Intellectual Property and Tech Law Reports

Ty Inc. v. Softbelly's, Inc.

Ty Inc., the manufacturer of “Beanie Babies,” years ago brought this suit for trademark infringement under the Lanham Act against Softbelly’s, Inc., and some other defendants that need not be discussed separately. Softbelly’s manufactures a product that looks and feels very much like “Beanie Babies,” which it calls “Screenie Beanies.” They differ from Ty’s product mainly in having chamois bellies and being sold to the public through computer stores for wiping computer screens: hence the chamois.

. . .

To summarize, the grant of the injunction against Softbelly’s is affirmed, but the case is remanded for the entry of a damages judgment of $713,000 against Softbelly’s minus the attorney’s fees incurred by Softbelly’s in the sanction litigation. Whether the damages judgment should be augmented by prejudgment interest we leave to the district judge to decide in the first instance.

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Vail Assocs., Inc. v. Vend-Tel-Co., Ltd.

This service mark infringement case is about the use of a purely descriptive term, “Ski,” in conjunction with a geographically descriptive term, “Vail,” or more precisely, “Ski Vail.” Plaintiff Vail Associates (VA), owner of the Vail Ski Resort, has a registered incontestable service mark in the latter, but not the former term.  VA’s service mark registration describes “Vail” as encompassing the gamut of commercial recreational activities and accompanying amenities available in and around the Town of Vail, Colorado, save maybe golf. According to the registration, VA’s mark encompasses “downhill skiing facilities, ice skating facilities, crosscountry ski trails and expeditions, hiking and back-packing trails, and horseback riding, . . . resort hotel and restaurant services, and retail store services in the field of recreational equipment.” United States Patent and Trademark Office (PTO), Reg. No. 1,521,276 (Jan. 17, 1989). Defendant Vend-Tel-Co (VTC) meanwhile has a registered service mark on the vanity or alphanumeric telephone number “1-800-SKIVAIL,” which offers “marketing services related to the ski industry, namely providing an automated phone switching system to offer services available in or near Vail, Colorado and nearby resort locations.” PTO, Reg. No. 2,458,894 (June 12, 2001).

VA’s essential claim is that VTC’s use of the geographically descriptive term “Vail” in combination with the descriptive term “Ski” infringes its “Vail” mark, making VTC’s use of 1-800-SKI-VAIL violative of the Lanham Act. Specifically, VA claims direct confusion, that is to say VTC’s use of the vanity number is likely to cause consumers to believe that VA or its ski resort is the source of VTC’s phone service. See Australian Gold, Inc. v. Hatfield, 436 F.3d 1228, 1238 (10th Cir. 2006) (distinguishing direct from indirect confusion). Consumers, so goes VA’s theory of the case, are more likely to dial the number because they perceive it as associated with VA’s services. This, in turn, allows VTC to divert business from VA by referring consumers elsewhere.

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American Express Co. v. Goetz

Defendants Stephen Goetz and Gardner Design Group, LLC appeal from a judgment entered February 24, 2006 in the United States District Court for the Southern District of New York (Kaplan, J.) granting plaintiff American Express's motion for summary judgment and dismissing Goetz's counterclaims. Goetz had alleged that American Express infringed upon his trademark by using the slogan MY LIFE. MY CARD.

Affirmed.

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Aronowitz v. Health-Chem Corp.

Plaintiffs-counter defendants-appellants, Jack Aronowitz, Health-Chem Diagnostics LLC, and Leon Services LLC (collectively “Aronowitz”), appeal an “Omnibus Order” by the district court for the Southern District of Florida addressing a number of post-trial motions. The order (1) set aside the jury verdict that had been rendered in Aronowitz’s favor as to his first breach of contract claim against defendant-counter claimant-appellee Health-Chem Corporation (“Health- Chem”); (2) reduced the damages awarded with respect to the second breach of contract claim against Health-Chem from $2.6 million to nominal damages of $1; (3) upheld the jury’s verdict against Aronowitz on Health-Chem’s counterclaim for trademark infringement; and (4) conditionally granted a new trial to Health-Chem in the event the court’s primary rulings were reversed. We AFFIRM in part, REVERSE in part, and REMAND for a new trial as to damages for breach of the 2003 contract.

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Applied Info. Sciences Corp. v. eBay

This appeal requires us to clarify what an owner of a federally registered trademark needs to establish in order to mount an infringement action against a user of the trademarked name on goods or services that are not the same as those specified in the owner’s trademark registration. Applied Information Sciences Corp. (AIS) owns the trademark “SmartSearch” for certain computer related search functions, and claims that eBay, Inc. (eBay) uses the name “Smart Search” for its Internet auction website, which AIS contends will be confused with its “SmartSearch” product. The district court rejected the claim, granting summary judgment to eBay, and AIS now appeals. eBay cross-appeals the district court’s order denying attorney’s fees to eBay as the prevailing party. We affirm both the district court’s grant of summary judgment and the denial of attorney’s fees.

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Rosenruist-Gestao E Servicos LDA v. Virgin Enters. Ltd.

Rosenruist-Gestao E Servicos LDA ("Rosenruist") is a Portuguese company that seeks to obtain a United States trademark registration and enjoy the benefits that accompany ownership of a registered mark under the Lanham Act. Virgin Enterprises Ltd. ("VEL"), a British conglomerate that owns numerous United States registrations, opposes the registration of Rosenruist’s mark and commenced an administrative proceeding before the Trademark Trial and Appeal Board ("TTAB") against Rosenruist to prevent the registration. When Rosenruist refused to appear voluntarily for a Rule 30(b)(6) deposition under the procedural rules promulgated by the Patent and Trademark Office ("PTO"), see 37 C.F.R. § 2.123 (2006), the district court issued a subpoena under 35 U.S.C.A. § 24 directing Rosenruist to produce a designee to testify on behalf of the corporation at a deposition in Virginia. The district court refused Rosenruist’s request to quash the subpoena and then subsequently imposed sanctions against Rosenruist when it failed to attend the deposition.

Seeking to ensure Rosenruist’s cooperation, VEL filed a motion to compel Rosenruist, on pain of contempt sanctions, to designate its Rule 30(b)(6) representative and appear for the corporate deposition as directed by the subpoena. Notwithstanding its earlier ruling that Rosenruist had been properly served with a valid subpoena for a Rule 30(b)(6) deposition, the court determined that it could not require Rosenruist to produce a corporate designee for the deposition unless that designee personally resided within the district of the issuing court. Because there are no individuals residing within the Eastern District of Virginia who Rosenruist could designate as its witness under Rule 30(b)(6), the court denied VEL’s request to compel an appearance.

VEL appeals this ruling. For the reasons that follow, we reverse.

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McNeil Nutritionals, Inc. v. Heartland Sweeteners

This appeal requires us to decide when the trade dress on the packaging of store-brand products is so similar to that of directly competing national-brand products as to create a likelihood of confusion among consumers. The plaintiffappellant McNeil Nutritionals, LLC (McNeil) sells and markets Splenda, a highly successful national brand of sucralose, an artificial sweetener. The defendants-appellees Heartland Sweeteners LLC and Heartland Packaging Corp. (collectively, Heartland) package and distribute sucralose as store brands to a number of retail grocery chains. McNeil brought a trade dress infringement action against Heartland, alleging that Heartland’s product packaging is confusingly similar to Splenda’s. McNeil
also filed a motion for preliminary injunction to enjoin Heartland from advertising, selling, or distributing the allegedly infringing products. The District Court denied the motion, and this appeal followed. For the reasons that follow, we will affirm the denial of the motion in part and reverse in part and remand to the District Court.

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Welding Servs., Inc. v. Forman

Welding Services, Inc. appeals from the district court's entry of summary judgment against it on its claim that Welding Technologies, Inc., its General Manager, Terry Forman, and its Vice President, Robert Henson, infringed Welding Services' service marks in violation of the Lanham Act, 15 U.S.C. § 1125(a). Welding Services contends that there are triable issues of fact as to whether the companies' service marks are confusingly similar, whether there has been actual confusion about which company was designated by Welding Technologies' marks, and whether Welding Technologies intended to infringe on Welding Services' marks. We affirm the judgment of the district court.

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K & N Eng'g, Inc. v. Bulat

In this case we are asked to decide whether an award of statutory damages for trademark counterfeiting under 15 U.S.C. § 1117(c) precludes an award of attorney’s fees under 15 U.S.C. § 1117(b).

. . .

Because an election to receive statutory damages under § 1117(c) precludes an award of attorney’s fees under § 1117(b), we hold that the district court abused its discretion in awarding K&N $100,000 in attorney’s fees. Because we reach this conclusion, we need not address appellants’ remaining arguments that the fee award was improper.

REVERSED.

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Top Tobacco L.P. v. N. Atl. Operating Co., Inc.

The portion of §1125 from which we have quoted was amended in October 2006 to use “the general public” as the benchmark. This change eliminated any possibility of “niche fame,” which some courts had recognized before the amendment. See Syndicate Sales, Inc. v. Hampshire Paper Corp., 192 F.3d 633 (7th Cir. 1999). Top Tobacco insists that even if the amendment (and North Atlantic’s new packaging) preclude equitable relief, it is still entitled to damages under the old version of §1125. But what we have said is enough to show that the word “top” is not famously distinctive “as a designator of source” in any sensibly specified niche of tobacco products.

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