MPC Franchise, LLC v. Tarntino

Appeal from a judgment of the United States District Court for the Western District of New York (Siragusa, J.), granting summary judgment to Plaintiffs‐Appellees, companies that own pizza restaurants in Elmira, New York, by the general name of “Pudgie’s,” on their Lanham Act claim seeking cancellation of Defendant‐Appellant Brent Tarntino’s (“Tarntino”) federal trademark registration for the PUDGIE’S mark in connection with pizza restaurants, on the ground that Tarntino obtained the mark by fraud.  Because we find no genuine issue of material fact that Tarntino fraudulently procured his mark, we conclude that summary judgment to Plaintiffs‐Appellees was appropriate, and therefore AFFIRM the judgment of the district court cancelling Tarntino’s mark.

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El Encanto, Inc. v. Hatch Chile Company, Inc.

This seemingly small case about chile pepper sourcing and document discovery has carried a surprisingly large punch, requiring us to try to fit together in a sensible way an aged statute, many and diverse judicial glosses given to that law, various agency rules — and musings — about the statute, and their interaction with amendments to the Federal Rules of Civil Procedure. We have done the best we can to fit these disparate pieces together. In having attempted that much, though, we take care to point out what we haven’t attempted. We haven’t sought to offer any views on the optimal interpretation of § 24 or its interaction (if any) with § 23. The long lingering circuit split that lingers there lingers there still. Neither do we purport to address Mizkan’s many more prosaic objections to the subpoena under Rule 45 itself (objections about the scope of the document requests, etc.). The district court chose not to rely on these grounds in its order quashing the subpoena, and they are the sort of issues it is better equipped to address in the first instance. Today we’ve sought to show no more than that, consistent with any of the various statutory interpretations and regulations cited to us, a party to a TTAB proceeding can obtain nonparty documents without wasting everyone’s time and money with a deposition no one really wants. We trust that this litigation might now turn away from a chase up and down the federal court system over collateral disputes related to the production of documents whose relevance no one before us seriously disputes and advance toward a more informed discussion of the merits consistent with the aspirations of Rule 1. Reversed.

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Designer Jenny Yoo Files Trade Dress, Patent Suit Against David's Bridal

THE FASHION LAW EXCLUSIVE - Bridal designer Jenny Yoo has filed two lawsuits recently, including one against David’s Bridal, in connection with the alleged copying of her design patent and trade dress protected bridesmaid dresses. According to Yoo’s most recent suit, which was filed late last week in the Southern District of New York, a federal court in Manhattan, “Instead of pursuing independent product development or licensing products from third parties, David's Bridal has chosen to slavishly copy JY's innovative and distinctive design, in violation of [Jenny Yoo's] invaluable intellectual property rights.”

Original story from The Fashion Law

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Millennium Labs. v. Ameritox, Ltd.

We also reverse the district court’s decision to grant summary judgment on Millennium’s California unfair competition claim. The district court relied on Cleary v. News Corp., 30 F.3d 1255, 1262–63 (9th Cir. 1994), which clarified that trade dress infringement claims under the Lanham Act and unfair competition claims under California Business and Professions Code section 17200 are inextricably linked. Because we hold that summary judgment was not appropriate on Millennium’s trade dress claim, we hold the same for its unfair competition claim. 

We reverse the district court’s grant of summary judgment in favor of Ameritox on Millennium’s claim of trade dress infringement under the Lanham Act and unfair competition under California Business and Professions Code section 17200, and we remand for further proceedings. Although it is functional to have a system to portray test results, there is a genuine fact issue whether the precise manner in which Millennium presented its results was functional. REVERSED and REMANDED.

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Uptown Grill, LLC v. Shwartz

The question before us is who owns the trademarks associated with the multiple locations of the famous Camellia Grill in New Orleans. We affirm the district court insofar as it found that the putative purchasers own the marks associated with the restaurant’s original location on Carrollton Avenue, but reverse and remand for redetermination of the ownership of those marks not associated with that location.

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Belmora LLC v. Bayer Consumer Care AG

In this unfair competition case, we consider whether the Lanham Act permits the owner of a foreign trademark and its sister company to pursue false association, false advertising, and trademark cancellation claims against the owner of the same mark in the United States. Bayer Consumer Care AG (“BCC”) owns the trademark “FLANAX” in Mexico and has sold naproxen sodium pain relievers under that mark in Mexico (and other parts of Latin America) since the 1970s. Belmora LLC owns the FLANAX trademark in the United States and has used it here since 2004 in the sale of its naproxen sodium pain relievers. BCC and its U.S. sister company Bayer HealthCare LLC (“BHC,” and collectively with BCC, “Bayer”) contend that Belmora used the FLANAX mark to deliberately deceive Mexican-American consumers into thinking they were purchasing BCC’s product.

BCC successfully petitioned the U.S. Trademark Trial and Appeal Board (“TTAB”) to cancel Belmora’s registration for the FLANAX mark based on deceptive use. Belmora appealed the TTAB’s decision to the district court. In the meantime, BCC filed a separate complaint for false association against Belmora under § 43 of the Lanham Act, 15 U.S.C. § 1125, and in conjunction with BHC, a claim for false advertising. After the two cases were consolidated, the district court reversed the TTAB’s cancellation order and dismissed the false association and false advertising claims.

Bayer appeals those decisions. For the reasons outlined below, we vacate the judgment of the district court and remand this case for further proceedings consistent with this opinion.

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Romag Fasteners, Inc. v. Fossil, Inc.

Romag Fasteners, Inc. (“Romag”) owns U.S. Patent No. 5,777,126 (“the ’126 patent”) on magnetic snap fasteners, which Romag sells under its registered trademark, ROMAG. Romag sued Fossil, Inc. and Fossil Stores I, Inc. (together, “Fossil”), along with retailers of Fossil products, alleging, inter alia, patent and trademark infringement. A jury found Fossil liable for both patent and trademark infringement and made advisory awards. The district court reduced the patent damages because of Romag’s laches and held as a matter of law that Romag could not recover Fossil’s profits for trademark infringement because the jury had found that Fossil’s trademark infringement was not willful. We affirm.

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JYSK Bed'N Linen v. Dutta-Roy

The Anticybersquatting Consumer Protection Act, § 43(d) of the Lanham Act, 15 U.S.C. § 1125(d), provides: “A person shall be liable . . . by the owner of a mark . . . if . . . that person . . . has a bad faith intent to profit from that mark . . .; and . . . registers, traffics in, or uses a domain name that . . . is identical or confusingly similar to that mark.” Id. § 1125(d)(1)(A). In this case, the District Court granted Jysk Bed’N Linen an injunction requiring Monosij Dutta-Roy to transfer to Jysk four domain names he had registered in his own name. The court also granted Jysk’s motion for summary judgment on Dutta-Roy’s counterclaims. Dutta-Roy appeals these two decisions pursuant to 28 U.S.C. § 1291 as if, together, they constitute a final judgment in the case.  They do not because still pending resolution in the District Court are claims Jysk brought against Dutta-Roy under §§ 43(a) and (c) of the Lanham Act, 15 U.S.C. §§ 1125(a) and (c), and state law. Although we lack jurisdiction to entertain Dutta-Roy’s appeal under § 1291, we have jurisdiction under 28 U.S.C. § 1292(a)(1) to review the District Court’s injunction. 3 Exercising that jurisdiction, we find no merit in Dutta-Roy’s challenges to the injunction and therefore affirm.

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Adobe Systems, Inc. v. Christenson

Affirming the district court’s summary judgment in a copyright infringement case, the panel held that, while the copyright holder bears the ultimate burden of establishing infringement, the party raising a first sale defense bears an initial burden with respect to the defense.

The first sale doctrine provides that, once a copy of a work is lawfully sold or transferred, the new owner has the right to sell or otherwise dispose of that copy without the copyright owner’s permission. Adobe Systems, Inc., claimed infringement of its software. The panel held that Adobe established its registered copyrights in the software, and the defendant carried his burden of showing that he lawfully acquired genuine copies. Adobe, however, failed to produce license agreements or other evidence to show that it retained title to the software when the copies were first transferred. The panel held that the district court did not abuse its discretion in excluding evidence purporting to document the licenses, and general testimony and generic licensing templates were insufficient to meet Adobe’s burden.

The panel held that the nominative fair use defense barred Adobe’s trademark infringement claim.

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Fed. Treasury Enter. Sojuzplodoimport v. Spirits Int’l B.V.

Rival claims to the “Stolichnaya” trademarks have been asserted by successors in interest to a Soviet enterprise and by an agency of the Russian Federation.  The principal issue is whether the agency of the Russian Federation has been endowed by that government with rights and powers that support standing under section 32(1) of the Lanham Act.  The question has been here before.  We conclude that the United States District court for the Southern District of New York (Scheindlin, J.) erred in considering whether the asserted basis for standing to pursue the section 32(1) claims was valid under Russian law, but that the district court correctly dismissed all of the other claims as barred by res judicata and laches.

Affirmed in part and vacated and remanded in part.

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