Trademark Law Briefs

Toyota Motor Sales, USA, Inc. v. Tabari, 610 F.3d 1171 (9th Cir. 2010)

Defendants are independent auto brokers - the “personal shoppers” of the auto world, who specialize in buying Lexus brand cars for their clients.  They use the domain names “buy-a-lexis.com” and “buyorleaselexus.com”.  The district court granted a permanent injunction against any use of the mark Lexus in their websites.  The 9th Circuit reversed and remanded based on nominative fair use doctrine. (more…)

Sand Hill Advisors, LLC v. San Dhill Advisors, LLC, 2010 U.S. Dist. LEXIS 97011 (N.D. Cal. 2010)

Plaintiff sued defendant and defendant prevailed at summary judgment (see original post).  Defendant moved for attorneys fees.  The magistrate recommended denying attorneys fees and defendant sought de novo review from the district court.

The district court agreed with the magistrate that this was not an exceptional case warranting attorneys fees because plaintiff had colorable grounds for bringing suit.  “A case is not exceptional simply because the court granted summary judgment; otherwise, every Lanham Act case in which a summary judgment motion was granted would be considered an ‘exceptional case.’” (page 6). The defendant must prove exceptional circumstances and as such defendants are rarely awarded attorney fees.  The court then explained why plaintiff had a colorable argument on each claim.

Visa International Services Association v. JSL Corp., 610 F.3d 1088 (9th Cir. 2010)

Visa (the credit card giant) sued JSL who runs eVisa, an online site that teaches English as a second language.  JSL agreed that Visa’s mark was famous, but argued that his suggestive use based on the generic meaning must also be allowed Visa argued dilution by blurring (”which occurs when a mark previously associated with one product also becomes associated with a second”).  The trial court agreed with Visa, granting summary judgment.  The Court of Appeals affirmed this ruling. (more…)

Seller Agency Council, Inc. v. Kennedy Center for Real Estate Education, Inc., 2010 U.S.App. LEXIS 18446 (9th Cir. 2010)

Appellant Kennedy Center for Real Estate Eduction, Inc. (KCREE) entered into an agreement with Realty U., Inc. to form a new company, Seller Agency Council, Inc. (SAC).  The business involved real estate education and accreditation.  KCREE was to assign its trademarks to SAC after shares were issued to KCREE for those shares.  After entering this agreement, SAC began using the trademarks though shares had not been issued. At some point, KCREE learned that SAC earnings were being diverted to Realty U.  Approximately 9 months after entering into the agreement, KCREE wrote a cease-and-desist letter revoking KCREE’s consent to SAC to use the trademarks.  The trial court ruled that SAC acquiesced to use of the trademarks after the cease-and-desist letter by virtue of Kennedy’s requests that SAC take specific actions to record accreditation of students.  In finding acquiescence, the trial court used a modified laches test developed by the 11th and 2nd Circuit.

The 9th Circuit approved of this test:

“The elements of a prima facie case for acquiescence are as follows: (1) the senior user actively represented that it would not assert a right or a claim; (2) the delay between the active representation and assertion of the right or claim was not excusable; and (3) the delay caused the defendant undue prejudice.”  The third prong requires reasonable reliance by the junior user on the affirmative act by the senior user, which requires examination of both the content of the affirmative act and the context in which that act was performed.

The 9th Circuit remanded the case for a determination of reasonable reliance. (more…)