Justia U.S. 6th Circuit Court of Appeals Opinion SummariesArticles Posted in Trademark
Grubbs v. Sheakley Group, Inc.
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
Slep-Tone Entm’t Corp. v. Karaoke Kandy Store, Inc.
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
Innovation Ventures, LLC v. N2G Distrib., Inc.
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
Automated Solutions Corp. v. Paragon Data Sys., Inc.
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
Groeneveld Transp. Efficiency, Inc. v. Lubecore Int’l, Inc.
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
Yellowbook Inc. v. Brandeberry
In 2002 Brandeberry sold his phonebook business, AMTEL, to White, who in turn sold the business to Yellowbook, a national publisher of yellow-pages directories. In 2009, Brandeberry started a rival phonebook under the AMTEL name. Yellowbook brought a trademark-infringement suit. The district court found that when Brandeberry initially purchased the rights to the AMTEL mark the rights were transferred to both him individually and his corporation; since the sale to White did not involve Brandeberry in an individual capacity, Brandeberry retained his individual rights, and White received only a non-exclusive right to use the mark. The Sixth Circuit reversed, holding that the contract transferred exclusive ownership of the mark and, even if it did not, Brandeberry’s rights were abandoned. The initial contract cannot be read to create joint ownership, and trademark law would not permit joint ownership under the facts in this case. View "Yellowbook Inc. v. Brandeberry" on Justia Law
Georgia-Pacific Consumer Prods., LP v. Four-U-Packaging, Inc.
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
N.V.E., Inc. v. Innovation Ventures, LLC
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
Cmty. Trust Bancorp, Inc. v. Cmty Trust Fin. Corp.
Since at least 1995, Community Trust Bancorp, Inc. (plaintiff) has used the mark “COMMUNITY TRUST” to promote its services; it included this mark on its website since 1998. Defendants, Community Trust Financial Corporation, and two subsidiaries, Community Trust Bank and Community Trust Bank of Texas, use the marks “COMMUNITY TRUST” and “COMMUNITY TRUST BANK,” and display these marks on their website. Defendants’ contacts with Kentucky are limited. They have branch offices exclusively in Texas, Louisiana, and Mississippi and limit their advertising and marketing campaigns to those states; they have no officers, directors, employees, agents, or any other physical presence in Kentucky. They do have customers who moved to Kentucky and continue to maintain their bank accounts from there. Three or four account owners, while residing in Kentucky, requested passwords to access the Defendants’ online banking website. Plaintiff brought a claim of trademark infringement under the Lanham Act, 15 U.S.C. 1114(1), and state law. The district court denied a motion to dismiss for lack of jurisdiction. The Sixth Circuit reversed, stating that the cause of action only tangentially related to defendants’ acts, providing passwords, within the forum state. View "Cmty. Trust Bancorp, Inc. v. Cmty Trust Fin. Corp." on Justia Law
Dominic’s Rest. of Dayton, Inc. v. Mantia
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