July/August 2010 Issue
Georgia Pacific Consumer Prods., L.P. v.
Von Drehle Corp.,
2010 WL 3155646 (4th Cir. Aug. 10, 2010)
Fourth Circuit finds that defendant paper-towel manufacturer could be liable for contributory trademark infringement for inducing end users to use defendant’s paper towels in plaintiff’s paper-towel dispensers that were intended only to dispense plaintiff’s paper towels, and vacates summary-judgment ruling in favor of defendant.
Masters Software, Inc. v.
Discovery Commc’ns, Inc.,
No. C10-405RAJ (W.D. Wash. July 16, 2010)
Western District of Washington enjoins Discovery Channel from continued use of CAKE BOSS as the title of its reality television program about a New Jersey baker, finding reverse confusion likely with CAKEBOSS mark for software for assisting professional bakers.
Mattel, Inc. v. MGA Entm’t, Inc.,
2010 WL 2853761 (9th Cir. July 22, 2010)
Ninth Circuit vacates constructive trust transferring valuable trademark portfolio, $10 million dollar copyright-damages award, and broad injunction imposed by district court, finding that district court erred in its interpretation of key employment-contract provisions and in its copyright-infringement analysis.
Specialized Seating, Inc. v.
Greenwich Indus., LP,
2010 WL 3155922 (7th Cir. Aug. 11, 2010)
Seventh Circuit finds that, despite the existence of numerous alternate designs, a registered design for an x-frame chair is functional and unprotectable as a trademark where registrant held four expired utility patents covering nearly all the features of the chair.
Visa Int’l Serv. Ass’n v. JSL Corp.,
95 USPQ2d 1571 (9th Cir. June 28, 2010)
Ninth Circuit finds VISA mark famous and diluted by defendant’s use of eVISA for online language-education services, rejecting argument that VISA does not qualify for antidilution protection because “visa” is a dictionary word.
Events
HBA Global Exposition and Conference
September 28−30, 2010
Webinar: Duty of Disclosure: A Practical Guide to IDS Practice
Hosted by Finnegan
Podcasts
Jon Gelchinsky on Tiffany v. eBay
TTAB Cases
Flash & Partners S.P.A. v. I.E. Mfg. LLC,
Opp. No. 91191988 (TTAB July 14, 2010)
TTAB granted motion to dismiss counterclaim based on allegations that plaintiff’s underlying application was incomplete or involved ex parte examination errors because such allegations do not form a statutory ground for cancellation, but denied motion to dismiss allegations based on invalid assignments under Section 10.
Mag Instrument, Inc. v. Brinkmann Corp.,
Opp. No. 91163534 (TTAB July 28, 2010)
In three consolidated opposition proceedings, competing flashlight manufacturers each successfully oppose an applied-for mark on likelihood-of-confusion grounds and obtain a ruling of functionality on a third design-mark application.
Saul Zaentz Co. v. Bumb,
Opp. No. 91156452 (TTAB June 28, 2010)
TTAB sustained opposition against application to register the MITHRIL mark drawn from Tolkien’s literary series, finding that Applicant lacked documentary evidence supporting an intent to use the mark.
