March 2009 Issue
Civil Cases
Baden Sports, Inc. v. Molten USA, Inc.,
2009 WL 349358 (Fed. Cir. Feb. 13, 2009)
Court of Appeals for the Federal Circuit holds that a false- advertising claim under Sections 43(a)(1)(A) and (B) of the Lanham Act, based on use of the term “innovative,” is precluded because this term relates to neither the origin of the goods nor the nature, characteristics, or qualities of the goods.
DeVry Inc. v. Univ. of Med. & Health Scis.-
St. Kitts,
2009 WL 260950 (N.D. Ill. Feb. 3, 2009)
Northern District of Illinois denies Rule 12(b)(6) motion because affirmative defenses of statutory fair use and nominative fair use are not “impenetrable defenses” to claims for trademark infringement.
Gray v. Novell, Inc.,
2009 WL 425958 (M.D. Fla. Feb. 20, 2009)
X/Open defeats challenge to its ownership of the UNIX trademark.
Mary Kay, Inc. v. Weber,
2009 WL 426470 (N.D. Tex. Feb. 20, 2009)
Court finds that defendants’ use of plaintiff’s mark in keyword-triggered sponsored ads and on their website raised questions as to whether there was a likelihood of confusion as to affiliation or sponsorship by plaintiff.
Finnegan News
Managing Intellectual Property Ranks Finnegan #1 in Trademark Prosecution and Litigation
Events
Navigating U.S. Trademark Law
hosted by Forum Institute for Management
Trademarks and Copyright: The Importance of Comprehensive Protection in a Challenging Economy
hosted by Finnegan
LES Australia and New Zealand Annual Conference 2009: Trademark Problems on the Internet: What to Look For
Licensing Executives Society (“LES”)
TTAB Cases
Franpovi, S.A. v. Wessin,
Opp’n Nos. 91179589, 91181129
(TTAB Feb. 9, 2009)
In a case of first impression, TTAB holds that a potential plaintiff can no longer exercise the rights established by the Santiago Convention because it cannot fulfill the treaty’s precondition of applying for protection through the Inter American Bureau (“IAB”), which stopped functioning in 1949.
In re Jibjab Media, Inc.,
App. No. 78951377 (TTAB Feb. 4, 2009)
A-HOLE PATROL mark found scandalous in connection with an online social club that screens offensive and inappropriate material submitted by users.
