Justia Trademark Opinion Summaries

Marzetti, which markets five varieties of “New York Brand the Original Texas Toast” croutons, sued under 15 U.S.C. 1125(a) alleging infringement based on Roskam’s use of the mark “Texas Toast” on its packaged croutons. The district court agreed with Roskam that the terminology is generic when describing a type of crouton, so that the mark “Texas Toast” is not entitled to trademark protection and that even if “Texas Toast” were a protectable mark, Roskam’s use did not create a likelihood of confusion among consumers. The Sixth Circuit affirmed, citing the generic quality of the mark. View "T. Marzetti Co. v. Roskam Baking Co" on Justia Law

FNB South Dakota and its affiliates appealed from the district court's entry of a permanent injunction against them as a remedy for trademark infringement and unfair competition claims brought by FNB Sioux Falls. FNB Sioux Falls cross-appealed the denial of its motion for attorney's fees and the district court's purported factual finding that certain of FNB South Dakota's affiliates' names "appear" not to infringe FNB Sioux Falls' marks. The court held that, because the nucleus of operative facts in this action included facts not common to the prior action, this action was not barred by res judicata; the admission of the confusion log was harmless error; the district court's finding of a likelihood of confusion was based on a permissible view of the evidence and was therefore not clearly erroneous; and the district court's denial of fees must be affirmed. The court also declined to strike the challenged language from the district court's Amended Findings of Fact and Conclusions of Law. Accordingly, the court affirmed the judgment. View "The First National Bank v. First National Bank SD, et al." on Justia Law

Appellants sued GLC and SGI asserting trademark infringement, deceptive trade practices, and breach of contract stemming from GLC's "Money Bags" lottery games of 2005 and 2007. At issue was whether the Court of Appeals erred in finding that GLC was entitled to assert sovereign immunity as a bar to a suit raising claims that arose outside the Georgia Tort Claims Act and whether the Court of Appeals erred in finding that OCGA 10-1-440 required the bona fide use of a trademark to make out a claim concerning the trademark's infringement? The court held that because sovereign immunity applied to state instrumentalities, GLC was entitled to assert sovereign immunity as a defense in this case. The court also held that there was no error in the interpretation of OCGA 10-1-440(b) by the Court of Appeals where appellants have not made "bona fide" use of their MONEYBAG$ mark in commerce sufficient to establish protectable rights in the mark. Accordingly, the judgment was affirmed.View "Kyle, et al. v. Georgia Lottery Corp., et al." on Justia Law

Maker's Mark sued Jose Cuervo for trademark infringement, based on Cuervo's use of red dripping wax seal on bottles of premium tequila. The district court found that the Maker's Mark trademark was valid, rejecting an argument of "functionality" under 15 U.S.C. 1065, and had been infringed. The court entered an injunction, but denied damages. The Sixth Circuit affirmed. The court traced the history of bourbon whiskey and noted that Maker's Mark and its use of a red dripping wax seal, a registered trademark since 1958, occupy a central place in the modern story of bourbon. The majority of the factors indicate a possibility of "confusion of sponsorship" trademark infringement: strength of the trademark, relatedness of the goods, similarity, and marketing channels. Whether there was actual confusion was a neutral factor. View "Maker's Mark Distillery, Inc. v. Diageo North America, Inc." on Justia Law

Triumph publishes books and software to prepare teachers and students for standardized tests. In 2004, Triumph filed use-based applications for the COACH word mark, a stylized COACH mark, and a COACH mark and design. CSI sells handbags, luggage, clothing, watches, eye glasses, and wallets and has used the COACH mark since at least 1961. CSI owns 16 incontestable registrations for the COACH mark: all but one issued before Triumph's application. CSI filed Notice of Opposition on grounds of likelihood of confusion (15 U.S.C. 1052(d)) and dilution (15 U.S.C. 1125(c)). The Trademark Trial and Appeal Board dismissed. The Federal Circuit affirmed findings that there was no likelihood of confusion between the marks and that CSI failed to prove likelihood of dilution. Because of evidentiary errors, the court vacated and remanded a finding that, although Triumph's marks are merely descriptive, they have acquired secondary meaning, and were entitled to registration. View "Coach Serv., Inc. v. Triumph Learning, LLC" on Justia Law

This case arose when Ford sent a cease-and-desist letter to NBFP, demanding that NBFP pay damages and refrain from using Ford's trademarks on its websites. NBFP sued Ford in Texas state court, seeking a declaratory judgment that its online printing operations did not infringe Ford's trademark rights. NBFP subsequently appealed the district court's partial grant of summary judgment for Ford; the district court's final judgment holding NBFP liable for trademark infringement; and the district court's order denying NBFP's motion to amend its complaint. Ford cross-appealed from the district court's final judgment, disputing that court's findings on infringement, dilution, and attorney's fees. The court held that the district court's grant of partial summary judgment to Ford was affirmed. Because there was no likely threat of consumer confusion as to NBFP's sale of products bearing the Ford marks to three independent used car dealers, the court reversed the district court's judgment finding that NBFP's sale of these products amounted to trademark infringement, the court remanded to the district court with instructions to enter judgment for NBFP on this category of products. The court affirmed the district court's judgment in all other respects. View "Nat'l Business Forms v. Phillips, et al." on Justia Law

Tractel, manufacturer and seller of the Tirak traction hoist, brought suit claiming that Jiangsu's hoists infringed the trade dress of the Tractel traction hoist. At issue was whether the Tractel traction hoist qualified for trade dress protection. The court agreed with the district court that Tractel did not meet its burden of establishing non-functionality and affirmed the grant of summary judgment in favor of Jiangsu. The court affirmed the district court's award of attorney's fees to Jiangsu upon finding that this was an "exceptional" case meriting fees where Tractel's continued prosecution of its claims was held by the district court to be "unreasonable." While the line delineating "exceptional" cases under the Lanham Act, 15 U.S.C. 1125(a)(3), could be murky, this action fell squarely within the realm of exceptional cases contemplated by the Act. Finally, the court reversed the district court's award of non-taxable costs and certain taxable costs and remanded for further proceedings. View "Secalt S.A., et al. v. Wuxi Shenxi Construction Machinery Co., Ltd." on Justia Law

Plaintiff sued defendant for fraud and for misappropriation of trade secrets over plaintiff's invention of the "Pit Bull," a machine intended to make the process of cleaning drilling fluids more efficient. Defendant appealed from a jury verdict awarding plaintiff compensatory damages and punitive damages for fraud and compensatory damages for misappropriation of trade secrets. Because plaintiff did not prove that he was entitled to damages on his fraud claim, the court rendered a take-nothing judgment on plaintiff's fraud claim, and reversed the jury's award of punitive damages. Because the verdict for misappropriation of trade secrets was supported by sufficient evidence, the court affirmed the jury's verdict on plaintiff's claim for misappropriation of trade secrets. View "Bohnsack v. Varco, L.P." on Justia Law

Plaintiff owns registration for the mark G THE GOODYMAN. An examining attorney rejected defendant's application to register GOODY MAN for bakery goods, on the ground of likelihood of confusion with G THE GOODYMAN; the rejection is on appeal to the Trademark Trial and Appeal Board. Defendant filed a petition for cancellation of registration for G THE GOODYMAN, citing grounds of fraud and abandonment. Based on failure to comply with discovery orders, the Board entered default judgment against plaintiff and cancelled his registration of G THE GOODYMAN. On remand from the Federal Circuit, the Board held that the suspension of proceedings as required by Rule 2.127(d) was not automatic with plaintiff's filing of a motion for summary judgment, reinstated its default judgment, and cancelled plaintiff's trademark registration. The Federal Circuit affirmed, stating that default was reasonable, in light of plaintiff's repeated failures to comply, regardless of the court's reading of the Rule. View "Bendict v. Super Bakery, Inc." on Justia Law

In 1995, plaintiff, a popular psychic and astrologer, and defendant entered into a contract for production and distribution of materials featuring plaintiff's psychic and astrological services. Plaintiff granted defendant the right to use his trademark, name, and likeness. After a 2006 dispute led to litigation; a jury rejected plaintiff's claim that he had validly terminated the agreement, found that he had violated the agreement, and found that defendant owed him no compensation. In 2009, both parties sought injunctive relief to prevent the other party from using the trademark. The district court entered a preliminary injunction in favor of defendant, finding that plaintiff had assigned the trademark in perpetuity. The First Circuit affirmed. The district court did not abuse its discretion in issuing a preliminary injunction, based on its interpretation of the agreement and application of collateral estoppel, based on the prior litigation. View "Mercado-Salinasl v. Bart Enter. Int'l, Ltd." on Justia Law