Justia Trademark Opinion Summaries

The dispute centers on allegations of intellectual property infringement involving shower curtains designed with embedded rings, eliminating the need for traditional hooks. The plaintiffs, a group of related companies, own several patents covering these “hookless” shower curtains, as well as registered and unregistered trademark and trade dress rights. The defendants, two companies that manufactured and sold similar shower curtains, were accused of infringing these patents, trademarks, and trade dress. The accused products featured rings with a flat upper edge and a slit, allowing the curtain to be attached to a rod without hooks.In the United States District Court for the Southern District of New York, the defendants’ motion to transfer venue was denied as untimely. The district court granted summary judgment of patent infringement in favor of the plaintiffs, based on its claim constructions, and precluded the defendants’ unclean hands defense for being raised too late. After a bench trial, the court found that the defendants infringed the asserted patents, the HOOKLESS® and EZ ON trademarks, and the claimed trade dress, and that some infringement was willful. The court awarded lost profits, reasonable royalties, attorneys’ fees, and costs.On appeal, the United States Court of Appeals for the Federal Circuit affirmed the denial of the venue transfer and the exclusion of the unclean hands defense. However, it reversed the findings of infringement for the ’248 and ’609 patents as to one defendant, vacated the ’088 patent infringement finding as to that defendant, and affirmed the patent infringement findings as to the other. The court also vacated the trade dress infringement and willfulness findings, reversed the EZ ON trademark infringement finding, and vacated the HOOKLESS® trademark infringement finding. The award of attorneys’ fees was vacated, and the case was remanded for further proceedings consistent with these rulings. The court clarified the standards for claim construction, trade dress functionality, and standing to assert trademark rights. View "Focus Products Group International, LLC v. Kartri Sales Co." on Justia Law

A company that provides credit card services under the registered mark ASPIRE opposed the registration of two marks—ASPIRE BANK word and design marks—by a Tennessee retail bank, Apex Bank. Apex Bank, which does not offer credit cards but provides various banking services, filed intent-to-use applications for the ASPIRE BANK marks for “banking and financing services.” CC Serve, the credit card company, argued that Apex’s proposed marks were confusingly similar to its own ASPIRE mark, which has been used in connection with credit card services since 1996.The Trademark Trial and Appeal Board (TTAB) reviewed the opposition and sustained it under Section 2(d) of the Lanham Act, finding that there was a likelihood of consumer confusion between the marks. The Board analyzed several factors from the E. I. DuPont DeNemours & Co. case, including the similarity of the services and the marks themselves, and concluded that the services were highly similar and that confusion was likely. Apex Bank appealed the TTAB’s decision to the United States Court of Appeals for the Federal Circuit.The United States Court of Appeals for the Federal Circuit affirmed the TTAB’s finding that the parties’ services are highly similar, upholding the Board’s analysis of the second DuPont factor. However, the appellate court found that the Board erred in its analysis of the sixth DuPont factor by narrowly considering only marks used for credit card services, rather than similar marks used for broader banking and financing services. The court also vacated the Board’s analysis of the first DuPont factor, as reconsideration of the sixth factor could affect the assessment of the marks’ commercial impression. The case was affirmed in part, vacated in part, and remanded for further proceedings consistent with the appellate court’s opinion. View "Apex Bank v. CC Serve Corp." on Justia Law

Trader Joe’s, a national grocery store chain, has used its distinctive trademarks, including a unique red typeface and logo, since 1967 and does not franchise or license these marks. The company also sells branded merchandise such as reusable tote bags. Trader Joe’s United, a labor union representing some of Trader Joe’s employees, began selling merchandise—including tote bags, apparel, mugs, and buttons—on its website, allegedly using Trader Joe’s trademarks and design elements. Trader Joe’s sent cease-and-desist letters, objecting only to the union’s commercial use of its marks on merchandise, not to the union’s use of the company name for identification or advocacy. The union refused to comply, and Trader Joe’s filed suit, alleging trademark infringement, dilution, and related claims.The United States District Court for the Central District of California granted the union’s motion to dismiss the complaint with prejudice, finding no plausible likelihood of consumer confusion under the Sleekcraft factors and concluding that the Norris-LaGuardia Act (NLGA) barred injunctive relief because the dispute arose from a labor dispute. The district court also dismissed the trademark dilution claim under the nominative fair use doctrine and awarded attorneys’ fees to the union, finding the suit frivolous and improperly motivated.The United States Court of Appeals for the Ninth Circuit reversed the dismissal of the trademark infringement claim, holding that, when viewing the allegations in the light most favorable to Trader Joe’s, the district court erred in its application of the Sleekcraft likelihood-of-confusion test. The appellate court also held that the district court erred in dismissing the dilution claim without proper analysis and in concluding that the NLGA categorically barred injunctive relief at the pleading stage. The Ninth Circuit vacated the attorneys’ fees award and remanded for further proceedings. View "TRADER JOE'S COMPANY V. TRADER JOES UNITED" on Justia Law

Two brothers, Tom and Robert Hoffmann, were formerly partners in a family heating and air conditioning business. After Robert bought out Tom’s interest, they settled their disputes in state court with an agreement that included a four-year prohibition on Tom’s use of the “Hoffmann” name in any HVAC business, as well as non-disparagement and non-solicitation clauses. After the four-year period, Tom started a new company, Hoffmann Air Conditioning & Heating, LLC, using the family name. Robert and his company, Hoffmann Brothers Heating and Air Conditioning, Inc., objected and filed suit in federal court, alleging copyright infringement, trademark infringement, unfair competition, and breach of contract.The United States District Court for the Eastern District of Missouri granted summary judgment to Tom and his company on the copyright claim, finding insufficient evidence of damages or a causal link between the alleged infringement and any profits. The remaining claims proceeded to a jury trial, which resulted in a mixed verdict largely favoring Tom and his company on the trademark and unfair competition claims. Both sides sought attorney fees, but the district court denied all requests.On appeal, the United States Court of Appeals for the Eighth Circuit reviewed the district court’s rulings. The appellate court affirmed the summary judgment on the copyright claim, holding that the evidence of damages and profits was too speculative. It also upheld the jury instructions and verdict on the trademark claims, finding the instructions properly reflected the law regarding customer sophistication and initial-interest confusion. The court agreed that ambiguity in the settlement agreement’s language about post-four-year use of the Hoffmann name was a factual question for the jury. Finally, the court affirmed the denial of attorney fees to Robert, as he had not personally incurred any fees. The judgment of the district court was affirmed in all respects. View "Hoffmann Bros. Heating & Air v. Hoffmann Air & Heating" on Justia Law

Ripple Analytics Inc. operated a software platform for human resources functions and originally owned the federal trademark for the word “RIPPLE®” in connection with its software. In April 2018, Ripple assigned all rights, title, and interest in its intellectual property, including the trademark, to its Chairman and CEO, Noah Pusey. Meanwhile, People Center, Inc. began using the name “RIPPLING” for similar software, though it abandoned its own trademark registration effort. Ripple later sued People Center for trademark infringement and unfair competition, claiming ownership of the RIPPLE® mark.The United States District Court for the Eastern District of New York reviewed the case. During discovery, Ripple produced the assignment agreement showing that Pusey, not Ripple, owned the trademark. People Center moved to dismiss under Federal Rule of Civil Procedure 17, arguing Ripple was not the real party in interest. The district court dismissed Ripple’s trademark infringement claim with prejudice, dismissed its unfair competition claims without prejudice for lack of standing, and denied Ripple’s motion to amend its complaint, finding the proposed amendment futile because it did not resolve the standing issue.On appeal, the United States Court of Appeals for the Second Circuit affirmed the district court’s judgment. The appellate court held that Ripple was not the real party in interest for the trademark infringement claim, as ownership had been assigned to Pusey, who failed to ratify or join the action. The court also held that Ripple lacked standing to pursue unfair competition claims under federal and state law, as it no longer had a commercial interest in the trademark. The denial of Ripple’s motion to amend was upheld because the amendment would not cure the standing defect. The court further found that the district court’s interlocutory order allowing People Center to amend its answer was not properly before it on appeal. View "Ripple Analytics Inc. v. People Center, Inc." on Justia Law

Erik Brunetti applied to register the word “FUCK” as a trademark for various goods and services, including sunglasses, jewelry, bags, and retail store services. After initial refusals based on the mark being “immoral or scandalous”—a ground later found unconstitutional by the Supreme Court in Iancu v. Brunetti—the United States Patent and Trademark Office (PTO) reexamined the applications. The PTO’s examining attorney refused registration, finding that the term was a widely used, commonplace word that failed to function as a trademark because consumers would not perceive it as identifying the source of the goods or services.The Trademark Trial and Appeal Board (TTAB) affirmed the refusals, concluding that the mark did not serve as a source indicator. The Board reasoned that “FUCK” is an “all-purpose word” with many recognized meanings and is commonly used on similar goods by various sources, so it would not be seen by consumers as distinguishing Brunetti’s products from others. The Board also rejected Brunetti’s constitutional arguments and his reliance on other registered marks, stating that each application must be considered on its own merits.On appeal, the United States Court of Appeals for the Federal Circuit reviewed the Board’s decision under the standards of the Administrative Procedure Act. The court rejected most of Brunetti’s arguments but found that the Board failed to articulate a clear and rational standard for when an “all-purpose word” like “FUCK” can or cannot function as a trademark, especially given the existence of similar registered marks. The Federal Circuit vacated the Board’s decision and remanded for further proceedings, holding that the Board must provide a satisfactory explanation and coherent guidance for its actions. View "In Re BRUNETTI " on Justia Law

Lance Hara, professionally known as Vicky Vox, sued Netflix, Inc. and others connected with the animated show Q-Force under the Lanham Act. Vox alleged that an animated version of her likeness appeared in a ten-second scene in the show, as well as in the official teaser and a still image promoting the series. She claimed that the unauthorized use of her image and likeness led viewers to believe that she endorsed Q-Force, constituting unfair competition and false endorsement under 15 U.S.C. § 1125.The United States District Court for the Central District of California dismissed Vox’s federal claims with prejudice, finding that Q-Force and its official teaser were expressive works entitled to heightened First Amendment protection under the Rogers test. The district court concluded that Vox failed to state a claim under the Lanham Act. The court also dismissed Vox’s state law claims for lack of subject-matter jurisdiction. Vox appealed the decision.The United States Court of Appeals for the Ninth Circuit affirmed the district court’s dismissal. The court held that following the Supreme Court’s decision in Jack Daniel’s Properties, Inc. v. VIP Products LLC, the Rogers test applies when the challenged mark in an artistic work is used not to designate a work’s source but solely to perform some other expressive function. The court concluded that the defendants’ alleged use of Vox’s image and likeness in Q-Force did not suggest or identify Vox as a source or origin of the show. Under the Rogers test, the use of Vox’s likeness had artistic relevance to Q-Force, and there was no overt claim or explicit misstatement that Vox was the source of Q-Force. Therefore, Vox failed to satisfy either prong of the Rogers test. The Ninth Circuit affirmed the district court’s decision. View "HARA V. NETFLIX, INC." on Justia Law

Yuga Labs, Inc. created the Bored Ape Yacht Club (BAYC) NFT collection, which became highly popular and valuable. Defendants Ryder Ripps and Jeremy Cahen created a nearly identical NFT collection called Ryder Ripps Bored Ape Yacht Club (RR/BAYC), using the same images and identifiers as Yuga's BAYC NFTs. Yuga sued for trademark infringement and cybersquatting, while Defendants countersued under the Digital Millennium Copyright Act (DMCA) and sought declaratory relief that Yuga had no copyright protection over the Bored Apes.The United States District Court for the Central District of California dismissed Defendants' declaratory-judgment counterclaims for lack of subject-matter jurisdiction and granted summary judgment for Yuga on its trademark infringement and cybersquatting claims, as well as on Defendants' DMCA counterclaim. The court then held a bench trial on remedies, enjoining Defendants from using the BAYC marks and awarding Yuga over $8 million in disgorgement of profits, statutory damages, attorney fees, and costs.The United States Court of Appeals for the Ninth Circuit reviewed the case. The court held that NFTs can be trademarked under the Lanham Act as they are considered "goods." However, the court reversed the district court's grant of summary judgment for Yuga on its trademark infringement and cybersquatting claims, concluding that Yuga did not prove as a matter of law that Defendants' actions were likely to cause consumer confusion. The court found that Defendants' use of Yuga's marks did not constitute nominative fair use and was not protected by the First Amendment. The court affirmed the district court's rejection of Defendants' DMCA counterclaim and the dismissal of their declaratory-judgment claims with prejudice. The case was remanded for further proceedings. View "Yuga Labs, Inc. v. Ripps" on Justia Law

Sunkist Growers, Inc. ("Sunkist") opposed Intrastate Distributors, Inc.'s ("IDI") applications to register the mark KIST in standard characters and a stylized form for soft drinks, arguing a likelihood of confusion with its registered SUNKIST marks. Sunkist has offered SUNKIST branded beverages for at least ninety years and owns multiple SUNKIST trademark registrations. IDI, a bottling company, purchased the KIST brand in 2009 and has used it for various soda products.The United States Trademark Trial and Appeal Board ("Board") dismissed Sunkist's opposition, finding no likelihood of confusion between IDI's KIST marks and Sunkist's SUNKIST marks. The Board analyzed the DuPont factors and found that while the similarity of goods, trade channels, conditions of sale, and strength of Sunkist's mark favored a likelihood of confusion, the similarity of the marks and actual confusion factors did not. The Board concluded that the different commercial impressions of the marks (KIST referencing a kiss and SUNKIST referencing the sun) and the lack of reported instances of confusion outweighed the other factors.The United States Court of Appeals for the Federal Circuit reviewed the Board's decision. The court found that the Board's conclusion regarding the different commercial impressions of the marks was not supported by substantial evidence. The court noted that the KIST mark did not consistently include a lips image and that the SUNKIST mark was often used without a sun design. The court concluded that the similarity of the marks favored a likelihood of confusion and that the Board's finding of no likelihood of confusion was incorrect. The court reversed the Board's decision, holding that IDI's KIST marks are likely to cause confusion with Sunkist's registered SUNKIST marks. View "Sunkist Growers, Inc. v. Intrastate Distributors, Inc." on Justia Law

CPI Security Systems, Inc. filed a lawsuit against Vivint Smart Home, Inc., alleging that Vivint engaged in deceptive practices to lure away CPI’s customers. Vivint sales representatives falsely claimed that Vivint had acquired CPI, that CPI was going out of business, or that Vivint needed to upgrade CPI’s equipment. These tactics led many CPI customers to switch to Vivint, causing significant losses for CPI. A jury found Vivint liable for violating the Lanham Act, the North Carolina Unfair and Deceptive Trade Practices Act (UDTPA), and for committing the common-law torts of unfair competition and tortious interference with contracts. The jury awarded CPI $49.7 million in compensatory damages and $140 million in punitive damages.The United States District Court for the Western District of North Carolina upheld the jury’s verdict. Vivint appealed, raising several issues, including the requirement of CPI’s reliance on false statements for the UDTPA claim, the sufficiency of evidence supporting the damages award, the application of North Carolina’s cap on punitive damages, and the admission of prejudicial evidence.The United States Court of Appeals for the Fourth Circuit reviewed the case and found no reversible error. The court held that CPI was not required to prove its own reliance on Vivint’s false statements to establish a UDTPA claim, as the claim was based on unfair competition rather than fraud. The court also found that the evidence presented by CPI was sufficient to support the jury’s damages award. Additionally, the court ruled that the district court correctly applied North Carolina’s cap on punitive damages by considering the total compensatory damages awarded. The court further held that the district court did not abuse its discretion in denying Vivint’s motion to bifurcate the trial or in its evidentiary rulings. The reassignment of the trial judge post-trial did not warrant a new trial. Consequently, the Fourth Circuit affirmed the district court’s judgment. View "CPI Security Systems, Inc. v. Vivint Smart Home, Inc." on Justia Law