Justia Trademark Opinion Summaries

DHS sued VHS for misappropriation of trade secrets, breach of contract, and trademark violations. DHS engaged VHS to market and sell the drug Provasca. After that relationship ended, VHS began to manufacture, market, and sell Arterosil, a product similar in many respects to Provasca. The court held that the district court granted DHS's request for a preliminary injunction after making sufficient findings of fact to support each element of the analysis and applying the correct legal standard to those facts. Therefore, the court affirmed the district court's grant of the preliminary injunction in full and lifted the stay of the injunction. The court remanded and directed the district court to expedite the trial on the permanent injunction and to attempt to narrow the breadth of its preliminary injunction. View "Daniels Health Sciences, L.L.C v. Vascular Health Sciences, L.L.C." on Justia Law

In 2002 Brandeberry sold his phonebook business, AMTEL, to White, who in turn sold the business to Yellowbook, a national publisher of yellow-pages directories. In 2009, Brandeberry started a rival phonebook under the AMTEL name. Yellowbook brought a trademark-infringement suit. The district court found that when Brandeberry initially purchased the rights to the AMTEL mark the rights were transferred to both him individually and his corporation; since the sale to White did not involve Brandeberry in an individual capacity, Brandeberry retained his individual rights, and White received only a non-exclusive right to use the mark. The Sixth Circuit reversed, holding that the contract transferred exclusive ownership of the mark and, even if it did not, Brandeberry’s rights were abandoned. The initial contract cannot be read to create joint ownership, and trademark law would not permit joint ownership under the facts in this case. View "Yellowbook Inc. v. Brandeberry" on Justia Law

Eastland is the proprietor of the rap duo Phifty-50, which, according to its web site, has to its credit one album (2003) and a T-shirt. Eastland has registered “PHIFTY-50” as a trademark. It also claims a trademark in “50/50” and contends that Lionsgate and Summit infringed its rights by using “50/50” as the title of a motion picture that opened in 2011. The district court dismissed, finding the movie’s title descriptive because the film concerns a 50% chance of the main character surviving cancer. The Seventh Circuit affirmed, stating that the complaint fails at the threshold: it does not allege that the use of “50/50” as a title has caused any confusion about the film’s source, and any such allegation would be too implausible to support costly litigation. The phrase 50/50 or a sound-alike variant has been in use as the title of intellectual property for a long time. If there is any prospect of intellectual property in the phrase 50/50, Eastland is a very junior user and in no position to complain about the 2011 film. View "Eastland Music Grp. LLC v. Lionsgate Entm't Inc." on Justia Law

Mattel filed suit against MGA, claiming that MGA infringed Mattel's copyrights by producing Bratz dolls. On appeal, Mattel challenged the jury's verdict that Mattel misappropriated MGA's trade secrets and the district court's award of attorneys fees and costs to MGA under the Copyright Act, 17 U.S.C. 505. The court held that MGA's claim of trade-secret misappropriation was not logically related to Mattel's counterclaim and therefore, the court reversed the district court's holding that MGA's counterclaim-in-reply was compulsory. Because the district court did not abuse its discretion in awarding fees and costs under the Act, the court affirmed that award. View "Mattel, Inc., et al v. MGA Entertainment, Inc., et al" on Justia Law

Defendant, Building #19, Inc., was an off-price retail store that acquired products and resold them at discounted prices in stores in New England. Defendant advertised in newspapers around New England, and the ads often featured descriptions of the advertised goods. Plaintiff, Swarovski Aktiengesellschaft and Swarovski North American Limited (collectively, Swarovski), was a manufacturer and distributor of crystal and jewelry. It held several registered trademarks for the mark "Swarovski." After Defendant obtained several Swarovski crystal figurines it hoped to resell, Defendant designed a newspaper advertisement printed in a large font with the name "Swarovski." Plaintiffs sought a preliminary injunction barring Defendant from using the Swarovski name or mark in its advertising. The district court granted the injunction in part by limiting Defendant's use of the Swarovski name to a smaller font size. Defendant appealed. The First Circuit Court of Appeals reversed, holding that the district court erred by failing to include necessary findings on whether (1) Swarovski was likely to succeed in its infringement claim against Defendant by establishing that the proposed advertisement was likely to confuse customers, and (2) Swarovski would suffer irreparable harm as a result of the ad. Remanded. View "Swarovski Aktiengesellschaft v. Building #19, Inc." on Justia Law

In 1930, A.A. Milne transferred to Slesinger exclusive merchandising and other rights to Winnie-the-Pooh works in the U.S. and Canada. In 1961, Slesinger exclusively “assigned, granted, and set over to” Disney the rights in the 1930 agreement. A 1983 agreement sought to resolve the parties’ disputes, but Slesinger contends it retained rights in the works, while Disney maintains Slesinger assigned all rights. In 1991, before the present litigation, Slesinger sued in state court, alleging breach of the 1983 agreement. Slesinger acknowledged that the 1983 agreement “regranted, licensed and assigned all rights” to Disney. The action was ultimately dismissed. The dispute continued in federal court. The district court dismissed, noting that the parties’ actions indicated the rights were transferred to Disney in the 1983 agreement. Between 1983 and 2006, Disney registered at least 15 trademarks. In 2004, Disney registered copyrights in 45 works and renewed copyright registrations for another 14. Slesinger did not attempt to perfect or register trademarks or copyrights before asserting its federal claims and never objected to Disney’s registrations until 2006, when the state court dismissed its claims and Slesinger attempted to cancel Disney’s applications and marks. The Federal Circuit affirmed the Board’s dismissal, citing estoppel. View "Stephen Slesinger, Inc. v. Disney Enters., Inc." on Justia Law

Miller's is a restaurant with a location in Boynton Beach, Florida, and Boynton Carolina is its competitor. At issue was whether Miller's has common law trademark rights in the term "ale house" and trade dress rights in the interior decoration of its restaurant, and if so, whether Boynton Carolina violated Section 43 of the Trademark Act of 1946 (Lanham Act), 15 U.S.C. 1125(a), and the Copyright Act, 17 U.S.C. 106, when it adopted a name, decor, and a floor plan similar to Miller's own. The court held that the district court did not err in finding Miller's trademark infringement claim barred by issue preclusion, in finding Miller's trade dress not to be inherently distinctive, and in finding Miller's and Boynton Carolina's floor plans not to be substantially similar. View "Miller's Ale House, Inc. v. Boynton Carolina Ale House" on Justia Law

In 2001 Fox sought to register a mark having a literal element, consisting of the words COCK SUCKER, and a design element, consisting of a drawing of a crowing rooster. Since 1979, Fox has used this mark to sell rooster-shaped chocolate lollipops, which she “displays . . .in retail outlets in small replicas of egg farm collecting baskets to emphasize the country farmyard motif.” The consumers targeted by Fox’s business are, primarily, fans of teams that have gamecocks as mascots. The Trademark Trial and Appeal Board affirmed refusal by the examiner to register her mark, citing 15 U.S.C. 1052(a). The Federal Circuit affirmed, holding that a mark that creates a double entendre falls within the proscription of the section where, as here, one of its meanings is clearly vulgar. The section’s prohibition on registration of “immoral ... or scandalous matter” includes a mark that is “vulgar.”View "In re: Fox" on Justia Law

Under 35 U.S.C. 292(a) it is unlawful to engage in specified acts of false patent marking, such as affixing a mark that falsely asserts that the item is patented, with intent to deceive the public. Prior to 2011, the statute authorized private parties (relators) to bring a qui tam or informer’s suit for violations, but did not specify procedures or authorize the government to file its own suit to collect the penalty. The 2011 AIA eliminated the qui tam provision, but authorized actions for damages by any person “who has suffered a competitive injury as a result of a violation.” The AIA provides that marking products with expired patents is not a violation and that it applies to all pending cases. In 2010, Brooks sued, alleging that Dunlop marked a guitar string winder with the number of a patent that was both expired and invalidated. The AIA was enacted while the case was stayed, pending the outcome in another case. The district court held that the application of the AIA to pending actions did not violate the Due Process Clause and that the legislation rationally furthered a legitimate legislative purpose. The Federal Circuit affirmed. View "Brooks v. Dunlop Mfg., Inc." on Justia Law

Georgia-Pacific sued Four-U-Packaging, alleging that Four-U’s supply of off-brand paper towels for use in Georgia-Pacific paper-towel dispensers infringed on its trademarks. Four-U distributes paper and janitorial supplies; it does not manufacturer commercial paper systems. Four-U argued that the claims were barred by the ruling in a similar case brought by Georgia-Pacific in Arkansas against a different distributor of generic paper towels. The district court granted summary judgment to Four-U. The Sixth Circuit affirmed. All of the elements of issue preclusion are met and applying the doctrine poses no risk of creating inconsistent rulings. View "Georgia-Pacific Consumer Prods., LP v. Four-U-Packaging, Inc." on Justia Law