Justia Trademark Opinion Summaries

The Ninth Circuit vacated the district court's grant of summary judgment for Whole Foods in a trademark infringement action. The panel held that the district court impermissibly resolved disputed questions of material fact in favor of the moving party regarding Whole Foods' affirmative defenses of laches and acquiescence. Therefore, the panel vacated the district court's reasonableness finding and remanded for further proceedings. On remand, the district court should reevaluate the evidence in the light most favorable to the non-moving party—i.e., as if ERF delayed filing suit because it was trying to settle its claims against Whole Foods. If the district court determined on remand that ERF delayed unreasonably in filing suit and this delay prejudiced Whole Foods, it must consider the extent and reasonableness of Whole Foods' reliance on ERF's affirmative representations before it reaches a finding on acquiescence. View "Eat Right Foods Ltd. v. Whole Foods Market, Inc." 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

This case arose from a dispute over the ownership of the mark "The Commodores." Defendant appealed an order granting judgment as a matter of law to CEC and converting a preliminary injunction into a permanent one against defendant and his corporation, Fifth Avenue. The Eleventh Circuit held that it lacked jurisdiction to review the denial of the motion to dismiss and that the district court did not abuse its discretion in excluding expert testimony from an attorney who proffered only legal conclusions; when defendant left the band, he left behind his common-law rights to the marks and those rights remained with CEC; the scope of the injunction was not impermissibly broad; defendant's arguments about the validity of the federal registration of the marks were irrelevant to this determination; and defendant did not establish any affirmative defenses. Accordingly, the court affirmed the judgment. View "Commodores Entertainment Corp. v. McClary" on Justia Law

Brunetti owns the clothing brand “fuct.” In 2011, individuals filed an intent-to-use application for the mark FUCT for items of apparel. The applicants assigned the application to Brunetti, who amended it to allege use of the mark. The examining attorney refused to register the mark under the Lanham Act, 15 U.S.C. 1052(a), finding it comprised immoral or scandalous matter because FUCT is the past tense of “fuck,” a vulgar word, and is therefore scandalous. The Trademark Trial and Appeal Board affirmed. The Federal Circuit reversed. While substantial evidence supports the Board’s findings and it did not err concluding the mark comprises immoral or scandalous matter, section 2(a)’s bar on registering immoral or scandalous marks is an unconstitutional restriction of free speech. The bar is a content-based restriction on speech; trademark registration is not a government subsidy program that could justify such a bar. Nor is trademark registration a “limited public forum,” in which the government can more freely restrict speech. The bar survives neither strict nor intermediate scrutiny. Even if the government had a substantial interest in protecting the public from scandalous or immoral marks, the regulation does not directly advance that interest because section 2(a) does not directly prevent applicants from using their marks. View "In re: Brunetti" on Justia Law

The Ninth Circuit affirmed the district court's grant of summary judgment to Fox and held that Fox's use of the name "Empire" was protected by the First Amendment and was outside the reach of the Lanham Act, 15 U.S.C. 1125. At issue was a Fox television show entitled Empire, which portrays a fictional hip hop music label named "Empire Enterprises" that was based in New York. The panel applied a test developed by the Second Circuit in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), to determine whether the Lanham Act applied. The panel held that Fox's expressive work sufficiently satisfied the first prong of the Rogers test where the title Empire supported the themes and geographic setting of the work and the second prong of the Rogers test where the use of the mark "Empire" did not explicitly mislead consumers. View "Twentieth Century Fox Television v. Empire Distribution" on Justia Law

This petition for writ of mandamus arose in the context of a contested trademark action initiated by San Diego Comic Convention (SDCC) against petitioners, over the use of the mark "comic-con" or "comic con." The Ninth Circuit granted the petition and vacated the district court's orders directing petitioners to prominently post on their social medial outlets its order prohibiting comments about the litigation on social media, dubbing this posting a "disclaimer." The panel held that the orders at issue were unconstitutional prior restraints on speech because they prohibit speech that poses neither a clear and present danger nor a serious and imminent threat to SDCC's interest in a fair trial. The panel explained that the well-established doctrines on jury selection and the court's inherent management powers provide an alternative, less restrictive, means of ensuring a fair trial. View "Dan Farr Productions v. USDC-CASD" 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

SCAD appealed the district court's grant of summary judgment in favor of Sportswear in an action where SCAD asserted a number of claims against Sportswear, including service mark infringement under 15 U.S.C. 1114; unfair competition and false designation of origin under 15 U.S.C. 1125; and unfair competition under O.C.G.A. 10-1-372. The Eleventh Circuit reversed, holding that this case did not involve the alleged infringement of a common-law trademark, and as a result the date of SCAD's first use of its marks on goods was not determinative. Therefore, Boston Prof’l Hockey Ass’n, Inc. v. Dallas Cap & Emblem Mfg., Inc., 510 F.2d 1004 (5th Cir. 1975), controls, as it extends to protection for federally-registered service marks to goods. Accordingly, the court remanded for further proceedings. View "Savannah College of Art and Design, Inc. v. Sportswear, Inc." on Justia Law

Wine & Canvas (W&C) hosts “painting nights.” Patrons, following a teacher’s instructions, create a painting while enjoying wine. W&C operated in Indianapolis, Bloomington, and Oklahoma City. Muylle signed a license agreement, moved to San Francisco, and opened a W&C operation. W&C’s executives were present and taught the first class, worked with Muylle to approve paintings for use, gave Muylle company email addresses, and advertised the San Francisco operation on the W&C website. Disagreements arose. Muylle gave notice to terminate the agreement, changed the business name to “Art Uncorked,” and ceased using the W&C name and marks. W&C alleged trademark infringement, 15 U.S.C. 1051. Muylle’s counterclaims invoked California franchise law, federal trademark cancellation. and Indiana abuse of process law. Plaintiffs failed to meet discovery deadlines, despite being sanctioned three times. The Seventh Circuit affirmed: dismissal of the California law counterclaims; W&C's summary judgment on Muylle’s trademark cancellation counterclaim; Muylle's summary judgment on trademark dilution, sale of counterfeit items, unfair competition, bad faith, tortious conduct, abuse of process, breach of contract, fraud, and a claim under the Indiana Crime Victims Act; and Muylle's partial summary judgment on trademark infringement. Through November 18, 2011, W&C impliedly consented to Muylle’s using the marks. On claims of trademark infringement and false designation of origin (for any use after November 18, 2011), and Muylle’s abuse of process counterclaim, the court affirmed awards to Muylle of $270,000 on his counterclaim and $175,882.68 in fees. View "Wine & Canvas Development, LLC v. Muylle" on Justia Law

Lottery, a state agency, began operating traditional lottery drawing games and instant lottery scratch-off games in North Carolina in 2006. It introduces new scratch-off games on the first Tuesday of each month and asserts that it has continuously used the mark FIRST TUESDAY since July 2013 in print materials, on its Website, and on point-of-sale displays. In 2014, Lottery applied for registration of the mark FIRST TUESDAY for “Lottery cards; scratch cards for playing lottery games” and for “Lottery services,” submitting specimens that have explanatory text such as “[n]ew scratch-offs” or “[n]ew scratch-offs the first Tuesday of every month.” The examining attorney refused registration, finding that the mark used in the context of Lottery’s promotional materials “merely describes a feature of [its] goods and services, namely, new versions of the goods and services are offered the first Tuesday of every month.” The Trademark Trial and Appeal Board and the Federal Circuit affirmed. Lottery’s promotional materials make clear that “new scratch-off games are offered on the first Tuesday of every month” and that fact would “be so understood by the relevant consumers who encounter the designation FIRST TUESDAY.” No “mental thought or multi-step reasoning is required to reach a conclusion as to the nature of the involved goods and services.” View "In re: North Carolina Lottery" on Justia Law