July/August 2009 Issue
Civil Cases
B&B Hardware, Inc. v. Hargis Indus., Inc.,
91 USPQ2d 1001 (8th Cir. June 22, 2009)
The Eighth Circuit Court of Appeals holds that a change in the status of plaintiff’s trademark registration from contestable to incontestable is a significant intervening factual change that precludes application of collateral estoppel in a trademark-infringement action.
In re Hotels.com L.P.,
91 USPQ2d 1532 (Fed. Cir. July 23, 2009)
The Federal Circuit finds that HOTELS.COM is generic for a website offering information about hotels and hotel-booking services, relying on the large number of similar usages of “hotels” with a “.com” suffix, as well as the common meaning and dictionary definition of “hotels” and the standard usage of “.com” to show a commercial Internet domain.
S. Grouts & Mortars, Inc. v. 3M Co.,
2009 WL 2182605 (11th Cir. July 23, 2009)
The Eleventh Circuit rules that the renewal and continued ownership and nonuse of a domain name containing a competitor’s trademark did not violate the ACPA where the defendant legitimately acquired the name for another business and the plaintiff failed to show that the defendant had a bad-faith intent to profit from the plaintiff’s mark.
St. Luke’s Cataract & Laser Inst., P.A. v. Sanderson,
2009 WL 1955609 (11th Cir. July 9, 2009)
In a case of first impression, the Eleventh Circuit rules that ACPA statutory damages for cybersquatting are not duplicative of Lanham Act actual damages for trademark infringement.
Zino Davidoff SA v. CVS Corp.,
2009 WL 1862462 (2d Cir. June 30, 2009)
Second Circuit affirms PI against gray-market fragrances sold without trademark owner’s “unique production codes.”
TTAB Cases
In re Peter S. Herrick,
App. Ser. No. 76653159 (TTAB June 10, 2009)
TTAB affirms refusal to register the mark U.S. CUSTOMS SERVICE and Design for attorney services because the mark falsely suggests a connection with the government agency, the United States Border Protection, under Section 2(a), and is unregistrable under Section 2(b) as a simulation of the seal of the U.S. Treasury.
