Jury Instructions

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7^th Circuit Court of Appeals

Case Name: Fabick, Inc., v. JFTCO, Inc.,

Case No.: 19-1760; 19-1872

Officials: FLAUM, ROVNER, and HAMILTON, Circuit Judges.

Focus: Jury Instructions

Two non-competing Midwestern companies operated by brothers used marks containing the family name, Fabick. The owner of the registered mark (or “senior user”) (Fabick, Inc., or “FI”), a small manufacturer of sealants, sued the “junior user” (JFTCO, Inc.), a larger distributor of Caterpillar equipment, for trademark infringement. In a mixed verdict, a jury found that JFTCO had violated the Lanham Act but had not committed common law infringement. FI sought an order permanently enjoining JFTCO from using the name “Fabick,” but the district court entered limited injunctive relief requiring that JFTCO issue, for five years, disclaimers clarifying that it is not associated with FI.

Both parties appealed. FI complains that the district court erred in setting remedies: it should have entered a broad permanent injunction against JFTCO, and further should have allowed FI to recover JFTCO’s profits. JFTCO, in its counter-appeal, seeks reversal of the jury’s finding that it violated the Lanham Act based on an allegedly erroneous jury instruction and the district court’s refusal to overturn the jury’s verdict as a matter of law. We now affirm on each issue.

Affirmed

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Derek A Hawkins is trademark corporate counsel for Harley-Davidson. Hawkins oversees the prosecution and maintenance of the Harley-Davidson’s international trademark portfolio in emerging markets.