Intellectual Property and Tech Law Reports

Vincent v. City Colls. of Chicago

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The district court dismissed most of the complaint under Fed. R. Civ. P. 12(b)(6). The complaint is fatally deficient, the judge wrote, because it does not plead facts that show an entitlement to relief. 2005 U.S. Dist. LEXIS 42963 (N.D. Ill. Apr. 6, 2005). The only well-pleaded claim, the district court concluded, is Vincent’s contention that the Association violated the copyright laws by printing copies of her book after she withdrew consent. With respect to that claim, the district court later granted
summary judgment in the Association’s favor, ruling that Vincent had failed to establish that the Association received written notice of her decision. 2006 U.S. Dist. LEXIS 44737 (N.D. Ill. June 15, 2006).
. . .
The order dismissing the City of Chicago for lack of service (and thus absence of personal jurisdiction) is
affirmed. The judgment with respect to the other defendants is affirmed to the extent that Morris and the City Colleges prevailed on the copyright claim. The remainder of the judgment is reversed, and the case is remanded for proceedings consistent with this opinion.

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Google growling at new Utah trademark law

By LINDA FANTIN and GLEN WARCHOL
Salt Lake Tribune 2007-04-11 00:00:00

SALT LAKE CITY -- Google "Utah Legislature" and "lawsuit" and you might soon find yourself reading about, well, Google.

The world's largest Internet search engine says a new state law that curbs keyword-triggered advertising is unconstitutional and probably will be challenged in court. And although the company didn't promise to be the plaintiff, its spokesman pledged to work with other Internet companies to "educate officials in Utah about the numerous consequences" of the legislation.

"This law hurts consumers, violates free speech, and is inconsistent with both established U.S. trademark law and our capitalist system," Google spokesman Adam Kovacevich said in an e-mail to The Salt Lake Tribune.

The legal caveats shouldn't surprise Utah lawmakers. They heard the same warnings from their own lawyers. A legislative review note said the Trademark Protection Act had a "high probability of being found unconstitutional."

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Starbucks Corp. v. Wolfe's Borough Coffee, Inc.

Plaintiffs-counter-defendants-appellants Starbucks Corporation and Starbucks U.S. Brands, L.L.C. (collectively, "Starbucks") brought suit in the United States District Court for the Southern District of New York (Swain, J.) against defendant counterclaimant-appellee Wolfe's Borough Coffee, Inc. ("Wolfe's"). Starbucks alleged that Wolfe's current sale of coffee under the name "Mister Charbucks" or "Mr. Charbucks" infringes and dilutes the "Starbucks" trademark for coffee.

Following a bench trial, the District Court concluded, in an Order filed December 23, 2005, that Starbucks had failed to carry its burden of proving trademark infringement and unfair competition under the Lanham Act, common law unfair competition, or trademark dilution under either the Federal Trademark Dilution Act ("FTDA"), 15 U.S.C. §§ 1125(c), 1127, or New York Gen. Bus.
16 Law § 360-1. Starbucks Corp. v. Wolfe's Borough Coffee, Inc., No. 01-cv-5981, 2005 WL 3527126 (S.D.N.Y. Dec. 23, 2005). From the ensuing judgment, Starbucks appeals.

Subsequent to the district court's order, Congress amended the FTDA in response to the Supreme Court's decision in Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 433 (2003), which had construed the FTDA to require a showing of actual dilution, as opposed to a likelihood of dilution. The FTDA, as amendedeffective October 6, 2006, entitles the owner of a famous, distinctive mark to an injunction against the user of a mark that is "likely to cause dilution" of the famous mark. 15 U.S.C. § 1125(c)(1) (hereinafter, the "amended statute"). The amended statute applies to this case to the extent that Starbucks has sought injunctive relief on the issue of dilution.

. . .

Appeal from an order of the United States District Court for the Southern District of New York (Swain, J.), which entered judgment in defendant's favor on all counts on December 28, 2005, following a bench trial. The judgment of the district court is vacated and the case is remanded for further proceedings.

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In re Bose

Bose Corporation (“Bose”) appeals from the decision of the United States Patent and Trademark Office (“PTO”) Trademark Trial and Appeal Board (the “Board”) denying registration of a proposed speaker design as a trademark. In re Bose Corp., Serial No. 74734496 (T.T.A.B. July 12, 2005). Because the Board correctly determined that the appeal was barred by the doctrine of res judicata, we affirm.

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Custom Vehicles, Inc. v. Forest River, Inc.

In the absence of registration, a producer can still obtain relief by proving that the defendant is using a mark that “is likely to cause confusion . . . as to the origin, sponsorship or approval of his or her goods.” Lanham Act, § 43(a), 15 U.S.C. § 1125(a); Wal-Mart Stores, Inc. v. Samara Bros.,Inc., 529 U.S. 205, 209 (2000); 5 McCarthy on Trademarks and Unfair Competition, supra, § 27:14. But as we said earlier, without proof of secondary meaning there is no basis for thinking a descriptive mark the name of a brand—no basis therefore for supposing that consumers would think Forest River’s van “Work and Play” had been produced by Custom Vehicles instead. AFFIRMED.

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New Amendments to the Federal Trademark Dilution Law

In response to the 2003 U.S. Supreme Court decision of Moseley v. Victoria's Secret, amendments to the Federal Trademark Act have been signed into law.  The amendments are designed to offer additional protection for "famous marks" against dilution.  The amendments eliminate the need to demonstrate actual economic harm from the dilution when a famous mark is diluted by "blurring" or "tarnishment."  Defenses based on fair use, newsreporting, and noncomercial use are provided.  Owners of famous marks are also granted the ability to oppose and cancel the registration of trademarks that are likely to cause dilution. 

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Moseley v. Victoria's Secret Opinion

Moseley v. Victoria's Secret Concurring Opinion