Justia Trademark Opinion Summaries

Articles Posted in Patents
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Plaintiff, Wreal, LLC, a pornography company, has been using the mark “FyreTV” in commerce since 2008. Defendant, Amazon.com, Inc., has been using the mark “Fire TV” (or “fireTV”) in commerce since 2012. Wreal contended that Amazon’s allegedly similar mark is causing consumers to associate its mark—“FyreTV”—with Amazon. After the close of discovery, the district court granted summary judgment to Amazon.   The Eleventh Circuit reversed and remanded the district court’s ruling. The court explained that the case addresses the application of the seven likelihood-of-confusion factors to a reverse-confusion trademark infringement case. Although some of those factors are analyzed and applied in the same way in both reverse-confusion cases and the more familiar forward-confusion cases, there are important differences in how other factors are analyzed and applied that stem from the fact that the harm and the theory of infringement differ between forward and reverse confusion.   Here, the record evidence establishes that Amazon acquired actual knowledge of Wreal’s registered trademark and still launched a product line. The two marks at issue are nearly identical, the commercial strength of Amazon’s mark is consistent with Wreal’s theory of recovery. Furthermore, Wreal has identified two consumers who a reasonable juror could conclude were confused by Amazon’s chosen mark. The court wrote, that there is no mechanical formula for applying the seven factors relating to the likelihood of confusion. But when considering all seven factors as they apply to a theory of reverse confusion and taking all the circumstances of this case into account on the record, it concluded that they weigh heavily in favor of Wreal. View "Wreal, LLC v. Amazon.com, Inc." on Justia Law

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Ezaki, a Japanese confectionery company, makes and sells “Pocky,” thin, stick-shaped cookies that are partly coated with chocolate or flavored cream. The end of each is left partly uncoated to serve as a handle. In 1978, Ezaki started selling Pocky in the U.S. and began registering U.S. trademarks and patents. It has two Pocky product configurations registered as trade dresses and has a patent for a “Stick Shaped Snack and Method for Producing the Same.” In 1983, the Lotte confectionery company started making Pepero stick-shaped cookies partly coated in chocolate or flavored cream. Pepero “looks remarkably like Pocky.”In 1993-1995, Ezaki sent letters, notifying Lotte of its registered trade dress and asking it to cease and desist. Ezaki took no further action until 2015, when it sued, alleging trademark infringement and unfair competition, under the Lanham Act, 15 U.S.C. 1114, 1125(a)(1)(A). Under New Jersey law, it alleged trademark infringement and unfair competition. The Third Circuit affirmed summary judgment in favor of Lotte, holding that because Pocky’s product configuration is functional, it is not protected as trade dress. Trade dress is limited to features that identify a product’s source. Patent law protects useful inventions, but trademark law does not. View "Ezaki Gliko Kabushiki Kaisha v. Lotte International America Corp." on Justia Law

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Lanard owns Design Patent D167 and the 458 copyright for a work entitled “Pencil/Chalk Holder,” relating to a toy chalk holder designed to look like a pencil. Lanard sold the Chalk Pencil, marked to indicate Lanard’s copyright and patent protections, to national retailers. Ja-Ru designed a toy chalk holder, using the Chalk Pencil as a reference sample. Lanard’s retailers stopped ordering the Chalk Pencil and began ordering Ja-Ru’s product. Lanard sued, asserting copyright infringement, design patent infringement, trade dress infringement, and statutory and common law unfair competition.The Federal Circuit affirmed summary judgment that Ja-Ru’s product does not infringe the patent, that the copyright is invalid and alternatively not infringed, and that Ja-Ru’s product does not infringe Lanard’s trade dress. Lanard’s unfair competition claims failed because its other claims failed. The district court properly construed the claims commensurate with the statutory protection for an ornamental design. Lanard impermissibly seeks to exclude any chalk holder in the shape of a pencil and extend the scope of the patent beyond the “new, original and ornamental design,” 35 U.S.C. 171. Lanard’s copyright is for the chalk holder itself; Lanard’s arguments seek protection for the dimensions and shape of the useful article itself. Because the chalk holder itself is not copyright protectable, Lanard cannot demonstrate that it holds a valid copyright. Lanard cannot establish that the Chalk Pencil has acquired secondary meaning. View "Lanard Toys Ltd. v. Dolgencorp LLC" on Justia Law

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Romag sells patented magnetic snap fasteners under its registered trademark. Fossil designs, markets, and distributes fashion accessories, including small leather goods, manufactured by independent businesses. In 2002, the companies entered into an agreement for use of ROMAG fasteners in Fossil products. Fossil instructed its authorized manufacturers to purchase ROMAG fasteners from Romag licensee Wing Yip. Fossil’s authorized manufacturer, Superior, purchased tens of thousands of ROMAG fasteners from Wing Yip from 2002-2008. In 2008-2010, Superior purchased substantially fewer fasteners. In 2010, Romag discovered that certain Fossil handbags contained counterfeit fasteners. Romag sued, alleging patent infringement, trademark infringement, false designation of origin, unfair competition, and violation of Connecticut’s Unfair Trade Practices Act. Romag sought a preliminary injunction on November 23, three days before “Black Friday,” the highest-volume U.S. shopping day. The motion was granted on November 30. In 2014, a jury found Fossil liable; awarded a reasonable royalty of $51,052.14 for patent infringement; and, for trademark infringement, made an advisory award of $90,759.36 of Fossil’s profits under an unjust enrichment theory, and $6,704,046.00 of profits under a deterrence theory. Despite its deterrence award, the jury found that infringement was not willful. The Federal Circuit affirmed the district court’s holding that Romag’s delay in bringing suit until just before “Black Friday” constituted laches, its reduction of the reasonable royalty award by 18%, and its holding that Romag was not entitled to an award of profits because the infringement was not willful. View "Romag Fasteners, Inc. v. Fossil, Inc." on Justia Law

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Halo, a Hong Kong company that designs and sells high-end modern furniture, owns two U.S. design patents, 13 U.S. copyrights, and one U.S. common law trademark, all relating to its furniture designs. Halo’s common law trademark, ODEON, is used in association with at least four of its designs. Halo sells its furniture in the U.S., including through its own retail stores. Comptoir, a Canadian corporation, also designs and markets high-end furniture that is manufactured in China, Vietnam, and India. Comptoir’s furniture is imported and sold to U.S. consumers directly at furniture shows and through distributors, including in Illinois. Halo sued, alleging infringement and violation of Illinois consumer fraud and deceptive business practices statutes. The district court dismissed on forum non conveniens grounds, finding that the balance of interests favored Canada and that Canada, where the defendants reside, was an adequate forum. The Federal Circuit reversed. The policies underlying U.S. copyright, patent, and trademark laws would be defeated if a domestic forum to adjudicate the rights they convey was denied without a sufficient showing of the adequacy of the alternative foreign jurisdiction; the Federal Court of Canada would not provide any “potential avenue for redress for the subject matter” of Halo’s dispute. View "Halo Creative & Design, Ltd. v. Comptoir des Indes Inc." on Justia Law

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In April 2011, while its patent application was pending with the USPTO, U.S. Water Services, which “sell[s] water treatment and purification equipment, materials, and services,” especially “to ethanol process technologies,” sued its competitor, ChemTreat, for misappropriation of trade secrets. In October 2011, the USPTO issued the 244 patent covering a method to reduce the formation of insoluble scale deposits during the production of ethanol using enzyme, phytase, in its “pHytOUT® system.”Three days before U.S. Water and ChemTreat settled the misappropriation claim, ChemTreat filed counterclaims requesting declaratory judgments of noninfringement and invalidity of the 244 patent. The suit was filed before the Leahy-Smith America Invents Act, 125 Stat. 284, took effect, so the counterclaims independently did not establish appellate jurisdiction for the Federal Circuit. The district court granted ChemTreat summary judgment as to the noninfringement counterclaim and dismissed the invalidity counterclaim. The Eighth Circuit affirmed. Evaluating the “totality of [the] circumstances,” the district court did not err in finding the misappropriation action, together with U.S. Water’s statements to its customers and supplier, produced an objective, “reasonable apprehension of suit,” and did not err in concluding declaratory judgment subject matter jurisdiction existed. The decision did not constitute an advisory opinion. View "U.S. Water Servs., Inc. v. ChemTreat, Inc." on Justia Law

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A jury found that Samsung smartphones infringed and diluted Apple’s patents and trade dresses amd awarded Apple $290,456,793. The Federal Circuit affirmed the verdict on the design patent infringements, the validity of two utility patent claims, and the damages awarded for the design and utility patent infringements, but reversed findings that the asserted trade dresses are protectable. Apple claimed elements from its iPhone 3G and 3GS products to define an asserted unregistered trade dress: a rectangular product with four evenly rounded corners; a flat, clear surface covering the front of the product; a display screen under the clear surface; substantial black borders above and below the display screen and narrower black borders on either side of the screen; and when the device is on, a row of small dots on the display screen, a matrix of colorful square icons with evenly rounded corners within the display screen, and an unchanging bottom dock of colorful square icons with evenly rounded corners set off from the display’s other icons. The registered trade dress claims the design details in each of the 16 icons on the iPhone’s home screen framed by the iPhone’s rounded-rectangular shape with silver edges and a black background. View "Apple, Inc. v. Samsung Elecs. Co., Inc." on Justia Law

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Stauffer, pro se, filed a qui tam action against Brooks Brothers under the then-version of the false-marking statute, 35 U.S.C. 292, claiming that Brooks Brothers marked its bow ties with expired patent numbers. In 2011, while the action was pending, the President signed into law the America Invents Act, 125 Stat. 284A, which eliminated the false-marking statute’s qui tam provision, so that only a “person who has suffered a competitive injury” may bring a claim. The AIA also expressly states that marking a product with an expired patent is not a false-marking violation and that the amendments apply to all pending cases. Stauffer argued that the AIA amendments were unconstitutional because they amounted to a pardon by Congress, violating the doctrine of separation of powers, and also violated the common-law principle that prohibits use of a pardon to vitiate a qui tam action once the action has commenced. The district court dismissed for lack of standing. The Federal Circuit affirmed, finding that the amendments did not constitute a pardon and that even if the law had not changed, Stauffer might have lost his lawsuit, and, therefore, could not have acquired a private-property interest in his share of the statutory penalty. View "Stauffer v. Brooks Brothers, Inc." on Justia Law

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Apple sued Samsung, alleging infringement of Apple patents and dilution of Apple’s trade dress. Samsung counterclaimed, alleging infringement of its own patents. A jury returned a verdict substantially in Apple’s favor, finding that 26 Samsung smartphones and tablets infringed Apple patents and that six Samsung smartphones diluted Apple’s registered iPhone trade dress and unregistered iPhone 3G trade dress. The jury rejected Samsung’s infringement counterclaims and awarded Apple more than $1 billion. The district court set aside a portion of the damages award for certain products and scheduled a partial new trial on damages, but affirmed the jury’s liability findings. The court denied Apple’s request for a permanent injunction. The Federal Circuit affirmed the denial of injunctive relief with respect to design patents and trade dress, but vacated the denial with respect to Apple’s utility patents. The court noted that Samsung has stopped selling the products found to dilute trade dress, but that, with respect to the utility patents, the court must assess whether Apple’s evidence suffices to establish irreparable injury. View "Apple, Inv. v. Samsung Elecs. Co." on Justia Law

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BDI is the owner a design patent and the manufacturer of slippers known as SNOOZIES®. High Point manufactures and distributes the accused FUZZY BABBA® slippers, which are sold through various retailers, including Meijer, Sears, and WalMart. BDI sent High Point a cease and desist letter, asserting patent infringement. High Point sought a declaratory judgment. The district court held BDI’s asserted design patent invalid on summary judgment and dismissed BDI’s trade dress claims with prejudice. The Federal Circuit reversed. The district court applied the incorrect standard; a reasonable jury could, under the correct standard, find the patent not invalid based on functionality. On remand, the district court should weigh High Point’s notice of BDI’s trade dress claim and initial belief that its original complaint encompassed such a claim and the absence of apparent prejudice to High Point against the fact that BDI had always been in possession of the information added in the proposed amendments and could have asked to clarify its pleading sooner. View "High Point Design LLC v. Buyer's Direct, Inc." on Justia Law