Justia Trademark Opinion SummariesArticles Posted in US Court of Appeals for the Sixth Circuit
Max Rack, Inc. v. Core Health & Fitness, LLC
Skilken, the owner of Max Rack, Inc., invented a piece of gym equipment that he named the “Max Rack.” For years, his company sold Max Racks through a licensing agreement with Core. When Max Rack’s last patent expired, Core decided to sell an identical machine under a new name, “Freedom Rack.” Max Rack alleged that Core continued to sell “Max Racks” without authorization, and attempted to sell Freedom Racks by free-riding off the “Max Rack” name, Lanham Act, 15 U.S.C. 1114(1), 1117(a), 1125(a)(1)(A). A jury awarded Max Rack $1 million in damages and $250,000 in Core’s profits. The district court doubled the profits award to $500,000, and granted Max Rack attorney’s fees but overturned Max Rack’s damages award.The Sixth Circuit affirmed the $250,000 profits award as supported by sufficient evidence and the court’s rejection of the $1 million damages award, reversing the court’s decision to double the profits award and its decision to grant Max Rack attorney’s fees. This case does not qualify as “exceptional” and Core did not litigate in an “unreasonable manner.” Core’s unauthorized sales ended before trial. View "Max Rack, Inc. v. Core Health & Fitness, LLC" on Justia Law
Sunless, Inc. v. Palm Beach Tan, Inc.
Sunless sells tanning booths and spray tan solution under the “Mystic Tan” mark. Sunless claims that applying Mystic Tan solution in a Mystic Tan booth results in a “Mystic Tan Experience.” Palm Beach owns and franchises tanning salons. It owns several Mystic Tan-branded booths, and previously bought Mystic Tan-branded tanning solution to use in them; the booths were designed to accept only Mystic Tan solution. Palm Beach jury-rigged the booths so that they will operate with its own distinctly branded spray tan solution, unapproved by Sunless.Sunless sought a preliminary injunction under the Lanham Act, 15 U.S.C. 1114, 1125, arguing that the jury-rigging is likely to confuse consumers into believing they are getting a genuine “Mystic Tan Experience” when they are not. The district court denied the motion, finding that Sunless had failed to show, at this stage of the litigation, that Palm Beach’s salon customers would be confused. The Sixth Circuit affirmed. Palm Beach never conceded that it sells a “Mystic Tan Experience” as an indivisible whole. Palm Beach argued there are two products: booths and solutions, each displaying its own distinct mark. Palm Beach continues to use the Mystic Tan-branded booths (which it owns outright), but neither uses nor claims to use Mystic Tan solutions. View "Sunless, Inc. v. Palm Beach Tan, Inc." on Justia Law
McKeon Products, Inc. v. Howard S. Leight & Associates, Inc.
McKeon has sold “MACK’S” earplugs to retail consumers since the 1960s. In the 1980s, Honeywell's predecessor began marketing and selling MAX-brand earplugs to distributors. The brand names are phonetically identical. In 1995, McKeon sued. The parties entered a settlement agreement that the district court approved by consent decree. To prevent customer confusion, Honeywell agreed not to sell its MAX-brand earplugs into the “Retail Market” but could continue to sell its earplugs in “the Industrial Safety Market and elsewhere." The agreement and the consent decree never contemplated the internet. In 2017, McKeon complained about sales of MAX-brand earplugs on Amazon and other retail websites.The district court ruled in favor of McKeon. The Sixth Circuit affirmed and remanded. Laches is available to Honeywell as an affirmative defense but does not apply to these facts. Parties subject to consent decrees cannot scale their prohibited conduct over time, using minor undetected violations to justify later larger infringements. Honeywell did not establish that McKeon should have discovered the breaching conduct before Honeywell drastically increased online sales. McKeon’s interpretation of the consent decree is the better reading. Concluding that Amazon is a “retail establishment” makes sense given the parties’ intent. View "McKeon Products, Inc. v. Howard S. Leight & Associates, Inc." on Justia Law
AWGI, LLC v. Atlas Trucking Co., LLC
Atlas Movers federally registered the “Atlas” mark for “transportation of household goods of others,” first using “Atlas” in 1948 when it formed Atlas Van Lines, providing transportation and logistics services, primarily moving household goods. Since 1970, its division, STG, has provided logistics services for non-household goods shipments. Atlas Movers eventually focused more on logistics, forming Atlas Relocation Services in 1995. In 2007, Atlas Movers began marketing its service as “Atlas Logistics.” and renamed its logistics company Atlas Logistics, which can ship, or arrange the shipment of, any commodity.Eaton manufactures and distributes steel. Eaton created Atlas Trucking in 1999, then expanded to ship goods other than steel and metal for companies in addition to its own. It developed Atlas Logistics in 2003 as an adjunct to Atlas Trucking. Eaton knew of Atlas Van Lines. Atlas Movers sued in 2017 for infringement. Eaton answered and counterclaimed that it owned the Atlas Logistics mark.The Sixth Circuit affirmed a judgment in favor of Atlas Movers, upholding findings that Atlas Movers marketed “Atlas” to an extent that the public recognized it, that the parties’ services are related because they engage in at least some of the same transportation services, that the marks were functionally identical, and that there was actual confusion. View "AWGI, LLC v. Atlas Trucking Co., LLC" on Justia Law
The Ohio State University v. Redbubble, Inc.
Redbubble operates a global online marketplace. Around 600,000 independent artists, not employed by Redbubble, upload images onto Redbubble’s interface. Consumers scroll through those images and order customized items. Once a consumer places an order, Redbubble notifies the artist and arranges the manufacturing and shipping of the product with independent third parties. Redbubble never takes title to any product shown on its website and does not design, manufacture, or handle these products. The shipped packages bear Redbubble's logo. Redbubble handles customer service, including returns. Redbubble markets goods listed on its website as Redbubble products; for instance, it provides instructions on how to care for “Redbubble garments.” Customers often receive goods from Redbubble’s marketplace in Redbubble packaging.Some of Redbubble’s artists uploaded trademark-infringing images that appeared on Redbubble’s website; consumers paid Redbubble to receive products bearing images trademarked by OSU. Redbubble’s user agreement states that trademark holders, and not Redbubble, bear the burden of monitoring and redressing trademark violations. Redbubble did not remove the offending products from its website. OSU sued, alleging trademark infringement, counterfeiting, and unfair competition under the Lanham Act, and Ohio’s right-of-publicity law. The district court granted Redbubble summary judgment. The Sixth Circuit reversed. Redbubble’s marketplace involves creating Redbubble products and garments that would not have existed but for Redbubble’s enterprise. The district court erred by entering summary judgment under an overly narrow reading of the Lanham Act. View "The Ohio State University v. Redbubble, Inc." on Justia Law
Evoqua Water Technologies, LLC v. M.W. Watermark, LLC
The parties manufacture and sell equipment that removes water from industrial waste. Gethin founded Watermark's predecessor, “J-Parts,” after leaving his position at JWI. JWI sued Gethin and J-Parts for false designation of origin, trademark dilution, trademark infringement, unfair competition, unjust enrichment, misappropriation of trade secrets, breach of fiduciary duties, breach of contract, and conversion. The parties settled. A stipulated final judgment permanently enjoined Watermark and Gethin and “their principals, agents, servants, employees, attorneys, successors and assigns” from using JWI’s trademarks and from “using, disclosing, or disseminating” JWI’s proprietary information. Evoqua eventually acquired JWI’s business and trade secrets, technical and business information and data, inventions, experience and expertise, other than software and patents, and JWI’s rights and obligations under its contracts, its trademarks, and its interest in litigation. Evoqua discontinued the J-MATE® product line. Watermark announced that it was releasing a sludge dryer product. Evoqua planned to reintroduce J-MATE® and expressed concerns that Watermark was violating the consent judgment and improperly using Evoqua’s trademarks. Evoqua sued, asserting copyright, trademark, and false-advertising claims and seeking to enforce the 2003 consent judgment. The district court held that the consent judgment was not assignable, so Evoqua lacked standing to enforce it and that the sales agreement unambiguously did not transfer copyrights. A jury rejected Evoqua’s false-advertising claim but found Watermark liable for trademark infringement. The Sixth Circuit vacated in part. The consent judgment is assignable and the sales agreement is ambiguous regarding copyrights. View "Evoqua Water Technologies, LLC v. M.W. Watermark, LLC" on Justia Law
AuSable River Trading Post v. Dovetail Solutions, Inc.
Every winter for about 60 years, Tawas, Michigan has been the home of the “Perchville” festival, including a polar bear swim and a fishing contest. The Chamber of Commerce organizes the event and registered the name Perchville as a trademark. While dues-paying members of the Chamber may use the Perchville mark, non-members must pay a ($750) licensing fee to use it. A local company, AuSable, wants to make Perchville-branded tee-shirts, and sued the Chamber to invalidate its mark. The district court declined. The Sixth Circuit affirmed. “Perchville” is a distinctive term eligible for protection under the Lanham Act, which protects “any word, name, symbol, or device, or any combination thereof” that a person uses “to identify and distinguish his or her goods” in the marketplace, 15 U.S.C. 1127. “No matter how you slice it, the term ‘Perchville’ is inherently distinctive. The name does not refer to a place. It serves only ‘to identify a particular’ event, namely the annual winter festival in Tawas. … The word almost certainly counts as fanciful, and at the very least is sufficiently suggestive to qualify as an inherently distinctive trademark.” View "AuSable River Trading Post v. Dovetail Solutions, Inc." on Justia Law
Sterling Jewelers, Inc. v. Artistry Ltd.
Artistry, a jewelry wholesaler, sells its products to retailers across the country. Sterling is the largest specialty jewelry retailer in the country. It operates in all 50 States in roughly 1,300 stores, including Kay Jewelers and Jared. Sterling began marketing a line of jewelry under the name “Artistry Diamond Collection.” Artistry accused Sterling of infringing its trademark. The district court granted Sterling summary judgment, concluding that its mark was not likely to confuse consumers in the distinct market in which it operated. The Sixth Circuit affirmed. The word “artistry,” like the word “artisan,” is not an innovation when it comes to craft goods and is not likely to distinguish one product from another. The evidence suggested that at least 23 other jewelry companies used the word in some way, which diminishes the likelihood that a consumer who comes across Artistry, Ltd.’s name would think of Kay’s Artistry Diamond Collection and become confused. The companies use the marks differently: one to brand products and the other to brand a company and the wholesale services it provides. The court also noted the distinct nature of the consumers targeted by each company’s set of products. View "Sterling Jewelers, Inc. v. Artistry Ltd." on Justia Law
Sazerac Brands, LLC v. Peristyle, LLC
More than 95% of the world’s bourbon comes from Kentucky. One distiller, Colonel Edmund Haynes Taylor, Jr., was called “the most remarkable man to enter the whiskey industry during the post-Civil War years.” Taylor built the Old Taylor Distillery in 1887 in Woodford County, to resemble a medieval limestone castle. The distillery fell into financial ruin and changed hands several times after the Colonel’s death. Production ceased in 1972. In 2014, Peristyle purchased the Old Taylor distillery, planning to renovate and resume bourbon production there. Peristyle renamed the property “Castle & Key” and intends to do business under that name, including marketing its bourbons and whiskeys. During the renovation period, the company regularly referred to its location at “the Former Old Taylor Distillery” or simply “Old Taylor.” Sazerac, which owns the trademark rights to “Old Taylor” and “Colonel E.H. Taylor” and produces bourbons under both names, sued Peristyle, alleging trademark infringement, unfair competition, and false advertising under the Lanham Act as well as common law trademark infringement, unfair competition, and passing-off violations. The Sixth Circuit affirmed summary judgment in favor of Peristyle, which used the Old Taylor name descriptively and in good faith, qualifying for shelter under the Lanham Act’s fair use defense, 15 U.S.C. 1115(b)(4). View "Sazerac Brands, LLC v. Peristyle, LLC" on Justia Law
Leapers, Inc. v. SMTS, LLC
Leapers makes rifle scopes, textured with “knurling,” allowing users to grip the products more easily and to make fine-tuned adjustments. Knurling can be found on many items, including door handles, coin edges, and bottle lids. Leapers asserts that its unique knurling pattern is distinctly “ornamental” and allows consumers to recognize Leapers as the item's source. Leapers had an exclusive manufacturing contract with the Nantong factory in China, which agreed to never disclose information related to the products. Leapers ended that relationship. The factory agreed to stop using technical specifications, product design and packaging design documents related to Leaper and to destroy parts, accessories, and attachments related to Leaper’s products. Factory manager Shi formed a company (Trarms) and began selling rifle scopes and manufacturing rifle scopes for other sellers, including Defendant. Leaper’s sued, alleging trade dress infringement of the knurling design under the Lanham Act, 15 U.S.C. 105. Shi refused to testify, asserting the Fifth Amendment. Trarms refused to provide an alternate witness. The court granted Defendant summary judgment, reasoning that Leapers could not prove essential elements: nonfunctionality and secondary meaning, regardless of Shi 's testimony. The Sixth Circuit vacated. A jury could reasonably conclude that the design is purely ornamental and nonfunctional; that it does not represent a technological advancement; and that exclusive use of Leaper’s design would not put competitors at a significant, non-reputation related disadvantage. View "Leapers, Inc. v. SMTS, LLC" on Justia Law