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

BDI is the owner a design patent and the manufacturer of slippers known as SNOOZIES®. High Point manufactures and distributes the accused FUZZY BABBA® slippers, which are sold through various retailers, including Meijer, Sears, and WalMart. BDI sent High Point a cease and desist letter, asserting patent infringement. High Point sought a declaratory judgment. The district court held BDI’s asserted design patent invalid on summary judgment and dismissed BDI’s trade dress claims with prejudice. The Federal Circuit reversed. The district court applied the incorrect standard; a reasonable jury could, under the correct standard, find the patent not invalid based on functionality. On remand, the district court should weigh High Point’s notice of BDI’s trade dress claim and initial belief that its original complaint encompassed such a claim and the absence of apparent prejudice to High Point against the fact that BDI had always been in possession of the information added in the proposed amendments and could have asked to clarify its pleading sooner. View "High Point Design LLC v. Buyer's Direct, Inc." on Justia Law

Levi Strauss has stitched the back pocket of its jeans with the “Arcuate” design since 1873 and holds multiple trademarks on the design. In 2005, Abercrombie sought to register a “mirror image stitching design” for use on clothing, stating no limitations on the goods’ nature, type, channels of trade, or class of purchasers. Levi Strauss initiated an opposition to the parent application (concerning jackets and seeking Principal Registration). Levi Strauss petitioned to cancel Supplemental Registration of the child application covering other clothing. Abercrombie began selling “Ruehl jeans” with the design. Levi Strauss sued. The PTO stayed proceedings. Abercrombie claimed that its products were sold in different channels, at different prices. A jury found no infringement; the court rejected a claim of dilution by blurring. Levi Strauss did not appeal concerning infringement. The Ninth Circuit remanded, holding that dilution by blurring does not require identity or near identity of marks. Meanwhile, Abercrombie shut down the Ruehl brand, but sought to register its mirror-image design on “clothing, namely bottoms,” disclosing use of the design on denim shorts sold as “Gilley Hicks,” at different prices, and through different channels. Levi Strauss sought to amend to include the Gilley Hicks products. The district court declined and dismissed the dilution claim. The PTO opposition and cancellation proceedings were dismissed on the ground of issue preclusion. The Federal Circuit reversed, reasoning that the registrations at issue in the PTO cover a broader range of uses than were the subject of the litigation. View "Levi Strauss & Co. v. Abercrombie & Fitch Trading Co." on Justia Law

In 1930, A.A. Milne transferred to Slesinger exclusive merchandising and other rights to Winnie-the-Pooh works in the U.S. and Canada. In 1961, Slesinger exclusively “assigned, granted, and set over to” Disney the rights in the 1930 agreement. A 1983 agreement sought to resolve the parties’ disputes, but Slesinger contends it retained rights in the works, while Disney maintains Slesinger assigned all rights. In 1991, before the present litigation, Slesinger sued in state court, alleging breach of the 1983 agreement. Slesinger acknowledged that the 1983 agreement “regranted, licensed and assigned all rights” to Disney. The action was ultimately dismissed. The dispute continued in federal court. The district court dismissed, noting that the parties’ actions indicated the rights were transferred to Disney in the 1983 agreement. Between 1983 and 2006, Disney registered at least 15 trademarks. In 2004, Disney registered copyrights in 45 works and renewed copyright registrations for another 14. Slesinger did not attempt to perfect or register trademarks or copyrights before asserting its federal claims and never objected to Disney’s registrations until 2006, when the state court dismissed its claims and Slesinger attempted to cancel Disney’s applications and marks. The Federal Circuit affirmed the Board’s dismissal, citing estoppel. View "Stephen Slesinger, Inc. v. Disney Enters., Inc." on Justia Law

In 2001 Fox sought to register a mark having a literal element, consisting of the words COCK SUCKER, and a design element, consisting of a drawing of a crowing rooster. Since 1979, Fox has used this mark to sell rooster-shaped chocolate lollipops, which she “displays . . .in retail outlets in small replicas of egg farm collecting baskets to emphasize the country farmyard motif.” The consumers targeted by Fox’s business are, primarily, fans of teams that have gamecocks as mascots. The Trademark Trial and Appeal Board affirmed refusal by the examiner to register her mark, citing 15 U.S.C. 1052(a). The Federal Circuit affirmed, holding that a mark that creates a double entendre falls within the proscription of the section where, as here, one of its meanings is clearly vulgar. The section’s prohibition on registration of “immoral ... or scandalous matter” includes a mark that is “vulgar.”View "In re: Fox" on Justia Law

Under 35 U.S.C. 292(a) it is unlawful to engage in specified acts of false patent marking, such as affixing a mark that falsely asserts that the item is patented, with intent to deceive the public. Prior to 2011, the statute authorized private parties (relators) to bring a qui tam or informer’s suit for violations, but did not specify procedures or authorize the government to file its own suit to collect the penalty. The 2011 AIA eliminated the qui tam provision, but authorized actions for damages by any person “who has suffered a competitive injury as a result of a violation.” The AIA provides that marking products with expired patents is not a violation and that it applies to all pending cases. In 2010, Brooks sued, alleging that Dunlop marked a guitar string winder with the number of a patent that was both expired and invalidated. The AIA was enacted while the case was stayed, pending the outcome in another case. The district court held that the application of the AIA to pending actions did not violate the Due Process Clause and that the legislation rationally furthered a legitimate legislative purpose. The Federal Circuit affirmed. View "Brooks v. Dunlop Mfg., Inc." on Justia Law

Superior owns three patents, which claim priority to a 2006 application and cover a “Braced Telescoping Support Strut and System” that supports a portable conveyor assembly to transport and stockpile rock, sand, grain, and other aggregate material. Superior alleges its patents claim an improved undercarriage that enables portable conveyors to safely and stably operate at heights above previous conveyors by using cross bracing between the upper and lower support beams that does not interfere with the extension or retraction of upper support beams. Superior claims to have coined the term “fully braced” and owns the registered trademark “FB.” Thor competes in the portable conveyor market and, in 2007, filed a U.S. patent application for an “Undercarriage for a Telescopic Frame,” disclosing a telescoping frame similar to that claimed in the Superior patents. Thor issued a press release describing a conveyor system with a new “PATENT-PENDING FB Undercarriage.” Superior initiated a trademark infringement action that ended in a 2010 Consent Judgment, enjoining Thor from use of the “FB” trademark. Superior then sued for patent infringement. The district court dismissed, citing claim preclusion. The Federal Circuit reversed in part. Superior’s prior trademark infringement action did not arise from the same operative facts. View "Superior Indus., L.L.C. v. Thor Global Enter., Ltd." on Justia Law

MT filed an application with the Patent and Trademark Office, to register the mark JPK PARIS 75 in connection with sunglasses, wallets, handbags and purses, travel bags, suitcases, belts, and shoes. “JPK” are the initials of Klifa, the manager of MT and designer of the goods at issue. MT submitted four articles discussing consumer purchasing decisions and a declaration from Klifa, a French citizen who lived in Paris for 22 years until 1986, currently residing in the U.S., indicating that he exhibited at trade shows in Paris. The examining attorney refused to register the mark, finding it “primarily geographically deceptively misdescriptive” in relation to the goods, Lanham Act, 15 U.S.C. 1052(e)(3). The Board affirmed, rejecting an argument that the monogram “JPK” is the dominant portion of the mark, and finding that using “Paris” in the mark “serves to identify the geographic origin of the products” such that consumers would assume that the products have a connection with Paris either in their manufacture or design. The Board found the evidence sufficient to show that a substantial portion of relevant consumers would be deceived into believing that the goods came from Paris. The Federal Circuit affirmed. View "In re Miracle Tuesday, LLC" on Justia Law

DuoProSS and Inviro sell medical syringes designed to prevent accidental needle sticks. A person using an Inviro syringe: rotates the plunger; pulls the plunger back, drawing the needle into the syringe barrel; and snaps off the plunger, sealing the needle inside. Inviro owns the two trademarks at issue: the “SNAP! design mark,” for use with “ medical, hypodermic, aspiration and injection syringes” and the “SNAP SIMPLY SAFER mark,” for use with “cannulae; medical, hypodermic, aspiration and injection needles; medical, hypodermic, aspiration and injection syringes.” Inviro petitioned to cancel a trademark registration owned by DuoProSS for the design mark BAKSNAP, for use with a “safety syringe for medical use.” DuoProSS counterclaimed for cancellation of several Inviro registrations, including the marks at issue. Inviro withdrew its petition and agreed to voluntarily surrender one registration. The Board concluded that other registrations for the SNAP mark in typed format were merely descriptive and ordered cancellation, but declined to cancel the SNAP! design mark and the SNAP SIMPLY SAFER word mark. The Federal Circuit reversed. The Board failed to consider one of the marks as a whole, unduly focusing on one portion (!) and erroneously concluded that puffing could render the marks more than descriptive.View "Duopross Meditech Corp. v. Inviro Med.Devices, Ltd." on Justia Law

In 1998, the U.S.PTO issued Registration 334 to WJ for the mark LENS in connection with “computer software featuring programs used for electronic ordering of contact lenses in the field of ophthalmology, optometry and opticianry.” In 2001, Lens.com, an online retailer of contact lenses applied for the mark LENS in connection with “retail store services featuring contact eyewear products rendered via a global computer network.” The PTO cited the 334 Registration as a bar based on likelihood of consumer confusion and refused registration of the mark as merely descriptive of services. In 2002, WJ assigned the registration to Lens.com, which withdrew its cancellation petition under a settlement agreement and obtained the 334 Registration for the mark LENS in connection with “computer software featuring programs used for electronic ordering of contact lenses in the field of ophthalmology, optometry and opticianry.” In 2008, 1-800 Contacts filed Cancellation 925 alleging that Lens.com abandoned or fraudulently obtained the mark LENS because Lens.com never sold or otherwise engaged in the trade of computer software. The Board granted summary judgment of abandonment on the ground that the software is merely incidental to sale of contact lenses, and is not a “good in trade,” solicited or purchased in the market for its intrinsic value.’” The Federal Circuit affirmed. View "Lens.com, Inc. v. 1-800 Contacts, Inc." on Justia Law

Nestle’s BEGGIN’ STRIPS registered mark for pet treats has been in continuous use since 1988 and has been registered since 1989. Midwestern manufactures and sells pet treats and filed an intent-to-use application with the Patent and Trademark Office, seeking to register the mark WAGGIN’ STRIPS for pet food and edible pet treats. Nestle opposed registration, arguing likelihood of confusion between the two marks. The district court ruled in favor of Nestle, finding likelihood of confusion. The Federal Circuit affirmed, finding that the district court properly admitted evidence submitted by Nestle. View "Midwestern Pet Foods, Inc. v. Societe des Produits Nestle, S.A." on Justia Law