Justia Trademark Opinion Summaries

This consolidated appeal stemmed from the trusts' motion for a temporary restraining order and preliminary injunction enjoining the use of Phyllis Schafly's intellectual property. The Eighth Circuit affirmed the denial of preliminary injunctive relief under 28 U.S.C. 1292(a)(1) and held that the trusts would not be entitled to the traditional presumption of irreparable harm in trademark cases because they did not promptly seek preliminary injunctive relief concerning the trademark infringement, regardless of whether the presumption survived recent Supreme Court decisions emphasizing the movant's burden to show that irreparable injury was likely in the absence of an injunction. The court dismissed the appeal of the order staying litigation for lack of appellate jurisdiction, because the order was temporary and did not effectively end the litigation. View "Phyllis Schlafly Revocable Trust v. Cori" on Justia Law

PlayNation filed suit against Velez for trademark infringement over the use of the Gorilla Gym mark and the district court entered judgment for PlayNation. The Eleventh Circuit held that the district court did not clearly err in holding that Velez infringed on PlayNation's trademark, and in cancelling Velex's trademark registration on that basis. However, the district court abused its discretion in holding that PlayNation was entitled to an accounting of Velex's profits due to willful infringement based solely on Velex's continued lawful use of its mark after Velex was served with the complaint. Therefore, the court affirmed in part, vacated in part, and remanded in part. View "PlayNation Play Systems, Inc. v. Velex Corp." on Justia Law

Tempnology licensed Mission to use Tempnology’s trademarks in connection with the distribution of clothing. Tempnology filed for Chapter 11 bankruptcy and sought to reject its agreement with Mission as an “executory contract” under 11 U.S.C. 365, which provides that rejection “constitutes a breach of such contract.” The Bankruptcy Court approved Tempnology’s rejection, holding that the rejection terminated Mission’s rights to use Tempnology’s trademarks. The Bankruptcy Appellate Panel reversed, holding that rejection does not terminate rights that would survive a breach of contract outside bankruptcy. The First Circuit reinstated the Bankruptcy Court’s decision.The Supreme Court reversed, first holding that the case is not moot. Mission presented a plausible claim for damages, sufficient to preserve a live controversy. A debtor’s rejection of an executory contract under Bankruptcy Code Section 365 has the same effect as a breach of that contract outside bankruptcy and cannot rescind rights that the contract previously granted. A licensor’s breach cannot revoke continuing rights given under a contract (assuming no special contract term or state law) outside of bankruptcy; the same result follows from rejection in bankruptcy. Section 365 reflects the general bankruptcy rule that the estate cannot possess anything more than the debtor did outside bankruptcy. The distinctive features of trademarks do not mandate a different result. In delineating the burdens a debtor may and may not escape, Section 365’s edict that rejection is breach expresses a more complex set of aims than facilitating reorganization. View "Mission Product Holdings, Inc. v. Tempnology, LLC" on Justia Law

Segway filed a complaint (19 U.S.C. 337) with the International Trade Commission based on infringement of six patents and two trademarks--stylized and non-stylized SEGWAY marks, which cover “motorized, self-propelled, wheeled personal mobility devices, namely, wheelchairs, scooters, utility carts, and chariots.” The complaint alleged that Swagway’s self-balancing hoverboard products, marketed under the names SWAGWAY and SWAGTRON infringed Segway’s marks. Swagway proposed a consent order stipulating that Swagway would not sell or import “SWAGWAY-branded personal transporter products ... all components thereof, packaging and manuals.” Segway opposed the proposal as addressing only a subset of the claims and products at issue. After a hearing, the ALJ found that the accused products did not infringe certain patents and that use of the SWAGWAY designation, but not the SWAGTRON designation, infringed the trademarks. The Commission determined not to review the ALJ’s denial of Swagway’s consent order motion. The Federal Circuit upheld that determination and the trademark infringement determination based on the evidence supporting factors other than likelihood of confusion, including the degree of similarity between the two marks in appearance, the pronunciation of the words, and the strength of the SEGWAY marks. View "Swagway, LLC v. International Trade Commission" on Justia Law

The Second Circuit affirmed the district court's confirmation of an arbitration award under 9 U.S.C. 9 for petitioners and other individuals. This case involved a dispute between two groups of the Bobov Hasidic Jewish community in Brooklyn that agreed to arbitration before a rabbinical tribunal. The tribunal ruled that petitioners owned the "Bobov" trademark, and the district court confirmed the ruling.The court held that district courts should "look through" a 9 U.S.C. 4 petition to the underlying controversy to determine whether subject matter jurisdiction exists to confirm the arbitration award pursuant to 9 U.S.C. 9. The court held that the district court properly looked through the arbitration petition here to the underlying controversy to determine that it had subject matter jurisdiction. In this case, the district court properly turned aside respondent's non-jurisdictional arguments, found the petition "effectively" unopposed and that no issue of material fact precluded confirmation, and did not err in confirming the award. View "Landau v. Rheinold" on Justia Law

The Eleventh Circuit affirmed the district court's denial of Hard Candy's request for a jury trial in an action under the Lanham Act. In this case, Hardy Candy sought every remedy permitted by the Act besides actual damages: an injunction to prevent future infringement, an accounting and the disgorgement of profits that the defendant made from the allegedly infringing goods, and declaratory relief, along with fees and costs.The court held that the remedy of an accounting and disgorgement of profits for trademark infringement is equitable in nature and has long been considered that way, and thus a plaintiff seeking the defendant's profits in lieu of actual damages is not entitled to a jury trial. The panel also held that the district court did not err in its merits determinations on infringement and fair use. View "Hard Candy, LLC v. Anastasia Beverly Hills, Inc." on Justia Law

VersaTop and Georgia Expo are competitors in the “drape and rod” industry. Both produce and sell systems of modular rod and pole structures, for assembly to form sectional spaces such as trade show booths and other drape-separated structures, as well as temporary barricades. VersaTop’s system for coupling structural components is the subject of the 027 patent and is called the “‘ball and crown’ coupler.” VersaTop alleged that since 2011 it has sold these systems with the trademarks PIPE & DRAPE 2.0™ and 2.0™ and that Georgia Expo distributed advertising and brochures that contained these VersaTop trademarks as well as pictures of the VersaTop coupler. The district court held that Georgia Expo did not infringe VersaTop’s patent, copyright, or trademark rights. Only the trademark issue was appealed. The Federal Circuit reversed. The district court incorrectly applied the definition of “use in commerce” and concluded that Georgia Expo’s use of the marks was not in commerce so that there was no infringement. Under the Trademark Act, 15 U.S.C. 1127, a trademark owner is entitled to summary judgment on a claim of likelihood of confusion where the marks were identical, the goods were related, and the marketing channels overlapped. View "VersaTop Support Systems, LLC v. Georgia Expo, Inc." on Justia Law

Siny sought to register the mark CASALANA in standard characters for “Knit pile fabric made with wool for use as a textile in the manufacture of outerwear, gloves, apparel, and accessories” based on use in commerce under the Lanham Act, 15 U.S.C. 1051(a). Siny submitted a specimen consisting of a webpage printout. The examining attorney refused registration because the specimen “appear[ed] to be mere advertising material,” that did not include a means for ordering the goods. Siny submitted the same webpage with additional text stating, “For sales information:” followed by a phone number and email address. The examining attorney found that the text alone was insufficient for consumers to make a purchase, noting the absence of necessary ordering information, such as minimum quantities, cost, payment options, or shipping information. The Trademark Board and Federal Circuit affirmed. For a mark to be in use in commerce on goods, it may be “placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto.” The Webpage Specimen was not placed on the goods or their containers, tags, or labels and did not cross the line from mere advertising to an acceptable display associated with the goods. While some details must be worked out by telephone, if virtually all important aspects of the transaction must be determined from information extraneous to the webpage, the webpage is not a point of sale. View "In re: Siny Corp." on Justia Law

The Eighth Circuit affirmed the district court's grant of summary judgment for Iowa Parts in a trademark secrets and intellectual property action brought by CMI. The court held that CMI could not establish its burden of proving that the discovery rule saves its statutory cause of action because it was on inquiry notice that Iowa Parts was making its component parts, possibly with its engineering documents and other trade secrets, starting in 2002 and continuing thereafter. The court also held that CMI was on notice of a possible problem as early as 2002 on the conversion claim. Finally, the district court properly granted summary judgment on the unjust enrichment claim where an equitable claim could not provide alternative relief. View "CMI Roadbuilding, Inc. v. Iowa Parts, Inc." on Justia Law

The Eleventh Circuit affirmed the district court's grant of summary judgment based on its finding that Kroma EU lacked standing to enforce the KROMA trademark. By Lee Tillett, Inc. was the owner and registrant of the mark and had the rights to use the KROMA mark in the United States. Some time after Tillett granted an exclusive license to Kroma EU, defendants (the Kardashian sisters) endorsed a cosmetic line called "Khroma Beauty," that was sold and manufactured by Boldface. The California district court subsequently granted Tillett's motion for a preliminary injunction against Boldface, finding that Tillett had demonstrated a likelihood of success on the trademark infringement claim.On appeal here, the court adopted the position taken by the district courts in this circuit and held that a licensee's right to sue to protect the mark largely depends on the rights granted to the licensee in the licensing agreement. The court held that the licensing agreement at issue did not give Kroma EU sufficient rights in the name to sue under the Lanham Act. In this case, the plain language of the licensing agreement demonstrated that the parties' intent was for Tillett to retain all ownership and enforcement rights; the agreement plainly authorized Tillett to file suit against infringers; and Kroma EU was limited in its available recourse. View "Kroma Makeup EU, LLC v. Boldface Licensing + Branding, Inc." on Justia Law