The district court granted summary judgment to KDAR and we affirm. Forney’s use of color, which was not associated with any particular shape, pattern, or design, was not adequately defined to be inherently distinctive, and Forney failed to produce sufficient evidence that its use of color in its line of products had acquired secondary meaning (that is, that the relevant public understood those colors to identify Forney as the source).
The district court abused its discretion when it entertained S.C. Johnson’s post-trial argument that Nutraceutical failed to prove continuous use of the BUG OFF mark after 2012. Because the district court did not clearly err in finding that Nutraceutical maintained continuous use prior to 2012, S.C. Johnson’s judgment cannot be saved. We therefore REVERSE and order that the injunction against Nutraceutical be VACATED forthwith.
Two words, “Diamond” and “Tire,” incorporated within the names of two Delaware businesses, have been the focus and drivers of expedited litigation in this Court. Diamond State Tire, Inc. (“Diamond State”) alleges that Diamond Town Tire Pros & Auto Care LLC (“Diamond Town”) has violated Delaware’s Deceptive Trade Practices Act (“the Act”) by operating under a business name that creates a “likelihood of confusion” between the two businesses among vendors, customers and potential customers.
Diamond State seeks a permanent injunction banning Diamond Town from continuing to operate under that trade name. Unfortunately, no effort was made by the parties to reach an accommodation outside of litigation. And so the matter proceeded to trial. This is the court’s post trial decision after considering the parties’ pre-trial briefs, the pretrial stipulation and order, the testimony Ed Long, Todd Miller, Jamie Barns and Kristen Krenzer and the trial exhibits submitted by the parties. For the reasons that follow, I find that Diamond State has failed to prove a claim under the Act. Judgment will be entered for Diamond Town.
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This trademark case involves a challenge to the district court’s award of attorney’s fees to the plaintiff. We find that the district court lacked jurisdiction to cancel the defendant’s federal trademark registrations, and that as a result, the plaintiff was not entitled to attorney’s fees.
Four years ago, we affirmed a judgment that a Puerto Rico credit union (in Spanish, a "cooperativa") infringed on the trademark rights of a competing bank by adopting a confusingly similar logo and trade dress. Oriental Fin. Grp., Inc. v. Cooperativa de Ahorro y Crédito Oriental, 698 F.3d 9 (1st Cir. 2012) ("Oriental I"). In this subsequent appeal, we consider whether the credit union also infringed the bank's word mark and trade name ORIENTAL with its competing marks COOP ORIENTAL, COOPERATIVA ORIENTAL, ORIENTAL POP, and CLUB DE ORIENTALITO. Notwithstanding the similarity between them, the district court found that the latter marks did not infringe upon the former, and refused to enjoin their use.
With regard to COOP ORIENTAL, COOPERATIVA ORIENTAL, and ORIENTAL POP, the district court's determination of noninfringement was clearly erroneous. We reverse that portion of the judgment and remand for reconsideration of whether the injunction should be expanded to remedy the infringing use of those marks. We conclude, however, that the district court's determination is supportable as to CLUB DE ORIENTALITO, and affirm that portion of the judgment.
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Affirming the district court’s summary judgment, the panel held that the plaintiff was the assignee of a valid trademark co-existence agreement entered into with the former owner of the registered mark “Crazy Horse” and therefore had the right to use the mark.
The panel reversed the district court’s summary judgment in favor of Jim Beam Brands Co. on claims of trademark infringement, false designation of origin, and unfair competition brought under the Lanham Act and Nevada state law by JL Beverage Co., which sells a competing line of flavored vodkas.
The panel held that the district court erred in failing to place the burden of proof on Jim Beam Brands, the moving party; failing to view the evidence in the light most favorable to JL Beverage; and never analyzing whether a genuine dispute of material fact existed.
The panel held that genuine issues of material fact remained as to the likelihood of consumer confusion between plaintiff’s registered “Johnny Love Vodka” and “JL Lips” marks and defendant’s “Pucker Vodka” logo. A reasonable fact-finder could conclude that plaintiffs’ marks had conceptual strength and either did or did not have commercial strength, that the parties’ products were related flavoredliquor products sold to the same customers and distributors, that the products were similar, that consumers purchasing the products were not likely to exercise a high degree of care in distinguishing between the two, and that Jim Beam was aware of JL Beverage’s trademarks prior to rolling out its Pucker Vodka line. The panel therefore reversed and remanded for further proceedings consistent with its opinion.
The panel affirmed in part and reversed in part the district court’s summary judgment in favor of defendant Electronic Arts, Inc., in a copyright infringement and trade secrets case. Electronic Arts, maker of The Sims, a computer game, contracted with a production company to produce a USB flash drive shaped like a “PlumbBob,” a gem-shaped icon from the game. That company contracted with Direct Technologies, LLC, to produce a prototype. Electronic Arts approved the prototype but had the flash drives produced by a company in China. Direct Technologies sued under the Copyright Act and the California Uniform Trade Secrets Act. Reversing as to the copyright infringement claim, the panel held that the district court erred in ruling as a matter of law that the flash drive was not sufficiently original when compared to the PlumbBob icon to qualify for copyright protection as a derivative work. The panel held that there was a genuine issue of material fact as to whether Direct Technologies’ cut-away design for removing the flash drive from the PlumbBob object was sufficiently non-functional and non-trivial to warrant copyright protection. There was also a genuine issue of material fact as to whether Direct Technologies was sufficiently in control of its artistic contribution to qualify as a joint author in the flash drive prototype. DIRECT TECH. V. ELECTRONIC ARTS 3 Affirming as to the trade secrets claim, although relying on different grounds than the district court, the panel held that Direct Technologies’ contribution to the PlumbBob USB drive, a design for the flash drive’s removal from the PlumbBob object, did not derive independent economic value from not being generally known to the public. The panel also held that the district court did not clearly err or otherwise abuse its discretion in denying Electronic Arts attorneys’ fees for the trade secrets claim.
Slep-Tone Entertainment Corporation and its successor in interest, Phoenix Entertainment Partners, LLC (collectively, “Slep-Tone”) contend in this litigation that the defendants, a pub and its owner, committed trademark infringement by passing off unauthorized digital copies of Slep-Tone karaoke files as genuine Slep-Tone tracks. See Bretford Mfg., Inc. v. Smith Sys. Mfg. Corp., 419 F.3d 576, 580 (7th Cir. 2005) (describing passing off and reverse passing off cases). Because we agree with the district court that Slep-Tone has not plausibly alleged that the defendants’ conduct results in consumer confusion as to the source of any tangible good sold in the marketplace, we affirm the dismissal of its complaint.
Oakville Hills Cellar, Inc. (“Oakville”), doing business as Dalla Valle Vineyards, appeals from the decision of the United States Patent and Trademark Office (“PTO”) Trademark Trial and Appeal Board (“the Board”) dismissing its opposition to an application filed by Georgallis Holdings, LLC (“Georgallis”) to register a MAYARI mark for use on wine. See Oakville Hills Cellar, Inc. v. Georgallis Holdings, LLC, No. 91211612, 2015 WL 4573202 (T.T.A.B. July 16, 2015) (“Opinion”). Because substantial evidence supports the Board’s finding that Oakville’s registered mark MAYA and Georgallis’s applied-for mark MAYARI are sufficiently dissimilar, we affirm.
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