Justia Trademark Opinion Summaries

Tractel, manufacturer and seller of the Tirak traction hoist, brought suit claiming that Jiangsu's hoists infringed the trade dress of the Tractel traction hoist. At issue was whether the Tractel traction hoist qualified for trade dress protection. The court agreed with the district court that Tractel did not meet its burden of establishing non-functionality and affirmed the grant of summary judgment in favor of Jiangsu. The court affirmed the district court's award of attorney's fees to Jiangsu upon finding that this was an "exceptional" case meriting fees where Tractel's continued prosecution of its claims was held by the district court to be "unreasonable." While the line delineating "exceptional" cases under the Lanham Act, 15 U.S.C. 1125(a)(3), could be murky, this action fell squarely within the realm of exceptional cases contemplated by the Act. Finally, the court reversed the district court's award of non-taxable costs and certain taxable costs and remanded for further proceedings. View "Secalt S.A., et al. v. Wuxi Shenxi Construction Machinery Co., Ltd." on Justia Law

Plaintiff sued defendant for fraud and for misappropriation of trade secrets over plaintiff's invention of the "Pit Bull," a machine intended to make the process of cleaning drilling fluids more efficient. Defendant appealed from a jury verdict awarding plaintiff compensatory damages and punitive damages for fraud and compensatory damages for misappropriation of trade secrets. Because plaintiff did not prove that he was entitled to damages on his fraud claim, the court rendered a take-nothing judgment on plaintiff's fraud claim, and reversed the jury's award of punitive damages. Because the verdict for misappropriation of trade secrets was supported by sufficient evidence, the court affirmed the jury's verdict on plaintiff's claim for misappropriation of trade secrets. View "Bohnsack v. Varco, L.P." on Justia Law

Plaintiff owns registration for the mark G THE GOODYMAN. An examining attorney rejected defendant's application to register GOODY MAN for bakery goods, on the ground of likelihood of confusion with G THE GOODYMAN; the rejection is on appeal to the Trademark Trial and Appeal Board. Defendant filed a petition for cancellation of registration for G THE GOODYMAN, citing grounds of fraud and abandonment. Based on failure to comply with discovery orders, the Board entered default judgment against plaintiff and cancelled his registration of G THE GOODYMAN. On remand from the Federal Circuit, the Board held that the suspension of proceedings as required by Rule 2.127(d) was not automatic with plaintiff's filing of a motion for summary judgment, reinstated its default judgment, and cancelled plaintiff's trademark registration. The Federal Circuit affirmed, stating that default was reasonable, in light of plaintiff's repeated failures to comply, regardless of the court's reading of the Rule. View "Bendict v. Super Bakery, Inc." on Justia Law

In 1995, plaintiff, a popular psychic and astrologer, and defendant entered into a contract for production and distribution of materials featuring plaintiff's psychic and astrological services. Plaintiff granted defendant the right to use his trademark, name, and likeness. After a 2006 dispute led to litigation; a jury rejected plaintiff's claim that he had validly terminated the agreement, found that he had violated the agreement, and found that defendant owed him no compensation. In 2009, both parties sought injunctive relief to prevent the other party from using the trademark. The district court entered a preliminary injunction in favor of defendant, finding that plaintiff had assigned the trademark in perpetuity. The First Circuit affirmed. The district court did not abuse its discretion in issuing a preliminary injunction, based on its interpretation of the agreement and application of collateral estoppel, based on the prior litigation. View "Mercado-Salinasl v. Bart Enter. Int'l, Ltd." on Justia Law

For about 15 years, defendant owned and operated a business that trained individuals to use the computer-aided design program CATIA, which was developed by plaintiff. Plaintiff owns the copyrights for CATIA software products and has registered the CATIA trademark with the USPTO. Plaintiff sought damages for copyright and trademark infringement, unfair competition, and Michigan Consumer Protection Act violations arising from allegedly unauthorized use of its name and software licenses to operate a for-profit training course. The district court ruled in favor of plaintiff. The Sixth Circuit reversed the district court's refusal to set aside default judgment against defendant, who was pro se, and likely confused rather than engaging in a strategy of delay and who raised a plausible defense. The court upheld the court's grant of plaintiff’s motion for leave to subpoena the FBI, which had seized defendant's computers; the information sought was not protected grand jury information. View "Dassault Systemes, SA v. Childress" on Justia Law

This was an appeal of two consolidated suits brought under Indiana's and Missouri's trade secret statutes, involving information about the repair and overhaul of helicopter engines published by Rolls-Royce. The court held that the district court did not err in granting Rolls-Royce summary judgment on its trade secret claims where AvidAir was not entitled to the value of the proprietary revised documents, even if the new technical specifications were relatively minor in the context of the overhaul process as whole. Having concluded that the documents in question were protected trade secrets, the district court did not err in granting an injunction in favor of Rolls-Royce. Consequently, the court also affirmed the district court's grant of summary judgment for Rolls-Royce on AvidAir's antitrust and tortious interference claims. Accordingly, the judgment was affirmed. View "AvidAir Helicopter Supply v. Rolls-Royce Corp." on Justia Law

Plaintiff filed suit alleging that two shoe lines manufactured by defendant infringed plaintiff's trademark. At issue was whether a trademark registrant's delivery of a covenant not to sue, and voluntary dismissal of its trademark claims, divested a federal court of subject matter jurisdiction over a defendant's counterclaims for a declaratory judgment and cancellation of the trademark's registration. After considering the breadth of plaintiff's covenant not to sue and the improbability of future infringement, the district court dismissed defendant's counterclaims because no case or controversy existed under Article III of the United States Constitution. The court agreed with the district court and affirmed the judgment. View "Nike, Inc. v. Already, LLC" on Justia Law

Dissatisfied with the settlement of a trademark case, plaintiffs filed suit on March 30, 2009 in the Superior Court of New Jersey, alleging legal malpractice and related claims. The complaint was served on one defendant on April 14, but others (law firm) were served on April 23. More than 30 days after the first defendant was served but less than 30 days after the law firm was served, the law firm filed a notice of removal. On May 22, plaintiffs filed a motion to remand the action to state court. The federal district court denied remand, finding that the removal was timely under the later-served rule. The Third Circuit affirmed. The later-served rule, under which each defendant gets his own 30-day window, represents a better reading of the language of 28 U.S.C. 1446(b) and results in more equitable treatment to later-served defendants. View "Delalla v. Hanover Ins. Co" on Justia Law

Apple brought this action against Psystar for copyright infringement because Psystar was using Apple's software on Psystar computers. The district court held that Psystar was infringing Apple's federally registered copyrights in its operating software, Mac OS X, because Psystar was copying the software for use in Psystar's computers. Psystar subsequently appealed the district court's rejection of Psystar's copyright misuse defense, the district court's order enjoining Psystar's continuing infringement, and the district court's grant of Apple's motions to seal documents on grounds of maintaining confidentiality. The court held that Psystar's misuse defense failed because it was an attempt to apply the first sale doctrine to a valid licensing agreement. The court affirmed the district court's order enjoining Psystar's continuing infringement and Digital Millennium Copyright Act (DMCA), 17 U.S.C. 1203(b)(1), violations and held that the district court properly applied the Supreme Court's four eBay Inc. v MercExchange, L.L.C. factors. The court held, however, that there was no adequate basis on the record to support the sealing of any Apple records on grounds of confidentiality and applied the presumption in favor of access, vacating the district court's sealing orders. View "Apple Inc. v. Psystar Corp." on Justia Law

This case was brought pursuant to the Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. 1125(d)(1) over the registered domain name "gopets.com." The main issue on appeal was whether the term "registration" applied only to the initial registration of the domain name, or whether it also applied to a re-registration of a currently registered domain name by a new registrant. The court concluded that such re-registration was not a "registration" within the meaning of section 1125(d)(1). Therefore, the court held that, because Edward Hise registered gopets.com in 1999, long before GoPets Ltd. registered its service mark, Digital Overture's re-registration and continued ownership of gopets.com did not violate section 1125(d)(1). The court held, however, that the Hises violated the ACPA in registering the additional domains because the Hises acted in bad faith and the court affirmed the district court's award for each of those registrations. The court also affirmed the district court's conclusion that the Hises' use of gopets.com violated the Lanham Act, 15 U.S.C. 1051 et seq., and remanded for determination of any relief that the district court might find appropriate for that violation. The court finally vacated the district court's award of attorney's fees and remanded for reconsideration by the district court. View "GoPets Ltd. v. Hise, et al." on Justia Law