April 2009 Issue

Civil Cases

Aycock Eng'g, Inc. v. Airflite, Inc.,
2009 WL 805304 (Fed. Cir. Mar. 30, 2009)
The Federal Circuit rules that preparatory steps taken to create the infrastructure required to offer services to the public did not qualify as “use in commerce” sufficient to support a registration where the actual services identified in the registration were never offered to the public.

Cintas Corp. v. Unite Here,
2009 WL 604099 (S.D.N.Y. Mar. 9, 2009)
District court dismisses plaintiff’s claims regarding defendant labor union’s use of plaintiff’s mark in domain names to criticize plaintiff, finding no likelihood of confusion and that twice-removed links to the union’s store website were too attenuated to create trademark liability.

Enea Embedded Tech., Inc. v. Eneas Corp.,
2009 WL 648891 (D. Ariz. Mar. 11, 2009)
District of Arizona dismisses plaintiffs’ federal infringement and unfair competition claims for lack of subject matter jurisdiction because defendants’ registration of corporate names in various states and use of those names in correspondence did not constitute sufficient commercial use for Lanham Act purposes.

Geisha LLC v. Tuccillo,
2009 WL 674360 (N.D. Ill. Mar. 13, 2009)
Northern District of Illinois denies summary judgment for false endorsement claim to senior user who fails to file for federal registration of mark, then expands into new market after a third-party files an intent-to-use application and subsequently commences use of the mark in that same market.

Hearts on Fire Co., LLC v. Blue Nile, Inc.,
2009 WL 794482 (D. Mass. Mar. 27, 2009)
District of Massachusetts not only sides with the majority of courts in finding that the purchase of a trademark as a search engine keyword constitutes a use in commerce under the Lanham Act, but it appears to be the first court to formulate a special likelihood-of-confusion test to analyze keyword-triggered sponsored ads.

Rescuecom Corp. v. Google Inc.,
2009 WL 875447 (2d Cir. Apr. 3, 2009)
In a long-awaited decision, the Second Circuit rules that the plaintiff’s allegations that a search engine’s recommendation and sale of plaintiff’s trademark as a keyword to trigger competitors’ paid advertisements in a manner likely to cause confusion properly stated a claim under the Lanham Act.