A divided Eleventh Circuit panel affirmed a district court’s order granting summary judgment in favor of the defendant in a trademark dispute involving the Anti-Cybersquatting Consumer Protection Act (“ACPA”), Boigris v. EWC P&T, LLC, 2021 U.S. App. LEXIS 23399 (11th Cir. Aug. 6, 2021). The case further clarifies the test for whether marks are “confusingly…
Tag: Trademarks
“Pinnacle” Trademark Dispute Offers Lessons in Trademark Trial Procedure
The court vacated a $550,000 jury verdict in a trademark dispute teeming with procedural issues, Pinnacle Advertising & Marketing Group, Inc. v. Pinnacle Advertising & Marketing Group, LLC, 2021 U.S. App. LEXIS 22770 (11th Cir. Aug. 2, 2021), but kept alive the possibility of injunctive relief for the plaintiff on remand. The case is a…
Tax Service’s Registered Trademark’s Suggestiveness Presented Jury Question
In Engineered Tax Services, Inc. v. Scarpello Consulting, Inc., 2020 WL 2478863 (11th Cir. May 14, 2020), the Eleventh Circuit reversed and remanded the district court’s grant of summary judgment for Scarpello Consulting in a trademark dispute over the distinctiveness of the service mark “Engineered Tax Services,” citing previous rulings on substantive trademark law and its …
Monkey See, Monkey Do: Eleventh Circuit Affirms Decision that Defendant’s Gorilla Logo Infringed Plaintiff’s Trademark But Vacates Award of Defendant’s Profits
In PlayNation Play Systems, Inc. v. Velex Corp., 2019 WL 2180589 (11th Cir. May 21, 2019), the Eleventh Circuit considered whether the district court erred in determining that the defendant infringed the plaintiff’s trademark and in awarding damages in the form of the defendant’s profits and cancellation of the defendant’s trademark. Plaintiff sold children’s outdoor…
Defendant Sails to Victory in Trade Secret Case
In Yellowfin Yachts, Inc. v. Barker Boatworks, LLC, 2018 WL 3734344 (11th Cir. Aug. 7, 2018), the Eleventh Circuit upheld the dismissal of trade-secret claims related to the manufacture and sale of fishing boats. Yellowfin Yachts is a manufacturer of high-end fishing boats, allegedly known in the marketplace for the “swept sheer line” of their…
Foreign Companies Can Acquire U.S. Trademark Rights without Direct Sales to Consumers
Direct Niche, LLC v. Via Varejo S/A, 2018 WL 3687868 (11th Cir. Aug. 3, 2018), emphasizes that foreign companies can acquire trademark and service mark rights in the United States even without selling products directly to consumers domestically. Instead, contracts with third parties and publication of the mark are sufficient to confer rights. The Eleventh…
Eleventh Circuit Digs Deep to Revive SCAD Trademark Suit
In an October 3, 2017, opinion, a panel of the Eleventh Circuit reversed the Northern District of Georgia’s grant of summary judgment for the defendant in a trademark-infringement suit brought by Savannah College of Art and Design (SCAD). In Savannah College of Art and Design, Inc. v. Sportswear, Inc., 2017 WL 4369451, the court held…
Trademark Battle SCARs Between Assault Rifle Makers
A trademark dispute between assault rifle makers turned on whether promotional activities associated with an unregistered mark having no public sales are sufficient to establish prior analogous use, and whether that mark could acquire distinctiveness through secondary meaning based at least in part on these promotional activities. FN Herstal SA v. Clyde Armory Inc., 2016…