Justia Trademark Opinion Summaries

US Ghost Adventures, LLC (Ghost Adventures) operates a bed and breakfast at the Lizzie Borden House in Fall River, Massachusetts, offering ghost tours and related activities. Ghost Adventures holds federal trademarks for the name "Lizzie Borden" and a hatchet logo. Miss Lizzie's Coffee LLC (Miss Lizzie's) opened a coffee shop next to the Lizzie Borden House, using the Lizzie Borden story in its marketing, including a hatchet logo and references to being "The Most Haunted Coffee Shop in the World." Some visitors mistakenly believed the two businesses were affiliated.Ghost Adventures sued Miss Lizzie's in the United States District Court for the District of Massachusetts for trademark infringement and unfair competition, seeking a preliminary injunction to stop Miss Lizzie's from using the "Lizzie Borden" name and hatchet logo. The district court denied the preliminary injunction, finding that Ghost Adventures failed to show a likelihood of success on the merits. The court determined that the key element in any infringement action is the likelihood of confusion, which Ghost Adventures did not demonstrate. The court found that Miss Lizzie's hatchet logo and use of the name "Lizzie" were not similar enough to Ghost Adventures' trademarks to cause confusion.The United States Court of Appeals for the First Circuit reviewed the case and affirmed the district court's decision. The appellate court agreed that the district court did not clearly err in finding that the hatchet logos were dissimilar and that Miss Lizzie's reference to "Lizzie" was to the historical figure, not the trademark. The court also found that any consumer confusion was due to the proximity of the businesses and their common reliance on the Lizzie Borden story, not the similarity of their marks. The court concluded that Ghost Adventures did not demonstrate a likelihood of success on the merits, and the district court's denial of the preliminary injunction was affirmed. View "US Ghost Adventures, LLC v. Miss Lizzie's Coffee LLC" on Justia Law

This case involves a dispute over the "Pollo Picú" trademark used in the sale of fresh chicken. Productos Avícolas del Sur, Inc. (PAS) sold chicken under this trademark until 2011, when financial difficulties forced the company to stop. In 2016, To-Ricos, Ltd. (To-Ricos) applied to register the Picú mark, believing PAS had abandoned it. PAS opposed the application, leading To-Ricos to seek a declaratory judgment in federal district court to establish its ownership of the mark. The district court granted summary judgment for To-Ricos, concluding that PAS had abandoned the mark.The United States District Court for the District of Puerto Rico found that PAS had not used the Picú mark for at least three consecutive years, establishing a prima facie case of abandonment. PAS argued that its financial difficulties and ongoing litigation with its bank excused its nonuse of the mark and that it intended to resume use. However, the district court determined that PAS did not provide sufficient evidence of intent to resume use within the statutory period and thus granted summary judgment in favor of To-Ricos.The United States Court of Appeals for the First Circuit reviewed the case and affirmed the district court's decision. The appellate court held that PAS failed to rebut the presumption of abandonment. PAS's attempts to sell the mark in 2012, its 2014 settlement agreement with the bank, and its 2017 licensing agreement with IMEX did not demonstrate an intent to resume use of the mark within the relevant statutory period. The court emphasized that mere explanations for nonuse or vague intentions to resume use are insufficient to rebut the presumption of abandonment. Consequently, the court affirmed the district court's grant of summary judgment, establishing To-Ricos as the rightful owner of the Picú mark. View "To-Ricos, Ltd. v. Productos Avicolas del Sur, Inc." on Justia Law

A physician in Puerto Rico, Dr. Jaime Salas Rushford, had his board certification suspended by the American Board of Internal Medicine (ABIM) after ABIM concluded that he had improperly shared board exam questions with his test prep instructor. ABIM sued Salas Rushford for copyright infringement in New Jersey. Salas Rushford counterclaimed against ABIM and several ABIM-affiliated individuals, alleging that the process leading to his suspension was a "sham."The counterclaims were transferred to the District of Puerto Rico, where the district court granted ABIM's motion for judgment on the pleadings and denied Salas Rushford leave to amend his pleading. The court found that Salas Rushford failed to state a claim for breach of contract, breach of the implied covenant of good faith and fair dealing, and tort claims against the ABIM Individuals. The court also dismissed his Lanham Act claim for commercial disparagement.The United States Court of Appeals for the First Circuit reviewed the case. The court affirmed the district court's dismissal of Salas Rushford's claims. It held that ABIM had broad discretion under its policies to revoke certification if a diplomate failed to maintain satisfactory ethical and professional behavior. The court found that Salas Rushford did not plausibly allege that ABIM acted with bad motive or ill intention, which is necessary to state a claim for breach of the implied covenant of good faith and fair dealing under New Jersey law.The court also affirmed the dismissal of the Lanham Act claim, noting that Salas Rushford failed to allege actual consumer deception or intentional deception, which is required to state a claim for false advertising. Finally, the court upheld the district court's denial of leave to amend the complaint, citing undue delay and lack of a concrete argument for why justice required an amendment. View "American Board of Internal Medicine v. Salas-Rushford" on Justia Law

D'Pergo Custom Guitars, Inc. sued Sweetwater Sound, Inc. for using a photo of D'Pergo's guitar necks on Sweetwater's website. D'Pergo claimed copyright infringement under the Copyright Act, trademark infringement under the Lanham Act, and a violation of the New Hampshire Consumer Protection Act (CPA). The district court granted summary judgment to Sweetwater on the trademark claim and to D'Pergo on the copyright claim. A bench trial found in favor of Sweetwater on the CPA claim, and a jury awarded D'Pergo approximately $75,000 in compensatory damages for the copyright claim but did not award any of Sweetwater's profits.D'Pergo appealed the district court's summary judgment on the trademark claim and the bench trial ruling on the CPA claim. D'Pergo also argued that erroneous jury instructions warranted a reversal of the jury's finding that it was not entitled to recover any of Sweetwater's profits. Sweetwater cross-appealed, challenging the copyright damages based on what it claimed was inadmissible expert testimony.The United States Court of Appeals for the First Circuit affirmed the district court's ruling in favor of Sweetwater on the CPA claim, finding that Sweetwater did not act with the intent required for a CPA violation. However, the court reversed the district court's grant of summary judgment to Sweetwater on the trademark claim, concluding that D'Pergo's evidence created a genuine issue of fact regarding the trademark's secondary meaning and likelihood of confusion.The court also remanded for a new jury trial on the issue of infringing profits for the copyright claim, finding that the district court's jury instruction on the burden of proof for infringing profits overstated D'Pergo's burden. The court affirmed the district court's refusal to give D'Pergo's proposed "commingling" instruction and upheld the actual damages awarded to D'Pergo, rejecting Sweetwater's challenge to the admissibility of the expert testimony. View "D'Pergo Custom Guitars, Inc. v. Sweetwater Sound, Inc." on Justia Law

Motus and CarData both provide tools for managing businesses' reimbursement of employee expenses. Motus is a Delaware limited liability company with its principal place of business in Boston.. CarData is a Toronto-based Canadian corporation. Motus sued CarData for trademark infringement and related wrongs for its use of a particular phrase in the meta title of its website, Lanham Act, 15 U.S.C. 1051-1129. Motus argued CarData had "purposefully availed itself of the privilege of conducting activities within the U.S. and Massachusetts" by maintaining numerous offices in the U.S. and marketing itself to and interacting with U.S. and Massachusetts customers through its website.The First Circuit affirmed the dismissal of Motus's suit without prejudice, for lack of personal jurisdiction, and denial of its request for jurisdictional discovery. The purposeful availment requirement was not met because there was not “something more” connecting CarData to the forum state beyond its website which is available to anyone with internet access, in any state. Motus did not act diligently to present facts to the court to show why jurisdiction would be found if discovery were permitted. Motus left the court to guess whether CarData has any Massachusetts customers, receives any revenue from Massachusetts, or has any other business connection with Massachusetts. Jurisdiction cannot be premised on guesswork; the record does not support a finding that the operation of CarData's website and/or its commercial contacts elsewhere in the country constitute purposeful availment with respect to Massachusetts. View "Motus, LLC v. CarData Consultants, Inc." on Justia Law

The First Circuit reversed the order of the district court dismissing this appeal, holding that the district court erred both in refusing to enforce the contested agreement and in dismissing the case after effectively declaring the agreement null and void.The Commonwealth School, Inc. brought suit against Commonwealth Academy Holdings, LLC under the Lanham Act, 15 U.S.C. 1114(A) and 1125(a), alleging that the School had trademarked the name "Commonwealth School" and that the Academy's name, "Commonwealth Academy," infringed that trademark. The parties achieved a settlement agreement, and the district court conditionally dismissed the case. When the parties failed to memorialize the agreement the School moved to reopen the case. The Academy, in response, moved for enforcement of the settlement agreement. The district court refused to enforce the settlement, finding that there had not been a meeting of the minds, and then dismissed the case. The First Circuit reversed, holding (1) this Court had jurisdiction to hear and determine this appeal; (2) enforcement of the settlement agreement was within the district court's jurisdictional orbit; and (3) the settlement agreement was valid and enforceable, and therefore, the district court erred in refusing to enforce the agreement and in dismissing the case. View "Commonwealth School, Inc. v. Commonwealth Academy Holdings LLC" on Justia Law

The First Circuit affirmed the decision of the district court that the exercise of specific personal jurisdiction against a German corporation did not offend the Fifth Amendment’s Due Process Clause, holding that on the facts of this case the exercise of jurisdiction would not violate due process.Plaintiff, a Maine corporation, sued Defendant, a German corporation, in federal district court in Maine for trademark infringement. As a basis for personal jurisdiction over Defendant, Plaintiff said that Defendant’s nationwide contacts with the United States supported specific jurisdiction under Fed. R. Civ. P. 4(k)(2). On prima facie review, the district court concluded that it could constitutionally exercise specific personal jurisdiction over Defendant under Rule 4(k)(2). The First Circuit affirmed, holding that Plaintiff met all three requirements to establish personal jurisdiction. View "Plixer International, Inc. v. Scrutinizer GMBH" on Justia Law

The First Circuit affirmed the district court’s summary judgment findings, evidentiary rulings, and denials of various motions on claims brought by a member of the rock band BOSTON against a former BOSTON guitarist alleging trademark infringement and breach of contract and on the guitarist’s counterclaims alleging breach of contract and abuse of process.Donald Thomas Scholz sued Barry Goudreau alleging claims related to impermissible inferences that Goudreau had allegedly made regarding his former association with BOSTON. Goudreau counterclaimed. After the district court granted in part the parties’ respective motions for summary judgment, the remaining claims proceeded to trial. The jury found in favor of the respective defendants on the remaining claims. The parties cross-appealed. The First Circuit affirmed the district court and denied the appeals, holding that there was no error or abuse of discretion requiring reversal. View "Scholz v. Goudreau" on Justia Law

The district court erred in granting Defendant’s motion to dismiss, based on an arbitration provision, Plaintiff’s claims that Defendant violated various articles of the Puerto Rico Civil Code and federal copyright and trademark laws.This suit stemmed from a songwriting contest held in Puerto Rico in 2014. As a contestant, Plaintiff agreed to the terms of the contest’s rules, which included an arbitration provision. The provision compelled the submission to arbitration of those claims that “aris[e] in connection with, touch upon or relat[e] to” those rules. The district court granted Defendant’s motion to dismiss pursuant to Fed. R. Civ. P. 12(b)(6) based on that arbitration provision. The First Circuit reversed, holding that the arbitration provision did not reveal that the parties to it intended for Defendant, a third party, to benefit from it with the requisite clarity. View "Cortes-Ramos v. Martin-Morales" on Justia Law