Incontestable
Finnegan's monthly review of essential decisions, key developments, evolving trends in trademark law, and more.

December 2011 / January 2012 Issue

Civil Cases

Ascentive, LLC v. Opinion Corp.,
2011 WL 6181452 (E.D.N.Y. Dec. 13, 2011)

Eastern District of New York refused to preliminarily enjoin defendant’s use of plaintiffs’ trademarks even though defendant used plaintiffs’ marks in subdomains, metatags, and advertising for a consumer-review website featuring negative reviews about plaintiffs’ products and offered “reputation management services” to plaintiffs to manage those same negative reviews.

L.F.P. IP, Inc. v. Hustler Cincinnati, Inc.,
2011 WL 5024356 (S.D. Ohio Oct. 20, 2011)

Southern District of Ohio grants Larry Flynt’s motion for summary judgment and enjoins use of HUSTLER marks by Larry’s brother, Jimmy.

Marketquest Group, Inc. v. BIC Corp.,
2011 WL 5360899 (S.D. Cal. Nov. 7, 2011)

Southern District of California denies preliminary injunction based on descriptive fair-use defense despite defendant’s use of phrase that was identical to plaintiff’s incontestable trademark for nearly identical products.

Philip Morris USA, Inc. v. Jiang,
No. 11-cv-24049 (S.D. Fla. Dec. 12, 2011)

As part of a preliminary injunction against a cybersquatter and counterfeiter, the Southern District of Florida ordered defendants’ domain name registrar to redirect the infringing domain names to a website displaying the injunction and other legal documents from the lawsuit.

Weather Underground, Inc. v.
Navigation Catalyst Sys., Inc.
,
100 U.S.P.Q.2d 1778 (E.D. Mich. Nov. 9, 2011)

Despite defendants registering nearly 300 domain names containing misspellings of plaintiff’s trademarks and using them for pay-per-click sites displaying competitors’ ads, Eastern District of Michigan denied plaintiff’s motion for summary judgment on its cybersquatting claim and rejected plaintiff’s argument that bad faith could be shown based solely on defendants’ “willful blindness” in registering the domains.
TTAB Cases

Benedict v. Super Bakery, Inc.,
101 U.S.Q.P.2d 1089 (Fed. Cir. Dec. 28, 2011)

Federal Circuit affirms TTAB’s entry of default judgment against Respondent and sanction of cancellation of Respondent’s trademark registration for failure to comply with discovery orders.  In addition, the appeals court calls into question whether the suspension of proceedings upon the filing of a dispositive motion under Rule 2.127(d) should be automatic or, as interpreted by the TTAB, only suspended following issuance of a Board Order.

Frito-Lay N. Am., Inc. v.
Princeton Vanguard, LLC
,
Opp. No. 91195552, Canc. No. 92053001
(TTAB Nov. 16, 2011)

TTAB holds that burden and expense of e-discovery will weigh heavily against compelling production of electronically stored information in most cases.

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