Justia Trademark Opinion Summaries

Articles Posted in Contracts
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McKeon has sold “MACK’S” earplugs to retail consumers since the 1960s. In the 1980s, Honeywell's predecessor began marketing and selling MAX-brand earplugs to distributors. The brand names are phonetically identical. In 1995, McKeon sued. The parties entered a settlement agreement that the district court approved by consent decree. To prevent customer confusion, Honeywell agreed not to sell its MAX-brand earplugs into the “Retail Market” but could continue to sell its earplugs in “the Industrial Safety Market and elsewhere." The agreement and the consent decree never contemplated the internet. In 2017, McKeon complained about sales of MAX-brand earplugs on Amazon and other retail websites.The district court ruled in favor of McKeon. The Sixth Circuit affirmed and remanded. Laches is available to Honeywell as an affirmative defense but does not apply to these facts. Parties subject to consent decrees cannot scale their prohibited conduct over time, using minor undetected violations to justify later larger infringements. Honeywell did not establish that McKeon should have discovered the breaching conduct before Honeywell drastically increased online sales. McKeon’s interpretation of the consent decree is the better reading. Concluding that Amazon is a “retail establishment” makes sense given the parties’ intent. View "McKeon Products, Inc. v. Howard S. Leight & Associates, Inc." on Justia Law

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In 2010, the Army granted Authentic a nonexclusive license to manufacture and sell clothing bearing the Army’s trademarks. The agreement required the Army’s advance written approval of any products and marketing materials bearing the Army’s trademarks and included exculpatory clauses that exempted the Army from liability for exercising its discretion to deny approval. In 2011-2014, Authentic submitted nearly 500 requests for approval; the Army disapproved 41 submissions. During that time, Authentic received several formal notices of material breach for claimed failures to timely submit royalty reports and pay royalties. Authentic eventually paid its royalties through 2013. Authentic’s counsel indicated that Authentic would not pay outstanding royalties for 2014.Authentic's ensuing breach of contract suit cited the Army’s denial of the right to exploit the goodwill associated with the Army’s trademarks, refusal to permit Authentic to advertise its contribution to Army recreation programs, delay of approval for a financing agreement, denial of approval for advertising, and breach of the implied duty of good faith and fair dealing by not approving the sale of certain garments. The Federal Circuit affirmed summary judgment in favor of the government. The license agreement stated in no uncertain terms that the Army had “sole and absolute discretion” regarding approval of Authentic’s proposed products and marketing materials; the exercise of that broad approval discretion is not inconsistent with principles of trademark law. View "Authentic Apparel Geoup, LLC v. United States" on Justia Law

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Plaintiffs and counterclaim-defendants Mrs. Fields Famous Brands, LLC (Famous Brands) and Mrs. Fields Franchising, LLC (Fields Franchising) appealed a district court order granting a preliminary injunction in favor of defendant and counterclaim-plaintiff MFGPC Inc. (MFGPC). The sole member of Famous Brands is Mrs. Fields Original Cookies, Inc. (MFOC). MFOC entered into a Trademark License Agreement (License Agreement) with LHF, Inc. (LHF), an affiliate of MFGPC. In 2003, LHF assigned all rights under the License Agreement to MFGPC, and MFGPC agreed to be bound by and perform in accordance with the License Agreement. The License Agreement granted MFGPC a license to develop, manufacture, package, distribute and sell prepackaged popcorn products bearing the “Mrs. Fields” trademark through all areas of general retail distribution. A dispute arose after Fields Franchising allowed MFGPC to be late with a royalty payment because of a fire that destroyed some of MFGPC’s operations. The franchisor sought to terminate the licensing agreement and collect the royalties owed. Fields Franchising filed suit against MFGPC. In August 2018, the district court entered partial summary judgment in favor of MFGPC on its counterclaim for breach of a trademark license agreement that afforded MFGPC the exclusive use of the “Mrs. Fields” trademark on popcorn products. The district court’s summary judgment order left only the question of remedy to be decided at trial. MFGPC then moved for a preliminary injunction, arguing that there was a substantial likelihood that it would prevail at trial on the remedy of specific performance. After conducting a hearing, the district court granted MFGPC’s motion and ordered Fields Franchising to terminate any licenses it had entered into with other companies for the use of the Mrs. Fields trademark on popcorn products, and to instead comply with the terms of the licensing agreement it had previously entered into with MFGPC. Famous Brands and Fields Franchising argued in this appeal that the district court erred in a number of respects in granting MFGPC’s motion for preliminary injunction. The Tenth Circuit agreed with appellants, and consequently reversed the district court’s grant of a preliminary injunction in favor of MFGPC. View "Mrs. Fields Famous Brands v. MFGPC" on Justia Law

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The parties manufacture and sell equipment that removes water from industrial waste. Gethin founded Watermark's predecessor, “J-Parts,” after leaving his position at JWI. JWI sued Gethin and J-Parts for false designation of origin, trademark dilution, trademark infringement, unfair competition, unjust enrichment, misappropriation of trade secrets, breach of fiduciary duties, breach of contract, and conversion. The parties settled. A stipulated final judgment permanently enjoined Watermark and Gethin and “their principals, agents, servants, employees, attorneys, successors and assigns” from using JWI’s trademarks and from “using, disclosing, or disseminating” JWI’s proprietary information. Evoqua eventually acquired JWI’s business and trade secrets, technical and business information and data, inventions, experience and expertise, other than software and patents, and JWI’s rights and obligations under its contracts, its trademarks, and its interest in litigation. Evoqua discontinued the J-MATE® product line. Watermark announced that it was releasing a sludge dryer product. Evoqua planned to reintroduce J-MATE® and expressed concerns that Watermark was violating the consent judgment and improperly using Evoqua’s trademarks. Evoqua sued, asserting copyright, trademark, and false-advertising claims and seeking to enforce the 2003 consent judgment. The district court held that the consent judgment was not assignable, so Evoqua lacked standing to enforce it and that the sales agreement unambiguously did not transfer copyrights. A jury rejected Evoqua’s false-advertising claim but found Watermark liable for trademark infringement. The Sixth Circuit vacated in part. The consent judgment is assignable and the sales agreement is ambiguous regarding copyrights. View "Evoqua Water Technologies, LLC v. M.W. Watermark, LLC" on Justia Law

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Sköld coined the name “Restoraderm” for a proprietary drug-delivery formulation that he developed for potential use in skin-care products. He entered into a 2001 letter of intent with CollaGenex, a skin-care company, stating that “[a]ll trademarks associated with the drug delivery system … shall be applied for and registered in the name of CollaGenex and be the exclusive property of CollaGenex.” Their 2002 contract reiterated those provisions and stated that termination of the agreement would not affect any vested rights. With Sköld’s cooperation, CollaGenex applied to register the Restoraderm mark. Under a 2004 Agreement, Sköld transferred Restoraderm patent rights and goodwill to CollaGenex, without mentioning trademark rights. After Galderma bought CollaGenex it used Restoraderm as a brand name on products employing other technologies. In 2009, Galderma terminated the 2004 Agreement, asserting that it owned the trade name and that Sköld should not use the name. Sköld markets products based on the original Restoraderm technology that do not bear the Restoraderm mark. Galderma’s Restoraderm product line has enjoyed international success. Sköld sued, alleging trademark infringement, false advertising, unfair competition, breach of contract, and unjust enrichment. Only Sköld’s unjust enrichment claim was successful. The Third Circuit reversed in part, absolving Galderma of liability. The 2004 agreement, rather than voiding CollaGenex’s ownership of the mark by implication, confirmed that CollaGenex owned the Restoraderm mark. Galderma succeeded to those vested rights. View "Skold v. Galderma Laboratories L.P." on Justia Law

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The First Circuit affirmed the district court’s summary judgment findings, evidentiary rulings, and denials of various motions on claims brought by a member of the rock band BOSTON against a former BOSTON guitarist alleging trademark infringement and breach of contract and on the guitarist’s counterclaims alleging breach of contract and abuse of process.Donald Thomas Scholz sued Barry Goudreau alleging claims related to impermissible inferences that Goudreau had allegedly made regarding his former association with BOSTON. Goudreau counterclaimed. After the district court granted in part the parties’ respective motions for summary judgment, the remaining claims proceeded to trial. The jury found in favor of the respective defendants on the remaining claims. The parties cross-appealed. The First Circuit affirmed the district court and denied the appeals, holding that there was no error or abuse of discretion requiring reversal. View "Scholz v. Goudreau" on Justia Law

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Wine & Canvas (W&C) hosts “painting nights.” Patrons, following a teacher’s instructions, create a painting while enjoying wine. W&C operated in Indianapolis, Bloomington, and Oklahoma City. Muylle signed a license agreement, moved to San Francisco, and opened a W&C operation. W&C’s executives were present and taught the first class, worked with Muylle to approve paintings for use, gave Muylle company email addresses, and advertised the San Francisco operation on the W&C website. Disagreements arose. Muylle gave notice to terminate the agreement, changed the business name to “Art Uncorked,” and ceased using the W&C name and marks. W&C alleged trademark infringement, 15 U.S.C. 1051. Muylle’s counterclaims invoked California franchise law, federal trademark cancellation. and Indiana abuse of process law. Plaintiffs failed to meet discovery deadlines, despite being sanctioned three times. The Seventh Circuit affirmed: dismissal of the California law counterclaims; W&C's summary judgment on Muylle’s trademark cancellation counterclaim; Muylle's summary judgment on trademark dilution, sale of counterfeit items, unfair competition, bad faith, tortious conduct, abuse of process, breach of contract, fraud, and a claim under the Indiana Crime Victims Act; and Muylle's partial summary judgment on trademark infringement. Through November 18, 2011, W&C impliedly consented to Muylle’s using the marks. On claims of trademark infringement and false designation of origin (for any use after November 18, 2011), and Muylle’s abuse of process counterclaim, the court affirmed awards to Muylle of $270,000 on his counterclaim and $175,882.68 in fees. View "Wine & Canvas Development, LLC v. Muylle" on Justia Law

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Arborjet, Inc. (Plaintiff), which manufactures and sells an emamectin benzoate solution used to protect trees from pests called TREE-age, granted Rainbow Treecare Scientific Advancements, Inc. (Defendant) an exclusive right to distribute TREE-age pursuant to a sales agency contract. After termination of this agreement, Defendant began marketing and distributing ArborMectin, another emamectin benzoate combination meant to compete directly with TREE-age. Plaintiff sued Defendant seeking to enjoin Defendant’s sales of ArborMectin and alleging several claims. The district court granted Plaintiff a preliminary injunction to run during the litigation that was meant to enforce the contractual agreement and prohibit a trademark violation. The First Circuit affirmed in part and reversed in part the order comprising the preliminary injunction, holding (1) it was not clear error to find a likely showing that Defendant contributed to the creation of ArborMectin; (2) the district court did not err in entering the portion of the preliminary injunction based on Arborjet’s contract claim; but (3) ordering proper attribution of “Arborjet” and “TREE-age” was improper given the district court’s rulings on the Lanham Act claims. View "Arborjet, Inc. v. Rainbow Treecare Scientific Advancements, Inc." on Justia Law

Posted in: Contracts, Trademark
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Burford agreed to facilitate the purchase and sale of accounting practices for APS. The parties initially signed a contract assigning Louisiana to Burford. They later orally agreed that Burford should also cover Alabama, Mississippi, Tennessee, and Kentucky. APS terminated the contract. Burford sued for breach of contract; APS filed a counterclaim under the Lanham Act, 15 U.S.C. 1051, claiming that Burford started a rival business, “American Accounting Practice Sales,” after APS terminated his contract. APS obtained summary judgment on the contract claim, arguing that the contract was terminable at will. APS voluntarily dismissed its counterclaim with prejudice. As the prevailing party on the Lanham Act claim, Burford sought attorney fees. The district court denied the motion, reasoning that APS’s Lanham Act claim could have been pursued by a rational party seeking to protect its trademark. The Seventh Circuit reversed grant of summary judgment on the contract claim, but affirmed the denial of attorney fees. The contract provided that it could be terminated by APS only if Burford violated the terms of the agreement; even if it was indefinite in duration, the parties contracted around the default rule making such contracts terminable at will. View "Burford v. Accounting Practice Sales, Inc" on Justia Law

Posted in: Contracts, Trademark
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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