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ACTION INK, Inc. Registered a service mark to use the phrase "ultimate fan" plaintiff and appellant conducted no contests between 1995 and 2012. Action INK sued the defendants for infringement in 2012. This opinion decides the two captioned cases, consolidated on appeal.
ACTION INK, Inc. Registered a service mark to use the phrase "ultimate fan" plaintiff and appellant conducted no contests between 1995 and 2012. Action INK sued the defendants for infringement in 2012. This opinion decides the two captioned cases, consolidated on appeal.
ACTION INK, Inc. Registered a service mark to use the phrase "ultimate fan" plaintiff and appellant conducted no contests between 1995 and 2012. Action INK sued the defendants for infringement in 2012. This opinion decides the two captioned cases, consolidated on appeal.
ACTION INK, INCORPORATED, a Louisiana Corporation,
Plaintiff - Appellant v.
NEW YORK JETS, L.L.C., a New York limited liability company; ARKADIUM, INCORPORATED, a New York corporation,
Defendants - Appellees
Consolidated w/ No. 13-31113
ACTION INK, INCORPORATED,
Plaintiff - Appellant v.
ANHEUSER-BUSCH, INCORPORATED,
Defendant - Appellee
Appeals from the United States District Court for the Eastern District of Louisiana USDC Nos. 2:12-CV-46, 2:12-CV-141
Before JOLLY, SOUTHWICK, and HAYNES, Circuit Judges. United States Court of Appeals Fifth Circuit FILED J uly 23, 2014
Lyle W. Cayce Clerk Case: 13-31112 Document: 00512709234 Page: 1 Date Filed: 07/23/2014 No. 13-31112 PER CURIAM:* This opinion decides the two captioned cases, consolidated on appeal. Action Ink, the plaintiff and appellant, registered a service mark to use the phrase Ultimate Fan in the context of promotional contests at sporting events. It conducted no contests between 1995 and 2012, when it sued the defendants for infringement. We hold that Action Ink abandoned its mark, and affirm the respective judgments in each case. I. Action Ink, Inc. (Action Ink) has no employees and one sole shareholder, Michael Eckstein. It owns a service mark for the phrase Ultimate Fan (the mark). The registration for the mark is for "promoting the goods and/or services of others by conducting a contest at sporting events. Action Ink last held such a contest in 1995. Since then, Action Ink has sent out letters to many businesses alleging infringement, some of which are signed by Eckstein, who is also a lawyer. Action Ink has also sought unsuccessfully to interest potential clients in holding promotional contests. In 2012, Action Ink sued Anheuser-Busch, Inc. (Anheuser-Busch), and in a separate suit also sued the New York Jets, L.L.C. and Arkadium Inc. (collectively, the Jets Defendants). Action Ink alleged infringement and false designation of origin under the Lanham Act, 1 and unfair competition, injury to business reputation and unfair trade practices under Louisiana law. 2
Judge Milazzo in No. 13-31112 awarded summary judgment to the Jets Defendants. The court held that Action Ink had abandoned its service mark and consequently had no valid mark that could have been infringed. Judge * Pursuant to 5TH CIR. R. 47.5, the court has determined that this opinion should not be published and is not precedent except under the limited circumstances set forth in 5TH CIR. R. 47.5.4. 1 15 U.S.C. 1114, 1125(a). 2 La. Rev. Stat. 51:1405, 51:223.1. 2
Case: 13-31112 Document: 00512709234 Page: 2 Date Filed: 07/23/2014 No. 13-31112 Vance in No. 13-31113 subsequently granted summary judgment to Anheuser- Busch on the grounds that: (a) collateral estoppel from the Jets suit applied on the abandonment issue and thus Action Ink had no valid mark and (b) Action Ink failed to show a likelihood of confusion between its mark and Anheuser- Buschs. Action Ink now appeals each of the judgments dismissing its respective complaints. II. We first consider Judge Milazzos grant of summary judgment to the Jets Defendants, which we review de novo. Royal v. CCC&R Tres Arboles, L.L.C., 736 F.3d 396, 400 (5th Cir. 2013). The Lanham Act provides that a mark shall be abandoned (1) [w]hen its use has been discontinued and (2) there is an intent not to resume such use. 15 U.S.C. 1127. Use is defined as the bona fide use of [a] mark made in the ordinary course of trade, not made merely to reserve a right in a mark. Id. (emphasis added). Nonuse for three consecutive years is prima facie evidence of abandonment. Id. Once a party establishes a prima facie case of abandonment, it becomes the mark holders burden to show that circumstances do not justify the inference of intent not to resume use. Exxon Corp. v. Humble Exploration Co., Inc., 695 F.2d 96, 99 (5th Cir. 1983). The Jets Defendants have established their prima facie case of abandonment. We note that A trademark is a symbol of existing good will. Thus, if for any reason, the good will of a business or product comes to an end, there is nothing left for a mark to symbolize. Such a mark should be officially declared abandoned. If there is no good will or a reasonable prospect of it, a trademark symbolizes nothing. 3 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION 17.14 (4th ed. 1996). 3 Case: 13-31112 Document: 00512709234 Page: 3 Date Filed: 07/23/2014 No. 13-31112 Action Ink performed no contests for seventeen years before filing suit. Thus, there was nothing left for [its] mark to symbolize. Id. Action Ink argues that soliciting clients constituted bona fide use. See 15 U.S.C. 1127. Action Ink cites Allard Enters. v. Advanced Programming Res., 146 F.3d 350, 359 (6th Cir. 1998), which held that the defendants activities, which included but were not limited to solicitation of clients, constituted use in commerce. But Allard does not help Action Ink. Unlike Action Ink, the Allard defendant rendered services to at least one client, arranging for that client to interview a job applicant. Id. at 353. The Allard defendant also went on to achieve significant market penetration and sign a state-wide contract. See Allard Enters v. Advanced Programming Res., 249 F.3d 564, 57374 (6th Cir. 2001). In contrast, Action Ink has nothing to show for its years of soliciting clients. As the Jets Defendants have established their prima facie case of abandonment, the burden shifts to Action Ink to establish that circumstances do not justify the inference of intent not to resume use, Exxon, 695 F.2d at 99. Action Ink points to a licensing agreement it signed with Tulane University in 2013. But this agreement does not persuade us that Action Ink had any intent to resume bona fide use of its mark. First, Action Ink signed the agreement only after it had already sued the defendants here. Second, Tulanes consideration for the license suggests a sham agreement, as Tulane agreed to give 300 tickets to various charitable groups that Tulane had the sole authority to choose. Third, Action Ink points us to no authority stating that a licensing agreement, even if legitimate, can resurrect a mark that has been long abandoned. The Jets Defendants have thus established abandonment. Because Action Ink failed to argue on appeal that collateral estoppel on abandonment does not apply to Anheuser-Busch, we hold that Action Ink also abandoned its 4 Case: 13-31112 Document: 00512709234 Page: 4 Date Filed: 07/23/2014 No. 13-31112 mark with respect to Anheuser-Busch. We consequently do not reach the likelihood of confusion between Action Inks and Anheuser-Buschs marks. III. For the reasons above, the respective judgments of the district courts in favor of all defendants in each of the cases are AFFIRMED. 5 Case: 13-31112 Document: 00512709234 Page: 5 Date Filed: 07/23/2014 UNITED STATES COURT OF APPEALS FOR THE FIFTH CIRCUIT BILL OF COSTS NOTE: The Bill of Costs is due in this office within 14 days from the date of the opinion, See FED. R. APP. P. & 5 CIR. R. 39. Untimely bills of costs must be TH accompanied by a separate motion to file out of time, which the court may deny. _______________________________________________ v. __________________________________________ No. _____________________ The Clerk is requested to tax the following costs against: _________________________________________________________________________________________ COSTS TAXABLE UNDER Fed. R. App. P. & 5 Cir. R. 39 th REQUESTED ALLOWED (If different from amount requested) No. of Copies Pages Per Copy Cost per Page* Total Cost No. of Documents Pages per Document Cost per Page* Total Cost Docket Fee ($500.00) Appendix or Record Excerpts Appellants Brief Appellees Brief Appellants Reply Brief Other: Total $ ________________ Costs are taxed in the amount of $ _______________ Costs are hereby taxed in the amount of $ _______________________ this ________________________________ day of __________________________, ___________. LYLE W. CAYCE, CLERK State of County of _________________________________________________ By ____________________________________________ Deputy Clerk I _____________________________________________________________, do hereby swear under penalty of perjury that the services for which fees have been charged were incurred in this action and that the services for which fees have been charged were actually and necessarily performed. A copy of this Bill of Costs was this day mailed to opposing counsel, with postage fully prepaid thereon. This _______________ day of ________________________________, ______________. _____________________________________________________________________ (Signature) *SEE REVERSE SIDE FOR RULES GOVERNING TAXATION OF COSTS Attorney for __________________________________________ Case: 13-31112 Document: 00512709258 Page: 1 Date Filed: 07/23/2014 Print Form FIFTH CIRCUIT RULE 39 39.1 Taxable Rates. The cost of reproducing necessary copies of the brief, appendices, or record excerpts shall be taxed at a rate not higher than $0.15 per page, including cover, index, and internal pages, for any for of reproduction costs. The cost of the binding required by 5 CIR. R. 32.2.3that mandates that briefs must lie reasonably flat when open shall TH be a taxable cost but not limited to the foregoing rate. This rate is intended to approximate the current cost of the most economical acceptable method of reproduction generally available; and the clerk shall, at reasonable intervals, examine and review it to reflect current rates. Taxable costs will be authorized for up to 15 copies for a brief and 10 copies of an appendix or record excerpts, unless the clerk gives advance approval for additional copies. 39.2 Nonrecovery of Mailing and Commercial Delivery Service Costs. Mailing and commercial delivery fees incurred in transmitting briefs are not recoverable as taxable costs. 39.3 Time for Filing Bills of Costs. The clerk must receive bills of costs and any objections within the times set forth in FED. R. APP. P. 39(D). See 5 CIR. R. 26.1. TH FED. R. APP. P. 39. COSTS (a) Against Whom Assessed. The following rules apply unless the law provides or the court orders otherwise; (1) if an appeal is dismissed, costs are taxed against the appellant, unless the parties agree otherwise; (2) if a judgment is affirmed, costs are taxed against the appellant; (3) if a judgment is reversed, costs are taxed against the appellee; (4) if a judgment is affirmed in part, reversed in part, modified, or vacated, costs are taxed only as the court orders. (b) Costs For and Against the United States. Costs for or against the United States, its agency or officer will be assessed under Rule 39(a) only if authorized by law. ) Costs of Copies Each court of appeals must, by local rule, fix the maximum rate for taxing the cost of producing necessary copies of a brief or appendix, or copies of records authorized by rule 30(f). The rate must not exceed that generally charged for such work in the area where the clerks office is located and should encourage economical methods of copying. (d) Bill of costs: Objections; Insertion in Mandate. (1) A party who wants costs taxed must within 14 days after entry of judgment file with the circuit clerk, with proof of service, an itemized and verified bill of costs. (2) Objections must be filed within 14 days after service of the bill of costs, unless the court extends the time. (3) The clerk must prepare and certify an itemized statement of costs for insertion in the mandate, but issuance of the mandate must not be delayed for taxing costs. If the mandate issues before costs are finally determined, the district clerk must upon the circuit clerks request add the statement of costs, or any amendment of it, to the mandate. (e) Costs of Appeal Taxable in the District Court. The following costs on appeal are taxable in the district court for the benefit of the party entitled to costs under this rule: (1) the preparation and transmission of the record; (2) the reporters transcript, if needed to determine the appeal; (3) premiums paid for a supersedeas bond or other bond to preserve rights pending appeal; and (4) the fee for filing the notice of appeal. Case: 13-31112 Document: 00512709258 Page: 2 Date Filed: 07/23/2014 United States Court of Appeals FIFTH CIRCUIT OFFICE OF THE CLERK
LYLE W. CAYCE CLERK
TEL. 504-310-7700 600 S. MAESTRI PLACE NEW ORLEANS, LA 70130
July 23, 2014
MEMORANDUM TO COUNSEL OR PARTIES LISTED BELOW
Regarding: Fifth Circuit Statement on Petitions for Rehearing or Rehearing En Banc
No. 13-31112 Action Ink, Inc. v. New York Jets, L.L.C. 13-31113 Action Ink, Inc. v. Anheuser-Busch, Inc. USDC No. 2:12-CV-46 USDC No. 2:12-CV-141 --------------------------------------------------- Enclosed is a copy of the court's decision. The court has entered judgment under FED R. APP. P. 36. (However, the opinion may yet contain typographical or printing errors which are subject to correction.)
FED R. APP. P. 39 through 41, and 5TH Cir. R.s 35, 39, and 41 govern costs, rehearings, and mandates. 5TH Cir. R.s 35 and 40 require you to attach to your petition for panel rehearing or rehearing en banc an unmarked copy of the court's opinion or order. Please read carefully the Internal Operating Procedures (IOP's) following FED R. APP. P. 40 and 5 TH CIR. R. 35 for a discussion of when a rehearing may be appropriate, the legal standards applied and sanctions which may be imposed if you make a nonmeritorious petition for rehearing en banc.
Direct Criminal Appeals. 5 TH CIR. R. 41 provides that a motion for a stay of mandate under FED R. APP. P. 41 will not be granted simply upon request. The petition must set forth good cause for a stay or clearly demonstrate that a substantial question will be presented to the Supreme Court. Otherwise, this court may deny the motion and issue the mandate immediately.
Pro Se Cases. If you were unsuccessful in the district court and/or on appeal, and are considering filing a petition for certiorari in the United States Supreme Court, you do not need to file a motion for stay of mandate under FED R. APP. P. 41. The issuance of the mandate does not affect the time, or your right, to file with the Supreme Court.
The judgment entered provides that appellant pay to appellees the costs on appeal.
Case: 13-31112 Document: 00512709259 Page: 1 Date Filed: 07/23/2014
Sincerely,
LYLE W. CAYCE, Clerk
By: _______________________ Joseph M. Armato, Deputy Clerk
Enclosure(s)
Mr. Andrew Baum Mr. Robert Emmet Couhig Jr. Mr. Michael Lehman Eckstein Mr. Lawrence Bradley Hancock Ms. Lesli Danielle Harris Mr. Peter Edward Moll Ms. Mary Ellen Roy Mr. Phillip A. Wittmann
Case: 13-31112 Document: 00512709259 Page: 2 Date Filed: 07/23/2014