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

Romag sells patented magnetic snap fasteners under its registered trademark. Fossil designs, markets, and distributes fashion accessories, including small leather goods, manufactured by independent businesses. In 2002, the companies entered into an agreement for use of ROMAG fasteners in Fossil products. Fossil instructed its authorized manufacturers to purchase ROMAG fasteners from Romag licensee Wing Yip. Fossil’s authorized manufacturer, Superior, purchased tens of thousands of ROMAG fasteners from Wing Yip from 2002-2008. In 2008-2010, Superior purchased substantially fewer fasteners. In 2010, Romag discovered that certain Fossil handbags contained counterfeit fasteners. Romag sued, alleging patent infringement, trademark infringement, false designation of origin, unfair competition, and violation of Connecticut’s Unfair Trade Practices Act. Romag sought a preliminary injunction on November 23, three days before “Black Friday,” the highest-volume U.S. shopping day. The motion was granted on November 30. In 2014, a jury found Fossil liable; awarded a reasonable royalty of $51,052.14 for patent infringement; and, for trademark infringement, made an advisory award of $90,759.36 of Fossil’s profits under an unjust enrichment theory, and $6,704,046.00 of profits under a deterrence theory. Despite its deterrence award, the jury found that infringement was not willful. The Federal Circuit affirmed the district court’s holding that Romag’s delay in bringing suit until just before “Black Friday” constituted laches, its reduction of the reasonable royalty award by 18%, and its holding that Romag was not entitled to an award of profits because the infringement was not willful. View "Romag Fasteners, Inc. v. Fossil, Inc." on Justia Law

Halo, a Hong Kong company that designs and sells high-end modern furniture, owns two U.S. design patents, 13 U.S. copyrights, and one U.S. common law trademark, all relating to its furniture designs. Halo’s common law trademark, ODEON, is used in association with at least four of its designs. Halo sells its furniture in the U.S., including through its own retail stores. Comptoir, a Canadian corporation, also designs and markets high-end furniture that is manufactured in China, Vietnam, and India. Comptoir’s furniture is imported and sold to U.S. consumers directly at furniture shows and through distributors, including in Illinois. Halo sued, alleging infringement and violation of Illinois consumer fraud and deceptive business practices statutes. The district court dismissed on forum non conveniens grounds, finding that the balance of interests favored Canada and that Canada, where the defendants reside, was an adequate forum. The Federal Circuit reversed. The policies underlying U.S. copyright, patent, and trademark laws would be defeated if a domestic forum to adjudicate the rights they convey was denied without a sufficient showing of the adequacy of the alternative foreign jurisdiction; the Federal Court of Canada would not provide any “potential avenue for redress for the subject matter” of Halo’s dispute. View "Halo Creative & Design, Ltd. v. Comptoir des Indes Inc." on Justia Law

JBLU does business as C’est Toi Jeans USA. In 2010, JBLU imported jeans manufactured in China, embroidered with “C’est Toi Jeans USA,” “CT Jeans USA,” or “C’est Toi Jeans Los Angeles” in various fonts. JBLU filed trademark applications for “C’est Toi Jeans USA” and “CT Jeans USA” on October 8, 2010, stating that the marks had been used in commerce since 2005. Customs inspected the jeans and found violation of the Tariff Act, which requires that imported articles be marked with their country of origin, 19 U.S.C. 1304(a); JBLU’s jeans were marked with “USA” and “Los Angeles,” but small-font “Made in China” labels were not in close proximity to and of at least the same size as “USA” and “Los Angeles.” Customs applied more lenient requirements to the jeans that were marked with “C’est Toi Jeans USA” or “CT Jeans USA” and were imported after JBLU filed its trademark applications. The Trade Court granted the government summary judgment. The Federal Circuit reversed, finding that the more-lenient requirements apply to unregistered, as well as registered, trademarks. Regulations in the same chapter as 19 C.F.R. 134.47 and regulations in a different chapter but the same title use the word “trademark” to include registered and unregistered trademarks. View "JBLU, Inc. v. United States" on Justia Law

Tam, the “front man” for Asian-American rock band, The Slants, sought to register the mark THE SLANTS and attached specimens featuring the name set against Asian motifs. The examining attorney found the mark disparaging to people of Asian descent (15 U.S.C. 1052(a)) and denied registration. The Trademark Trial and Appeal Board dismissed for failure to file a brief. Tam filed another application, seeking to register the mark THE SLANTS for identical services and claiming use of the mark since 2006. Attached specimens did not contain Asian motifs. The examining attorney again found the mark disparaging and declined to register it. The Board affirmed. On rehearing, en banc, the Federal Circuit vacated, finding Section 2(a) of the Lanham Act unconstitutional. The government may not penalize private speech merely because it disapproves of the message, even when the government’s message-discriminatory penalty is less than a prohibition. “Courts have been slow to appreciate the expressive power of trademarks. Words—even a single word—can be powerful. With his band name, Tam conveys more about our society than many volumes of undisputedly protected speech.” The regulation at issue amounts to viewpoint discrimination; under strict scrutiny or intermediate scrutiny review, the disparagement proscription is unconstitutional, because the government has offered no legitimate interests to justify it. View "In Re:Tam" on Justia Law

Wolfskin applied to the Patent and Trademark Office to register a design mark consisting of an angled paw print for use with its clothing, footwear, and accessory products. New Millennium opposed the registration on the ground that Wolfskin’s mark would likely create confusion with its own registered mark. In response, Wolfskin filed a counterclaim for cancellation, alleging that New Millennium had abandoned its registered mark. The Trademark Trial and Appeal Board rejected Wolfskin’s cancellation counterclaim and sustained the opposition, refusing to register Wolfskin’s mark. The Federal Circuit agreed that New Millennium did not abandon its registered mark, but held that the Board incorrectly found a likelihood of confusion between the two marks because the Board failed to properly compare New Millennium’s mark as a whole to Wolfskin’s mark and failed to recognize, in light of the significant evidence of paw prints appearing in third-party registrations and usage for clothing, the relatively narrow scope of protection afforded to marks involving paw prints. View "Jack Wolfskin Ausrustung fur Draussen GmbH & Co., KGAA, v. New Millenium Sports, S.L.U." on Justia Law

Louisiana Fish Fry filed a use-based application with the Patent and Trademark Office (PTO) for the mark LOUISIANA FISH FRY PRODUCTS BRING THE TASTE OF LOUISIANA HOME!, and a design, identifying the following goods for the mark: “Marinade; Sauce mixes, namely barbecue shrimp sauce mix; Remoulade dressing; Cocktail sauce, Seafood sauce; Tartar sauce; Gumbo file; and Cayenne pepper.” The Examining Attorney refused to register the mark absent a disclaimer of FISH FRY PRODUCTS on the basis that the term is not independently registrable. Louisiana Fish Fry argued that a disclaimer of FISH FRY PRODUCTS was not necessary because the term was not generic and had acquired distinctiveness. It submitted evidence that Louisiana Fish Fry had been using LOUISIANA FISH FRY PRODUCTS for at least 30 years. Citing numerous articles and recipes, the Examining Attorney asserted that the relevant public understands “fish fry” to identify fried fish meals and that FISH FRY PRODUCTS is, at least, “highly descriptive.” The Trademark Trial and Appeal Board agreed. The Federal Circuit affirmed, finding that substantial evidence supports the Board’s finding that Louisiana Fish Fry has not established that FISH FRY PRODUCTS has acquired distinctiveness. View "In re: Louisiana Fish Fry Prods., Ltd." on Justia Law

Juice Generation, which operates New York City juice bars, applied to the Patent and Trademark Office to register a mark consisting of “PEACE LOVE AND JUICE,” 15 U.S.C. 1051(b), and a design for use with its juice bar services. GS Enterprises opposed the application on the ground that the mark was likely to cause confusion with its own family of marks, all of which contain the phrase “PEACE & LOVE” and are registered for use with restaurant services. The Trademark Trial and Appeal Board sustained the opposition and refused to register Juice Generation’s mark. The Federal Circuit remanded, finding that the Board did not adequately assess the weakness of GS’s marks and did not properly consider the three-word combination of Juice Generation’s mark as a whole in comparing it to the two-word combination in GS’s marks. View "Juice Generation, Inc. v. GS Enters., LLC" on Justia Law

Berger manufactures, imports, and sells watches, clocks, and personal care products. It filed an intent-to-use application at the Patent and Trademark Office, to register the mark “iWatch” for 30 different goods in the general categories: watches, clocks, and goods related to watches or clocks. Berger declared “a bona fide intention to use or use through [Berger’s] related company or licensee the mark in commerce on or in connection with the identified goods and/or services.” The PTO approved the application for publication. Swatch filed an opposition, claiming that “iWatch” is confusingly similar to its mark, “Swatch,” and that Berger lacked a bona fide intent to use the mark in commerce (15 U.S.C. 1051(b)(1)). The Trademark Trial and Appeal Board considered the testimony of Berger’s owner and CEO that he did not expect the iWatch mark to be used for clocks and personal care products. His paralegal testified that she was told that the list was intended to “leave all doors open.” The Board concluded that Berger lacked intent to use the mark on clocks and related goods and lacked a genuine plan to commercialize the mark on watches, but only intended to reserve a right in the mark. The Federal Circuit affirmed, finding the conclusion supported by substantial evidence. View "M.Z. Berger & Co., Inc. v. Swtch AG" on Justia Law

A jury found that Samsung smartphones infringed and diluted Apple’s patents and trade dresses amd awarded Apple $290,456,793. The Federal Circuit affirmed the verdict on the design patent infringements, the validity of two utility patent claims, and the damages awarded for the design and utility patent infringements, but reversed findings that the asserted trade dresses are protectable. Apple claimed elements from its iPhone 3G and 3GS products to define an asserted unregistered trade dress: a rectangular product with four evenly rounded corners; a flat, clear surface covering the front of the product; a display screen under the clear surface; substantial black borders above and below the display screen and narrower black borders on either side of the screen; and when the device is on, a row of small dots on the display screen, a matrix of colorful square icons with evenly rounded corners within the display screen, and an unchanging bottom dock of colorful square icons with evenly rounded corners set off from the display’s other icons. The registered trade dress claims the design details in each of the 16 icons on the iPhone’s home screen framed by the iPhone’s rounded-rectangular shape with silver edges and a black background. View "Apple, Inc. v. Samsung Elecs. Co., Inc." on Justia Law

PV applied to register PRETZEL CRISPS in standard character format for “pretzels” on an intent-to-use basis under the Lanham Act, 15 U.S.C. 1051. The trademark examiner refused registration on the Principal Register, finding the proposed mark merely descriptive. PV: amended its identification of goods to “pretzel crackers;” disclaimed the exclusive right to use “pretzel” apart from the mark as a whole; and obtained registration on the Supplemental Register. Years later, PV again sought to register PRETZEL CRISPS on the Principal Register, identifying October, 2004 as its first use of the mark in commerce, disclaiming the exclusive right to use the term “pretzel” apart from the mark as shown, and claiming acquired distinctiveness in the mark as a whole. Frito-Lay filed opposition, arguing that the term PRETZEL CRISPS is generic for pretzel crackers and not registrable and that PRETZEL CRISPS is highly descriptive of a type of cracker product and has not acquired distinctiveness. Frito-Lay also moved to cancel the supplemental registration. The Trademark Trial and Appeal Board granted the petition for cancellation, finding that “pretzel crisps” was a compound term, not a phrase, and was generic. The Federal Circuit vacated: the Board overlooked or disregarded a genericness survey as to which it apparently found no flaw and applied the incorrect legal standard in assessing whether the term was generic. View "Princeton Vanguard, LLC v. Frito-Lay of N. Am., Inc." on Justia Law