March 2012 Issue

Civil Cases

Bridgestone Ams. Tire Operations, LLC v.
Fed. Corp.,
2012 WL 954267 (Fed. Cir. Mar. 16, 2012)
Federal Circuit reverses TTAB and sustains Bridgestone’s opposition against application for the mark MILANZA for tires, finding a likelihood of confusion with Bridgestone’s POTENZA and TURANZA marks, and that the BRIDGESTONE house mark does not detract from the strength of those marks.

Coach Servs., Inc. v. Triumph Learning LLC,
668 F.3d 1456 (Fed. Cir. Feb. 21, 2012)
Federal Circuit affirms TTAB decision finding no likelihood of confusion between famous COACH mark for luxury goods and COACH mark for test-preparation products, and no dilution.

Lovely Skin, Inc. v. Ishtar Skin Care Prods., LLC,
2012 WL 379930 (D. Neb. Feb. 6, 2012)
District of Nebraska rules that issues of fact precluded summary judgment against Defendant’s unclean hands defense, which was based on Plaintiff’s purchase of keyword advertising containing Defendant’s allegedly infringing name.

Nat’l Bus. Forms & Printing Inc. v.
Ford Motor Co.,
101 U.S.P.Q.2d 1746 (5th Cir. Feb. 16, 2012)
Fifth Circuit holds that commercial printer’s inclusion of famous Ford marks in its “bank” of corporate logos made available to create custom signs, banners, and stickers, and sale of promotional materials bearing these marks constituted trademark infringement, but such use did not give rise to dilution claim because commercial printer did not “use” the marks to identify or distinguish its own goods and services.

Petroliam Nasional Berhad v. GoDaddy.com, Inc.,
2012 WL 10532 (N.D. Cal. Jan. 3, 2012)
Northern District of California recognizes the existence of contributory cybersquatting, but holds that domain name registrar’s service of forwarding allegedly infringing domain names to pornographic websites did not constitute contributory cybersquatting.