Justia Trademark Opinion Summaries

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The case in question involves a dispute over the use of the term "red gold" in the marketing of wristwatches. The plaintiff-appellant Solid 21, a luxury jewelry and watch business, owns a trademark in RED GOLD® since 2003. Defendant-appellee Breitling, a luxury watch manufacturer, uses the term “red gold” in its advertisements, product listings, and catalogues. Solid 21 argued that Breitling's use of the term amounted to trademark infringement, claiming it was likely to cause confusion, leading customers to mistakenly believe that Solid 21 was affiliated with Breitling’s products.The United States District Court for the District of Connecticut granted summary judgment for Breitling, finding that the company used the term “red gold” permissibly under the Lanham Act’s fair use defense. Solid 21 appealed this decision, insisting that material issues of fact precluded summary judgment for Breitling.The United States Court of Appeals for the Second Circuit disagreed and affirmed the district court's judgment. The court reasoned that Breitling used the term "red gold" in a descriptive sense, not as a mark, and in good faith. The court also pointed out that Solid 21 failed to provide sufficient evidence to create a genuine issue of material fact as to whether Breitling was acting in bad faith while using the term “red gold.” View "Solid 21, Inc. v. Breitling USA, Inc." on Justia Law

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The United States Court of Appeals for the Fourth Circuit affirmed a lower court's decision to grant a motion to quash a subpoena issued by Xactware Solutions, Inc. against Buildxact Software Limited in a trademark dispute. The case revolves around Xactware's desire to orally depose a Buildxact employee as part of opposition proceedings in the U.S. Patent and Trademark Office (PTO). All of Buildxact's employees are located in Australia.The court agreed with the district court's determination that it lacked authority to subpoena evidence that, under PTO rules, is inadmissible in internal PTO proceedings. The court reasoned that 35 U.S.C. § 24, which allows district courts to subpoena testimony for use in any contested case in the Patent and Trademark Office, only empowers district courts to issue subpoenas for depositions that comply with PTO rules.The court rejected Xactware's argument that the PTO's rules contradict the Federal Rules of Civil Procedure and thus exceed the PTO's statutory authority. The court found that the PTO rules and the Federal Rules serve different purposes and contexts, and that the PTO's rule-making authority under Section 23 of the Patent Act allows it to establish its rules for taking affidavits and depositions.The court concluded that a contrary ruling would significantly displace the PTO's authority to police its internal proceedings, and affirmed the lower court's decision to quash the subpoena. View "Xactware Solutions, Inc. v. Buildxact Software Limited" on Justia Law

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The United States Court of Appeals for the Federal Circuit reviewed a decision by the Trademark Trial and Appeal Board denying Naterra International, Inc.'s petition for cancellation of Samah Bensalem's BABIES’ MAGIC TEA standard character mark registration. Naterra argued that there was a likelihood of confusion between its BABY MAGIC mark and Bensalem’s BABIES’ MAGIC TEA mark. The Court examined several factors, including the similarity of the marks, the nature of the goods, and the trade channels. The Court found that the Board erred in its assessment of the similarity of the marks and the trade channels and failed to properly evaluate relevant evidence about the nature of the goods. Therefore, the Court vacated the Board's decision and remanded the case for further proceedings. The Court also found the Board did not err in its assessment of the fame of Naterra's mark. View "NATERRA INTERNATIONAL, INC. v. BENSALEM " on Justia Law

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In 2020, the law firm Chestek PLLC applied for a trademark for the mark "CHESTEK LEGAL" but provided only a P.O. box as its domicile address. The United States Patent and Trademark Office (USPTO) refused the application because it did not comply with the domicile address requirement. Chestek argued that the rules enforcing this requirement were improperly promulgated under the Administrative Procedure Act (APA). The Trademark Trial and Appeal Board affirmed the examiner's refusal. On appeal to the United States Court of Appeals for the Federal Circuit, Chestek argued that the domicile address requirement was improperly promulgated for two reasons: the USPTO was required to comply with the requirements of notice-and-comment rulemaking under 5 U.S.C. § 553 but failed to do so because the proposed rule did not provide notice of the domicile address requirement adopted in the final rule, and the domicile address requirement is arbitrary and capricious because the final rule failed to offer a satisfactory explanation for the domicile address requirement and failed to consider important aspects of the problem it purports to address, such as privacy. The Federal Circuit found the domicile address requirement to be a procedural rule that is exempt from notice-and-comment rulemaking. Furthermore, the USPTO's decision to require the address provided by all applicants to be a domicile address was not arbitrary or capricious for failure to provide a reasoned justification. The court affirmed the Board's refusal to register Chestek's mark. View "In Re CHESTEK PLLC " on Justia Law

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This case arises from a trademark infringement dispute under the Lanham Act between Rolex Watch USA, Incorporated (Rolex) and Beckertime, L.L.C.; Matthew Becker (Beckertime). Rolex is a luxury watch seller with legally protectable interest in numerous trademarks. Beckertime sells primarily decades-old preowned watches containing Rolex branded parts, including watches identified as “Genuine Rolex,” but contain both Rolex and non-Rolex parts. The United States Court of Appeals for the Fifth Circuit affirmed in part, modified in part, and remanded in part the decision of the United States District Court for the Northern District of Texas.The district court found that Beckertime infringed Rolex’s trademark but refused to disgorge Beckertime of its profits, applying the laches defense. Rolex appealed, seeking a modification to the injunction, treble profits, and attorneys’ fees, while Beckertime sought the application of an alternative test to determine infringement.The Appellate Court upheld the district court's ruling that Beckertime infringed Rolex’s trademark, finding no clear error in the determination. The court affirmed the district court's decision to apply the laches defense, preventing the disgorgement of Beckertime's profits. The court found that Rolex had failed to offer a valid justification for its delay in filing suit and that Beckertime was prejudiced by this delay.Regarding remedies, the Appellate Court found that Rolex was not entitled to treble profits or attorneys’ fees. The court pointed out that Rolex had not moved for attorneys’ fees within the required time period under Federal Rule of Civil Procedure 54(d)(2), thereby waiving its right to such fees. Furthermore, the district court found no evidence of deliberate counterfeiting by Beckertime to warrant the imposition of treble profits.The court also addressed the scope of the injunction issued by the district court. It modified the injunction to prohibit the sale of Rolex watches with non-genuine bezels, but upheld the exclusion of all non-genuine dials from the injunction. The court also agreed with Rolex that the typographical errors in one section of the injunction rendered it vague and unqualified, and remanded the case to the district court for clarification. View "Rolex Watch v. Beckertime" on Justia Law

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In a trademark dispute between two companies that used the word "Punchbowl" in their marks, the United States Court of Appeals for the Ninth Circuit reversed the district court's summary judgement in favor of AJ Press, LLC. The court held that AJ Press, LLC's use of the Punchbowl mark was not outside the scope of the Lanham Act under the "Rogers test". The Rogers test, which governs disputes over trademarks that are used in expressive works protected by the First Amendment, does not apply when the accused infringer uses a trademark to designate the source of its own goods. The court found that AJ Press, LLC was using the Punchbowl mark to identify and distinguish its news products. The court reversed the district court's judgement and remanded for further proceedings, instructing the district court to proceed to a likelihood-of-confusion analysis under the Lanham Act. View "Punchbowl, Inc. v. AJ Press, LLC" on Justia Law

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In the case between Vans, Inc., VF Outdoor, LLC (collectively "Vans") and MSCHF Product Studio, Inc. ("MSCHF"), the United States Court of Appeals For the Second Circuit affirmed the district court's decision to grant a temporary restraining order and preliminary injunction against MSCHF. MSCHF had created a sneaker, the Wavy Baby, which appeared to mimic Vans' Old Skool shoe. Vans sued MSCHF for trademark and trade dress infringement. MSCHF argued that its use of Vans' marks was protected by the First Amendment. However, the Court of Appeals applied the recent Supreme Court decision in Jack Daniel's Properties, Inc. v. VIP Products LLC, which held that special First Amendment protections do not apply when trademarks are used as source identifiers. The Court of Appeals concluded that Vans was likely to prevail in arguing that MSCHF's Wavy Baby shoes used Vans' marks and trade dress as source identifiers, and that there was a likelihood of confusion as to the source of the Wavy Baby shoes. The court also affirmed the district court's decisions requiring MSCHF to escrow its revenues from Wavy Baby sales and not requiring a bond determination because MSCHF never requested security. View "Vans, Inc. v. MSCHF Product Studio, Inc." on Justia Law

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Janssen spent 10 years and over half a billion dollars developing an injectable version of the cancer drug trabectedin and patented some of the manufacturing processes. The data, specifications, and manufacturing methods were kept confidential as trade secrets. In 2015, the FDA approved the drug, Yondelis, for use in certain cancer patients. Two years later, two competitors—a Chinese corporation, and its U.S. subsidiary, eVenus—sought FDA approval to sell a generic version of Yondelis. Janssen sued for patent infringement. During discovery, Janssen obtained documents that indicated the defendants misappropriated trade secrets. Janssen filed another lawsuit under the Defend Trade Secrets Act, 18 U.S.C. 1836 (DTSA), became convinced that the defendants had spoliated evidence, and filed an ex parte application, asking that U.S. Marshals seize eVenus’s network servers and stored data, and certain laptops and cell phones.The district court denied the application, concluding that Janssen had not shown that eVenus was in actual possession of the property or that eVenus’s property was at the location of the proposed seizure. It also found an insufficient showing of immediate and irreparable harm or immediate concern for spoliation and that the seizure would encompass company information not limited to the matters at issue. The Third Circuit dismissed an appeal for lack of jurisdiction. A DTSA seizure order is directed to law enforcement—not a party against whom the order could be enforced by threat of contempt–so the order did not effectively deny an injunction. View "Janssen Products LP v. Evenus Pharmaceuticals Laboratories Inc" on Justia Law

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Great Concepts applied to register “DANTANNA’S” as a mark for a “steak and seafood restaurant.” Its 764 Registration issued in 2005. Chutter’s predecessor-in-interest, Dan Tana, subsequently petitioned the Trademark Trial and Appeal Board to cancel the Registration, based on an alleged likelihood of confusion with Tana’s common law “DAN TANA” mark for restaurant services. The cancellation proceeding was suspended during a trademark infringement civil suit. In 2009, the district court granted Great Concepts summary judgment; the Eleventh Circuit affirmed. In December 2010, the Board dismissed Tana’s cancellation proceeding. Meanwhile, in March 2010, Great Concepts’ then-attorney, Taylor, filed with the Patent and Trademark Office (PTO) a combined declaration of use and declaration of incontestability, under the Lanham Act, 15 U.S.C. 1058, 1065, declaring “there is no proceeding involving said rights pending and not disposed of either in the U.S. Patent and Trademark Office or in the courts.” At the time, both the PTO cancellation proceeding and the Eleventh Circuit appeal were pending.In 2015, Chutter successfully petitioned the PTO for cancellation of Great Concepts’ “DANTANNA’S” mark based on Taylor’s 2010 false affidavit. The Federal Circuit reversed. The statute limits the Board’s authority to cancel registration of a mark to circumstances in which the “registration was obtained fraudulently,” but does not authorize cancellation of a registration when the incontestability status of that mark is “obtained fraudulently.” View "Great Concepts, LLC v. Chutter, Inc." on Justia Law

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Seven years ago, A.D. was hired to create a PVT (“pressure volume temperature”) simulation software program. Sah was hired by A.D. to develop a PVT software program in exchange for a stake in one of A.D.’s companies, IPSS. Eight months later, a product called InPVT hit the market. Plaintiff Calsep started looking into InPVT. In Calsep’s assessment, A.D. didn’t have the technical skills or resources to develop a PVT product. Calsep filed another motion to compel, alleging that A.D. still hadn’t adequately disclosed his source code control system. Although A.D. had “produced [a] purported source code system” in April and July, Calsep claimed that these productions were “undoubtedly incomplete” and “had been manipulated.” Believing the deletions to be intentional, Calsep filed a motion for sanctions. Afterward, A.D. filed a motion for reconsideration based on newly discovered forensic images that “vindicated” him. The magistrate judge recommended denying the motion, and the district court agreed, denying the motion for reconsideration of the sanctions order. A.D. appealed.   The Fifth Circuit affirmed the district court’s decision on A.D.'s motion for reconsideration. The court explained that A.D. cannot offer any reason—other than mere forgetfulness—why he couldn’t acquire the images sooner. Further, A.D. hasn’t shown that he acted with diligence during the case to locate these images. Moreover, the court explained that although A.D. argues that the images change the game, Calsep’s expert insists that too much data is still missing from the source code control system, rendering a proper review impossible. The court noted that there was no reason to question the district court’s judgment crediting Calsep’s expert testimony. View "Calsep v. Dabral" on Justia Law