Justia Trademark Opinion Summaries

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

Bimbo Bakeries USA, Inc. (“Bimbo Bakeries”) owned, baked, and sold Grandma Sycamore’s Home-Maid Bread (“Grandma Sycamore’s”). Bimbo Bakeries alleged that United States Bakery (“U.S. Bakery”), a competitor, and Leland Sycamore (“Leland”), the baker who developed the Grandma Sycamore’s recipe, misappropriated its trade secret for making Grandma Sycamore’s. The district court granted summary judgment in favor of U.S. Bakery on a trade dress infringement claim. The parties went to trial on the other two claims, and the jury returned a verdict in favor of Bimbo Bakeries on both. After the trial, the district court denied U.S. Bakery’s and Leland’s renewed motions for judgment as a matter of law on the trade secrets misappropriation and false advertising claims. The district court did, however, remit the jury’s damages award. All parties appealed. Bimbo Bakeries argued the district court should not have granted U.S. Bakery summary judgment on its trade dress infringement claim and should not have remitted damages for the false advertising claim. U.S. Bakery and Leland argued the district court should have granted their renewed motions for judgment as a matter of law, and Leland made additional arguments related to his personal liability. The Tenth Circuit affirmed in part, reversed in part, and remanded for further proceedings because the Court found all of Bimbo Bakeries’ claims failed as a matter of law. View "Bimbo Bakeries USA, et al. v. Sycamore, et al." 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

This appeal grew out of a dispute over a program (“The Trial Lawyers College”) to train trial lawyers. The College’s board of directors splintered into two factions, known as the “Spence Group” and the “Sloan Group.” The two groups sued each other: The Spence Group sued in state court for dissolution of the College and a declaratory judgment recognizing the Spence Group’s control of the Board; the Sloan Group then sued in federal court, claiming trademark infringement under the Lanham Act. Both groups sought relief in the federal case. The federal district court decided both requests in favor of the Sloan Group: The court denied the Spence Group’s request for a stay and granted the Sloan Group’s request for a preliminary injunction. The Spence Group appealed both rulings. The Tenth Circuit Court of Appeals determined it lacked jurisdiction to review the district court’s denial of a stay. After the Spence Group appealed the federal district court’s ruling, the state court resolved the dispute over Board control. So this part of the requested stay became moot. The remainder of the federal district court’s ruling on a stay did not constitute a reviewable final order. The Court determined it had jurisdiction to review the grant of a preliminary injunction. In granting the preliminary injunction, the district court found irreparable injury, restricting what the Spence Group could say about its own training program and ordering removal of sculptures bearing the College’s logo. The Spence Group challenged the finding of irreparable harm, the scope of the preliminary injunction, and the consideration of additional evidence after the evidentiary hearing. In the Tenth Circuit's view, the district court had the discretion to consider the new evidence and grant a preliminary injunction. "But the court went too far by requiring the Spence Group to remove the sculptures." View "Trial Lawyers College v. Gerry Spences Trial Lawyers, et al." on Justia Law

Motus and CarData both provide tools for managing businesses' reimbursement of employee expenses. Motus is a Delaware limited liability company with its principal place of business in Boston.. CarData is a Toronto-based Canadian corporation. Motus sued CarData for trademark infringement and related wrongs for its use of a particular phrase in the meta title of its website, Lanham Act, 15 U.S.C. 1051-1129. Motus argued CarData had "purposefully availed itself of the privilege of conducting activities within the U.S. and Massachusetts" by maintaining numerous offices in the U.S. and marketing itself to and interacting with U.S. and Massachusetts customers through its website.The First Circuit affirmed the dismissal of Motus's suit without prejudice, for lack of personal jurisdiction, and denial of its request for jurisdictional discovery. The purposeful availment requirement was not met because there was not “something more” connecting CarData to the forum state beyond its website which is available to anyone with internet access, in any state. Motus did not act diligently to present facts to the court to show why jurisdiction would be found if discovery were permitted. Motus left the court to guess whether CarData has any Massachusetts customers, receives any revenue from Massachusetts, or has any other business connection with Massachusetts. Jurisdiction cannot be premised on guesswork; the record does not support a finding that the operation of CarData's website and/or its commercial contacts elsewhere in the country constitute purposeful availment with respect to Massachusetts. View "Motus, LLC v. CarData Consultants, Inc." 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

For more than 30 years, Brewery has used the marks BROOKLYN and BROOKLYN BREWERY in connection with the advertising, promotion, and sale of Brewery’s beer and beer-related merchandise. Brewery owns Registration No. 3,186,503 for BROOKLYN BREWERY for beer in Class 32,1 registered in 2006. Brewery petitioned to cancel BBS’s subsequent registration of the mark “BROOKLYN BREW SHOP,” in standard characters, for goods identified as “Beer making kit[s]” in Class 32 and opposed BBS’s application to register a stylized version of the same mark for beer-making kits in Class 32 and sanitizing preparations for household use in Class 5.The Federal Circuit affirmed the Trademark Trial and Appeal Board’s denial of Brewery’s petition for cancellation. The court dismissed the appeal regarding the Class 5 goods for lack of standing. The court vacated in part; the Board erred by not entering judgment in favor of Brewery on the Class 32 goods deleted from BBS’s application. As to the remaining goods in Class 32 (beer-making kits), the court affirmed the Board’s dismissal of the claim that, under Section 2(d), the mark is likely to cause confusion. The court vacated with respect to the descriptiveness issue under Section 2(e)(1); the Board erred by not reaching Brewery’s claim that the applied-for mark lacked acquired distinctiveness under Section 2(f) as to the beer-making kits. The court affirmed the Board’s refusal to consider geographic descriptiveness.. View "Brooklyn Brewery Corporation v. Brooklyn Brew Shop, LLC" on Justia Law

In 2007, Galperti-Italy, to support its application to the Patent and Trademark Office (PTO) for registration of the mark GALPERTI, told the PTO that, in the five preceding years, its use of the mark was “substantially exclusive.” In 2008, the PTO granted the application and issued Registration No. 3411812. In 2013, Galperti-USA petitioned the PTO to cancel the registration, 15 U.S.C. 1064, arguing that the registration was obtained by fraud because Galperti-Italy’s 2007 statement of substantially exclusive use was intentionally false. The Trademark Trial and Appeal Board, on remand, dismissed the fraud claim, again finding no proven falsity of the statement at issue (and again not reaching the intent aspect of fraud).The Federal Circuit vacated. in finding no falsity of Galperti-Italy’s assertion of substantially exclusive use in 2002-2007, the Board committed two legal errors: requiring Galperti-USA to establish its own proprietary rights to the mark and disregarding the use of the mark by others during the period at issue. The court noted that Galperti is a surname. Galperti-USA does not need to establish secondary meaning of its own uses of GALPERTI in order for those uses to be counted in determining the falsity of Galperti-Italy’s claim of substantially exclusive use. View "Galperti, Inc. v. Galperti S.R.L." on Justia Law