Justia Trademark Opinion Summaries

Fleet Feet filed suit against NIKE, alleging that NIKE's advertising campaign with the tagline "Sport Changes Everything" infringed on Fleet Feet's trademarks "Change Everything" and "Running Changes Everything." Fleet Feet also sought a preliminary injunction, which the district court granted, enjoining NIKE's use of the tagline and any designation "confusingly similar" to Fleet Feet's marks.While NIKE's appeal was pending, NIKE ended its advertising campaign and disavowed any intent to continue using the tagline. Therefore, the Fourth Circuit dismissed the appeal as moot because NIKE no longer has a legally cognizable interest in the validity of the preliminary injunction. The court explained that, at best, NIKE's argument that the "confusingly similar" language in the preliminary injunction order presents only a potential controversy, which cannot sustain this appeal. In regard to NIKE's contention that the injunction bond is a live issue, the court agreed that the bond keeps the case as a whole from being moot but it does not do the same for the appeal. In this case, if the district court ultimately finds that NIKE's "Sport Changes Everything" campaign infringed on Fleet Feet's marks, the preliminary injunction will have been, at worst, harmless error. If it does not, NIKE may recover on the bond. Either way, the court explained that the district court must be the first to resolve NIKE's challenge on the merits. The court found no good reason to vacate the district court's order and opinion granting a preliminary opinion, remanding for further proceedings as necessary. View "Fleet Feet, Inc. v. Nike, Inc." on Justia Law

This appeal arose out of trademark litigation initiated by RXD against Apple over rights to use the "ipad" mark. After the district court awarded summary judgment in favor of Apple on all claims advanced by RXD and on all counterclaims asserted by Apple, the district court permanently enjoined RXD from any commercial use of the terms "ipad" or "ipod." RXD challenges the district court's infringement rulings.The Fourth Circuit affirmed the district court's judgment, holding that the district court properly granted summary judgment in favor of Apple on both its claims and counterclaims, and that the district court did not abuse its discretion in its award of injunctive relief to Apple. The court concluded that Apple had an established, protected mark capable of being infringed by RXD's use of the mark in 2016. The court explained that RXD's use of "ipad" on its ipadtoday.com website was not subject to "first user" protection. The court also concluded that a jury could not have reasonably concluded that RXD’s use of the "ipad" mark was unlikely to cause consumer confusion. Therefore, the district court did not err in awarding summary judgment to Apple on its claim of trademark infringement. Given the clear evidence of RXD's infringement of Apple's use of the "ipad" mark, the court held that the district court did not abuse its discretion in issuing the injunctive relief in favor of Apple.The court rejected RXD's contention that the district court erred in holding that Apple met its burden of establishing a bona fide intent to use the "ipad" mark for cloud storage services. Rather, contrary to RXD's assertion, Apple did not apply to use the "ipad" mark for cloud storage. The court explained that Apple was not required to prove a bona fide intent to use a trademark for services not identified in its application. Accordingly, the district court did not err in concluding that Apple had a bona fide intent to use the mark for the services listed in its application. View "RXD Media, LLC v. IP Application Development LLC" on Justia Law

Plaintiff appealed the district court's grant of summary judgment in favor of defendant on the grounds that plaintiff's trade dress registrations, which cover the shape and color scheme of its chicken feeder products, are functional and thus only eligible for patent law's protection of utilitarian inventions.The Fourth Circuit affirmed the district court's grant of summary judgment to defendant on plaintiff's claims of trade dress infringement under the Lanham Act and North Carolina common law. The court held that the total feeder profile is functional and ineligible for trade dress protection. The court explained that, because the color trade dress was placed on the supplemental trademark register, rather than the principal register, it is presumed functional, and plaintiff bears the burden of proving non-functionality. In this case, the court held that plaintiff cannot do so because its own utility patents and witness testimony establish that the red pan and gray spokes serve the functional purpose of attracting chickens to feed. Finally, the court held that the district court's order recommending a trial sanction for spoliation of evidence was moot. View "CTB, Inc. v. Hog Slat, Inc." on Justia Law

Life filed a complaint against another corporation of the same name, alleging trademark infringement and unfair competition under the Lanham Act. Life obtained an injunction against the defendant corporation and its officers, including the corporation's president, who was not named a defendant. After entry of a default judgment against the corporation and damages-related discovery, the district court awarded damages and attorneys' fees against both the defendant corporation and its president personally.The Fourth Circuit held that the district court erred in entering judgment against the president personally when he was not named as a party or otherwise brought into the case by service of process. The court also held that the district court did not abuse its discretion in finding the president in contempt of court. Accordingly, the court affirmed in part, vacated in part, and remanded for the district court to determine whether any of the damages and fees award entered against the president is attributable to his contempt of court. View "Life Technologies Corp. v. Govindaraj" on Justia Law

The Fourth Circuit affirmed the district court's summary judgment ruling regarding the protectability of the proposed trademark BOOKING.COM. The court held that the district court, in weighing the evidence before it, did not err in finding that the USPTO failed to satisfy its burden of proving that the relevant public understood BOOKING.COM, taken as a whole, to refer to general online hotel reservation services rather than Booking.com the company. Therefore, the district court did not err in finding that BOOKING.COM is a descriptive, rather than generic, mark. Furthermore, because USPTO did not challenge the district court's finding that BOOKING.COM has acquired secondary meaning where the mark is deemed descriptive, the court affirmed the district court's partial grant of summary judgment finding that BOOKING.COM is protectable as a trademark. Finally, the district court's grant of attorney fees was affirmed under Shammas v. Focarino, 784 F.3d 219, 225 (4th Cir. 2015), where an applicant that decides to challenge the USPTO's ruling in district court must pay all the expenses of the proceeding whether the final decision was in its favor or not. View "Booking.com B.V. v. US Patent & Trademark Office" on Justia Law

This trademark infringement action concerned whether Walmart's use of the mark "Backyard Grill" on its grills, and grilling supplies infringed on Variety's use of its registered mark, "The Backyard," and unregistered marks, "Backyard" and "Backyard BBQ." Variety appealed the district court's calculation of disgorged profits and denial of its request for a jury trial, and Walmart cross-appealed the district court's grant of summary judgment for Variety and award of profit disgorgement, costs, and attorneys' fees. The court held that the district court improperly granted summary judgment in Variety's favor because there were genuine disputes of material fact as to whether a likelihood of confusion exists. The court vacated the district court's order granting Variety's motion for partial summary judgment and affirmed the order denying Walmart's motion for summary judgment; vacated every order entered subsequent to the summary judgment rulings; vacated the award of profit disgorgement, costs, and attorneys' fees; and dismissed the parties' respective cross-appeals pertaining to disgorgement, denial of jury trial, and award of costs and fees. View "Variety Stores, Inc. v. Wal-Mart Stores, Inc." on Justia Law

The district court held Early Education in contempt and awarded Rainbow School $60,000, plus attorney's fees and costs, after Early Education violated the terms of a consent judgment and permanent injunction. The Fourth Circuit affirmed and held that the district court did not clearly err in finding multiple violations of the injunction; Early Education's violations harmed the Rainbow School; and the district court did not abuse its discretion by awarding damages and attorney's fees and costs. The court dismissed Early Education's appeal from the order requiring it to undergo an audit based on lack of appellate jurisdiction. The court held that the question of whether Early Education should initially pay for an audit was neither inextricably linked nor a necessary precursor to the issues presented in the appeal from the district court's prior order, which made a determination of contempt and had nothing to do with paying for an audit. View "Rainbow School, Inc. v. Rainbow Early Education Holding LLC" on Justia Law