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

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

In 2012, Stratus, a facilities-based telecommunications provider, applied to register the STRATUS mark. UBTA, also a telecommunications provider, owns the STRATA mark and opposed registration of the STRATUS mark on grounds of a likelihood of confusion with UBTA’s STRATA mark. The Trademark Trial and Appeal Board found a likelihood of confusion and refused registration of the STRATUS mark, 15 U.S.C. 1052. The Board concluded that six of the 13 “DuPont factors” were relevant and that two factors “weigh heavily in favor” of finding a likelihood of confusion, one factor “weighs in favor” of finding a likelihood of confusion, two factors are neutral, and one factor weighs “slightly” against finding a likelihood of confusion. The Federal Circuit affirmed the determination as supported by substantial evidence and is not otherwise legally erroneous. While the Board is required to consider each DuPont factor for which it has evidence, it may focus its analysis on dispositive factors, such as similarity of the marks and relatedness of the goods. The Board determined that “even careful purchasers are likely to be confused by similar marks used in connection with services that are, in part, legally identical.” View "Stratus Networks, Inc. v. UBTA-UBET Communications Inc." on Justia Law

Forney sells welding and machining products in packaging that displays its proposed mark. Forney applied for a trademark based on use in commerce under the Lanham Act, 15 U.S.C. 1051(a). Forney sought to register the mark without showing acquired distinctiveness, identifying its mark as a “color mark.” Forney stated: “[t]he mark consists of a solid black stripe at the top. Below the solid black stripe is the color yellow which fades into the color red. These colors are located on the packaging and or labels.” The examining attorney refused registration, finding the mark “not inherently distinctive” and stating that “[s]uch marks are registrable only ... with sufficient proof of acquired distinctiveness.” Forney revised the description: “The mark consists of the colors red into yellow with a black banner located near the top as applied to packaging for the goods. The dotted lines merely depict placement of the mark on the packing backer card.” The examining attorney again refused registration. The Trademark Trial and Appeal Board affirmed, treating the proposed mark as a color mark consisting of multiple colors applied to product packaging.The Federal Circuit vacated. The Board erred in finding that a color mark can never be inherently distinctive in the trade dress context and that, even if a color mark could be inherently distinctive, it cannot be absent a well-defined peripheral shape or border. View "In Re: Forney Industries, Inc." on Justia Law

ICCS imported 56,616 individual butane gas canisters into the U.S. that displayed a “PREMIUM” brand label and a registered certification mark owned by Underwriters Laboratories (UL). Customs determined that the canisters were “counterfeit” in that they made unauthorized use of the UL certification mark and issued a notice ordering ICCS to redeliver the imported canisters to Customs’ custody pursuant to 19 U.S.C. 1526(e). ICCS redelivered only 29,008 canisters. UL did not consent to retroactive certification. Customs assessed damages of $41,412.00.The Trade Court granted the government summary judgment. The Federal Circuit affirmed. The canisters displayed UL’s mark without UL’s approval. ICCS’s arguments as to physical similarities between the PREMIUM model and other merchandise that UL had previously certified fail because the Service Terms dictate that UL, not ICCS, determines whether any differences from the basic product are superficial. On the date of entry, Customs had no way of ascertaining whether the PREMIUM model was the same physical product as the basic product without UL having made that determination. The court rejected an argument that, in denying ICCS’s protest, Customs relied on UL’s lack of consent to the point of delegating its statutory duty to enforce the trademark laws to UL. View "ICCS USA Corp. v. United States" on Justia Law

The Federal Circuit affirmed the decision of the Trademark Trial and Appeal Board sustaining Hybrid Athletics' opposition to Hylete's trademark registration application. Hylete's application sought to register a design mark for a stylized letter "H" in International Class 25 for athletic apparel. The court held that Hylete waived the arguments on which its appeal relies because it raises new issues that could have been raised and were not considered. In this case, Hylete waived its argument that Hylete's mark is sufficiently different from Hybrid's "composite common law mark" to avoid a likelihood of confusion as to the source of the athletic apparel sold bearing those marks. View "Hylete LLC v. Hybrid Athletics, LLC" on Justia Law

Segway filed a complaint (19 U.S.C. 337) with the International Trade Commission based on infringement of six patents and two trademarks--stylized and non-stylized SEGWAY marks, which cover “motorized, self-propelled, wheeled personal mobility devices, namely, wheelchairs, scooters, utility carts, and chariots.” The complaint alleged that Swagway’s self-balancing hoverboard products, marketed under the names SWAGWAY and SWAGTRON infringed Segway’s marks. Swagway proposed a consent order stipulating that Swagway would not sell or import “SWAGWAY-branded personal transporter products ... all components thereof, packaging and manuals.” Segway opposed the proposal as addressing only a subset of the claims and products at issue. After a hearing, the ALJ found that the accused products did not infringe certain patents and that use of the SWAGWAY designation, but not the SWAGTRON designation, infringed the trademarks. The Commission determined not to review the ALJ’s denial of Swagway’s consent order motion. The Federal Circuit upheld that determination and the trademark infringement determination based on the evidence supporting factors other than likelihood of confusion, including the degree of similarity between the two marks in appearance, the pronunciation of the words, and the strength of the SEGWAY marks. View "Swagway, LLC v. International Trade Commission" on Justia Law

VersaTop and Georgia Expo are competitors in the “drape and rod” industry. Both produce and sell systems of modular rod and pole structures, for assembly to form sectional spaces such as trade show booths and other drape-separated structures, as well as temporary barricades. VersaTop’s system for coupling structural components is the subject of the 027 patent and is called the “‘ball and crown’ coupler.” VersaTop alleged that since 2011 it has sold these systems with the trademarks PIPE & DRAPE 2.0™ and 2.0™ and that Georgia Expo distributed advertising and brochures that contained these VersaTop trademarks as well as pictures of the VersaTop coupler. The district court held that Georgia Expo did not infringe VersaTop’s patent, copyright, or trademark rights. Only the trademark issue was appealed. The Federal Circuit reversed. The district court incorrectly applied the definition of “use in commerce” and concluded that Georgia Expo’s use of the marks was not in commerce so that there was no infringement. Under the Trademark Act, 15 U.S.C. 1127, a trademark owner is entitled to summary judgment on a claim of likelihood of confusion where the marks were identical, the goods were related, and the marketing channels overlapped. View "VersaTop Support Systems, LLC v. Georgia Expo, Inc." on Justia Law

Siny sought to register the mark CASALANA in standard characters for “Knit pile fabric made with wool for use as a textile in the manufacture of outerwear, gloves, apparel, and accessories” based on use in commerce under the Lanham Act, 15 U.S.C. 1051(a). Siny submitted a specimen consisting of a webpage printout. The examining attorney refused registration because the specimen “appear[ed] to be mere advertising material,” that did not include a means for ordering the goods. Siny submitted the same webpage with additional text stating, “For sales information:” followed by a phone number and email address. The examining attorney found that the text alone was insufficient for consumers to make a purchase, noting the absence of necessary ordering information, such as minimum quantities, cost, payment options, or shipping information. The Trademark Board and Federal Circuit affirmed. For a mark to be in use in commerce on goods, it may be “placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto.” The Webpage Specimen was not placed on the goods or their containers, tags, or labels and did not cross the line from mere advertising to an acceptable display associated with the goods. While some details must be worked out by telephone, if virtually all important aspects of the transaction must be determined from information extraneous to the webpage, the webpage is not a point of sale. View "In re: Siny Corp." on Justia Law