In a recent decision, the Eleventh Circuit vacated a district court's injunction against the use of a competitor's trademarks in the meta tags of a defendant's website.  The court held that while the plaintiffs had shown likelihood of success on both their trademark infringement and false advertising claims, because the district court relied on a presumption of irreparable harm to support its injunction, the injunction must be vacated.

Specifically, the court noted that the Supreme Court's eBay decision did away with the notion of irreparable harm in patent cases, and that the statutory authorization for injunctions is similar in trademark cases.  While the court noted that eBay applied to the case, it declined to decide its effect, specifically "whether the nature of trademark infringement gives rise to a presumption of irreparable injury," meaning whether presuming irreparable harm in trademark cases would run afoul of eBay.

More detail of N. Am. Med. Corp. v. Axiom Worldwide, Inc. after the jump.

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In a recent decision, the Second Circuit decided the one outstanding issue from a case it had previously decided in March 2007 (previously blogged here), namely whether the "famous marks" doctrine the court held Congress has not yet incorporated into federal trademark law might support a New York common law claim for unfair competition.  The Second Circuit certified two questions to the New York Court of Appeals before resolving the issue.  With the answers back, the court affirmed the district court grant of summary judgment to the defendants in its entirety.

With the case now fully decided by the Second Circuit, the way is now clear for a possible appeal to the Supreme Court, as this case conflicts with the Ninth Circuit's 2004 decision in Grupo Gigante S.A. de C.V. v. Dallo & Co., which recognized the "famous marks" doctrine rejected by the Second Circuit in this case.

More detail of ITC Ltd. v. Punchgini, Inc. after the jump.

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In a decision yesterday, the Second Circuit affirmed a jury's findings in a trademark infringement case between Polo Ralph Lauren and the U.S. Polo Association.  The jury found that one of the USPA's four marks was likely to cause confusion.  The two parties had been involved in a previous lawsuit in the early 1980s, and the USPA's former logo was found to have infringed Polo's trademark rights.

The court held that it was not erroneous for the district court to permit evidence of statements made during settlement negotiations that one of the logos was not "offensive" to Polo, as it was necessary for the USPA's claim of estoppel.  Further, the court held that it was not erroneous for the district court to refuse to give a jury instruction that the USPA, because it was previously found to have infringed, was required to stay a "safe distance" away from Polo's mark.  Such an instruction would have confused the jury regarding the applicable legal standard.

More detail of PRL USA Holdings, Inc. v. U.S. Polo Ass'n, Inc. after the jump.

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In a recent decision, the Fifth Circuit affirmed a district court's finding of infringement and disgorgement of profits, but increased the amount of profits awarded because the defendant failed to provide evidence of its costs to reduce the award.  Interestingly, the infringement took place entirely outside the United States, namely in Saudi Arabia.  Even though the products were not sold in the United States, under the Fifth Circuit's decision in American Rice, Inc. v. Arkansas Rice Growers Cooperative Association, enforcement of trademark rights extraterritorially was permitted if it was not an affront to Saudi sovereignty.  Here, there was no such evidence of record (such as a finding by a Saudi court that there was no infringement), so the court determined that jurisdiction was properly exercised.

The court also vacated the district court's award of attorney's fees on the basis that it represented an inconsistent award.  The district court awarded profits, but no attorney fees under the Lanham Act, and attorney's fees, but no other damages under a breach of contract theory.  Because an award of both attorney fees and profits would mean portions of the award would come from different legal theories under Texas law, the court did not permit recovery of both.

More detail of Am. Rice, Inc. v. Producers Rice Mill, Inc. after the jump.

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In its second trademark decision Friday, the Seventh Circuit clarified what is required for a party to be authorized to use another entity's trademarks.  In this case, the plaintiff—one of four founders of two LLC's designed to manage and control a restaurant in Chicago—alleged trademark infringement against the three other co-founders based on the co-founders' use of the trademarks and trade dress of the two LLC's in similar restaurants in New York and Las Vegas.  The district court dismissed the case because it found that such use of the trademarks and trade dress was authorized according to the operating agreement of the LLC's.

The Seventh Circuit affirmed.  The court emphasized the operating agreement of one of the LLC's specifically contemplated and permitted expansion of the "Concept" of the Chicago restaurant (including the use of the trademarks and trade dress) in other locations if two of the co-founders desired to expand.  Because three of the co-founders desired the expansions to New York and Las Vegas, the expansion and corresponding use of the trademarks and trade dress was authorized.  Being authorized, the three co-founders' use of LLC's trademarks could not, as a matter of law, infringe the LLC's trademark and trade dress rights, and the district court therefore properly dismissed the claim.

More detail of Segal v. Geisha NYC LLC after the jump.

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In a decision Friday, the Seventh Circuit affirmed a jury verdict of trademark infringement, but reversed the district court's ruling holding the plaintiff had forfeited damages because of improper conduct towards a prospective witness. The court dealt with whether the burden of proof for the sanction was by clear and convincing evidence or as the district court concluded, by a mere preponderance of the evidence.

The court ultimately decided that when the appropriate burden of proof is not clear, the issue is resolved within the limits of proportionality.  Specifically, a larger sanction requires a higher degree of harm caused by the misconduct.  Since, there was no harm caused by the misconduct, the district court's imposition of the sanction was revered.  The harm was mitigated in this case because the defendant decided not to call the witness in question, which turned out to be a tactical mistake, as the witness was going to offer testimony on a potentially meritorious defense, namely that the mark at issue was generic.

More detail of Ty Inc. v. Softbelly's, Inc. after the jump.

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In a decision this week, the Federal Circuit vacated the decision of the Court of International Trade (CIT) and remanded with instructions to dismiss the plaintiff's complaint for lack of subject matter jurisdiction.

The case arose out of a civil fine levied against the plaintiff for importation of counterfeit goods.  The plaintiff brought suit in the CIT to contest the fine.  The CIT found that it had subject matter jurisdiction, but dismissed the case on the basis that there was no final agency action under the Administrative Procedure Act.  

The Federal Circuit held that the CIT did not have subject matter jurisdiction in the first instance, as the seizure of counterfeit goods does not constitute an "embargo" pursuant to the relevant statutes.  As a result, the court vacated and remanded the CIT's decision with instructions to dismiss the case.  

More detail of Sakar Int'l, Inc. v. United States after the jump.

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In a decision Monday, the Second Circuit affirmed a district court's summary judgment in a trademark case involving the slogan "My Life. My Card."  An individual threatened to sue American Express for use of the slogan, alleging that he had superior rights in the mark based on efforts to license the phrase to various credit card companies, including American Express.  American Express filed a declaratory judgment action, and the district court granted summary judgment to American Express, holding that seeking to license the mark to companies did not constitute a use in commerce, and as such the individual had not gained any trademark rights in the phrase. 

The Second Circuit affirmed, agreeing that because the individual had not used the mark in commerce, American Express legally held the trademark rights to the "My Life. My Card." slogan.  As summarized by the court:  "there can be no trademark absent goods sold and no service mark without services rendered."

More detail of Am. Express Co. v. Goetz after the jump.

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In a decision Tuesday, the Eleventh Circuit affirmed a district court's finding of trademark infringement against a trademark licensee.  The alleged infringer was actually licensed to use the mark owner's trademark, but did not use the mark as described in the license, instead using an abbreviated form.  As a result, the court affirmed the jury's finding of infringement and the associated damages award, reviewing its seven-factor likelihood-of-confusion test and emphasizing the factors of actual confusion and type of mark.  

However, the court vacated the district court's injunction against further infringement.  Because the infringer was actually licensed to use the mark as a whole, an injunction that prevented further use of the truncated mark "or any other similar marks" (language often used in trademark injunctions) was inappropriately broad, as it would prevent the infringer from using the licensed mark.

More detail of Aronowitz v. Heath-Chem Corp. after the jump.

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In a decision Friday, the Ninth Circuit clarified the differences in use requirements to prove the existence of a protectable trademark as compared to trademark infringement.  The plaintiff and defendant both used the same mark, but in connection with different services.  The defendant successfully argued at the district court that because the plaintiff did not use its mark in connection with the defendant's services, the plaintiff had not shown it had a protectible mark that could be enforced against the defendant.

The Ninth Circuit pointed out that this confused the required elements to prove trademark infringement.  A plaintiff must both prove that it has valid rights in a mark and that the defendant's use of its mark is likely to cause consumer confusion.  When the plaintiff has a federal registration, evidence of the registration is prima facie evidence of valid rights in a mark.  The mark owner does not have to additionally show that the defendant is using the mark on the same goods and/or services in order to show infringement.  As summarized by the court:

In sum, a plaintiff trademark owner must establish a valid, protectable interest in order to proceed to the second prong of the trademark infringement analysis — the likelihood of confusion resulting from the defendant’s alleged infringing use. Having established a protectable interest by proving it is the owner of a registered trademark, the owner does not additionally have to show that the defendant’s allegedly confusing use involves the same goods or services listed in the registration.

In this case, however, the plaintiff had not offered any evidence of likelihood of confusion in opposing summary judgment, so the court affirmed the grant of summary judgment anyway.

More detail of Applied Info. Scis. Corp. v. eBay, Inc. after the jump.

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