Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC

Joseph Phelps Vineyards, LLC (“Vineyards”) has produced and sold wines bearing the trademark INSIGNIA since 1978. In 2012, Fairmont Holdings, LLC (“Fairmont”) received federal registration for the mark ALEC BRADLEY STAR INSIGNIA for cigars and cigar products. On Vineyards’ petition for cancellation, the Trademark Trial and Appeal Board (“Board” or “TTAB”) denied the petition,1 stating the finding that:

while it appears that Petitioner’s INSIGNIA branded wine has met with success in the marketplace, we are not persuaded on this record that Petitioner’s mark is a famous mark.

TTAB Op. at 8.

The TTAB found that Vineyards’ INSIGNIA mark is not a “famous” mark and gave this factor no weight. The TTAB erred in its legal analysis, in analyzing the “fame” of INSIGNIA wine as an all-or-nothing factor, and discounting it entirely in reaching the conclusion of no likelihood of confusion as to source, contrary to law and precedent. As a result of this error, the Board did not properly apply the totality of the circumstances standard, which requires considering all the relevant factors on a scale appropriate to their merits. We vacate the Board’s decision and remand for redetermination of the merits of the cancellation petition.

Download Joseph Phelps Vineyards LLC v. Fairmont Holdings LLC

Please visit Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

Elliott v. Google, Inc.

The panel affirmed the district court’s summary judgment in favor of Google, Inc., in an action under the Lanham Act, seeking cancellation of the GOOGLE trademark on the ground that it is generic.

The panel held that a claim of genericness or “genericide,” where the public appropriates a trademark and uses it as a generic name for particular types of goods or services irrespective of its source, must be made with regard to a particular type of good or service. The district court thus correctly focused on internet search engines rather than the “act” of searching the internet. The panel also held that verb use of the word “google” to mean “search the internet,” as opposed to adjective use, did not automatically constitute generic use. The panel affirmed the district court’s conclusion that the plaintiffs’ evidence was insufficient to establish that the primary significance of the word “google” to the relevant public was as a generic name for internet search engines, rather than as a mark identifying the Google search engine in particular.

Download Elliott v. Google Inc.

Please visit Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

Grayson O Company v. Agadir International

Grayson O Company (“Grayson O”), a haircare product manufacturer and holder of a registered trademark, brought this trademark and unfair competition action against Agadir International LLC (“Agadir”), a competitor haircare product manufacturer. The district court granted summary judgment to Agadir, finding that Grayson O had failed to show the marks were likely to be confused. For the reasons that follow, we affirm.

Download Grayson O Company v. Agadir International

Please visit Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

Progressive Distribution Services, Inc. v. United Parcel Service, Inc.

Plaintiff, Progressive Distribution Services, Inc. (“Progressive”) brought suit against Defendants, United Parcel Service, Inc., a Delaware corporation, United Parcel Service, Inc., an Ohio corporation, United Parcel Service of America, Inc., a Delaware corporation, and United Parcel Service Market Driver, a Georgia corporation (collectively referred to herein as “UPS”), alleging that UPS violated the Lanham Act, 15 U.S.C. § 1051, et seq., the Michigan Consumer Protection Act, Mich. Comp. Laws § 455.091, et seq., and the common law governing service marks, trademarks and unfair competition. The district court granted summary judgment in favor of UPS. For the reasons set forth below, we AFFIRM the district court’s judgment.

Download Progressive Distribution Services Inc. v. United Parcel Service Inc.

Please visit Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

Martinizing International v. BC Cleaners

Martinizing International, LLC commenced this action against BC Cleaners, LLC and two of its member-managers, Brent Lundell and Timothy Carver, asserting claims of LanhamAct trademark infringement, see 15 U.S.C. § 1125(a), and violation of the Minnesota Deceptive Trade Practices Act (MDTPA), see Minn. Stat. § 325D.44. Defendants failed to appear. The district court granted a default judgment against BC Cleaners, concluding that it willfully infringed Martinizing’s trademarks and engaged in a deceptive trade practice. Martinizing Int’l, LLC v. BC Cleaners, LLC, 2015 WL 8483280 (D. Minn. Dec. 9, 2015). The court denied Martinizing a default judgment against Lundell and Carver, concluding they were not personally liable for trademark infringement or a deceptive trade practice. Id. at *3. Martinizing appeals, arguing the court erred when it denied a default judgment against Lundell and Carver and reduced the award of attorneys’ fees for willful infringement. Defendants have not appeared in this Court. We affirm the grant of a permanent injunction enjoining BC Cleaners from using Martinizing’s trademarks. We conclude Martinizing failed to prove willful infringement by BC Cleaners and therefore reverse the award of damages, an accounting for profits, and attorneys’ fees. We affirm the denial of a default judgment against defendants Lundell and Carver.

Download Martinizing International v. BC Cleaners

Please visit Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

Covertech Fabricating Inc v. TVM Building Products Inc

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.

Download Covertech Fabricating Inc v. TVM Building Products Inc

Please visit Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

Streamline Production Systems, Inc. v. Streamline Manufacturing, Inc.

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.

Download Streamline Production Systems Inc. v. Streamline Manufacturing Inc.

Please visit Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

Vetter v. McAtee

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.

Download Vetter v. McAtee

Please visit Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

VeriSign v. XYZ.com

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.

Download VeriSign v. XYZ_com

Please visit Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

Arlington Specialties, Inc. v. Urban Aid, Inc.

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.

Download Arlington Specialties, Inc. v. Urban Aid, Inc.

Please visit Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.