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Trademark Case Summaries

[08/08] In Re I.Am.Symbolic, LLC
Affirming the Trademark Trial and Appeal Board's affirmation of a US Patent and Trademark Office attorney's refusal to register the appellant's trademark on the ground of the likelihood of confusion with registered marks because the Board did not err in its determination of the likelihood of confusion.

[07/27] Earnhardt v. Earnhardt
Vacating and remanding the decision that the trademark in 'EARNHARDT COLLECTION' was not primarily a surname because it was unclear whether the Board applied the reasoning in In re Hutchinson Technology, Inc. case to determine whether the word collection was merely descriptive of the services offered and what the primary significance of the mark as a whole was to the general public.

[07/17] Parks LLC v. Tyson Foods, Inc.
Affirming a summary judgment to the defendant Tyson Foods in a dispute involving their use of the word 'Parks' in reference to hotdogs where the plaintiff once held trademark on this word's use to sell hotdogs until it failed to renew the trademark in the early 2000's.

[07/11] Stone Creek, Inc. v. Omnia Italian Design, Inc.
Affirming that a 1999 amendment to trademark statutes did not eliminate the plaintiff's requirement that they establish wilfulness to justify the award of defendant's profits in a trademark infringement case, but reversing the holding that the defendant's mark was not likely to cause confusion and remanding for inquiry into intent.

[07/07] Marketquest Group, Inc. v. BIC Corp.
Reversing the district court's summary judgment to the defendants in a trademark infringement suit, finding that genuine issues of material fact existed regarding whether defendant's use of 'all-in-one' was protected by the fair use defense and that the district court erred in applying fair use analysis after determining that plaintiff presented no evidence of likely confusion.

[06/19] Matal v. Tam
In a trademark case in which the lead singer of the rock group 'The Slants' chose this moniker in order to 'reclaim' the term and drain its denigrating force as a derogatory term for Asian persons, and then sought federal registration of the mark 'THE SLANTS,' the en banc Federal Circuit's judgment overruling The Patent and Trademark Office (PTO)'s denial of the application under the Lanham Act's disparagement clause, is affirmed where: 1) the disparagement clause applies to marks that disparage the members of a racial or ethnic group; and 2) the disparagement clause violates the First Amendment's Free Speech Clause.

[05/24] Joseph Phelps Vineyards, LLC v. Fairmount Holdings, LLC
In a petition for cancellation of a trademark, brought by the owner of the INSIGNIA mark used to sell wines since 1978 against the registrant of the ALEC BRADLEY STAR INSIGNIA mark used for cigars and cigar products, the Trademark Trial and Appeal Board's denial of the petition is vacated and remanded for reconsideration where: 1) the Board 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 source, contrary to law and precedent; and 2) as a result of this error, the Board did not properly apply the totality of the circumstances standard, which requires considering all the relevant factors on a scale appropriate to their merits.

[05/16] Elliot v. Google, Inc.
In an action under the Lanham Act, seeking cancellation of the GOOGLE trademark on the ground that it is generic, the district court's summary judgment in favor of defendant Google is affirmed where: 1) a claim of genericness or 'genericide,' where the public appropriates a trademark and uses it as a generic name for particular types of goods or services irrespective of its source, must be made with regard to a particular type of good or service; 2) the district court thus correctly focused on internet search engines rather than the 'act' of searching the internet; and 3) the verb use of the word 'google' to mean 'search the internet,' as opposed to adjective use, did not automatically constitute generic use.

[05/05] Grayson O Co. v. Agadir Int'l LLC
In a trademark and unfair competition action brought by a haircare product manufacturer and holder of a registered trademark against a competitor haircare product manufacturer, the district court's grant of summary judgment in favor of defendant is affirmed where plaintiff failed to show the marks were likely to be confused.

[04/18] Covertech Fabricating Inc v. TVM Building Products Inc.
In a trademark dispute in which no written contract designates ownership, involving the paradigm through which common law ownership of an unregistered trademark is determined when the initial sale of goods bearing the mark is between a manufacturer and its exclusive distributor, the district court's judgment is: 1) affirmed on alternative grounds as to ownership, where the court failed to recognize and apply the rebuttable presumption of manufacturer ownership that pertains where priority of ownership is not otherwise established; 2) affirmed as to fraud and acquiescence; and 3) vacated and remanded on damages under the Lanham Act, where the court incorrectly relied on gross sales unadjusted to reflect sales of infringing products to calculate damages.

[01/18] Slep-Tone Entertainment Corp. v. Wired for Sound Karaoke and DJ Servs., LLC
In a suit for trademark infringement and unfair competition brought under the Lanham Act by a producer of karaoke music tracks, alleging that the defendants performed karaoke shows using unauthorized 'media-shifted' files that had been copied onto computer hard drives from the compact discs released by the plaintiff, the district court's dismissal is affirmed where plaintiff did not state a claim under the Lanham Act because there was no likelihood of consumer confusion about the origin of a good properly cognizable in a claim of trademark infringement.

[12/12] In Re: Jobdiva, Inc.
In a trademark case to determine whether appellant used its marks in connection with personnel placement and recruitment services, or whether the Trademark Trial and Appeal Board correctly held that it failed to do so because it used its marks on software offerings, without more, the Board's decision is vacated where proper question is whether appellant, through its software, performed personnel placement and recruitment services and whether consumers would associate appellants registered marks with personnel placement and recruitment services, regardless of whether the steps of the service were performed by software.

[11/14] Christian Faith Fellowsihp Church v. Adidas AG
In a petition filed by Adidas, the Trademark Trial and Appeal Board's final judgment cancelling a Church's trademarks for failing to use the marks in commerce before registering them, on the grounds of the Church's de minimus sale of two marked hats to an out-of-state reside, is reversed where: 1) the Lanham Act defines commerce as all activity regulable by Congress; and 2) the Church's sale to an out-of-state resident fell within Congress?s power to regulate under the Commerce Clause.

[11/07] Cross Commerce Media, Inc. v. Collective, Inc.
In a trademark infringement dispute between software companies over several trademarks containing the word 'collective,' the District Court's granted summary judgment to Cross Commerce Media on virtually all points in dispute and awarded attorney's fees under the Lanham Act are reversed in part where: 1) the unregistered mark 'collective' is suggestive, not descriptive; 2) there is a genuine dispute of material fact as to whether CI used the unregistered mark 'collective' in commerce before CCM introduced its allegedly infringing marks; 3) the district court prematurely granted summary judgment as to CI's counterclaim for infringement of the registered marks, an action that neither party requested and the district court did not explain; and 4) there is a genuine dispute of material fact as to whether CI abandoned its registered marks 'Collective Network' and 'Collective Video.' Award of attorney fees is vacated.

[08/26] Trader Joe's Co. v. Hallatt
In a trademark infringement action, arising after defendant purchased Trader Joe's goods in the United States and resold them at a mimic store in Canada, the district court's dismissal of plaintiff's Lanham Act claims is reversed where: 1) the extraterritorial application of the Lanham Act is a question as to the merits of a trademark claim instead of federal courts' subject-matter jurisdiction; and 2) Trader Joe's alleges a nexus between defendant's conduct and American commerce sufficient to warrant extraterritorial application of the Lanham Act.

[08/03] Oriental Financial Group v. Cooperativa de Ahorro y Credit
In an infringement action to determine whether a Puerto Rico credit union infringed a bank's word mark and trade name ORIENTAL with its competing marks COOP ORIENTAL, COOPERATIVA ORIENTAL, ORIENTAL POP, and CLUB DE ORIENTALITO, the District Court's finding of non-infringement and refusal to enjoin their use is: 1) reversed as to COOP ORIENTAL, COOPERATIVA ORIENTAL, and ORIENTAL POP, where the district court's determination of non-infringement was clearly erroneous; and 2) affirmed where the district court's determination is supportable as to CLUB DE ORIENTALITO.

[07/22] Russel Road Food and Beverage, LLC v. Spencer
In a trademark dispute involving the use of the mark CRAZY HORSE for entertainment services, namely exotic dance performances, the district court's grant of summary judgment to plaintiff is affirmed where plaintiff was the assignee of a valid trademark co-existence agreement entered into with the former owner of the registered mark and therefore had the right to use the mark.

[07/14] JL Beverage Co, LLC v. Jim Beam Brands Co.
In an action claiming of trademark infringement, false designation of origin, and unfair competition brought under the Lanham Act and Nevada state law by a beverage company-plaintiff, which sells a competing line of flavored vodkas, the District Court's grant of summary judgment to defendant is reversed where the district court erred in: 1) failing to place the burden of proof on defendant, the moving party; 2) failing to view the evidence in the light most favorable to plaintiff; and 3) never analyzing whether a genuine dispute of material fact existed.

[06/27] MPC Franchise, LLC v. Tarntino
In a trademark action concerning the mark for Pudgie's pizza chain restaurants, the district court's grant of summary judgment to plaintiffs is affirmed where there is no genuine issue of material fact that defendant Tarntino obtained his federal trademark registration of PUDGIE'S by fraud.

[06/24] Oakville Hills Cellar, Inc. v. Georgallis Holdings, LLC
In a vineyard-plaintiff's appeal of a decision of the United States Patent and Trademark Office (PTO) Trademark Trial and Appeal Board dismissing its opposition to an application filed by defendant to register a MAYARI mark for use on wine, the Board's decision is affirmed where substantial evidence supports the Board's finding that plaintiff's registered mark MAYA and defendant's applied-for mark MAYARI are sufficiently dissimilar.

[06/13] Guthrie Healthcare Systems v. ContextMedia, Inc.
In a trademark suit brought by a provider of healthcare services against a provider of digital health-related content, the District Court's injunction which prohibited defendant from using its marks within plaintiff?s geographic service area, but placed no restriction on defendant's use of its marks on the Internet or outside plaintiff's service area, is affirmed but remanded for expansion of the injunction's scope, where the current limitations placed on defendant were based on an incorrect standard and fail to give plaintiff and the public adequate protection from likely confusion.

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