Justia Trademark Opinion Summaries

Plaintiff, doing business as Paddle Tramps, appealed the district court's order granting a partial preliminary injunction against his use of trademarks belonging to 32 Greek Organizations. The Greek Organizations cross-appealed. The court held that the district court did not abuse its discretion in instructing the jury that to prove unclean hands, the Greek Organizations had to show that plaintiff knowingly and intentionally infringed upon the marks with the bad faith intent to benefit from or capitalize on the Greek Organization's goodwill by confusing or deceiving buyers; the evidence was legally sufficient to allow a jury to find for plaintiff on the unclean hands issue because it supported a showing of plaintiff's lack of bad faith; the district court did not abuse its discretion in its instruction to the jury on the lack-of-excuse element of laches and on undue prejudice; and the jury's finding of undue prejudice was supported by the evidence. Therefore, the district court correctly denied the Greek Organization's motion for judgment as a matter of law. The court also held that the district court properly balanced the equities in resolving this dispute and did not abuse its discretion in fashioning injunctive relief. Accordingly, the court affirmed the judgment. View "Abraham v. Alpha Chi Omega, et al" on Justia Law

Superior owns three patents, which claim priority to a 2006 application and cover a “Braced Telescoping Support Strut and System” that supports a portable conveyor assembly to transport and stockpile rock, sand, grain, and other aggregate material. Superior alleges its patents claim an improved undercarriage that enables portable conveyors to safely and stably operate at heights above previous conveyors by using cross bracing between the upper and lower support beams that does not interfere with the extension or retraction of upper support beams. Superior claims to have coined the term “fully braced” and owns the registered trademark “FB.” Thor competes in the portable conveyor market and, in 2007, filed a U.S. patent application for an “Undercarriage for a Telescopic Frame,” disclosing a telescoping frame similar to that claimed in the Superior patents. Thor issued a press release describing a conveyor system with a new “PATENT-PENDING FB Undercarriage.” Superior initiated a trademark infringement action that ended in a 2010 Consent Judgment, enjoining Thor from use of the “FB” trademark. Superior then sued for patent infringement. The district court dismissed, citing claim preclusion. The Federal Circuit reversed in part. Superior’s prior trademark infringement action did not arise from the same operative facts. View "Superior Indus., L.L.C. v. Thor Global Enter., Ltd." on Justia Law

BD applied to register with the U.S. Patent and Trademark Office a mark for "closures for medical collection tubes," asserting acquired distinctiveness based on five years of substantially exclusive, continuous use in commerce. The examining attorney refused registration under 15 U.S.C. 1052(e)(5) finding that the cap design was functional and that even if non-functional, the cap design was a non-distinctive configuration of the goods under 15 U.S.C. 1051-1052 and 1127. She found BD's declaration insufficient to show acquired distinctiveness under 15 U.S.C. 1052(f). The Trademark Trial and Appeal Board and the Federal Circuit affirmed on the basis that the cap is functional.View "In re Becton Dickinson & Co." on Justia Law

Rosetta Stone appealed from an order granting summary judgment in favor of Google for Rosetta Stone's trademark infringement, contributory and vicarious trademark infringement, and trademark dilution claims. Rosetta Stone also appealed from an order dismissing its unjust enrichment claim under Virginia Law. Rosetta Stone contended that Google's policies concerning the use of trademarks as keywords and in ad text created not only a likelihood of confusion but also actual confusion, as well as misleading Internet users in purchasing counterfeit Rosetta Stone software. The court affirmed the district court's order with respect to the vicarious infringement claim and the unjust enrichment claims. The court vacated, however, the district court's order with respect to Rosetta Stone's direct infringement claim after addressing the likelihood of confusion and the functionality doctrine; contributory infringement claim where the evidence recited by the district court was sufficient to establish a question of fact as to whether Google continued to supply its services to known infringers; and dilution claim where the district court erred by omitting the question of good faith and collapsing the fair-use defense into one question. The court remanded the case for further proceedings.View "Rosetta Stone Ltd. v. Google, Inc." on Justia Law

The Trademark Trial and Appeal Board found that a service mark, NATIONAL CHAMBER, submitted by the Chamber of Commerce of the USA, was correctly refused registration for being merely descriptive under 15 U.S.C. 1052(e)(1). The Federal Circuit affirmed, finding the decision supported by substantial evidence.View "In re: Chamber of Commerce of the United States of America" on Justia Law

This case involved the importation and sale of counterfeit luxury goods bearing trademarks owned by Louis Vuitton (plaintiff) and others. Defendants appealed from the district court's judgment granting summary judgment to plaintiff on its claims of trademark counterfeiting and infringement, and awarding plaintiff statutory damages in the amount of $3 million, and more than $500,000 in attorney's fees and costs. The court concluded that the district court did not abuse its discretion in declining to stay the proceedings; that, as the district court concluded, an award of attorney's fees under 15 U.S.C. 1117(a) could accompany an award of statutory damages pursuant to 15 U.S.C. 1117(c); and that the district court did not abuse its discretion in awarding such fees or in setting their amount. Accordingly, the judgment was affirmed.View "Louis Vuitton Malletier S.A. v. LY USA, Inc., et al." on Justia Law

LE, creator of the “5-hour ENERGY” energy shot, asserted that N.V.E., creator of the “6 Hour POWER” energy shot, infringed its trademark, under the Lanham Act. 15 U.S.C. 125(a). LE distributed a “recall notice” stating that NVE’s “‘6 Hour’ energy shot” had been recalled. NVE claims that the notice constituted false advertising in violation of the Lanham Act and anti-competitive conduct in violation of the Sherman Act, 15 U.S.C. 2. The district court first found that a likelihood of confusion did not exist between “6 Hour POWER” and “5-hour ENERGY” and held that the recall notice did not constitute false advertising or a violation of the Sherman Act. The Sixth Circuit reversed with respect to trademark infringement and false advertising claims, but affirmed with respect to Sherman Act claims. The “5-hour ENERGY” mark is suggestive and protectable, but the factors concerning likelihood of confusion were closely balanced, making summary judgment in appropriate. There were also unresolved questions of fact as to whether the “recall notice” was misleading, but there was no Sherman Act violation because it was relatively simple for NVE to counter it by sending notices that “6 Hour POWER” had not been recalled. View "N.V.E., Inc. v. Innovation Ventures, LLC" on Justia Law

Plaintiff, a religious order of the Roman Catholic Church that undertook charitable work internationally, filed suit against defendant, a charitable organization with an expressly ecumenical association, asserting infringement and false advertising claims under the Lanham Act, 15 U.S.C. 1051 et seq., as well as state law claims for unfair competition and violation of the Florida Deceptive and Unfair Trade Practices Act (FDUTPA), Fla. Stat. 501.201 et seq. The infringement claims were based on defendant's alleged use of marks that were confusingly similar to those for which plaintiff had obtained federal registrations. In the false advertising claim, plaintiff charged that defendant falsely claimed a historic affiliation with plaintiff going back to the eleventh century. The state law claims derived from these same litigations. Defendant counterclaimed, alleging that plaintiff committed fraud on the U.S. Patent and Trademark Office (PTO) in applying for its service marks due to plaintiff's failure to disclose its knowledge of the domestic presence of other organizations that used similar marks in commerce. The court concluded that the district court clearly erred in evaluating the claim that plaintiff committed fraud on the PTO and reversed the cancellation of the four word marks. Because the court was not presented with sufficient findings to review the Lanham Act infringement claims, the court vacated the district court's ruling on that issue and remanded. The court vacated the district court's ruling on the state law claims and affirmed the district court's finding on the Lanham Act false advertising claim in favor of defendant. View "Sovereign Military Hospitaller v. Knights Hospitallers" on Justia Law

Bridgestone registered the mark POTENZA for tires in 1984, stating use in commerce since 1981. Bridgestone registered the mark TURANZA for tires in 2004, stating use in commerce since 1991. Federal filed an intent-to-use application to register the mark MILANZA for tires in 2004. Bridgestone opposed registration, arguing likelihood of confusion. The Board gave little weight to survey evidence of consumer confusion as to the source of tires bearing the MILANZA mark, and held that the "dissimilarity of the marks simply outweighs the other relevant factors." The Federal Circuit reversed, noting the identity of the goods, the lengthy prior use of POTENZA and TURANZA, market strength of the POTENZA and TURANZA marks, and the similarities of words, sounds, and connotation with MILANZA. Sufficient similarity has been shown as would be likely to cause consumer confusion, deception, or mistake.View "Bridgestone Americas Tire Operations, LLC v. Federal Corp." on Justia Law

Suntree appealed from the district court's order denying its motion for summary judgment and granting the motions for summary judgment filed by Ecosense and George Dussich with regard to Suntree's claims of false designation of origin and false advertising under Section 43(a) of the Lanham Act, 15 U.S.C. 1051-1127, common law trademark infringement and unfair competition, and deceptive and unfair trade practices pursuant to the Florida Deceptive and Unfair Trade Practices Act (FDUPTA), Fla. Stat. 501.201 et seq. Both Suntree and Ecosense manufacture baffle boxes, a filtration product. Suntree contended that the district court erred in concluding that Suntree failed to establish that Ecosense and Dussich directly or contributorily infringed on their trademark because it failed to present evidence of actual or of a likelihood of confusion. The court disagreed and affirmed the judgment. View "Suntree Technologies, Inc. v. Ecosense International, Inc., et al." on Justia Law