[PUBLISH]

IN THE UNITED STATES COURT OF APPEALS

FOR THE ELEVENTH CIRCUIT

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No. 11-15586

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D.C. Docket No. 1:09-cv-00660-TWT

UNIQUE SPORTS PRODUCTS, INC.,

Plaintiff - Appellee,

versus

FERRARI IMPORTING COMPANY, 

d.b.a. Gamma Sports,

Defendant - Appellant.

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Appeal from the United States District Court

for the Northern District of Georgia

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(July 8, 2013)

Before TJOFLAT and COX, Circuit Judges, and MOLLOY, District Judge.

*

PER CURIAM:

 

*

 Honorable Donald W. Molloy, United States District Judge for the District of Montana, 

sitting by designation.

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This appeal requires us to consider whether a party may appeal on the merits 

from a decision in its favor, where a district court found against him as to one 

issue, nondispositive of the case. We find that, though he may not challenge the 

District Court’s finding on the merits, he is entitled to vacatur of the portion of the 

District’s Court’s order adverse to him.

I.

Unique Sports Products, Inc., (“Unique”) manufactures and markets sporting 

goods accessories. One of these is a product called Tourna Grip, the subject of this 

appeal. Tourna Grip is an “overgrip” product that is wrapped around the grip of a 

tennis racket and then taped into place to cushion and absorb moisture from a 

player’s hand. Since 1977, Unique and its predecessor in interest1 have 

manufactured Tourna Grip in a light blue color. Unique markets Tourna Grip as 

“the original blue grip”; “Blue Tape”; “the original light blue grip”; and “the light 

blue grip that does not slip.” In 2001, Unique obtained a federally registered 

trademark for the light blue used for “grip tape for sports rackets.” At the time it 

applied for that trademark, Tourna Grip accounted for fifty percent of the market in 

grip tape and had $40 million in cumulative sales.

 

1

 Unique acquired the Tourna Grip line in 1992.

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Ferrari Importing Company (“Ferrari”) also markets and sells grip tape for 

tennis rackets. Among the grip tapes it markets is a self-adhesive, roughly woven 

gauze tape in a teal blue color. Unlike Tourna Grip, Ferrari’s gauze tape is not 

moisture-absorbent. It also does not provide the cushioning Tourna Grip provides.

Unique first sued Ferrari over a decade ago. On June 18, 1999, the two 

companies entered into a consent decree that enjoined Ferrari from using the 

phrase “Tour Wrap” in marketing its products; from marketing grips using “any 

overwrap grip material having any blue color lighter than the color designated as 

293(c) in the Pantone Color Selector and [having] speckles and a chamois surface 

texture like” that of Tourna Wrap; and from engaging in other specified activities 

unrelated to this appeal. The decree further articulated that, should a court ever 

hold that Unique “has no enforceable rights in the Light Blue Color by a final 

judgment or decree from which no appeal can be taken,” Ferrari would be free of 

its terms.

Ten years later, on March 10, 2009, Unique filed a complaint against Ferrari 

for trademark infringement and false designation of origin under §§ 32 and 43(a) 

of the Lanham Act, 15 U.S.C. § 1114 and 1125(a)(1)(A); for deceptive trade 

practices under Georgia’s Uniform Deceptive Trade Practices Act, O.C.G.A. § 10-

1-372; and for violation of the June 18, 1999, final judgment. Ferrari filed its 

answer on April 21, 2010, and amended that answer on September 15, 2010. In its 

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answer, it denied Unique’s infringement allegations and asserted as an affirmative 

defense that Unique’s trademark registration was unenforceable. On January 24, 

2011, the District Court granted Unique’s motion for summary judgment on 

Ferrari’s affirmative defense that Tourna Grip’s blue color was merely functional 

and thus not an enforceable trademark, and granted Ferrari’s motion for summary 

judgment on Unique’s claim that Ferrari violated the 1999 final judgment.

On August 15 and 16, 2011, the District Court held a bench trial to 

determine, among other issues, whether Ferrari’s gauze tape infringed Unique’s 

federal trademark and whether Unique’s trademark was unenforceable against 

Ferrari. At the conclusion of the trial, the court held that Unique’s light blue 

trademark was valid and enforceable but that Ferrari’s blue gauze had not infringed 

upon that trademark. The clerk thus entered judgment for Unique on Ferrari’s 

affirmative defense but for Ferrari on Unique’s original charge of infringement. 

Ferrari appealed that decision to this court.

At oral argument on October 3, 2012, we asked the parties to submit 

supplemental briefing on the question of whether we have jurisdiction to entertain 

an appeal on the merits by a party when the district court rules in favor of that 

party on a charge of trademark infringement but rules against that party on its 

affirmative defense that the trademark was not enforceable.

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II.

“Congress has vested appellate jurisdiction in the courts of appeals for 

review of final decisions of the district court.” Deposit Guar. Nat’l Bank v. Roper, 

445 U.S. 326, 333, 100 S. Ct. 1166, 1171, 63 L. Ed. 2d 427 (1980) (citing 28 

U.S.C. § 1291). While “[o]rdinarily, only a party aggrieved by a judgment or order 

of a district court may exercise the statutory right to appeal therefrom,” the 

Supreme Court has explained that, because this rule “does not have its source in 

the jurisdictional limitations of Art. III,” in “an appropriate case, appeal may be 

permitted from an adverse ruling collateral to the judgment on the merits at the 

behest of the party who has prevailed on the merits, so long as that party retains a 

stake in the appeal satisfying the requirements of Art. III.” Id. at 333–34, 100 

S. Ct. at 1171–72. The Court offered Electrical Fittings Corp. v. Thomas & Betts 

Co., 307 U.S. 241, 59 S. Ct. 860, 83 L. Ed. 1263 (1939), as an “illustration of this 

principle in practice.” Deposit Guar. Nat’l Bank, 445 U.S. at 334; 100 S. Ct. at 

1172.

In the case at hand, the parties agree that Electrical Fittings, the facts of 

which precisely mirror the facts of this case, is controlling. In Electrical Fittings, 

the plaintiff had alleged patent infringement. “[The district court] held claim 1 

valid but not infringed and claim 2 invalid. Instead of dismissing the bill without 

more, it entered a decree adjudging claim 1 valid but dismissing the bill for failure 

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to prove infringement.” Electrical Fittings, 307 U.S. at 241–42, 59 S. Ct. at 860. 

The defendant appealed the district court’s decision, “mov[ing] to have the cause 

remanded to the District Court with directions to enter a decree holding the entire 

patent invalid.” Thomas & Betts Co. v. Electrical Fittings Corp., 100 F.2d 403, 

404 (2d Cir. 1938). The Second Circuit dismissed the appeal on the grounds that 

the defendant was not entitled to appeal a decree in its favor.

On appeal to the Supreme Court, the Court held that, although a “party may 

not appeal from a judgment or decree in his favor, for the purpose of obtaining a 

review of findings he deems erroneous which are not necessary to support the 

decree,” Electrical Fittings, 307 U.S. at 241; 59 S. Ct. at 861, nonetheless, because 

the district court had “purport[ed] to adjudge the validity of claim 1,” id. at 242; 59 

S. Ct. at 860–61, the appealing defendant was “entitled to have this portion of the 

decree eliminated,” id. at 242; 59 S. Ct. at 861. This is because, the Court later 

explained in Deposit Guaranty National Bank, although “[the district court] was 

correct in inquiring fully into the validity of the patent,” it “was incorrect to 

adjudge the patent valid after ruling there had been no infringement” because “[b]y 

doing so, [it] had decided a hypothetical controversy.” Deposit Guar. Nat’l Bank, 

445 U.S. at 335 n.7; 100 S. Ct. at 1172 n.7. Thus “the Circuit Court of Appeals 

had jurisdiction . . . to entertain the appeal, not for the purpose of passing on the 

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merits, but to direct the reformation of the decree.” Electrical Fittings, 307 U.S. at 

242; 59 S. Ct. at 860–61.

Despite its agreement with Ferrari that Electrical Fittings is precisely on 

point, Unique argues that, because Ferrari did not ask us in its opening brief to 

vacate the District Court’s judgment on trademark validity as unnecessary, we do 

not have jurisdiction to do so now. Essentially, then, Unique asks us to grant it 

leave to put forth a new argument in the wake of our request for supplemental 

briefing—that we do not have jurisdiction to entertain Ferrari’s appeal—but to bar 

Ferrari from putting forth such an argument—that we have jurisdiction for a very 

limited purpose, “to direct the reformation of the decree.”

It is true that we have frequently found that “[i]ssues that clearly are not 

designated in the initial brief ordinarily are considered abandoned.” Hartsfield v. 

Lemacks, 50 F.3d 950, 953, (11th Cir. 1995) (alteration in original). However, on 

the facts of this case, the Supreme Court in Electrical Fittings clearly prescribes

vacatur of the District Court’s judgment on the question of validity as the legal 

consequence of an appeal by an otherwise-successful defendant in an infringement 

suit on the merits of that question.

For the forgoing reasons, the judgment of the District Court is

VACATED in part, AFFIRMED in part.

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