Justia Trademark Opinion Summaries

Hokto USA, a wholly owned subsidiary of Hokuto Co., Ltd., filed suit against Concord Farms for violating its rights to marks under which it markets its Certified Organic Mushrooms, which are produced in the United States. The district court granted summary judgment in favor of Hokto USA and Hokuto Japan on all claims and entered a permanent injunction against Concord Farms. Determining that this was a classic gray-market case, the court concluded that, because Concord Farms offered no other evidence that its imported mushrooms were not "materially different" from Hokto USA's mushrooms, the district court correctly concluded that they were not genuine Hokto USA goods; the district court correctly concluded that there was no genuine dispute of material fact as to whether Concord Farms's importation of Hokuto Japan mushrooms was likely to confuse consumers; and the district court did not err in concluding that Hokuto Japan did not engage in naked licensing where, given the close working relationship, Hokuto Japan was familiar with and reasonably relied upon Hokto USA's efforts to control the quality of the mushrooms it distributed. Accordingly, the court affirmed the district court's grant of Hokto USA's and Hokuto Japan's motion for summary judgment and affirmed the permanent injunction, denying Concord Farms's motion for summary judgment. View "Hokto Kinoko Co. v. Concord Farms, Inc." on Justia Law

Petronas is a major oil and gas company located in Kuala Lumpur, Malaysia and GoDaddy is the world's largest domain name registrar. After a third party registered the domain names "petronastower.net" and "petronastowers.net" and then used GoDaddy's domain name forwarding service to direct the disputed domain names to an adult entertainment web site, Petronas filed suit against GoDaddy alleging contributory cybersquatting under the Anticybersquatting Consumer Protection Act, 15 U.S.C. 1125(d). The district court granted summary judgment in favor of GoDaddy. The court affirmed, holding that the Act did not include a cause of action for contributory cybersquatting because: (1) the plain text of the Act did not apply to the conduct that would be actionable under such a theory; (2) Congress did not intend to implicitly include common law doctrines applicable to trademark infringement because the Act created a new cause of action that was distinct from traditional trademark remedies; and (3) allowing suits against registrars for contributory cybersquatting would not advance the goals of the statute. View "Petronas v. GoDaddy.com" on Justia Law

Louis Vuitton filed a federal trademark infringement suit against defendant for operating websites that were selling counterfeit Louis Vuitton bags. On appeal, defendant challenged the district court's denial of his motion to vacate a default judgment entered against him. The court concluded that, under the unrebutted allegations and testimony, the district court in Florida did not violate the Due Process Clause by exercising personal jurisdiction over defendant for Louis Vuitton's trademark infringement claims. The district court did not err in denying defendant's motion to vacate the default judgment because the statutory and federal constitutional personal jurisdiction requirements were satisfied. Accordingly, the court affirmed the judgment of the district court. View "Louis Vuitton Malletier, S.A. v. Mosseri" on Justia Law

Marshak appealed the district court's preliminary injunction for HRE enjoining Marshak from using the "The Platters" mark in connection with any vocal group with narrow exceptions. At issue was whether the likelihood of irreparable harm must be established - rather than presumed, as under prior Ninth Circuit precedent - by a plaintiff seeking injunctive relief in the trademark context. Following eBay v. MarcExchange and Winter v. Natural Res. Def. Council, Inc., a plaintiff seeking a preliminary injunction in a trademark infringement case must establish irreparable harm. The court concluded that HRE was not foreclosed from bringing the underlying suit where prior New York actions (Marshak I and Marshak II) did not have res judicata effect; HRE's trademark infringement claim and request for preliminary injunction was not precluded by the doctrine of laches; the record supported the district court's determination that HRE did not abandon "The Platters" mark; but the fact that the district curt made no factual findings that would support a likelihood of establishing irreparable harm, led the court to reverse the preliminary injunction and to remand to the district court. View "HRE v. Florida Entertainment Mgmt." on Justia Law

Plaintiffs are the writer and publisher of a book entitled "Where's the Birth Certificate? The Case that Barack Obama is not Eligible to Be President." A journalist published an article on Esquire's Political Blog entitled "BREAKING: Jerome Corsi's Birther Book Pulled from Shelves!" Soon after the blog was published, Esquire published an update on the blog stating that "for those who didn't figure it out," the article was "satire." Plaintiffs filed suit against Esquire for, inter alia, violation of the D.C. Anti-Strategic Lawsuits Against Public Participation (Anti-SLAPP) Act, D.C. Code 16-5501 et seq., and the Lanham Act, 15 U.S.C. 1125(a)(1)(A) and (B). The court held that the complaint was properly dismissed under Rule 12(b)(6) for failure to state a claim because the blog post was fully protected political satire and the update and the journalist's statements were protected opinion. Further, the complaint failed to state a claim for violation of the Lanham Act. Accordingly, the court affirmed the district court's dismissal of the complaint. View "Farah, et al. v. Esquire Magazine, et al." on Justia Law

HFI filed suit against the Bank alleging trademark infringement and related claims, contending that the Bank's use of its "Hana Bank" mark infringed HFI's "Hana Financial" mark because its use of the word "Hana" in connection with financial services would likely cause confusion. A party claiming trademark ownership must establish priority and one of the ways that a party could establish priority was through the constructive use doctrine known as "tacking." Tacking required a highly fact-sensitive inquiry, and the jury decided the issue after receiving an instruction that correctly conveyed the narrowness of the doctrine. In this instance, the court concluded that there was sufficient evidence to support the jury's verdict on trademark priority where, viewing the marks in context and in their entirety, the ordinary purchasers could perceive them as conveying the same idea or meaning or evoking the same mental reaction. Accordingly, the court affirmed the district court's denial of HFI's motion for judgment as a matter of law on trademark priority and upheld the jury's verdict. View "Hana Financial, Inc. v. Hana Bank, et al." on Justia Law

Apple sued Samsung, alleging infringement of Apple patents and dilution of Apple’s trade dress. Samsung counterclaimed, alleging infringement of its own patents. A jury returned a verdict substantially in Apple’s favor, finding that 26 Samsung smartphones and tablets infringed Apple patents and that six Samsung smartphones diluted Apple’s registered iPhone trade dress and unregistered iPhone 3G trade dress. The jury rejected Samsung’s infringement counterclaims and awarded Apple more than $1 billion. The district court set aside a portion of the damages award for certain products and scheduled a partial new trial on damages, but affirmed the jury’s liability findings. The court denied Apple’s request for a permanent injunction. The Federal Circuit affirmed the denial of injunctive relief with respect to design patents and trade dress, but vacated the denial with respect to Apple’s utility patents. The court noted that Samsung has stopped selling the products found to dilute trade dress, but that, with respect to the utility patents, the court must assess whether Apple’s evidence suffices to establish irreparable injury. View "Apple, Inv. v. Samsung Elecs. Co." on Justia Law

Starbucks filed suit against Black Bear claiming, among other things, trademark dilution in violation of the Federal Trademark Dilution Act (FTDA), 15 U.S.C. 1125(c), 1127. The district court denied Starbucks request for an injunction, concluding that Starbucks failed to prove that Black Bear's "Charbucks" marks at issue were likely to dilute Starbucks' famous "Starbucks" marks. The court concluded that the district court did not err in its factual findings that there was only a minimal degree of similarity between the Starbucks marks and the Charbucks marks and that Starbucks demonstrated only a weak association between the marks. Balancing the section 1125(c)(2)(B) factors and other facts that bear on a likelihood of dilution, the court agreed with the district court that Starbucks failed to show that Black Bear's use of its marks in commerce was likely to dilute the Starbucks marks. Accordingly, the court affirmed the judgment of the district court. View "Starbucks Corp. v. Wolfe's Borough Coffee, Inc." on Justia Law

Kraft sued Cracker Barrel Old Country Store for trademark infringement, Lanham Act, 15 U.S.C. 1051, and obtained a preliminary injunction against the sale of food products to grocery stores under the name Cracker Barrel, which is a registered trademark of Kraft. Kraft has been selling cheese in grocery stores under that name for more than 50 years. Kraft did not challenge CBOCS’s right to sell the products under the name Cracker Barrel in CBOCS’s restaurants, in its “country stores” that adjoin the restaurants, or by mail order or online. The Seventh Circuit affirmed, noting the similarity of the logos, the products, and of the channels of distribution. View "Kraft Foods Grp. Brands LLC v. Cracker Barrel Old Country Store, Inc." on Justia Law

Bell appealed the vacatur of a default judgment as void in connection with the manufacture and marketing by Iran of a helicopter that resembled Bell's Jet Ranger 206 in appearance. The court concluded that Bell's interpretation of Rule 60(b)(4) was contrary to the court's precedent, as well as that of almost every other circuit court of appeals, all of which rejected a time limit that would bar Rule 60(b)(4) motions; because Iran never appeared in the district court proceeding resulting in the default judgment, the district court properly applied the traditional definition of voidness in granting Iran's Rule 60(b)(4) motion; and because Bell's evidence regarding the effect in the United States of Iran's commercial activities abroad was either too remote and attenuated to satisfy the direct effect requirement of the Foreign Sovereign Immunities Act (FSIA), 28 U.S.C. 1605(a)(2), or too speculative to be considered an effect at all, the district court did not err in ruling the commercial activity exception in the FSIA did not apply. Accordingly, the court affirmed the judgment of the district court. View "Bell Helicopter Textron, Inc., et al. v. Islamic Republic of Iran, et al." on Justia Law