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Versatop Support Systems, LLC v. Georgia Expo, Inc.

United States Court of Appeals, Federal Circuit

April 19, 2019

GEORGIA EXPO, INC., Defendant-Appellee

          Appeal from the United States District Court for the District of Oregon in No. 3:15-cv-02030-JE, Magistrate Judge John Jelderks.

          David Paul Cooper, Kolisch Hartwell, P.C., Portland, OR, argued for plaintiff-appellant. Also represented by Owen W. Dukelow, Desmond John Kidney, II.

          John L. North, Hill Kertscher & Wharton LLP, Atlanta, GA, argued for defendant-appellee.

          Before Newman, Linn, and Dyk, Circuit Judges.


         The 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.[1] Only the trademark issue is before us.

         The 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.

         We 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.


         VersaTop 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'.[2] Am. Compl. ¶ 14 (J.A. 98).

         The 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 Expo:

         (Image omitted)

         Am. 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.

         The 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.

         On this 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.



         VersaTop 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. ...

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