Justia Trademark Opinion Summaries

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

SoCal filed suit against Defendant Zaffina and his company, SoCal Inc., alleging violations of the Lanham Act, 15 U.S.C. 1051 et seq.; the California Business and Professions Code; common law trademark infringement; and unfair competition. The court concluded that the district court did have jurisdiction over SoCal's claim under the Lanham Act; the district court properly concluded that SoCal had the capacity to bring its Lanham Act claim in federal court; SoCal had standing to sue; and SoCal's motion for summary judgment was properly served on Zaffina. On the merits, the court concluded that SoCal was entitled to summary judgment where the contested marks are protectable, SoCal owns these marks, and Zaffina's use of these marks is likely to cause confusion. The court held that unincorporated associations have the capacity to own trademarks and the district court's assumption that SoCal has the capacity to own the contested marks was correct. The court rejected defendant's remaining claims and affirmed the district court's entry of summary judgment. View "S. Cal. Darts Ass'n v. Zaffina" on Justia Law

Syngenta, producer of a genetically-modified corn seed, filed suit against Bunge, an agricultural produce storage and transport company, alleging breach of an obligation under the United States Warehouse Act (USWA), 7 U.S.C. 241-256; breach of a duty to third party beneficiaries of a licensing agreement between Bunge and the federal government; and false advertising in violation of the Lanham Act, 15 U.S.C. 1125. The court concluded that the text of the USWA and the structure of the Act do not implicitly authorize a private cause of action for violations of a warehouse operator's fair treatment obligations; Syngenta is not a third-party beneficiary of the License Agreement and the district court did not err in dismissing this claim on the pleadings; and the court found it was necessary to remand the Lanham Act claim, in light of Lexmark Int'l, Inc. v. Static Control Components, Inc., for the district court to determine in the first instance whether Syngenta has standing to bring the claim under the zone-of-interests test and proximate causality requirements. Accordingly, the court affirmed the dismissal of the USWA and third-party beneficiary claims, and vacated the grant of summary judgment to Bunge on the Lanham Act claim and remanded for further proceedings. View "Syngenta Seeds, Inc. v. Bunge North America, Inc." on Justia Law

Quinta Real appealed from the district court's conclusion that expansion of Quinta Real's Mexican hotel business into the United States would result in a likelihood of consumer confusion with La Quinta. The court held that the "use in commerce" element of the Lanham Act claims under section 32 and 43(a) is not connected to the Lanham Act's jurisdictional grant in 15 U.S.C. 1121(a), which grants federal subject-matter jurisdiction without any reference to a "use in commerce" requirement. Therefore, the court concluded that there is federal subject-matter jurisdiction over the trademark claims. The court also concluded that the district court correctly found a likelihood of confusion, but did not provide a sufficient analysis balancing the equities in its decision to grant a permanent injunction. The court held that the defense of laches did not apply. The court affirmed in part and remanded for further assessment of the equities. View "La Quinta Worldwide v. Q.R.T.M." on Justia Law

Plaintiff, Bishop Macram Max Gassis, was the former Chairman of the Board of Directors of Sudan Relief Fund, Inc., formerly known as Bishop Gassis Sudan Relief Fund, Inc. The Court of Chancery found that the Board’s decision to remove Plaintiff as director of the Fund neither violated the Fund’s bylaws nor constituted a breach of fiduciary duty. This opinion concerned remaining issues involving allegations that, after Plaintiff was removed as Chairman and member of the corporation, the corporation used, without authorization, Plaintiff’s trademarked property - Plaintiff’s name and likeness - to raise funds for its charitable purposes. Plaintiff, however, sued only individual directors of the Fund, not the corporation itself. The Court of Chancery granted Defendants’ motion to dismiss as to Plaintiff’s claims based on use of his trademarks, holding that there were no allegations in the complaint that could sustain a claim that Defendants personally misappropriated Plaintiff’s name and likeness to their own use or that Defendants took actions to cause the corporation to improperly exploit Plaintiff’s name and likeness. View "Gassis v. Corkery" on Justia Law

StonCor Group owns the registered trademark “STONSHIELD.” When a different company, Specialty Coatings, sought registration of a competing mark, “ARMORSTONE,” StonCor opposed the registration, asserting a likelihood of confusion and that ARMORSTONE is merely descriptive of Specialty Coatings’ products. The Board dismissed StonCor’s opposition, finding no likelihood of confusion and that ARMORSTONE was not merely descriptive. The Federal Circuit affirmed. Although the Board erred in concluding that STONSHIELD would not be pronounced as “STONE SHIELD,” the error is harmless because dismissal was supported by substantial evidence View "StonCor Grp, Inc. v. Specialty Coatings, Inc." on Justia Law

Stauffer, pro se, filed a qui tam action against Brooks Brothers under the then-version of the false-marking statute, 35 U.S.C. 292, claiming that Brooks Brothers marked its bow ties with expired patent numbers. In 2011, while the action was pending, the President signed into law the America Invents Act, 125 Stat. 284A, which eliminated the false-marking statute’s qui tam provision, so that only a “person who has suffered a competitive injury” may bring a claim. The AIA also expressly states that marking a product with an expired patent is not a false-marking violation and that the amendments apply to all pending cases. Stauffer argued that the AIA amendments were unconstitutional because they amounted to a pardon by Congress, violating the doctrine of separation of powers, and also violated the common-law principle that prohibits use of a pardon to vitiate a qui tam action once the action has commenced. The district court dismissed for lack of standing. The Federal Circuit affirmed, finding that the amendments did not constitute a pardon and that even if the law had not changed, Stauffer might have lost his lawsuit, and, therefore, could not have acquired a private-property interest in his share of the statutory penalty. View "Stauffer v. Brooks Brothers, Inc." on Justia Law