Justia Trademark Opinion Summaries

Georgallis applied to the Patent and Trademark Office to register the mark MAYARI in standard characters for use on wine in International Class 33. Oakville opposed the registration, alleging that Georgallis’s mark would likely cause confusion with Oakville’s previously registered and used mark MAYA in equivalent-to-standard characters, also for use on wine in International Class 33. After considering: similarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression; similarity of the goods; similarity of trade channels; conditions under which and buyers to whom sales are made; fame of the prior mark; similar marks in use on similar goods; absence of actual confusion; right to exclude others from use; extent of potential confusion; and federal wine labelling requirements, the Board found that factors two, three, and four favored a finding of likelihood of confusion, that the first factor favored a finding of no likelihood of confusion, while the other factors were neutral. The Board found the goods to be “identical,” despite “a substantial difference in price” and other “differences in the specific nature of the wines,” but found that, overall, “the marks create significantly different commercial impressions” and dismissed Oakville’s opposition. The Federal Circuit affirmed; substantial evidence supported the finding of dissimilarity. View "Oakville Hills Cellar, Inc v. Georgallis Holdings, LLC" on Justia Law

After the Hatch Chile Company sought to trademark the term “Hatch” for its exclusive use, a chile producing rival, El Encanto, objected. El Encanto argued before the Trademark Trial and Appeal Board ("TTAB," a division of the Patent and Trademark Office (PTO)), El Encanto argued that “Hatch” can’t be trademarked both because it refers to a place and because Hatch Chile used the term in a misleading manner. To prove its case of deception, El Encanto sought to show that Hatch Chile’s products regularly include chiles that weren't even from the Hatch Valley. El Encanto sought documents from Hatch Chile's packers and suppliers over where the Hatch peppers came from. Hatch Chile responded with a motion for a protective order; the packer, Mizkan Americas, Inc., moved to quash El Encanto's subpoena. Hatch Chile and Mizkan argued that before documents could be subpoenaed, a deposition had to be held. Because El Encanto's subpoena failed to seek a deposition, Hatch Chile argued the order had to be quashed. El Encanto replied that it didn’t want to waste everyone’s time with a deposition: documents would suffice to answer its pretty simple question. The district court agreed and granted Mizkan's motion to quash. El Encanto appealed. The Tenth Circuit reversed: "consistent with any of the various statutory interpretations and regulations cited to us, a party to a TTAB proceeding can obtain nonparty documents without wasting everyone’s time and money with a deposition no one really wants." View "El Encanto, Inc. v. Hatch Chile Company, Inc." on Justia Law

Plaintiff filed suit alleging trademark infringement in violation of the Lanham Act, 15 U.S.C. 1114, and other claims on the basis that defendant's trademark logo was confusingly similar to plaintiff's trademark. The district court granted permanent injunctive relief, prohibiting defendant from using its marks within plaintiff’s geographic service area (Guthrie Service Area), but held that defendant may continue to use its marks everywhere outside the Guthrie Service Area, as well as without restriction in Internet transmissions, on defendant’s websites and on social media. The court agreed with the district court’s liability determination that there is a likelihood of confusion between plaintiff’s and defendant’s trademarks. The court concluded, however, that, in restricting the scope of the injunction, the district court misapplied the law, and failed to adequately protect the interests of plaintiff and the public from likely confusion. The court concluded that it is correct that a senior user must prove a probability of confusion in order to win an injunction. But it does not follow that the injunction may extend only into areas for which the senior user has shown probability of confusion. Accordingly, the court affirmed in part, vacated in part, and expended the scope of the injunction, remanding for further consideration. View "Guthrie Healthcare Sys. v. ContextMedia, Inc." on Justia Law

ISC filed suit against SU and Sondra Schneider, alleging that SU's use of ISC's certification mark violated the Lanham Act, 15 U.S.C. 1051 et seq., and constituted infringement under 15 U.S.C. 1114, false designation of origin and false advertising under 15 U.S.C. 1125(a), and trademark dilution under 15 U.S.C. 1125(c), and that SU’s use of the mark constituted unfair competition under the Connecticut Unfair Trade Practices Act (CUTPA), Conn. Gen. Stat. 42–110a et seq. The district court granted summary judgment to defendants. The court held that nominative fair use is not an affirmative defense to a claim of infringement under the Lanham Act. In cases involving nominative use, in addition to considering the Polaroid factors, courts are to consider (1) whether the use of the plaintiff’s mark is necessary to describe both the plaintiff’s product or service and the defendant’s product or service, that is, whether the product or service is not readily identifiable without use of the mark; (2) whether the defendant uses only so much of the plaintiff’s mark as is necessary to identify the product or service; and whether the defendant did anything that would, in conjunction with the mark, suggest sponsorship or endorsement by the plaintiff holder, that is, whether the defendant’s conduct or language reflects the true or accurate relationship between plaintiff’s and defendant’s products or services. When considering these factors, courts must be mindful of the different types of confusion relevant to infringement claims. Because the district court failed to consider the Polaroid factors and because its consideration of the relevant nominative fair use factors was based on incorrect assumptions, the court vacated the district court’s grant of summary judgment on the infringement claims. The court vacated the grant of summary judgment as to the false designation of origin and false advertising claims, and the CUTPA claims. The court affirmed as to the dilution claims and remanded for further proceedings. View "Int'l Info. Sys. Sec. Certification Consortium, Inc. v. Security Univ., LLC" on Justia Law

After Ashley Reed sold counterfeit Fendi goods to Burlington and others, Fendi filed suit against Ashley Reed. USF&G, Ashley Reed's insurer, filed suit against Fendi and Ashley Reed, seeking a declaration that it owed no duty under the Policies to indemnify Ashley Reed with respect to the first underlying action. Fendi asserted a counterclaim seeking indemnification for the judgment entered against Ashley Reed in the First Action.  Burlington was given permission to intervene to seek indemnification under the Policies for the judgment entered against Ashley Reed in the second underlying action. The court agreed with the district court's holding that the basis of Ashley Reedʹs liability ʺwas the sale - not the advertising - of counterfeit Fendi products,ʺ and therefore there was no basis for indemnification under the Policies. Because the losses were not the result of an advertising injury, the court affirmed the judgment. View "United States Fidelity and Guaranty Co. v. Fendi Adele S.R.L." on Justia Law

Apotex filed suit alleging that Acorda filed a sham citizen petition with the FDA to hinder approval of Apotex's competing formulation of a drug for treating spasticity, in violation of Section 2 of the Sherman Act, 15 U.S.C. 2, and that Acorda violated the Lanham Act's, 15 U.S.C. 1125(a)(1), proscription on false advertising. The district court ruled that the simultaneous approval by the FDA of Apotex’s drug application and its denial of Acorda’s citizen petition was by itself insufficient to support a Sherman Act claim. The district court then granted summary judgment and dismissed all of Apotex’s false advertising claims on the grounds that (with the exception of one graph) no representation was literally false or likely to mislead consumers. In regard to the graph, Apotex failed to show that the false depiction would meaningfully impact consumers’ purchasing decisions. The court concluded that, although precedent supports an inference that a citizen petition is an anticompetitive weapon if it attacks a rival drug application and is denied the same day that the application is approved, that inference has been undercut by recent FDA guidance.  As to false advertising, the court agreed with the district court that no reasonable jury could have found that Acorda made literally false or misleading representations in its advertisements, with the exception of a single representation that Apotex has failed to show affected decisions to purchase. Accordingly, the court affirmed the judgment. View "Apotex Inc. v. Acorda Therapeutics, Inc." on Justia Law

Hyson USA and Hyson 2U are food distributors. Hyson USA is wholly owned by its president, Tansky, and has operated since 2006. Kaminskas was one of its managers. In 2012, Hyson USA encountered serious financial difficulty, culminating in the loss of its liability insurance, forcing the company to suspend operations. Months later, Kaminskas established Hyson 2U. Hyson USA transferred its branded inventory and equipment to the new company. Hyson 2U leased the warehouse from which Hyson USA had operated. Tansky then switched roles with Kaminskas and went to work at the new company. Hyson 2U operated in the same manner and in the same markets as Hyson USA. In 2014, Tansky was fired. He and Hyson USA, again operational, sued Hyson 2U and Kaminskas alleging trademark infringement under the Lanham Act. The judge dismissed the trademark claims, citing acquiescence, and relinquished supplemental jurisdiction over the state-law claims. The Seventh Circuit reversed, stating that acquiescence is a fact-intensive equitable defense that is rarely capable of resolution on a motion to dismiss. View "Hyson USA Inc. v. Hyson 2U, Ltd." on Justia Law

Cordua owns and operates five restaurants branded as “Churrascos,” the first of which opened in 1988. The restaurants serve South American dishes, including grilled meats; the menu describes chargrilled “Churrasco Steak” as “our signature.”.Cordua obtained the 321 registration for the service mark CHURRASCOS (in standard character format) in 2008, for use in connection with “restaurant and bar services; catering.” In 2011, Cordua filed a trademark application, seeking protection of the stylized form of CHURRASCOS for use in connection with “Bar and restaurant services; Catering.” The trademark examiner rejected the application as merely descriptive and on the basis that “the applied-for mark is generic for applicant’s services,” barring registration under Lanham Act, 15 U.S.C. 1052(e)(1).. The examiner concluded that the term “churrascos” “refer[s] to beef or grilled meat more generally” and that the term “identifies a key characteristic or feature of the restaurant services, namely, the type of restaurant.” The Trademark Trial and Appeal Board agreed and held that Cordua’s underlying 321 Registration had no bearing on whether the stylized form of CHURRASCOS was generic. The Federal Circuit affirmed, finding that the stylized form of CHURRASCOS generic as applied to restaurant services and, therefore, trademark-ineligible View "In re: Cordua Restaurants, Inc." on Justia Law

OMSJ filed suit against defendant alleging, inter alia, trademark infringement in violation of the Lanham Act, 15 U.S.C. 1051 et seq., and the Texas Business and Commerce Code. Defendant created two websites to deconstruct the OMSJ's alleged misrepresentation of the effects of HIV and AIDS and allegedly false research that the OMSJ promulgated on its “HIV Innocence Group” webpage. The district court dismissed the Lanham Act claim, declined to exercise pendent jurisdiction over the state law claims, and denied defendant’s subsequent request for an award of attorney’s fees stemming from the allegedly frivolous trademark claims. In light of recent Supreme Court precedent, Octane Fitness, LLC v. Icon Health and Fitness, Inc., which expanded the standard under which a lawsuit presents an “exceptional case” meriting the award of attorney fees, the court reversed and remanded for reconsideration. The court merged Octane Fitness’s definition of “exceptional” into its interpretation of section 1117(a) of the Lanham Act and construe its meaning as follows: an exceptional case is one where (1) in considering both governing law and the facts of the case, the case stands out from others with respect to the substantive strength of a party’s litigating position; or (2) the unsuccessful party has litigated the case in an “unreasonable manner.” The district court must address this issue “in the case-by-case exercise of their discretion, considering the totality of the circumstances.” View "Baker v. Deshong" on Justia Law

Millennium filed suit against Ameritox, alleging claims of trade dress infringement under the Lanham Act, 15 U.S.C. 1125(a), and unfair competition under California Business and Professions Code section 17200. Millennium and Ameritox compete in the medication monitoring industry, and sell urine-testing services to healthcare providers who treat chronic pain patients with powerful pain medications. The district court granted Ameritox summary judgment. At issue is whether a product’s visual layout is functional, defeating a claim for trade dress infringement. The court concluded that, under the Au-Tomotive Gold two-step test, the district court erred by granting summary judgment to Ameritox on Millennium’s trade dress claim. In regard to the first step, genuine issues of material fact remain regarding whether Millennium's claimed trade dress has any utilitarian advantages. Under the second step, because Millennium has presented evidence that the graphical format served in part a source identifying function, Millennium has presented enough evidence to allow a jury to assess the question of aesthetic functionality. Accordingly, the court reversed and remanded. View "Millennium Labs. v. Ameritox, Ltd." on Justia Law