Justia Trademark Opinion Summaries

OBC appealed the district court's grant of summary judgment for Excelled in a trademark dispute over use of the brand-name ROGUE on t-shirts. The Second Circuit held that Excelled failed to show entitlement to summary judgment dismissing OBC's trademark infringement counterclaims. In this case, Excelled failed to meet its burden of proving that OBC's delay in bringing suit was unreasonable and caused prejudice to Excelled. Therefore, the court vacated the district court's grant of summary judgment to Excelled, dismissing OBC's counterclaims, alleging trademark infringement, false designation, and unfair competition.The court reversed the district court's grant of summary judgment to Excelled on its infringement claims and the district court's denial of OBC's motion for summary judgment dismissing these claims. The court also reversed the award of injunctive relief and damages and fees against OBC. Finally, the court vacated the district court's grant of summary judgment to Excelled on OBC's trademark cancellation counterclaim because the district court erroneously relied on determinations of disputed facts about the continuity of Excelled's sales that usurped the province of the jury. View "Excelled Sheepskin & Leather Coat Corp. v. Oregon Brewing" on Justia Law

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

OTR filed suit against Defendant West, asserting various claims under the Lanham Act and state law. Primarily at issue on appeal was whether West could be found liable for reverse passing off under the Lanham Act. The Ninth Circuit affirmed the judgment, holding that West was liable for reverse passing off because he did not simply copy OTR's intellectual property but passed off genuine OTR products as his own. In this case, West asked one of OTR's suppliers to provide him with sample tires from OTR's molds; he asked the supplier to remove OTR's identifying information from the tires; and he wanted to use the tires to obtain business from one of OTR's customers. The panel affirmed the district court's conclusion that West did not establish that OTR committed fraud on the United States Patent and Trademark Office, and held that fraud on the PTO must be established by clear and convincing evidence. The panel also affirmed the denial of a new trial on the issue of trade dress validity and the district court's rejection of a proposed jury instruction. The panel addressed additional issues in a concurrently filed memorandum disposition. View "OTR Wheel Engineering, Inc. v. West Worldwide Services, Inc." on Justia Law

The district court granted summary judgment to the Standards Developing Organizations (SDOs) on their claims of direct copyright infringement, finding that they held valid and enforceable copyrights in the incorporated standards that PRO had copied and distributed, and that PRO had failed to create a triable issue of fact that its reproduction qualified as fair use under the Copyright Act. The district court also concluded that ASTM was entitled to summary judgment on its trademark infringement claims, and issued permanent injunctions prohibiting PRO from all unauthorized use of the ten standards identified in the summary judgment motions and of ASTM's registered trademarks.The DC Circuit reversed and held that the district court erred in its application of both fair use doctrines. The court remanded for the district court to develop a fuller record regarding the nature of each of the standards at issue, the way in which they were incorporated, and the manner and extent to which they were copied by PRO in order to resolve this mixed question of law and fact. View "American Society for Testing v. Public.Resource.Org, Inc." on Justia Law

The Ninth Circuit affirmed the district court's judgment in favor of Pinkette, which sells LUSH-branded women's fashions, in a trademark infringement action brought by CWL, which sells LUSH-branded cosmetics and related goods. The panel distinguished between Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S. Ct. 1962 (2014), and SCA Hygiene Products v. First Quality Baby Products, LLC, 137 S. Ct. 954 (2017), holding that the principle at work in these cases—a concern over laches overriding a statute of limitations—did not apply here, where the Lanham Act has no statute of limitations and expressly makes laches a defense to cancellation. In this case, the district court applied the correct standard when it applied the factors set forth in E-Sys., Inc. v. Monitek, Inc., 720 F.2d 604 (9th Cir. 1983), to CWL's claim for injunctive relief. After analyzing the E-Systems factors, the panel held that they validate the strong presumption in favor of laches created by CWL's delaying past the expiration of the most analogous state statute of limitations. Therefore, the district court did not abuse its discretion in applying laches to bar CWL's cancellation and infringement claims. The panel held that CWL's remaining arguments were without merit. View "Pinkette Cothing, Inc. v. Cosmetic Warriors Limited" on Justia Law

The district court erred in granting Defendant’s motion to dismiss, based on an arbitration provision, Plaintiff’s claims that Defendant violated various articles of the Puerto Rico Civil Code and federal copyright and trademark laws.This suit stemmed from a songwriting contest held in Puerto Rico in 2014. As a contestant, Plaintiff agreed to the terms of the contest’s rules, which included an arbitration provision. The provision compelled the submission to arbitration of those claims that “aris[e] in connection with, touch upon or relat[e] to” those rules. The district court granted Defendant’s motion to dismiss pursuant to Fed. R. Civ. P. 12(b)(6) based on that arbitration provision. The First Circuit reversed, holding that the arbitration provision did not reveal that the parties to it intended for Defendant, a third party, to benefit from it with the requisite clarity. View "Cortes-Ramos v. Martin-Morales" on Justia Law

Royal Crown (RC) and The Coca-Cola Company (TCCC) compete in the beverage market. Both companies and others distribute beverages that use ZERO as an element of their marks. When RC sought trademark protection for DIET RITE PURE ZERO and PURE ZERO, it disclaimed the term ZERO apart from the marks as a whole. TCCC has used ZERO as an element in its marks for at least 12 different beverage products sold in the U.S. The Patent and Trademark Office requested that TCCC disclaim the term “zero” because the term merely “describes a feature of the applicant’s goods, namely, calorie or carbohydrate content of the goods.” TCCC responded that the term had acquired distinctiveness under the Lanham Act, 15 U.S.C. 1052(f). The PTO accepted TCCC’s Section 2(f) submissions and approved the marks for publication without requiring disclaimers. The Board concluded that RC failed to demonstrate that ZERO is generic for the genus of goods identified in TCC's applications; that survey evidence indicated that TCCC’s ZERO marks had acquired distinctiveness; and that TCCC’s use of ZERO in connection with soft drinks was substantially exclusive, given the “magnitude of TCCC’s use.” The Board dismissed RC’s oppositions. The Federal Circuit vacated. The Board erred in its legal framing of the question of the claimed genericness of TCCC’s marks, and failed to determine whether, if not generic, the marks were at least highly descriptive. View "Royal Crown Co., Inc.. v. The Coca-Cola Co." 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

The Ninth Circuit reversed the district court's grant of summary judgment for McKeon in a trademark infringement action alleging that McKeon's green ear plugs infringed Moldex's green earplugs. The panel held that the existence or nonexistence of alternative designs was probative of functionality or nonfunctionality, and thus evidence of alternative colors must be considered in deciding the functionality of Moldex's mark. The panel held that there was a material dispute of material facts as to whether Moldex's bright green color earplugs was functional. Therefore, the panel remanded for the district court to consider McKeon's arguments both that Moldex's green color lacked secondary meaning and that there was no likelihood of confusion, and then if necessary go to trial. View "Moldex-Metric, Inc. v. McKeon Products, Inc." on Justia Law

Specific elements from within a television show—as opposed to the title of the show itself—can receive trademark protection. The Fifth Circuit affirmed the district court's grant of summary judgment to Viacom on its trademark infringement and unfair competition claims related to the common law trademark of The Krusty Krab. The Krusty Krab is a fictional restaurant in the "SpongeBob SquarePants" animated television series, and IJR took steps to open seafood restaurants using the same name. The court held that The Krusty Krab's key role in "SpongeBob SquarePants" coupled with the consistent use of the mark on licensed products established ownership of the mark because of its immediate recognition as an identifier of the source for goods and services; Viacom's mark has acquired distinctiveness through secondary meaning as a matter of law; and Viacom met its burden by proving that IJR's use of The Krusty Krab created a likelihood of confusion as to source, affiliation, or sponsorship. View "Viacom International, Inc. v. IJR Capital Investments, LLC" on Justia Law