Justia Trademark Opinion Summaries

Westmont Living, Inc., a California corporation operating retirement communities and assisted living facilities, filed a lawsuit against Retirement Unlimited, Inc. (RUI), a Virginia corporation, alleging trademark infringement. Westmont Living claimed that RUI's use of the name "The Westmont at Short Pump" for its new facility in Virginia created a likelihood of confusion with Westmont Living's federally registered "Westmont Living" trademarks, violating the Lanham Act and related laws. Westmont Living sought an injunction and damages.The United States District Court for the Eastern District of Virginia granted summary judgment in favor of RUI, concluding that consumer confusion was impossible because the parties operated in entirely distinct geographic markets. The court relied on the Second Circuit's decision in Dawn Donut Co. v. Hart’s Food Stores, Inc., which held that no likelihood of confusion exists when parties use their marks in separate and distinct markets.The United States Court of Appeals for the Fourth Circuit reviewed the case and vacated the district court's judgment. The Fourth Circuit held that the district court erred by relying solely on the geographic separation of the parties' physical facilities without considering other relevant factors that might bear on the likelihood of confusion. The court emphasized that modern advertising and the national scope of both parties' marketing efforts necessitate a broader analysis. The Fourth Circuit remanded the case for further proceedings to consider the various factors relevant to determining the likelihood of confusion, including the parties' competitive marketing, the locations from which they solicit and draw customers, and the scope of their reputations. View "Westmont Living, Inc. v. Retirement Unlimited, Inc." on Justia Law

Bullshine Distillery LLC applied to register the mark BULLSHINE FIREBULL for alcoholic beverages. Sazerac Brands, LLC opposed the registration, alleging a likelihood of confusion with its FIREBALL marks for liqueurs and whiskey. Bullshine counterclaimed, seeking cancellation of Sazerac’s registrations, arguing that "fireball" was a generic term for a type of alcoholic drink.The Trademark Trial and Appeal Board (Board) found that "fireball" was not generic at the time of registration or at the time of trial. The Board also determined that there was no likelihood of confusion between the FIREBALL marks and Bullshine’s BULLSHINE FIREBULL mark. Specifically, the Board found that while Sazerac’s FIREBALL mark was commercially strong, it was conceptually weak, the marks were dissimilar, the goods were purchased without great care, and Bullshine did not act in bad faith.The United States Court of Appeals for the Federal Circuit reviewed the case. The court affirmed the Board’s decision, holding that the Board applied the correct legal standard in determining that "fireball" was not generic at the time of registration. The court found substantial evidence supporting the Board’s finding that "fireball" was not generic, including the lack of evidence that competitors used the term and the association of the term with specific products rather than a generic category.The court also affirmed the Board’s determination of no likelihood of confusion, finding that the Board’s analysis of the fame and conceptual strength of the FIREBALL mark, as well as the similarity of the marks, was supported by substantial evidence. The court concluded that the Board did not err in its findings and affirmed the decision in favor of Bullshine. View "Bullshine Distillery LLC v. Sazerac Brands, LLC" on Justia Law

Lau, a native and citizen of China, was charged with third-degree trademark counterfeiting in New Jersey. While awaiting trial, he left the United States and upon his return, he was paroled for deferred inspection by immigration authorities. Lau was later convicted and sentenced to probation. The Department of Homeland Security (DHS) initiated removal proceedings against him, asserting he was inadmissible due to his conviction for a crime involving moral turpitude (CIMT).An Immigration Judge (IJ) found Lau inadmissible under 8 U.S.C. § 1182(a)(2)(A)(i)(I) and ineligible for a waiver of inadmissibility under 8 U.S.C. § 1182(h). The IJ concluded that Lau’s conviction constituted a CIMT, did not qualify as a petty offense, and that he was properly classified as an applicant for admission upon his return. The IJ also determined that Lau did not meet the continuous residency requirement for a 212(h) waiver. The Board of Immigration Appeals (BIA) affirmed the IJ’s decision, agreeing with the findings and dismissing Lau’s appeal.The United States Court of Appeals for the Second Circuit reviewed the case. The court held that DHS improperly classified Lau as an applicant for admission when he returned to the United States while his criminal charge was pending. The court found that a pending charge does not provide clear and convincing evidence of a CIMT necessary for DHS to consider an LPR an applicant for admission. Consequently, the court granted Lau’s petition for review, vacated the final order of removal, and remanded the case to the agency with instructions to terminate removal proceedings against Lau based on his inadmissibility under section 1182(a), without prejudice to any future deportation proceedings. View "Lau v. Bondi" on Justia Law

Dewberry Engineers sued Dewberry Group for trademark infringement under the Lanham Act, alleging that Dewberry Group's use of the "Dewberry" name violated their trademark rights. Dewberry Group, a real-estate development company, provides services to separately incorporated affiliates, which own commercial properties. The affiliates generate rental income, while Dewberry Group operates at a loss, surviving through cash infusions from its owner, John Dewberry.The District Court found Dewberry Group liable for trademark infringement and awarded Dewberry Engineers nearly $43 million in profits. The court treated Dewberry Group and its affiliates as a single corporate entity, totaling the affiliates' real-estate profits to calculate the award. The Fourth Circuit Court of Appeals affirmed this decision, agreeing with the District Court's approach to treat the companies as a single entity due to their economic reality.The Supreme Court of the United States reviewed the case and held that the District Court erred in treating Dewberry Group and its affiliates as a single corporate entity for calculating profits. The Court ruled that under the Lanham Act, only the profits of the named defendant, Dewberry Group, could be awarded. The affiliates' profits could not be considered as the defendant's profits since they were not named as defendants in the lawsuit. The Supreme Court vacated the Fourth Circuit's decision and remanded the case for a new award proceeding consistent with its opinion. View "Dewberry Group, Inc. v. Dewberry Engineers Inc." on Justia Law

Aquarian Foundation, Inc., a non-profit religious organization, alleged that Bruce Lowndes infringed on its copyrights by uploading spiritual teachings of its late founder, Keith Milton Rhinehart, to various websites. Lowndes claimed he had a license from Rhinehart, granted in 1985, to use the materials. Rhinehart passed away in 1999, bequeathing his estate, including the copyrights, to Aquarian.The United States District Court for the Western District of Washington granted partial summary judgment, confirming that Rhinehart's copyrights were properly transferred to Aquarian via his will. After a bench trial, the court ruled against Aquarian on its claims of copyright infringement, trademark infringement, and false designation of origin. The court found that Rhinehart created the works as his own, not as works for hire, and that he had validly licensed them to Lowndes. The court also determined that Lowndes did not breach the licensing agreement and that Aquarian could not terminate the license under 17 U.S.C. § 203(a). The court denied attorneys’ fees to both parties.The United States Court of Appeals for the Ninth Circuit affirmed the district court’s findings that Rhinehart’s works were not created as works for hire, that he validly licensed the works to Lowndes, and that Lowndes did not breach the licensing agreement. The court also affirmed the decision not to award Lowndes attorneys’ fees under the Lanham Act. However, the Ninth Circuit reversed the district court’s determination regarding the termination of the license, holding that Aquarian’s termination letter in May 2021 was effective. The case was remanded for further proceedings to address any infringement that may have occurred after the license termination, as well as the denial of injunctive relief and attorneys’ fees under the Copyright Act. View "AQUARIAN FOUNDATION, INC. V. LOWNDES" on Justia Law

Moke America LLC and Moke International Limited, along with Moke USA, LLC, are competing for the U.S. trademark rights to the "MOKE" mark, used for their low-speed, open-air vehicles. The U.S. District Court for the Eastern District of Virginia found that "MOKE" is a generic term for these vehicles, meaning it cannot be a trademark owned by either party. This finding was based on the history of the Moke vehicles, which were originally produced by the British Motor Corporation (BMC) and later by other manufacturers, and the term "Moke" becoming synonymous with a style of vehicle.The district court's decision followed a bench trial where Moke America failed to prove its priority of use. The court then considered whether the MOKE mark was distinctive or generic. Both parties argued that the mark was inherently distinctive, but the court found it to be generic based on the evidence presented, including the parties' marketing efforts and the testimony of a Moke America witness.The United States Court of Appeals for the Fourth Circuit reviewed the case and concluded that the district court correctly placed the burden on the parties to prove that "MOKE" is not a generic term. However, the Fourth Circuit found that the evidence was insufficient to either affirm or outright reverse the district court's finding of genericness. The court noted that more evidence is needed to determine whether "MOKE" is a generic term or an inherently distinctive mark that was abandoned by its original owner, BMC.The Fourth Circuit vacated the district court's judgment and remanded the case for further proceedings to gather additional evidence on the distinctiveness or genericness of the "MOKE" mark. The parties will continue to bear the burden of proving that the mark is not generic. The court suggested that appointing a disinterested expert witness might be helpful in resolving the issue. View "Moke America LLC v. Moke International Limited" on Justia Law

Tangle, Inc. holds copyright registrations for seven kinetic and manipulable sculptures made from 17 or 18 identical, connected, 90-degree curved tubular segments that can be twisted or turned 360 degrees. Aritzia, Inc. owns and operates retail stores and used similar sculptures in their store windows. Tangle alleged that Aritzia's sculptures infringed on their copyrighted works and also claimed trade dress infringement under the Lanham Act.The United States District Court for the Northern District of California dismissed Tangle's initial copyright infringement claim for failure to state a claim but allowed Tangle to amend its complaint. Tangle filed an amended complaint, which was again dismissed. Tangle then filed a Second Amended Complaint, adding a trade dress infringement claim. The district court dismissed both claims, giving Tangle leave to amend. Tangle chose not to amend further and instead appealed the dismissal.The United States Court of Appeals for the Ninth Circuit reviewed the case. The court reversed the district court’s dismissal of Tangle’s copyright claim, holding that Tangle adequately alleged valid copyrights in its kinetic and manipulable sculptures. The court found that the sculptures were sufficiently "fixed" in a tangible medium for copyright purposes, despite their ability to move into various poses. The court also held that Tangle plausibly alleged that Aritzia's sculptures were substantially similar to Tangle's protected works under the "extrinsic test."However, the Ninth Circuit affirmed the district court’s dismissal of Tangle’s trade dress infringement claim. The court agreed that Tangle failed to provide a complete recitation of the concrete elements of its alleged trade dress, which is necessary to give adequate notice of the asserted trade dress.The case was remanded for further proceedings consistent with the Ninth Circuit's opinion. View "TANGLE, INC. V. ARITZIA, INC." on Justia Law

CeramTec GmbH manufactures artificial hip components made from zirconia-toughened alumina (ZTA) ceramic, which contains chromium oxide (chromia) and is marketed under the name "Biolox Delta." The addition of chromia gives the ceramic a pink color. CeramTec held U.S. Patent 5,830,816 (the '816 patent) for the chemical composition of Biolox Delta until it expired in January 2013. In January 2012, CeramTec applied for trademarks for the pink color of its ceramic hip components, which were registered on the Supplemental Register in April 2013. CoorsTek Bioceramics LLC, a competitor, manufactures similar ceramic hip implants and filed a lawsuit and a cancellation petition with the Trademark Trial and Appeal Board (the Board) in 2014, arguing that the pink color was functional and should not be trademarked.The Board found in favor of CoorsTek, concluding that the pink color was functional for ceramic hip components. The Board analyzed the functionality under the four factors from In re Morton-Norwich Products, Inc., and found that CeramTec's patents and public communications disclosed the functional benefits of chromia, including increased hardness. The Board also found that there was no probative evidence of functionally equivalent designs and conflicting evidence regarding the cost of manufacturing. The Board rejected CeramTec's unclean hands defense, which argued that CoorsTek should be precluded from challenging the trademarks due to its previous statements about chromia's lack of material benefits.The United States Court of Appeals for the Federal Circuit reviewed the case and affirmed the Board's decision. The court held that the Board's findings were supported by substantial evidence and that the Board correctly applied the burden of proof. The court also addressed CeramTec's arguments regarding the Board's analysis of the Morton-Norwich factors and the unclean hands defense, finding no reversible error. The court concluded that the pink color of CeramTec's ceramic hip components was functional and not eligible for trademark protection. View "CERAMTEC GMBH v. COORSTEK BIOCERAMICS LLC " on Justia Law

LegalForce RAPC Worldwide, P.C. ("LegalForce USA"), a California S corporation operating legal services websites, sued LegalForce, Inc. ("LegalForce Japan"), a Japanese corporation providing legal software services, for trademark infringement. LegalForce USA alleged that LegalForce Japan's U.S. expansion plans, website ownership, and advertising and selling of equity infringed its trademark. The district court dismissed the website claims for lack of jurisdiction and the expansion plan claims as unripe. The claims concerning equity were dismissed for failure to state a claim.The United States District Court for the Northern District of California dismissed all claims except those related to the advertising and selling of equity. The court held that it had jurisdiction over these claims but dismissed them for failure to state a claim, reasoning that advertising and selling equity is not connected to the sale of goods or services and thus cannot constitute trademark infringement. The court also found that LegalForce USA failed to justify an extraterritorial application of the Lanham Act.The United States Court of Appeals for the Ninth Circuit affirmed the district court's dismissal. The court held that using a trademark in connection with the sale of equity does not constitute using the mark in connection with "goods or services" under the Lanham Act. The court also affirmed that LegalForce Japan's services in Japan could not satisfy the "in connection with" goods or services requirement under the Lanham Act, as the relevant conduct occurred outside U.S. territory. The court concluded that the Lanham Act does not apply extraterritorially in this context. View "LEGALFORCE RAPC WORLDWIDE, PC V. LEGALFORCE, INC." on Justia Law

Charles Curry, Jr., a former competitive powerlifter and bodybuilder, started a nutritional supplements business called Get Diesel Nutrition in 2002. He began selling a testosterone-boosting supplement called "Diesel Test" in 2005. Revolution Laboratories, LLC, founded by Joshua and Barry Nussbaum, also sold a supplement called "Diesel Test" starting in 2016. Curry, acting without a lawyer, filed a lawsuit against Revolution and the Nussbaums in 2017, asserting trademark claims under the federal Lanham Act and Illinois common law. Curry later obtained counsel, and the case proceeded to a jury trial in May 2023, resulting in a verdict for Curry.The jury awarded Curry $2,500 in actual damages for loss of goodwill and reputation and $500,000 as disgorgement of Revolution’s profits from the infringement. Additionally, the jury awarded Curry $300,000 in punitive damages against each of Joshua, Barry, and Revolution, totaling $900,000. The district court later ruled that disgorgement of profits under the Lanham Act is an equitable remedy for the judge to decide and recalculated the appropriate profits award to be $547,095.44.The United States Court of Appeals for the Seventh Circuit reviewed the case. Defendants challenged the district court's decision to allow Curry's punitive damages request to go to the jury and argued that the punitive damage awards were excessive in violation of the Fourteenth Amendment’s due process clause. The Seventh Circuit affirmed the district court's decision, holding that the district court did not abuse its discretion in allowing Curry to seek punitive damages and that the punitive damage awards were not unconstitutionally excessive. The court concluded that the ratio of punitive damages to the combined compensatory and disgorgement awards was constitutionally permissible. View "Curry v. Revolution Laboratories, LLC" on Justia Law