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.
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.
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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.
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.
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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.
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.
Christian Faith Fellowship Church appeals a final judgment of the Trademark Trial and Appeal Board that, in response to a petition filed by adidas AG, cancelled its trademarks for failing to use the marks in commerce before registering them. The Board held that the Church’s documented sale of two marked hats to an outof-state resident were de minimis and therefore did not constitute use of the marks in commerce under the Lanham Act. Because the Lanham Act defines commerce as all activity regulable by Congress, and because the Church’s sale to an out-of-state resident fell within Congress’s power to regulate under the Commerce Clause, we reverse the Board’s cancellation of the Church’s marks on this basis and remand for further proceedings.
The defendants in the underlying case, Rearden LLC, Rearden MOVA LLC, MO2, LLC, and MOVA, LLC, petition for a writ of mandamus to challenge the district court’s order compelling them to produce allegedly privileged documents. We conclude we have jurisdiction to decide their petition. We further conclude that petitioners’ arguments fail to carry the high burden required on mandamus to overturn the district court’s discovery determination. We therefore deny their petition.
At issue in this trademark case is whether Florida National University, Inc. (“FNU”), infringed the trademark rights of Florida International University (“FIU”) in its registered trademark “FLORIDA INTERNATIONAL UNVERSITY” or committed unfair competition when FNU changed its name from “Florida National College” to “Florida National University.” After thorough review and with the benefit of oral argument, we affirm the district court’s entry of final judgment in favor of FNU on all claims.
Lanham Act / Extraterritorial Application. The panel affirmed in part and reversed in part the district court’s dismissal of trademark infringement and unfair competition claims for lack of subject-matter jurisdiction. Defendant Michael Norman Hallatt purchased Trader Joe’s-branded goods in Washington State, transported them to Canada, and resold them there in a store he designed to mimic a Trader Joe’s store. Trader Joe’s sued under the Lanham Act and Washington law. Reversing the dismissal of the Lanham Act claims, the panel held that the extraterritorial reach of the Lanham Act raises a question relating to the merits of a trademark claim, not to federal courts’ subject-matter jurisdiction. On the merits, the panel concluded that Trader Joe’s alleged a nexus between Hallett’s conduct and American commerce sufficient to warrant extraterritorial application of the Lanham Act. The panel affirmed the dismissal of the state law claims because Trader Joe’s did not allege trademark dilution in Washington or harm to a Washington resident or business. The panel remanded the case to the district court for further proceedings.