January 2009 Issue

Civil Cases

Bd. of Supervisors for La. State Univ. v. Smack Apparel Co.,
2008 WL 4981326 (5th Cir. Nov. 25, 2008)
Fifth Circuit holds that school color combinations, when used together with other school-related indicia, are protectable trademarks.

Dress for Success Worldwide v. Dress 4 Success,
2008 WL 5137010 (S.D.N.Y. Dec. 5, 2008)
Under the “merger rule,” following termination of a license, a licensee cannot resume use of its former name where that name is substantially identical to the trademark covered by the license and owned by the licensor.

Grocery Outlet Inc. v. Albertsons, Inc.,
2008 WL 5245962 (N.D. Cal. Dec. 17, 2008)
The continued sell-off for several years of existing inventory bearing a mark and a clear intent to resume use of the mark is sufficient to defeat a claim that the mark was abandoned.

Spiegel & Assocs. v. Spiegel,
2008 U.S. Dist. LEXIS 100558 (E.D. Va. Dec. 11, 2008)
Even though two law firms located in the same city used virtually identical domain names that were likely to cause initial-interest confusion, a preliminary injunction is not warranted based on the differences in their practices—IP versus employment law—and the significant harm that an injunction would cause to defendant’s law practice.

Visa Int’l Serv. Ass’n v. JSL Corp.,
2008 WL 5255813 (D. Nev. Dec. 16, 2008)
The contextual differences between the parties’ websites is “largely irrelevant” for assessing the similarity-of-marks factor in the dilution analysis where the defendant’s domain name evisa.com for an English-language school did not, on its face, convey any contextual differences with plaintiff’s famous VISA trademark for financial services.