Justia Trademark Opinion Summaries

SM Kids filed suit against Google and related entities, seeking to enforce a 2008 agreement settling a trademark dispute over the Googles trademark. The agreement prohibited Google from intentionally making material modifications to its then-current offering of products and services in a manner that is likely to create confusion in connection with Googles. The district court concluded that the trademark assignment was invalid, and dismissed for lack of subject-matter jurisdiction.The Second Circuit vacated the district court's judgment and held that the validity of the trademark was not a jurisdictional matter related to Article III standing but was instead a merits question properly addressed on a motion under Federal Rule of Civil Procedure 12(b)(6), a motion for summary judgment, or at trial. In this case, the district court erroneously resolved Google's motion as a fact-based motion under Rule 12(b)(1) and considered evidence beyond the complaint, as well as placed on SM Kids the burden of proving subject-matter jurisdiction. Accordingly, the court remanded for further proceedings. View "SM Kids, LLC v. Google LLC" on Justia Law

Apple owns Madison, Wisconsin vitamin stores. Knott, a former Apple employee, was fired in 2017. Knott founded his own vitamin shop, Embrace Wellness, in Middleton, Wisconsin. Embrace allegedly shared design features and a similar layout with Apple’s locations and carried comparable products. Apple sued, alleging infringement of its trademark, trade dress, and copyrights. The defendants filed counterclaims for tortious interference and retaliation. Apple sought a preliminary injunction on the trademark and trade dress claims, which the court denied, explaining that Apple had failed to show a likelihood of irreparable harm. Apple then moved to dismiss its own claims without prejudice. Because the defendants had already expended resources litigating an injunction, the court ordered Apple to withdraw its motion or accept dismissal with prejudice, expressing its opinion that no party’s claim was strong. Apple agreed to dismiss its claims with prejudice.The court subsequently denied defendants’ motion for fees; they appealed with respect to the copyright claims. The Seventh Circuit affirmed. Apple’s copyright claims were frivolous—common-law copyright was abolished in 1976—but the totality of the circumstances did not warrant fees. There was no evidence that Apple had filed suit with an improper motive, and no need to deter future frivolous filings. The case was primarily about trademark and trade dress. no motions were filed related to copyright. Apple dismissed the copyright claims voluntarily before defendants had to argue against them. View "Timothy B. O'Brien LLC v. Knott" on Justia Law

Munchkin sued LNC for trademark infringement and unfair competition claims based on LNC’s spill-proof drinking containers. A year later, the court allowed Munchkin to amend the complaint to include new trademark infringement claims, trade dress infringement claims, and patent infringement claims based on the 993 patent which is directed to a spill-proof drinking container. While the litigation was ongoing, Munchkin voluntarily dismissed all of its non-patent claims with prejudice. Munchkin’s 993 patent was held unpatentable through an inter partes review initiated by LNC. The Federal Circuit affirmed that Patent Trial and Appeal Board decision; Munchkin then dismissed its patent infringement claims. The district court subsequently granted LNC’s motion for attorney’s fees under 35 U.S.C. 285 and 15 U.S.C. 1117(a), finding the case to be “exceptional” because the trademark and trade dress infringement claims were substantively weak, and Munchkin should have been aware of the substantive weakness of its patent’s validity.The Federal Circuit reversed. LNC’s fee motion insufficiently presented the required facts and analysis needed to establish that Munchkin’s patent, trademark, and trade dress infringement claims were so substantively meritless to render the case exceptional. None of those issues were fully adjudicated before the court on the merits; the district court abused its discretion in granting the motion. View "Munchkin, Inc. v. Luv n' Care, Ltd." on Justia Law

Quincy’s Prevagen® dietary supplement is sold at stores and online. Quincy registered its Prevagen® trademark in 2007. Ellishbooks, which was not authorized to sell Prevagen®, sold supplements identified as Prevagen® on Amazon.com, including items that were in altered or damaged packaging; lacked the appropriate purchase codes or other markings that identify the authorized retail seller; and contained tags from retail stores. Quincy sued under the Lanham Act, 15 U.S.C. 1114. Ellishbooks did not respond. The court entered default judgment. Ellishbooks identified no circumstances capable of establishing good cause for default. The district court entered a $480,968.13 judgment in favor of Quincy, plus costs, and permanently enjoined Ellishbooks from infringing upon the PREVAGEN® trademark and selling stolen products bearing the PREVAGEN® trademark.The Seventh Circuit affirmed and subsequently awarded Rule 38 sanctions. Ellishbooks’ appellate arguments had virtually no likelihood of success and its conduct during the course of the appeal was marked by several failures to timely respond and significant deficiencies in its filings. These shortcomings cannot be attributed entirely to counsel’s lack of experience in litigating federal appeals. A review of the dockets suggests that Ellishbooks has attempted to draw out the proceedings as long as possible while knowing that it had no viable substantive defense. View "Quincy Bioscience, LLC v. Ellishbooks" on Justia Law

The Eighth Circuit affirmed the district court's findings of fact and conclusions of law in this trademark infringement case over the word mark "Lawn Managers." In this case, the licensing agreement was the result of a divorce and provided that husband and wife would, in effect, operate parallel, almost identical companies using the same name and similar equipment and vehicles but in different zip codes.The court agreed with the district court that Progressive has not met its high burden of proving that Lawn Managers abandoned its mark through naked licensing. Therefore, the district court properly found that wife could reasonably rely on husband's own quality control efforts and thus met the duty of control as licensor. The court held that the terms of the licensing agreement, combined with the couple's successful operation of the Lawn Managers business for over 17 years and the lack of any evidence of quality deviations at Progressive, were sufficient to support the district court's finding of reasonable reliance. Furthermore, the court held that the district court was within its discretion to conclude that the Lawn Managers mailer did not support Progressive's unclean hands defense. Finally, the district court did not clearly err in its damages award. View "Lawn Managers, Inc. v. Progressive Lawn Managers, Inc." on Justia Law

Lanard owns Design Patent D167 and the 458 copyright for a work entitled “Pencil/Chalk Holder,” relating to a toy chalk holder designed to look like a pencil. Lanard sold the Chalk Pencil, marked to indicate Lanard’s copyright and patent protections, to national retailers. Ja-Ru designed a toy chalk holder, using the Chalk Pencil as a reference sample. Lanard’s retailers stopped ordering the Chalk Pencil and began ordering Ja-Ru’s product. Lanard sued, asserting copyright infringement, design patent infringement, trade dress infringement, and statutory and common law unfair competition.The Federal Circuit affirmed summary judgment that Ja-Ru’s product does not infringe the patent, that the copyright is invalid and alternatively not infringed, and that Ja-Ru’s product does not infringe Lanard’s trade dress. Lanard’s unfair competition claims failed because its other claims failed. The district court properly construed the claims commensurate with the statutory protection for an ornamental design. Lanard impermissibly seeks to exclude any chalk holder in the shape of a pencil and extend the scope of the patent beyond the “new, original and ornamental design,” 35 U.S.C. 171. Lanard’s copyright is for the chalk holder itself; Lanard’s arguments seek protection for the dimensions and shape of the useful article itself. Because the chalk holder itself is not copyright protectable, Lanard cannot demonstrate that it holds a valid copyright. Lanard cannot establish that the Chalk Pencil has acquired secondary meaning. View "Lanard Toys Ltd. v. Dolgencorp LLC" on Justia Law

Lucky Brand and Marcel market clothing. Marcel registered the trademark “Get Lucky.” Lucky Brand registered the trademark “Lucky Brand” and other marks with the word “Lucky.” In a 2003 settlement agreement, Lucky Brand agreed to stop using the phrase “Get Lucky.” Marcel released its claims regarding Lucky Brand’s use of its other trademarks.In 2005, Lucky Brand sued Marcel for violating its trademarks. Marcel filed counterclaims turning on Lucky Brand’s continued use of “Get Lucky,” but did not claim that Lucky Brand’s use of its other marks alone infringed that mark. The court enjoined Lucky Brand from copying or imitating Marcel’s “Get Lucky” mark.In 2011, Marcel sued Lucky Brand, arguing only that Lucky Brand’s post-2010 use of Lucky Brand’s other marks infringed Marcel’s “Get Lucky” mark. Marcel did not allege that Lucky Brand continued to use "Get Lucky." Lucky Brand argued, for the first time since early in the 2005 Action, that Marcel had released those claims in the settlement agreement. The Second Circuit vacated the dismissal of the action, concluding that “defense preclusion” prohibited Lucky Brand from raising that unlitigated defense.A unanimous Supreme Court reversed. Any preclusion of defenses must, at a minimum, satisfy the strictures of issue preclusion or claim preclusion. Here, issue preclusion does not apply, so the causes of action must share a “common nucleus of operative fact[s]” for claim preclusion to apply. The 2005 claims depended on Lucky Brand’s alleged use of “Get Lucky.” In the 2011 suit, Marcel alleged that the infringement was Lucky Brand’s use of its other marks containing the word “Lucky,” not any use of “Get Lucky” itself. The conduct in the 2011 suit occurred after the conclusion of the 2005 suit. View "Lucky Brand Dungarees, Inc. v. Marcel Fashions Group, Inc." on Justia Law

ETS filed a trademark infringement action against Scarpello over the "Engineered Tax Services" mark under the Lanham Act. The district court held that the mark lacked distinctiveness and granted summary judgment in favor of Scarpello.The Eleventh Circuit reversed, holding that the district court erred in concluding, as a matter of law, that ETS's mark was not suggestive, but merely descriptive—and thus invalid. Furthermore, the district court failed to consider whether the mark might also have acquired any protectible secondary meaning or whether any actionable infringement occurred. The court held that a jury could reasonably find the mark inherently distinctive and remanded for further proceedings. View "Engineered Tax Services, Inc. v. Scarpello Consulting, Inc." on Justia Law

In 2019, Anheuser-Busch began to advertise that its beer, Bud Light, is made using rice, while Miller Lite and Coors Light use corn syrup as a source of sugar that yeast ferments into alcohol. Molson Coors responded by advertising that its beers taste be]er because of the difference between rice and corn syrup. In a lawsuit, Molson contended that Anheuser-Busch violated section 43 of the Lanham Act, 15 U.S.C. 1125, by implying that a product made from corn syrup also contains corn syrup. After a remand, the district court issued an injunction.The Seventh Circuit affirmed to the extent that the order denied Molson’s request for an injunction and reversed to the extent that the Bud Light advertising or packaging was enjoined. To the extent that the injunction prevents Anheuser-Busch from stating that Miller Lite or Coors Light “contain” corn syrup, it was vacated; Anheuser-Busch has never stated this nor said that it wants to do so but only made the true statement that “their beer is made using corn syrup and ours isn’t.” View "Molson Coors Beverage Co. v. Anheuser-Busch Companies, LLC" on Justia Law

The Second Circuit affirmed the district court's dismissal of plaintiff's action seeking a declaratory judgment adjudicating the validity of defendants' trademark registrations relating to the "SULKA" mark.The court held that, before a court may entertain an action for declaratory relief in the context of trademarks, the plaintiff must allege that he has taken some action showing that he has both the "definite intent and apparent ability to commence use of the marks on the product." In this case, the court held that defendant's allegations are too vague to support the exercise of federal jurisdiction. The court explained that the only allegation that does relate to the U.S. market is plaintiff's application to register the mark in the United States. However, while his allegation is certainly relevant to the matter of intent, it has little bearing on plaintiff's ability to transition his business to the United States and there were significant reasons for the district court to be skeptical that he was, in fact, prepared to enter the U.S. market. View "Saleh v. Sulka Trading Ltd." on Justia Law