M.Z. Berger & Co., Inc. v. Swtch AG

M.Z. Berger & Co., Inc. (Berger) appeals from the Trademark Trial and Appeal Board (Board) decision to sustain an opposition on grounds that Berger, at the time of its application for the mark “iWatch,” lacked a bona fide intent to use the mark in commerce under Section 1(b)(1) of the Lanham Act, 15 U.S.C. § 1051(b)(1). See Swatch AG v. M.Z. Berger & Co., 108 U.S.P.Q.2d (BNA) 1463 (T.T.A.B. 2013) (Opinion). The Board concluded that Berger merely intended to reserve a right in the mark and thus lacked the requisite intent. Because substantial evidence supports the Board’s determination, we affirm.

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Princeton Vanguard, LLC v. Frito-Lay

Princeton Vanguard, LLC (“Princeton Vanguard”) appeals from the final decision of the Trademark Trial and Appeal Board (“the Board”) cancelling its registration of the mark PRETZEL CRISPS for pretzel crackers on the Supplemental Register and denying its application to register PRETZEL CRISPS on the Principal Register. Frito-Lay N. Am., Inc. v. Princeton Vanguard, LLC, 109 U.S.P.Q.2d 1949 (T.T.A.B. Feb. 28, 2014) (“Board Decision”). Because the Board applied the incorrect legal standard in evaluating whether the mark is generic, we vacate and remand for further proceedings.

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Couture v. Playdom

David Couture (“appellant”) appeals from a decision of the Trademark Trial and Appeal Board (the “Board”) granting a petition by Playdom, Inc. (“appellee”) to cancel appellant’s PLAYDOM service mark. We affirm.

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In re: St. Helena Hosp.

St. Helena Hospital (“St. Helena”) appeals from the decision of the Trademark Trial and Appeal Board (“the Board”) in In re St. Helena Hosp., Serial No. 85/416,343, 2013 WL 5407267 (T.T.A.B., June 25, 2013). The Board affirmed the examiner’s rejection of St. Helena’s application to register “TAKETEN,” under 15 U.S.C. § 1052(d) (2012), as likely to cause confusion with the mark “TAKE 10!” shown in United States Registration No. 2,577,657 (“the ’657 Registration”). Because the Board erred in its determination of likelihood of confusion, we reverse and remand.

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Stauffer v. Brooks Brothers, Inc.

Pro se plaintiff-appellant Raymond E. Stauffer brought this qui tam action in the United States District Court for the Southern District of New York in 2008.1 In his suit, Mr. Stauffer sued defendant-appellee Brooks Brothers, Inc. (“Brooks Brothers”) under the then-extant version of the false-marking statute, 35 U.S.C. § 292 (2006).2 Mr. Stauffer alleged that Brooks Brothers violated the statute by marking its bow ties with expired patent numbers.

In 2011, while Mr. Stauffer’s action was pending, the President signed into law the America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (the “AIA”). The AIA made three significant changes to the false-marking statute that affected Mr. Stauffer’s claim: (1) it eliminated the statute’s qui tam provision, changing the law so that only a “person who has suffered a competitive injury” may bring a claim, AIA § 16(b)(2); (2) it expressly stated that marking a product with an expired patent is not a falsemarking violation, id. § 16(b)(3); and (3) it expressly stated that these amendments apply to all pending cases, id. § 16(b)(4).

After the AIA became law and eliminated the qui tam provision of the false-marking statute, Mr. Stauffer acknowledged that he no longer had standing to pursue his lawsuit. The district court subsequently issued an order directing him to show cause why, in light of the AIA, his suit should not be dismissed for lack of standing. Mr. Stauffer responded by arguing that the AIA amendments were unconstitutional because they amounted to a pardon by Congress, thus violating the doctrine of separation of powers. He also argued that, by making the elimination of the qui tam provision applicable to pending suits, the statute violated the common-law principle that prohibits use of a pardon to vitiate a qui tam action once the action has commenced. The government, as an intervenor, defended the constitutionality of the AIA.

On December 19, 2012, the district court dismissed Mr. Stauffer’s suit for lack of standing due to the AIA’s elimination of the false-marking statute’s qui tam provision, Stauffer v. Brooks Bros., Inc., No. 08-Civ-10369, 2012 WL 6621374 (S.D.N.Y. Dec. 19, 2012) (“Final Decision”), and on January 16, 2013, the court denied reconsideration, Stauffer v. Brooks Bros., Inc., No. 08-Civ- 10369 (S.D.N.Y. Jan. 16, 2013). Mr. Stauffer now appeals the dismissal of his suit. For the reasons set forth below, we affirm.

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Stone Lion Capital Partners, LP v. Lion Capital, LLP

Stone Lion Capital Partners, L.P. (“Stone Lion”) appeals from the Trademark Trial and Appeal Board’s (“Board”) decision refusing registration of the mark “STONE LION CAPITAL” due to a likelihood of confusion with opposer Lion Capital LLP’s (“Lion”) registered marks, “LION CAPITAL” and “LION.” Because the Board’s decision is supported by substantial evidence and in accordance with the law, this court affirms.

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In re: City of Houston

This is a combined opinion in two cases on appeal from the Director of the United States Patent and Trademark Office (hereafter Director or PTO). Both cases raise a question of first impression—under the provisions of the Lanham Act, may a local government entity obtain a federal trademark registration for the entity’s official insignia. The “Lanham Act” is the commonly used name for the Trademark Act of 1946, as amended, 15 U.S.C. § 1051 et seq., and references to the Act in this opinion will use that common name and section designators. We use the term “official insignia” as a short-hand reference to the various types of insignia listed in the relevant provision of the Lanham Act; the specific piece of insignia for which registration is sought in both cases is the government entity’s official seal.

The City of Houston (Houston) appeals from a final decision of the Trademark Trial and Appeal Board (the Board) on behalf of the Director that concludes that § 2(b) of the Lanham Act (see 15 U.S.C. § 1052(b)) prohibits Houston from registering its city seal on the federal register. The Government of the District of Columbia (the District) separately appeals from a similar final decision of the Board refusing to register the District’s official seal on the basis of § 2(b).

We address Houston’s and the District’s appeals to-gether as both require us to interpret the same provision of the Lanham Act. We conclude that the Board correctly interpreted § 2(b) as prohibiting Houston and the District from registering their seals, and therefore affirm both of the Board’s final decisions.

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Dorpan, S.L. v. Hotel Melia, Inc.

After reviewing the record, we conclude that a reasonable factfinder could conclude that the Hotel Meliá and Gran Meliá marks cannot co-exist in Puerto Rico without creating an impermissible likelihood of confusion among reasonable consumers. The district court's decision to grant summary judgment in Dorpan's favor was erroneous. Thus, we vacate the district court's entry of summary judgment and remand for further proceedings consistent with this opinion.

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Water Pik, Inc. v. Med-Systems, Inc.

The parties to this trademark dispute make consumer products for rinsing sinus cavities. Med-Systems, Inc., the earlier entrant in this market, sells its products under the federally registered trademark SinuCleanse and two similar marks. Water Pik, Inc., which traditionally sold oral irrigators and showerheads, registered the trademark SINUSENSE with the intention of selling sinus-irrigation devices under the brand name “SinuSense.” It brought an action against Med-Systems in the United States District Court for the District of Colorado, seeking a declaratory judgment that its use of the SinuSense brand name did not infringe on any of Med-Systems’ marks. Med-Systems counterclaimed for trademark infringement and unfair competition under the Lanham Act, 15 U.S.C. §§ 1051–1127. Ruling that the SinuSense brand was not likely to cause consumer confusion, the district court awarded summary judgment to Water Pik on the counterclaims and dismissed Water Pik’s declaratory-judgment claim as moot. We affirm.

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Leo Pharm. Prods., Ltd. v. Kappos

This appeal arises from an inter partes reexamination of U.S. Patent No. 6,753,013 (the ’013 patent). The ’013 patent is owned by Leo Pharmaceutical Products, Ltd. (Leo Pharmaceuticals) and challenged by third party requester Galderma R&D. While the “substantial evidence” standard of review for fact findings made by the Board of Patent Appeals and Interferences (Board)1 makes Leo Pharmaceutical’s burden on appeal a challenging one, after careful review, this court finds that Leo Pharmaceuticals has met that burden. Because the Board incorrectly construed the claim term “storage stable,” this court reverses the Board’s claim construction. See Ex parte Leo Pharm. Prods., Ltd., No. 2012-003165 (B.P.A.I. Apr. 30, 2012). Furthermore, because the Board incorrectly found the claimed invention would have been obvious in view of the prior art and incorrectly weighed the objective indicia of nonobviousness, this court reverses the Board’s obviousness determination.

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