Trademark Claims

Getting the Least Out of a Nondisclosure Agreement

SL Montevideo brought suit against Eaton Aerospace for trade secret misappropriation and breach of a nondisclosure agreement regarding an airplane motor. SL Montevideo could not establish the information was a trade secret, so it relied on the contract claim on appeal. The Eighth Circuit affirmed, noting that SL Montevideo somehow chose to structure the nondisclosure agreement as having a trade secret requirement:

To be sure, agreements such as the Proprietary Information Agreement (PIA) may protect broader categories of information than trade secrets. But the PIA’s exclusions limited its protection to information having the same characteristics of secrecy and novelty as trade secret.

Trademark Claims

Lewis & Clark Files Arkansas Trademark Infringement Lawsuit

Lewis & Clark Outfitters filed a trademark infringement action against L.C. Industries (Case No. 07-, Western District of Arkansas, filed 9/26/07). The Complaint alleges that L.C. Industries has infringed Lewis & Clark’s numerous trademark registrations and fraudulently obtained registrations for “Lewis N. Clark” from the USPTO. The Complaint also states that the companies communicated with each other in 2000 about trademark issues, but L.C. Industries recently threatened to file a lawsuit against Lewis & Clark.

This case could have an interesting twist. Earlier this year, Lewis & Clark filed a trademark infringement action against Mahco, Inc. (previously posted 5/1/07) L.C. Industries also filed a trademark infringement lawsuit against Mahco in the Northern District of Illinois (filed 2/5/07, see Justia docket summary here).

Trademark Claims

Arkansas Trademark Case Dismissed; Court Declines to Create New Exception to Res Judicata

The parties have a long and unique history that is important to understand the case. B&B Hardware sells a variety of fasteners in various industries under the mark “Sealtight.” Hargis sells fasteners exclusively used for portable buildings under the trademark “Sealtite.” B & B received a federal trademark registration, and the parties engaged in lengthy TTAB proceedings when Hargis tried to register its mark. In 1997, B & B filed suit for trademark infringement.

The jury returned a verdict for Hargis, finding that Sealtight was merely descriptive, and that judgment was affirmed in B & B Hardware, Inc. v. Hargis Industries, Inc., 252 F.3d 1010 (8th Cir. 2001). Hargis did not petition to cancel “Sealtight.” In 2006, “Sealtight” became incontestable, which eliminated the merely descriptive defense. B & B filed the instant action, and Hargis moved to dismiss on grounds of res judicata.

The court agreed with Hargis that incontestability alone does not create an exception to res judicata. The court held that while incontestability affects a trademark’s validity, it has no bearing on a trademark’s strength, and that the only recognized exception to res judicata for trademark infringement is a significant increase in strength over a significant amount of time. See Test Masters Educational Services v. Singh, 428 F.3d 559 (5th Cir. 2005). B & B failed to establish either of these two factors, and the court dismissed the complaint.


Multidistrict Judicial Panel Rejects Copyright/Trademark Case

The litigation involves cases in California, Missouri and New York for copyright infringement and trademark infringement. Two of the defendants moved to centralize the litigation in California. The panel denied the transfer because the cases were too individualized.

This case is another example that intellectual property litigation usually involves issues that are unique between the parties. As a result, intellectual property litigation typically is not suited for multidistrict litigation or class action litigation.