December 2009 / January 2010 Issue
Civil Cases
Starbucks Corp. v. Wolfe’s Borough Coffee, Inc.,
588 F.3d 97 (2d Cir. Dec. 3, 2009)
Second Circuit clarifies standard and holds that a federal dilution-by-blurring claim does not require a showing of “substantial similarity” between the marks at issue.
In re Sones,
93 USPQ2d 1118 (Fed. Cir. Dec. 23, 2009)
Federal Circuit vacates and remands TTAB decision, and holds that website printouts need not always contain a picture of goods to be acceptable specimens of use for registration, and the test for an acceptable website-based specimen is simply that it must in some way evidence that the mark is “associated” with goods and serves as an indicator of source.
Rin Tin Tin, Inc. v. First Look Studios, Inc.,
93 USPQ2d 1132 (S.D. Tex. Nov. 12, 2009)
Southern District of Texas finds use of mark RIN TIN TIN in the title of a DVD based on the life story of the famous dog a fair use, granting summary judgment to defendants.
Roxbury Entm’t v. Penthouse Media Group Inc.,
92 USPQ2d 1760 (C.D. Cal. Nov. 9, 2009)
Central District of California grants summary judgment to defendant in a dispute involving competing “Route 66” television/DVD titles, finding the First Amendment provides a complete defense to plaintiff’s Lanham Act claims.
Lahoti v. Vericheck, Inc.,
586 F.3d 1190 (9th Cir. Nov. 16, 2009)
Ninth Circuit holds that a party’s unregistered mark can be found inherently distinctive based on a third party’s registration of an identical mark for identical services.
Lunatrex, LLC v. Cafasso,
2009 WL 4506321 (S.D. Ind. Dec. 1, 2009)
Southern District of Indiana finds that members of a team that competed in the Google Lunar X Prize competition had jointly developed and begun using the LUNATREX trademark in commerce, and thus grants both plaintiff’s and defendant’s preliminary injunction motions, enjoining both parties from using the mark until they agree to a resolution of the ownership dispute.
Transamerica Corp. v. Moniker Online Servs., LLC,
2009 WL 4715853 (S.D. Fla. Dec. 4, 2009)
Southern District of Florida denies domain name registrars’s motion to dismiss, finding plaintiff’s allegations that the registrars registered infringing domain names to anonymous registrants through their privacy registration service and profited from use of those names, were sufficient to state claims for cybersquatting, infringement, dilution, and counterfeiting, and to defeat the registrars’s immunity defense under the ACPA.
