Intellectual Property and Tech Law Reports

Caliber Automotive Liquidators, Inc. v. Premier Chrysler

Caliber Automotive Liquidators, Inc. provides advertising promotions to car dealerships and owns service marks on “Slash-It! Sales Event” and “Slasher Sale.” Premier Automotive Group uses its own marketing – an infomercial called the “Slasher Show” – to sell cars. Caliber sued Premier in the Northern District of Georgia under both federal and state law, claiming infringement. The district court granted Premier summary judgment, holding that no reasonable jury could find a likelihood of confusion between Caliber’s marks and Premier’s advertising. Caliber appealed. Persuaded that the district court erred in its measure of confusion of Caliber’s customers by Premier’s advertising and in the weight it gave an incontestible mark, we reverse and remand.

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Au-Tomotive Gold Inc. v. Volkswagen of Am., Inc.

We are asked to decide whether the sale by Au-Tomotive Gold (“Auto Gold”) of marquee license plates bearing Volkswagen badges purchased from Volkswagen constitutes trademark infringement, or whether the sale of the plates is protected by the “first sale” doctrine. In Au-Tomotive Gold, Inc. v. Volkswagen of America, Inc. (“Auto Gold I”), 457 F.3d 1062 (9th Cir. 2006), we concluded that Auto Gold’s production and sale of automobile accessories bearing Volkswagen’s trademarks created a sufficient likelihood of confusion to constitute trademark infringement. Id. at 1078. We remanded to the district court to address Auto Gold’s “first sale” and other defenses. Id. On remand, the district court granted summary judgment and a permanent injunction to Volkswagen.

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Zobmondo Ent'mt., LLC v. Falls Media, LLC

Appellants Falls Media, LLC, Justin Heimberg, and David Gomberg (collectively “Falls Media”) appeal the district court’s summary judgment for Appellee Zobmondo Entertainment, LLC (“Zobmondo”) rejecting Falls Media’s action for trademark infringement, unfair competition, and related claims arising from Zobmondo’s use of Falls Media’s federally registered trademark, “WOULD YOU RATHER . . . ?”. The district court held that “WOULD YOU RATHER . . . ?” is not entitled to federal trademark protection because the mark is “merely descriptive” and lacks secondary meaning, and the district court ordered the mark cancelled from the federal trademark registry. We have jurisdiction under 28 U.S.C. § 1291. We conclude that there is a genuine issue of material fact whether “WOULD YOU RATHER . . . ?” is merely descriptive. Hence we reverse the summary judgment and remand for further proceedings consistent with this opinion.

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Tiffany (NJ) Inc. v. eBay Inc.

eBay, Inc. ("eBay"), through its eponymous online marketplace, has revolutionized the online sale of goods,especially used goods. It has facilitated the buying and selling by hundreds of millions of people and entities, to their benefit and eBay's profit. But that marketplace is sometimes employed by users as a means to perpetrate fraud by selling counterfeit goods.

Plaintiffs Tiffany (NJ) Inc. and Tiffany and Company (together, "Tiffany") have created and cultivated a brand of jewelry bespeaking high-end quality and style. Based on Tiffany's concern that some use eBay's website to sell counterfeit Tiffany merchandise, Tiffany has instituted this action against eBay, asserting various causes of action -- sounding in trademark infringement, trademark dilution and false advertising -- arising from eBay's advertising and listing practices. For the reasons set forth below, we affirm the district court's judgment with respect to Tiffany's claims of trademark infringement and dilution but remand for further proceedings with respect to Tiffany's false advertising claim.

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Pinnacle Pizza Co. v. Little Caesar's Enters., Inc.

Pinnacle Pizza Company, Inc. ("Pinnacle"), a franchisee, brought suit against Little Caesar Enterprises, Inc. (LCE), the franchisor, alleging, inter alia, breach of the corporation's franchise agreement and violation of the South Dakota Franchise Act (SDFA). Pinnacle also sought to cancel LCE's federal trademark for the phrase "Hot- N-Ready." LCE counterclaimed, alleging breach of the franchise agreement on thepart of Pinnacle. The district court granted LCE summary judgment on all claims. On appeal, Pinnacle argues that the district court erred in granting LCE's motions for summary judgment. Specifically, Pinnacle argues that the district court erred in finding that (1) LCE did not breach the franchise agreement; (2) LCE did not violate the SDFA; (3) LCE did not obtain its federal trademark through fraudulent means; and (4) Pinnacle did breach the franchise agreement by challenging LCE's trademark application. We affirm.

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Great Clips, Inc. v. Hair Cuttery of Greater Boston, LLC

This appeal is about a trademark dispute between companies in the hair care industry. The plaintiff is Great Clips, Inc. (a Minnesota corporation), which owns and operates hair salons throughout the United States and Canada; the two defendants--Great Cuts, Inc. (a Massachusetts corporation) and Hair Cuttery of Greater Boston, L.L.C. (a limited liability company organized under the laws of Virginia)--provide hair cutting and styling services in Massachusetts and elsewhere. The background events are essentially undisputed.

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Starbucks Corp. v. Wolfe's Borough Coffee, Inc.

Plaintiffs-appellants, Starbucks Corporation and Starbucks U.S. Brands, LLC (together, “Starbucks”), appeal from a judgment entered on June 5, 2008, in the United States District Court for the Southern District of New York (Swain, J.), following a bench trial, in favor of defendant-appellee, Wolfe’s Borough Coffee, Inc., d/b/a Black Bear Micro Roastery (“Black Bear”). The District Court found that Starbucks failed to demonstrate entitlement to relief on its (1) federal trademark infringement, dilution, and unfair competition claims brought pursuant to the Lanham Act, 15 U.S.C. §§ 1114(1), 1125, 1127; (2) state trademark dilution claims brought pursuant to New York Gen. Bus. Law § 360-l; and (3) unfair competition claim under New York common law. We vacate, in part, the District Court’s decision and remand for further proceedings on the issue of whether Starbucks demonstrated a likelihood of dilution by “blurring” under federal trademark law. In all other respects, the judgment of the learned District Court is affirmed.

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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.

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In Re 1800Matress.com IP, L.L.C.

1800Mattress.com IP, LLC (“1800Mattress.com”), substituted as appellant for Dial-A-Mattress Operating Corp. (“Dial-A-Mattress”), appeals from the final decision of the United States Patent and Trademark Office Trademark Trial and Appeal Board (the “Board”) refusing registration of the mark “MATTRESS.COM.” In re Dial-A-Mattress Operating Corp., Serial No. 78976682, 2008 TTAB Lexis 437 (T.T.A.B. Nov. 13, 2008). Because the Board’s decision finding “MATTRESS.COM” generic in relation to the recited services was supported by substantial evidence, we affirm.

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Schering-Plough Healthcare Prod.

Schering cannot just intone “literal falsity” and by doing so prove a violation of the Lanham Act. But we think the district court was right nevertheless not to dismiss the suit with prejudice; findings by the FDA in the misbranding proceeding may cast the issue of consumer confusion in a different light. AFFIRMED.

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