from the United States District Court for the District of
Oregon in No. 3:15-cv-02030-JE, Magistrate Judge John
Paul Cooper, Kolisch Hartwell, P.C., Portland, OR, argued for
plaintiff-appellant. Also represented by Owen W. Dukelow,
Desmond John Kidney, II.
L. North, Hill Kertscher & Wharton LLP, Atlanta, GA,
argued for defendant-appellee.
Newman, Linn, and Dyk, Circuit Judges.
NEWMAN, CIRCUIT JUDGE.
United States District Court for the District of Oregon held,
on cross-motions for summary judgment, that Georgia Expo,
Inc. did not infringe VersaTop Support Systems' patent,
copyright, or trademark rights. Only the trademark issue is
district court held that Georgia Expo's use of
Ver-saTop's trademarks in advertising and brochures did
not violate the Trademark Act because Georgia Expo had not
"affixed" the VersaTop trademarks to goods that
were "sold or transported in commerce." The court
held that such "use in commerce" was required for
trademark infringement liability, and therefore the relevant
statutory provision concerning likelihood of confusion was
not applicable. Summary judgment of noninfringement in favor
of Georgia Expo was granted on this ground.
conclude that the district court erred in law. On the correct
law, violation of the Trademark Act was established on the
admitted facts. We reverse the district court's judgment,
and remand for appropriate further proceedings.
and Georgia Expo are competitors in the "drape and
rod" industry. Both parties produce and sell systems of
modular rod and pole structures, for assembly to form
sectional spaces such as trade show booths and other
drape-separated structures, as well as temporary barricades.
VersaTop's system for coupling structural components is
the subject of U.S. Patent No. 9, 211, 027 ("the
'027 patent"), and in the district court record is
called the "'ball and crown' coupler."
F&R at *1. VersaTop states that since 2011 it has sold
these systems with the trademarks PIPE & DRAPE 2.0'
and 2.0'. Am. Compl. ¶ 14 (J.A. 98).
complaint states that Georgia Expo distributed advertising
and brochures that contained these VersaTop trademarks as
well as pictures of the VersaTop coupler. The complaint
includes pictures of two of the flyers distributed by Georgia
Compl. ¶ 19; Counts IV, V (J.A. 102-05); Exs. to Am.
Compl. H, I (J.A. 153, 156). On October 28, 2015, VersaTop
filed a complaint with counts for trademark and copyright
violations. On December 21, 2015, VersaTop filed an amended
complaint with an additional count for infringement of the
'027 patent, which had issued six days earlier. In
response, Georgia Expo denied any and all infringement.
Following discovery, the parties filed cross-motions for
summary judgment. The magistrate judge issued Findings and
Recommendations, which were adopted in full by the district
court. See n.1.
district court found that VersaTop owns the trademarks PIPE
& DRAPE 2.0 and 2.0. F&R at *4. The court also found
that "Georgia Expo does not dispute that its October
2015 brochures included a picture of VersaTop's coupler
product and references to VersaTop's trademarked product
names." Id. at *4. However, the district court
ruled that because Georgia Expo had not affixed the Ver-saTop
trademarks to goods sold or transported in commerce, Georgia
Expo had not violated VersaTop's trademark rights.
Id. at *4-5. The court stated:
Georgia Expo correctly notes, as applied to goods,
"'use in commerce' requires that the mark be
'placed in any manner on the goods or their containers or
the displays associated therewith or on the tags or labels
affixed thereto, or if the nature of the goods makes such
placement impracticable, then on documents associated with
the goods or their sale, and (B) the goods are sold or
transported in commerce.'" 15 U.S.C. §1127
("use in commerce" definition (1)(A)-(B)).
Id. at *4-5. The court referred to VersaTop's
argument that the Trademark Act at 15 U.S.C. § 1125(a)
(Section 43(a) of the Lanham Act) prohibits false designation
of origin and creating a likelihood of confusion, but held
that the statute did not apply because "neither Georgia
Expo's brochure nor its October 2015 tradeshow activities
meet the requirements for the applicable definition of
'use in commerce' under the Lanham Act."
Id. at *5. On this reasoning, the district court
held that no remedy is available for Georgia Expo's uses
of VersaTop's trademarks, and rejected VersaTop's
request for an injunction. Id. The court granted
Georgia Expo's motion for summary judgment and denied
VersaTop's cross-motion. Dist. Ct. Order at *1.
appeal, Georgia Expo acknowledges that it "circulated a
flyer in late September 2015 indicating that it had a
'Pipe & Drape 2.0' 'in development,'
which could be 'expected Q1 2016, '" Georgia
Expo Br. 2, and does not contest that its "brochures
included a picture of VersaTop's coupler product and a
reference to VersaTop's product name." F&R at
*1, *4. Nor does Georgia Expo "dispute VersaTop's
ownership of the trademarks at issue." Id. at
*4. VersaTop states that Section 43(a) of the Lanham Act
establishes a statutory cause of action for likelihood of
confusion, as is plainly present in this case. Georgia Expo
responds only that it has not used the VersaTop marks
"in commerce," and that the district court
correctly interpreted the statute to hold that there had been
no violation of federal trademark law.
filed a notice of appeal to the U.S. Court of Appeals for the
Ninth Circuit. VersaTop then filed a "stipulated
motion" requesting transfer of the appeal to the Federal
Circuit pursuant to 28 U.S.C. § 1631 ("Transfer to
cure want of jurisdiction"). The Ninth Circuit agreed
that transfer was appropriate. VersaTop Support Sys.,
Inc. v. Ga. Expo, Inc., No. 17-35406, 2017 WL 9360849,
at *1 (9th Cir. Nov. ...