Justia Trademark Opinion Summaries

Skechers challenged the district court's issuance of a preliminary injunction prohibiting it from selling shoes that allegedly infringe and dilute adidas America, Inc.’s Stan Smith trade dress and Three-Stripe trademark. The panel affirmed in part, holding that the district court did not abuse its discretion in issuing the preliminary injunction as to adidas's claim that Skechers's Onix shoe infringes on adidas's unregistered trade dress of its Stan Smith shoe. However, the panel reversed in part, holding that the district court erred in issuing a preliminary injunction as to adidas's claim that Skechers's Cross Court shoe infringes and dilutes its Three-Stripe mark. View "adidas America, Inc. v. Skechers USA, Inc." on Justia Law

The Eighth Circuit considered this trademark dispute on remand. In the previous appeal, the court asked the district court to address state-law questions pertaining to the availability of attorney's fees and the ownership of a contested trademark. The district court entered orders on those questions and this appeal followed. The court held that the district court erred in determining plaintiff was entitled to attorney's fees under Iowa common law. In this case, defendant's misrepresentation to the patent office was improper, but its conduct did not rise to the level of being tyrannical, cruel, or harsh under Iowa common law. Finally, the briefs and oral arguments lead the court to conclude that defendant owned a license to use the PAKSTER mark in connection with injection-molded chicken coops, injection-molded egg baskets, and injection-molded egg flats. Accordingly, the court reversed and remanded with instructions. View "East Iowa Plastics, Inc. v. PI, Inc." on Justia Law

The Eighth Circuit affirmed the district court's grant of summary judgment to PWD on a trademark infringement claim filed by ZW, another company that sells plastic bags for picking up and disposing of dog waste. The court held that ZW failed to produce any evidence from which a jury could find that consumers were likely to confuse ZW's ONEPUL wicket bags with PWD's BagSpot "one-pull" wicket bags. In regard to PWD's counterclaim that ZW's marks were invalid, the court held that there was a fact dispute as to whether the ONEPUL mark was generic or descriptive. Therefore, the court reversed as to the validity claim and remanded for further proceedings. View "ZW USA, Inc. v. PWD Systems, LLC" on Justia Law

This trademark infringement action concerned whether Walmart's use of the mark "Backyard Grill" on its grills, and grilling supplies infringed on Variety's use of its registered mark, "The Backyard," and unregistered marks, "Backyard" and "Backyard BBQ." Variety appealed the district court's calculation of disgorged profits and denial of its request for a jury trial, and Walmart cross-appealed the district court's grant of summary judgment for Variety and award of profit disgorgement, costs, and attorneys' fees. The court held that the district court improperly granted summary judgment in Variety's favor because there were genuine disputes of material fact as to whether a likelihood of confusion exists. The court vacated the district court's order granting Variety's motion for partial summary judgment and affirmed the order denying Walmart's motion for summary judgment; vacated every order entered subsequent to the summary judgment rulings; vacated the award of profit disgorgement, costs, and attorneys' fees; and dismissed the parties' respective cross-appeals pertaining to disgorgement, denial of jury trial, and award of costs and fees. View "Variety Stores, Inc. v. Wal-Mart Stores, Inc." on Justia Law

This case stemmed from the parties' dispute over adjudicating rights associated with The Sloppy Tuna, a restaurant in Montauk, NY. On appeal, Montauk challenged the district court's dismissal of its Lanham Act claims and motion for preliminary injunction under the first-filed rule. Montauk also challenged the district court's order to pay costs, including attorneys' fees, that Associates incurred in responding to a previous action Montauk brought against Associates in Georgia state court that Montauk voluntarily dismissed. The Second Circuit held that, because New York law allowed for derivative representation on the facts presented, the district court correctly rejected Montauk's request to hold Associates in default. Nonetheless, the court vacated the district court's dismissal of the complaint and preliminary injunction motion in favor of a first-filed federal Georgia action because the Georgia suit was transferred to the Eastern District of New York, so the reasoning behind the first-filed ruling no longer applied. Finally, the court affirmed the district court's award of costs under Federal Rule of Civil Procedure 41(d), including attorneys' fees, incurred by Associates in the Georgia state action. View "Montauk U.S.A., LLC v. 148 South Emerson Associates LLC" on Justia Law

The district court held Early Education in contempt and awarded Rainbow School $60,000, plus attorney's fees and costs, after Early Education violated the terms of a consent judgment and permanent injunction. The Fourth Circuit affirmed and held that the district court did not clearly err in finding multiple violations of the injunction; Early Education's violations harmed the Rainbow School; and the district court did not abuse its discretion by awarding damages and attorney's fees and costs. The court dismissed Early Education's appeal from the order requiring it to undergo an audit based on lack of appellate jurisdiction. The court held that the question of whether Early Education should initially pay for an audit was neither inextricably linked nor a necessary precursor to the issues presented in the appeal from the district court's prior order, which made a determination of contempt and had nothing to do with paying for an audit. View "Rainbow School, Inc. v. Rainbow Early Education Holding LLC" on Justia Law

This case arose from a dispute between the parties over licensing agreements involving the motion picture Gone in 60 Seconds. The trial court entered judgment for Classic and ordered that Eleanor Licensing retain possession of a vehicle identified as "Eleanor No. 1," which had been manufactured by Classic pursuant to a licensing agreement between the parties; quieting title to the vehicle in Eleanor Licensing; directing Classic to perform according to the terms of the licensing agreement and transfered legal title to Eleanor No. 1 to Eleanor Licensing; and awarding damages and attorney fees. The court held that the November 1, 2007 License Agreement was supported by adequate consideration; the contract-based claims, to the extent otherwise valid, were barred by the statute of limitations; the causes of action for return of personal property and quiet title were timely filed; the alter ego finding was not supported by substantial evidence; Jason Engel was properly named as a defendant in the causes of action to quiet title and for return of personal property; Tony Engel was a proper defendant in the quiet title cause of action; and the Engels were not liable for attorney fees. The court reversed in part and affirmed in part the judgment and postjudgment order. View "Eleanor Licensing LLC v. Classic Recreations LLC" on Justia Law

This case arose from a dispute between the parties over licensing agreements involving the motion picture Gone in 60 Seconds. The trial court entered judgment for Classic and ordered that Eleanor Licensing retain possession of a vehicle identified as "Eleanor No. 1," which had been manufactured by Classic pursuant to a licensing agreement between the parties; quieting title to the vehicle in Eleanor Licensing; directing Classic to perform according to the terms of the licensing agreement and transfered legal title to Eleanor No. 1 to Eleanor Licensing; and awarding damages and attorney fees. The court held that the November 1, 2007 License Agreement was supported by adequate consideration; the contract-based claims, to the extent otherwise valid, were barred by the statute of limitations; the causes of action for return of personal property and quiet title were timely filed; the alter ego finding was not supported by substantial evidence; Jason Engel was properly named as a defendant in the causes of action to quiet title and for return of personal property; Tony Engel was a proper defendant in the quiet title cause of action; and the Engels were not liable for attorney fees. The court reversed in part and affirmed in part the judgment and postjudgment order. View "Eleanor Licensing LLC v. Classic Recreations LLC" on Justia Law

Plaintiff filed suit under the Racketeer Influenced and Corrupt Organizations Act (RICO), 18 U.S.C. 1961, et seq., challenging the district court's judgment in favor of defendants. In this case, plaintiff alleged that defendants were members of two enterprises that conspired to sue plaintiff for, inter alia, trademark infringement. The Second Circuit held that the alleged litigation activities did not constitute RICO predicate acts. The court also held that the district court did not abuse its discretion in denying plaintiff leave to amend, plaintiff's motion to disqualify, and defendants' motions for sanctions. Accordingly, the court affirmed the judgment. View "Kim v. Kimm" on Justia Law

Ariel Investments, based in Illinois and doing business nationally, and Ariel Capital, based in Florida, both manage money for clients. Investments has used its name since 1983; Capital only since 2014. In a suit under the Lanham Act, 15 U.S.C. 1125(a), the district court found that Capital was infringing Investments’ trademarks. The Seventh Circuit reversed, finding that the court lacked jurisdiction. Capital does not have a client, property, or staff in Illinois, does not advertise in Illinois, and never has had an agent even visit Illinois. The Lanham Act does not authorize nationwide service of process, so personal jurisdiction depends on state law. A defendant’s knowledge and intent concerning a resident of a state do not justify compelling that person to defend himself there. A state may assert specific jurisdiction, based on a particular transaction, only if the defendant has “a substantial connection with the forum State” that is of the defendant’s creation. ”No matter how one might characterize the relation between Ariel Investments and Ariel Capital, it is easy to describe the relation between Illinois and Ariel Capital: none.” If infringement happened, it occurred in Florida, or some state where people who wanted to do business with Investments ended up dealing with Capital because of the similar names. View "Ariel Investments, LLC v. Ariel Capital Advisors LLC" on Justia Law