September 2009 Issue
Civil Cases
Hensley Mfg., Inc. v. ProPride, Inc.,
2009 WL 2778220 (6th Cir. Sept. 3, 2009)
Sixth Circuit holds that defendant’s use of the surname “Hensley” to identify the designer of its products and describe the designer’s relationship with defendant is a nontrademark use or a fair use of the “Hensley” name, and does not infringe plaintiff’s registered “Hensley” mark for the same products.
In re Bose Corp.,
2009 WL 2709312 (Fed. Cir. Aug. 31, 2009)
Federal Circuit reverses TTAB’s fraud holding in In re Bose Corp., signaling a strong limitation, if not the end, of the TTAB’s strict rule of fraud under Medinol and reestablishing the standard that fraud will be found only if an applicant or registrant knowingly makes a false, material representation with the intent to deceive the PTO.
Wham-O, Inc. v. Manley Toys, Ltd.,
2:08-cv-07830-CBM (C.D. Cal. Aug. 13, 2009)
Filing of a cancellation petition before the PTO on grounds other than likelihood of confusion creates no case or controversy under MedImmune.
Finnegan Articles
Infringing Sale of Trademarks as Keyword Triggers for Internet Advertisements
“Material Differences” Outside the Gray Market Context
Where There Is a Reliance Party, Removing Works from the Public Domain Found Unconstitutional in the USA
“iPhone” or “i-phone”? Protection for Famous Marks in China
TTAB Cases
In re Dietrich,
App. Ser. No. 78723912 (TTAB July 16, 2009)
TTAB finds design of a bicycle wheel functional and thus unregistrable where features of the design, such as the placement of the spokes, affected the quality of the wheel as shown by utility patents covering that feature, among other things.
Nextel Commc’ns, Inc. v. Motorola, Inc.,
91 USPQ2d 1393 (TTAB June 12, 2009)
TTAB finds that the “chirp” sound emitted by cell phones manufactured by Motorola cannot be inherently distinctive as a sound mark, as such sound is commonplace in relation to communications products and has not achieved secondary meaning, in part because the sound features extensively in Nextel’s advertising.
Société Cooperative Vigeronne des Grandes Caves Richon-le-Zion & Zicron-Jacob Ltd. v. Albrecht-Piazza, LLC,
Opp. No. 91190040 (TTAB Sept. 20, 2009)
Post-Bose, a fraud claim based merely on “information and belief,” where pleader has no actual knowledge of facts supporting an applicant’s intention to deceive, is insufficient to state a claim for relief.
