U.S. trademark law summary judgments - Case Summaries

U.S. trademark law summary judgments - Case Summaries

  • 08 June, 2024
  • Nyall Engfield

U.S. trademark law summary judgments - Case Summaries (third party use, colors, fair use)

Here are summaries of ten cases in the area of U.S. trademark summary judgments, including the facts, issues, ratio decidendi (principle on which the case was decided), and relevant quotes:

1.  Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995)

Facts: Qualitex manufactured green-gold dry cleaning press pads and had used the green-gold color for over 30 years. Jacobson began selling press pads in a similar shade.

Issue: Whether the Lanham Act permits the registration of a trademark that consists wholly of a color.

Ratio Decidendi: A color can meet the requirements for trademark protection if it acts as a symbol to identify and distinguish a seller's goods.

Relevant Quote: "We hold that there is no rule absolutely barring the use of color alone as a trademark."

2.  Converse Inc. v. ITC 909 F.3d 1110 (Fed. Cir. 2018)

Facts: Converse sued companies for importing shoes that infringed Converse's trademark on the midsole design of its Chuck Taylor shoes.

Issue: Whether Converse's trademark registration remained valid after its alleged widespread popularity and third-party use.

Ratio Decidendi: Widespread third-party use can be evidence of trademark invalidity, but the mark was still valid based on residual source-identifying ability.

Relevant Quote: "Used by others is relevant …not for proving likelihood of confusion, but to show the trademark significance of the registered mark."

3.  Network Automation, Inc. v. Advanced Systems Concepts, Inc., 638 F.3d 1137 (9th Cir. 2011)

Facts: Advanced Systems used "ActiveBatch" as a trademark for scheduling software. Network Automation later started using "ActiveBatch" for its competitor product.

Issue: Whether Network's use of the mark created a likelihood of confusion.

Ratio Decidendi: The "internet troika" of factors - similarity of the marks, goods, and marketing channels - supported a likelihood of confusion.

Relevant Quote: "A reasonable jury could conclude that Network's use of ActiveBatch created initial interest confusion over Advanced's mark."

4.  Radiance Foundation, Inc. v. National Association for the Advancement of Colored People, 786 F.3d 316 (4th Cir. 2015)

Facts: Radiance Foundation used "NAACP" and "National Association for the Abortion of Colored People" parody slogans against the NAACP organization.

Issue: Whether Radiance's use of the trademarks constituted fair use.

Ratio Decidendi: Radiance's use was a successful parody and fell under fair use, not trademark infringement.

Relevant Quote: "The Radiance parody reasonably pokes fun at the substance and policies underlying the NAACP's contentious social justice positions."

5.  Maker's Mark Distillery, Inc. v. Diageo North America, Inc., 679 F.3d 410 (6th Cir. 2012)

Facts: Maker's Mark's trademark was a red wax seal on its bourbon bottles. Diageo used a red wax seal on its Crown Royal Black.

Issue: Whether there was a likelihood of confusion between the red wax seals.

Ratio Decidendi: There was no likelihood of confusion, as the marks and trade dress differed significantly and consumers exercised a high degree of care.

Relevant Quote: "It is unlikely that any reasonably prudent consumer would disregard the remaining portion of Diageo's distinct trade dress and focus solely on the red wax seal."

6. KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004)

Ratio Decidendi: The test for determining whether two trademarks can be regarded as "essentially the same" is not whether they look alike, but whether they create the same general overall impression.

Relevant Quote: "We hold today that, for rationally related goods, dispositive evidence of continuity of trademark use comes when the marks are 'legally equivalent.' Trademarks are legally equivalent if they create 'the same, continuing commercial impression' such that the consumer would consider both as the same mark."

7. Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 719 F.3d 1153 (9th Cir. 2013)

Ratio Decidendi: Evidence of actual confusion among a significant number of consumers is strong evidence of likelihood of confusion.

Relevant Quote: "Evidence that a 'significant portion' of the relevant market is confused about the source of the products supports an injunction against infringement."

8. Apple Inc. v. Amazon.com Inc., 886 F.3d 1322 (Fed. Cir. 2018)

Ratio Decidendi: Mere intent to use a mark alone is insufficient to demonstrate ownership - actual use is required.

Relevant Quote: "The Board was correct in its conclusion that without use in commerce, Amazon did not have the requisite property interests that would qualify the applied-for mark as a trademark entitled to registration."

9. Bone Room Novelties, Inc. v. Hiney Winney, Inc., 982 F.3d 1072 (9th Cir. 2020)

Ratio Decidendi: Parody is a defense to trademark infringement where the products or marketing do not explicitly mislead as to the source of the work.

Relevant Quote: "If the defendant's appropriation is a parody 'not reasonably likely to cause confusion,' it doesn't violate the trademark owner's rights."

10. Belmora LLC v. Bayer Consumer Care AG, 819 F.3d 697 (4th Cir. 2016)

Ratio Decidendi: Generic terms cannot receive trademark protection, even if they acquired secondary meaning.

Relevant Quote: "The principle is a bedrock one: No matter how much money and effort the user applies, neither businesses nor individuals can ever acquire a federal trademark for generic terms."

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