Articles Posted in Trademark

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Tawas, Michigan hosts an annual festival called “Perchville.” Its Chamber of Commerce obtained federal trademark registration for the term “Perchville,” in 2003. Trading Post allegedly was selling merchandise depicting the term “Perchville.” The Chamber filed suit against Agnello, a Trading Post employee, and obtained an ex parte injunctive order prohibiting sales of t-shirts with the mark, which stated: “this order shall be binding upon the parties to this action, their officers, agents, servants, employees, and attorneys and on those persons in active concert or participation with them who receive actual notice of this order by personal service [or] otherwise.” Agnello appeared at a hearing without an attorney, indicated that he had spoken to Trading Post's partial owner about the lawsuit, but repeatedly stated that he was confused. Agnello consented to a permanent injunction. The judge stated that the order would be binding on anyone acting in concert with Agnello. Trading Post filed suit, challenging the Chamber’s trademark of “Perchville.” The district court found the challenge barred by res judicata because a final determination on the merits occurred in the state court. The Sixth Circuit reversed. There may be circumstances when an employee’s interests are so aligned with his employer as to be in privity for purposes of res judicata, that was not true here. Agnello was an hourly employee given a few days’ notice of an injunction. View "AuSable River Trading Post, LLC v. Dovetail Solutions, Inc." on Justia Law

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Sixth Circuit finds little likelihood of confusion between the trademarks “OrderLink” and “UPS OrderLink.” Progressive, located in Michigan, provides logistical services to online businesses. Under the trademark “OrderLink,” Progressive develops clients’ websites and handles deliveries. Progressive registered the OrderLink trademark in 2004, but alleges that it has used the mark for at least 19 years and spent $2.5 million dollars advertising the mark. UPS also serves small volume shippers who operate businesses on Amazon and eBay. In 2012, UPS developed a new interface to enable those customers to import their orders directly into UPS’s shipping application. UPS initially concluded that the name “orderlink” was not available, but determined that the terms “order” and “link” were commonly used together by other companies. UPS concluded that Progressive’s services differed substantially from tits application UPS and chose the name “UPS OrderLink.” Its USPTO application was rejected based on a likelihood of confusion with Progressive’s mark. Nonetheless, UPS launched UPS OrderLink as a free service, accessible only through UPS’s website. Progressive sent a cease-and-desist letter. UPS changed the name of its service to “Ship Marketplace Orders.” Progressive alleged violations of the Lanham Act, 15 U.S.C. 1051, the Michigan Consumer Protection Act, and the common law. The district court granted UPS summary judgment. The Sixth Circuit affirmed. The balance of eight factors, particularly the strength of the mark and the similarity of the marks, indicate little likelihood of customer confusion. View "Progressive Distribution Services, Inc. v. United Parcel Service, Inc." on Justia Law

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In 2013, Jurgensen allegedly developed an idea for a mobile application to connect employers with prospective employees, called “WorkWire.” He formed Creative Harbor; an attorney allegedly advised that the WorkWIre trademark was available. Meanwhile, Kelly Services, a staffing company, allegedly developed its own employment-based iPad application, called “WorkWire.” Kelly allegedly completed the application on February 4, and submitted it to Apple for approval. On February 19, Creative filed trademark applications at 6:28 p.m. and 7:56 p.m. (EST). The same day, at 8:11 p.m. EST, Kelly’s iPad application became available on the Apple Store. A customer first downloaded that application on February 20. Creative sent Kelly a cease and desist letter. Kelly filed suit. When the Patent and Trademark Office published the Applications, Kelly filed opposition and notified the Trademark Trial and Appeal Board (TTAB) of the pending action. The TTAB stayed proceedings. The district court held that Creative had to use the Mark in commerce before its priority rights would vest and voided the Applications in their entirety. The Sixth Circuit affirmed that Creative lacked bona fide intent as to some, but not all of the goods and services listed in the Applications, (15 U.S.C. 1051(b)), but held that the district court erroneously voided the Applications in their entirety, and remanded for determination of which goods and services were improperly included in the Applications, and excision of improper items. View "Kelly Services, Inc. v. Creative Harbor, L.L.C." on Justia Law

Posted in: Trademark

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Kibler, a disc jockey, uses turntables and others’ vocals to produce music containing jazz and funk elements. He released several albums under the name “DJ LOGIC” since 1999, but currently has no record deal. Kibler registered “DJ LOGIC” as a trademark in 2000, allowed the registration to lapse, and re-registered it in 2013. He has also been known as “LOGIC.” Hall has performed under the name “LOGIC” since 2009. In 2012, Kibler’s attorney sent Hall’s management company and booking agent an email ordering them to stop using the name “LOGIC” and to recall any product or advertisement that did, claiming infringement on Kibler’s mark. Hall’s company applied to register “LOGIC” as a trademark. Kibler sued, alleging trademark infringement, 15 U.S.C. 1125(a); breach of the Michigan Consumer Protection Act; unfair competition under Michigan law; and trademark dilution under the Lanham Act. In 2014, defendants delayed Hall’s tour and first album release due to ongoing settlement negotiations that ultimately collapsed. Defendants then released the album, which sold over 170,000 copies. The Sixth Circuit affirmed summary judgment in favor of the defendants. Kibler did not provide evidence sufficient to find that relevant consumers are likely to confuse the sources of his and Hall’s products or that Hall diluted Kibler’s mark. View "Kibler v. Hall" on Justia Law

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In 1969, the Flynt brothers opened “Hustler Club” nightclub, in Cincinnati. Larry later created the Hustler conglomerate, producing sexually explicit magazines. Jimmy opened his retail store, Hustler Cincinnati, in 2000, using the “HUSTLER” trademark (owned by Larry’s corporation) and began paying licensing in 2004. Jimmy and Larry had a falling out. Larry's Hustler fired Jimmy in 2009. Jimmy’s Hustler stopped paying fees, but continued to use the mark. Larry sued. The court enjoined Jimmy from “using in commerce any HUSTLER trademark” and “using any trademark or any variation thereof owned by” Larry or his corporations. Later, Larry complained that Jimmy had opened a new store in Florence, Kentucky, “FLYNT Sexy Gifts.” The court denied the contempt motion because the injunction did not directly prohibit Jimmy’s conduct. but modified the injunction, reasoning that Jimmy’s use of “FLYNT Sexy Gifts” was “likely to cause confusion with the LARRY FLYNT trademark.” The Sixth Circuit affirmed a modification that prohibits Jimmy from “[u]sing the name ‘Flynt’ in connection with the sale, promotion or advertising of adult entertainment products or services unless it is accompanied by the first name ‘Jimmy’ in the same font size, color, and style and on the same background color,” and required Jimmy, when using the name “Flynt” anywhere except on “store signage,” to incorporate “a conspicuous disclaimer stating that the goods or services are not ‘sponsored, endorsed by, or affiliated with Larry Flynt or Hustler, or any business enterprise owned or controlled by Larry Flynt.’” View "LFP IP, LLC v. Hustler Cincinnati, Inc." on Justia Law

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Plaintiff and her companies, Tri-Serve and Capital Concepts, brought a claim for improper use of trade name and false designation of origin under the Lanham Act, 15 U.S.C. 1125, against Sheakley Entity Defendants on the basis of e-mails and mailings Angelia Strunk-Zwick, a manager for plaintiffs and a consultant for Defendant Sheakley HR Solutions, sent to Tri-Serve clients. The court concluded that plaintiffs have stated a claim for improper use of trade name and false designation of origin for which the Sheakley Entity Defendants may be held vicariously liable. Taken together, the representations at issue could not only sow confusion but also strongly imply affiliation - and affiliation not endorsed by plaintiffs. Because the Sheakley Entity Defendants may be held vicariously liable for Strunk-Zwick’s e-mail, plaintiffs have stated a claim for false advertising against Strunk-Zwick and the Sheakley Entity Defendants. Plaintiffs further allege that Strunk-Zwick and all Sheakley Defendants violated the Racketeer Influenced and Corrupt Organizations Act (RICO), 18 U.S.C. 1962, for failure to state a claim. The court concluded that plaintiffs’ RICO conspiracy claim fails because plaintiffs failed to allege a substantive RICO violation in the first place. Accordingly, the court reversed the district court's dismissal of plaintiffs' Lanham Act claims for failure to state a claim; affirmed the dismissal of plaintiffs' RICO claims; and remanded for further proceedings where the district court may, in its discretion, reexamine whether to reinstate any of plaintiffs' state law claims. View "Grubbs v. Sheakley Group, Inc." on Justia Law

Posted in: Business Law, Trademark

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Slep-Tone Entertainment sued Karaoke Kandy and Polidori under federal and state law for unlawfully selling hard drives bearing Slep-Tone’s registered trademarks without authorization. After trial, the jury answered a single interrogatory finding that the defendants had not infringed Slep-Tone’s trademarks. The district court entered judgment in the defendants’ favor. The Sixth Circuit stayed a separate appeal and remanded to the district court because Slep-Tone’s timely post-judgment motion for findings of fact and conclusions of law under Federal Rule of Civil Procedure 52 was pending before the district court. In a separate appeal, the Sixth Circuit remanded for further proceedings regarding defendants’ a motion for attorney fees under 15 U.S.C. 1117(a) based on the judgment in their favor. The motion was not untimely; the FRCP 52 motion remained pending. The court must determine whether it is necessary to reassess if this case qualifies as “extraordinary.” View "Slep-Tone Entm't Corp. v. Karaoke Kandy Store, Inc." on Justia Law

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Plaintiff is the marketer, distributor, and seller of 5-hour ENERGY (FHE), an “energy shot,” which is an energy drink sold and consumed in small portions. Plaintiff began selling FHE in 2004. FHE was not the first energy shot on the market, but was the first to achieve widespread success and was unique in being marketed FHE to adults as a replacement for an afternoon cup of coffee or a caffeinated soda. Plaintiff submitted “5-hour ENERGY” for trademark registration with the Patent and Trademark Office, which rejected the application in January 2005, deeming the mark too descriptive to be eligible for protection. Plaintiff placed FHE on the Supplemental Register in September 2005 and secured a trademark for “5-hour ENERGY” in August 2011. Plaintiff also protected its mark and market position through litigation. Defendants have marketed dietary supplements since the mid-1990s. In 2008, defendants began to market and sell “6 Hour Energy Shot,” in a bottle resembling the FHE bottle. In a suit under the Lanham Act, 15 U.S.C. 1051, the district court found infringement of plaintiff’s trademark and trade dress, then entered an order of contempt after the defendants violated a permanent injunction entered. The Sixth Circuit affirmed. View "Innovation Ventures, LLC v. N2G Distrib., Inc." on Justia Law

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In 2001, ASC and Paragon entered into a contract to develop and support computer software for the Chicago Tribune. This software, called the “Single Copy Distribution System” (SCDS) would allow the Tribune to manage and track newspaper deliveries and subscriptions. Tensions emerged and Paragon terminated the contract in 2003. ASC successfully sued Paragon in Ohio state court, obtaining a declaration that ASC was the sole owner of the SCDS. In federal court, ASC alleged copyright infringement, trademark infringement, breach of contract, conversion, tortious interference with a business relationship, unjust enrichment, and unfair competition based on Paragon’s alleged copying of the SCDS software to use in its DRACI software, developed in 2004 for another newspaper. After eight years of litigation, the district court granted summary judgment to Paragon on all claims. The Sixth Circuit affirmed, stating that ASC had never submitted any evidence identifying the unique protectable elements of SCDS, and that there was insufficient evidence to generate even an implication that DRACI is substantially similar to SCDS. View "Automated Solutions Corp. v. Paragon Data Sys., Inc." on Justia Law

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Groeneveld sued Lubecore, claiming that Lubecore’s automotive grease pump is a “virtually identical” copy of Groeneveld’s automotive grease pump. The complaint asserted tradedress infringement in violation of section 43(a) of the Lanham Act, 15 U.S.C. 1125(a), and violation of related federal and Ohio laws. The trade-dress claim went to the jury, which found for Groeneveld and awarded it $1,225,000 in damages. The Sixth Circuit reversed, holding that a company cannot use trade-dress law to protect its functional product design from competition with a “copycat” design made by another company where there is no reasonable likelihood that consumers would confuse the two companies’ products as emanating from a single source. Trademark law is designed to promote brand recognition, not to insulate product manufacturers from lawful competition. View "Groeneveld Transp. Efficiency, Inc. v. Lubecore Int'l, Inc." on Justia Law