Intellectual Property and Tech Law Reports

Lahoti v. VeriCheck, Inc.

David Lahoti appeals the district court’s bench trial judgment that his use of the “VeriCheck” Georgia state service mark owned by Vericheck, Inc. violated the Anti- Cybersquatting Consumer Protection Act (“ACPA”), 15 U.S.C. § 1125(d), the Lanham Act, 15 U.S.C. §§ 1051 et seq., the Washington Consumer Protection Act (“WCPA”), Wash. Rev. Code § 19.86, and various Washington common law doctrines. Lahoti, who has previously been found liable for cybersquatting activities, obtained the domain name “vericheck. com,” but did not use the website to offer any goods or services. We conclude that the district court’s factual decision that the “VeriCheck” mark was a distinctive, legally protectable mark under the ACPA and federal trademark law was based in part on reasoning contrary to federal trademark law and based in part on reasoning that could support the district court’s conclusion. Because we believe the district court should decide the issue of distinctiveness in light of the principles we explain, we vacate the district court’s opinion and remand for further proceedings not inconsistent with this opinion.

Download Lahoti v. VeriCheck, Inc., No. 08-35001

Download Lahoti v. VeriCheck, Inc., No. 08-35001

Southern Grouts & Mortars v. 3M Company

Southern Grouts & Mortars, Inc. sells swimming pool finishes under the trademark DIAMOND BRITE and would like to register and use the domain name, diamondbrite.com, to advertise and sell its products. The problem for Southern Grouts is that its competitor in the swimming pool finishing industry, 3M Company, owns the registration. When 3M obtained the registration for diamondbrite.com, it also had trademark rights in the DIAMOND BRITE mark but not for use with pool finishing products. Instead, the mark was registered for use in connection with “electronically controlled display panels and signs.” Those trademark rights have lapsed, but 3M has continued to re-register the domain name. 3M displays no content on the website and has no intention of doing so. Southern Grouts sued 3M in district court, alleging that 3M’s continued registration of the domain name violated the Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d), and constituted unfair competition under the Lanham Act, 15 U.S.C. § 1125(a). The district court granted summary judgment in favor of 3M. Southern Grouts appeals that judgment as well as the district court’s denial of its motion to amend its second amended complaint.

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Audi AG v. D'Amato

BOYCE F. MARTIN, JR., Circuit Judge. Defendant Bob D’Amato, who is unaffiliated with Audi, used the domain name www.audisport.com to sell goods and merchandise displaying Audi’s name and trademarks. Audi claims that D’Amato’s website infringes and dilutes its world famous trademarks “AUDI,” the “AUDI FOUR RING LOGO,” and “QUATTRO,” as well as the distinctive trade dress of Audi automobiles. Audi also claims that D’Amato violated the AntiCybersquatting Consumer Protection Act. The district court granted summary judgment and injunctive relief to Audi on all claims. The district court also granted Audi attorneys’ fees, but refused to award Audi statutory damages under 15 U.S.C. § 1117(a). D’Amato appeals the grant of summary judgment and injunctive relief and award of attorneys’ fees to Audi. He also appeals the district court’s denial of his Rule 56(f) motion for additional discovery. For the reasons below, we AFFIRM the district court.

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