Finnegan's monthly review of essential decisions, key developments, evolving trends in trademark law, and more.
January 2011 Issue
1-800 Contacts.com, Inc. v. Memorial Eye, P.A.,
2010 WL 5149269 (D. Utah Dec. 13, 2010)
District of Utah rules that a trademark owner’s claim against a competitor for purchasing its trademark as a keyword is not barred by unclean hands because the trademark owner’s purchase of other competitors’ trademarks as keywords was not related to the mark it asserted against the defendant.
Bd. of Regents of the Univ. of Wis. Sys. v.
Phoenix Software Int’l, Inc.,
2010 WL 5295853 (7th Cir. Dec. 28, 2010)
Seventh Circuit holds that in determining likelihood of confusion for purposes of cancellation action, consideration of actual nature of the parties’ goods, rather than simply the goods as described in the parties’ respective trademark registrations, is appropriate; and that the Trademark Remedy Clarification Act does not eliminate sovereign immunity for state governments in trademark disputes.
Gray v. Novell, Inc.,
2011 WL 69373 (11th Cir. Jan. 7, 2011)
Eleventh Circuit affirms ruling that X/Open is the exclusive owner of the UNIX trademark.
Finnegan Articles
Cleared for Knock-Off: Counterfeiting at 30,000 Feet by B. Brett Heavner and
Michael R. Justus
The Top 10 Mistakes of Foreign Applicants in U.S. Trademark Registration Practice and How to Avoid Them
by B. Brett Heavner and
Marcus H.H. Luepke
Trademarks and Viral Marketing: The Risks, the Rewards, the Rules
by Marcus H.H. Luepke and
Julia Anne Matheson
Finnegan News
Identifying the World’s Leading Trademark Firms and Practitioners
Eleventh Circuit Affirms Lower Court Decision in Favor of Finnegan Client X/Open
Podcasts
Marcus Luepke and Julia Matheson Discuss Silly Bandz®: The Latest Sensation to Stretch the Rules of Trademark Protection
TTAB Cases
In re Van Valkenburgh,
App. Ser. No. 77025789 (TTAB Jan. 7, 2011)
TTAB finds product design of motorcycle stand functional and lacking in acquired distinctiveness, rejecting registration.
Orouba Agrifoods Processing Co. v.
United Food Imps.,
Canc. No. 92050739 (TTAB Dec. 28, 2010)
TTAB finds Petitioner’s claims barred by res judicata based on prior judgment in opposition involving the identical parties and same transactional facts, even though TTAB had not decided prior opposition “on the merits.”
In re Van Valkenburgh,
App. Ser. No. 77025789 (TTAB Jan. 7, 2011)
TTAB finds product design of motorcycle stand functional and lacking in acquired distinctiveness, rejecting registration.
Orouba Agrifoods Processing Co. v.
United Food Imps.,
Canc. No. 92050739 (TTAB Dec. 28, 2010)
TTAB finds Petitioner’s claims barred by res judicata based on prior judgment in opposition involving the identical parties and same transactional facts, even though TTAB had not decided prior opposition “on the merits.”
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