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May 2016

Intellectual Property Litigation Team Prevails on Summary Judgment Disposing of All Trademark Claims

Gordon & Rees’ Intellectual Property Practice Group partners Craig J. Mariam and Susan B. Meyer, senior counsel Hazel Pangan, and associates Samuel Laughlin, Kathryn Lafferty, and Brittany McCarthy obtained summary judgment in a trademark action in favor of their client, Lejon of California, Inc. (“Lejon”), a California-based designer and manufacturer of fine leather goods, including belts and wallets sold in high-end retail stores. The plaintiff, Bison Designs, LLC (“BD”), a Colorado-based outdoor gear and pet accessory retailer, and owner of a trademark registration for the word mark “BISON,” filed an action for trademark infringement, counterfeiting, false designation of origin, and related claims against Lejon in federal court in the District of Colorado. BD alleged that Lejon’s use of the term “bison” in its own duly-registered trademarks, VINTAGE BISON® and VINTAGE BISON USA®, on Lejon’s goods made of bison leather, infringed BD’s rights in the BISON mark. BD sought damages in the form of Lejon’s profits from the alleged infringing activity, as well as statutory damages under its trademark counterfeiting claim, which Gordon & Rees successfully moved to dismiss earlier in the litigation. Lejon filed counterclaims against BD, including a declaration that Lejon’s use of the term “bison” in its own marks on goods made of bison leather did not constitute trademark infringement as a matter of law.

After careful examination of the trademark prosecution histories of the parties’ competing marks, and following the close of fact and expert discovery, during which time Lejon commissioned its own trademark expert survey establishing that the relevant consuming public of leather accessories did not associate these products with BD’s BISON mark, Lejon filed a motion for summary judgment on all of BD’s claims and Lejon’s counterclaim for a declaration of non-infringement. Lejon’s motion was made on the grounds that that Lejon’s use of the term “bison” in its own VINTAGE BISON® and VINTAGE BISON USA® marks constituted generic, descriptive, and therefore, non-infringing use because the term “bison” merely identified the bison leather of which Lejon’s goods were made. Citing to the seminal case of Genesee Brewing Co. v. Stroh Brewing Co., 124 F.3d 137, 147 (2d Cir. 1997), and other circuit cases with similar holdings on this specific exception to infringement even where identical competing marks are involved, Lejon successfully argued that even if the term “bison” is arbitrary and suggestive when used on BD’s outdoor climbing gear or pet products, the use of the term with Lejon’s marks on bison leather goods was generic and descriptive as a matter of law.

The Court, through Chief Judge Marcia Krieger, agreed and granted summary judgment on all of BD’s claims in favor of Lejon, with costs. The Court rejected BD’s evidence attempting to show genuine disputes of material fact, finding that BD’s evidence was inadmissible and objectionable hearsay under the evidentiary rules. Under the Court’s ruling, Lejon may continue to lawfully use its VINTAGE BISON® and VINTAGE BISON USA® marks unabated on its bison leather goods. The Court’s ruling also creates precedent for the applicability of the generic and descriptive trademark use exception in infringement cases in the 10th Circuit.

Kathryn A. Lafferty
Samuel B. Laughlin
Craig J. Mariam
Susan B. Meyer
Hazel Mae B. Pangan


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