Latest 3 Cases This Week: Flexible Steel Lacing Co. v. Conveyor Accessories, Inc. (7th Cir.), Safeway Transit LLC v. Discount Party Bus, Inc. (8th ...

How Allen v. Cooper Breaks Important New (if Dubious) Ground on Stare Decisis

VIKRAM DAVID AMAR

Illinois Law dean and professor Vikram David Amar comments on language in a recent U.S. Supreme Court decision, Allen v. Cooperdiscussing constitutional stare decisis in the context of state sovereign immunity. Amar points out some of the problems with the Court’s jurisprudence on state sovereign immunity and Congress’s Section 5 power, and he questions the Allen majority’s embrace of a “special justification” requirement for constitutional stare decisis.

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Flexible Steel Lacing Co. v. Conveyor Accessories, Inc.

Court: US Court of Appeals for the Seventh Circuit

Docket: 19-2035

Opinion Date: April 7, 2020

Judge: Kenneth Francis Ripple

Areas of Law: Intellectual Property, Trademark

Flexco sued for trade dress infringement and unfair competition, alleging that CAI infringed its registered and common law trade dress by promoting and selling conveyor belt fasteners with a product design that is confusingly similar to the product design of Flexco’s fasteners. Flexco cited the Lanham Act, 15 U.S.C. 1114 and 1125(a), and the Illinois Uniform Deceptive Trade Practices Act, 815 ILCS 510/2. CAI sought cancellation of Flexco’s registered trademarks and a declaratory judgment of invalidity, unenforceability, and noninfringement. The district court granted CAI summary judgment, holding that Flexco’s trade dress was functional. The Seventh Circuit affirmed. Flexco’s utility patent discloses the utilitarian benefits of the beveled center scallop and is strong evidence of the functionality of Flexco’s trade dress; that evidence is bolstered by Flexco’s own advertisements, internal communications, and statements to the Patent Office. Where functionality is established, there is no need to consider alternative design possibilities.

Safeway Transit LLC v. Discount Party Bus, Inc.

Court: US Court of Appeals for the Eighth Circuit

Docket: 18-2990

Opinion Date: April 6, 2020

Judge: Lavenski R. Smith

Areas of Law: Intellectual Property, Trademark

Safeway and its proprietor filed suit against DPB and its owner, alleging federal trademark infringement under the Lanham Act and deceptive trade practices under Minnesota state law. Safeway claimed that DPB infringed two unregistered description trademarks -- "Rent My Party Bus" and "952 Limo Bus." The district court permanently enjoined defendants from using the trademarks or related domain names, keywords, or hashtags in connection with the advertisement, marketing, or sale of transportation services. However, the district court denied plaintiffs' requests for disgorgement of profits and attorney's fees. The Eighth Circuit affirmed, holding that the district court's finding of no actual confusion and thus, no unjust enrichment, was not clearly erroneous; the district court did not erroneously place the burden of proof on Safeway to prove unjust enrichment; and Safeway bore the burden of proving DPB's sales. The court also held that the district court's findings, when taken in their totality, support its conclusion that Safeway is not entitled to a disgorgement of profits based on deterrence. In this case, the district court actually found that DPB held a good faith belief in its right to use the trademarks. Finally, the district court did not abuse its discretion in denying Safeway's request for disgorgement of profits, and did not abuse its discretion in denying Safeway's request for attorney's fees.

In Re: Forney Industries, Inc.

Court: US Court of Appeals for the Federal Circuit

Docket: 19-1073

Opinion Date: April 8, 2020

Judge: O'Malley

Areas of Law: Intellectual Property, Trademark

Forney sells welding and machining products in packaging that displays its proposed mark. Forney applied for a trademark based on use in commerce under the Lanham Act, 15 U.S.C. 1051(a). Forney sought to register the mark without showing acquired distinctiveness, identifying its mark as a “color mark.” Forney stated: “[t]he mark consists of a solid black stripe at the top. Below the solid black stripe is the color yellow which fades into the color red. These colors are located on the packaging and or labels.” The examining attorney refused registration, finding the mark “not inherently distinctive” and stating that “[s]uch marks are registrable only ... with sufficient proof of acquired distinctiveness.” Forney revised the description: “The mark consists of the colors red into yellow with a black banner located near the top as applied to packaging for the goods. The dotted lines merely depict placement of the mark on the packing backer card.” The examining attorney again refused registration. The Trademark Trial and Appeal Board affirmed, treating the proposed mark as a color mark consisting of multiple colors applied to product packaging. The Federal Circuit vacated. The Board erred in finding that a color mark can never be inherently distinctive in the trade dress context and that, even if a color mark could be inherently distinctive, it cannot be absent a well-defined peripheral shape or border.