Articles Posted in Trademark

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Plaintiff Forney Industries, Inc.'s product packaging has, since at least 1989, used some combination of red, yellow, black, and white coloration. The issue in this case was whether Forney's use of colors in its metalworking product line was a protected mark under the Lanham Act. Forney alleged that Defendant Daco of Missouri, Inc., which did business as KDAR Co. (KDAR), infringed on its protected mark by packaging KDAR’s “Hot Max” products with similar colors and a flame motif. The district court granted summary judgment to KDAR and the Tenth Circuit affirmed. 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. View "Forney Industries v. Daco of Missouri" on Justia Law

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After the Hatch Chile Company sought to trademark the term “Hatch” for its exclusive use, a chile producing rival, El Encanto, objected. El Encanto argued before the Trademark Trial and Appeal Board ("TTAB," a division of the Patent and Trademark Office (PTO)), El Encanto argued that “Hatch” can’t be trademarked both because it refers to a place and because Hatch Chile used the term in a misleading manner. To prove its case of deception, El Encanto sought to show that Hatch Chile’s products regularly include chiles that weren't even from the Hatch Valley. El Encanto sought documents from Hatch Chile's packers and suppliers over where the Hatch peppers came from. Hatch Chile responded with a motion for a protective order; the packer, Mizkan Americas, Inc., moved to quash El Encanto's subpoena. Hatch Chile and Mizkan argued that before documents could be subpoenaed, a deposition had to be held. Because El Encanto's subpoena failed to seek a deposition, Hatch Chile argued the order had to be quashed. El Encanto replied that it didn’t want to waste everyone’s time with a deposition: documents would suffice to answer its pretty simple question. The district court agreed and granted Mizkan's motion to quash. El Encanto appealed. The Tenth Circuit reversed: "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." View "El Encanto, Inc. v. Hatch Chile Company, Inc." on Justia Law

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Two companies, Derma Pen, LLC and 4EverYoung, entered a sales distribution agreement. Under the agreement, Derma Pen, LLC obtained the exclusive right to use the DermaPen trademark in the United States. 4EverYoung had a contractual right of first refusal, allowing purchase of Derma Pen, LLC’s U.S. trademark rights upon termination of the distribution agreement. Derma Pen, LLC terminated the agreement, and 4EverYoung wanted to exercise its contractual right of first refusal. The parties reached an impasse, and 4EverYoung started using the DermaPen trademark in the United States. Derma Pen, LLC sued and requested a preliminary injunction to prevent 4EverYoung’s use of the trademark. The district court declined the request, concluding that 4EverYoung was likely to prevail. This appeal to the Tenth Circuit followed, presenting the question: whether Derma Pen, LLC was likely to prevail on its claims of trademark infringement and unfair competition by proving a protectable interest in the trademark. The Court concluded Derma Pen, LLC was likely to prevail by satisfying this element. The district court was reversed and the case remanded for further proceedings. View "Derma Pen v. 4EverYoung Limited" on Justia Law

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Med-Systems, Inc., sells its products under the federally registered trademark SinuCleanse and two similar marks. Water Pik, Inc., which traditionally sold oral irrigators and showerheads, registered the trademark SINUSENSE with the intention of selling sinus-irrigation devices under the brand name “SinuSense.” It sued Med-Systems seeking a declaratory judgment that its use of the SinuSense brand name did not infringe on any of Med-Systems’ marks. Med-Systems counterclaimed for trademark infringement and unfair competition under the Lanham Act. Ruling that the SinuSense brand was not likely to cause consumer confusion, the district court awarded summary judgment to Water Pik on the counterclaims and dismissed Water Pik’s declaratory-judgment claim as moot. Finding no error in the district court's decision, the Tenth Circuit affirmed. View "Water Pik, Inc. v. Med-Systems, Inc." on Justia Law

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A dispute arose among the parties in this case over internet advertising through "AdWords," a Google program whereby companies pay the search engine to feature its ads whenever a user uses certain keywords. At issue was whether the Lanham Act was violated by one of the parties' use of keywords that resembled a competitior-party's service mark. Upon review of the keywords and service marks in question here, the Tenth Circuit found no violation of the Act. View "1-800 Contacts v. Lens.com, et al" on Justia Law

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Eureka Water Company contended that a 1975 agreement granted it the exclusive license in 60 Oklahoma counties to sell spring water and other products using the "Ozarka" trademark. It sued Nestle Waters North America, Inc., the current owner of the Ozarka trademark, to obtain a declaratory judgment of that right and to obtain monetary relief under several theories, including breach of contract, tortious interference with business relations, unjust enrichment, and promissory estoppel. A jury found for Eureka on its contract and tortious interference claims, and the district court entered a judgment declaring that the 1975 agreement granted Eureka the exclusive right that it claimed in the Ozarka mark. In a post-verdict ruling, the district court denied as duplicative Eureka's equitable claims based on unjust enrichment and promissory estoppel. Nestle appealed. The Tenth Circuit agreed with most of Nestle's principal arguments. First, the Court reversed the district court's denial of Nestle's motion for JMOL on the contract claim because the 1975 agreement unambiguously did not cover spring water and under Oklahoma contract law. The Court reversed the denial of JMOL on the tortious-interference claim because Eureka failed to show that Nestle's decision to charge Eureka what it charged other vendors for bottled water was not privileged or justified. Third, the Court affirmed the denial of Eureka's unjust enrichment claim because the claim is based on the false premise that Eureka's license to use the Ozarka trademark covers spring water. The Court reversed, however, the denial of Eureka's promissory-estoppel claim, and remanded that claim for further consideration by the district court. View "Eureka Water Company v. Nestle Waters North America" on Justia Law