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

Vox is the domain registry operator for the ".SUCKS" generic top-level domain (gTLD) for Internet websites. Vox’s 941 trademark application sought registration of the standard character mark .SUCKS in Class 42 (computer and scientific services) for “[d]omain registry operator services related to the gTLD in the mark” and in Class 45 (personal and legal services) for “[d]omain name registration services featuring the gTLD in the mark” plus “registration of domain names for identification of users on a global computer network featuring the gTLD in the mark.” Vox’s 215 application sought to register the stylized form of .SUCKS, which appears as a retro, pixelated font that resembles letters on early LED screens in Class 42. The examining attorney refused both applications finding that, when used in connection with the identified services, “each fails to function as a mark” and “submitted evidence [for the 215 application] does not establish that the mark functions as a source identifier.”The Trademark Trial and Appeal Board and Federal Circuit affirmed with respect to the 215 application. The standard character mark .SUCKS “will not be perceived as a source identifier” and instead “will be perceived merely as one of many gTLDs that are used in domain names.” Stylized lettering or design element in the mark did not create a separate commercial impression and “is not sufficiently distinctive to ‘carry’ the overall mark into registrability.” View "In Re Vox Populi Registry Ltd." on Justia Law

For more than 30 years, Brewery has used the marks BROOKLYN and BROOKLYN BREWERY in connection with the advertising, promotion, and sale of Brewery’s beer and beer-related merchandise. Brewery owns Registration No. 3,186,503 for BROOKLYN BREWERY for beer in Class 32,1 registered in 2006. Brewery petitioned to cancel BBS’s subsequent registration of the mark “BROOKLYN BREW SHOP,” in standard characters, for goods identified as “Beer making kit[s]” in Class 32 and opposed BBS’s application to register a stylized version of the same mark for beer-making kits in Class 32 and sanitizing preparations for household use in Class 5.The Federal Circuit affirmed the Trademark Trial and Appeal Board’s denial of Brewery’s petition for cancellation. The court dismissed the appeal regarding the Class 5 goods for lack of standing. The court vacated in part; the Board erred by not entering judgment in favor of Brewery on the Class 32 goods deleted from BBS’s application. As to the remaining goods in Class 32 (beer-making kits), the court affirmed the Board’s dismissal of the claim that, under Section 2(d), the mark is likely to cause confusion. The court vacated with respect to the descriptiveness issue under Section 2(e)(1); the Board erred by not reaching Brewery’s claim that the applied-for mark lacked acquired distinctiveness under Section 2(f) as to the beer-making kits. The court affirmed the Board’s refusal to consider geographic descriptiveness.. View "Brooklyn Brewery Corporation v. Brooklyn Brew Shop, LLC" on Justia Law

In 2007, Galperti-Italy, to support its application to the Patent and Trademark Office (PTO) for registration of the mark GALPERTI, told the PTO that, in the five preceding years, its use of the mark was “substantially exclusive.” In 2008, the PTO granted the application and issued Registration No. 3411812. In 2013, Galperti-USA petitioned the PTO to cancel the registration, 15 U.S.C. 1064, arguing that the registration was obtained by fraud because Galperti-Italy’s 2007 statement of substantially exclusive use was intentionally false. The Trademark Trial and Appeal Board, on remand, dismissed the fraud claim, again finding no proven falsity of the statement at issue (and again not reaching the intent aspect of fraud).The Federal Circuit vacated. in finding no falsity of Galperti-Italy’s assertion of substantially exclusive use in 2002-2007, the Board committed two legal errors: requiring Galperti-USA to establish its own proprietary rights to the mark and disregarding the use of the mark by others during the period at issue. The court noted that Galperti is a surname. Galperti-USA does not need to establish secondary meaning of its own uses of GALPERTI in order for those uses to be counted in determining the falsity of Galperti-Italy’s claim of substantially exclusive use. View "Galperti, Inc. v. Galperti S.R.L." on Justia Law

Schiedmayer makes and sells celestas, keyboard instruments that resemble small pianos. and is the successor to a line of German companies that have sold keyboard musical instruments under the Schiedmayer name for nearly 300 years. In 1980, Georg Schiedmayer, the owner of Schiedmayer & Soehne, stopped making pianos and renamed the company Schiedmayer GmbH, then briefly entered into a joint venture with Ibach. The “Schiedmayer” trademark was not sold, assigned, or otherwise transferred to Ibach or any other entity. but Ibach entered into an agreement with Kawai under which Kawai produced pianos carrying the Schiedmayer name. Georg’s widow, Elianne, became the sole owner of Schiedmayer, and, in 1995, founded a new company that became Schiedmayer Celesta.In 2002, the owner of Piano Factory retail outlets, believing that the “Schiedmayer” mark had been abandoned for pianos, acquired the domain name “schiedmayer.com.” The Patent and Trademark Office issued a registration for the “Schiedmaryer” mark in 2007. Piano Factory assigned the registration to Sweet 16, which purchased “no-name” pianos from China and affixed labels on them, including the Schiedmayer label. Schiedmayer Celesta filed a cancellation petition with the Trademark Trial and Appeal Board, citing the Lanham Act, 15 U.S.C. 1052(a). The Federal Circuit affirmed the cancellation of the mark. All of the relevant factors—similarity of the goods, recognition among particular consumers, and intent in using the mark—support the Board’s finding that the name was sufficiently well known among consumers of Sweet 16’s products that a connection with Schiedmayer would be presumed. View "Piano Factory Group, Inc. v. Schiedmayer Celesta GmbH" on Justia Law

In 2010, the Army granted Authentic a nonexclusive license to manufacture and sell clothing bearing the Army’s trademarks. The agreement required the Army’s advance written approval of any products and marketing materials bearing the Army’s trademarks and included exculpatory clauses that exempted the Army from liability for exercising its discretion to deny approval. In 2011-2014, Authentic submitted nearly 500 requests for approval; the Army disapproved 41 submissions. During that time, Authentic received several formal notices of material breach for claimed failures to timely submit royalty reports and pay royalties. Authentic eventually paid its royalties through 2013. Authentic’s counsel indicated that Authentic would not pay outstanding royalties for 2014.Authentic's ensuing breach of contract suit cited the Army’s denial of the right to exploit the goodwill associated with the Army’s trademarks, refusal to permit Authentic to advertise its contribution to Army recreation programs, delay of approval for a financing agreement, denial of approval for advertising, and breach of the implied duty of good faith and fair dealing by not approving the sale of certain garments. The Federal Circuit affirmed summary judgment in favor of the government. The license agreement stated in no uncertain terms that the Army had “sole and absolute discretion” regarding approval of Authentic’s proposed products and marketing materials; the exercise of that broad approval discretion is not inconsistent with principles of trademark law. View "Authentic Apparel Geoup, LLC v. United States" on Justia Law

QuikTrip and Weigel operate gasoline-convenience stores. QuikTrip has sold food and beverages in its stores under the registered mark QT KITCHENS since 2011. In 2014, Weigel began using the stylized mark W KITCHENS. QuikTrip requested that Weigel stop using the mark on the basis that it was confusingly similar to QuikTrip’s QT KITCHENS mark. Weigel modified its mark by changing the plural “KITCHENS” to the singular “KITCHEN,” altering the font, and adding the words “WEIGEL’S” and “NOW OPEN.” QuikTrip objected to Weigel’s continued use of the word “KITCHEN” in its mark. In 2017, Weigel applied to register the mark, W WEIGEL’S KITCHEN NOW OPEN.QuikTrip filed an opposition, 15 U.S.C. 1052(d). The Patent and Trademark Office Board evaluated the likelihood of confusion between the marks, referencing the “DuPont” factors, and found that the parties’ identical-in-part goods and related services, overlapping trade channels, overlapping classes of customers, and similar conditions of purchase pointed to a likelihood of confusion but that the dissimilarity of the marks weighed against a likelihood of confusion. It determined that customers would not focus on the word “KITCHEN” for source indication and that Weigel did not act in bad faith in adopting the mark. The Federal Circuit affirmed the dismissal of QuikTrip’s opposition. The finding that the marks, in their entireties, differ in appearance, sound, connotation, and commercial impression is supported by substantial evidence. View "QuikTrip West, Inc. v. Weigel Stores, Inc." on Justia Law

SFM owns the federal registration for SPROUTS for use in connection with grocery store services. The SPROUTS mark was first used in commerce not later than April 2002. Corcamore owns a federal trademark registration for SPROUT for use in connection with vending machine services, claiming a first use date of May 2008. Corcamore’s SPROUT mark is used on a cashless payment card, an associated customer loyalty program, and a website for customers.SFM filed a petition with the Trademark Trial and Appeal Board to cancel Corcamore’s registration. Corcamore argued that SFM lacked standing. The Board determined that the Supreme Court’s Lexmark decision was not applicable; Lexmark was limited to civil actions for false advertising (15 U.S.C. 1125(a)) and does not extend to cancellation of registered marks (section 1064). The court concluded that SFM had standing because it sufficiently alleged a real interest in the proceeding and a reasonable belief of damage. Corcamore informed SFM’s counsel that it would bring “procedural maneuvers,” then proceeded to file motions in violation of Board orders, to refuse to cooperate with discovery, and to disregard Board-imposed sanctions.The Board granted SFM default judgment, citing 37 C.F.R. 2.120(h) and its inherent authority to control its docket. The Board concluded that a lesser sanction would be inappropriate because Corcamore had already violated sanctions and had engaged in willful, bad-faith tactics, consistent with its “procedural maneuvers” letter, taxing Board resources. The Federal Circuit affirmed. SFM was entitled to maintain a petition for cancellation of trademark registrations. The Board did not abuse its discretion in imposing default judgment. View "Corcamore, LLC v. SFM, LLC" on Justia Law

In 2000, Australian started advertising and selling condoms with the marks NAKED and NAKED CONDOM in Australia. In 2003, Australian, through its website, began advertising, selling, and shipping condoms featuring its unregistered mark to customers in the U.S. Naked owns Registration No. 3,325,577 for the mark NAKED for condoms. The companies engaged in settlement negotiations. Naked asserts that email communications demonstrate that the parties reached an agreement whereby Australian would discontinue its use of its unregistered mark in the U.S. and consent to Naked’s use and registration of its NAKED mark. Australian filed a petition to cancel the registration of the NAKED.The Trademark Trial and Appeal Board determined that Australian lacked standing and could not show an interest in the cancellation proceeding or a reasonable belief of damage because it had contracted away its proprietary rights in its unregistered marks.The Federal Circuit reversed. An absence of proprietary rights does not in itself negate an interest in the proceeding or a reasonable belief of damage. A petitioner seeking to cancel a trademark registration establishes an entitlement to bring a cancellation proceeding under 15 U.S.C. 1064 by demonstrating a real interest in the cancellation proceeding and a reasonable belief of damage regardless of whether the petitioner lacks a proprietary interest in an asserted unregistered mark. View "Australian Therapeutic Supplies Pty., Ltd. v. Naked TM, LLC" on Justia Law

Munchkin sued LNC for trademark infringement and unfair competition claims based on LNC’s spill-proof drinking containers. A year later, the court allowed Munchkin to amend the complaint to include new trademark infringement claims, trade dress infringement claims, and patent infringement claims based on the 993 patent which is directed to a spill-proof drinking container. While the litigation was ongoing, Munchkin voluntarily dismissed all of its non-patent claims with prejudice. Munchkin’s 993 patent was held unpatentable through an inter partes review initiated by LNC. The Federal Circuit affirmed that Patent Trial and Appeal Board decision; Munchkin then dismissed its patent infringement claims. The district court subsequently granted LNC’s motion for attorney’s fees under 35 U.S.C. 285 and 15 U.S.C. 1117(a), finding the case to be “exceptional” because the trademark and trade dress infringement claims were substantively weak, and Munchkin should have been aware of the substantive weakness of its patent’s validity.The Federal Circuit reversed. LNC’s fee motion insufficiently presented the required facts and analysis needed to establish that Munchkin’s patent, trademark, and trade dress infringement claims were so substantively meritless to render the case exceptional. None of those issues were fully adjudicated before the court on the merits; the district court abused its discretion in granting the motion. View "Munchkin, Inc. v. Luv n' Care, Ltd." on Justia Law

Lanard owns Design Patent D167 and the 458 copyright for a work entitled “Pencil/Chalk Holder,” relating to a toy chalk holder designed to look like a pencil. Lanard sold the Chalk Pencil, marked to indicate Lanard’s copyright and patent protections, to national retailers. Ja-Ru designed a toy chalk holder, using the Chalk Pencil as a reference sample. Lanard’s retailers stopped ordering the Chalk Pencil and began ordering Ja-Ru’s product. Lanard sued, asserting copyright infringement, design patent infringement, trade dress infringement, and statutory and common law unfair competition.The Federal Circuit affirmed summary judgment that Ja-Ru’s product does not infringe the patent, that the copyright is invalid and alternatively not infringed, and that Ja-Ru’s product does not infringe Lanard’s trade dress. Lanard’s unfair competition claims failed because its other claims failed. The district court properly construed the claims commensurate with the statutory protection for an ornamental design. Lanard impermissibly seeks to exclude any chalk holder in the shape of a pencil and extend the scope of the patent beyond the “new, original and ornamental design,” 35 U.S.C. 171. Lanard’s copyright is for the chalk holder itself; Lanard’s arguments seek protection for the dimensions and shape of the useful article itself. Because the chalk holder itself is not copyright protectable, Lanard cannot demonstrate that it holds a valid copyright. Lanard cannot establish that the Chalk Pencil has acquired secondary meaning. View "Lanard Toys Ltd. v. Dolgencorp LLC" on Justia Law