Justia Trademark Opinion Summaries

Fortres develops and sells a desktop management program called “Clean Slate” and holds a federally-registered trademark for use of that name to identify “[c]omputer software used to protect public access computers by scouring the computer drive back to its original configuration upon reboot.” When Warner Bros. Entertainment used the words “the clean slate” to describe a hacking program in the movie, The Dark Knight Rises, Fortres experienced a precipitous drop in sales of its software. Fortres sued, alleging that the use of the words “clean slate” in reference to the software in its movie infringed its trademark in violation of Lanham Act, 15 U.S.C. 1114, 1125, and Indiana unfair competition law. The district court dismissed, reasoning that Fortres had not alleged a plausible theory of consumer confusion, upon which all of its claims depend, and that Warner Bros.’ use of the words “the clean slate” was protected by the First Amendment. The Seventh Circuit affirmed without reaching the constitutional question. Juxtaposed against the weakness of all the other relevant factors, the similarity of the marks is not enough to establish confusion. Trademark law protects the source-denoting function of words used in conjunction with goods and services, not the words themselves.View "Fortres Grand Corp. v. Warner Bros. Entm't, Inc." on Justia Law

Plaintiff is the marketer, distributor, and seller of 5-hour ENERGY (FHE), an “energy shot,” which is an energy drink sold and consumed in small portions. Plaintiff began selling FHE in 2004. FHE was not the first energy shot on the market, but was the first to achieve widespread success and was unique in being marketed FHE to adults as a replacement for an afternoon cup of coffee or a caffeinated soda. Plaintiff submitted “5-hour ENERGY” for trademark registration with the Patent and Trademark Office, which rejected the application in January 2005, deeming the mark too descriptive to be eligible for protection. Plaintiff placed FHE on the Supplemental Register in September 2005 and secured a trademark for “5-hour ENERGY” in August 2011. Plaintiff also protected its mark and market position through litigation. Defendants have marketed dietary supplements since the mid-1990s. In 2008, defendants began to market and sell “6 Hour Energy Shot,” in a bottle resembling the FHE bottle. In a suit under the Lanham Act, 15 U.S.C. 1051, the district court found infringement of plaintiff’s trademark and trade dress, then entered an order of contempt after the defendants violated a permanent injunction entered. The Sixth Circuit affirmed.View "Innovation Ventures, LLC v. N2G Distrib., Inc." on Justia Law

SoCal filed suit against Defendant Zaffina and his company, SoCal Inc., alleging violations of the Lanham Act, 15 U.S.C. 1051 et seq.; the California Business and Professions Code; common law trademark infringement; and unfair competition. The court concluded that the district court did have jurisdiction over SoCal's claim under the Lanham Act; the district court properly concluded that SoCal had the capacity to bring its Lanham Act claim in federal court; SoCal had standing to sue; and SoCal's motion for summary judgment was properly served on Zaffina. On the merits, the court concluded that SoCal was entitled to summary judgment where the contested marks are protectable, SoCal owns these marks, and Zaffina's use of these marks is likely to cause confusion. The court held that unincorporated associations have the capacity to own trademarks and the district court's assumption that SoCal has the capacity to own the contested marks was correct. The court rejected defendant's remaining claims and affirmed the district court's entry of summary judgment. View "S. Cal. Darts Ass'n v. Zaffina" on Justia Law

Syngenta, producer of a genetically-modified corn seed, filed suit against Bunge, an agricultural produce storage and transport company, alleging breach of an obligation under the United States Warehouse Act (USWA), 7 U.S.C. 241-256; breach of a duty to third party beneficiaries of a licensing agreement between Bunge and the federal government; and false advertising in violation of the Lanham Act, 15 U.S.C. 1125. The court concluded that the text of the USWA and the structure of the Act do not implicitly authorize a private cause of action for violations of a warehouse operator's fair treatment obligations; Syngenta is not a third-party beneficiary of the License Agreement and the district court did not err in dismissing this claim on the pleadings; and the court found it was necessary to remand the Lanham Act claim, in light of Lexmark Int'l, Inc. v. Static Control Components, Inc., for the district court to determine in the first instance whether Syngenta has standing to bring the claim under the zone-of-interests test and proximate causality requirements. Accordingly, the court affirmed the dismissal of the USWA and third-party beneficiary claims, and vacated the grant of summary judgment to Bunge on the Lanham Act claim and remanded for further proceedings. View "Syngenta Seeds, Inc. v. Bunge North America, Inc." on Justia Law

Quinta Real appealed from the district court's conclusion that expansion of Quinta Real's Mexican hotel business into the United States would result in a likelihood of consumer confusion with La Quinta. The court held that the "use in commerce" element of the Lanham Act claims under section 32 and 43(a) is not connected to the Lanham Act's jurisdictional grant in 15 U.S.C. 1121(a), which grants federal subject-matter jurisdiction without any reference to a "use in commerce" requirement. Therefore, the court concluded that there is federal subject-matter jurisdiction over the trademark claims. The court also concluded that the district court correctly found a likelihood of confusion, but did not provide a sufficient analysis balancing the equities in its decision to grant a permanent injunction. The court held that the defense of laches did not apply. The court affirmed in part and remanded for further assessment of the equities. View "La Quinta Worldwide v. Q.R.T.M." on Justia Law

Stauffer, pro se, filed a qui tam action against Brooks Brothers under the then-version of the false-marking statute, 35 U.S.C. 292, claiming that Brooks Brothers marked its bow ties with expired patent numbers. In 2011, while the action was pending, the President signed into law the America Invents Act, 125 Stat. 284A, which eliminated the false-marking statute’s qui tam provision, so that only a “person who has suffered a competitive injury” may bring a claim. The AIA also expressly states that marking a product with an expired patent is not a false-marking violation and that the amendments apply to all pending cases. Stauffer argued that the AIA amendments were unconstitutional because they amounted to a pardon by Congress, violating the doctrine of separation of powers, and also violated the common-law principle that prohibits use of a pardon to vitiate a qui tam action once the action has commenced. The district court dismissed for lack of standing. The Federal Circuit affirmed, finding that the amendments did not constitute a pardon and that even if the law had not changed, Stauffer might have lost his lawsuit, and, therefore, could not have acquired a private-property interest in his share of the statutory penalty. View "Stauffer v. Brooks Brothers, Inc." on Justia Law

In 2001, ASC and Paragon entered into a contract to develop and support computer software for the Chicago Tribune. This software, called the “Single Copy Distribution System” (SCDS) would allow the Tribune to manage and track newspaper deliveries and subscriptions. Tensions emerged and Paragon terminated the contract in 2003. ASC successfully sued Paragon in Ohio state court, obtaining a declaration that ASC was the sole owner of the SCDS. In federal court, ASC alleged copyright infringement, trademark infringement, breach of contract, conversion, tortious interference with a business relationship, unjust enrichment, and unfair competition based on Paragon’s alleged copying of the SCDS software to use in its DRACI software, developed in 2004 for another newspaper. After eight years of litigation, the district court granted summary judgment to Paragon on all claims. The Sixth Circuit affirmed, stating that ASC had never submitted any evidence identifying the unique protectable elements of SCDS, and that there was insufficient evidence to generate even an implication that DRACI is substantially similar to SCDS. View "Automated Solutions Corp. v. Paragon Data Sys., Inc." on Justia Law

McAirlaids filed suit against Kimberly-Clark for trade-dress infringement and unfair competition under section 32(1)(a) and 43(a) of the Trademark Act of 1946 (Lanham Act), 15 U.S.C. 1114(1)(a) and 1125(a), and Virginia law. McAirlaids produces "airlaid," a textile-like material composed of cellulose fiber. McAirlaids fuses shredded cellulose fiber ("fluff pulp") through a patented embossing process that produces a "pixel" pattern for its absorbent products. McAirlaids filed suit against Kimberly-Clark after Kimberly-Clark began using a similar dot pattern on its GoodNites bed mates, an absorbent product manufactured in a manner different from McAirlaid's pads. On appeal, McAirlaids appealed the district court's grant of summary judgment for Kimberly-Clark. The court concluded that McAirlaids has presented sufficient evidence to raise a genuine issue of material fact regarding the functionality of its pixel-pattern. In particular, deciding whether McAirlaid's embossing pattern affects the quality of its pads requires weighing evidence and making credibility determinations. Therefore, the court vacated the district court's grant of summary judgment and remanded for further proceedings. View "McAirlaids, Inc. v. Kimberly-Clark Corp." on Justia Law

Wisconsin’s Door Peninsula Winery began selling a spiced apple wine called “Hallowine” in 1998. Sales were brisk, and Door Peninsula expanded operations to Illinois later that year. Illinois River Winery began selling its own Hallowine in 2005 and sought to register the Hallowine mark in 2006. Door Peninsula initiated opposition proceedings at the PTO. The Trademark Trial and Appeal Board ruled in its favor, finding that Door Peninsula had priority in the Hallowine mark. Illinois River continued to sell its Hallowine despite the ruling. Door Peninsula filed suit in 2012, asserting infringement of its common law trademark rights and infringement of unregistered marks under section 43(a) of the Lanham Act. Illinois River asserted 27 affirmative defenses. The district court granted summary judgment, dismissing Illinois River’s affirmative defenses and a finding that Illinois River was liable for trademark infringement damages in the amount of $508,864.26. The Seventh Circuit affirmed, noting that Illinois River only raised arguments that were not before the district court. View "C&N Corp. v. Kane" on Justia Law

Cubatabaco, a Cuban entity, and General, a Delaware company, manufacture and distribute cigars using the COHIBA mark. General owns trademark registrations issued in 1981 and 1995. Cubatabaco owns the mark in Cuba and uses it worldwide. Cuban Assets Control Regulations (CACR), prohibit Cubatabaco from selling cigars in the U.S.; 31 C.F.R. 515.201(b) prohibits “transfer of property rights . . . to a Cuban entity,” but a general or specific license allows Cuban entities to engage in otherwise prohibited transactions. General licenses are available for transactions “related to the registration and renewal” of U.S. trademark. Specific licenses issue from the Office of Foreign Assets Control. Cubatabaco used a general license to attempt to register the COHIBA mark in 1997, relying on 15 U.S.C. 1126(e), which allows reliance on a foreign registration if the applicant has a bona fide intent to use the mark in commerce. Cubatabaco also sought to cancel General’s registrations, which the PTO cited as a basis for likelihood of confusion. Cubatabaco obtained a special license to sue General. The district court held that General had abandoned its registration by non-use and enjoined General’s use of the COHIBA mark, finding that Cubatabaco had acquired ownership under the famous marks doctrine. The Second Circuit reversed, holding that injunctive relief would involve a prohibited transfer under CACR because Cubatabaco would acquire ownership of the mark and later affirmed denial of General’s motion concerning cancellation of its registrations. The Board then dismissed Cubatabaco’s petition, stating that it need not address preclusion because Cubatabaco lacked standing. The Federal Circuit vacated, finding that Cubatabaco has a statutory cause of action to petition to cancel the registrations and that issue and claim preclusion do not bar that petition View "Empresa Cubana del Tabaco v. General Cigar Co., Inc." on Justia Law