Justia Trademark Opinion Summaries

The case involves a dispute over the use of the term "Medical Special Operations Conference" and its acronym "MSOC" as a trademark. The plaintiff, the City of New York and the FDNY Foundation, and the defendant, Juan Henriquez, both claimed rights to the term. Henriquez, a rescue paramedic with the FDNY, had been organizing conferences under this name since 2011. The FDNY also used the term for its own events. In 2019, Henriquez applied to the U.S. Patent and Trademark Office (P.T.O.) to register the term as a trademark under his name. The P.T.O. initially rejected his application, finding the term merely descriptive of the events Henriquez organized. However, Henriquez successfully amended his application, attesting to his continuous and exclusive use of the mark for the past five years, and the P.T.O. registered the mark under his name.The United States District Court for the Eastern District of New York granted a preliminary injunction in favor of Henriquez, prohibiting the FDNY from using the term for their events. The court found the term to be a suggestive mark, which is entitled to more protection under trademark law than a descriptive mark.On appeal, the United States Court of Appeals for the Second Circuit disagreed with the lower court's classification of the term as a suggestive mark. The appellate court found that the term was descriptive, not suggestive, and therefore merited less protection under trademark law. The court vacated the preliminary injunction and remanded the case for further proceedings. View "City of New York v. Henriquez" on Justia Law

The case in question involves a dispute over the use of the term "red gold" in the marketing of wristwatches. The plaintiff-appellant Solid 21, a luxury jewelry and watch business, owns a trademark in RED GOLD® since 2003. Defendant-appellee Breitling, a luxury watch manufacturer, uses the term “red gold” in its advertisements, product listings, and catalogues. Solid 21 argued that Breitling's use of the term amounted to trademark infringement, claiming it was likely to cause confusion, leading customers to mistakenly believe that Solid 21 was affiliated with Breitling’s products.The United States District Court for the District of Connecticut granted summary judgment for Breitling, finding that the company used the term “red gold” permissibly under the Lanham Act’s fair use defense. Solid 21 appealed this decision, insisting that material issues of fact precluded summary judgment for Breitling.The United States Court of Appeals for the Second Circuit disagreed and affirmed the district court's judgment. The court reasoned that Breitling used the term "red gold" in a descriptive sense, not as a mark, and in good faith. The court also pointed out that Solid 21 failed to provide sufficient evidence to create a genuine issue of material fact as to whether Breitling was acting in bad faith while using the term “red gold.” View "Solid 21, Inc. v. Breitling USA, Inc." on Justia Law

In the case between Vans, Inc., VF Outdoor, LLC (collectively "Vans") and MSCHF Product Studio, Inc. ("MSCHF"), the United States Court of Appeals For the Second Circuit affirmed the district court's decision to grant a temporary restraining order and preliminary injunction against MSCHF. MSCHF had created a sneaker, the Wavy Baby, which appeared to mimic Vans' Old Skool shoe. Vans sued MSCHF for trademark and trade dress infringement. MSCHF argued that its use of Vans' marks was protected by the First Amendment. However, the Court of Appeals applied the recent Supreme Court decision in Jack Daniel's Properties, Inc. v. VIP Products LLC, which held that special First Amendment protections do not apply when trademarks are used as source identifiers. The Court of Appeals concluded that Vans was likely to prevail in arguing that MSCHF's Wavy Baby shoes used Vans' marks and trade dress as source identifiers, and that there was a likelihood of confusion as to the source of the Wavy Baby shoes. The court also affirmed the district court's decisions requiring MSCHF to escrow its revenues from Wavy Baby sales and not requiring a bond determination because MSCHF never requested security. View "Vans, Inc. v. MSCHF Product Studio, Inc." on Justia Law

Defendants Bank of New York Mellon Corporation, LLP and its subsidiary, The Bank of New York Mellon (collectively, “BNYM”), retained Plaintiff as an independent contractor to work on an investment valuation project. Plaintiff developed the so-called Pauwels Model. At various times between 2014 and the end of his working relationship with BNYM in 2018, Plaintiff shared spreadsheets derived from the Pauwels Model with various employees and executives at BNYM. In 2016, BNYM retained Defendants Deloitte LLP, Deloitte Tax LLP, and Deloitte USA LLP (collectively, “Deloitte”) to take over the work that Plaintiff had been performing for BNYM. Plaintiff alleged that Deloitte used the spreadsheets to reverse engineer the Pauwels Model and was using the model to conduct the services it provided to BNYM. Plaintiff brought suit against BNYM and Deloitte, alleging, among other claims, that the Pauwels Model embodied a trade secret that they misappropriated.   The Second Circuit reversed and remanded the district court’s judgment insofar as it dismissed Plaintiff’s unjust enrichment claim. The court affirmed the remainder of the judgment. The court explained that misappropriation is not an element of a claim for unjust enrichment under New York law. Therefore, a plaintiff’s claim for unjust enrichment does not necessarily rise or fall with a claim of trade secret misappropriation. The court explained that because Plaintiff’s theory of liability is distinct from those underpinning Plaintiff’s claim for trade secret misappropriation, his claim for unjust enrichment should not have been dismissed as duplicative of his claim for trade secret misappropriation. View "Pauwels v. Deloitte LLP" on Justia Law

In a trademark dispute under the Lanham Act, 15 U.S.C. sections 1114, 1125(a), and New York’s law of trademark and unfair competition, PepsiCo, Inc., the Defendant, which marketed a canned energy drink under the mark “MTN DEW RISE ENERGY,” appealed from a preliminary injunction imposed on it by the district court at the instance of the Plaintiff, RiseandShine Corporation, d/b/a Rise Brewing (“Rise Brewing”), which sells nitro-brewed canned coffee (and also canned tea) under the name RISE. It is undisputed that Plaintiff began using the RISE mark prior to Defendant’s use of its mark. The district court concluded that  Defendant’s conduct in using RISE caused a likelihood of confusion and that  Plaintiff was likely to succeed on the merits.   The Second Circuit vacated the preliminary injunction, finding that the grant of a preliminary injunction was premised on two significant errors. The court wrote that the district court granted Plaintiff a preliminary injunction based in part on the conclusion that Plaintiff was likely to succeed on the merits. This rested in substantial part on the court’s conclusion that Plaintiff’s mark was strong—both in inherent and acquired strength—as well as its determination that the two products were “confusingly similar.” To the extent that Defendant’s use of its marks caused any likelihood of confusion, this was because Plaintiff chose a weak mark in a crowded field. For this reason, the balance of hardships did not favor Plaintiff. Plaintiff did not demonstrate a likelihood of success on the merits. View "RiseandShine Corporation v. PepsiCo, Inc." on Justia Law

Hamilton filed suit against Vortic and its founder for selling wristwatches that featured restored antique pocket watch parts with Hamilton's trademark. The district court entered judgment in favor of defendants, finding that Vortic's use of the mark was not likely to cause consumer confusion.The Second Circuit confirmed that a plaintiff in a trademark infringement suit bears the burden of proving that a defendant's use of its mark is likely to mislead consumers, even when Champion Spark Plug Co. v. Sanders, 331 U.S. 125 (1947), is implicated, and that no particular order of analysis is required, provided that the district court considers all appropriate factors in light of the circumstances presented. The court affirmed the district court's judgment in this case, concluding that the district court properly placed the burden of proving trademark infringement on Hamilton, and correctly analyzed the relevant considerations under Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir. 1961), and Champion. Furthermore, the district court correctly applied Champion and Polaroid to these factual findings to conclude that there was no likelihood of consumer confusion. Finally, the district court properly concluded that defendants were entitled to judgment on the remaining claims. View "Hamilton International Ltd. v. Vortic LLC" on Justia Law

The Second Circuit reversed the district court's grant of final judgment for Mixpac on its claims of unfair competition, infringement of common law trademarks, and its claims under the Trademark Act of 1946 (Lanham Act) for trademark counterfeiting, infringement of registered marks, and false designation of origin. Mixpac and defendants are competitors in the U.S. market for mixing tips used by dentists to create impressions of teeth for dental procedures, such as crowns.The court disagreed with the district court's holding that Mixpac's trade dress—its use of yellow, teal, blue, pink, purple, brown, and white on mixing tips—is not functional. Instead, the court held that the use of these colors on mixing tips is functional, as the colors signify diameter and enable users to match a cartridge to the appropriate mixing tip. Accordingly, the court remanded for entry of final judgment in favor of defendants on the unfair competition, trademark infringement, trademark counterfeiting, and false designation of origin claims. The court declined to address defendants' counter claims and to address in the first instance Mixpac's civil contempt claim. View "Sulzer Mixpac AG v. A&N Trading Co., Ltd." on Justia Law

Canal appealed from the district court's judgment awarding $1.1 million in statutory damages to Omega for Canal's contributory infringement of Omega's trademarks. The infringement arose from sales of counterfeit Omega watches at Canal's property in Manhattan.The Second Circuit dismissed Canal's appeal of the denial of summary judgment, holding that the interlocutory appeal is not appealable. The court explained that once the case proceeds to a full trial on the merits, the trial record supersedes the record existing at the time of the summary judgment motion, and there is no basis for this court to review issues raised in a denied motion overtaken by trial.The court nonetheless affirmed the judgment on the merits via appeal of the jury instructions, holding that Canal's position is inconsistent with Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (2d Cir. 2010), which held that a defendant may be liable for contributory trademark infringement if it was willfully blind as to the identity of potential infringers—that is, under circumstances in which the defendant did not know the identity of specific infringers. The court reasoned that this holding precludes Canal's argument that Omega needed to identify a specific infringer to whom Canal continued to lease property. At trial, Omega pursued a theory of willful blindness, and the district court's jury instructions accurately captured Tiffany's requirements. Finally, the court found no reversible error in regard to the district court's evidentiary and damages ruling. View "Omega SA v. 375 Canal, LLC" on Justia Law

CFC appealed the district court's dismissal based on summary judgment of its complaint alleging trademark infringement, trademark dilution, and unfair competition by Energizer. CFC contends that its trademark for automobile air fresheners, consisting of the words "Black Ice," is infringed and diluted by Energizer's sale of products labeled with the words "Midnight Black Ice Storm" and that its trademark, consisting of the words "Bayside Breeze," is infringed and diluted by Energizer's sale of products labeled with the words "Boardwalk Breeze."The Second Circuit concluded that the record developed by CFC sufficed to withstand Energizer's motion for summary judgment with respect to CFC's mark "Black Ice" but not its mark "Bayside Breeze." Accordingly, the court reversed the grant of summary judgment for Energizer on CFC's federal trademark infringement claim with respect to its "Black Ice" mark; affirmed the grant of summary judgment for Energizer on CFC's federal trademark infringement claim with respect to the "Bayside Breeze" mark; affirmed the grant of summary judgment for Energizer on CFC's federal trademark dilution claim with respect to both marks; reversed the grant of summary judgment for Energizer on CFC's state law claims with respect to the "Black Ice" mark; and affirmed the grant of summary judgment for Energizer on CFC's state law claims with respect to the "Bayside Breeze" mark. The court remanded for further proceedings. View "Car-Freshner Corp. v. American Covers, LLC" on Justia Law

The Second Circuit affirmed the district court's dismissal of plaintiff's third amended complaint for failure to state a claim under Federal Rule of Civil Procedure 12(b)(6), alleging that defendants violated the Copyright Act by copying creative aspects from his unreleased science fiction videogame, including his use of a tardigrade -- a microscopic animal -- traveling in space, in their television series Star Trek: Discovery.Even assuming that actual copying occurred, the court agreed with the district court that plaintiff failed to plausibly allege substantial similarity between protectible elements of his videogame and elements from Discovery. The court explained that, overall, the presence of Ripper the tardigrade in Discovery is minimal, as it only appears in three episodes. Therefore, after extracting the unprotectible elements from plaintiff's videogame -- the scientific facts, general ideas, science fiction themes constituting scènes à faire, and generalized character traits -- the court held that the videogame and Discovery are not substantially similar because the protectible elements are markedly different. View "Anas Osama Ibrahim Abdin v. CBS Broadcasting Inc." on Justia Law