Justia Civil Procedure Opinion SummariesArticles Posted in Trademark
Bimbo Bakeries USA, et al. v. Sycamore, et al.
Bimbo Bakeries USA, Inc. (“Bimbo Bakeries”) owned, baked, and sold Grandma Sycamore’s Home-Maid Bread (“Grandma Sycamore’s”). Bimbo Bakeries alleged that United States Bakery (“U.S. Bakery”), a competitor, and Leland Sycamore (“Leland”), the baker who developed the Grandma Sycamore’s recipe, misappropriated its trade secret for making Grandma Sycamore’s. The district court granted summary judgment in favor of U.S. Bakery on a trade dress infringement claim. The parties went to trial on the other two claims, and the jury returned a verdict in favor of Bimbo Bakeries on both. After the trial, the district court denied U.S. Bakery’s and Leland’s renewed motions for judgment as a matter of law on the trade secrets misappropriation and false advertising claims. The district court did, however, remit the jury’s damages award. All parties appealed. Bimbo Bakeries argued the district court should not have granted U.S. Bakery summary judgment on its trade dress infringement claim and should not have remitted damages for the false advertising claim. U.S. Bakery and Leland argued the district court should have granted their renewed motions for judgment as a matter of law, and Leland made additional arguments related to his personal liability. The Tenth Circuit affirmed in part, reversed in part, and remanded for further proceedings because the Court found all of Bimbo Bakeries’ claims failed as a matter of law. View "Bimbo Bakeries USA, et al. v. Sycamore, et al." on Justia Law
Trial Lawyers College v. Gerry Spences Trial Lawyers, et al.
This appeal grew out of a dispute over a program (“The Trial Lawyers College”) to train trial lawyers. The College’s board of directors splintered into two factions, known as the “Spence Group” and the “Sloan Group.” The two groups sued each other: The Spence Group sued in state court for dissolution of the College and a declaratory judgment recognizing the Spence Group’s control of the Board; the Sloan Group then sued in federal court, claiming trademark infringement under the Lanham Act. Both groups sought relief in the federal case. The federal district court decided both requests in favor of the Sloan Group: The court denied the Spence Group’s request for a stay and granted the Sloan Group’s request for a preliminary injunction. The Spence Group appealed both rulings. The Tenth Circuit Court of Appeals determined it lacked jurisdiction to review the district court’s denial of a stay. After the Spence Group appealed the federal district court’s ruling, the state court resolved the dispute over Board control. So this part of the requested stay became moot. The remainder of the federal district court’s ruling on a stay did not constitute a reviewable final order. The Court determined it had jurisdiction to review the grant of a preliminary injunction. In granting the preliminary injunction, the district court found irreparable injury, restricting what the Spence Group could say about its own training program and ordering removal of sculptures bearing the College’s logo. The Spence Group challenged the finding of irreparable harm, the scope of the preliminary injunction, and the consideration of additional evidence after the evidentiary hearing. In the Tenth Circuit's view, the district court had the discretion to consider the new evidence and grant a preliminary injunction. "But the court went too far by requiring the Spence Group to remove the sculptures." View "Trial Lawyers College v. Gerry Spences Trial Lawyers, et al." on Justia Law
Motus, LLC v. CarData Consultants, Inc.
Motus and CarData both provide tools for managing businesses' reimbursement of employee expenses. Motus is a Delaware limited liability company with its principal place of business in Boston.. CarData is a Toronto-based Canadian corporation. Motus sued CarData for trademark infringement and related wrongs for its use of a particular phrase in the meta title of its website, Lanham Act, 15 U.S.C. 1051-1129. Motus argued CarData had "purposefully availed itself of the privilege of conducting activities within the U.S. and Massachusetts" by maintaining numerous offices in the U.S. and marketing itself to and interacting with U.S. and Massachusetts customers through its website.The First Circuit affirmed the dismissal of Motus's suit without prejudice, for lack of personal jurisdiction, and denial of its request for jurisdictional discovery. The purposeful availment requirement was not met because there was not “something more” connecting CarData to the forum state beyond its website which is available to anyone with internet access, in any state. Motus did not act diligently to present facts to the court to show why jurisdiction would be found if discovery were permitted. Motus left the court to guess whether CarData has any Massachusetts customers, receives any revenue from Massachusetts, or has any other business connection with Massachusetts. Jurisdiction cannot be premised on guesswork; the record does not support a finding that the operation of CarData's website and/or its commercial contacts elsewhere in the country constitute purposeful availment with respect to Massachusetts. View "Motus, LLC v. CarData Consultants, Inc." on Justia Law
Window World International v. O’Toole
The Eighth Circuit dismissed, based on lack of jurisdiction, plaintiffs' appeal of a district court order staying a federal action for trademark infringement and unfair competition pending resolution of common trademark license issues in a long-pending state court litigation between the parties. The court concluded that the stay order is neither a final order under 28 U.S.C. 1291 nor a collateral interlocutory order that may be appealed. In this case, the district court did not abuse its discretion in concluding that if the Lomax Parties prevail on their broad allegations in state court, then the state proceedings will fully dispose of the claims in federal court. View "Window World International v. O'Toole" on Justia Law
Beasley v. Howard
In 1969, Beasley founded a band, “The Ebonys,” one of many bands that created the “Philadelphia Sound.” The Ebonys achieved some commercial success in the 1970s but never reached the notoriety of similar artists such as The O’Jays. Beasley alleges that The Ebonys have performed continuously. Howard joined the band in the mid-1990s. Beasley obtained a New Jersey state service mark for THE EBONYS in 1997. Beasley and his bandmates performed with Howard for several years before parting ways. Each artist claimed the Ebonys name. In 2012, Howard registered THE EBONYS with the Patent & Trademark Office (PTO). Beasley alleges that Howard’s registration has interfered with his business; he has not been able to register a band website that uses “the Ebonys” in its domain name, Howard has kept concert venues from booking Beasley’s performances, Howard has tried to collect royalties from Beasley’s recordings, and Howard has claimed to be the Ebonys’s true founder. Beasley filed unsuccessful petitions with the Trademark Trial and Appeal Board (TTAB) to cancel the mark, contending that Howard defrauded the PTO. The district court relied on claim preclusion to dismiss Beasley’s subsequent complaint. The Third Circuit remanded for a determination of the scope of Beasley’s claims. Trademark cancellation proceedings before TTAB do not have claim preclusive effect against federal trademark infringement lawsuits. TTAB’s limited jurisdiction does not allow trademark owners to pursue infringement actions or the full scope of infringement remedies. The court affirmed the dismissal of any claim that Howard defrauded the PTO. View "Beasley v. Howard" on Justia Law
Ayla, LLC v. Alya Skin Pty. Ltd.
Ayla, a San Francisco-based brand, is the registered owner of trademarks for use of the “AYLA” word mark in connection with on-site beauty services, online retail beauty products, cosmetics services, and cosmetics. Alya Skin, an Australian company, sells and ships skincare products worldwide. Ayla sued in the Northern District of California, asserting trademark infringement and false designation of origin under the Lanham Act, 15 U.S.C. 1114, 1125(a).Alya Skin asserted that it has no retail stores, offices, officers, directors, employees, bank accounts, or real property in the U.S., does not sell products in U.S. retail stores, solicit business from Americans, nor direct advertising toward California; less than 10% of its sales have been to the U.S. and less than 2% of its sales have been to California. Alya Skin uses an Idaho company to fulfill shipments outside of Australia and New Zealand. Alya Skin filed a U.S. trademark registration application in 2018, and represented to potential customers that its products are FDA-approved; it ships from, and allows returns to, Idaho Alya Skin’s website listed U.S. dollars as the default currency and advertises four-day delivery to the U.S.The Ninth Circuit reversed the dismissal of the suit. Jurisdiction under Fed.R.Civ.P. 4(k)(2) comports with due process. Alya Skin had minimum contacts with the U.S., and subjecting it to an action in that forum would not offend traditional notions of fair play and substantial justice. The company purposefully directed its activities toward the U.S. The Lanham Act and unfair competition claims arose out of or resulted from Alya Skin’s intentional forum-related activities. View "Ayla, LLC v. Alya Skin Pty. Ltd." on Justia Law
Alliance for Good Government v. Coalition for Better Government
Alliance and Coalition are nonprofit organizations that endorse political candidates in New Orleans. Alliance filed suit against Coalition, seeking to enjoin use of its trade name and logo for federal trademark infringement under the Lanham Act, state trademark infringement, and unfair trade practices. The district court subsequently joined Darleen Jacobs as a third party to the case.The Fifth Circuit affirmed the district court's award of attorney's fees to Alliance for federal trademark infringement under the Lanham Act. The court concluded that the district court's procedure for joining Jacobs met the demands of due process, and the district court did not abuse its discretion in holding her directly liable for the fee award. The court found it appropriate to extend the interpretation of the Patent Act fee-shifting provision to its interpretation of the Lanham Act and found that district courts do have the authority to award appellate fees under the Lanham Act. The court concluded that the district court's decision to award fees for further litigation of the attorney's fee award did not contravene the mandate rule; even if appellants are correct that Alliance's billing entries are flawed, the proper remedy is "a reduction of the award by a percentage intended to substitute for the exercise of billing judgment," which the district court did; and the district court considered each of appellants' objections to Alliance's fees motion. Finally, the court declined to address appellants' First Amendment argument, which was not addressed in Alliance I. View "Alliance for Good Government v. Coalition for Better Government" on Justia Law
Snyder’s-Lance, Inc. v. Frito-Lay North America, Inc.
The waiver language in 15 U.S.C. 1071 relates only to the choice of review options for the decision appealed from. The Fourth Circuit held that a party seeking review of a subsequent Trademark Board decision may seek review in either the Federal Circuit or the district court, even if the Trademark Board's initial decision was reviewed by the Federal Circuit.In this case, the parties' dispute concerns the registration of the mark "PRETZEL CRISPS." Plaintiff sought to register the mark in 2004, but the trademark examiner denied registration. Plaintiffs reapplied for registration in 2009, but Frito-Lay opposed the registration and argued that "PRETZEL CRISPS" was generic for pretzel crackers and not registrable. The Trademark Board sided with Frito-Lay in 2014. Plaintiffs opted for the section 1071(a) route and appealed the Trademark Board's 2014 decision to the Federal Circuit. The Federal Circuit agreed with plaintiffs in 2015, remanding to the Trademark Board. On remand in 2017, the Trademark Board again concluded that "PRETZEL CRISPS" was generic, and alternatively concluded that "PRETZEL CRISPS" lacked distinctiveness. Plaintiffs sought review of the Trademark Board's 2017 decision, but the district court dismissed the case without prejudice for lack of subject matter jurisdiction. The Fourth Circuit reversed the district court's judgment dismissing the case for lack of subject matter jurisdiction and remanded for further proceedings. The court explained that the statutory text of the Lanham Act, while ambiguous, favors plaintiffs' argument in favor of jurisdiction. Furthermore, this conclusion is bolstered by legislative history, the court's sister circuits' holdings in similar cases, and policy considerations. The court remanded for further proceedings. View "Snyder's-Lance, Inc. v. Frito-Lay North America, Inc." on Justia Law
Quincy Bioscience, LLC v. Ellishbooks
Quincy’s Prevagen® dietary supplement is sold at stores and online. Quincy registered its Prevagen® trademark in 2007. Ellishbooks, which was not authorized to sell Prevagen®, sold supplements identified as Prevagen® on Amazon.com, including items that were in altered or damaged packaging; lacked the appropriate purchase codes or other markings that identify the authorized retail seller; and contained tags from retail stores. Quincy sued under the Lanham Act, 15 U.S.C. 1114. Ellishbooks did not respond. The court entered default judgment. Ellishbooks identified no circumstances capable of establishing good cause for default. The district court entered a $480,968.13 judgment in favor of Quincy, plus costs, and permanently enjoined Ellishbooks from infringing upon the PREVAGEN® trademark and selling stolen products bearing the PREVAGEN® trademark.The Seventh Circuit affirmed and subsequently awarded Rule 38 sanctions. Ellishbooks’ appellate arguments had virtually no likelihood of success and its conduct during the course of the appeal was marked by several failures to timely respond and significant deficiencies in its filings. These shortcomings cannot be attributed entirely to counsel’s lack of experience in litigating federal appeals. A review of the dockets suggests that Ellishbooks has attempted to draw out the proceedings as long as possible while knowing that it had no viable substantive defense. View "Quincy Bioscience, LLC v. Ellishbooks" on Justia Law
Lucky Brand Dungarees, Inc. v. Marcel Fashions Group, Inc.
Lucky Brand and Marcel market clothing. Marcel registered the trademark “Get Lucky.” Lucky Brand registered the trademark “Lucky Brand” and other marks with the word “Lucky.” In a 2003 settlement agreement, Lucky Brand agreed to stop using the phrase “Get Lucky.” Marcel released its claims regarding Lucky Brand’s use of its other trademarks.In 2005, Lucky Brand sued Marcel for violating its trademarks. Marcel filed counterclaims turning on Lucky Brand’s continued use of “Get Lucky,” but did not claim that Lucky Brand’s use of its other marks alone infringed that mark. The court enjoined Lucky Brand from copying or imitating Marcel’s “Get Lucky” mark.In 2011, Marcel sued Lucky Brand, arguing only that Lucky Brand’s post-2010 use of Lucky Brand’s other marks infringed Marcel’s “Get Lucky” mark. Marcel did not allege that Lucky Brand continued to use "Get Lucky." Lucky Brand argued, for the first time since early in the 2005 Action, that Marcel had released those claims in the settlement agreement. The Second Circuit vacated the dismissal of the action, concluding that “defense preclusion” prohibited Lucky Brand from raising that unlitigated defense.A unanimous Supreme Court reversed. Any preclusion of defenses must, at a minimum, satisfy the strictures of issue preclusion or claim preclusion. Here, issue preclusion does not apply, so the causes of action must share a “common nucleus of operative fact[s]” for claim preclusion to apply. The 2005 claims depended on Lucky Brand’s alleged use of “Get Lucky.” In the 2011 suit, Marcel alleged that the infringement was Lucky Brand’s use of its other marks containing the word “Lucky,” not any use of “Get Lucky” itself. The conduct in the 2011 suit occurred after the conclusion of the 2005 suit. View "Lucky Brand Dungarees, Inc. v. Marcel Fashions Group, Inc." on Justia Law