SDNY: The Fashion Exchange v Hybrid Promotions 14-1354 (Judge Stein).

Plaintiff’s hard drive and server were “fried in some unknown fashion” so it couldn’t establish its damages (page 4). There doesn’t seem to be a lot of other evidence on other aspects of the lawsuit, either. Defendant’s summary motion as to damages granted.

The decision contains a pretty extensive listing of the types of damages possible under the Lanham Act.

Text of decision in The Fashion Exchange v Hybrid Promotions: the fashion exchange damages sdny

The Solicitor General has advised SCOTUS to grant cert in Abitron Austria v Hetronic (brief below). It thinks the 10th Circuit got it wrong under Steele v Bulova. It thinks this is a good vehicle for determining the geographic scope of the Lanham Act.

Petitioner Abitron’s introduction in its petition (HT ScotusBlog):

Petitioners—all foreign nationals—were subjected to a $90 million damages award under the Lanham Act, 15 U.S.C. § 1051 et seq., for allegedly infringing respondent’s U.S. trademarks. While trademark rights are distinctly territorial, the accused sales occurred almost entirely abroad. Of approximately $90 million in sales, 97% were purely foreign: They were sales in foreign countries, by foreign sellers, to foreign customers, for use in foreign countries, that never reached the United States or confused U.S. consumers. The Tenth Circuit nonetheless held that the Lanham Act applies extraterritorially to all of petitioners’ foreign sales. Recognizing that the circuits have splintered in this area, the Tenth Circuit adopted an expansive view that other courts, including the Fourth Circuit, have concededly rejected. Under the Tenth Circuit’s view, the Lanham Act applies extraterritorially whenever foreign defendants’ foreign conduct allegedly diverts foreign sales from a U.S. plaintiff. Such an effect, the court held, sufficiently affects U.S. commerce because it prevents foreign revenue from flowing into the U.S. economy. The question presented is: Whether the court of appeals erred in applying the Lanham Act extraterritorially to petitioners’ foreign sales, including purely foreign sales that never reached the United States or confused U.S. consumers.

The SG has restated the question as:

Whether, under Sections 32(1)(a) and 43(a)(1)(A) of the Lanham Act, the owner of a U.S.-registered trademark may recover damages for uses of that trademark that occurred outside the United States and that were not likely to cause consumer confusion in the United States.

There have been studies over the years suggesting that SCOTUS agrees with the SG up to 80% of the time, however those studies are dated. More recent studies have much smaller data sets, enough for a rash of high-profile SCOTUS cases to skew the result. So the odds of cert being granted have risen considerably but I won’t guess as to how much.

Hetornics – SG brief recommending cert

P AND P IMPORTS LLC V. JOHNSON ENTERPRISES, LLC, No. 21-55013 (9th Cir. Aug 24 2022). Link to text of decision below.

Court refers to both litigants’ backyard “4 in a row” games as “CONNECT 4 knock-offs.” Ninth Circuit reverses defendant’s summary judgment. Too much evidence suggesting defendant’s intentional copying. Also: District Court had erroneously required evidence of secondary meaning linking product to this specific plaintiff, rather than evidence merely linking the product to a single, albeit anonymous, source.

Reversed and remanded.

There’s no finding as to functionality of trade dress.

Out of curiosity, I used “backyard Connect 4” as a search term in Amazon and got these results:

Text of P AND P IMPORTS LLC V. JOHNSON ENTERPRISES, LLC, No. 21-55013 (9th Cir. 2022): ninth circuit connect4 trade dress p and p johnson

Lederman v. The Hershey Company, No. 1:2021cv04528 – Document 43 (N.D. Ill. 2022)

Plaintiff asserts that hot fudge topping would contain the ingredients essential to hot fudge – cream and whole milk. She asserts that the quality of fudge depends on the amount and type of fat-contributing ingredients and that those fat ingredients are typically from dairy or vegetable oils.

These are the ingredients of Hershey Hot Fudge topping:

This product contains skim milk and whey milk. The consistency is derived from vegetable fat. Accordingly, plaintiff alleges that the labeling of this product as hot fudge topping is deceptive.

The standard is whether a reasonable consumer – is there a probability that a significant portion of the general consuming public or of targeted consumers acting reasonably in the circumstances could be misled. How do real consumers understand and react to the advertising.

Plaintiff cited to dictionaries, recipes, and confectionery experts to define fudge as being cream and whole milk-based. The court held that this was merely an understanding across random sub groups.

Rather, plaintiff needed to show that a significant portion of the general consuming public and there was no such showing. Motion to dismiss granted however with leave to replead.

Text of Lederman v Hershey: lederman v hershel d ill hot fudge

Jacobs v. Whole Foods Market Group, Inc., No. 1:2022cv00002 – Document 27 (N.D. Ill. 2022)

Plaintiff sues, based on the disparity between the box size of rice pilaf and the amount of product. The empty space is known as “slack fill.”

Defendant notes that the box clearly identifies the weight and number of servings.

Plaintiff cites Benson v. Fannie May Confections Brands, Inc., 944 F.3d 639 (7th Cir. 2019) for the proposition that the presence of an accurate net weight statement does not eliminate the misbranding that occurs when a container is made, formed, or filled so as to be misleading.”

However, the court notes:

Benson involved boxed, ready-to-eat chocolates. As the court explained, a consumer might reasonably expect to be able to estimate the approximate number of chocolates in a particular box based on the box size . . . But any reasonable consumer surely knows that rice pilaf sold in a box must be cooked in water or another liquid prior to consumption, and understands further that the cooking process will cause the rice to expand in volume. In other words, a reasonable consumer expects the size of the box to bear only a loose relationship to the amount of cooked product its contents will yield. Accordingly, a shopper uncertain about how many boxes of rice pilaf to buy for the family dinner would know not to rely on the size of the box and would look for additional information of precisely the kind plaintiff admits defendant’s rice pilaf box contains: the number of servings each box will produce based on a specified serving size. Because that information dispels any tendency to mislead that the box size alone might create, there is no deception as a matter of law.

Text of Jacobs v Whole Foods: nd ill rice pilaf

Brothers and Sisters in Christ v. Zazzle, Inc., No. 21-1917 (8th Cir. 2022)

From Justia:

Brothers and Sisters in Christ, LLC (BASIC) allege that Zazzle, Inc. sold a t-shirt that infringed on BASIC’s federal trademark. The district court granted Zazzle’s motion to dismiss for lack of personal jurisdiction. The Eighth Circuit affirmed. The court explained that BASIC bears the burden of establishing a prima facie showing of jurisdiction. Further, where the applicable federal statute, here the Lanham Act, does not authorize nationwide personal jurisdiction the existence of personal jurisdiction depends on the long-arm statute of the forum state and the federal Due Process Clause.

Here, the court looked to Zazzle’s contacts with Missouri related to BASIC’s claims. Aside from the single t-shirt sale, BASIC fails to allege a connection between Zazzle’s other contacts with Missouri and the underlying suit. BASIC does not allege that Zazzle’s other activities in Missouri involved trademark infringement or that Zazzle sold additional trademark-infringing goods into the state. Further, BASIC has not alleged that Zazzle took such purposeful, targeted action toward Missouri or Missouri consumers. Although Missouri has an interest in this litigation because the allegedly injured plaintiff is a Missouri company, the convenience of the parties is neutral, as Zazzle would be inconvenienced by litigation in Missouri and BASIC would likely be inconvenienced in an alternate forum. In sum, BASIC has failed to allege that Zazzle could reasonably anticipate being haled into court in Missouri.

Text of decision in Brothers and Sisters in Christ v Zazzle (8th Cir 2022)”
specific jurisdiction missouri eight circuit

File this next to last month’s RISE case in the Second Circuit, under “Brands with strong housemarks defeat reverse confusion claims.”

But see the 11th Circuit Amazon FYRE case.

Text of Align Activation v LuluLemon Athletica, 21-55775 (Ninth Cir. August 9, 2022):

align lululemon ninth circuit

RISE for nitro-brewed canned coffee against MTN DEW RISE for energy drink. 2d Circuit held that District Court made a significant error in holding that RISE was inherently string and had acquired strength.

Text of Second Circuit decision in RiseandShine v Pepsi:

riseandshine v pepsi 2d cir re RISE

BBK Tobacco & Foods LLP, Plaintiff, v. Central Coast Agriculture Incorporated, et al., Defendants, No. CV-19-05216-PHX-MTL (07/19/2022)

Defendant’s motion for summary judgment granted. Def. uses RAW GARDEN for cannabis extracts, plaintiff sells tobacco and rolling paper under the RAW mark.

Comprehensive discussion of admissibility of testimony from various types of experts, including discussion of SQUIRT v EVEREADY surveys.

Comprehensive discussion of Ninth Circuit Sleekcraft factors.

“In the instant case, five factors favor CCA, including the weighty similarity of the marks, strength of the mark, and evidence of actual confusion factors. One factor, the degree of care exercised by consumers, is neutral, while only two factors, the proximity of the parties’ goods and marketing channels used, favor BBK. See Surfvivor Media, Inc. v. Survivor Prods., 406 F.3d 625, 634 (9th Cir. 2005) (concluding that “[t]he distribution of the Sleekcraft factors does not raise a material issue of fact regarding likelihood of confusion” where only two factors weighed in plaintiff’s favor); see also M2 Software, 421 F.3d at 1081–83, 1085 (affirming grant of summary judgment when strength of the mark, similarity of the mark, and proximity of the goods factors all favored plaintiff because the others favored defendant). Given the obvious and significant differences between the parties’ marks, the absence of actual confusion, and the low net confusion rates generated by the parties’ surveys, the Court concludes that no reasonable jury could find for BBK on the likelihood of confusion issue. See Cohn, 281 F.3d at 842 (affirming grant of summary judgment where plaintiff’s “evidence fail[ed] to create a genuine issue that confusion is probable, not simply a possibility”); see also Brookfield Commc’ns, 174 F.3d at 1054 (“Where the two marks are entirely dissimilar, there is no likelihood of confusion.”); Collins v. U.S. Dep’t of Veterans Affs., 497 F. Supp. 3d 885, 900 (S.D. Cal. 2020) (“Plaintiffs have failed to demonstrate a triable issue of material fact as to a necessary element of their trademark infringement claims.”).”

Text of decision in BBK v Central Coast Agriculture: D Arizona SJ RAW GARDEN 2_19-cv-05216-MTL_443_PRIMARY DOCUMENT

MATTEL, INC. v. WWW.FISHER-PRICE.ONLINE, No. 1:2021cv09608 (S.D.N.Y. 2022) (Liman, J.)

Mattel wins default judgment over unknown Chinese cyber-squatter/counterfeiter.

Personal jurisdiction established through attempt at trap-buy.

TRO had been entered against financial institution, permanent asset freeze entered against institutions in active cooperation with defendant’s operation of the website.

Text of decision in Mattel v Fisher-Price.Online: mattel fisher price online default sdny