Justia Trademark Opinion SummariesArticles Posted in U.S. Court of Appeals for the Ninth Circuit
Elliott v. Google, Inc.
A claim of genericness or "genericide," where the public appropriates a trademark and uses it as a generic name for particular types of goods or services irrespective of its source, must be made with regard to a particular type of good or service.Plaintiffs petitioned for cancellation of the GOOGLE trademark under the Lanham Act, 15 U.S.C. 1064(3), based on the ground that it is generic. The Ninth Circuit affirmed the grant of summary judgment in favor of Google, Inc., holding that plaintiffs failed to recognize that a claim of genericide must always relate to a particular type of good or service, and that plaintiffs erroneously assumed that verb use automatically constitutes generic use; the district court correctly framed its inquiry as whether the primary significance of the word "google" to the relevant public was as a generic name for internet search engines or as a mark identifying the Google search engine in particular; the assumption that a majority of the public uses the verb "google" in a generic and indiscriminate sense, on its own, could not support a jury finding of genericide under the primary significance test; and plaintiffs have failed to present sufficient evidence in this case to support a jury finding that the relevant public primarily understands the word "google" as a generic name for internet search engines and not as a mark identifying the Google search engine in particular. View "Elliott v. Google, Inc." on Justia Law
Slep-Tone Entertainment Corp. v. Wired for Sound Karaoke
Slep-Tone produces karaoke music tracks marketed under the trademark "Sound Choice" on encoded compact discs (CD-G). Plaintiffs filed suit against defendants for, inter alia, trademark infringement after finding out that defendants were using unauthorized media-shifted files instead of Slep-Tone's original CD-Gs. The district court granted defendant's motion to dismiss. Slep-Tone argues that, by "media-shifting" its tracks from physical CD-Gs to digital files and performing them without authorization, defendants committed trademark infringement and unfair competition under the Lanham Act,15 U.S.C. 1114, 1125. The court agreed with the Seventh Circuit's holding that "the ‘good’ whose ‘origin’ is material for purposes of a trademark infringement claim is the ‘tangible product sold in the marketplace’ rather than the creative content of that product." Therefore, the court concluded that Slep-Tone failed to plausibly allege consumer confusion over the origin of a good properly cognizable in a claim of trademark infringement. Accordingly, the court affirmed as to this issue. In a concurrently filed memorandum opinion, the court also reversed in part and remanded in part. View "Slep-Tone Entertainment Corp. v. Wired for Sound Karaoke" on Justia Law
Trader Joe’s Co. v. Hallatt
Trader Joe's filed suit against defendant for trademark infringement and unfair competition under the Lanham Act, 15 U.S.C. 1051 et seq., and Washington law after defendant purchased Trader Joe's-branded goods in Washington state and transported them to Canada for resell in a store defendant designed to mimic a Trader Joe's store. The district court dismissed the Lanham Act and state law claims for lack of subject matter jurisdiction. The court held, consistent with recent case law from the Supreme Court and this court, that the extraterritorial reach of the Lanham Act raises a question relating to the merits of a trademark claim, not to federal courts’ subject-matter jurisdiction. The court concluded, on the merits, that Trader Joe’s alleges a nexus between defendant's conduct and American commerce sufficient to warrant extraterritorial application of the Lanham Act. Therefore, the court reversed as to the Lanham Act claim. The court affirmed the dismissal of the state law claims because Trader Joe’s did not allege trademark dilution in Washington or harm to a Washington resident or business. View "Trader Joe's Co. v. Hallatt" on Justia Law
Russell Road Food & Beverage v. Spencer
The mark “Crazy Horse” has been associated with adult entertainment since the 1950's. In this appeal, at issue is whether Russell Road’s use of the mark “Crazy Horse III” for its Las Vegas strip club infringes defendants Frank Spencer and Crazy Horse Consulting’s rights to the trademark “Crazy Horse.” The district court granted summary judgment to Russell Road. The court agreed with the district court that Russell Road has the right to use the mark because it is the assignee of a valid trademark co-existence agreement entered into with the former owner of the registered Crazy Horse mark. Accordingly, the court affirmed the judgment. View "Russell Road Food & Beverage v. Spencer" on Justia Law
JL Beverage v. Jim Beam Brands
JL Beverage filed suit against Jim Beam, alleging trademark infringement, false designation of origin, and unfair competition. The district court granted summary judgment for Jim Beam. In its summary judgment ruling, the district court used the standard applicable to preliminary injunctions instead of the standard for summary judgment rulings. Balancing the Sleekcraft factors as a whole, the court concluded that there is a genuine dispute of material fact as to the likelihood of consumer confusion. In this case, a reasonable fact-finder could conclude that: the JLV Mark has conceptual strength because the Mark’s salient feature, the color-coordinated lips, requires consumers to use their imagination to connect the color to the vodka flavor; the Lips Mark has conceptual strength because the lips have no commonly understood connection to the vodka product; Johnny Love Vodka does or does not have commercial strength (because a finding of either would support one of JL Beverage’s theories of confusion–reverse or forward); Johnny Love and Pucker Vodka are related flavored-liquor products sold to the same customers and distributors; the products are similar given their use of color-coordinated, puckered human lips as the focal point of their bottle designs; consumers purchasing the vodka products are not likely to exercise a high degree of care in distinguishing between the two; and Jim Beam was aware of JL Beverage’s trademarks prior to rolling out its Pucker Vodka line. Accordingly, the court reversed and remanded. View "JL Beverage v. Jim Beam Brands" on Justia Law
Millennium Labs. v. Ameritox, Ltd.
Millennium filed suit against Ameritox, alleging claims of trade dress infringement under the Lanham Act, 15 U.S.C. 1125(a), and unfair competition under California Business and Professions Code section 17200. Millennium and Ameritox compete in the medication monitoring industry, and sell urine-testing services to healthcare providers who treat chronic pain patients with powerful pain medications. The district court granted Ameritox summary judgment. At issue is whether a product’s visual layout is functional, defeating a claim for trade dress infringement. The court concluded that, under the Au-Tomotive Gold two-step test, the district court erred by granting summary judgment to Ameritox on Millennium’s trade dress claim. In regard to the first step, genuine issues of material fact remain regarding whether Millennium's claimed trade dress has any utilitarian advantages. Under the second step, because Millennium has presented evidence that the graphical format served in part a source identifying function, Millennium has presented enough evidence to allow a jury to assess the question of aesthetic functionality. Accordingly, the court reversed and remanded. View "Millennium Labs. v. Ameritox, Ltd." on Justia Law
Adobe Systems, Inc. v. Christenson
This appeal arose from a copyright dispute between Adobe and defendant and his software company, SSI. The court affirmed the district court's dismissal of both Adobe's copyright and trademark claims. Although a copyright holder enjoys broad privileges protecting the exclusive right to distribute a work, the first sale doctrine serves as an important exception to that right. Under this doctrine, once a copy of a work is lawfully sold or transferred, the new owner has the right “to sell or otherwise dispose of” that copy without the copyright owner’s permission. In this case, the court concluded that the district court correctly held that Adobe established its registered copyrights in the disputed software and that defendant carried his burden of showing that he lawfully acquired genuine copies of Adobe’s software, but that Adobe failed to produce the purported license agreements or other evidence to document that it retained title to the software when the copies were first transferred. The district court did not abuse its discretion in granting defendant’s motion to strike and excluding evidence purporting to document the licenses. Finally, the court concluded that the district court properly analyzed the trademark claim under the nominative fair use defense to a trademark infringement claim instead of under the unfair competition rubric. Accordingly, the court affirmed the judgment. View "Adobe Systems, Inc. v. Christenson" on Justia Law