Finnegan's monthly review of essential decisions, key developments, evolving trends in trademark law, and more.
October 2008 Issue
Civil Cases
Adidas-America, Inc. v. Payless ShoeSource, Inc.,
2008 WL 4279812 (D. Or. 2008)
Oregon District Court dramatically reduces one of the largest damages awards in a trademark case from $305 million to $65 million.
E.T. Browne Drug Co. v. Cococare Products, Inc.,
87 U.S.P.Q.2d 1655 (3d Cir. 2008)
Evidence of long-term continuous use and significant advertising expenditures and sales found inadequate to avoid adverse ruling of descriptiveness where the mark at issue did not appear as a stand-alone term on packaging or in advertising.
Gander Mountain Co. v. Cabela's, Inc.,
540 F.3d 827 (8th Cir. 2008)
Trademark licensing provisions that are merely "agreements to agree" in the future and lack the form and content customary to such licenses are unenforceable.
Venture Tape Corp. v. McGills Glass Warehouse,
540 F.3d 56 (1st Cir. 2008)
Metatags still matter! The First Circuit affirms a monetary award of over $425,000 for use of a competitor's marks in metatags.
Yurman Studio, Inc. v. Castaneda,
2008 WL 3861219 (S.D.N.Y. 2008)
Marketing replica jewelry using brand names may not be considered a nominative fair use.
Civil Cases
Adidas-America, Inc. v. Payless ShoeSource, Inc.,
2008 WL 4279812 (D. Or. 2008)
Oregon District Court dramatically reduces one of the largest damages awards in a trademark case from $305 million to $65 million.
E.T. Browne Drug Co. v. Cococare Products, Inc.,
87 U.S.P.Q.2d 1655 (3d Cir. 2008)
Evidence of long-term continuous use and significant advertising expenditures and sales found inadequate to avoid adverse ruling of descriptiveness where the mark at issue did not appear as a stand-alone term on packaging or in advertising.
Gander Mountain Co. v. Cabela's, Inc.,
540 F.3d 827 (8th Cir. 2008)
Trademark licensing provisions that are merely "agreements to agree" in the future and lack the form and content customary to such licenses are unenforceable.
Venture Tape Corp. v. McGills Glass Warehouse,
540 F.3d 56 (1st Cir. 2008)
Metatags still matter! The First Circuit affirms a monetary award of over $425,000 for use of a competitor's marks in metatags.
Yurman Studio, Inc. v. Castaneda,
2008 WL 3861219 (S.D.N.Y. 2008)
Marketing replica jewelry using brand names may not be considered a nominative fair use.
Finnegan Articles
It Ain't Easy Being Green
Best Kept Secret: Are Dilution Claims Based on "Blurring" Still Viable?
Major Anti-Counterfeiting Legislation Passed in the U.S. House of Representatives
Events
Speaking Engagement
Linda McLeod will speak at the INTA Trademark Administrators Conference in Arlington, VA.
TTAB Cases
Boston Red Sox Baseball Club Ltd. Partnership v. Sherman, Opposition No. 91172268 (TTAB 2008)
Where an applicant lacks documentary evidence of bona fide intent to use its mark at the time of filing, mere allegations of such intent are insufficient to avoid adverse judgment.
In re SL&E Training Stable, Inc.,
App. No. 78806669 (TTAB 2008)
The TTAB rejects Applicant's argument that public policy favoring the right of an individual to use and register his personal name should trump likelihood-of-confusion concerns.
Boston Red Sox Baseball Club Ltd. Partnership v. Sherman, Opposition No. 91172268 (TTAB 2008)
Where an applicant lacks documentary evidence of bona fide intent to use its mark at the time of filing, mere allegations of such intent are insufficient to avoid adverse judgment.
In re SL&E Training Stable, Inc.,
App. No. 78806669 (TTAB 2008)
The TTAB rejects Applicant's argument that public policy favoring the right of an individual to use and register his personal name should trump likelihood-of-confusion concerns.
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