Watching the Time, part 2

The trademark-infringement issue in Rolex Watch USA, Inc. v Beckertime, LLC turned on whether the customary “digits-of-confusion” analysis should have been augmented by additional considerations involving the refurbishment of trademarked products. The Fifh Circuit agreed with the district court’s treatment of the issue:

Champion instructs that a reseller may utilize the trademark of another, so long as it involves nothing more than a restoration to the original condition, and not a new design. In that case, “[f]ull disclosure gives themanufacturer all the protection to which he is entitled.”  Here, BeckerTime does more than recondition or repair vintage Rolex watches. As the district court found, BeckerTime produced “modified watches,” with “added diamonds,” “aftermarket bezels,” and aftermarket bracelets or straps. It found that the watches sold by BeckerTime were “materially different than those sold by Rolex.” In fact, the district court found that Rolex has never sold watches matching the descriptions provided by BeckerTime. Unlike the plugs in Champion that “are nevertheless Champion plugs and not those of another make,” BeckerTime’s watches are of another make and cannot properly be called genuine Rolex watches. … Champion’s misnomer exception properly applied to the facts of this case and the district court did not err by conducting a traditional digits of confusion analysis.

No. 22-10866 (Jan. 27, 2024) (citations omitted).