Justia Trademark Opinion Summaries

. 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

AK Futures LLC (“AK Futures”), an e-cigarette and vaping product manufacturer, brought suit for trademark and copyright infringement against Boyd Street Distro, LLC, (“Boyd”). According to AK Futures, Boyd has been selling counterfeit versions of its “Cake”-branded e-cigarette and vaping products containing delta-8 tetrahydrocannabinol (“delta-8 THC”). Boyd contended that AK Futures does not have protectible trademarks for its Cake products because delta-8 THC remains illegal under federal law. The district court held that theAgriculture Improvement Act (the “Farm Act”) legalized the company’s delta-8 THC products, and it granted injunctive relief.   The Ninth Circuit affirmed the district court’s grant of a preliminary injunction. The court reasoned that the district court’s order properly distinguished between trademark and copyright protection. Further, the court held that the plain and unambiguous text of the Farm Act compels the conclusion that AK Futures’ delta8 THC products are lawful. the court concluded that on the available record, the delta-8 THC in AK Futures’ e-cigarette liquid appears to fit comfortably within the statutory definition of “hemp”—i.e., the liquid is properly understood as a derivative, extract, or cannabinoid originating from the cannabis plant and containing “not more than 0.3 percent” delta-9 THC. The court wrote that because the Farm Act’s definition of hemp is not ambiguous, the court does not consider agency interpretation, and even if it did, the Drug Enforcement Agency’s view of the Farm Act’s plain text aligns with the court’s own. View "AK FUTURES LLC V. BOYD STREET DISTRO, LLC" on Justia Law

Two insurance-related companies claim the name “AIG.” Agency is a family-owned insurance broker in Missouri. Agency allegedly began calling itself “AIG” around 1958. International is an insurance company incorporated in 1967. International first used the “AIG” mark sometime between 1968 and 1970. International obtained a federal trademark registration for “AIG” in 1981, which is still active. Agency sued International in 2017 over International’s use of “AIG.” Relevant here, Agency alleged common-law trademark infringement and unfair competition along with violation of the Lanham Act, 15 U.S.C. Section 1125. The district court agreed with International that Agency’s claims were barred by the doctrine of laches, so it granted summary judgment in favor of International and dismissed Agency’s claims. On appeal, Agency argues the district court erred in granting summary judgment because it weighed disputed facts in International’s favor.The Fifth Circuit reversed and remanded the district court’s grant of summary judgment in Plaintiff’s lawsuit for trademark infringement over International’s use of the “AIG” trademark. The court held that Plaintiff’s claims were barred by the doctrine of laches. The court reasoned that the district court abused its discretion by not applying for progressive encroachment and did not announce any test on which it relied for determining when a likelihood of confusion arose. It also did not meaningfully analyze the strength of International’s mark at the relevant times, whether Agency intended to confuse the public, the degree of care expected of potential customers, or the evidence of actual confusion. View "A.I.G. Agency, Inc. v. American International Group" on Justia Law

Plaintiff is an education company that owns various trademarks, including "Read a Million Words," "Million Dollar Reader," "Millionaire Reader," and " Millionaire Reading Club." Plaintiff filed suit against Defendant, a public school district in Texas, based on trademark infringement. The district court granted summary judgment in favor of Defendant.The thrust of any Lanham Act complaint is that the defendant's use of the mark causes confusion which harms the plaintiff's interests. Here, Defendant's implementation of a "million-word reading challenge" would not result in any reasonable person being confused between Defendant's use of the terms and Plaintiff's products. Further, Plaintiff does not make any claim that Defendant was a competitor, only that their use of the terms caused confusion. View "Springboards to Educ v. Pharr San Juan" 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

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