Justia Trademark Opinion Summaries

Slep-Tone produces karaoke music tracks marketed under the trademark "Sound Choice" on encoded compact discs (CD-G). Plaintiffs filed suit against defendants for, inter alia, trademark infringement after finding out that defendants were using unauthorized media-shifted files instead of Slep-Tone's original CD-Gs. The district court granted defendant's motion to dismiss. Slep-Tone argues that, by "media-shifting" its tracks from physical CD-Gs to digital files and performing them without authorization, defendants committed trademark infringement and unfair competition under the Lanham Act,15 U.S.C. 1114, 1125. The court agreed with the Seventh Circuit's holding that "the ‘good’ whose ‘origin’ is material for purposes of a trademark infringement claim is the ‘tangible product sold in the marketplace’ rather than the creative content of that product." Therefore, the court concluded that Slep-Tone failed to plausibly allege consumer confusion over the origin of a good properly cognizable in a claim of trademark infringement. Accordingly, the court affirmed as to this issue. In a concurrently filed memorandum opinion, the court also reversed in part and remanded in part. View "Slep-Tone Entertainment Corp. v. Wired for Sound Karaoke" on Justia Law

Kibler, a disc jockey, uses turntables and others’ vocals to produce music containing jazz and funk elements. He released several albums under the name “DJ LOGIC” since 1999, but currently has no record deal. Kibler registered “DJ LOGIC” as a trademark in 2000, allowed the registration to lapse, and re-registered it in 2013. He has also been known as “LOGIC.” Hall has performed under the name “LOGIC” since 2009. In 2012, Kibler’s attorney sent Hall’s management company and booking agent an email ordering them to stop using the name “LOGIC” and to recall any product or advertisement that did, claiming infringement on Kibler’s mark. Hall’s company applied to register “LOGIC” as a trademark. Kibler sued, alleging trademark infringement, 15 U.S.C. 1125(a); breach of the Michigan Consumer Protection Act; unfair competition under Michigan law; and trademark dilution under the Lanham Act. In 2014, defendants delayed Hall’s tour and first album release due to ongoing settlement negotiations that ultimately collapsed. Defendants then released the album, which sold over 170,000 copies. The Sixth Circuit affirmed summary judgment in favor of the defendants. Kibler did not provide evidence sufficient to find that relevant consumers are likely to confuse the sources of his and Hall’s products or that Hall diluted Kibler’s mark. View "Kibler v. Hall" on Justia Law

In 2004, the Patent and Trademark Office issued JobDiva’s 917 registration for the service mark JOBDIVA for “personnel placement and recruitment” services. In 2005, it issued JobDiva’s 235 registration for a service mark for “personnel placement and recruitment services; computer services, namely, providing databases featuring recruitment and employment, employment advertising, career information and resources, resume creation, resume transmittals and communication of responses thereto via a global computer network.” JobDiva’s software provides a database of employment applications and employs automated “harvesters” to find potential job candidates. It analyzes resumes and helps hiring managers directly communicate with job candidates; it also recommends openings to job candidates and provides automated resume feedback. JobDiva’s software-as-a-service is delivered over the Internet without downloading software. Users pay for the computing as a service rather than owning the machines and software. The Board cancelled JobDiva’s marks in a proceeding that JobDiva initiated, challenging a registration owned by Jobvite. The Board granted Jobvite’s counterclaim stating, “[a] mark shall be deemed to be ‘abandoned’ . . . [w]hen its use has been discontinued with intent not to resume such use,” 15 U.S.C. 1125, and that JobDiva provided software, not “personnel placement and recruitment” services. The Federal Circuit vacated. The question is whether JobDiva, through its software, performed personnel placement and recruitment services and whether consumers would associate JobDiva’s registered marks with personnel placement and recruitment services, regardless of whether the steps of the service were performed by software. View "In re: JobDiva, Inc." on Justia Law

Following a generally favorable result in the district court, Motel 6 appealed, arguing that the district court erred interpreting the Lanham Act’s anticounterfeiting penalties not to reach the use of the Motel 6 mark without permission and in failing to award prejudgment interest to Motel 6. The Third Circuit vacated as to those issues. The lower court interpreted the Lanham Act too narrowly and contrary to the weight of persuasive authority concerning treble damages under 15 U.S.C. 1117(b). On remand the court must determine whether “extenuating circumstances” exist such that treble damages would not be appropriate. While the court was not required to award prejudgment interest once it found the case exceptional for purposes of attorney’s fees and costs under Section 1117(a), it may do so after reconsidering the counterfeiting issue. View "Motel 6 Operating LP v. HI Hotel Group LLC" on Justia Law

In 2005, the Church, within five miles of the Illinois–Wisconsin border, began selling caps and shirts, emblazoned with the phrase “ADD A ZERO” as part of a fundraising campaign. The Church obtained two federal trademarks for the “ADD A ZERO” mark, based on actual use of the marks in commerce, not intent to use the marks in commerce. In 2009, Adidas sought a clothing trademark for the phrase “ADIZERO.” The Trademark Office refused the application for likelihood of confusion with the Church’s “ADD A ZERO” marks. Adidas brought an action; the Trademark Trial and Appeal Board cancelled the marks, based on the Church’s failure to use the marks in commerce before registration. The Board considered the Church’s proffered evidence of a cancelled check with a printed Wisconsin address for the sale of two “ADD A ZERO”-marked hats for $38.34 in February 2005, before the Church applied for its marks, but concluded that the “de minimis” sale did not evidence the requisite “use in commerce” under the Lanham Act. The Federal Circuit reversed. The Lanham Act defines commerce as all activity regulable by Congress; the Church’s sale to an out-of-state resident fell within Congress’s power to regulate under the Commerce Clause. View "Christian Faith Fellowship Church v. Adidas AG" on Justia Law

CI owns the registered marks ʺCollective Network,ʺ ʺCollective Video,ʺ and ʺC Collective The Audience Engine,ʺ a stylized mark in which the word ʺCollectiveʺ appears most prominently. CCM operates under the name ʺCollective[i].ʺ This appeal arises from the software companies' dispute over trademarks containing the word "collective." In a series of three orders, the district court granted summary judgment to CCM on virtually all points in dispute and awarded attorneyʹs fees under the Lanham Act, 15 U.S.C. 1051 et seq. The court reversed or vacated all contested portions of the March Order, August Order, and December Order because: (1) the unregistered mark ʺcollectiveʺ is suggestive, not descriptive; (2) there is a genuine dispute of material fact as to whether CI used the unregistered mark ʺcollectiveʺ in commerce before CCM introduced its allegedly infringing marks; (3) the district court prematurely granted summary judgment as to CIʹs counterclaim for infringement of the registered marks, an action that neither party requested and the district court did not explain; and (4) there is a genuine dispute of material fact as to whether CI abandoned its registered marks ʺCollective Networkʺ and ʺCollective Video.ʺ Accordingly, the court reversed in part, vacated in part, and remanded for further proceedings. View "Cross Commerce Media, Inc. v. Collective, Inc." on Justia Law

Warner filed suit claiming that AVELA infringed their trademarks and engaged in unfair competition by licensing iconic pictures and phrases from films. On appeal, AVELA challenges a permanent injunction prohibiting them from licensing images from the films Gone with the Wind and The Wizard of Oz, as well as the animated short films featuring cat-and-mouse duo Tom and Jerry. The court concluded that AVELA’s Seventh Amendment claim is not properly before the court and thus the court declined to consider it; the court rejected AVELA's alternative claim that the $2,570,000 statutory damages award is disproportionate to the offense, insufficiently reasoned, and in violation of this court’s ruling in the previous appeal; the doctrine of judicial admissions does not bar Warner’s trademark claims; likewise, judicial estoppel does not apply; Dastar Corp. v. Twentieth Century Fox Film Corp. does not bar Warner's trademark claims; AVELA has waived the functionality and fair use defenses; the likelihood of confusion does not always require a jury trial and, on the merits, the district court did not err by rendering summary judgment on the likelihood of confusion; the court rejected AVELA's challenges to the permanent injunction; and the district court’s order is not inconsistent with the court's ruling in the prior appeal. Accordingly, the court affirmed the judgment. View "Warner Bros. Entertainment v. X One X Productions" on Justia Law

This reverse-confusion trademark dispute involves Wreal and Amazon over the mark "FyreTV." Wreal describes its own FyreTV service as the “Netflix of Porn.” Amazon Fire TV is a hardware device used for streaming “mainstream” “general interest” video via Amazon’s own streaming service, “Instant Video,” or third-party streaming services such as Netflix. In this interlocutory appeal, Wreal challenges the district court's denial of a preliminary injunction. The court concluded that the district court did not abuse its discretion in determining that Wreal’s unexplained five month delay in seeking a preliminary injunction, by itself, fatally undermined any showing of irreparable injury. Because Wreal cannot establish reversible error with respect to the injury prong, the court need not consider whether the district court correctly analyzed the likelihood of success, the balance of harms, or the public interest. Accordingly, the court affirmed the judgment. View "Wreal, LLC v. Amazon.com, Inc." on Justia Law

FN filed a trademark infringement action against Clyde Armory over the use of the marks "SCAR" and "SCAR-Stock" in the firearms industry. On appeal, Clyde Armory challenges the district court's partial grant of summary judgment for FN, its grant of FN's motion to strike Clyde Armory’s jury demand, its denial of Clyde Armory’s motion to amend the proposed pretrial order, and its entry of judgment against Clyde Armory following a bench trial. The court rejected Clyde Armory's contention that the district court erred by: (1) finding that FN used SCAR as a mark in commerce before Clyde Armory began using SCAR-Stock; (2) finding that FN’s SCAR mark acquired distinctiveness through secondary meaning before Clyde Armory began using SCAR-Stock; and (3) finding that Clyde Armory used the SCAR-Stock mark in bad faith to take advantage of the popularity of FN’s SCAR mark, thus divesting it of any rights in the mark that it otherwise might have obtained. Accordingly, the court affirmed the district court on all issues raised on appeal. View "FN Herstal SA v. Clyde Armory Inc." on Justia Law

In the 1980s, a wilderness guide, Maine developed and bottled an all-natural bug repellant under the mark “BUG OFF.” She did not conduct trademark searches. Maine sold BUG OFF at craft fairs, by catalog and website, and at trade shows. From 1992-1998, she took orders for BUG OFF from every state. In 1994, Smith & Hawken began carrying BUG OFF in its catalog and stores. In 1998 Chervitz, who later assigned to Kaz, filed an application for the BUG OFF trademark, which was registered in 2000. In 1999, Kaz sold millions of BUG OFF wristbands. In 2002, Maine sought to register the BUG OFF mark. The PTO refused, based on the Chervitz-Kaz registrations; Maine did not then assert pre-dating rights. In 2003, S.C. Johnson filed an intent-to-use application for the BUG OFF mark. Maine’s attorney communicated that she had used the mark since at least 1992. The PTO refused S.C. Johnson’s application. In 2007 Kaz assigned its rights to S.C. Johnson. In 2010, S.C. Johnson began using the mark. In 2011 Maine sold to Nutraceutical; S.C. Johnson’s application advanced to registration. S.C. Johnson sued Nutraceutical. Afte the bench trial, S.C. Johnson asserted that Nutraceutical had not shown continuous use after 2012. The court found that while Nutraceutical had proved that it was the senior user and was using the mark nationally from 1995-1998 and continued sales through 2012, it did “not demonstrate continued sales after 2012, which constitutes non-use for more than one year.” The Seventh Circuit reversed. The district court abused its discretion in considering the post-trial argument. Trademark ownership is not acquired by registration, but from prior appropriation and actual use in the market. View "S.C. Johnson & Son, Inc. v. Nutraceutical Corp." on Justia Law