June 2013 Issue

Civil Cases

B&B Hardware Inc. v. Hargis Indus., Inc.,
2013 WL 1810614 (8th Cir. May 1, 2013)
by B. Brett Heavner
Finding that the likelihood-of-confusion analysis undertaken by TTAB relative to registrability differs from the same determination made by a district court in evaluating infringement, Eighth Circuit declines to grant earlier TTAB decisions either administrative deference or preclusive effect in infringement proceedings before the district court.

Bern Unlimited, Inc. v. Burton Corp.,
2013 WL 2149674 (D. Mass. May 15, 2013)
by Julia Anne Matheson and Eleanor Atkins*
District of Massachusetts holds that evidence of Plaintiff’s advertisements touting the functionality of its helmet-design trade dress was not enough—on its own—to grant summary judgment for the Defendants on functionality.

Elcometer, Inc. v. TQC-USA, Inc.,
2013 WL 1433388 (E.D. Mich. Apr. 9, 2013)
by Eric J. Perrott
Eastern District of Michigan denies a manufacturer’s motion to dismiss an infringement claim based upon its distributors’ infringing use of a competitor’s trademark both as a search-engine keyword trigger and in the header of paid Google advertisements.

N. Am. Olive Oil Ass’n v. Kangadis Food, Inc.,
2013 WL 1777774 (S.D.N.Y. Apr. 25, 2013)
by Marcus H.H. Luepke
Southern District of New York declines to enjoin an olive oil producer’s use of labeling language that, while not literally false, was potentially misleading in the absence of extrinsic evidence demonstrating consumer interpretation of that language while simultaneously enjoining the same producer’s use of other language it found to be literally false.

Ron Paul v. DN Capital Inc. / Martha Roberts,
2013 WL 2390828 (WIPO May 11, 2013)
Ron Paul v. Whois Privacy Servs. Pty Ltd / JNR Corp,
2013 WL 2390820 (WIPO May 8, 2013)
by Eric J. Perrott
A WIPO Panel holds that Ron Paul engaged in reverse domain name hijacking by bringing a UDRP claim for “RonPaul.org” against a supporter after the supporter offered the domain name for free.

U.S. Polo Ass’n, Inc. v. PRL USA Holdings, Inc.,
2013 WL 490796 (2d Cir. Feb. 11, 2013)
by Laura K. Johnson
Second Circuit upholds injunction prohibiting U.S. Polo Association’s use of its Double Horsemen logo and word mark in the fragrance market, despite its right to use these marks in the apparel market.

Xereas v. Heiss,
2013 WL 1225392 (D.D.C. Mar. 27, 2013)
by Eric J. Perrott
U.S. District Court for the District of Columbia holds that Defendants could be liable for cybersquatting after “re-registering” and thereby transferring ownership in Plaintiff’s domain name with a bad-faith intent to profit, appearing to split from Ninth Circuit’s decision in GoPets Ltd. v. Hise.

TTAB Cases

Am.’s Best Franchising, Inc. v. Roger Abbott,
106 U.S.P.Q.2d 1540 (TTAB Mar. 20, 2013)
by Robert C. Stanley
TTAB allows concurrent-use registrations with appropriate geographic restriction for hotel marks, finding no likelihood of confusion for similar but weak marks with overlapping Internet advertising.

Dan Foam ApS v. Sleep Innovations, Inc.,
106 U.S.P.Q.2d 1939 (TTAB May 13, 2013)
by John F. Hornick and Whitney Devin Cooke
In denying cross-motions for summary judgment on likelihood of confusion, TTAB emphasizes its preference for Accelerated Case Resolution where only issues of the similarity and strength of the marks remain.

In re Florists’ Transworld Delivery, Inc.,
2013 TTAB LEXIS 115 (TTAB Mar. 28, 2013)
by Naresh Kilaru
TTAB finds the color black for floral packaging to be functional.

In re Pohl-Boskamp GmbH & Co.,
106 U.S.P.Q.2d 1042 (TTAB Feb. 25, 2013)
by Julia Anne Matheson and Eleanor Atkins*
TTAB denies registration to applicant’s flavor and scent marks for pharmaceutical products, finding applicant’s flavor mark unregistrable on functionality grounds and its scent mark unregistrable for lack of secondary meaning.

Copyright Cases

Am. Registry of Radiologic Technologists v. Bennett,
No. 5:12-cv-00109 (W.D. Tex. Apr. 11, 2013)
by Margaret A. Esquenet and Eric J. Perrott
Western District of Texas denies parties’ cross-motions for summary judgment, holding that although Plaintiff held valid copyrights and trade secrets in its test questions, it failed to provide evidence sufficient for summary judgment purposes that Defendant obtained its questions from Plaintiff’s examinations.

Axelrod & Cherveny Architects P.C. v.
T. & S. Builders Inc.,
2013 WL 1856655 (E.D.N.Y. May 2, 2013)
by Brian Westley
Eastern District of New York grants summary judgment on copyright infringement based on substantial similarity of exterior architectural features.

Viacom Int’l Inc. v. YouTube, Inc.,
2013 WL 1689071 (S.D.N.Y. Apr. 18, 2013)
by Eric J. Perrott
For a second time, Southern District of New York grants YouTube’s motion for summary judgment, finding that the Digital Millennium Copyright Act’s “safe harbor” provisions protect YouTube from copyright-infringement liability in a case remanded from Second Circuit.

WNET v. Aereo, Inc.,
106 U.S.P.Q.2d 1341 (2d Cir. Apr. 1, 2013)
by Eric J. Perrott
Second Circuit holds that the Cablevision case insulates a streaming television provider from copyright liability.