Justia Commercial Law Opinion Summaries

Georgia-Pacific sued Four-U-Packaging, alleging that Four-U’s supply of off-brand paper towels for use in Georgia-Pacific paper-towel dispensers infringed on its trademarks. Four-U distributes paper and janitorial supplies; it does not manufacturer commercial paper systems. Four-U argued that the claims were barred by the ruling in a similar case brought by Georgia-Pacific in Arkansas against a different distributor of generic paper towels. The district court granted summary judgment to Four-U. The Sixth Circuit affirmed. All of the elements of issue preclusion are met and applying the doctrine poses no risk of creating inconsistent rulings. View "Georgia-Pacific Consumer Prods., LP v. Four-U-Packaging, Inc." 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

LE, creator of the “5-hour ENERGY” energy shot, asserted that N.V.E., creator of the “6 Hour POWER” energy shot, infringed its trademark, under the Lanham Act. 15 U.S.C. 125(a). LE distributed a “recall notice” stating that NVE’s “‘6 Hour’ energy shot” had been recalled. NVE claims that the notice constituted false advertising in violation of the Lanham Act and anti-competitive conduct in violation of the Sherman Act, 15 U.S.C. 2. The district court first found that a likelihood of confusion did not exist between “6 Hour POWER” and “5-hour ENERGY” and held that the recall notice did not constitute false advertising or a violation of the Sherman Act. The Sixth Circuit reversed with respect to trademark infringement and false advertising claims, but affirmed with respect to Sherman Act claims. The “5-hour ENERGY” mark is suggestive and protectable, but the factors concerning likelihood of confusion were closely balanced, making summary judgment in appropriate. There were also unresolved questions of fact as to whether the “recall notice” was misleading, but there was no Sherman Act violation because it was relatively simple for NVE to counter it by sending notices that “6 Hour POWER” had not been recalled. View "N.V.E., Inc. v. Innovation Ventures, LLC" on Justia Law

In 1957, Dominic opened an Italian restaurant, “Dominic’s.” It closed in 2007, but daughter-in-law, Anne, continues to market “Dominic’s Foods of Dayton.” In 2007, Christie, a granddaughter, contracted to operate a restaurant with Powers and Lee, a former Dominic’s chef. In pre-opening publicity, they promised to bring back original Dominic’s recipes. They named the business “Dominic’s Restaurant, Inc.” and registered with the Ohio Secretary of State. Anne brought claims of trademark infringement, trademark dilution, unfair practices, unfair competition, tortious interference with contract, conversion, misappropriation of business property, breach of contract, fraudulent and/or negligent misrepresentation, and breach of implied covenant of good faith and fair dealing. The district court concluded that defendants had engaged in infringing behavior before and after entry of a TRO. Powers and Lee later closed the restaurant and withdrew registration of the name, but motions continued, arising out of efforts to open under another name. The district court eventually granted default judgment against defendants, rejecting a claim that proceedings were automatically stayed by Powers’ bankruptcy filing. The Sixth Circuit affirmed. The stay does not protect a debtor’s tortious use of his property and, while the stay would bar assessment of damages, it would not bar injunctive relief. View "Dominic's Rest. of Dayton, Inc. v. Mantia" on Justia Law

HSN sold through its website and television station about 70,000 "Esteban" guitars that it identified, inaccurately, as containing Fishman pickups. Esteban is the performance name used by musician Paul who, with his company Daystar, has collaborated with HSN since 2001 to market Esteban guitar packages. Fishman, manufacturer of the pickup at issue, which is attached to musical instruments for sound amplification, claimed trademark infringement and false advertising under the Lanham Act, 15 U.S.C.1051, against HSN, Paul, and Daystar. The district court rejected the claims, finding that the violations were not "willful." The judge chose not to order disgorgement of profits. The First Circuit affirmed, rejecting challenges to evidentiary rulings and jury instructions. In federal civil litigation willfulness requires a conscious awareness of wrongdoing by the defendant or at least conduct deemed "objectively reckless" measured against standards of reasonable behavi View "Fishman Transducers, Inc. v. Paul" on Justia Law

Maker's Mark sued Jose Cuervo for trademark infringement, based on Cuervo's use of red dripping wax seal on bottles of premium tequila. The district court found that the Maker's Mark trademark was valid, rejecting an argument of "functionality" under 15 U.S.C. 1065, and had been infringed. The court entered an injunction, but denied damages. The Sixth Circuit affirmed. The court traced the history of bourbon whiskey and noted that Maker's Mark and its use of a red dripping wax seal, a registered trademark since 1958, occupy a central place in the modern story of bourbon. The majority of the factors indicate a possibility of "confusion of sponsorship" trademark infringement: strength of the trademark, relatedness of the goods, similarity, and marketing channels. Whether there was actual confusion was a neutral factor. View "Maker's Mark Distillery, Inc. v. Diageo North America, Inc." on Justia Law

Triumph publishes books and software to prepare teachers and students for standardized tests. In 2004, Triumph filed use-based applications for the COACH word mark, a stylized COACH mark, and a COACH mark and design. CSI sells handbags, luggage, clothing, watches, eye glasses, and wallets and has used the COACH mark since at least 1961. CSI owns 16 incontestable registrations for the COACH mark: all but one issued before Triumph's application. CSI filed Notice of Opposition on grounds of likelihood of confusion (15 U.S.C. 1052(d)) and dilution (15 U.S.C. 1125(c)). The Trademark Trial and Appeal Board dismissed. The Federal Circuit affirmed findings that there was no likelihood of confusion between the marks and that CSI failed to prove likelihood of dilution. Because of evidentiary errors, the court vacated and remanded a finding that, although Triumph's marks are merely descriptive, they have acquired secondary meaning, and were entitled to registration. View "Coach Serv., Inc. v. Triumph Learning, LLC" on Justia Law

For many years the owners of the original bridal shop allowed family members to operate similar businesses under the same name. The owners sold one of their own shops and the buyer agreed to pay $75,000 per year for the use of the name and marks. When the agreement expired in 2002, the buyer continued to use the name and marks, without paying. The district court dismissed a 2007 claim under the Lanham Act, 15 U.S.C. 1117, 1125. The Seventh Circuit affirmed, holding that the owners abandoned their mark by engaging in "naked licensing:" allowing others to use the mark without exercising reasonable control over the nature and quality of the goods, services, or business on which the mark is used. It was not enough that the owners had confidence in the high quality of the buyer's operation; they retained no control.

Appellant appealed an order of summary judgment in favor of the United States Bureau of Customs and Border Protection ("CBP") in his eight Freedom of Information Act ("FOIA"), 5 U.S.C. 552, requests for 19 C.F.R. 133.21(c) Notices of Seizures of Infringing Merchandise ("Notices") from certain United States ports. Appellant raised several issues of error on appeal. The court held that the district court's findings that the Notices contained plainly commercial information, which disclosed intimate aspects of an importers business such as supply chains and fluctuations of demand for merchandise, was well supported. The court also held that the district court was not clearly erroneous in its finding that the information at issue was confidential and privileged where the trade secret exemption of FOIA ("Exemption 4") was applicable. The court further held that when an agency freely disclosed to a third party confidential information covered by a FOIA exemption without limiting the third-party's ability to further disseminate the information then the agency waived the ability to claim an exemption to a FOIA request for the disclosed information. Therefore, the district court's ruling was affirmed in regards to FOIA Exemption 4 but the district court's conclusion as to the fees charged to appellant was reversed where CBP must follow the FOIA fee provisions under 19 C.F.R. 103.