Finnegan's monthly review of essential decisions, key developments, evolving trends in trademark law, and more.
Inaugural Issue - September 2008
Civil Cases
CG Roxane LLC v. Fiji Water Co.,
2008 WL 2782745 (N.D. Cal. 2008)
"Bottled at the Source" is not an indicator of source and was found to be generic, despite a registration based on secondary meaning.
Dessert Beauty, Inc. v. Fox,
2008 WL 2938060 (S.D.N.Y. 2008)
Use of "love potion" on fragrance packaging constitutes descriptive fair use and does not infringe rights in registered LOVE POTION trademark.
Soilworks, LLC v. Midwest Industrial Supply, Inc.,
2008 WL 3286975 (D. Ariz. 2008)
Use of competitor's trademark in keyword and metatags is a use in commerce and constitutes infringement based on initial-interest confusion.
Surefoot LC v. Sure Foot Corp.,
531 F.3d 1236 (10th Cir. 2008)
Pending TTAB proceedings paired with years-old, unpursued claims of infringement may create declaratory judgment jurisdiction post-MedImmune.
Zobmondo Entertainment, LLC v. FallsMedia, LLC ,
(C.D. Cal. 2008)
Lack of bona fide intent as of filing date of intent-to-use application or in extension request cannot form basis for fraud claim under Section 38 of the Lanham Act.
Civil Cases
CG Roxane LLC v. Fiji Water Co.,
2008 WL 2782745 (N.D. Cal. 2008)
"Bottled at the Source" is not an indicator of source and was found to be generic, despite a registration based on secondary meaning.
Dessert Beauty, Inc. v. Fox,
2008 WL 2938060 (S.D.N.Y. 2008)
Use of "love potion" on fragrance packaging constitutes descriptive fair use and does not infringe rights in registered LOVE POTION trademark.
Soilworks, LLC v. Midwest Industrial Supply, Inc.,
2008 WL 3286975 (D. Ariz. 2008)
Use of competitor's trademark in keyword and metatags is a use in commerce and constitutes infringement based on initial-interest confusion.
Surefoot LC v. Sure Foot Corp.,
531 F.3d 1236 (10th Cir. 2008)
Pending TTAB proceedings paired with years-old, unpursued claims of infringement may create declaratory judgment jurisdiction post-MedImmune.
Zobmondo Entertainment, LLC v. Falls
(C.D. Cal. 2008)
Lack of bona fide intent as of filing date of intent-to-use application or in extension request cannot form basis for fraud claim under Section 38 of the Lanham Act.
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Finnegan Articles
Japonais Restaurant Name and Concept Do Not Have to Go Back to Sweet Home Chicago
Statutory Damages Under the Anticybersquatting Consumer Protection Act
Implementation of the Madrid Protocol in India: A Convenient Way to Protect Trademarks Internationally
A New Dilemma for Plaintiffs in Counterfeiting Actions: Statutory Damages vs. Attorney Fees
Finnegan Articles
Japonais Restaurant Name and Concept Do Not Have to Go Back to Sweet Home Chicago
Statutory Damages Under the Anticybersquatting Consumer Protection Act
Implementation of the Madrid Protocol in India: A Convenient Way to Protect Trademarks Internationally
A New Dilemma for Plaintiffs in Counterfeiting Actions: Statutory Damages vs. Attorney Fees
TTAB Cases
Gap (Apparel), LLC v. Gap One Enterprises, LLC,
Opposition No. 91172505 (TTAB 2008)
Likelihood of confusion found between GAP for retail clothing stores and clothing and GAP ONE for marketing services based on fame of GAP mark, relatedness of parties' goods and services, and similarities between the marks.
In-N-Out Burger, Inc. v. BB&R Spirits Ltd.,
Opposition No. 92048909 (TTAB 2008)
Initial disclosures in TTAB action must be sufficiently detailed and specific to address parties' claims and defenses, as well as individual factors used to evaluate each claim and defense.
Gap (Apparel), LLC v. Gap One Enterprises, LLC,
Opposition No. 91172505 (TTAB 2008)
Likelihood of confusion found between GAP for retail clothing stores and clothing and GAP ONE for marketing services based on fame of GAP mark, relatedness of parties' goods and services, and similarities between the marks.
In-N-Out Burger, Inc. v. BB&R Spirits Ltd.,
Opposition No. 92048909 (TTAB 2008)
Initial disclosures in TTAB action must be sufficiently detailed and specific to address parties' claims and defenses, as well as individual factors used to evaluate each claim and defense.
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