Articles Posted in Trademark

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Four years ago, the First Circuit affirmed a judgment that Defendant, a Puerto Rico credit union, infringed on the trademark rights of Plaintiff, a competing bank, by adopting a confusingly similar logo and trade dress. After the First Circuit remanded the case, the district court found no likelihood of confusion with respect to 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. On appeal, the First Circuit affirmed in part, reversed in part, and remanded, holding (1) there is no clear error in the district court’s conclusion that the CLUB DE ORIENTALITO mark was unlikely to cause consumer confusion; but (2) as to the COOP ORIENTAL, COOPERATIVA ORIENTAL, and ORIENTAL POP marks, the district court’s determination of non-infringement was clearly erroneous. View "Oriental Fin. Group, Inc. v. Cooperativa de Ahorro y Credito Oriental" on Justia Law

Posted in: Trademark

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A Corp., a Massachusetts plumbing corporation and franchisor, brought a trademark infringement action against All American Plumbing, Inc., an Arizona corporation with its principal place of business in Arizona, alleging that All American was improperly using A Corp.’s “Rooter Man” mark, or one confusingly similar, to advertise its plumbing business on its website. The district court dismissed the complaint, concluding that A Corp. failed to meet its burden to establish either general or specific jurisdiction. A Corp. appealed, challenging the district court’s conclusion as to the exercise of specific jurisdiction. The First Circuit affirmed, holding that A Corp.’s argument for specific jurisdiction failed. View "A Corp. v. All American Plumbing, Inc." on Justia Law

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Norbero Colon Lorenzana (Colon) was working for South American Restaurant Corporation (SARCO), a franchisee and operator of Church’s Chicken locations in Puerto Rico, when he suggested to his superiors the concept for a new chicken sandwich that could be included on Church’s menu. Church’s subsequently began selling the item, which it called the “Pechu Sandwich.” SARCO subsequently received a certificate of registration from the Puerto Rico Department of State trademarking the name “Pechu Sandwich” and also received a federal trademark registration for the name “Pechusandwich.” Colon brought suit alleging violations of the Lanham Act and Copyright Act. SARCO filed a motion to dismiss under Fed. R. Civ. P. 12(b)(6), which the district court granted. The First Circuit affirmed, holding (1) the district court properly determined that neither the name “Pechu Sandwich” nor the recipe are eligible for copyright protection; and (2) that Colon failed to sufficiently plead that SARCO committed fraud in the procurement of a federal trademark for the Pechu Sandwich. View "Colon-Lorenzana v. South American Restaurants Corp." on Justia Law

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Arborjet, Inc. (Plaintiff), which manufactures and sells an emamectin benzoate solution used to protect trees from pests called TREE-age, granted Rainbow Treecare Scientific Advancements, Inc. (Defendant) an exclusive right to distribute TREE-age pursuant to a sales agency contract. After termination of this agreement, Defendant began marketing and distributing ArborMectin, another emamectin benzoate combination meant to compete directly with TREE-age. Plaintiff sued Defendant seeking to enjoin Defendant’s sales of ArborMectin and alleging several claims. The district court granted Plaintiff a preliminary injunction to run during the litigation that was meant to enforce the contractual agreement and prohibit a trademark violation. The First Circuit affirmed in part and reversed in part the order comprising the preliminary injunction, holding (1) it was not clear error to find a likely showing that Defendant contributed to the creation of ArborMectin; (2) the district court did not err in entering the portion of the preliminary injunction based on Arborjet’s contract claim; but (3) ordering proper attribution of “Arborjet” and “TREE-age” was improper given the district court’s rulings on the Lanham Act claims. View "Arborjet, Inc. v. Rainbow Treecare Scientific Advancements, Inc." on Justia Law

Posted in: Contracts, Trademark

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Dr. Ross Greene developed a method of treating children with explosive behaviors known as the Collaborative Problem Solving (CPS) approach and advanced this method through his work at the Massachusetts General Hospital (MGH) and through his publications, The Explosive Child, a book he wrote himself, and Treating Explosive Kids, a book he co-authored with Dr. J. Stuart Ablon. Greene alleged that MGH had infringed his CPS-related trademarks and that Ablon had infringed his CPS-related copyrights. MGH counterclaimed for ownership of the marks. The district court granted summary judgment in favor of MGH. After a trial, the jury awarded $19,000 on Greene’s claim that Ablon infringed on The Explosive Child. The First Circuit affirmed, holding (1) the district court correctly concluded that none of Greene’s defenses to the enforcement of his employment contracts with MGH succeeded; (2) the district court erred in ruling that Treating Explosive Kids could not be both joint and derivative as a matter of law, but the error did not improperly circumscribe the evidence Greene could present on his copyright claim; (3) the district court properly determined that Greene was not entitled to an accounting or an injunction; and (4) the district court properly denied Ablon’s motion for judgment as a matter of law. View "Greene v. General Hosp. Corp." on Justia Law

Posted in: Copyright, Trademark

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Defendant sold home theater systems manufactured by Plaintiff, Bose Corporation, for use in the U.S. to customers abroad. Defendant, who was not an authorized reseller or distributor of Bose products, sold the systems across international markets to take advantage of high retail prices in other countries. Plaintiff filed this action against Defendant for breach of contract and trademark infringement, asserting that Defendant sold its American products in Australia without Plaintiff's consent even though he had signed a settlement agreement promising not to make such sales after he had made similar sales in Europe. The First Circuit Court of Appeals affirmed, holding (1) the settlement agreement was a valid contract; and (2) summary judgment on the trademark infringement claim was appropriate. View "Bose Corp. v. Ejaz" on Justia Law

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Defendant, Hotel Melia, Inc., operated the Hotel Melia in Ponce, Puerto Rico since at least the 1890s. Defendant, however, never registered the mark "Melia" with the United States Patent and Trademark Office. Plaintiff held several registered marks using the name "Melia" since the late 1990s. In 2007, Plaintiff's parent company opened a hotel called "Gran Melia" approximately eighty miles from Ponce. Plaintiff filed a petition seeking to register the mark "Gran Melia." Defendant opposed Plaintiff's registration petition. Plaintiff then filed a complaint against Defendant, seeking a declaration that Plaintiff had the right to use the mark Melia throughout Puerto Rico. The district court entered summary judgment for Plaintiff, concluding that, with the exception of the city of Ponce, Plaintiff was entitled to exclusive use of the Melia mark throughout Puerto Rico. The First Circuit Court of Appeals vacated the district court's entry of summary judgment, holding that a reasonable factfinder could conclude that the Hotel Melia and Gran Melia marks cannot co-exist in Puerto Rico without creating an impermissible likelihood of confusion among reasonable consumers. Remanded. View "Dorpan, S.L. v. Hotel Melia, Inc." on Justia Law

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Defendant, Building #19, Inc., was an off-price retail store that acquired products and resold them at discounted prices in stores in New England. Defendant advertised in newspapers around New England, and the ads often featured descriptions of the advertised goods. Plaintiff, Swarovski Aktiengesellschaft and Swarovski North American Limited (collectively, Swarovski), was a manufacturer and distributor of crystal and jewelry. It held several registered trademarks for the mark "Swarovski." After Defendant obtained several Swarovski crystal figurines it hoped to resell, Defendant designed a newspaper advertisement printed in a large font with the name "Swarovski." Plaintiffs sought a preliminary injunction barring Defendant from using the Swarovski name or mark in its advertising. The district court granted the injunction in part by limiting Defendant's use of the Swarovski name to a smaller font size. Defendant appealed. The First Circuit Court of Appeals reversed, holding that the district court erred by failing to include necessary findings on whether (1) Swarovski was likely to succeed in its infringement claim against Defendant by establishing that the proposed advertisement was likely to confuse customers, and (2) Swarovski would suffer irreparable harm as a result of the ad. Remanded. View "Swarovski Aktiengesellschaft v. Building #19, Inc." on Justia Law

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The parties in this case were competing financial institutions operating in Puerto Rico. Plaintiffs (collectively, "Oriental") had for many years used the ORIENTAL mark in connection with advertising, promotion, and offering of financial services in Puerto Rico. Oriental contended that beginning around 2009, Defendant ("Cooperativa") used a confusingly similar mark, COOP ORIENTAL, and a confusingly similar logo containing that mark in connection with its financial business and services, in violation of the Lanham Act and Puerto Rico trademark law. Finding a likelihood of confusion, the district court ordered Cooperativa to cease all use of its new logo (which used the COOP ORIENTAL mark with an orange trade dress) but allowed Cooperativa to revert back to using its pre-2009 logo (also containing the COOP ORIENTAL mark, but with a different trade dress). On appeal, Oriental contended that the court's injunction should have been broader to include any use of the COOP ORIENTAL mark and similar marks. The First Circuit Court of Appeals remanded to the district court to determine whether there was a likelihood of confusion as to the COOP ORIENTAL mark and other marks and whether the injunction should be broader. View "Oriental Fin. Group, Inc. v. Cooperativa de Ahorro y Credito Oriental" on Justia Law

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HSN sold through its website and television station about 70,000 "Esteban" guitars that it identified, inaccurately, as containing Fishman pickups. Esteban is the performance name used by musician Paul who, with his company Daystar, has collaborated with HSN since 2001 to market Esteban guitar packages. Fishman, manufacturer of the pickup at issue, which is attached to musical instruments for sound amplification, claimed trademark infringement and false advertising under the Lanham Act, 15 U.S.C.1051, against HSN, Paul, and Daystar. The district court rejected the claims, finding that the violations were not "willful." The judge chose not to order disgorgement of profits. The First Circuit affirmed, rejecting challenges to evidentiary rulings and jury instructions. In federal civil litigation willfulness requires a conscious awareness of wrongdoing by the defendant or at least conduct deemed "objectively reckless" measured against standards of reasonable behavi View "Fishman Transducers, Inc. v. Paul" on Justia Law