Too often the silence of contracting parties must be filled by the voice of the courts. Such is the case here, where we are called upon to resolve a trademark dispute in which no written contract designates ownership, and, in the process, to clarify the paradigm through which common law ownership of an unregistered trademark is determined when the initial sale of goods bearing the mark is between a manufacturer and its exclusive distributor. The District Court in this case awarded ownership to the manufacturer, but did so on the basis of the first use test, and found the distributor liable for infringement and fraud before rejecting its defense of acquiescence and awarding damages under the Lanham Act. Because the District Court failed to recognize and apply the rebuttable presumption of manufacturer ownership that we conclude pertains where priority of ownership is not otherwise established, and because the District Court incorrectly relied on gross sales unadjusted to reflect sales of infringing products to calculate damages, we will affirm on alternative grounds as to ownership, will affirm as to fraud and acquiescence, and will vacate and remand as to damages.
Streamline Production Systems, Inc. filed this trademark infringement suit against Streamline Manufacturing, Inc. seeking damages under the Lanham Act and Texas common law. After stipulating to an injunction, the parties proceeded to a jury trial on the issues of infringement and damages. The jury returned a verdict finding that Streamline Manufacturing, Inc. infringed on Streamline Production Systems, Inc.’s valid trademark in its name and awarded damages for lost royalties, unjust enrichment, and exemplary damages, each in the sum of $230,000, for a total award of $690,000. The district court denied Streamline Manufacturing Inc.’s motion for judgment as a matter of law, as well as its renewed motion for judgment as a matter of law, or in the alternative, for a new trial. Finding insufficient evidence to support the damages awards, we AFFIRM the jury’s finding of trademark infringement but VACATE the damages awards.
A jury trial on several claims and counter-claims, including trademark infringement and breach of partnership agreement, resulted in judgments adverse to both parties. They have now appealed and cross-appealed citing several errors that they believe the trial court committed. We affirm.
Plaintiff Verisign, Inc. is in the business of selling internet domain names and operates the popular .com and .net top-level domains. In 2014, a competitor arrived on the scene: Defendant XYZ.COM, LLC (“XYZ”) launched “.xyz,” a new top-level domain, and began registering domain names ending in .xyz. As part of its marketing push, XYZ, along with its CEO Daniel Negari, made a series of statements touting the popularity of the .xyz domain and warning of a scarcity of desirable .com domain names. Verisign sued XYZ and Negari, alleging that those statements violated the Lanham Act’s false advertising provisions.
The district court granted summary judgment to XYZ, holding that Verisign could not establish the elements of a Lanham Act claim. We agree. As to XYZ’s self-promoting statements, most of which concern its registration numbers, we hold that Verisign failed to produce the required evidence that it suffered an actual injury as a direct result of XYZ’s conduct. Nor can Verisign establish, we hold, that XYZ’s statements about the availability of suitable .com domain names were false or misleading statements of fact, as required for Lanham Act liability. Accordingly, we affirm the district court’s grant of summary judgment.
This Lanham Act case turns on whether the shape and design of a small bag, modeled after a men’s Dopp Kit and used in personal care kits, are functional and therefore not protected as trade dress. Plaintiff sells personal care kits in such a bag. When another personal care kit seller copied plaintiff’s bag, plaintiff sued, claiming the bag was protected trade dress. The district court granted summary judgment in defendant’s favor, finding that the bag’s design and shape were functional. We agree, so we affirm the district court’s decision.
CLAY, Circuit Judge. Defendant Creative Harbor, LLC (“Creative Harbor”) appeals the judgment entered by the district court on February 1, 2016, voiding Creative Harbor’s trademark applications numbered 86198230 and 86198309, respectively. Creative Harbor challenges the district court’s determinations that: (1) Creative Harbor lacked a bona fide intention to use its requested mark in commerce with respect to some of the goods and services identified in its trademark applications, in violation of § 1(b) of the Lanham Act, 15 U.S.C. § 1051(b); and (2) if Creative Harbor lacked such intent with respect to any of the goods and services, the applications must be voided in their entirety. We have jurisdiction over this appeal pursuant to 28 U.S.C. § 1291. For the reasons set forth below, we AFFIRM IN PART and VACATE IN PART the district court’s judgment. We REMAND for further proceedings consistent with this opinion.
The panel affirmed the district court’s dismissal of claims for trademark infringement and unfair competition brought under the Lanham Act by a producer of karaoke music tracks. The plaintiff alleged that the defendants performed karaoke shows using unauthorized “media-shifted” files that had been copied onto computer hard drives from the compact discs released by the plaintiff. Agreeing with the Seventh Circuit, the panel held that the plaintiff did not state a claim under the Lanham Act because there was no likelihood of consumer confusion about the origin of a good properly cognizable in a claim of trademark infringement. In a concurrently filed memorandum disposition, the panel reversed the district court’s summary judgment on a claim for breach of a settlement agreement. Judge Hurwitz concurred in part and dissented in part from the memorandum disposition.
Lee Jason Kibler, a disc jockey, brought federal trademark infringement, related state law, and federal trademark dilution claims against Robert Bryson Hall, II, a rapper, and professional entities supporting Hall’s work. The district court granted summary judgment to defendants on all claims. Kibler has appealed that judgment, requiring us to answer two questions. First, has Kibler provided evidence sufficient to find that relevant consumers are likely to confuse the sources of his and Hall’s products? Second, has Kibler provided evidence sufficient to find that Hall has diluted Kibler’s mark? We conclude no and thus affirm the grant of summary judgment.
This appeal is the latest chapter in the long-running legal disputes between Becton Dickinson & Co. (“BD”) and Retractable Technologies, Inc. (“RTI”), competitors in the market for syringes of various types and IV catheters. It arises from a $340 million jury verdict (after trebling) entered against BD for its alleged attempt to monopolize the United States safety syringe market in violation of § 2 of the Sherman Antitrust Act. The jury also found BD liable for false advertising under § 43(a) of the Lanham Act. Relying on principles of equity, the district court held that the treble damage award subsumed BD’s liability to disgorge profits from the false advertising, but the court enjoined BD to stop using those ads and notify customers, employees, distributors, and others about the false claims.
We affirm in part, reverse in part, and vacate and remand in part. The § 2 claim for attempt to monopolize is infirm as a matter of law. First, patent infringement, which operates to increase competition, is not anticompetitive conduct. Second, false advertising is a slim, and here nonexistent, reed for a § 2 claim. Third, the allegation that BD “tainted” the market for retractable syringes while surreptitiously plotting to offer its own retractable a few years later is unsupported and incoherent. We affirm the Lanham Act judgment of liability for false advertising but must reverse and remand for a redetermination of disgorgement damages, if any. Finally, in light of the foregoing, we must vacate and remand the injunctive relief for reconsideration.
Christian Faith Fellowship Church appeals a final judgment of the Trademark Trial and Appeal Board that, in response to a petition filed by adidas AG, cancelled its trademarks for failing to use the marks in commerce before registering them. The Board held that the Church’s documented sale of two marked hats to an outof-state resident were de minimis and therefore did not constitute use of the marks in commerce under the Lanham Act. Because the Lanham Act defines commerce as all activity regulable by Congress, and because the Church’s sale to an out-of-state resident fell within Congress’s power to regulate under the Commerce Clause, we reverse the Board’s cancellation of the Church’s marks on this basis and remand for further proceedings.