Articles Posted in Trademark

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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

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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

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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

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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

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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

Posted in: Internet Law, Trademark

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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

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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

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DRI filed suit against LIA and Ashley under the Lanham Act, 15 U.S.C. 1125(a), alleging that an advertisement placed in a trade magazine by Ashley, and two statements made by the director of LIA's research laboratory, which ran in articles in the same publication, were false and misleading. On appeal, DRI challenged the district court's grant of summary judgment for LIA and Ashley on DRI's false advertising claim. The court agreed with the district court that DRI failed to substantiate a claim that the Ashley Ad is either literally false or impliedly false; that DRI failed to provide sufficient support for a false advertising claim with respect to the director’s statement in the Gunin Article; and that DRI failed to provide sufficient evidence to demonstrate that the director's statement in the Andrews Article was a false or misleading representation of fact. Accordingly, the court affirmed the judgment. View "Design Resources, Inc. v. Leather Indus." on Justia Law

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After Radiance published an article online entitled “NAACP: National Association for the Abortion of Colored People” that criticized the NAACP’s stance on abortion, the NAACP sent Radiance a cease-and-desist letter. Radiance sought a declaratory judgment that it had not infringed any NAACP trademarks and the NAACP filed counterclaims alleging trademark infringement and dilution. The court concluded that the NAACP does not have actionable claims for trademark infringement in this case; Radiance's use of the NAACP's marks or colorable imitation falls squarely within the exceptions to trademark dilution specifically included in the Lanham Act, 15 U.S.C. 1051 et seq., to avoid encroaching on free speech rights; and therefore, the court reversed the district court's injunction and remanded with directions that defendant's counterclaims be dismissed. View "The Radiance Foundation, Inc. v. NAACP" on Justia Law

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Plaintiff, a dissatisfied applicant in an ex parte trademark proceeding, sought review of an adverse ruling on his trademark application by commencing a de novo action in a federal district court. Under the Lanham Act, if an applicant elects to proceed in district court and no adverse party opposed his application before the Patent and Trademark Office (PTO), the applicant must name the Director of the PTO as a defendant and pay all the expenses of the proceeding, whether or not she succeeds in the action. At the end of the proceeding in this case, the Director of the PTO sought the expenses of the proceeding from Plaintiff, including the PTO’s attorneys fees. The Fourth Circuit affirmed, holding that the imposition of all expenses on a plaintiff in an ex parte proceeding does not constitute “fee-shifting” that implicates the “American Rule” but, rather, constitutes an unconditional compensatory charge imposed on a dissatisfied applicant in an ex parte trademark proceeding who elects to engage the PTO in a district court proceeding. View "Shammas v. Focarino" on Justia Law

Posted in: Trademark