Justia Trademark Opinion Summaries

Fourth Estate, a news organization that licensed works to Wall-Street.com, a news website. sued Wall-Street for copyright infringement of articles that Wall-Street failed to remove from its website after canceling the license agreement. Fourth Estate had applied to register the articles with the Copyright Office, but the Register had not acted on those applications. No civil infringement action “shall be instituted until . . . registration of the copyright claim has been made,” 17 U.S.C. 411(a). The Eleventh Circuit and a unanimous Supreme Court affirmed the dismissal of the suit. Registration occurs, and a copyright claimant may commence an infringement suit, upon registration; a copyright owner can then recover for infringement that occurred both before and after registration. In limited circumstances, copyright owners may file suit before undertaking registration. For example, an owner who is preparing to distribute a work that is vulnerable to predistribution infringement—e.g., a movie or musical composition—may apply for preregistration; an owner may also sue for infringement of a live broadcast before registration. The Court rejected Fourth Estate’s “application approach” argument that registration occurs when a copyright owner submits a proper application. In 1976 revisions to the Copyright Act, Congress both reaffirmed that registration must precede an infringement suit. The Act safeguards copyright owners by vesting them with exclusive rights upon creation of their works and prohibiting infringement from that point forward. To recover for such infringement, copyright owners must apply for registration and await the Register’s decision. An administrative lag in processing applications does not allow revision of section 411(a)’s congressionally-composed text. View "Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC" on Justia Law

Sköld coined the name “Restoraderm” for a proprietary drug-delivery formulation that he developed for potential use in skin-care products. He entered into a 2001 letter of intent with CollaGenex, a skin-care company, stating that “[a]ll trademarks associated with the drug delivery system … shall be applied for and registered in the name of CollaGenex and be the exclusive property of CollaGenex.” Their 2002 contract reiterated those provisions and stated that termination of the agreement would not affect any vested rights. With Sköld’s cooperation, CollaGenex applied to register the Restoraderm mark. Under a 2004 Agreement, Sköld transferred Restoraderm patent rights and goodwill to CollaGenex, without mentioning trademark rights. After Galderma bought CollaGenex it used Restoraderm as a brand name on products employing other technologies. In 2009, Galderma terminated the 2004 Agreement, asserting that it owned the trade name and that Sköld should not use the name. Sköld markets products based on the original Restoraderm technology that do not bear the Restoraderm mark. Galderma’s Restoraderm product line has enjoyed international success. Sköld sued, alleging trademark infringement, false advertising, unfair competition, breach of contract, and unjust enrichment. Only Sköld’s unjust enrichment claim was successful. The Third Circuit reversed in part, absolving Galderma of liability. The 2004 agreement, rather than voiding CollaGenex’s ownership of the mark by implication, confirmed that CollaGenex owned the Restoraderm mark. Galderma succeeded to those vested rights. View "Skold v. Galderma Laboratories L.P." on Justia Law

The Fourth Circuit affirmed the district court's summary judgment ruling regarding the protectability of the proposed trademark BOOKING.COM. The court held that the district court, in weighing the evidence before it, did not err in finding that the USPTO failed to satisfy its burden of proving that the relevant public understood BOOKING.COM, taken as a whole, to refer to general online hotel reservation services rather than Booking.com the company. Therefore, the district court did not err in finding that BOOKING.COM is a descriptive, rather than generic, mark. Furthermore, because USPTO did not challenge the district court's finding that BOOKING.COM has acquired secondary meaning where the mark is deemed descriptive, the court affirmed the district court's partial grant of summary judgment finding that BOOKING.COM is protectable as a trademark. Finally, the district court's grant of attorney fees was affirmed under Shammas v. Focarino, 784 F.3d 219, 225 (4th Cir. 2015), where an applicant that decides to challenge the USPTO's ruling in district court must pay all the expenses of the proceeding whether the final decision was in its favor or not. View "Booking.com B.V. v. US Patent & Trademark Office" on Justia Law

The Ninth Circuit affirmed the district court's dismissal of a Lanham Act action brought by Applied Underwriters, alleging claims for trademark infringement and unfair competition. Although the district court abused its discretion when it sanctioned Applied Underwriters and dismissed the case pursuant to Federal Rule of Civil Procedure 41(b) absent an order requiring Applied Underwriters to file an amended complaint, the panel nevertheless affirmed the district court's earlier Rule 12(b)(6) dismissal because the use of Applied Underwriters' trademarks by defendants constituted nominative fair use. In this case, Applied Underwriters' service was not readily identifiable without use of the trademarks; defendants used only so much of the marks as was reasonably necessary; and use of the marks did not suggest sponsorship or endorsement. View "Applied Underwriters, Inc. v. Lichtenegger" on Justia Law

Guild makes mortgage loans and has used the mark “GUILD MORTGAGE COMPANY” since 1960. Guild was founded in California and has expanded to over 40 other states. It applied to register the mark “GUILD MORTGAGE COMPANY,” and design, in International Class 36 for “mortgage banking services, namely, origination, acquisition, servicing, securitization and brokerage of mortgage loans.” The application states that color is not claimed as a feature of the mark and that the “mark consists of the name Guild Mortgage Company with three lines shooting out above the letters I and L.” Registration was refused (15 U.S.C. 1052(d)) due to a likelihood of confusion between Guild’s mark and the mark “GUILD INVESTMENT MANAGEMENT” registered in International Class 36 for “investment advisory services,” which is owned by Guild Investment Management, Inc. a Los Angeles investment company. The Board affirmed. The Federal Circuit vacated. The Board erred by failing to address Guild’s argument and evidence related to “DuPont factor 8,” which examines the “length of time during and conditions under which there has been concurrent use without evidence of actual confusion.” Guild argued that it and Guild Investment have coexisted in business for over 40 years without any evidence of actual confusion. View "In re: Guild Mortgage Co." on Justia Law

Springboards filed suit against the school district under the Lanham Act, alleging that the school district used the company's marks in the course of operating a summer reading program. At issue was the school district's use of "Houston ISD Millionaire Club" on its incentive items and informational material.The Fifth Circuit affirmed the district court's grant of summary judgment for the school district, holding that a reasonable jury could not find that the allegedly infringing use of the marks created a likelihood of confusion. The court held that no reasonably jury could conclude that it was likely potential purchasers of Springboards' products would have believed that Springboards was affiliated with HISD's summer reading program. View "Springboards to Education, Inc. v. Houston Independent School District" on Justia Law

The Eighth Circuit affirmed the district court's judgment in favor of Hargis in an action brought by B&B, alleging a trademark infringement claim involving B&B's SEALTIGHT mark and Hargis' SEALTITE mark. The court found no plain error in the district court's determination that B&B willfully failed to disclose a prior adverse decision and thus the district court did not err in its determination that B&B committed fraud on the PTO and that Hargis was therefore entitled to the affirmative defense of fraud under 15 U.S.C. 1115(b)(1). The court also held that B&B's claims were barred by collateral estoppel because B&B failed to present evidence of any significant intervening factual change from the date of the 2000 jury verdict. In regard to Hargis' cross-appeal, the court affirmed the district court's denial of Hargis' motion for attorney fees and nontaxable litigation costs. The court held that the district court did not abuse its discretion in finding this an unexceptional case. View "B&B Hardware, Inc. v. Hargis Industries, Inc." on Justia Law

Laerdal, which manufactures and distributes medical devices, filed a complaint at the International Trade Commission asserting violations of 19 U.S.C. 1337 by infringement of Laerdal’s patents, trademarks, trade dress, and copyrights by importing, selling for importation, or selling within the U.S. certain medical devices. The Commission investigated Laerdal’s trade dress claims, one patent claim, two copyright claims, and one trademark claim, excluding all others. Despite being served with notice, no respondent responded. An ALJ issued the Order to Show Cause. Respondents did not respond. An ALJ issued an initial determination finding all respondents in default. Laerdal modified its requested relief to immediate entry of limited exclusion orders and cease and desist orders. The Commission requested briefing on remedies, the public interest, and bonding. The Commission's final determination granted Laerdal limited exclusion orders against three respondents and a cease and desist order against one, based on patent and trademark claims; it issued no relief on trade dress and copyright claims, finding Laerdal’s allegations inadequate. As to trade dress claims, the Commission found that Laerdal failed to plead sufficiently that it suffered the requisite harm, the specific elements that constitute its trade dresses, and that its trade dresses were not functional; despite approving the ALJ’s initial determination of default and despite requesting supplemental briefing solely related remedy, the Commission issued no relief on those claims. The Federal Circuit vacated. The Commission violated 19 U.S.C. 1337(g)(1) by terminating the investigation and issuing no relief for its trade dress claims against defaulting respondents. View "Laerdal Medical Corp. v. International Trade Commission" on Justia Law

Saint Louis Brewery (SLB), a craft brewery founded in 1989 by Thomas Schlafly and Daniel Kopman, began selling beer with the SCHLAFLY logo in 1991 and asserts that it “has continuously sold beer under its SCHLAFLY trademark” ever since. In 2011, SLB applied for trademark registration for the word mark “SCHLAFLY” for use with various types of beer. The application drew opposition from Phyllis Schlafly, Thomas’s aunt and a well-known conservative activist (now deceased), and Bruce Schlafly (Opposers). The Trademark Trial and Appeal Board denied the opposition. The Federal Circuit affirmed the registration, rejecting an argument that the Board did not recognize that the mark was “primarily merely a surname,” and improperly accepted that the mark has acquired secondary meaning although the applicant did not provide survey evidence. The court also rejected claims of violation of the Opposers’ First Amendment, Fifth Amendment, and Due Process rights and protections. A trademark registration does not constitute a “taking” and the trademark opposition procedure, of which the Opposers have availed themselves, provides an appropriate process of law. View "Schlafly v. Saint Louis Brewery, LLC" on Justia Law

The Ninth Circuit filed an order granting defendants' petition for panel rehearing, withdrawing the panel’s opinion, and ordering the filing of a superseding opinion. The panel also filed a superseding opinion reversing the district court's grant of summary judgment in favor of defendants in a trademark infringement suit over the "Honey Badger" catchphrases under the Lanham Act.The panel held that, under the test in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), the Lanham Act applies to expressive works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression. In this case, defendants have not used plaintiff's mark in the creation of a song, photograph, video game, or television show, but have largely just pasted plaintiff's mark into their greeting cards. The panel held that a jury could determine that this use of plaintiff's mark was explicitly misleading as to the source or content of the cards. Therefore, the panel reversed the district court's grant of summary judgment and remanded for further proceedings. View "Gordon v. Drape Creative, Inc." on Justia Law