Justia Trademark Opinion Summaries

NBA Properties owns the trademarks of the NBA and NBA teams. In 2020, a Properties investigator accessed HANWJH’s online Amazon store and purchased an item, designating an address in Illinois as the delivery destination. The product was delivered to the Illinois address. Properties sued, alleging trademark infringement and counterfeiting, 15 U.S.C. 1114 and false designation of origin, section 1125(a). Properties obtained a TRO and a temporary asset restraint on HANWJH’s bank account, then moved for default; despite having been served, HANWJH had not answered or otherwise defended the suit. HANWJH moved to dismiss, arguing that the court lacked personal jurisdiction over it because it did not expressly aim any conduct at Illinois. HANWJH maintained that it had never sold any other product to any consumer in Illinois nor had it any “offices, employees,” “real or personal property,” “bank accounts,” or any other commercial dealings with Illinois.The Seventh Circuit affirmed the denial of the motion to dismiss and the entry of judgment in favor of Properties. HANWJH shipped a product to Illinois after it structured its sales activity in such a manner as to invite orders from Illinois and developed the capacity to fill them. HANWJH’s listing of its product on Amazon.com and its sale of the product to counsel are related sufficiently to the harm of likelihood of confusion. Illinois has an interest in protecting its consumers from purchasing fraudulent merchandise. HANWJH alleges no unusual burden in defending the suit in Illinois. View "NBA Properties, Inc. v. HANWJH" on Justia Law

Miami Velvet operated as a swingers’ nightclub in Miami, Florida. The appellants, in this case, Yorkies and Mrs. Dorfman were Miami Velvet’s managers. Appellants appealed the district court’s final judgment, which awarded over 30 plaintiffs damages for false advertising and false endorsement under the Lanham Act, following the entry of summary judgment on liability and a jury award of damages. The Eleventh Circuit reversed the district court’s judgment, set aside the jury’s award of damages to Appellants, and remanded for trial. The court explained that there was not enough evidence to support the entry of summary judgment. Here the advertisements with Plaintiffs’ images were created for and used by Velvet Lifestyles. But Plaintiffs did not just sue Velvet Lifestyles; they also sued Yorkies and Mrs. Dorfman. To prevail on their false advertising and false endorsement claims against Appellants, Plaintiffs had to show that Yorkies itself engaged in or participated in the prohibited conduct along with Velvet Lifestyles (direct liability) or that the corporate veil between Yorkies and Velvet Lifestyles should be pierced (indirect liability).Plaintiffs did not satisfy their burden of showing the absence of a genuine issue of material fact regarding whether Yorkies and Mrs. Dorfman were responsible for the Lanham Act violations. Rather than making the necessary showing in their motion for summary judgment, Plaintiffs simply treated Velvet Lifestyles, Yorkies, and Mrs. Dorfman as one and the same. They exclusively discussed Defendants collectively in the argument section of their motion, presumably operating on the mistaken assumption that if Velvet Lifestyles was liable for violating the Act, so were Yorkies and Mrs. Dorfman. View "Jaime Faith Edmondson, et al. v. Velvet Lifestyles, LLC, et al." on Justia Law

Brothers and Sisters in Christ, LLC (BASIC) allege that Zazzle, Inc. sold a t-shirt that infringed on BASIC’s federal trademark. The district court granted Zazzle’s motion to dismiss for lack of personal jurisdiction. The Eighth Circuit affirmed. The court explained that BASIC bears the burden of establishing a prima facie showing of jurisdiction. Further, where the applicable federal statute, here the Lanham Act, does not authorize nationwide personal jurisdiction the existence of personal jurisdiction depends on the long-arm statute of the forum state and the federal Due Process Clause.   Here, the court looked to Zazzle’s contacts with Missouri related to BASIC’s claims. Aside from the single t-shirt sale, BASIC fails to allege a connection between Zazzle’s other contacts with Missouri and the underlying suit. BASIC does not allege that Zazzle’s other activities in Missouri involved trademark infringement or that Zazzle sold additional trademark-infringing goods into the state. Further, BASIC has not alleged that Zazzle took such purposeful, targeted action toward Missouri or Missouri consumers. Although Missouri has an interest in this litigation because the allegedly injured plaintiff is a Missouri company, the convenience of the parties is neutral, as Zazzle would be inconvenienced by litigation in Missouri and BASIC would likely be inconvenienced in an alternate forum. In sum, BASIC has failed to allege that Zazzle could reasonably anticipate being haled into court in Missouri. View "Brothers and Sisters in Christ v. Zazzle, Inc." on Justia Law

Royal Palm Properties, LLC ("Royal Palm") sued Pink Palm Properties, LLC ("Pink Palm)" for trademark infringement and Pink Palm countersued. Both parties ultimately lost on their claims. Pink Palm asserted that it was the prevailing party, and thereby entitled to costs under Rule 54 and “exceptional case” fees under the Lanham Act because it successfully defended the initial infringement claim. The district court ruled that there was no prevailing party because there was a split judgment and both parties lost on their claims. Because it found that neither party could be characterized as the prevailing party, the district court declined to award costs or fees to Pink Palm.   Pink Palm’s appealed the district court’s fee order. The Eleventh Circuit affirmed the district court’s order. The court wrote that when the parties achieve a “tie,” a district court may find no prevailing party for purposes of costs and fees. While there will be occasional instances, such as this one, where neither party prevails, the court noted that in the majority of cases whether there is a prevailing party and which party prevailed will be easily determined. Further when granting prevailing party status in those instances, however, a district court is limited to naming one, and only one, prevailing party. Here, neither party was the prevailing party, and, because it did not meet the threshold requirement of prevailing party status, Pink Palm was rightly denied costs under Rule 54 and attorney fees under the Lanham Act. View "Royal Palm Properties, LLC v. Pink Palm Properties, LLC" on Justia Law

Bimbo Bakeries USA, Inc. (“Bimbo Bakeries”) owned, baked, and sold Grandma Sycamore’s Home-Maid Bread (“Grandma Sycamore’s”). Bimbo Bakeries alleged that United States Bakery (“U.S. Bakery”), a competitor, and Leland Sycamore (“Leland”), the baker who developed the Grandma Sycamore’s recipe, misappropriated its trade secret for making Grandma Sycamore’s. The district court granted summary judgment in favor of U.S. Bakery on a trade dress infringement claim. The parties went to trial on the other two claims, and the jury returned a verdict in favor of Bimbo Bakeries on both. After the trial, the district court denied U.S. Bakery’s and Leland’s renewed motions for judgment as a matter of law on the trade secrets misappropriation and false advertising claims. The district court did, however, remit the jury’s damages award. All parties appealed. Bimbo Bakeries argued the district court should not have granted U.S. Bakery summary judgment on its trade dress infringement claim and should not have remitted damages for the false advertising claim. U.S. Bakery and Leland argued the district court should have granted their renewed motions for judgment as a matter of law, and Leland made additional arguments related to his personal liability. The Tenth Circuit affirmed in part, reversed in part, and remanded for further proceedings because the Court found all of Bimbo Bakeries’ claims failed as a matter of law. View "Bimbo Bakeries USA, et al. v. Sycamore, et al." on Justia Law

This appeal grew out of a dispute over a program (“The Trial Lawyers College”) to train trial lawyers. The College’s board of directors splintered into two factions, known as the “Spence Group” and the “Sloan Group.” The two groups sued each other: The Spence Group sued in state court for dissolution of the College and a declaratory judgment recognizing the Spence Group’s control of the Board; the Sloan Group then sued in federal court, claiming trademark infringement under the Lanham Act. Both groups sought relief in the federal case. The federal district court decided both requests in favor of the Sloan Group: The court denied the Spence Group’s request for a stay and granted the Sloan Group’s request for a preliminary injunction. The Spence Group appealed both rulings. The Tenth Circuit Court of Appeals determined it lacked jurisdiction to review the district court’s denial of a stay. After the Spence Group appealed the federal district court’s ruling, the state court resolved the dispute over Board control. So this part of the requested stay became moot. The remainder of the federal district court’s ruling on a stay did not constitute a reviewable final order. The Court determined it had jurisdiction to review the grant of a preliminary injunction. In granting the preliminary injunction, the district court found irreparable injury, restricting what the Spence Group could say about its own training program and ordering removal of sculptures bearing the College’s logo. The Spence Group challenged the finding of irreparable harm, the scope of the preliminary injunction, and the consideration of additional evidence after the evidentiary hearing. In the Tenth Circuit's view, the district court had the discretion to consider the new evidence and grant a preliminary injunction. "But the court went too far by requiring the Spence Group to remove the sculptures." View "Trial Lawyers College v. Gerry Spences Trial Lawyers, et al." on Justia Law

Motus and CarData both provide tools for managing businesses' reimbursement of employee expenses. Motus is a Delaware limited liability company with its principal place of business in Boston.. CarData is a Toronto-based Canadian corporation. Motus sued CarData for trademark infringement and related wrongs for its use of a particular phrase in the meta title of its website, Lanham Act, 15 U.S.C. 1051-1129. Motus argued CarData had "purposefully availed itself of the privilege of conducting activities within the U.S. and Massachusetts" by maintaining numerous offices in the U.S. and marketing itself to and interacting with U.S. and Massachusetts customers through its website.The First Circuit affirmed the dismissal of Motus's suit without prejudice, for lack of personal jurisdiction, and denial of its request for jurisdictional discovery. The purposeful availment requirement was not met because there was not “something more” connecting CarData to the forum state beyond its website which is available to anyone with internet access, in any state. Motus did not act diligently to present facts to the court to show why jurisdiction would be found if discovery were permitted. Motus left the court to guess whether CarData has any Massachusetts customers, receives any revenue from Massachusetts, or has any other business connection with Massachusetts. Jurisdiction cannot be premised on guesswork; the record does not support a finding that the operation of CarData's website and/or its commercial contacts elsewhere in the country constitute purposeful availment with respect to Massachusetts. View "Motus, LLC v. CarData Consultants, Inc." on Justia Law

The Eighth Circuit dismissed, based on lack of jurisdiction, plaintiffs' appeal of a district court order staying a federal action for trademark infringement and unfair competition pending resolution of common trademark license issues in a long-pending state court litigation between the parties. The court concluded that the stay order is neither a final order under 28 U.S.C. 1291 nor a collateral interlocutory order that may be appealed. In this case, the district court did not abuse its discretion in concluding that if the Lomax Parties prevail on their broad allegations in state court, then the state proceedings will fully dispose of the claims in federal court. View "Window World International v. O'Toole" on Justia Law

In 1969, Beasley founded a band, “The Ebonys,” one of many bands that created the “Philadelphia Sound.” The Ebonys achieved some commercial success in the 1970s but never reached the notoriety of similar artists such as The O’Jays. Beasley alleges that The Ebonys have performed continuously. Howard joined the band in the mid-1990s. Beasley obtained a New Jersey state service mark for THE EBONYS in 1997. Beasley and his bandmates performed with Howard for several years before parting ways. Each artist claimed the Ebonys name. In 2012, Howard registered THE EBONYS with the Patent & Trademark Office (PTO). Beasley alleges that Howard’s registration has interfered with his business; he has not been able to register a band website that uses “the Ebonys” in its domain name, Howard has kept concert venues from booking Beasley’s performances, Howard has tried to collect royalties from Beasley’s recordings, and Howard has claimed to be the Ebonys’s true founder. Beasley filed unsuccessful petitions with the Trademark Trial and Appeal Board (TTAB) to cancel the mark, contending that Howard defrauded the PTO. The district court relied on claim preclusion to dismiss Beasley’s subsequent complaint. The Third Circuit remanded for a determination of the scope of Beasley’s claims. Trademark cancellation proceedings before TTAB do not have claim preclusive effect against federal trademark infringement lawsuits. TTAB’s limited jurisdiction does not allow trademark owners to pursue infringement actions or the full scope of infringement remedies. The court affirmed the dismissal of any claim that Howard defrauded the PTO. View "Beasley v. Howard" on Justia Law

Ayla, a San Francisco-based brand, is the registered owner of trademarks for use of the “AYLA” word mark in connection with on-site beauty services, online retail beauty products, cosmetics services, and cosmetics. Alya Skin, an Australian company, sells and ships skincare products worldwide. Ayla sued in the Northern District of California, asserting trademark infringement and false designation of origin under the Lanham Act, 15 U.S.C. 1114, 1125(a).Alya Skin asserted that it has no retail stores, offices, officers, directors, employees, bank accounts, or real property in the U.S., does not sell products in U.S. retail stores, solicit business from Americans, nor direct advertising toward California; less than 10% of its sales have been to the U.S. and less than 2% of its sales have been to California. Alya Skin uses an Idaho company to fulfill shipments outside of Australia and New Zealand. Alya Skin filed a U.S. trademark registration application in 2018, and represented to potential customers that its products are FDA-approved; it ships from, and allows returns to, Idaho Alya Skin’s website listed U.S. dollars as the default currency and advertises four-day delivery to the U.S.The Ninth Circuit reversed the dismissal of the suit. Jurisdiction under Fed.R.Civ.P. 4(k)(2) comports with due process. Alya Skin had minimum contacts with the U.S., and subjecting it to an action in that forum would not offend traditional notions of fair play and substantial justice. The company purposefully directed its activities toward the U.S. The Lanham Act and unfair competition claims arose out of or resulted from Alya Skin’s intentional forum-related activities. View "Ayla, LLC v. Alya Skin Pty. Ltd." on Justia Law