Finnegan's monthly review of essential decisions, key developments, evolving trends in trademark law, and more.
April 2010 Issue
Tiffany (NJ) Inc. v. eBay Inc.,
2010 WL 1236315 (2d Cir. Apr. 1, 2010)
Second Circuit affirms that eBay is not liable for contributory trademark infringement for the sale of counterfeit Tiffany products on eBay’s website, in the first decision by a federal appeals court to squarely address contributory trademark infringement in the online marketplace.
City of New York v. Tavern on the Green, L.P.,
2010 WL 841322 (S.D.N.Y. Mar. 10, 2010)
Southern District of New York grants summary judgment and orders cancellation of the registration for the mark TAVERN ON THE GREEN, owned by the bankrupt operators of the well-known Central Park restaurant, because it was fraudulently obtained.
Express Scripts, Inc. v. Intel Corp.,
2010 U.S. Dist. LEXIS 18933 (E.D. Mo. Mar. 3, 2010)
Eastern District of Missouri declines to dismiss a declaratory judgment action brought following a cease-and-desist letter that requested that a trademark application be abandoned and alleged trademark infringement, finding that an actual controversy exists under the Supreme Court’s MedImmune decision and that discretionary dismissal is not warranted.
The Crash Dummy Movie, LLC v. Mattel, Inc.,
2010 WL 1508203 (Fed. Cir. Apr. 16, 2010)
Federal Circuit affirms TTAB holding that Mattel’s nonuse of CRASH DUMMIES marks for nearly eight years did not constitute abandonment where Mattel produced substantial evidence of its intent to resume use of the marks during that time period.
Volvo Trademark Holding AB v. volvospares.com,
2010 WL 1404175 (E.D. Va. Apr. 1, 2010)
Eastern District of Virginia “overturns” a UDRP decision and finds that the use of the famous automobile brand name VOLVO as part of the domain name volvospares.com for a website selling new and used automobile parts constitutes cybersquatting.
Finnegan News
Managing Intellectual Property Ranks Finnegan in Top Tier For Trademark Prosecution and Trademark Contentious Services
Chambers Global Ranks Finnegan as a Top-Tier Intellectual Property Firm for 2010
Managing Intellectual Property Names Finnegan Full-Service IP Firm of the Year 2010
Events
TTAB in 2010: Litigation Under Accelerated Case Resolution (ACR) and the Amended TTAB Rules
hosted by American Intellectual Property Law Association (AIPLA)
TTAB Cases
In re Lebanese Arak Corp.,
94 USPQ2d 1215 (TTAB Mar. 4, 2010)
The TTAB identifies disparagement, not scandalousness, under Section 2(a) of the Lanham Act as the proper ground for refusal of registration based on perceived offense to religious or ethnic sensibilities, and clarifies that disparagement must be considered from the standpoint of a substantial composite of the referenced group rather than the public as a whole.
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