Omaha Steaks International, Inc. v. Greater Omaha Packing Co.

Omaha Steaks International, Inc. (“Omaha Steaks”) appeals a decision of the Trademark Trial and Appeal Board (“Board”) dismissing its opposition (No. 91213527) to Greater Omaha Packing Co., Inc.’s (“GOP”) application to register the mark “GREATER OMAHA PROVIDING THE HIGHEST QUALITY BEEF” (“Opposed Mark”) for meat, including boxed beef primal cuts. The Board concluded that there is no likelihood of confusion between the Opposed Mark and Omaha Steaks’ previously registered trademarks. We conclude that the Board made certain errors while analyzing the fame of the registered mark, third-party usage, and similarity of the marks. Accordingly, we vacate and remand.

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Sturgis Motorcycle Rally, Inc. v. Rushmore Photo & Gifts, Inc.

Since 1938, a motorcycle rally has occurred almost every August in and around the City of Sturgis, South Dakota. It was the brainchild of Clarence "Pappy" Hoel, who in the late 1930s owned the local Indian motorcycle dealership and founded a local motorcycle club, the Jackpine Gypsies. To this day, the Jackpine Gypsies host the motorcycle races around which the rally first began. By the late 1970s, the rally was attracting several thousand people each year to the Black Hills of South Dakota, and the rallygoers had started to attract independent vendors, who sold them really related souvenirs like t-shirts, pins, and other knickknacks. In 1986, Tom Monahan, a local artist and vendor, donated a composite mark for the rally to the Sturgis Area Chamber of Commerce, which had recently accepted a central role in promoting the rally: One of the rally's supporters had joined forces with the Chamber, turning it into the primary source of information for people interested in attending.

MMMMM In 1987, the Chamber debuted a licensing program for the Monahan mark. The mark is in the shape of a circle horizontally bisected by two motorcycles and the word "Sturgis." The words "Black Hills Motor Classic" are written in an arc pressed against the upper bounds of the circle. Filling in the rest of the circle's upper half are ten stars, also in an arc, and the head of a bird of prey in profile, facing right. In its lower half, six buffalo walk along the circle's edge. Written above them, in a curve parallel to the circle's lower edge, are the words "Rally & Races Black Hills S.D." Finally, a couple feathers dangle from each end of the section that bisects the circle. The Chamber advertised that products displaying the mark could be called "officially licensed." The Chamber registered the mark federally in 1996 and, in the 2000s, acquired two word marks that some rally vendors had also registered federally: "Sturgis Bike Week" and "Take the Ride to Sturgis." These three marks are only some of the many words and designs that vendors have used to associate their goods and services with the rally, which has come to be known by many names, including just "Sturgis."

The Sturgis motorcycle rally is now the largest such rally in the world, bringing several hundred thousand people and many millions of dollars into the region each year. In 2010, the Chamber assigned its rally-related marks to Sturgis Motorcycle Rally, Inc. (SMRI), an entity it helped create that year. SMRI's sole purpose is to license its marks to others. It, as the Chamber did before it, advertises that the profits from its licensing program will go to support the City of Sturgis. The Chamber used that sales pitch for decades to convince vendors to buy a license to display the Monahan mark on their rally-related goods. Today, however, the licensing program seeks to control virtually all rally-related merchandise, asserting that if a vendor wants to sell an item using the geographic terms "Sturgis" or "Black Hills" in conjunction with the rally, he must first apply for and receive a license from SMRI that will cost him about eight percent of the wholesale price of each item sold.

Paul and Carol Niemann, along with their son Brian Niemann, own Rushmore Photo & Gifts, Inc., a souvenir provider in Rapid City, South Dakota, that for years sold a long line of goods related to the rally, including some that it used to advertise were "officially licensed" even though they were not. With the sole exception of some postcards it once created that displayed the Monahan mark, Rushmore has not asked the Chamber or SMRI for permission to sell its rally-related products, many of which display the word "Sturgis" or the name "Sturgis Motor Classic." In 2011, on receiving a federal registration for the word mark "Sturgis" when used on goods and services related to the rally, SMRI sued Rushmore, the Niemanns, JRE, Inc. (a dissolved South Dakota corporation that Paul and Carol Niemann had owned), and Wal-Mart Stores, Inc. (which had retailed some of Rushmore's rally-related products). In its amended complaint, SMRI alleged that the defendants, through their participation in the selling of Rushmore's unlicensed rally-related products, had violated several provisions of the Lanham Act, see 15 U.S.C. § 1051 et seq., and related South Dakota statutes. The defendants, in their answer, filed several counterclaims against SMRI.

A jury rendered a verdict in favor of SMRI, awarding it $912,500 in damages. The district court largely denied the defendants' motion for judgment as a matter of law, but granted it as to JRE since JRE is a dissolved corporation without any assets. The district court also held that SMRI is estopped by laches and acquiescence from recovering damages from the defendants. The district court entered a permanent injunction against the remaining defendants and awarded SMRI some costs, but not fees. The defendants appeal from the judgment below, and SMRI cross-appeals from several of the district court's orders.

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In re: Detroit Athletic Co.

Detroit Athletic Co. (“DACo”) appeals from a decision of the Trademark Trial and Appeal Board affirming the Patent and Trademark Office’s refusal to register DETROIT ATHLETIC CO. for sports apparel retail services. In that decision, the Board concluded that DACo’s mark is likely to be confused with the third-party mark DETROIT ATHLETIC CLUB, registered for clothing goods. See In re Detroit Athletic Co., No. 86625093, 2017 WL 2876815 (T.T.A.B. June 2, 2017). Because the Board’s conclusion is predicated on factual findings supported by substantial evidence, we affirm.

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AuSable River Trading Post v. Dovetail Solutions, Inc.

Every winter for the last sixty years or so, Tawas, Michigan has become the home of the “Perchville” festival, replete with a polar bear swim and a fishing contest. The Tawas Area Chamber of Commerce organizes the annual February event and has registered the name Perchville as a trademark. A local company—the AuSable River Trading Post—wants to make Perchville-branded tee-shirts, and sued the Chamber to invalidate its mark. The district court declined. Because “Perchville” is a distinctive term eligible for protection under the Lanham Act, we affirm.

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Scholz v. Goudreau

Donald Thomas Scholz, a member of the rock band BOSTON, sued former BOSTON guitarist Barry Goudreau for various trademark infringement and breach of contract claims relating to impermissible references that Goudreau had allegedly made regarding his former association with the band. Goudreau counterclaimed with his own breach of contract and abuse of process claims. After the district court granted in part and denied in part both parties' respective motions for summary judgment, the extant claims proceeded to trial. The jury found in favor of the respective defendant on each of the remaining claims. Scholz and Goudreau now cross-appeal the district court's summary judgment findings, evidentiary rulings, and denials of the various motions detailed in this opinion. For the reasons stated below, we affirm the district court and deny both parties' appeals.

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Alliance for Good Government v. Coalition for Better Government

This federal trademark infringement action involves a dispute between two civic organizations over their logos:

The older organization, Alliance for Good Government, developed its logo in the late 1960s and has used it for fifty years in advertisements and sample ballots to promote political candidates in New Orleans and throughout Louisiana. The younger organization, Coalition for Better Government, developed its logo more recently (in the early 1980s or 1990s) and has also used it in sample ballots to promote political candidates in New Orleans. While the groups have locked talons before, the present appeal arises out of Alliance’s 2017 lawsuit seeking to enjoin Coalition’s use of its logo for federal trademark infringement under the Lanham Act. The district court granted Alliance summary judgment, finding that Coalition’s logo infringed Alliance’s marks as a matter of law, and enjoined Coalition from using both its name and logo in political advertisements. Coalition appeals that ruling.

On appeal, Coalition raises broad threshold questions concerning the applicability of the Lanham Act to what it characterizes as its political, noncommercial speech. We decline to address those questions, because Coalition failed to properly raise them below and the district court never reached them. Coalition also attacks the summary judgment, claiming that fact issues remain as to whether Alliance’s marks are valid and whether Coalition’s logo would likely create confusion with Alliance’s. On the latter point, Coalition’s most curious argument—urged below and renewed on appeal—is that the logos are different because its logo features a hawk while Alliance’s features an eagle. We conclude the district court did not err in deciding the birds are identical.

Reviewing the summary judgment ruling de novo, we conclude that the evidence establishes without dispute that Alliance’s logo is a valid composite mark and that the use of Coalition’s logo infringes Alliance’s composite mark as a matter of law. We modify the district court’s injunction in one respect, however. By its terms, the injunction restrains Coalition from using its name as well as its logo. We find that aspect of the injunction overbroad and therefore modify it to restrain Coalition’s use of its logo only.

Accordingly, we AFFIRM the district court’s summary judgment ruling, but MODIFY the injunction to restrain only the use of Coalition’s logo.

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Paleteria La Michoacana, Inc. v. Productos Lacteos Tocumbo S.A

Paletas are frozen, fruit-based Mexican-style desserts akin to popsicles. Two vendors of paletas, one based in Mexico and one in the United States, assert conflicting trademark and false-advertising claims over words and images they use in their competing paleta sales in the United States. Productos Lacteos Tocumbo (Prolacto) is a Mexican paleta company whose owners claim their ancestor started the first paleteria in the Mexican state of Michoacán in the 1940s. Paleteria La Michoacana (PLM) is another paleta company, started by two Mexican-American brothers with pushcarts in northern California in the 1990s. Today PLM sells paletas in the United States through major retail outlets. The two companies now find themselves toe-to-toe, both selling their wares in certain U.S. markets using variants of the name “La Michoacana” (meaning “the Michoacán woman”) and an image of a girl in traditional dress holding a paleta or ice cream cone (the “Indian Girl”). Broadly speaking, the parties dispute whether Prolacto or PLM, if either, owns the contested phrase and image—and, accordingly, which paleta company, if either, unfairly competed or otherwise infringed the other’s trademark rights.

Prolacto and PLM disagree about the key evidence and events that determine ownership and infringement. As Prolacto sees it, PLM’s adoption of the “La Michoacana” name and Indian Girl logo, the latter of which PLM registered as its own in the United States, is culturally exploitative. Prolacto insists that it has long sold paletas in Mexico under the name and image of “La Michoacana.” The founders of competitor PLM first encountered the mark, says Prolacto, when they visited Mexico before opening their own paleta business in the United States. On Prolacto’s account, PLM, acting in bad faith, appropriated the marks, along with the associated goodwill and reputation Prolacto had developed over decades, and passed them off here as PLM’s own.

Prolacto unsuccessfully sought to register certain marks with the United States Patent and Trademark Office, but Prolacto did manage to persuade the Trademark Trial and Appeal Board to cancel the registration of one of PLM’s marks, an updated version of the Indian Girl encircled by the words “La Indita Michoacana.” PLM, in turn, challenged the Board’s cancellation order in district court, and added fresh claims that a Prolacto version of the Indian Girl logo was invalid and infringed PLM’s Indian Girl marks. Prolacto counterclaimed, charging that PLM’s uses of related “La Michoacana” and Indian Girl marks amounted to unfair competition in violation of the Lanham Act.

After discovery, cross-motions for summary judgment, and a thirteen-day bench trial, the district court largely held in PLM’s favor, except that it affirmed the Trademark Board’s cancellation of PLM’s La Indita Michoacana mark, a decision not contested here. The court held that Prolacto infringed PLM’s Indian Girl marks by using similar marks in its own United States sales. As for Prolacto’s counterclaims, the court held in PLM’s favor. Relying on the sovereign-specific nature of trademark law, the court concluded PLM’s use of “La Michoacana” and the Indian Girl in the United States did not infringe any Lanham Act rights of Prolacto, which asserted claims largely based on its prior use of the disputed words and images in Mexico. For the most part, Prolacto was not the first to use the marks in the United States. The only exception was the phrase “La Michoacana,” which Prolacto had used in the Houston market before PLM adopted it. But the court found that phrase, rather than being uniquely associated with Prolacto’s paletas, was a cultural commonplace in Mexican paleta sales; in Mexico, the phrase is generally associated with paletas much as, in the United States, a red, white, and blue striped pole denotes barbershop service rather than any one brand of barber. As such, Prolacto could claim no exclusive right to the phrase. Because we find neither any error of law, nor any clear error in the district court’s findings of fact, we affirm.

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Munro v. Lucy Activewear, Inc.

Bruce Munro and Bruce Munro Studio (collectively “Munro”) appeal the district court’s dismissal of his complaint against Lucy Activewear, Inc., Lucy Apparel, LLC, VF Outdoor, Inc., and VF Corporation (collectively “Lucy”) and the denial of his motion to amend his complaint based on a finding of futility. Munro argues that the district court erred when it found that his tortious interference claim was preempted by the Copyright Act and that his proposed amended trade dress, trademark, and fraud claims were futile. We disagree with Munro except as to his trademark claim. Thus, we affirm in part and reverse and remand in part.

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Yellowfin Yachts, Inc. v. Barker Boatworks, LLC

Yellowfin Yachts, Inc. is a manufacturer of high-end fishing boats. Since 2000, Yellowfin has produced predominantly “center-consoled, open-fisherman styled boats” ranging between twenty-one and forty-two feet. According to Yellowfin, these boats all have the same “swept” sheer line, meaning a gently sloped “s”-shaped line that runs upward from the point at which a boat’s hull intersects with the deck to the boat’s lofted bow. This swept sheer line, described by Yellowfin as “unique,” is the subject of its trade dress claims.

Yellowfin hired Kevin Barker in 2006 as a vice president of sales. Although Yellowfin presented Barker with a proposed employment agreement which included confidentiality clauses, Barker never executed the agreement. Barker left Yellowfin in 2014—not encumbered by a noncompetition or nonsolicitation contract—and founded a competitor, Barker Boatworks, LLC. On his last day at Yellowfin, Barker downloaded hundreds of files from Yellowfin’s main server. These files contained “detailed purchasing history and specifications for all of Yellowfin’s customers,” as well as “drawings” and “style images” for Yellowfin boats and “related manufacturing information.”

After leaving Yellowfin, Barker retained marine architect Michael Peters to design a twenty-six-foot bay boat based on Barker’s specifications. These specifications, according to Yellowfin, were derived directly from Yellowfin’s own bay boats, and the Barker boat’s sheer line nearly replicated that of Yellowfin. Barker Boatworks opened for business in July 2014 and has since competed with Yellowfin in the same “niche” center-console fishing-boat market.

In April 2015, Yellowfin filed a complaint against Barker Boatworks and Kevin Barker4 in the United States District Court for the Middle District of Florida. With leave of court, Yellowfin filed its First Amended Complaint, the operative complaint here, in September. In this complaint, Yellowfin pleads claims for trade dress infringement and false designation of origin under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), common-law unfair competition, common-law trade dress infringement, and violation of Florida’s Trade Secret Act.

After unsuccessfully moving to dismiss Yellowfin’s complaint, Barker Boatworks moved for summary judgment on all of Yellowfin’s claims. The District Court granted the motion in full. First, the Court provided three reasons why Yellowfin’s Lanham Act trade dress claim failed: Yellowfin did not adequately describe any distinctive feature of its sheer line, its sheer line is functional and thus not protectable as trade dress, and no reasonable jury could conclude that a potential buyer would likely confuse a Barker boat for a Yellowfin. The Court then held that, because a reasonable jury could not conclude that a potential buyer would likely confuse the two boats, Yellowfin’s claims of Section 43(a) false designation of origin, common-law trade dress infringement, and common-law unfair competition also fail. Finally, the Court found that Yellowfin failed to identify a protectable, misappropriated trade secret, and, regardless, that Yellowfin did not make “reasonable efforts” to protect all of its alleged trade secrets. The Court therefore rejected Yellowfin’s trade secret claim. Yellowfin appeals these rulings.

We review a district court’s grant of summary judgment de novo and construe the evidence and draw all reasonable inferences therefrom in the light most favorable to Yellowfin. Ziegler v. Martin Cty. Sch. Dist., 831 F.3d 1309, 1318 (11th Cir. 2016). We first address the District Court’s trade dress rulings.

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Marcel Fashions Group, Inc. v. Lucky Brand Dungarees, Inc.

Plaintiff‐Appellant Marcel Fashions Group, Inc. (“Marcel”) and Defendants‐Appellees Lucky Brand Dungarees, Inc. and affiliates (“Lucky Brand”), competitors in the apparel industry, have been hotly contesting their respective rights as to certain trademarks for nearly two decades. In this latest round, Marcel sues under the Lanham Act, alleging that Lucky Brand is infringing on Marcel’s “Get Lucky” trademark through its use of “Lucky” on its merchandise, and that Lucky Brand does so in violation of an injunction entered in an earlier action between the parties. The district court dismissed the action, concluding that Marcel released its claims through a 2003 settlement agreement that resolved an earlier substantially similar litigation between the parties. We conclude that the district court did so in error because res judicata precludes Lucky Brand from raising its release defense in this action. To arrive at that result, we determine that under certain conditions parties may be barred by claim preclusion from litigating defenses that they could have asserted in an earlier action, and that the conditions in this case warrant application of that defense preclusion principle.

Consequently, we VACATE the judgment entered by the district court and REMAND for further proceedings.

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