All-American Ice L.L.C., d/b/a All-American Arena Products, Respondent,

This opinion is nonprecedential except as provided by
Minn. R. Civ. App. P. 136.01, subd. 1(c).

STATE OF MINNESOTA
IN COURT OF APPEALS
A22-1394

All-American Ice L.L.C., d/b/a All-American Arena Products,
Respondent,

vs.

American Arena, L.L.C.,
Appellant.

Filed April 17, 2023
Affirmed in part, reversed in part, and remanded
Jesson, Judge

Dakota County District Court
File No. 19HA-CV-20-3431

Timothy C. Matson, Michael T. Burke, Fox Rothschild LLP, Minneapolis, Minnesota (for
respondent)

Mark R. Bradford, Kevin P. Hickey, J. Scott Andresen, Peggah Navab, Bassford Remele,
P.A., Minneapolis, Minnesota (for appellant)

Considered and decided by Bjorkman, Presiding Judge; Jesson, Judge; and
Frisch, Judge.
NONPRECEDENTIAL OPINION
JESSON, Judge
In May 2020, appellant American Arena, L.L.C. (American Arena) adopted its
current name, replacing its former name of Minnesota Ice, to reflect its foray into selling
ice-arena accessorie s along with its original line of business in ice-rink construction.
Already existing ice-arena accessories vendor and respondent All-American Ice L.L.C.,
2
d/b/a All-American Arena Products (All-American Arena) sued, alleging trademark
infringement under Minnesota law. After a jury trial and verdict for All-American Arena,
American Arena requested judgment as a matter of law, or in the alternative, a new trial.
And after the district court denied its motion, American Arena appealed, arguing, in part,
that because All-American Arena’s trademark was merely a descriptive mark—not
distinctive—it could not be registered as a trademark. As a result, it could not be infringed
as a matter of law.
Because American Arena did not challenge the descriptiveness of All-American
Arena’s mark before submission to the jury and sufficient evidence supported the
likelihood-of-confusion prong of All-American Arena’s trademark-infringement claim, the
district court did not err by denying American Arena’s motion for judgment as a matter of
law or, in the alternative, for a new trial . We also affirm the start date of the
prejudgment-interest award because American Arena could have determined its potential
liability from All-American Arena’s cease -and-desist letter. And since American Arena
did not carry its burden to refute profit damages, we affirm the district court’s decision on
profit damages.1 But given the lack of evidence to support the jury’s award for actual
damages, we reverse this damages award and remand for further consideration of attorney
fees and treble damages in light of the reduced damages. Finally, given the lack of findings

1 Minnesota law permits two types of damages for successful trademark-infringement
claims. This opinion will refer to the first type of damages as profit damages and the second
type as actual damages.
3
supporting the district court’s grant of an injunction, we remand for additional findings but
do not reverse the injunction. Accordingly, we affirm in part, reverse in part, and remand.
FACTS
All-American Arena is a Minnesota-based company, founded in 2012, that sells
ice-arena accessories, such as goal frames, netting, and rubber flooring for ice -skating
rinks.2 American Arena is the new name of a Minnesota-based company—formerly known
as Minnesota Ice—that builds ice rinks across the United States, offers design services, and
sells ice-arena accessories. Minnesota Ice was founded in October 2013. In May 2020,
American Arena emailed over 1,400 ice-arena operators announcing its name change and
that it was expanding its business to include the sale of ice-rink accessories.
One month later, after receiving multiple emails from customers confused between
the two companies due to the name change, All-American Arena sent a cease -and-desist
letter to American Arena, alleging trademark infringement and unfair competition. The
letter demanded that American Arena cease any further use of the mark American Arena.
3
And the letter demanded that American Arena fully account to All- American Arena with
regard to its use of the mark “American Arena” and stated that, once it had, All-American
Arena would “determine if any settlement remuneration is in order.” When American

2 These facts are derived from the evidence at trial, which on a motion for judgment as a
matter of law we view in the light most favorable to the nonmoving party. Jerry’s Enters.,
Inc. v. Larkin, Hoffman, Daly & Lindgren, Ltd., 711 N.W.2d 811, 816 (Minn. 2006).
3 The parties use the terms trademark and mark interchangeably. Mark is a generic term
that incorporates trademarks, service marks, certification marks, and collective marks.
Minn. Stat. § 333.18 (2022). Neither party alleges that the mark in question is anything
other than a trademark. This opinion uses the terms interchangeably as well.
4
Arena did not acquiesce to these demands, All-American Arena filed a complaint in
October 2020, alleging trademark infringement under Minnesota law. 4
In November 2021, All-American Arena filed a motion for partial summary
judgment, requesting judgment in its favor on liability and a permanent injunction, but
reserving the issue of damages for trial. The district court denied All-American Arena’s
motion. It stated that because a genuine issue of material fact existed as to the third
requirement of trademark infringement —likelihood of confusion—it would grant neither
summary judgment nor injunctive relief.
Before the jury trial, the parties disagreed over a few of the proposed jury
instructions and the admissibility of an email from the United States Patent and Trademark
Office (USPTO) to American Arena. American Arena proposed two jury instructions that
asked the jury to consider the descriptiveness of its own mark. This request relied upon an
email from the USPTO stating that, when American Arena attempted to federally
trademark its logo, it had to disclaim the words “American Arena ” because they were
descriptive, and thus not protectable. 5 But American Arena did not request a jury
instruction with regard to the descriptiveness of All-American Arena’s mark. The district
court did not include American Arena’s requested descriptiveness instruction in the final

4 The complaint also alleged unfair competition in violation of state and federal law, unfair
and deceptive trade practices, and common-law trademark infringement. Because these
claims did not reach trial, we do not discuss them further.
5 This email would show, according to American Arena, that since it was only using
descriptive words in its new name, it could not infringe a protected mark.
5
jury instructions. Nor did the district court admit the USPTO email, ruling that it did not
constitute a final decision.
At the outset of the three-day jury trial, the district court offered preliminary
instructions about trademark law. One instruction explained that to obtain a trademark, the
trademark owner registers the trademark with the Minnesota Secretary of State, and after
registration, it may exclude others from using that trademark by bringing an action for
infringement. The district court stated:
[T]he owner [of a trademark] may obtain a Certificate of
Registration issued by the Minnesota Secretary of State.
Thereafter, when the owner brings an action for infringement
the owner may rely solely on the registration certificate to
prove that the owner has the right to exclude others from using
the trademark or a similar mark that is likely to cause
confusion in the marketplace[.]

(Emphasis added.) American Arena did not object to the form or substance of this jury
instruction.
At trial, All-American Arena’s CEO, Sean Passingham, testified about the origin of
his company, its growth in sales, the importance of the name of his brand, and his
business’s reputation. Through his testimony, All-American Arena introduced evidence of
customer confusion, including emails from customers asking if All- American Arena and
American Arena were the same company, an invoice for American Arena that was
accidentally sent to All-American Arena, and a quote for a product that All-American
Arena did not ask for, but presumably American Arena had. Passingham also testified
about a business deal in Mason City, Iowa, that All-American Arena lost because the
potential customer had been told by a representative of American Arena that the timing for
6
the project would not work, and the customer thought the representative worked for
All-American Arena. And Passingham testified that the company spends an average of
$33,700 on advertising per year.
All-American Arena also called five witnesses to testify about All-American
Arena’s reputation in the ice-arena- accessories field and their confusion between
All-American Arena and American Arena after American Arena changed its name and
began sending out newsletters and cold-cal ling ice-arena managers using the new name.
Each admitted on cross-examination that they had never purchased anything from the
wrong company by mistake. All-American Arena also elicited testimony from American
Arena’s CEO Michael McDevitt, who testified that the total revenue American Arena made
from ice-arena accessories in 2021 and the first quarter of 2022 was $415,414. And further
testimony from an American Arena sales associate revealed that American Arena sold one
set of dasher boards6 over the past two years— an approximately $200,000 sale.
After All-American Arena rested its case, American Arena—without moving for a
directed verdict—called three of its sales representatives and its CEO to discuss the type
of work American Arena does, the lack of confusion between its company and
All-American Arena, and the nature of its ice-arena-accessory sales. American Arena
never asserted during testimony, nor before the verdict, that All-American Arena’s mark
was descriptive.

6 Dasher boards make up the bottom part of the barrier that surrounds an ice-skating rink,
separating the rink from spectators and providing the base for the glass shielding.
7
In its closing argument, All-American Arena asked the jury to award both actual
damages and profit damages for the harm it suffered. The actual damages requested
included damages for injury to All-American Arena’s reputation and goodwill, along with
the profits All-American Arena would have earned but for American Arena’s infringement.
All-American Arena asked for damages equal to at least three years of its advertising
budget to deal with the confusion created by American Arena’s infringement. For the other
forms of actual damage, All-American Arena stated: “I leave it to the jury to
decide . . . what measure of actual damages” it wants to award. To support profit damages,
All-American Arena pointed to the revenue American Arena made in ice-arena- accessory
sales in 2021 and the first quarter of 2022 —$615,414—and asked to be awarded that
amount because American Arena did not prov e that this revenue was due to factors other
than the trademark infringement.
The jury returned a verdict for All-American Arena. Through a special-verdict
form, the jury found that (1) All-American Arena owns a protectable interest in the
registered mark “All- American Arena Products,” (2) American Arena’s use of the
trademark American Arena created a likelihood of confusion or mistake on the part of
ice-arena operators and vendors, and (3) All -American Arena suffered actual monetary
damages as a result of American Arena’s wrongful use of the trademark American Arena.
The jury awarded $340,000 in actual damages. The jury also found that American Arena
derived profits from its wrongful use of the trademark American Arena, and it awarded
All-American Arena an additional $50,000 in profit damages. Finally, the jury found that
8
American Arena’s wrongful use of the trademark was done with knowledge of
All-American Arena’s trademark and in bad faith.
After trial, the district court orally granted All-American Arena’s motion for a
permanent injunction against American Arena’s use of its name. The subsequent written
order states that American Arena is “hereby permanently enjoined and restrained from any
and all direct or indirect use, adoption or employment of the words American Arena as a
trademark, tradename, domain name or otherwise in connection with its business
operations, advertising, marketing, promotion or sale of products or services.” The district
court included no further analysis on the injunction on the record at trial or in the written
order.
All-American Arena then filed a motion for treble damages, attorney fees, and
prejudgment interest. The district court denied All- American Arena’s motion for treble
damages, stating that doing so “based on the facts of this case would be punitive rather than
compensatory.” The district court also denied All-American Arena’s motion for attorney
fees, explaining that attorney fees are only awarded in the rare case that a party’s conduct
is so unreasonable as to justify such an award and American Arena’s conduct here was not
exceptional enough for this remedy. But the district court granted prejudgment interest at
the statutory rate of 10% from the date of the cease-and-desist letter on the damages award
of $390,000. American Arena filed a motion for judgment as a matter of law, or in the
alternative, for a new trial, alleging several trial errors including the exclusion of the
USPTO email and erroneous jury instructions. The district court denied the motion.
American Arena appeals.
9
DECISION
I. The district court did not err by denying American Arena’s motion for
judgment as a matter of law or a new trial on liability.

In arguing that the district court erred by denying its motion for judgment as a matter
of law, American Arena asserts that the central legal issue before this court is whether the
claimed mark “All-American Arena Products” is a descriptive, as opposed to distinctive,
mark. The classification of this mark matters because a descriptive mark is not registrable
under Minnesota law, so it cannot be infringed. Minn. Stat. § 333.19, subd. 1(5)(i) (2022).
We review this issue de novo. In re Est. of Butler, 80 3 N.W.2d 393, 399 (Minn. 2011)
(stating that appellate courts review de novo a district court’s decision to deny a motion for
judgment as a matter of law, applying the same standard used by the district court and
viewing the evidence in the light most favorable to the nonmoving party). To address this
argument, we first explain the legal backdrop, then turn to how this issue was addressed
below. Finally, we evaluate whether the district court erred in denying American Arena’s
motion for judgment in this regard.
Minnesota’s trademark statutes were adopted in 1959 and patterned closely after
relevant provisions of the federal Lanham Trademark Act. Minneapple Co. v. Normandin,
338 N.W.2d 18, 22 n.5 (Minn. 1983); see also 15 U.S.C. §§ 1051-1127 (2018). Where
these provisions overlap, Minnesota courts often refer to federal caselaw for guidance.
See Minneapple, 338 N.W.2d at 22 n.5. Under Minnesota law, the holder of a registered
trademark can bring a civil action against anyone who infringes on its trademark.
Minn. Stat. § 333.28 (2022). Infringement includes use of a mark so similar to a registered
10
mark that it is likely to cause confusion or mistake on the part of a purchaser of goods or
services. Id. Here, to succeed in a trademark-infringement claim, All-American Arena
must prove to the jury (1) the existence of a registered mark, (2) that All-American Arena
owns the mark, and (3) that American Arena’s use of the mark without All-American
Arena’s consent is likely to cause confusion among ordinary consumers. Id.
However, Minnesota law states that a mark “must not be registered if it . . . consists
of a mark which . . . when applied to the goods or used to identify the services of the
applicant, is merely descriptive or deceptively misdescriptive of them.”
Minn. Stat. § 333.19, subd. 1(5)(ii) (2022) (emphasis added). Applying this statutory
directive, the Minnesota Supreme Court in Imported Auto Parts held that because Imported
Auto Parts was a “common descriptive name,” it was not registrable under Minnesota
trademark law, and therefore no infringement claim could arise. Imp. Auto Parts
Corp. v. R.B. Shaller & Sons, Inc., 258 N.W.2d 797, 801 (Minn. 1977).
In general, the strength of trademark protection increases as a mark’s conceptual
strength increases. JL Beverage Co., LLC v. Jim Beam Brands Co., 828 F.3d 1098, 1106
(9th Cir. 2016). In other words, the more unique a mark is, the more trademark protection
to which it is entitled . See Ironhawk Techs., Inc. v. Dropbox, Inc. , 2 F.4th 1150, 1162
(9th Cir. 2021). To determine whether a mark is conceptually strong and thus entitled to
trademark protection, courts first categorize it along a spectrum from generic to descriptive
to suggestive to arbitrary. 7 Schwan’s IP, LLC v. Kraft Pizza Co., 460 F.3d 971, 974

7 A federal district court in Nevada recently provided a helpful example of each category:

11
(8th Cir. 2006). Caselaw often refers to generic and descriptive marks collectively as
descriptive, while marks that deserve stronger protection —suggestive and arbitrary
marks—are collectively termed distinctive. Imp. Auto Parts, 258 N.W.2d at 799-800
(explaining that the difference between a generic and a descriptive mark is a matter of
degree, stating, “[i]n a sense, a generic designation is the ultimate in descriptiveness”).
The question of the classification of All-American Arena’s mark was not presented
to the district court or the jury. American Arena requested neither a preliminary nor a final
jury instruction in this regard. Nor did it make this argument in opposition to All-American
Arena’s summary-judgment motion. In fact, the district court’s preliminary instruction is
directly at odds with American Arena’s position on appeal. Yet American Arena did not
object at trial. The preliminary instruction stated that registration alone may be used to
exclude another from using the same mark. While this is true, it is also incomplete, as a
mark may not be registered under Minnesota trademark law when it is merely descriptive.

Generic marks—like “Light Beer” —are not eligible for
trademark protection. Descriptive marks —like “speedy,”
“friendly,” or “green”—are not entitled to trademark
protection unless they have acquired secondary meaning.
Suggestive marks—like “Roach Motel” i nsect trap—suggest a
product’s features and require consumers to exercise some
imagination to associate the suggestive mark with the product.
They are thus often entitled to trademark protection. Arbitrary
marks—like “Black and White” scotch whiskey—are made up
of words commonly used in the English language but are
entitled to federal trademark protection because they serve to
identify a particular source of a product.

Great W. Air, LLC v. Cirrus Design Corp., ___ F.Supp.3d ___, 2023 WL 121432 , at *5
(D. Nev. Jan. 6, 2023).
12
Minn. Stat. § 333.19, subd. 1(5)(i). But American Arena did not raise this argument until
after the jury had rendered its verdict.
In its posttrial order, the district court sidestepped the question of whether American
Arena had properly raised this issue and determined that, because All-American Arena’s
mark suggested something of high quality, distinction, and excellence, it was inherently
distinctive and deserving of protection.8
Because American Arena did not raise this issue until after the jury verdict, we need
not decide whether All-American Arena’s mark was descriptive rather than distinctive.
This was a question, to the extent it required an answer, for either the district court on
summary judgment or the jury at trial. And if, as American Arena asserts, error exists in
not having the question answered, the error was invited by American Arena .
See Eisenschenk v. Eisenschenk, 668 N.W.2d 235, 243 (Minn. App. 2003), rev. denied
(Minn. Nov. 25, 2003) (explaining that a party cannot complain about a district court’s
failure to rule in its favor when one of the reasons it did not do so is because of the party’s
own error). It cannot now ask us to fix its own mistake.
At oral argument before this court, American Arena claimed that by pointing to the
descriptiveness of its own mark, it was also calling into question the descriptiveness of
All-American Arena’s mark. But these are two distinct theories and two separate legal
arguments. In sum, American Arena’s theory of the case presented to the jury was distinct

8 Recall that a suggestive mark, the third category of trademark distinctiveness, requires
imagination to reach a conclusion as to the nature of the goods. Co-Rect Prods.,
Inc. v. Marvy! Advert. Photography, Inc., 780 F.2d 1324, 1329 (8th Cir. 1985).
13
from the theory it argues before this court. It cannot now, having lost that case, suddenly
change course. See Germann v. F.L. Smithe Mach. Co., 381 N.W.2d 503, 509-10
(Minn. App. 1986) (holding that when a party fails to object to jury instructions until its
motion for a new trial or request a jury instruction of its own, it forfeits its right to a jury
trial of those questions), aff’d 395 N.W.2d 922 (Minn. 1986); see also Thielbar v. Juenke,
189 N.W.2d 493, 498 (Minn. 1971) (stating that failure to object to a special-verdict form
prior to submission to the jury constitutes a forfeiture of any objection which a party may
have). Asking for a jury instruction on the descriptiveness of American Arena’s own mark
is not the same as asking a jury to consider whether All -American Arena’s mark is
descriptive. American Arena has forfeited this argument.
9
We are not persuaded otherwise by the fact that the district court addressed the
descriptiveness issue— in All-American Arena’s favor—in its order denying judgment as
a matter of law. Though we do not necessarily disagree with the district court’s ruling, we
decline to review this holding given that the issue was raised after the verdict. We
acknowledge that we can address a legal issue raised in a motion for judgment as a matter
of law that was not raised before the jury rendered its verdict if there is a n error in
fundamental law or controlling principle. Palatine Nat. Bank of Palatine, I L. v. Olson,

9 American Arena further argues that the jury-instruction error, combined with the district
court’s decision not to admit the USPTO email amounted to grounds for a new trial. But
even if it were error to exclude the email, which we do not decide here, the exclusion of
the email was harmless. Doe 136 v. Liebsch, 872 N.W.2d 875, 879 (Minn. 2015)
(explaining that erroneous exclusion of evidence is not grounds for a new trial if the
exclusion was harmless). The email could not support American Arena’s defense that
All-American Arena’s trademark was descriptive because American Arena did not raise
this argument before the district court.
14
366 N.W.2d 726, 731 (Minn. App. 1985). But this high standard is not met here because
the jury instruction was not incorrect, just —at most—incomplete. 10 Because the district
court’s decision to deny American Arena’s motion for judgment as a matter of law was not
in error and we decline to weigh in on this issue given that American Arena has not
demonstrated a fundamental error of law, we affirm the district court’s decision here.
II. The district court did not err in finding that sufficient evidence
supported the likelihood-of-confusion prong of All- American Arena’s
trademark-infringement claim.

American Arena contends that, because no consumers testified that they
accidentally made a purchase from the wrong company as a result of the confusion, the
confusion did not rise to the level required by law. But actual purchases are not a required
element of Minnesota trademark law. Nor are they required by federal law, which lists six
factors to consider in determining whether a plaintiff has established likelihood of
confusion. J & B Wholesale Distrib., Inc. v. Redux Beverages, LLC , 621 F.Supp.2d 678,
684 (D. Minn. 2007). The six factors include:
(1) the strength of the plaintiff’s mark;
(2) the similarity between the plaintiff’s and defendant’s
marks;
(3) the degree to which the allegedly infringing product
competes with the plaintiff’s goods;
(4) the alleged infringer’s intent to confuse the public;

10 This case is distinguishable from Sturgis, where the Eighth Circuit reviewed a question
of whether there was sufficient evidence for a jury to decide the validity of a mark, even
though the jury was not presented with this issue, because the appellant objected on these
grounds before the jury received the case. Sturgis Motorcycle Rally, Inc. v. Rushmore
Photo & Gifts, Inc., 908 F.3d 313, 323 (8th Cir. 2018). Here, because American Arena
objected to neither the jury instruction about descriptiveness nor the preliminary jury
instructions, it did not preserve this issue for appeal in the same way.
15
(5) the degree of care reasonably expected of potential
customers; and
(6) evidence of actual confusion.

Id.
The jury instructions here included these six factors, and the evidence supports the
jury’s determination in this regard. The jury heard testimony about All-American Arena’s
longstanding reputation in the ice -arena community, saw images of both marks, which
include similar words and colors, and heard testimony about instances of actual confusion
from customers and vendors. Thus the district court did not err in denying American
Arena’s motion for judgment as a matter of law on this argument.
Still, American Arena maintains that this court should take the same course the
Minneapple court did and conduct an independent analysis of the two logos and decide for
itself if they are similar enough to cause confusion. 338 N.W.2d at 22. An appellate court
will only undertake this analysis if the critical evidence is documentary. Id. And the jury’s
decision here was based on more than written evidence. The jury heard testimony from
five witnesses about their confusion between All-American Arena and American Arena
and additional testimony from All-American Arena’s CEO about invoices, quotes, and bids
that accidentally went to the wrong company. This evidence is clearly more than
documentary, and as a result, we decline to independently review the two logos for their
level of similarity. We conclude that the district court did not err in finding that sufficient
evidence supported the likelihood-of-confusion prong of All -American Arena’s
trademark-infringement claim.
16
III. We affirm the district court’s decision on profit damages because American
Arena did not carry its burden to rebut these damages, but we reverse the
district court’s decision on actual damages, given the lack of evidence to
support the jury’s award, and we remand for reconsideration of attorney fees
and treble damages.

American Arena asks this court to reverse the damages award because the damages
were speculative and were not proven to a reasonable certainty. We will not set aside a
jury verdict on damages unless it is manifestly and palpably contrary to the evidence
viewed as a whole and in the light most favorable to the verdict. Raze v. Mueller,
587 N.W.2d 645, 648 (Minn. 1999) (quotation omitted). Proof of the amount of damages
to an absolute certainty is not required—the loss need only be established to a reasonable
certainty. Bonhiver v. Graff, 248 N.W.2d 291, 304 (Minn. 1976).
The owner of a mark registered under Minnesota law, who succeeds in a
trademark-infringement lawsuit, may receive a damages award requiring a defendant to
pay either or both of the following: (1) all profits derived from the wrongful manufacture,
use, display, or sale; or (2) all damages suffered because of the wrongful manufacture, use,
display, or sale. Minn. Stat. § 333.29, subd. 1 (2022). The district court, in its discretion,
may also award treble damages and reasonable attorney fees if the court finds the defendant
“committed the wrongful acts with knowledge or in bad faith or otherwise as according to
the circumstances of the case.” Id. These damages largely mirror the damages available
under federal trademark law. 15 U.S.C. § 1117(a) (explaining that a plaintiff whose federal
trademark rights are violated may recover (1) defendant’s profits (2) any damages
sustained by the plaintiff, and (3) the costs of the action). Here, the jury awarded
All-American Arena $340,000 in actual damages as a result of the wrongful use of its
17
trademark and $50,000 for profits derived from the wrongful use of its trademark. We
address each type of damages in turn.
Actual Damages
To determine the amount of actual damages, the jury instructions told the jury to
consider six categories of damages: (1) the injury to the plaintiff’s reputation; (2) the injury
to the plaintiff’s goodwill, including injury to the plaintiff’s general business reputation;
(3) the lost profits that the plaintiff would have earned but for defendant’s infringement,
with profit determined by deducting all expenses from gross revenue; (4) the expense of
preventing customers from being deceived; (5) the cost of future corrective advertising
reasonably required to correct any public confusion caused by the infringement; and,
(6) any other factors that bear on plaintiff’s actual damages. In its closing argument,
All-American Arena asked for damages worth at least three years of its advertising budget
to deal with the problems created by American Arena’s infringement. For the other forms
of actual damages, All-American Arena stated: “I leave it to the jury to decide . . . what
measure of actual damages” it wants to award. This vague request, even in combination
with scant evidence from trial, is not enough to support the jury’s award.
Under federal trademark law, to which we may look for guidance, to receive an
award of damages sustained by the plaintiff, that plaintiff must prove both the fact and the
amount of damage. Surfvivor Media, Inc. v. Survivor Prods., 406 F.3d 625, 634 n.4
(9th Cir. 2005). A nd plaintiff must prove a causal link between the violation and those
damages. United Indus. Corp. v. Clorox Co., 140 F.3d 1175, 1180 (8th Cir. 1998).
All-American Arena proved neither for each of the six categories of actual damages. There
18
was no testimony at trial about All-American Arena’s reputation or goodwill being
damaged, only the strength of its reputation overall. All-American Arena presented
evidence of one potential lost sale in Mason City but no evidence as to whether they would
have made that sale without American Arena’s infringement. And, while the advertising
budget was discussed as a past expense, there was no explanation of why the confusion in
market led to necessary future corrective advertising. And to justify corrective advertising
damages, a plaintiff must show that the confusion caused by the defendant’s mark injured
the plaintiff and that repair of the old trademark, rather than adoption of a new one, is the
least expensive way to proceed. Zaz ú Designs v. L’Oréal, S.A., 979 F.2d 499, 506
(7th Cir. 1992).
Because All-American Arena did not submit enough evidence to support this award,
we reverse the district court’s award of actual damages.
Profit Damages
Under Minnesota law, a trademark-infringement plaintiff may receive as damages
all of defendant’s profits derived from the wrongful manufacture, use, display, or sale of
infringing goods. Minn. Stat. § 333.29, subd. 1. Under the equivalent provision of
federal11 trademark law, the plaintiff is required to prove defendant’s sales only, and the
burden is on the defendant to demonstrate that its profits were not related to its
infringement. 15 U.S.C. § 1117(a). This remedy is an equitable remedy and is considered
compensation for the plaintiff, not a penalty for defendant. Id.

11 Because neither party challenges the application of this federal burden-shifting statute to
a Minnesota trademark-infringement claim, we apply the same law the district court used.
19
To support profit damages, All-American Arena pointed to the revenue American
Arena made in ice-arena-accessory sales for the past year and asked to be awarded that
amount if American Arena did not meet its burden of proving that this revenue was due to
factors other than the trademark infringement. All -American Arena offered evidence to
support the amount of profits it requested—$615,414—including testimony from
American Arena’s CEO, its Chief Financial Officer, sales associates, and corresponding
financial documents to demonstrate that American Aren a had sold $615,414 worth of
ice-arena accessories in 2021 and the first quarter of 2022. And American Arena did not
object to the jury instruction
12 that gave American Arena the burden to refute this evidence,
although it did offer some evidence that its profits were attributable to factors other than
use of the trademark. One sales associate at American Arena testified that he only had one
or two discussions about ice-arena accessories in the year since American Arena changed
its name, and another American Arena sales associate testified that the company usually
only sells ice-arena accessories as part of their construction projects, not as a stand-alone
offering.
Here, the jury found that American Arena did not entirely carry its burden and
awarded All-American Arena $50,000, a much smaller amount than it requested. Because
All-American Arena put forth sufficient evidence to establish the profits that
American Arena made after infringing on its trademark, and there is evidence to support

12 The jury instruction stated, “[u]nless you find that a portion of the profit from the sale of
the goods using the trademark is attributable to factors other than the use of the trademark,
you must find that the total profit is attributable to the infringement.”
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the jury’s finding that American Arena did not completely meet its burden to refute the
profit-damages evidence, we affirm this award.
Accordingly, we reverse the district court’ s actual-damages award and affirm the
district court’s profit-damages award. But we are mindful that when the district court
denied treble damages and attorney fees, it stated that treble damages would be punitive,
rather than compensatory, and that American Arena’s conduct had not risen to the level
necessary to justify attorney fees. Thus we remand to allow the district court, in its
discretion, to reevaluate its treble-damages and attorney-fee decision in light of our reversal
of the actual-damages award, keeping in mind that damages in trademark-infringement
cases are meant to be compensatory, not punitive. 15 U.S.C. § 1117(a). We do not direct
the district court to take any course of action. Rather, we leave the reevaluation of treble
damages and attorney fees to the district court’s discretion.
IV. Because there are not sufficient factual findings to facilitate effective appellate
review, we remand for additional findings on the injunction.

American Arena argues that All-American Arena is not entitled to a permanent
injunction because it cannot establish liability under the trademark statute and, further, that
the injunction is so broad as to enjoin American Arena’s behavior worldwide, which it
asserts a Minnesota court cannot do under M innesota trademark law. The decision on
whether to issue an injunction generally rests within the sound discretion of the district
court, and its choice will not be disturbed on appeal unless, based upon the whole record,
it has abused its discretion. St. Jude Med., Inc. v. Carter, 913 N.W.2d 678, 684
(Minn. 2018).
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Here, the district court orally granted All- American Arena’s motion for an
injunction—with no analysis—after the jury returned its verdict. It memorialized this
decision in a written order, but it included no additional analysis. The written order simply
states that American Arena is “hereby permanently enjoined and restrained from any and
all direct or indirect use, adoption or employment of the words American Arena as a
trademark, tradename, domain name or otherwise in connection with its business
operations, advertising, marketing, promotion, or sale of products or services.”13
Because we affirm the jury’s decision that American Arena is liable for trademark
infringement, the district court was authorized by statute to issue an injunction at its
discretion. Minn. Stat. § 333.29, subd. 1 (explaining that an owner of a mark registered
under Minnesota trademark law may sue to enjoin the manufacture, use, display, or sale of
any counterfeits or imitations of the mark, and a court of competent jurisdiction may grant
injunctions to restrain the manufacture, use, display, or sale as the court considers just and
reasonable). But given the lack of any explanation or findings by the district court
regarding the scope of the injunction, there is not enough analysis for this court to conduct
a proper appellate review and determine whether the district court has abused its discretion
in the breadth of its injunctive relief. 14 Crowley Co., Inc. v. Metro. Airports Comm’n ,

13 All-American Arena posits that, because American Arena never moved to vacate the
permanent injunction, the issue is not properly before our court. But because American
Arena challenged the injunction in its posttrial motion, this issue is properly before this
court.
14 American Arena contends that the district court’s injunction was improper because it
failed to consider the Dahlberg factors, as required by Minnesota law.
Dahlberg Bros. v. Ford Motor Co., 137 N.W.2d 314, 314-15 (Minn. 1965). While the

22
394 N.W.2d 542, 545 (Minn. App. 1986) (stating that when a district court did not analyze
the Dahlberg factors, this court could not determine whether the district court abused its
discretion); see also In re Amitad, Inc., 397 N.W.2d 594, 596 (Minn. App. 1986) (“Where
the trial court has broad discretion, the Minnesota Supreme Court has demonstrated
persistence in demanding findings to explain the trial court’s exercise of discretion.”).
Accordingly, we remand for additional findings without reversing the injunction.
V. Because American Arena could have determined its potential liability from the
cease-and-desist letter, we affirm the date of the prejudgment-interest award.

American Arena argues that All-American Arena is not entitled to prejudgment
interest from the date of the cease-and-desist letter because there was not sufficient notice
of the damage All-American Arena would claim to allow American Arena to assess its
liability from the cease -and-desist letter.15 Here, the district court awarded prejudgment
interest at the statutory rate of 10% from the date of the cease -and-desist letter. Interest
awards under Minnesota Statutes section 549.09 (2022) are reviewed de novo.
Duxbury v. Spex Feeds, Inc., 681 N.W.2d 380, 390-91 (Minn. App. 2004), rev. denied
(Minn. Aug. 25, 2004).

Dahlberg factors relate to preliminary injunctions, federal courts have held that once a
plaintiff has success on the merits of a federal trademark infringement claim, the standard
for obtaining a permanent injunction is essentially the same as the standard for obtaining a
preliminary injunction. Bank One, Utah v. Guttau, 190 F.3d 844, 847 (8th Cir. 1999). We
do not apply the Dahlberg standard here, but find it instructive in that there must be factual
findings when a district court adopts an injunction.
15 American Arena also contends that prejudgment interest is unavailable under federal
trademark law, but because All-American Arena sued under Minnesota trademark law, this
argument misses the mark.
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A party can petition the district court for an award of prejudgment interest under
Minnesota Statutes section 549.09. The date the interest is measured from is the date that
the party suing gave written notice of the claim to the defendant. Minn. Stat. § 549.09,
subd. 1(b). Written notice of claim need not identify a specific amount of damages sought
to trigger prejudgment interest; rather, the issue is whether the defendant could have
determined its potential liability from a generally recognized objective standard of
measurement. Blehr v. Anderson, 955 N.W.2d 613, 619 (Minn. App. 2021). Written
notice must, at a minimum, indicate the existence of a claim and the extent of damages. Id.
at 620.
Here, the cease -and-desist letter claimed that American Arena infringed
All-American Arena’s trademark, created unfair competition, and broke federal and state
laws by doing so. It requested that American Arena take a number of steps and once those
steps were completed, All-American Arena would “determine if any settlement
remuneration is in order.” The cease-and-desist letter provided American Arena with
sufficient information about potential legal claims and the extent of damages, given the
trademark context. The information in the letter met the low bar of indicating the existence
of a claim and the extent of potential damages. As a result, we affirm the district court’s
award of prejudgment interest.
In sum, we affirm most aspects of this case on appeal. The district court did not err
by denying American Arena’s motion for judgment as a matter of law on liability, nor did
it err by determining that sufficient evidence supported the likelihood-of-confusion prong
of All-American Arena’s trademark-infringement claim. We also affirm the start date of
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the prejudgment-interest award because the cease -and-desist letter gave American Arena
sufficient notice of the potential liability it would face. And we affirm the district court’s
decision on profit damages because American Arena did not meet its burden to entirely
refute them. But we reverse the district court’s decision on actual damages. We remand
to allow the district court to reconsider an award of attor ney fees and treble damages .
Finally, w e remand for additional findings on the injunction given the lack of findings
supporting it.
Affirmed in part, reversed in part, and remanded.