Justia Trademark Opinion SummariesArticles Posted in US Court of Appeals for the Eighth Circuit
Brothers and Sisters in Christ v. Zazzle, Inc.
Brothers and Sisters in Christ, LLC (BASIC) allege that Zazzle, Inc. sold a t-shirt that infringed on BASIC’s federal trademark. The district court granted Zazzle’s motion to dismiss for lack of personal jurisdiction. The Eighth Circuit affirmed. The court explained that BASIC bears the burden of establishing a prima facie showing of jurisdiction. Further, where the applicable federal statute, here the Lanham Act, does not authorize nationwide personal jurisdiction the existence of personal jurisdiction depends on the long-arm statute of the forum state and the federal Due Process Clause. Here, the court looked to Zazzle’s contacts with Missouri related to BASIC’s claims. Aside from the single t-shirt sale, BASIC fails to allege a connection between Zazzle’s other contacts with Missouri and the underlying suit. BASIC does not allege that Zazzle’s other activities in Missouri involved trademark infringement or that Zazzle sold additional trademark-infringing goods into the state. Further, BASIC has not alleged that Zazzle took such purposeful, targeted action toward Missouri or Missouri consumers. Although Missouri has an interest in this litigation because the allegedly injured plaintiff is a Missouri company, the convenience of the parties is neutral, as Zazzle would be inconvenienced by litigation in Missouri and BASIC would likely be inconvenienced in an alternate forum. In sum, BASIC has failed to allege that Zazzle could reasonably anticipate being haled into court in Missouri. View "Brothers and Sisters in Christ v. Zazzle, Inc." on Justia Law
A.I.G. Agency, Inc. v. American International Group
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
Window World International v. O’Toole
The Eighth Circuit dismissed, based on lack of jurisdiction, plaintiffs' appeal of a district court order staying a federal action for trademark infringement and unfair competition pending resolution of common trademark license issues in a long-pending state court litigation between the parties. The court concluded that the stay order is neither a final order under 28 U.S.C. 1291 nor a collateral interlocutory order that may be appealed. In this case, the district court did not abuse its discretion in concluding that if the Lomax Parties prevail on their broad allegations in state court, then the state proceedings will fully dispose of the claims in federal court. View "Window World International v. O'Toole" on Justia Law
Select Comfort Corp. v. Baxter
Plaintiffs are the owners of the heavily advertised Select Comfort and Sleep Number brands of adjustable air mattresses and defendants are online retailers of their own brand of lower-priced adjustable beds. Plaintiffs alleged that defendants used similar and identical marks in several different capacities online to sell competing products, and that defendants compounded internet-related confusion by making fraudulent misrepresentations and failing to dispel confusion when consumers contacted defendants' call centers. After a trial resulted in a mixed verdict, both sides appealed.The Eighth Circuit reversed and concluded that the district court erred by finding as a matter of law that the relevant consumers were sophisticated and that a theory of initial-interest confusion could not apply. Therefore, the court concluded, based on Insty*Bit, Inc. v. Poly-Tech Indus., 95 F.3d 663, 671–72 (8th Cir. 1996), that limiting the infringement instruction to require confusion at the time of purchase was error. Given the strength of plaintiffs' evidence on the issue of confusion, the court cannot conclude that the summary judgment and instructional errors were harmless.In regard to the false advertising claim, the court concluded that the district court erred by instructing the jury in a manner that shifted the burden of proof on the materiality element based on a finding of literal falsity. Furthermore, based on the specific jury forms returned in this case, the court did not find the error to be harmless as to those claims where plaintiffs prevailed. Accordingly, the court reversed and remanded for a new trial on the seven false advertising claims on which plaintiffs prevailed. In regard to the remaining issues, the court concluded that the district court did not abuse its substantial discretion in refusing to permit amendment of the counterclaim after the close of discovery and on the eve of trial; the court noted that an expert's testimony as to the structure and meaning of survey evidence or other factual matters generally should not usurp the court's role in defining the law for the jury; the court concluded that any infirmities as to the demonstration bed go to the weight rather than the admissibility of the evidence; and the jury instructions did not impermissibly shift the burden of proof on defendants' cross claim seeking a declaration that plaintiffs held no trademark rights in the phrase "NUMBER BED." View "Select Comfort Corp. v. Baxter" on Justia Law
Lawn Managers, Inc. v. Progressive Lawn Managers, Inc.
The Eighth Circuit affirmed the district court's findings of fact and conclusions of law in this trademark infringement case over the word mark "Lawn Managers." In this case, the licensing agreement was the result of a divorce and provided that husband and wife would, in effect, operate parallel, almost identical companies using the same name and similar equipment and vehicles but in different zip codes.The court agreed with the district court that Progressive has not met its high burden of proving that Lawn Managers abandoned its mark through naked licensing. Therefore, the district court properly found that wife could reasonably rely on husband's own quality control efforts and thus met the duty of control as licensor. The court held that the terms of the licensing agreement, combined with the couple's successful operation of the Lawn Managers business for over 17 years and the lack of any evidence of quality deviations at Progressive, were sufficient to support the district court's finding of reasonable reliance. Furthermore, the court held that the district court was within its discretion to conclude that the Lawn Managers mailer did not support Progressive's unclean hands defense. Finally, the district court did not clearly err in its damages award. View "Lawn Managers, Inc. v. Progressive Lawn Managers, Inc." on Justia Law
Safeway Transit LLC v. Discount Party Bus, Inc.
Safeway and its proprietor filed suit against DPB and its owner, alleging federal trademark infringement under the Lanham Act and deceptive trade practices under Minnesota state law. Safeway claimed that DPB infringed two unregistered description trademarks -- "Rent My Party Bus" and "952 Limo Bus." The district court permanently enjoined defendants from using the trademarks or related domain names, keywords, or hashtags in connection with the advertisement, marketing, or sale of transportation services. However, the district court denied plaintiffs' requests for disgorgement of profits and attorney's fees.The Eighth Circuit affirmed, holding that the district court's finding of no actual confusion and thus, no unjust enrichment, was not clearly erroneous; the district court did not erroneously place the burden of proof on Safeway to prove unjust enrichment; and Safeway bore the burden of proving DPB's sales. The court also held that the district court's findings, when taken in their totality, support its conclusion that Safeway is not entitled to a disgorgement of profits based on deterrence. In this case, the district court actually found that DPB held a good faith belief in its right to use the trademarks. Finally, the district court did not abuse its discretion in denying Safeway's request for disgorgement of profits, and did not abuse its discretion in denying Safeway's request for attorney's fees. View "Safeway Transit LLC v. Discount Party Bus, Inc." on Justia Law
SnugglyCat, Inc. v. Opfer Communications, Inc.
The Eighth Circuit affirmed the district court's order granting SnugglyCat's motion to voluntarily dismiss this Lanham Act action without prejudice pursuant to Federal Rule of Civil Procedure 41(a)(2). The court rejected appellants' contention that the district court failed to consider their argument regarding legal prejudice; the court saw no need to adopt a per se rule that would bar dismissal without prejudice in all cases in which a plaintiff has sued under a fee-shifting statute and found that the district court did not commit an error of law; and the district court did not commit a clear error of judgment where it considered all the relevant factors, including SnugglyCat's purported reason for seeking dismissal of the action without prejudice—its inability as a small company to sustain the cost of continuing suit—and expressly found the motion to have been made in good faith. View "SnugglyCat, Inc. v. Opfer Communications, Inc." on Justia Law
Phyllis Schlafly Revocable Trust v. Cori
This consolidated appeal stemmed from the trusts' motion for a temporary restraining order and preliminary injunction enjoining the use of Phyllis Schafly's intellectual property. The Eighth Circuit affirmed the denial of preliminary injunctive relief under 28 U.S.C. 1292(a)(1) and held that the trusts would not be entitled to the traditional presumption of irreparable harm in trademark cases because they did not promptly seek preliminary injunctive relief concerning the trademark infringement, regardless of whether the presumption survived recent Supreme Court decisions emphasizing the movant's burden to show that irreparable injury was likely in the absence of an injunction. The court dismissed the appeal of the order staying litigation for lack of appellate jurisdiction, because the order was temporary and did not effectively end the litigation. View "Phyllis Schlafly Revocable Trust v. Cori" on Justia Law
CMI Roadbuilding, Inc. v. Iowa Parts, Inc.
The Eighth Circuit affirmed the district court's grant of summary judgment for Iowa Parts in a trademark secrets and intellectual property action brought by CMI. The court held that CMI could not establish its burden of proving that the discovery rule saves its statutory cause of action because it was on inquiry notice that Iowa Parts was making its component parts, possibly with its engineering documents and other trade secrets, starting in 2002 and continuing thereafter. The court also held that CMI was on notice of a possible problem as early as 2002 on the conversion claim. Finally, the district court properly granted summary judgment on the unjust enrichment claim where an equitable claim could not provide alternative relief. View "CMI Roadbuilding, Inc. v. Iowa Parts, Inc." on Justia Law
B&B Hardware, Inc. v. Hargis Industries, Inc.
The Eighth Circuit affirmed the district court's judgment in favor of Hargis in an action brought by B&B, alleging a trademark infringement claim involving B&B's SEALTIGHT mark and Hargis' SEALTITE mark. The court found no plain error in the district court's determination that B&B willfully failed to disclose a prior adverse decision and thus the district court did not err in its determination that B&B committed fraud on the PTO and that Hargis was therefore entitled to the affirmative defense of fraud under 15 U.S.C. 1115(b)(1). The court also held that B&B's claims were barred by collateral estoppel because B&B failed to present evidence of any significant intervening factual change from the date of the 2000 jury verdict. In regard to Hargis' cross-appeal, the court affirmed the district court's denial of Hargis' motion for attorney fees and nontaxable litigation costs. The court held that the district court did not abuse its discretion in finding this an unexceptional case. View "B&B Hardware, Inc. v. Hargis Industries, Inc." on Justia Law