Tuesday, March 17, 2015

Request for Directed Verdict -- Is "Pods" Generic?


A jury agreed with PODS that U-Haul infringed the "pods" trademark and that U-Haul was unable to prove that the mark was generic.  U-Haul asked for a directed verdict notwithstanding the jury's conclusion and separately asked for a new trial.

The Court noted the narrow lens through which a Rule 50 directed verdict motion is viewed:
A Rule 50 motion should be granted only if the evidence is so overwhelmingly in favor of the moving party that a reasonable jury could not arrive at a contrary result.
(quote omitted).  U-Haul argued that it had presented significant evidence including expert testimony, dictionary definitions, patents, media usage, military usage, industry usage, and PODS' own usage to show that the term "pods" was generic at the time of its trademark registration.  The Court first laid out the test for genericness:
The Lanham Act has codified the test for genericness: the primary significance of the mark to the relevant public.15 U.S.C. § 1064(3); Miller's Ale House, Inc. v. Boynton Carolina Ale House, LLC, 702 F.3d 1312, 1320 (11th Cir. 2012).  The term is generic if the primary significance of the mark is "the term by which the product or service itself is commonly known," a depiction of the product as a whole, rather than a particular feature of the product, or the name of a class of products rather than an individual brand.  Welding Servs., Inc. v. Forman, 509 F.3d 1351, 1358 (11th Cir. 2007) (citations omitted).  The First Circuit has explained: "Rather than answering the question "where do you come from?", a generic term merely explains "what are you?" Boston Duck Tours, LP v. Super Duck Tours, LLC, 531 F.3d 1, 14 (1st Cir. 2008) (citations omitted).  Genericness is based on the use of a word in its relevant context, not the word itself.  "'[I]vory' is generic of elephant tusks but arbitrary as applied to soap."  Soweco, Inc. v. Shell Oil Co., 617 F.2d 1178, 1183, 1186 (5th Cir. 1980).
The Court then turned to U-Haul's evidence.  The bulk of U-Haul's evidence appeared related to the use of the term "pod" in the aerospace industry (i.e. NASA definitions defining pod as a "streamlined compartment under the wings or fuselage of an airplane used as a container (as for fuel).")  While noting that U-Haul presented a significant amount of evidence, the Court recognized that the jury was entitled to give that evidence whatever weight the jury found appropriate:
The Court's inquiry on a Rule 50 motion based on the sufficiency of evidence is limited to determining "if the evidence is so overwhelmingly in favor of the moving party tht a reasonable jury could not arrive at a contrary verdict." Middlebrooks v. Hillcrest Foods, Inc., 256 F.3d 1241, 1246 (11th Cir. 2007).   It is the jury's role, not the court's, to make credibility determinations and weigh the evidence. Reeves v. Sanderson Plumbing Prods., 530 U.S. 133, 150–151 (2000). As outlined above, U–Haul presented a significant amount of evidence relevant to its affirmative defense of genericness. However, a careful review of the evidence, in light of the relevant legal standards and the jury's role as finder of fact and appraiser of credibility, leads to the conclusion that there is sufficient evidence to support the jury's verdict. See Chambless v.. Louisiana–Pac. Corp.,481 F.3d 1345, 1348 (11th Cir.2007) (denying Rule 50 motion brought by party who bore the burden of proof, where the movant made a prima facie case but there was sufficient evidence to support the jury's verdict); Collado v. UnitedParcel Service, Co., 419 F.3d 1143, 1154 (11th Cir.2005). U– Haul's remaining arguments for overturning the jury's verdict are similarly unavailing.
U-Haul's motion for a new trial failed for the same reasons.

Motion for directed verdict, or alternatively for a new trial, denied.
Pods Enterprises, Inc. v. U-Haul Intern., Inc., Case No. 8:12-cv-1479 (M.D. Fla. Mar. 11, 2015) (J. Whittemore)

No comments:

Post a Comment