Justia Trademark Opinion Summaries

Plaintiffs filed suit under the Lanham Act, 15 U.S.C. 1051 et seq., against defendants, alleging trademark infringement based on a theory that defendants misappropriated and have unauthorized commercial use in the United States of certain United States-registered trademarks related to "Stolichnaya" - brand vodka (the "Marks"). At issue on appeal was whether plaintiffs have sufficient claim to the Marks to sue for infringement under the Act. The court concluded that FTE was neither (1) the Russian Federation's "assign" of the marks nor (2) its "legal representative." The court also concluded that Cristall could not sue, since its rights as a plaintiff were purely derivative of those held by FTE, and FTE could not grant rights greater than its own; the court rejected plaintiffs' joint argument that they were entitled to proceed because the Russian Federation had "ratified" their suit; and, therefore, neither plaintiff was entitled to sue for infringement under section 1114(1). Accordingly, the court affirmed the district court's dismissal of the Third Amended Complaint with prejudice. View "Fed. Treasury Enter. v. SPI Spirits Ltd." on Justia Law

Harley-Davidson had a licensing agreement with a subsidiary of DFS and received notice that the companies had merged. Harley-Davidson did not exercise its right to terminate, but later discovered that DFS had sold unauthorized products bearing the trademark to an unapproved German retailer. Harley-Davidon sent an e-mail saying that it believed DFS was in breach of contract and that it was suspending approval of products. DFS responded in kind. Harley-Davidson then attempted to recover unpaid royalties and to secure from DFS information required under the agreement. DFS refused these attempts, but submitted production samples for a new collection. Harley-Davidson reminded DFS of the termination. DFS advised Harley-Davidson that it had “wrongfully repudiated the License Agreement” and that DFS planned to act unilaterally in accordance with its own views of rights and obligations. The district court granted injunctive relief against DFS, which was attempting to litigate the dispute in Greece. The Seventh Circuit affirmed. Harley-Davidson made strong showings that DFS was deliberately breaching a licensing agreement and “has tried numerous legal twists and contortions to try to avoid the legal consequences.” The court rejected an argument that the agreement provision consenting to personal jurisdiction in Wisconsin was not binding on DFS. View "H-D MI, LLC v. Hellenic Duty Free Shops, S.A." on Justia Law