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Quick Techs. v. Sage Group Plc

United States Court of Appeals for the Fifth Circuit

December 9, 2002, Decided

No. 01-11197

Opinion

 [***1131]   [*341]  CARL E. STEWART, Circuit Judge:

Quick Technologies, Inc. ("QTI") filed suit against The Sage Group plc ("Sage Group"), Sage U.S. Holdings, Inc. ("Holdings"), and Sage Software, Inc. ("Sage Software") (collectively "Defendants") for trademark infringement and unfair competition. Prior to trial, the district court dismissed QTI's claims against Sage Group for lack of personal jurisdiction. The district  [*342]  court further denied QTI's request to amend the pretrial order to add a corrective advertising claim. Ultimately, QTI prevailed at trial against Holdings and Sage Software on its trademark infringement claims and the district court entered permanent injunctions in QTI's favor. 1 QTI, however, did not prevail on its claim for an accounting of Holdings' and Sage Software's profits. QTI appeals.

 [**2]  FACTUAL AND PROCEDURAL BACKGROUND

QTI was formed in 1992 and initially provided online information about distributors in the promotional products industry (e.g. companies that imprint a business's logo onto coffee mugs, key chains, flashlights, etc.). QTI claims that by 1995, it had expanded its product offerings to include such things as "online databases, online supplier advertising and other databases and business software." QTI began using the mark SAGE INFORMATION SYSTEM in January 1992 and has been using a variety of marks which incorporate or use the word SAGE (e.g. SAGE, SAGE INFORMATION SYSTEM, SAGE-CD, SAGE-ONLINE, and SAGE-CATALOG LIBRARY) continuously since that time.

Sage Group is a public limited company organized under the laws of England and Wales. Sage Group manufactures and sells software for accounting and business management purposes and its principal place of business is in England. On October 14, 1988, Sage Group received registration for the mark SAGE in the United Kingdom. Beginning in 1991, Sage Group, acting through Holdings, acquired several American companies that developed and sold accounting and business management software. By 1995, Sage Group began [**3]  to consider whether the company should adopt an international brand name and ultimately adopted SAGE as such.

On May 17, 1995, QTI filed an application with the United States Patent and Trademark Office ("USPTO") to register the mark SAGE INFORMATION SYSTEM. This mark was published for opposition in 1996, at which time Sage Group claims it first learned of QTI's use of the SAGE INFORMATION SYSTEM mark. Negotiations began between Sage Group and QTI regarding use of the mark. These negotiations eventually broke down and Sage Group filed a Notice of Opposition to QTI's use of the SAGE INFORMATION SYSTEM mark with the USPTO.

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313 F.3d 338 *; 2002 U.S. App. LEXIS 24718 **; 65 U.S.P.Q.2D (BNA) 1130 ***; 54 Fed. R. Serv. 3d (Callaghan) 220

QUICK TECHNOLOGIES, INC., Plaintiff-Appellant, versus THE SAGE GROUP PLC and, SAGE US HOLDINGS, INC. Defendants-Appellees, QUICK TECHNOLOGIES, INC., Plaintiff-Appellant, versus SAGE SOFTWARE, INC., Defendant-Appellee.

Subsequent History:  [**1]  Rehearing Denied January 20, 2003, Reported at: 2003 U.S. App. LEXIS 2196.

Rehearing denied by Quick Techs., Inc. v. Sage Group PLC, 2003 U.S. App. LEXIS 2196 (5th Cir. Tex., Jan. 20, 2003)

US Supreme Court certiorari denied by QUICK TECHNOLOGIES, INC. v. THE SAGE GROUP, PLC, ET AL., 2003 U.S. LEXIS 5549 (U.S., Oct. 6, 2003)

Prior History: Appeal from the United States District Court for the Northern District of Texas. 3:98-CV-1218-M. Barbara M G Lynn, US District Judge.

Disposition: AFFIRMED.

CORE TERMS

Sage, profits, infringement, district court, willful, accounting, Pig, Software, personal jurisdiction, pretrial order, advertisements, contacts, damages, willfully, remedies, factors, lack of personal jurisdiction, injunctive, sandwiches, cases, trademark infringement, unjust enrichment, instruct a jury, subsidiaries, asserting, rights

Civil Procedure, Jurisdiction, In Rem & Personal Jurisdiction, General Overview, In Personam Actions, Challenges, Responses, Defenses, Demurrers & Objections, Motions to Dismiss, Methods of Discovery, Depositions, Oral Depositions, Appeals, Standards of Review, De Novo Review, Service of Process, Methods of Service, Constitutional Law, Fundamental Rights, Procedural Due Process, Minimum Contacts, Jurisdictional Sources, Computer & Internet Law, Civil Actions, Constitutional Limitations, Internet Business, Online Advertising, Abuse of Discretion, Pretrial Matters, Conferences, Pretrial Orders, Final Pretrial Conferences, Business & Corporate Compliance, Entertainment Industry Falsity & Performance Misattribution, Trade Dress Protection, Causes of Action, Trademark Law, Federal Unfair Competition Law, False Advertising, False Designation of Origin, Elements of False Designation of Origin, Remedies, Damages, Jury Trials, Jury Instructions, Copyright Law, Types of Damages, Infringement Profits, Conveyances, Causes of Action Involving Trademarks, Infringement Actions, Profits, Factors for Determining Confusion, Intent of Defendant to Confuse, Equitable Relief, Equitable Accountings, Criminal Law & Procedure, Trials, Limiting Instructions