Justia Trademark Opinion Summaries

Oscar Hernandez allegedly sustained injuries from a RIDGID-branded nail gun purchased from Home Depot. The nail gun, designed and manufactured by other companies, was marketed and sold by Home Depot under a trademark license agreement with Ridge Tool Company. Hernandez filed a complaint against Ridge Tool Company and Home Depot, asserting claims of strict liability, negligence, breach of express warranty, and breach of implied warranty of fitness. The case was removed to the U.S. District Court for the District of Nevada.The respondents moved for summary judgment, arguing that Ridge Tool Company should not be held strictly liable as it only licensed the RIDGID trademark and did not participate in the design, manufacture, distribution, or sale of the nail gun. The U.S. District Court granted summary judgment on all claims except the strict liability claim, noting the lack of controlling precedent in Nevada on whether a trademark licensor can be held strictly liable under such circumstances. The court certified the question to the Supreme Court of Nevada.The Supreme Court of Nevada concluded that Nevada does not impose strict products liability on an entity whose only involvement with a defective product is licensing its trademark for marketing purposes. The court adopted the rule set forth in section 14 of the Restatement (Third) of Torts: Products Liability, which states that a trademark licensor is not subject to strict liability unless it substantially participates in the design, manufacture, or distribution of the product. The court answered the certified question in the negative, holding that a trademark licensor cannot be held strictly liable for damages caused by a defective product if its role is limited to licensing its trademark. View "HERNANDEZ VS. THE HOME DEPOT, INC." on Justia Law

Top Tobacco, L.P., Republic Technologies (NA), LLC, and Republic Tobacco, L.P. sued Star Importers & Wholesalers, Inc., and its president, Amin Hudda, for selling counterfeit TOP® and JOB® cigarette rolling papers. Republic conducted test buys and laboratory testing, which confirmed the products were counterfeit. The police seized 704 jars of allegedly counterfeit rolling papers from Star’s warehouse. Republic alleged trademark counterfeiting, trademark infringement, unfair competition, deceptive trade practices, and unjust enrichment.The United States District Court for the Northern District of Georgia granted summary judgment against Star on liability for trademark infringement and counterfeiting but not against Hudda. The remaining issues for trial were Hudda’s personal liability, whether Star’s actions were willful, and the amount of statutory damages. The jury found Star did not act willfully and awarded Republic $123,000 in damages per mark, totaling $1,107,000 for nine marks. The district court denied Star’s motion for judgment as a matter of law challenging the verdict size.The United States Court of Appeals for the Eleventh Circuit reviewed the case. The court held that the district court did not err in refusing to reduce the jury verdict, as it fell within the statutory damages range permitted by the Lanham Act. The court affirmed that statutory damages need not be related to actual damages and that the jury could consider factors such as the value of the trademark, deterrence, and public safety risks. The court also found that the verdict did not violate due process, as it was not so disproportionate as to be unreasonable. The Eleventh Circuit affirmed the district court’s denial of Star’s motion for judgment as a matter of law. View "Top Tobacco, L.P. v. Star Importers & Wholesalers, Inc." on Justia Law

PT Medisafe Technologies, a medical glove manufacturer, applied to the United States Patent and Trademark Office (PTO) for registration of a color mark for use on medical examination gloves. The proposed mark was described as the color dark green (Pantone 3285 c) applied to the entire surface of chloroprene examination gloves. The PTO’s examining attorney found the color was not inherently distinctive and could not be registered without showing acquired distinctiveness. Medisafe attempted to prove acquired distinctiveness but was ultimately rejected by the examining attorney, who determined the mark was generic and had not acquired distinctiveness.The Trademark Trial and Appeal Board (Board) reviewed the examining attorney’s decision. The Board applied a modified version of the H. Marvin Ginn test, tailored for color marks, as set out in Milwaukee Electric Tool Corp. v. Freud America, Inc. The Board defined the genus of goods as all chloroprene medical examination gloves and found the relevant public to include all purchasers of such gloves. The Board agreed with the examining attorney that the dark green color was common in the industry and could not identify a single source, thus deeming the mark generic. The Board also found Medisafe’s evidence of acquired distinctiveness unconvincing and affirmed the refusal to register the mark.The United States Court of Appeals for the Federal Circuit reviewed the Board’s decision. The court affirmed the Board’s application of the Milwaukee test and found substantial evidence supporting the Board’s determination that the mark was generic. The court held that the dark green color was so common in the industry that it could not serve as a source indicator, making it ineligible for registration on either the principal or supplemental registers. The court did not address the issue of acquired distinctiveness, as a generic mark cannot acquire distinctiveness. View "In Re PT MEDISAFE TECHNOLOGIES " on Justia Law

Heritage Alliance offers voter guides under the names “iVoterGuide” and “iVoterGuide.com.” In January 2019, the American Policy Roundtable (APR) filed for registration of the marks “iVoters” and “iVoters.com.” Heritage opposed APR’s registration, claiming that APR’s marks would likely be confused with Heritage’s marks, for which Heritage claimed priority of use. The Trademark Trial and Appeal Board (Board) of the United States Patent and Trademark Office (PTO) found that Heritage’s prior-use marks were not protectable because they were highly descriptive and had not acquired distinctiveness, and dismissed the opposition.The Board determined that Heritage had begun using its iVoterGuide marks well before APR’s first use date. However, the Board found that APR effectively conceded likelihood of confusion. Despite this, the Board ruled that Heritage’s prior-use marks were not protectable as trademarks because they were highly descriptive and had not acquired distinctiveness. The Board found that the marks were highly descriptive as they clearly described the service offered, and that Heritage’s evidence of acquired distinctiveness was insufficient.The United States Court of Appeals for the Federal Circuit reviewed the Board’s decision. The court affirmed the Board’s findings that the iVoterGuide marks were highly descriptive and had not acquired distinctiveness. The court found that the Board’s determination was supported by substantial evidence, including the descriptive nature of the marks and the limited additional evidence of acquired distinctiveness. The court concluded that the Board’s decision to dismiss the opposition was correct and affirmed the dismissal. View "HERITAGE ALLIANCE v. AMERICAN POLICY ROUNDTABLE " on Justia Law

Dyson Technology, Ltd., a UK-based company, filed a trademark infringement lawsuit against multiple e-commerce stores for selling counterfeit Dyson products. Dyson sought remedies under the Lanham Act, which allows trademark holders to recover profits, damages, and costs from infringing parties. The defendants did not appear in court, leading to a default judgment in Dyson's favor. However, the district court awarded only $1,000 in statutory damages and denied Dyson's request to recover the infringing sellers' profits, stating that Dyson had only provided evidence of revenue, not profits.The United States District Court for the Northern District of Illinois, Eastern Division, handled the initial case. The court's decision to limit Dyson's award was based on its interpretation that revenue and profits are not the same, and it declined to assume that all revenue equaled profits.The United States Court of Appeals for the Seventh Circuit reviewed the case. The appellate court held that the district court erred in its interpretation of the Lanham Act. According to the Act, a prevailing plaintiff is entitled to the defendant's profits, and the defendant bears the burden of proving any costs or deductions. The appellate court found that Dyson's evidence of revenue was sufficient to establish profits, as the defendants did not provide evidence to the contrary. The court reversed the district court's decision and remanded the case for further proceedings, allowing the district court to adjust the award if deemed just based on the case's circumstances. View "Dyson Technology Limited v David 7 Store" on Justia Law

Dollar Financial Group, Inc. (DFG) has operated loan financing and check cashing businesses under the name MONEY MART since the 1980s. In 2010, DFG began expanding its services to include pawn brokerage and pawn shop services, using the MONEY MART mark in commerce for these services starting in 2012. DFG registered two marks in 2013, which were officially registered in 2014. Brittex Financial, Inc. (Brittex) has operated pawn shops in Texas under the names MONEY MART PAWN and MONEY MART PAWN & JEWELRY since the 1990s and has common law rights in these marks.The Trademark Trial and Appeal Board (TTAB) initially denied Brittex’s petition to cancel DFG’s registrations, concluding that DFG had priority due to its earlier use of the MONEY MART mark for loan financing services. Brittex appealed, and the United States Court of Appeals for the Federal Circuit reversed the TTAB’s decision, finding that pawn services are not covered by loan financing services. On remand, the TTAB held that Brittex had priority for pawn services and that DFG could not rely on the zone of natural expansion doctrine to claim priority. The TTAB also found a likelihood of confusion between the marks and partially granted the petition for cancellation, requiring the deletion of "pawn brokerage and pawn shops" from DFG’s registrations.The United States Court of Appeals for the Federal Circuit reviewed the case and affirmed the TTAB’s decision. The court held that the zone of natural expansion doctrine is purely defensive and cannot be used to establish priority offensively. The court also found that DFG’s tacking argument was forfeited as it was not raised before the TTAB. Additionally, the court concluded that substantial evidence supported the TTAB’s findings on the likelihood of confusion, including the similarity of the marks and the strength of Brittex’s mark. The court affirmed the TTAB’s partial cancellation of DFG’s trademark registrations. View "DOLLAR FINANCIAL GROUP, INC. v. BRITTEX FINANCIAL, INC. " on Justia Law

Westmont Living, Inc., a California corporation operating retirement communities and assisted living facilities, filed a lawsuit against Retirement Unlimited, Inc. (RUI), a Virginia corporation, alleging trademark infringement. Westmont Living claimed that RUI's use of the name "The Westmont at Short Pump" for its new facility in Virginia created a likelihood of confusion with Westmont Living's federally registered "Westmont Living" trademarks, violating the Lanham Act and related laws. Westmont Living sought an injunction and damages.The United States District Court for the Eastern District of Virginia granted summary judgment in favor of RUI, concluding that consumer confusion was impossible because the parties operated in entirely distinct geographic markets. The court relied on the Second Circuit's decision in Dawn Donut Co. v. Hart’s Food Stores, Inc., which held that no likelihood of confusion exists when parties use their marks in separate and distinct markets.The United States Court of Appeals for the Fourth Circuit reviewed the case and vacated the district court's judgment. The Fourth Circuit held that the district court erred by relying solely on the geographic separation of the parties' physical facilities without considering other relevant factors that might bear on the likelihood of confusion. The court emphasized that modern advertising and the national scope of both parties' marketing efforts necessitate a broader analysis. The Fourth Circuit remanded the case for further proceedings to consider the various factors relevant to determining the likelihood of confusion, including the parties' competitive marketing, the locations from which they solicit and draw customers, and the scope of their reputations. View "Westmont Living, Inc. v. Retirement Unlimited, Inc." on Justia Law

Bullshine Distillery LLC applied to register the mark BULLSHINE FIREBULL for alcoholic beverages. Sazerac Brands, LLC opposed the registration, alleging a likelihood of confusion with its FIREBALL marks for liqueurs and whiskey. Bullshine counterclaimed, seeking cancellation of Sazerac’s registrations, arguing that "fireball" was a generic term for a type of alcoholic drink.The Trademark Trial and Appeal Board (Board) found that "fireball" was not generic at the time of registration or at the time of trial. The Board also determined that there was no likelihood of confusion between the FIREBALL marks and Bullshine’s BULLSHINE FIREBULL mark. Specifically, the Board found that while Sazerac’s FIREBALL mark was commercially strong, it was conceptually weak, the marks were dissimilar, the goods were purchased without great care, and Bullshine did not act in bad faith.The United States Court of Appeals for the Federal Circuit reviewed the case. The court affirmed the Board’s decision, holding that the Board applied the correct legal standard in determining that "fireball" was not generic at the time of registration. The court found substantial evidence supporting the Board’s finding that "fireball" was not generic, including the lack of evidence that competitors used the term and the association of the term with specific products rather than a generic category.The court also affirmed the Board’s determination of no likelihood of confusion, finding that the Board’s analysis of the fame and conceptual strength of the FIREBALL mark, as well as the similarity of the marks, was supported by substantial evidence. The court concluded that the Board did not err in its findings and affirmed the decision in favor of Bullshine. View "Bullshine Distillery LLC v. Sazerac Brands, LLC" on Justia Law

Lau, a native and citizen of China, was charged with third-degree trademark counterfeiting in New Jersey. While awaiting trial, he left the United States and upon his return, he was paroled for deferred inspection by immigration authorities. Lau was later convicted and sentenced to probation. The Department of Homeland Security (DHS) initiated removal proceedings against him, asserting he was inadmissible due to his conviction for a crime involving moral turpitude (CIMT).An Immigration Judge (IJ) found Lau inadmissible under 8 U.S.C. § 1182(a)(2)(A)(i)(I) and ineligible for a waiver of inadmissibility under 8 U.S.C. § 1182(h). The IJ concluded that Lau’s conviction constituted a CIMT, did not qualify as a petty offense, and that he was properly classified as an applicant for admission upon his return. The IJ also determined that Lau did not meet the continuous residency requirement for a 212(h) waiver. The Board of Immigration Appeals (BIA) affirmed the IJ’s decision, agreeing with the findings and dismissing Lau’s appeal.The United States Court of Appeals for the Second Circuit reviewed the case. The court held that DHS improperly classified Lau as an applicant for admission when he returned to the United States while his criminal charge was pending. The court found that a pending charge does not provide clear and convincing evidence of a CIMT necessary for DHS to consider an LPR an applicant for admission. Consequently, the court granted Lau’s petition for review, vacated the final order of removal, and remanded the case to the agency with instructions to terminate removal proceedings against Lau based on his inadmissibility under section 1182(a), without prejudice to any future deportation proceedings. View "Lau v. Bondi" on Justia Law

Dewberry Engineers sued Dewberry Group for trademark infringement under the Lanham Act, alleging that Dewberry Group's use of the "Dewberry" name violated their trademark rights. Dewberry Group, a real-estate development company, provides services to separately incorporated affiliates, which own commercial properties. The affiliates generate rental income, while Dewberry Group operates at a loss, surviving through cash infusions from its owner, John Dewberry.The District Court found Dewberry Group liable for trademark infringement and awarded Dewberry Engineers nearly $43 million in profits. The court treated Dewberry Group and its affiliates as a single corporate entity, totaling the affiliates' real-estate profits to calculate the award. The Fourth Circuit Court of Appeals affirmed this decision, agreeing with the District Court's approach to treat the companies as a single entity due to their economic reality.The Supreme Court of the United States reviewed the case and held that the District Court erred in treating Dewberry Group and its affiliates as a single corporate entity for calculating profits. The Court ruled that under the Lanham Act, only the profits of the named defendant, Dewberry Group, could be awarded. The affiliates' profits could not be considered as the defendant's profits since they were not named as defendants in the lawsuit. The Supreme Court vacated the Fourth Circuit's decision and remanded the case for a new award proceeding consistent with its opinion. View "Dewberry Group, Inc. v. Dewberry Engineers Inc." on Justia Law