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Verisign filed suit against XYZ and its CEO Daniel Negari, alleging that defendants' statements regarding the scarcity of desirable .com domain names violated the Lanham Act's, 15 U.S.C. 1125(a)(1)(B), false advertising provisions. The district court granted summary judgment in favor of XYZ. The court agreed with the district court that Verisign failed to establish the elements of a Lanham Act claim. In regard to XYZ's self-promoting statements, the court held that Verisign failed to produce the required evidence that it suffered an actual injury as a direct result of XYZ’s conduct. Nor can Verisign establish that XYZ’s statements about the availability of suitable .com domain names were false or misleading statements of fact. Accordingly, the court affirmed the judgment. View "VeriSign v. XYZ.com" on Justia Law

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Plaintiff sells personal care kits. Plaintiff’s products include a line of “Minimergency Kits,” which come in small fabric bags designed to look like men’s Dopp Kits (a now-cancelled trademark for travel kits, originally for men’s shaving gear, used widely by the military in World War II). Urban Aid also sells personal care kits. It agreed to create a custom kit for a shoe distributor, for use in a sales promotion. The distributor wanted the kits to come in a bag similar to plaintiff’s bag and gave Urban Aid a picture of plaintiff’s bag to work from. After the distributor began its sales promotion, plaintiff filed suit, alleging that the shape and design of its bag were protected trade dress, that Urban Aid’s bag violated the Lanham Act, the Illinois Uniform Deceptive Trade Practices Act, and the Illinois Consumer Fraud and Deceptive Business Practices Act, and that Urban Aid’s bag tortiously interfered with plaintiff’s prospective business relations. The district court found that plaintiff’s claimed trade dress was functional as a matter of law and granted Urban Aid summary judgment on the Lanham Act and the related state-law claims. The Seventh Circuit affirmed; the undisputed evidence shows that the claimed design features affect product quality. View "Arlington Specialties, Inc. v. Urban Aid, Inc." on Justia Law

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In 2013, Jurgensen allegedly developed an idea for a mobile application to connect employers with prospective employees, called “WorkWire.” He formed Creative Harbor; an attorney allegedly advised that the WorkWIre trademark was available. Meanwhile, Kelly Services, a staffing company, allegedly developed its own employment-based iPad application, called “WorkWire.” Kelly allegedly completed the application on February 4, and submitted it to Apple for approval. On February 19, Creative filed trademark applications at 6:28 p.m. and 7:56 p.m. (EST). The same day, at 8:11 p.m. EST, Kelly’s iPad application became available on the Apple Store. A customer first downloaded that application on February 20. Creative sent Kelly a cease and desist letter. Kelly filed suit. When the Patent and Trademark Office published the Applications, Kelly filed opposition and notified the Trademark Trial and Appeal Board (TTAB) of the pending action. The TTAB stayed proceedings. The district court held that Creative had to use the Mark in commerce before its priority rights would vest and voided the Applications in their entirety. The Sixth Circuit affirmed that Creative lacked bona fide intent as to some, but not all of the goods and services listed in the Applications, (15 U.S.C. 1051(b)), but held that the district court erroneously voided the Applications in their entirety, and remanded for determination of which goods and services were improperly included in the Applications, and excision of improper items. View "Kelly Services, Inc. v. Creative Harbor, L.L.C." on Justia Law

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Slep-Tone produces karaoke music tracks marketed under the trademark "Sound Choice" on encoded compact discs (CD-G). Plaintiffs filed suit against defendants for, inter alia, trademark infringement after finding out that defendants were using unauthorized media-shifted files instead of Slep-Tone's original CD-Gs. The district court granted defendant's motion to dismiss. Slep-Tone argues that, by "media-shifting" its tracks from physical CD-Gs to digital files and performing them without authorization, defendants committed trademark infringement and unfair competition under the Lanham Act,15 U.S.C. 1114, 1125. The court agreed with the Seventh Circuit's holding that "the ‘good’ whose ‘origin’ is material for purposes of a trademark infringement claim is the ‘tangible product sold in the marketplace’ rather than the creative content of that product." Therefore, the court concluded that Slep-Tone failed to plausibly allege consumer confusion over the origin of a good properly cognizable in a claim of trademark infringement. Accordingly, the court affirmed as to this issue. In a concurrently filed memorandum opinion, the court also reversed in part and remanded in part. View "Slep-Tone Entertainment Corp. v. Wired for Sound Karaoke" on Justia Law

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Kibler, a disc jockey, uses turntables and others’ vocals to produce music containing jazz and funk elements. He released several albums under the name “DJ LOGIC” since 1999, but currently has no record deal. Kibler registered “DJ LOGIC” as a trademark in 2000, allowed the registration to lapse, and re-registered it in 2013. He has also been known as “LOGIC.” Hall has performed under the name “LOGIC” since 2009. In 2012, Kibler’s attorney sent Hall’s management company and booking agent an email ordering them to stop using the name “LOGIC” and to recall any product or advertisement that did, claiming infringement on Kibler’s mark. Hall’s company applied to register “LOGIC” as a trademark. Kibler sued, alleging trademark infringement, 15 U.S.C. 1125(a); breach of the Michigan Consumer Protection Act; unfair competition under Michigan law; and trademark dilution under the Lanham Act. In 2014, defendants delayed Hall’s tour and first album release due to ongoing settlement negotiations that ultimately collapsed. Defendants then released the album, which sold over 170,000 copies. The Sixth Circuit affirmed summary judgment in favor of the defendants. Kibler did not provide evidence sufficient to find that relevant consumers are likely to confuse the sources of his and Hall’s products or that Hall diluted Kibler’s mark. View "Kibler v. Hall" on Justia Law

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In 2004, the Patent and Trademark Office issued JobDiva’s 917 registration for the service mark JOBDIVA for “personnel placement and recruitment” services. In 2005, it issued JobDiva’s 235 registration for a service mark for “personnel placement and recruitment services; computer services, namely, providing databases featuring recruitment and employment, employment advertising, career information and resources, resume creation, resume transmittals and communication of responses thereto via a global computer network.” JobDiva’s software provides a database of employment applications and employs automated “harvesters” to find potential job candidates. It analyzes resumes and helps hiring managers directly communicate with job candidates; it also recommends openings to job candidates and provides automated resume feedback. JobDiva’s software-as-a-service is delivered over the Internet without downloading software. Users pay for the computing as a service rather than owning the machines and software. The Board cancelled JobDiva’s marks in a proceeding that JobDiva initiated, challenging a registration owned by Jobvite. The Board granted Jobvite’s counterclaim stating, “[a] mark shall be deemed to be ‘abandoned’ . . . [w]hen its use has been discontinued with intent not to resume such use,” 15 U.S.C. 1125, and that JobDiva provided software, not “personnel placement and recruitment” services. The Federal Circuit vacated. The question is whether JobDiva, through its software, performed personnel placement and recruitment services and whether consumers would associate JobDiva’s registered marks with personnel placement and recruitment services, regardless of whether the steps of the service were performed by software. View "In re: JobDiva, Inc." on Justia Law

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Following a generally favorable result in the district court, Motel 6 appealed, arguing that the district court erred interpreting the Lanham Act’s anticounterfeiting penalties not to reach the use of the Motel 6 mark without permission and in failing to award prejudgment interest to Motel 6. The Third Circuit vacated as to those issues. The lower court interpreted the Lanham Act too narrowly and contrary to the weight of persuasive authority concerning treble damages under 15 U.S.C. 1117(b). On remand the court must determine whether “extenuating circumstances” exist such that treble damages would not be appropriate. While the court was not required to award prejudgment interest once it found the case exceptional for purposes of attorney’s fees and costs under Section 1117(a), it may do so after reconsidering the counterfeiting issue. View "Motel 6 Operating LP v. HI Hotel Group LLC" on Justia Law

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In March 2015, McHugh Fuller Law Group, PLLC (“McHugh Fuller”) began running a month-long, statewide Georgia advertising campaign targeting PruittHealth, Inc. and its affiliated nursing homes. PruittHealth filed suit against McHugh Fuller under Georgia’s trademark antidilution statute, and the trial court entered a permanent injunction prohibiting McHugh Fuller from running ads about PruittHealth that include the company’s trade names, service marks, or logos. The law firm appealed, and the Supreme Court found that advertisement that PruittHealth challenged did not violate the Georgia trademark anti-dilution law. Accordingly, the Court reversed the trial court’s injunction order. View "McHugh Fuller Law Group, PLLC v. PruittHealth, Inc." on Justia Law

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In 2005, the Church, within five miles of the Illinois–Wisconsin border, began selling caps and shirts, emblazoned with the phrase “ADD A ZERO” as part of a fundraising campaign. The Church obtained two federal trademarks for the “ADD A ZERO” mark, based on actual use of the marks in commerce, not intent to use the marks in commerce. In 2009, Adidas sought a clothing trademark for the phrase “ADIZERO.” The Trademark Office refused the application for likelihood of confusion with the Church’s “ADD A ZERO” marks. Adidas brought an action; the Trademark Trial and Appeal Board cancelled the marks, based on the Church’s failure to use the marks in commerce before registration. The Board considered the Church’s proffered evidence of a cancelled check with a printed Wisconsin address for the sale of two “ADD A ZERO”-marked hats for $38.34 in February 2005, before the Church applied for its marks, but concluded that the “de minimis” sale did not evidence the requisite “use in commerce” under the Lanham Act. The Federal Circuit reversed. The Lanham Act defines commerce as all activity regulable by Congress; the Church’s sale to an out-of-state resident fell within Congress’s power to regulate under the Commerce Clause. View "Christian Faith Fellowship Church v. Adidas AG" on Justia Law

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CI owns the registered marks ʺCollective Network,ʺ ʺCollective Video,ʺ and ʺC Collective The Audience Engine,ʺ a stylized mark in which the word ʺCollectiveʺ appears most prominently. CCM operates under the name ʺCollective[i].ʺ This appeal arises from the software companies' dispute over trademarks containing the word "collective." In a series of three orders, the district court granted summary judgment to CCM on virtually all points in dispute and awarded attorneyʹs fees under the Lanham Act, 15 U.S.C. 1051 et seq. The court reversed or vacated all contested portions of the March Order, August Order, and December Order because: (1) the unregistered mark ʺcollectiveʺ is suggestive, not descriptive; (2) there is a genuine dispute of material fact as to whether CI used the unregistered mark ʺcollectiveʺ in commerce before CCM introduced its allegedly infringing marks; (3) the district court prematurely granted summary judgment as to CIʹs counterclaim for infringement of the registered marks, an action that neither party requested and the district court did not explain; and (4) there is a genuine dispute of material fact as to whether CI abandoned its registered marks ʺCollective Networkʺ and ʺCollective Video.ʺ Accordingly, the court reversed in part, vacated in part, and remanded for further proceedings. View "Cross Commerce Media, Inc. v. Collective, Inc." on Justia Law