Articles Posted in Trademark

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The Ninth Circuit filed an order granting defendants' petition for panel rehearing, withdrawing the panel’s opinion, and ordering the filing of a superseding opinion. The panel also filed a superseding opinion reversing the district court's grant of summary judgment in favor of defendants in a trademark infringement suit over the "Honey Badger" catchphrases under the Lanham Act. The panel held that, under the test in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), the Lanham Act applies to expressive works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression. In this case, defendants have not used plaintiff's mark in the creation of a song, photograph, video game, or television show, but have largely just pasted plaintiff's mark into their greeting cards. The panel held that a jury could determine that this use of plaintiff's mark was explicitly misleading as to the source or content of the cards. Therefore, the panel reversed the district court's grant of summary judgment and remanded for further proceedings. View "Gordon v. Drape Creative, Inc." on Justia Law

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The Ninth Circuit reversed the district court's grant of summary judgment for defendants in a trademark infringement action over the "Honey Badger" catchphrases under the Lanham Act. The panel applied the test in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), to balance the competing interests at stake when a trademark owner claims that an expressive work infringes on its trademark rights. The panel held that the Rogers test was not an automatic safe harbor for any minimally expressive work that copies someone else's mark. In this case, a jury could determine that defendants did not add any value protected by the First Amendment but merely appropriated the goodwill associated with plaintiff's mark. Defendants have not used another’s mark in the creation of a song, photograph, video game, or television show, but have largely just pasted plaintiff's mark into their greeting cards. Therefore, the panel remanded for further proceedings. View "Gordon v. Drape Creative, Inc." on Justia Law

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OTR filed suit against Defendant West, asserting various claims under the Lanham Act and state law. Primarily at issue on appeal was whether West could be found liable for reverse passing off under the Lanham Act. The Ninth Circuit affirmed the judgment, holding that West was liable for reverse passing off because he did not simply copy OTR's intellectual property but passed off genuine OTR products as his own. In this case, West asked one of OTR's suppliers to provide him with sample tires from OTR's molds; he asked the supplier to remove OTR's identifying information from the tires; and he wanted to use the tires to obtain business from one of OTR's customers. The panel affirmed the district court's conclusion that West did not establish that OTR committed fraud on the United States Patent and Trademark Office, and held that fraud on the PTO must be established by clear and convincing evidence. The panel also affirmed the denial of a new trial on the issue of trade dress validity and the district court's rejection of a proposed jury instruction. The panel addressed additional issues in a concurrently filed memorandum disposition. View "OTR Wheel Engineering, Inc. v. West Worldwide Services, Inc." on Justia Law

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The Ninth Circuit affirmed the district court's judgment in favor of Pinkette, which sells LUSH-branded women's fashions, in a trademark infringement action brought by CWL, which sells LUSH-branded cosmetics and related goods. The panel distinguished between Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S. Ct. 1962 (2014), and SCA Hygiene Products v. First Quality Baby Products, LLC, 137 S. Ct. 954 (2017), holding that the principle at work in these cases—a concern over laches overriding a statute of limitations—did not apply here, where the Lanham Act has no statute of limitations and expressly makes laches a defense to cancellation. In this case, the district court applied the correct standard when it applied the factors set forth in E-Sys., Inc. v. Monitek, Inc., 720 F.2d 604 (9th Cir. 1983), to CWL's claim for injunctive relief. After analyzing the E-Systems factors, the panel held that they validate the strong presumption in favor of laches created by CWL's delaying past the expiration of the most analogous state statute of limitations. Therefore, the district court did not abuse its discretion in applying laches to bar CWL's cancellation and infringement claims. The panel held that CWL's remaining arguments were without merit. View "Pinkette Cothing, Inc. v. Cosmetic Warriors Limited" on Justia Law

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The Ninth Circuit reversed the district court's grant of summary judgment for McKeon in a trademark infringement action alleging that McKeon's green ear plugs infringed Moldex's green earplugs. The panel held that the existence or nonexistence of alternative designs was probative of functionality or nonfunctionality, and thus evidence of alternative colors must be considered in deciding the functionality of Moldex's mark. The panel held that there was a material dispute of material facts as to whether Moldex's bright green color earplugs was functional. Therefore, the panel remanded for the district court to consider McKeon's arguments both that Moldex's green color lacked secondary meaning and that there was no likelihood of confusion, and then if necessary go to trial. View "Moldex-Metric, Inc. v. McKeon Products, Inc." on Justia Law

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Skechers challenged the district court's issuance of a preliminary injunction prohibiting it from selling shoes that allegedly infringe and dilute adidas America, Inc.’s Stan Smith trade dress and Three-Stripe trademark. The panel affirmed in part, holding that the district court did not abuse its discretion in issuing the preliminary injunction as to adidas's claim that Skechers's Onix shoe infringes on adidas's unregistered trade dress of its Stan Smith shoe. However, the panel reversed in part, holding that the district court erred in issuing a preliminary injunction as to adidas's claim that Skechers's Cross Court shoe infringes and dilutes its Three-Stripe mark. View "adidas America, Inc. v. Skechers USA, Inc." on Justia Law

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The Ninth Circuit vacated the district court's grant of summary judgment for Whole Foods in a trademark infringement action. The panel held that the district court impermissibly resolved disputed questions of material fact in favor of the moving party regarding Whole Foods' affirmative defenses of laches and acquiescence. Therefore, the panel vacated the district court's reasonableness finding and remanded for further proceedings. On remand, the district court should reevaluate the evidence in the light most favorable to the non-moving party—i.e., as if ERF delayed filing suit because it was trying to settle its claims against Whole Foods. If the district court determined on remand that ERF delayed unreasonably in filing suit and this delay prejudiced Whole Foods, it must consider the extent and reasonableness of Whole Foods' reliance on ERF's affirmative representations before it reaches a finding on acquiescence. View "Eat Right Foods Ltd. v. Whole Foods Market, Inc." on Justia Law

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The Ninth Circuit affirmed the district court's grant of summary judgment to Fox and held that Fox's use of the name "Empire" was protected by the First Amendment and was outside the reach of the Lanham Act, 15 U.S.C. 1125. At issue was a Fox television show entitled Empire, which portrays a fictional hip hop music label named "Empire Enterprises" that was based in New York. The panel applied a test developed by the Second Circuit in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), to determine whether the Lanham Act applied. The panel held that Fox's expressive work sufficiently satisfied the first prong of the Rogers test where the title Empire supported the themes and geographic setting of the work and the second prong of the Rogers test where the use of the mark "Empire" did not explicitly mislead consumers. View "Twentieth Century Fox Television v. Empire Distribution" on Justia Law

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This petition for writ of mandamus arose in the context of a contested trademark action initiated by San Diego Comic Convention (SDCC) against petitioners, over the use of the mark "comic-con" or "comic con." The Ninth Circuit granted the petition and vacated the district court's orders directing petitioners to prominently post on their social medial outlets its order prohibiting comments about the litigation on social media, dubbing this posting a "disclaimer." The panel held that the orders at issue were unconstitutional prior restraints on speech because they prohibit speech that poses neither a clear and present danger nor a serious and imminent threat to SDCC's interest in a fair trial. The panel explained that the well-established doctrines on jury selection and the court's inherent management powers provide an alternative, less restrictive, means of ensuring a fair trial. View "Dan Farr Productions v. USDC-CASD" on Justia Law

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In this trademark infringement suit under the Lanham Act, furniture manufacturer Omnia admitted that it blatantly copied and began selling the same goods branded with the mark of its (now ex) business partner, retail furniture company Stone Creek. The district court granted judgment for Omnia. The panel reversed and held that Omnia's use of Stone Creek's mark was likely to cause confusion where placing an identical mark on identical goods creates a strong likelihood of confusion, especially when the mark was fanciful. Furthermore, Stone Creek also sells in overlapping market channels and other factors heighten the likelihood that consumers will be confused as to the origin of the furniture. The panel rejected Omnia's invocation of a common-law defense—known as the Tea Rose–Rectanus doctrine—that protects use of a mark in a remote geographic area when the use is in good faith. In this case, Omnia's knowledge of Stone Creek's prior use defeated any claim of good faith. Finally, the panel confirmed that a 1999 amendment to the trademark statutes did not sweep away the panel's precedent requiring that a plaintiff prove willfulness to justify an award of the defendant's profits. The panel remanded this issue for the district court to make such a determination. View "Stone Creek, Inc. v. Omnia Italian Design, Inc." on Justia Law