Justia Trademark Opinion Summaries

Bridgestone registered the mark POTENZA for tires in 1984, stating use in commerce since 1981. Bridgestone registered the mark TURANZA for tires in 2004, stating use in commerce since 1991. Federal filed an intent-to-use application to register the mark MILANZA for tires in 2004. Bridgestone opposed registration, arguing likelihood of confusion. The Board gave little weight to survey evidence of consumer confusion as to the source of tires bearing the MILANZA mark, and held that the "dissimilarity of the marks simply outweighs the other relevant factors." The Federal Circuit reversed, noting the identity of the goods, the lengthy prior use of POTENZA and TURANZA, market strength of the POTENZA and TURANZA marks, and the similarities of words, sounds, and connotation with MILANZA. Sufficient similarity has been shown as would be likely to cause consumer confusion, deception, or mistake.View "Bridgestone Americas Tire Operations, LLC v. Federal Corp." on Justia Law

Suntree appealed from the district court's order denying its motion for summary judgment and granting the motions for summary judgment filed by Ecosense and George Dussich with regard to Suntree's claims of false designation of origin and false advertising under Section 43(a) of the Lanham Act, 15 U.S.C. 1051-1127, common law trademark infringement and unfair competition, and deceptive and unfair trade practices pursuant to the Florida Deceptive and Unfair Trade Practices Act (FDUPTA), Fla. Stat. 501.201 et seq. Both Suntree and Ecosense manufacture baffle boxes, a filtration product. Suntree contended that the district court erred in concluding that Suntree failed to establish that Ecosense and Dussich directly or contributorily infringed on their trademark because it failed to present evidence of actual or of a likelihood of confusion. The court disagreed and affirmed the judgment. View "Suntree Technologies, Inc. v. Ecosense International, Inc., et al." on Justia Law

Christian Louboutin, a fashion designer best known for his use of red lacquer on the outsole of the shoes he designs, appealed the district court's order denying a motion for preliminary injunction against alleged trademark infringement by Yves Saint Laurent (YSL). The court concluded that the district court's conclusion that a single color could never serve as a trademark in the fashion industry was inconsistent with the Supreme Court's decision in Qualitex Co. v. Jacobson Products Co., and that the district court therefore erred by resting its denial of Louboutin's preliminary injunction motion on that ground. The court further concluded that Louboutin's trademark, consisting of a red, lacquered outsole on a high fashion woman's shoe, has acquired limited "secondary meaning" as a distinctive symbol that identified the Louboutin brand. Pursuant to Section 37 of the Lanham Act, 15 U.S.C. 1119, the court limited the trademark to uses in which the red outsole contrasted with the color of the remainder of the shoe. Because Louboutin sought to enjoin YSL from using a red sole as part of a monochrome red shoe, the court affirmed in part the order of the district court insofar as it declined to enjoin the use of the red lacquered outsoles in all situations. However, the court reversed in part the order of the district court insofar as it purported to deny trademark protection to Louboutin's use of contrasting red lacquered outsoles. View "Christian Louboutin S.A. v. Yves Saint Laurent America Inc." on Justia Law

Harley-Davidson had a licensing agreement with a subsidiary of DFS and received notice that the companies had merged. Harley-Davidson did not exercise its right to terminate, but later discovered that DFS had sold unauthorized products bearing the trademark to an unapproved German retailer. Harley-Davidon sent an e-mail saying that it believed DFS was in breach of contract and that it was suspending approval of products. DFS responded in kind. Harley-Davidson then attempted to recover unpaid royalties and to secure from DFS information required under the agreement. DFS refused these attempts, but submitted production samples for a new collection. Harley-Davidson reminded DFS of the termination. DFS advised Harley-Davidson that it had “wrongfully repudiated the License Agreement” and that DFS planned to act unilaterally in accordance with its own views of rights and obligations. The district court granted injunctive relief against DFS, which was attempting to litigate the dispute in Greece. The Seventh Circuit affirmed. Harley-Davidson made strong showings that DFS was deliberately breaching a licensing agreement and “has tried numerous legal twists and contortions to try to avoid the legal consequences.” The court rejected an argument that the agreement provision consenting to personal jurisdiction in Wisconsin was not binding on DFS. View "H-D MI, LLC v. Hellenic Duty Free Shops, S.A." on Justia Law

Skydive Arizona sued SKYRIDE for false advertising, trademark infringement, and cybersquatting. SKYRIDE subsequently appealed the district court's grant of partial summary judgment, the jury's actual damages and profits awards, and the district court's damages enhancement. Skydive Arizona cross-appealed the district court's limitation of the permanent injunction to Skydive Arizona, and sought a nationwide injunction against SKYRIDE. The court reversed with regard to the district court's doubling of actual damages, and reinstated the jury's original actual damages award for false advertising, and for trademark infringement. The court affirmed the district court on all other claims. Thus, as modified in actual damages for false advertising, $2.5 million in actual damages for trademark infringement, $2,500,004 in lost profits for trademark infringement, and $600,000 in statutory damages for cybersquatting. Accordingly, the court affirmed in part and modified in part.View "Skydive Arizona, Inc. v. Quattrochi, et al." on Justia Law

Plaintiff filed this action alleging trademark infringement under Section 32(1) of the Lanham Act, 15 U.S.C. 114(1); federal unfair competition under Section 43(a) of the Act, 15 U.S.C. 1125(a); unfair competition and deceptive trade practices under the North Carolina Unfair and Deceptive Trade Practices Act (UDTPA), N.C.Gen. Stat. 75-1.1, thereby challenging the use of its federally-registered AGRI-NET trademark by defendants. Plaintiff appealed the district court's order granting summary judgment to defendants on its affirmative defense of laches. The court concluded that the district court erred in determining that defendants established its defense as a matter of law, and, separately, in failing to consider whether laches barred plaintiff's claim for prospective injunctive relief. Accordingly, the court vacated the judgment and remanded for further proceedings.View "Ray Communications, Inc. v. Clear Channel Comm., Inc., et al." on Justia Law

The Trademark Trial and Appeal Board affirmed an examining attorney's refusal to register the trademark XCEED, in standard character form, for agricultural seed, citing the Lanham Act, 15 U.S.C. 1052(d). A previously-registered word and design mark for agricultural seeds consisted of the characters X-Seed in stylized form. The Federal Circuit affirmed, finding substantial evidence that the XCEED mark would likely cause confusion with the X-Seed mark. View "In re Viterra" on Justia Law

Since at least 1995, Community Trust Bancorp, Inc. (plaintiff) has used the mark “COMMUNITY TRUST” to promote its services; it included this mark on its website since 1998. Defendants, Community Trust Financial Corporation, and two subsidiaries, Community Trust Bank and Community Trust Bank of Texas, use the marks “COMMUNITY TRUST” and “COMMUNITY TRUST BANK,” and display these marks on their website. Defendants’ contacts with Kentucky are limited. They have branch offices exclusively in Texas, Louisiana, and Mississippi and limit their advertising and marketing campaigns to those states; they have no officers, directors, employees, agents, or any other physical presence in Kentucky. They do have customers who moved to Kentucky and continue to maintain their bank accounts from there. Three or four account owners, while residing in Kentucky, requested passwords to access the Defendants’ online banking website. Plaintiff brought a claim of trademark infringement under the Lanham Act, 15 U.S.C. 1114(1), and state law. The district court denied a motion to dismiss for lack of jurisdiction. The Sixth Circuit reversed, stating that the cause of action only tangentially related to defendants’ acts, providing passwords, within the forum state. View "Cmty. Trust Bancorp, Inc. v. Cmty Trust Fin. Corp." on Justia Law

DuoProSS and Inviro sell medical syringes designed to prevent accidental needle sticks. A person using an Inviro syringe: rotates the plunger; pulls the plunger back, drawing the needle into the syringe barrel; and snaps off the plunger, sealing the needle inside. Inviro owns the two trademarks at issue: the “SNAP! design mark,” for use with “ medical, hypodermic, aspiration and injection syringes” and the “SNAP SIMPLY SAFER mark,” for use with “cannulae; medical, hypodermic, aspiration and injection needles; medical, hypodermic, aspiration and injection syringes.” Inviro petitioned to cancel a trademark registration owned by DuoProSS for the design mark BAKSNAP, for use with a “safety syringe for medical use.” DuoProSS counterclaimed for cancellation of several Inviro registrations, including the marks at issue. Inviro withdrew its petition and agreed to voluntarily surrender one registration. The Board concluded that other registrations for the SNAP mark in typed format were merely descriptive and ordered cancellation, but declined to cancel the SNAP! design mark and the SNAP SIMPLY SAFER word mark. The Federal Circuit reversed. The Board failed to consider one of the marks as a whole, unduly focusing on one portion (!) and erroneously concluded that puffing could render the marks more than descriptive.View "Duopross Meditech Corp. v. Inviro Med.Devices, Ltd." on Justia Law

Eureka Water Company contended that a 1975 agreement granted it the exclusive license in 60 Oklahoma counties to sell spring water and other products using the "Ozarka" trademark. It sued Nestle Waters North America, Inc., the current owner of the Ozarka trademark, to obtain a declaratory judgment of that right and to obtain monetary relief under several theories, including breach of contract, tortious interference with business relations, unjust enrichment, and promissory estoppel. A jury found for Eureka on its contract and tortious interference claims, and the district court entered a judgment declaring that the 1975 agreement granted Eureka the exclusive right that it claimed in the Ozarka mark. In a post-verdict ruling, the district court denied as duplicative Eureka's equitable claims based on unjust enrichment and promissory estoppel. Nestle appealed. The Tenth Circuit agreed with most of Nestle's principal arguments. First, the Court reversed the district court's denial of Nestle's motion for JMOL on the contract claim because the 1975 agreement unambiguously did not cover spring water and under Oklahoma contract law. The Court reversed the denial of JMOL on the tortious-interference claim because Eureka failed to show that Nestle's decision to charge Eureka what it charged other vendors for bottled water was not privileged or justified. Third, the Court affirmed the denial of Eureka's unjust enrichment claim because the claim is based on the false premise that Eureka's license to use the Ozarka trademark covers spring water. The Court reversed, however, the denial of Eureka's promissory-estoppel claim, and remanded that claim for further consideration by the district court. View "Eureka Water Company v. Nestle Waters North America" on Justia Law