Pinnacle Advertising and Marketing Group Inc. v. Pinnacle Advertising and Marketing Group, LLC, 7f4th989

Background:

Two advertising firms share the name “Pinnacle”: Pinnacle Illinois (using the name since 1998) and Pinnacle Florida (since 2010); evidence of customer confusion (a Central Florida Honda pitch, two Advertising Age mistakes, misdirected communications).
Pinnacle Illinois registered two marks (word and stylized) after discovery events: applications filed Nov. 4, 2016; registrations issued Sept. 12, 2017; PTO did not require proof of secondary meaning.
Pinnacle Illinois sued Pinnacle Florida for trademark infringement, unfair competition, and cybersquatting (initial suit in Illinois; then filed in S.D. Fla. on Nov. 21, 2018). Pinnacle Florida counterclaimed to cancel the ’206 and ’223 registrations under 15 U.S.C. § 1119 and pleaded laches as a defense.
At a three-day jury trial the jury returned a verdict for Pinnacle Illinois on infringement and unfair competition and awarded $550,000; cybersquatting claim was dismissed at close of plaintiff’s case.
Post-trial the district court granted Pinnacle Florida’s JMOL on laches and on the cancellation counterclaim, concluding Illinois’s marks were merely descriptive (no secondary meaning) and cancelling the registrations under § 1119.
The Eleventh Circuit vacated the cancellation order (holding the court erred by disregarding the jury’s findings and the presumption of validity for registered marks), affirmed the laches bar to monetary damages, and remanded for (1) reconsideration of cancellation under the Rule 50 standard and the presumption of inherent distinctiveness, and (2) consideration whether to grant injunctive relief to prevent public confusion.

Issues:

Issue	Plaintiff's Argument	Defendant's Argument	Held
1) Whether the district court erred in allowing Pinnacle Florida to amend its cancellation counterclaim shortly before trial (Rule 15)	Amendment was improper because Pinnacle Florida never formally moved under Rule 15 and late amendment prejudiced Illinois	Amendment was permissible; district court has discretion to allow amendments sua sponte and Illinois was not prejudiced	Affirmed: district court did not abuse discretion in allowing the amendment (no undue prejudice shown)
2) Whether the district court properly cancelled registered marks without deferring to the jury and without applying the presumption of inherent distinctiveness	Jury expressly found Illinois’s marks distinctive and protectable; district court should have applied Rule 50 deference and required Florida to rebut the presumption of inherent distinctiveness	District court reexamined distinctiveness de novo and found marks descriptive, lacking secondary meaning	Reversed in part: vacated cancellation order; district court must give deference to jury under Rule 50 and hold Florida to its burden to rebut presumption of inherent distinctiveness on remand
3) Whether laches barred Illinois’s Lanham Act claims for monetary damages	Delay excused or measured from later Advertising Age mistake; progressive encroachment meant no laches	Illinois knew or should have known by Jan. 2014 (Central Florida Honda pitch); four-year delay caused undue prejudice to Florida	Affirmed: district court did not clearly err; laches bars Illinois’s monetary damages claims
4) Whether laches also bars injunctive relief	Even if damages barred, an injunction may still issue to prevent consumer confusion; court should consider public interest	Laches precludes monetary relief but court should weigh equities before injunctive relief	Remanded: district court must consider whether injunctive relief is appropriate despite laches (weigh strength of confusion evidence and equities)

Key Cases Cited

Coach House Rest., Inc. v. Coach & Six Rests., Inc., 934 F.2d 1551 (11th Cir. 1991) (explains spectrum of mark distinctiveness and secondary meaning)
Welding Servs., Inc. v. Forman, 509 F.3d 1351 (11th Cir. 2007) (only distinctive marks are protectable; discusses presumption for registered marks)
Royal Palm Props., LLC v. Pink Palm Props., LLC, 950 F.3d 776 (11th Cir. 2020) (standards for reviewing JMOL and cancellation under § 1119)
Kason Indus., Inc. v. Component Hardware Grp., Inc., 120 F.3d 1199 (11th Cir. 1997) (sets elements and approach for laches defense in Lanham Act cases)
Foman v. Davis, 371 U.S. 178 (U.S. 1962) (Rule 15 leave-to-amend standard — leave should be freely given absent undue prejudice)
Hargett v. Valley Fed. Sav. Bank, 60 F.3d 754 (11th Cir. 1995) (abuse-of-discretion standard for allowing late amendments)
Lindsey v. Am. Cast Iron Pipe Co., 810 F.2d 1094 (11th Cir. 1987) (court may not make findings inconsistent with jury’s resolution of an issue)
Engineered Tax Servs., Inc. v. Scarpello Consulting, Inc., 958 F.3d 1323 (11th Cir. 2020) (burden of persuasion to prove invalidity of a registered mark)
Johnson & Johnson Vision Care, Inc. v. 1-800 Contacts, Inc., 299 F.3d 1242 (11th Cir. 2002) (standard for clear-error review of factual findings)
Citibank, N.A. v. Citibanc Group, Inc., 724 F.2d 1540 (11th Cir. 1984) (laches analysis where defendant expanded use despite plaintiff warnings)