Justia Trademark Opinion Summaries

Norbero Colon Lorenzana (Colon) was working for South American Restaurant Corporation (SARCO), a franchisee and operator of Church’s Chicken locations in Puerto Rico, when he suggested to his superiors the concept for a new chicken sandwich that could be included on Church’s menu. Church’s subsequently began selling the item, which it called the “Pechu Sandwich.” SARCO subsequently received a certificate of registration from the Puerto Rico Department of State trademarking the name “Pechu Sandwich” and also received a federal trademark registration for the name “Pechusandwich.” Colon brought suit alleging violations of the Lanham Act and Copyright Act. SARCO filed a motion to dismiss under Fed. R. Civ. P. 12(b)(6), which the district court granted. The First Circuit affirmed, holding (1) the district court properly determined that neither the name “Pechu Sandwich” nor the recipe are eligible for copyright protection; and (2) that Colon failed to sufficiently plead that SARCO committed fraud in the procurement of a federal trademark for the Pechu Sandwich. View "Colon-Lorenzana v. South American Restaurants Corp." on Justia Law

In April 2011, while its patent application was pending with the USPTO, U.S. Water Services, which “sell[s] water treatment and purification equipment, materials, and services,” especially “to ethanol process technologies,” sued its competitor, ChemTreat, for misappropriation of trade secrets. In October 2011, the USPTO issued the 244 patent covering a method to reduce the formation of insoluble scale deposits during the production of ethanol using enzyme, phytase, in its “pHytOUT® system.”Three days before U.S. Water and ChemTreat settled the misappropriation claim, ChemTreat filed counterclaims requesting declaratory judgments of noninfringement and invalidity of the 244 patent. The suit was filed before the Leahy-Smith America Invents Act, 125 Stat. 284, took effect, so the counterclaims independently did not establish appellate jurisdiction for the Federal Circuit. The district court granted ChemTreat summary judgment as to the noninfringement counterclaim and dismissed the invalidity counterclaim. The Eighth Circuit affirmed. Evaluating the “totality of [the] circumstances,” the district court did not err in finding the misappropriation action, together with U.S. Water’s statements to its customers and supplier, produced an objective, “reasonable apprehension of suit,” and did not err in concluding declaratory judgment subject matter jurisdiction existed. The decision did not constitute an advisory opinion. View "U.S. Water Servs., Inc. v. ChemTreat, Inc." on Justia Law

Juice Generation, which operates New York City juice bars, applied to the Patent and Trademark Office to register a mark consisting of “PEACE LOVE AND JUICE,” 15 U.S.C. 1051(b), and a design for use with its juice bar services. GS Enterprises opposed the application on the ground that the mark was likely to cause confusion with its own family of marks, all of which contain the phrase “PEACE & LOVE” and are registered for use with restaurant services. The Trademark Trial and Appeal Board sustained the opposition and refused to register Juice Generation’s mark. The Federal Circuit remanded, finding that the Board did not adequately assess the weakness of GS’s marks and did not properly consider the three-word combination of Juice Generation’s mark as a whole in comparing it to the two-word combination in GS’s marks. View "Juice Generation, Inc. v. GS Enters., LLC" on Justia Law

Capital is a Delaware holding company, whose subsidiaries, Arrowood Indemnity and Arrowood Surplus Lines Insurance, provide insurance and investment-related financial services throughout the United States under the Arrowpoint Capital name. Capital unsuccessfully sought to enjoin AAM from using a logo or word mark employing the name “Arrowpoint” in connection with any investment-related products and services. The Third Circuit vacated and remanded, finding that the lower court employed an overly narrow interpretation of the kind of confusion that is actionable under the Lanham Act, 15 U.S.C. 1114. The court .failed to hold an evidentiary hearing, or to adequately set forth its rationale for discounting Capital’s evidence, or to hear oral argument, View "Arrowpoint Capital Corp v. Arrowpoint Asset Mgmt., LLC" on Justia Law

MTM filed suit against online retailer Amazon under the Lanham Act, 15 U.S.C. 1051 et seq., alleging that Amazon had infringed MTM's trademark. MTM argues that initial interest confusion might occur because Amazon lists the search term used – here the trademarked phrase “mtm special ops” – three times at the top of its search page. The district court granted summary judgment in favor of Amazon. The court considered five non-exhaustive Sleekcraft factors to determine whether a trademark gives rise to a likelihood of confusion: the strength of the mark, relatedness/proximity of the goods, evidence of actual confusion, defendant’s intent, and the degree of care exercised by purchasers. The court concluded that there are genuine issues of material fact as to whether there is a likelihood of confusion under the initial interest confusion theory. Finally, the court held that the customer-generated use of a trademark in the retail search context is a use in commerce. In this case, Amazon's purpose is not less commercial just because it is selling wares, not advertising space. Therefore, the court declined to affirm the district court on the alternative ground that Amazon’s use is not a use in commerce. Accordingly, the court reversed and remanded. View "Multi Time Machine v. Amazon.com" on Justia Law

DRI filed suit against LIA and Ashley under the Lanham Act, 15 U.S.C. 1125(a), alleging that an advertisement placed in a trade magazine by Ashley, and two statements made by the director of LIA's research laboratory, which ran in articles in the same publication, were false and misleading. On appeal, DRI challenged the district court's grant of summary judgment for LIA and Ashley on DRI's false advertising claim. The court agreed with the district court that DRI failed to substantiate a claim that the Ashley Ad is either literally false or impliedly false; that DRI failed to provide sufficient support for a false advertising claim with respect to the director’s statement in the Gunin Article; and that DRI failed to provide sufficient evidence to demonstrate that the director's statement in the Andrews Article was a false or misleading representation of fact. Accordingly, the court affirmed the judgment. View "Design Resources, Inc. v. Leather Indus." on Justia Law

Sorensen is the CEO of Inhibitor Technology, which produces rust-inhibiting products containing volatile corrosion inhibitor (VCI), branded with the federally registered trademark THE INHIBITOR. That word mark is owned by Sorensen; he also claims common law trademark rights in a design mark associated with his products, an orange-and-black crosshair. The WD-40 Company, maker of the spray lubricant, introduced the new WD-40 Specialist product line. Sorensen claimed that the branding for those products infringed upon his marks. WD-40 Specialist Long-Term Corrosion Inhibitor, which contains VCI and has a purpose similar to that of Sorensen’s products, contains on its packaging both the word “inhibitor” and an orange crosshair. The district court granted summary judgment, finding that WD-40’s use of the word “inhibitor” was a non-trademark descriptive fair use of the word. As to the crosshair mark, the court found that Sorensen had not presented sufficient evidence to demonstrate a genuine issue of material fact as to a likelihood of confusion. The Seventh Circuit affirmed. The most important factors: similarity of the marks, bad faith intent, and evidence of actual confusion, weigh in favor of WD-40. No consumer would think that the marks are similar. The court noted the” clear weakness of Sorensen’s marks,” which appear inconsistently on his products. View "Sorensen v. WD-40 Co." on Justia Law

Berger manufactures, imports, and sells watches, clocks, and personal care products. It filed an intent-to-use application at the Patent and Trademark Office, to register the mark “iWatch” for 30 different goods in the general categories: watches, clocks, and goods related to watches or clocks. Berger declared “a bona fide intention to use or use through [Berger’s] related company or licensee the mark in commerce on or in connection with the identified goods and/or services.” The PTO approved the application for publication. Swatch filed an opposition, claiming that “iWatch” is confusingly similar to its mark, “Swatch,” and that Berger lacked a bona fide intent to use the mark in commerce (15 U.S.C. 1051(b)(1)). The Trademark Trial and Appeal Board considered the testimony of Berger’s owner and CEO that he did not expect the iWatch mark to be used for clocks and personal care products. His paralegal testified that she was told that the list was intended to “leave all doors open.” The Board concluded that Berger lacked intent to use the mark on clocks and related goods and lacked a genuine plan to commercialize the mark on watches, but only intended to reserve a right in the mark. The Federal Circuit affirmed, finding the conclusion supported by substantial evidence. View "M.Z. Berger & Co., Inc. v. Swtch AG" on Justia Law

A jury found that Samsung smartphones infringed and diluted Apple’s patents and trade dresses amd awarded Apple $290,456,793. The Federal Circuit affirmed the verdict on the design patent infringements, the validity of two utility patent claims, and the damages awarded for the design and utility patent infringements, but reversed findings that the asserted trade dresses are protectable. Apple claimed elements from its iPhone 3G and 3GS products to define an asserted unregistered trade dress: a rectangular product with four evenly rounded corners; a flat, clear surface covering the front of the product; a display screen under the clear surface; substantial black borders above and below the display screen and narrower black borders on either side of the screen; and when the device is on, a row of small dots on the display screen, a matrix of colorful square icons with evenly rounded corners within the display screen, and an unchanging bottom dock of colorful square icons with evenly rounded corners set off from the display’s other icons. The registered trade dress claims the design details in each of the 16 icons on the iPhone’s home screen framed by the iPhone’s rounded-rectangular shape with silver edges and a black background. View "Apple, Inc. v. Samsung Elecs. Co., Inc." on Justia Law

PV applied to register PRETZEL CRISPS in standard character format for “pretzels” on an intent-to-use basis under the Lanham Act, 15 U.S.C. 1051. The trademark examiner refused registration on the Principal Register, finding the proposed mark merely descriptive. PV: amended its identification of goods to “pretzel crackers;” disclaimed the exclusive right to use “pretzel” apart from the mark as a whole; and obtained registration on the Supplemental Register. Years later, PV again sought to register PRETZEL CRISPS on the Principal Register, identifying October, 2004 as its first use of the mark in commerce, disclaiming the exclusive right to use the term “pretzel” apart from the mark as shown, and claiming acquired distinctiveness in the mark as a whole. Frito-Lay filed opposition, arguing that the term PRETZEL CRISPS is generic for pretzel crackers and not registrable and that PRETZEL CRISPS is highly descriptive of a type of cracker product and has not acquired distinctiveness. Frito-Lay also moved to cancel the supplemental registration. The Trademark Trial and Appeal Board granted the petition for cancellation, finding that “pretzel crisps” was a compound term, not a phrase, and was generic. The Federal Circuit vacated: the Board overlooked or disregarded a genericness survey as to which it apparently found no flaw and applied the incorrect legal standard in assessing whether the term was generic. View "Princeton Vanguard, LLC v. Frito-Lay of N. Am., Inc." on Justia Law