15 U.S.C. § 1125(a) · C relations

fact · supports Lannett's label states that C-Topical is "indicated for the introduction of local (topical) anesthesia of accessible mucous membranes of the oral, laryngeal and nasal cavities."

fact · supports Taking Genus's allegations as true for the purposes of this motion, the inside of the nose, mouth, and larynx are not "particular spots on the outer surface of the body" and C-Topical's route of administration cannot accurately be described as "topical" under the FDA's definitions.

held Genus has sufficiently alleged that C-Topical's label route of administration is false.

fact · supports Genus points out that Lannett's meta description for its C-Topical webpage is misleading: it states, "Learn more about the facts and characteristics of the generic pharmaceutical C-Topical® Solution CII."

fact · supports It is relevant that consumers would have to click on yet another link to be informed that C-Topical has not completed the ANDA approval process required for generic drugs.

held Lannett's statement in its website's meta description states a claim for false advertising under the Lanham Act.

fact · supports Genus's complaint contains essentially the same allegations as described in Par. It asserts that Lannett lists C-Topical on price lists and appears to cite to the same studies as in Par.

fact · supports For example, a nationwide survey of 500 pharmacists found that 91% thought all products pharmacists dispense are FDA approved.

held Additionally, allegations about the survey data meet the standard articulated in JHP Pharm., 52 F. Supp. 3d at 1002-03.

fact · supports Georgia Expo admitted that it used VersaTop's marks in its advertising and brochures, and that the parties "compete directly" in the drape and rod industry.

rule Contrary to this precedent, the district court in this case incorrectly applied the definition of "use in commerce" that is included in the statute for purposes of trademark registration. This definition does not apply to trademark infringement. See Network Automation , 638 F.3d at 1144-45 ; Playboy , 354 F.3d at 1024 n.11.

held On the correct law, violation of the Trademark Act was established on the admitted facts.

fact · supports VersaTop states that since 2011 it has sold these systems with the trademarks PIPE & DRAPE 2.0™ and 2.0™.

held Nor does Georgia Expo "dispute VersaTop's ownership of the trademarks at issue."

rule These factors, as summarized in Au-Tomotive Gold , are "(1) strength of the mark(s); (2) relatedness of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels; (6) degree of consumer care; (7) defendant's intent; (8) likelihood of expansion." 457 F.3d at 1075-76. The Ninth Circuit has emphasized that "the eight factors [ Sleekcraft ] recited are not exhaustive," and should be applied "in a flexible manner." Network Automation, 638 F.3d at 1145.

fact · supports The type of goods sold by both companies-the pipe and drape systems-are identical.

fact · supports It is undisputed that the parties operate in the same marketing channels-the flyers were distributed by Georgia Expo for an industry trade show.

fact · cuts-against Georgia Expo, in both its own motion for summary judgment, and in opposition to VersaTop's cross-motion, made no argument regarding these likelihood of confusion factors, contending only that there was no evidence of actual confusion.

held We therefore "conclude as a matter of law that likelihood of infringement is clear cut here."

rule The Supreme Court has explained that " 'a product feature is functional,' and cannot serve as a trademark, 'if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.' " Qualitex , 514 U.S. at 165, 115 S.Ct. 1300 (quoting Inwood Labs., Inc. v. Ives Labs., Inc. , 456 U.S. 844, 850 n.10, 102 S.Ct. 2182, 72 L.Ed.2d 606 (1982) ). Even if a claimed trade dress does not satisfy this first test, "it can still be functional if it is a 'competitive necessity,' that is, if its exclusive use 'would put competitors at a significant non-reputation-related disadvantage.' " Arlington Specialties , 847 F.3d at 419 (quoting TrafFix Devices , 532 U.S. at 32-33, 121 S.Ct. 1255 ); see also Specialized Seating, Inc. v. Greenwich Indus., LP , 616 F.3d 722, 727 (7th Cir. 2010) (a design is functional where a product "looks the way it does in order to be a better [product], not in order to be a better way of identifying who made it").

fact · supports Bodum does not claim a trade dress in the cylindrical carafe or the plunger, as it acknowledges those elements are functional for a French press coffeemaker.

fact · supports In contrast, Mr. Anders did not believe the particular C-shape of the Chambord's handle worked better than an alternatively shaped handle and, in fact, testified that he thought the C-shape was "not as ergonomically designed as it could be."

fact · supports More importantly, Bodum introduced evidence that both it and A Top sell French presses with alternative designs and made of different materials.

fact · cuts-against Indeed, Joergen Bodum, CEO of Bodum's parent company, testified regarding Chambord advertisements describing the product as "functional" and about an interview he gave in which he described Bodum's products as "function-driven."

held Overall, looking at the evidence in the light most favorable to the verdict, Bodum presented sufficient evidence for the jury to have found Bodum's claimed trade dress was nonfunctional. We cannot say the jury was irrational to reach this conclusion, so we affirm the denial of A Top's motion for judgment as a matter of law.

rule In short, to raise the fair use defense successfully, Gatorade must show that (1) it did not use "Sports Fuel" as a trademark, (2) the use is descriptive of its goods, and (3) it used the mark fairly and in good faith.

fact · supports The products' individual packaging and displays feature Gatorade's house mark and G Bolt logo more prominently.

fact · supports First, producers of nutritional products for athletes regularly invoke the "Sports Fuel" terminology to describe the products they sell. Gatorade provided numerous examples of this widespread industry use to the district court, including, for example, Twin Laboratories' "SPORT FUEL" and Trident Sports' "SPORTS FUEL."

fact · supports Gatorade's stated purpose in adopting the challenged slogan was to help the company better describe its business and the products it sells. Nothing in the record actually contradicts this purpose.

fact · cuts-against SportFuel emphasizes that Gatorade employed a "TM" symbol with the slogan and obtained a trademark for the slogan.

held Accordingly, we do not believe the district court erred in determining that Gatorade never employed the term "Sports Fuel" as a trademark in its "Gatorade The Sports Fuel Company" slogan.

held We conclude that Gatorade's slogan uses "Sports Fuel" in a descriptive sense.

held Further, it is clear from the record that Gatorade provided sufficient evidence that it used the term "Sports Fuel" fairly and in good faith.

rule We thus hold that to come within the zone of interests in a suit for false advertising under § 1125(a), a plaintiff must allege an injury to a commercial interest in reputation or sales.

fact · supports It further maintained that Lexmark's misrepresentations had "proximately caused and [we]re likely to cause injury to [Static Control] by diverting sales from [Static Control] to Lexmark," and had "substantially injured [its] business reputation" by "leading consumers and others in the trade to believe that [Static Control] is engaged in illegal conduct."

held To begin, Static Control's alleged injuries-lost sales and damage to its business reputation-are injuries to precisely the sorts of commercial interests the Act protects.

rule The District Court emphasized that Lexmark and Static Control are not direct competitors. But when a party claims reputational injury from disparagement, competition is not required for proximate cause; and that is true even if the defendant's aim was to harm its immediate competitors, and the plaintiff merely suffered collateral damage.

fact · supports First, Static Control alleged that Lexmark disparaged its business and products by asserting that Static Control's business was illegal.

held For at least two reasons, Static Control's allegations satisfy the requirement of proximate causation.

rule We thus hold that a plaintiff suing under § 1125(a) ordinarily must show economic or reputational injury flowing directly from the deception wrought by the defendant's advertising; and that that occurs when deception of consumers causes them to withhold trade from the plaintiff.

fact · supports In addition, Static Control adequately alleged proximate causation by alleging that it designed, manufactured, and sold microchips that both (1) were necessary for, and (2) had no other use than, refurbishing Lexmark toner cartridges.

held In these relatively unique circumstances, the remanufacturers are not "more immediate victim[s]" than Static Control.