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Results for "Trademark appeal"
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Sometimes Inactions Speak Louder Than Words

by | Sep 22, 2022 |

The US Court of Appeals for the Federal Circuit affirmed a decision granting summary judgment in favor of the US Patent & Trademark Office (PTO) regarding the propriety of imposing a restriction requirement on a pre-General Agreement on Tariffs and Trade (GATT) patent. Hyatt v. PTO, Case No. 2021-2324 (Fed. Cir. Sept. 8, 2022) (Moore, Prost, and Hughes, JJ.)

This action arose from the prosecution of a pre-GATT application that claimed priority to applications filed as early as 1983. The issue stems from changes to US patent law limiting patent terms to 20 years from their filing date. The old law provided a grant that lasted 17 years from a patent issuance. As the Federal Circuit noted in early litigation involving Gilbert Hyatt, tying patent term to the grant date “incentivized certain patentees to delay prosecuting their patents by abandoning applications and filing continuing applications in their place.” But the change in law left a gap for so-called transitional applications—those filed but not yet granted before the new law took effect. This “‘triggered a patent application gold rush in the spring of 1995’ by applicants who wanted their patent claims to be governed under the [old law]­ … This gold rush is ‘often referred to as the ‘GATT Bubble.’’”

Hyatt, a prolific inventor, is named in a series of pre-GATT applications filed in 1995 during the GATT bubble. Since then, he has continued to prosecute these applications. As a result of various litigations, the PTO stayed the prosecution of many of these applications between 2003 and 2012. In 2013, over Hyatt’s objections, the PTO required him to select eight claims from an application containing 200 for prosecution. In 2015, the PTO issued a non-final rejection on said claims. Hyatt responded by essentially rewriting the claims in their entirety. The examiner then issued a restriction requirement between the original and amended claims, which would require Hyatt to submit a new application with the new claims, which would be subject to the new law. The restriction requirement was based on the “applicant-action exception,” which allowed the PTO to issue a restriction requirement when the examiner could not have previously made one because of the actions of the applicant. The authority for the PTO action was rooted in Rule 129 (b)(1) (ii), which in relevant part provides:

(1) In an application … that has been pending for

at least three years as of June 8, 1995 … no requirement

for restriction . . . shall be made or maintained

in the application after June 8, 1995, except where:

…

(ii) The examiner has not made a requirement for

restriction in the present or parent application

prior to April 8, 1995, due to actions by the applicant

…

After the PTO issued a restriction requirement, Hyatt filed an action in the US District Court for the Eastern District of Virginia, alleging that the PTO violated the Administrative Procedure Act because the restriction requirement was arbitrary, capricious, an abuse of discretion or otherwise not in [...]

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PTO Director Lays Out Limits on “Roadmapping” as Factor for Discretionary IPR Denials

by | Sep 15, 2022 |

Exercising its discretion under 35 U.S.C. § 314(a), the Patent Trial & Appeal Board (Board) denied institution of two inter partes reviews (IPRs) based on its understanding of its own precedential 2017 decision in Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha. US Patent & Trademark Office Director Kathi Vidal subsequently reversed the Board’s ruling in a precedential sua sponte decision clarifying how to apply the seven factors set forth in General Plastic. Code200, UAB v. Bright Data, Ltd., IPR2022-00861; -00862, Paper 18 (PTAB Aug. 23, 2022) (Vidal, Dir. of PTO).

In General Plastic, the Board addressed the practice of filing seriatim petitions attacking the same patent, where each petition raises a new ground for invalidity. The Board considers the General Plastic factors when determining whether to deny IPR institution to ensure efficient post-grant review procedures and prevent inequity. The seven factors are as follows:

  1. Whether the same petitioner previously filed a petition directed to the same claims of the same patent
  2. Whether at the time of filing of the first petition the petitioner knew of the prior art asserted in the second petition or should have known of it
  3. Whether at the time of filing of the second petition the petitioner had already received the patent owner’s preliminary response to the first petition or had received the Board’s decision on whether to institute review in the first petition
  4. The length of time that elapsed between the time the petitioner learned of the prior art asserted in the second petition and the filing of the second petition
  5. Whether the petitioner provided adequate explanation for the time elapsed between the filings of multiple petitions directed to the same claims of the same patent
  6. The finite resources of the Board
  7. The requirement under 35 U.S.C. § 316(a)(11) to issue a final determination no later than one year after the date on which the PTO Director notices institution of review.

In denying institution in this case, the Board explained that the petitioner’s failure to stipulate that it would not pursue the same grounds in district court “weigh[ed] strongly in favor of exercising discretion to deny institution and outweigh[ed] the fact that the Board did not substantively address the merits of the prior petition.” Director Vidal disagreed, reasoning that when a first petition is not decided on its merits, a follow-on petition affords a petitioner the opportunity to receive substantive consideration. Director Vidal further explained that factor 1 “must be read in conjunction with factors 2 and 3.” Application of factor 1 in a vacuum strips context from a petitioner’s challenges and creates an inappropriate bright-line rule for denying institution.

Proper application of the General Plastic factors requires consideration of the potential for abuse by a petitioner. Director Vidal noted the problem of “roadmapping” raised in General Plastic (i.e., using one or more Board decisions to create a roadmap for follow-on filings until the petitioner finds a ground that results in institution). A denial decision based solely on the [...]

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If You Come for the Prince, You Best Not Miss

by | Sep 15, 2022 |

In a precedential decision, the Trademark Trial & Appeal Board (Board) granted two opposers’ motions for partial judgment on their claim of false suggestion of a connection under Section 2(a) of the Trademark Act based on a trademark application to register the mark PURPLE RAIN. NPG Records, LLC, and Paisley Park Enterprises, LLC v. JHO Intellectual Property Holdings LLC, Opp. No. 91269739 (TTAB Aug. 23, 2022) (Kuczma, Adlin, Johnson, Administrative Trademark Judges) (per curiam).

JHO Intellectual Property Holdings sought to register the mark PURPLE RAIN on the Principal Register in standard characters for several dietary and supplemental energy drinks and for “Energy drinks; Isotonic drinks; Non-alcoholic drinks, namely, energy shots, Sports drinks.” Paisley Park opposed, claiming to own rights in the name, image and likeness of famed musical artist Prince. NPG also opposed, claiming to own registered and common law rights in the trademark PURPLE RAIN. Paisley Park and NPG moved for summary judgment based on an assertion of false suggestion of a connection with Prince under Trademark Act Section 2(a). JHO admitted that its proposed mark was identical to Paisley Park and NPG’s marks and that its use of such mark was without consent or permission.

“Purple Rain” is associated (and often synonymous) with Prince. Paisley Park and NPG presented as evidence, for example, that PURPLE RAIN is a certified “13x Platinum” album selling millions worldwide, the 143rd Greatest Song of All Time according to Rolling Stone magazine, and the title of an Academy-Award-winning motion picture scored by and starring Prince. Paisley Park and NPG showed that unauthorized use of PURPLE RAIN is far from unusual, citing 17 unauthorized uses in December 2021. Paisley Park and NPG also had expert surveys conducted that established the connection between Prince and “Purple Rain.” JHO’s rebuttal included conclusory statements that the surveys conducted by Paisley Park and NPG’s expert did not ask respondents about the association of “Purple Rain” with energy drinks or supplements. JHO also pointed to a list from the US Patent & Trademark Office’s databases of third-party applications and registrations that includes PURPLE RAIN or its homophone PURPLE REIGN.

In view of Paisley Park and NPG’s evidence, the Board first found that there was no genuine dispute that the opposition was within reach of the Paisley Park and NPG’s zone of interests, and they were thus entitled to oppose registration of the mark.

Turning to the merits, the Board explained that in order to prevail on their motion under Section 2(a), Paisley Park and NPG were required to establish there was no genuine dispute that:

  • JHO’s mark is the same or a close approximation of Prince’s name or identity.
  • The mark is uniquely and unmistakably pointed to Prince.
  • Paisley Park and NPG are not connected with JHO’s goods or activities related to the mark.
  • “Purple Rain” is sufficiently famous to establish a presumed connection with Prince.

On the first factor, the Board explained that the approximation must be “more than merely intended to refer or intended to [...]

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Thee I Dismiss: No Love for Failure to Add Necessary Party

by | Sep 8, 2022 |

After concluding that a trademark owner’s case for failure to add a necessary party was untenable, the US Court of Appeals for the Fifth Circuit affirmed a district court’s dismissal of the case because the necessary party enjoyed sovereign immunity and could not be added. Lee et al. v. Anthony Lawrence Collection, L.L.C. et al., Case No. 20-30769 (5th Cir. Aug. 24, 2022) (Jolly, Elrod, Oldham. JJ.)

Curtis Bordenave and Paige Lee are in the business of owning trademarks. They petitioned the US Patent & Trademark Office (PTO) for a federal registration of the mark THEEILOVE. The phrase “Thee I Love” comes from Jackson State University, which has used the phrase for roughly 80 years. Collegiate Licensing Company is a licensing agent that handles the licensing of Jackson State’s trademarks to manufacturers that make and sell Jackson State merchandise.

Despite Jackson State’s decades-long use of the phrase, it never applied for a federal mark until after Bordenave and Lee had already done so. Jackson State did register a mark under Mississippi law in 2015 for use on vanity plates and in 2019 for use on other merchandise. It also claimed to have common-law rights to the mark under the Lanham Act.

Bordenave and Lee sued Collegiate Licensing Company and a few of the licensees in charge of producing and selling Jackson State’s merchandise for various claims related to their licensing, manufacturing and selling of “Thee I Love” merchandise, including trademark infringement and unfair competition under the Lanham Act. Bordenave and Lee sought damages, a permanent injunction barring the defendants from producing or selling any more “infringing” merchandise, and a declaration that defendants infringed Bordenave and Lee’s registered marks. The defendants moved to dismiss under Fed. R. Civ. Pro.12(b)(1) and (7), arguing that Jackson State was a required party, and because Jackson State enjoys sovereign immunity, Bordenave and Lee’s case should be dismissed. The district court dismissed the case without prejudice under Rule 12(b)(7). Bordenave and Lee appealed.

The Fifth Circuit affirmed the district court’s ruling. First, the Court determined that Jackson State was a required party, stating that Jackson State had an interest in the action that would be impaired or impeded if Jackson State was not joined in the suit. The Court reasoned that even if Jackson State remained free to challenge Bordenave and Lee’s ownership of THEEILOVE elsewhere, it could still face challenges protecting its interest if it was not joined in this action.

Next, because Jackson State has sovereign immunity, the Fifth Circuit considered whether the district court abused its discretion in dismissing the case rather than proceeding without Jackson State. Jackson State enjoys sovereign immunity as an arm of the State of Mississippi. Because Jackson State had a non-frivolous claim here, the Court found that dismissal was required because of the potential injury to Jackson State’s interest as an absent sovereign.

Finally, the Fifth Circuit considered the four factors under Rule 19(b) that determine whether an action should continue without the absent party or be dismissed. [...]

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Bayou Jambalaya: Sanction Motions, Motions to Vacate and Trade Dress Injunctions

by | Sep 8, 2022 |

The US Court of Appeals for the Fifth Circuit issued a three-part ruling that affirmed the district court’s denial of a motion to vacate as void the judgment based on Rooker-Feldman doctrine because the earlier state and district court decisions were not “inextricably intertwined,” affirmed the district court’s permanent injunction because the district court based it on the Fifth Circuit’s prior decision, and affirmed the denial of a motion for Rule 11 sanctions because the filed motion was different from the Rule-11-mandated notice that was originally served. Uptown Grill, L.L.C. v. Camellia Grill Holdings, Inc., Case No. 21-30639 (5th Cir. Aug. 23, 2022) (Higginbotham, Higginson, Oldham, JJ.)

This dispute arises from three agreements between Uptown Grill and Camellia Grill: the “Cash Sale, the Bill of Sale and the License Agreement. The Cash Sale and Bill of Sale transferred property from Camellia Grill to Uptown Grill. The License Agreement granted a license to Uptown Grill to use certain trademarks and trade dress. In 2011, Camellia Grill sued Uptown Grill for breach of the License Agreement in state court. The state court found that the appellee breached the license and restored to the appellant all rights to the marks. The court did not, however, construe the Bill of Sale.

While the state court litigation was on appeal, Camellia Grill sued Uptown Grill in federal court for trademark infringement. The district court found that the Bill of Sale transferred the trademarks to Uptown Grill before execution of the License Agreement, and therefore found that Camellia Grill’s infringement claim failed. However, the district court also found that the License Agreement limited Uptown Grill’s use of the trade dress to a single restaurant, and the court issued an injunction to that effect. The Fifth Circuit affirmed these findings in a 2019 decision in Uptown Grill, LLC v. Camellia Grill Holdings, Inc., but remanded the issue of whether Uptown Grill’s use of the Camellia grill trade dress at the new restaurant location constituted a breach of the License Agreement.

On remand, Camellia Grill moved for summary judgment that Uptown Grill breached the License Agreement by using the Camellia Grill trade dress after the termination of the License Agreement. Uptown Grill moved for partial summary judgment on the trade dress injunctions, arguing that Camellia Grill lacked standing since Uptown Grill was not using any trade dress at any new locations. Camellia Grill also filed a motion to dismiss for lack of jurisdiction under the Rooker-Feldman doctrine, under which “inferior federal courts do not have the power to modify or reverse state court judgments’ except when authorized by Congress.” Finally, Uptown Grill moved for sanctions against Camellia Grill for “abusive and harassing conduct.” The district court denied both Camellia Grill’s motion to dismiss for lack of jurisdiction and Uptown Grill’s motion for sanctions. The district court determined that Uptown Grill had breached the License Agreement’s post-termination provisions. The court also decided that the trade dress elements should be limited to that which is protectable under [...]

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Yes, and It Counts! Single Purchase in Forum Establishes Personal Jurisdiction over Infringer

by | Sep 1, 2022 |

The US Court of Appeals for the Seventh Circuit affirmed exercise of personal jurisdiction over a foreign online retailer for a trademark infringement claim where the trademark owner purchased the only allegedly infringing article sold in the forum. NBA Properties, Inc. v. HANWJH, Case No. 21-2909 (7th Cir. Aug. 16, 2022) (Ripple, Scudder, JJ.)

NBA Properties owns the trademarks for the National Basketball Association (NBA) and NBA teams. HANWJH is a China-based online retailer that sells allegedly infringing NBA branded products on a well-known e-commerce site. HANWJH offered 205 allegedly infringing products that were available for purchase in Illinois, the forum state. HANWJH’s only online order in Illinois was made by an investigator for NBA Properties who purchased a pair of basketball shorts for delivery to an Illinois address. The shorts were delivered to the Illinois address before NBA Properties filed suit against HANWJH.

NBA Properties sued HANWJH for trademark infringement and counterfeiting under 15 U.S.C. § 1114 and false designation of origin under 15 U.S.C. § 1125(a) in the Northern District of Illinois. NBA Properties sought and received a temporary restraining order and preliminary injunction, including a temporary asset restraint on HANWJH’s bank account. After HANWJH failed to timely answer the complaint, NBA Properties moved for default judgment. HANWJH moved to dismiss the case for lack of personal jurisdiction, arguing the following:

  • Operating a website is not sufficient on its own to establish personal jurisdiction.
  • A single transaction by the plaintiff cannot support the exercise of personal jurisdiction.
  • Even if the exercise of personal jurisdiction were otherwise appropriate, such exercise would offend the traditional notions of fair play and substantial justice.

The district court denied HANWJH’s motion to dismiss and entered a default. HANWJH failed to object to the motion for default judgment, and the district court entered a final judgment. HANWJH appealed.

The Seventh Circuit reviewed the “minimum contacts” International Shoe criterion before turning to a more recent line of cases applying this standard to online retailers. Citing its 2020 decision in Curry v. Revolution Laboratories, the Court noted that the minimum contacts requirement is satisfied if “the defendant reasonably could foresee that its product would be sold in the forum.” The Court reasoned that allowing customers to order products from a website to the forum and then fulfilling an order to the forum can form the basis of personal jurisdiction—even when the only orders to the forum were made by the plaintiff, as long as the orders were made before filing suit. Applying these principles, the Court found that HANWJH had purposefully directed conduct at Illinois by establishing an online store, demonstrating a willingness and capacity to ship goods to Illinois and intentionally shipping an infringing product to an Illinois address. The Court explained that it was irrelevant that only a single allegedly infringing article was sold in Illinois and that it was purchased by the plaintiff, because the proper focus of the analysis was on HANWJH’s purposeful conduct. The Court also concluded that HANWJH’s [...]

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Claim Cancelation Limits but Doesn’t Prohibit Assignor Estoppel Defense

by | Aug 25, 2022 |

On remand from the Supreme Court, the US Court of Appeals for the Federal Circuit reconsidered the boundaries of the doctrine of assignor estoppel. The Federal Circuit found that the patent assignor was estopped from challenging the validity of an asserted patent because the asserted claim was not materially broader than the specific claims assigned to the patent owner. Hologic, Inc. v. Minerva Surgical, Inc., Case Nos. 2019-2054; -2081 (Fed. Cir. Aug. 11, 2022) (Stoll, Clevenger, Wallach, JJ.)

Csaba Truckai filed a patent application for a device that was designed with a moisture-permeable head to treat abnormal uterine bleeding while avoiding unintended burning or ablation. Truckai assigned the pending patent application to his company, Novacept, which was later acquired by Hologic. Truckai then founded a new company, Minerva Surgical, and developed a new device that used moisture impermeability to avoid the unwanted ablation. Hologic subsequently filed a continuation application to expand the scope of its claims to encompass applicator heads in general, regardless of moisture permeability. The US Patent & Trademark Office issued a patent on the expanded claims in 2015, and Hologic subsequently sued Minerva for patent infringement.

Hologic argued that doctrine of assignor estoppel barred Minerva from challenging the validity of the patent claims. The district court agreed and granted summary judgment of infringement. On appeal, the Federal Circuit affirmed the summary judgment of no invalidity. The Supreme Court granted certiorari and declined Minerva’s request to discard the doctrine of assignor estoppel but clarified that it comes with limits, holding that “assignor estoppel applies only when an inventor says one thing (explicitly or implicitly) in assigning a patent and the opposite in litigation against the patent’s owner.” The Supreme Court remanded to the Federal Circuit to address whether Hologic’s claim was materially broader than the one Truckai assigned. The Supreme Court explained that if the asserted claim was materially broader than the assigned claim, “then Truckai could not have warranted its validity in making the assignment and without such a prior inconsistent representation, there is no basis for estoppel.”

On remand, the Federal Circuit considered whether Truckai warranted the assigned claim’s validity at the time of assignment and whether the assigned claim was materially broader than the asserted claim.

The Federal Circuit concluded that Truckai had represented that the assigned claim was valid. The Court explained that the assigned claim was initially rejected as being anticipated, but Truckai successfully argued for its allowance. The claim was then canceled in response to a restriction requirement, but such cancellation did not speak to the claim’s patentability because an assignee would understand that it could later prosecute the claim’s subject matter under standard patent practice. Therefore, cancelation did not nullify the claim, and it “remained viable for further prosecution.” Additionally, the assignment was not just to the rights to the application, but to the rights to any continuation, continuation-in-part or divisional patent applications not yet filed. When presenting the application, Truckai signed [...]

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Not “Use It or Lose It”: Even if Unexercised, Director’s Authority over Institution Decisions Remains

by | Aug 25, 2022 |

The US Court of Appeals for the Federal Circuit denied mandamus relief, finding that a party is not entitled to petition the director for review of a Patent Trial & Appeal Board (Board) decision denying institution of an inter partes review (IPR) or post-grant review (PGR) proceeding. This ruling reflects the Court’s ongoing consideration of the Supreme Court’s decision in United States v. Arthrex, Inc., which held that Board judges cannot constitutionally render final decisions in IPRs without US Patent & Trademark Office (PTO) Director oversight. Click here for our discussion of the case on remand, for which the Federal Circuit just denied en banc rehearing. In re Palo Alto Networks, Inc., Case No. 22-145 (Fed. Cir. Aug. 16, 2022) (Dyk, Chen, JJ.) (Reyna, J., concurring).

After being sued by Centripetal Systems for patent infringement, Palo Alto Networks filed petitions for IPR and PGR of some of the asserted patents. The Board denied institution, and Palo Alto Networks filed requests for Director rehearing. Although the PTO acknowledged receipt of the request, it informed Palo Alto Networks that the Director was not considering requests for rehearing of institution decisions “at this time.” Thereafter, Palo Alto Networks sought a writ of mandamus from the Federal Circuit. Between the request for mandamus and the Court’s decision, the PTO issued guidance explaining that although the PTO was not considering requests for rehearing, “the Director has always retained and continues to retain the authority to review such decisions sua sponte after issuance (at the Director’s discretion),” and indeed, exercised its authority to initiate sua sponte review since.

The Federal Circuit rejected Palo Alto Networks’ claim that the Director’s refusal to consider petitions for rehearing of institution decisions amounted to an abdication of authority prohibited by the Appointments Clause. Even assuming that institution decisions were “final decisions on how to exercise executive power” implicating the Appointments Clause, the Court found that the Director maintains statutory and regulatory authority to review institution decisions (unlike in Arthrex), and that the Board renders such decisions only based on the Director’s delegation of authority (also unlike Arthrex). Accordingly, the structural authority maintained by the Director is sufficient, even if such authority goes unexercised, according to the Court.

Writing separately, Judge Reyna agreed that no Appointments Clause violation had occurred but on different grounds. Although Judge Reyna noted that a categorical rejection of requests for rehearing by the Director might raise constitutional concerns, he concluded that mandamus was inappropriate for several reasons. First, the Director’s caveat that she refused to accept requests “at this time” did not constitute a categorical refusal but rather an exercise of discretion. Second, the Director’s invocation of her sua sponte authority to review belied a lack of exercise of discretion. The Director did in fact exercise sua sponte authority to consider Palo Alto Networks’ request, even though briefing in the Federal Circuit was pending, and thus a writ of mandamus was inappropriate.



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Seal of Disapproval: TTAB Refuses Registration of County Logos

by | Aug 18, 2022 |

The Trademark Trial & Appeal Board (Board) issued a precedential decision affirming the US Patent & Trademark Office (PTO) Examining Attorney’s refusal to register two different logo marks filed by southern California’s County of Orange because the marks consisted of and comprised, respectively, an insignia of a municipality. The Board found that a logo adopted by a government entity does not have to be “official” to constitute an insignia for which trademark registration is prohibited under Section 2(b) of the Trademark Act, 15 U.S.C. §1052(b). In re County of Orange, Ser. Nos. 87419378; 87639750 (TTAB, Aug. 4, 2022) (Shaw, Coggins, Allard, Administrative Trademark Judges).

The County applied to register two logo marks. The US trademark applications described one mark as “a circle with the image of three oranges in front of an orange grove and . . . mountains with the words ‘COUNTY OF ORANGE’ . . . and . . . ‘CALIFORNIA’ . . . [around] the circle” (Circle Mark). The second logo mark featured a park ranger badge design that encompassed the Circle Mark in its entirety.

The PTO examining attorney refused registration of both logo marks under Section 2(b), which imposes an absolute bar on registration on either the Principal or Supplemental Register of a mark that “[c]onsists 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, or any simulation thereof.”. This section reflects the sentiment that such symbols are indicia of government authority that ought to be reserved solely for signifying the government, and which should not be registered as symbols of origin for commercial goods and services.

On appeal to the Board, the County argued that the logo marks did not constitute “insignia” because they were not an “official” seal of the County, and, even if they were, registration should not be precluded because the County is not a “municipality.” Considering both of these arguments in turn, the Board provided analysis specific to both the circle and badge iterations of the applied-for logos.

The County argued first that the proposed marks could not constitute an insignia of Orange County, California, because the County created and adopted an official seal (a design of an orange having a stem with three leaves) more than a century ago, in accordance with the applicable state government code requiring a two-step process for adopting an official seal.

The Board found this argument unpersuasive, noting that although the Circle Mark had not undergone the state’s two-step process to become an “official” seal, Section 2(b) does not distinguish between “official” and “unofficial” insignia. Therefore, formal adoption of an “official” seal is not required for an insignia to otherwise fall under the Section 2(b) bar to registration.

The Board explained that the County uses the Circle Mark for a plethora of official government business [...]

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Single T-Shirt Sale Can’t Clothe Bare-Bones Personal Jurisdiction Claim

by | Aug 18, 2022 |

The US Court of Appeals for the Eighth Circuit affirmed a district court’s dismissal of a trademark infringement suit for lack of personal jurisdiction, finding that the trademark owner failed to allege that the alleged infringer could reasonably anticipate being hauled into court in Missouri. Brothers and Sisters in Christ, LLC v. Zazzle, Inc., Case No. 21-1917 (8th Cir. Aug. 2, 2022) (Smith, Benton, Kelly, JJ.)

Brothers and Sisters in Christ (BASIC) is a Missouri-based clothing company that owns the trademark “love happens.” Zazzle is a California-based online retailer. BASIC sued Zazzle in a Missouri district court for trademark infringement, alleging that Zazzle used its nationally available website to advertise and sell goods in Missouri. BASIC further alleged that in 2019, Zazzle sold and shipped a t-shirt bearing a purportedly infringing “love happens” logo to at least one Missouri resident. The district court granted Zazzle’s motion to dismiss for lack of personal jurisdiction under Fed. R. Civ. P. 12(b)(2). BASIC appealed.

Reviewing the issue de novo, the Eighth Circuit affirmed the dismissal. The Court explained that because the Lanham Act does not authorize nationwide personal jurisdiction, the Court was required to apply Missouri’s long-arm statute and the federal due process clause. Given that Missouri’s long-arm statute authorizes personal jurisdiction over defendants who engage in, among other things, the transaction of any business or the commission of a tortious act within the state, the Court’s inquiry focused on whether exercising personal jurisdiction over Zazzle comported with the due process clause. Because BASIC did not allege that Zazzle was subject to general personal jurisdiction in Missouri (i.e., BASIC did not allege that Zazzle was “essentially at home” in the forum state), the question instead turned on whether BASIC had sufficiently pled facts to support a claim of specific personal jurisdiction.

The Eighth Circuit explained that specific personal jurisdiction existed over Zazzle for the purposes of BASIC’s trademark infringement claims if Zazzle had certain minimum contacts with the forum state and BASIC’s claims arose out of or related to those contacts. For specific jurisdiction to apply, the underlying controversy must be connected to the defendant’s activities in the forum state; unconnected activities directed to the forum state, no matter how numerous or systematic, cannot convey specific personal jurisdiction. The Court used a five-factor test previously set forth in Whaley v. Esebag to conduct its analysis: “(1) the nature and quality of [defendant’s] contacts with the forum state; (2) the quantity of such contacts; (3) the relation of the cause of action to the contacts; (4) the interest of the forum state in providing a forum for its residents; and (5) convenience of the parties.”

The Eighth Circuit found that the behavior alleged by BASIC (Zazzle’s operation of a national website that sells and ships goods to Missouri combined with a single specific instance of an allegedly infringing t-shirt being sold and shipped to a Missouri consumer) was insufficient to support a specific jurisdiction claim. Zazzle’s website availability and sales unrelated to the use [...]

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