Justia Trademark Opinion Summaries

A manufacturer of battery chargers, which owns the registered trademarks “Battery Tender” and “Deltran Battery Tender,” discovered that a competitor began advertising its own similar chargers using those terms. The competitor used the marks in multiple ways: purchasing them as keywords to trigger ads on Amazon, including the marks in the text of its Amazon ads and product descriptions, and referring to its own products as “battery tenders” in communications with marketing firms and consumers. The trademark owner sent several cease-and-desist letters, but the conduct continued. The company then sued the competitor for trademark infringement, unfair competition, false designation of origin, and related state law claims.In the United States District Court for the Middle District of Florida, a jury found in favor of the trademark owner on all counts, including trademark infringement and false advertising, and awarded damages. The district court denied the competitor’s motions for judgment as a matter of law and for a new trial, and later ordered disgorgement of profits and issued a permanent injunction prohibiting the competitor from using the marks, as well as the term “tender,” in connection with its products. The competitor appealed, challenging the jury’s findings, the district court’s legal rulings, and the scope of the injunction and damages.The United States Court of Appeals for the Eleventh Circuit held that the “Battery Tender” marks were not generic, but at least descriptive with secondary meaning, and affirmed the finding of trademark infringement for visible uses of the marks. However, the court held that purchasing the marks as keywords alone does not constitute infringement, reversed the jury’s verdict on false advertising, and vacated the damages award for a new trial, as the amount could not be separated from improper theories. The court affirmed the injunction and disgorgement order. View "Deltona Transformer Corporation v. The Noco Company" on Justia Law

Two organizations involved in competitive cheerleading became embroiled in a dispute over the use of two marks: “THE CHEERLEADING WORLDS,” which is registered on the Supplemental Register with the U.S. Patent and Trademark Office, and “WORLDS,” which is claimed as an unregistered common law mark. The plaintiff, a governing body for competitive cheerleading, has held an annual event under these marks since 2004. The defendants, including a group of former members of the plaintiff organization, began hosting a similarly named event in the same region, allegedly causing confusion among participants and the public.The United States District Court for the Middle District of Florida granted summary judgment for the defendants, concluding that both marks were generic as a matter of law and thus not entitled to trademark protection. The court found that the terms described the basic nature of the plaintiff’s services and discounted evidence showing non-generic use, reasoning that the plaintiff’s event had long been the only one of its kind. The court also rejected the plaintiff’s argument that the defendants were barred from contesting the marks’ distinctiveness due to an earlier dismissal of an affirmative defense with prejudice.On appeal, the United States Court of Appeals for the Eleventh Circuit reversed. The appellate court held that the issue of distinctiveness was properly before the district court, as distinctiveness is an element of the plaintiff’s claim and not an affirmative defense. The Eleventh Circuit found that there were genuine disputes of material fact as to whether the marks were descriptive or had acquired secondary meaning, based on evidence of public association with the plaintiff’s event. The court remanded the case for trial, holding that summary judgment was inappropriate because a reasonable jury could find the marks protectable. The court also declined to decide issues of likelihood of confusion and individual liability without factual findings. View "U.S. All Star Federation, Inc. v. Open Cheer & Dance Championship Series, LLC" on Justia Law

This case involves a dispute over the rights to the name, image, and trademarks associated with the late artist Frida Kahlo. Two Panamanian corporations with principal places of business in Florida, Frida Kahlo Corporation and Frida Kahlo Investments, manage and license numerous Frida Kahlo trademarks. Mara Cristina Teresa Romeo Pinedo, Frida Kahlo’s grandniece and a resident of Mexico, is an owner and former officer of Familia Kahlo S.A. de C.V., a Mexican company. The parties’ relationship became contentious, leading to litigation in several countries over the intellectual property rights. Plaintiffs alleged that, beginning in 2017 and specifically targeting Florida in 2021 and 2022, the defendants sent cease-and-desist letters to plaintiffs’ business partners in Florida, threatening legal action based on what plaintiffs contend were false claims to trademark ownership. Plaintiffs claimed these actions constituted tortious interference under Florida law and the Lanham Act.The United States District Court for the Southern District of Florida dismissed the lawsuit for lack of personal jurisdiction. The court found that Florida’s long-arm statute was satisfied for Familia Kahlo, but the corporate shield doctrine protected Pinedo because she was not acting in her personal capacity. The court further concluded that the minimum contacts required by due process were not established for either defendant, as sending cease-and-desist letters alone was insufficient.On appeal, the United States Court of Appeals for the Eleventh Circuit reversed the district court’s decision. The Eleventh Circuit held that the corporate shield doctrine did not apply to Pinedo because the cease-and-desist letters were sent on her behalf in her personal capacity. The court also held that due process permitted the exercise of personal jurisdiction over both defendants, as the “effects test” was satisfied and a tortious cease-and-desist letter can meet the minimum contacts requirement. The case was remanded for further proceedings. View "Frida Kahlo Corporation v. Pinedo" 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

Top Tobacco, L.P., Republic Technologies (NA), LLC, and Republic Tobacco, L.P. sued Star Importers & Wholesalers, Inc., and its president, Amin Hudda, for selling counterfeit TOP® and JOB® cigarette rolling papers. Republic conducted test buys and laboratory testing, which confirmed the products were counterfeit. The police seized 704 jars of allegedly counterfeit rolling papers from Star’s warehouse. Republic alleged trademark counterfeiting, trademark infringement, unfair competition, deceptive trade practices, and unjust enrichment.The United States District Court for the Northern District of Georgia granted summary judgment against Star on liability for trademark infringement and counterfeiting but not against Hudda. The remaining issues for trial were Hudda’s personal liability, whether Star’s actions were willful, and the amount of statutory damages. The jury found Star did not act willfully and awarded Republic $123,000 in damages per mark, totaling $1,107,000 for nine marks. The district court denied Star’s motion for judgment as a matter of law challenging the verdict size.The United States Court of Appeals for the Eleventh Circuit reviewed the case. The court held that the district court did not err in refusing to reduce the jury verdict, as it fell within the statutory damages range permitted by the Lanham Act. The court affirmed that statutory damages need not be related to actual damages and that the jury could consider factors such as the value of the trademark, deterrence, and public safety risks. The court also found that the verdict did not violate due process, as it was not so disproportionate as to be unreasonable. The Eleventh Circuit affirmed the district court’s denial of Star’s motion for judgment as a matter of law. View "Top Tobacco, L.P. v. Star Importers & Wholesalers, Inc." on Justia Law

This reverse-confusion trademark dispute involves Wreal and Amazon over the mark "FyreTV." Wreal describes its own FyreTV service as the “Netflix of Porn.” Amazon Fire TV is a hardware device used for streaming “mainstream” “general interest” video via Amazon’s own streaming service, “Instant Video,” or third-party streaming services such as Netflix. In this interlocutory appeal, Wreal challenges the district court's denial of a preliminary injunction. The court concluded that the district court did not abuse its discretion in determining that Wreal’s unexplained five month delay in seeking a preliminary injunction, by itself, fatally undermined any showing of irreparable injury. Because Wreal cannot establish reversible error with respect to the injury prong, the court need not consider whether the district court correctly analyzed the likelihood of success, the balance of harms, or the public interest. Accordingly, the court affirmed the judgment. View "Wreal, LLC v. Amazon.com, Inc." on Justia Law

FN filed a trademark infringement action against Clyde Armory over the use of the marks "SCAR" and "SCAR-Stock" in the firearms industry. On appeal, Clyde Armory challenges the district court's partial grant of summary judgment for FN, its grant of FN's motion to strike Clyde Armory’s jury demand, its denial of Clyde Armory’s motion to amend the proposed pretrial order, and its entry of judgment against Clyde Armory following a bench trial. The court rejected Clyde Armory's contention that the district court erred by: (1) finding that FN used SCAR as a mark in commerce before Clyde Armory began using SCAR-Stock; (2) finding that FN’s SCAR mark acquired distinctiveness through secondary meaning before Clyde Armory began using SCAR-Stock; and (3) finding that Clyde Armory used the SCAR-Stock mark in bad faith to take advantage of the popularity of FN’s SCAR mark, thus divesting it of any rights in the mark that it otherwise might have obtained. Accordingly, the court affirmed the district court on all issues raised on appeal. View "FN Herstal SA v. Clyde Armory Inc." on Justia Law

FIU filed suit against FNU for infringement of FIU’s trademarks, asserting six claims for relief: (1) federal trademark infringement under the Lanham Act, 15 U.S.C. 1114; (2) federal unfair competition, also under the Lanham Act, 15 U.S.C. 1125(a); (3) Florida trademark dilution and injury to business reputation, Fla. Stat. 495.151; (4) Florida trademark infringement, Fla. Stat. 495.131; (5) Florida common law trademark infringement and unfair competition; and (6) cancellation of State of Florida trademark registration, Fla. Stat. 495.101. The district court entered final judgment in favor of FNU and FIU timely appealed. The court concluded that it was more accurate and better to view the district court’s decision in this case as the entry of judgment after conducting a bench trial. The court affirmed the district court's denial of FIU’s federal trademark claim where the district court reasonably concluded that FNU’s adoption of its new name and acronym did not and would not likely cause consumer confusion; FIU's federal unfair competition claim and false association theory of liability fail; the court affirmed the district court’s denial of its dilution claim for the same reasons as the likelihood of confusion claim; and the court affirmed the district court's denial of the Florida trademark infringement, common law infringement, and unfair competition claim as well. View "FIU v. FNU" on Justia Law

Defendant appealed the district court's grant of an injunction requiring defendant to transfer to defendant four domain names he had registered in his own name and grant of plaintiff's motion for summary judgment on defendant's counterclaims. The court concluded that it lacked jurisdiction to entertain defendant's appeal under 28 U.S.C. 1291, because there are still pending claims brought against defendant under sections 43(a) and (c) of the Lanham Act, 15 U.S.C. 1125(a) and (c), and state law. The court concluded, however, that it has jurisdiction to review the district court's injunction under 28 U.S.C. 1292(a)(1). The court held that the re-registration of bydesignfurniture.com constituted a registration under the Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. 1125, and that plaintiff is likely to succeed on the merits of its ACPA claim. Accordingly, the court concluded that the issuance of the preliminary injunction did not constitute an abuse of discretion and affirmed the judgment of the district court. View "JYSK Bed'N Linen v. Dutta-Roy" on Justia Law

This appeal stems from an intellectual property dispute between two religious organizations. Plaintiff filed suit alleging that defendant is infringing its registered service marks in violation of the Lanham Act, 15 U.S.C. 1114, and Florida law. The district court granted judgment for defendant. In the first appeal, the court reversed in part and remanded for reconsideration of whether the parties' marks are likely to be confused. The court was also critical of disparaging comments that the district judge made about the parties. On remand, the court concluded that the district court misapplied several factors in its analysis of likely confusion, incorrectly assessed the Florida Priory’s defense of prior use, relied on historical testimony that the court previously deemed inadmissible, and misinterpreted the court's instructions about consulting facts outside the record. The court declined to order reassignment after balancing the three factors in United States v. Torkington. Accordingly, the court vacated and remanded. View "Sovereign Military Hospitaller v. The Florida Priory of the Knights Hospitallers" on Justia Law