Summer 2012 Issue

Civil Cases

Acacia Inc. v. NeoMed Inc.,
2012 WL 3019948 (C.D. Cal. July 23, 2012)
Central District of California finds color orange is functional and unprotectable as trade dress for certain medical devices, and orders cancellation of registration.

Amerigas Propane, L.P. v. Opinion Corp.,
2012 WL 2327788 (E.D. Pa. June 19, 2012)
Eastern District of Pennsylvania denies operator of a consumer gripe site’s motion to dismiss, holding that plaintiff properly alleged its claims of trademark infringement and state-law claims against defendant’s use of plaintiff’s mark in metatags, keyword advertising, and in website subdomains.

Bauer Bros. LLC v. Nike, Inc.,
2012 WL 1900047 (S.D. Cal. May 24, 2012)
Southern District of California grants summary judgment to Nike, finding Bauer’s DON’T TREAD ON ME and DTOM trademarks invalid due to Bauer’s failure to show use in commerce prior to its trademark application filing dates or Nike’s use of its marks in commerce, and rules that Bauer’s false claims of use on a wide array of apparel in its use-based trademark applications constituted fraud.

Gucci Am., Inc. v. Guess? Inc.,
2012 WL 1847646 (S.D.N.Y. May 21, 2012)
Southern District of New York awards $4.6 million in damages to Gucci for infringement and dilution of Gucci marks and designs.

Vizer v. VIZERNEWS.COM,
2012 WL 2367130 (D.D.C. June 22, 2012)
U.S. District Court for the District of Columbia holds that presence of an ICANN office in DC did not support in rem jurisdiction under the ACPA, because it is not a proper “domain name authority.”

Federal Circuit Cases

DuoProSS Meditech Corp. v.
Inviro Med. Devices, Ltd.,
2012 WL 3292920 (Fed. Cir. Aug. 14. 2012)
Federal Circuit confirms that the commercial context in which a mark appears should inform any evaluation of the mark’s inherent protectability.

Lens.com, Inc. v. 1-800 Contacts, Inc.,
686 F.3d 1376 (Fed. Cir. Aug. 3, 2012)
Federal Circuit confirms that an article does not qualify as a “good in trade” when it is simply the conduit through which one renders its services.

Midwestern Pet Foods, Inc. v.
Societe des Produits Nestle S.A.,
685 F.3d 1046 (Fed. Cir. July 9, 2012)
Federal Circuit affirms TTAB holding that in pre-2007 TTAB cases, a party dissatisfied with its adversary’s discovery responses must file a motion to compel or risk waiving any objections to the admission of trial evidence responsive to the propounding party’s requests not produced during discovery.