Sprint Communications LLC v. Retrobrands USA, LLC, et al

[DO NOT PUBLISH]
In the
United States Court of Appeals
For the Eleventh Circuit
____________________
No. 22-11717
____________________
SPRINT COMMUNICATIONS, INC.,
Plaintiff-Counter Defendant,
SPRINT COMMUNICATIONS LLC,
Plaintiff-Appellee,
versus
STEPHEN CALABRESE, et al.,
Defendants-Counter Claimants,
RETROBRANDS USA LLC,
JEFFREY KAPLAN,
NEXTEL MOBILE WORLDWIDE INC.,
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2 Opinion of the Court 22-11717
Defendants-Counter Claimants-Appellants.
____________________
Appeal from the United States District Court
for the Southern District of Florida
D.C. Docket No. 0:18-cv-60788-JEM
____________________
Before WILSON, G RANT, and L AGOA , Circuit Judges.
PER CURIAM:
Sprint owns trademarks for a “Nextel” word mark when
used with telecommunication equipment, and a sound mark for
the Nextel “chirp” noise for use with telecommunication services.
Stephen Calabrese began selling cell phones under the Nextel name
and used the chirp sound. After receiving a cease-and-desist letter,
Calabrese partnered with Jeffrey Kaplan and Retrobrands USA LLC
to expand sales of his “Nextel” branded devices. Sprint brought a
successful trademark infringement lawsuit regarding these two
marks. After a careful review of the record and with the benefit of
oral argument, we AFFIRM.
I.
Nextel Communications, Inc. created push-to-talk technol-
ogy allowing users to press a button, speak, and immediately be
heard by others in a group. Nextel first developed the “Nextel”
word mark (Reg. No. 1,884,244) and chirp sound mark (Reg. No.
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22-11717 Opinion of the Court 3
5,047,282) at issue in this case.1 Nextel merged with Sprint in 2005
to form “Sprint Nextel.” “Sprint Nextel” became “Sprint” in 2013.
Sprint merged with T-Mobile in 2020. T-Mobile now owns the
Nextel word mark and chirp sound mark.
Nextel’s push-to-talk devices and services have been used by
first responders and other people working in public safety roles.
These devices used a priority service, which allowed calls to go
through stadiums or events with congested networks. Rather than
market to individual consumers, Sprint markets push-to-talk ser-
vices to business consumers at trade shows.
In 2016, Calabrese started selling cell phones using the com-
pany name “Nextel, Inc.” and doing business as “Nextel World-
wide.” Through an online search for “Nextel” in 2016, Calabrese
found both the Wikipedia page saying Nextel Communication con-
tinued as a subsidiary of Sprint and a Sprint webpage offering push-
to-talk phones under the “Nextel” name. Nonetheless, Calabrese
appeared at a 2017 trade show selling “Nextel” devices. In re-
sponse, Sprint sent Calabrese a cease-and-desist letter demanding
that Calabrese stop using the Nextel name and the domain “nextel-
worldwide.com.” Calabrese told Sprint he had stopped when, in-
stead, he had actually partnered with Kaplan to expand.
Kaplan owns Retrobrands, a company that “revives” iconic
consumer brands. Kaplan knew that Calabrese had received a
1 We refer to these as the “Nextel word mark” and “chirp sound mark,” re-
spectively, throughout this opinion.
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4 Opinion of the Court 22-11717
cease-and-desist letter in which Sprint claimed to own valid and
subsisting rights in the Nextel word mark. Kaplan’s own research
indicated that Sprint renewed its rights in the Nextel Mark with the
United States Patent and Trademark Office (USPTO) in 2015.
Kaplan also reviewed the following: Sprint’s 2013 statements that it
would shut down Nextel’s network; Sprint’s financial disclosures;
and records showing the cancellation of some Nextel trademark
registrations. Kaplan and Calabrese’s companies entered a licens-
ing agreement to build and later sell a company using “the famous
and iconic trademark NEXTEL.” Kaplan tried to register both the
“NEXTEL” name and the Nextel chirp, but the USPTO denied both
applications due to potential consumer confusion with Sprint’s reg-
istered trademarks.
Even without registered marks, Kaplan and Calabrese used
their Nextel materials to advertise and sell mobile devices and wire-
less services to the same consumers Sprint targeted. Kaplan and
Calabrese did not make devices or own a network. They resold
cheap phones with “NEXTEL” stickers. These phones could not
access the priority services target customers need. Their advertise-
ments used phrases like “Nextel is back” and domain names like
“nextelisback.com.” These sites redirected to “nextelmobileworld-
wide.com,” which disclosed it was not affiliated with Sprint. Under
the licensing agreement, Kaplan made $40,000 to $50,000. When
marketing to investors, Kaplan advertised the company as being
worth $100 million.
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Sprint initiated these proceedings, asserting claims against
Kaplan, Calabrese, and their companies, Retrobrands USA LLC,
Nextel, Inc., and Nextel Mobile Worldwide, Inc. (collectively, De-
fendants) for infringement, unfair competition, false designation of
origin, dilution, counterfeiting Sprint’s Nextel word and chirp
sound marks, and cybersquatting. Defendants responded with
fraud and abandonment affirmative defenses and a counterclaim
of tortious interference.2
At trial, the district court found no evidence to support the
abandonment of the chirp sound mark and granted judgment as a
matter of law to Sprint on that defense. The district court left the
jury to decide whether Sprint abandoned the Nextel word mark.
The jury returned a verdict for Sprint on all counts—Sprint had not
abandoned the Nextel word mark; Defendants infringed, counter-
feited, unfairly competed with, and were likely to dilute the Nextel
word mark; Defendants committed cybersquatting regarding the
Nextel word mark; and Defendants infringed, counterfeited, and
unfairly competed with the chirp sound mark. The jury found $4.5
million in statutory damages ($2 million for counterfeiting the
Nextel word mark; $2 million for counterfeiting the chirp sound
mark; $500,000 for cybersquatting). The jury found an additional
$5.2 million in disgorgement damages.
After the jury returned its verdict, the district court entered
judgment in Sprint’s favor. Sprint ultimately elected statutory
2 Calabrese is not a party to the appeal.
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6 Opinion of the Court 22-11717
damages, which the district court awarded. Separately, the district
court issued a permanent injunction against Defendants and or-
dered Defendants to transfer the remaining infringing domain
names to Sprint and abandon applications to register their marks
with the USPTO. The district court denied Defendants’ motion for
stay or, alternatively, motion for extension of time, and Defendants’
motion to vacate the permanent injunction.
Kaplan, Nextel Mobile Worldwide, Inc., and Retrobrands
(collectively Retrobrands) timely appealed. On appeal,
Retrobrands argues (1) Sprint lacks standing; (2) Sprint abandoned
the Nextel word mark and chirp sound mark; (3) the marks were
insufficiently famous for a dilution claim; (4) Sprint did not make a
timely election of statutory damages; and (5) the district court
abused its discretion in granting a permanent injunction. We ad-
dress each argument in turn.
II.
“Whether a plaintiff has standing to sue is a threshold juris-
dictional question that we review de novo.” MacPhee v. MiMedx Grp.,
Inc., 73 F.4th 1220, 1238 (11th Cir. 2023). Standing consists of three
components: (1) a “concrete and particularized . . . and [] actual or
imminent” injury; (2) traceability between the injury and the con-
duct at issue; and (3) redressability. Lujan v. Defs. of Wildlife, 504
U.S. 555, 560–61 (1992). Here, Sprint holds valid trademarks that
Retrobrands cannot use, the actions of Retrobrands caused the in-
fringement harm, and a favorable decision would redress Sprint’s
alleged harm. This suffices for standing. See Royal Palm Props., LLC
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22-11717 Opinion of the Court 7
v. Pink Palm Props., LLC, 950 F.3d 776, 787 n.6 (11th Cir. 2020). Rec-
ognizing standing, we move to the merits.
III.
We review a renewed judgment as a matter of law de novo
and draw all inferences in the light most favorable to the nonmov-
ing party. Williams v. First Advantage LNS Screening Sols., Inc., 947
F.3d 735, 744 (11th Cir. 2020). Judgment as a matter of law is only
appropriate when a plaintiff “presents no legally sufficient eviden-
tiary basis for a reasonable jury to find for him on a material ele-
ment of his cause of action.” Christopher v. Florida, 449 F.3d 1360,
1364 (11th Cir. 2006). Separately, we review denials of motions for
new trials for an abuse of discretion. Walter Int’l Prods., Inc. v. Sa-
linas, 650 F.3d 1402, 1407 (11th Cir. 2011). Our deference is “partic-
ularly appropriate where a new trial is denied and the jury’s verdict
is left undisturbed.” Id. (quotations omitted).
Abandonment is an affirmative defense available against al-
legations of trademark3 infringement. See 15 U.S.C. § 1127. A mark
is abandoned “[w]hen its use has been discontinued with intent not
to resume such use.” Id. A trademark holder must make a “bona
fide use of a mark.” Id. “Nonuse for 3 consecutive years shall be
3 Under the Lanham Act, “trademark” refers to “any word, name, symbol, or
device, or any combination thereof [] (1) used by a person, or (2) which a per-
son has a bona fide intention to use in commerce and applies to register on the
principal register established by this chapter, to identify and distinguish his or
her goods . . . from those manufactured or sold by others and to indicate the
source of the goods.” 15 U.S.C. § 1127.
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8 Opinion of the Court 22-11717
prima facie evidence of abandonment.” Id. If a defendant can
show a prima facie case of abandonment, the burden of production
shifts to the plaintiff, but the burden of persuasion remains with
the defendant. Cumulus Media, Inc. v. Clear Channel Commc’ns, Inc.,
304 F.3d 1167, 1176–77 (11th Cir. 2002). Abandonment is a factual
question. Id. at 1174. “[W]e require strict proof ” to find abandon-
ment. Conagra, Inc. v. Singleton, 743 F.2d 1508, 1516 (11th Cir. 1984).
The Anticybersquatting Consumer Protection Act prohibits
registering or using domain names when at the time of registra-
tion, the domain name is “identical or confusingly similar to” a
mark at issue and the person creating the cybersquatting domain
name “has a bad faith intent to profit from that mark.”
15 U.S.C. § 1125(d)(1)(A).
Under de novo review and our strict standard for finding
abandonment, Sprint did not abandon either mark at issue, which
also supports the jury finding for Sprint on its cybersquatting claim.
Retrobrands repeatedly emphasizes the variety of Nextel
marks Sprint abandoned or cancelled. These do not matter be-
cause abandonment is specific to a mark and its particular use.
Here, the Nextel word mark at issue does not require a specific font
or stylization, and its registration relates to use with telecommuni-
cation equipment. Similarly, the chirp sound mark relates to
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22-11717 Opinion of the Court 9
telecommunication services. We only review the use of these two
marks related to telecommunications equipment and services.4
Sprint’s testimonial and physical evidence suffice to show
continuous use of both marks during the relevant three years. At
trial, a former Sprint executive testified that Sprint continued to use
the Nextel word mark on packaging when selling the Sonim Strike
XP from 2013 to 2018. Sprint also introduced a Sonim Strike XP
package from 2013 featuring the Nextel word mark. Sprint’s wit-
nesses testified that they continued to use the chirp sound mark in
their devices and in promotional presentations. Calabrese started
using his Nextel mark in 2016 and appeared at the same 2017
tradeshow where Sprint used its Nextel word mark. Without three
years of nonuse, Sprint did not abandon either mark. Absent a
prima facie case, the remaining evidence does not support aban-
donment by Sprint.
Further, without abandonment, Retrobrands lacks a good
faith defense for its cybersquatting claim. The cease-and-desist let-
ter, independent internet searches showing Nextel products on
Sprint’s website, and the USPTO’s decision not to grant Kaplan a
4 Retrobrands submitted a motion to take judicial notice of Related USPTO
Nextel Records: (1) USPTO TESS search dated May 2, 2023, listing 82 entries
of Nextel marks as abandoned or dead; (2) USPTO webpage for a Nextel Black
and Gold logo listed as dead; (3) USPTO webpage for a “Nextel Direct Con-
nect Mark” listed as dead; and (4) USPTO webpage for “Sprint Together with
Nextel Mark” listed as dead. We deny Retrobrands’ motion to take judicial
notice of these records because they each relate to marks that are not at issue
in this appeal.
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10 Opinion of the Court 22-11717
trademark because his marks were confusingly similar to Sprint’s
marks all combine to support finding Retrobrands lacked good
faith.
The jury found that Sprint had not abandoned the word
mark or the sound mark and found in Sprint’s favor on the cyber-
squatting claim. We decline to disturb the jury’s verdict given our
finding that there was sufficient evidence to support such a verdict.5
IV.
We review Lanham Act damage awards for an abuse of dis-
cretion. Burger King Corp. v. Mason, 855 F.2d 779, 781 (11th Cir. 1988)
(per curiam). The Lanham Act outlines specific statutory damages
for using counterfeit marks—either between $1,000 and $200,000
per counterfeit mark or up to $2 million per counterfeit mark when
its use was willful. 15 U.S.C. § 1117(c). Cybersquatting in violation
of § 1125(d)(1) can carry statutory damages of between $1,000 and
$100,000 per domain name, “as the court considers just.” Id. at
§ 1117(d). Both provisions allow plaintiffs to elect damages “at any
5 On appeal, Retrobrands also argued that the district court erred by denying
its renewed motion for judgment as a matter of law regarding dilution.
Retrobrands argued that Sprint did not present sufficient evidence that its
marks were famous enough or had sufficient recognition for a successful dilu-
tion claim under 15 U.S.C. § 1125(c). It may not be that the marks at issue are
sufficiently famous for a dilution claim. But the statutory damages Sprint re-
ceived only relate to its counterfeiting and cybersquatting claims. As the fol-
lowing subsections explain, neither the monetary nor injunctive relief Sprint
received requires finding in its favor on the dilution claim. Therefore, the dis-
trict court’s error in allowing the jury to return a verdict on the dilution claim
was harmless.
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time before final judgment is rendered by the trial court.” Id. at
§ 1117(c), (d).
Sprint’s complaint requested both statutory and actual dam-
ages. The jury calculated awards for several categories, which in-
cluded the maximum amounts for each statutory award: $2 million
for counterfeiting the Nextel word mark; $2 million for counterfeit-
ing the chirp sound mark; and $500,000 for cybersquatting. Sprint
elected the $4.5 million of statutory damages rather than $5.2 mil-
lion in actual damages before the district court had ruled on its mo-
tion for a permanent injunction. Sprint’s election occurred before
the ultimate final judgment. The district court did not abuse its
discretion in awarding the statutory damages calculated by the jury.
V.
We review the granting of a permanent injunction for an
abuse of discretion. Angel Flight of Ga., Inc. v. Angel Flight Am., Inc.,
522 F.3d 1200, 1208 (11th Cir. 2008). To receive a permanent in-
junction, a plaintiff must show:
(1) it has suffered an irreparable injury; (2) remedies
available at law, such as monetary damages, are inad-
equate to compensate for that injury; (3) considering
the balance of hardships between the plaintiff and de-
fendant, a remedy in equity is warranted; and (4) the
public interest would not be disserved by a perma-
nent injunction.
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Id. A plaintiff seeking a permanent injunction is “entitled to a re-
buttable presumption of irreparable harm upon a finding of a vio-
lation identified in this subsection.” 15 U.S.C. § 1116(a).
As a threshold matter, Retrobrands argues that the district
court lacked jurisdiction to enter a permanent injunction. Gener-
ally, a district court no longer has jurisdiction over a case once a
party enters a notice of appeal. In re Mosley, 494 F.3d 1320, 1328
(11th Cir. 2007). After a party files a notice of appeal, a district
court retains jurisdiction over things that could help the appellate
court exercise its jurisdiction. Id. Filing a premature notice of ap-
peal does not strip the district court of this jurisdiction. See Gris
v. Provident Consumer Disc. Co., 459 U.S. 56, 61 (1982) (per curiam).
Retrobrands decided to file the notice of appeal one day after filing
a motion for reconsideration of the judgment. Filing both motions
meant the district court did not yet have an opportunity to rule on
the motion for reconsideration, which made Retrobrands’ first no-
tice of appeal premature.
Ultimately, the district court properly entered a permanent
injunction. Because Retrobrands violated the Lanham Act, Sprint
was entitled to a rebuttable presumption of irreparable harm. The
circumstances satisfy the remaining prongs for granting a perma-
nent injunction. Remedies at law are inadequate to address the
harm of confusion that would arise without the injunction. Given
the finding of infringement and counterfeit, the balancing of inter-
ests weighs heavily in Sprint’s favor. Finally, entering a permanent
injunction benefits the public interest by preventing confusion
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among first responder consumers of push-to-talk devices.
Retrobrands’ phones lack the priority service that first responders
associate with “Nextel” products. The district court did not abuse
its discretion by entering a permanent injunction.
AFFIRMED.
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