Sköld coined the name “Restoraderm” for a proprietary drug-delivery formulation that he developed for potential use in skin-care products. He entered into a 2001 letter of intent with CollaGenex, a skin-care company, stating that “[a]ll trademarks associated with the drug delivery system … shall be applied for and registered in the name of CollaGenex and be the exclusive property of CollaGenex.” Their 2002 contract reiterated those provisions and stated that termination of the agreement would not affect any vested rights. With Sköld’s cooperation, CollaGenex applied to register the Restoraderm mark. Under a 2004 Agreement, Sköld transferred Restoraderm patent rights and goodwill to CollaGenex, without mentioning trademark rights. After Galderma bought CollaGenex it used Restoraderm as a brand name on products employing other technologies. In 2009, Galderma terminated the 2004 Agreement, asserting that it owned the trade name and that Sköld should not use the name. Sköld markets products based on the original Restoraderm technology that do not bear the Restoraderm mark. Galderma’s Restoraderm product line has enjoyed international success. Sköld sued, alleging trademark infringement, false advertising, unfair competition, breach of contract, and unjust enrichment. Only Sköld’s unjust enrichment claim was successful. The Third Circuit reversed in part, absolving Galderma of liability. The 2004 agreement, rather than voiding CollaGenex’s ownership of the mark by implication, confirmed that CollaGenex owned the Restoraderm mark. Galderma succeeded to those vested rights. View "Skold v. Galderma Laboratories L.P." on Justia Law
Parks was founded in the 1950s and was the first African-American-owned company to be publicly traded on the NYSE. Parks engaged in radio and television advertising, using a well-known slogan, “More Parks Sausages, Mom, Please.” Though the PARKS brand had likely developed prominence sufficient for common law trademark protection before 1970, the name was not registered in the Patent and Trademark Office until 1970. In the early 2000s, Parks failed to renew the registration. Following the death of its owner, the company had fallen on hard times and had licensed the production and sale of its products. In 2014, Tyson, the owner of the BALL PARK brand, launched a premium frankfurter product called PARK’S FINEST. Parks sued, alleging false advertising and trademark infringement. The district court determined that the false advertising claim was a repetition of the trademark claim and that the PARKS mark was too weak to merit protection against Tyson’s use of PARK’S FINEST. The Third Circuit affirmed. The fact that the PARKS mark has existed for a long time and that it enjoyed secondary meaning half a century ago cannot overcome the factors against Parks. There is almost no direct-to-consumer advertising; Parks has a minuscule market share, and there is practically no record of actual confusion. View "Parks LLC v. Tyson Foods Inc" on Justia Law
Covertech manufactures and sells reflective insulation under its rFOIL brand—its U.S. trademark, registered since 2001. The umbrella rFOIL brand includes ULTRA. In 1998, TVM, a distributor, and Covertech entered into a verbal agreement, designating TVM as the exclusive U.S. marketer and distributor of Covertech’s rFOIL products. In 2007, Covertech terminated the agreement. TVM was consistently late with payment; Covertech discovered TVM had been purchasing comparable products from Reflectix, and passing off some of them as Covertech’s. The parties entered a new agreement, under which Covertech manufactured products for TVM to sell under the TVM brand name; Covertech also continued to sell TVM rFOIL products for resale using Covertech’s product names. TVM violated its agreement to refrain from buying competitors’ products. After Covertech learned of TVM’s illicit purchases, the parties terminated their relationship. Covertech began to sell its products directly in the U.S. Covertech unsuccessfully tried to persuade TVM to stop using rFOIL brand names. The Canadian Intellectual Property Office registered the ULTRA mark in 2010. In 2011, TVM registered ULTRA as its U.S. trademark. Covertech filed an adverse petition with the PTO and filed suit. The district court granted Covertech judgment and awarded damages, 15 U.S.C. 1117(a), (c), applying the “first use test,” and rejecting a defense of acquiescence. The Third Circuit affirmed as to ownership, citing the rebuttable presumption of manufacturer ownership that pertains where priority of ownership is not otherwise established, but vacated as to damages. The district court incorrectly relied on gross sales unadjusted to reflect sales of infringing products to calculate damages. View "Covertech Fabricating Inc v. TVM Building Products Inc" on Justia Law
Following a generally favorable result in the district court, Motel 6 appealed, arguing that the district court erred interpreting the Lanham Act’s anticounterfeiting penalties not to reach the use of the Motel 6 mark without permission and in failing to award prejudgment interest to Motel 6. The Third Circuit vacated as to those issues. The lower court interpreted the Lanham Act too narrowly and contrary to the weight of persuasive authority concerning treble damages under 15 U.S.C. 1117(b). On remand the court must determine whether “extenuating circumstances” exist such that treble damages would not be appropriate. While the court was not required to award prejudgment interest once it found the case exceptional for purposes of attorney’s fees and costs under Section 1117(a), it may do so after reconsidering the counterfeiting issue. View "Motel 6 Operating LP v. HI Hotel Group LLC" on Justia Law
In 2012 Navajo Nation sued for trademark infringement, alleging that Urban Outfitters “advertised, promoted, and sold goods under the ‘Navaho’ and ‘Navajo’ names and marks” on the Internet and in retail stores “[s]ince at least March 16, 2009.” Urban Outfitters tendered the complaint to its insurers. OneBeacon provided commercial general and umbrella liability coverage to Urban Outfitters until July 7, 2010, with “personal and advertising injury” coverage. On July 7, 2010, Hanover became the responsible insurer under a “fronting policy.” On July 7, 2011 Hanover issued separate commercial general liability and umbrella liability policies to Urban Outfitters. The “fronting policy” and Hanover-issued policies excluded coverage for “personal and advertising injury” liability “arising out of oral or written publication of material whose first publication took place before the beginning of the policy period.” After providing a reservation of rights letter, informing Urban Outfitters of Hanover and OneBeacon’s joint retention of defense counsel, Hanover obtained a judicial a declaration that it was not responsible for defense or indemnification. The Third Circuit affirmed.The “prior publication” exclusion of liability insurance contracts prevents a company from obtaining ongoing insurance coverage for a continuing course of tortious conduct. Urban Outfitters engaged in similar liability-triggering behavior both before and during Hanover’s coverage period. View "Hanover Ins. Co v. Urban Outfitters Inc" on Justia Law
Capital is a Delaware holding company, whose subsidiaries, Arrowood Indemnity and Arrowood Surplus Lines Insurance, provide insurance and investment-related financial services throughout the United States under the Arrowpoint Capital name. Capital unsuccessfully sought to enjoin AAM from using a logo or word mark employing the name “Arrowpoint” in connection with any investment-related products and services. The Third Circuit vacated and remanded, finding that the lower court employed an overly narrow interpretation of the kind of confusion that is actionable under the Lanham Act, 15 U.S.C. 1114. The court .failed to hold an evidentiary hearing, or to adequately set forth its rationale for discounting Capital’s evidence, or to hear oral argument, View "Arrowpoint Capital Corp v. Arrowpoint Asset Mgmt., LLC" on Justia Law
Dissatisfied with the settlement of a trademark case, plaintiffs filed suit on March 30, 2009 in the Superior Court of New Jersey, alleging legal malpractice and related claims. The complaint was served on one defendant on April 14, but others (law firm) were served on April 23. More than 30 days after the first defendant was served but less than 30 days after the law firm was served, the law firm filed a notice of removal. On May 22, plaintiffs filed a motion to remand the action to state court. The federal district court denied remand, finding that the removal was timely under the later-served rule. The Third Circuit affirmed. The later-served rule, under which each defendant gets his own 30-day window, represents a better reading of the language of 28 U.S.C. 1446(b) and results in more equitable treatment to later-served defendants. View "Delalla v. Hanover Ins. Co" on Justia Law
Two multi-national distilleries have engaged in a lengthy dispute over the use of the words "Havana Club" to sell rum in the United States. Most recently the district held that defendant's use of the words on its label is not a false advertisement of the rum’s geographic origin under Section 43(a)(1)(B) of the Lanham Act, 15 U.S.C. 1125(a)(1)(B). The Third Circuit affirmed, holding that no reasonable interpretation of the label as a whole, which includes a statement that it is "distilled and crafted in Puerto Rico," could lead a reasonable consumer to a false or misleading conclusion. The court declined to address whether the term is subject to trademark protection.
The state notified a concert promoter that use of two names might violate New Jersey trademark laws. The promoter provided evidence of common law trademarks, but the state notified the hotel venue to advertise the shows as a "tribute" or "salute" to named groups. The promoter filed suit, claiming that the state's enforcement violated the federal Lanham Act, 15 U.S.C. 1125 and its civil rights. The district court entered a temporary restraining order, but the state changed its position. The court did not issue an injunction and denied attorney fees under 42 U.S.C. 1988. The Third Circuit affirmed, rejecting arguments under the "catalyst" theory and holding that the promoter was not a "prevailing party." Even the judge did not consider the TRO an enforceable judgment on the merits and the state's change of position mooted the constitutional issues.