Justia U.S. 4th Circuit Court of Appeals Opinion Summaries

Plaintiff appealed the district court's grant of summary judgment in favor of defendant on the grounds that plaintiff's trade dress registrations, which cover the shape and color scheme of its chicken feeder products, are functional and thus only eligible for patent law's protection of utilitarian inventions.The Fourth Circuit affirmed the district court's grant of summary judgment to defendant on plaintiff's claims of trade dress infringement under the Lanham Act and North Carolina common law. The court held that the total feeder profile is functional and ineligible for trade dress protection. The court explained that, because the color trade dress was placed on the supplemental trademark register, rather than the principal register, it is presumed functional, and plaintiff bears the burden of proving non-functionality. In this case, the court held that plaintiff cannot do so because its own utility patents and witness testimony establish that the red pan and gray spokes serve the functional purpose of attracting chickens to feed. Finally, the court held that the district court's order recommending a trial sanction for spoliation of evidence was moot. View "CTB, Inc. v. Hog Slat, Inc." on Justia Law

Life filed a complaint against another corporation of the same name, alleging trademark infringement and unfair competition under the Lanham Act. Life obtained an injunction against the defendant corporation and its officers, including the corporation's president, who was not named a defendant. After entry of a default judgment against the corporation and damages-related discovery, the district court awarded damages and attorneys' fees against both the defendant corporation and its president personally.The Fourth Circuit held that the district court erred in entering judgment against the president personally when he was not named as a party or otherwise brought into the case by service of process. The court also held that the district court did not abuse its discretion in finding the president in contempt of court. Accordingly, the court affirmed in part, vacated in part, and remanded for the district court to determine whether any of the damages and fees award entered against the president is attributable to his contempt of court. View "Life Technologies Corp. v. Govindaraj" on Justia Law

The Fourth Circuit affirmed the district court's summary judgment ruling regarding the protectability of the proposed trademark BOOKING.COM. The court held that the district court, in weighing the evidence before it, did not err in finding that the USPTO failed to satisfy its burden of proving that the relevant public understood BOOKING.COM, taken as a whole, to refer to general online hotel reservation services rather than Booking.com the company. Therefore, the district court did not err in finding that BOOKING.COM is a descriptive, rather than generic, mark. Furthermore, because USPTO did not challenge the district court's finding that BOOKING.COM has acquired secondary meaning where the mark is deemed descriptive, the court affirmed the district court's partial grant of summary judgment finding that BOOKING.COM is protectable as a trademark. Finally, the district court's grant of attorney fees was affirmed under Shammas v. Focarino, 784 F.3d 219, 225 (4th Cir. 2015), where an applicant that decides to challenge the USPTO's ruling in district court must pay all the expenses of the proceeding whether the final decision was in its favor or not. View "Booking.com B.V. v. US Patent & Trademark Office" on Justia Law

This trademark infringement action concerned whether Walmart's use of the mark "Backyard Grill" on its grills, and grilling supplies infringed on Variety's use of its registered mark, "The Backyard," and unregistered marks, "Backyard" and "Backyard BBQ." Variety appealed the district court's calculation of disgorged profits and denial of its request for a jury trial, and Walmart cross-appealed the district court's grant of summary judgment for Variety and award of profit disgorgement, costs, and attorneys' fees. The court held that the district court improperly granted summary judgment in Variety's favor because there were genuine disputes of material fact as to whether a likelihood of confusion exists. The court vacated the district court's order granting Variety's motion for partial summary judgment and affirmed the order denying Walmart's motion for summary judgment; vacated every order entered subsequent to the summary judgment rulings; vacated the award of profit disgorgement, costs, and attorneys' fees; and dismissed the parties' respective cross-appeals pertaining to disgorgement, denial of jury trial, and award of costs and fees. View "Variety Stores, Inc. v. Wal-Mart Stores, Inc." on Justia Law

The district court held Early Education in contempt and awarded Rainbow School $60,000, plus attorney's fees and costs, after Early Education violated the terms of a consent judgment and permanent injunction. The Fourth Circuit affirmed and held that the district court did not clearly err in finding multiple violations of the injunction; Early Education's violations harmed the Rainbow School; and the district court did not abuse its discretion by awarding damages and attorney's fees and costs. The court dismissed Early Education's appeal from the order requiring it to undergo an audit based on lack of appellate jurisdiction. The court held that the question of whether Early Education should initially pay for an audit was neither inextricably linked nor a necessary precursor to the issues presented in the appeal from the district court's prior order, which made a determination of contempt and had nothing to do with paying for an audit. View "Rainbow School, Inc. v. Rainbow Early Education Holding LLC" on Justia Law

The district court held Early Education in contempt and awarded Rainbow School $60,000, plus attorney's fees and costs, after Early Education violated the terms of a consent judgment and permanent injunction. The Fourth Circuit affirmed and held that the district court did not clearly err in finding multiple violations of the injunction; Early Education's violations harmed the Rainbow School; and the district court did not abuse its discretion by awarding damages and attorney's fees and costs. The court dismissed Early Education's appeal from the order requiring it to undergo an audit based on lack of appellate jurisdiction. The court held that the question of whether Early Education should initially pay for an audit was neither inextricably linked nor a necessary precursor to the issues presented in the appeal from the district court's prior order, which made a determination of contempt and had nothing to do with paying for an audit. View "Rainbow School, Inc. v. Rainbow Early Education Holding LLC" on Justia Law

The Fourth Circuit affirmed the grant of summary judgment to Agadir in Grayson O's trademark and unfair competition action. Grayson O sells products designed to protect hair from heat during styling, and owns a federal trademark registration for the mark "F 450." The Fourth Circuit found that Grayson O's mark was both conceptually and commercially weak; even if "450" was a separable, dominant part of Grayson O's mark, given the many other differences between Grayson O's and Agadir's marks, the district court correctly concluded that the marks were not similar; Grayson O failed to demonstrate that Agadir had an intent to infringe; and Grayson O failed to present evidence of actual confusion. View "Grayson O Company v. Agadir International" on Justia Law

Verisign filed suit against XYZ and its CEO Daniel Negari, alleging that defendants' statements regarding the scarcity of desirable .com domain names violated the Lanham Act's, 15 U.S.C. 1125(a)(1)(B), false advertising provisions. The district court granted summary judgment in favor of XYZ. The court agreed with the district court that Verisign failed to establish the elements of a Lanham Act claim. In regard to XYZ's self-promoting statements, the court held that Verisign failed to produce the required evidence that it suffered an actual injury as a direct result of XYZ’s conduct. Nor can Verisign establish that XYZ’s statements about the availability of suitable .com domain names were false or misleading statements of fact. Accordingly, the court affirmed the judgment. View "VeriSign v. XYZ.com" on Justia Law

BBC, owner of the FLANAX trademark in Mexico, and its sister company, Bayer, filed suit against Belmora, owner of the FLANAX trademark in the United States, contending that Belmora used the FLANAX mark to deliberately deceive Mexican-American consumers into thinking they were purchasing BCC’s product. The court concluded that the Lanham Act’s, 15 U.S.C. 1125, plain language contains no unstated requirement that a section 43(a) plaintiff have used a U.S. trademark in U.S. commerce to bring a Lanham Act unfair competition claim; the Supreme Court’s guidance in Lexmark International, Inc. v. Static Control Components, Inc. does not allude to one, and the court's prior cases either only assumed or articulated as dicta that such a requirement existed; and therefore, the district court erred in imposing such a condition precedent upon Bayer’s claims. The court also concluded that BCC has adequately pled a section 43(a) false association claim for purposes of the zone of interests prong; BCC's allegations reflect the claim furthers the section 45 purpose of preventing the deceptive and misleading use of marks in commerce within the control of Congress; and BCC has also alleged injuries that are proximately caused by Belmora’s violations of the false association statute. Therefore, the court held that BCC has sufficiently pled a section 43(a) false association claim to survive Belmora’s Rule 12(b)(6) motion. Because these statements are linked to Belmora’s alleged deceptive use of the FLANAX mark, the court is satisfied that BCC’s false advertising claim, like its false association claim, comes within the Act’s zone of interests. The court inferred that the alleged advertisements contributed to the lost border sales pled by BCC, and that the claim also satisfies Lexmark’s proximate cause prong. Further, the court agreed with Bayer that the district court erred in overturning the TTAB’s section 14(3) decision because it read a use requirement into the section that is simply not there. Accordingly, the court vacated and remanded. View "Belmora LLC v. Bayer Consumer Care AG" on Justia Law

BBC, owner of the FLANAX trademark in Mexico, and its sister company, Bayer, filed suit against Belmora, owner of the FLANAX trademark in the United States, contending that Belmora used the FLANAX mark to deliberately deceive Mexican-American consumers into thinking they were purchasing BCC’s product. The court concluded that the Lanham Act’s, 15 U.S.C. 1125, plain language contains no unstated requirement that a section 43(a) plaintiff have used a U.S. trademark in U.S. commerce to bring a Lanham Act unfair competition claim; the Supreme Court’s guidance in Lexmark International, Inc. v. Static Control Components, Inc. does not allude to one, and the court's prior cases either only assumed or articulated as dicta that such a requirement existed; and therefore, the district court erred in imposing such a condition precedent upon Bayer’s claims. The court also concluded that BCC has adequately pled a section 43(a) false association claim for purposes of the zone of interests prong; BCC's allegations reflect the claim furthers the section 45 purpose of preventing the deceptive and misleading use of marks in commerce within the control of Congress; and BCC has also alleged injuries that are proximately caused by Belmora’s violations of the false association statute. Therefore, the court held that BCC has sufficiently pled a section 43(a) false association claim to survive Belmora’s Rule 12(b)(6) motion. Because these statements are linked to Belmora’s alleged deceptive use of the FLANAX mark, the court is satisfied that BCC’s false advertising claim, like its false association claim, comes within the Act’s zone of interests. The court inferred that the alleged advertisements contributed to the lost border sales pled by BCC, and that the claim also satisfies Lexmark’s proximate cause prong. Further, the court agreed with Bayer that the district court erred in overturning the TTAB’s section 14(3) decision because it read a use requirement into the section that is simply not there. Accordingly, the court vacated and remanded. View "Belmora LLC v. Bayer Consumer Care AG" on Justia Law