Justia U.S. 4th Circuit Court of Appeals Opinion SummariesArticles Posted in Trademark
Dewberry Engineers Inc. v. Dewberry Group, Inc.
Two companies that operate in the real estate development industry have spent years embroiled in a dispute over their shared name: “Dewberry.” Dewberry Engineers sued Dewberry Group to quell the latter’s use of several new insignias it developed as part of its rebrand. Dewberry Engineers owns federal trademark rights to the “Dewberry” mark and claims Dewberry Group’s rebranding efforts infringe that mark and breach an agreement struck between the sparring corporations over a decade ago. The district court sided with Dewberry Engineers in the proceedings below, assessing a nearly $43 million profit disgorgement award against Dewberry Group for its infringement, enjoining it from further breaches of its agreement with Dewberry Engineers, and ordering it to pay attorneys’ fees for forcing Dewberry Engineers to litigate an exceptional case of trademark infringement. The Fourth Circuit affirmed. The court explained that the parties share an identical, arbitrary dominant word and disclaim different suffixes (and prefixes in some cases) in the marks at issue. The record shows they also employ those marks in related, overlapping, and complementary services. Those details go some distance toward creating a likelihood of confusion as to the origin of either party’s “Dewberry” mark. Moreover, the court explained that despite Dewberry Group’s failure to calculate exact figures or provide evidence of deductions from infringement revenues for losses and expenses, the court equitably reduced the requested award by twenty percent to $42,975,725.60. The court finds no error of fact or law suggesting the district court’s conclusions were an abuse of its discretion. View "Dewberry Engineers Inc. v. Dewberry Group, Inc." on Justia Law
Interprofession du Gruyere v. U.S. Dairy Export Council
Appellants are a Swiss consortium, Interprofession du Gruyère (“IDG”), and a French consortium, Syndicat Interprofessionel du Gruyère (“SIG”) (together, “the Consortiums”), who believe that gruyere should only be used to label cheese that is produced in the Gruyère region of Switzerland and France. Seeking to enforce this limitation in the United States, the Consortiums filed an application with the United States Patent and Trademark Office (“USPTO”) to register the word “GRUYERE” as a certification mark. Appellees, the U.S. Dairy Export Council, Atalanta Corporation, and Intercibus, Inc. (together, “the Opposers”), opposed this certification mark because they believe the term is generic and, therefore, ineligible for such protection. The USPTO’s Trademark Trial and Appeal Board (“TTAB”) agreed with the Opposers and held that “GRUYERE” could not be registered as a certification mark because it is generic. The Consortiums filed a complaint challenging the TTAB’s decision in the United States district court. The district court granted summary judgment for the Opposers on the same grounds as articulated in the TTAB’s decision. The Fourth Circuit affirmed and concluded that that the term “GRUYERE” is generic as a matter of law. The court explained that the Consortiums have not brought evidence bearing on whether, at an earlier point in history, the term “GRUYERE” was in common use in the United States. But even assuming that was the case, this argument still fails. In sum, the Consortiums cannot overcome what the record makes clear: cheese consumers in the United States understand “GRUYERE” to refer to a type of cheese, which renders the term generic. View "Interprofession du Gruyere v. U.S. Dairy Export Council" on Justia Law
Dmarcian, Inc. v. Dmarcian Europe BV
Dmarcian, Inc. (dInc) and dmarcian Europe BV (dBV)—and a broken business relationship. The original dmarcian, dInc, is a Delaware corporation with headquarters in North Carolina. Its corporate homonym, dBV, is a Dutch entity based in the Netherlands. The two companies negotiated an agreement authorizing dBV to sell dInc’s software in Europe and Africa. The license was done on a handshake, and the parties now dispute its terms. Among other allegations, dInc accuses dBV of directly competing for customers, which prompted dInc to bring claims of copyright and trademark infringement, misappropriation of trade secrets, and tortious interference. The district court exercised personal jurisdiction over dBV and declined to dismiss for forum non conveniens. The district court also issued a preliminary injunction limiting dBV’s use of dInc’s intellectual property. The district court later held dBV in contempt for violating the injunction, and dBV appealed. The Fourth Circuit affirmed except as to one aspect of the contempt order, which the court vacated and remanded for further proceedings as to the proper amount of sanctions. The court explained that the district court did not err in exercising personal jurisdiction, in declining to dismiss for forum non conveniens, and in issuing a preliminary injunction. Further, the court held that the district court was also justified in issuing a contempt sanction; but the court requires a more thorough examination of the sanction amount. While the preliminary injunction may not be the final word on the merits, its entry was also not an abuse of discretion considering the weighty interests and detailed findings discussed at length above. View "Dmarcian, Inc. v. Dmarcian Europe BV" on Justia Law
The Prudential Insurance Company of America v. Shenzhen Stone Network Information Ltd.
Appellant Shenzhen Stone Network Information Ltd. (“SSN”) appealed the district court’s order granting summary judgment on Appellee Prudential Insurance Company of America’s (“Prudential”) cybersquatting claim. Prudential owns several registered trademarks on the term PRU and other PRU-formative marks. Prudential initiated the underlying action after discovering that SSN had registered the domain name PRU.COM. Prudential alleged that SSN violated the Anti-Cybersquatting Consumer Protection Act (“ACPA”), by registering a domain name identical to Prudential’s distinctive mark with the bad faith intent to profit. The district court determined that SSN could be held liable for cybersquatting because the ACPA is not limited to the initial registration of a domain name but encompasses subsequent re-registrations as well. The district court concluded that SSN possessed the bad faith intent to profit from the disputed domain name and granted Prudential’s motion for summary judgment. On appeal, SSN contests the district court’s ruling that SSN acted in bad faith when registering the disputed domain name. The Fourth Circuit affirmed, concluding that the totality of the circumstances supports the conclusion that SSN acted in bad faith and that SSN is not entitled to the benefit of the ACPA’s safe harbor provision. The court reasoned that SSN failed to satisfy the statute’s safe harbor provision. First, SSN’s self-serving denials of subjective belief that its use of the PRU.COM domain name was lawful are insufficient to defeat summary judgment absent objective corroboration. Further, SSN did not have reasonable grounds to believe that its registration of the PRU.COM domain name was otherwise lawful. View "The Prudential Insurance Company of America v. Shenzhen Stone Network Information Ltd." on Justia Law
France.com, Inc. v. The French Republic
In 1994, a California corporation purchased and registered the domain name and trademarks for “France.com.” Twenty years later, the corporation initiated a lawsuit in France, challenging a Dutch company’s use of the France.com trademark. The French Republic and its tourism office intervened, seeking to protect their country’s Internet identity and establish its right to the domain name. French trial and appellate courts declared the French Republic the rightful owner of the domain name. In the U.S., the corporation sued the French entities, which asserted sovereign immunity under the Foreign Sovereign Immunities Act (FSIA), 28 U.S.C. 1604. The district court denied a motion to dismiss, concluding that immunity “would be best raised after discovery.”The Fourth Circuit reversed, directing the district court to dismiss the complaint with prejudice. The court concluded that it had jurisdiction over the appeal because the district court rested its order not on a failure to state a claim but on a denial of sovereign immunity, which constitutes an appealable collateral order. Neither FSIA’s “commercial activity” exception nor its “expropriation” exception applies. It is not clear that the French State’s actions in obtaining the website in judicial proceedings constitute “seizure” or an “expropriation” and they clearly do not constitute “commercial activity.” The corporation itself invoked the power of the French courts; only because it did so could the French State intervene in that action to obtain the challenged result. View "France.com, Inc. v. The French Republic" on Justia Law
Snyder’s-Lance, Inc. v. Frito-Lay North America, Inc.
The waiver language in 15 U.S.C. 1071 relates only to the choice of review options for the decision appealed from. The Fourth Circuit held that a party seeking review of a subsequent Trademark Board decision may seek review in either the Federal Circuit or the district court, even if the Trademark Board's initial decision was reviewed by the Federal Circuit.In this case, the parties' dispute concerns the registration of the mark "PRETZEL CRISPS." Plaintiff sought to register the mark in 2004, but the trademark examiner denied registration. Plaintiffs reapplied for registration in 2009, but Frito-Lay opposed the registration and argued that "PRETZEL CRISPS" was generic for pretzel crackers and not registrable. The Trademark Board sided with Frito-Lay in 2014. Plaintiffs opted for the section 1071(a) route and appealed the Trademark Board's 2014 decision to the Federal Circuit. The Federal Circuit agreed with plaintiffs in 2015, remanding to the Trademark Board. On remand in 2017, the Trademark Board again concluded that "PRETZEL CRISPS" was generic, and alternatively concluded that "PRETZEL CRISPS" lacked distinctiveness. Plaintiffs sought review of the Trademark Board's 2017 decision, but the district court dismissed the case without prejudice for lack of subject matter jurisdiction. The Fourth Circuit reversed the district court's judgment dismissing the case for lack of subject matter jurisdiction and remanded for further proceedings. The court explained that the statutory text of the Lanham Act, while ambiguous, favors plaintiffs' argument in favor of jurisdiction. Furthermore, this conclusion is bolstered by legislative history, the court's sister circuits' holdings in similar cases, and policy considerations. The court remanded for further proceedings. View "Snyder's-Lance, Inc. v. Frito-Lay North America, Inc." on Justia Law
Fleet Feet, Inc. v. Nike, Inc.
Fleet Feet filed suit against NIKE, alleging that NIKE's advertising campaign with the tagline "Sport Changes Everything" infringed on Fleet Feet's trademarks "Change Everything" and "Running Changes Everything." Fleet Feet also sought a preliminary injunction, which the district court granted, enjoining NIKE's use of the tagline and any designation "confusingly similar" to Fleet Feet's marks.While NIKE's appeal was pending, NIKE ended its advertising campaign and disavowed any intent to continue using the tagline. Therefore, the Fourth Circuit dismissed the appeal as moot because NIKE no longer has a legally cognizable interest in the validity of the preliminary injunction. The court explained that, at best, NIKE's argument that the "confusingly similar" language in the preliminary injunction order presents only a potential controversy, which cannot sustain this appeal. In regard to NIKE's contention that the injunction bond is a live issue, the court agreed that the bond keeps the case as a whole from being moot but it does not do the same for the appeal. In this case, if the district court ultimately finds that NIKE's "Sport Changes Everything" campaign infringed on Fleet Feet's marks, the preliminary injunction will have been, at worst, harmless error. If it does not, NIKE may recover on the bond. Either way, the court explained that the district court must be the first to resolve NIKE's challenge on the merits. The court found no good reason to vacate the district court's order and opinion granting a preliminary opinion, remanding for further proceedings as necessary. View "Fleet Feet, Inc. v. Nike, Inc." on Justia Law
RXD Media, LLC v. IP Application Development LLC
This appeal arose out of trademark litigation initiated by RXD against Apple over rights to use the "ipad" mark. After the district court awarded summary judgment in favor of Apple on all claims advanced by RXD and on all counterclaims asserted by Apple, the district court permanently enjoined RXD from any commercial use of the terms "ipad" or "ipod." RXD challenges the district court's infringement rulings.The Fourth Circuit affirmed the district court's judgment, holding that the district court properly granted summary judgment in favor of Apple on both its claims and counterclaims, and that the district court did not abuse its discretion in its award of injunctive relief to Apple. The court concluded that Apple had an established, protected mark capable of being infringed by RXD's use of the mark in 2016. The court explained that RXD's use of "ipad" on its ipadtoday.com website was not subject to "first user" protection. The court also concluded that a jury could not have reasonably concluded that RXD’s use of the "ipad" mark was unlikely to cause consumer confusion. Therefore, the district court did not err in awarding summary judgment to Apple on its claim of trademark infringement. Given the clear evidence of RXD's infringement of Apple's use of the "ipad" mark, the court held that the district court did not abuse its discretion in issuing the injunctive relief in favor of Apple.The court rejected RXD's contention that the district court erred in holding that Apple met its burden of establishing a bona fide intent to use the "ipad" mark for cloud storage services. Rather, contrary to RXD's assertion, Apple did not apply to use the "ipad" mark for cloud storage. The court explained that Apple was not required to prove a bona fide intent to use a trademark for services not identified in its application. Accordingly, the district court did not err in concluding that Apple had a bona fide intent to use the mark for the services listed in its application. View "RXD Media, LLC v. IP Application Development LLC" on Justia Law
CTB, Inc. v. Hog Slat, Inc.
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 Technologies Corp. v. Govindaraj
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