Acquiring Secondary Meaning: Manufacturing or Marketing/Distribution

Knights Armament Co. v. Optical Sys. Tech. Inc., No. 09-14480 (11th Cir. Sept. 2, 2011)

Appellant Optical Systems Technology Inc. (OSTI) and Appellees Knights Armament Company and its owner C. Reed Knight Jr. claimed ownership of the trademarks used in the manufacturing (OSTI) and marketing (KAC) of clip-on night vision devices: “Universal Night Sight” and “UNS”. The first part of the appeals affirmed the summary judgment summary judgment against OSTI in their claim for misappropriation of trade secrets in violation of FUTSA.  The second part of the appeal examined OSTI’s claim against KAC and Knight under U.S.C Section 1125(a) for trademark infringement, and under state and common law. The trial court found that there was no genuine issue of material fact as to the priority of the mark. The appeals court agreed. The appeals court decided the only remaining issue of fact was the extent of OSTI’s protected ownership of the mark. The appeals court affirmed the district court’s decision that the mark was descriptive. The appeals court stated that any party seeking trademark protection of a descriptive mark must demonstrate that the mark acquired secondary meaning before the alleged infringer first began use of the mark. Here, the district court found that any confusion n the marketplace was caused by the failure of both parties to identify each of their marks clearly in the key time period. Also, there was no indication that the UNS mark belonged to OSTI instead of KAC. So, consumers had no reason to associate OSTI’s mark with the product. Thus the court stated the mark was not distinctive because it had not acquired secondary meaning. The court found that OSTI owns the mark, but has no protectable rights in the mark because it is descriptive without secondary meaning.

Retaining Jurisdiction over a Settlement Agreement in a Trademark Infringement Case

Vraiment Hospitality, LLC v. Todd Binkowski. No. 8:11-cv-1240-T-33TGW (Mid. Dist. Tampa, Sept. 23, 2011)

Plaintiff Vraiment made a Motion to Enforce Settlement Agreement and Defendants filed a Reply in opposition. The parties had informed the court of the settlement on July 6, 2011m. The court ordered the case dismissed without prejudice, to re-open the action within 60 days, upon cause shown, or to submit to a stipulated form of final judgment. Vraiment so moved within 60 days to enforce the Settlement Agreement. However, the district court stated it is without jurisdiction to enforce the settlement agreement because it did not retain jurisdiction over the settlement agreement and because it did not incorporated the terms of the Settlement Agreement into the order. So enforcement of the Settlement Agreement is in the jurisdiction of the state courts. In its Motion, Vraiment requested to reopen the case for the sole purpose of having an evidentiary hearing on the Defendant’s failure to comply with the terms of the Settlement Agreement. However, the district court construed the Plaintiff’s Motion as one to re-open the case in the alternative. The district court ruled that the Plaintiff’s Motion to Enforce Settlement Agreement is denied. The Clerk was directed to reopen the case. The parties were directed to schedule a continuation of the hearing on the motion for preliminary injunction.

Rockers vs. Bikers: Likelihood of Confusion

Blackwall Group, LLC v. Sick Boy, LLC, 2011 U.S. Dist. LEXIS 19808 (M.D. Fla. Feb. 11, 2011)


Plaintiff Blackwall Group, LLC (“Blackwall”) operates “Sickboy’s Bad Habit Lounge”, a Daytona Beach, Florida restaurant and bar filed a Motion for Preliminary Injunction against Defendant Sick Boy, LLC (“SBLLC”) a purveyor of apparel and accessories including the mark “Sick Boy”. SBLLC then filed a motion in opposition. Blackwall had filed the suit seeking a declaratory judgment that its trade name, domain name, and logo artwork do not infringe on SBLLC's trademark. SBLLC disagrees and has counterclaimed, contending that Blackwall's activities have caused confusion and infringe on its trademark. By way of its motion in opposition, SBLLC seeks to enjoin any further (alleged) infringement.

Blackwall does not dispute the validity of SBLLC’s federally registered trademark. Therefore, the sole issue was whether there is likelihood of confusion according to the seven factors in the 11th Circuit. For the first factor, the strength of the mark, SBLLC argues that “Sick Boy” is arbitrary or fanciful as applied to clothing and accessories. Blackwall did not dispute this and rather contended that the mark has been weakened by third party use. Although Blackwall presented evidence of “Sick Boy” appearing on other companies’ apparel and accessories, the court determined that the record did not prove the third party use to be excessive or widespread enough to significantly weaken the mark.

For the second factor, the similarity of marks, the court found they were only somewhat similar. Blackwall used the entire phrase “Sick Boy’s Bad Habit Lounge” all the time, whereas SBLLC merely used the two words “Sick Boy”. Also, Blackwall’s mark includes a picture of a flaming vinyl record which is suggestive of its rock music theme. In contrast, the court reasoned, SBLLC motorcycle products include a motorcycle cross and skull. These elements did not overlap between the Plaintiff’s and Defendant’s marks. The court distinguished between marks for rock theme and motorcycle lifestyle.

The court found very little similarity between goods and services because the bar did not sell merchandized t-shirts or caps.

For the fourth factor, the court found that the sales outlets and customers of both parties were distinct. Blackwall marketed mainly through its brick and mortar restaurant in Daytona Beach and does not offer items for sale on its website. Even thgouh SBLLC offered items for sale at “Bikeoberfest” in Daytona Beach, this was not held to be significant. “Although both are associated in some fashion with live rock music, at least arguably that music is part of the product that Blackwall is selling, while SBLLC uses that music to promote the sale of its actual product -- i.e., clothing and accessories. To look at the customer bases a different way, a single individual could obviously be included in both parties' target audiences. In that sense, there is some overlap. But it would not appear that someone would be less likely to buy one of the Defendants' t-shirts because he or she had a burger and a beer at the Plaintiff's establishment, or vice versa. From that perspective, there is little overlap between the parties' customer bases.”

For the Similarity of advertising methods, the court noted that both companies attracted companies by rock music: Blackwall hosted bands and SBLLC sponsored bands. However, the court found that the “ubiquity” of this advertising method weighed against a significant similarity of advertising methods.

The court also found no intentional misappropriation of on the part of Blackwall.

Finally, there was not enough evidence of actual confusion, even though SBLLC provided affidavits from a few of its customers. The court further explained, “There is no evidence that anyone had dinner or drinks at Sick Boy's Bad Habit Lounge because they believed that it was owned by or affiliated with Sick Boy Motorcycles or SBLLC. Indeed, the very fact that individuals were asking the question could suggest the opposite conclusion -- i.e., that they had not been misled into believing the businesses were affiliated.”

The motion on the part of SBLLC was denied due to lack of a showing of likelihood of confusion and thus not proving substantial likelihood of success on the merits.

Investigator's Evidence Proof for Temporary Restraining Order for Infringing Website and Counterfeit Goods

Bottega Veneta Int'l, S.A.R.L. v. Xuefeng Pan, 2011 U.S. Dist. LEXIS 2264 (S.D. Fla. Jan. 5, 2011)




Plaintiff Bottega Veneta International, S.A.R.L.'s (“Bottega”) filed an Ex Parte Application for Entry of a Temporary Restraining Order and Preliminary Injunction against Xuefeng Pan (“Xuefeng”), d/b/a the website bottegavenetas.com. Bottega manufactures and designs luxury leather goods, handbags and apparel; and owns the appropriate registered trademarks. Xuefeng offered counterfeit Bottega goods on the allegedly infringing website. The website was discovered by investigators for Bottega. No counsel for Xuefeng appeared at the hearing. The court found the evidence was strong enough to prove likelihood of success on the merits and entered the preliminary injunction.

Pandora's Box, False Designation of Origin & Standing of Non-Exclusive Licensees

Pandora Jewelers 1995, Inc. v. Pandora Jewelry, LLC, 2010 U.S. Dist. LEXIS 138384 (S.D. Fla. Dec. 21, 2010)




The Plaintiff, Pandora Jewelers, Inc., has been in the business of selling and marketing jewelry from its retail store in Deerfield Beach, Florida since 1976. The Plaintiff has used the service mark PANDORA to market, sell, consign, appraise, clean, and repair jewelry. The Defendant, Pandora Jewelry, LLC, manufactures and sells jewelry under the name PANDORA to dealers in the South Florida region. The Defendant also licenses the operation of retail jewelry stores under the mark PANDORA, and has recently opened its own retail jewelry stores. Defendants Carrie Ventures and HB Retail are individual retail jewelry stores that operate under the mark PANDORA pursuant to a license agreement with Defendant Pandora LLC. Pandora LLC owns several Federal Trademark Registrations for the PANDORA trademark, and has several federal trademark applications pending.



One of the critical issues on the Affirmative Defenses of Defendants Carrie Ventures and HB Retail was whether these Defendants, as nonexclusive licensees, are in a position to assert the rights (and defenses) of the licensor, Pandora LLC.



According to the standard in the 11th Circuit, a claim for false designation of origin under Section 43(a) of the Lanham Act may be brought "by any person who believes that he or she is or is likely to be damaged" by the false designation of origin. 15 U.S.C. § 1125(a)(1); Phoenix of Broward, Inc. v. McDonald's Corp., 489 F.3d 1156, 1163 (11th Cir. 2007). Since the question of standing is broad under Section 43(a), the Defendants, as nonexclusive licensees, would have standing to bring a false designation of origin claim, asserting the rights of Pandora LLC, the licensor. This Court reasoned, “It naturally follows, that these Defendants must also be able to assert the defenses of Pandora LLC in defending a false designation of origin claim. The Defendants, as licensees, are standing in the shoes of Pandora LLC, as licensor. Just as these Defendants, as licensees, would be permitted to use a Section 43(a) claim as a sword, these Defendants may use the equitable defenses, applicable to Pandora LLC, as a shield in defending the Plaintiff's Section 43(a) claim.”



This Court also determined that the Defendants Affirmative Defenses adequately allege all of the essential elements of the defenses, and do not merely contain conclusory statements. Thus, the Plaintiff's motion to strike affirmative defenses two through nine was denied.

Famous Brands: Infringement, Priority, and Discovery Violations

Lucky Brand Dungarees Inc., et al. v. Ally Apparel Resources LLC, USDC SDNY. Case No. 1:2005cv067 (May 5, 2010). not cited on Westlaw.




Lucky Brand sued Marcel Fashion Group Inc., owners of the “GET LUCKY” apparel line and its licensee Ally Apparel for trademark infringement in 2005. However, the trademark “GET LUCKY” was registered and used by Marcel Fashions long before Lucky Brand came into existence. Also, Lucky Brand, represented by Greenberg Traurig, was sanctioned for discovery violations.



Marcel Fashions counterclaimed and won a partial summary judgment on some trademark issues and breach of a settlement agreement from 2003. Marcel Fashions also won a $580,000 jury verdict for federal trademark infringement at trial against New York-based Liz Claiborne Inc. Marcel Fashions was represented by McCool Smith.

Two Slashers and an Advertising Company: In Likelihood of Confusion, Actual Confusion of Plaintiff’s Customers and Type of Mark are the Most Important Factors

Caliber Automotive Liquidators, Inc. v. Premier Chrysler, Jeep, Dodge, LLC, 605 F.3d 931, 94 U.S.P.Q.2d 1866, 22 Fla. L. Weekly Fed. C 763 (11th Cir.(Ga.), May 07, 2010) (NO. 08-16179)




Caliber Automotive Liquidators, Inc. service mark owner of “Slash-It! Sales Event” provides advertising and promotions to car dealerships. Premier Automotive Group is a car dealership that makes its own promotional infomercial called the “Slasher Show”. Caliber sued Premier for trademark infringement based on it use of “Slasher” words in its promotion of car super sales. Caliber appealed a judgment for Premier in the North District of Georgia. The Appeals Court held that genuine issues of material fact existed as to strength of owner's “slasher” service marks, the actual confusion amongst the relevant consumer class, and likelihood of confusion. The Appeals court found that the actual confusion of actual customers of Caliber weighed very heavily in favor of finding an overall likelihood of confusion. Although the district court found that the Slash-It! Sales Event mark was descriptive, the district court erred in not recognizing that the marks also achieved federal incontestable status, and thus were entitled to strong protection. Moreover, Premier does not point to evidence to counter the evidence of confusion. The Appeals court stated, “the test [is] not whether the goods could be distinguished ... but whether the goods are so related in the minds of consumers that they get the sense that a single producer is likely to put out both goods Caliber has presented sufficient evidence of the strength of its marks and of actual confusion amongst the. The Appeals court reversed and remanded on the Federal issues.