Justia Trademark Opinion Summaries

The Eleventh Circuit affirmed the district court's denial of Hard Candy's request for a jury trial in an action under the Lanham Act. In this case, Hardy Candy sought every remedy permitted by the Act besides actual damages: an injunction to prevent future infringement, an accounting and the disgorgement of profits that the defendant made from the allegedly infringing goods, and declaratory relief, along with fees and costs.The court held that the remedy of an accounting and disgorgement of profits for trademark infringement is equitable in nature and has long been considered that way, and thus a plaintiff seeking the defendant's profits in lieu of actual damages is not entitled to a jury trial. The panel also held that the district court did not err in its merits determinations on infringement and fair use. View "Hard Candy, LLC v. Anastasia Beverly Hills, Inc." on Justia Law

In regulating the practice of engineering, Mississippi restricts the use of the term “engineer.” Express operates automotive service centers in Mississippi and other states under the Tire Engineers mark. The Mississippi Board of Licensure for Professional Engineers & Surveyors informed Express that the name Tire Engineers violated Miss. Code 73-13-39 and requested that it change its company advertisement name. Express sought a declaratory judgment, citing Express’s “rights of commercial free speech guaranteed by the First Amendment”; and “rights under preemptive federal trademark law” under 15 U.S.C. 1051–1127. The district court granted the Board summary judgment. The Fifth Circuit reversed. The Board’s decision violates the First Amendment’s commercial speech protections. Because its essential character is not deceptive, Tire Engineers is not inherently misleading. The name, trademarked since 1948, apparently refers to the work of mechanics using their skills “not usu[ally] considered to fall within the scope of engineering” to solve “technical problems” related to selecting, rotating, balancing, and aligning tires. Nor is the name actually misleading. Because the name is potentially misleading, the Board’s asserted interests are substantial but the record does not support the need for a total ban on the name. Other states with similar statutes have not challenged the use of the trademark and the Board did not address why less-restrictive means, such as a disclaimer, would not accomplish its goal. View "Express Oil Change, L.L.C. v. Mississippi Board of Licensure for Professional Engineers & Surveyors" on Justia Law

Brunetti owns the clothing brand “fuct.” In 2011, individuals filed an intent-to-use application for the mark FUCT for items of apparel. The applicants assigned the application to Brunetti, who amended it to allege use of the mark. The examining attorney refused to register the mark under the Lanham Act, 15 U.S.C. 1052(a), finding it comprised immoral or scandalous matter because FUCT is the past tense of “fuck,” a vulgar word, and is therefore scandalous. The Trademark Trial and Appeal Board affirmed. The Federal Circuit reversed. While substantial evidence supports the Board’s findings and it did not err concluding the mark comprises immoral or scandalous matter, section 2(a)’s bar on registering immoral or scandalous marks is an unconstitutional restriction of free speech. The bar is a content-based restriction on speech; trademark registration is not a government subsidy program that could justify such a bar. Nor is trademark registration a “limited public forum,” in which the government can more freely restrict speech. The bar survives neither strict nor intermediate scrutiny. Even if the government had a substantial interest in protecting the public from scandalous or immoral marks, the regulation does not directly advance that interest because section 2(a) does not directly prevent applicants from using their marks. View "In re: Brunetti" on Justia Law

This petition for writ of mandamus arose in the context of a contested trademark action initiated by San Diego Comic Convention (SDCC) against petitioners, over the use of the mark "comic-con" or "comic con." The Ninth Circuit granted the petition and vacated the district court's orders directing petitioners to prominently post on their social medial outlets its order prohibiting comments about the litigation on social media, dubbing this posting a "disclaimer." The panel held that the orders at issue were unconstitutional prior restraints on speech because they prohibit speech that poses neither a clear and present danger nor a serious and imminent threat to SDCC's interest in a fair trial. The panel explained that the well-established doctrines on jury selection and the court's inherent management powers provide an alternative, less restrictive, means of ensuring a fair trial. View "Dan Farr Productions v. USDC-CASD" on Justia Law

The rock group “The Slants,” chose that name to dilute the term’s denigrating force as a derogatory term for Asians. The Patent and Trademark Office (PTO) denied an application for registration of the name under 15 U.S.C. 1052(a), which prohibits the registration of trademarks that may “disparage . . . or bring . . . into contemp[t] or disrepute” any “persons, living or dead.” The Supreme Court affirmed the Federal Circuit in finding the clause unconstitutional. The Court first rejected an argument that the clause applies only to natural or juristic persons. The Court then held that the clause is subject to the Free Speech Clause, which does not regulate government speech. Trademarks are private, not government speech. "If trademarks become government speech when they are registered, the Federal Government is babbling prodigiously and incoherently.” The disparagement clause denies registration to any mark that is offensive to a substantial percentage of the members of any group. That is viewpoint discrimination. The “public expression of ideas may not be prohibited merely because the ideas are themselves offensive to some of their hearers.” The disparagement clause cannot withstand even “relaxed” review. It does not serve a “substantial interest,” nor is it “narrowly drawn.” View "Matal v. Tam" on Justia Law

Tam, the “front man” for Asian-American rock band, The Slants, sought to register the mark THE SLANTS and attached specimens featuring the name set against Asian motifs. The examining attorney found the mark disparaging to people of Asian descent (15 U.S.C. 1052(a)) and denied registration. The Trademark Trial and Appeal Board dismissed for failure to file a brief. Tam filed another application, seeking to register the mark THE SLANTS for identical services and claiming use of the mark since 2006. Attached specimens did not contain Asian motifs. The examining attorney again found the mark disparaging and declined to register it. The Board affirmed. On rehearing, en banc, the Federal Circuit vacated, finding Section 2(a) of the Lanham Act unconstitutional. The government may not penalize private speech merely because it disapproves of the message, even when the government’s message-discriminatory penalty is less than a prohibition. “Courts have been slow to appreciate the expressive power of trademarks. Words—even a single word—can be powerful. With his band name, Tam conveys more about our society than many volumes of undisputedly protected speech.” The regulation at issue amounts to viewpoint discrimination; under strict scrutiny or intermediate scrutiny review, the disparagement proscription is unconstitutional, because the government has offered no legitimate interests to justify it. View "In Re:Tam" on Justia Law

After Radiance published an article online entitled “NAACP: National Association for the Abortion of Colored People” that criticized the NAACP’s stance on abortion, the NAACP sent Radiance a cease-and-desist letter. Radiance sought a declaratory judgment that it had not infringed any NAACP trademarks and the NAACP filed counterclaims alleging trademark infringement and dilution. The court concluded that the NAACP does not have actionable claims for trademark infringement in this case; Radiance's use of the NAACP's marks or colorable imitation falls squarely within the exceptions to trademark dilution specifically included in the Lanham Act, 15 U.S.C. 1051 et seq., to avoid encroaching on free speech rights; and therefore, the court reversed the district court's injunction and remanded with directions that defendant's counterclaims be dismissed. View "The Radiance Foundation, Inc. v. NAACP" on Justia Law

Experience Hendrix filed suit against Pitsicalis alleging that Pitsicalis was infringing trademarks in violation of the Lanham Act, 15 U.S.C. 1051-1127, and that the trademark infringement also amounted to an unfair or deceptive trade practice proscribed by Washington's Consumer Protection Act (WCPA), Wash. Rev. Code 19.86.010-19.86.920. Determining that Pitsicalis had Article III standing, the court concluded, inter alia, that the WPRA was constitutional as applied to the narrow set of non-speculative circumstances at issue in this case; Pitsicalis was liable under the Lanham Act for using domain names that infringed Experience Hendrix's trademark "Hendrix"; and Paragraph 5 of the permanent injunction failed to state clearly the terms of the injunction and did not describe in reasonable detail the acts that were and were not restrained. Accordingly, the court reversed the district court's determination that the Washington statute was unconstitutional and remanded Pitsicalis's declaratory judgment claims pertaining to the WPRA with instructions to enter judgment on those claims in favor of Experience Hendrix; affirmed the grant of partial summary judgment on Experience Hendrix's claim that Pitsicalis's use of domain names infringed Experience Hendrix's mark; vacated the permanent injunction and remanded so the district court could revise the language at issue; reversed the Rule 50(b)(3) decision to strike most of the jury's award of damages under both the Lanham Act and the WPRA; affirmed the district court's order granting a new trial on damages under both statutes; remanded for a new trial on such damages; vacated the district court's award of attorney's fees under the WCPA; and remanded the fee request for further proceedings. View "Experience Hendrix v. HendrixLicensing.com" on Justia Law

Louis Vuitton filed a federal trademark infringement suit against defendant for operating websites that were selling counterfeit Louis Vuitton bags. On appeal, defendant challenged the district court's denial of his motion to vacate a default judgment entered against him. The court concluded that, under the unrebutted allegations and testimony, the district court in Florida did not violate the Due Process Clause by exercising personal jurisdiction over defendant for Louis Vuitton's trademark infringement claims. The district court did not err in denying defendant's motion to vacate the default judgment because the statutory and federal constitutional personal jurisdiction requirements were satisfied. Accordingly, the court affirmed the judgment of the district court. View "Louis Vuitton Malletier, S.A. v. Mosseri" on Justia Law

Plaintiffs are the writer and publisher of a book entitled "Where's the Birth Certificate? The Case that Barack Obama is not Eligible to Be President." A journalist published an article on Esquire's Political Blog entitled "BREAKING: Jerome Corsi's Birther Book Pulled from Shelves!" Soon after the blog was published, Esquire published an update on the blog stating that "for those who didn't figure it out," the article was "satire." Plaintiffs filed suit against Esquire for, inter alia, violation of the D.C. Anti-Strategic Lawsuits Against Public Participation (Anti-SLAPP) Act, D.C. Code 16-5501 et seq., and the Lanham Act, 15 U.S.C. 1125(a)(1)(A) and (B). The court held that the complaint was properly dismissed under Rule 12(b)(6) for failure to state a claim because the blog post was fully protected political satire and the update and the journalist's statements were protected opinion. Further, the complaint failed to state a claim for violation of the Lanham Act. Accordingly, the court affirmed the district court's dismissal of the complaint. View "Farah, et al. v. Esquire Magazine, et al." on Justia Law