May 2009 Issue

Civil Cases

Beltronics USA Inc. v. Midwest Inventory Distrib. LLC,
90 USPQ2d 1228 (10th Cir. Apr. 9, 2009)
Tenth Circuit rules that first–sale doctrine is unavailable as a defense to infringement where goods are sold as “new” but differ in warranty terms from those offered by trademark owner.

In re Spirits Int’l, N.V.,
2009 WL 1140091 (Fed. Cir. Apr. 29, 2009)
The Federal Circuit vacates and remands the TTAB’s refusal to register the mark MOSKOVSKAYA for vodka, finding that the TTAB applied the incorrect test for materiality in determining that the mark was geographically deceptively misdescriptive.

Southern Co. v. Dauben, Inc.,
2009 WL 1011183 (5th Cir. Apr. 15, 2009)
The Fifth Circuit holds that the presumption of irreparable harm applied by some courts based on a likelihood of success on the merits of a trademark–infringement claim is not applicable to ACPA cases for cybersquatting because, unlike the comprehensive multifactor test used to determine likelihood of confusion for infringement, ACPA’s test for “confusingly similar” looks only at the facial similarities of the two marks.

Victoria’s Secret Stores Brand Mgmt., Inc. v. Sexy Hair Concepts LLC,
2009 WL 959775 (S.D.N.Y. Apr. 8, 2009)
by B. Brett Heavner
In an appeal of a TTAB decision to a district court, the Southern District of New York considers whether appellee owns a “family” of marks for its line of hair–care products sold under various SEXY–formative marks, and allows appellant to introduce new survey and expert evidence to counteract the TTAB’s findings.