Justia Trademark Opinion SummariesArticles Posted in US Court of Appeals for the Fifth Circuit
Jim S. Adler, PC v. McNeil Consultants, LLC
Plaintiffs filed suit alleging that defendants purchased trademark terms as keywords for search-engine advertising, then placed generic advertisements that confused customers as to whether the advertisements belonged to or were affiliated with plaintiffs. Plaintiffs alleged claims for trademark infringement in violation of the Lanham Act and claims under Texas law.The Fifth Circuit reversed the district court's dismissal of the complaint for failure to state a claim, vacated the denial of leave to amend, and remanded for further proceedings. The court agreed with Southwest Recreational, Ninth Circuit precedent, and the author of a leading treatise that in the context of internet searches and search-engine advertising in particular, the critical issue is whether there is consumer confusion and that distraction is insufficient. In regard to plaintiff's trademark infringement claims, the court concluded that whether an advertisement incorporates a trademark that is visible to the consumer is a relevant but not dispositive factor in determining a likelihood of confusion in search-engine advertising cases. In this case, plaintiff's complaint contains sufficient factual matter, accepted as true, to state a Lanham Act claim that is plausible on its face. View "Jim S. Adler, PC v. McNeil Consultants, LLC" on Justia Law
Spectrum Association Management of Texas, LLC v. Lifetime HOA Management LLC
Spectrum filed suit against Lifetime and Jay Tuttle for trademark violations under the Lanham Act over a domain name. After Spectrum was awarded statutory damages, the district court declined to award attorneys' fees to Spectrum.The Fifth Circuit affirmed the district court's admission of certain deposition testimony at trial and agreed with the Fourth Circuit that the plain text of Federal Rule of Civil Procedure 32(a)(4)(B) is clear that "the place of trial" is the courthouse where trial takes place. In this case, the Lifetime Defendants were not prejudiced by the transfer of trial venue from San Antonio to Waco, and the court rejected the Lifetime Defendants' contention that the witness was not an unavailable trial witness. The court affirmed the district court's statutory damages award, concluding that the district court did not abuse its broad discretion, under 15 U.S.C. 1117(d), in awarding $100,000 for the Infringing Domain. However, the court reversed the district court's finding that Spectrum was not entitled to attorneys' fees in this exceptional case where the record confirms that the Lifetime Defendants engaged in willful, bad-faith infringement of Spectrum's trademarks, justifying an award of maximum statutory damages. The court remanded for a determination of reasonable attorneys' fees. View "Spectrum Association Management of Texas, LLC v. Lifetime HOA Management LLC" on Justia Law
Alliance for Good Government v. Coalition for Better Government
Alliance and Coalition are nonprofit organizations that endorse political candidates in New Orleans. Alliance filed suit against Coalition, seeking to enjoin use of its trade name and logo for federal trademark infringement under the Lanham Act, state trademark infringement, and unfair trade practices. The district court subsequently joined Darleen Jacobs as a third party to the case.The Fifth Circuit affirmed the district court's award of attorney's fees to Alliance for federal trademark infringement under the Lanham Act. The court concluded that the district court's procedure for joining Jacobs met the demands of due process, and the district court did not abuse its discretion in holding her directly liable for the fee award. The court found it appropriate to extend the interpretation of the Patent Act fee-shifting provision to its interpretation of the Lanham Act and found that district courts do have the authority to award appellate fees under the Lanham Act. The court concluded that the district court's decision to award fees for further litigation of the attorney's fee award did not contravene the mandate rule; even if appellants are correct that Alliance's billing entries are flawed, the proper remedy is "a reduction of the award by a percentage intended to substitute for the exercise of billing judgment," which the district court did; and the district court considered each of appellants' objections to Alliance's fees motion. Finally, the court declined to address appellants' First Amendment argument, which was not addressed in Alliance I. View "Alliance for Good Government v. Coalition for Better Government" on Justia Law
Perry v. H. J. Heinz Company Brands, LLC
Plaintiff filed suit against Heinz for trademark infringement, trademark counterfeiting, false designation of origin, and for violations of various Louisiana trademark laws. Heinz filed a counterclaim to have plaintiff's Metchup trademark registration canceled for abandonment or nonuse. The claims relate to plaintiff's mayonnaise and ketchup product and Heinz's Mayochup product. The district court dismissed plaintiff's claims because it found that there was no likelihood of confusion between Mayochup and Metchup and no confusion caused by Heinz's fleeting use of Metchup in advertising. The district court also canceled plaintiff's trademark registration after concluding that he failed to prove that he had made lawful, non-de minimis use of the Metchup mark in commerce.The Fifth Circuit affirmed the district court's dismissal of plaintiff's claims against Heinz, agreeing with the district court that there is little chance that a consumer would confuse plaintiff's Metchup with Heinz's Mayochup or be confused by Heinz's use of Metchup in advertising. However, the court vacated the district court's cancelation of plaintiff's trademark and remanded for further proceedings. The court explained that because plaintiff sold some Metchup and testified that he hoped to sell more, a finder of fact should determine whether his incontestable trademark should be deemed abandoned and canceled. View "Perry v. H. J. Heinz Company Brands, LLC" on Justia Law
Future Proof Brands, LLC v. Molson Coors Beverage Co.
Future Proof filed suit against Coors for trademark infringement, claiming that consumers would confuse Coors' hard seltzer beverage "Vizzy" with Future Proof's hard seltzer beverage "Brizzy."The Fifth Circuit affirmed the district court's denial of Future Proof's motion for a preliminary injunction, holding that the district court did not abuse its discretion in determining that Future Proof cannot determine a likelihood of success on the merits of its claims. In this case, the district court considered the digits of confusion and concluded that three digits supported the injunction and one weighed "marginally in favor of granting the injunction . . . ." But the district court correctly concluded that the other four factors did not support the injunction. The district court also notably concluded correctly that the two digits that have special importance, namely the sixth—which "may alone be sufficient to justify an inference that there is a likelihood of confusion,"—and the seventh—which constitutes the "best evidence of a likelihood of confusion,"—did not support the injunction. View "Future Proof Brands, LLC v. Molson Coors Beverage Co." on Justia Law
Diece-Lisa Industries, Inc. v. Disney Enterprises, Inc.
Plaintiff appealed the district court's rulings in two consolidated actions alleging that various Disney corporate entities infringed on plaintiff's "Lots of Hugs" trademark by using the "Lots-O'-Huggin' Bear" (aka "Lotso") in the Toy Story 3 movie and in the sale of merchandise.The Fifth Circuit held that plaintiff may obtain review of the adversary interlocutory rulings in its current appeal from the adverse final judgment in case No. 2:14-CV-00070. The court affirmed the district court's conclusion that plaintiff lacked personal jurisdiction over the IP entities, because plaintiff's arguments were based on two novel theories that were without merit. The court set aside the district court's order pertaining to the third amended complaint and remanded, holding that the district court abused its discretion, by sua sponte and without hearing, vacating its order granting plaintiff leave to file the third amended complaint. Finally, the court affirmed the district court's decision striking the fourth amended complaint, holding that the district court did not abuse its discretion in striking the complaint. View "Diece-Lisa Industries, Inc. v. Disney Enterprises, Inc." on Justia Law
Uptown Grill, LLC v. Camellia Grill Holdings, Inc.
This case involved ten years of litigation regarding an attempt to simultaneously sell a restaurant and license associated intellectual property. The Fifth Circuit affirmed the district court's ruling that the Bill of Sale assigned all Camellia Grill Trademark rights to Hicham Khodr; affirmed the district court's ruling that the Bill of Sale assigned the trade dress associated with the Carrollton restaurant; affirmed the district court's finding that infringement damages were unwarranted; reversed the district court's denial of summary judgment on the trade-dress breach of contract claim and remanded for proceedings to determine if Khodr breached the License Agreement by using the alleged trade dress at the Chartres restaurant; and affirmed the district court's compensable damages ruling. View "Uptown Grill, LLC v. Camellia Grill Holdings, Inc." on Justia Law
Alliance for Good Government v. Coalition for Better Government
In this trademark infringement action, the district court granted Alliance for Good Government summary judgment on its trademark infringement claim against Coalition for Better Government, enjoined Coalition from the use of both its logo and its trade name, and then awarded Alliance attorney's fees incurred in bringing the lawsuit. The Fifth Circuit affirmed in part and held that the district court did not abuse its discretion in finding that Alliance was entitled to fees. The court remanded for the district court to reassess the amount of fees, because the court has since modified the district court's injunction to permit Coalition to use its trade name. View "Alliance for Good Government v. Coalition for Better Government" on Justia Law
Express Oil Change, L.L.C. v. Mississippi Board of Licensure for Professional Engineers & Surveyors
In regulating the practice of engineering, Mississippi restricts the use of the term “engineer.” Express operates automotive service centers in Mississippi and other states under the Tire Engineers mark. The Mississippi Board of Licensure for Professional Engineers & Surveyors informed Express that the name Tire Engineers violated Miss. Code 73-13-39 and requested that it change its company advertisement name. Express sought a declaratory judgment, citing Express’s “rights of commercial free speech guaranteed by the First Amendment”; and “rights under preemptive federal trademark law” under 15 U.S.C. 1051–1127. The district court granted the Board summary judgment. The Fifth Circuit reversed. The Board’s decision violates the First Amendment’s commercial speech protections. Because its essential character is not deceptive, Tire Engineers is not inherently misleading. The name, trademarked since 1948, apparently refers to the work of mechanics using their skills “not usu[ally] considered to fall within the scope of engineering” to solve “technical problems” related to selecting, rotating, balancing, and aligning tires. Nor is the name actually misleading. Because the name is potentially misleading, the Board’s asserted interests are substantial but the record does not support the need for a total ban on the name. Other states with similar statutes have not challenged the use of the trademark and the Board did not address why less-restrictive means, such as a disclaimer, would not accomplish its goal. View "Express Oil Change, L.L.C. v. Mississippi Board of Licensure for Professional Engineers & Surveyors" on Justia Law
Springboards to Education, Inc. v. Houston Independent School District
Springboards filed suit against the school district under the Lanham Act, alleging that the school district used the company's marks in the course of operating a summer reading program. At issue was the school district's use of "Houston ISD Millionaire Club" on its incentive items and informational material.The Fifth Circuit affirmed the district court's grant of summary judgment for the school district, holding that a reasonable jury could not find that the allegedly infringing use of the marks created a likelihood of confusion. The court held that no reasonably jury could conclude that it was likely potential purchasers of Springboards' products would have believed that Springboards was affiliated with HISD's summer reading program. View "Springboards to Education, Inc. v. Houston Independent School District" on Justia Law