Justia Trademark Opinion Summaries

Quincy develops and sells dietary supplements. Its Prevagen® product is sold through brick‐and‐mortar stores and online. Quincy registered its Prevagen® trademark in 2007. Ellishbooks, which was not authorized to sell Prevagen® products, sold dietary 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 of the product; and contained Radio Frequency Identification tags and security tags from retail stores. Quincy sued under the Lanham Act, 15 U.S.C. 1114. Ellishbooks did not answer the complaint. Ellishbooks opposed Quincy’s motion for default judgment, arguing that it had not been served properly and its Amazon.com products were “different and distinct” from the Quincy products The court entered default judgment, finding that Quincy had effected “legally adequate service.” Ellishbooks identified no circumstances capable of establishing good cause for default. Quincy had subpoenaed and submitted documents from Amazon.com establishing that Ellishbooks had received $480,968.13 in sales from products sold as Prevagen®.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, rejecting arguments that the district court failed to make “factual findings on decisive issues” and erred in holding that Ellishbook knew or had reason to know that a portion of the Prevagen® products were stolen. View "Quincy Bioscience, LLC v. Ellishbooks" on Justia Law

Romag and Fossil signed an agreement to use Romag’s fasteners in Fossil’s leather goods. Romag eventually discovered that factories in China making Fossil products were using counterfeit Romag fasteners. Romag sued Fossil and certain Fossil retailers for trademark infringement, 15 U.S.C. 1125(a). Citing Second Circuit precedent, the district court rejected Romag’s request for an award of profits, because the jury, while finding that Fossil had acted callously, rejected Romag’s accusation that Fossil had acted willfully.The Supreme Court vacated. A plaintiff in a trademark infringement suit is not required to show that a defendant willfully infringed the plaintiff’s trademark as a precondition to a profits award. The Lanham Act provision governing remedies for trademark violations, section 1117(a), makes a showing of willfulness a precondition to a profits award in a suit under section 1125(c) for trademark dilution, but section 1125(a) has never required such a showing. The Act speaks often, expressly, and with considerable care about mental states, indicating that Congress did not intend to incorporate a willfulness requirement here obliquely. View "Romag Fasteners, Inc. v. Fossil, Inc." on Justia Law

In 2012, Stratus, a facilities-based telecommunications provider, applied to register the STRATUS mark. UBTA, also a telecommunications provider, owns the STRATA mark and opposed registration of the STRATUS mark on grounds of a likelihood of confusion with UBTA’s STRATA mark. The Trademark Trial and Appeal Board found a likelihood of confusion and refused registration of the STRATUS mark, 15 U.S.C. 1052. The Board concluded that six of the 13 “DuPont factors” were relevant and that two factors “weigh heavily in favor” of finding a likelihood of confusion, one factor “weighs in favor” of finding a likelihood of confusion, two factors are neutral, and one factor weighs “slightly” against finding a likelihood of confusion. The Federal Circuit affirmed the determination as supported by substantial evidence and is not otherwise legally erroneous. While the Board is required to consider each DuPont factor for which it has evidence, it may focus its analysis on dispositive factors, such as similarity of the marks and relatedness of the goods. The Board determined that “even careful purchasers are likely to be confused by similar marks used in connection with services that are, in part, legally identical.” View "Stratus Networks, Inc. v. UBTA-UBET Communications Inc." on Justia Law

Forney sells welding and machining products in packaging that displays its proposed mark. Forney applied for a trademark based on use in commerce under the Lanham Act, 15 U.S.C. 1051(a). Forney sought to register the mark without showing acquired distinctiveness, identifying its mark as a “color mark.” Forney stated: “[t]he mark consists of a solid black stripe at the top. Below the solid black stripe is the color yellow which fades into the color red. These colors are located on the packaging and or labels.” The examining attorney refused registration, finding the mark “not inherently distinctive” and stating that “[s]uch marks are registrable only ... with sufficient proof of acquired distinctiveness.” Forney revised the description: “The mark consists of the colors red into yellow with a black banner located near the top as applied to packaging for the goods. The dotted lines merely depict placement of the mark on the packing backer card.” The examining attorney again refused registration. The Trademark Trial and Appeal Board affirmed, treating the proposed mark as a color mark consisting of multiple colors applied to product packaging.The Federal Circuit vacated. The Board erred in finding that a color mark can never be inherently distinctive in the trade dress context and that, even if a color mark could be inherently distinctive, it cannot be absent a well-defined peripheral shape or border. View "In Re: Forney Industries, Inc." on Justia Law

Flexco sued for trade dress infringement and unfair competition, alleging that CAI infringed its registered and common law trade dress by promoting and selling conveyor belt fasteners with a product design that is confusingly similar to the product design of Flexco’s fasteners. Flexco cited the Lanham Act, 15 U.S.C. 1114 and 1125(a), and the Illinois Uniform Deceptive Trade Practices Act, 815 ILCS 510/2. CAI sought cancellation of Flexco’s registered trademarks and a declaratory judgment of invalidity, unenforceability, and noninfringement.The district court granted CAI summary judgment, holding that Flexco’s trade dress was functional. The Seventh Circuit affirmed. Flexco’s utility patent discloses the utilitarian benefits of the beveled center scallop and is strong evidence of the functionality of Flexco’s trade dress; that evidence is bolstered by Flexco’s own advertisements, internal communications, and statements to the Patent Office. Where functionality is established, there is no need to consider alternative design possibilities. View "Flexible Steel Lacing Co. v. Conveyor Accessories, Inc." on Justia Law

Safeway and its proprietor filed suit against DPB and its owner, alleging federal trademark infringement under the Lanham Act and deceptive trade practices under Minnesota state law. Safeway claimed that DPB infringed two unregistered description trademarks -- "Rent My Party Bus" and "952 Limo Bus." The district court permanently enjoined defendants from using the trademarks or related domain names, keywords, or hashtags in connection with the advertisement, marketing, or sale of transportation services. However, the district court denied plaintiffs' requests for disgorgement of profits and attorney's fees.The Eighth Circuit affirmed, holding that the district court's finding of no actual confusion and thus, no unjust enrichment, was not clearly erroneous; the district court did not erroneously place the burden of proof on Safeway to prove unjust enrichment; and Safeway bore the burden of proving DPB's sales. The court also held that the district court's findings, when taken in their totality, support its conclusion that Safeway is not entitled to a disgorgement of profits based on deterrence. In this case, the district court actually found that DPB held a good faith belief in its right to use the trademarks. Finally, the district court did not abuse its discretion in denying Safeway's request for disgorgement of profits, and did not abuse its discretion in denying Safeway's request for attorney's fees. View "Safeway Transit LLC v. Discount Party Bus, Inc." on Justia Law

VIP filed suit seeking a declaration that its "Bad Spaniels Silly Squeaker" toy did not infringe JDPI's trademark rights or, in the alternative, that Jack Daniel's trade dress and bottle design were not entitled to trademark protection. JDPI counterclaimed and alleged claims of trademark infringement and dilution.The Ninth Circuit affirmed the district court's grant of summary judgment to JDPI on the issues of aesthetic functionality and distinctiveness. The court held that the district court correctly found that Jack Daniel's trade dress and bottle design are distinctive and aesthetically nonfunctional, and thus entitled to trademark protection; VIP also failed to rebut the presumption of nonfunctionality and distinctiveness of the Jack Daniel's bottle design; the district court correctly rejected VIP's nominative fair use defense; and the district court correctly rejected VIP's request for cancellation of the registered mark and rejected VIP's nominative fair use defense.However, the panel held that the dog toy is an expressive work entitled to First Amendment protection. In this case, the district court erred in finding trademark infringement without first requiring JDPI to satisfy at least one of the two Rogers prongs. Therefore, the panel reversed the district court's judgment as to the dilution claim, vacated the judgment on the trademark infringement claim, and remanded for further proceedings. View "VIP Products LLC v. Jack Daniel's Properties, Inc." on Justia Law

Plaintiff appealed the district court's grant of summary judgment in favor of defendant on the grounds that plaintiff's trade dress registrations, which cover the shape and color scheme of its chicken feeder products, are functional and thus only eligible for patent law's protection of utilitarian inventions.The Fourth Circuit affirmed the district court's grant of summary judgment to defendant on plaintiff's claims of trade dress infringement under the Lanham Act and North Carolina common law. The court held that the total feeder profile is functional and ineligible for trade dress protection. The court explained that, because the color trade dress was placed on the supplemental trademark register, rather than the principal register, it is presumed functional, and plaintiff bears the burden of proving non-functionality. In this case, the court held that plaintiff cannot do so because its own utility patents and witness testimony establish that the red pan and gray spokes serve the functional purpose of attracting chickens to feed. Finally, the court held that the district court's order recommending a trial sanction for spoliation of evidence was moot. View "CTB, Inc. v. Hog Slat, Inc." on Justia Law

The Eighth Circuit affirmed the district court's order granting SnugglyCat's motion to voluntarily dismiss this Lanham Act action without prejudice pursuant to Federal Rule of Civil Procedure 41(a)(2). The court rejected appellants' contention that the district court failed to consider their argument regarding legal prejudice; the court saw no need to adopt a per se rule that would bar dismissal without prejudice in all cases in which a plaintiff has sued under a fee-shifting statute and found that the district court did not commit an error of law; and the district court did not commit a clear error of judgment where it considered all the relevant factors, including SnugglyCat's purported reason for seeking dismissal of the action without prejudice—its inability as a small company to sustain the cost of continuing suit—and expressly found the motion to have been made in good faith. View "SnugglyCat, Inc. v. Opfer Communications, Inc." on Justia Law

ICCS imported 56,616 individual butane gas canisters into the U.S. that displayed a “PREMIUM” brand label and a registered certification mark owned by Underwriters Laboratories (UL). Customs determined that the canisters were “counterfeit” in that they made unauthorized use of the UL certification mark and issued a notice ordering ICCS to redeliver the imported canisters to Customs’ custody pursuant to 19 U.S.C. 1526(e). ICCS redelivered only 29,008 canisters. UL did not consent to retroactive certification. Customs assessed damages of $41,412.00.The Trade Court granted the government summary judgment. The Federal Circuit affirmed. The canisters displayed UL’s mark without UL’s approval. ICCS’s arguments as to physical similarities between the PREMIUM model and other merchandise that UL had previously certified fail because the Service Terms dictate that UL, not ICCS, determines whether any differences from the basic product are superficial. On the date of entry, Customs had no way of ascertaining whether the PREMIUM model was the same physical product as the basic product without UL having made that determination. The court rejected an argument that, in denying ICCS’s protest, Customs relied on UL’s lack of consent to the point of delegating its statutory duty to enforce the trademark laws to UL. View "ICCS USA Corp. v. United States" on Justia Law