Justia Trademark Opinion Summaries

Cubatabaco, a Cuban entity, and General, a Delaware company, manufacture and distribute cigars using the COHIBA mark. General owns trademark registrations issued in 1981 and 1995. Cubatabaco owns the mark in Cuba and uses it worldwide. Cuban Assets Control Regulations (CACR), prohibit Cubatabaco from selling cigars in the U.S.; 31 C.F.R. 515.201(b) prohibits “transfer of property rights . . . to a Cuban entity,” but a general or specific license allows Cuban entities to engage in otherwise prohibited transactions. General licenses are available for transactions “related to the registration and renewal” of U.S. trademark. Specific licenses issue from the Office of Foreign Assets Control. Cubatabaco used a general license to attempt to register the COHIBA mark in 1997, relying on 15 U.S.C. 1126(e), which allows reliance on a foreign registration if the applicant has a bona fide intent to use the mark in commerce. Cubatabaco also sought to cancel General’s registrations, which the PTO cited as a basis for likelihood of confusion. Cubatabaco obtained a special license to sue General. The district court held that General had abandoned its registration by non-use and enjoined General’s use of the COHIBA mark, finding that Cubatabaco had acquired ownership under the famous marks doctrine. The Second Circuit reversed, holding that injunctive relief would involve a prohibited transfer under CACR because Cubatabaco would acquire ownership of the mark and later affirmed denial of General’s motion concerning cancellation of its registrations. The Board then dismissed Cubatabaco’s petition, stating that it need not address preclusion because Cubatabaco lacked standing. The Federal Circuit vacated, finding that Cubatabaco has a statutory cause of action to petition to cancel the registrations and that issue and claim preclusion do not bar that petition View "Empresa Cubana del Tabaco v. General Cigar Co., Inc." on Justia Law

In 2010, Geller and Spence filed an intent-to-use application to register the mark STOP THE ISLAMISATION OF AMERICA in connection with “[p]roviding information regarding understanding and preventing terrorism.” The Examining Attorney refused the application on the ground that the mark may be disparaging to American Muslims under the Trademark Act, 15 U.S.C. 1052(a). The Trademark Trial and Appeal Board affirmed, considering the likely meaning of the mark, and determining that meaning was likely to disparage “a substantial composite of the referenced group.” The Board found the term “Islamisation,” as used in the mark, had two likely meanings: “the conversion or conformance to Islam” (religious meaning) and “a sectarianization of a political society through efforts to ‘make [it] subject to Islamic law’” (political meaning).The Board determined the mark may be disparaging to American Muslims under both meanings. The Federal Circuit affirmed. View "In re: Geller" on Justia Law

PepperBall is a projectile ball filled with a pepper-spray-like irritant. Police departments, private security firms, and comparable organizations are its primary consumers. Advanced Tactical brought a trademark infringement claim against Real Action and its president, Tran. The district court granted a preliminary injunction. The Seventh Circuit reversed, holding that the district court lacked personal jurisdiction over Real Action, which preserved its objection. There was no evidence that Real Action had the necessary minimum contacts with Indiana to support specific jurisdiction. View "Advanced Tactical Ordnance Sys., LLC v. Real Action Paintball, Inc." on Justia Law

BCN filed suit against Catalina and three of its individual officers or employees, alleging deceptive trade practices, trademark violations, and related fraud and tort claims. BCN's claims stemmed from defendants' creation of CouponNetwork.com, a website and business "remarkably similar" to BCN's existing business, BrandCouponNetwork.com. The court vacated the district court's judgment to the extent that it dismissed BCN's claims under Rule 12(b)(6) as time barred because the district court erred in considering evidence outside the pleadings and a genuine issue of material fact appeared to exist regarding the timeliness of BCN's claims which would preclude summary judgment. The court affirmed the district court's dismissal of the individual defendants where BCN failed to preserve its claims where BCN did not present it to the district court and BCN's claims were conclusional. The court remanded for further proceedings. View "Brand Coupon Network, L.L.C. v. Catalina Marketing Corp., et al." on Justia Law

In the 1990s, Specht founded Android Data Corporation, and registered the “Android Data” trademark. The company ceased principal operations in 2002, but the mark remained registered to it. Five years later, Google Inc. introduced its new Android operating system for mobile phones. Specht sued for infringement. Google counterclaimed that Specht had abandoned the mark after 2002, forfeiting his ability to assert rights to it. The district court entered summary judgment for Google. The Seventh Circuit affirmed, stating that the undisputed evidence established that Specht abandoned the mark. View "Specht v. Google Inc." on Justia Law

New York based Stone Lion manages a hedge fund that focuses on credit opportunities. Lion, a United Kingdom private equity firm, invests primarily in companies that sell consumer products. Lion has two marks registered with the Patent and Trademark Office and started using the marks in the U.S. in 2005. Lion filed applications for “LION CAPITAL” and “LION” in 2005 and 2007, respectively, for services including “financial and investment planning and research,” “investment management services,” “capital investment consultation,” “equity capital investment,” and “venture capital services” Lion has priority over Stone Lion with respect to those marks. In August 2008, Stone Lion filed an intent-to-use application for the mark “STONE LION CAPITAL,” proposing to use the mark in connection with “financial services, namely investment advisory services, management of investment funds, and fund investment services.” Lion opposed the registration under section 2(d) of the Lanham Act, 15 U.S.C. 1052(d), alleging that the proposed mark would likely cause confusion with Lion’s registered marks when used for Stone Lion’s recited financial services. The Trademark Trial and Appeal Board conducted the likelihood of confusion inquiry pursuant to 13 factors and refused registration. The Federal Circuit affirmed, finding that the Board had substantial evidence to support its conclusion. View "Stone Lion Capital Partners, LP v. Lion Capital, LLP" on Justia Law

Lovely Skin filed suit against Ishtar, alleging four counts of trademark infringement and false designation of origin under the Lanham Act, 15 U.S.C. 1127, and common law unfair competition and injury to business reputation in violation of Nebraska law. Ishtar counterclaimed, seeking cancellation of the registrations of Lovely Skin's two trademarks. The court concluded that Ishtar did not demonstrate that Lovely Skin's trademarks were not registrable because they lacked acquired distinctiveness at the time of their registrations. Therefore, the court reversed the district court's judgment canceling the registrations of LOVELYSKIN and LOVELYSKIN.COM. The court also concluded that the district court did not commit clear error in considering all of the SquirtCo v. Seven-Up Company factors and determining that no likelihood of confusion existed between Lovely Skin's trademarks and Ishtar's website. Therefore, the court affirmed the district court's judgment for Ishtar on all four counts. View "Lovely Skin, Inc. v. Ishtar Skin Care Products, LLC" on Justia Law

Airs International, a purported owner of an ANGEL DREAMS trademark, filed suit against Victoria's Secret alleging breach of contract claims and requesting cancellation of Victoria's Secret's registered DREAM ANGELS trademark. On appeal, Airs International challenged the district court's dismissal of its claims. The court held that Section 37 of the Lanham Act, 15 U.S.C. 1119, did not provide an independent basis for federal jurisdiction. Because Airs Aromatics had not appealed the dismissal of the only claims it brought that could support jurisdiction, the district court's judgment dismissing this action with prejudice must be affirmed. Airs Aromatics has not alleged sufficient facts to support a claim for trademark infringement where it failed to allege that the litigation was the kind of continuous, public usage of a trademark that served to identify the marked goods to the public as those of the mark's owner. Finally, leave to amend would be futile. Accordingly, the court affirmed the judgment of the district court. View "Airs Aromatics v. Victoria's Secret" on Justia Law

Experience Hendrix filed suit against Pitsicalis alleging that Pitsicalis was infringing trademarks in violation of the Lanham Act, 15 U.S.C. 1051-1127, and that the trademark infringement also amounted to an unfair or deceptive trade practice proscribed by Washington's Consumer Protection Act (WCPA), Wash. Rev. Code 19.86.010-19.86.920. Determining that Pitsicalis had Article III standing, the court concluded, inter alia, that the WPRA was constitutional as applied to the narrow set of non-speculative circumstances at issue in this case; Pitsicalis was liable under the Lanham Act for using domain names that infringed Experience Hendrix's trademark "Hendrix"; and Paragraph 5 of the permanent injunction failed to state clearly the terms of the injunction and did not describe in reasonable detail the acts that were and were not restrained. Accordingly, the court reversed the district court's determination that the Washington statute was unconstitutional and remanded Pitsicalis's declaratory judgment claims pertaining to the WPRA with instructions to enter judgment on those claims in favor of Experience Hendrix; affirmed the grant of partial summary judgment on Experience Hendrix's claim that Pitsicalis's use of domain names infringed Experience Hendrix's mark; vacated the permanent injunction and remanded so the district court could revise the language at issue; reversed the Rule 50(b)(3) decision to strike most of the jury's award of damages under both the Lanham Act and the WPRA; affirmed the district court's order granting a new trial on damages under both statutes; remanded for a new trial on such damages; vacated the district court's award of attorney's fees under the WCPA; and remanded the fee request for further proceedings. View "Experience Hendrix v. HendrixLicensing.com" on Justia Law

Swatch is the owner of three U.S. registrations for the mark SWATCH and for materials bearing that mark. Beehive produces and sells watch bands and faces under the mark SWAP. On appeal, Swatch challenged the district court's denial of its opposition to Beehive's trademark application and dismissal of its related claims for federal, state, and common law trademark infringement, trademark dilution, and unfair competition. The district court held that the Trademark Trial and Appeal Board's (TTAB) determinations were supported by substantial evidence; found facts based on evidence not presented to the TTAB under its authority under 15 U.S.C. 1071(b)(3); concluded that there was no likelihood of confusion between the two marks and likelihood that SWAP would dilute SWATCH; dismissed Swatch's infringement and unfair competition claims as a matter of law; and concluded that Beehive's mark was registrable because it was not merely descriptive. The court concluded that the district court properly reviewed Swatch's dilution-by-blurring claim entirely de novo; the district court also decided Swatch's trademark infringement and unfair competition claims, which were not before the TTAB, de novo; and, although the district court stated that it would apply an impermissible hybrid review to its likelihood of confusion and strength-of-the-mark analyses, there were more than sufficient facts recited in its opinion to support its findings. Accordingly, the court affirmed the judgment of the district court. View "Swatch AG v. Beehive Wholesale, LLC" on Justia Law