Intellectual Property and Tech Law Reports

Morrow v. Microsoft Corp.

Spacone appeals the United States District Court for the Northern District of California’s grant of Microsoft Corporation’s (Microsoft) motion for summary judgment of noninfringement of claims 2, 8, 12, and 13 of U.S. Patent No. 6,122,647 (the ’647 patent). Microsoft cross-appeals, asserting Spacone lacked standing to bring suit. We reverse the district court’s determination that Spacone had standing to sue Microsoft for infringement of the ’647 patent and vacate the judgment of noninfringement.

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In re Omega SA

Omega S.A. appeals the decision of the Trademark Trial and Appeal Board (TTAB) of the United States Patent and Trademark Office (PTO), sustaining the Trademark Attorney's refusal to register Omega's trademark AQUA TERRA in Class 14 for "jewelry, precious stones; watches, watch straps, watch bracelets and parts thereof; chronometers, chronographs, watches made of precious metals, watches partly or entirely set with precious stones in International Class 14," unless Omega amended its application to limit "chronographs" to "chronographs for use as watches." We affirm the decision of the Board.

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China Healthways Inst., Inc. v. Wang

China Healthways Institute, Inc., doing business as Chi Institute, appeals the decision of the United States Patent and Trademark Office Trademark Trial and Appeal Board, wherein the Board denied Chi Institute's opposition to registration of the trademark "Chi PLUS" on application of Xiaoming Wang ("Wang"), on the ground that there was no likelihood of confusion. We reverse the decision of the Board.

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In re Bayer Aktiengesellschaft

Bayer Aktiengesellschaft (Bayer) appeals the Trademark Trial and Appeal Board (Board) ruling that the proposed mark ASPIRINA is merely descriptive for analgesic goods. In re Bayer Aktiengesellschaft, Serial No. 78/212,751 (TTAB Mar. 17, 2006) (Final Decision). Because the Board’s ruling is supported by substantial evidence, we affirm.

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In re Reed Elsevier Properties Inc.

Reed Elsevier Properties Inc. (“Reed”) appeals the decision of the United States Patent and Trademark Office (“PTO”), Trademark Trial and Appeal Board, denying registration of its mark LAWYERS.COM for providing an online interactive database featuring information exchange in the fields of law, legal news, and legal services. In re Reed Elsevier Props. Inc., 77 U.S.P.Q. 2d 1649 (TTAB 2005) (“Board Opinion”). Because the board did not err in finding Reed’s mark generic, we affirm.

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FirstHealth of the Carolinas, Inc. v. Carefirst of Maryland, Inc.

FirstHealth of the Carolinas, Inc. (“FirstHealth”) appeals from a dismissal by the Trademark Trial and Appeal Board (“Board”) of its counterclaim to cancel trademarks registered by CareFirst of Maryland, Inc. (“CareFirst”). CareFirst of Md., Inc. v. FirstHealth of the Carolinas, Inc., Opposition Nos. 91116355, 91124847 (T.T.A.B. Dec. 2, 2005) (“Dismissal”). Because the Board’s findings are supported by substantial evidence, we affirm.

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First Niagara Ins. Brokers, Inc. v. First Niagara Fin. Group

First Niagara Insurance Brokers, Inc. ("FN-Canada") appeals the decision of the Trademark Trial and Appeal Board ("the Board") rejecting FN-Canada's opposition to the registration of certain marks by First Niagara Financial Group, Inc. ("FN-US") on the basis that FN-Canada does not use its marks "in a type of commerce regulable by Congress." First Niagara Ins. Brokers, Inc. v. First Niagara Fin. Group, Inc., Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712, 91150237, slip op. at 36 (T.T.A.B. Oct 21, 2005) ("Board Decision"). We reverse and remand.

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Aero Prods. Int'l, Inc. v. Intex Recreation Corp.

Aero Products International, Inc. (“Aero Products”) and Robert B. Chaffee (collectively “Aero”) sued Intex Recreation Corp. (“Intex”), Quality Trading, Inc. (“Quality Trading”), and Wal-Mart Stores, Inc. (“Wal-Mart”) (collectively “defendants”) in the United States District Court for the Northern District of Illinois for infringement of U.S. Patent No. 5,367,726 (“the ’726 patent”) and for infringement of Aero’s registered trademark “ONE TOUCH.” Following a jury trial, the district court entered judgment of infringement and non-invalidity in favor of Aero with respect to the asserted claims of the ’726 patent and with respect to Aero’s trademark claim. Based upon that judgment, the court awarded Aero damages in the total amount of $6.9 million. See Aero Prods. Int’l, Inc. v. Intex Rec. Corp., No. 02 C 2590, 2004 U.S. Dist. LEXIS 25941 (N.D. Ill. Dec. 15, 2004) (“Order Denying New Damages Trial”). The total damages award was based on the jury’s finding that Aero was entitled to recover $2.95 million as patent infringement damages, which the district court doubled based upon the jury’s finding of willful infringement, Aero Prods. Int’l, Inc. v. Intex Rec. Corp., No. 02 C 2590, 2004 U.S. Dist. LEXIS 13453, at *13 (N.D. Ill. July 15, 2004) (“Order Awarding Enhanced Damages”), and $1 million as trademark infringement damages. See Order Denying New Damages Trial, 2004 U.S. Dist. LEXIS 25941, at *2-3. In addition, the district court entered a permanent injunction in favor of Aero. Aero Prods. Int’l, Inc. v. Intex Rec. Corp., No. 02 C 2590, 2004 U.S. Dist. LEXIS 28131 (N.D. Ill. Sept. 15, 2004); Aero Prods. Int’l, Inc. v. Intex Rec. Corp., No. 02 C 2590, 2004 U.S. Dist. LEXIS 18648 (N.D. Ill. Sept. 15, 2004).

Defendants now appeal from the court’s judgment. We see no error in the judgment of infringement and non-invalidity in favor of Aero. We do conclude, however, that, in the circumstances of this case, the award of both patent infringement and trademark infringement damages in favor of Aero represents an impermissible double recovery. Accordingly, we vacate the award of $1 million in trademark infringement damages in favor of Aero. We thus affirm-in-part, vacate-in-part, and remand to the district court for entry of a final judgment in favor of Aero consistent with this opinion.

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Regents of the Univ. of California v. Univ. of Iowa Research Found.

RADER, Circuit Judge.

The Board of Patent Appeals and Interferences (the Board) of the United States Patent and Trademark Office (the PTO) resolved this interference between the Regents of the University of California (California) as the senior party and the University of Iowa Research Foundation, Coley Pharmaceutical Group, Inc., and the United States (collectively, Iowa) as the junior party. The Board granted Iowa’s motion for judgment that 35 U.S.C. § 135(b)(1) barred California’s sole claim interfering with Iowa’s U.S. Patent No. 6,207,646 (the ’646 patent). Univ. of Iowa Research Found. v. Regents of The Univ. of Cal., Interf. No. 105,171 (Bd. Pat. App. & Interf. Mar. 10, 2005) (Board Decision). Because the Board correctly construed section 135(b)(1), this court affirms.

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M2 Software, Inc. v. M2 Communications, Inc.

MAYER, Circuit Judge.
M2 Software, Inc. (“M2 Software”) appeals the decision of the United States Patent and Trademark Office (“PTO”) Trademark Trial and Appeal Board, dismissing its opposition to M2 Communications, Inc.’s (“M2 Communications”) registration of M2 COMMUNICATIONS for interactive multimedia CD-ROMs containing information on the fields of health, pharmacy, and medicine. M2 Software, Inc. v. M2 Commc’ns, Inc., Opposition No. 91/158,118 (TTAB July 21, 2005) (“Board Opinion”). Because the board did not err in finding no likelihood of confusion, we affirm.

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