Justia Government & Administrative Law Opinion Summaries

CPI Security Systems, Inc. filed a lawsuit against Vivint Smart Home, Inc., alleging that Vivint engaged in deceptive practices to lure away CPI’s customers. Vivint sales representatives falsely claimed that Vivint had acquired CPI, that CPI was going out of business, or that Vivint needed to upgrade CPI’s equipment. These tactics led many CPI customers to switch to Vivint, causing significant losses for CPI. A jury found Vivint liable for violating the Lanham Act, the North Carolina Unfair and Deceptive Trade Practices Act (UDTPA), and for committing the common-law torts of unfair competition and tortious interference with contracts. The jury awarded CPI $49.7 million in compensatory damages and $140 million in punitive damages.The United States District Court for the Western District of North Carolina upheld the jury’s verdict. Vivint appealed, raising several issues, including the requirement of CPI’s reliance on false statements for the UDTPA claim, the sufficiency of evidence supporting the damages award, the application of North Carolina’s cap on punitive damages, and the admission of prejudicial evidence.The United States Court of Appeals for the Fourth Circuit reviewed the case and found no reversible error. The court held that CPI was not required to prove its own reliance on Vivint’s false statements to establish a UDTPA claim, as the claim was based on unfair competition rather than fraud. The court also found that the evidence presented by CPI was sufficient to support the jury’s damages award. Additionally, the court ruled that the district court correctly applied North Carolina’s cap on punitive damages by considering the total compensatory damages awarded. The court further held that the district court did not abuse its discretion in denying Vivint’s motion to bifurcate the trial or in its evidentiary rulings. The reassignment of the trial judge post-trial did not warrant a new trial. Consequently, the Fourth Circuit affirmed the district court’s judgment. View "CPI Security Systems, Inc. v. Vivint Smart Home, Inc." on Justia Law

The case involves Bacardi & Company Limited and Bacardi USA, Inc. (collectively, Bacardi) and the United States Patent and Trademark Office (PTO). Bacardi claimed that the PTO violated Section 9 of the Lanham Act and its own regulations by renewing a trademark registration ten years after it expired. The trademark in question is the "HAVANA CLUB," originally registered by a Cuban corporation, José Arechabala, S.A. In 1960, the Cuban government seized the corporation's assets, and by 1974, the U.S. trademark registrations for HAVANA CLUB rum had expired. Later, a company owned by the Cuban government registered the HAVANA CLUB trademark in the U.S. for itself. Bacardi, which had bought the interest in the mark from Arechabala, filed its own application to register the HAVANA CLUB mark and petitioned the PTO to cancel the Cuban government-owned company's registration.The PTO denied Bacardi's application due to the Cuban government-owned company's preexisting registration, and the Trademark Trial and Appeal Board (TTAB) denied Bacardi's cancellation petition. Bacardi then filed a civil action challenging the TTAB's denial of cancellation. Meanwhile, the Cuban government-owned company's registration was set to expire in 2006, unless it renewed its trademark. However, due to a trade embargo, the company was not permitted to pay the required renewal fee without first obtaining an exception from the Department of the Treasury’s Office of Foreign Assets Control (OFAC). OFAC denied the company's request for an exception, and the PTO notified the company that its registration would expire due to the failure to submit the renewal fee on time.The United States Court of Appeals for the Fourth Circuit reversed the district court's judgment that dismissed Bacardi's lawsuit for lack of subject matter jurisdiction. The court concluded that the Lanham Act does not foreclose an Administrative Procedure Act (APA) action for judicial review of the PTO’s compliance with statutes and regulations governing trademark registration renewal. The court found that the Lanham Act does not expressly preclude judicial review of PTO registration renewal decisions or fairly implies congressional intent to do so. Therefore, the APA’s mechanism for judicial review remains available. The case was remanded for further proceedings. View "Bacardi and Company Limited v. United States Patent & Trademark Office" on Justia Law

In 2020, the law firm Chestek PLLC applied for a trademark for the mark "CHESTEK LEGAL" but provided only a P.O. box as its domicile address. The United States Patent and Trademark Office (USPTO) refused the application because it did not comply with the domicile address requirement. Chestek argued that the rules enforcing this requirement were improperly promulgated under the Administrative Procedure Act (APA). The Trademark Trial and Appeal Board affirmed the examiner's refusal. On appeal to the United States Court of Appeals for the Federal Circuit, Chestek argued that the domicile address requirement was improperly promulgated for two reasons: the USPTO was required to comply with the requirements of notice-and-comment rulemaking under 5 U.S.C. § 553 but failed to do so because the proposed rule did not provide notice of the domicile address requirement adopted in the final rule, and the domicile address requirement is arbitrary and capricious because the final rule failed to offer a satisfactory explanation for the domicile address requirement and failed to consider important aspects of the problem it purports to address, such as privacy. The Federal Circuit found the domicile address requirement to be a procedural rule that is exempt from notice-and-comment rulemaking. Furthermore, the USPTO's decision to require the address provided by all applicants to be a domicile address was not arbitrary or capricious for failure to provide a reasoned justification. The court affirmed the Board's refusal to register Chestek's mark. View "In Re CHESTEK PLLC " on Justia Law

SFM owns the federal registration for SPROUTS for use in connection with grocery store services. The SPROUTS mark was first used in commerce not later than April 2002. Corcamore owns a federal trademark registration for SPROUT for use in connection with vending machine services, claiming a first use date of May 2008. Corcamore’s SPROUT mark is used on a cashless payment card, an associated customer loyalty program, and a website for customers.SFM filed a petition with the Trademark Trial and Appeal Board to cancel Corcamore’s registration. Corcamore argued that SFM lacked standing. The Board determined that the Supreme Court’s Lexmark decision was not applicable; Lexmark was limited to civil actions for false advertising (15 U.S.C. 1125(a)) and does not extend to cancellation of registered marks (section 1064). The court concluded that SFM had standing because it sufficiently alleged a real interest in the proceeding and a reasonable belief of damage. Corcamore informed SFM’s counsel that it would bring “procedural maneuvers,” then proceeded to file motions in violation of Board orders, to refuse to cooperate with discovery, and to disregard Board-imposed sanctions.The Board granted SFM default judgment, citing 37 C.F.R. 2.120(h) and its inherent authority to control its docket. The Board concluded that a lesser sanction would be inappropriate because Corcamore had already violated sanctions and had engaged in willful, bad-faith tactics, consistent with its “procedural maneuvers” letter, taxing Board resources. The Federal Circuit affirmed. SFM was entitled to maintain a petition for cancellation of trademark registrations. The Board did not abuse its discretion in imposing default judgment. View "Corcamore, LLC v. SFM, LLC" on Justia Law

In regulating the practice of engineering, Mississippi restricts the use of the term “engineer.” Express operates automotive service centers in Mississippi and other states under the Tire Engineers mark. The Mississippi Board of Licensure for Professional Engineers & Surveyors informed Express that the name Tire Engineers violated Miss. Code 73-13-39 and requested that it change its company advertisement name. Express sought a declaratory judgment, citing Express’s “rights of commercial free speech guaranteed by the First Amendment”; and “rights under preemptive federal trademark law” under 15 U.S.C. 1051–1127. The district court granted the Board summary judgment. The Fifth Circuit reversed. The Board’s decision violates the First Amendment’s commercial speech protections. Because its essential character is not deceptive, Tire Engineers is not inherently misleading. The name, trademarked since 1948, apparently refers to the work of mechanics using their skills “not usu[ally] considered to fall within the scope of engineering” to solve “technical problems” related to selecting, rotating, balancing, and aligning tires. Nor is the name actually misleading. Because the name is potentially misleading, the Board’s asserted interests are substantial but the record does not support the need for a total ban on the name. Other states with similar statutes have not challenged the use of the trademark and the Board did not address why less-restrictive means, such as a disclaimer, would not accomplish its goal. View "Express Oil Change, L.L.C. v. Mississippi Board of Licensure for Professional Engineers & Surveyors" on Justia Law

Houston and the District of Columbia each sought to register an official seal as a trademark in connection with various governmental services, including commerce, tourism, business administration, and public utility services. The U.S. Patent and Trademark Office refused their applications, citing Section 2(b) of the Lanham Act, which prohibits registration of a proposed trademark that consists of or comprises the flag or coat of arms or other insignia of the United States, or of any state or municipality, or of any foreign nation, 15 U.S.C. 1052(b). The Trademark Trial and Appeal Board upheld the denials. The Federal Circuit affirmed, holding that the Board correctly interpreted Section 2. View "In re: City of Houston" on Justia Law

Alpha Marketing brought this cause of action against the Arkansas Lottery Commission seeking declaratory relief that Alpha's registered trademarks of "Arkansas Lottery," "Arkansas Lotto," and "Lottery Arkansas" were valid and that it held exclusive rights to use them. Alpha also sought injunctive relief enjoining the Commission's alleged acts of trademark infringement and monetary damages. Alpha later amended its complaint, alleging ultra vires acts and an unconstitutional taking. The Commission filed a motion to dismiss Alpha's lawsuit on the basis that the Commission had sovereign immunity from the trademark-infringement claims. The circuit court denied the motion. The Supreme Court reversed, holding (1) the Commission was an entity of the State entitled to the defense of sovereign immunity; (2) Alpha's claims for injunctive, monetary, and declaratory relief were barred by the defense of sovereign immunity; (3) the exceptions for waiver; ultra vires, arbitrary, capricious, or bad-faith acts; and takings did not apply. View "Ark. Lottery Comm'n v. Alpha Mktg." on Justia Law

B&B, manufacturer and seller of a product called "Sealtight," filed suit against Hargis, manufacturer of a product called "Sealtite," claiming trademark infringement and unfair competition. Hargis counterclaimed for false advertising and false designation of origin. The jury returned a verdict which rejected B&B's claims but found in favor of Hargis on its counterclaims. On appeal, B&B argued that the district court should have given preclusive effect to the Trademark Trial and Appeal Board's (TTAB) findings concerning the likelihood of confusion of the two companies' trademarks. B&B also appealed the award of attorney fees and costs. The court concluded that the district court properly refused to apply collateral estoppel to the TTAB's decision; rejected B&B's argument that the TTAB's factual findings from a trademark registration case were entitled to deference by the district court; and concluded that the district court did not abuse its discretion in excluding the TTAB's decision from the evidence presented to the jury. Therefore, the court affirmed the denial of B&B's motion for judgment as a matter of law or alternative motion for a new trial based on its claim of issue preclusion; affirmed the district court's evidentiary decisions; and remanded the award of attorney fees with directions to amend the award by deducting Hargis's attorney fees for the prior appeal. View "B & B Hardware v. Hargis Industries, et al" on Justia Law

Two computer programs hold the registered trademark "CONDOR." After the district court entered summary judgment, the Seventh Circuit concluded that a trial was required on a confusion-in-trade allegation, but held that the state university was immune from federal jurisdiction. On rehearing, the Seventh Circuit reversed itself, citing the doctrine of waiver by litigation conduct and again rejected summary judgment.The state is not entitled to assert sovereign immunity over the counterclaims.

Two computer programs hold the registered trademark "CONDOR." After the district court entered summary judgment, the Seventh Circuit concluded that a trial was required on a confusion-in-trade allegation, but held that the state university was immune from federal jurisdiction. On rehearing, the Seventh Circuit reversed itself, citing the doctrine of waiver by litigation conduct and again rejected summary judgment.The state is not entitled to assert sovereign immunity over the counterclaims.