Justia Trademark Opinion Summaries

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

Romag sells patented magnetic snap fasteners under its registered trademark. Fossil designs, markets, and distributes fashion accessories, including small leather goods, manufactured by independent businesses. In 2002, the companies entered into an agreement for use of ROMAG fasteners in Fossil products. Fossil instructed its authorized manufacturers to purchase ROMAG fasteners from Romag licensee Wing Yip. Fossil’s authorized manufacturer, Superior, purchased tens of thousands of ROMAG fasteners from Wing Yip from 2002-2008. In 2008-2010, Superior purchased substantially fewer fasteners. In 2010, Romag discovered that certain Fossil handbags contained counterfeit fasteners. Romag sued, alleging patent infringement, trademark infringement, false designation of origin, unfair competition, and violation of Connecticut’s Unfair Trade Practices Act. Romag sought a preliminary injunction on November 23, three days before “Black Friday,” the highest-volume U.S. shopping day. The motion was granted on November 30. In 2014, a jury found Fossil liable; awarded a reasonable royalty of $51,052.14 for patent infringement; and, for trademark infringement, made an advisory award of $90,759.36 of Fossil’s profits under an unjust enrichment theory, and $6,704,046.00 of profits under a deterrence theory. Despite its deterrence award, the jury found that infringement was not willful. The Federal Circuit affirmed the district court’s holding that Romag’s delay in bringing suit until just before “Black Friday” constituted laches, its reduction of the reasonable royalty award by 18%, and its holding that Romag was not entitled to an award of profits because the infringement was not willful. View "Romag Fasteners, Inc. v. Fossil, Inc." on Justia Law

BBC, owner of the FLANAX trademark in Mexico, and its sister company, Bayer, filed suit against Belmora, owner of the FLANAX trademark in the United States, contending that Belmora used the FLANAX mark to deliberately deceive Mexican-American consumers into thinking they were purchasing BCC’s product. The court concluded that the Lanham Act’s, 15 U.S.C. 1125, plain language contains no unstated requirement that a section 43(a) plaintiff have used a U.S. trademark in U.S. commerce to bring a Lanham Act unfair competition claim; the Supreme Court’s guidance in Lexmark International, Inc. v. Static Control Components, Inc. does not allude to one, and the court's prior cases either only assumed or articulated as dicta that such a requirement existed; and therefore, the district court erred in imposing such a condition precedent upon Bayer’s claims. The court also concluded that BCC has adequately pled a section 43(a) false association claim for purposes of the zone of interests prong; BCC's allegations reflect the claim furthers the section 45 purpose of preventing the deceptive and misleading use of marks in commerce within the control of Congress; and BCC has also alleged injuries that are proximately caused by Belmora’s violations of the false association statute. Therefore, the court held that BCC has sufficiently pled a section 43(a) false association claim to survive Belmora’s Rule 12(b)(6) motion. Because these statements are linked to Belmora’s alleged deceptive use of the FLANAX mark, the court is satisfied that BCC’s false advertising claim, like its false association claim, comes within the Act’s zone of interests. The court inferred that the alleged advertisements contributed to the lost border sales pled by BCC, and that the claim also satisfies Lexmark’s proximate cause prong. Further, the court agreed with Bayer that the district court erred in overturning the TTAB’s section 14(3) decision because it read a use requirement into the section that is simply not there. Accordingly, the court vacated and remanded. View "Belmora LLC v. Bayer Consumer Care AG" on Justia Law