Justia Trademark Opinion Summaries

Plaintiff Rex Real Estate I, L.P. sued Defendant Rex Real Estate Exchange for trademark infringement. The district court granted Defendant’s motion for judgment as a matter of law after Plaintiff rested its case. Plaintiff appealed the judgment against its federal infringement claims under the Lanham Act.   The Fifth Circuit affirmed in part, reversed in part, and remanded. The court held that a reasonable jury could not find in favor of Plaintiff’s Section 32(1) claim, but it could find in favor of Plaintiff’s Section 43(a) claim. The court explained that while there was strong evidence that the marks are perceived by the public as primarily a personal name, the record does not compel that conclusion. Thus, the district court erred by deciding as a matter of law that Plaintiff’s marks are not inherently distinctive.     Moreover, the court explained that Plaintiff also asserts that the numerous calls it received from confused consumers who heard Defendant’s advertisements show that the marks have strong standing in the marketplace because it could mean that the callers assumed that Plaintiff was the sole source of the advertising. This is a plausible inference for a jury to make. The court held that taken together and in the light most favorable to the Plaintiff, a reasonable jury could find that this factor weighs in favor of Plaintiff. View "Rex Real Est I v. Rex Real Est" on Justia Law

The Copyright Office sent a letter to Valancourt Books, LLC, an independent press based in Richmond, Virginia, demanding physical copies of Valancourt’s published books on the pain of fines. Valancourt protested that it could not afford to deposit physical copies and that much of what it published was in the public domain. In response, the Office narrowed the list of demanded works but continued to demand that Valancourt deposit copies of its books with the Library of Congress or otherwise face a fine. Valancourt then brought this action against the Register of Copyrights and the Attorney General. Valancourt challenged the application of Section 407’s deposit requirement against it as an unconstitutional taking of its property in violation of the Fifth Amendment and an invalid burden on its speech in violation of the First Amendment. The district court granted summary judgment to the government on both claims.   The DC Circuit reversed the district court’s grant of summary judgment in the government’s favor and remanded for the entry of judgment to Valancourt and the award of relief. The court concluded that Section 407, as applied by the Copyright Office in this case, worked an unconstitutional taking of Valancourt’s property. The court explained that the Office demanded that Valancourt relinquish property (physical copies of copyrighted books) on the pain of fines. And because the requirement to turn over copies of the works is not a condition of attaining (or retaining) copyright protection in them, the demand to forfeit property cannot be justified as the conferral of a benefit in exchange for property. View "Valancourt Books, LLC v. Merrick Garland" on Justia Law

Pace (a company that sells and services garage doors) sued a competitor, Overhead Garage Door (“OGD”) (a company that also offers garage door services), alleging a host of federal and state law violations relating to OGD’s trade practices. Pace and Overhead Door Corporation (a garage door manufacturer that is not a party to this case but that has a name noticeably similar to Defendant OGD, its competition) have a licensing agreement in which Pace is the licensee, and Overhead Door Corporation is the licensor. As part of this agreement, Pace uses Overhead Door Corporation’s marks. The district court granted summary judgment to OGD on all of Pace’s claims, concluding in large part that Pace could not bring suit because Pace was a nonexclusive licensee that lacked sufficient ownership rights in Overhead Door Corporation’s marks and because OGD and Overhead Door Corporation’s settlement agreement extinguished Pace’s claims. Pace timely appealed.   The Eleventh Circuit vacated. The court concluded that Pace may bring its federal and state law claims. The court concluded that the licensing agreement, Pace’s status as a nonexclusive licensee, and the settlement agreement do not bar Pace from bringing its claims under the Lanham Act, state law, or common law. The court explained that although the agreement may prevent OGD and Overhead Door Corporation from suing each other, the settlement agreement is “not . . . binding on . . . current and future licensees.” As such, the settlement agreement is not binding on licensees like Pace and does not prevent Pace from suing View "D.H. Pace Company, Inc. v. OGD Equipment Company, LLC" on Justia Law

Two companies that operate in the real estate development industry have spent years embroiled in a dispute over their shared name: “Dewberry.” Dewberry Engineers sued Dewberry Group to quell the latter’s use of several new insignias it developed as part of its rebrand. Dewberry Engineers owns federal trademark rights to the “Dewberry” mark and claims Dewberry Group’s rebranding efforts infringe that mark and breach an agreement struck between the sparring corporations over a decade ago. The district court sided with Dewberry Engineers in the proceedings below, assessing a nearly $43 million profit disgorgement award against Dewberry Group for its infringement, enjoining it from further breaches of its agreement with Dewberry Engineers, and ordering it to pay attorneys’ fees for forcing Dewberry Engineers to litigate an exceptional case of trademark infringement.   The Fourth Circuit affirmed. The court explained that the parties share an identical, arbitrary dominant word and disclaim different suffixes (and prefixes in some cases) in the marks at issue. The record shows they also employ those marks in related, overlapping, and complementary services. Those details go some distance toward creating a likelihood of confusion as to the origin of either party’s “Dewberry” mark. Moreover, the court explained that despite Dewberry Group’s failure to calculate exact figures or provide evidence of deductions from infringement revenues for losses and expenses, the court equitably reduced the requested award by twenty percent to $42,975,725.60.  The court finds no error of fact or law suggesting the district court’s conclusions were an abuse of its discretion. View "Dewberry Engineers Inc. v. Dewberry Group, Inc." on Justia Law

La Bamba Licensing operates Mexican restaurants in the Midwest under the name “La Bamba.” In 1998, La Bamba registered “LA BAMBA” as a trademark for restaurant services and for various food items. Nearly two decades later, La Bamba Authentic Mexican Cuisine opened a Mexican restaurant under the name “La Bamba Authentic Mexican Cuisine” with one location in Lebanon, Kentucky—about 65 miles from one of La Bamba’s restaurants in Louisville. In May 2016, La Bamba sent Cuisine a cease-and-desist letter, citing La Bamba’s federal trademark registrations. La Bamba subsequently sued, alleging trademark infringement and unfair competition under the Lanham Act and Kentucky common law. In October 2017, Cuisine changed the name of its restaurant to “La Villa Rica Authentic Mexican Cuisine, Inc.”The district court granted La Bamba summary judgment and awarded La Bamba $50,741.76 ($22,907.26 in profits; $27,309.50 for attorneys’ fees; and $525.00 for court costs. The Sixth Circuit affirmed, Under the Lanham Act, a plaintiff who succeeds on an infringement claim “shall be entitled” subject to equitable principles, to recover a defendant’s profits, any damages sustained by the plaintiff, and the costs of the action, 15 U.S.C. 1117(a). The district court did not abuse its discretion in considering the relevant factors and making the awards. View "La Bamba Licensing, LLC v. La Bamba Authentic Mex. Cuisine, Inc." on Justia Law

Y.Y.G.M. SA, doing business as Brandy Melville, manufactures its own clothing, home goods, and other items. It owns several trademarks, including the Brandy Melville Heart Mark (Heart Mark) and the LA Lightning Mark (Lightning Mark). Redbubble owns and operates an online marketplace where artists can upload their artwork to be printed on various products and sold. After a jury found that Redbubble, Inc. had violated Brandy Melville’s trademarks, the district court granted partial judgment as a matter of law to Redbubble on one trademark claim. Both parties appealed.   The Ninth Circuit affirmed in part and vacated in part the district court’s judgment after a jury trial in an action brought under the Lanham Act against Red Bubble. Vacating the district court’s order granting in part and denying in part Redbubble’s motion for judgment as a matter of law, the panel held that a party is liable for contributory infringement when it continues to supply its product to one whom it knows or has reason to know is engaging in trademark infringement. A party meets this standard if it is willfully blind to infringement. Agreeing with other circuits, the panel held that contributory trademark liability requires the defendant to have knowledge of specific infringers or instances of infringement. The panel held that, in granting judgment as a matter of law to Redbubble on the claim for contributory trademark counterfeiting as to the Heart Mark, the district court further erred by failing to evaluate the evidence of likelihood of confusion under the correct legal standard. View "Y.Y.G.M. SA V. REDBUBBLE, INC." on Justia Law

In 2018, Spireon sought to register the mark FL FLEX, for “[e]lectronic devices for tracking the locations of mobile assets" such as trailers, cargo containers, and transportation equipment, using global positioning systems and cellular communication networks. An Examining Attorney approved the application. Flex opposed the registration, citing priority and the likelihood of confusion with Flex’s marks, FLEX, FLEX (stylized), and FLEX PULSE, registered in 2016-2017, for services including supply chain management services, transportation logistics services, and inventory management, and computers, computer software for use in supply chain management, logistics and operations management, quality control, inventory management, scheduling, and related services.The Trademark Trial and Appeal Board Board sustained Flex’s opposition. The Federal Circuit vacated. The Board erred in analyzing conceptual strength under the first DuPont factor, the similarity of the marks, rather than the sixth DuPont factor. The existence of third-party registrations on similar goods can bear on a mark’s conceptual strength. Third-party registrations containing an element that is common to both the opposer’s and the applicant’s marks can show that that element has “a normally understood and well-recognized descriptive or suggestive meaning.” Flex failed to show that the identical marks for identical goods were not used in the marketplace, but on remand, should be allowed to make such a showing. The Board also erred by comparing FL FLEX to FLEX PLUS rather than the relevant mark. View "Spireon, Inc. v. Flex Lrd." on Justia Law

VIP makes a chewable dog toy that looks like a Jack Daniel’s whiskey bottle; the words “Jack Daniel’s” become “Bad Spaniels.” “Old No. 7 Brand Tennessee Sour Mash Whiskey” turns into “The Old No. 2 On Your Tennessee Carpet.” Jack Daniel’s demanded that VIP stop selling the toy.VIP sought a declaratory judgment that Bad Spaniels neither infringed nor diluted Jack Daniel’s trademarks. Jack Daniel’s counterclaimed. The Lanham Act defines a trademark by its primary function: identifying a product’s source and distinguishing that source from others. A typical infringement case examines whether the defendant’s use of a mark is “likely to cause confusion, or to cause mistake, or to deceive,” 15 U.S.C. 1114(1)(A), 1125(a)(1)(A). A typical dilution case considers whether the defendant “harm[ed] the reputation” of a trademark. VIP cited the “Rogers test,” which requires dismissal of an infringement claim when “expressive works” are involved unless the complainant can show either that the challenged use of a mark “has no artistic relevance to the underlying work” or that it “explicitly misleads as to the source or the content of the work.” The Ninth Circuit ruled in favor of VIP.The Supreme Court vacated. When an alleged infringer uses a trademark as a designation of source for the infringer’s own goods, the Rogers test does not apply. Consumer confusion about source is most likely to arise when someone uses another’s trademark as a trademark. Bad Spaniels was not automatically entitled to Rogers’ protection because it “communicate[d] a humorous message.” VIP used the Bad Spaniels trademark and trade dress as source identifiers. Although VIP’s effort to parody Jack Daniel’s does not justify the application of the Rogers test, it may make a difference in the standard trademark analysis on remand. View "Jack Daniel's™ Properties, Inc. v. VIP Products LLC" on Justia Law

Plaintiff  Enigma Software Group USA LLC (“Enigma”), a computer security software provider, sued a competitor, Defendant-Appellee Malwarebytes, Inc. (“Malwarebytes”), for designating its products as “malicious,” “threats,” and “potentially unwanted programs” (“PUPs”). Enigma’s operative complaint alleged a false advertising claim under Section 43(a) of the Lanham Act, 15 U.S.C. Section 1125(a)(1)(B), and tort claims under New York law. Malwarebytes moved to dismiss under Federal Rule of Civil Procedure 12(b)(6). The district court granted the motion, concluding that all of Enigma’s claims were insufficient as a matter of law.   The Ninth Circuit affirmed in part and reversed in part. In the context of this case, the panel concluded that when a company in the computer security business describes a competitor’s software as “malicious” and a “threat” to a customer’s computer, that is more a statement of objective fact than a non-actionable opinion. It is potentially actionable under the Lanham Act, provided Enigma plausibly alleges the other elements of a false advertising claim. The panel disagreed with the district court and concluded that Malwarebytes is subject to personal jurisdiction in New York. As this action was initially filed in New York, the law of that state properly applies.   Because the panel held that the Lanham Act and NYGBL Section 349 claims should not have been dismissed, the panel concluded that the tortious interference with business relations claim should similarly not have been dismissed. The panel agreed with the district court regarding the dismissal of the claim for tortious interference with contractual relations, however, and affirmed the dismissal of that claim. View "ENIGMA SOFTWARE GROUP USA, LLC V. MALWAREBYTES, INC." on Justia Law

Appellee Jason Scott Collection, Inc. (JSC) and Appellants Trendily Furniture, LLC, Trendily Home Collection, LLC and Rahul Malhotra (collectively, “Trendily”) are high-end furniture manufacturers that sell their products in the Texas market. Trendily intentionally copied three unique furniture designs by JSC and sold them to Texas retailers. The district court granted summary judgment to JSC on its copyright claim and then held Trendily liable on the trade dress claim following a bench trial. On appeal, Trendily challenged only the latter ruling, arguing that trade dress liability is precluded here because JSC did not demonstrate either secondary meaning or the likelihood of consumer confusion.   The Ninth Circuit affirmed the district court’s decision. The panel held that the district court did not clearly err in finding that JSC did so. The panel wrote that Trendily’s clear intent to copy nonfunctional features of JSC’s pieces supports a strong inference of secondary meaning. Noting that copyright and trademark are not mutually exclusive, the panel rejected Trendily’s argument that it should be held liable only under the Copyright Act. The panel held that the district court properly considered several other factors, including that the JSC pieces were continuously manufactured and sold since 2004, that JSC had a longstanding and well-known presence in the high-end furniture market, and that JSC’s furniture was distinctive in the minds of purchasers. The panel held that the district court did not err in finding that there was a likelihood of confusion between the JSC pieces and the Trendily pieces. View "JASON SCOTT COLLECTION, INC. V. TRENDILY FURNITURE, LLC, ET AL" on Justia Law