Posts Tagged: "trade dress"

Third Circuit Cancels Watermelon Candy Trademark in Precedential Functionality Decision

On September 7, the U.S. Court of Appeals for the Third Circuit issued a precedential decision on trademark functionality doctrine in PIM Brands Inc. v. Haribo of America Inc. In affirming the district court’s grant of summary judgment, the Third Circuit found that PIM’s federally registered trademark to a wedge-shaped candy with green, white and red stripes should be canceled because the mark as a whole identifies the candy’s flavor.

What Not to Look For: Establishing Secondary Meaning in Product Design Trade Dress

Brand owners frequently encounter significant challenges in obtaining federal trade dress registration. The recent ruling in the Eastern District of Virginia confirmed that TBL Licensing, LLC, the brand owner of Timberland boots, was not an exception to this struggle. Unlike a word mark, a product design can never be inherently distinctive as a matter of law because consumers are aware that such designs are intended to render the goods more useful or appealing rather than identifying their source. Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 212-213 (2000). In order to obtain a federal trademark registration for a product design, the applicant must establish secondary meaning.

Federal Circuit Affirms Preliminary Injunction for CPAP Company

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential decision affirming the grant of a narrowly-tailored preliminary injunction to SoClean, Inc., a medical device company that makes CPAP machines, based on trademark infringement claims against Sunset Healthcare Solutions, Inc. SoClean alleged in 2021 that Sunset infringed its U.S. Trademark Registration No. 6,080,195. The registration covers the configuration of replacement filters for its sanitizing devices.

Sixth Circuit Rules District Court Didn’t Provide Sufficient Justification in Failing to Apply Safe-Distance Rule in Jeep Trade Dress Case

On September 19, the U.S. Court of Appeals for the Sixth Circuit issued a decision in Mahindra & Mahindra Ltd. v. FCA US, LLC vacating the Eastern District of Michigan’s denial of permanent injunction against a redesigned version of an off-road vehicle manufactured by Mahindra. The Sixth Circuit, in an opinion authored by Senior Circuit Judge Helene E. White, found that the district court abused its discretion in failing to apply the “safe-distance rule” in determining whether to enjoin Mahindra, which had marketed an earlier version of the vehicle that was found to infringe trade dress protections on Jeep off-road vehicles.

Eleventh Circuit Upholds Sanctions in Energy Drink Dispute for Failure to Provide Computation of Damages

On Wednesday, August 3, the U.S. Court of Appeals for the Eleventh Circuit affirmed a district court’s ruling against Vital Pharmaceuticals, Inc. (VPX) in the form of sanctions for violating its discovery obligations in a trade dress dispute with Monster Energy Company. The Eleventh Circuit also denied Monster’s motion for sanctions in the form of attorney’s fees and double costs.