Justia U.S. 4th Circuit Court of Appeals Opinion SummariesArticles Posted in Trademark
McAirlaids, Inc. v. Kimberly-Clark Corp.
McAirlaids filed suit against Kimberly-Clark for trade-dress infringement and unfair competition under section 32(1)(a) and 43(a) of the Trademark Act of 1946 (Lanham Act), 15 U.S.C. 1114(1)(a) and 1125(a), and Virginia law. McAirlaids produces "airlaid," a textile-like material composed of cellulose fiber. McAirlaids fuses shredded cellulose fiber ("fluff pulp") through a patented embossing process that produces a "pixel" pattern for its absorbent products. McAirlaids filed suit against Kimberly-Clark after Kimberly-Clark began using a similar dot pattern on its GoodNites bed mates, an absorbent product manufactured in a manner different from McAirlaid's pads. On appeal, McAirlaids appealed the district court's grant of summary judgment for Kimberly-Clark. The court concluded that McAirlaids has presented sufficient evidence to raise a genuine issue of material fact regarding the functionality of its pixel-pattern. In particular, deciding whether McAirlaid's embossing pattern affects the quality of its pads requires weighing evidence and making credibility determinations. Therefore, the court vacated the district court's grant of summary judgment and remanded for further proceedings. View "McAirlaids, Inc. v. Kimberly-Clark Corp." on Justia Law
Swatch AG v. Beehive Wholesale, LLC
Swatch is the owner of three U.S. registrations for the mark SWATCH and for materials bearing that mark. Beehive produces and sells watch bands and faces under the mark SWAP. On appeal, Swatch challenged the district court's denial of its opposition to Beehive's trademark application and dismissal of its related claims for federal, state, and common law trademark infringement, trademark dilution, and unfair competition. The district court held that the Trademark Trial and Appeal Board's (TTAB) determinations were supported by substantial evidence; found facts based on evidence not presented to the TTAB under its authority under 15 U.S.C. 1071(b)(3); concluded that there was no likelihood of confusion between the two marks and likelihood that SWAP would dilute SWATCH; dismissed Swatch's infringement and unfair competition claims as a matter of law; and concluded that Beehive's mark was registrable because it was not merely descriptive. The court concluded that the district court properly reviewed Swatch's dilution-by-blurring claim entirely de novo; the district court also decided Swatch's trademark infringement and unfair competition claims, which were not before the TTAB, de novo; and, although the district court stated that it would apply an impermissible hybrid review to its likelihood of confusion and strength-of-the-mark analyses, there were more than sufficient facts recited in its opinion to support its findings. Accordingly, the court affirmed the judgment of the district court. View "Swatch AG v. Beehive Wholesale, LLC" on Justia Law
Georgia Pacific Consumer Products, LP v. von Drehle Corp.
In a trademark infringement dispute between Georgia-Pacific and von Drehle involving paper towels and "touchless" paper towel dispensers, the court vacated the district court's award of summary judgment in von Drehle's favor, and remanded the case for a jury determination of whether von Drehle was liable for contributory trademark infringement. Over three months later, von Drehle sought for the first time to amend its answer to include affirmative defenses of claim preclusion and issue preclusion. The court subsequently held that the district court erred in vacating the jury verdict and in awarding judgment in von Drehle's favor because: (1) von Drehle waived the preclusion defenses by failing to assert them in a timely manner; and (2) the district court erred in alternatively considering the preclusion defense sua sponte. Accordingly, the court vacated the district court's award of judgment in von Drehle's favor, and remanded the case to the district court with instructions to reinstate the jury's verdict in favor of Georgia-Pacific. View "Georgia Pacific Consumer Products, LP v. von Drehle Corp." on Justia Law
Tire Engineering and Distribution, LLC. v. Shandong Linglong Rubber Co.
Alpha sued defendants, foreign corporations, alleging that defendants conspired to steal its tire blueprints, produce infringing tires, and sell them to entities that had formerly purchased products from Alpha. A jury found in favor of Alpha on all claims and the district court upheld the damages award against defendants' post-trial challenges. Defendants subsequently appealed, contesting the verdict and the district court's exercise of personal jurisdiction. The court initially held that the district court properly exercised jurisdiction over defendants. The court affirmed the district court's judgment that defendants were liable to Alpha under the Copyright Act, 17 U.S.C. 101 et seq., and for conversion under Virginia law, but the court dismissed the remaining theories of liability submitted to the jury. Accordingly, the court affirmed the jury's damages award. Finally, the court vacated the district court's award of attorneys' fees. View "Tire Engineering and Distribution, LLC. v. Shandong Linglong Rubber Co." on Justia Law
Rosetta Stone Ltd. v. Google, Inc.
Rosetta Stone appealed from an order granting summary judgment in favor of Google for Rosetta Stone's trademark infringement, contributory and vicarious trademark infringement, and trademark dilution claims. Rosetta Stone also appealed from an order dismissing its unjust enrichment claim under Virginia Law. Rosetta Stone contended that Google's policies concerning the use of trademarks as keywords and in ad text created not only a likelihood of confusion but also actual confusion, as well as misleading Internet users in purchasing counterfeit Rosetta Stone software. The court affirmed the district court's order with respect to the vicarious infringement claim and the unjust enrichment claims. The court vacated, however, the district court's order with respect to Rosetta Stone's direct infringement claim after addressing the likelihood of confusion and the functionality doctrine; contributory infringement claim where the evidence recited by the district court was sufficient to establish a question of fact as to whether Google continued to supply its services to known infringers; and dilution claim where the district court erred by omitting the question of good faith and collapsing the fair-use defense into one question. The court remanded the case for further proceedings. View "Rosetta Stone Ltd. v. Google, Inc." on Justia Law
Ray Communications, Inc. v. Clear Channel Comm., Inc., et al.
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
Newport News Holdings Corporat v. Virtual City Vision, Incorpora
Plaintiff filed a complaint against defendants, Virtual City Vision, Inc. ("VSV") and Van James Bond Tran ("Tran"), alleging federal, state, and common law claims when defendants' newportnews.com domain name was confusingly similar to plaintiff's Newport News registered trademarks and its newport-news.com domain name. VCV raised numerous issues on appeal: the magistrate judge's failure to recuse; the court's assertion of personal jurisdiction over Tran, the district court's grant of summary judgment to plaintiff on the Anticybersquatting Consumer Protection Act ("ACPA") claim; the district court's denial of VCV's request to file a counterclaim; the district court's award of statutory damages and attorney's fees to plaintiff and sanctions against VCV's counsel; and the district court's finding that VCV was not the prevailing party for purposes of an award of attorneys' fees. The court held that the magistrate judge did not abuse his discretion in finding that the circumstances would not cause a reasonable observer to question his impartiality, the district court found sufficient facts to pierce the corporate veil and exercise jurisdiction over Tran, and the district court's grant of summary judgment on the ACPA claim was proper. The court also held that the district court did not abuse its discretion in denying VCV's motion for leave to file a counterclaim. The court further held that the district court did not clearly err in finding that VCV's infringement was exceptional or abused its discretion in awarding attorneys' fees, that VCV's attempt to profit from plaintiff's mark by creating a website focused on women's fashion was sufficiently egregious to merit the statutory damages award, that the award of sanctions was not an abuse of discretion, and that plaintiff's abandonment claim did not make VCV a prevailing party.