Justia Trademark Opinion Summaries

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

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 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

Tawas, Michigan hosts an annual festival called “Perchville.” Its Chamber of Commerce obtained federal trademark registration for the term “Perchville,” in 2003. Trading Post allegedly was selling merchandise depicting the term “Perchville.” The Chamber filed suit against Agnello, a Trading Post employee, and obtained an ex parte injunctive order prohibiting sales of t-shirts with the mark, which stated: “this order shall be binding upon the parties to this action, their officers, agents, servants, employees, and attorneys and on those persons in active concert or participation with them who receive actual notice of this order by personal service [or] otherwise.” Agnello appeared at a hearing without an attorney, indicated that he had spoken to Trading Post's partial owner about the lawsuit, but repeatedly stated that he was confused. Agnello consented to a permanent injunction. The judge stated that the order would be binding on anyone acting in concert with Agnello. Trading Post filed suit, challenging the Chamber’s trademark of “Perchville.” The district court found the challenge barred by res judicata because a final determination on the merits occurred in the state court. The Sixth Circuit reversed. There may be circumstances when an employee’s interests are so aligned with his employer as to be in privity for purposes of res judicata, that was not true here. Agnello was an hourly employee given a few days’ notice of an injunction. View "AuSable River Trading Post, LLC v. Dovetail Solutions, Inc." on Justia Law