Justia Trademark Opinion Summaries

Articles Posted in US Court of Appeals for the Federal Circuit
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The case revolves around a dispute between Jalmar Araujo and Framboise Holdings Inc. over the registration of the standard character mark #TODECACHO. Araujo filed a U.S. Trademark Application to register #TODECACHO for hair combs. Framboise opposed the registration, claiming that it would likely cause confusion with its #TODECACHO design mark, which it had been using in connection with various hair products since March 24, 2017. Framboise also had a pending trademark application for the same mark.The United States Patent and Trademark Office Trademark Trial and Appeal Board (the Board) granted Framboise an extension to submit its case in chief. Araujo opposed this extension and the late submission of a declaration by Adrian Extrakt, Director of Framboise. However, the Board granted the extension, finding that the delay was minimal and that Framboise had met the applicable good cause standard. The Board then relied on the Extrakt declaration to support Framboise's claim of prior use of the #TODECACHO design mark.The Board found that Framboise had met its burden to establish prior use by a preponderance of the evidence. It found that the Extrakt declaration alone was sufficient to prove prior use because it was clear, convincing, and uncontradicted. Having found an earlier priority date for Framboise, the Board found a likelihood of confusion between the two marks, sustained the opposition, and refused registration of Araujo’s mark.On appeal, the United States Court of Appeals for the Federal Circuit affirmed the Board's decision. The court found that the Board did not abuse its discretion in granting the extension and that the Board's finding that Framboise established prior use of the #TODECACHO design mark was supported by substantial evidence. View "ARAUJO v. FRAMBOISE HOLDINGS INC. " on Justia Law

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The United States Court of Appeals for the Federal Circuit reviewed a decision by the Trademark Trial and Appeal Board denying Naterra International, Inc.'s petition for cancellation of Samah Bensalem's BABIES’ MAGIC TEA standard character mark registration. Naterra argued that there was a likelihood of confusion between its BABY MAGIC mark and Bensalem’s BABIES’ MAGIC TEA mark. The Court examined several factors, including the similarity of the marks, the nature of the goods, and the trade channels. The Court found that the Board erred in its assessment of the similarity of the marks and the trade channels and failed to properly evaluate relevant evidence about the nature of the goods. Therefore, the Court vacated the Board's decision and remanded the case for further proceedings. The Court also found the Board did not err in its assessment of the fame of Naterra's mark. View "NATERRA INTERNATIONAL, INC. v. BENSALEM " on Justia Law

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In 2020, the law firm Chestek PLLC applied for a trademark for the mark "CHESTEK LEGAL" but provided only a P.O. box as its domicile address. The United States Patent and Trademark Office (USPTO) refused the application because it did not comply with the domicile address requirement. Chestek argued that the rules enforcing this requirement were improperly promulgated under the Administrative Procedure Act (APA). The Trademark Trial and Appeal Board affirmed the examiner's refusal. On appeal to the United States Court of Appeals for the Federal Circuit, Chestek argued that the domicile address requirement was improperly promulgated for two reasons: the USPTO was required to comply with the requirements of notice-and-comment rulemaking under 5 U.S.C. § 553 but failed to do so because the proposed rule did not provide notice of the domicile address requirement adopted in the final rule, and the domicile address requirement is arbitrary and capricious because the final rule failed to offer a satisfactory explanation for the domicile address requirement and failed to consider important aspects of the problem it purports to address, such as privacy. The Federal Circuit found the domicile address requirement to be a procedural rule that is exempt from notice-and-comment rulemaking. Furthermore, the USPTO's decision to require the address provided by all applicants to be a domicile address was not arbitrary or capricious for failure to provide a reasoned justification. The court affirmed the Board's refusal to register Chestek's mark. View "In Re CHESTEK PLLC " on Justia Law

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Great Concepts applied to register “DANTANNA’S” as a mark for a “steak and seafood restaurant.” Its 764 Registration issued in 2005. Chutter’s predecessor-in-interest, Dan Tana, subsequently petitioned the Trademark Trial and Appeal Board to cancel the Registration, based on an alleged likelihood of confusion with Tana’s common law “DAN TANA” mark for restaurant services. The cancellation proceeding was suspended during a trademark infringement civil suit. In 2009, the district court granted Great Concepts summary judgment; the Eleventh Circuit affirmed. In December 2010, the Board dismissed Tana’s cancellation proceeding. Meanwhile, in March 2010, Great Concepts’ then-attorney, Taylor, filed with the Patent and Trademark Office (PTO) a combined declaration of use and declaration of incontestability, under the Lanham Act, 15 U.S.C. 1058, 1065, declaring “there is no proceeding involving said rights pending and not disposed of either in the U.S. Patent and Trademark Office or in the courts.” At the time, both the PTO cancellation proceeding and the Eleventh Circuit appeal were pending.In 2015, Chutter successfully petitioned the PTO for cancellation of Great Concepts’ “DANTANNA’S” mark based on Taylor’s 2010 false affidavit. The Federal Circuit reversed. The statute limits the Board’s authority to cancel registration of a mark to circumstances in which the “registration was obtained fraudulently,” but does not authorize cancellation of a registration when the incontestability status of that mark is “obtained fraudulently.” View "Great Concepts, LLC v. Chutter, Inc." on Justia Law

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In 2018, Spireon sought to register the mark FL FLEX, for “[e]lectronic devices for tracking the locations of mobile assets" such as trailers, cargo containers, and transportation equipment, using global positioning systems and cellular communication networks. An Examining Attorney approved the application. Flex opposed the registration, citing priority and the likelihood of confusion with Flex’s marks, FLEX, FLEX (stylized), and FLEX PULSE, registered in 2016-2017, for services including supply chain management services, transportation logistics services, and inventory management, and computers, computer software for use in supply chain management, logistics and operations management, quality control, inventory management, scheduling, and related services.The Trademark Trial and Appeal Board Board sustained Flex’s opposition. The Federal Circuit vacated. The Board erred in analyzing conceptual strength under the first DuPont factor, the similarity of the marks, rather than the sixth DuPont factor. The existence of third-party registrations on similar goods can bear on a mark’s conceptual strength. Third-party registrations containing an element that is common to both the opposer’s and the applicant’s marks can show that that element has “a normally understood and well-recognized descriptive or suggestive meaning.” Flex failed to show that the identical marks for identical goods were not used in the marketplace, but on remand, should be allowed to make such a showing. The Board also erred by comparing FL FLEX to FLEX PLUS rather than the relevant mark. View "Spireon, Inc. v. Flex Lrd." on Justia Law

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Charger filed an intent-to-use application to register SPARK LIVING on the Principal Register for leasing of real estate; real estate listing; real estate service, namely, rental property management. The examining attorney refused registration under the Lanham Act, 15 U.S.C. 1052(d), on grounds of a likelihood “to cause confusion, or to cause mistake, or to deceive with an earlier registered mark.” The earlier registered mark, SPARK, was registered for “[r]eal estate services, namely, rental brokerage, leasing, and management of commercial property, offices and office space.” Charger amended its description of services to only cover residential real estate services, then disclaimed the term “LIVING,” and again amended the description to “specifically” exclude commercial property and office space—the services of the registrant’s mark. The examining attorney maintained the refusal.The Trademark Trial and Appeal Board and Federal Circuit affirmed, as supported by substantial evidence the refusal to register Charger’s mark based on likelihood of confusion. The Board addressed five of the “Dupont factors”: similarity or dissimilarity of the marks, the nature of the goods or services, established, likely-to-continue trade channels, conditions under which and buyers to whom sales are made, and strength of the mark, focusing on the similarity or dissimilarity of the marks as well as the goods or services. View "In Re Charger Ventures LLC" on Justia Law

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Apple sought to register the mark APPLE MUSIC for the production and distribution of sound recordings and arranging, organizing, conducting, and presenting live musical performances. Apple began using the mark in 2015 when it launched its music streaming service. Bertini, a professional musician, opposed the registration. Bertini has used the mark APPLE JAZZ in connection with festivals and concerts since 1985. In the mid-1990s, Bertini began using APPLE JAZZ to issue and distribute sound recordings. Bertini argued that Apple’s registration would likely cause confusion with Bertini’s common law trademark, 15 U.S.C. 1052(d).The Trademark Trial and Appeal Board dismissed Bertini’s opposition, finding that Bertini’s common law mark APPLE JAZZ is inherently distinctive and that Bertini may claim a 1985 priority date in connection with “[a]rranging, organizing, conducting, and presenting concerts [and] live musical performances.” Apple successfully argued that it was entitled to a 1968 priority date based on trademark rights it purchased from Apple Corps, the Beatles’ record company, in 2007. That registration covers the mark APPLE for “[g]ramophone records featuring music” and “audio compact discs featuring music.” The Board found that Apple was entitled to tack its 2015 use of APPLE MUSIC onto Apple Corps’ 1968 use of APPLE.The Federal Circuit reversed. Apple cannot tack its use of APPLE MUSIC for live musical performances onto Apple Corps’ use of APPLE for gramophone records and its application to register APPLE MUSIC must be denied. View "Bertini v. Apple Inc." on Justia Law

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SoClean, a medical-device company that produces sanitizing devices for CPAP machines, owns the 195 registration for the configuration of replacement filters for its sanitizing devices. SoClean sued its former distributor, Sunset, for patent infringement, and trademark infringement based on that registration. On a motion for a preliminary injunction, the district court concluded that SoClean was likely to succeed on the merits and was entitled to a presumption of irreparable harm. Balancing the equities and weighing the public interest, the court concluded that enjoining all sales of Sunset’s filters would “go[] much further than necessary” to “end any possible statutory violation.” The court crafted a narrow “injunction that prohibits Sunset from engaging in those practices that result in consumer confusion” and enjoined Sunset from marketing its filters “using images of the filter cartridge alone”; “[a]ny image, drawings, or other depictions of Sunset’s filter cartridge used for the purposes of promotion, marketing and/or sales shall prominently display the Sunset brand name in a manner that leaves no reasonable confusion that what is being sold is a Sunset brand filter.”The Federal Circuit affirmed, rejecting arguments that the district court afforded too much weight to the presumption of validity and held Sunset to a higher standard of proof than the applicable preponderance-of-the-evidence standard. View "SoClean, Inc. v. Sunset Healthcare Solutions, Inc." on Justia Law

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Coca-Cola distributes a Thums Up cola and Limca lemon-lime soda in India and other foreign markets. Meenaxi has distributed a Thums Up cola and a Limca lemon-lime soda in the United States since 2008 and registered the THUMS UP and LIMCA marks in the United States in 2012. Coca-Cola brought cancellation proceedings under the Lanham Act, 15 U.S.C. 1064(3), asserting that Meenaxi was using the marks to misrepresent the source of its goods. The Trademark Trial and Appeal Board canceled Meenaxi’s marks.The Federal Circuit reversed. Coca-Cola has not established a statutory cause of action based on lost sales or reputational injury. Coca-Cola does not identify any lost sales in the United States but instead relies on testimony that “THUMS UP-branded and LIMCA-branded products are resold in Indian grocery stores around the world, including in the U.S.” Coca-Cola presented no evidence that it sells the Limca soda in the United States and established only that Thums Up cola is “available for purchase as an individual beverage or as part of a tasting tray” at “World of Coca-Cola” and “Coca-Cola Store” locations in Atlanta and Orlando. View "Meenaxi Enterprise, Inc. v. Coca-Cola Co." on Justia Law

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. Until 2008, Lehman Brothers, a large investment bank, owned federal trademark registrations for the standard character mark LEHMAN BROTHERS. Lehman Brothers filed for bankruptcy in 2008 and sold several of its businesses and other assets to Barclays for $1.5 billion, assigning all of its LEHMAN BROTHERS trademarks and accompanying goodwill. Barclays granted Lehman Brothers a worldwide, non-exclusive license to use the LEHMAN BROTHERS trademarks in connection with continuing businesses and operations. The term of the license was two years for use in connection with investment banking and capital markets businesses and perpetual for use in connection with other operations. Barclays allowed its LEHMAN BROTHERS trademark registrations to expire. In 2013, Tiger Lily, which has no affiliation to Lehman Brothers or Barclays, sought registration of the mark LEHMAN BROTHERS for beer and spirits. A few months later, Barclays applied to register LEHMAN BROTHERS for use in connection with financial services. In 2014, Tiger Lily applied for registration of the LEHMAN BROTHERS mark for bar services and restaurant services. Barclays and Tiger Lily filed Notices of Opposition.The Federal Circuit affirmed the Trademark Trial and Appeal Board in sustaining Barclay’s oppositions against Tiger Lily’s applications and in dismissing Tiger Lily’s opposition to Barclays’ application, noting that Lehman Brothers and Barclays have continued to use the LEHMAN BROTHERS mark since 2008. View "Tiger Lily Ventures Ltd. v. Barclays Capital Inc." on Justia Law