March/April 2011 Issue

Civil Cases

Citigroup Inc. v. Capital City Bank Group, Inc.,
2011 WL 1108255 (Fed. Cir. Mar. 28, 2011)
Federal Circuit affirms TTAB’s finding of no likelihood of confusion between famous CITIBANK marks and CAPITAL CITY BANK marks based on differences between the marks and the absence of actual confusion despite many years of coexistence.

FTC v. Cantkier,
2011 WL 742647 (D.D.C. Mar. 3, 2011)
In what appears to be the first keyword-advertising case decided under the Federal Trade Commission Act, the district court of D.C. finds that there is no per se FTC Act liability for keyword purchases, but that sponsored ads containing deceptive titles and links that are likely to mislead consumers may be actionable.

InternetShopsInc.com v. Six C Consulting, Inc.,
2011 WL 1113445 (N.D. Ga. Mar. 24, 2011)
Northern District of Georgia rejects plaintiff’s request for defendant’s profits from its keyword advertising relying on the metrics from the keyword-advertising campaign (i.e., ad impressions, ad clicks, and sales).

Network Automation, Inc. v.
Advanced Sys. Concepts, Inc.,
2011 WL 815806 (9th Cir. Mar. 8, 2011)
In reversing the grant of a preliminary injunction in a keyword case against an advertiser, the Ninth Circuit holds that the “Internet Trinity” test for likelihood of confusion is not appropriate for keyword disputes and formulates a new likelihood-of-confusion test for keyword cases.