• INTELLECTUAL PROPERTY LAWS

United States Eighth Circuit

Before WOLLMAN, LOKEN, and HANSEN, Circuit Judges.

Mary Virginia Masters, Virginia E. Johnson, Appellant, Vs. UHS of Delaware, Inc., Appellee. (Decided on 06.01.2011)

Infringement of Service mark under Lanham Act - Equitable Defenses - Appeal against the Order of Monetary Relief on ground that District Court erred in concluding that the Respondent was eligible for monetary relief under the Lanham Act and Order is internally inconsistent and lacks sufficient evidentiary support

Held, Laches applies in a trademark action when "a claimant inexcusably delays in asserting its claim and thereby unduly prejudices the party against whom the claim ultimately is asserted." Acquiescence may bar an infringement suit when "the owner of the trademark, by conveying to the defendant through affirmative word or deed, expressly or impliedly consents to the infringement. Similarly, estoppel bars a claim when an innocent defendant relies in good faith upon the claimant's misleading conduct or representations and changes its position to its detriment on the basis of that reliance. Hence, verdict must be for the defendant if it found that UHS had proven laches, acquiescence, or estoppel by a preponderance of the evidence. Because substantial evidence supports that conclusion, it is held that district court did not err in denying UHS's motion for judgment as a matter of law on its equitable defenses.

Infringement of Service mark under Lanham Act - Scope of Use Permitted Under the Licensing Agreement

Held, Section 43(a) of the Lanham Act imposes liability on "[a]ny person who · uses in commerce any word, term, name, symbol, or device, or any combination thereof · which · is likely to cause confusion · as to the origin, sponsorship, or approval of goods, services, or commercial activities." 15 U.S.C. § 1125(a)(1)(A). The term "use in commerce" means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For purposes of this Chapter, a mark shall be deemed to be in use in commerce · on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce· Under this definition, the MASTERS AND JOHNSON mark was "used in commerce" when it appeared in promotional materials designed to market UHS treatment programs. It also was "used in commerce" during workshops and seminars when UHS pitched its treatment programs to physicians and other health professionals to facilitate more patient referrals. Hence, UHS willfully breached the agreement, a finding that is supported by the evidence.

Infringement of Service mark under Lanham Act - Propriety of the Damages Award

Held, Although injunctive relief is often the preferred remedy in resolving trademark disputes, it is not the exclusive remedy. We have acknowledged that "all Lanham Act remedies are equitable in nature" and that "[t]here might be some situations in which a Lanham Act plaintiff would be entitled to monetary but not injunctive relief. The evidence sufficient to support the that UHS willfully infringed the mark. The contention of UHS regarding confusion in cases interpreting the Lanham Act state that actual confusion is a prerequisite of monetary damages and likelihood of confusion a prerequisite to injunctive relief. The relevant statutes nor our previous case law dictates that we require actual confusion to support the jury's award in this case. Accordingly, the district court did not err in denying UHS's motion for judgment as a matter of law. District court did not abuse its discretion in denying Masters's motion for prejudgment interest. It determined that the award adequately compensated Masters and that it would be inequitable to award the interest, noting, among other things, that the defenses advanced by UHS were not baseless, vexatious, or unreasonable.