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March 2015
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Ray v. ESPN, Inc.

Steve "Wild Thing" Ray brought suit against ESPN, Inc.; ESPN Classic, Inc.; and ESPN Classic Europe, Inc. (collectively, "ESPN"), asserting state-law tort claims related to ESPN's re-telecast of his wrestling performances. The district court1 held that the Copyright Act preempts Ray's claims and therefore dismissed Ray's suit for failure to state a claim. We affirm.

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Trivita, Inc.

TriVita filed trademark application Serial No. 77/658,158 to register the mark NOPALEA on the Principal Register for dietary and nutritional supplements “containing, in whole or in substantial part, nopal juice.” The examiner rejected the application under section 2(e)(1) of the Lanham Trademark Act as “descriptive of a feature of applicant’s goods on the grounds that applicant’s products contain nopal which is derived from an [ex]tract of the nopalea plant.” TriVita appealed to the Trademark Trial and Appeal Board, arguing that “nopalea plant” is not a term used in the food industry, and that the term is not descriptive because TriVita’s products contain extracts from the Opunti genus of nopal cactus, not the Nopalea genus.

The Board affirmed the rejection. The Board cited various websites showing Nopalea as the name of a genus of cactus used in food and supplements, noting that some of the websites were those of TriVita’s affiliates, and that some explicitly stated that TriVita’s products were derived from the Nopalea cactus. The Board acknowledged that both Opuntia and Nopalea cacti may be referred to as nopal cacti, but that TriVita’s registration application states only that the goods contain “nopal juice,” and does not state whether the nopal juice is derived from cacti in either the Opuntia or Nopalea genus. The Board cited instances of the word “nopal” used interchangeably with the word “nopalea,” and stated:

The record indicates that nopalea is indeed a genus of cacti which is used for food and medicine, and which is commonly referred to as “nopal.” Consumers may well assume, (as apparently do some of [TriVita’s] affiliates) that, as a characteristic of nopal juice, [TriVita’s] goods derive from genus nopalea.

In re Trivita, Inc., 2013 WL 6858011, at *4 (T.T.A.B. Dec. 17, 2013). The Board concluded that there was “no doubt that a consumer would understand the term ‘nopalea’ used in connection with [TriVita’s] goods as conveying information about them,” and affirmed the refusal to register NOPALEA because it is “merely descriptive” under section 2(e)(1). Id. at *5.

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vonRosenberg v. Lawrence

This appeal arises from a dispute between two clergymen. Each believes himself to be the proper leader of The Protestant Episcopal Church in the Diocese of South Carolina. Bishop Charles G. vonRosenberg brought this action against Bishop Mark J. Lawrence, alleging two Lanham Act violations and seeking declaratory and nondeclaratory relief. In response, Bishop Lawrence asked the district court to abstain in favor of pending related state court proceedings. Relying on the abstention doctrine articulated in Brillhart v. Excess Insurance Co. of America, 316 U.S. 491 (1942) and Wilton v. Seven Falls Co., 515 U.S. 277 (1995), which affords a federal court broad discretion to stay declaratory judgment actions, the district court dismissed the action. Because we conclude that Colorado River Water Conservation District v. United States, 424 U.S. 800 (1976), which permits a federal court to abstain only in “exceptional” circumstances, properly governs the abstention decision in this action seeking both declaratory and nondeclaratory relief, we vacate the dismissal order and remand for further proceedings.

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In re: Tam

Mr. Tam is the “front man” for Asian-American dance rock band The Slants. In 2010, Mr. Tam filed Application No. 77/952,263 (’263 application) seeking to register the mark THE SLANTS for “Entertainment, namely, live performances by a musical band.” Mr. Tam attached specimens featuring the band name set against Asian motifs to the ’263 application. The examining attorney found the mark disparaging to people of Asian descent under 15 U.S.C. § 1052(a) (“§ 2(a)”) and therefore refused to register it. Mr. Tam appealed that refusal to the Board, but the case was dismissed for failure to file a brief and the application was deemed abandoned. On November 14, 2011, six days after the abandonment of the ’263 application, Mr. Tam filed a second application (Application No. 85/472,044, or the ’044 application) seeking to register the mark THE SLANTS for essentially identical services as in the ’263 application. In the ’044 application, Mr. Tam claims use of the mark since 2006. Unlike the specimens attached to the ’263 application, the specimens attached to the ’044 application do not contain Asian motifs. The examining attorney again found the mark THE SLANTS disparaging and declined to register it. In making this determination, the examining attorney cited to materials that he had gathered in response to Mr. Tam’s earlier application. Mr. Tam responded and a final office action issued.

The Board affirmed the examining attorney’s refusal to register the mark. The Board found that “it is abundantly clear from the record not only that THE SLANTS . . . would have the ‘likely meaning’ of people of Asian descent but also that such meaning has been so perceived and has prompted significant responses by prospective attendees or hosts of the band’s performances.” In re Tam, No. 85472044, 2013 WL 5498164, at *5 (TTAB Sept. 26, 2013). To support this conclusion, the Board pointed to the band’s website, which displayed the mark next to “a depiction of an Asian woman, utilizing rising sun imagery and using a stylized dragon image,” and to a statement by Mr. Tam that he selected the mark in order to “own” the stereotype it represents. Tam, 2013 WL 5498164, at *5. The Board also found that the mark is disparaging to a substantial component of people of Asian descent because “[t]he dictionary definitions, reference works, and all other evidence unanimously categorize the word ‘slant,’ when meaning a person of Asian descent, as disparaging,” and because there was record evidence of individuals and groups in the Asian community objecting to Mr. Tam’s use of the word “slant.” Tam, 2013 WL 5498164, at *7. The Board therefore disqualified the mark for registration under § 2(a). Mr. Tam appeals. We have jurisdiction under 28 U.S.C. § 1295(a)(4).

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Shammas v. Focarino

The Lanham Act, 15 U.S.C. §§ 1051-1141n, provides that a dissatisfied trademark applicant may seek review of an adverse ruling on his trademark application either by appealing the ruling to the Court of Appeals for the Federal Circuit, id. § 1071(a)(1), or by commencing a de novo action in a federal district court, id. § 1071(b)(1). If he elects to proceed in a district court and no adverse party opposed his application before the Patent and Trademark Office (“PTO”), the applicant must name the Director of the PTO as a defendant and pay “all the expenses of the proceeding,” whether he succeeds in the action or not, unless the expenses are unreasonable. Id. § 1071(b)(3) (emphasis added).

In this case, Milo Shammas, a dissatisfied applicant in an ex parte trademark proceeding, elected to commence a de novo action in the district court. At the end of the proceeding, the Director of the PTO sought “all the expenses of the proceeding” from Shammas, including salary expenses of the PTO attorneys and a paralegal who were required to defend the Director. The district court granted the Director’s request and ordered Shammas to pay the PTO a total of $36,320.49 in expenses. On appeal, Shammas argues that the district court erred in “shifting” the PTO’s attorneys fees to him, contrary to the “American Rule” under which each party bears his own attorneys fees, because the governing statute does not expressly provide for the shifting of attorneys fees.

We reject this argument and affirm, concluding that the imposition of all expenses on a plaintiff in an ex parte proceeding, regardless of whether he wins or loses, does not constitute fee-shifting that implicates the American Rule but rather an unconditional compensatory charge imposed on a dissatisfied applicant who elects to engage the PTO in a district court proceeding. And we conclude that this compensatory charge encompasses the PTO’s salary expenses for the attorneys and paralegals who represent the Director.

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Ineos USA, LLC v. Berry Plastics Corp.

Ineos USA LLC accused Berry Plastics Corporation of infringing U.S. Patent No. 6,846,863. Ineos appeals from the district court’s summary judgment that the ’863 patent is invalid as anticipated under 35 U.S.C. § 102 (2006). We affirm.

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Oplus Techs., Ltd. v. Vizio, Inc.

Vizio, Inc. appeals from the district court’s denial of attorneys’ and expert witness fees under 35 U.S.C. § 285, 28 U.S.C. § 1927, and the court’s inherent power. We hold that the district court abused its discretion in denying fees, and thus vacate and remand.

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Automated Merch. Sys., Inc. v. Lee

Automated Merchandising Systems, Inc. (AMS) petitioned the United States Patent and Trademark Office to terminate four pending inter partes reexaminations of four AMS patents that had been the subject of a patentinfringement suit between AMS and Crane Co., the requester of the reexaminations. After AMS and Crane entered into a consent judgment, which dismissed the infringement suit and stated that the parties stipulated to the validity of the patents, AMS argued to the PTO that the reexaminations must stop because, under 35 U.S.C. § 317(b) (2006), the consent judgment was a “final decision . . . entered against a party in a civil action . . . that the party has not sustained its burden of proving the invalidity of any patent claim in suit.” The PTO denied AMS’s petition to terminate the reexaminations.

When AMS challenged that decision in district court under the Administrative Procedure Act (APA), 5 U.S.C. §§ 701–706, the court held that § 317(b) did not require termination of the reexaminations. Automated Merch. Sys., Inc. v. Rea, No. 1:13-CV-1289, 2014 WL 4628552, at *3–6 (E.D. Va. Aug. 6, 2014) (AMS). The court concluded that the consent judgment, though final, was not a decision that Crane failed to prove invalidity of the patents, as the judgment stated, regarding invalidity, only that the parties stipulated to validity. Id. We now affirm, though not on the district court’s ground of § 317(b)’s inapplicability. We conclude that AMS’s challenge to the PTO’s refusal to terminate pending reexaminations cannot proceed because the refusal is not a “final agency action” under the APA, 5 U.S.C. § 704.

 

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Slep-Tone Entm't Corp. v. Karaoke Kandy Store, Inc.

Plaintiff Slep-Tone Entertainment Corp. sued Defendants Karaoke Kandy Store, Inc., and Charles M. Polidori under federal and state law for unlawfully selling hard drives bearing Slep-Tone’s registered trademarks without authorization. After a four-day trial, the jury answered a single interrogatory finding that the Defendants had not infringed Slep-Tone’s trademarks, and, based on the jury’s answer, the district court entered judgment in the Defendants’ favor. Slep-Tone has appealed this judgment in case No. 13-1405, which is before this panel. In a separate opinion, we stayed that appeal and remanded the case to the district court because Slep-Tone’s timely post-judgment motion for findings of fact and conclusions of law pursuant to Federal Rule of Civil Procedure 52 remains pending before the district court. In this appeal, the Defendants argue that the district court erroneously denied their motion for attorney fees under 15 U.S.C. § 1117(a) following the judgment in their favor. For the following reasons, we REMAND this case to the district court for further proceedings consistent with this opinion.

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Nola Spice Designs, L.L.C., et al v. Haydel

This case concerns the intersection between intellectual property rights and a Mardi Gras tradition. Haydel Enterprises appeals the district court’s grant of summary judgment to Nola Spice Designs and Raquel Duarte on claims of trademark infringement, unfair competition, trademark dilution, copyright infringement, and unfair trade practices. We affirm.

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