February 2010 Issue

Civil Cases

JA Apparel Corp. v. Abboud,
2010 WL 103399 (S.D.N.Y. Jan. 12, 2010)
Southern District of New York holds that fashion designer Joseph Abboud’s assignment of trademarks did not grant plaintiff-assignee an exclusive right to all commercial use of his name, that Abboud’s descriptive nontrademark use of his name in certain advertisements was “fair use,” and that Abboud’s more prominent use of his name in certain advertisements was not “fair use” and should be enjoined.

Great Clips, Inc. v. Hair Cuttery of
Greater Boston, LLC,
93 USPQ2d 1263 (1st Cir. Jan. 5, 2010)
First Circuit interprets settlement-agreement provision releasing parties from claims arising from “the application and registration” of their respective trademarks broadly to also apply to claims based on the “use” of those marks.

Webadviso v. Bank of Am. Corp.,
2009 WL 5177997 (S.D.N.Y. Dec. 31, 2009);
2010 WL 521117 (S.D.N.Y. Feb. 16, 2010)
Southern District of New York finds that plaintiff, who registered the domain names bofaml.com and mlbofa.com on the day that defendant Bank of America’s acquisition of Merrill Lynch was announced, did so with a bad-faith intent to profit from the B OF A and ML trademarks, and dismisses plaintiff’s request for a declaratory judgment that he did not violate the defendants’ rights.

Nomination di Antonio e Paolo Gensini S.N.C. v. H.E.R. Accessories, Ltd.,
2009 WL 4857605 (S.D.N.Y. Dec. 14, 2009)
Southern District of New York refines the test for contributory infringement where defendants do not provide an ultimate product to the direct infringer, but merely some service or other assistance, and holds that conclusory allegations regarding the contributory infringers’ control and knowledge of the direct infringement are insufficient to state a claim.

World Wide Sales, Inc. v. Church & Dwight Co.,
93 USPQ2d 1313 (N.D. Ill. Nov. 9, 2009)
In granting summary judgment to defendant, Northern District of Illinois finds no likelihood of reverse confusion between defendant’s FRIDGE FRESH marks and plaintiff’s mark FOREVER FRESH FOR THE FRIDGE, based in part on defendant’s use of its famous house mark, and holds that defendant did not commit fraud by failing to disclose its knowledge of plaintiff’s mark to the USPTO.