Justia Trademark Opinion Summaries

Appellant filed suit against the Republic of Cuba and others in Florida state court, alleging that appellees tortured appellant and that appellant continues to suffer the consequences of the torture. Appellant was incarcerated in Cuba in the 1960s and 1970s, and endured unlawful incarceration and torture committed by the Cuban government and its codefendants. Appellant obtained a default judgment in state court and now seeks to execute that judgment on patents and trademarks held or managed by appellees in this action, who are allegedly agents and instrumentalities of Cuba. The court affirmed the district court's denial of appellant's request because the Florida state court lacked subject matter jurisdiction to grant the default judgment.View "Jerez v. Republic of Cuba" on Justia Law

Pom Wonderful, owner of the "POM" standard character mark, filed a trademark infringement claim against Pur to stop Pur from using the word "pom" on its pomegranate-flavored energy drink. On appeal, Pom Wonderful challenged the district court's order of its motion for a preliminary injunction. The court reversed, holding that the district court abused its discretion in finding that Pom Wonderful is unlikely to succeed on the merits of its claim. Because the district court's decision to deny Pom Wonderful's motion for a preliminary injunction was tainted by its mistaken likelihood-of-success determination, the court remanded with instructions to the district court to consider whether Pom Wonderful meets its burden of proving the other elements of a preliminary injunction. View "Pom Wonderful v. Hubbard" on Justia Law

St. Helena conducts a 10-day residential health improvement program at its California in-patient facility. St. Helena applied to the U.S. Patent and Trademark Office to register the mark “TAKETEN,” identifying the service as “[h]ealth care services, namely, evaluating weight and lifestyle health and implementing weight and lifestyle health improvement plans in a hospital-based residential program” in class 44. The examiner refused to register the mark, citing likelihood of confusion with the “TAKE 10!” mark shown in the 657 Registration and commonly owned U.S. Registration 182 for the mark “TAKE 10! (and Design). Both cited registrations are for “printed manuals, posters, stickers, activity cards and educational worksheets dealing with physical activity and physical fitness” in class 16. The registration for “TAKE 10! (and Design)” also identifies goods in class 9: “pre-recorded videocassettes featuring physical activity and physical fitness promotion programs.” The Trademark Trial and Appeal Board affirmed under 15 U.S.C. 1052(d). The Federal Circuit reversed, agreeing with the Board’s assessment of the respective marks themselves, but holding that substantial evidence did not support the denial based on the 657 Registration, given the dissimilarities in the respective services and goods and the high degree of consumer care. View "In re: St. Helena Hosp." on Justia Law

Two companies, Derma Pen, LLC and 4EverYoung, entered a sales distribution agreement. Under the agreement, Derma Pen, LLC obtained the exclusive right to use the DermaPen trademark in the United States. 4EverYoung had a contractual right of first refusal, allowing purchase of Derma Pen, LLC’s U.S. trademark rights upon termination of the distribution agreement. Derma Pen, LLC terminated the agreement, and 4EverYoung wanted to exercise its contractual right of first refusal. The parties reached an impasse, and 4EverYoung started using the DermaPen trademark in the United States. Derma Pen, LLC sued and requested a preliminary injunction to prevent 4EverYoung’s use of the trademark. The district court declined the request, concluding that 4EverYoung was likely to prevail. This appeal to the Tenth Circuit followed, presenting the question: whether Derma Pen, LLC was likely to prevail on its claims of trademark infringement and unfair competition by proving a protectable interest in the trademark. The Court concluded Derma Pen, LLC was likely to prevail by satisfying this element. The district court was reversed and the case remanded for further proceedings. View "Derma Pen v. 4EverYoung Limited" on Justia Law

After certification to the Supreme Court of Florida, the Supreme Court of Florida answered the following question in the affirmative: Does the Florida Virtual School’s statutory authority to “acquire, enjoy, use, and dispose of . . . trademarks and any licenses and other rights or interests thereunder or therein,” and the designation of its board of trustees as a “body corporate with all the powers of a body corporate and such authority as is needed for the proper operation and improvement of the Florida Virtual School,” necessarily include the authority to file an action to protect those trademarks? Given the Supreme Court of Florida's ruling, Florida Virtual School has the authority, and the standing, to file an action to protect its trademarks. Accordingly, the court reversed the district court's dismissal of Florida Virtual School's trademark infringement suit against K12 and K12 Florida, and remanded for further proceedings. View "Florida Virtual School v. K12, Inc., et al." on Justia Law

WWE seeks ex parte seizure and temporary restraining orders against unnamed defendants under the ex parte seizure provision of the Trademark Counterfeiting Act, 15 U.S.C. 1116. WWE alleged that defendants work as "fly-by-night" counterfeiters, setting up shop near WWE events and cannibalizing WWE's merchandise sales by purveying unauthorized products. The district court denied relief and certified its order for interlocutory appeal. The court concluded that, in this case, the persons against whom seizure would be ordered are readily identifiable as any non-affiliated person purporting to sell WWE merchandise at or near a live WWE event; WWE has met its burden under section 1116(d), and the orders sought here should issue; and the court did not address the validity of a provision of the proposed order purporting to deputize private citizens, leaving it to the district court to address in the first instance. Accordingly, the court vacated and remanded for further proceedings. View "World Wrestling Entertainment v. Unidentified Part" on Justia Law

The Florida Virtual School sued K12, Inc. and K12, Florida, LLC (collectively, K12) for trademark infringement. K12 asserted that the Florida Virtual School had no standing because the authority to file an action with regard to the trademarks at issue was vested exclusively in the Florida Department of State. The district court dismissed the case for lack of standing. On appeal, the Eleventh Circuit certified a question to the Supreme Court for determination under Florida law. The Supreme Court answered that the Florida Virtual School’s statutory authority to acquire, enjoy, use, and dispose of trademarks, and the designation of its board of trustees as a body corporate with the powers of a body corporate and the authority for the proper operation and improvement of the School, necessarily included the authority to file an action to protect those trademarks. View "Fla. Virtual Sch. v. K12, Inc." on Justia Law

After leaving Gensler, an architectural firm with projects throughout the world, where he had been a Design Director, Strabala opened his own firm, 2Define Architecture. Strabala stated online that he had designed five projects for which Gensler is the architect of record. Gensler contends that Strabala’s statements, a form of “reverse passing off,” violated section 43(a) of the Lanham Act, 15 U.S.C.1125(a). The district court dismissed, ruling that, because Strabala did not say that he built or sold these structures, he could not have violated section 43(a), reading the Supreme Court decision Dastar Corp. v. Twentieth Century Fox (2003), to limit section 43(a) to false designations of goods’ origin. The Seventh Circuit vacated, reasoning that Gensler maintains that Strabala falsely claims to have been the creator of intellectual property. View "M. Arthur Gensler, Jr. & Assocs., Inc. v. Strabala" on Justia Law

Fortres develops and sells a desktop management program called “Clean Slate” and holds a federally-registered trademark for use of that name to identify “[c]omputer software used to protect public access computers by scouring the computer drive back to its original configuration upon reboot.” When Warner Bros. Entertainment used the words “the clean slate” to describe a hacking program in the movie, The Dark Knight Rises, Fortres experienced a precipitous drop in sales of its software. Fortres sued, alleging that the use of the words “clean slate” in reference to the software in its movie infringed its trademark in violation of Lanham Act, 15 U.S.C. 1114, 1125, and Indiana unfair competition law. The district court dismissed, reasoning that Fortres had not alleged a plausible theory of consumer confusion, upon which all of its claims depend, and that Warner Bros.’ use of the words “the clean slate” was protected by the First Amendment. The Seventh Circuit affirmed without reaching the constitutional question. Juxtaposed against the weakness of all the other relevant factors, the similarity of the marks is not enough to establish confusion. Trademark law protects the source-denoting function of words used in conjunction with goods and services, not the words themselves.View "Fortres Grand Corp. v. Warner Bros. Entm't, Inc." on Justia Law

Plaintiff is the marketer, distributor, and seller of 5-hour ENERGY (FHE), an “energy shot,” which is an energy drink sold and consumed in small portions. Plaintiff began selling FHE in 2004. FHE was not the first energy shot on the market, but was the first to achieve widespread success and was unique in being marketed FHE to adults as a replacement for an afternoon cup of coffee or a caffeinated soda. Plaintiff submitted “5-hour ENERGY” for trademark registration with the Patent and Trademark Office, which rejected the application in January 2005, deeming the mark too descriptive to be eligible for protection. Plaintiff placed FHE on the Supplemental Register in September 2005 and secured a trademark for “5-hour ENERGY” in August 2011. Plaintiff also protected its mark and market position through litigation. Defendants have marketed dietary supplements since the mid-1990s. In 2008, defendants began to market and sell “6 Hour Energy Shot,” in a bottle resembling the FHE bottle. In a suit under the Lanham Act, 15 U.S.C. 1051, the district court found infringement of plaintiff’s trademark and trade dress, then entered an order of contempt after the defendants violated a permanent injunction entered. The Sixth Circuit affirmed.View "Innovation Ventures, LLC v. N2G Distrib., Inc." on Justia Law