2021上半年美国七大商标案回顾

        第四巡回法院在3月份做出的判决推翻了沃尔玛赔偿9500万美元的原判决，这为零售巨头沃尔玛因销售涉嫌侵权的Backyard Gril烧烤设备而进行的长达七年的官司增添了新篇章。

法院的判决书中写道：“由于对商标使用情境中的‘故意’的法律定义不够了解，我们认为陪审团的决定是不符法律原则的。虽然不愿否定陪审团的辛苦，但法律要求我们不得不这样做。”

Top 7 Trademark Rulings Of 2021: A Midyear Report

The U.S. Supreme Court didn't weigh in on any trademark cases in 2021, but the lower courts have been plenty busy — from Nike's fight against Satan Shoes, to a revival of "initial interest confusion", to a big win against Canal Street fakes. Here are the seven major rulings you need to know from the first half of the year.

7. Coca-Cola v. Meenaxi Enterprise

The Trademark Trial and Appeal Board's precedential June ruling in favor of the Coca-Cola Co. slammed an unaffiliated business for using two of the soda giant's overseas brands to "dupe" Indian American consumers.

The board canceled two trademark registrations held by a company called Meenaxi Enterprise Inc. for "Thums Up'' and "Limca" — brand names that Coke has used in India for decades.

The tribunal said Meenaxi's use of those names was "an effort to dupe consumers in the United States who were familiar with petitioner's Thums Up cola from India into believing that Respondent's Thums Up cola was the same drink."

The board repeatedly cited Bayer v. Belmora,  a case in which the Fourth Circuit granted Bayer AG's request to cancel an American company's U.S. trademark registration for Flanax — the name used in the Mexican market for Aleve — on the grounds that it was similarly misleading.

The ruling was a rare application of the Lanham Act's Section 14(3), which allows for the cancellation of registrations if a trademark is being used to misrepresent the source of goods.

6. Nike v. MSCHF

This April ruling by a New York federal judge granted Nike Inc. a restraining order in a high-profile action over "Satan Shoes" created for rapper Lil Nas X, rejecting arguments rooted in free speech rights.

The decision barred a Brooklyn design studio called MSCHF Product Studio Inc. from selling any more of the sneakers — a modified version of Nike's popular Air Max 97s that feature a bronze pentagram and, reportedly, a drop of human blood. MSCHF had argued that the shoes were "works of art" protected by the First Amendment, but the judge said the studio had failed to carry its burden of proof for that kind of affirmative defense.

"First Amendment rights of artistic expression are paramount, and defendant will have a full opportunity to pursue this affirmative defense at the preliminary injunction stage, if it chooses," U.S. District Judge Eric R. Komitee wrote. "As of now, based on the limited record before me, defendant has not carried that burden."

A week after the ruling, Nike and MSCHF agreed to a settlement that saw the designer recall the Satan Shoes "in order to remove them from circulation."

5. Snyder's-Lance v. Frito-Lay

This June ruling by a North Carolina federal judge handed Frito-Lay a victory in a 10-year battle to prevent snack rival Snyder's-Lance from securing trademark protection for "Pretzel Crisps."

The judge ruled that the consumers would see the name — used for a flat, chip-like pretzel — as a generic "common term," not as a distinctive brand name that one company can lock up with trademark law.

"There is no dispute that Snack Factory Pretzel Crisps is a hugely successful product," the judge wrote. "However, no matter how much commercial success the product enjoys, plaintiffs are not entitled to monopolize the common name of the product being sold."

The ruling came after many years of litigation between Frito-Lay, a unit of Pepsico Inc., and Snyder's, a unit of Campbell Soup Co., over "Pretzel Crisps" — a line of chip-pretzel-cracker hybrids that launched in 2004 by Snyder's unit Princeton Vanguard.

Since 2010, the case has seen two rulings by the TTAB, one by the Federal Circuit, and a recent decision by the Fourth Circuit on novel questions of trademark appellate procedure. And another ruling is on the way: Snyder's has already appealed the judge's June ruling to the Fourth Circuit.

4. Select Comfort v. John Baxter

The Eighth Circuit's May ruling endorsed "initial interest confusion" — a doctrine that permits a finding of trademark infringement because of temporary misunderstanding by consumers, even if it doesn't actually lead them to purchase the wrong product.

Reviving an infringement lawsuit filed by mattress maker Sleep Number against a rival company, the court said it would be "odd" to presume that trademarks are "worthy of protection only in the few moments before the consummation of a transaction."

The idea behind the doctrine is that there is protectable value in grabbing a consumer's attention by unfairly using someone's trademark, but critics and some judges say it grants overbroad rights where real deception is ultimately unlikely.

Avoiding those two extremes, the Eighth Circuit said that a jury should have at least been allowed to consider the theory.

"Adoption of the [initial interest confusion] is consistent with the overall practice of recognizing the varied nature of commercial interactions and the importance of not cabining the jury's analysis of the likelihood of confusion factors," the court wrote.

3. Ohio State University v. Redbubble

The Sixth Circuit's February ruling drew a distinction between the trademark liability incurred by traditional online marketplaces and print-on-demand services like Redbubble, which allow users to create custom merchandise.

Reviving a lawsuit filed by Ohio State University over unauthorized Buckeyes gear created on the site, the appeals court overturned a decision by a lower court that said Redbubble was entitled to the same kind of treatment as sites like Amazon.com Inc.or eBay Inc., which are typically not held responsible for infringing sales by others.

The appeals court said a service like Redbubble, which itself creates merchandise, bears more responsibility than a typical marketplace, since it "acted less like a hands-off intermediary and more like a company that creates knockoff goods."

"Redbubble brings trademark-offending products into being by working with third-party sellers to create new Redbubble products,not to sell the artists'products,"the court wrote."So it's more than just a passive facilitator."

"That differs from Amazon's marketplace and makes more 'use' of the trademark than non-liable facilitators," the judge added.

2. Omega v. 375 Canal LLC

The Second Circuit's January decision said a Manhattan landlord that owns a notorious Canal Street market had been "willfully blind" to the sale of fake merchandise in its building.

Upholding a $1.1 million counterfeiting verdict won by watchmaker Omega SA, the appeals court ruled that 375 Canal LLC put itself on the legal hook by intentionally avoiding knowledge of illicit behavior on the premises.

The landlord had argued that the verdict, if upheld, would place unfair requirements on property owners to police counterfeiting, but the court said landlords could not simply blind themselves to wrongdoing.

"There is no inherent duty to look for infringement by others on one's property," the court wrote. "But where a defendant knows or should know of infringement, whether that defendant may be liable for contributory infringement turns on what the defendant does next." 

The ruling went against a landlord that has been accused numerous times of being a haven for counterfeiters. Louis Vuitton sued the owner in 2006, and New York City has fined the owner repeatedly for causing public nuisance.

1. Variety Stores v. Walmart

The Fourth Circuit's March ruling overturned a $95 million verdict against Walmart, adding yet another chapter to a seven-year battle over the retail giant's sale of allegedly infringing "Backyard Grill" barbecue equipment.

In ruling against a smaller company that operates a chain of discount stores, the appeals court said a trial judge had botched the case by not instructing jurors on what exactly constitutes willful trademark infringement, leading to an "unmoored" verdict against Walmart.

"Without a sufficient understanding of the legal definition of 'willfulness' in the trademark context, we believe the jury acted in complete ignorance of fundamentally controlling legal principles," the court wrote. "Though hesitant to overturn the hard work of a jury, the law obliges us to do so here."

The ruling was the second time in three years that the appeals court has tossed out a ruling in favor of Variety Stores Inc., a chain of 300 discount stores that sued Walmart in 2014 on accusations that the Backyard Grill infringed a "Backyard" trademark that the smaller company had been using since the early 1990s.

There would ultimately be no third trial: In June, the two companies reached a tentative settlement to finally end the long-running case.