Justia Trademark Opinion Summaries

Simply Wireless, Inc., a Virginia telecommunications company, sued T-Mobile US, Inc. and T-Mobile USA, Inc. for trademark infringement, alleging that T-Mobile had infringed on its common law trademark "SIMPLY PREPAID." Simply Wireless had used the trademark from 2002 to 2008 and resumed its use in 2012. T-Mobile began using the same trademark in 2014 and applied to register it with the United States Patent and Trademark Office. Simply Wireless filed a competing application and subsequently launched a revamped website under the trademark.The United States District Court for the Eastern District of Virginia granted summary judgment to T-Mobile, ruling that Simply Wireless had abandoned the trademark due to nonuse from 2009 to 2011. The court found that Simply Wireless had not provided sufficient evidence to rebut the presumption of abandonment, which is triggered by three consecutive years of nonuse under 15 U.S.C. § 1127. Simply Wireless appealed, arguing that genuine disputes of material fact existed regarding its intent to resume use of the trademark during the period of nonuse.The United States Court of Appeals for the Fourth Circuit reviewed the case de novo and vacated the district court's summary judgment order. The appellate court found that Simply Wireless had presented sufficient evidence, including a detailed declaration from its CEO and corroborating documents, to create a genuine dispute of material fact regarding its intent to resume use of the trademark during the period of nonuse. The court emphasized that the intent-to-resume-use inquiry is an intensely factual question and rarely amenable to summary judgment. The Fourth Circuit also rejected T-Mobile's alternative argument that the statutory abandonment test does not apply to common law trademarks, affirming that the test is applicable.The Fourth Circuit vacated the district court's summary judgment order and remanded the case for further proceedings. View "Simply Wireless, Inc v. T-Mobile US, Inc" on Justia Law

The case involves Bacardi & Company Limited and Bacardi USA, Inc. (collectively, Bacardi) and the United States Patent and Trademark Office (PTO). Bacardi claimed that the PTO violated Section 9 of the Lanham Act and its own regulations by renewing a trademark registration ten years after it expired. The trademark in question is the "HAVANA CLUB," originally registered by a Cuban corporation, José Arechabala, S.A. In 1960, the Cuban government seized the corporation's assets, and by 1974, the U.S. trademark registrations for HAVANA CLUB rum had expired. Later, a company owned by the Cuban government registered the HAVANA CLUB trademark in the U.S. for itself. Bacardi, which had bought the interest in the mark from Arechabala, filed its own application to register the HAVANA CLUB mark and petitioned the PTO to cancel the Cuban government-owned company's registration.The PTO denied Bacardi's application due to the Cuban government-owned company's preexisting registration, and the Trademark Trial and Appeal Board (TTAB) denied Bacardi's cancellation petition. Bacardi then filed a civil action challenging the TTAB's denial of cancellation. Meanwhile, the Cuban government-owned company's registration was set to expire in 2006, unless it renewed its trademark. However, due to a trade embargo, the company was not permitted to pay the required renewal fee without first obtaining an exception from the Department of the Treasury’s Office of Foreign Assets Control (OFAC). OFAC denied the company's request for an exception, and the PTO notified the company that its registration would expire due to the failure to submit the renewal fee on time.The United States Court of Appeals for the Fourth Circuit reversed the district court's judgment that dismissed Bacardi's lawsuit for lack of subject matter jurisdiction. The court concluded that the Lanham Act does not foreclose an Administrative Procedure Act (APA) action for judicial review of the PTO’s compliance with statutes and regulations governing trademark registration renewal. The court found that the Lanham Act does not expressly preclude judicial review of PTO registration renewal decisions or fairly implies congressional intent to do so. Therefore, the APA’s mechanism for judicial review remains available. The case was remanded for further proceedings. View "Bacardi and Company Limited v. United States Patent & Trademark Office" on Justia Law

The case involves TBL Licensing, LLC, commonly known as Timberland, and its attempt to register certain features of its popular boot design as trade dress under the Lanham Act. The United States Patent and Trademark Office (USPTO) refused to register the design, concluding it was not distinctive. Timberland appealed to the federal district court, which agreed with the USPTO and added that the design was impermissibly functional. The district court granted the USPTO's motion for summary judgment.On appeal, the United States Court of Appeals for the Fourth Circuit affirmed the district court's decision. The court held that the district court did not err in concluding that the subset of design features that Timberland sought to register lacked distinctiveness in the public's view. The court did not decide on the issue of functionality. The court emphasized that the question was not whether the public recognizes the entire product as Timberland's boot, but whether the specific design features that Timberland sought to register have acquired a distinctive meaning in the public's view. View "TBL Licensing, LLC v. Vidal" on Justia Law

The United States Court of Appeals for the Fourth Circuit affirmed a lower court's decision to grant a motion to quash a subpoena issued by Xactware Solutions, Inc. against Buildxact Software Limited in a trademark dispute. The case revolves around Xactware's desire to orally depose a Buildxact employee as part of opposition proceedings in the U.S. Patent and Trademark Office (PTO). All of Buildxact's employees are located in Australia.The court agreed with the district court's determination that it lacked authority to subpoena evidence that, under PTO rules, is inadmissible in internal PTO proceedings. The court reasoned that 35 U.S.C. § 24, which allows district courts to subpoena testimony for use in any contested case in the Patent and Trademark Office, only empowers district courts to issue subpoenas for depositions that comply with PTO rules.The court rejected Xactware's argument that the PTO's rules contradict the Federal Rules of Civil Procedure and thus exceed the PTO's statutory authority. The court found that the PTO rules and the Federal Rules serve different purposes and contexts, and that the PTO's rule-making authority under Section 23 of the Patent Act allows it to establish its rules for taking affidavits and depositions.The court concluded that a contrary ruling would significantly displace the PTO's authority to police its internal proceedings, and affirmed the lower court's decision to quash the subpoena. View "Xactware Solutions, Inc. v. Buildxact Software Limited" on Justia Law

Two companies that operate in the real estate development industry have spent years embroiled in a dispute over their shared name: “Dewberry.” Dewberry Engineers sued Dewberry Group to quell the latter’s use of several new insignias it developed as part of its rebrand. Dewberry Engineers owns federal trademark rights to the “Dewberry” mark and claims Dewberry Group’s rebranding efforts infringe that mark and breach an agreement struck between the sparring corporations over a decade ago. The district court sided with Dewberry Engineers in the proceedings below, assessing a nearly $43 million profit disgorgement award against Dewberry Group for its infringement, enjoining it from further breaches of its agreement with Dewberry Engineers, and ordering it to pay attorneys’ fees for forcing Dewberry Engineers to litigate an exceptional case of trademark infringement.   The Fourth Circuit affirmed. The court explained that the parties share an identical, arbitrary dominant word and disclaim different suffixes (and prefixes in some cases) in the marks at issue. The record shows they also employ those marks in related, overlapping, and complementary services. Those details go some distance toward creating a likelihood of confusion as to the origin of either party’s “Dewberry” mark. Moreover, the court explained that despite Dewberry Group’s failure to calculate exact figures or provide evidence of deductions from infringement revenues for losses and expenses, the court equitably reduced the requested award by twenty percent to $42,975,725.60.  The court finds no error of fact or law suggesting the district court’s conclusions were an abuse of its discretion. View "Dewberry Engineers Inc. v. Dewberry Group, Inc." on Justia Law

Appellants are a Swiss consortium, Interprofession du Gruyère (“IDG”), and a French consortium, Syndicat Interprofessionel du Gruyère (“SIG”) (together, “the Consortiums”), who believe that gruyere should only be used to label cheese that is produced in the Gruyère region of Switzerland and France. Seeking to enforce this limitation in the United States, the Consortiums filed an application with the United States Patent and Trademark Office (“USPTO”) to register the word “GRUYERE” as a certification mark. Appellees, the U.S. Dairy Export Council, Atalanta Corporation, and Intercibus, Inc. (together, “the Opposers”), opposed this certification mark because they believe the term is generic and, therefore, ineligible for such protection. The USPTO’s Trademark Trial and Appeal Board (“TTAB”) agreed with the Opposers and held that “GRUYERE” could not be registered as a certification mark because it is generic. The Consortiums filed a complaint challenging the TTAB’s decision in the United States district court. The district court granted summary judgment for the Opposers on the same grounds as articulated in the TTAB’s decision.   The Fourth Circuit affirmed and concluded that that the term “GRUYERE” is generic as a matter of law. The court explained that the Consortiums have not brought evidence bearing on whether, at an earlier point in history, the term “GRUYERE” was in common use in the United States. But even assuming that was the case, this argument still fails. In sum, the Consortiums cannot overcome what the record makes clear: cheese consumers in the United States understand “GRUYERE” to refer to a type of cheese, which renders the term generic. View "Interprofession du Gruyere v. U.S. Dairy Export Council" on Justia Law

Dmarcian, Inc. (dInc) and dmarcian Europe BV (dBV)—and a broken business relationship. The original dmarcian, dInc, is a Delaware corporation with headquarters in North Carolina. Its corporate homonym, dBV, is a Dutch entity based in the Netherlands. The two companies negotiated an agreement authorizing dBV to sell dInc’s software in Europe and Africa. The license was done on a handshake, and the parties now dispute its terms. Among other allegations, dInc accuses dBV of directly competing for customers, which prompted dInc to bring claims of copyright and trademark infringement, misappropriation of trade secrets, and tortious interference. The district court exercised personal jurisdiction over dBV and declined to dismiss for forum non conveniens. The district court also issued a preliminary injunction limiting dBV’s use of dInc’s intellectual property. The district court later held dBV in contempt for violating the injunction, and dBV appealed.   The Fourth Circuit affirmed except as to one aspect of the contempt order, which the court vacated and remanded for further proceedings as to the proper amount of sanctions. The court explained that the district court did not err in exercising personal jurisdiction, in declining to dismiss for forum non conveniens, and in issuing a preliminary injunction. Further, the court held that the district court was also justified in issuing a contempt sanction; but the court  requires a more thorough examination of the sanction amount. While the preliminary injunction may not be the final word on the merits, its entry was also not an abuse of discretion considering the weighty interests and detailed findings discussed at length above. View "Dmarcian, Inc. v. Dmarcian Europe BV" on Justia Law

Appellant Shenzhen Stone Network Information Ltd. (“SSN”) appealed the district court’s order granting summary judgment on Appellee Prudential Insurance Company of America’s (“Prudential”) cybersquatting claim. Prudential owns several registered trademarks on the term PRU and other PRU-formative marks. Prudential initiated the underlying action after discovering that SSN had registered the domain name PRU.COM. Prudential alleged that SSN violated the Anti-Cybersquatting Consumer Protection Act (“ACPA”), by registering a domain name identical to Prudential’s distinctive mark with the bad faith intent to profit. The district court determined that SSN could be held liable for cybersquatting because the ACPA is not limited to the initial registration of a domain name but encompasses subsequent re-registrations as well. The district court concluded that SSN possessed the bad faith intent to profit from the disputed domain name and granted Prudential’s motion for summary judgment. On appeal, SSN contests the district court’s ruling that SSN acted in bad faith when registering the disputed domain name.   The Fourth Circuit affirmed, concluding that the totality of the circumstances supports the conclusion that SSN acted in bad faith and that SSN is not entitled to the benefit of the ACPA’s safe harbor provision. The court reasoned that SSN failed to satisfy the statute’s safe harbor provision. First, SSN’s self-serving denials of subjective belief that its use of the PRU.COM domain name was lawful are insufficient to defeat summary judgment absent objective corroboration. Further, SSN did not have reasonable grounds to believe that its registration of the PRU.COM domain name was otherwise lawful. View "The Prudential Insurance Company of America v. Shenzhen Stone Network Information Ltd." on Justia Law

In 1994, a California corporation purchased and registered the domain name and trademarks for “France.com.” Twenty years later, the corporation initiated a lawsuit in France, challenging a Dutch company’s use of the France.com trademark. The French Republic and its tourism office intervened, seeking to protect their country’s Internet identity and establish its right to the domain name. French trial and appellate courts declared the French Republic the rightful owner of the domain name. In the U.S., the corporation sued the French entities, which asserted sovereign immunity under the Foreign Sovereign Immunities Act (FSIA), 28 U.S.C. 1604. The district court denied a motion to dismiss, concluding that immunity “would be best raised after discovery.”The Fourth Circuit reversed, directing the district court to dismiss the complaint with prejudice. The court concluded that it had jurisdiction over the appeal because the district court rested its order not on a failure to state a claim but on a denial of sovereign immunity, which constitutes an appealable collateral order. Neither FSIA’s “commercial activity” exception nor its “expropriation” exception applies. It is not clear that the French State’s actions in obtaining the website in judicial proceedings constitute “seizure” or an “expropriation” and they clearly do not constitute “commercial activity.” The corporation itself invoked the power of the French courts; only because it did so could the French State intervene in that action to obtain the challenged result. View "France.com, Inc. v. The French Republic" on Justia Law

The waiver language in 15 U.S.C. 1071 relates only to the choice of review options for the decision appealed from. The Fourth Circuit held that a party seeking review of a subsequent Trademark Board decision may seek review in either the Federal Circuit or the district court, even if the Trademark Board's initial decision was reviewed by the Federal Circuit.In this case, the parties' dispute concerns the registration of the mark "PRETZEL CRISPS." Plaintiff sought to register the mark in 2004, but the trademark examiner denied registration. Plaintiffs reapplied for registration in 2009, but Frito-Lay opposed the registration and argued that "PRETZEL CRISPS" was generic for pretzel crackers and not registrable. The Trademark Board sided with Frito-Lay in 2014. Plaintiffs opted for the section 1071(a) route and appealed the Trademark Board's 2014 decision to the Federal Circuit. The Federal Circuit agreed with plaintiffs in 2015, remanding to the Trademark Board. On remand in 2017, the Trademark Board again concluded that "PRETZEL CRISPS" was generic, and alternatively concluded that "PRETZEL CRISPS" lacked distinctiveness. Plaintiffs sought review of the Trademark Board's 2017 decision, but the district court dismissed the case without prejudice for lack of subject matter jurisdiction. The Fourth Circuit reversed the district court's judgment dismissing the case for lack of subject matter jurisdiction and remanded for further proceedings. The court explained that the statutory text of the Lanham Act, while ambiguous, favors plaintiffs' argument in favor of jurisdiction. Furthermore, this conclusion is bolstered by legislative history, the court's sister circuits' holdings in similar cases, and policy considerations. The court remanded for further proceedings. View "Snyder's-Lance, Inc. v. Frito-Lay North America, Inc." on Justia Law