Articles Posted in U.S. Court of Appeals for the Sixth Circuit

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Sixth Circuit finds little likelihood of confusion between the trademarks “OrderLink” and “UPS OrderLink.” Progressive, located in Michigan, provides logistical services to online businesses. Under the trademark “OrderLink,” Progressive develops clients’ websites and handles deliveries. Progressive registered the OrderLink trademark in 2004, but alleges that it has used the mark for at least 19 years and spent $2.5 million dollars advertising the mark. UPS also serves small volume shippers who operate businesses on Amazon and eBay. In 2012, UPS developed a new interface to enable those customers to import their orders directly into UPS’s shipping application. UPS initially concluded that the name “orderlink” was not available, but determined that the terms “order” and “link” were commonly used together by other companies. UPS concluded that Progressive’s services differed substantially from tits application UPS and chose the name “UPS OrderLink.” Its USPTO application was rejected based on a likelihood of confusion with Progressive’s mark. Nonetheless, UPS launched UPS OrderLink as a free service, accessible only through UPS’s website. Progressive sent a cease-and-desist letter. UPS changed the name of its service to “Ship Marketplace Orders.” Progressive alleged violations of the Lanham Act, 15 U.S.C. 1051, the Michigan Consumer Protection Act, and the common law. The district court granted UPS summary judgment. The Sixth Circuit affirmed. The balance of eight factors, particularly the strength of the mark and the similarity of the marks, indicate little likelihood of customer confusion. View "Progressive Distribution Services, Inc. v. United Parcel Service, Inc." on Justia Law

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In 2013, Jurgensen allegedly developed an idea for a mobile application to connect employers with prospective employees, called “WorkWire.” He formed Creative Harbor; an attorney allegedly advised that the WorkWIre trademark was available. Meanwhile, Kelly Services, a staffing company, allegedly developed its own employment-based iPad application, called “WorkWire.” Kelly allegedly completed the application on February 4, and submitted it to Apple for approval. On February 19, Creative filed trademark applications at 6:28 p.m. and 7:56 p.m. (EST). The same day, at 8:11 p.m. EST, Kelly’s iPad application became available on the Apple Store. A customer first downloaded that application on February 20. Creative sent Kelly a cease and desist letter. Kelly filed suit. When the Patent and Trademark Office published the Applications, Kelly filed opposition and notified the Trademark Trial and Appeal Board (TTAB) of the pending action. The TTAB stayed proceedings. The district court held that Creative had to use the Mark in commerce before its priority rights would vest and voided the Applications in their entirety. The Sixth Circuit affirmed that Creative lacked bona fide intent as to some, but not all of the goods and services listed in the Applications, (15 U.S.C. 1051(b)), but held that the district court erroneously voided the Applications in their entirety, and remanded for determination of which goods and services were improperly included in the Applications, and excision of improper items. View "Kelly Services, Inc. v. Creative Harbor, L.L.C." on Justia Law

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Kibler, a disc jockey, uses turntables and others’ vocals to produce music containing jazz and funk elements. He released several albums under the name “DJ LOGIC” since 1999, but currently has no record deal. Kibler registered “DJ LOGIC” as a trademark in 2000, allowed the registration to lapse, and re-registered it in 2013. He has also been known as “LOGIC.” Hall has performed under the name “LOGIC” since 2009. In 2012, Kibler’s attorney sent Hall’s management company and booking agent an email ordering them to stop using the name “LOGIC” and to recall any product or advertisement that did, claiming infringement on Kibler’s mark. Hall’s company applied to register “LOGIC” as a trademark. Kibler sued, alleging trademark infringement, 15 U.S.C. 1125(a); breach of the Michigan Consumer Protection Act; unfair competition under Michigan law; and trademark dilution under the Lanham Act. In 2014, defendants delayed Hall’s tour and first album release due to ongoing settlement negotiations that ultimately collapsed. Defendants then released the album, which sold over 170,000 copies. The Sixth Circuit affirmed summary judgment in favor of the defendants. Kibler did not provide evidence sufficient to find that relevant consumers are likely to confuse the sources of his and Hall’s products or that Hall diluted Kibler’s mark. View "Kibler v. Hall" on Justia Law

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In 1969, the Flynt brothers opened “Hustler Club” nightclub, in Cincinnati. Larry later created the Hustler conglomerate, producing sexually explicit magazines. Jimmy opened his retail store, Hustler Cincinnati, in 2000, using the “HUSTLER” trademark (owned by Larry’s corporation) and began paying licensing in 2004. Jimmy and Larry had a falling out. Larry's Hustler fired Jimmy in 2009. Jimmy’s Hustler stopped paying fees, but continued to use the mark. Larry sued. The court enjoined Jimmy from “using in commerce any HUSTLER trademark” and “using any trademark or any variation thereof owned by” Larry or his corporations. Later, Larry complained that Jimmy had opened a new store in Florence, Kentucky, “FLYNT Sexy Gifts.” The court denied the contempt motion because the injunction did not directly prohibit Jimmy’s conduct. but modified the injunction, reasoning that Jimmy’s use of “FLYNT Sexy Gifts” was “likely to cause confusion with the LARRY FLYNT trademark.” The Sixth Circuit affirmed a modification that prohibits Jimmy from “[u]sing the name ‘Flynt’ in connection with the sale, promotion or advertising of adult entertainment products or services unless it is accompanied by the first name ‘Jimmy’ in the same font size, color, and style and on the same background color,” and required Jimmy, when using the name “Flynt” anywhere except on “store signage,” to incorporate “a conspicuous disclaimer stating that the goods or services are not ‘sponsored, endorsed by, or affiliated with Larry Flynt or Hustler, or any business enterprise owned or controlled by Larry Flynt.’” View "LFP IP, LLC v. Hustler Cincinnati, Inc." on Justia Law

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Plaintiff and her companies, Tri-Serve and Capital Concepts, brought a claim for improper use of trade name and false designation of origin under the Lanham Act, 15 U.S.C. 1125, against Sheakley Entity Defendants on the basis of e-mails and mailings Angelia Strunk-Zwick, a manager for plaintiffs and a consultant for Defendant Sheakley HR Solutions, sent to Tri-Serve clients. The court concluded that plaintiffs have stated a claim for improper use of trade name and false designation of origin for which the Sheakley Entity Defendants may be held vicariously liable. Taken together, the representations at issue could not only sow confusion but also strongly imply affiliation - and affiliation not endorsed by plaintiffs. Because the Sheakley Entity Defendants may be held vicariously liable for Strunk-Zwick’s e-mail, plaintiffs have stated a claim for false advertising against Strunk-Zwick and the Sheakley Entity Defendants. Plaintiffs further allege that Strunk-Zwick and all Sheakley Defendants violated the Racketeer Influenced and Corrupt Organizations Act (RICO), 18 U.S.C. 1962, for failure to state a claim. The court concluded that plaintiffs’ RICO conspiracy claim fails because plaintiffs failed to allege a substantive RICO violation in the first place. Accordingly, the court reversed the district court's dismissal of plaintiffs' Lanham Act claims for failure to state a claim; affirmed the dismissal of plaintiffs' RICO claims; and remanded for further proceedings where the district court may, in its discretion, reexamine whether to reinstate any of plaintiffs' state law claims. View "Grubbs v. Sheakley Group, Inc." on Justia Law