Last week, the United States Court of Appeals for the Federal Circuit issued its opinion in VersaTop Support Systems, LLC v. Georgia Expo, Inc., 2018-1208 (April 19, 2019). VersaTop sued Georgia Expo in 2015 in the District of Oregon for infringing VersaTop’s patents, copyrights, and trademarks related to its modular rod and pole structures for assembling sectional spaces such as trade show booths. Georgia Expo sells competing systems. There was no dispute that Georgia Expo’s 2015 brochures included VersaTop’s product image and trademarks. Relying on the statutory definition of “use in commerce,” the district court held that Georgia Expo’s conduct did not amount to use of VersaTop’s mark in commerce. The district court rejected VersaTop’s request for an injunction and granted summary judgment of no infringement in favor of Georgia Expo.
VersaTop filed its notice of appeal to the Ninth Circuit, but requested transfer of the appeal to the Federal Circuit on the basis of pendent jurisdiction under 28 U.S.C. § 1631. The Federal Circuit found the appeal was from a final decision of an action arising under patent law, even though no patent issue was raised on appeal.
The Lanham Act’s definition of “use in commerce” for goods requires the mark to be placed on the goods (or their containers or labels) if practical. 15 U.S.C. § 1127. Georgia Expo argued that it had not used the mark in commerce on goods to support a violation of federal trademark law.
The Federal Circuit disagreed. The Court considered the legislative history of the 1988 amendments to the Trademark Act recognizing the statutory definition of “use in commerce” applied only to registration of a mark, while reaffirming that “any type” of use could constitute infringement. The Federal Circuit found the Ninth Circuit had more than once declined to apply the statutory definition to infringing uses. The Court further observed that Professor McCarthy’s treatise on trademark law states that infringement is not limited to the statutory definition of “use in commerce.” Ultimately, the Federal Circuit held the definition “does not apply to trademark infringement.”
The Court analyzed the Ninth Circuit’s Sleekcraft factors and held that because the parties were direct competitors selling identical types of goods within the same marketing channels, there was a “clear cut” likelihood of confusion. The district court’s grant of summary judgment in favor of Georgia Expo was reversed, with judgment entered in favor of VersaTop.