Justia Trademark Opinion SummariesArticles Posted in US Court of Appeals for the Second Circuit
Pauwels v. Deloitte LLP
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
RiseandShine Corporation v. PepsiCo, Inc.
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 International Ltd. v. Vortic LLC
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
Sulzer Mixpac AG v. A&N Trading Co., Ltd.
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
Omega SA v. 375 Canal, LLC
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
Car-Freshner Corp. v. American Covers, LLC
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
Anas Osama Ibrahim Abdin v. CBS Broadcasting Inc.
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
Tiffany & Co. v. Costco Wholesale Corp.
Tiffany filed suit against Costco under the Lanham Act and New York law, alleging that Costco was liable for, inter alia, trademark infringement and counterfeiting in connection with its sale of diamond engagement rings identified by point-of-sale signs containing the word "Tiffany." The district court granted summary judgment for Tiffany and awarded Tiffany Costco's trebled profits along with punitive damages and prejudgment interest, for a total of $21,010,438.35.The Second Circuit vacated, holding that the district court's determination was inappropriate at the summary judgment stage. The court held that Costco has raised a question of material fact as to its liability for trademark infringement and counterfeiting and, relatedly, its entitlement to present its fair use defense to a jury. In this case, Costco argued that it was using the word in a different, widely recognized sense to refer to a particular style of pronged diamond setting not exclusive to rings affiliated with Tiffany. Costco claimed that its use of the term was not likely to confuse consumers—the essence of a claim for infringement—and that even if some degree of confusion was likely, it was entitled under the Lanham Act to the descriptive fair use of an otherwise protected mark. Accordingly, the court remanded for trial. View "Tiffany & Co. v. Costco Wholesale Corp." on Justia Law
SM Kids, LLC v. Google LLC
SM Kids filed suit against Google and related entities, seeking to enforce a 2008 agreement settling a trademark dispute over the Googles trademark. The agreement prohibited Google from intentionally making material modifications to its then-current offering of products and services in a manner that is likely to create confusion in connection with Googles. The district court concluded that the trademark assignment was invalid, and dismissed for lack of subject-matter jurisdiction.The Second Circuit vacated the district court's judgment and held that the validity of the trademark was not a jurisdictional matter related to Article III standing but was instead a merits question properly addressed on a motion under Federal Rule of Civil Procedure 12(b)(6), a motion for summary judgment, or at trial. In this case, the district court erroneously resolved Google's motion as a fact-based motion under Rule 12(b)(1) and considered evidence beyond the complaint, as well as placed on SM Kids the burden of proving subject-matter jurisdiction. Accordingly, the court remanded for further proceedings. View "SM Kids, LLC v. Google LLC" on Justia Law
Saleh v. Sulka Trading Ltd.
The Second Circuit affirmed the district court's dismissal of plaintiff's action seeking a declaratory judgment adjudicating the validity of defendants' trademark registrations relating to the "SULKA" mark.The court held that, before a court may entertain an action for declaratory relief in the context of trademarks, the plaintiff must allege that he has taken some action showing that he has both the "definite intent and apparent ability to commence use of the marks on the product." In this case, the court held that defendant's allegations are too vague to support the exercise of federal jurisdiction. The court explained that the only allegation that does relate to the U.S. market is plaintiff's application to register the mark in the United States. However, while his allegation is certainly relevant to the matter of intent, it has little bearing on plaintiff's ability to transition his business to the United States and there were significant reasons for the district court to be skeptical that he was, in fact, prepared to enter the U.S. market. View "Saleh v. Sulka Trading Ltd." on Justia Law