Justia Trademark Opinion Summaries

The Ninth Circuit affirmed the district court's grant of summary judgment in favor of Apple in a trademark infringement action brought by Social Tech over the use of the MEMOJI mark. The panel held that mere adoption of a mark without bona fide use in commerce, in an attempt to reserve rights for the future, is insufficient to establish rights in the mark under the Lanham Act. The panel explained that Social Tech failed to put forward evidence that the release of its Memoji application to the public was for genuine commercial purposes warranting trademark protection and thus it failed to establish a triable issue regarding whether it engaged in a bona fide use of the mark in commerce within the meaning of the Lanham Act.The panel considered the totality of the circumstances and concluded that, while at the time of its original intent-to-use filing, Social Tech may have had some commercial intent to develop the Memoji application, at the time it filed its Statement of Use, its use of the MEMOJI mark was made merely to reserve a right in the mark. Because Social Tech did not engage in bona fide use of the MEMOJI mark in commerce, its registration is invalid, and Apple is entitled to cancellation of Trademark Registration No. 5,566,242. View "Social Technologies LLC v. Apple Inc." on Justia Law

Alliance and Coalition are nonprofit organizations that endorse political candidates in New Orleans. Alliance filed suit against Coalition, seeking to enjoin use of its trade name and logo for federal trademark infringement under the Lanham Act, state trademark infringement, and unfair trade practices. The district court subsequently joined Darleen Jacobs as a third party to the case.The Fifth Circuit affirmed the district court's award of attorney's fees to Alliance for federal trademark infringement under the Lanham Act. The court concluded that the district court's procedure for joining Jacobs met the demands of due process, and the district court did not abuse its discretion in holding her directly liable for the fee award. The court found it appropriate to extend the interpretation of the Patent Act fee-shifting provision to its interpretation of the Lanham Act and found that district courts do have the authority to award appellate fees under the Lanham Act. The court concluded that the district court's decision to award fees for further litigation of the attorney's fee award did not contravene the mandate rule; even if appellants are correct that Alliance's billing entries are flawed, the proper remedy is "a reduction of the award by a percentage intended to substitute for the exercise of billing judgment," which the district court did; and the district court considered each of appellants' objections to Alliance's fees motion. Finally, the court declined to address appellants' First Amendment argument, which was not addressed in Alliance I. View "Alliance for Good Government v. Coalition for Better Government" on Justia Law

Atlas Movers federally registered the “Atlas” mark for “transportation of household goods of others,” first using “Atlas” in 1948 when it formed Atlas Van Lines, providing transportation and logistics services, primarily moving household goods. Since 1970, its division, STG, has provided logistics services for non-household goods shipments. Atlas Movers eventually focused more on logistics, forming Atlas Relocation Services in 1995. In 2007, Atlas Movers began marketing its service as “Atlas Logistics.” and renamed its logistics company Atlas Logistics, which can ship, or arrange the shipment of, any commodity.Eaton manufactures and distributes steel. Eaton created Atlas Trucking in 1999, then expanded to ship goods other than steel and metal for companies in addition to its own. It developed Atlas Logistics in 2003 as an adjunct to Atlas Trucking. Eaton knew of Atlas Van Lines. Atlas Movers sued in 2017 for infringement. Eaton answered and counterclaimed that it owned the Atlas Logistics mark.The Sixth Circuit affirmed a judgment in favor of Atlas Movers, upholding findings that Atlas Movers marketed “Atlas” to an extent that the public recognized it, that the parties’ services are related because they engage in at least some of the same transportation services, that the marks were functionally identical, and that there was actual confusion. View "AWGI, LLC v. Atlas Trucking Co., LLC" on Justia Law

Plaintiffs are the owners of the heavily advertised Select Comfort and Sleep Number brands of adjustable air mattresses and defendants are online retailers of their own brand of lower-priced adjustable beds. Plaintiffs alleged that defendants used similar and identical marks in several different capacities online to sell competing products, and that defendants compounded internet-related confusion by making fraudulent misrepresentations and failing to dispel confusion when consumers contacted defendants' call centers. After a trial resulted in a mixed verdict, both sides appealed.The Eighth Circuit reversed and concluded that the district court erred by finding as a matter of law that the relevant consumers were sophisticated and that a theory of initial-interest confusion could not apply. Therefore, the court concluded, based on Insty*Bit, Inc. v. Poly-Tech Indus., 95 F.3d 663, 671–72 (8th Cir. 1996), that limiting the infringement instruction to require confusion at the time of purchase was error. Given the strength of plaintiffs' evidence on the issue of confusion, the court cannot conclude that the summary judgment and instructional errors were harmless.In regard to the false advertising claim, the court concluded that the district court erred by instructing the jury in a manner that shifted the burden of proof on the materiality element based on a finding of literal falsity. Furthermore, based on the specific jury forms returned in this case, the court did not find the error to be harmless as to those claims where plaintiffs prevailed. Accordingly, the court reversed and remanded for a new trial on the seven false advertising claims on which plaintiffs prevailed. In regard to the remaining issues, the court concluded that the district court did not abuse its substantial discretion in refusing to permit amendment of the counterclaim after the close of discovery and on the eve of trial; the court noted that an expert's testimony as to the structure and meaning of survey evidence or other factual matters generally should not usurp the court's role in defining the law for the jury; the court concluded that any infirmities as to the demonstration bed go to the weight rather than the admissibility of the evidence; and the jury instructions did not impermissibly shift the burden of proof on defendants' cross claim seeking a declaration that plaintiffs held no trademark rights in the phrase "NUMBER BED." View "Select Comfort Corp. v. Baxter" on Justia Law

Ironhawk filed suit against Dropbox for trademark infringement and unfair competition, alleging that Dropbox's use of the name Smart Sync intentionally infringes on Ironhawk's SmartSync trademark and is likely to cause confusion among consumers as to the affiliation of Ironhawk's product with Dropbox. After the district court concluded that Ironhawk could not prevail because a reasonable trier of fact could not find a likelihood of consumer confusion, Ironhawk appealed based on a theory of reverse confusion.The Ninth Circuit held that there was a genuine dispute of material fact as to the likelihood of consumer confusion under a reverse confusion theory of infringement and thus reversed the district court's grant of summary judgment for Dropbox, vacating the judgment, and remanding for trial. The panel first concluded that a reasonable jury could find that Ironhawk's potential consumers include commercial customers. Applying the Sleekcraft factors, the panel then concluded that a reasonable trier of fact could find a likelihood of confusion. Therefore, Dropbox has not met its high burden of establishing that no genuine disputes of material fact exist as to the likelihood of confusion between Smart Sync and SmartSync. View "Ironhawk Technologies, Inc. v. Dropbox, Inc." on Justia Law

Plaintiff filed suit against Heinz for trademark infringement, trademark counterfeiting, false designation of origin, and for violations of various Louisiana trademark laws. Heinz filed a counterclaim to have plaintiff's Metchup trademark registration canceled for abandonment or nonuse. The claims relate to plaintiff's mayonnaise and ketchup product and Heinz's Mayochup product. The district court dismissed plaintiff's claims because it found that there was no likelihood of confusion between Mayochup and Metchup and no confusion caused by Heinz's fleeting use of Metchup in advertising. The district court also canceled plaintiff's trademark registration after concluding that he failed to prove that he had made lawful, non-de minimis use of the Metchup mark in commerce.The Fifth Circuit affirmed the district court's dismissal of plaintiff's claims against Heinz, agreeing with the district court that there is little chance that a consumer would confuse plaintiff's Metchup with Heinz's Mayochup or be confused by Heinz's use of Metchup in advertising. However, the court vacated the district court's cancelation of plaintiff's trademark and remanded for further proceedings. The court explained that because plaintiff sold some Metchup and testified that he hoped to sell more, a finder of fact should determine whether his incontestable trademark should be deemed abandoned and canceled. View "Perry v. H. J. Heinz Company Brands, LLC" on Justia Law

The waiver language in 15 U.S.C. 1071 relates only to the choice of review options for the decision appealed from. The Fourth Circuit held that a party seeking review of a subsequent Trademark Board decision may seek review in either the Federal Circuit or the district court, even if the Trademark Board's initial decision was reviewed by the Federal Circuit.In this case, the parties' dispute concerns the registration of the mark "PRETZEL CRISPS." Plaintiff sought to register the mark in 2004, but the trademark examiner denied registration. Plaintiffs reapplied for registration in 2009, but Frito-Lay opposed the registration and argued that "PRETZEL CRISPS" was generic for pretzel crackers and not registrable. The Trademark Board sided with Frito-Lay in 2014. Plaintiffs opted for the section 1071(a) route and appealed the Trademark Board's 2014 decision to the Federal Circuit. The Federal Circuit agreed with plaintiffs in 2015, remanding to the Trademark Board. On remand in 2017, the Trademark Board again concluded that "PRETZEL CRISPS" was generic, and alternatively concluded that "PRETZEL CRISPS" lacked distinctiveness. Plaintiffs sought review of the Trademark Board's 2017 decision, but the district court dismissed the case without prejudice for lack of subject matter jurisdiction. The Fourth Circuit reversed the district court's judgment dismissing the case for lack of subject matter jurisdiction and remanded for further proceedings. The court explained that the statutory text of the Lanham Act, while ambiguous, favors plaintiffs' argument in favor of jurisdiction. Furthermore, this conclusion is bolstered by legislative history, the court's sister circuits' holdings in similar cases, and policy considerations. The court remanded for further proceedings. View "Snyder's-Lance, Inc. v. Frito-Lay North America, Inc." on Justia Law

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

Redbubble operates a global online marketplace. Around 600,000 independent artists, not employed by Redbubble, upload images onto Redbubble’s interface. Consumers scroll through those images and order customized items. Once a consumer places an order, Redbubble notifies the artist and arranges the manufacturing and shipping of the product with independent third parties. Redbubble never takes title to any product shown on its website and does not design, manufacture, or handle these products. The shipped packages bear Redbubble's logo. Redbubble handles customer service, including returns. Redbubble markets goods listed on its website as Redbubble products; for instance, it provides instructions on how to care for “Redbubble garments.” Customers often receive goods from Redbubble’s marketplace in Redbubble packaging.Some of Redbubble’s artists uploaded trademark-infringing images that appeared on Redbubble’s website; consumers paid Redbubble to receive products bearing images trademarked by OSU. Redbubble’s user agreement states that trademark holders, and not Redbubble, bear the burden of monitoring and redressing trademark violations. Redbubble did not remove the offending products from its website. OSU sued, alleging trademark infringement, counterfeiting, and unfair competition under the Lanham Act, and Ohio’s right-of-publicity law. The district court granted Redbubble summary judgment. The Sixth Circuit reversed. Redbubble’s marketplace involves creating Redbubble products and garments that would not have existed but for Redbubble’s enterprise. The district court erred by entering summary judgment under an overly narrow reading of the Lanham Act. View "The Ohio State University v. Redbubble, Inc." on Justia Law

LHO owns a downtown hotel that it rebranded as “Hotel Chicago” in 2014. In 2016, Rosemoor renamed its existing westside hotel as “Hotel Chicago.” LHO sued Rosemoor for trademark infringement and unfair competition under the Lanham Act and for deceptive advertising and common-law trademark violations under Illinois law. The district court denied preliminary injunctive relief, finding that “LHO has failed, at this juncture, to show that it is likely to succeed in proving secondary meaning" and was unlikely to show that “Hotel Chicago” was a protectable trademark. LHO appealed but successfully moved to voluntarily dismiss its claims with prejudice before briefing.Rosemoor requested more than $500,000 in attorney fees, arguing that the case qualified as “exceptional.” The district court denied the request under the Seventh Circuit's “abuse-of-process” standard. The Seventh Circuit held that the district court should have evaluated Rosemoor’s attorney-fee request under the Supreme Court’s “Octane Fitness” holding. On remand, Rosemoor filed a renewed request for more than $630,000 in fees, arguing that the weakness of LHO’s position on the merits, LHO’s motives in bringing suit, and its conduct in discovery, made the case exceptional under Octane Fitness. The Seventh Circuit affirmed the denial of the request. The district court applied the Octane Fitness standard and reasonably exercised its discretion in weighing the evidence before it. View "LHO Chicago River, L.L.C. v. Rosemoor Suites, LLC" on Justia Law