Justia Trademark Opinion Summaries

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

Smart Candle sells light-emitting diode flameless candles and commercial lighting systems internationally. Excell sued under the LanhamAct alleging that Smart Candle’s use of the trade name and trademark “Smart Candle” infringed rights that Excell had over use of that name and trademark. Selective insured Smart Candle during the period in which the Excell suit commenced, but disclaimed coverage, based on exclusion any injury “arising out of the infringement of copyright, patent, trademark, trade secret or other intellectual property rights” that “does not apply to infringement in your ‘advertisement’ of copyright, trade dress or slogan.” Excell won its suit. Selective sought a declaration that it owed no duty to defend or indemnify. Smart Candle counterclaimed breach of contract, arguing that Selective had not conducted “reasonable investigation of Excell’s Claims” including “a review of Smart Candle’s website . . . or any of Smart Candle’s advertising before denying coverage.” The district court granted Selective summary judgment. The Eighth Circuit affirmed, agreeing that no reasonable jury would conclude that Excell was suing for slogan infringement and that Selective had no duty to investigate “beyond the four corners of the complaint” to determine whether other facts could trigger Selective’s duty to defend or indemnify. View "Selective Ins. Co. v. Smart Candle, LLC" on Justia Law

Buckminster Fuller, “Bucky,” a designer, author, and inventor, well known for popularizing the geodesic dome, died in 1983. Beginning around 2009, Maxfield manufactured and distributed products under the Buckyball and related trademarks. According to its press release, Buckyballs, “the world’s best-selling desktoy,” were “inspired and named after famous … inventor, R. Buckminster Fuller.” Buckyballs are round magnets packaged in a cube shape, which can be formed into various shapes. The Big Book of Bucky, which provides instructions, states: Buckyballs were named for Buckminster Fuller. Fuller’s Estate sued, alleging: unfair competition, 15 U.S.C. 1125(a) (Lanham Act); invasion of privacy (appropriation of name and likeness); unauthorized use of name and likeness, Cal. Civil Code 3344.1; and violation of Cal. Business & Professions Code 17200. Alterra had issued an insurance policy to Maxfield, effective June 2010. Alterra agreed to defend under a reservation of rights, then sought a declaration that Alterra’s policy did not provide coverage. The Estate agreed to be bound by the outcome in return for being dismissed. Because of Maxfield’s stipulation to the allegations in the coverage action and acting without leave, the Estate later responded to Alterra’s complaint. The court of appeal affirmed a holding that Alterra had no duty to defend and no duty to indemnify, based on the “intellectual property” exclusion. View "Alterra Excess & Surplus Ins. Co. v. Estate of Buckminster Fuller" on Justia Law

Marcel filed suit against Lucky Brand, seeking damages and injunctive relief based on claims of trademark infringement, false designation of origin, and unfair competition under 15 U.S.C. 1114, 1116, and 1125, as well as common law trademark infringement and unfair competition under Fla. Stat. 495.151. On appeal, Marcel challenged the district court's judgment in favor of Lucky Brand. The court concluded that a prior judgment in Marcel's favor awarding damages and an injunction did not bar Marcel from instituting a second suit seeking relief for alleged further infringements that occurred subsequent to the earlier judgment. Accordingly, the court vacated the grant of summary judgment and the denial of leave to amend the complaint. The court affirmed the district court's denial of Marcel's motion to hold Lucky Brand in contempt for violation of an injunction in the prior litigation because Marcel did not show that Lucky Brand's conduct violated the terms of the injunction. View "Marcel Fashions v. Lucky Brand Dungarees" on Justia Law

This dispute over a commercial relationship stemmed from an agreement between Pennzoil and Miller Oil where Pennzoil agreed to loan Miller Oil equipment for use at Pit Stop. After Pennzoil discovered that Pit Stop was using mislabeled bulk oil that Pit Stop claimed was a Pennzoil product, Pennzoil filed a trademark infringement lawsuit. The district court concluded that Pennzoil's marks are valid and protectable, and that there was a likelihood of confusion between Miller Oil's marks and Pennzoil's marks, such that the use of the latter by defendants constituted trademark infringement. The district court considered Miller Oil's affirmative defense of acquiescence and ruled that Pennzoil had implicitly and explicitly assured Pit Stop that the use of the Pennzoil trademarks and trade dress were allowed, and that Miller Oil relied upon Pennzoil's assurances. The court concluded that, given Miller Oil did not establish undue prejudice, the district court's legal conclusion that Pennzoil had acquiesced was error. Allowing Miller Oil to continue to display Pennzoil's marks in light of an unchallenged determination of trademark infringement would be the type of "unjustified windfall" the court previously condemned. Accordingly, the court reversed the district court's finding of acquiescence and vacated the elements of the injunction allowing Miller Oil to use Pennzoil's marks. View "Pennzoil-Quaker State v. Miller Oil and Gas" on Justia Law

Hope Road, an entity owned by Bob Marley's children, granted Zion an exclusive license to design, manufacture, and sell t-shirts and other merchandise bearing Marley's image. Hope Road and Zion filed suit against multiple defendants who were involved in the sale of competing Marley merchandise, alleging claims arising from defendants' use of Marley's likeness. The court concluded that the district court did not err by denying defendants' post-trial motion for judgment as a matter of law on the Lanham Act, 15 U.S.C. 1125(a), false endorsement claim where defendants waived several defenses to plaintiffs' claims by failing to properly raise them in the district court; the district court did not abuse its broad discretion in determining the profits for Defendants A.V.E.L.A., Freeze, and Jem where there was sufficient evidence to find Freeze willfully infringed plaintiffs' rights because Freeze's vice president of licensing testified that she knew that plaintiffs had the right to merchandising Marley's image before Freeze began selling similar goods; the Seventh Amendment does not require that a jury calculate these profits because juries have not traditionally done so, and a claim for profit disgorgement is equitable in nature; the district court did not abuse its discretion by ordering A.V.E.L.A. defendants to pay attorneys' fees; the court affirmed the district court's grant of summary judgment to defendants on the right of publicity claim; there was sufficient evidence to support the jury's finding that A.V.E.L.A. defendants interfered with prospective economic advantage; and the district court did not err in granting defendants' motion for judgment as a matter of law on the issue of punitive damages. View "Fifty-Six Hope Road Music v. A.V.E.L.A." on Justia Law