Transcript Slide 1

Trademark Cases Summaries
2012-2013
Federal Bar Association Webinar
March 6, 2013
Wahab & Medenica LLC
125 Maiden Lane, Suite 208
New York, NY 10038
Tel: (212) 785-0070
Fax: (646) 619-4195
Email: [email protected]
Topics covered:
•
•
•
•
•
•
•
•
•
•
•
Commercial Use;
Fair Use;
“Artistic” Use;
Famous Marks – Insufficient Pleadings;
Famous Marks – Insufficient Evidence;
Naked Licensing;
Overlap between the Lanham Act and the FDCA;
Declaratory Judgment Actions;
Keywords;
Aesthetic Functionality; and
Damages.
Commercial Use
New Look Party v. Louise Paris, 2012 U.S. Dist. LEXIS
9539 (S.D.N.Y. 2012)
FACTS:
• Plaintiff is a fashion brand headquartered
in England.
• P used “NEW LOOK” in the UK since 1969
for the sale of clothing.
• P developed stylized logo of “NEW LOOK”
in 2002; started using it in 2003.
• Defendant is US based; also sells clothing.
• D filed for “NEW LOOK” standard character mark on
May 22, 2009; application granted on Sept. 21, 2010.
• While application pending, D uses “NEW LOOK”.
• In Oct. 2010, D files for registration of “NEW LOOK”
stylized mark.
• P starts selling in the U.S. as of July 2009.
• P files complaint against D in June 2011, moves for a
preliminary injunction, and seeks to cancel D’s mark.
PI Standard:
A party seeking a preliminary injunction must show:
(1) likelihood of success on the merits;
(2) likelihood of irreparable harm in the absence of the injunction;
(3) balance of hardships tipping in the movant’s favor; and
(4) the public interest is not disserved by the issuance of the
injunction.
To succeed on a claim for infringement of an unregistered trademark,
plaintiff must show that
(1) it has a valid mark that is entitled to protection under the Lanham
Act; and that
(2) the defendant used the mark,
(3) in commerce,
(4) in connection with the sale or advertising of goods or services,
(5) without the plaintiff's consent," and
(6) defendants' use of the mark is likely to cause confusion as to the
connection between defendants' goods and plaintiff.
Use analogous to TM use
Such “use analogous to trademark use” is sufficient to
constitute prior use only where it is "of such a nature and
extent that the mark has become popularized in the
public mind so that the relevant segment of the public
identifies the marked goods with the mark's adopter."
Am. Express Co. v. Goetz, 515 F.3d 156, 161-62 (2d Cir.
2008) (internal quotation marks omitted).
Holding:
Preliminary Injunction denied because P could not
demonstrate use of the mark U.S. commerce. Operation
of a website that was viewed by U.S. customers, sales
through international stores, and equity/debt sales in
corporate entity insufficient to demonstrate commercial
use.
Marshak v. Schaffner, 2012 U.S. Dist. LEXIS
66536 (S.D.N.Y. May 2012)
Parties:
• Defendant, “the Marvelettes,” were a
famous Motown group from the 60s.
• Plaintiff was an editor at Rock Magazine
during the 60s and he booked the
Marvelettes for a performance. He
subsequently went on to host a show
entitled the “Marvellettes.”
Holding:
• Defendant the Marvelettes’ summary judgment
motion was granted.
• Plaintiff could not demonstrate that he was the
senior user of the mark because Defendant
never abandoned the mark even if no longer
performing live music. Radio play was sufficient
to constitute use in commerce.
Perfect Pearl Co. v. Majestic Pearl & Stone, 2012 U.S.
Dist. LEXIS 114606 (S.D.N.Y. Aug. 14, 2012)
• Common law trademark rights by senior
user sufficient to defeat junior user’s
trademark application.
• Self-laudatory terms in the 2nd circuit can
be found either descriptive or suggestive,
but “Majestic” for pearls is suggestive.
Fair Use
•
•
•
In a classic trademark fair use case, “the defendant has used the plaintiff's
mark to describe the defendant's own product.” Playboy Enters. v. Welles,
279 F.3d 796, 801 n.10 (9th Cir. 2002) (internal quotations omitted;
emphasis in original).
In contrast, a nominative trademark fair use ("nominative use") case occurs
when the defendant has used the trademarked term to describe the
plaintiff's product, "even if the defendant's ultimate goal is to describe his
own product.” Mattel Inc. v. Walking Mountain Prods., 353 F.3d 792, 809
(9th Cir. 2003) (internal quotations omitted; emphasis in original).
The fair use defense, classic or nominative, applies when an allegedly
infringing term is used (1) not as a trademark, but (2) fairly and in good faith
(3) to describe the goods and services. Cairns v. Franklin Mint Co., 292
F.3d 1139, 1151 (9th Cir. 2002).
Car-Freshener Corp. v. Getty Images, Inc., 822
F. Supp. 2d 167 (N.D.N.Y., Sept. 27, 2011)
Holding:
The court held it was “plausible” that Getty’s use
of the tree image was not fair use. According to
the court, the image used by Getty created an
association between the tree mark and a “fresh
scent” – which is exactly what Car Freshener is
selling. Therefore Getty was relying upon the
mark’s strength to convey a message.
Simone Kelly-Brown v. Oprah Winfrey, 2012
U.S. Dist. LEXIS 29695 (SDNY March 2012)
Holding:
The Court dismissed all of Plaintiff’s federal
claims and declined to exercise supplemental
jurisdiction over Plaintiff’s state and common law
claims. Use of the phrase “Own your Power” by
Oprah was a non-trademark use because the
magazine was clearly identified as the source of
the goods.
Born to Rock Design, Inc. v. CafePress.com, Inc., 2012
U.S. Dist. LEXIS 129230, (S.D.N.Y. Sept. 7, 2012)
Holding:
The Court denied Defendant’s motion for
summary judgment because some
phrases were made in conjunction with
guitar pictures, and therefore a jury might
find it to be a trademark use.
Louis Vuitton Mallatier S.A. v. Warner Brothers Entertainment Inc.,
868 F. Supp. 2d 172, 2012 U.S. Dist. LEXIS 83646, 2012 WL
2248593 (S.D.N.Y. June 15, 2012)
Holding:
Warner Brothers’ motion to dismiss with prejudice was granted, and Louis
Vuitton was not granted an opportunity to amend its pleadings. The Second
Circuit’s framework for artistic work is set out in Rogers v. Grimaldi, which
provides that artistic works are protected under the First Amendment
protections (and the Lanham Act will not apply), where the use of the
trademark is both (1) artistically relevant to the work and (2) not explicitly
misleading as to the source or content of the work. The court found that
Warner Brothers’ use of the bag met the low threshold for “artistic
relevance” for First Amendment protection particularly because the
character Alan mispronounced the name as “Lewis Vuitton,” which added to
his portrayal as socially inept. The use of the bag was intended to create an
artistic association with the brand rather than as a commercially motivated
use.
Famous Marks
Luv N' Care, Ltd. v. Regent Baby Prods. Corp., 841 F.
Supp. 2d 753 (S.D.N.Y., January 10, 2012)
The Trademark Dilution Revision Act, 15 U.S.C. § 1125 (c) (2), provides:
(A) For purposes of paragraph (1), a mark is famous if it is widely recognized by the
general consuming public of the United States as a designation of source of the
goods or services of the mark's owner. In determining whether a mark possesses the
requisite degree of recognition, the court may-consider all relevant factors, including
the following:
(i) The duration, extent, and geographic reach of advertising and publicity of
the mark, whether advertised or publicized by the owner or third parties.
(ii) The amount, volume, and geographic extent of sales of goods or services
offered under the mark.
(iii) The extent of actual recognition of the mark.
(iv) Whether the mark was registered under the Act of March 3, 1881, or the
Act of February 20, 1905, or on the principal register.
Holding:
The court found that Plaintiff did not plead enough facts
to support the assertion that its marks are famous and
therefore granted Defendant’s motion to dismiss. The
court further found that “at best” plaintiff had pleaded
fame among baby product consumers – or niche fame.
Niche fame is not sufficient for purposes of the TDRA.
Coach Services, Inc. v. Triumph Learning LLC, 668 F.3d
1356 (Fed. Cir. Feb. 21, 2012)
Holding:
The Federal Circuit affirmed the TTAB’s finding of no
likelihood of confusion. The Court also affirmed the
TTAB’s finding that Applicant’s COACH mark was not
likely to dilute Coach’s COACH mark because COACH
did not submit sufficient evidence supporting their
contention that at the time of Applicant’s filing COACH
was a famous mark. The Court vacated and remanded
the case, however, for further proceedings on the issue
of whether Applicant’s COACH mark had acquired
distinctiveness.
Naked Licensing
Eva's Bridal Ltd. v. Halanick Enterprises, Inc., 639 F.3d
788 (May, 7th Cir. 2011)
Holding:
The court affirmed the district court’s
dismissal of the suit based on naked
licensing. Absolute failure to exert any
quality control over a trademark licensee
to ensure consistency in meeting
consumers’ expectations will result in
abandonment of the licensor’s trademark.
Registration Denial
In re Viterra Inc., 671 F.3d 1358
(Fed. Cir. March 6, 2012)
Holding:
The Federal Circuit affirmed the TTAB’s refusal
to register the mark XCEED, in standard
character form, for agricultural seeds. The Court
found that the mark would cause likelihood of
confusion with registrant’s mark for X-SEED in
special form as a word and design mark,
consisting of a stylized letter X and surrounding
dots in red and the term “-Seed” in black and
outliend in grey.
Lanham Act and FDCA
Pom Wonderful LLC v. Coca-Cola Co., 679 F.3d
1170 (9th Cir. May 17, 2012)
Holding:
The 9th Circuit affirmed the district court ruling
granting summary judgment to Coca-Cola
because Plaintiff’s allegations required the Court
to interpret the FDCA. “[T]he FDCA and its
regulations barred pursuit of both the name and
labeling aspects of Pom’s Lanham act claim.”
Declaratory Judgment
Actions
Vina Casa Tamaya S.A. v. Oakville Hills Cellar, 784 F.
Supp. 2d 391 (S.D.N.Y., April 26, 2011)
Holding:
The Court granted Defendant’s motion to dismiss finding
that Plaintiff had limited its objections to the registration
of TAMAYA, and not its use. Accordingly, the TTAB was
the appropriate forum for issues of registration. Under
the totality of the circumstances test, the court found that
Plaintiff had failed to show an “actual controversy”
sufficient to establish federal jurisdiction pursuant to the
Declaratory Judgment Act.
Already, LLC v. Nike, Inc., 184 L. Ed. 2d 553, 2013 U.S. LEXIS 602, 105
U.S.P.Q.2D (BNA) 1169, 23 Fla. L. Weekly Fed.S 549
(U.S. 2013).
Holding:
The Second Circuit dismissed Defendant’s declaratory
judgment counterclaim because there was no actual
case or controversy before it. As for Defendant’s
cancellation claim, the court also dismissed it because a
claim for trademark cancellation is insufficient to support
federal jurisdiction where a covenant not to sue has
resolved the underlying infringement action. The
Supreme Court affirmed the Second Circuit’s decision
finding that Defendant had no standing.
Nat'l Bus. Forms & Printing, Inc. v. Ford Motor
Co. 671 F.3d 526 (5th Cir. Feb. 16, 2012)
Holding:
The Fifth Circuit reviewed the district court’s ruling that
Plaintiff’s offering for sale of decals, stickers, banners,
and license-plate frames to which Ford logos could be
attached constituted trademark infringement, but noted
that on appeal Plaintiff failed to “adequately target” any
aspects of the district court’s grant of summary judgment
that warranted reversal. Accordingly, the Fifth Circuit
found that Plaintiff waived this issue on appeal, and
therefore Plaintiff had infringed Defendant’s trademark
by engaging in such activities.
Keywords
Rosetta Stone v. Google, 676 F.3d 144
(4th Cir. April 9, 2012)
Holding:
The 4th Circuit vacated the summary judgment
ruling as to Rosetta Stone’s direct infringement,
contributory infringement, and dilution claims.
Summary judgment is inappropriate in
trademark infringement lawsuits related to
keyword advertising where there is evidence of
actual confusion and a jury could find intent to
cause confusion.
Aesthetic Functionality
Louboutin v. Yves Saint. Laurent Am. Holding, Inc.,
2012 U.S. App. LEXIS 18663, (2d Cir., Sept. 5, 2012)
Holding:
The District Court found that Louboutin's trademark was
likely not enforceable and declined to enter a preliminary
injunction against YSL's use of the trademark. The
district court further found that a single color can never
serve as a trademark in the fashion industry (because of
the aesthetic functionality doctrine). The Second circuit
reversed that holding finding that a single color can
serve as a trademark in the fashion industry, but that
YSL’s monochromatic shoe did not infringe Louboutin’s
red sole trademark.
Maker's Mark Distillery, Inc. v. Diageo N. Am., 679 F.3d
410 (6th Cir. May 9, 2012)
Holding:
The district court awarded Maker’s Mark an
injunction without damages, finding that Maker’s
Mark had a valid trademark and that the Casa
Cuervo’s red dripping wax seal was infringing.
The Sixth Circuit found that the district court did
not abuse its discretion and its findings were
affirmed. A red dripping wax seal on a bottle is
not barred from protection based on aesthetic
functionality.
Damages
Gucci v. Guess, 2012 U.S. Dist. LEXIS 70833
(S.D.N.Y. May 21, 2012)
Holding:
The court denied the bulk of Guess’ summary judgment
motion but awarded only about $400,000 in damages to
Gucci after a bench trial. Gucci was unable to produce
any evidence on the issue of actual damages in the form
of lost sales or harm to brand value, nor was Gucci able
submit expert reports in the form of a reasonable royalty
calculation.
Coach v. Sharon O’Brien, 2012 U.S. Dist. LEXIS
52565 (S.D.N.Y. April 2012)
The magistrate judge issued a report and recommendation which awarded
plaintiff approximately $13,000 in statutory damages for trademark
infringement, as well as a default judgment and a permanent injunction.
Plaintiffs challenged the report claiming they were entitled to infringement
damages substantially greater than the damages included in the report. The
Court granted Plaintiff’s request and modified the report by increasing the
award to approximately $250,000. The report was based solely on the
infringer’s apparently modest sales, however, it was not clear that the
infringer’s disclosure of sales was complete, the infringement was willful, the
well known marks for luxury items were valuable, and deterrence of the
infringer and others warranted a significant award.