Justia Antitrust & Trade Regulation 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
Underwood v. Bank of America Corporation
Plaintiffs Erik Underwood and My24HourNews.Com, Inc. owned two putative service marks: “E.R.I.C.A.” and “my24erica.com.” Underwood claimed to have used these marks in his business, which offered internet-based search engine and personal assistant services. Bank of America Corporation (“BofA”) owned a registered federal trademark for a mobile banking application known as “ERICA.” Underwood sued BofA for infringing his marks. BofA counterclaimed to cancel Underwood’s Georgia registration of his E.R.I.C.A. mark. The district court granted BofA’s motions for summary judgment on its cancellation counterclaim and on Underwood’s infringement claims. After review, the Tenth Circuit affirmed in part and reversed in part. On BofA’s cancellation counterclaim, the Court affirmed summary judgment against Underwood. On Underwood’s infringement claims, the Court: (1) vacated summary judgment for BofA on the E.R.I.C.A. mark and remanded for the district court to apply the correct actual use standard; and (2) affirmed summary judgment for BofA on the my24erica.com mark. View "Underwood v. Bank of America Corporation" on Justia Law
Wooster Floral & Gifts, LLC v. Green Thumb Floral & Garden Center, Inc.
The Supreme Court affirmed the decision of the court of appeals affirming the trial court's judgment concluding that Green Thumb did not violate Ohio's Deceptive Trade Practices Act, holding that Wooster Floral & Gifts, LLC failed to demonstrate that Green Thumb Floral & Garden Center, Inc.'s use of the domain name www.woosterfloral.com caused a likelihood of confusion as to the source of goods sold on the website.Green Thumb owned the domain name www.woosterfloral.com. Wooster Floral & Gifts, a competing flower shop, brought this lawsuit under the Deceptive Trade Practices Act seeking to block Green Thumb from using the address. The trial court ruled in favor of Green Thumb, finding that Green Thumb's use of the domain name was unlikely to cause confusion as to the source of goods or services because the home page was clearly identified as "Green Thumb Floral" and there was no use of the trade name "Wooster Floral" within the website. The court of appeals affirmed. The Supreme Court affirmed, holding that, under both federal precedent and the plain terms of the Ohio statute, a consumer landing on Green Thumb's website was unlikely to be confused about the entity that would be fulfilling the consumer's order. View "Wooster Floral & Gifts, LLC v. Green Thumb Floral & Garden Center, Inc." on Justia Law
Mrs. Fields Famous Brands v. MFGPC
Plaintiffs and counterclaim-defendants Mrs. Fields Famous Brands, LLC (Famous Brands) and Mrs. Fields Franchising, LLC (Fields Franchising) appealed a district court order granting a preliminary injunction in favor of defendant and counterclaim-plaintiff MFGPC Inc. (MFGPC). The sole member of Famous Brands is Mrs. Fields Original Cookies, Inc. (MFOC). MFOC entered into a Trademark License Agreement (License Agreement) with LHF, Inc. (LHF), an affiliate of MFGPC. In 2003, LHF assigned all rights under the License Agreement to MFGPC, and MFGPC agreed to be bound by and perform in accordance with the License Agreement. The License Agreement granted MFGPC a license to develop, manufacture, package, distribute and sell prepackaged popcorn products bearing the “Mrs. Fields” trademark through all areas of general retail distribution. A dispute arose after Fields Franchising allowed MFGPC to be late with a royalty payment because of a fire that destroyed some of MFGPC’s operations. The franchisor sought to terminate the licensing agreement and collect the royalties owed. Fields Franchising filed suit against MFGPC. In August 2018, the district court entered partial summary judgment in favor of MFGPC on its counterclaim for breach of a trademark license agreement that afforded MFGPC the exclusive use of the “Mrs. Fields” trademark on popcorn products. The district court’s summary judgment order left only the question of remedy to be decided at trial. MFGPC then moved for a preliminary injunction, arguing that there was a substantial likelihood that it would prevail at trial on the remedy of specific performance. After conducting a hearing, the district court granted MFGPC’s motion and ordered Fields Franchising to terminate any licenses it had entered into with other companies for the use of the Mrs. Fields trademark on popcorn products, and to instead comply with the terms of the licensing agreement it had previously entered into with MFGPC. Famous Brands and Fields Franchising argued in this appeal that the district court erred in a number of respects in granting MFGPC’s motion for preliminary injunction. The Tenth Circuit agreed with appellants, and consequently reversed the district court’s grant of a preliminary injunction in favor of MFGPC. View "Mrs. Fields Famous Brands v. MFGPC" on Justia Law
C5 Medical Werks v. Ceramtec GMBH
Plaintiff-Appellee C5 Medical Werks sued Defendant-Appellant CeramTec, a German company that produces ceramics and ceramic components for medical prostheses, in Colorado for cancellation of CeramTec’s trademarks and a declaratory judgment of non-infringement. CeramTec moved to dismiss for lack of personal jurisdiction. The district court denied CeramTec’s motion and, after a bench trial, found in favor of C5. CeramTec appealed both the district court’s finding of personal jurisdiction and its determination on the merits. After review, the Tenth Circuit concluded the district court did not have personal jurisdiction over CeramTec: CeramTec’s attendance at various tradeshows was fortuitous and, as such, was insufficient to show purposeful availment of the forum state, Colorado. Further, to the extent CeramTec engaged in enforcement activity, it did so outside of Colorado. Accordingly, the Court reversed the district court’s denial of CeramTec’s motion to dismiss for lack of personal jurisdiction and remand with instructions that the case be dismissed. View "C5 Medical Werks v. Ceramtec GMBH" on Justia Law
Affliction Holdings v. Utah Vap Or Smoke
Affliction Holdings, LLC (“Affliction”) sued Utah Vap or Smoke, LLC (“Utah Vap”) alleging trademark infringement. The district court granted Utah Vap’s motion for summary judgment, holding there was no likelihood of confusion between the parties’ marks. The Tenth Circuit concluded after review of the marks that Utah Vap did not meet its burden of showing that "no reasonable juror could find [a] likelihood of confusion." Because a genuine issue of material fact exists as to the likelihood of initial interest and post-sale confusion between the marks, the Court reversed the district court’s grant of summary judgment. View "Affliction Holdings v. Utah Vap Or Smoke" on Justia Law
Scout, LLC v. Truck Insurance
This case stemmed from Truck Insurance’s refusal to defend its insured, Scout, LLC, in a trademark infringement action brought over Scout’s use of the trademark ROGUE in the advertisement of its restaurant, Gone Rogue Pub. Scout claimed its use of ROGUE constituted an advertising injury that was covered by the insurance it purchased from Truck Insurance. Truck Insurance did not dispute that ordinarily Scout’s advertising injury would be covered and it would accordingly have a duty to defend, but coverage was properly declined in this instance based on a prior publication exclusion found in the policy. The district court granted summary judgment to Truck Insurance after determining that a Facebook post of Scout’s Gone Rogue Pub logo before insurance coverage began triggered the prior publication exclusion, thereby relieving Truck Insurance of the duty to defend Scout. Scout appealed. Finding no reversible error, the Idaho Supreme Court affirmed the district court. View "Scout, LLC v. Truck Insurance" on Justia Law
Forney Industries v. Daco of Missouri
Plaintiff Forney Industries, Inc.'s product packaging has, since at least 1989, used some combination of red, yellow, black, and white coloration. The issue in this case was whether Forney's use of colors in its metalworking product line was a protected mark under the Lanham Act. Forney alleged that Defendant Daco of Missouri, Inc., which did business as KDAR Co. (KDAR), infringed on its protected mark by packaging KDAR’s “Hot Max” products with similar colors and a flame motif. The district court granted summary judgment to KDAR and the Tenth Circuit affirmed. Forney’s use of color, which was not associated with any particular shape, pattern, or design, was not adequately defined to be inherently distinctive, and Forney failed to produce sufficient evidence that its use of color in its line of products had acquired secondary meaning. View "Forney Industries v. Daco of Missouri" on Justia Law
Apotex Inc. v. Acorda Therapeutics, Inc.
Apotex filed suit alleging that Acorda filed a sham citizen petition with the FDA to hinder approval of Apotex's competing formulation of a drug for treating spasticity, in violation of Section 2 of the Sherman Act, 15 U.S.C. 2, and that Acorda violated the Lanham Act's, 15 U.S.C. 1125(a)(1), proscription on false advertising. The district court ruled that the simultaneous approval by the FDA of Apotex’s drug application and its denial of Acorda’s citizen petition was by itself insufficient to support a Sherman Act claim. The district court then granted summary judgment and dismissed all of Apotex’s false advertising claims on the grounds that (with the exception of one graph) no representation was literally false or likely to mislead consumers. In regard to the graph, Apotex failed to show that the false depiction would meaningfully impact consumers’ purchasing decisions. The court concluded that, although precedent supports an inference that a citizen petition is an anticompetitive weapon if it attacks a rival drug application and is denied the same day that the application is approved, that inference has been undercut by recent FDA guidance. As to false advertising, the court agreed with the district court that no reasonable jury could have found that Acorda made literally false or misleading representations in its advertisements, with the exception of a single representation that Apotex has failed to show affected decisions to purchase. Accordingly, the court affirmed the judgment. View "Apotex Inc. v. Acorda Therapeutics, Inc." on Justia Law