Justia Trademark Opinion Summaries

SportFuel registered its first “SportFuel” trademark for “food nutrition consultation, nutrition counseling, and providing information about dietary supplements and nutrition,” which became “incontestable” in 2013 (15 U.S.C. 1065). SportFuel later registered the trademark for “goods and services related to dietary supplements and sports drinks enhanced with vitamins.” Gatorade, created in 1965, is more widely known and is the official sports drink of the NBA, PGA, MLB, MLS, and other organizations. In addition to its traditional sports drinks, Gatorade now customizes its sports drinks by selling formulas that are tailored to the nutritional needs of individual professional athletes and sells other sports nutrition products. It began to publicly describe its products as sports fuels in 2013. In 2016 it registered the trademark “Gatorade The Sports Fuel Company.” Gatorade disclaimed the exclusive use of “The Sports Fuel Company” after being advised that the phrase was merely descriptive of its products. SportFuel sued for trademark infringement, unfair competition, and false designation of origin in violation of the Lanham Act. Gatorade sought cancellation of SportFuel’s trademark, moved to exclude SportFuel’s expert’s testimony and survey evidence concerning the likelihood of consumer confusion from Gatorade’s use of the slogan. The Sixth Circuit affirmed summary judgment for Gatorade, finding that SportFuel failed to produce evidence that demonstrated a factual dispute on any of the three elements of Gatorade’s fair use defense. Gatorade descriptively used the term “Sports Fuel” in its slogan fairly and in good faith. View "SportFuel, Inc. v. PepsiCo, Inc." on Justia Law

The Federal Circuit affirmed the decision of the Trademark Trial and Appeal Board sustaining Hybrid Athletics' opposition to Hylete's trademark registration application. Hylete's application sought to register a design mark for a stylized letter "H" in International Class 25 for athletic apparel. The court held that Hylete waived the arguments on which its appeal relies because it raises new issues that could have been raised and were not considered. In this case, Hylete waived its argument that Hylete's mark is sufficiently different from Hybrid's "composite common law mark" to avoid a likelihood of confusion as to the source of the athletic apparel sold bearing those marks. View "Hylete LLC v. Hybrid Athletics, LLC" on Justia Law

Life filed a complaint against another corporation of the same name, alleging trademark infringement and unfair competition under the Lanham Act. Life obtained an injunction against the defendant corporation and its officers, including the corporation's president, who was not named a defendant. After entry of a default judgment against the corporation and damages-related discovery, the district court awarded damages and attorneys' fees against both the defendant corporation and its president personally.The Fourth Circuit held that the district court erred in entering judgment against the president personally when he was not named as a party or otherwise brought into the case by service of process. The court also held that the district court did not abuse its discretion in finding the president in contempt of court. Accordingly, the court affirmed in part, vacated in part, and remanded for the district court to determine whether any of the damages and fees award entered against the president is attributable to his contempt of court. View "Life Technologies Corp. v. Govindaraj" on Justia Law

Brunetti sought federal registration of the trademark FUCT. The Patent and Trademark Office denied his application under a Lanham Act provision that prohibits registration of trademarks that consist of or comprise "immoral[ ] or scandalous matter,” 15 U.S.C. 1052(a).The Supreme Court affirmed the Federal Circuit in holding that the provision violates the First Amendment. The Court noted that it previously invalidated the Act’s ban on registering marks that “disparage” any “person[ ], living or dead.” The “immoral or scandalous” bar similarly discriminates on the basis of viewpoint. Expressive material is “immoral” when it is “inconsistent with rectitude, purity, or good morals”; “wicked”; or “vicious”; the Act permits registration of marks that champion society’s sense of rectitude and morality, but not marks that denigrate those concepts. Material is “scandalous” when it “giv[es] offense to the conscience or moral feelings”; “excite[s] reprobation”; or “call[s] out condemnation”; the Act allows registration of marks when their messages accord with, but not when their messages defy, society’s sense of decency or propriety. The statute, on its face, distinguishes between ideas aligned with conventional moral standards and those hostile to them.The Court rejected an argument that the statute is susceptible of a limiting construction. The “immoral or scandalous” bar does not draw the line at lewd, sexually explicit, or profane marks. Nor does it refer only to marks whose “mode of expression,” independent of viewpoint, is particularly offensive. To cut the statute off where the government urges would not interpret the statute Congress enacted, but fashion a new one. View "Iancu v. Brunetti" on Justia Law

Bodum produces and sells what design magazines and art museums have recognized as an iconically designed houseware product—the Chambord French press coffee maker. Bodum sued Top for selling a French press that Bodum claimed infringes on its unregistered trade dress in the Chambord, 15 U.S.C. 1125(a)(1)(A). The court excluded evidence of various utility patents covering French press coffee makers and rejected Top’s argument that Bodum failed to prove the Chambord design was nonfunctional. A jury awarded Bodum $2 million in damages. The Seventh Circuit affirmed. Bodum presented sufficient evidence for the jury to have found Bodum’s claimed trade dress was non‐functional. The district court did not abuse its discretion in excluding evidence of utility patents that do not claim any of the features that comprise the claimed Chambord trade dress. View "Bodum USA, Inc. v. A Top New Casting Inc." on Justia Law

The U.S. Patent and Trademark Office has, on a few occasions, found that “capsule” was “merely descriptive” of cellphone cases, a finding that precludes registration on the Principal Register. The Office has also found otherwise and allowed Uncommon to register “capsule.” Rival case manufacturers still use the term. Uncommon sued Spigen for trademark infringement and unfair competition, 15 U.S.C. 1114, 1125(a). Spigen sought cancellation of the mark. In discovery, Spigen produced a survey to prove that consumers did not associate “capsule” with Uncommon’s cases, and disclosed the person who conducted the survey as a “non-testifying expert,” but without foundational expert testimony to explain the survey’s methodology, it was inadmissible, FRCP 26(a). The district court excused Spigen’s error and granted Spigen summary judgment on the merits. The Seventh Circuit affirmed. Spigen’s disclosure was inaccurate but harmless. Spigen carried its burden to defeat Uncommon’s presumption of inherent distinctiveness. Spigen demonstrated that there is no issue of material fact regarding the descriptiveness of the “capsule” mark. With the survey, there was no genuine issue of material fact as to the mark’s invalid registration. Nor was there an issue of fact regarding the unlikelihood of consumer confusion. View "Uncommon, LLC v. Spigen, Inc." on Justia Law

Guitar Center, which sells musical instruments, created a new brand of woodwind and brass instruments produced by Eastman, “Ventus.” Barrington owns the trademark “Vento,” which is used in relation to instruments it sells. Barrington began using its mark in commerce in 2009 and achieved gross sales just under $700,000. Barrington filed for registration of its “Vento” mark in January 2010. In March 2011, Guitar Center began selling instruments using the “Ventus” mark, with gross sales totaling about $5 million. Barrington filed suit against Eastman, Music & Arts, Guitar Center, and Woodwind. A jury found that only Guitar Center's sales infringed and awarded Barrington the total amount of Guitar Center sales—$3,228. Barrington later discovered that Music & Arts and Woodwind were divisions of Guitar Center. Barrington moved the court to amend the damages award to $4,947,200, the total sales for the “Ventus” mark by all of the Guitar Center owned stores. The district court denied the Rule 59(e) motion. The Seventh Circuit affirmed. Barrington gave no reason to conclude that the jury’s verdict would be different if it were aware Music & Arts and Woodwind were merely divisions of Guitar Center; it found Music & Arts and Woodwind did not infringe on the “Ventus” mark and there was no basis to award Barrington their “Ventus” related sales. View "Barrington Music Products, Inc v. Music & Arts Center" on Justia Law

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