Justia U.S. Federal Circuit Court of Appeals Opinion Summaries

A non-profit organization focused on supporting student-athletes registered a stylized mark incorporating the phrase “I AM MORE THAN AN ATHLETE. GP GAME PLAN” for use in charitable fundraising via apparel sales. Later, a media company filed six intent-to-use applications for marks containing “I AM MORE THAN AN ATHLETE” and “MORE THAN AN ATHLETE,” covering clothing and entertainment services. The non-profit opposed these applications before the Trademark Trial and Appeal Board, arguing likelihood of confusion and asserting priority based on both its registration and alleged common law rights. The media company counterclaimed, seeking cancellation of the non-profit’s registration and asserting that it had acquired priority through an assignment of common law rights from a third party who had used “MORE THAN AN ATHLETE” since at least 2012.During the Board proceeding, the non-profit failed to introduce any trial evidence to establish its common law rights or priority. The Board dismissed the opposition due to lack of evidence. As to the counterclaim, the Board found that the media company had acquired valid and enforceable common law rights in the mark through its assignment, which included the goodwill associated with the mark. The Board rejected arguments that the assignment was invalid because it occurred during litigation or was an assignment in gross, and concluded that, at least for clothing, the transfer was valid. The Board canceled the non-profit’s registration and dismissed its opposition.On appeal, the United States Court of Appeals for the Federal Circuit reviewed the Board’s factual findings for substantial evidence and legal conclusions de novo. The court held that the Board’s decision was supported by substantial evidence and affirmed that the assignment was not in gross, did not violate statutory or regulatory prohibitions, and that the non-profit’s failure to submit evidence justified dismissal. The decision to cancel the non-profit’s registration and dismiss its opposition was affirmed. View "GAME PLAN, INC. v. UNINTERRUPTED IP, LLC " on Justia Law

Bayou Grande Coffee Roasting Company applied to register the trademark KAHWA for use in connection with cafés and coffee shops. The trademark examiner refused registration on the grounds that KAHWA was generic or merely descriptive, relying on two meanings: one, that KAHWA allegedly means “coffee” in Arabic, and two, that it refers to a specific type of Kashmiri green tea. The examiner also invoked the doctrine of foreign equivalents, which tests foreign words for genericness and descriptiveness by translating them into English.After Bayou responded, arguing that KAHWA does not mean coffee in Arabic and that the Kashmiri green tea meaning is not relevant to American cafés and coffee shops, the examiner maintained refusals on both grounds. Bayou requested reconsideration, and the examiner continued to refuse registration, reiterating both rationales. Bayou appealed to the United States Patent and Trademark Office’s Trademark Trial and Appeal Board, which affirmed the refusal solely on the basis of the Kashmiri green tea meaning, without addressing the Arabic coffee meaning.On further appeal to the United States Court of Appeals for the Federal Circuit, Bayou contended that the Board’s findings of genericness and mere descriptiveness were unsupported by substantial evidence, and also challenged reliance on the doctrine of foreign equivalents. The Federal Circuit held that there was no evidence showing any café or coffee shop in the United States has ever sold kahwa, and thus KAHWA cannot be generic or merely descriptive for cafés and coffee shops. The court also concluded that the doctrine of foreign equivalents does not apply because KAHWA has a well-established English meaning as Kashmiri green tea. The Federal Circuit reversed the Board’s decision, holding that KAHWA is registrable for the identified services. View "In Re BAYOU GRANDE COFFEE ROASTING CO. " on Justia Law

The dispute centers on allegations of intellectual property infringement involving shower curtains designed with embedded rings, eliminating the need for traditional hooks. The plaintiffs, a group of related companies, own several patents covering these “hookless” shower curtains, as well as registered and unregistered trademark and trade dress rights. The defendants, two companies that manufactured and sold similar shower curtains, were accused of infringing these patents, trademarks, and trade dress. The accused products featured rings with a flat upper edge and a slit, allowing the curtain to be attached to a rod without hooks.In the United States District Court for the Southern District of New York, the defendants’ motion to transfer venue was denied as untimely. The district court granted summary judgment of patent infringement in favor of the plaintiffs, based on its claim constructions, and precluded the defendants’ unclean hands defense for being raised too late. After a bench trial, the court found that the defendants infringed the asserted patents, the HOOKLESS® and EZ ON trademarks, and the claimed trade dress, and that some infringement was willful. The court awarded lost profits, reasonable royalties, attorneys’ fees, and costs.On appeal, the United States Court of Appeals for the Federal Circuit affirmed the denial of the venue transfer and the exclusion of the unclean hands defense. However, it reversed the findings of infringement for the ’248 and ’609 patents as to one defendant, vacated the ’088 patent infringement finding as to that defendant, and affirmed the patent infringement findings as to the other. The court also vacated the trade dress infringement and willfulness findings, reversed the EZ ON trademark infringement finding, and vacated the HOOKLESS® trademark infringement finding. The award of attorneys’ fees was vacated, and the case was remanded for further proceedings consistent with these rulings. The court clarified the standards for claim construction, trade dress functionality, and standing to assert trademark rights. View "Focus Products Group International, LLC v. Kartri Sales Co." on Justia Law

A company that provides credit card services under the registered mark ASPIRE opposed the registration of two marks—ASPIRE BANK word and design marks—by a Tennessee retail bank, Apex Bank. Apex Bank, which does not offer credit cards but provides various banking services, filed intent-to-use applications for the ASPIRE BANK marks for “banking and financing services.” CC Serve, the credit card company, argued that Apex’s proposed marks were confusingly similar to its own ASPIRE mark, which has been used in connection with credit card services since 1996.The Trademark Trial and Appeal Board (TTAB) reviewed the opposition and sustained it under Section 2(d) of the Lanham Act, finding that there was a likelihood of consumer confusion between the marks. The Board analyzed several factors from the E. I. DuPont DeNemours & Co. case, including the similarity of the services and the marks themselves, and concluded that the services were highly similar and that confusion was likely. Apex Bank appealed the TTAB’s decision to the United States Court of Appeals for the Federal Circuit.The United States Court of Appeals for the Federal Circuit affirmed the TTAB’s finding that the parties’ services are highly similar, upholding the Board’s analysis of the second DuPont factor. However, the appellate court found that the Board erred in its analysis of the sixth DuPont factor by narrowly considering only marks used for credit card services, rather than similar marks used for broader banking and financing services. The court also vacated the Board’s analysis of the first DuPont factor, as reconsideration of the sixth factor could affect the assessment of the marks’ commercial impression. The case was affirmed in part, vacated in part, and remanded for further proceedings consistent with the appellate court’s opinion. View "Apex Bank v. CC Serve Corp." on Justia Law

Erik Brunetti applied to register the word “FUCK” as a trademark for various goods and services, including sunglasses, jewelry, bags, and retail store services. After initial refusals based on the mark being “immoral or scandalous”—a ground later found unconstitutional by the Supreme Court in Iancu v. Brunetti—the United States Patent and Trademark Office (PTO) reexamined the applications. The PTO’s examining attorney refused registration, finding that the term was a widely used, commonplace word that failed to function as a trademark because consumers would not perceive it as identifying the source of the goods or services.The Trademark Trial and Appeal Board (TTAB) affirmed the refusals, concluding that the mark did not serve as a source indicator. The Board reasoned that “FUCK” is an “all-purpose word” with many recognized meanings and is commonly used on similar goods by various sources, so it would not be seen by consumers as distinguishing Brunetti’s products from others. The Board also rejected Brunetti’s constitutional arguments and his reliance on other registered marks, stating that each application must be considered on its own merits.On appeal, the United States Court of Appeals for the Federal Circuit reviewed the Board’s decision under the standards of the Administrative Procedure Act. The court rejected most of Brunetti’s arguments but found that the Board failed to articulate a clear and rational standard for when an “all-purpose word” like “FUCK” can or cannot function as a trademark, especially given the existence of similar registered marks. The Federal Circuit vacated the Board’s decision and remanded for further proceedings, holding that the Board must provide a satisfactory explanation and coherent guidance for its actions. View "In Re BRUNETTI " on Justia Law

Sunkist Growers, Inc. ("Sunkist") opposed Intrastate Distributors, Inc.'s ("IDI") applications to register the mark KIST in standard characters and a stylized form for soft drinks, arguing a likelihood of confusion with its registered SUNKIST marks. Sunkist has offered SUNKIST branded beverages for at least ninety years and owns multiple SUNKIST trademark registrations. IDI, a bottling company, purchased the KIST brand in 2009 and has used it for various soda products.The United States Trademark Trial and Appeal Board ("Board") dismissed Sunkist's opposition, finding no likelihood of confusion between IDI's KIST marks and Sunkist's SUNKIST marks. The Board analyzed the DuPont factors and found that while the similarity of goods, trade channels, conditions of sale, and strength of Sunkist's mark favored a likelihood of confusion, the similarity of the marks and actual confusion factors did not. The Board concluded that the different commercial impressions of the marks (KIST referencing a kiss and SUNKIST referencing the sun) and the lack of reported instances of confusion outweighed the other factors.The United States Court of Appeals for the Federal Circuit reviewed the Board's decision. The court found that the Board's conclusion regarding the different commercial impressions of the marks was not supported by substantial evidence. The court noted that the KIST mark did not consistently include a lips image and that the SUNKIST mark was often used without a sun design. The court concluded that the similarity of the marks favored a likelihood of confusion and that the Board's finding of no likelihood of confusion was incorrect. The court reversed the Board's decision, holding that IDI's KIST marks are likely to cause confusion with Sunkist's registered SUNKIST marks. View "Sunkist Growers, Inc. v. Intrastate Distributors, Inc." on Justia Law

Top Brand and Cozy Comfort are competitors in the market for oversized hooded sweatshirts. Cozy Comfort owns a design patent (D788 patent) and two trademarks for "THE COMFY" related to blanket throws. Top Brand sought a declaratory judgment of noninfringement of the design patent, while Cozy Comfort counterclaimed for infringement of both the design patent and trademarks. The jury found in favor of Cozy Comfort, determining that Top Brand had infringed both the design patent and the trademarks, and awarded Cozy Comfort $15.4 million for patent infringement and $3.08 million for trademark infringement.The United States District Court for the District of Arizona denied Top Brand's motion for judgment as a matter of law (JMOL) and entered judgment based on the jury's verdict. Top Brand then appealed to the United States Court of Appeals for the Federal Circuit.The Federal Circuit held that the principles of prosecution history disclaimer apply to design patents. The court found that Top Brand was entitled to JMOL of noninfringement of the design patent because the accused design fell within the scope of the subject matter surrendered during prosecution. The court also concluded that substantial evidence did not support the jury’s verdict of trademark infringement. Consequently, the Federal Circuit reversed the district court’s denial of JMOL and found in favor of Top Brand on both the design patent and trademark infringement claims. View "Top Brand LLC v. Cozy Comfort Co." on Justia Law

Rebecca Curtin filed an opposition to United Trademark Holdings’ (UTH) registration of the mark RAPUNZEL for dolls and toy figures, claiming the mark was generic, descriptive, and failed to function as a trademark. Curtin, a doll collector and mother, argued that the registration would harm consumers by reducing competition and increasing prices for Rapunzel merchandise. She also claimed it would chill the creation of new Rapunzel-themed dolls and toys.The Trademark Trial and Appeal Board (TTAB) dismissed Curtin’s opposition, concluding she was not statutorily entitled to oppose the registration under 15 U.S.C. § 1063. The TTAB applied the Lexmark framework, which requires a plaintiff to fall within the zone of interests protected by the statute and to show a reasonable belief in damage proximately caused by the registration. The TTAB found that Curtin, as a consumer, did not have a commercial interest protected by the Lanham Act and that her alleged injuries were too remote and speculative.The United States Court of Appeals for the Federal Circuit reviewed the case. The court affirmed the TTAB’s decision, agreeing that the Lexmark framework was correctly applied. The court held that the interests protected by the Lanham Act in this context are commercial, and Curtin, as a consumer, did not fall within the zone of interests. Additionally, the court found that Curtin’s alleged injuries were derivative of harms to commercial actors and too remote to establish proximate causation. Thus, Curtin was not entitled to oppose the registration of the RAPUNZEL mark. View "CURTIN v. UNITED TRADEMARK HOLDINGS, INC. " on Justia Law

Vetements Group AG filed applications to register two marks, "VETEMENTS" in standard characters and in stylized form, for clothing items and online retail store services featuring clothing. The United States Patent and Trademark Office (PTO) Examining Attorney refused the applications, asserting that the marks were generic or merely descriptive without acquired distinctiveness, and thus barred from registration under Section 2(e)(1) of the Trademark Act.The Trademark Trial and Appeal Board (Board) affirmed the Examining Attorney's refusal, applying the foreign equivalents doctrine. The Board found that "VETEMENTS," which translates to "clothing" in English, was generic for the identified goods and services. The Board also determined that the marks were highly descriptive and that Vetements Group AG failed to establish acquired distinctiveness among U.S. consumers.The United States Court of Appeals for the Federal Circuit reviewed the case and upheld the Board's decision. The court agreed that the foreign equivalents doctrine was correctly applied, noting that an appreciable number of Americans are capable of translating "VETEMENTS" from French to English. The court found substantial evidence supporting the Board's conclusion that the marks were generic, as they directly referred to the genus of goods and services in question. Consequently, the court affirmed the Board's decision to refuse registration of the marks. View "In Re VETEMENTS GROUP AG " on Justia Law

Thomas D. Foster, APC (Foster) sought to register the trademark "US SPACE FORCE" for various goods and services. The application was filed on March 19, 2018, shortly after President Donald J. Trump announced the creation of a new military branch called the Space Force. The United States Patent and Trademark Office (USPTO) examining attorney refused the registration, citing a false suggestion of a connection with the United States under § 2(a) of the Lanham Act.The Trademark Trial and Appeal Board (Board) affirmed the examining attorney’s refusal, concluding that the mark falsely suggested a connection with the United States. Foster requested reconsideration, arguing that the Board erred by not crediting the filing date of the intent-to-use application as the constructive use date and by relying on evidence post-dating the filing date. The Board denied reconsideration, maintaining that Foster was not the prior user and that there was ample evidence supporting the false connection analysis.The United States Court of Appeals for the Federal Circuit reviewed the case. The court held that the appropriate timing for assessing a false suggestion of a connection includes evidence up to the time of examination, which in this case extended through the Board’s December 12, 2022 decision. The court found substantial evidence supporting the Board’s findings that the mark "US SPACE FORCE" was the same as or a close approximation of a name or identity used by the United States and that it pointed uniquely and unmistakably to the United States. The court affirmed the Board’s decision, concluding that the mark falsely suggested a connection with the United States and was therefore unregistrable under § 2(a) of the Lanham Act. View "In Re FOSTER" on Justia Law