Justia Trademark Opinion Summaries

Slep-Tone Entertainment sued Karaoke Kandy and Polidori under federal and state law for unlawfully selling hard drives bearing Slep-Tone’s registered trademarks without authorization. After trial, the jury answered a single interrogatory finding that the defendants had not infringed Slep-Tone’s trademarks. The district court entered judgment in the defendants’ favor. The Sixth Circuit stayed a separate appeal and remanded to the district court because Slep-Tone’s timely post-judgment motion for findings of fact and conclusions of law under Federal Rule of Civil Procedure 52 was pending before the district court. In a separate appeal, the Sixth Circuit remanded for further proceedings regarding defendants’ a motion for attorney fees under 15 U.S.C. 1117(a) based on the judgment in their favor. The motion was not untimely; the FRCP 52 motion remained pending. The court must determine whether it is necessary to reassess if this case qualifies as “extraordinary.” View "Slep-Tone Entm't Corp. v. Karaoke Kandy Store, Inc." 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 abstain and stay this action pending resolution of related state court proceedings. The district court granted the motion to abstain and stayed 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 stay 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

Georgia-Pacific Consumer Products LP commenced three separate actions against von Drehle Corporation or its distributors, alleging contributory trademark infringement. In the instant action, a jury found in favor of Georgia-Pacific and awarded Georgia-Pacific $791,431. The district court entered a permanent, nationwide injunction prohibiting von Drehle from infringing Georgia-Pacific’s trademark rights, trebled the jury’s award, awarded attorneys fees, and awarded prejudgment interest and court costs. In the two parallel actions, the district courts ruled against Georgia-Pacific. The Fourth Circuit vacated the district court’s injunction and award of attorneys fees and reversed its award of treble damages and prejudgment interest, holding (1) the Eighth and Sixth Circuits’ rulings against Georgia-Pacific rendered the district court’s injunction unduly broad, and the district court is instructed to narrow it to cover only the geographical area of the Fourth Circuit; and (2) the district court applied the wrong legal standards for trebling the jury award and for awarding attorneys fees and prejudgment interest. View "Georgia-Pacific Consumer Prods. LP v. von Drehle Corp." on Justia Law

Smart Candle sells light-emitting diode flameless candles and commercial lighting systems internationally. Excell sued under the LanhamAct alleging that Smart Candle’s use of the trade name and trademark “Smart Candle” infringed rights that Excell had over use of that name and trademark. Selective insured Smart Candle during the period in which the Excell suit commenced, but disclaimed coverage, based on exclusion any injury “arising out of the infringement of copyright, patent, trademark, trade secret or other intellectual property rights” that “does not apply to infringement in your ‘advertisement’ of copyright, trade dress or slogan.” Excell won its suit. Selective sought a declaration that it owed no duty to defend or indemnify. Smart Candle counterclaimed breach of contract, arguing that Selective had not conducted “reasonable investigation of Excell’s Claims” including “a review of Smart Candle’s website . . . or any of Smart Candle’s advertising before denying coverage.” The district court granted Selective summary judgment. The Eighth Circuit affirmed, agreeing that no reasonable jury would conclude that Excell was suing for slogan infringement and that Selective had no duty to investigate “beyond the four corners of the complaint” to determine whether other facts could trigger Selective’s duty to defend or indemnify. View "Selective Ins. Co. v. Smart Candle, LLC" on Justia Law

Hargis tried to register its trademark for SEALTITE with the U.S. Patent and Trademark Office. B&B opposed registration, claiming that SEALTITE is too similar to B&B’s SEALTIGHT trademark. The Trademark Trial and Appeal Board (TTAB) concluded that SEALTITE should not be registered because of the likelihood of confusion. Hargis did not seek judicial review. Later, in an infringement suit, B&B argued that Hargis was precluded from contesting likelihood of confusion because of the TTAB’s decision. The district court disagreed. The Eighth Circuit affirmed. The Supreme Court reversed. If the other elements of issue preclusion are met, when the usages adjudicated by the TTAB are materially the same as those before a court, issue preclusion should apply. When Congress authorizes agencies to resolve disputes, issue preclusion applies except when a contrary statutory purpose is evident. Neither the Lanham Act’s (15 U.S.C. 1051) text nor its structure rebuts a presumption in favor of preclusive effect. There is no categorical reason why registration decisions can never meet the ordinary elements of issue preclusion. That many registrations will not satisfy those elements does not mean that none will. The same likelihood-of-confusion standard applies to both registration and infringement. The factors that the TTAB and the courts use to assess likelihood of confusion are not fundamentally different; the operative statutory language is essentially the same. Congress’ creation of an elaborate registration scheme confirms that registration decisions can be weighty enough to ground issue preclusion. View "B&B Hardware, Inc. v. Hargis Indus., Inc." on Justia Law

Buckminster Fuller, “Bucky,” a designer, author, and inventor, well known for popularizing the geodesic dome, died in 1983. Beginning around 2009, Maxfield manufactured and distributed products under the Buckyball and related trademarks. According to its press release, Buckyballs, “the world’s best-selling desktoy,” were “inspired and named after famous … inventor, R. Buckminster Fuller.” Buckyballs are round magnets packaged in a cube shape, which can be formed into various shapes. The Big Book of Bucky, which provides instructions, states: Buckyballs were named for Buckminster Fuller. Fuller’s Estate sued, alleging: unfair competition, 15 U.S.C. 1125(a) (Lanham Act); invasion of privacy (appropriation of name and likeness); unauthorized use of name and likeness, Cal. Civil Code 3344.1; and violation of Cal. Business & Professions Code 17200. Alterra had issued an insurance policy to Maxfield, effective June 2010. Alterra agreed to defend under a reservation of rights, then sought a declaration that Alterra’s policy did not provide coverage. The Estate agreed to be bound by the outcome in return for being dismissed. Because of Maxfield’s stipulation to the allegations in the coverage action and acting without leave, the Estate later responded to Alterra’s complaint. The court of appeal affirmed a holding that Alterra had no duty to defend and no duty to indemnify, based on the “intellectual property” exclusion. View "Alterra Excess & Surplus Ins. Co. v. Estate of Buckminster Fuller" on Justia Law

This dispute centered on the use of the service marks, “Miss India Georgia” and “Miss Teen India Georgia,” (collectively “Marks”). The Marks were used in connection with beauty pageants, initially hosted in 1987 by India-American Cultural Associaiton, Inc. (IACA, a nonprofit organization). IACA conducted the pageants under the Marks from 1987 through 2010. In 2011, facing budgetary restrictions, IACA decided not to hold the “Miss India Georgia” and “Miss Teen India Georgia” pageants. In 2012, iLink, a promoter of beauty pageants and whose president had been involved in the “Miss India Georgia” and “Miss Teen India Georgia” pageants in the past, promoted and hosted both pageants, and IACA appeared in the pageants’ program as a sponsor. After iLink announced its intention to host the 2013 pageants, and its scheduled date of July 20, 2013, IACA announced that it would hold the “Miss India-Georgia” and “Miss Teen India-Georgia” pageants the week before, on July 13, 2013. Both parties promoted their events and sought sponsorships. On April 12, 2013, iLink filed the mark “Miss India Georgia,” and then on April 16, 2013, the mark, “Miss Teen India Georgia” with the Office of the Secretary of State of Georgia. iLink also acquired an internet domain name and used that website to advertise its pageant business. iLink sent IACA a letter dated May 20, 2013, demanding that IACA cease use of “Miss India Georgia” and “Miss Teen India Georgia.” On May 31, 2013, IACA sent iLink a letter demanding that it cease its use of the Marks. Neither party acceded. IACA ultimately lost its bid for the Marks, and argued on appeal to the Supreme Court: (1) that the superior court abused its discretion in granting an interlocutory injunction against it because it treated the state trademark registrations as mandatory for establishing protectable trademark rights rather than as permissive; (2) that IACA owned prior rights in the Marks by virtue of decades of use; (3) and that because of its status as “senior user” of the Marks, in order to issue the interlocutory injunction, the superior court must have wrongfully found that IACA either abandoned its rights in the Marks or assigned them to iLink. The Supreme Court found IACA’s arguments unavailing and affirmed the district court's judgment. View "India-American Cultural Association, Inc. v. iLink Professionals, Inc." on Justia Law

In May 2008, Couture applied to register the service mark PLAYDOM under Lanham Act, 15 U.S.C. 1051(a), submitting a “[s]creen capture of [a] website offering Entertainment Services in commerce.” His website, www.playdominc.com, then included only a single page, stating: “[w]elcome to PlaydomInc.com. We are proud to offer writing and production services for motion picture film, television, and new media. Please feel free to contact us if you are interested: playdominc@gmail.com,” with the notice: “Website Under Construction.” No services under the mark were provided until 2010. The PLAYDOM mark was registered by the U.S. Patent and Trademark Office in January 2009. On February 9, 2009, Playdom, Inc. applied to register the identical mark. The registered mark was cited as a ground for rejecting the application. Playdom, Inc. sought to cancel the registration of Couture’s mark as void ab initio because Couturehad not used the mark in commerce as of the date of the application. The Board granted cancellation, stating that Couture “had not rendered his services as of the filing date of his application” because he had “merely posted a website advertising his readiness, willingness and ability to render said services.” The Federal Circuit affirmed. View "Couture v. Playdom, Inc." on Justia Law

Marcel filed suit against Lucky Brand, seeking damages and injunctive relief based on claims of trademark infringement, false designation of origin, and unfair competition under 15 U.S.C. 1114, 1116, and 1125, as well as common law trademark infringement and unfair competition under Fla. Stat. 495.151. On appeal, Marcel challenged the district court's judgment in favor of Lucky Brand. The court concluded that a prior judgment in Marcel's favor awarding damages and an injunction did not bar Marcel from instituting a second suit seeking relief for alleged further infringements that occurred subsequent to the earlier judgment. Accordingly, the court vacated the grant of summary judgment and the denial of leave to amend the complaint. The court affirmed the district court's denial of Marcel's motion to hold Lucky Brand in contempt for violation of an injunction in the prior litigation because Marcel did not show that Lucky Brand's conduct violated the terms of the injunction. View "Marcel Fashions v. Lucky Brand Dungarees" on Justia Law

This dispute over a commercial relationship stemmed from an agreement between Pennzoil and Miller Oil where Pennzoil agreed to loan Miller Oil equipment for use at Pit Stop. After Pennzoil discovered that Pit Stop was using mislabeled bulk oil that Pit Stop claimed was a Pennzoil product, Pennzoil filed a trademark infringement lawsuit. The district court concluded that Pennzoil's marks are valid and protectable, and that there was a likelihood of confusion between Miller Oil's marks and Pennzoil's marks, such that the use of the latter by defendants constituted trademark infringement. The district court considered Miller Oil's affirmative defense of acquiescence and ruled that Pennzoil had implicitly and explicitly assured Pit Stop that the use of the Pennzoil trademarks and trade dress were allowed, and that Miller Oil relied upon Pennzoil's assurances. The court concluded that, given Miller Oil did not establish undue prejudice, the district court's legal conclusion that Pennzoil had acquiesced was error. Allowing Miller Oil to continue to display Pennzoil's marks in light of an unchallenged determination of trademark infringement would be the type of "unjustified windfall" the court previously condemned. Accordingly, the court reversed the district court's finding of acquiescence and vacated the elements of the injunction allowing Miller Oil to use Pennzoil's marks. View "Pennzoil-Quaker State v. Miller Oil and Gas" on Justia Law