Justia Trademark Opinion Summaries

Ripple Analytics Inc. operated a software platform for human resources functions and originally owned the federal trademark for the word “RIPPLE®” in connection with its software. In April 2018, Ripple assigned all rights, title, and interest in its intellectual property, including the trademark, to its Chairman and CEO, Noah Pusey. Meanwhile, People Center, Inc. began using the name “RIPPLING” for similar software, though it abandoned its own trademark registration effort. Ripple later sued People Center for trademark infringement and unfair competition, claiming ownership of the RIPPLE® mark.The United States District Court for the Eastern District of New York reviewed the case. During discovery, Ripple produced the assignment agreement showing that Pusey, not Ripple, owned the trademark. People Center moved to dismiss under Federal Rule of Civil Procedure 17, arguing Ripple was not the real party in interest. The district court dismissed Ripple’s trademark infringement claim with prejudice, dismissed its unfair competition claims without prejudice for lack of standing, and denied Ripple’s motion to amend its complaint, finding the proposed amendment futile because it did not resolve the standing issue.On appeal, the United States Court of Appeals for the Second Circuit affirmed the district court’s judgment. The appellate court held that Ripple was not the real party in interest for the trademark infringement claim, as ownership had been assigned to Pusey, who failed to ratify or join the action. The court also held that Ripple lacked standing to pursue unfair competition claims under federal and state law, as it no longer had a commercial interest in the trademark. The denial of Ripple’s motion to amend was upheld because the amendment would not cure the standing defect. The court further found that the district court’s interlocutory order allowing People Center to amend its answer was not properly before it on appeal. View "Ripple Analytics Inc. v. People Center, Inc." on Justia Law

Erik Brunetti applied to register the word “FUCK” as a trademark for various goods and services, including sunglasses, jewelry, bags, and retail store services. After initial refusals based on the mark being “immoral or scandalous”—a ground later found unconstitutional by the Supreme Court in Iancu v. Brunetti—the United States Patent and Trademark Office (PTO) reexamined the applications. The PTO’s examining attorney refused registration, finding that the term was a widely used, commonplace word that failed to function as a trademark because consumers would not perceive it as identifying the source of the goods or services.The Trademark Trial and Appeal Board (TTAB) affirmed the refusals, concluding that the mark did not serve as a source indicator. The Board reasoned that “FUCK” is an “all-purpose word” with many recognized meanings and is commonly used on similar goods by various sources, so it would not be seen by consumers as distinguishing Brunetti’s products from others. The Board also rejected Brunetti’s constitutional arguments and his reliance on other registered marks, stating that each application must be considered on its own merits.On appeal, the United States Court of Appeals for the Federal Circuit reviewed the Board’s decision under the standards of the Administrative Procedure Act. The court rejected most of Brunetti’s arguments but found that the Board failed to articulate a clear and rational standard for when an “all-purpose word” like “FUCK” can or cannot function as a trademark, especially given the existence of similar registered marks. The Federal Circuit vacated the Board’s decision and remanded for further proceedings, holding that the Board must provide a satisfactory explanation and coherent guidance for its actions. View "In Re BRUNETTI " on Justia Law

Lance Hara, professionally known as Vicky Vox, sued Netflix, Inc. and others connected with the animated show Q-Force under the Lanham Act. Vox alleged that an animated version of her likeness appeared in a ten-second scene in the show, as well as in the official teaser and a still image promoting the series. She claimed that the unauthorized use of her image and likeness led viewers to believe that she endorsed Q-Force, constituting unfair competition and false endorsement under 15 U.S.C. § 1125.The United States District Court for the Central District of California dismissed Vox’s federal claims with prejudice, finding that Q-Force and its official teaser were expressive works entitled to heightened First Amendment protection under the Rogers test. The district court concluded that Vox failed to state a claim under the Lanham Act. The court also dismissed Vox’s state law claims for lack of subject-matter jurisdiction. Vox appealed the decision.The United States Court of Appeals for the Ninth Circuit affirmed the district court’s dismissal. The court held that following the Supreme Court’s decision in Jack Daniel’s Properties, Inc. v. VIP Products LLC, the Rogers test applies when the challenged mark in an artistic work is used not to designate a work’s source but solely to perform some other expressive function. The court concluded that the defendants’ alleged use of Vox’s image and likeness in Q-Force did not suggest or identify Vox as a source or origin of the show. Under the Rogers test, the use of Vox’s likeness had artistic relevance to Q-Force, and there was no overt claim or explicit misstatement that Vox was the source of Q-Force. Therefore, Vox failed to satisfy either prong of the Rogers test. The Ninth Circuit affirmed the district court’s decision. View "HARA V. NETFLIX, INC." on Justia Law

Yuga Labs, Inc. created the Bored Ape Yacht Club (BAYC) NFT collection, which became highly popular and valuable. Defendants Ryder Ripps and Jeremy Cahen created a nearly identical NFT collection called Ryder Ripps Bored Ape Yacht Club (RR/BAYC), using the same images and identifiers as Yuga's BAYC NFTs. Yuga sued for trademark infringement and cybersquatting, while Defendants countersued under the Digital Millennium Copyright Act (DMCA) and sought declaratory relief that Yuga had no copyright protection over the Bored Apes.The United States District Court for the Central District of California dismissed Defendants' declaratory-judgment counterclaims for lack of subject-matter jurisdiction and granted summary judgment for Yuga on its trademark infringement and cybersquatting claims, as well as on Defendants' DMCA counterclaim. The court then held a bench trial on remedies, enjoining Defendants from using the BAYC marks and awarding Yuga over $8 million in disgorgement of profits, statutory damages, attorney fees, and costs.The United States Court of Appeals for the Ninth Circuit reviewed the case. The court held that NFTs can be trademarked under the Lanham Act as they are considered "goods." However, the court reversed the district court's grant of summary judgment for Yuga on its trademark infringement and cybersquatting claims, concluding that Yuga did not prove as a matter of law that Defendants' actions were likely to cause consumer confusion. The court found that Defendants' use of Yuga's marks did not constitute nominative fair use and was not protected by the First Amendment. The court affirmed the district court's rejection of Defendants' DMCA counterclaim and the dismissal of their declaratory-judgment claims with prejudice. The case was remanded for further proceedings. View "Yuga Labs, Inc. v. Ripps" on Justia Law

Sunkist Growers, Inc. ("Sunkist") opposed Intrastate Distributors, Inc.'s ("IDI") applications to register the mark KIST in standard characters and a stylized form for soft drinks, arguing a likelihood of confusion with its registered SUNKIST marks. Sunkist has offered SUNKIST branded beverages for at least ninety years and owns multiple SUNKIST trademark registrations. IDI, a bottling company, purchased the KIST brand in 2009 and has used it for various soda products.The United States Trademark Trial and Appeal Board ("Board") dismissed Sunkist's opposition, finding no likelihood of confusion between IDI's KIST marks and Sunkist's SUNKIST marks. The Board analyzed the DuPont factors and found that while the similarity of goods, trade channels, conditions of sale, and strength of Sunkist's mark favored a likelihood of confusion, the similarity of the marks and actual confusion factors did not. The Board concluded that the different commercial impressions of the marks (KIST referencing a kiss and SUNKIST referencing the sun) and the lack of reported instances of confusion outweighed the other factors.The United States Court of Appeals for the Federal Circuit reviewed the Board's decision. The court found that the Board's conclusion regarding the different commercial impressions of the marks was not supported by substantial evidence. The court noted that the KIST mark did not consistently include a lips image and that the SUNKIST mark was often used without a sun design. The court concluded that the similarity of the marks favored a likelihood of confusion and that the Board's finding of no likelihood of confusion was incorrect. The court reversed the Board's decision, holding that IDI's KIST marks are likely to cause confusion with Sunkist's registered SUNKIST marks. View "Sunkist Growers, Inc. v. Intrastate Distributors, Inc." on Justia Law

CPI Security Systems, Inc. filed a lawsuit against Vivint Smart Home, Inc., alleging that Vivint engaged in deceptive practices to lure away CPI’s customers. Vivint sales representatives falsely claimed that Vivint had acquired CPI, that CPI was going out of business, or that Vivint needed to upgrade CPI’s equipment. These tactics led many CPI customers to switch to Vivint, causing significant losses for CPI. A jury found Vivint liable for violating the Lanham Act, the North Carolina Unfair and Deceptive Trade Practices Act (UDTPA), and for committing the common-law torts of unfair competition and tortious interference with contracts. The jury awarded CPI $49.7 million in compensatory damages and $140 million in punitive damages.The United States District Court for the Western District of North Carolina upheld the jury’s verdict. Vivint appealed, raising several issues, including the requirement of CPI’s reliance on false statements for the UDTPA claim, the sufficiency of evidence supporting the damages award, the application of North Carolina’s cap on punitive damages, and the admission of prejudicial evidence.The United States Court of Appeals for the Fourth Circuit reviewed the case and found no reversible error. The court held that CPI was not required to prove its own reliance on Vivint’s false statements to establish a UDTPA claim, as the claim was based on unfair competition rather than fraud. The court also found that the evidence presented by CPI was sufficient to support the jury’s damages award. Additionally, the court ruled that the district court correctly applied North Carolina’s cap on punitive damages by considering the total compensatory damages awarded. The court further held that the district court did not abuse its discretion in denying Vivint’s motion to bifurcate the trial or in its evidentiary rulings. The reassignment of the trial judge post-trial did not warrant a new trial. Consequently, the Fourth Circuit affirmed the district court’s judgment. View "CPI Security Systems, Inc. v. Vivint Smart Home, Inc." on Justia Law

Top Brand and Cozy Comfort are competitors in the market for oversized hooded sweatshirts. Cozy Comfort owns a design patent (D788 patent) and two trademarks for "THE COMFY" related to blanket throws. Top Brand sought a declaratory judgment of noninfringement of the design patent, while Cozy Comfort counterclaimed for infringement of both the design patent and trademarks. The jury found in favor of Cozy Comfort, determining that Top Brand had infringed both the design patent and the trademarks, and awarded Cozy Comfort $15.4 million for patent infringement and $3.08 million for trademark infringement.The United States District Court for the District of Arizona denied Top Brand's motion for judgment as a matter of law (JMOL) and entered judgment based on the jury's verdict. Top Brand then appealed to the United States Court of Appeals for the Federal Circuit.The Federal Circuit held that the principles of prosecution history disclaimer apply to design patents. The court found that Top Brand was entitled to JMOL of noninfringement of the design patent because the accused design fell within the scope of the subject matter surrendered during prosecution. The court also concluded that substantial evidence did not support the jury’s verdict of trademark infringement. Consequently, the Federal Circuit reversed the district court’s denial of JMOL and found in favor of Top Brand on both the design patent and trademark infringement claims. View "Top Brand LLC v. Cozy Comfort Co." on Justia Law

Doctor’s Best, Inc. (DB), a Delaware corporation, developed a new line of supplements branded as "Nature’s Day" and sought a U.S. trademark. Nature’s Way Products, LLC (NWP), a Wisconsin company owning the "Nature’s Way" trademark, claimed this infringed on their trademark. DB’s "Nature’s Day" products were manufactured and transported within the U.S. but sold exclusively abroad. DB sought a declaratory judgment of non-infringement, while NWP counterclaimed for trademark infringement under the Lanham Act.The United States District Court for the Central District of California granted summary judgment in favor of DB, concluding that NWP failed to show a likelihood of consumer confusion from DB’s domestic conduct. The court applied the extraterritoriality framework from Abitron Austria GmbH v. Hetronic International, Inc., determining that only DB’s U.S. transport of the products was actionable under the Lanham Act. The court found no genuine issue of material fact regarding the likelihood of consumer confusion from this conduct.The United States Court of Appeals for the Ninth Circuit affirmed the district court’s decision. The Ninth Circuit held that the district court correctly applied the Abitron framework to isolate DB’s domestic conduct and properly used the Sleekcraft factors to assess the likelihood of consumer confusion. The court agreed that no rational jury could find that DB’s domestic transport of "Nature’s Day" products infringed NWP’s trademarks. The court also upheld the district court’s denial of NWP’s request for additional discovery time, noting NWP’s lack of diligence in pursuing discovery. View "Doctor’s Best, Inc. v. Nature’s Way Products, LLC" on Justia Law

Wudi Industrial (Shanghai) Co., Ltd. (Wudi) and Wai L. Wong, along with Wong’s business entity GT Omega Racing, Ltd. (collectively Wong), were involved in a trademark dispute over the use of the "GTRACING" and "GT OMEGA RACING" marks. Wudi registered the "GTRACING" trademark in 2017, and Wong initiated cancellation proceedings, claiming prior use of a similar mark. The Trademark Trial and Appeal Board ruled in favor of Wong in 2020. Wudi sought review in the Eastern District of Virginia, leading to a settlement agreement in 2021, which included geographic and product-based restrictions on Wudi’s use of the "GTRACING" mark, particularly in Europe.The district court granted a stay pending compliance with the settlement agreement. Wong later alleged that Wudi breached the agreement by violating social media restrictions within the European Carve-Out. The district court found Wudi in violation and ordered specific performance. Wudi appealed, and the Fourth Circuit remanded for further proceedings, requiring the district court to comply with procedural requirements for injunctive relief.On remand, the district court issued an injunction, finding that Wudi breached the settlement agreement by using prohibited terms on social media within the European Carve-Out. The court applied the eBay factors, concluding that Wong suffered irreparable harm, monetary damages were inadequate, the balance of hardships favored Wong, and the public interest supported enforcing the agreement.The United States Court of Appeals for the Fourth Circuit reviewed the case and affirmed the district court’s injunction. The court held that the district court had the authority to enforce the settlement agreement, the eBay factors were properly applied, and Wudi’s contentions regarding extraterritoriality, parol evidence, unclean hands, and attorney’s fees were without merit. The injunction was upheld, requiring Wudi to comply with the settlement agreement’s terms. View "Wudi Industrial (Shanghai) Co., Ltd. v. Wong" on Justia Law

BenShot, LLC, a family-owned business, sells a unique drinking glass design featuring a bullet "penetrating" the side. 2 Monkey Trading, LLC and Lucky Shot USA, LLC (the Debtors) sell similar glasses imported from China, falsely advertised as "Made in the United States." BenShot sued the Debtors in the Eastern District of Wisconsin for Lanham Act violations and Wisconsin common law. A jury found in favor of BenShot, awarding punitive damages and determining the Debtors acted maliciously or in intentional disregard of BenShot's rights.Following the jury verdict, the Debtors filed for bankruptcy under Subchapter V of Chapter 11. BenShot argued that the jury award was a non-dischargeable debt for willful and malicious injury under 11 U.S.C. §§ 523(a)(6) and 1192(2). The Debtors moved to dismiss, claiming § 523(a)(6) only applied to individual debtors, not corporate debtors like themselves. The United States Bankruptcy Court for the Middle District of Florida agreed with the Debtors and dismissed BenShot's complaint, relying on similar interpretations by other bankruptcy courts.The United States Court of Appeals for the Eleventh Circuit reviewed the case. The court held that under § 1192, both individual and corporate debtors cannot discharge any debts of the kind listed in § 523(a). The court found the plain language of § 1192 unambiguous, applying to both individual and corporate debtors, and that "debt" as defined in the Bankruptcy Code does not distinguish between individual or corporate debtors. The court reversed the bankruptcy court's order and remanded the case for further proceedings consistent with this opinion. View "Benshot, LLC v. 2 Monkey Trading, LLC" on Justia Law