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Keywords

lawsuittrialtrademark

motiontrademark

Related Cases

Quiksilver, Inc. v. Kymsta Corp., 466 F.3d 749, 80 U.S.P.Q.2d 1810, 06 Cal. Daily Op. Serv. 9431, 2006 Daily Journal D.A.R. 13,654

Facts

Quiksilver, a global sportswear company, launched a juniors' clothing line named 'QUIKSILVER ROXY' in 1991. Kymsta, a clothing manufacturer, began using the name 'ROXYWEAR' for its line in January 1992. Quiksilver registered its trademarks in 1996 and 1998, while Kymsta did not register 'ROXYWEAR.' Quiksilver filed a lawsuit against Kymsta for trademark infringement, leading to a trial where both parties sought judgment as a matter of law.

Quiksilver is a global company that manufactures sports-wear for young men and women. In 1989, Quiksilver decided to launch a juniors' clothing line for teenage girls. As the name for its juniors' line, Quiksilver chose either 'QUIKSILVER ROXY' or 'ROXY.'

Issue

Did Quiksilver commit fraud in registering its trademarks, and did Kymsta establish a valid defense of innocent use?

Rule

Federal registration of a trademark provides prima facie evidence of its validity. Fraud in trademark registration occurs when an applicant knowingly makes false representations. Trademark rights are acquired by the first party to use a mark in commerce. The presumption of validity can be rebutted by showing that the registrant did not establish ownership rights at the time of registration.

Federal registration of a trademark constitutes prima facie evidence of the validity of the registered mark and of the registrant's exclusive right to use the mark in commerce.

Analysis

The court found that Quiksilver's CEO's failure to disclose knowledge of Kymsta's use of 'ROXYWEAR' did not constitute fraud, as he believed Quiksilver was the rightful owner of the mark. Kymsta's arguments regarding first use and inherent distinctiveness raised jury questions, indicating that reasonable minds could differ on these issues. The court also noted that Kymsta's innocent use defense was not valid due to the lack of continuous use of the 'ROXYWEAR' mark.

Because reasonable minds could not differ regarding the presumed validity of Quiksilver's marks, the district court correctly granted judgment as a matter of law in favor of Quiksilver on Kymsta's fraud defense.

Conclusion

The court affirmed the validity of Quiksilver's trademarks and ruled that Kymsta could not successfully claim innocent use, but reversed the judgment regarding the jury questions on first use and inherent distinctiveness.

We affirm the district court's granting of Quiksilver's motion for judgment as a matter of law as to Kymsta's fraud defense.

Who won?

Quiksilver prevailed in the trademark infringement action, as the court upheld the validity of its trademarks and denied Kymsta's defenses. The court reasoned that Quiksilver's registration provided a presumption of validity that Kymsta failed to rebut, and that Kymsta's claims of innocent use were insufficient due to a lack of continuous use of its mark.

Quiksilver is the prevailing party as the court concluded that Kymsta was unable to rebut the presumption of validity of Quiksilver's trademarks and could not benefit from the innocent-use defense.

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