Justia Trademark Opinion Summaries

Royal Palm Properties filed suit against Pink Palm Properties for infringing its registered service mark on the phrase "Royal Palm Properties." Pink Palm Properties counterclaimed, challenging the validity of the mark.The Eleventh Circuit held that the district court erred by flipping the jury's verdict and by granting judgment as a matter of law on Pink Palm Properties' trademark-invalidation counterclaim. The court held that Pink Palm Properties failed to show that no reasonable jury could have found that it failed to prove grounds for cancelling Royal Palm Properties' mark. In this case, Pink Palm Properties' argument that the service mark lacked distinctiveness, and that the mark was confusingly similar to the "Royale Palms" marks, did not entitle it to judgment as a matter of law on its claim that the "Royal Palm Properties" mark was invalid. Accordingly, the court reversed the district court's judgment. View "Royal Palm Properties, LLC v. Pink Palm Properties, LLC" on Justia Law

Curry, the founder of “Get Diesel Nutrition,” has paid for advertising for his products, including "Diesel Test," in national fitness magazines since 2002. In 2016, the defendants began selling a sports nutritional supplement, "Diesel Test Red Series." Like Curry’s product, the defendants’ product comes in red and white packaging with right-slanted all-caps typeface bearing the words “Diesel Test.” Curry alleges that he received messages indicating that customers were confused. The defendants concocted a fake ESPN webpage touting their product and conducted all their marketing online. In about seven months, they received more than $1.6 million in gross sales. At least 767 sales were to consumers in Illinois. After Curry demanded that the defendants cease and desist, both parties filed trademark applications for "Diesel Test." The Patent Office suspended both applications. Curry filed suit, alleging violation of the Illinois Consumer Fraud and Deceptive Practices Act, violations of the Lanham Act, 15 U.S.C. 1125, violation of the Anti-Cybersquatting Consumer Protection Act, filing a fraudulent trademark application, and violation of common law trademark protections. The district court dismissed for lack of personal jurisdiction.The Seventh Circuit reversed. Revolution’s activity can be characterized as purposefully directed at Illinois, the forum state, and related to Curry's claims. Physical presence is not necessary for a defendant to have sufficient minimum contacts with a forum state. Illinois has a strong interest in providing a forum for its residents to seek redress for harms suffered within the state by an out-of-state actor. View "Curry v. Revolution Laboratories, LLC" on Justia Law

VVV appealed the district court's dismiss of its trademark claims based on three marks and the denial of leave to amend its complaint. The Ninth Circuit assumed, without deciding, that the district court correctly applied the elements of claim preclusion to this case, but found that an exception to claim preclusion applied.The panel explained that an interparty proceeding before the TTAB is a limited proceeding involving registration of a trademark, and the TTAB has no authority to determine the right to use, or the broader questions of infringement, unfair competition, damages or injunctive relief. In this case, TTAB had no power to decide VVV's claims of infringement, dilution, and unfair competition or to grant either injunctive relief or damages. Therefore, the panel held that it would be unfair to preclude VVV from litigating these claims and seeking relief when barriers existed that prevented it from doing so in the first action. The panel reversed and remanded for the district court to consider, in the first instance, whether issue preclusion applied. The panel also reversed the denial of leave to amend the complaint, and affirmed the dismissal of plaintiff's claims as to the second and third marks. View "V.V.V. & Sons Edible Oils v. Meenakshi Overseas" on Justia Law

Two non-competing Midwestern companies operated by brothers used marks containing the family name, Fabick. The owner of the registered mark (FI), a small manufacturer of sealants, sued JFTCO, a larger distributor of Caterpillar equipment, for trademark infringement. A jury found that JFTCO had violated the Lanham Act but had not committed common law infringement. The district court entered limited injunctive relief requiring that JFTCO issue, for five years, disclaimers clarifying that it is not associated with FI. The Seventh Circuit affirmed, rejecting FI’s claim that it was entitled to a broad permanent injunction and should have been allowed to recover JFTCO’s profits, lacking evidence that the defendants were unjustly enriched by consumers assuming that Fabick’s sealants and coatings business is the same or related to JFTCO’s business. The court also rejected JFTCO’s challenged to a jury instruction: “[D]efendant JFTCO used the FABICK mark in a manner that is likely to cause confusion as to the source or origin of plaintiff’s product or that plaintiff has somehow become connected to JFTCO.” When read in context, the language regarding whether “plaintiff has somehow become connected to JFTCO” clearly refers to the parties’ products and/or services, and is not impermissibly vague. View "Fabick, Inc. v. JFTCO, Inc." on Justia Law

Plaintiff appealed the district court's rulings in two consolidated actions alleging that various Disney corporate entities infringed on plaintiff's "Lots of Hugs" trademark by using the "Lots-O'-Huggin' Bear" (aka "Lotso") in the Toy Story 3 movie and in the sale of merchandise.The Fifth Circuit held that plaintiff may obtain review of the adversary interlocutory rulings in its current appeal from the adverse final judgment in case No. 2:14-CV-00070. The court affirmed the district court's conclusion that plaintiff lacked personal jurisdiction over the IP entities, because plaintiff's arguments were based on two novel theories that were without merit. The court set aside the district court's order pertaining to the third amended complaint and remanded, holding that the district court abused its discretion, by sua sponte and without hearing, vacating its order granting plaintiff leave to file the third amended complaint. Finally, the court affirmed the district court's decision striking the fourth amended complaint, holding that the district court did not abuse its discretion in striking the complaint. View "Diece-Lisa Industries, Inc. v. Disney Enterprises, Inc." on Justia Law

LHO's Chicago hotel underwent a branding change in February 2014 when the establishment became “Hotel Chicago,” a signature Marriott venue. Around May 2016, Perillo and his associated entities opened their own “Hotel Chicago” three miles from LHO’s site. LHO sued for trademark infringement and unfair competition under the Lanham Act, 15 U.S.C. 1125(a), and for trademark infringement and deceptive trade practices under Illinois law. After more than a year, LHO moved to voluntarily dismiss its claims, with prejudice. Defendants made a post‐judgment request for attorney fees, 15 U.S.C. 1117(a), for the prevailing party in “exceptional cases.” The parties identified two distinct standards for exceptionality: the Seventh Circuit’s standard, that a case is exceptional under section 1117(a) if the decision to bring the claim constitutes an “abuse of process” and the more relaxed totality‐of‐the‐circumstances approach under the Patent Act that the Supreme Court announced in Octane Fitness (2014). Other circuits have extended Octane to the Lanham Act. The district judge acknowledged Octane but adhered to the “abuse‐of‐process” standard and declined to award fees. The Seventh Circuit reversed and remanded, holding that Octane’s “exceptional case” standard controls. The court noted the legislative history, the Patent Act’s identical language, and the Supreme Court’s use of trademark law in Oc‐ tane View "LHO Chicago River, L.L.C. v. Perillo" on Justia Law

The dealer had the exclusive right to sell the manufacturer's below-ground storm shelters in Missouri and Arkansas. The dealer created a wordmark—“Life Saver Storm Shelters”— and a logo using that name, which it affixed to the shelters. In 2006, the manufacturer obtained the dealer’s permission to use these marks on shelters marketed in Illinois. The manufacturer violated the limited license by using the marks on products sold throughout the country. The manufacturer's suit for trademark infringement, claiming prior use and ownership of the wordmark, was rejected on summary judgment. The dealer counterclaimed for trademark infringement and false endorsement under the Lanham Act. The district judge found for the dealer on all claims, entered a cease-and-desist order, and awarded $17 million in disgorged profits as damages but denied vexatious-litigation sanctions under 28 U.S.C. 1927 and attorney’s fees under the Lanham Act. The Seventh Circuit affirmed in part, rejecting the manufacturer's argument that the logo violated a statute that makes it a crime to use the American Red Cross emblem. The conclusion that the manufacturer engaged in trademark infringement on a vast scale was supported by the evidence. The court granted a limited remanded; although the judge reasonably concluded that section 1927 sanctions were not warranted, his summary denial of Lanham Act fees cannot be squared with his conclusions on the merits concerning infringement. View "4SEMO.COM, Inc. v. Southern Illinois Storm Shelters, Inc." on Justia Law

The Eleventh Circuit held that the district court did not abuse its considerable discretion in holding Velex and its officers in contempt or in awarding PlayNation's attorneys' fees and costs. In this case, the court had previously upheld the entry of a permanent injunction preventing Velex from infringing on PlayNation's mark. PlayNation later discovered that Velex continued to sell and distribute goods using the infringing mark. Accordingly, the court affirmed the district court's judgment. View "PlayNation Play Systems, Inc. v. Velex Corp." on Justia Law

This appeal stemmed from the parties' dispute over plaintiffs' "Velocity" trademark for clothing and activewear. The Second Circuit held that the district court did not err by determining that defendants' infringement was willful and by awarding plaintiffs the gross profits derived by defendants' infringement; the district court did not err by amending the judgment to remove the trebled portion of the profits award; and the court clarified that, under its precedent in George Basch Co. v. Blue Coral, Inc., 968 F.2d 1532 (2d Cir. 1992), a plaintiff prosecuting a trademark infringement claim need not in every case demonstrate actual consumer confusion to be entitled to an award of an infringer's profits.However, the court vacated the district court's award of attorney's fees and prejudgment interest to plaintiffs and its determination that this was an "exceptional" case under the Lanham Act. While this appeal was pending, the court held that the standard for determining an "exceptional" case under the Patent Act applies also to cases brought under the Lanham Act. Therefore, the court remanded for the district court to apply Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545 (2014). View "4 Pillar Dynasty LLC v. New York & Co., Inc." on Justia Law

Plaintiffs, luxury eyewear manufacturers holding registered trademarks, filed a contributory trademark infringement action under the Lanham Act against defendants, owners of a discount mall whose subtenants were selling counterfeit eyewear.The Eleventh Circuit affirmed the jury's verdict in favor of plaintiffs, holding that the district court correctly determined that the evidence was sufficient—even under the legal standard the defendants urge the court to adopt—to support the jury's verdict finding defendants liable for contributory trademark infringement; committed no reversible error in instructing the jury; correctly determined that the evidence was sufficient to support the jury's verdict on each defendant's individual liability; and did not abuse its discretion in the challenged evidentiary rulings. View "Luxottica Group v. Airport Mini Mall, LLC" on Justia Law