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

October 2012 Issue

Civil Cases

Christian Louboutin, S.A. v.
Yves Saint Laurent Am. Holding, Inc
2012 WL 3832285 (2d Cir. Sept. 5, 2012)

Second Circuit rules that a single color is protectable as a trademark generally, including in the specific context of the fashion industry, and that a single-color mark is not “functional” per se because analysis of functionality requires an individualized fact-based inquiry.

Innovation Ventures, LLC v. N.V.E., Inc.,
2012 WL 4039843 (6th Cir. Sept. 13, 2012)

Sixth Circuit finds that 5-HOUR ENERGY notice to retailers about prior trade-dress victory, which failed to identify the product subject to the recall, may be misleading and actionable as false advertising.

Sovereign Military Hospitaller Order of Saint John of Jerusalem of Rhodes & of Malta v. Fla. Priory of the Knights Hospitallers of the Sovereign Order of Saint John of Jerusalem, Knights of Malta, The Ecumenical Order,
2012 U.S. App. LEXIS 19104
(11th Cir. Sept. 11, 2012)

In evaluating the merits of a cancellation counterclaim on fraud grounds, Eleventh Circuit confirms that post-Bose, a claim of fraud requires objective evidence of a willful intent to deceive.


In re Apple Inc.,
Ser. No. 85019762 (TTAB Sept. 18, 2012)

Affirming that a side-by-side comparison is not the standard for a proper likelihood-of-confusion analysis, TTAB upheld denial of registration of Apple’s “notes” design mark based on a previously registered mark also featuring musical notes.

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