's refusal to reinstate Patsy's Pizzeria's trademark registrations; and upheld the district court's denial of attorneys' fees and injunctive relief. Accordingly, the court affirmed the judgment of the district court. View "Patsy's Italian Restaurant, Inc., et al. v. Banas, et al." on Justia Law

FICO brought suit against three credit bureaus: Experian, Equifax, and Trans Union, as well as against VantageScore, the credit bureaus' joint venture. The suit alleged antitrust, trademark infringement, false-advertising, and other claims. FICO, Experian, and VantageScore appealed from the district court's judgment. The court held that FICO failed to demonstrate that it had suffered any antitrust injury that would entitle it to seek damages under section 4 of the Clayton Act, 15 U.S.C. 12-27, and FICO failed to demonstrate the threat of an immediate injury that might support injunctive relief under section 16. The court also held that there was no genuine issue of material fact that consumers in this market immediately understood "300-850" to describe the qualities and characteristics of FICO's credit score and therefore, the district court did not err in finding the mark to be merely descriptive. The court further held that there was sufficient evidence for a reasonable jury to determine that the U.S. Patent and Trademark Office (PTO) relied on FICO's false representation in deciding whether to issue the "300-850" trademark registration. The court agreed with the district court that VantageScore was not a licensee and therefore was not estopped from challenging the mark under either theory of agency or equity. The court finally held that FICO's false advertising claims were properly dismissed and the district court did not abuse its discretion in denying the motion for attorneys' fees. View "Fair Isaac Corp., et al. v. Experian Information Solutions, et al." on Justia Law

Two multi-national distilleries have engaged in a lengthy dispute over the use of the words "Havana Club" to sell rum in the United States. Most recently the district held that defendant's use of the words on its label is not a false advertisement of the rum’s geographic origin under Section 43(a)(1)(B) of the Lanham Act, 15 U.S.C. 1125(a)(1)(B). The Third Circuit affirmed, holding that no reasonable interpretation of the label as a whole, which includes a statement that it is "distilled and crafted in Puerto Rico," could lead a reasonable consumer to a false or misleading conclusion. The court declined to address whether the term is subject to trademark protection. View "Pernod Ricard USA LLC v. Bacardi U.S.A. Inc." on Justia Law

XMH sought Chapter 11 bankruptcy relief and obtained permission to sell a subsidiary's assets (11 U.S.C. 363), indicating that a contract between the subsidiary and WG would be assigned to purchasers. WG objected, claiming that the contract was a sublicense of a trademark and could not be assigned without permission. The bankruptcy judge agreed with WG, but allowed XMH to renegotiate so that the subsidiary would retain title to the contract but the purchasers would assume all duties and receive all fees. The district court granted a motion substituting the purchasers for XMH and ruled that the order barring assignment was erroneous. First holding that the order was appealable and that it should exercise jurisdiction despite the absence of the bankruptcy trustee as a party, the Seventh Circuit affirmed. If WG had wanted to prevent assignment, it could have identified the contract as a trademark sublicense to trigger a default rule that trademark licenses are assumed to be not assignable. The contract was not simply a sublicense: WG retained control over "all other aspects of the production and sale of the Trademarked Apparel." Such a designation would have been more effective than a clause forbidding assignment because it would have survived bankruptcy. View "In re XMH Corp. " on Justia Law

Two businesses with nearly identical names, John C. Flood, Inc. ("1996 Flood") and John C. Flood of Virginia, Inc. ("Virginia Flood"), brought suit against each other over which company had the right to use two trademarks: JOHN C. FLOOD and its abridged form FLOOD. At issue was whether the district court erred in concluding that 1996 Flood was the proper owner of the two trademarks and that Virginia Flood, as the licensee of the marks, was estopped from challenging 1996 Flood's ownership. The court affirmed the district court's order granting 1996 Flood's motion for partial summary judgment and held that 1996 Flood was the proper successor-in-interest to John C. Flood, Inc. ("1984 Flood"), and that Virginia Flood was barred by the doctrine of licensee estoppel from challenging 1996 Flood's ownership of those marks. Accordingly, the court affirmed the judgment but remanded the case back to the district court for clarification regarding whether Virginia Flood's use of the mark JOHN C. FLOOD OF VIRGINIA was prohibited by the court's decision. View "John C. Flood of Virginia, Inc., et al. v. John C. Flood, Inc., et al." on Justia Law