The following are summaries of opinions issued by the Fifth Circuit in January 2024. The summaries are overviews of particular aspects of the opinions; please review the entire opinions.
TRADEMARK: Antique Rolex watches with added diamonds, modified bezels, or replaced bands did not qualify for refurbishment exception to trademark infringement.
Rolex Watch USA, Inc. v. BeckerTime, L.L.C., No. 22-10866, 2024 WL 301768 (5th Cir. Jan. 26, 2024).
To recover on a trademark infringement claim under the Lanham Act, a plaintiff must first show that the mark is legally protectable and must then establish infringement by showing a likelihood of confusion.
BeckerTime, the defendant here, sells primarily decades-old pre-owned watches containing Rolex branded parts. BeckerTime labels the watches “Genuine Rolex” even though the watches contain some Rolex and some non-Rolex parts. Rolex sued for infringement, and, after a bench trial, the district court found a likelihood of confusion and enjoined BeckerTime from using Rolex’s trademark in some, but not all, of the applications Rolex complained of.