June 2009 Issue
Civil Cases
BDO Seidman LLP v. Alliantgroup, L.P.,
2009
WL 1322555 (S.D. Tex. May 11, 2009)
Southern District of Texas holds that falsely representing an association with a company by claiming past success with that company’s other customers could violate Section 43(a) of the Lanham Act, but denies motion for summary judgment on unfair-competition claim, holding that the allegedly infringing conduct could be protected by the nominative-fair-use defense.
Lorillard Tobacco Co. v. S&M Brands, Inc.,
2009 WL 1351639 (E.D. Va. May 13, 2009)
The Eastern District of Virginia finds that the Fourth Circuit does not recognize the nominative-fair-use defense in any form.
Solid Host, NL v. NameCheap, Inc.,
No. CV 08-5414 (C.D. Cal. May 19, 2009)
California district court rules that a domain name registrar’s provision of private-registration services to an alleged domain name hijacker alone did not state a claim for direct cybersquatting, but could potentially create liability for contributory cybersquatting under certain circumstances.
Finnegan Articles
Combine and Conquer: How the Synthesis of Design Patent and Trade Dress Achieve Maximum Protection for Your Product Design
Events
Trademark, Anti-Counterfeiting and Gray Market Fraud Mitigation Summit hosted by World Research Group (WRG) Essentials of U.S. Patent & Trademark Law
hosted by Forum Institute for Management
TTAB Cases
Zanella Ltd. v. Nordstrom, Inc.,
Opp. No. 91177858 (TTAB Oct. 23, 2008)
Redesignated as precedential (May 13, 2009)
The TTAB denies Applicant’s motion for summary judgment on fraud counterclaim and holds that an Opposer’s actions in correcting false statements in the identification of goods prior to an actual or threatened challenge to the registrations creates a rebuttable presumption that Opposer did not intend to deceive the PTO.
Opp. No. 91176273 (TTAB May 13, 2009)
TTAB finds that Applicant’s belief that it was proper to use a registration symbol for a mark not yet registered in the United States because that mark was already registered in Mexico was sufficient to defeat fraudulent-misuse claim.
