Justia Trademark Opinion Summaries

Five months after being sued in Oregon for trademark infringement, Jacob Rieger & Co., LLC provided notice to its liability insurer, Cincinnati Insurance Company. Due to Rieger’s delay, Cincinnati refused to reimburse Rieger’s legal fees for the five months that Cincinnati was unaware of the lawsuit. The Oregon case was ultimately dismissed for lack of jurisdiction. Instead of waiting to be sued in a court that did have jurisdiction, Rieger’s parent company, GSP Licensing LLC, filed a new suit in Missouri as the plaintiff. GSP was not named under Rieger’s insurance policy, so Cincinnati denied coverage for the Missouri case. Cincinnati then filed this lawsuit, seeking a declaration of coverage. The district court granted summary judgment to Cincinnati.   The Eighth Circuit reversed in part the district court’s grant of summary judgment to Cincinnati. The court affirmed the dismissal of Rieger’s tort claims and the imposition of sanctions. The court explained that under Missouri law, a tort claim is independent of a contract claim if the tort claim can succeed without regard to the outcome of the contract claim. In other words, the tort claim could succeed regardless of the outcome of the contract claim. Here, Rieger admits that its tort claims would fail if its contract claim succeeded. By Rieger’s own admission, the court found that the district court properly dismissed Rieger’s tort claims. View "Cincinnati Insurance Company v. Jacob Rieger & Co., LLC" on Justia Law

FIC was founded and started using FOREMOST branded marks to market and sell its insurance products. After FIC operated independently for several decades, Farmers Insurance Group acquired FIC in 2000. Now a subsidiary of Farmers, FIC continues to sell insurance in the United States and Florida under its FOREMOST-branded marks. At issue is whether parties’ FOREMOST trademarks at issue could confuse consumers into thinking that a relationship exists between the parties. The district court found at summary judgment that there was no likelihood of confusion (and thus no trademark infringement) between the FOREMOST marks of Foremost Insurance Company (“FIC”), a multi-billion dollar insurance company, and Foremost Title and Escrow (“FT&E”), a shell company set up to sell title insurance for a law firm.   The Eleventh Circuit reversed the grant of summary judgment on FIC’s trademark infringement claim. The court explained that while the district court implicitly decided this case under the Nunez framework, it never actually decided whether all the material facts had been “incontrovertibly proved.” A district court may not ignore the traditional summary judgment standard merely by invoking the specter of Nunez. The court wrote, in this case, the parties should have eschewed moving for summary judgment, informed the court that discovery was complete and that the case was ready for trial, and then held a bench trial. Thus because the court held a reasonable factfinder could determine that a likelihood of confusion exists, the court reversed  grant of summary judgment as to Count I of FIC’s complaint and remanded the case for trial on the merits. View "FCOA LLC v. Foremost Title & Escrow Services LLC" on Justia Law

Plaintiffs sued Defendants, alleging that the title of Defendants’ series, MTV Floribama Shore, infringes on Plaintiffs’ Flora-Bama trademarks. The district court granted summary judgment to Defendants. Plaintiffs timely appealed.   The Eleventh Circuit affirmed the district court’s judgment for Defendants. The court explained that the titles are not being used as trademarks to identify and distinguish the source of the artistic works. Plaintiffs have presented no evidence that any of these titles to the third parties’ artistic works have any source-identifying function. Because these titles are not being used as trademarks, this is not a title-versus-title case for purposes of the Rogers footnote. Further, Plaintiffs have not provided any evidence that they own interests in those artistic works as trademarks for Plaintiffs’ own goods or services—the foundation of trademark rights. Indeed, nothing in the record would allow a reasonable jury to conclude that the public views Plaintiffs as the source of these artistic works. Moreover, Plaintiffs’ claims are premised on alleged confusion with Plaintiffs’ commercial establishments, not with any artistic works purportedly owned by Plaintiffs. As Defendants note, Plaintiffs’ complaint did not claim rights in or allege any confusion relating to any artistic work, and Plaintiffs’ cease-and-desist letter did not mention any artistic works. View "MGFB Properties, Inc., et al. v. 495 Productions Holdings LLC, et al." on Justia Law

Pocket Plus, LLC, sued Pike Brands, LLC (“Running Buddy”) for trade-dress infringement of Pocket Plus’s portable pouch. The district court granted summary judgment to Running Buddy and awarded it a portion of its requested attorney fees. Pocket Plus appealed the summary judgment, and both parties appeal the attorney fees award.   The Eighth Circuit affirmed. The court wrote there is no genuine dispute that Pocket Plus’s trade dress is functional and thus not protected by trademark law. To grant trade-dress protection for Pocket Plus would be to hand it a monopoly over the “best” portable-pouch design. Trademark law precludes that. Further, Running Buddy argued that the district court abused its discretion in awarding only a portion of the requested fees. The court found no abuse of discretion in finding that this was an exceptional case. It considered the appropriate law, reviewed the litigation history, held a hearing, and explained its decision. View "Pocket Plus, LLC v. Pike Brands, LLC" on Justia Law

Punchbowl is an online party and event planning service. AJ Press owns and operates Punchbowl News, a subscription-based online news publication that provides articles, podcasts, and videos about American politics, from a Washington, D.C. insider’s perspective. Punchbowl claimed that Punchbowl News is misusing its “Punchbowl” trademark (the Mark).   The Ninth Circuit affirmed the district court’s summary judgment in favor of AJ Press, LLC, in an action brought by Punchbowl, Inc. (Punchbowl), alleging violations of the Lanham Act for trademark infringement and unfair competition and related state law claims. The panel wrote that no reasonable buyer would believe that a company that operates a D.C. insider news publication is related to a “technology company” with a “focus on celebrations, holidays, events, and memory-making.” The panel wrote that this resolves not only the Lanham Act claims, but the state law claims as well. The panel explained that survey evidence of consumer confusion is not relevant to the question of whether AJ Press’s use of the Mark is explicitly misleading, which is a legal test for assessing whether the Lanham Act applies. The panel held that the district court’s denial of Punchbowl’s request for a continuance under Fed. R. Civ. P. 56(d) to permit further discovery was not an abuse of discretion. View "PUNCHBOWL, INC. V. AJ PRESS, LLC" on Justia Law

San Antonio Winery, Inc.’s filed a proof of service in which it stated that it had served Jiaxing Jiaxing Micarose Trade Co., Ltd., through the Director of the PTO. When Jiaxing did not appear to defend itself in the action, the district court clerk granted San Antonio’s request for entry of default, after which San Antonio filed the motion for default judgment in which it asked the district court to issue a permanent injunction. Noting the lack of circuit-level precedent on whether the procedures of Section 1051(e) provide a means of serving defendants in court proceedings, the district court denied the motion on the ground that Jiaxing had not been properly served.   The Ninth Circuit vacated the district court’s order denying San Antonio’s motion for a default judgment against in an action in which San Antonio asserts claims under the Lanham Act and related state-law claims. The panel held that the service procedures of Section 1051(e) apply not only in administrative proceedings before the PTO but also in court proceedings. Because the district court erred in concluding otherwise, the panel vacated the district court’s order and remanded for further proceedings. View "SAN ANTONIO WINERY, INC. V. JIAXING MICAROSE TRADE CO." on Justia Law

Unicolors, which creates designs for use on textiles and garments, alleged that a design it created in 2011 (the EH101 design) is remarkably similar to a design printed on garments that H&M began selling in 2015 (the Xue Xu design). The Supreme Court held that lack of either factual or legal knowledge on the part of a copyright holder can excuse an inaccuracy in a copyright registration under the Copyright Act's safe-harbor provision, 17 U.S.C. Section 411(b)(1). Accordingly, the panel reviewed anew the threshold issue whether Unicolors holds a valid copyright in registration No. VA-1-770-400 (the '400 Registration), and concluded that under the correct standard, the '400 Registration is valid because the factual inaccuracies in the application are excused by the cited safe-harbor provision.   On remand, from the Supreme Court in this copyright-infringement action the Ninth Circuit affirmed the district court's judgment in general, save that it vacated and remanded with instructions to grant a new trial, limited only to damages, if Unicolors rejects the remittitur amount of $116,975.23. The panel held that a party seeking to invalidate a copyright registration under Section 411(b) must demonstrate that (1) the registrant submitted a resignation application containing inaccuracies, (2) the registrant knew that the application failed to comply with the requisite legal requirements, and (3) the inaccuracies in question were material to the registration decision by the Register of Copyrights. View "UNICOLORS, INC. V. H&M HENNES & MAURITZ, LP" on Justia Law

SoClean, a medical-device company that produces sanitizing devices for CPAP machines, owns the 195 registration for the configuration of replacement filters for its sanitizing devices. SoClean sued its former distributor, Sunset, for patent infringement, and trademark infringement based on that registration. On a motion for a preliminary injunction, the district court concluded that SoClean was likely to succeed on the merits and was entitled to a presumption of irreparable harm. Balancing the equities and weighing the public interest, the court concluded that enjoining all sales of Sunset’s filters would “go[] much further than necessary” to “end any possible statutory violation.” The court crafted a narrow “injunction that prohibits Sunset from engaging in those practices that result in consumer confusion” and enjoined Sunset from marketing its filters “using images of the filter cartridge alone”; “[a]ny image, drawings, or other depictions of Sunset’s filter cartridge used for the purposes of promotion, marketing and/or sales shall prominently display the Sunset brand name in a manner that leaves no reasonable confusion that what is being sold is a Sunset brand filter.”The Federal Circuit affirmed, rejecting arguments that the district court afforded too much weight to the presumption of validity and held Sunset to a higher standard of proof than the applicable preponderance-of-the-evidence standard. View "SoClean, Inc. v. Sunset Healthcare Solutions, Inc." on Justia Law

AcryliCon USA, LLC (“AC-USA”) and Silikal GmbH (“Silikal”) have been fighting for years over a trade secret. The last time they were before this Court, a panel erased some of the relief awarded to AC-USA after a jury trial. On remand, the district court basically entered the same amount of attorney’s fees it had originally awarded. The district court also entered a “permanent” injunction barring the use of the trade secret at issue, concluding that it was obliged to do so.   The Eleventh Circuit found that the district court misread the court’s holdings, including the court’s unambiguous determination in AcryliCon II that no permanent injunction had been entered because the district court’s original final judgment did not include one. The court explained that the district court could not simply “reenter” a permanent injunction against Silikal without first making the appropriate findings pursuant to Rule 65 of the Federal Rules of Civil Procedure. The court further concluded that the district court abused its discretion when it awarded AC-USA nearly its full attorney’s fees even after the court reversed, in AcryliCon II, significant portions of the relief AC-USA had been previously awarded. Thus, the court vacated and remanded. View "Acrylicon USA, LLC v. Silikal GMBH" on Justia Law

Plaintiffs petitioned the United States Patent and Trademark Office for federal registration of the mark “THEEILOVE”. That phrase, “Thee I Love,” comes from the alma mater of Jackson State University. They then sued the University’s licensing agent (Collegiate Licensing Company) and a few of the licensees in charge of producing and selling the University’s merchandise (Anthony Lawrence Collection, Defron Fobb, and Thaddeus Reed, together “the Licensees”). But they did not sue the University itself. Collegiate and the Licensees moved to dismiss under Federal Rule of Civil Procedure 12(b)(7). The district court granted the motion and dismissed the suit without prejudice.   The Fifth Circuit affirmed. The court held that the district court did not abuse its discretion in concluding that the University was a required party under Rule 19(a)(1)(B)(i). And because everyone agrees that the University enjoys sovereign immunity, the question becomes whether the district court abused its discretion in dismissing the case rather than proceeding without the University. Here, the University has a non-frivolous claim here. As a practical matter, this suit would impair or impede its ability to protect its interest in the “Thee I Love” mark. That is enough to require dismissal of the action because “there is a potential for injury to” the University’s “interests as the absent sovereign.” Finally, even setting aside the University’s sovereign status, the balance of Rule 19(b) factors weigh in favor of dismissal. As a result, the district court did not abuse its discretion in dismissing the case. View "Lee, et al v. Anthony Lawrence Collection, et al" on Justia Law