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Safeway Transit LLC v. Disc. Party Bus, Inc.

United States Court of Appeals for the Eighth Circuit

December 11, 2019, Submitted; April 6, 2020, Filed

No. 18-2990

Opinion

SMITH, Chief Judge.

 [*1174]  Safeway Transit LLC ("Safeway"), a party-bus company and its proprietor, Aleksey Silenko, brought suit against Discount Party Bus, Inc.; Party Bus MN LLC; and DPB's owner, Adam Fernandez,1 alleging, among other things, federal trademark infringement under the Lanham Act,  [*1175]  in violation of 15 U.S.C. § 1125(a), and deceptive trade practices, in violation of Minn. Stat. § 325D.44. Safeway alleged that DPB infringed two unregistered description trademarks—"Rent My Party Bus" and "952 Limo Bus." Safeway and Silenko requested a permanent injunction, disgorgement of profits, and attorney's fees. Following a bench trial, the district court2 permanently [**2]  enjoined DPB and Fernandez "from using or contributing to the use of the 'Rent My Party Bus' and '952 Limo Bus' trademarks or related domain names, keywords, or hashtags in connection with the advertisement, marketing, or sale of transportation services." Safeway Transit LLC v. Disc. Party Bus, Inc., 334 F. Supp. 3d 995, 1009 (D. Minn. 2018). However, the district court denied Safeway and Silenko's (1) request for a disgorgement of profits, and (2) request for attorney's fees. On appeal, Safeway and Silenko appeal the district court's denial of these two requests. We affirm.

I. Background

In approximately 2000, Fernandez started Party Bus MN, which was the first party-bus company in the Twin Cities region. In 2004, Fernandez formed Discount Party Bus Co., LLC. It began using "Party Bus MN" as a business name no later than 2004. Prior to 2008, DPB used "Party Bus MN," "Rent My Party Bus," and "952 Limo Bus" in print advertising, including on fliers that Fernandez distributed. DPB did not use any of the terms online before 2008.

In September 2008, Silenko formed Party Bus MN LLC and registered the domain name partybusmn.com. A month later, Silenko changed its name to Safeway Transit LLC and registered the domain name rentmypartybus.com. Safeway is a competing party-bus company [**3]  serving the Twin Cities region. Since Safeway's inception, Silenko has been its director of business, responsible for budgeting, marketing, and operations. On its first bus in 2008, Safeway displayed a "Rent My Party Bus" decal. From 2008 to at least 2015, Safeway displayed decals with one or more of the following terms: "Rent My Party Bus," "952 Limo Bus," and "Party Bus MN."

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954 F.3d 1171 *; 2020 U.S. App. LEXIS 10691 **; 2020 U.S.P.Q.2D (BNA) 10292

Safeway Transit LLC; Aleksey Silenko, Plaintiffs - Appellants v. Discount Party Bus, Inc., an inactive Minnesota corporation; Party Bus MN LLC, a Minnesota limited liability company; Adam Fernandez, Defendants - Appellees

Prior History:  [**1] Appeal from United States District Court for the District of Minnesota.

Safeway Transit LLC v. Disc. Party Bus, Inc., 334 F. Supp. 3d 995, 2018 U.S. Dist. LEXIS 137185 (D. Minn., Aug. 13, 2018)

CORE TERMS

district court, profits, infringement, disgorgement, attorney's fees, unjust enrichment, marks, domain name, trademarks, willful, deterrence, injunction, Lanham Act, registration, registered, terms, accounting, website, advertising, equitable, deter, federal trademark, burden of proof, gross revenue, rentmypartybus, deliberate, domains, unclean, argues

Civil Procedure, Appeals, Standards of Review, Abuse of Discretion, Trademark Law, Damages, Types of Damages, Profits, Remedies, Equitable Relief, Injunctions, Causes of Action Involving Trademarks, Infringement Actions, Burdens of Proof, Responses, Defenses, Demurrers & Objections, Affirmative Defenses, Equity, Maxims, Clean Hands Principle, Costs & Attorney Fees