Justia Trademark Opinion Summaries

A dispute arose among the parties in this case over internet advertising through "AdWords," a Google program whereby companies pay the search engine to feature its ads whenever a user uses certain keywords. At issue was whether the Lanham Act was violated by one of the parties' use of keywords that resembled a competitior-party's service mark. Upon review of the keywords and service marks in question here, the Tenth Circuit found no violation of the Act. View "1-800 Contacts v. Lens.com, et al" on Justia Law

Plaintiffs, entities with rights or licenses to registered trademarks bearing the "Guggenheim" name, filed suit alleging trademark infringement and other federal and state law claims after defendant solicited investors to buy various financial products while presenting himself as "David B. Guggenheim." On appeal, defendant challenged the district court's entry of default judgment against him. The court concluded that the district court did not abuse its discretion by entering a default judgment against defendant where the district court was presented with a plethora of evidence to support its finding that he willfully defaulted. Moreover, defendant's asserted defense failed on the merits because his conduct plainly failed to satisfy the elements of a legitimate fair use defense, even if the district court erred by not specifically addressing this defense. View "Guggenheim Capital, LLC v. Birnbaum" on Justia Law

Unique filed a complaint against Ferrari for trademark infringement and false designation of origin under federal law; for deceptive trade practices under state law; and for violation of a final judgment. The district court held that Unique's light blue trademark was valid and enforceable but that Ferrari's blue gauze had not infringed upon that trademark. The clerk entered judgment for Unique on Ferrari's affirmative defense but for Ferrari on Unique's original charge of infringement. Ferrari appealed. At issue was whether a party could appeal on the merits from a decision in its favor, where a district court found against him as to one issue, nondispositive of the case. The court concluded that, although he may not challenge the district court's findings on the merits, he was entitled to vacatur of the portion of the district court's order adverse to him. Accordingly, on the facts of this case, the Supreme Court in Electrical Fittings Corp. v. Thomas & Betts Co. clearly prescribed vacatur of the district court's judgment on the question of validity as the legal consequence of an appeal by an otherwise-successful defendant in an infringement suit on the merits of that question. View "Unique Sports Products, Inc. v. Ferrari Importing Co." on Justia Law

Levi Strauss has stitched the back pocket of its jeans with the “Arcuate” design since 1873 and holds multiple trademarks on the design. In 2005, Abercrombie sought to register a “mirror image stitching design” for use on clothing, stating no limitations on the goods’ nature, type, channels of trade, or class of purchasers. Levi Strauss initiated an opposition to the parent application (concerning jackets and seeking Principal Registration). Levi Strauss petitioned to cancel Supplemental Registration of the child application covering other clothing. Abercrombie began selling “Ruehl jeans” with the design. Levi Strauss sued. The PTO stayed proceedings. Abercrombie claimed that its products were sold in different channels, at different prices. A jury found no infringement; the court rejected a claim of dilution by blurring. Levi Strauss did not appeal concerning infringement. The Ninth Circuit remanded, holding that dilution by blurring does not require identity or near identity of marks. Meanwhile, Abercrombie shut down the Ruehl brand, but sought to register its mirror-image design on “clothing, namely bottoms,” disclosing use of the design on denim shorts sold as “Gilley Hicks,” at different prices, and through different channels. Levi Strauss sought to amend to include the Gilley Hicks products. The district court declined and dismissed the dilution claim. The PTO opposition and cancellation proceedings were dismissed on the ground of issue preclusion. The Federal Circuit reversed, reasoning that the registrations at issue in the PTO cover a broader range of uses than were the subject of the litigation. View "Levi Strauss & Co. v. Abercrombie & Fitch Trading Co." on Justia Law

Plaintiff sued Marvel, contending that he conceived the comic book character "Ghost Rider," the related characters, and the origin story. Plaintiff also claimed that he owned the renewal term copyrights in those works. On appeal, plaintiff challenged the district court's grant of summary judgment in favor of Marvel, holding that plaintiff had assigned any rights he had in the renewal term copyrights to Marvel when he executed a form work-for-hire agreement (the Agreement), six years after the initial publication of the issue in question. The court, by applying the "strong presumption against the conveyance of renewal rights," concluded that the district court erred in holding as a matter of law that plaintiff had assigned his renewal rights to Marvel by signing the Agreement; plaintiff's claim was not untimely as a matter of law because there were genuine disputes regarding whether plaintiff should have known about Marvel's repudiation of his claim of ownership; and there were genuine disputes of material fact that precluded granting summary judgment on the issue of authorship. Accordingly, the court vacated and remanded for trial. View "Gary Friedrich Enters., LLC v. Marvel Characters, Inc." on Justia Law

Charter appealed the district court's holding that it was liable to CGS for its expenses in defending and settling a trademark infringement suit. The court concluded that the relevant insurance policy did not cover the liability alleged in the trademark action and Charter was not liable for the settlement amount; however, there was sufficient legal uncertainty about the coverage issue to oblige Charter to defend the action; and, therefore, the district court's ruling was affirmed insofar as it held that Charter was liable for defense costs, but reversed insofar as it held that Charter was liable for the settlement. Accordingly, the court vacated and remanded for further proceedings. View "CGS Indus., Inc. v. Charter Oak Fire Ins. Co." on Justia Law

Plaintiff, owner of a motivational services business organized around the concept of "Own Your Power," appealed from the district court's grant of a motion to dismiss finding that defendants' use of the phrase "Own Your Power" was fair use. The district court dismissed plaintiff's counterfeiting, vicarious infringement, and contributory infringement claims on additional grounds. Defendants published a magazine cover, hosted an event, and built a section of a website all utilizing the phrase. Because the court found that defendants have not adequately established a fair use defense, the court vacated the judgment of the district court with respect to the trademark infringement, false designation of origin, and reverse confusion claims and remanded for further proceedings. The court agreed with the district court's holdings with respect to plaintiff's vicarious infringement, contributory infringement, and counterfeiting claims and affirmed with respect to these claims. View "Kelly-Brown, et al. v. Winfrey, et al." on Justia Law

Alpha Marketing brought this cause of action against the Arkansas Lottery Commission seeking declaratory relief that Alpha's registered trademarks of "Arkansas Lottery," "Arkansas Lotto," and "Lottery Arkansas" were valid and that it held exclusive rights to use them. Alpha also sought injunctive relief enjoining the Commission's alleged acts of trademark infringement and monetary damages. Alpha later amended its complaint, alleging ultra vires acts and an unconstitutional taking. The Commission filed a motion to dismiss Alpha's lawsuit on the basis that the Commission had sovereign immunity from the trademark-infringement claims. The circuit court denied the motion. The Supreme Court reversed, holding (1) the Commission was an entity of the State entitled to the defense of sovereign immunity; (2) Alpha's claims for injunctive, monetary, and declaratory relief were barred by the defense of sovereign immunity; (3) the exceptions for waiver; ultra vires, arbitrary, capricious, or bad-faith acts; and takings did not apply. View "Ark. Lottery Comm'n v. Alpha Mktg." on Justia Law

B&B, manufacturer and seller of a product called "Sealtight," filed suit against Hargis, manufacturer of a product called "Sealtite," claiming trademark infringement and unfair competition. Hargis counterclaimed for false advertising and false designation of origin. The jury returned a verdict which rejected B&B's claims but found in favor of Hargis on its counterclaims. On appeal, B&B argued that the district court should have given preclusive effect to the Trademark Trial and Appeal Board's (TTAB) findings concerning the likelihood of confusion of the two companies' trademarks. B&B also appealed the award of attorney fees and costs. The court concluded that the district court properly refused to apply collateral estoppel to the TTAB's decision; rejected B&B's argument that the TTAB's factual findings from a trademark registration case were entitled to deference by the district court; and concluded that the district court did not abuse its discretion in excluding the TTAB's decision from the evidence presented to the jury. Therefore, the court affirmed the denial of B&B's motion for judgment as a matter of law or alternative motion for a new trial based on its claim of issue preclusion; affirmed the district court's evidentiary decisions; and remanded the award of attorney fees with directions to amend the award by deducting Hargis's attorney fees for the prior appeal. View "B & B Hardware v. Hargis Industries, et al" on Justia Law

In a trademark infringement dispute between Georgia-Pacific and von Drehle involving paper towels and "touchless" paper towel dispensers, the court vacated the district court's award of summary judgment in von Drehle's favor, and remanded the case for a jury determination of whether von Drehle was liable for contributory trademark infringement. Over three months later, von Drehle sought for the first time to amend its answer to include affirmative defenses of claim preclusion and issue preclusion. The court subsequently held that the district court erred in vacating the jury verdict and in awarding judgment in von Drehle's favor because: (1) von Drehle waived the preclusion defenses by failing to assert them in a timely manner; and (2) the district court erred in alternatively considering the preclusion defense sua sponte. Accordingly, the court vacated the district court's award of judgment in von Drehle's favor, and remanded the case to the district court with instructions to reinstate the jury's verdict in favor of Georgia-Pacific. View "Georgia Pacific Consumer Products, LP v. von Drehle Corp." on Justia Law