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

Kerry is the CEO of KEI, the son of Dale Earnhardt (a professional race car driver who died in 2001), and the stepson of Teresa. KEI's ventures include the EARNHARDT COLLECTION lifestyle brand. KEI licensed that mark to Schumacher for use in connection with custom home design and construction. Teresa, Dale's widow, owns trademark registrations and common law rights containing the mark DALE EARNHARDT in connection with various goods and services and has sold licensed merchandise totaling millions of dollars since 2001. Teresa filed notices of opposition to KEI's trademark application. The Trademark Board found that Teresa did not establish a likelihood of confusion and that EARNHARDT COLLECTION is not primarily merely a surname, 15 U.S.C. 1052(e)(4). The Board found that “collection” is “not the common descriptive or generic name” for KEI’s goods and services. The Federal Circuit vacated. The Board's decision could be understood as finding that “collection” is neither generic nor merely descriptive of KEI’s goods and services, and adding “collection” to “Earnhardt” alters the surname significance of Earnhardt in the mark as a whole; it could be understood as finding that a mark consisting of a surname and a merely descriptive term is registrable as a matter of law if the descriptive term is not generic. View "Earnhardt v. Kerry Earnhardt, Inc." on Justia Law

In 1999, Lyons and Gillette discussed possibly forming a veterinary specialist organization (VSO) for treating athletic animals. For American Veterinary Medical Association accreditation, veterinarians must form an organizing committee and submit a letter of intent. Lyons, Gillette, and others formed a committee. By 2002, the committee began using the mark as the name of the intended VSO. Lyons participated in drafting the letter of intent, the accreditation petition, and bylaws and articles of incorporation. Lyons left the committee and sought registration of the mark for “veterinary education services namely conducting classes, seminars, clinical seminars, conferences, workshops and internships and externships in veterinary sports medicine and veterinary rehabilitation,” based on actual use, alleging first use in commerce in 1996. In 2006, the PTO registered the mark. In 2010, the VSO, “American College of Veterinary Sports Medicine and Rehabilitation” received provisional recognition; it petitioned to cancel Lyons’s registration on grounds of priority of use and likelihood of confusion, 15 U.S.C. 1052(d), misrepresentation of source, 15 U.S.C. 1064, and fraud. Meanwhile, the district court dismissed an infringement action by Lyons and ordered the PTO to reject Lyons’s application for Principal Register registration, but declined to cancel her Supplemental Register registration. The Board later concluded that Lyons was not the mark’s owner and that her underlying application was void. The Federal Circuit affirmed. In ownership disputes surrounding service marks as between a departing member and a remnant group, the factors are: the parties’ objective intentions or expectations; who the public associates with the mark; and to whom the public looks to stand behind the quality of goods or services offered under the mark. View "Lyons v. American College of Veterinary Sports Medicine and Rehabilitation" on Justia Law

Joseph Phelps Vineyards has produced and sold wines bearing the trademark INSIGNIA since 1978. In 2012, Fairmont received federal registration for the mark ALEC BRADLEY STAR INSIGNIA for cigars and cigar products. On Vineyards’ petition for cancellation, the Trademark Trial and Appeal Board (TTAB) denied the petition, stating that: while it appears that Petitioner’s INSIGNIA branded wine has met with success in the marketplace, we are not persuaded on this record that Petitioner’s mark is a famous mark. The Federal Circuit vacated. TTAB erred in its legal analysis, in analyzing the “fame” of INSIGNIA wine as an all-or-nothing factor and discounting it entirely in reaching the conclusion of no likelihood of confusion as to the source, contrary to law and precedent. TTAB did not properly apply the totality of the circumstances standard, which requires considering all the relevant factors on a scale appropriate to their merits. View "Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC" on Justia Law

In 2004, the Patent and Trademark Office issued JobDiva’s 917 registration for the service mark JOBDIVA for “personnel placement and recruitment” services. In 2005, it issued JobDiva’s 235 registration for a service mark for “personnel placement and recruitment services; computer services, namely, providing databases featuring recruitment and employment, employment advertising, career information and resources, resume creation, resume transmittals and communication of responses thereto via a global computer network.” JobDiva’s software provides a database of employment applications and employs automated “harvesters” to find potential job candidates. It analyzes resumes and helps hiring managers directly communicate with job candidates; it also recommends openings to job candidates and provides automated resume feedback. JobDiva’s software-as-a-service is delivered over the Internet without downloading software. Users pay for the computing as a service rather than owning the machines and software. The Board cancelled JobDiva’s marks in a proceeding that JobDiva initiated, challenging a registration owned by Jobvite. The Board granted Jobvite’s counterclaim stating, “[a] mark shall be deemed to be ‘abandoned’ . . . [w]hen its use has been discontinued with intent not to resume such use,” 15 U.S.C. 1125, and that JobDiva provided software, not “personnel placement and recruitment” services. The Federal Circuit vacated. The question is whether JobDiva, through its software, performed personnel placement and recruitment services and whether consumers would associate JobDiva’s registered marks with personnel placement and recruitment services, regardless of whether the steps of the service were performed by software. View "In re: JobDiva, Inc." on Justia Law

In 2005, the Church, within five miles of the Illinois–Wisconsin border, began selling caps and shirts, emblazoned with the phrase “ADD A ZERO” as part of a fundraising campaign. The Church obtained two federal trademarks for the “ADD A ZERO” mark, based on actual use of the marks in commerce, not intent to use the marks in commerce. In 2009, Adidas sought a clothing trademark for the phrase “ADIZERO.” The Trademark Office refused the application for likelihood of confusion with the Church’s “ADD A ZERO” marks. Adidas brought an action; the Trademark Trial and Appeal Board cancelled the marks, based on the Church’s failure to use the marks in commerce before registration. The Board considered the Church’s proffered evidence of a cancelled check with a printed Wisconsin address for the sale of two “ADD A ZERO”-marked hats for $38.34 in February 2005, before the Church applied for its marks, but concluded that the “de minimis” sale did not evidence the requisite “use in commerce” under the Lanham Act. The Federal Circuit reversed. The Lanham Act defines commerce as all activity regulable by Congress; the Church’s sale to an out-of-state resident fell within Congress’s power to regulate under the Commerce Clause. View "Christian Faith Fellowship Church v. Adidas AG" on Justia Law

Georgallis applied to the Patent and Trademark Office to register the mark MAYARI in standard characters for use on wine in International Class 33. Oakville opposed the registration, alleging that Georgallis’s mark would likely cause confusion with Oakville’s previously registered and used mark MAYA in equivalent-to-standard characters, also for use on wine in International Class 33. After considering: similarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression; similarity of the goods; similarity of trade channels; conditions under which and buyers to whom sales are made; fame of the prior mark; similar marks in use on similar goods; absence of actual confusion; right to exclude others from use; extent of potential confusion; and federal wine labelling requirements, the Board found that factors two, three, and four favored a finding of likelihood of confusion, that the first factor favored a finding of no likelihood of confusion, while the other factors were neutral. The Board found the goods to be “identical,” despite “a substantial difference in price” and other “differences in the specific nature of the wines,” but found that, overall, “the marks create significantly different commercial impressions” and dismissed Oakville’s opposition. The Federal Circuit affirmed; substantial evidence supported the finding of dissimilarity. View "Oakville Hills Cellar, Inc v. Georgallis Holdings, LLC" on Justia Law

Cordua owns and operates five restaurants branded as “Churrascos,” the first of which opened in 1988. The restaurants serve South American dishes, including grilled meats; the menu describes chargrilled “Churrasco Steak” as “our signature.”.Cordua obtained the 321 registration for the service mark CHURRASCOS (in standard character format) in 2008, for use in connection with “restaurant and bar services; catering.” In 2011, Cordua filed a trademark application, seeking protection of the stylized form of CHURRASCOS for use in connection with “Bar and restaurant services; Catering.” The trademark examiner rejected the application as merely descriptive and on the basis that “the applied-for mark is generic for applicant’s services,” barring registration under Lanham Act, 15 U.S.C. 1052(e)(1).. The examiner concluded that the term “churrascos” “refer[s] to beef or grilled meat more generally” and that the term “identifies a key characteristic or feature of the restaurant services, namely, the type of restaurant.” The Trademark Trial and Appeal Board agreed and held that Cordua’s underlying 321 Registration had no bearing on whether the stylized form of CHURRASCOS was generic. The Federal Circuit affirmed, finding that the stylized form of CHURRASCOS generic as applied to restaurant services and, therefore, trademark-ineligible View "In re: Cordua Restaurants, Inc." on Justia Law

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