IP UPDATE
Exploring the latest in intellectual property law
IP UPDATE
Exploring the latest in intellectual property law
Results for "Trademark appeal"
Subscribe to Results for "Trademark appeal"'s Posts

Standing: Don’t get owned by incorrect trademark ownership

by | Sep 4, 2025 |

The US Court of Appeals for the Second Circuit affirmed a district court’s dismissal of a trademark and unfair competition suit, ruling that the plaintiff did not own the asserted trademark. The Court also held that the owner of the trademark failed to ratify the action and therefore the plaintiff did not have standing to assert unfair competition claims. Ripple Analytics Inc. v. People Ctr., Inc., Case No. 24-490 (2d Cir. Aug. 26, 2025) (Park, Nathan, Perez, JJ.)

In March 2018, the US Patent & Trademark Office granted Ripple Analytics a federal trademark for RIPPLE in connection with human resources software. The following month, Ripple assigned all rights to its intellectual property to co-founder Noah Pusey via an assignment agreement. Around the same time, People Center applied to register RIPPLING for similar software. It later abandoned the application but continued to operate under the Rippling name.

Ripple sued People Center in 2020 for trademark infringement and unfair competition. During discovery, Ripple produced the assignment agreement. People Center responded by moving to amend its answer, seeking dismissal for failure to prosecute in the name of the real party in interest and requesting summary judgment.

The district court found that Pusey, not Ripple, was the real party in interest and dismissed the case because Pusey had not ratified the action under Federal Rule of Civil Procedure 17. It also dismissed the unfair competition claims for lack of standing and denied Ripple’s motion to amend the complaint as futile. Ripple appealed.

The Second Circuit affirmed the dismissal, finding that Ripple had “unambiguously” assigned all intellectual property rights, including the trademark at issue, to Pusey, making him the real party in interest. The Court emphasized that the assignment agreement transferred all of Ripple’s “claims, causes of action, and rights to sue,” regardless of when those claims arose. Ripple argued that Pusey satisfied Rule 17 by ratifying the pleadings and agreeing to be a plaintiff. The Court rejected this argument, noting that Pusey’s declaration stating his involvement in the case and strong interest in its outcome did not amount to an agreement to be bound by the suit, a requirement for ratification.

The Second Circuit determined that Ripple’s Lanham Act unfair competition claims failed because they were based on the inaccurate assertion that Ripple owned the RIPPLE mark. The Second Circuit also upheld the district court’s denial of Ripple’s motion to amend its complaint, explaining that the assignment agreement expressly barred Ripple from bringing suit.

Practice note: Before initiating trademark litigation, practitioners should conduct thorough due diligence on ownership to avoid standing issues. Defendants should consider initiating early discovery on ownership of the rights being asserted.



read more

It’s not monkey business: NFTs can be trademarked

by | Jul 31, 2025 |

The US Court of Appeals for the Ninth Circuit concluded that a non-fungible token (NFT) is a “good” under the Lanham Act but reversed the district court’s grant of summary judgment for trademark infringement because the owner did not prove as a matter of law that the defendants’ use was likely to cause confusion. The Ninth Circuit also affirmed the district court’s dismissal of the defendants’ counterclaim for declaratory relief regarding copyright ownership. Yuga Labs, Inc. v. Ryder Ripps and Jeremy Cahen, Case No. 24-879 (9th Cir. July 23, 2025) (Bade, Forrest, Curiel, JJ.)

Yuga Labs is the creator of the Bored Ape Yacht Club (BAYC) NFT collection. Yuga created this collection through a smart contract recorded on the blockchain Ethereum. Each BAYC NFT has a cartoon of a bored ape and a sequential unique identifier called an ape ID. Per its terms and conditions, BAYC NFT consumers receive commercial and personal rights free of royalty fees.

Ryder Ripps and Jermey Cahen created the Ryder Ripps Bored Ape Yacht Club (RR/BAYC) using the same ape images and ape IDs. The collection was also hosted on an Ethereum blockchain smart contract. They criticized Yuga for “using neo-Nazi symbolism, alt-right dog whistles, and racist imagery” and alleged that they created RR/BAYC as satire and criticism. Ripps made the RR/BAYC smart contracts’ names “Bored Ape Yacht Club” and made the smart contract symbol “BAYC.” Ripps’ website includes an artist statement that the artwork is a “new mint of BAYC imagery.” NFT marketplace websites for RR/BAYC displayed a large header “Bored Ape Yacht Club” and in a smaller text “@ryder_ripps.”

Yuga sued Ripps and Cahen for several claims, including trademark infringement based on a false designation of origin theory, false advertising, and cybersquatting. In response, the defendants asserted that Yuga did not have enforceable trademark rights, and even if it did, the defendants’ use was protected by fair use and the First Amendment. The defendants asserted several counterclaims, including knowing misrepresentation of infringing activity under the Digital Millenium Copyright Act (DMCA), and sought declaratory judgment of no copyright ownership.

The district court granted Yuga’s motion for summary judgment on its false designation of origin and cybersquatting claims. Yuga withdrew its remaining claims, so the trial proceeded only for equitable remedies on the false designation of origin and cybersquatting. At trial, the district court found that Yuga’s BAYC marks were unregistered trademarks. The district court awarded Yuga disgorgement of the defendants’ profits, maximum statutory damages, and attorneys’ fees after finding that the case was exceptional due to the defendants’ willful infringement, bad faith intent to profit, and litigation conduct. The defendants were also permanently enjoined. The defendants appealed the grant of summary judgment and sought vacatur of the remedies.

The Ninth Circuit first addressed the defendants’ argument that NFTs are not goods protected by the Lanham Act. The Court concluded that NFTs are goods under the Lanham Act based on a US Patent & Trademark Office report that determined them as such. The Court also [...]

Continue Reading



read more

Don’t walk away: Trademark owner can’t bring infringement suit against co-owner

by | Jul 17, 2025 |

The US Court of Appeals for the Fifth Circuit upheld a district court’s summary judgment decision that a co-owner of a trademark cannot bring infringement or dilution claims under the Lanham Act against other co-owners or their licensees. Reed v. Marshall et al., Case No. 24-20198 (5th Cir. July 2, 2025) (Graves, Smith, Duncan, JJ.)

Originally formed by Di Reed, Joi Marshall, and Tonya Harris (aka Tonya Kelly), Jade was a music group that enjoyed commercial success before disbanding in 1995. In 2018, the trio attempted a reunion and jointly applied for the federal service mark JADE, which was registered in June 2019. The reunion ultimately did not materialize. In 2021, Marshall and Harris began performing under the JADE name with a new singer, Myracle Holloway, engaged under a six-month work-for-hire agreement. Reed objected, claiming they used the jointly owned mark without her consent, and filed suit in the US District Court for the Southern District of Texas, asserting claims under the Lanham Act and Texas law. The district court granted summary judgment in favor of Marshall and Harris. Reed appealed.

The Fifth Circuit affirmed. The central question was whether a co-owner of a federally registered trademark may bring an action under the Lanham Act against another co-owner for alleged unauthorized use of the mark.

The district court concluded that absent a contractual agreement to the contrary, co-owners of a trademark each have equal rights to use the mark. The Fifth Circuit affirmed that the Lanham Act does not authorize one co-owner to sue another for infringement or dilution; such disputes must be resolved through contract law or other private arrangements. Because Holloway’s use of the mark was authorized by two co-owners of the registration, she too was shielded from liability under the Lanham Act.

The Fifth Circuit also rejected Reed’s unfair competition and dilution claims, finding no evidence of misuse that would infringe the rights of an equal co-owner.

Practice note: When multiple parties intend to co-own a trademark, it is usually advisable to enter into an agreement that clearly defines each party’s rights and limitations on use. Without such an agreement, co-owners may find themselves with limited recourse in the event of a dispute.



read more

Jurisdiction Affirmed: Trademark Ripples Reach US Shores

by | Jun 18, 2025 |

Addressing for the first time the issue of whether a foreign intellectual property holding company is subject to personal jurisdiction in the United States, the US Court of Appeals for the Eleventh Circuit reversed a district court’s dismissal and determined that the holding company, which had sought and obtained more than 60 US trademark registrations, had sufficient contacts with the US to support exercise of personal jurisdiction. Jekyll Island-State Park Auth. v. Polygroup Macau Ltd., Case No. 23-114 (11th Cir. June. 10, 2025) (Rosenbaum, Lagoa, Wilson, JJ.)

Polygroup Macau is an intellectual property holding company registered and headquartered in the British Virgin Islands. Jekyll Island is a Georgia entity that operates the Summer Waves Water Park and owns a federally registered trademark for the words SUMMER WAVES. In 2021, Jekyll Island discovered that Polygroup Macau had registered nearly identical SUMMER WAVES marks. After Polygroup Macau asked to buy Jekyll Island’s domain name, summerwaves.com, Jekyll Island sued Polygroup Macau for trademark infringement and to cancel Polygroup Macau’s marks. The district court dismissed the case for lack of personal jurisdiction, finding that “the ‘causal connection’ between Polygroup Macau’s activities in the United States and Jekyll Island’s trademark claims was too ‘attenuated’ to support personal jurisdiction.” Jekyll Island appealed.

The Eleventh Circuit reviewed whether personal jurisdiction was proper under Federal Rule of Civil Procedure 4(k)(2), also known as the national long-arm statute. Rule 4(k)(2) allows courts to exercise personal jurisdiction over foreign defendants that have enough contacts with the US as a whole, but not with a single state, to support personal jurisdiction. To establish personal jurisdiction under Rule 4(k)(2), a plaintiff must show that:

  • Its claim arises under federal law.
  • The defendant is not subject to jurisdiction in any state’s courts of general jurisdiction.
  • “[E]xercising jurisdiction is consistent with the United States Constitution and laws.”

The parties agreed that the first two elements were satisfied; the only dispute was whether the exercise of jurisdiction was consistent with due process.

The Eleventh Circuit noted that in the patent context, the Federal Circuit determined that a foreign defendant that “sought and obtained a property interest from a U.S. agency has purposefully availed itself of the laws of the United States.” The Eleventh Circuit found that a trademark registration is even stronger than patent rights because a “trademark registrant must show that he is already using the mark in U.S. commerce to identify and distinguish goods or intends to soon.” Polygroup Macau had more than 60 registrations and allowed other companies and customers to use those marks, which was enough to establish that it had sought out the benefits afforded under US law.

Additionally, while Polygroup Macau did not license its trademark rights, it permitted other related companies to use the SUMMER WAVES trademark to identify their products. Products marked with Polygroup Macau’s registered mark were sold in the US through dozens of retailers. Although there were no formal written agreements, the Eleventh Circuit found that Polygroup Macau exercised some degree of control [...]

Continue Reading



read more

Speculation of Harm Isn’t Standing: Not Every Adverse Board Decision Is Ticket to Appeal

by | Jun 12, 2025 | ,

After assessing whether a patent owner had standing to appeal the Patent Trial & Appeal Board’s final written decision, the US Court of Appeals for the Federal Circuit found no injury in fact to support Article III jurisdiction and dismissed the appeal. Dolby Labs. Licensing Corp. v. Unified Patents, LLC, Case No. 23-2110 (Fed. Cir. June 5, 2025) (Moore, Clevenger, Chen, JJ.)

Dolby owns a patent covering a prediction method involving an in-loop filter. Unified Patents, claiming to be the sole real party in interest (RPI), filed an inter partes review (IPR) challenging several patent claims as anticipated and obvious. Dolby contested the challenge, identifying nine additional entities it argued should have been named as RPIs (alleged RPIs). The Board declined to rule on Dolby’s inclusion, however, and proceeded with Unified as the sole RPI.

In its final written decision, the Board found that Unified failed to establish the unpatentability of any challenged claims. Consistent with the US Patent & Trademark Office’s practice, it also declined to address the RPI dispute, finding it immaterial – there was no evidence the alleged RPIs were estopped from filing their own IPRs later or that Unified had advantageously or strategically omitted them. Dolby appealed.

The Federal Circuit explained that when it reviews final Board decisions, its jurisdiction is constrained by Article III’s “Cases” and “Controversies” requirement. To establish standing, an appellant must demonstrate:

  • A concrete and particularized injury in fact that is actual or imminent, not speculative.
  • A causal link between the injury and the appellee’s challenged conduct.
  • A likelihood that the injury will be redressed by a favorable ruling.

Dolby asserted standing to appeal the Board’s refusal to address the RPI dispute based on three grounds:

Its statutory right to appeal as a “dissatisfied” party under 35 U.S.C. § 319.

  • The denial of its right to information under 35 U.S.C. § 312(a)(2).
  • An injury in fact arising from potential breaches of license agreements by the alleged RPIs and possible conflicts of interest involving the Board’s administrative patent judges.

The Federal Circuit rejected Dolby’s argument that it had a right to appeal based solely on dissatisfaction with the Board’s decision. The Court explained that the right to appeal a Board decision under the America Invents Act (AIA) requires Article III standing. The Court also dismissed Dolby’s argument for a statutory right to RPI information, finding that the AIA does not create an informational right. The Court explained that unlike statutes such as the Federal Advisory Committee Act or the Federal Election Campaign Act, which expressly grant public access to information, the AIA lacks a public access provision and explicitly limits judicial review of IPR-related determinations, including RPI disclosures.

As to Dolby’s right to appeal the Board decision, the Federal Circuit found Dolby’s argument too speculative to establish standing, citing four key deficiencies:

Dolby failed to assert that any alleged RPIs were party to license agreements, undermining its claim of potential breach.



read more

Stylish but Generic: ‘VETEMENTS’ Can’t Dress Up as Trademark

by | May 29, 2025 |

The US Court of Appeals for the Federal Circuit affirmed the Trademark Trial & Appeal Board’s refusal to register the mark VETEMENTS for clothing and related retail services, finding that the mark was generic under the doctrine of foreign equivalents. In re Vetements Group AG, Case Nos. 2023-2050; -2051 (Fed. Cir. May 21, 2025) (Prost, Wallach, Chen, JJ.)

Vetements Group AG applied to register the mark VETEMENTS for various clothing items and online retail store services for clothing items. The US Patent & Trademark Office refused registration, finding the mark generic or, in the alternative, merely descriptive without acquired distinctiveness under Section 2(e)(1) of the Lanham Act. The Board affirmed, applying the doctrine of foreign equivalents to translate “vetements” (French for “clothing”) and concluding that the term was generic for the applied-for goods and services pertaining to clothing. Vetements Group appealed.

The doctrine of foreign equivalents is used to evaluate whether a non-English trademark is generic or descriptive for the applied-for goods or services by translating the foreign-language mark into English, then applying the relevant legal tests. The Federal Circuit affirmed that the doctrine applies when the “ordinary American purchaser” would likely “stop and translate” the foreign word into English. The “ordinary American purchaser” includes all US consumers, including those familiar with the foreign language.

The Federal Circuit emphasized that words from modern languages are generally translated unless there is a compelling reason not to do so. It rejected Vetements’ argument that the doctrine should only apply if a majority of US consumers understand the foreign word. Instead, the Court held that it is sufficient if an “appreciable number” of US consumers would recognize and translate the term.

In this case, the Federal Circuit found that French is widely spoken and taught in the United States (the Board found that as of 2010, French was the fifth most spoken non-English language at home and the second most widely taught non-English language in US schools). The Court thus concluded that “vetements” is a common French word meaning “clothing,” and that given the mark’s use on apparel and in connection with clothing-related retail services, translation of the term into English was likely.

Under the doctrine of foreign equivalents, foreign terms used as trademarks are translated into English, then evaluated under the applicable standards, including genericness, descriptiveness, and likelihood of confusion. In assessing whether a term is generic, courts apply a two-part test: identifying the genus of goods or services at issue, and determining whether the relevant public understands the term primarily to refer to that genus.

Here, the genus was clothing and online retail services for clothing. The Federal Circuit agreed with the Board that “vetements,” once translated to “clothing,” directly named the genus of the goods and services. Therefore, the term was generic and ineligible for trademark protection.

Because the mark was found to be generic, the Federal Circuit explained that it did not have to reach the Board’s alternative holding that the VETEMENTS mark was merely descriptive without acquired distinctiveness [...]

Continue Reading



read more

Up in Smoke: Statutory Trademark Damages Can Exceed Actual Damages

by | May 15, 2025 |

Addressing a jury’s statutory damages award that surpassed the plaintiffs’ actual damages, the US Court of Appeals for the Eleventh Circuit affirmed the district court’s denial of the defendant’s motion for judgment as a matter of law (JMOL), finding that the award was consistent with trademark damages law given the jury’s finding of no willfulness and was not violative of constitutional due process. Top Tobacco, L.P. v. Star Importers & Wholesalers, Inc., Case No. 24-10765 (11th Cir. Apr. 30, 2025) (Pryor, Grant, Kid, JJ.)

Top Tobacco, Republic Technologies, and Republic Tobacco (collectively, Republic) sued Star Importers & Wholesalers for trademark violations and the sale of counterfeit cigarette rolling papers. Prior to trial, the district court granted summary judgment in favor of Republic. Thus, the only issues tried to the jury were damages related, including whether Star’s conduct had been willful, whether the company’s president should be personally liable, and the appropriate damages award.

Republic sought damages under 15 U.S.C. § 1117(c) of the Lanham Act, permitting the jury to look beyond actual damages and award up to $200,000 per non-willfully infringed mark or $2 million per willfully infringed mark. The jury instructions explained to the jury that it could consider multiple factors, including lost revenue, the conduct’s willfulness, and whether the counterfeit goods were a public safety risk. The instructions also clarified that the statute permitted both compensatory and punitive rationales for the award, as long as it was not a windfall for Republic. Ultimately, the jury found that Star’s conduct had not been willful and granted the plaintiffs $123,000 per infringed mark. Star moved for JMOL, arguing the total $1.107 million award was inconsistent with the finding of no willfulness. The district court denied the motion. Star appealed.

The Eleventh Circuit affirmed the district court’s denial of the JMOL motion, concluding that:

  • The jury was permitted to provide an award greater than actual damages.
  • The jury was permitted to consider punitive and deterrence rationales despite finding the actions were not willful.
  • The award did not violate constitutional due process.

Applying the principles of statutory construction, the Eleventh Circuit explained that because § 1117(a) permits an award for actual damages, § 1117(c)’s purpose was explicitly to allow awards greater than the actual loss suffered. Further, the jury’s role of factfinder under the Seventh Amendment precluded the district court from overriding a verdict that fell within the statute. Finally, the Court noted that the jury instructions were a safeguard against punishing defendants without any regard for actual damages because the instructions protected against a windfall for the plaintiff. In this case, the jury had facts regarding the marks’ strength, potential dangers of the counterfeit papers’ chemicals, and the prevalence of counterfeiting in the industry. Thus, the Court found that the jury had substantial evidence for the award – which was below the statutory maximum – and that it was not a windfall for Republic.

Similarly, the Eleventh Circuit reasoned that since the jury awarded damages below the statutory maximum [...]

Continue Reading



read more

Beach Buggy Battle: Stipulation Insufficient to Establish Trademark Distinctiveness

by | Jan 30, 2025 |

The US Court of Appeals for the Fourth Circuit found that a district court does not need to accept both parties’ stipulation that a mark is distinctive but instead is permitted to make an evidentiary inquiry in determining whether the mark is distinctive or generic. Moke America LLC v. Moke Int’l Ltd., Case No. 23-1634 (4th Cir. Jan. 15, 2025) (King, Groh, JJ.) (Richardson, J., dissenting).

Starting in the 1960s, British Motor Corporation (BMC) sold vehicles colloquially referred to as “Mokes” in the United Kingdom, Australia, and Portugal. By the time BMC ceased production in 1993, Mokes had garnered a small but devoted following for use as beach buggies in the United States, the Caribbean, and Australia.

In August 2015, Moke International and Moke USA sold their first vehicle using the MOKE mark and subsequently sought trademark registration. One year later, Moke America began US sales of vehicles using the MOKE mark. Both parties described their vehicles as being reengineered and redesigned versions of the BMC Moke.

The present dispute began when Moke America opposed Moke International and Moke USA’s registration based on priority use of the MOKE mark. The Trademark Trial & Appeal Board dismissed the opposition. Moke America then filed a district court complaint seeking a declaration of trademark ownership and asserting trademark infringement. Moke International and Moke USA counterclaimed for a declaration of trademark ownership and trademark infringement, as well as affirmance of the Board’s dismissal.

A party claiming ownership of a mark bears the burden of proving distinctiveness. A generic term is not distinctive. Generic terms in trademark law are those that describe a genus or class of which a particular product is a member, such as “CONVENIENT STORE retail stores, DRY ICE solid carbon dioxide, and LIGHT BEER ale-type beverages.” Generic terms can never be protected. The purpose of denying protection for these terms is to safeguard the public from having commonly used words and phrases removed from the “linguistic commons.” Certain marks that are originally distinctive may become generic through the public’s pervasive use of the term through a process known as “genericide.” Genericide occurs when the trademark ceases to identify the particular source of a product or service to the public and instead identifies a class of product or service. Common examples include ASPIRIN and ESCALATOR.

Since both parties sought ownership of the MOKE mark, the parties stipulated that the mark was distinctive and not generic. The district court found that a stipulation was insufficient and noted that the parties must set forth evidence that the mark was distinctive and not generic. The district court concluded that MOKE was once inherently distinctive but had become generic before either party sold a vehicle bearing the MOKE mark. Both parties appealed.

Seeking to overturn the district court’s finding of genericness, the parties argued that the district court was required to accept their stipulation of the MOKE mark’s distinctiveness. The Fourth Circuit disagreed, finding that blindly accepting a stipulation was incompatible with the court’s role of [...]

Continue Reading



read more

Lager Than Life: $56 Million Verdict in Beer Trademark Dispute Still on Tap

by | Jan 16, 2025 |

The US Court of Appeals for the Ninth Circuit upheld a $56 million trial verdict in a trademark dispute, finding that the evidence supported the jury’s conclusion that a beer company’s rebranding of one its beers infringed a competitor’s trademark. Stone Brewing Co., LLC v. Molson Coors Beverage Company USA LLC, Case No. 23-3142 (9th Cir. Dec. 30, 2024) (Graber, Friedland, Bumatay, JJ.) (nonprecedential).

Stone Brewing sued Molson Coors in 2018 alleging that Molson changed its packaging of Keystone Light to emphasize the word “stone” in its “Own the Stone” marketing campaign, and that this change infringed Stone Brewing’s trademarks and caused consumer confusion. Molson raised a variety of defenses, all of which were rejected. A jury found infringement and ultimately awarded Stone Brewing $56 million. Molson appealed.

Molson argued that the district court erred in finding that the four-year laches clock did not bar Stone Brewing’s Lanham Act claims. The Ninth Circuit found that the laches clock began running in 2017 when Molson launched the “Own the Stone” campaign, to which all of Stone Brewing’s claims related. The Court noted that prior to 2017, Molson never referred to Keystone as anything other than Keystone in its packaging, marketing, or advertising materials, and specifically never broke up the product name “Keystone” and used the term “Stones” to refer to the number of beers in a case (“30 stones”) or as a catch phrase (e.g., “Hold my Stones”). Thus, the Court found that Stone Brewing brought the suit within the four-year statute of limitations period.

Molson also argued that the district court erred in refusing to set aside the jury verdict on the ground that Molson had a superior interest in the STONE mark. Stone Brewing applied to register the STONE mark in 1996, and the Ninth Circuit found there was substantial evidence that Molson did not approve production of packaging that used “Stone” before that date.

Molson argued that the district court erred in refusing to set aside the jury verdict on likelihood of confusion. The Ninth Circuit disagreed, explaining that Stone Brewing provided evidence from which a jury could plausibly conclude there was “actual confusion” by distributors and customers who thought that Stone Brewing sold Keystone Light. The Court noted that Molson expressly de-emphasized “Keystone” and instead highlighted “Stone” in its 2017 product refresh. The Court also explained that both brands compete in the same beer space, use the same marketing and distribution channels, and are relatively inexpensive products, all of which allowed the jury to plausibly conclude that Molson’s 2017 product refresh of Keystone Light was likely to cause consumer confusion.

Molson also challenged the damages award. At trial, Stone Brewing sought damages in three categories:

  • $32.7 million for past lost profits
  • $141.4 million for future lost profits
  • $41.8 million for corrective advertising.

The jury returned a verdict of $56 million in general damages, which was about one quarter of the requested damages, but did not indicate what amount came from each category. Molson argued that [...]

Continue Reading



read more

Time’s Up: Fifth Circuit Reinstates Original Judgment in Trademark Dispute

by | Dec 5, 2024 |

The US Court of Appeals for the Fifth Circuit vacated a district court’s amended final judgment and reinstated its prior final judgment, finding that the district court overstepped its narrow mandate on remand, directly contradicting the Fifth Circuit’s earlier decision. In that earlier decision, the Fifth Circuit upheld the district court’s finding of trademark infringement but modified the scope of the injunction, approving it only in part. Rolex Watch USA, Incorporated v. BeckerTime, L.L.C., Case No. 24-10415 (5th Cir. Nov. 20, 2024) (Douglas, King, Willett, JJ.)

BeckerTime modified and sold Rolex-branded watches by adding diamonds, aftermarket bezels, and bands not authorized by Rolex. Rolex sued BeckerTime for trademark infringement, seeking an injunction and disgorgement of profits. While the district court found that BeckerTime infringed Rolex’s trademark, it declined to order disgorgement because of BeckerTime’s laches defense. In the first appeal, the Fifth Circuit upheld the infringement finding, noting that BeckerTime’s modifications of diamonds and aftermarket bezels went beyond mere repairs and restoration. However, the Fifth Circuit partially modified the district court’s injunction and issued a limited remand to clarify certain language in the injunction. On remand, Rolex and BeckerTime agreed on revised language for that portion of the injunction, which the district court approved. The district court, however, went further by amending other sections of the injunction. This appeal followed.

Both parties agreed that the district court had exceeded its mandate. The amendments permitted BeckerTime to advertise and sell Rolex watches with customized dials under certain conditions, requiring disclosures and inscriptions reading “CUSTOMIZED BY BECKERTIME.” Rolex contended – and the Fifth Circuit agreed – that this language conflicted with the prohibition (in the injunction) of all non-genuine dials, including those bearing original Rolex trademarks.

The Fifth Circuit vacated the district court’s amended judgment and reinstated its prior judgment with modifications, incorporating its earlier decision and the parties’ stipulation.



read more

BLOG EDITORS

Paul Devinsky

Amol Parikh

Jodi Benassi

STAY CONNECTED

Subscribe

TOPICS

ARCHIVES