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.