February 2009 Issue
IMPORTANT UPDATE
G&W Labs., Inc. v. G W Pharma Ltd.,
Opp’n No. 91169571 (TTAB Jan. 29, 2009)
In a new decision suggesting a retreat from the implications of its earlier Medinol line of cases, the TTAB holds that each class in a multiclass registration should be separately evaluated for purposes of fraud, and that fraud in one class may not require cancellation of a registration in its entirety.
Civil Cases
AARP v. 200 Kelsey Assocs., LLC,
2009 WL 47499 (S.D.N.Y. Jan. 8, 2009)
Trademark owner may bring a DJ action seeking a declaration of infringement even if the defendant has not yet sold or distributed any allegedly infringing products.
Frayne v. Chicago 2016,
2009 WL 65236 (N.D. Ill. Jan. 8, 2009)
In a case of first impression, a district court rules that the Lanham Act does not support a claim for “attempted” reverse domain name hijacking.
Philbrick v. eNom, Inc.,
2009 WL 152127 (D.N.H. Jan. 22, 2009)
District court rejects cybersquatting and trademark infringement claims regarding a “parked” domain name owned by a domain name registrar that is nearly identical to plaintiff’s trademark and provides pay-per-click links to websites offering competing goods.
Finnegan Articles
The Greenwashing Effect: Americans are Becoming Eco-Cynical
Goodbye Big Logos Hello Snazzy Packaging
Strategies for Building a Strong Brand – Even in a Recession
Insurance Policy Endorsement Clause Read Narrowly in Rock Band Name Dispute
Events
Navigating Trademark Practice Before the PTO 2009: From Filing Through the TTAB Hearing
hosted by Practising Law Institute
HUSL Sixth Annual Intellectual Property Law Seminar
hosted by Finnegan and HUSL
Navigating US Trademark Law
hosted by Forum Institute for Management
TTAB Cases
Compagnie Gervais Danone v. Precision Formulations, LLC,
Opp’n Nos. 91179589, 91184174
(TTAB Jan. 5, 2009)
On Applicant’s motion to dismiss, the TTAB looks outside the scope of Opposer’s pleadings to the Trademark Office’s records and finds that Opposer’s priority claim fails as a matter of law based on Applicant’s filing basis, which entitled Applicant to priority over Opposer.
In re Future First LLC,
App. No. 78769110 (TTAB Dec. 22, 2008)
TTAB finds that the mark BANANA CHAIR is not merely descriptive of a curved, legless rocking chair and reverses refusal to register.
