Justia Trademark Opinion Summaries

After Radiance published an article online entitled “NAACP: National Association for the Abortion of Colored People” that criticized the NAACP’s stance on abortion, the NAACP sent Radiance a cease-and-desist letter. Radiance sought a declaratory judgment that it had not infringed any NAACP trademarks and the NAACP filed counterclaims alleging trademark infringement and dilution. The court concluded that the NAACP does not have actionable claims for trademark infringement in this case; Radiance's use of the NAACP's marks or colorable imitation falls squarely within the exceptions to trademark dilution specifically included in the Lanham Act, 15 U.S.C. 1051 et seq., to avoid encroaching on free speech rights; and therefore, the court reversed the district court's injunction and remanded with directions that defendant's counterclaims be dismissed. View "The Radiance Foundation, Inc. v. NAACP" on Justia Law

A jury found that Samsung smartphones infringed and diluted Apple’s patents and trade dresses amd awarded Apple $290,456,793. The Federal Circuit affirmed the verdict on the design patent infringements, the validity of two utility patent claims, and the damages awarded for the design and utility patent infringements, but reversed findings that the asserted trade dresses are protectable. Apple claimed elements from its iPhone 3G and 3GS products to define an asserted unregistered trade dress: a rectangular product with four evenly rounded corners; a flat, clear surface covering the front of the product; a display screen under the clear surface; substantial black borders above and below the display screen and narrower black borders on either side of the screen; and when the device is on, a row of small dots on the display screen, a matrix of colorful square icons with evenly rounded corners within the display screen, and an unchanging bottom dock of colorful square icons with evenly rounded corners set off from the display’s other icons. The registered trade dress claims the design details in each of the 16 icons on the iPhone’s home screen framed by the iPhone’s rounded-rectangular shape with silver edges and a black background. View "Apple, Inc. v. Samsung Elecs. Co., Inc." on Justia Law

PV applied to register PRETZEL CRISPS in standard character format for “pretzels” on an intent-to-use basis under the Lanham Act, 15 U.S.C. 1051. The trademark examiner refused registration on the Principal Register, finding the proposed mark merely descriptive. PV: amended its identification of goods to “pretzel crackers;” disclaimed the exclusive right to use “pretzel” apart from the mark as a whole; and obtained registration on the Supplemental Register. Years later, PV again sought to register PRETZEL CRISPS on the Principal Register, identifying October, 2004 as its first use of the mark in commerce, disclaiming the exclusive right to use the term “pretzel” apart from the mark as shown, and claiming acquired distinctiveness in the mark as a whole. Frito-Lay filed opposition, arguing that the term PRETZEL CRISPS is generic for pretzel crackers and not registrable and that PRETZEL CRISPS is highly descriptive of a type of cracker product and has not acquired distinctiveness. Frito-Lay also moved to cancel the supplemental registration. The Trademark Trial and Appeal Board granted the petition for cancellation, finding that “pretzel crisps” was a compound term, not a phrase, and was generic. The Federal Circuit vacated: the Board overlooked or disregarded a genericness survey as to which it apparently found no flaw and applied the incorrect legal standard in assessing whether the term was generic. View "Princeton Vanguard, LLC v. Frito-Lay of N. Am., Inc." on Justia Law

Burford agreed to facilitate the purchase and sale of accounting practices for APS. The parties initially signed a contract assigning Louisiana to Burford. They later orally agreed that Burford should also cover Alabama, Mississippi, Tennessee, and Kentucky. APS terminated the contract. Burford sued for breach of contract; APS filed a counterclaim under the Lanham Act, 15 U.S.C. 1051, claiming that Burford started a rival business, “American Accounting Practice Sales,” after APS terminated his contract. APS obtained summary judgment on the contract claim, arguing that the contract was terminable at will. APS voluntarily dismissed its counterclaim with prejudice. As the prevailing party on the Lanham Act claim, Burford sought attorney fees. The district court denied the motion, reasoning that APS’s Lanham Act claim could have been pursued by a rational party seeking to protect its trademark. The Seventh Circuit reversed grant of summary judgment on the contract claim, but affirmed the denial of attorney fees. The contract provided that it could be terminated by APS only if Burford violated the terms of the agreement; even if it was indefinite in duration, the parties contracted around the default rule making such contracts terminable at will. View "Burford v. Accounting Practice Sales, Inc" on Justia Law

USPA appealed from a contempt order finding USPA in violation of a permanent injunction. The district court held that USPA's Double Horsemen Mark on eyewear products was confusingly similar to the logo used by PRL. The district court concluded that the Fragrance Injunction barred use of the Double Horsemen Mark in every market but that for apparel. The court, however, agreed with USPA that the underlying injunction did not enjoin all uses of the mark. Because of the often unpredictable results of market-by-market analysis, a finding that the Double Horsemen Mark is, when used on eyewear, confusingly similar to PRL’s marks, while sufficient to find liability in an infringement proceeding, is not sufficient to support a contempt finding. The fact that the Apparel Litigation does not shield USPA’s use of a Double Horsemen Mark on eyeglasses from an infringement finding does not, without more, render it liable for infringement in that and all other markets save for apparel. Therefore, the court vacated the contempt order and remanded for further proceedings. View "U.S. Polo Ass'n v. PRL USA Holdings" on Justia Law

Plaintiff, a dissatisfied applicant in an ex parte trademark proceeding, sought review of an adverse ruling on his trademark application by commencing a de novo action in a federal district court. Under the Lanham Act, if an applicant elects to proceed in district court and no adverse party opposed his application before the Patent and Trademark Office (PTO), the applicant must name the Director of the PTO as a defendant and pay all the expenses of the proceeding, whether or not she succeeds in the action. At the end of the proceeding in this case, the Director of the PTO sought the expenses of the proceeding from Plaintiff, including the PTO’s attorneys fees. The Fourth Circuit affirmed, holding that the imposition of all expenses on a plaintiff in an ex parte proceeding does not constitute “fee-shifting” that implicates the “American Rule” but, rather, constitutes an unconditional compensatory charge imposed on a dissatisfied applicant in an ex parte trademark proceeding who elects to engage the PTO in a district court proceeding. View "Shammas v. Focarino" on Justia Law

Tam, the “front man” for Asian-American dance rock band The Slants, filed the 263 application, seeking to register the mark THE SLANTS for “Entertainment, namely, live performances by a musical band.” Tam attached specimens featuring the band name set against Asian motifs. The examining attorney found the mark disparaging to people of Asian descent under 15 U.S.C. 1052(a) and refused to register it. The Trademark Trial and Appeal Board dismissed for failure to file a brief and the application was deemed abandoned. Tam then filed the 044 application, seeking to register the mark THE SLANTS for identical services as in the 263 application. In the 044 application, Tam claims use of the mark since 2006. Specimens attached to the 044 application do not contain Asian motifs. The examining attorney again found the mark THE SLANTS disparaging and declined to register it. The Board affirmed, stating that “it is abundantly clear from the record not only that THE SLANTS . . . would have the ‘likely meaning’ of people of Asian descent but also that such meaning has been so perceived and has prompted significant responses by prospective attendees or hosts of the band’s performances.” The Federal Circuit affirmed. View "In re: Tam" on Justia Law

This case involved a dispute between two clergymen, each of whom believed himself to be the proper leader of The Protestant Episcopal Church in the Diocese of South Carolina. Bishop Charles vonRosenberg brought this action against Bishop Mark Lawrence, alleging Lanham Act violations and seeking declaratory and injunctive relief. Bishop Lawrence asked the district court to dismiss this federal action for lack of standing or, in the alternative, to abstain and stay this action pending resolution of related state court proceedings. The district court granted the motion to abstain and dismissed the action, concluding that it had broad discretion to decline to grant declaratory relief under the abstention doctrine articulated in Brillhart v. Excess Insurance Co. of Am. and Wilton v. Steven Falls Co. The Fourth Circuit vacated the dismissal order, holding (1) Colorado River Water Conservation Dist. v. United States, which permits a federal court to abstain only in “exceptional” circumstances, properly governed the abstention question in this action; and (2) because the district court did not apply the correct abstention standard, the case is remanded for a determination of whether “exceptional” circumstances are present in this case. View "vonRosenberg v. Lawrence" on Justia Law

TriVita filed trademark application Serial No. 77/658,158 to register the mark NOPALEA on the Principal Register for dietary and nutritional supplements “containing, in whole or in substantial part, nopal juice.” The examiner rejected the application under section 2(e)(1) of the Lanham Act as “descriptive of a feature of applicant’s goods on the grounds that applicant’s products contain nopal which is derived from an [ex]tract of the nopalea plant.” The Trademark Trial and Appeal Board and the Federal Circuit affirmed, rejecting an argument that “nopalea plant” is not a term used in the food industry, and that the term is not descriptive because TriVita’s products contain extracts from the Opunti genus of nopal cactus, not the Nopalea genus. Various websites show Nopalea as the name of a genus of cactus used in food and supplements. Some of TriVita’s affiliates explicitly state on their website that TriVita’s products were derived from the Nopalea cactus. Consumers may well assume, as do some of TriVita’s affiliates, that, as a characteristic of nopal juice, TriVita’s goods derive from genus nopalea. View "In re: Trivita, Inc." on Justia Law

Haydel Enterprises appealed the district court’s grant of summary judgment to Nola Spice Designs and Raquel Duarte on claims of trademark infringement, unfair competition, trademark dilution, copyright infringement, and unfair trade practices. Haydel Enterprises owns Haydel’s Bakery in New Orleans, which makes and sells pastries and cakes, including a popular king cake. In 2008, Haydel commissioned an artist to design a mascot, which was named “Mardi Gras Bead Dog.” On October 13, 2009, and December 1, 2009, the United States Patent and Trademark Office (“PTO”) issued two trademark registrations to Haydel for, respectively, the phrase “MARDI GRAS BEAD DOG” and its bead dog design. Both registrations cover king cake pastries, jewelry, and clothing. Haydel sold these items in its New Orleans store, online, and through a licensee. In September 2012, Haydel obtained a certificate of copyright registration for its work titled “Bead Dog” in “photograph(s), jewelry design, 2-D artwork, sculpture.” In May 2012, Raquel Duarte formed Nola Spice Designs, which sold jewelry and accessories, including necklaces and earrings featuring bead dog trinkets. Haydel learned of Duarte’s bead dogs through Haydel’s customers. In August 2012, Haydel sent Nola Spice Designs a letter noting Haydel’s trademark and copyright in “the bead dog design,” and demanding, inter alia, that Nola Spice Designs “remove from [its] website all display, mention of or reference to the bead dog design,” and “cease any and all promotion, sale, and/or use” of materials incorporating the bead dog design. In October 2012, Nola Spice Designs filed a complaint against Haydel seeking: (1) a declaratory judgment that Nola Spice Designs’s activities do not violate the Lanham Act or any other trademark law; (2) the cancellation of Haydel’s trademarks; and (3) damages for unfair trade practices under the Louisiana Unfair Trade Practices Act (“LUTPA”). Haydel asserted counterclaims against Nola Spice Designs and filed a third-party complaint against Duarte, seeking injunctive relief and damages. The parties also filed cross-motions for summary judgment. The district court granted summary judgment to Nola Spice on its claim for a declaratory judgment that it was not infringing Haydel’s trademarks, and the court cancelled those trademarks as unprotectable, but it denied Nola Spice’s motion for summary judgment on its LUTPA claims. The district court also granted summary judgment to Nola Spice on Haydel’s claims of trademark infringement, unfair competition, trademark dilution, copyright infringement, and unfair trade practices. Haydel timely appealed the district court’s order. Nola Spice did not appeal the district court’s dismissal with prejudice of its LUTPA claim. Upon review, the Fifth Circuit affirmed the district court’s grant of summary judgment to Nola Spice on its claim for a declaratory judgment of non-infringement of Haydel’s trademarks, and affirmed the district court’s cancellation of those trademarks. The Court affirmed the district court’s grant of summary judgment to Nola Spice on Haydel’s claims of trademark infringement, unfair competition, and trademark dilution under the Lanham Act; trademark dilution under Louisiana law; copyright infringement under the Copyright Act; and unfair trade practices under LUTPA. View "Nola Spice Designs, L.L.C., et al v. Haydel Enterp" on Justia Law