Justia U.S. Supreme Court Opinion SummariesArticles Posted in Trademark
Patent and Trademark Office v. Booking.com B.V.
A generic name—the name of a class of products or services—is ineligible for federal trademark registration. Booking.com, a travel-reservation website, sought federal registration of marks including the term “Booking.com.” Concluding that “Booking.com” was a generic name for online hotel-reservation services, the U.S. Patent and Trademark Office (PTO) refused registration. The Fourth Circuit affirmed the District Court decision that “Booking.com”—unlike the term “booking” standing alone—is not generic.The Supreme Court affirmed. A term styled “generic.com” is a generic name for a class of goods or services only if the term has that meaning to consumers. Whether a compound term is generic turns on whether that term, taken as a whole, signifies to consumers a class of goods or services. Consumers do not perceive the term “Booking.com” that way. Only one entity can occupy a particular Internet domain name at a time, so a “generic.com” term could convey to consumers an association with a particular website. An unyielding legal rule disregarding consumer perception would be incompatible with a bedrock principle of the Lanham Act. The PTO’s policy concerns do not support a categorical rule against the registration of “generic.com” terms. Several doctrines ensure that registration of “Booking.com” would not yield its holder a monopoly on the term “booking.” View "Patent and Trademark Office v. Booking.com B.V." on Justia Law
Lucky Brand Dungarees, Inc. v. Marcel Fashions Group, Inc.
Lucky Brand and Marcel market clothing. Marcel registered the trademark “Get Lucky.” Lucky Brand registered the trademark “Lucky Brand” and other marks with the word “Lucky.” In a 2003 settlement agreement, Lucky Brand agreed to stop using the phrase “Get Lucky.” Marcel released its claims regarding Lucky Brand’s use of its other trademarks.In 2005, Lucky Brand sued Marcel for violating its trademarks. Marcel filed counterclaims turning on Lucky Brand’s continued use of “Get Lucky,” but did not claim that Lucky Brand’s use of its other marks alone infringed that mark. The court enjoined Lucky Brand from copying or imitating Marcel’s “Get Lucky” mark.In 2011, Marcel sued Lucky Brand, arguing only that Lucky Brand’s post-2010 use of Lucky Brand’s other marks infringed Marcel’s “Get Lucky” mark. Marcel did not allege that Lucky Brand continued to use "Get Lucky." Lucky Brand argued, for the first time since early in the 2005 Action, that Marcel had released those claims in the settlement agreement. The Second Circuit vacated the dismissal of the action, concluding that “defense preclusion” prohibited Lucky Brand from raising that unlitigated defense.A unanimous Supreme Court reversed. Any preclusion of defenses must, at a minimum, satisfy the strictures of issue preclusion or claim preclusion. Here, issue preclusion does not apply, so the causes of action must share a “common nucleus of operative fact[s]” for claim preclusion to apply. The 2005 claims depended on Lucky Brand’s alleged use of “Get Lucky.” In the 2011 suit, Marcel alleged that the infringement was Lucky Brand’s use of its other marks containing the word “Lucky,” not any use of “Get Lucky” itself. The conduct in the 2011 suit occurred after the conclusion of the 2005 suit. View "Lucky Brand Dungarees, Inc. v. Marcel Fashions Group, Inc." on Justia Law
Romag Fasteners, Inc. v. Fossil, Inc.
Romag and Fossil signed an agreement to use Romag’s fasteners in Fossil’s leather goods. Romag eventually discovered that factories in China making Fossil products were using counterfeit Romag fasteners. Romag sued Fossil and certain Fossil retailers for trademark infringement, 15 U.S.C. 1125(a). Citing Second Circuit precedent, the district court rejected Romag’s request for an award of profits, because the jury, while finding that Fossil had acted callously, rejected Romag’s accusation that Fossil had acted willfully.The Supreme Court vacated. A plaintiff in a trademark infringement suit is not required to show that a defendant willfully infringed the plaintiff’s trademark as a precondition to a profits award. The Lanham Act provision governing remedies for trademark violations, section 1117(a), makes a showing of willfulness a precondition to a profits award in a suit under section 1125(c) for trademark dilution, but section 1125(a) has never required such a showing. The Act speaks often, expressly, and with considerable care about mental states, indicating that Congress did not intend to incorporate a willfulness requirement here obliquely. View "Romag Fasteners, Inc. v. Fossil, Inc." on Justia Law
Iancu v. Brunetti
Brunetti sought federal registration of the trademark FUCT. The Patent and Trademark Office denied his application under a Lanham Act provision that prohibits registration of trademarks that consist of or comprise "immoral[ ] or scandalous matter,” 15 U.S.C. 1052(a).The Supreme Court affirmed the Federal Circuit in holding that the provision violates the First Amendment. The Court noted that it previously invalidated the Act’s ban on registering marks that “disparage” any “person[ ], living or dead.” The “immoral or scandalous” bar similarly discriminates on the basis of viewpoint. Expressive material is “immoral” when it is “inconsistent with rectitude, purity, or good morals”; “wicked”; or “vicious”; the Act permits registration of marks that champion society’s sense of rectitude and morality, but not marks that denigrate those concepts. Material is “scandalous” when it “giv[es] offense to the conscience or moral feelings”; “excite[s] reprobation”; or “call[s] out condemnation”; the Act allows registration of marks when their messages accord with, but not when their messages defy, society’s sense of decency or propriety. The statute, on its face, distinguishes between ideas aligned with conventional moral standards and those hostile to them.The Court rejected an argument that the statute is susceptible of a limiting construction. The “immoral or scandalous” bar does not draw the line at lewd, sexually explicit, or profane marks. Nor does it refer only to marks whose “mode of expression,” independent of viewpoint, is particularly offensive. To cut the statute off where the government urges would not interpret the statute Congress enacted, but fashion a new one. View "Iancu v. Brunetti" on Justia Law
Mission Product Holdings, Inc. v. Tempnology, LLC
Tempnology licensed Mission to use Tempnology’s trademarks in connection with the distribution of clothing. Tempnology filed for Chapter 11 bankruptcy and sought to reject its agreement with Mission as an “executory contract” under 11 U.S.C. 365, which provides that rejection “constitutes a breach of such contract.” The Bankruptcy Court approved Tempnology’s rejection, holding that the rejection terminated Mission’s rights to use Tempnology’s trademarks. The Bankruptcy Appellate Panel reversed, holding that rejection does not terminate rights that would survive a breach of contract outside bankruptcy. The First Circuit reinstated the Bankruptcy Court’s decision.The Supreme Court reversed, first holding that the case is not moot. Mission presented a plausible claim for damages, sufficient to preserve a live controversy. A debtor’s rejection of an executory contract under Bankruptcy Code Section 365 has the same effect as a breach of that contract outside bankruptcy and cannot rescind rights that the contract previously granted. A licensor’s breach cannot revoke continuing rights given under a contract (assuming no special contract term or state law) outside of bankruptcy; the same result follows from rejection in bankruptcy. Section 365 reflects the general bankruptcy rule that the estate cannot possess anything more than the debtor did outside bankruptcy. The distinctive features of trademarks do not mandate a different result. In delineating the burdens a debtor may and may not escape, Section 365’s edict that rejection is breach expresses a more complex set of aims than facilitating reorganization. View "Mission Product Holdings, Inc. v. Tempnology, LLC" on Justia Law
Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC
Fourth Estate, a news organization that licensed works to Wall-Street.com, a news website. sued Wall-Street for copyright infringement of articles that Wall-Street failed to remove from its website after canceling the license agreement. Fourth Estate had applied to register the articles with the Copyright Office, but the Register had not acted on those applications. No civil infringement action “shall be instituted until . . . registration of the copyright claim has been made,” 17 U.S.C. 411(a). The Eleventh Circuit and a unanimous Supreme Court affirmed the dismissal of the suit. Registration occurs, and a copyright claimant may commence an infringement suit, upon registration; a copyright owner can then recover for infringement that occurred both before and after registration. In limited circumstances, copyright owners may file suit before undertaking registration. For example, an owner who is preparing to distribute a work that is vulnerable to predistribution infringement—e.g., a movie or musical composition—may apply for preregistration; an owner may also sue for infringement of a live broadcast before registration. The Court rejected Fourth Estate’s “application approach” argument that registration occurs when a copyright owner submits a proper application. In 1976 revisions to the Copyright Act, Congress both reaffirmed that registration must precede an infringement suit. The Act safeguards copyright owners by vesting them with exclusive rights upon creation of their works and prohibiting infringement from that point forward. To recover for such infringement, copyright owners must apply for registration and await the Register’s decision. An administrative lag in processing applications does not allow revision of section 411(a)’s congressionally-composed text. View "Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC" on Justia Law
Matal v. Tam
The rock group “The Slants,” chose that name to dilute the term’s denigrating force as a derogatory term for Asians. The Patent and Trademark Office (PTO) denied an application for registration of the name under 15 U.S.C. 1052(a), which prohibits the registration of trademarks that may “disparage . . . or bring . . . into contemp[t] or disrepute” any “persons, living or dead.” The Supreme Court affirmed the Federal Circuit in finding the clause unconstitutional. The Court first rejected an argument that the clause applies only to natural or juristic persons. The Court then held that the clause is subject to the Free Speech Clause, which does not regulate government speech. Trademarks are private, not government speech. "If trademarks become government speech when they are registered, the Federal Government is babbling prodigiously and incoherently.” The disparagement clause denies registration to any mark that is offensive to a substantial percentage of the members of any group. That is viewpoint discrimination. The “public expression of ideas may not be prohibited merely because the ideas are themselves offensive to some of their hearers.” The disparagement clause cannot withstand even “relaxed” review. It does not serve a “substantial interest,” nor is it “narrowly drawn.” View "Matal v. Tam" on Justia Law
B&B Hardware, Inc. v. Hargis Indus., Inc.
Hargis tried to register its trademark for SEALTITE with the U.S. Patent and Trademark Office. B&B opposed registration, claiming that SEALTITE is too similar to B&B’s SEALTIGHT trademark. The Trademark Trial and Appeal Board (TTAB) concluded that SEALTITE should not be registered because of the likelihood of confusion. Hargis did not seek judicial review. Later, in an infringement suit, B&B argued that Hargis was precluded from contesting likelihood of confusion because of the TTAB’s decision. The district court disagreed. The Eighth Circuit affirmed. The Supreme Court reversed. If the other elements of issue preclusion are met, when the usages adjudicated by the TTAB are materially the same as those before a court, issue preclusion should apply. When Congress authorizes agencies to resolve disputes, issue preclusion applies except when a contrary statutory purpose is evident. Neither the Lanham Act’s (15 U.S.C. 1051) text nor its structure rebuts a presumption in favor of preclusive effect. There is no categorical reason why registration decisions can never meet the ordinary elements of issue preclusion. That many registrations will not satisfy those elements does not mean that none will. The same likelihood-of-confusion standard applies to both registration and infringement. The factors that the TTAB and the courts use to assess likelihood of confusion are not fundamentally different; the operative statutory language is essentially the same. Congress’ creation of an elaborate registration scheme confirms that registration decisions can be weighty enough to ground issue preclusion. View "B&B Hardware, Inc. v. Hargis Indus., Inc." on Justia Law
Posted in: Trademark
Hana Financial, Inc. v. Hana Bank
Hana Financial and Hana Bank both provide financial services to individuals in the U.S. When Hana Financial sued Hana Bank for trademark infringement, Hana Bank invoked the tacking doctrine, under which lower courts have provided that a trademark user may make certain modifications to its mark over time while, in limited circumstances, retaining its priority position. The district court adopted in substantial part the jury instruction on tacking proposed by Hana Bank. The jury returned a verdict in Hana Bank’s favor. Affirming, the Ninth Circuit explained that the tacking inquiry was an exceptionally limited and highly fact-sensitive matter reserved for juries, not judges. A unanimous Supreme Court affirmed. Whether two trademarks may be tacked for purposes of determining priority is a jury question. Lower courts have held that two marks may be tacked when they are considered to be “legal equivalents,” i.e., they “create the same, continuing commercial impression,” which “must be viewed through the eyes of a consumer.” When the relevant question is how an ordinary person or community would make an assessment, the jury is generally the decision-maker that ought to provide the fact-intensive answer. The “legal equivalents” test may involve a legal standard, but such mixed questions of law and fact have typically been resolved by juries. Any concern that a jury may improperly apply the relevant legal standard can be remedied by crafting careful jury instructions. View "Hana Financial, Inc. v. Hana Bank" on Justia Law
Already, LLC v. Nike, Inc.
Nike alleged that Already’s athletic shoes violated Nike’s Air Force 1 trademark; Already challenged the trademark. While the suit was pending, Nike agreed not to raise any trademark or unfair competition claims against Already or any affiliated entity based on Already’s existing footwear designs, or any future designs that constituted a “colorable imitation” of Already’s current products. Nike moved to dismiss its claims with prejudice and to dismiss Already’s counterclaim without prejudice. Already opposed dismissal of its counterclaim, indicating that Already planned to introduce new versions of its lines, that potential investors would not consider investing until Nike’s trademark was invalidated, and that Nike had intimidated retailers into refusing to carry Already’s shoes. The district court dismissed. The Second Circuit affirmed. The Supreme Court affirmed, finding the case moot. The breadth of the covenant suffices to meet the burden imposed by the “voluntary cessation doctrine.” The covenant is unconditional and irrevocable. Already did not establish that it engages in or has concrete plans to engage in activities that would arguably infringe Nike’s trademark yet not be covered by the covenant. The fact that some individuals may base decisions on hypothetical speculation does not give rise to the sort of injury necessary to establish standing. The Court rejected the “sweeping argument” that, as one of Nike’s competitors, Already inherently has standing because no covenant can eradicate the effects of a registered but invalid trademark. View "Already, LLC v. Nike, Inc." on Justia Law