Intellectual Property and Tech Law Reports

Jay Franco & Sons, Inc. v. Franek

Franek chose to pursue a trademark, not a design patent, to protect the stylish circularity of his beach towel. Cf. Kohler Co. v. Moen Inc., 12 F.3d 632, 647 (7th Cir. 1993) (Cudahy, J., dissenting) (calling Franek’s mark a “horrible example[]” of a registered trademark that should have been a design patent). He must live with that choice. We cannot permit him to keep the indefinite competitive advantage in producing beach towels this trademark creates.

If Franek is worried that consumers will confuse Jay Franco’s round beach towels with his, he can imprint a distinctive verbal or pictorial mark on his towels. See Publications International, 164 F.3d at 343; Keene, 778 F.2d at 347–48. That will enable him to reap the benefits of his brand while still permitting healthy competition in the beach towel market. AFFIRMED

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Gen. Conference Corp. of Seventh-Day Adventists v. McGill

Plaintiffs General Conference Corporation of Seventh-day Adventists (“General Conference Corporation”) and General Conference of Seventh-day Adventists (“General Conference”) sued Walter McGill for trademark infringement based on McGill’s use of their protected marks in advertising and promoting his breakaway church. McGill brought a motion to dismiss based on the Free Exercise Clause and the Religious Freedom Restoration Act (“RFRA”), which the district court denied. The district court later granted partial summary judgment for the plaintiffs. After McGill’s repeated refusal to appear for a court-ordered mediation to which he had initially consented, the district court entered default judgment against him. He now appeals. For the reasons discussed below, we AFFIRM.

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Advertise.com, Inc. v. AOL Advertising, Inc.

Advertise.com, Inc., appeals the district court’s entry of a preliminary injunction barring it from using a designation or trade name that is confusingly similar to Appellees’ (“AOL”) ADVERTISING.COM mark. We have jurisdiction under 28 U.S.C. § 1292(a)(1). We reverse and vacate the preliminary injunction in part.

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Chloe v. Queen Bee of Beverly Hills, LLC

Plaintiffs-Appellants Chloé and Chloé, S.A. brought suit in United States District Court for the Southern District of New York (Holwell, J.) against, inter alios, Defendant-Appellee Simone Ubaldelli. The amended complaint alleged violations of sections 32(1) and 43(a) of the Trademark Act of 1946, 15 U.S.C. § 1051, et seq., and New York General Business Law § 349 (McKinney 2004), as well as common law trademark infringement and unfair competition. Plaintiffs-Appellants moved for summary judgment on liability and Ubaldelli cross-moved to dismiss for lack of personal jurisdiction. The district court granted Ubaldelli’s motion and denied as moot Plaintiffs-Appellants’ motion seeking a judgment of liability. Because the assertion of personal jurisdiction over Ubaldelli comports with New York’s long-arm statute, N.Y. C.P.L.R. § 302(a) (McKinney 2001), and with due process, we hold that Ubaldelli’s single act of shipping an item into New York, combined with the affiliated business’s substantial activity involving New York, give rise to personal jurisdiction over Ubaldelli. Accordingly, we VACATE the judgment of the district court and REMAND the case for further proceedings.

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Visa Int'l Serv. Ass'n v. JSL Corp.

She sells sea shells by the sea shore. That’s swell, but how about Shell espresso, Tide motor oil, Apple bicycles and Playboy computers? We consider the application of anti-dilution law to trademarks that are also common English words.

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VICTORIA’S SECRET STORES, INC. v. VICTOR MOSELEY, dba Victor’s Little Secret

In this trademark “dilution by tarnishment” case, brought under the Trademark Dilution Revision Act of 2006, the question is whether the plaintiff, an international lingerie company that uses the trade name designation “Victoria’s Secret” has a valid suit for injunctive relief against the use of the name “Victor’s Little Secret” or “Victor’s Secret” by the defendants, a small retail store in a mall in Elizabethtown, Kentucky, that sells assorted merchandise, including “sex toys” and other sexually oriented products. The District Court issued the injunction. Since then the shop has been operating under the name of “Cathy’s Little Secret.” The District Court concluded that even though the two parties do not compete in the same market, the “Victor’s Little Secret” mark — because it is sex related — disparages and tends to reduce the positive associations and the “selling power” of the “Victoria’s Secret” mark. The question is whether the plaintiff’s case meets the definitions and standards for “dilution by tarnishment” set out in the new Act which amended the old Act, i.e., the Federal Trademark Dilution Act of 1995.

The new Act was expressly intended to overrule the Supreme Court interpretation of the old Act in this very same case, Moseley v. V Secret Catalog, Inc., 537 U.S. 418 (2003), rev’g 259 F.3d 464 (6th Cir. 2001), aff’g 54 U.S.P.Q.2d 1092 (W.D. Ky. 2000). The Supreme Court reversed a panel of this Court that had affirmed an injunction against “Victor’s Little Secret” issued by the District Court. On remand to the District Court from the Supreme Court after the 2003 reversal, no new evidence was introduced, and the District Court reconsidered the case based on the same evidence but used the new language in the new Act which overrules the Supreme Court in this case. We will first brief the Supreme Court opinion and the reasons Congress overruled the Supreme Court in this case. We will then outline our understanding of the new standards for measuring trademark “dilution by tarnishment” and apply them to this case. We conclude that the new Act creates a kind of rebuttable presumption, or at least a very strong inference, that a new mark used to sell sex related products is likely to tarnish a famous mark if there is a clear semantic association between the two. That presumption has not been rebutted in this case.

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Zobmondo Ent'mt., LLC v. Falls Media, LLC

Appellants Falls Media, LLC, Justin Heimberg, and David Gomberg (collectively “Falls Media”) appeal the district court’s summary judgment for Appellee Zobmondo Entertainment, LLC (“Zobmondo”) rejecting Falls Media’s action for trademark infringement, unfair competition, and related claims arising from Zobmondo’s use of Falls Media’s federally registered trademark, “WOULD YOU RATHER . . . ?”. The district court held that “WOULD YOU RATHER . . . ?” is not entitled to federal trademark protection because the mark is “merely descriptive” and lacks secondary meaning, and the district court ordered the mark cancelled from the federal trademark registry. We have jurisdiction under 28 U.S.C. § 1291. We conclude that there is a genuine issue of material fact whether “WOULD YOU RATHER . . . ?” is merely descriptive. Hence we reverse the summary judgment and remand for further proceedings consistent with this opinion.

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La Quinta Corp. v. Heartland Properties LLC

GRIFFIN, Circuit Judge. In this action alleging breach of a hotel franchise agreement and federal trademark infringement, defendants Heartland Properties LLC, David W. Adams, and Betty L. Adams appeal the district court’s denial of discovery-related motions, grant of summary judgment in favor of plaintiffs La Quinta Corporation and Baymont Franchising LLC, and the award of liquidated and treble damages to Baymont. We affirm.

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US v. Xu

For the foregoing reasons, we find that a rational juror could not have found beyond a reasonable doubt that the Zyprexa mark was registered on the USPTO’s principal register. Because we reverse on this ground, we need not address Xu’s argument that there was no evidence that the mark was “in use” at the time of the offense.

Accordingly, the judgment of conviction on Count 5 is VACATED and the case is REMANDED for resentencing consistent with this opinion.

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Congress deals funding blow to Patent Office

Budget strips $100 million provision for backlogged agency

By John Schmid of the Journal Sentinel

Posted: Dec. 29, 2009

The $1.1 trillion spending bill that Congress passed this month bankrolls thousands of pet projects: the World Food Prize in Iowa, a farmers market in Kentucky, and a 12-mile bike path in Michigan, among many others.

And to pay for a fraction of its largesse, Congress added one late change to the budget: It slapped a restrictive spending ceiling on the U.S. Patent and Trademark Office, further cramping an agency that was already incapacitated by more than a decade of congressional raids on its fees. 

Full story.