Trademark Law - Confusion - Post-sale Confusion Analysis

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Post-sale Confusion Analysis

The following court cases reflect what the various circuits have said about post-sale confusion. Some corporate lawyers, one notable example is Collegiate Licensing Company, falsely claim post-sale confusion when the courts do not consider it a factor, such as when someone is using a licensed product to make and sell something. In University of Kansas v. Sinks, the Court stated:

Plaintiffs on reconsideration argue that the remaining "Kansas" T-shirts manufactured by defendants will cause post-sale confusion when viewed from the front. As the Court explained in its Order, post-sale confusion exists "when use of a trademark leads individuals (other than the purchaser) mistakenly to believe that a product was manufactured by the trademark-holder." It usually "arises in circumstances involving so-called `knock-off' products in which observers of an allegedly infringing product are confused, to the injury of the trademark owner, by the fact that the alleged infringer has produced counterfeit, imitation, or replica goods of inferior quality."
[emphasis added] 565 F. Supp. 2d 1216 - Dist. Court, D. Kansas 2008

Also see Spectrum Vision Systems, Inc. v. Spectera, Inc, 35 F. Supp. 2d 797,807 - Dist. Court, D. Kansas 1998, as well as see Big Dog Motorcycles v. Big Dog Holdings, Inc, 402 F. Supp. 2d 1312 - Dist. Court, D. Kansas 2005, for a similar statement. When someone is using licensed material to make and then sell something, there is no confusion about the source because it is a licensed product. There is no problem of quality because it is a licensed product. There is no problem concerning royalties because the licensing entity has been compensated by the sale of the product. The only problem lies in the beady little minds of the morons at the Collegiate Licensing Company.
We used the term "post-sale confusion" to locate these cases. Courts sometimes use other terms to describe post-sale confusion such as "post-purchase confusion" and "downstream" consumer confusion. Including those terms will not alter the results we show you here. Remembering that corporate lawyers are highly paid liars, they will distort perceived facts to the advantage of their clients. The rights of sellers do not concern them. Unlike trademark infringement, which only requires the rights owner to show a "likelihood of confusion", post-sale confusion must be reasonably proven in court, not just claimed.
These court cases (92 total) are categorized by the following basic subject matter:

Competing products (68) - where the parties differ on whether on "trade dress" (or the products) are very similar.
Counterfeits (15) - where either the trademark or the trademarked product was copied and sold as authentic.
Reselling altered product (6) - where one party was selling the original item but after altering it to make it into something more expensive or reselling it as refurbished and not attaching their company name.
Post-sale confusion not applicable to this case (3) - where post-sale confusion was not relevant but mentioned.
Use of genuine product to make and sell something (0) - ZERO references. Because post-sale confusion does not apply. EXCEPT for the flawed 9th Circuit Court of Appeals case, Au-Tomotive Gold v. Volkswagen of America, 603 F. 3d 1133 (2010), where the court applied the post-purchase confusion argument before applying the lawfully acquired argument. The 9th Circuit Court of Appeals hates the First Sale Doctrine.

These court quotes involve motions as well as opinions. Some are redundant as the case may involve an opinion from the district court as well as the court of appeals. The court quotes on post-sale confusion are not taken out of context and are presented in their entirity. The quotes are word-for-for what was said by the court concerning post-sale confusion. In many cases the court only referenced post-sale confusion when discussing confusion in general and nothing further. We list every case we have found that uses the phrase "post-sale confusion" and we are not claiming that these are the only cases where the phrase was used, only these are the cases we have been able to find. We do not have a law library like law firms do. The cases are listed by circuit.

1st Circuit (7 cases)

Maine, Massachusetts, New Hampshire, Puerto Rico, Rhode Island

Chrysler Corp. v. Silva 118 F. 3d 56 - Court of Appeals, 1st Circuit 1997
At issue was Chrysler's allegation that Silva copied Chrysler's innovative "muscle car," the Dodge Viper. Competing products.
Big Top USA, Inc. v. Wittern Group 998 F. Supp. 30 - Dist. Court, D. Massachusetts 1998
This case is about a giant gumball machine with a circus theme. Plaintiff Big Top USA, Inc. developed and marketed a 82-inch tall, 300-pound gumball vending and amusement machine for operation in retail locations. Poised, or so its principals thought, to place its mouth-catching machines in Wal-Mart stores across the United States, Big Top suddenly found itself losing major potential buyers. It attributes its dire financial straits to a strikingly similar "knock-off" gumball machine called "Circus World", which was manufactured for sale by defendant O.K. Manufacturing, Inc. and was sold at half the price of Big Top's machine to the same vendors actively sought out by Big Top. Competing products.
IP Lund Trading ApS, Kroin Inc. v. Kohler Co 163 F. 3d 27 - Court of Appeals, 1st Circuit 1998
Case involved water faucets made by competitors. IP Lund wanted to stop Kohler from marketing a faucet claiming trade dress. Competing products.
Montblanc-Simplo GMBH v. Staples, Inc 172 F. Supp. 2d 231 - Dist. Court, D. Massachusetts 2001
The plaintiff is the manufacturer of high quality and highly priced writing instruments. The defendant is an office supply superstore chain that sells the plaintiff's instruments in an altered form, having purchased them from a distributor that purchases overseas and then scrapes off the serial numbers and a certain trademark. Reselling altered product.
Butcher Co., Inc. v. Bouthot 124 F. Supp. 2d 750 - Dist. Court, D. Maine 2001
The Butcher Company, Inc. is a manufacturer of industrial cleaning supplies, including cleaning solutions, and dilution control and dispensing units for those solutions Defendants, Guy Bouthot and Bouthot Construction, doing business as The Odorite Company, offered competing products with similar names and by copying the color and number-coding system used to identify its products. Competing products.
Beacon Mut. Ins. Co. v. OneBeacon Ins. Group 376 F. 3d 8 - Court of Appeals, 1st Circuit 2004
Similar names in the same business. Competing products.
Hearts on Fire Company, LLC v. Blue Nile, Inc 376 F. 3d 8 - Court of Appeals, 1st Circuit 2004
Complex allegations of trademark infringement on the internet-through the use of trademarks in search engines, in sponsored links, and on commercial websites. Hearts on Fire principally claims that one of its competitors, Blue Nile, committed trademark infringement when it used the Plaintiffs trademark as a keyword to trigger search engine advertisements known as "sponsored links." Post-sale confusion not applicable to this case.

2nd Circuit (27 cases)

Connecticut, New York, Vermont

Lois Sportswear, USA, Inc. v. Levi Strauss & Co 799 F. 2d 867 - Court of Appeals, 2nd Circuit 1986
The question presented by this appeal is whether summary judgment for the trademark owner is appropriate on claims of trademark infringement and unfair competition when the trademark owner has shown that a rival jeans manufacturer is using the trademark owner's registered back pocket stitching pattern trademark on its competing jeans, and the undisputed evidence shows that the trademark is intimately associated with the trademark owner's products in the minds of jeans consumers. Affirmed. Competing products.
United States v. Infurnari 647 F. Supp. 57 - Dist. Court, WD New York 1986
At the conclusion of jury selection in this case, both parties requested a pretrial ruling from the court as to the elements of the Trademark Counterfeiting Act. Counterfeits.
Radio Today, Inc. v. Westwood One, Inc. 684 F. Supp. 68 - Dist. Court, SD New York 1988
Plaintiff Radio Today, Inc. develops, produces and sells programs nationwide to radio networks and stations Defendant Westwood One purchases and develops radio programs and also sells such programs nationwide to radio stations. In mid-1987, Westwood One acquired NBC Radio. Competing products.
PaF Srl v. Lisa Lighting Co., Ltd 712 F. Supp. 394 - Dist. Court, SD New York 1989
This is an action for trade dress infringement and unfair competition. PAF S.r.l., an Italian company, and Koch + Lowy, a New York corporation, plaintiffs herein, are respectively the manufacturer and exclusive United States distributor of the "DOVE" lamp. Defendant Hunter-Melnor, Inc., Kenroy International Division, a Delaware corporation, imports the "SWAN" lamp from Taiwan and distributes it throughout the United States at wholesale in competition with plaintiffs' Dove lamp. Plaintiffs allege that the Swan is a "knockoff" of the Dove lamp. The Swan is virtually identical in appearance to the Dove, but is sold in only two colors: white and black. Competing products.
Reebok Intern. Ltd. v. K-Mart Corp 849 F. Supp. 252 - Dist. Court, SD New York 1994
Plaintiffs Reebok International Ltd. and Reebok International Limited bring this action against defendants K-Mart Corporation, Melville Corporation and Leif J. Ostberg Corporation, alleging that K-Mart stores have sold a sneaker that infringes on Reebok trademarks and trade dress. Competing products.
Imagineering, Inc. v. Van Klassens, Inc 851 F. Supp. 532 - Dist. Court, SD New York 1994
The background of this trade dress infringement case involving rival manufacturers of garden furniture, Imagineering, Inc. ("Imagineering") and Van Klassens, Inc. ("Van Klassens"). The jury returned a verdict favorable to plaintiff on its federal law claims and state law claim. Competing products.
KOMPAN AS v. Park Structures, Inc 890 F. Supp. 1167 - Dist. Court, ND New York 1995
Kompan A.S., Kompan, Inc. and Kompan/Big Toys Northeast (collectively Kompan)[1], manufacture and distribute playground equipment. Defendants Park Structures, Inc., Kay and Alan Bayman and Baughman Bros., Inc. (collectively "PSI") compete with Kompan as manufacturers and/or distributors of playground equipment. PSI has created a product line, the "Karavan" line, that closely resembles Kompan's pre-existing early childhood line. Kompan alleges that PSI's hen bouncer, bunny bouncer, and goose bouncer - along with other products in the Karavan line - have bounced over the elusive border that separates imitation as flattery from imitation as unfair competition. Kompan seeks a variety of injunctive relief. Because Kompan has shown a likelihood of success on its trade dress infringement claim, Kompan is entitled to much, but not all, of the injunctive relief it seeks. Competing products.
Arrow Fastener Co., Inc. v. Stanley Works 59 F. 3d 384 - Court of Appeals, 2nd Circuit 1995
In this case we consider the breadth of protection afforded a registered trademark that also serves as a model number for a hand-operated staple gun. Specifically, we consider whether the trademark is infringed by another company's use of the letter and number that constitute the mark - in combination with other letters and numbers to form a longer model number - on a higherpriced and functionally different stapler. Competing products.
Krueger Intern., Inc. v. Nightingale Inc 915 F. Supp. 595 - Dist. Court, SD New York 1996
Plaintiff, a manufacturer of metal-frame stacking chairs, alleges that defendant, a competitor, has "slavishly copied" its chair design and thereby infringed its trade dress. Plaintiff's preliminary injunction motion was denied. Competing products.
Clinique Laboratories, Inc. v. Dep Corp 945 F. Supp. 547 - Dist. Court, SD New York 1996
Clinique seeks to enjoin Dep's use of an advertisement that allegedly infringes three of Clinique's copyrights. Competing products.
Nabisco, Inc. v. PF Brands, Inc 191 F. 3d 208 - Court of Appeals, 2nd Circuit 1999
The district court found that Nabisco's use of an orange, bite-sized, cheddar cheese-flavored, goldfish-shaped cracker (as part of a tie-in promotion of a Nickelodeon Television Network television production) would dilute the distinctive quality of Pepperidge Farm's mark consisting of an orange, bite-sized, cheddar cheese-flavored, goldfish-shaped cracker, in violation of the Federal Trademark Dilution Act ("FTDA"), section 43(c) of the Lanham Act, 15 U.S.C. � 1125(c), and New York's antidilution statute, N.Y. Gen. Bus. Law � 360-l. The court entered an order requiring Nabisco to recall and cease selling its goldfish cracker. We affirm. Competing products.
Winner Intern. LLC v. Omori Enterprises, Inc 60 F. Supp. 2d 62 - Dist. Court, ED New York 1999
Plaintiff is the maker of auto anti-theft devices that attach to a motor vehicle's steering wheel so as to inhibit it from moving. Plaintiff markets the devices under such trademarks as "The Club." Defendants market "Global America Steering Wheel Lock" ("Global America"), which closely resembles The Club and performs the same function. Plaintiff's motion for a preliminary injunction was denied. Competing products.
Hermes Intern. v. Lederer de Paris Fifth Ave 219 F. 3d 104 - Court of Appeals, 2nd Circuit 2000
Hermes argues on appeal that the district court erroneously held that the doctrine of laches barred Hermes' claim for injunctive relief against both defendants and for monetary relief against defendant Artbag with respect to certain allegedly infringing products. Appellees cross-appeal claiming that the district court erred in determining that Hermes had not abandoned its right to enforce the trademarks and trade dress at issue and in accordingly denying their motions for summary judgment. Counterfeits.
GTFM, Inc. v. Solid Clothing, Inc 215 F. Supp. 2d 273 - Dist. Court, SD New York 2002
At this non-jury trial, the plaintiffs assert that their two digit number - "05" - functions as a trademark when placed on clothing, principally athletic jerseys, sold to young men. Plaintiffs GTFM, Inc. and GTFM, LLC (collectively, "GTFM") are the owner and master licensee, respectively, of the federally registered trademarks "FUBU," "FUBU 05" and "05" for International Class 25 (Clothing). GTFM brought this action against defendant Solid Clothing Inc. ("Solid") for Solid's infringement of GTFM's "05" mark. Between 1999 and 2001, Solid used "05" and then "PLAYERS 05" on sports apparel it designed to imitate GTFM's wildly popular garments. The Court found that Solid had engaged in intentional trademark infringement. Competing products.
1-800 CONTACTS, INC. v. WhenU. Com 309 F. Supp. 2d 467 - Dist. Court, SD New York 2003
Before the Court is a Motion for a Preliminary Injunction by Plaintiff 1-800 Contacts to enjoin Defendants from delivering to computer users competitive "pop-up" Internet advertisements, in violation of federal and state copyright, trademark, and unfair competition laws. For the reasons set forth herein, Plaintiff's motion is GRANTED in part. Post-sale confusion not applicable to this case.
Car-Freshner Corp. v. Big Lots Stores, Inc 314 F. Supp. 2d 145 - Dist. Court, ND New York 2004
Plaintiffs Car-Freshner Corporation ("CFC") and Julius Samann LTD ("JSL") commenced the instant action against Defendants Big Lots Stores, Inc. ("BLS") and Midwestern Home Products, Inc. ("MHP") alleging trademark infringement, false designation of origin, common law trademark infringement, unfair competition, and trademark counterfeiting arising out of Defendants' sale of a tree-shaped air freshener. Competing products.
Cartier, Inc. v. Four Star Jewelry Creations, Inc 348 F. Supp. 2d 217 - Dist. Court, SD New York 2004
Defendants manufacture watches, bracelets, and watch attachments that they sell at wholesale prices. Tr. at 624-26. Their typical customers are "mom and pop retail stores," most of which are jewelry stores and some of which are wholesalers. Tr. at 625-26, 735-36. The average price of defendants' watches is $1,500 at wholesale. Cartier introduced evidence to the effect that third party sellers invoke Cartier's name in selling their watches as a means of appealing to consumers. Competing products.
Malletier v. Dooney & Bourke, Inc 340 F. Supp. 2d 415 - Dist. Court, SD New York 2004
This case involves the Court in the world of haute couture, where Louis Vuitton Malletier ("Louis Vuitton"), armed with state and federal trademark law,[1] 420*420 seeks to prevent Dooney & Bourke, Inc. ("Dooney & Bourke")-and all others- from trespassing in what it perceives as its fashion "territory." Louis Vuitton created a new look and now seeks to preclude others from following its lead. If Louis Vuitton succeeds, then it will have used the law to achieve an unwarranted anticompetitive result. In late July 2003, Dooney & Bourke introduced its "It-Bag" collection, featuring the "DB" monogram (used in the Signature Line) in bright colors against a white background. Competing products.
Malletier v. Burlington Coat Factory Warehouse Corp 426 F. 3d 532 - Court of Appeals, 2nd Circuit 2005
Plaintiff-Appellant Louis Vuitton Malletier is a famous French fashion design firm engaged in the business of designing, manufacturing, importing, advertising, selling and distributing designer luggage, handbags, travel leather accessories, high fashion apparel and accessories. Defendant-Appellant Burlington Coat Factory ("BCF") is a discount clothing and accessory retail chain with 341 retail stores in 42 states. BCF also conducts extensive commerce through its website, www.bcfdirect.com. Burlington has become famous for selling name-brand fashions and accessories at discount prices. On October 10, 2003, Burlington began offering for sale a line of beaded handbags with colorful designs reminiscent of the LVM Multicolore bags. Specifically, the BCF bags are "[1] beaded on their entire exterior surface; [2] decorated with the letters `NY' standing for `New York;' and [3] also decorated with an assortment of shapes, including circles, diamonds and flowers," on a white or black background. Competing products.
New Colt Holding Corp. v. RJG Holdings of Florida, Inc 312 F. Supp. 2d 195 - Dist. Court, D. Connecticut 2004
Cross-motions for summary judgment. Plaintiffs New Colt Holding Corporation and Colt's Manufacturing Company, Inc. brought this action against RJG Holdings of Florida, Inc f/k/a American Western Arms and AWA International, Inc. t/a American Western Arms alleging violations of the Lanham Act. Competing products.
Montblanc-Simplo v. Aurora Due SrL 363 F. Supp. 2d 467 - Dist. Court, ED New York 2005
Both Montblanc and Aurora manufacture and sell high quality writing instruments. This action concerns two particular product lines - Montblanc's Meisterst�ck and Aurora's Optima. Montblanc alleges that the Optima line infringes upon the Meisterst�ck line by copying the Meisterst�ck's trademarked three-ring decoband. Montblanc contends that Aurora is appropriating the prestige, success and recognition that Montblanc has worked so hard to establish in marketing its Meisterst�ck pen. Competing products.
Cartier v. Symbolix, Inc 386 F. Supp. 2d 354 - Dist. Court, SD New York 2005
Cartier, a division of Richemont North America, Inc., and Cartier International, B.V. (collectively "Cartier") have moved for a preliminary injunction, seeking to enjoin Symbolix, Inc. d/b/a Park Cities Jewelers ("Park Cities Jewelers"), its principal, Ahmed M. Saleh, and John Does 1-5 (collectively "defendants") from altering genuine stainless steel Cartier watches by mounting diamonds at various points on the bezels and cases to simulate Cartier's more expensive white gold watches and thereafter selling the altered watches. For the reasons set forth below, the Court grants Cartier's motion and enters a preliminary injunction against defendants. Reselling altered product.
Cartier v. Aaron Faber 396 F. Supp. 2d 356 - Dist. Court, SD New York 2005
Plaintiffs Cartier, division of Richemont North America, Inc. and Cartier International B.V. (collectively, "Cartier") moved for a preliminary injunction by Order to Show Cause. Cartier sought to enjoin defendants Aaron Faber, Inc., d/b/a Aaron Faber Gallery ("Faber"), Edward Faber, J & P Timepieces ("J & P") and other unnamed defendants (collectively, "Defendants") from offering for sale, advertising or distributing altered or modified Cartier watches, and, in particular, stainless steel Cartier watches which have been altered through the addition of diamonds to the bezel or case. Reselling altered product.
Cartier v. Symbolix, Inc 454 F. Supp. 2d 175 - Dist. Court, SD New York 2006
Court grants plaintiffs' motion for partial summary judgment [22] and enters a permanent injunction against defendants. Plaintiffs moved for a preliminary injunction preventing defendants from modifying stainless steel Tank Francaise watches by mounting diamonds on the bezels and cases, applying polish to the watch in order to simulate Cartier's more expensive white gold Tank Francaise watches, and thereafter selling the modified watches. Counterfeits.
Louis Vuitton Malletier v. Dooney & Bourke 454 F. 3d 108 - Court of Appeals, 2nd Circuit 2006
Louis Vuitton Malletier (Vuitton or plaintiff) appeals from an August 27, 2004 judgment that denied plaintiff's motion for a preliminary injunction in its trademark infringement suit against defendant Dooney & Bourke, Inc. (Dooney & Bourke or defendant). We now affirm, in part, and vacate and remand, in part. Competing products.
Malletier v. Dooney & Bourke, Inc 561 F. Supp. 2d 368 - Dist. Court, SD New York 2008
Louis Vuitton designs, manufactures, imports, and sells fine apparel, handbags, luggage, and fashion accessories. Dooney & Bourke designs, manufacturers and sells quality handbags and fashion accessories. In 2003, D & B introduced its "It Bag" line of handbags, small leather goods, and accessories.[27] The "It Bag" line bears a design featuring the "DB" monogram that appears in the "Signature Collection" but set in nine colors on a white background, and the "DB" monogram printed in seven colors on a black background. Competing products.
Yurman Studio, Inc. v. Castaneda 591 F. Supp. 2d 471 - Dist. Court, SD New York 2008
Yurman Studio, Inc., Yurman Design, Inc. (collectively, "Yurman"), Cartier, a division of Richemont North America, Inc., Cartier International, N.V., Cartier Creation Studio, S.A. (collectively, "Cartier"), Gucci America, Inc. ("Gucci"), and Bulgari S.p.A. ("Bulgari") (collectively, "plaintiffs") move for partial summary judgment against Ejeweler LLC and Elena Castaneda (collectively "defendants") with respect to all issues of liability and damages relating to certain of their claims for infringement of trademarks, copyrights and design patents involving nearly one hundred individual jewelry pieces sold by defendants. Since 2004, defendants, through their website http://www.overstockjeweler.com ("Overstock website"), have been offering for sale and selling "designer knock-off Jewelry" and "reproductions or replicas of popular designs. Counterfeits.

3rd Circuit (9 cases)

Deleware, New Jersey, Pennsylvania, Virgin Islands

American Home Products v. Barr Laboratories 834 F. 2d 368 - Court of Appeals, 3rd Circuit 1987
AHP manufactures a 200-milligram tablet of the analgesic ibuprofen and markets it under the brand name "ADVIL." In September 1986, defendant Barr began manufacturing a 200-milligram ibuprofen tablet virtually identical in color and size to ADVIL. Defendant Perrigo packages and markets Barr's tablets throughout the country under numerous retail brand names, many of which are the "house brand" labels of various retailers. Competing products.
Second Earth Ent. v. Allstar Product Marketing 717 F. Supp. 302 - Dist. Court, ED Pennsylvania 1989
Plaintiffs, Second Earth Enterprises, Inc. and Marc C. Seiver, t/a Second Earth and Second Earth Enterprises, market disposable lighters wrapped in a prismatic foil under the trade-name "Light-Ups," and writing pens wrapped in a prismatic foil under the trade-name "Light-Writes." Defendants Alan Dorfman and Allstar Product Marketing Company are novelty and impulse product merchandisers which market disposable lighters wrapped in a prismatic foil under the trade-name "Lazer Lighter." Defendants Charles A. Budd, Jr., Unique World of Merchandise, Budd-Lin International, Inc. and Innovative Touch, Inc. market disposable lighters wrapped in a prismatic foil under the trade-name "Lazer Visions," and writing pens wrapped in a prismatic foil under the trade-name "Lazer Writer." Second Earth seeks to preliminarily enjoin the Defendants from selling any disposable lighters or pens wrapped in prismatic foil manufactured by The Diffraction Company. The Motion for a Preliminary Injunction denied. Competing products.
First Keystone Federal Sav. Bank v. First Keystone Mtg 896 F. Supp. 456 - Dist. Court, ED Pennsylvania 1995
Before this Court are cross-motions for summary judgment. Plaintiff is First Keystone Federal Savings Bank and Defendant is First Keystone Mortgage, Inc. Competing products.
SecuraComm Consulting, Inc. v. Securacom Inc 984 F. Supp. 286 - Dist. Court, D. New Jersey 1997
Libengood is an electrical engineer. Upon graduation from college he worked for a time for the Argonne National Laboratory. He then went to work for Westinghouse Electric Corporation ("Westinghouse") where he was engaged in its security systems work, that is, providing physical security for plants and equipment and providing security for proprietary information. In 1980 as part of a downsizing program, Westinghouse gave up its security systems work, and Libengood left its employ. He thereupon formed his own security systems consulting firm. When Libengood formed his firm, he devised the name "SecuraComm", drawing from the two words "security" and "communications". At the time he coined this word he was unaware of any other use of the word and justifiably believed he was the creator. Competing products.
Acxiom Corp. v. Axiom, Inc 27 F. Supp. 2d 478 - Dist. Court, D. Delaware 1998
On August 1, 1997, Plaintiff Acxiom filed a complaint, alleging that Defendant Axiom, by adopting the name, "Axiom, Inc.," is engaging in infringement of registered trademarks and service marks. Competing products.
Checkpoint Systems v. Check Point Software Tech 269 F. 3d 270 - Court of Appeals, 3rd Circuit 2001
In this Lanham Act case, plaintiff Checkpoint Systems, Inc. alleges Check Point Software Technologies, Inc. infringed on its trademark and engaged in unfair competition in violation of 15 U.S.C. �� 1114, 1125(a). Finding no likelihood of confusion between Checkpoint Systems's and Check Point Software's marks, the District Court found no Lanham Act violation. We will affirm. In early 1996, Checkpoint Systems attempted to register the internet domain name www.checkpoint.com, but discovered it was registered by Check Point Software. After its request to discontinue use was rebuffed, Checkpoint Systems filed suit alleging trademark infringement and unfair competition under the Lanham Act. Post-sale confusion not applicable to this case.
Gucci America, Inc. v. Daffy's Inc 354 F. 3d 228 - Court of Appeals, 3rd Circuit 2003
Daffy's is a chain of retail clothing stores specializing in selling popular brands of goods and apparel at discount prices. In late May 2000, Daffy's acquired three sizes of a handbag that appeared to be a particular Gucci model known as the "Jackie-O". Daffy's purchased 594 of these handbags from its supplier, Sara's Collection, Inc., for prices ranging from $238 to $250 depending on size. Sara's Collection, Inc. was recognized as a reputable supplier, and Daffy's had previously purchased products from it. Gucci America, Inc. appeals the district court's decision to deny Gucci's request for an order compelling defendant Daffy's, Inc. to recall counterfeit "Jackie-O" handbags. Gucci also appeals the district court's denial of Gucci's request for an accounting of profits and other injunctive relief. For the reasons that follow, we will affirm. Counterfeits
McNeil Nutritionals v. Heartland Sweeteners, LLC 511 F. 3d 350 - Court of Appeals, 3rd Circuit 2007
This appeal requires us to decide when the trade dress on the packaging of store-brand products is so similar to that of directly competing national-brand products as to create a likelihood of confusion among consumers. The plaintiff-appellant McNeil Nutritionals, LLC (McNeil) sells and markets Splenda, a highly successful national brand of sucralose, an artificial sweetener. The defendants-appellees Heartland Sweeteners LLC and Heartland Packaging Corp. (collectively, Heartland) package and distribute sucralose as store brands to a number of retail grocery chains. McNeil brought a trade dress infringement action against Heartland, alleging that Heartland's product packaging is confusingly similar to Splenda's. McNeil also filed a motion for preliminary injunction to enjoin Heartland from advertising, selling, or distributing the allegedly infringing products. The District Court denied the motion, and this appeal followed. For the reasons that follow, we will affirm the denial of the motion in part and reverse in part and remand to the District Court. Competing products.
McNeil Nutritionals v. Heartland Sweeteners, LLC 512 F. Supp. 2d 217 - Dist. Court, ED Pennsylvania 2007
McNeil markets Splenda�, the leading artificial sweetener in the United States in terms of dollar sales. Heartland packages, sells, and distributes to a number of retail chains store-brand artificial sweetener products that compete with Splenda. McNeil filed a Complaint against Heartland on December 5, 2006, alleging that Heartland's packaging of the store-brand products is confusingly similar to the Splenda trade dress Injunction denied. Competing products.

4th Circuit (3 cases)

Maryland, North Carolina, South Carolina, Virginia, West Virginia

Nabisco Brands, Inc. v. Conusa Corp 722 F. Supp. 1287 - Dist. Court, MD North Carolina 1989
The dispute centers on Defendant General de Confiteria, S.A.'s ("Confiteria") manufacture and Defendant Conusa Corporation's ("Conusa") marketing in the United States of a hard roll candy which Plaintiffs claim is virtually identical in appearance to its Lifesavers candy. Competing products.
McNeil-PPC, Inc. v. Granutec, Inc. 919 F. Supp. 198 - Dist. Court, North Carolina 1995
The plaintiff in this matter, McNeil-PPC, Inc. ("McNeil"), a subsidiary of Johnson & Johnson, manufactures Tylenol acetaminophen "gelcaps," an over-the-counter ("OTC") non-aspirin analgesic. The defendant, Granutec, Inc. ("Granutec"), a subsidiary of Novapharm, Ltd., manufactures generic OTC acetaminophen products, including gelatin capsules or caplets sold in stores such as Eckerd and Wal-Mart and intended to be the less-expensive store brand counterpart to the Tylenol gelcap. In 1994, in spite of an earlier understanding, Granutec changed the color of its product from a red and orange capsule to a red and yellow capsule. Red and yellow is the same color combination used by McNeil for its Tylenol gelcaps since their introduction in 1988. This red and yellow capsule is the subject of the instant litigation. Competing products.
Georgia Pacific Cons Prod v. von Drehle Corp. 618 F. 3d 441 - Court of Appeals, 4th Circuit 2010
Georgia-Pacific Consumer Products, LP (G-P), successor-in-interest to Georgia Pacific Corporation, is a leading designer/manufacturer of, inter alia, paper products and dispensers for such products for the home and the away-from-home setting (e.g., hotels, stadiums, restaurants, etc) On July 8, 2005, after one of G-P's competitors, von Drehle Corporation (VD), started marketing and selling to distributors an inferior paper toweling specifically manufactured by VD for use in Dispensers, G-P brought the present civil action against VD and the district court granted summary judgment in favor of VD. Vacated and remanded in part and affirmed in part. Competing products.

5th Circuit (7 cases)

Louisiana, Mississippi, Texas

Neles-Jamesbury, Inc. v. Valve Dynamics, Inc 974 F. Supp. 964 - Dist. Court, SD Texas 1997
Plaintiff Neles-Jamesbury, Inc. ("Plaintiff" or "Neles-Jamesbury"), a valve manufacturer, has brought this action against Defendants Valve Dynamics, Inc. ("Valve Dynamics"), a valve reseller, and Bill's Valves, Inc. ("Bill's Valves"), a valve reconditioner, alleging trademark infringement and unfair competition for Defendants' resale of reconditioned valves originally manufactured by Neles-Jamesbury. Neles-Jamesbury alleges that Bill's Valves' practice of reconditioning and reselling these valves without effectively indicating to future purchasers that they are not firsthand Neles-Jamesbury valves produces a likelihood of confusion among buyers, who may attribute the secondhand valves' inferior quality to perceived defects in Neles-Jamesbury's manufacturing process. Reselling altered product
Elvis Presley Enterprises, Inc. v. Capece 141 F. 3d 188 - Court of Appeals, 5th Circuit 1998
In April 1991, defendant-appellee Barry Capece, operating through the limited partnership Beers 'R' Us, opened a nightclub on Kipling Street in Houston, Texas called "The Velvet Elvis." On August 28, 1991, Capece filed a federal service mark application for "The Velvet Elvis" for restaurant and tavern services with the United States Patent and Trademark Office (PTO). Competing products.
Quantum Fitness Corp. v. Quantum Lifestyle Centers 83 F. Supp. 2d 810 - Dist. Court, SD Texas 1999
Plaintiff Quantum Fitness Corporation ("Quantum Fitness"), a manufacturer and distributor of fitness and exercise equipment, seeks a preliminary injunction against defendant, Quantum LifeStyle Centers, L.L.C. ("Quantum LifeStyle"), a health and fitness club that began doing business in December 1998. This court GRANTS the motion for a preliminary injunction, and sets a hearing date for a permanent injunction. Competing products.
US v. Hanafy 124 F. Supp. 2d 1016 - Dist. Court, ND Texas 2000
This case involves the purchase, repackaging, and sale of infant formula. The alleged scheme, in essence, proceeded as follows. Various unidentified individuals sold individual cans or cases of infant formula, some of which were probably stolen, to a number of different convenience stores in Texas. The convenience stores in turn sold the infant formula to various companies owned by Defendants. Defendants obtained cardboard containers or shipping trays for the formula. The shipping trays, designed to extend upward only a few inches and leave visible most of the containers therein, were deliberately designed to resemble the containers of the manufacturers, including use of the manufacturers' trademarks. Defendants had no authorization from the manufacturers to do this. Counterfeiting
MetroPCS Wireless, Inc. v. Virgin Mobile USA, LP Dist. Court, ND Texas 2009 Civil Action No. 3:08-CV-1658-D
This is a lawsuit in which plaintiff-counterdefendant MetroPCS Wireless, Inc. ("MetroPCS") and defendant-counterplaintiff Virgin Mobile USA, L.P. ("Virgin Mobile") assert claims and counterclaims arising under federal and state law related to a dispute about MetroPCS' reflashing service, in which it reconfigures mobile handsets (cell phones) of other wireless service providers (including Virgin Mobile) to operate on MetroPCS' wireless network. Both parties move for partial summary judgment. For the reasons that follow, the court grants in part and denies in part both motions. Competing products.
Cowboys Football Club v. America's Team Properties 616 F. Supp. 2d 622 - Dist. Court, ND Texas 2009
Because Plaintiffs' rights in the term "America's Team" are superior to Defendant's claims, Plaintiffs' motion for summary judgment is GRANTED. Consequently, the Court DENIES Defendant's motion for partial summary judgment. Competing products.
RE/MAX Intern., INC. v. TrendSetter Realty, LLC 655 F. Supp. 2d 679 - Dist. Court, SD Texas 2009
RE/MAX is a corporation that has provided real estate brokerage services through a network of franchisees and affiliated independent contractors and sales associates since the early 1970s. Trend Setter is a limited liability company with offices in Houston and San Antonio. It has provided real estate brokerage services in the Houston area since around April 1, 2005. Competing products.

6th Circuit (4 cases)

Kentucky, Michigan, Ohio, Tennesee

Letica Corp. v. Sweetheart Cup Co, 805 F. Supp. 482 - Dist. Court, ED Michigan 1992
On June 2, 1992, plaintiff Letica Corporation filed a motion for summary declaratory judgment on the issue of whether plaintiff's Maui cup design infringes upon defendant's Preference trade dress design. Plaintiff's motion was granted. Competing products.
Ford Motor Co. v. Lloyd Design Corp, 184 F. Supp. 2d 665 - Dist. Court, ED Michigan 2002
The instant trademark case is brought by Plaintiffs Ford Motor Company, Jaguar Cars Limited, and Aston Martin Lagonda Limited against Defendant Lloyd Design Corp., a manufacturer of automobile floor mats. It is undisputed that Defendant markets and sells mats bearing some of Plaintiffs' registered trademarks. Defendant markets his mats without having obtained licenses from Plaintiffs and despite the fact that Plaintiffs also market floor mats bearing their trademarks Counterfeits
Gibson Guitar Corp. v. Paul Reed Smith Guitars, 423 F. 3d 539 - Court of Appeals, 6th Circuit 2005
This is an interlocutory appeal of an injunction granted in a trademark case. The parties agree that the mark purports to include at least the two-dimensional guitar shape set out in the trademark-registration papers. However, they disagree as to whether the mark extends to cover three-dimensional objects where two dimensions of those objects have the same general shape (but not the same exact proportions) as the drawing in the registration papers, and as to whether the mark includes additional product features shown in a photograph accompanying the registration papers.[1] Whatever the scope of the mark, the parties also dispute whether the mark is valid and whether it has been infringed. Competing products.
General Motors v. Keystone Automotive Industries, 453 F. 3d 351 - Court of Appeals, 6th Circuit 2006
Plaintiff General Motors Corporation ("GM") sued defendants Tong Yang Industry Company, Limited ("Tong Yang"), a Taiwanese manufacturer of automobile replacement grilles bearing two GM trademarks, and Keystone Automotive Industries, Inc. ("Keystone"), a distributor of Tong Yang's grilles, for trademark infringement and unfair competition. On the issue of likelihood of confusion - the sole issue on appeal - the District Court granted summary judgment in favor of the defendants and denied GM's motion for summary judgment. We agree with the District Court that there is no likelihood of confusion "at the point of sale" to body shops and on the internet. We disagree and reverse and remand on the issue of likelihood of "downstream" consumer confusion due to genuine disputes of material fact regarding the visibility of the allegedly infringing portion of the grilles. Counterfeits

7th Circuit (6 cases)

Illinois, Indiana, Wisconsin

Dorr-Oliver, Inc. v. Fluid-Quip, Inc, 94 F. 3d 376 - Court of Appeals, 7th Circuit 1996
Plaintiff Dorr-Oliver, Inc. ("Dorr-Oliver") filed suit in district court, claiming that defendants Fluid-Quip, Inc. ("Fluid-Quip"), and its president and majority stockholder, Andrew Franko, copied the trade dress of an industrial machine sold by Dorr-Oliver, in violation of the Lanham Act, 15 U.S.C. � 1051, et seq., and various state law provisions. After a bench trial, the district court ruled that Dorr-Oliver had established the infringement of its trade dress. Consequently, the court enjoined Fluid-Quip from selling its infringing product and awarded Dorr-Oliver monetary relief representing Fluid-Quip's profits from sales of the infringing machine. The defendants appeal the district court's decision on a number of grounds. We hold that Dorr-Oliver failed to establish a likelihood of consumer confusion and therefore reverse the judgment of the district court. Competing products.
Thomas & Betts Corp. v. Panduit Corp, 138 F. 3d 277 - Court of Appeals, 7th Circuit 1998
The parties in this case are the nation's largest suppliers of cable ties, which, as their name implies, are small nylon belts used to bundle wires. At issue in this case is the two-piece tie, in which the nylon pawl is replaced by a metal barb inserted into the head of the tie. Plaintiff Thomas & Betts Corporation ("T & B") obtained a patent on the two-piece cable tie in 1965. We believe that the district court's sweeping holding misstates the law regarding the availability of trademark (or trade dress) protection for previously patented articles, and we reverse in this respect. Competing products.
CAE, INC. v. Clean Air Engineering, Inc, 267 F. 3d 660 - Court of Appeals, 7th Circuit 2001
Appellee CAE, Inc. is a large, Canadian conglomerate whose operating subsidiary companies manufacture, among other things, aircraft simulators, air traffic control systems, medical equipment, and data acquisition systems for various industries. Appellant Clean Air Engineering, Inc. ("Clean Air") is an Illinois corporation whose core business is technical environmental consulting and air emissions testing. CAE, Inc. claims that Clean Air's use of the initials "CAE" infringes CAE, Inc.'s federally registered "CAE" trademark. The district court found that consumers were likely to be confused. The court entered judgment in favor of CAE, Inc. and enjoined Clean Air from future use of the initials absent a disclaimer of any association with CAE, Inc. Clean Air appeals. We affirm the judgment of the district court. Competing products.
AM General Corporation v. DaimlerChrysler Corporation, 311 F. 3d 796 - Court of Appeals, 7th Circuit 2002
Plaintiffs AM General Corporation ("AM General") and General Motors Corporation ("GM") brought a declaratory judgment action in the district court asking the court to find that the front-end grille design of their recently developed H2[1] sport utility vehicle ("SUV") does not dilute or infringe upon a trademark held by the Defendant, DaimlerChrysler Corporation ("DaimlerChrysler"), for a similar looking grille on DaimlerChrysler's line of Jeep SUVs. The district court denied DaimlerChrysler's preliminary injunction. Competing products.
Keystone Consolidated Indus. v. Mid-States Distr, 235 F. Supp. 2d 901 - Dist. Court, CD Illinois 2002
Plaintiff Keystone Consolidated Industrial Inc. ("Keystone") is a manufacturer of wire fencing products located in Bartonsville, IL.. Keystone has manufactured wire fencing products since 1889. In 1920, Keystone decided to color the top wire strand of its field fencing products red to distinguish its products from its competitors. In 1954, Keystone extended its color placement scheme by coloring the individual barbs of its barbed wire products red. In 1935, Keystone began using the "King Ranch" mark in connection with wire fencing products. In the fall of 2000, Midstates began a private label wire fencing program. This program featured field wire fencing with a green top wire and barbed wire fencing with green colored barbs. Midstates selected "Ranch King" as its brand name and Oklahoma Steel to manufacture the actual products. The Court grants Plaintiff's Motion for Preliminary Injunction. Competing products.
Wolf Appliance, Inc. v. Viking Range Corp, 686 F. Supp. 2d 878 - Dist. Court, WD Wisconsin 2010
Plaintiff Wolf Appliance, Inc. contends that defendant Viking Range Corp.'s use of red knobs on its ranges and rangetops constitutes federal trademark infringement I conclude that plaintiff has shown a reasonable likelihood of prevailing on its trademark infringement claims. I conclude also that plaintiff has shown a likelihood of irreparable harm. Competing products.

8th Circuit (2 cases)

Arkansas, Iowa, Minnestota, Missouri, Nebraska, North Dakota, South Dakota

Insty* Bit, Inc. v. Poly-Tech Industries, Inc, 95 F. 3d 663 - Court of Appeals, 8th Circuit 1996
Insty*Bit is a Minnesota corporation located in Minneapolis, Minnesota. It designs, assembles, and sells quick-change drill chucks and related accessories, including drill bits, countersinks, and drill guides. In 1993, Poly-Tech developed its own quick-change drill chuck. Competing products.
Empi, Inc. v. Iomed, Inc, 923 F. Supp. 1159 - Dist. Court, Minnesota 1996
Plaintiff and defendant, Iomed, Inc. ("defendant") are both in the business of manufacturing and selling iontophoresis products. Iontophoresis is a non-invasive method of administering pharmaceuticals through the skin by transferring or migrating drugs via an electrical current. Plaintiff's motion for a preliminary injunction granted. Competing products.

9th Circuit (11 cases)

Alaska, Arizona, California, Guam, Hawaii, Nevada, Oregon, Washington

Plasticolor Molded Products v. Ford Motor Co, 713 F. Supp. 1329 - Dist. Court, CD California 1989
This lawsuit was brought by Plasticolor Molded Products, Inc., seeking a declaratory judgment of its rights to use Ford Motor Company trademarks on the automobile accessories it produces. Ford then counterclaimed for trademark infringement and unfair competition. Plasticolor's motion for summary judgment is granted as to Ford's counterclaim for dilution. All other motions for summary judgment are denied. Ford is entitled to recover damages and costs proportionate to the percentage of Plasticolor's sales before May 9, 1988, attributable to consumer confusion as to the source of the floor mats. Ford is not entitled to recover attorneys' fees. Counterfeits.
United States v Linda Rodriguez, 878 F.2d 387 1989 9th Cir
Linda Rodriguez and Anthony Tortorich appeal their convictions for conspiracy and trafficking in counterfeit goods. We affirm. Counterfeits
Academy of Motion Picture Arts v. Creative House Promotions, Inc, 944 F. 2d 1446 - Court of Appeals, 9th Circuit 1991
Academy of Motion Picture Arts and Sciences ("the Academy") brought an action in the district court for copyright and trademark infringement and related state law claims against Creative House Promotions, Inc. ("Creative House") for marketing the "Star Award," a gold figure closely resembling the Academy's famous "Oscar" statuette. The district court concluded after a bench trial that the Oscar was not entitled to copyright protection because it had previously entered the public domain. The court also ruled against the Academy on its trademark infringement and related claims. We have jurisdiction under 28 U.S.C. � 1291, and we reverse. Competing products.
Hard Rock Cafe Licensing v. Pacific Graphics, Inc, 776 F. Supp. 1454 - Dist. Court, WD Washington 1991
Pacific Graphics is in the business of distributing heat transfers. It is located in Blaine, Washington. Defendant Pacific Graphics has offered for sale transfers bearing a "HARD RAIN CAFE" design. Pacific Graphics' HARD RAIN CAFE design transfers have been applied to T-shirts and other items of sportswear. Competing products.
Saks & Co. v. Hill, 843 F. Supp. 620 - Dist. Court, SD California 1993
The complaint alleges that defendant's use of the mark "Sacks Thrift Avenue" constitutes trademark infringement and unfair competition under federal law, and dilution and unfair competition under California law. Plaintiff seeks to permanently enjoin defendant from using the mark "Sacks Thrift Avenue," as well as an award of attorneys' fees. Defendant, Beatrice Hill, owns and operates Sacks Thrift Avenue ("Sacks"), a consignment shop located on University Avenue in the North Park section of San Diego. Competing products.
Alderman v. Iditarod Properties, Inc, 32 P. 3d 373 - Alaska: Supreme Court 2001
During the 1998 Anchorage tourist season, both Robert Gottstein's Iditarod Properties and Caleb and Barbara Alderman's Alaska Guestours operated separate trolley tours named "Fourth Avenue Theater Trolley Tours" from the front of the historic Fourth Avenue Theatre[1] owned by Iditarod. Iditarod sued the Aldermans for trade name infringement. A jury found that the Aldermans had infringed Iditarod's trade name "Fourth Avenue Theatre"[2] and had breached a lease agreement for the use of the theater's ticket booth. The Aldermans appeal numerous issues including the application of trade name law, the jury verdict, the interpretation of the business name registration statute, the amendment of the pleadings, and the award of attorney's fees. We affirm on all issues except the superior court's decision to allow amendment of the pleadings after the close of evidence. Competing products.
Karl Storz Endoscopy-America v. Surgical Tech, 285 F. 3d 848 - Court of Appeals, 9th Circuit 2002
Appellant Karl Storz Endoscopy-America, Inc. ("Storz") appeals the district court's grant of summary judgment to appellees Surgical Technologies, Inc. ("Surgi-Tech") and Pacific Medical Repair ("Pacific") on Storz's trademark infringement claims.[1] Storz contends that the district court erred in determining that Surgi-Tech's repair and refurbishment of Storz's rigid endoscopes, and Pacific's solicitation of those repairs, do not constitute Lanham Act violations. Surgi-Tech repaired and rebuilt Storz scopes for hospitals without placing its own mark on those scopes. Reversed and remanded. Reselling altered product
Adidas-Salomon AG v. Target Corp, 228 F. Supp. 2d 1192 - Dist. Court, D. Oregon 2002
This is an action by adidas-Salomon AG and adidas America, Inc., alleging that defendants have offered for sale and sold shoes with features that bear confusingly similar imitations of adidas' trademark diagonal three stripes and the trade dress of adidas' Original Superstar shoe. Competing products.
YKK Corp. v. Jungwoo Zipper Co, 213 F. Supp. 2d 1195 - Dist. Court, CD California 2002
Founded in 1934 in Japan, YKK is the world's leading manufacturer and supplier of zippers and fasteners. YKK has 121 companies operating in 59 countries around the world, including the United States. Defendant Jungwoo Zipper Company ("Jungwoo") is a Korean company that distributes zippers in the United States. Defendant YPP is a California company that is a branch or division of Jungwoo that markets and distributes Jungwoo's products in the United States. Competing products.
ACI Int'l. Inc. v. Adidas-Salomon AG, 359 F. Supp. 2d 918 - Dist. Court, CD California 2005
The present motion address causes of action set forth in a counterclaim filed by defendant adidas-Salomon AG and adidas, America, Inc., ("adidas") alleging that Plaintiffs and counter-defendants, ACI International and Ocean Pacific Apparel Corp. (collectively "ACI"), have offered for sale and sold shoes bearing features that are confusingly similar imitations of adidas' trademark diagonal three stripes. Competing products.
Fortune Dynamic v. Victoria's Secret Stores Brand, 618 F. 3d 1025 - Court of Appeals, 9th Circuit 2010
In February 2007, Victoria's Secret ran a one-month marketing campaign promoting its new line of BEAUTY RUSH product. As part of that promotion, Victoria's Secret stores sold or gave away a hot pink tank top with the word "Delicious" written across the chest in silver typescript. Fortune Dynamic, Inc. ("Fortune"), the owner of the incontestable trademark DELICIOUS for footwear, sued Victoria's Secret for trademark infringement. The district court granted summary judgment in favor of Victoria's Secret. Mindful that "summary judgment is generally disfavored in the trademark arena," Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1140 (9th Cir.2002) (quotation marks omitted), we reverse and remand for trial. Competing products.

10th Circuit (9 cases)

Colorado, Kansas, Montana, New Mexico, Oklahoma, Utah, Wyoming

Payless Shoesource, Inc. v. Reebok Intern. Ltd, 804 F. Supp. 206 - Dist. Court, D. Kansas 1992
This matter is before the court on motion by Reebok International Limited and Reebok International Ltd. ("Reebok") for a preliminary injunction to prevent Payless Shoesource, Inc. ("Payless") from "purchasing, importing, distributing or selling shoes infringing Reebok's federally registered trademarks or trade dress or from making, using or selling shoes infringing Reebok's U.S. design patents". Competing products.
Western Chemical Pumps, Inc. v. Superior Mfg., Inc, 989 F. Supp. 1112 - Dist. Court, D. Kansas 1997
This is a trade dress infringement, commercial misrepresentation, and unfair competition action. Plaintiff Western Chemical Pumps, Inc. ("Western") contends that defendants Superior Manufacturing, Inc. ("Superior") and Alan H. Hulva infringed the trade dress of two of Western's chemical injection pumps in violation of the Lanham Act. Competing products.
US Surgical Corp. v. Orris, Inc, 983 F. Supp. 963 - Dist. Court, D. Kansas 1997
Plaintiff brings this action claiming that defendants' recycling, resterilizing, refurbishing and reselling of medical instruments constitute trademark infringement. Motion hearing. Reselling altered product
Spectrum Vision Systems, Inc. v. Spectera, Inc, 35 F. Supp. 2d 797 - Dist. Court, D. Kansas 1998
Plaintiff Spectrum Vision Systems, Inc. brought this action against defendant Spectera, Inc. alleging trademark infringement in violation of the Lanham Act and common law unfair competition claims. The matter is presently before the court on the parties' cross motions for summary judgment.[1] Because no reasonable fact-finder could conclude that defendant's use of its name and trademark creates a likelihood of confusion with plaintiff, the court denies plaintiff's motion for summary judgment (doc. 95) and grants defendant's motion for summary judgment (doc. 93). Competing products.
US v. Foote, 413 F. 3d 1240 - Court of Appeals, 10th Circuit 2005
Jerome Foote was convicted in United States District Court for the District of Kansas of trafficking in counterfeit goods and conspiring to traffic in counterfeit goods based on his sale of a single counterfeit Mont Blanc pen in violation of the Counterfeit Trademark Act, 18 U.S.C. � 2320, and 18 U.S.C. � 371. Counterfeits
Big Dog Motorcycles v. Big Dog Holdings, Inc, 402 F. Supp. 2d 1312 - Dist. Court, D. Kansas 2005
Plaintiff Big Dog Motorcycles, L.L.C. (Motorcycles) seeks a declaratory judgment that its use of the mark "Big Dog Motorcycles" in conjunction with the sale of motorcycles, motorcycle parts and accessories, promotional products (including apparel and collectibles), and related services does not infringe upon defendant Big Dog Holdings' (Holdings) marks, or otherwise constitute unfair competition under the Lanham Act. For the reasons explained below, the court finds that no rational trier of fact could find a likelihood of confusion between the two sets of products. Accordingly, the court will grant Motorcycles' motion in its entirety. Competing products.
General Motors Corp. v. Urban Gorilla, LLC, 500 F. 3d 1222 - Court of Appeals, 10th Circuit 2007
General Motors Corporation ("GM") appeals from the district court's denial of a motion for preliminary injunction against Urban Gorilla, LLC ("Urban Gorilla"). GM alleges that Urban Gorilla's "body kits" infringe upon and dilute GM's trade dress rights in its Hummer line of vehicles. Because the district court did not abuse its discretion in finding that GM failed to make a strong showing of a likelihood of success on the merits, we AFFIRM. Competing products.
University of Kansas v. Sinks, 565 F. Supp. 2d 1216 - Dist. Court, D. Kansas 2008
Plaintiffs University of Kansas ("KU") and Kansas Athletics, Inc. ("Kansas Athletics") filed this action against defendants Larry Sinks, Clark Orth, Larry Sinks Enterprises, Inc. and Victory Sportswear, L.L.C. alleging violations of state and federal trademark laws through the unauthorized and unlicensed sale of KU apparel. Counterfeits
Predator Intern., Inc. v. Gamo Ooutdoor USA, Inc, 669 F. Supp. 2d 1235 - Dist. Court, D. Colorado 2009
Predator has manufactured, distributed, and sold "Polymer Ballistic Airgun Pellets" since 2002. The POLYMAG was the only airgun pellet with a red polymer tip before Gamo introduced its Red Fire pellet. Plaintiff motion for preliminary injunction denied. Competing products.

11th Circuit (5 cases)

Alabama, Florida, Georgia

US v. Torkington, 812 F. 2d 1347 - Court of Appeals, 11th Circuit 1987
The definition of the term "counterfeit mark" under section 2320(d)(1)(A) of the 1349*1349 Trademark Counterfeiting Act of 1984 (the Act), 15 U.S.C. �� 1116-1118, 18 U.S.C. � 2320, is at issue in this case of first impression. The district court held that a mark is not "counterfeit" under section 2320(d)(1)(A) unless the use of the mark in connection with the goods in question would be likely to cause direct purchasers to be confused, mistaken or deceived. The court found that, given the enormous price differential between the allegedly counterfeit goods and the authentic goods, it was unlikely, as a matter of law, that direct purchasers would be confused, mistaken or deceived. The court therefore dismissed the indictment. We find that the district court's ruling that section 2320(d)(1)(A) requires a showing that direct purchasers would be likely to be confused, mistaken or deceived is not supported by either the language or the legislative history of the section. Accordingly, we hold that section 2320(d)(1)(A) does not require a showing that direct purchasers would be confused, mistaken or deceived; rather, the section is satisfied where it is shown that members of the purchasing public would be likely to be confused, mistaken or deceived. Moreover, we find that this likely confusion test includes the likelihood of confusion in a post-sale context. Counterfeits
Foxworthy v. Custom Tees, Inc, 879 F. Supp. 1200 - Dist. Court, ND Georgia 1995
In December, 1994, plaintiff, through some associates, became aware that t-shirts bearing exact replications of plaintiff's jokes were being sold in various stores across the country, including stores in Georgia. The only difference between plaintiff's jokes and those appearing on the t-shirts was the format. On one shirt, for example, the copy read "If you've ever financed a tattoo ... you might be a redneck." Competing products.
Laboratorios Roldan, C. Por A. v. Tex Intern., Inc, 902 F. Supp. 1555 - Dist. Court, SD Florida 1995
Plaintiff manufactures and sells approximately 250 products, including soaps, cosmetics, cleaning detergents, and medications, which it makes for itself as well as for local and foreign companies. In the Spring of 1993, Defendant Horowitz and non-party Ivan Gabor agreed to form Tex, a wholesale business in cosmetics. Roldan Corporation ("Roldan") was formed by Defendants "to produce or to have produced for the corporation" "Roldan" products. Roldan is not licensed by Plaintiff to make or sell "Roldan" products, and the Defendants' "Roldan" products are not made with the authority or consent of Plaintiff, and are not made according to Plaintiff's quality control or supervision. Competing products.
Montgomery v. Noga, 168 F. 3d 1282 - Court of Appeals, 11th Circuit 1999
The jury in this case found the defendants liable for infringing the plaintiff's copyright in a computer program and for violating section 43(a) of the Lanham Act, 15 U.S.C. � 1125(a). The district court entered judgment against the defendants, awarding both actual damages and attorneys' fees to the plaintiff. On appeal, the defendants challenge numerous rulings of the district court. We affirm. In so doing, we endeavor to bring a small measure of clarity to certain "rather swampy"[1] areas of copyright and unfair competition law. Counterfeits
Chanel, Inc. v. Route' Limited, LLC, Dist. Court, MD Florida 2006 Case No. 8:06-cv-1636
Plaintiff is engaged in the business of manufacturing and distributing jewelry under the federally registered trademarks CHANEL and CC MONOGRAM ("Chanel Marks"). (� 2). Plaintiff has not ever assigned or licensed the Chanel Marks to any of the defendants. Despite Defendants' knowledge of Plaintiff's ownership of the Chanel Marks, Defendants are actively manufacturing, promoting, and otherwise advertising, distributing, selling, and/or offering for sale substantial quantities of counterfeit jewelry products bearing trademarks that are exact copies of the Chanel Marks. Counterfeits

Federal Circuit (1 case)

Payless Shoesource, Inc. v. Reebok Intern. Ltd, 998 F. 2d 985 - Court of Appeals, Federal Circuit 1993
Payless is a footwear retailer of low and medium priced shoes sold through a nationwide chain of self-service shoe stores. Its shoes bear private "unbranded" labels and are only available for sale in Payless stores. Reebok is a manufacturer and retailer of brand name REEBOK footwear sold in the United States and throughout the world in athletic footwear stores, sporting goods stores, and department stores. On August 25, 1992, Payless filed a complaint for declaratory judgment against Reebok in which Payless sought a declaration that its footwear did not infringe Reebok's trademarks, trade dress, or design patents. Reebok filed a counterclaim alleging trademark infringement under 15 U.S.C. � 1114(1) (1988), federal unfair competition[1] and trade dress infringement under 15 U.S.C. � 1125(a) (1988), patent infringement under 35 U.S.C. � 271 (1988), and unfair competition under Kansas state common law. Competing products.

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