Justia Trademark Opinion Summaries

Miami Velvet operated as a swingers’ nightclub in Miami, Florida. The appellants, in this case, Yorkies and Mrs. Dorfman were Miami Velvet’s managers. Appellants appealed the district court’s final judgment, which awarded over 30 plaintiffs damages for false advertising and false endorsement under the Lanham Act, following the entry of summary judgment on liability and a jury award of damages. The Eleventh Circuit reversed the district court’s judgment, set aside the jury’s award of damages to Appellants, and remanded for trial. The court explained that there was not enough evidence to support the entry of summary judgment. Here the advertisements with Plaintiffs’ images were created for and used by Velvet Lifestyles. But Plaintiffs did not just sue Velvet Lifestyles; they also sued Yorkies and Mrs. Dorfman. To prevail on their false advertising and false endorsement claims against Appellants, Plaintiffs had to show that Yorkies itself engaged in or participated in the prohibited conduct along with Velvet Lifestyles (direct liability) or that the corporate veil between Yorkies and Velvet Lifestyles should be pierced (indirect liability).Plaintiffs did not satisfy their burden of showing the absence of a genuine issue of material fact regarding whether Yorkies and Mrs. Dorfman were responsible for the Lanham Act violations. Rather than making the necessary showing in their motion for summary judgment, Plaintiffs simply treated Velvet Lifestyles, Yorkies, and Mrs. Dorfman as one and the same. They exclusively discussed Defendants collectively in the argument section of their motion, presumably operating on the mistaken assumption that if Velvet Lifestyles was liable for violating the Act, so were Yorkies and Mrs. Dorfman. View "Jaime Faith Edmondson, et al. v. Velvet Lifestyles, LLC, et al." on Justia Law

Brothers and Sisters in Christ, LLC (BASIC) allege that Zazzle, Inc. sold a t-shirt that infringed on BASIC’s federal trademark. The district court granted Zazzle’s motion to dismiss for lack of personal jurisdiction. The Eighth Circuit affirmed. The court explained that BASIC bears the burden of establishing a prima facie showing of jurisdiction. Further, where the applicable federal statute, here the Lanham Act, does not authorize nationwide personal jurisdiction the existence of personal jurisdiction depends on the long-arm statute of the forum state and the federal Due Process Clause.   Here, the court looked to Zazzle’s contacts with Missouri related to BASIC’s claims. Aside from the single t-shirt sale, BASIC fails to allege a connection between Zazzle’s other contacts with Missouri and the underlying suit. BASIC does not allege that Zazzle’s other activities in Missouri involved trademark infringement or that Zazzle sold additional trademark-infringing goods into the state. Further, BASIC has not alleged that Zazzle took such purposeful, targeted action toward Missouri or Missouri consumers. Although Missouri has an interest in this litigation because the allegedly injured plaintiff is a Missouri company, the convenience of the parties is neutral, as Zazzle would be inconvenienced by litigation in Missouri and BASIC would likely be inconvenienced in an alternate forum. In sum, BASIC has failed to allege that Zazzle could reasonably anticipate being haled into court in Missouri. View "Brothers and Sisters in Christ v. Zazzle, Inc." on Justia Law

Skilken, the owner of Max Rack, Inc., invented a piece of gym equipment that he named the “Max Rack.” For years, his company sold Max Racks through a licensing agreement with Core. When Max Rack’s last patent expired, Core decided to sell an identical machine under a new name, “Freedom Rack.” Max Rack alleged that Core continued to sell “Max Racks” without authorization, and attempted to sell Freedom Racks by free-riding off the “Max Rack” name, Lanham Act, 15 U.S.C. 1114(1), 1117(a), 1125(a)(1)(A). A jury awarded Max Rack $1 million in damages and $250,000 in Core’s profits. The district court doubled the profits award to $500,000, and granted Max Rack attorney’s fees but overturned Max Rack’s damages award.The Sixth Circuit affirmed the $250,000 profits award as supported by sufficient evidence and the court’s rejection of the $1 million damages award, reversing the court’s decision to double the profits award and its decision to grant Max Rack attorney’s fees. This case does not qualify as “exceptional” and Core did not litigate in an “unreasonable manner.” Core’s unauthorized sales ended before trial. View "Max Rack, Inc. v. Core Health & Fitness, LLC" on Justia Law

Coca-Cola distributes a Thums Up cola and Limca lemon-lime soda in India and other foreign markets. Meenaxi has distributed a Thums Up cola and a Limca lemon-lime soda in the United States since 2008 and registered the THUMS UP and LIMCA marks in the United States in 2012. Coca-Cola brought cancellation proceedings under the Lanham Act, 15 U.S.C. 1064(3), asserting that Meenaxi was using the marks to misrepresent the source of its goods. The Trademark Trial and Appeal Board canceled Meenaxi’s marks.The Federal Circuit reversed. Coca-Cola has not established a statutory cause of action based on lost sales or reputational injury. Coca-Cola does not identify any lost sales in the United States but instead relies on testimony that “THUMS UP-branded and LIMCA-branded products are resold in Indian grocery stores around the world, including in the U.S.” Coca-Cola presented no evidence that it sells the Limca soda in the United States and established only that Thums Up cola is “available for purchase as an individual beverage or as part of a tasting tray” at “World of Coca-Cola” and “Coca-Cola Store” locations in Atlanta and Orlando. View "Meenaxi Enterprise, Inc. v. Coca-Cola Co." on Justia Law

. Until 2008, Lehman Brothers, a large investment bank, owned federal trademark registrations for the standard character mark LEHMAN BROTHERS. Lehman Brothers filed for bankruptcy in 2008 and sold several of its businesses and other assets to Barclays for $1.5 billion, assigning all of its LEHMAN BROTHERS trademarks and accompanying goodwill. Barclays granted Lehman Brothers a worldwide, non-exclusive license to use the LEHMAN BROTHERS trademarks in connection with continuing businesses and operations. The term of the license was two years for use in connection with investment banking and capital markets businesses and perpetual for use in connection with other operations. Barclays allowed its LEHMAN BROTHERS trademark registrations to expire. In 2013, Tiger Lily, which has no affiliation to Lehman Brothers or Barclays, sought registration of the mark LEHMAN BROTHERS for beer and spirits. A few months later, Barclays applied to register LEHMAN BROTHERS for use in connection with financial services. In 2014, Tiger Lily applied for registration of the LEHMAN BROTHERS mark for bar services and restaurant services. Barclays and Tiger Lily filed Notices of Opposition.The Federal Circuit affirmed the Trademark Trial and Appeal Board in sustaining Barclay’s oppositions against Tiger Lily’s applications and in dismissing Tiger Lily’s opposition to Barclays’ application, noting that Lehman Brothers and Barclays have continued to use the LEHMAN BROTHERS mark since 2008. View "Tiger Lily Ventures Ltd. v. Barclays Capital Inc." on Justia Law

Sunless sells tanning booths and spray tan solution under the “Mystic Tan” mark. Sunless claims that applying Mystic Tan solution in a Mystic Tan booth results in a “Mystic Tan Experience.” Palm Beach owns and franchises tanning salons. It owns several Mystic Tan-branded booths, and previously bought Mystic Tan-branded tanning solution to use in them; the booths were designed to accept only Mystic Tan solution. Palm Beach jury-rigged the booths so that they will operate with its own distinctly branded spray tan solution, unapproved by Sunless.Sunless sought a preliminary injunction under the Lanham Act, 15 U.S.C. 1114, 1125, arguing that the jury-rigging is likely to confuse consumers into believing they are getting a genuine “Mystic Tan Experience” when they are not. The district court denied the motion, finding that Sunless had failed to show, at this stage of the litigation, that Palm Beach’s salon customers would be confused. The Sixth Circuit affirmed. Palm Beach never conceded that it sells a “Mystic Tan Experience” as an indivisible whole. Palm Beach argued there are two products: booths and solutions, each displaying its own distinct mark. Palm Beach continues to use the Mystic Tan-branded booths (which it owns outright), but neither uses nor claims to use Mystic Tan solutions. View "Sunless, Inc. v. Palm Beach Tan, Inc." on Justia Law

After Bacardi began an advertising campaign in November 2013 using the phrase “Bacardi Untameable” to promote its rum products, Lodestar filed suit for trademark infringement and unfair competition under the Lanham Act.   The Ninth Circuit affirmed the district court’s summary judgment ruling in favor of Bacardi, and held that Plaintiff failed to meet the elements of a trademark infringement action. Plaintiff alleged “reverse confusion”, which occurs when a person who knows of a well-known junior user comes into contact with a lesser-known senior user, and the similarity of the marks causes the individual to believe that the senior user is affiliated or the same as the junior user.   The court found that Plaintiff’s Untamed Revolutionary Rum product should be excluded from the likelihood-of-confusion analysis because it did not reflect a bona fide use of the mark. In applying the Sleekcraft factors, the court found that Plaintiff failed to carry its burden to show a likelihood of confusion. Further, while the district court erred in certain aspects in its consideration, the errors did not alter the ultimate conclusion. View "LODESTAR ANSTALT V. BACARDI & COMPANY LTD." on Justia Law

The Trademark Trial and Appeal Board affirmed an examiner’s refusal to register the trademark “TRUMP TOO SMALL” for use on T-shirts. According to Elster’s registration request, the phrase he sought to trademark invokes a memorable exchange between then-candidate Trump and Senator Marco Rubio from a 2016 presidential primary debate, and aims to “convey[] that some features” of Trump’s “policies are diminutive.” The Board’s decision was based on the Lanham Act, 15 U.S.C. 1052(c), and the Board’s finding that the mark included the surname of a living individual without his consent.The Federal Circuit reversed. Applying section 2(c) to bar registration of Elster’s mark unconstitutionally restricts free speech in violation of the First Amendment. Section 2(c), prohibits registration of a trademark that [c]onsists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.” As applied in this case, section 2(c) involves content-based discrimination that is not justified by either a compelling or substantial government interest. View "In Re Elster" on Justia Law

Vox is the domain registry operator for the ".SUCKS" generic top-level domain (gTLD) for Internet websites. Vox’s 941 trademark application sought registration of the standard character mark .SUCKS in Class 42 (computer and scientific services) for “[d]omain registry operator services related to the gTLD in the mark” and in Class 45 (personal and legal services) for “[d]omain name registration services featuring the gTLD in the mark” plus “registration of domain names for identification of users on a global computer network featuring the gTLD in the mark.” Vox’s 215 application sought to register the stylized form of .SUCKS, which appears as a retro, pixelated font that resembles letters on early LED screens in Class 42. The examining attorney refused both applications finding that, when used in connection with the identified services, “each fails to function as a mark” and “submitted evidence [for the 215 application] does not establish that the mark functions as a source identifier.”The Trademark Trial and Appeal Board and Federal Circuit affirmed with respect to the 215 application. The standard character mark .SUCKS “will not be perceived as a source identifier” and instead “will be perceived merely as one of many gTLDs that are used in domain names.” Stylized lettering or design element in the mark did not create a separate commercial impression and “is not sufficiently distinctive to ‘carry’ the overall mark into registrability.” View "In Re Vox Populi Registry Ltd." on Justia Law

The Eighth Circuit dismissed, based on lack of jurisdiction, plaintiffs' appeal of a district court order staying a federal action for trademark infringement and unfair competition pending resolution of common trademark license issues in a long-pending state court litigation between the parties. The court concluded that the stay order is neither a final order under 28 U.S.C. 1291 nor a collateral interlocutory order that may be appealed. In this case, the district court did not abuse its discretion in concluding that if the Lomax Parties prevail on their broad allegations in state court, then the state proceedings will fully dispose of the claims in federal court. View "Window World International v. O'Toole" on Justia Law