March 2013 Issue

Civil Cases

AK Metals, LLC v.
Norman Indus. Materials, Inc.,
2013 WL 417323 (S.D. Cal. Jan. 31, 2013)
The Southern District of California denies plaintiff’s motion for preliminary injunction, finding that a competitor’s purchase of plaintiff’s mark as a search-engine keyword did not cause a likelihood of confusion in part because of Google’s statement above the paid ad stating that the ad was “related to” the term searched.

Already, LLC v. Nike, Inc.,
133 S. Ct. 721 (Jan. 9, 2013)
U.S. Supreme Court affirms dismissal of alleged trademark infringer’s invalidity counterclaim as moot after plaintiff’s issuance of unilateral covenant not to sue.

Habush v. Cannon,
2013 WL 627251 (Wis. Ct. App. Feb. 21, 2013)
A Wisconsin state appeals court affirms a lower court’s ruling that a law firm’s purchase of the surnames of rival lawyers as search-engine keywords did not violate Wisconsin’s invasion-of-privacy statute.

Wilden Pump & Eng’g LLC v.
JDA Global LLC,
105 U.S.P.Q.2d 1166 (C.D. Cal. Oct. 29, 2012)
Central District of California grants defendant’s motion for partial summary judgment, finding plaintiff’s unregistered alphanumeric codes for pump replacement parts were functional and thus not subject to trademark or copyright protection.

Federal Circuit Cases

In re Fox,
2012 WL 6602862 (Fed. Cir. Dec. 19, 2012)
Where a substantial composite of the general public would view a mark as having a vulgar or scandalous meaning, refusal of registration is appropriate, even where an alternate meaning of the mark may exist.

Stephen Slesinger, Inc. v.
Disney Enters., Inc.,
702 F.3d 640 (Fed. Cir. Dec. 21, 2012)
In another chapter in the long-running battle over rights in the Winnie-the-Pooh franchise, the Federal Circuit concludes that Slesinger granted all of its rights in the characters to Disney, and retained no rights that Disney could infringe.

TTAB Cases

ChaCha Search, Inc. v. Grape Tech. Grp., Inc.,
105 U.S.P.Q.2d 1298 (TTAB Dec. 27, 2012)
The TTAB denies cancellation counterclaim based upon mere descriptiveness of a per se number mark, and rejects party’s attempt to add a “failure to function as a mark” to its counterclaims after a fifteen-month delay.

In re Rogowski,
No. 77083475 (TTAB Dec. 12, 2012)
TTAB holds that a screenshot from YouTube of a musical performance is not a sufficient specimen to show a “use in commerce” for an audio recording.