Justia Trademark Opinion Summaries

Hetronic (a U.S. company) manufactures remote controls for construction equipment. Abitron Austria, once a licensed Hetronic distributor, claimed ownership of the rights to much of Hetronic’s intellectual property and began employing Hetronic’s marks on products it sold. Hetronic sued Abitron in the Western District of Oklahoma under the Lanham Act, 15 U.S.C. 1114(1)(a), 1125(a)(1). A jury awarded Hetronic approximately $96 million. The Tenth Circuit affirmed, concluding that the Lanham Act extended to “all of [Abitron’s] foreign infringing conduct.”The Supreme Court vacated. Applying the presumption against extraterritoriality, the relevant sections of the Lanham Act are not extraterritorial and extend only to claims where the infringing use in commerce is domestic. Neither provision provides an express statement of extraterritorial application or any other clear indication that it is one of the “rare” provisions that nonetheless applies abroad. Both simply prohibit the use “in commerce” of protected trademarks when that use “is likely to cause confusion.” Because sections 1114(1)(a) and 1125(a)(1) are not extraterritorial, the Court considered the location of the conduct relevant to the focus of the statutory provisions: the unauthorized “use in commerce” of a protected trademark under certain conditions. “Use in commerce” provides the dividing line between foreign and domestic applications of these provisions. View "Abitron Austria GmbH v. Hetronic International, Inc." on Justia Law

In 2018, Spireon sought to register the mark FL FLEX, for “[e]lectronic devices for tracking the locations of mobile assets" such as trailers, cargo containers, and transportation equipment, using global positioning systems and cellular communication networks. An Examining Attorney approved the application. Flex opposed the registration, citing priority and the likelihood of confusion with Flex’s marks, FLEX, FLEX (stylized), and FLEX PULSE, registered in 2016-2017, for services including supply chain management services, transportation logistics services, and inventory management, and computers, computer software for use in supply chain management, logistics and operations management, quality control, inventory management, scheduling, and related services.The Trademark Trial and Appeal Board Board sustained Flex’s opposition. The Federal Circuit vacated. The Board erred in analyzing conceptual strength under the first DuPont factor, the similarity of the marks, rather than the sixth DuPont factor. The existence of third-party registrations on similar goods can bear on a mark’s conceptual strength. Third-party registrations containing an element that is common to both the opposer’s and the applicant’s marks can show that that element has “a normally understood and well-recognized descriptive or suggestive meaning.” Flex failed to show that the identical marks for identical goods were not used in the marketplace, but on remand, should be allowed to make such a showing. The Board also erred by comparing FL FLEX to FLEX PLUS rather than the relevant mark. View "Spireon, Inc. v. Flex Lrd." on Justia Law

VIP makes a chewable dog toy that looks like a Jack Daniel’s whiskey bottle; the words “Jack Daniel’s” become “Bad Spaniels.” “Old No. 7 Brand Tennessee Sour Mash Whiskey” turns into “The Old No. 2 On Your Tennessee Carpet.” Jack Daniel’s demanded that VIP stop selling the toy.VIP sought a declaratory judgment that Bad Spaniels neither infringed nor diluted Jack Daniel’s trademarks. Jack Daniel’s counterclaimed. The Lanham Act defines a trademark by its primary function: identifying a product’s source and distinguishing that source from others. A typical infringement case examines whether the defendant’s use of a mark is “likely to cause confusion, or to cause mistake, or to deceive,” 15 U.S.C. 1114(1)(A), 1125(a)(1)(A). A typical dilution case considers whether the defendant “harm[ed] the reputation” of a trademark. VIP cited the “Rogers test,” which requires dismissal of an infringement claim when “expressive works” are involved unless the complainant can show either that the challenged use of a mark “has no artistic relevance to the underlying work” or that it “explicitly misleads as to the source or the content of the work.” The Ninth Circuit ruled in favor of VIP.The Supreme Court vacated. When an alleged infringer uses a trademark as a designation of source for the infringer’s own goods, the Rogers test does not apply. Consumer confusion about source is most likely to arise when someone uses another’s trademark as a trademark. Bad Spaniels was not automatically entitled to Rogers’ protection because it “communicate[d] a humorous message.” VIP used the Bad Spaniels trademark and trade dress as source identifiers. Although VIP’s effort to parody Jack Daniel’s does not justify the application of the Rogers test, it may make a difference in the standard trademark analysis on remand. View "Jack Daniel's™ Properties, Inc. v. VIP Products LLC" on Justia Law

Plaintiff  Enigma Software Group USA LLC (“Enigma”), a computer security software provider, sued a competitor, Defendant-Appellee Malwarebytes, Inc. (“Malwarebytes”), for designating its products as “malicious,” “threats,” and “potentially unwanted programs” (“PUPs”). Enigma’s operative complaint alleged a false advertising claim under Section 43(a) of the Lanham Act, 15 U.S.C. Section 1125(a)(1)(B), and tort claims under New York law. Malwarebytes moved to dismiss under Federal Rule of Civil Procedure 12(b)(6). The district court granted the motion, concluding that all of Enigma’s claims were insufficient as a matter of law.   The Ninth Circuit affirmed in part and reversed in part. In the context of this case, the panel concluded that when a company in the computer security business describes a competitor’s software as “malicious” and a “threat” to a customer’s computer, that is more a statement of objective fact than a non-actionable opinion. It is potentially actionable under the Lanham Act, provided Enigma plausibly alleges the other elements of a false advertising claim. The panel disagreed with the district court and concluded that Malwarebytes is subject to personal jurisdiction in New York. As this action was initially filed in New York, the law of that state properly applies.   Because the panel held that the Lanham Act and NYGBL Section 349 claims should not have been dismissed, the panel concluded that the tortious interference with business relations claim should similarly not have been dismissed. The panel agreed with the district court regarding the dismissal of the claim for tortious interference with contractual relations, however, and affirmed the dismissal of that claim. View "ENIGMA SOFTWARE GROUP USA, LLC V. MALWAREBYTES, INC." on Justia Law

Plaintiff-Appellant M Welles and Associates, Inc. (“Welles”) appealed a district court's decision concluding that Defendant-Appellee Edwell, Inc. was not liable for trademark infringement, thereby granting granted final judgment for Edwell. "The marks at issue are undoubtedly similar:" Welles used the mark "EDWEL," whereas Edwell uses the mark "EDWELL." Similarity notwithstanding, the magistrate judge found that consumers were unlikely to be confused by the marks because Edwell never intended to copy Welles’s mark, the parties operated in different markets, consumers were likely to exercise a high degree of care in selecting the parties’ services, and there was almost no evidence of actual confusion. On appeal, Welles argued the magistrate judge applied an erroneous legal standard in analyzing likelihood of confusion, urged the Tenth Circuit Court of Appeals to adopt a presumption of confusion for cases like this one, and contended that the magistrate judge clearly erred in finding no likelihood of confusion. The Tenth Circuit rejected each of Welles’s arguments and affirmed final judgment for Edwell. View "M Welles & Associates v. Edwell" on Justia Law

Appellee Jason Scott Collection, Inc. (JSC) and Appellants Trendily Furniture, LLC, Trendily Home Collection, LLC and Rahul Malhotra (collectively, “Trendily”) are high-end furniture manufacturers that sell their products in the Texas market. Trendily intentionally copied three unique furniture designs by JSC and sold them to Texas retailers. The district court granted summary judgment to JSC on its copyright claim and then held Trendily liable on the trade dress claim following a bench trial. On appeal, Trendily challenged only the latter ruling, arguing that trade dress liability is precluded here because JSC did not demonstrate either secondary meaning or the likelihood of consumer confusion.   The Ninth Circuit affirmed the district court’s decision. The panel held that the district court did not clearly err in finding that JSC did so. The panel wrote that Trendily’s clear intent to copy nonfunctional features of JSC’s pieces supports a strong inference of secondary meaning. Noting that copyright and trademark are not mutually exclusive, the panel rejected Trendily’s argument that it should be held liable only under the Copyright Act. The panel held that the district court properly considered several other factors, including that the JSC pieces were continuously manufactured and sold since 2004, that JSC had a longstanding and well-known presence in the high-end furniture market, and that JSC’s furniture was distinctive in the minds of purchasers. The panel held that the district court did not err in finding that there was a likelihood of confusion between the JSC pieces and the Trendily pieces. View "JASON SCOTT COLLECTION, INC. V. TRENDILY FURNITURE, LLC, ET AL" on Justia Law

Varco, L.P. (“Varco”), an oil and gas drilling company, purchased the assets of another drilling company, including U.S. Patent No. 5,474,142 (the “’142 Patent”). Varco’s parent company, Varco International, Inc., and a competitor, National Oilwell, Inc., completed a merger to form National Oilwell Varco, Inc. It was understood that Varco, as Varco International, Inc.’s operating company, would transfer its assets to the newly formed entity’s operating company: Plaintiff-Appellee/Cross-Appellant National Oilwell Varco, L.P. (“NOV”).  NOV filed an action in district court alleging that Defendant-Appellant/CrossAppellee Auto-Dril, Inc. (“Auto-Dril”) infringed the ’142 Patent (the “Underlying Action”). Auto-Dril and NOV entered into a confidential settlement agreement that was intended to end their litigation over the ’142 Patent (the “Settlement Agreement”). The parties appealed various holdings that both preceded and followed a trial regarding their 2011 Settlement Agreement.   The Fifth Circuit held that it lacks jurisdiction over Auto-Dril’s counterclaim for being fraudulently induced into entering the Settlement Agreement. The court reversed the ruling granting summary judgment for NOV on Auto-Dril’s claim for breach of the Settlement Agreement. The court reversed the dismissal of NOV’s claim for breach of the Settlement Agreement and remanded NOV’s JMOL motion for reconsideration. The court explained that here, NOV’s conduct did not rise to the level of a fraud on the court. Specifically, there is no clear and convincing evidence that NOV was cognizant that it did not own the ’142 Patent while it was litigating the Underlying Action. View "National Oilwell Varco v. Auto-Dril" on Justia Law

DayCab designs, manufactures, and sells conversion kits that convert a sleeper tractor cab into a tractor that does not have a sleeper unit (a daycab). DayCab’s founder, Wagers, started his conversion kit business in 1997 and created the first Peterbilt extended-cab conversion kits on the market, the “Fat Albert” models. Wagers stated that he “carefully selected” the “angles, curves, tapers, lines, profile and appearance” of the DayCab conversion kit “with the aim of making a very distinctive and attractive kit,” but “any number of other angles, curves, tapers, lines, profile and appearance” would have also served as a Peterbilt conversion product.Osman began making conversion kits in 1998 and obtained a utility patent for a panel used to convert a sleeper truck cab into a day cab. Each kit is manufactured and sold with an identification card with Osman’s company’s logo embedded in the fiberglass. Those companies named their conversion-kit products: “Cousin Albert,” “Uncle Albert,” and “Fat Boy.”DayCab sued, asserting claims under the Lanham Act, 15 U.S.C. 1125(a), for trade dress infringement. The district court entered summary judgment for the defendants. The Sixth Circuit reversed. Genuine issues of material fact remain regarding the non-functionality element of DayCab’s trade dress claim as well as on the elements of secondary meaning and the likelihood of confusion. View "DayCab Co, Inc. v. Prairie Technology, LLC" on Justia Law

This appeal concerns a trademark dispute between two credit unions: “Elevate Federal Credit Union” and “Elevations Credit Union.” Elevate sued for a declaratory judgment of noninfringement, and Elevations counterclaimed for trademark infringement under the Lanham Act. The parties proffered expert witnesses and challenged the admissibility of the adversary’s expert testimony. The district court excluded opinion testimony by Elevations’ expert witness and granted summary judgment to Elevate on its claim for a declaratory judgment and on Elevations’ counterclaim. Elevations appealed these rulings. The appeal presented two issues for the Tenth Circuit's resolution: (1) whether the district court acted within its discretion when disallowing Elevations' expert testimony because Elevations failed to disclose information that the expert witness considered; and (2) whether the marks belong to credit unions with differing eligibility restrictions in distinct geographic markets, could the presence of some similarities create a likelihood of confusion. The Tenth Circuit concluded the district court did not abuse its discretion in disallowing the expert testimony, and the differing eligibility restrictions in differing markets did not create a likelihood of confusion. View "Elevate Federal Credit Union v. Elevations Credit Union" on Justia Law

Microsoft Corporation offers email security software to shield users from cyber threats. TocMail, Inc. is a relative newcomer to the cybersecurity scene and offers a product geared towards a specific type of threat called Internet Protocol (IP) evasion. TocMail sued Microsoft for false advertising—all within two months. In its complaint, TocMail alleged that Microsoft misled the public into believing that Microsoft’s product offered protection from IP evasion. And TocMail—who had been selling its product for two months, spent almost nothing on advertising and had not made a single sale—alleged billions of dollars in lost profits. TocMail brought two counts: false and misleading advertising under the Lanham Act (count one); and contributory false and misleading advertising under the Lanham Act. The district court entered summary judgment for Microsoft.   The Eleventh Circuit vacated the district court’s summary judgment order and remanded to the district court with instructions to dismiss this case without prejudice for lack of standing. The court explained that to establish an injury, in fact, a plaintiff must show “an invasion of a legally protected interest which is (a) concrete and particularized; and (b) actual or imminent, not conjectural or hypothetical.” The court wrote that TocMail failed to meet this standard because TocMail has offered no evidence from which a reasonable jury could find that it suffered any injury. TocMail didn’t offer testimony from any witness saying that he or she would have purchased TocMail’s product if not for Microsoft’s advertising. TocMail didn’t offer any expert testimony calculating TocMail’s lost sales from consumers who went with Microsoft. View "TocMail Inc. v. Microsoft Corporation" on Justia Law