Justia Intellectual Property Opinion Summaries

Westmont Living, Inc., a California corporation operating retirement communities and assisted living facilities, filed a lawsuit against Retirement Unlimited, Inc. (RUI), a Virginia corporation, alleging trademark infringement. Westmont Living claimed that RUI's use of the name "The Westmont at Short Pump" for its new facility in Virginia created a likelihood of confusion with Westmont Living's federally registered "Westmont Living" trademarks, violating the Lanham Act and related laws. Westmont Living sought an injunction and damages.The United States District Court for the Eastern District of Virginia granted summary judgment in favor of RUI, concluding that consumer confusion was impossible because the parties operated in entirely distinct geographic markets. The court relied on the Second Circuit's decision in Dawn Donut Co. v. Hart’s Food Stores, Inc., which held that no likelihood of confusion exists when parties use their marks in separate and distinct markets.The United States Court of Appeals for the Fourth Circuit reviewed the case and vacated the district court's judgment. The Fourth Circuit held that the district court erred by relying solely on the geographic separation of the parties' physical facilities without considering other relevant factors that might bear on the likelihood of confusion. The court emphasized that modern advertising and the national scope of both parties' marketing efforts necessitate a broader analysis. The Fourth Circuit remanded the case for further proceedings to consider the various factors relevant to determining the likelihood of confusion, including the parties' competitive marketing, the locations from which they solicit and draw customers, and the scope of their reputations. View "Westmont Living, Inc. v. Retirement Unlimited, Inc." on Justia Law

Jason and Kacie Highsmith hired Shelter, LLC to manage a home renovation project and later contracted with Design Gaps, Inc. to design and install cabinets and closets. The contracts required arbitration for disputes but did not specify completion dates. Design Gaps failed to meet multiple promised deadlines, leading the Highsmiths to terminate the contracts and hire another company. The Highsmiths shared Design Gaps' copyrighted drawings with the new contractor. They then filed for arbitration, alleging breach of contract and other claims, while Design Gaps counterclaimed for various issues, including copyright infringement.The arbitrator held a three-day hearing, during which the Highsmiths presented multiple witnesses, while Design Gaps only presented David Glover. The arbitrator found in favor of the Highsmiths, awarding them damages and attorney’s fees, and denied Design Gaps' counterclaims, including the copyright claim, citing fair use and lack of evidence for copyright registration.Design Gaps petitioned the United States District Court for the District of South Carolina to vacate the arbitration award, arguing the arbitrator disregarded the law and failed to issue a reasoned award. The district court denied the petition and confirmed the arbitration award, also granting the Highsmiths' motion for attorney’s fees.The United States Court of Appeals for the Fourth Circuit reviewed the case. The court dismissed the appeal, citing lack of federal jurisdiction based on the precedent set in Friedler v. Stifel, Nicolaus, & Co., which held that federal courts do not have jurisdiction over motions to vacate arbitration awards unless there is an independent basis for federal jurisdiction beyond the Federal Arbitration Act. The court concluded that the petition did not meet this requirement. View "Design Gaps, Inc. v. Shelter, LLC" on Justia Law

Moke America LLC and Moke International Limited, along with Moke USA, LLC, are competing for the U.S. trademark rights to the "MOKE" mark, used for their low-speed, open-air vehicles. The U.S. District Court for the Eastern District of Virginia found that "MOKE" is a generic term for these vehicles, meaning it cannot be a trademark owned by either party. This finding was based on the history of the Moke vehicles, which were originally produced by the British Motor Corporation (BMC) and later by other manufacturers, and the term "Moke" becoming synonymous with a style of vehicle.The district court's decision followed a bench trial where Moke America failed to prove its priority of use. The court then considered whether the MOKE mark was distinctive or generic. Both parties argued that the mark was inherently distinctive, but the court found it to be generic based on the evidence presented, including the parties' marketing efforts and the testimony of a Moke America witness.The United States Court of Appeals for the Fourth Circuit reviewed the case and concluded that the district court correctly placed the burden on the parties to prove that "MOKE" is not a generic term. However, the Fourth Circuit found that the evidence was insufficient to either affirm or outright reverse the district court's finding of genericness. The court noted that more evidence is needed to determine whether "MOKE" is a generic term or an inherently distinctive mark that was abandoned by its original owner, BMC.The Fourth Circuit vacated the district court's judgment and remanded the case for further proceedings to gather additional evidence on the distinctiveness or genericness of the "MOKE" mark. The parties will continue to bear the burden of proving that the mark is not generic. The court suggested that appointing a disinterested expert witness might be helpful in resolving the issue. View "Moke America LLC v. Moke International Limited" on Justia Law

The Fourth Circuit affirmed the grant of summary judgment to Agadir in Grayson O's trademark and unfair competition action. Grayson O sells products designed to protect hair from heat during styling, and owns a federal trademark registration for the mark "F 450." The Fourth Circuit found that Grayson O's mark was both conceptually and commercially weak; even if "450" was a separable, dominant part of Grayson O's mark, given the many other differences between Grayson O's and Agadir's marks, the district court correctly concluded that the marks were not similar; Grayson O failed to demonstrate that Agadir had an intent to infringe; and Grayson O failed to present evidence of actual confusion. View "Grayson O Company v. Agadir International" on Justia Law