2009 US Annual Review - International Trademark Association

® The Law Journal of the International Trademark Association UNITED STATES ANNUAL REVIEW The Sixty-First Year of Administration of the U.S. Trademark (Lanham) Act of 1946 Theodore H. Davis, Jr. Jordan S. Weinstein Vol. 99 January-February, 2009 No. 1 INTERNATIONAL TRADEMARK ASSOCIATION Representing the Trademark Community since 1878 655 Third Avenue, New York, NY 10017-5617 Telephone: +1 (212) 768-9887 email: tmr@inta.org Facsimile: +1 (212) 768-7796 OFFICERS OF THE ASSOCIATION RICHARD HEATH .........................................................................................................................President HEATHER C. STEINMEYER ..................................................................................................President Elect GERHARD R. BAUER ...........................................................................................................Vice President GREGG MARRAZZO .............................................................................................................Vice President TOE SU AUNG ............................................................................................................................ Treasurer BRET L. PARKER .........................................................................................................................Secretary D. PETER HARVEY ........................................................................................................................Counsel ALAN C. DREWSEN .......................................................................................................Executive Director EDITORIAL BOARD Editor-in-Chief CLIFFORD W. BROWNING Senior Editors LANNING G. BRYER KATHLEEN E. MCCARTHY JESSICA ELLIOTT JONATHAN MOSKIN DANIEL C. GLAZER PIER LUIGI RONCAGLIA Managing Editor LISA BUTKIEWICZ Editors JOSEPH ADAMS WILLIAM G. BARBER PHILIP BARENGOLTS STEWART BELLUS MARTIN J. BERAN DANIEL R. BERESKIN ALISON ARDEN BESUNDER AMY LYNN BOUKAIR KAREN BROMBERG WILLIAM M. BRYNER RENATA CARNIERO PAMELA CHESTEK STEPHEN JADIE COATES RUTH CORBIN JOHN J. COTTER JENIFER DEWOLF PAINE SHERRI FELT DRATFIELD JAYNE DURDEN G. KIP EDWARDS CATE ELSTEN THEOPHILUS I. EMUWA SAMUEL FIFER JAMIE JOHNSON FITZGERALD GERALD L. FORD RANDY MARC FRIEDBERG GARET K. GALSTER PAUL R. GARCIA KELLY J. GARRONE REBECCA GIBBS JASON M. GONDER ALISON GRABELL PETER GROVES MASCHA GRUNDMANN JULIA HOLDEN CHRIS HOLLAND GEORGE HOVANEC CHRISTY L.E. HUBBARD MELANYE K. JOHNSON ROGER JUNTUNEN STACEY C. KALAMARAS TIMOTHY KELLY NANCY KENNEDY AMY LEE KERTGATE NISHAN KOTTAHACHCHI RENEE SUSANNE KRAFT LISA K. KRIZMAN ROLAND KUNZE ANN LAMPORT HAMMITTE JACQUELINE LAVASSEUR PATT THOMAS LEE KATHLEEN LEMIEUX KWAN-TAO LI MOLLY LIU DOUGLAS MASTERS J. THOMAS MCCARTHY AMANDA LOUIS MCCOY DAVID MCDONALD JAMES MENKER ZACHARY D. MESSA HOWARD S. MICHAEL NANCY MILLER HELEN MINSKER GLENN MITCHELL THOMAS MUDD ALISON NAIDECH MARIA K. NELSON AMANDA NYE ELISABETH OHM ERIC D. PAULSRUD JOHN PEACOCK E. LYNN PERRY BRAD PENDERGRAST MILES J. ALEXANDER WILLIAM M. BORCHARD SANDRA EDELMAN ANTHONY L. FLETCHER ARTHUR J. GREENBAUM WERNER JANSSEN, JR. CHARLOTTE JONES ROBERT M. KUNSTADT THEODORE C. MAX VINCENT N. PALLADINO JOHN B. PEGRAM ALLAN S. PILSON ROBERT L. RASKOPF FIDEL PORCUNA DE LA ROSA ANTHONY M. PRENOL GRIFFITH PRICE BRUCE PROCTOR KENT R. RAYGOR BEATRIZ M. REYES STEVEN ROSENTHAL ANDREA RUSH RAFAEL A. SALOMONI DANIEL SCHLOSS CORNELIA SCHMITT JUDITH SCHVIMMER MICHAEL SCHWAB BRYAN SCHWARTZ KAREN SEKOWSKI SARAH SHARMA CATHY SHORE-SIROTIN VALYNCIA SIMMONS ALEX SIMONSON KELLIE STONIER ERICA W. STUMP LOKE-KHOON TAN PAZ VILLAMIL ARIANA G. VIOGT MATTHEW WALCH BRAD WALZ ROBERT WASNOFSKI JOHN L. WELCH THOMAS WETTERMAN BRYAN K. WHEELOCK NEIL J. WILKOF SUZANNE A. WILLIAMS KENNETH WILTON HELEN L. WINSLOW MICHELLE W. ZAGAZETA RAFFI V. ZEROUNIAN Advisory Board PASQUALE A. RAZZANO SUSAN REISS HOWARD J. SHIRE JERRE B. SWANN STEVEN M. WEINBERG ALLAN ZELNICK The views expressed in The Trademark Reporter are those of the individual authors. The Trademark Reporter (ISSN 0041-056X) is published bimonthly by the International Trademark Association, 655 Third Avenue, New York, NY 10017-5617 USA. Periodicals postage paid at New York, NY POSTMASTER: Send address change to The Trademark Reporter, 655 Third Avenue, New York, NY 10017-5617 USA. Annual subscription rate for members is $90 (single copy $20), which is included in their annual dues. Subscriptions to nonmembers available, in the interests of education, only to schools, public libraries and government agencies at a cost of $60 (single copy $20) per year. Rates for membership on request. Material may not be reproduced without permission. Claims for missing numbers must be made within the month following the regular month of publication. The publishers expect to supply missing numbers free only when losses have been sustained in transit and when the reserve stock will permit. Reprints of most leading articles and other material available for nominal charge on inquiry to INTA. ® (USPS 636-080) Copyright 2009, by the International Trademark Association All Rights Reserved Vol. 99 January-February, 2009 No. 1 TOPICAL INDEX UNITED STATES ANNUAL REVIEW The Sixty-First Year of Administration of the U.S. Trademark (Lanham) Act of 1946 Theodore H. Davis, Jr. and Jordan S. Weinstein Editor’s Note Introduction Part I. Likelihood of Confusion A. Likelihood of Confusion Found B. Likelihood of Confusion Not Found Part II. Ex Parte Cases A. Court of Appeals for the Federal Circuit 1. 2. Genericness a. Mark Found to Be Generic Identification of Goods a. Identification of Goods Found to Be Indefinite B. Other Courts 1. U.S. Court of Appeals for the Fourth Circuit a. Funding—Lack of Appropriation for Specific Trademarks This issue of THE TRADEMARK REPORTER® (TMR) should be cited as 99 TMR ____ (2009). C. Trademark Trial and Appeal Board 1. Specimen of Use a. Specimen of Use Was Acceptable b. Specimen of Use Was Not Acceptable 2. Identification of Goods a. Identification of Goods Was Acceptable 3. Goods in Trade a. Goods Identified Were Not Goods in Trade 4. Geographic Descriptiveness a. Mark Found Geographically Descriptive 5. Primarily Merely a Surname a. Mark Found Not to Be Primarily Merely a Surname b. Mark Found to Be Primarily Merely a Surname 6. Geographic Deceptiveness a. Mark Found to Be Geographically Deceptive 7. Geographic Deceptive Misdescriptiveness a. Mark Found to Be Geographically Deceptively Misdescriptive 8. Descriptiveness a. Mark Found Not to Be Descriptive 9. Doctrine of Foreign Equivalents a. Doctrine Found Applicable; Likelihood of Confusion Found 10. Genericness a. Mark Found to Be Generic 11. Procedural Issues a. Evidence (1) Wikipedia Evidence Found Admissible Part III. Inter Partes Cases A. United States Court of Appeals for the Fourth Circuit 1. Subpoena Power Over Foreign Trademark Applicant B. Trademark Trial and Appeal Board 1. 2. 3. 4. Bona Fide Intention to Use a. Intention to Use Not Found Likelihood of Confusion Standard Standing a. Opposer Had Standing to Oppose Acquired Distinctiveness a. Mark Had Not Acquired Distinctiveness 5. 6. 7. 8. 9. 10. 11. 12. Priority of Use a. Pan American Convention (1) Pan American Convention Priority Recognized b. Morehouse Defense to Priority (1) Morehouse Defense Not Applicable Ownership a. Applicant Was Not Owner of Mark at Filing Time Abandonment a. Change in Mark Format Was Not Abandonment Fraud a. Applicant Did Not Commit Fraud b. Applicant Committed Fraud Laches a. Laches May Be Considered Even if Underlying Registration Is Cancelled b. Laches Found but Excused for Progressive Encroachment Misrepresentation a. Misrepresentation Claim Dismissed Analogous Use as Basis to Oppose Intent-to-Use Application a. Analogous Use Found to Be Proper Basis to Oppose Procedural Issues a. Proof of Service (1) Proof of Service Absent Actual Service is Insufficient b. Petition for Cancellation After Fifth Anniversary (1) Petition Dismissed c. Standing (1) Opposer Had Standing to Oppose (2) Opposer Lacked Standing to Oppose (3) Collateral Estoppel i. Collateral Estoppel Not Found d. Motions Practice (1) Motion to Withdraw Admissions i. Motion Granted in Part, Denied in Part (2) Motion to Strike i. Motion Denied (3) Motion for Sanctions i. Sanctions Granted (4) Motion for Extension of Discovery Period i. Motion Denied Part IV. Trademark Infringement and Unfair Competition in the Courts of General Jurisdiction A. Acquisition of Trademark Rights 1. 2. 3. 4. What Can Qualify as a Protectable Mark? The Use in Commerce Requirement a. The Nature and Quantity of Use Necessary to Establish Protectable Rights b. The Well-Known Marks Doctrine c. Use-Based Geographic Rights Distinctiveness a. Effect of Federal Registrations on the Distinctiveness Inquiry b. Distinctiveness of Word Marks (1) Generic Terms and Designations (2) Descriptive Marks (3) Suggestive Marks (4) Arbitrary Marks (5) Fanciful or Coined Marks c. Distinctiveness of Trade Dress d. Secondary Meaning Determinations (1) Cases Finding Secondary Meaning (2) Cases Declining to Find Secondary Meaning (3) Secondary Meaning to be Determined e. Survey Evidence of Distinctiveness Functional Features a. Effect of Federal Registrations on the Functionality Inquiry b. Utilitarian Functionality c. Aesthetic Functionality B. Establishing Liability 1. 2. Proving Use in Commerce by Defendants a. Cases Finding Use in Commerce by Defendants b. Cases Declining to Find Use in Commerce by Defendants c. Use in Commerce by Defendants to Be Determined Likelihood of Confusion a. Factors Considered (1) The First Circuit (2) The Second Circuit (3) The Third Circuit 3. 4. 5. (4) The Fourth Circuit (5) The Fifth Circuit (6) The Sixth Circuit (7) The Seventh Circuit (8) The Eighth Circuit (9) The Ninth Circuit (10) The Tenth Circuit (11) The Eleventh Circuit (12) The District of Columbia Circuit b. Findings (1) Likelihood of Confusion: Preliminary Relief (2) Likelihood of Confusion: As a Matter of Law (3) Likelihood of Confusion: After Trial (4) Likelihood of Confusion to Be Determined (5) Unlikelihood of Confusion: Preliminary Relief (6) Unlikelihood of Confusion: As a Matter of Law (7) Unlikelihood of Confusion: After Trial c. Survey Evidence of Confusion d. Effect of Disclaimers Dilution a. Retroactivity of the Trademark Dilution Revision Act of 2006 b. Proving Mark Fame and Distinctiveness c. Proving Actual or Likely Dilution (1) Actual or Likely Dilution by Tarnishment (2) Actual or Likely Dilution by Blurring (3) Survey Evidence of Actual or Likely Dilution d. Preemption of State Dilution Statutes Section 42 Claims Section 43(a) Claims a. Passing Off and Reverse Passing Off b. False Endorsement c. False Advertising and Commercial Disparagement (1) Proving Use in “Commercial Advertising and Promotion” by Defendants (2) False or Misleading Statements of Fact i. “Puffery” ii. Literally False Claims iii. Accurate, But Misleading, Claims (3) Causation and Likelihood of Injury (4) Statements Related to the Enforcement of Patent Rights (5) Statements Related to Copyright Rights d. Other Section 43(a) Claims 6. Cybersquatting Claims a. In Rem Actions b. In Personam Actions 7. Recovery for Fraudulent Procurement of Registrations 8. State and Common Law Claims a. Preemption of State Unfair Competition Causes of Action b. Right of Publicity c. Other State Statutory and Common Law Unfair Competition Claims (1) Arizona (2) Colorado (3) Illinois (4) New York (5) Ohio 9. Contributory Infringement and Vicarious Liability 10. Personal Liability C. Counterfeiting Matters D. Defenses 1. 2. Legal Defenses a. First Amendment b. Abandonment (1) Non-Use (2) “Naked” Licensing (3) Failure to Police c. Fair Descriptive Use d. Nominative Fair Use e. Innocent Infringer f. Antitrust Violations g. Advice of Counsel h. Statute of Limitations Equitable Defenses a. Unclean Hands b. Laches c. Acquiescence d. Waiver e. Estoppel f. Claim and Issue Preclusion E. Remedies 1. 2. Injunctive Relief a. Ex Parte Preliminary Relief b. Preliminary Injunctions c. Permanent Injunctions d. Contempt Monetary Recovery a. Actual Damages (1) Calculation of Actual Damages (2) Augmentation of Awards of Actual Damages b. Statutory Damages c. Liquidated Damages d. Punitive Damages e. Accountings of Profits (1) Plaintiffs’ Entitlement to Accountings (2) The Accounting Process (3) Augmentation of Accountings f. Attorneys’ Fees (1) Awards in Favor of Prevailing Plaintiffs (2) Awards in Favor of Prevailing Defendants (3) Calculation of Attorneys’ Fees g. Awards of Costs F. Procedural Matters 1. Declaratory Judgment Actions 2. Standing a. Cases Finding Standing b. Cases Declining to Find Standing 3. Jurisdictional Issues a. Personal Jurisdiction (1) Opinions Exercising Personal Jurisdiction (2) Opinions Declining to Exercise Personal Jurisdiction b. Subject Matter Jurisdiction c. Primary Jurisdiction 4. Venue a. Cases Finding Venue Appropriate b. Cases Finding Venue Inappropriate 5. Pleading Requirements 6. Abstention 7. Discovery Issues 8. Expert Witness Testimony 9. Right to Jury Trial 10. Extraterritorial Application of the Lanham Act 11. Sanctions 12. Court Review of, and Deference to, U.S. Patent and Trademark Office Decisions 13. Court Review of, and Deference to, NAD Decisions G. Constitutional Matters H. Judicial Authority Over Federal Registrations and Applications I. Miscellaneous Matters 1. The Relationship Between Trademark Law and Copyright Law 2. Assignments in Gross 3. Section 526 of the Tariff Act of 1930 4. Exhaustion of Rights and Diverted Goods 5. Interpretation of Trademark Licenses 6. Interpretation and Enforcement of Settlement Agreements 7. Rights of Federally Chartered Organizations 8. Licensor Liability for Alleged Torts of Licensees 9. United States Department of Agriculture Regulations 10. The Federal Food, Drug, and Cosmetic Act 11. Cuban Asset Control Regulations 12. The Telemarketing and Consumer Fraud and Abuse Prevention Act 13. Insurance Coverage a. Cases Ordering Coverage b. Cases Declining to Order Coverage c. Coverage to Be Determined 14. State Taxation of Income Produced by Trademark Licenses Table of Current Cases Reviewed ® UNITED STATES ANNUAL REVIEW THE SIXTY-FIRST YEAR OF ADMINISTRATION OF THE U.S. TRADEMARK (LANHAM) ACT OF 1946 ∗ EDITOR’S NOTE The 2008-2009 Board of Editors of THE TRADEMARK REPORTER® welcomes you to its first issue of 2009, the UNITED STATES ANNUAL REVIEW: The Sixty-First Year of Administration of the U.S. Trademark (Lanham) Act of 1946. As was the case last year, this year's ANNUAL REVIEW has been ably authored by Theodore H. Davis, Jr. and Jordan S. Weinstein. The UNITED STATES ANNUAL REVIEW contains summaries of the past year’s decisions rendered under the U.S. Trademark (Lanham) Act by the U.S. Court of Appeals for the Federal Circuit, the U.S. Court of Appeals for the District of Columbia Circuit, the U.S. courts of general jurisdiction, the U.S. Trademark Trial and Appeal Board, and the U.S. Commissioner for Trademarks. You will also find a Table of Cases cited in the 2009 ANNUAL REVIEW, and the Annual Index of articles that were published in 2008 in THE TRADEMARK REPORTER®, which are arranged by authors, titles, and subject areas. This issue also contains a small change in the format of the summaries of the decisions rendered by the U.S. Trademark Trial and Appeal Board and by the U.S. Commissioner for Trademarks that we believe is reader-friendly. Cliff Browning Editor-in-Chief ∗ The Annual Review is a continuation of the work originated in 1948 by Walter J. Derenberg and written by him through The Twenty-Fifth Year in 1972. This Review covers the period July 1, 2007 through June 30, 2008. Vol. 99 TMR 1 2 Vol. 99 TMR INTRODUCTION By Theodore H. Davis, Jr. ∗ The sixty-first year of judicial and administrative interpretations of the U.S. Trademark (Lanham) Act of 1946 produced a number of significant developments. Nevertheless, few were as potentially far reaching as a holding by the Eleventh Circuit 1 than eBay Inc. v. MercExchange, L.L.C., 2 in which the Supreme Court overturned the Federal Circuit’s practice of ordering injunctive relief in virtually any case in which patent infringement had been demonstrated, may apply with equal force to trademark litigation. Both before and after eBay, most courts to address the issue have held that a likelihood of confusion creates a presumption of irreparable harm, and this pattern was for the most part characteristic of the past year’s case law as well. 3 Although the Sixth and Ninth Circuits previously had acknowledged eBay’s possible significance to trademark litigation ∗ Author of the Introduction to, and Part IV of, this volume; Partner, Kilpatrick Stockton LLP, Atlanta, Georgia; Chair of International Amicus Committee, International Trademark Association; Board of Directors, International Trademark Association Political Action Committee. In the interest of full disclosure, the author notes his participation or that of his law firm in the following cases: WMS Gaming Inc. v. WPC Prods. Ltd., 542 F.3d 601 (7th Cir. 2008) (counsel for plaintiff); H-D Mich., Inc. v. Top Quality Serv., Inc., 496 F.3d 755 (7th Cir. 2007) (counsel for plaintiff); Univ. of Kan. v. Sinks, 565 F. Supp. 2d 1216 (D. Kan. 2008) (counsel for plaintiffs); adidas Am., Inc. v. Payless Shoesource, Inc., 546 F. Supp. 2d 1029 (D. Or.), reconsideration denied, 540 F. Supp. 2d 1176 (D. Or. 2008) (counsel for plaintiffs); Lulu Enters. v. N-F Newsite LLC, 85 U.S.P.Q.2d 1367 (E.D.N.C. 2007) (counsel for defendant); Universal Furniture Int’l Inc. v. Collezione Europa USA Inc., 84 U.S.P.Q.2d 1956 (M.D.N.C. 2007) (counsel for plaintiff). The author gratefully acknowledges the editorial contributions of Mary Kathryn Hagge and Debra Resnick, as well as the assistance of Christy Flagler, Kathy Crosslin, Louise Adams, and Jennifer Elrod in preparing his contributions to this volume for publication. 1. See N. Am. Med. Corp. v. Axiom Worldwide, Inc., 522 F.3d 1211 (11th Cir. 2008). 2. 547 U.S. 388 (2006). 3. According to one district court, “[i]n the context of trademark litigation, irreparable harm is generally presumed if a plaintiff demonstrates a likelihood of success on the merits.” Commerce Bank & Trust Co. v. TD Banknorth, Inc., 554 F. Supp. 2d 77, 87 (D. Mass. 2008); see also McNeil Nutritionals, LLC v. Heartland Sweeteners, LLC, 566 F. Supp. 2d 378, 393 (E.D. Pa. 2008); Fin. Express LLC v. Nowcom Corp., 564 F. Supp. 2d 1160, 1178 (C.D. Cal. 2008); Ligotti v. Garofalo, 562 F. Supp. 2d 204, 227 (D.N.H. 2008); DS Waters of Am., Inc. v. Princess Abita Water, L.L.C., 539 F. Supp. 2d 853, 863 (E.D. La. 2008); BiosafeOne, Inc. v. Hawks, 524 F. Supp. 2d 452, 462 (S.D.N.Y. 2007); Best W. Int’l, Inc. v. Patel, 523 F. Supp. 2d 979, 991 (D. Ariz. 2007); Paul Frank Indus. v. Sunich, 502 F. Supp. 2d 1094, 1102 (C.D. Cal. 2008); Ptak Bros. Jewelry Inc. v. Ptak, 83 U.S.P.Q.2d 1519, 1523 (S.D.N.Y. 2007); J&B Wholesale Distrib. Inc. v. Redux Beverages LLC, 85 U.S.P.Q.2d 1623, 1629 (D. Minn. 2007); Cmty. of Christ Copyright Corp. v. Miller, 85 U.S.P.Q.2d 1314, 1316 (W.D. Mo. 2007); MSP Corp. v. Westech Instruments, Inc., 500 F. Supp. 2d 1198, 1217 (D. Minn. 2007). Vol. 99 TMR 3 in cursory discussions affirming the entry of relief, 4 the Eleventh Circuit became the first federal appellate court to vacate a preliminary injunction based on the eBay Court’s rejection of categorical presumptions in the area. 5 Rather than reversing the district court outright, the appellate court instead remanded the action for a reexamination of the issue of irreparable harm; in doing so, however, it strongly suggested that the days of a prevailing infringement plaintiff being automatically entitled to injunctive relief may be over. 6 The proper scope of monetary relief under Section 35 of the Act 7 came into play in a pair of decisions from the First and Seventh Circuits, which slanted the field in those jurisdictions rather dramatically toward prevailing plaintiffs pursuing accountings of defendants’ profits. Under Section 35(a), such a plaintiff must demonstrate the defendant’s “sales only,” with the defendant then bearing the burden to prove “all” offsets from those sales. In contrast to the Copyright Act, which allows the recovery of “any profits . . . that are attributable to the infringement,” 8 Section 35 does not expressly define the starting point of the analysis—“the defendant’s sales only”—in accountings under it. Although the statute’s express terms leave open the question of whether a prevailing plaintiff must apportion the defendant’s revenues between infringing sales and noninfringing sales or, alternatively, whether the defendant bears the burden of this apportionment, both appellate courts adopted the latter rule. 9 In those Circuits, therefore, a defendant failing to prove by a preponderance of the evidence that portions of its gross (and not infringing) revenues arise from lawful sales may be forced to disgorge the entirety of those revenues. Of course, a senior user seeking any form of relief must first demonstrate liability, and courts and the Trademark Trial and Appeal Board alike often allowed junior users to escape allegations of likely confusion with relative ease. The Board led the way, holding at the pleading stage in one opposition that the parties’ marks—BOSS AUDIOSYSTEMS and PAC BOOSTER THE PERFECT SOUND, both used for audio components—were so 4. See Audi AG v. D’Amato, 469 F.3d 534 (6th Cir. 2006) (affirming entry of permanent injunction); Reno Air Racing Ass’n v. McCord, 452 F.3d 1126 (9th Cir. 2006) (affirming permanent injunction). 5. See N. Am. Med. Corp. v. Axiom Worldwide, Inc., 522 F.3d 1211 (11th Cir. 2008). 6. See id. at 1227-28. 7. 15 U.S.C. § 1117 (2006). 8. Id. § 504(b) (2006). 9. See WMS Gaming Inc. v. WPC Prods. Ltd., 542 F.3d 601, 607 (7th Cir. 2008); Venture Tape Corp. v. McGills Glass Warehouse, 540 F.3d 56, 64 (1st Cir. 2008). 4 Vol. 99 TMR dissimilar that the opposer had failed to state a claim. 10 The Seventh and Eleventh Circuits were only marginally less hostile to the need for full likelihood of confusion analyses in cases before them. Affirming entry by one district court of summary judgment of nonliability, the former observed that “[o]verwhelming visual similarity can defeat an infringement claim, even where the other six [likelihood of confusion] factors all weigh in favor of the plaintiff.” 11 The latter went further still in a case in which the appellate record included pictures of the parties’ packaging: What [the plaintiff] wants us to do is to ignore the pictures and the lack of any reason to believe that anyone ever has been befuddled. Like other courts, this circuit has articulated a multi-factor approach to assessing the probability of confusion. These factors include whether the trademarks use the same word, whether they sound alike, and so on. . . . A list of factors designed as proxies for the likelihood of confusion can’t supersede the statutory inquiry. If we know for sure that consumers are not confused about a product’s origin, there is no need to consult even a single proxy. 12 The Board served as a less accurate harbinger of the prospects for dilution claimants availing themselves of the revised Section 43(c). 13 Early in the Lanham Act “year,” the Board acknowledged that the BIG GULP mark was sufficiently famous to qualify for protection against likely dilution but nevertheless declined to sustain a Section 43(c)-based opposition by that mark’s owner to an application to register the GULPY mark for portable pet dishes. 14 In contrast, and with the Seventh Circuit serving as a notable exception, 15 courts were far more receptive to allegations of likely dilution, especially those in the Ninth Circuit, which between them delivered opinions favorable to the owners of the HOT WHEELS mark for miniature vehicles, 16 the EBAY mark for 10. See Ava Enters., Inc. v. P.A.C. Trading Group, Inc., 86 U.S.P.Q.2d 1659, 1661 (T.T.A.B. 2007) (“We . . . conclude that, notwithstanding the overlap of the respective goods, a likelihood of confusion cannot exist as a matter of law and that this case should be decided based on the [mark similarity] factor alone as being dispositive.”). 11. Welding Servs., Inc. v. Forman, 509 F.3d 1351, 1361 (11th Cir. 2007). 12. Top Tobacco, L.P. v. N. Atl. Operating Co., 509 F.3d 380, 383 (7th Cir. 2007) (citation omitted). 13. 15 U.S.C. § 1125(c) (2006). 14. See 7-Eleven Inc. v. Wechsler, 83 U.S.P.Q.2d 1715, 1726 (T.T.A.B. 2007) (“The differences between the parties’ products and the marks under which they are sold more than offset the public recognition and renown of opposer’s mark BIG GULP and, therefore, serve to negate any likelihood of confusion.”). 15. See Top Tobacco, 509 F.3d at 383 (affirming finding as a matter of law that the TOP mark for loose tobacco was insufficiently famous and distinctive to qualify for protection under Section 43(c)). 16. Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628 (9th Cir. 2008). Vol. 99 TMR 5 online auction services, 17 the NIKE mark for footwear, 18 and a serrated three-stripe design mark for footwear. 19 Of perhaps greatest interest to students of dilution doctrine, however, was the latest installment of Victor and Kathy Moseley’s longstanding dispute with Victoria’s Secret: Although having once trounced the retailer’s licensing subsidiary before the Supreme Court, 20 the Moseleys were held liable under Section 43(c) based on a summary judgment record establishing that their VICTOR’S SECRET and VICTOR’S LITTLE SECRET marks were likely to tarnish the VICTORIA’S SECRET mark. 21 Finally, the past year saw a number of significant decisions bearing on practice before the United States Patent and Trademark Office. Chief among these was an opinion from the Fourth Circuit, which reversed a district court order striking down a congressional rider prohibiting the use of federal funds to process applications to register, or to maintain registrations of, a particular mark dear to the heart of a particular member of the Senate Appropriations Committee; 22 under the decision, parties to disputes involving federal applications or registrations might rationally choose to reallocate portions of their litigation budgets to political campaign donations. The Fourth Circuit also tinkered with longstanding Board practice by recognizing the ability of inter partes litigants to compel opponents not domiciled in the United States to respond to federal district court subpoenas seeking their testimony, rather than relying on the far more cumbersome procedure of depositions on written questions. 23 But the Board itself also unexpectedly produced a burst of precedential opinions driving home the point that the Lanham Act and the Trademark Rules of Practice mean what they say. Consequently, USPTO customers often learned the hard way the consequences of, inter alia, filing an application in the name of the wrong entity, 24 blindly agreeing to an amended identification of goods suggested by an 17. See Perfumebay.com Inc. v. eBay Inc., 506 F.3d 1165 (9th Cir. 2007). 18. See Nike, Inc. v. Nikepal Int’l, Inc., 84 U.S.P.Q.2d 1820 (E.D. Cal. 2007). 19. See adidas-Am., Inc. v. Payless Shoesource, Inc., 546 F. Supp. 2d 1029 (D. Or.), reconsideration denied, 540 F. Supp. 2d 1176 (D. Or. 2008). 20. See Moseley v. V Secret Catalogue, Inc., 537 U.S. 418 (2003). 21. See V Secret Catalogue, Inc. v. Moseley, 558 F. Supp. 2d 734 (W.D. Ky. 2008). 22. See Last Best Beef, LLC v. Dudas, 506 F.3d 333 (4th Cir. 2007). 23. See Rosenruist-Gestao e Servicos LDA v. Virgin Enters. Ltd., 511 F.3d 437 (4th Cir. 2007). 24. See Great Seats Ltd. v. Great Seats, Inc., 84 U.S.P.Q.2d 1235 (T.T.A.B. 2007) (holding application filed by party not the actual owner of the underlying mark void ab initio). 6 Vol. 99 TMR examining attorney, 25 failing to delete “problem” goods from an application prior to the application’s publication for opposition, 26 asserting a bona fide intent to use an applied-for mark without corroborating documentation, 27 supporting an application with a “drawing” of a specimen, rather than the specimen itself, 28 refusing to respond to an examining attorney’s request for information, 29 asserting the so-called “Morehouse” defense without a registration to back it up, 30 neglecting to serve pleadings on an opponent, 31 failing to pursue discovery in a diligent manner, 32 and improperly attempting to file notices of opposition by fax. 33 The message from the Board is clear: Details matter, and parties failing to sweat them will pay the price. 25. See Grand Canyon W. Ranch, LLC v. Hualapai Tribe, 88 U.S.P.Q.2d 1501 (T.T.A.B. 2008) (finding that agreement to examiner’s suggested amendment to identification of goods to sweep in those not actually sold under mark constituted fraud). 26. See Sinclair Oil Corp. v. Kendrick, 85 U.S.P.Q.2d 1031 (T.T.A.B. 2007) (sustaining opposition based on inaccurate recitations of actual use of mark). 27. See L.C. Licensing, Inc. v. Berman, 86 U.S.P.Q.2d 1883 (T.T.A.B. 2008) (sustaining opposition based on applicant’s lack of bona fide intent to use mark). 28. See In re Chica, Inc., 84 U.S.P.Q.2d 1845 (T.T.A.B. 2007) (sustaining examining attorney’s rejection of applicant’s “temporary” specimens). 29. See In re Cheezwhse.com, Inc., 85 U.S.P.Q.2d 1917 (T.T.A.B. 2008) (sustaining rejection of application based on applicant’s refusal to provide responsive information concerning the geographic origin of its goods). 30. See Green Spot (Thailand) Ltd. v. Vitasoy Int’l Holdings Ltd., 86 U.S.P.Q.2d 1283 (T.T.A.B. 2008) (rejecting Morehouse defense in light of absence of prior registration of same mark owned by applicant). 31. See Springfield Inc. v. XD, 86 U.S.P.Q.2d 1063 (T.T.A.B. 2008) (declining to allow opposer to amend certificate of service to reflect service of notice of opposition on applicant 20 days after filing with Board). 32. See Nat’l Football League v. DNH Mgmt. LLC, 85 U.S.P.Q.2d 1852 (T.T.A.B. 2008) (denying motion for extension of discovery period based on opposer’s failure to serve written discovery or notice depositions of until last day of scheduled discovery period). 33. See Vibe Records Inc. v. Vibe Media Group LLC, 88 U.S.P.Q.2d 1280 (T.T.A.B. 2008) (dismissing opposition as untimely filed). Vol. 99 TMR 7 PART I. LIKELIHOOD OF CONFUSION By Jordan S. Weinstein ∗ A. Likelihood of Confusion Found China Healthways Institute Inc. v. Xiaoming Wang The Federal Circuit reversed a decision of the Board finding no likelihood of confusion between the opposer/appellant’s mark CHI & Design, registered for electric therapeutic massagers, and the applicant/appellee’s mark CHI+ (Stylized), in connection with electric massage apparatus. 34 The Federal Circuit found that the Board erred in dissecting the marks and comparing the residue, 35 and by declining to give significant weight to their similarities, particularly in light of the identity of goods, intended consumers, and channels of trade. Chicago Bears Football Club, Inc. v. Twelfth Man/Tennessee LLC The Board sustained an opposition against TWELFTH BEAR for jewelry, bumper stickers, beverage containers, towels, clothing and ornamental novelty buttons based on an asserted likelihood of confusion claim with the opposer’s marks BEARS and CHICAGO BEARS for football exhibition services, clothing, paper stickers and other products. 36 The Board found the parties’ marks to be similar in that each contains the term BEAR as the dominant term; the term TWELFTH designated a football fan, reinforcing the connection with the opposer’s Chicago Bears football team; that the goods are in part identical, thus decreasing the degree of similarity necessary to support a conclusion of likelihood of confusion; and that the majority of the goods are closely related, ∗ Partner, Oblon, Spivak, McClelland, Maier & Neustadt, P.C., Alexandria, Virginia; Associate Member, International Trademark Association. Author of Parts I, II and III of the 61st Year. The author wishes to thank Jeffrey Molinoff, Christopher Donahue, David Aleskow, and Kelley Clements Keller for their assistance in reviewing cases for his contribution to this publication. The author also wishes to thank Debra Bondurant, Jennifer Veazey and Mary Jane O’Loughlin for their assistance in preparing the manuscript. Finally, the author gratefully acknowledges the sounding board assistance of former T.T.A.B. Administrative Trial Judge Beth Chapman. 34. China Healthways Inst. Inc. v. Xiaoming Wang, 83 U.S.P.Q.2d 1123 (Fed. Cir. 2007). 35. Id. at 1125. See also Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669 (Fed. Cir. 1984). 36. Chicago Bears Football Club, Inc. v. Twelfth Man/Tennessee LLC, 83 U.S.P.Q.2d 1073 (T.T.A.B. 2007). 8 Vol. 99 TMR creating an inference that the channels of trade and prospective purchasers are the same. The applicant admitted and the Board found that the opposer’s marks are famous, weighing heavily in the opposer’s favor. The Board rejected the applicant’s argument that the opposer’s marks are functional, noting this argument was not the subject of a counterclaim; 37 and even if the argument were timely raised, it would not prevail because the applicant failed to show there had been widespread merchandising of products bearing the opposer’s marks by independent entities. 38 Finally, the Board rejected the perennial argument that the applicant may use and register its mark to enable consumers to demonstrate their allegiance to a team, holding that American case law does not recognize such a right. 39 It is the trademark owner who has a right to market its promotional items to those fans and to prevent others from using confusingly similar marks to market promotional items to those same fans. 40 ProQuest Information and Learning Co. v. Island The Board sustained an opposition to INQUEST for computer software used by institutions and individuals to conduct research, based on the opposer’s mark PROQUEST for information retrieval systems, computer-assisted research services, electronic storage of textual and graphic materials, and online access to reference materials. 41 The Board found the parties’ goods to be complimentary or closely related and sold through the same channels of trade to purchasers who, albeit discriminating, are unlikely to exercise more than ordinary care in purchasing the parties’ products. While the Board found that the opposer’s mark is not famous to members of the general public at large, it had achieved niche market fame. As the Board determined that the applicant intended to use its mark in the same niche, this factor weighed strongly in favor of likelihood of confusion. Comparing the marks, the Board found that in neither mark is the first syllable the dominant part of the mark, providing a similarity in commercial impressions despite dissimilarity in appearance, pronunciation and connotation. 42 Weighing all the du Pont 43 37. Contour Chair-Lounge Co. v. The Englander Co., 324 F.2d 186, 139 U.S.P.Q. 285 (C.C.P.A. 1963). 38. Compare Int’l Order of Job’s Daughters v. Lindeburg & Co., 727 F.2d 1087, 220 U.S.P.Q. 1017 (Fed. Cir. 1984). 39. Univ. Book Store v. Univ. of Wisc. Board of Regents, 37 U.S.P.Q.2d 1385 (T.T.A.B. 1994). 40. Chicago Bears Football Club, 83 U.S.P.Q.2d at 1084. 41. ProQuest Info. and Learning Co. v. Island, 83 U.S.P.Q.2d 1351 (T.T.A.B. 2007). 42. Compare China Healthways Inst. Inc. v. Xiaoming Wang, 83 U.S.P.Q.2d 1123 (Fed. Cir. 2007), admonishing the Board not to dissect the marks and compare their residue. Vol. 99 TMR 9 factors, the Board found confusion to be likely and sustained the opposition. BVD Licensing Corp. v. Rodriguez The Board sustained an a opposition to BHD & Design for various clothing articles including underwear, based upon the opposer’s mark BVD and BVD & Design, registered for undershirts, underwear and related products. 44 Here, fame was the critical factor, the opposer having demonstrated the same with evidence of use for more than 125 years, billions of dollars of sales, millions of dollars spent on advertising, and trademark recognition in several dictionary entries. Furthermore, the Board found that the goods were identical or closely related, that the overall commercial impressions of the marks are very similar and that there was a likelihood of impulse purchasing for the products. Motion Picture Association of America, Inc. v. Respect Sportswear, Inc. The Board found the applicant’s mark RATED R SPORTSWEAR for men’s and ladies’ clothing likely to be confused with the opposer’s marks R, RATED R, and R & Design for certification services involving motion pictures. 45 The Board found the opposer’s marks famous and accorded this factor dominant weight in the likelihood of confusion analysis. 46 While at first glance it might seem counterintuitive, the Board found the parties’ goods and services to be related because entities certified to use the opposer’s marks have registered the same mark for clothing and motion pictures, and because of evidence that motion pictures are promoted by t-shirts and other wearing apparel. The Board also found that the channels of trade and purchasers would be the same and would presumably be marketed to the same consumers. Fort James Operating Co. v. Royal Paper Converting, Inc. The Board sustained an opposition to an application to register a design of repeating circles applied to paper towels, paper face tissues, paper napkins and toilet paper, based upon the opposer’s registrations for repetitive interlocking circle designs 43. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973). 44. BVD Licensing Corp. v. Rodriguez, 83 U.S.P.Q.2d 1500 (T.T.A.B. 2007). 45. Motion Picture Assoc. of Am. Inc. v. Respect Sportswear, Inc., 83 U.S.P.Q.2d 1555 (T.T.A.B. 2007). 46. Recot Inc. v. Becton, 214 F.3d 1322 (Fed. Cir. 2000). 10 Vol. 99 TMR registered for paper towels. 47 The Board found that the goods are identical and sold to the same class of purchasers who are ordinary consumers not exercising a great deal of care in the purchasing decision. The Board found the applicant’s design mark highly similar in overall impression to the opposer’s design marks, all of which consist of circular-shaped designs repeated in an evenlyspaced pattern, embossed onto paper towel sheets. Finding confusion to be likely, the Board sustained the opposition and refused registration. In re 1st USA Realty Professionals, Inc. The Board affirmed the refusal to register 1st USA and Design for real estate brokerage and listing services as being likely to cause confusion with FIRST USA for banking, credit card and related services. 48 The Board found the services to be related based upon evidence of third-party registrations showing that various entities had adopted the same mark for both the applicant’s and the registrant’s services, and that both parties’services are marketed to the general public and thus would be encountered by and rendered to the same consumers, and in some cases by the same entities. Despite some specific differences in the marks, the Board determined that overall they conveyed the same commercial impression and that their identical dominant word elements outweigh the stylization differences, favoring a finding of likelihood of confusion. While the Board found that the applicant’s real estate brokerage services would be chosen by consumers with some degree of care, the Board did not consider this factor dispositive because the decision to obtain the registrant’s financial services might not be so carefully considered. Although the applicant claimed that there would be no likelihood of confusion because the marks had coexisted for over eleven years without any actual confusion, the mark of the applicant that coexisted was a prior mark with a different design and the words REALTY PROFESSIONALS, INC., rendering the Board unable to draw conclusions as to the import of lack of instances of actual confusion. Black & Decker Corp. v. Emerson Electric Co. The Board sustained consolidated oppositions against the marks DIRT HAWG and WATER HAWG for vacuum cleaners and wet/dry vacuum cleaners based upon the opposer’s family of HOG 47. Fort James Operating Co. v. Royal Paper Converting, Inc., 83 U.S.P.Q.2d 1624 (T.T.A.B. 2007). 48. In re 1st USA Realty Prof’ls, Inc., 84 U.S.P.Q.2d 1581 (T.T.A.B. 2007). Vol. 99 TMR 11 marks: HEDGE HOG, EDGE HOG, GRASS HOG, LAWN HOG, LEAF HOG and LOG HOG for power operated outdoor equipment. 49 The Board agreed with the opposer’s claim that the opposer had created a family of marks consisting of the word HOG, preceded by a word indicating or suggesting the use of the individual product to which it is applied, and that consumers would therefore view marks following this pattern as having a common origin. The Board noted further that the opposer advertises and promotes several of its HOG marks together, and emphasizes the HOG element on promotional materials and on vehicles with phrases such as “going hog wild,” “hog power” and “hog powered products.” Having established that the opposer has a family of marks, the Board proceeded to test likelihood of confusion by considering whether the applicant’s marks would be likely to be viewed as members of Opposer’s HOG family of marks. 50 The applicant argued they would not because of the spelling difference in the words HOG and HAWG. However, the Board disagreed, finding that it would be hard to distinguish the difference in pronunciation, and would be identical in connotation and commercial impression. As a result, the Board found that consumers would be likely to misremember how HOG is spelled in the opposer’s family of marks, and would believe that the applicant’s marks are part of the opposer’s family upon encountering them. Also favoring a finding of likelihood of confusion were the relatedness of the goods, the overlap in the channels of trade, the strength of the opposer’s marks and the fact that the products may be purchased without a great deal of deliberation. In re Chica, Inc. The Board affirmed a refusal to register CORAZON BY CHICA & Design in connection with various jewelry products in Class 14 based on a prior registration for CORAZON for jewelry. 51 The Board noted that the marks are used on virtually identical goods, diminishing the degree of similarity necessary to support a conclusion of likely confusion. 52 The Board determined that both marks are dominated by the word CORAZON, and that consumers would believe that by adding the phrase BY CHICA, the applicant’s mark would be viewed simply as the identification of 49. Black & Decker Corp. v. Emerson Elec. Co., 84 U.S.P.Q.2d 1482 (T.T.A.B. 2007). 50. Id. at 1491. 51. In re Chica, Inc., 84 U.S.P.Q.2d 1845 (T.T.A.B. 2007). Also discussed infra. at Part II.C.1.b. 52. Id. at 1848, citing Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874 (Fed. Cir. 1992). 12 Vol. 99 TMR the previously anonymous source of goods sold under the registered mark CORAZON. 53 As a result, the Board found that the marks’ similarities in appearance, sound, meaning and connotation overcame their differences. Nike, Inc. v. WNBA Enterprises, LLC The Board found that WNBA’s applications to register a logo composed of the letter S superimposed on a star design (one of the trademarks of the San Antonio Silver Stars professional basketball team) in connection with various goods in Classes 18 and 25, likely to be confused with the opposer’s design of a stylized S juxtaposed with a star design, with and without the word STARTER appearing underneath, which are the subject of at least 15 registrations covering clothing, sports bottles, sporting equipment and related goods and services. Although the Board rejected the opposer’s claim to a family of marks and established that the opposer’s marks had not achieved fame (although they had achieved at least some degree of recognition), it found that the goods of the parties are identical or closely related, that the channels of trade overlap, that the goods are relatively inexpensive and reached all usual classes of purchasers including ordinary consumers, that the overall similarities between the respective marks outweigh their differences and that the evidence of lack of confusion over concurrent use during a three-year period was outweighed by the other factors favoring likelihood of confusion. In re Association of the United States Army The Board affirmed a refusal to register the applicant’s ASSOCIATION OF THE UNITED STATES ARMY & Design in connection with association services promoting the interests of active members of the United States Army and others, based on a likelihood of confusion with registrations for U.S. ARMY & Design and U.S. ARMY RESERVE & Design in connection with employment services, the providing of employment and career opportunity information, interactive databases of business and career oriented information, and downloadable educational software for teaching users about the armed forces, career education and other topics. The Board rejected the applicant’s contention that the design elements in the respective marks are the dominant features, finding instead that the words U.S. ARMY and U.S. ARMY RESERVE are the dominant source-indicating features, and as a result, the marks were somewhat dissimilar in 53. Id. at 1849, citing inter alia, In re Apparel Ventures, Inc., 229 U.S.P.Q. 225 (T.T.A.B. 1986). Vol. 99 TMR 13 appearance and sound but similar in terms of connotation and overall commercial impression. The Board found the applicant’s association services to be related to the employment and career development services in the registrations, particularly in light of the fact that the itself offers employment and career-related services as shown on its website, portions of which were submitted by the Examining Attorney. The Board also found that the users and beneficiaries of the applicant’s association services overlap with the purchasers and users of goods and services identified in the registration including members of the military and their families. Therefore. the Board concluded that the trade channels and classes of purchasers would also be related. Most interesting was the Board’s determination that the similarity of the marks and services combined with the overlap in trade channels and classes of purchasers outweighed the lack of actual confusion despite the facts that the parties’ headquarters are both located in the Washington, D.C. metropolitan area and that their marks have coexisted for over 50 years. L.C. Licensing, Inc. v. Berman The Board found that the mark ENYCE to identify custom automotive accessories would likely cause confusion with ENYCE and ENYCE & Design for apparel and headwear for men, women and children. 54 In considering the du Pont factor 55 regarding the similarity or dissimilarity of the marks in terms of sound, appearance, connotation and commercial impression, the Board held that the applicant’s ENYCE mark and the opposer’s ENYCE mark and ENYCE & Design mark are identical in sound and highly similar in appearance, connotation and commercial impression. 56 This factor weighs in favor of a finding of likelihood of confusion. Taking into account the fame of the opposer’s mark, the opposer noted that from 1997 through 2006, ENYCE branded goods totaled over $600 million in sales and the products are sold in stores such as Bloomingdale’s and Nordstrom’s. 57 The Board noted that the opposer’s sales figures were not provided in a meaningful context, but the Board recognized that the opposer’s ENYCE marks are strong and have achieved recognition. The Board found that the applicant’s custom automotive accessories and the opposer’s urban lifestyle apparel and headwear are related goods, and that clothing, jewelry, automobiles, and 54. L.C. Licensing, Inc v. Berman, 86 U.S.P.Q.2d 1883 (T.T.A.B. 2008). Discussed infra, at Part III.B.1.a. 55. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973). 56. L.C. Licensing, 86 U.S.P.Q.2d 1883, at 1887. 57. Id. at 1888. 14 Vol. 99 TMR automobile accessories are integral to the urban lifestyle. The opposer provided a number of cover pages and advertisements from magazines showing recording artists and athletes wearing urban lifestyle clothing near exotic cars. Further, the opposer submitted Internet printouts from websites that showed jewelry that replicates decorative automotive wheels and rims. Finally, the opposer provided evidence that it had sponsored car shows and car show ticket giveaway contests. 58 As a result of the evidence provided by the opposer, the Board held that the purchasing public would be likely to believe that the applicant’s automotive accessories come from or are associated with the opposer because the goods are related. This factor weighs in favor of a likelihood of confusion. Further, the Board noted that the goods of both parties would be encountered by the same classes of consumers. This factor favors a finding of likelihood of confusion as well. Finally, the Board held that the applicant acted in bad faith in adopting his mark because he could not explain why he had tried to register two urban lifestyle clothing brands for custom automotive accessories and could not explain why he had chosen ENYCE as the mark for his products. Considering all the du Pont factors, 59 the Board concluded that there was a likelihood of confusion. B. Likelihood of Confusion Not Found Parfums de Coeur Ltd. v. Lazarus The Board found no likelihood of confusion between the applicant’s mark BODY MAN, with a design of a torso wearing a cape bearing the initials BM for an animated television character, and the opposer’s marks BOD MAN and BOD for fragrance products. 60 The applicant’s character is a superhero who is only a torso, with no arms, legs or head. He sees with his nipples, which are drawn as eyes; he speaks through his navel; and he captures criminals by projecting his intestines, which can act as rope or as a lasso. This character has an alter ego, and ordinary person who is also a torso, but is dressed in a shirt and tie and has a pair of glasses resting on his collar. 61 The Board disagreed with the opposer’s contention that the word elements of the marks were dominant and must be compared 58. Id. at 1889. 59. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973). 60. Parfums de Coeur Ltd. v. Lazarus, 83 U.S.P.Q.2d 1012 (T.T.A.B. 2007). 61. Id. at 1015-16. Vol. 99 TMR 15 apart from the design, finding that the applicant’s grotesque image design is very noticeable and has a strong visual impact such that the marks differ in appearance. Although the similarities in sound between the marks are much stronger than the similarities in appearance, the Board found it more likely that “consumers” of the applicant’s cartoon show would see the mark and the prominent design element, and therefore similarity in sound is not dispositive. The Board also found that the marks differed in commercial impression. The applicant’s mark conveys the impression of a grotesque superhero called BODY MAN, while the opposer’s mark BOD conveys the impression of a great physique and its BOD MAN mark conveys the impression of a man’s product called BOD or a man’s product causing one to be a great-looking or desirable man. The opposer attempted to draw similarities between the connotations because the applicant’s design element is a muscular torso similar to that of the “super studs” used to market its products. However, the Board was not persuaded because the grotesque torso prominently displayed in the applicant’s mark is far different from the figure of a good-looking desirable man in the opposer’s mark. The Board also found the opposer’s fragrance products to be dissimilar from and not competitive or overlapping with the applicant’s animated television series, observing that there is no general rule that television programs and consumer products used in them are related despite the fact that likelihood of confusion has been found in some cases involving marks used for a television series and for goods. 62 In addition, the Board rejected the opposer’s argument that the channels of trade overlap merely because the opposer advertises its products on television and the Internet, pointing out that just about everything can be advertised or promoted on television and the Internet. 63 The Board found that although the purchasing conditions and the overlap in consumers favored the opposer, they were outweighed by differences in the marks and in the goods and services. Finally, the Board determined that the opposer’s mark is not famous and that there was no evidence of instances of actual confusion—unsurprisingly, because the applicant had not yet used its mark for entertainment services. Considering all the relevant du Pont factors, 64 the Board found that the opposer had failed to prove that use of the applicant’s mark was likely to cause confusion, and it dismissed the opposition. 62. Id. at 1019. 63. Id. 64. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973). 16 Vol. 99 TMR 7-Eleven, Inc. v. Wechsler The Board dismissed an opposition to the mark GULPY for portable animal water dishes and containers, finding no likelihood of confusion with the opposer’s family of marks containing a GULP surname in connection with fountain drinks, including BIG GULP, SUPER BIG GULP, DOUBLE GULP and X-TREME GULP. The Board found that the opposer proved ownership of a family of GULP marks, which made the question on likelihood of confusion whether the applicant’s mark would likely be viewed as a member of the opposer’s GULP family of marks. 65 The Board determined that the opposer’s GULP surname gives the commercial impression that the opposer provides enormous quantities of liquid, whereas the applicant’s mark GULPY is a coined word that engenders a different commercial impression, such as a pet’s name or a puppy drinking water. As for the goods, the Board found a portable animal water dish to be distinctly different from fountain drinks and the like, and that the products would be bought under different circumstances and conditions, and not encountered by the same customers in the same purchasing situations. The Board also found that the record did not support a finding that pet food or pet accessories have been sold or promoted together with any of the opposer’s GULP trademarks, and that, therefore, recognition of the GULP surname could not be said to carry over to portable pet water dishes. As a result, the Board found the applicant’s GULPY mark differed sufficiently from the opposer’s GULP family of marks that consumers would not perceive the applicant’s mark to be a member of the opposer’s family. With respect to at least the opposer’s BIG GULP mark, the Board found that survey evidence submitted by the opposer indicated that the mark had achieved a very high degree of public recognition and renown, but that this factor alone was insufficient to establish a likelihood of confusion given the dissimilarity in the marks, the goods, and the trade channels through which they travel. Turning to the opposer’s dilution claim, the Board determined that the opposer’s BIG GULP mark had acquired the fame necessary to support the claim, but that the marks are not substantially similar—a standard above confusing similarity against which marks must be tested for purposes of determining dilution. 66 Because the marks lacked substantial similarity, and there was no evidence demonstrating an association between the 65. Black & Decker Corp. v. Emerson Elec. Co., 84 U.S.P.Q.2d 1482 (T.T.A.B. 2007). 66. Care First of Maryland, Inc. v. FirstHealth of the Carolinas, Inc., 77 U.S.P.Q.2d 1492 (T.T.A.B. 2005) (marks must be “identical or very substantially similar”); Toro Co. v. ToroHead, Inc., 61 U.S.P.Q.2d 1164 (T.T.A.B. 2001) (marks must be seen as “essentially the same”). Vol. 99 TMR 17 parties’ marks or that the applicant intended to create such an association, the fame, distinctiveness and substantially exclusive use of the opposer’s BIG GULP trademark were not sufficient to demonstrate that the applicant’s mark would cause dilution of the opposer’s BIG GULP trademark. Consequently, the Board dismissed the opposition. Ava Enterprises, Inc. v. P.A.C. Trading Group, Inc. The Board found that the marks PAC BOOSTER THE PERFECT SOUND to identify car and home audio and video equipment would not be likely to cause confusion with BOSS AUDIOSYSTEMS for automobile audio components. 67 The issue arose when the applicant filed a motion for judgment on the pleadings, 68 in which the Board accepts as true the non-moving party’s well-pleaded allegations, and grants the motion only where there is no genuine issue of material fact, and the moving party “is entitled to judgment as a matter of law.” 69 The Board found that the opposer’s mark BOSS AUDIOSYSTEMS does not contain any terms identical to those found in the applicant’s mark, PAC BOOSTER THE PERFECT SOUND. Further, BOSS and BOOOSTER have completely different meanings. Thus, the Board granted the applicant’s motion and the opposition was dismissed. PART II. EX PARTE CASES By Jordan S. Weinstein A. Court of Appeals for the Federal Circuit 1. Genericness a. Mark Found to Be Generic In re Bayer Aktiengesellschaft The Federal Circuit upheld the Board’s decision refusing registration to ASPIRINA on the ground that the mark is merely descriptive. 70 The applicant sought to register ASPIRINA for analgesic products. The Examining Attorney refused the mark as merely descriptive, contending that ASPIRINA is the Spanish word for aspirin. The Board affirmed the refusal to register, and 67. Ava Enters., Inc. v. P.A.C. Trading Group, Inc., 86 U.S.P.Q.2d 1659 (T.T.A.B. 2007). 68. Fed. R. Civ. P. 12(c). 69. Baroid Drilling Fluids Inc. v. SunDrilling Prods., 24 U.S.P.Q.2d 1048 (T.T.A.B. 1992). 70. In re Bayer Aktiengesellschaft, 488 F.3d 960 (Fed. Cir. 2007). 18 Vol. 99 TMR the applicant appealed to the Federal Circuit. Applying the “substantial evidence” standard, 71 the Federal Circuit affirmed. It found that ASPIRINA was sufficiently similar in appearance, sound and name to the generic term aspirin to be merely descriptive of analgesics. However, there was conflicting evidence tending to show that ASPIRINA was not merely descriptive. The Federal Circuit held that where, as here, two different conclusions may be warranted from the evidence of record, the Board cannot be reversed for reaching one conclusion rather than the other. 72 In a dissenting opinion, Judge Newman asserted that the majority forfeited the applicant’s rights in a valid mark, and should have applied the “clear and convincing evidence” standard rather than the lesser “substantial evidence” standard it applied. It would seem that there can be no forfeiture of rights here because Bayer filed only an intent-to-use application and claimed no common law rights. However, there was a more compelling reason for a dissent: the majority improperly applied a likelihood of confusion analysis to a generic term to determine if the mark was descriptive. In re Rosemount, Inc. The Board sustained a refusal to register REDUCER and DOUBLE REDUCER on the Supplemental Register for flow meters used for measuring flow through pipes and vortex flow meters, on the basis that they were generic. 73 To determine genericness, the Board must first determine the genus of the goods or services at issue and then determine whether the term sought to be registered is understood by the relevant purchasing public as refering primarily to that genus of goods or services. 74 The Board noted that a print-out from the applicant’s website showed that the applicant described its flow meters as having “the pipe reductions designed right into the flow meter.” Thus, the genus of the goods included flow meters containing pipe reductions, or reducers. Turning to the second inquiry, the Board noted that dictionary definitions and excerpts from third-party websites indicated that a “reducer” is a pipefitting used to join pipes of different diameters, and used the term “reducer” in connection with flow meters. Determining that the relevant public 71. In re MBNA Am. Bank N.A., 340 F.3d 1328 (Fed. Cir. 2003). 72. In re Jolley, 308 F.3d 1317 (Fed. Cir. 2002); see also Hoover Co. v. Royal Appliance Mfg. Co., 238 F.3d 1357 (Fed. Cir. 2001). 73. In re Rosemont, Inc., 86 U.S.P.Q. 2d 1436 (T.T.A.B. 2008). 74. In re Rosedale Inc., 80 U.S.P.Q. 2d 1698 (T.T.A.B. 2006), quoting In re Dial-aMattress Operating Corp., 57 U.S.P.Q.2d 1807 (Fed. Cir. 2001); itself quoting H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989 (Fed. Cir. 1986). Vol. 99 TMR 19 would understand the applicant’s marks to refer primarily to flow meters containing reducers, the Board upheld the refusal to register REDUCER based on the generic nature of the term, and upheld the refusal to register DOUBLE REDUCER on the Supplemental Register for failure to provide a disclaimer of the generic term REDUCER. 2. Identification of Goods a. Identification of Goods Found to Be Indefinite In re Omega SA The Board upheld a refusal to register a mark because a term in the identification of goods was indefinite. 75 The applicant sought to register AQUA TERRA for goods in Class 14, including chronographs. The Examining Attorney required amendment to “chronographs for use as watches” because chronographs could also include goods in Class 9. The applicant appealed, the Board affirmed, and so did the Federal Circuit. The international classification system does not prohibit the imposition of additional national requirements. 76 It is within the USPTO’s authority to develop more particular requirements than those in the international classification system. 77 The USPTO’s requirement here was not so extreme or unreasonable as to warrant judicial intervention, so the Federal Circuit affirmed. B. Other Courts 1. U.S. Court of Appeals for the Fourth Circuit a. Funding—Lack of Appropriation for Specific Trademarks Last Best Beef, LLC v. Dudas The year 2008 saw the U.S. Court of Appeals for the Fourth Circuit undoing the undoing of Section 206 of the 2006 Appropriations Act 78, which itself undid federal trademark protection for THE LAST BEST PLACE. 79 To recap, Section 206 75. In re Omega SA, 494 F.3d 1362 (Fed. Cir. 2007). 76. Trademark Manual of Examing Procedure (TMEP) § 1401.02(c). 77. Id. 78. The Science, State, Justice, Commerce, and Related Agencies Appropriations Act of 2006; Pub. L. No. 109-108, 119 Stat. 2290. 79. Last Best Beef, LLC v. Dudas, 506 F.3d 333 (4th Cir. 2007). 20 Vol. 99 TMR included a provision prohibiting the USPTO from using any funds to register any phrase that included THE LAST BEST PLACE, effectively invalidating two registrations and nullifying six applications owned by a company using the phrase as a trademark. The company sued the USPTO in the U.S. District Court for the Eastern District of Virginia, and sought and received summary judgment that Section 206 of the Appropriations Act of 2006 was invalid legislation. 80 The USPTO appealed to the Fourth Circuit Court of Appeals, and the Fourth Circuit reversed. Congress has the power to amend the substantive law through an appropriations rider but it must do so clearly. 81 A repeal or modification of an act by implication requires clear intent on behalf of Congress. 82 The Fourth Circuit found that Congress can express clearly its intent to amend the U.S. Trademark (Lanham) Act of 1946 by creating an irreconcilable conflict, 83 and that it did so here. The USPTO simply cannot comply with both the Lanham Act and Section 206. Part of the rationale for the District Court’s decision was to prevent the Lanham Act from turning into a statute riddled with all kinds of exceptions to registration. However, the Fourth Circuit pointed out that the Lanham Act already contained such exceptions, such as SMOKEY BEAR, 84 GIRL SCOUTS OF AMERICA, 85 LITTLE LEAGUE BASEBALL, 86 and UNITED STATES OLYMPIC COMMITTEE. 87 While it may be inadvisable for Congress to riddle the Lanham Act with exceptions, that decision is for Congress to make, not the courts; and it is not unconstitutional for Congress to do so. The Fourth Circuit reversed and remanded to the Eastern District of Virginia. 80. Last Best Beef, LLC v. Dudas, 455 F. Supp. 2d 496 (E.D. Va. 2006), reported previously at 98 TMR 1, 51 (2008). 81. Robertson v. Seattle Audobon Soc’y, 503 U.S. 429 (1992). 82. Tenn. Valley Auth. v. Hill, 437 U.S. 153 (1978). 83. Posadas v. Nat’l City Bank, 296 U.S. 497 (1936). 84. See 18 U.S.C. § 711 (2000). 85. See 36 U.S.C. § 80305 (2000). 86. See id. at § 130506. 87. See id. at § 220506(a). Vol. 99 TMR 21 C. Trademark Trial and Appeal Board 1. Specimen of Use a. Specimen of Use Was Acceptable In re Royal Body Care, Inc. In a third specimen case, the Board reversed the Examining Attorney’s holding that the applicant’s specimen was an improper mutilation of its mark. 88 Its application for NANOCEUTICAL for dietary and nutritional supplements included a specimen that showed the mark as part of the phrase RBC’s NANOCEUTICAL. The Examining Attorney refused to accept the specimen, contending that it was an improper mutilation of the mark on the specimen. The applicant appealed. Determining mutilation of a specimen calls for a judgment as to whether the designation comprises a separate and distinct trademark in and of itself. 89 Here, the words RBC and NANOCEUTICAL were not joined in any physical way. The Board found that RBC serves the function of identifying the line of products emanating from the company RBC rather than a single product identified by a unitary mark. 90 Therefore, NANOCEUTICAL created a separate commercial impression apart from the house mark RBC, and the specimen was found acceptable. In re Valenite, Inc. A second website specimen fared better. 91 The applicant sought to register VALPRO in connection with tools for power operated metal cutting machines, cutting inserts and tool holders, and component parts. The Examining Attorney refused the applicant’s webpage as a specimen of use, contending that the mark was not sufficiently associated with the goods and that there was insufficient ordering information to qualify as an acceptable specimen. The applicant submitted a webpage as a specimen, with a picture of cutting inserts directly to the left of the mark VALPRO. The page contained a link to an online catalog under the heading “Service and Support,” the telephone numbers for the applicant’s customer service and technical support departments, and an instant link to a technical resources center. The Board found the applicant’s webpage to be an acceptable specimen. 88. In re Royal Body Care, Inc., 83 U.S.P.Q.2d 1564. 89. Institute National des Appellations d’Origine v. Vintners Int’l Co., 958 F.2d 1574 (Fed. Cir. 1992). 90. See In re Emco, Inc., 158 U.S.P.Q. 622 (T.T.A.B. 1968). 91. In re Valenite, Inc., 84 U.S.P.Q.2d 1346 (T.T.A.B. 2007). 22 Vol. 99 TMR VALPRO was used in a manner such that purchasers would recognize it as a trademark. Sufficient information appeared on the webpage for a customer to order the applicant’s product, and the Board noted that with specialized industrial products like those of the applicant, customers would well need technical assistance to order the goods. The mere fact that the website did not include the words “add to shopping cart,” “click here” or “call now” did not make the webpage per se ineligible to be a specimen. In re ICE Futures U.S., Inc. A refusal under Lanham Act Sections 1, 2, 3 and 45 92 that the specimens do not show service mark use was reversed when it was found that the mark shown was arbitrary, was associated exclusively with the applicant’s financial services, and the services referenced on the specimens were integral and essential components of the services listed in the application. 93 The Examining Attorney had refused registration for the marks SUGAR NO. 14, SUGAR NO. 11 and COTTON NO. 2 (SUGAR and COTTON disclaimed) for financial services, namely, futures exchange and related commodity trading services, on the basis that the terms shown on the specimens were the descriptive names of the contracts traded on the applicant’s commodity and exchange services, and therefore did not serve as source indicators. The applicant’s specimens were website printouts that showed specifications for the commodities contracts traded in connection with its futures exchange and commodity trading services. Considering the marks in context, the Board found that they were arbitrary, and that purchasers associated them exclusively with the applicant’s services. Moreover, the Board found that the contracts referenced on the specimens were integral and essential components of futures exchange and related commodity trading services rendered by the applicant. Based on these findings, the Board held that the specimens showed valid use of the marks in connection with the rendering of the services, and it reversed the refusals to register. 92. 15 U.S.C. §§ 1051, 1052, 1053, 1127. 93. In re ICE Futures U.S., Inc., 85 U.S.P.Q.2d 1664 (T.T.A.B. 2008); also discussed infra, at Part II.C.8.a. Vol. 99 TMR 23 b. Specimen of Use Was Not Acceptable In re Osterberg The Board affirmed an Examining Attorney’s decision refusing to accept a website printout as a proper specimen of use. 94 The applicant applied for the mark CondomToy for condoms. With its Statement of Use, the applicant filed a printout of a webpage, on which the mark was depicted in the phrase, “that’s why INSPIRAL is also called a CondomToyTM condom.” The Examining Attorney refused the specimen as not constituting a display associated with the goods. 95 To determine whether a specimen is a display associated with the goods, the Board must consider whether the mark is used where the goods could be ordered, 96 and whether the mark is displayed in a way that the consumer can easily associate the mark with goods. 97 Here, the Board found the mark to appear in text and to convey the commercial impression of a descriptive term for condoms being sold under the trademark INSPIRAL. The webpage included no telephone number or online process for ordering the goods; and although the words “where to buy” appeared on the webpage, the record included no indication of what happened when the link was clicked. Without more evidence, the Board considered the webpage to be only an advertisement for the condoms and so it affirmed the refusal to register. In re Chica, Inc. In our final specimen case of the year, the Board rejected an applicant’s specimen, which appeared to be a drawing of the goods bearing the mark. 98 The applicant applied to register CORAZON BY CHICA & Design in connection with various jewelry products in Class 14. With the use-based application, the applicant submitted as a specimen of use a drawing of what appeared to be a bracelet with a charm bearing the mark. The Examining Attorney refused registration on the ground that the specimen was temporary in nature and not actually in use. The Examining Attorney maintained that the specimen is not the actual jewelry being sold in the marketplace, but a mere representation of the goods that may or not be in use. The applicant argued that the 94. In re Osterberg, 83 U.S.P.Q.2d 1220 (T.T.A.B. 2007). 95. 37 C.F.R. §2.56. 96. See Land’s End, Inc. v. Manbeck, 797 F. Supp. 311 (E.D. Va. 1992). 97. See In re Dell, Inc., 71 U.S.P.Q.2d 1725 (T.T.A.B. 2004). 98. In re Chica, Inc., 84 U.S.P.Q.2d 1845 (T.T.A.B. 2007). 24 Vol. 99 TMR specimen comprised a representation of an actual piece of jewelry. However, the Board sided with the Examining Attorney. A use-based application must include a specimen, 99 which is defined as a label, tag or container for the goods or a display associated with the goods. 100 A photocopy or reproduction of a specimen of the mark as actually used is acceptable. 101 However, a picture of a mark, such as an artist’s drawing or printer’s proof that is not actually used on or in connection with the goods in commerce, is not an acceptable specimen. 102 The applicant’s artist’s rendition of its goods bearing the mark was not an acceptable specimen because it did not show the mark as actually used on or in connection with the goods. 103 Because the applicant failed to explain how (or if) the drawing was used in connection with the goods, the Board affirmed the Examining Attorney’s refusal to register. In re Supply Guys, Inc. The Board refused registration of three applications for LEADING EDGE TONERS for toner, toner cartridges, ink sticks, and various components for laser toner cartridges for failure to submit acceptable specimens of use. 104 In each application, the applicant submitted as specimens a Federal Express shipping label showing a “ship from address” with the term LEADING EDGE TONERS above the address, as well as screen shots from its website where LEADING EDGE TONERS appeared in several locations. The Board held that use of LEADING EDGE TONERS in the return address of the shipping label constituted trade name use but not trademark or service mark use. 105 The shipping labels used the term as part of the applicant’s complete return address, with no distinctive stylization other than the use of uppercase letters. Therefore, the Board found that the labels did not demonstrate trademark use for the goods in the applications. 106 As for use of LEADING EDGE TONERS on the applicant’s website, the Board noted that the mark used on these specimens 99. 15 U.S.C. § 1051. 100. 37 C.F.R. § 2.56(b)(1). 101. Id. at § 2.56(c). 102. TMEP § 904.04. 103. Id. 104. In re Supply Guys, Inc., 86 U.S.P.Q.2d 1488 (T.T.A.B. 2008). 105. In re Stewart Sandwiches Int’l, Inc., 220 U.S.P.Q. 93 (T.T.A.B. 1983). 106. See, e.g., In re Walker Process Equip., Inc., 233 F.2d 329 (C.C.P.A. 1956); In re Lyndale Farm, 186 F.2d 723 (C.C.P.A. 1951); In re The Pa. Fashion Factory, Inc., 588 F.2d 1343 (C.C.P.A. 1978); and In re Reinforced Molding Corp., 152 U.S.P.Q. 820 (T.T.A.B. 1967). Vol. 99 TMR 25 appeared to be an indication of the applicant’s online services, but not an indication of the source of the goods. 107 While the screen shots included a picture of the relevant goods as well as the necessary ordering information, the term appeared in phrases where trademarks of third parties appeared to identify the toners and other products. 108 Distinguishing Land’s End, Inc. v. Manbeck, 109 the Board noted that the applicant’s use of LEADING EDGE TONERS points to the applicant being a distributor of the goods of others. 110 While a mark may function as both a trademark and a service mark, here, the Board found that the mark appeared to function only as a service mark. As a result, the Board upheld the Examiner's refusal to register the mark. 2. Identification of Goods a. Identification of Goods Was Acceptable In re Thortech, Inc. The Board reversed a refusal to register a mark based on the indefiniteness of the identification of goods because the disputed term should be read to have its ordinary meaning. 111 The applicant sought to register CHATEAU RESORT in connection with “park trailers” in Class 12. The Examining Attorney refused registration, finding the identification of goods to be indefinite because “park trailers” could identify recreational vehicles in Class 12 or mobile homes in Class 19. The applicant appealed, submitting third-party web pages and publications, an industry association website and copies of state laws showing that “park trailers” is a term of art readily understood to indicate a type of recreational vehicle. Based on the evidence, the Board reversed the refusal to register. A term in an identification of goods will be acceptable if it describes the goods so that an English speaker can understand them, meets the standards (although not necessarily the language) in the Acceptable Identification of Goods And Services Manual, is not a class heading, and is in the correct class. 112 The USPTO gives 107. 15 U.S.C. §1127. 108. In re Supply Guys, Inc., 86 U.S.P.Q.2d 1488, 1493 (T.T.A.B. 2008). 109. 797 F. Supp. 311 (E.D. Va. 1992). 110. In re Supply Guys, Inc., 86 U.S.P.Q.2d at 1495, citing Land’s End, Inc. v. Manbeck, 797 F. Supp. 311 (E.D. Va. 1992), In re Dell, Inc., 71 U.S.P.Q.2d 1725 (T.T.A.B. 2004), and In re Valenite, Inc., 84 U.S.P.Q.2d 1346 (T.T.A.B. 2007). 111. In re Thortech, Inc., 85 U.S.P.Q.2d 1474 (T.T.A.B. 2007). 112. TMEP § 1402.01. 26 Vol. 99 TMR deference to the language chosen by the applicant. 113 The Board found that the evidence made clear that “park trailer” is a type of recreational vehicle, which unambiguously places the term in Class 12. The mere fact that park trailers may be used in a manner similar to mobile homes does not render the common commercial name indefinite for purposes of classification. The Board distinguished this case from In re Omega, 114 in which the disputed term “chronographs” was ambiguous for registration purposes as it included both watches and time recording devices. In this case, “park trailers” are unequivocally recreational vehicles. Furthermore, the applicant in Omega admitted that “chronographs” included goods in two classes. However, this applicant made no such admission. Therefore, the Board held that the term “park trailers” is not too broad for classification purposes, and reversed the refusal to register. 3. Goods in Trade a. Goods Identified Were Not Goods in Trade In re MGA Entertainment, Inc. The Board refused to register an application for a trapezoidal configuration for cardboard boxes on the ground that the goods were not goods for sale in commerce. 115 The applicant sought to register the design of a trapezoidal cardboard box in connection with trapezoidal cardboard boxes for toys, games, playthings, and related products. Registration was refused on the basis that the applicant’s goods are goods in trade under Sections 1, 2 and 45 of the Lanham Act. 116 The Board affirmed. Collateral products that function to promote an applicant’s primary goods, and that have more than a merely incidental function in relation to the primary goods, may constitute goods in trade, the use of a trademark on which is registrable. 117 However, goods that are only necessary tools in the sale of the primary goods do not constitute the goods in trade that can be the subject of trademark protection. 118 In this case, the applicant does not manufacture boxes, and it does not sell boxes as separate commodities in trade. Therefore, consumers are likely to view 113. Id. 114. 83 U.S.P.Q.2d 1541. 115. In re MGA Entm’t, Inc., 84 U.S.P.Q.2d 1743 (T.T.A.B. 2007). 116. 15 U.S.C. §§ 1051, 1052, 1127. 117. In re Snap-On Tools Corp., 159 U.S.P.Q. 254 (T.T.A.B. 1968). 118. Ex parte Bank of Am. Nat’l Trust and Savings Assoc., 118 U.S.P.Q. 165 (Comm'r Pats. 1958). Vol. 99 TMR 27 these boxes as point-of-sale containers for the actual goods, rather than separate goods in and of themselves. Consequently, the Board affirmed the refusal to register. 4. Geographic Descriptiveness a. Mark Found Geographically Descriptive In re Spirits of New Merced, LLC The Board upheld a refusal to register YOSEMITE BEER in connection with beer, as primarily geographically descriptive. 119 The applicant argued that the beer and the applicant come not from Yosemite National Park, but from Merced, California, approximately 80 miles away. As a result, the public would not make an association between the place and the goods that are identified by the mark. 120 However, the Board rejected this argument, finding that Merced promotes itself as a “gateway to Yosemite” and therefore the public was likely to make a goodsplace association. 121 It is interesting to compare this conclusion to last year’s In re South Park Cigar decision, 122 in which the Board found the applicant’s YBOR GOLD mark to be geographically misdescriptive because the applicant was located in the city of Tampa, Florida, but not within Tampa’s Ybor City neighborhood. In re Cheezwhse.com, Inc. In a decision on geographic descriptiveness and deceptiveness, the Board was able to make use of the applicant’s failure to answer the Examining Attorney’s inquiry regarding the geographic origin of its goods in three versatile ways. 123 What was unusual about this case is that the Board used the applicant’s failure to answer the inquiry to create two conflicting presumptions. The applicant applied to register NORMANDIE CAMEMBERT for cheese in Class 29. In the initial Office action, the Examining Attorney refused registration on the basis that the mark is primarily geographically descriptive of the goods, 124 and in the alternative, that the mark is primarily geographically 119. In re Spirits of New Merced, LLC, 85 U.S.P.Q.2d 1614 (T.T.A.B. 2007). 120. See 15 U.S.C. § 1052(e)(2); In re Save Venice New York, Inc., 259 F.3d 1346 (Fed. Cir. 2001). 121. In re Spirits of New Merced, LLC, 85 U.S.P.Q.2d 1614, 1620-21 (T.T.A.B. 2007). 122. In re S. Park Cigar, Inc., 82 U.S.P.Q. 1507 (T.T.A.B. 2007), reported at 98 TMR 1, 13 (2007). 123. In re Cheezwhse.com, Inc., 85 U.S.P.Q.2d 1917 (TTAB 2008). 124. 15 U.S.C. § 1052(e)(2). 28 Vol. 99 TMR deceptively misdescriptive of the goods. 125 The Examining Attorney also inquired whether the goods in the application originated from Normandy. In its response, the applicant failed to answer or even acknowledge the inquiry regarding the geographic origin of the goods. The next Office action made the refusals final, and also refused registration for failure to respond to the requirement for information about the geographic origin of the goods. 126 The applicant responded by appealing the three refusals. The applicant’s brief contained no information regarding the geographic origin of the goods, or even an acknowledgement of the Examining Attorney’s inquiry. 127 The Board affirmed the refusal to register for failing to answer the Examining Attorney’s inquiry, and held that the applicant’s failure to respond with information created two opposite presumptions: that the applicant's goods originate or will originate in or from the place named in the mark for the Section 2(e)(2) refusal, and that the applicant's goods do not or will not originate in or from the place named in the mark for the alternative Section 2(e)(3) refusal. Applying each presumption to the facts in evidence, the Board also refused registration both because the mark is primarily geographically descriptive of the goods and because the mark is primarily geographically deceptively misdescriptive. Applying the tests for geographic descriptiveness 128 and for geographic misdescriptive deceptiveness, 129 the Board was able to make additional presumptions from the applicant’s failure to answer the Examining Attorney’s inquiry to insure that each test was satisfied. Regarding geographic descriptiveness, the Board presumed that there was a goods/place association between the mark and the French region of Normandy because of the presumption that the applicant’s goods originate from Normandy. 130 For geographic misdescriptive deceptiveness, the Board made the additional presumption that purchasers are likely to believe that the goods originate in Normandy, when they do not. The Board’s creative and versatile use of the applicant’s failure to answer the Examining Attorney’s inquiries should be a 125. Id. § 1052(e)(3). 126. 37 C.F.R. § 2.61(b). 127. Because this would have been factual information, submitting it as part of the applicant’s trial brief would have been untimely in any case. See 37 C.F.R. § 2.142(d); T.B.M.P. § 1207.01. 128. In re Société Générale des Eaux Minérales de Vittel S.A., 3 U.S.P.Q.2d 1450 (Fed. Cir. 1987). 129. In re Cheezwhse.com, Inc., 85 U.S.P.Q.2d 1917, 1919 (TTAB 2008). 130. In re JT Tobacconists, 59 U.S.P.Q.2d 1080 (T.T.A.B. 2001). Vol. 99 TMR 29 warning to all practitioners that the failure to answer such an inquiry may be used by the Board in multiple, unanticipated ways. 5. Primarily Merely a Surname a. Mark Found Not to Be Primarily Merely a Surname In re Yeley The Board reversed a surname refusal using what may come to be known as the “euphonic initials” doctrine. 131 The applicant sought to register J.J. YELEY for a wide range of consumer products. The mark was refused as primarily merely a surname. Reviewing the five-factor test for determining whether a mark is primarily merely a surname, 132 the Board reversed the refusal to register. The Board found that YELEY appeared only 147 times in a nationwide surname directory, which indicated that the surname was rare. Based upon a declaration from the applicant that detailed the notoriety of NASCAR racing and how racer’s names are viewed as brands, the Board determined that the primary significance of J.J. YELEY is the racecar driver rather than the surname Yeley. The twist came when the Board considered whether the mark has the “look and sound” of a surname. Noting that this is a subjective factor, the Board established that J.J. Yeley does not have the look and sound of a surname because “a segment of American society uses euphonic or pleasant-sounding initials rather than given names. Based on this factor, the Board found that the mark had the “look and sound” of a personal name rather than a surname. Based on the entire record, the Board concluded that J.J. YELEY is not primarily merely a surname. The Board distinguished the Court of Customs and Patent Appeals’s holding in In re I. Lewis Cigar Manufacturing Co. 133 that adding initials to the mark S. SEIDENBERG did not change the character of the mark as being primarily merely a surname. In that case, there was no indication that the mark identified a particular individual, so the initial merely reinforced the mark’s surname significance. Further, the Board noted that there is no per se rule that the addition of initials makes a mark primarily merely a surname. It can be argued that perhaps S. SEIDENBERG was not as euphonic as J.J. YELEY. 131. In re Yeley, 85 U.S.P.Q.2d 1150 (T.T.A.B. 2007). 132. In re Benthin Mgmt. GmbH, 37 U.S.P.Q.2d 1332 (T.T.A.B. 1995). 133. 205 F.2d 204 (C.C.P.A. 1953). 30 Vol. 99 TMR b. Mark Found to Be Primarily Merely a Surname In re Piano Factory Group, Inc. Euphonc-sounding initials may help prevent a term from being perceived as a surname, but adding & SONS to VOSE did not prevent the latter term from being perceived as a surname. 134 An application for VOSE & SONS in connection with pianos was refused registration on the basis that VOSE is primarily merely a surname. The Board first determined that the primary significance of the term VOSE would be as a surname. The Board rejected the applicant’s argument that VOSE would not be perceived as a surname because the name is rare, holding that VOSE would have surname significance to the purchasing public for pianos whether or not it is so regarded. The Board found unimportant the fact that no one presently connected with the applicant had a surname Vose, finding that this fact failed to establish one way or the other whether the mark would be perceived as a surname. 135 The Board also rejected the applicant’s argument that the name’s historical connection with the founder of the company, James Whiting Vose, established either that the primary significance of VOSE was to the particular individual and piano maker, or that Mr. Vose was a widely known historical figure whose name would be perceived as a personal name rather than primarily merely a surname. 136 The Board turned next to the question of whether the mark VOSE & SONS as a whole is primarily merely a surname. The Board analogized & SONS in the mark to the expression & CO. in the mark S. SEIDENBERG & CO., agreeing that the term cannot be held to distinguish or relate to anything except a surname. 137 In this case, & SONS reinforces that VOSE is the surname of the son’s parents. Establishing that the mark was previously registered and expired insufficient justification to register the mark again in light of substantial evidence of the mark’s surname significance, the Board affirmed the refusal to register. In re Thermo LabSystems, Inc. The Board affirmed a refusal to register WATSON for computer software used in laboratory information management, holding that the mark’s significance as an historical name did not 134. In re Piano Factory Group, Inc., 85 U.S.P.Q.2d 1522 (T.T.A.B. 2006). 135. In re Gregory, 70 U.S.P.Q.2d 1792 (T.T.A.B. 2004). 136. In re Piano Factory Group, Inc., 85 U.S.P.Q.2d at 1525, and cases cited therein. 137. In re I. Lewis Cigar Mfg. Co., 205 F.2d 204 (C.C.P.A. 1953). Cf. In re Yeley, supra, Part II.C.5.a. Vol. 99 TMR 31 overcome its surname significance. 138 When the mark was refused registration as being primarily merely a surname, 139 the applicant argued that WATSON is an historical name 140 and would be perceived by the purchasing public as designating James D. Watson, who co-discovered the double helix shape of DNA, instead of being perceived as a surname. The Board found that the evidence of record failed to establish that Watson’s achievements were so remarkable or significant that he is an historical figure. Instead, there was evidence of numerous other Watsons with notable accomplishments, including Thomas A. Watson, coinventor of the telephone with Alexander Graham Bell, industrialist James J. Watson of IBM, and others. As a result, the Board found that the significance of WATSON as an historical name was not strong enough to overcome its mere surname significance and affirmed the refusal to register. 6. Geographic Deceptiveness a. Mark Found to Be Geographically Deceptive In re Beaverton Foods Inc. The Board upheld a refusal to register NAPA VALLEY MUSTARD COMPANY on the ground that it was primarily geographically deceptive, finding that such marks fail to qualify for a grandfather clause in NAFTA, allowing registration of geographically misdescriptive marks that predated it. 141 The applicant filed an application for NAPA VALLEY MUSTARD COMPANY for mustard. The applicant admitted its goods do not originate from the Napa Valley of California and the Examining Attorney refused the mark as geographically deceptive. The applicant appealed, asserting that its claim of acquired distinctiveness entitled it to registration despite the geographic deceptiveness of its mark. By way of background, when the North American Free Trade Agreement was enacted, it proscribed registration for marks that were primarily geographically deceptively misdescriptive, even though such marks were registrable prior to the passage of NAFTA upon a showing of acquired distinctiveness. However, the enabling amendments to NAFTA contained a grandfather clause 138. In re Thermo LabSystems, Inc., 85 U.S.P.Q.2d 1285 (T.T.A.B. 2007). 139. 15 U.S.C. § 1052(e)(4). 140. See Lucien Piccard Watch Corp. v. Since 1868 Crescent Corp., 314 F. Supp. 329 (S.D.N.Y. 1970) (DaVinci not primarily merely a surname as it primarily connotes Leonardo DaVinci). 141. In re Beaverton Foods, Inc., 84 U.S.P.Q. 2d 1253 (T.T.A.B. 2007). 32 Vol. 99 TMR for geographic terms that were in use or registered prior to the effective date of NAFTA, December 8, 1993. 142 The applicant asserted that its mark was entitled to registration under this grandfather clause because the mark became distinctive prior to NAFTA’s effective date. The Board rejected the argument, holding that the grandfather clause was meant to provide a way to register those marks that would have been registerable upon proof of acquired distinctiveness under Section 2(f) 143 prior to the enactment of NAFTA. But Section 2(f) states clearly that marks that are geographically deceptive, and hence unregistrable under Section 2(a), 144 are ineligible for registration under Section 2(f). Therefore, the Board held that the grandfather exception applies only to primarily geographically misdescriptive marks, not to geographically deceptive marks. Examining the evidence and applying the factors for determining geographic deceptiveness, 145 the Board affirmed the refusal to register. 7. Geographic Deceptive Misdescriptiveness a. Mark Found to Be Geographically Deceptively Misdescriptive In re Spirits International N.V. Nearly 15 years after the application was filed, the Board affirmed a refusal to register MOSKOVSKAYA for vodka on the ground that the mark is primarily geographically deceptively misdescriptive under Section 2(e)(3) of the Lanham Act. 146 Applying both the doctrine of foreign equivalents and the California Innovations test for determining whether a mark is primarily geographically misdescriptive, the Board concluded that an appreciable number of relevant consumers would be deceived into believing that the applicant’s vodka was made in Moscow based on the mark’s English meaning, which is “of or from Moscow.” 147 The heart of the dispute focused on the propriety of applying the doctrine of foreign equivalents—where foreign words from common, modern languages are translated into English 142. 15 U.S.C. § 1052(f). 143. Id. § 1052(f). 144. Id. § 1052(a). 145. In re Cal. Innovations, Inc., 329 F.3d 1334 (Fed. Cir. 2003). 146. In re Spirits Int’l N.V., 86 U.S.P.Q.2d 1078 (T.T.A.B. 2008). 147. Id. (citing In re Cal. Innovations, Inc., 329 F.3d 1334 (Fed. Cir. 2003)). Vol. 99 TMR 33 during trademark examination—to a Russian-language term incorporating a place name. An Examining Attorney meets the burden of establishing prima facie that a mark is primarily geographically misdescriptive upon showing “that (1) the mark’s primary significance is a generally known geographic location; (2) the relevant public would be likely to believe that the goods originate in the place named in the mark when in fact the goods do not come from that place; and (3) the misrepresentation is a material factor in the consumer’s decision.” 148 The applicant asserted that none of these elements were satisfied. Although there was no dispute that MOSKOVSKAYA means “of or from Moscow” in English, the applicant disagreed that the term’s primary meaning is geographic as consumers are unlikely to translate the mark prior to purchasing itsvodka. As such, the term is arbitrary and the geographic meaning would be lost on the public. 149 Naturally then, the applicant claimed that there can be no deception as to the geographic origin of the vodka and such origin does not play a material role in one’s decision to purchase. Relying on the Federal Circuit’s Palm Bay decision, 150 the applicant asserted that the doctrine should only be applied in cases where the ordinary American purchaser would likely “stop and translate [the term] into its English equivalent.” 151 The Board disagreed, holding, under In re Thomas, 152 that for purposes of applying the foreign equivalents doctrine, an “ordinary American purchaser” is one who is knowledgeable in the foreign language. Because Russian is a common, modern language, the Board held that an appreciable number of Americans who purchase vodka know or are familiar with the language and will therefore automatically translate the applicant’s mark absent a particular reason not to. 153 The applicant argued unsuccessfully that the Thomas decision is inconsistent with Palm Bay because it incorporates within the definition of “ordinary American purchaser” the qualifier “who is knowledgeable in the foreign language.” 154 The Board rejected the applicant’s arguments with a lengthy analysis of Palm Bay, and with the policy argument that a contrary holding would undermine 148. Id. at 1081. 149. Id. 150. Id. at 1082 (citing Palm Bay Import, Inc. v. Veuve Clicquot Ponsardin Maison Fondée en 1772, 396 F.3d 1369, 73 U.S.P.Q.2d 1689 (Fed. Cir. 2005). 151. Id. 152. 79 U.S.P.Q.2d 1021 (T.T.A.B. 2006). 153. Id. 154. Id. 34 Vol. 99 TMR the very interest the doctrine of foreign equivalents was designed to protect: preventing foreign language speakers in the United States from being deceived as to the geographic source of a product. 155 The applicant introduced mall intercept survey evidence to rebut the assertion that consumers will automatically translate the MOSKOVSKAYA mark, but the Board dismissed it as having little or no probative value. The Board criticized the survey by claiming, for example, that there was an improper “universe” because the survey failed to screen for Russian speakers, the survey did not specifically test for whether the mark would be translated, and it did not ascertain whether geographic origin was material to the decision to purchase. 156 The Board’s lengthy discussion notwithstanding, it is difficult to reconcile how In re Thomas and Palm Bay Imports apply the foreign equivalents doctrine. 157 In the case of a mark in a modern foreign language, the former line of cases presumes the purchaser will automatically translate the mark unless there is some reason not to do so, while the latter requires a showing, before applying the doctrine, that ordinary American purchasers would be likely to stop and translate the mark when purchasing. The Board distinguished Palm Bay, explaining that the Federal Circuit refused to apply the foreign equivalents doctrine because it had been applied inconsistently by the Board, not because it had been applied improperly. Nevertheless, the fact is that, in Palm Bay, the Federal Circuit refused to apply the doctrine to a word in a modern foreign language. Perhaps one may reconcile In re Thomas with Palm Bay Imports by asking whether the “ordinary American purchaser” test for determining whether the doctrine of foreign equivalents applies, can be distinguished from the “relevant public” test for determining whether a mark is primarily geographically deceptively misdescriptive. For example, in this case, while the “ordinary American purchaser” could be one familiar with the Russian language for purposes of applying the doctrine of foreign equivalents, it could also be true that the “relevant public” for purchasing vodka might contain only a very small number of consumers familiar with Russian, and thus a survey conducted like the applicant’s in this case could be evidence that the relevant public would be unlikely to believe that the goods originate in the place named in the mark. 155. Id. at 1083. 156. Id. 1088-89. 157. Interestingly, both cases involved French-language marks. Vol. 99 TMR 35 The Board concluded that the foreign equivalents doctrine was properly applied in this case, that relevant consumers would readily translate the mark into Russian, and that the primary meaning of the applicant’s MOSKOVSKAYA mark is geographic. Thus, the Board affirmed the Examining Attorney’s decision to refuse registration on the ground that the mark is primarily geographically misdescriptive. Corporación Habanos S.A. v. Guantanamera Cigars Co. The Board sustained an opposition to the mark GUANTANAMERA on the ground that it is primarily geographically deceptively misdescriptive for “tobacco, namely cigars.” 158 For a mark to be primarily geographically deceptively misdescriptive, its primary significance must be a generally known geographic location, the consuming public must be likely to believe the place identified by the mark indicates the origin the goods, when the goods in fact do not come from there, and the misrepresentation must be a material factor in a consumer’s decision to purchase the goods. 159 The opposer demonstrated that GUANTANAMO is the name of a city in Eastern Cuba as well as the name of the province in which that city is located, and that GUANTANAMERA is translated from Spanish to mean “female person from Guantanamo.” The Board determined that Guantanamo is a geographic location in Cuba known to the relevant public. The applicant’s evidence concerning colloquial meanings of the term GUANTANAMERA was considered but rejected by the Board because of lack of proof that the colloquial meanings would be understood by Spanish-speaking consumers of the applicant's goods, as opposed to Cuban-Americans. Based upon evidence that the applicant’s early packaging bearing the mark included a false designation of origin as “Guantanamera, Cuba,” as well as statements that the goods contained “Genuine Cuban Tobacco” and were “Hecho Por Cubanos 100%” (“Made By Cubans 100%”), the Board found that the applicant was promoting a false goods-place association, suggesting that it intended consumers of its goods to associate them with Cuba. 160 Noting that the evidence of record established Cuba’s reputation for high-quality cigars, the Board found that the goods-place association created by the applicant’s mark would be a material consideration in a consumer’s decision to purchase the 158. Corporación Habanos S.A. v. Guantanamera Cigars Co., 86 U.S.P.Q.2d 1473 (T.T.A.B. 2008). 159. 15 U.S.C. §1052(e)(3). See also Cal. Innovations, Inc., 329 F.3d 1334, 66 U.S.P.Q.2d 1853 (Fed. Cir. 2003). 160. Corporación Habanos, 86 U.S.P.Q.2d 1473. 36 Vol. 99 TMR applicant’s goods. Having met all three elements of the geographically deceptively misdescriptive test, the Board upheld the Opposition and refused registration. 8. Descriptiveness a. Mark Found Not to Be Descriptive In re ICE Futures U.S., Inc. A term that is arbitrary and associated exclusively with one party may serve as a source indicator for financial services, even if the term may also identify an underlying component of the financial services. The Board reversed the Examining Attorney’s refusal to register the marks SUGAR NO. 14, SUGAR NO. 11 and COTTON NO. 2 (SUGAR and COTTON disclaimed) for financial services, namely, futures exchange and related commodity trading services, on the basis that the proposed marks were the descriptive names of the contracts traded on the applicant’s commodity and exchange services, and that they must also be available for use by others. 161 On appeal, the applicant explained that it sells neither sugar, nor cotton, nor future contracts. Rather, the contracts are bought and sold by investors to each other. Because a futures contract formed can only be discharged by entering an equal and opposite contract, futures traders have developed standardized contract terms. The numbers associated with the applicant’s marks are a shorthand way of referencing these standard terms. Relying on this explanation, the Board found that the numerical elements in the marks were arbitrary, and that they had been used exclusively by the applicant or its predecessor-in-interest for at least 60 years. As the evidence established that relevant purchasers associated the arbitrary terms exclusively with the applicant, the Board determined that the terms served as source indicators for the applicant’s financial services. As they were used exclusively for the applicant’s exchange and trading services, there was no need for others to use them. Therefore, the Board reversed the refusal to register all three marks. 161. In re ICE Futures U.S., Inc., 85 U.S.P.Q.2d 1664 (T.T.A.B. 2008), also discussed supra, Part II.C.1.a. Vol. 99 TMR 37 9. Doctrine of Foreign Equivalents a. Doctrine Found Applicable; Likelihood of Confusion Found In re La Peregrina Ltd. The Board found a likelihood of confusion between the applicant’s mark LA PEREGRINA and the registered mark PILGRIM based on the doctrine of foreign equivalents. 162 The applicant filed an application to register LA PEREGRINA for jewelry, precious stones, pearls in loose pieces, pairs and strands, and pearl jewelry. The examining attorney based its Section 2(d) refusal on a registration for PILGRIM for jewelry. The Examining Attorney submitted evidence that the Spanish term la peregrina means “the pilgrim” in English and noted that the average consumer in the United States would be likely to translate the foreign term la peregrina into its English equivalent. On appeal, the applicant argued that only 14 to 15 million individuals are bilingual in English and Spanish, and that the use of the Spanish language is highly localized to California and Texas. 163 The Board disagreed with this argument, noting that Spanish is spoken or understood by an appreciable number of United States consumers who also speak or understand English. Further, the applicant provided no compelling evidence to prove that the mark would not be translated because of marketplace circumstances. The applicant submitted declarations of four individuals who were bilingual in Spanish and English to overcome the showing that la pregrina means “the pilgrim.” Two of the individuals stated that La Peregrina is the name of a famous and unique pearl discovered in Panama. 164 However, the Board deemed the declarations insufficient to persuade them that consumers would not translate LA PEREGRINA as “the pilgrim,” or to conclude that consumers in the United Stated are aware of the unique La Peregrina pearl. Therefore, consumers would not view LA PEREGRINA as a name in its own right. The Board affirmed the refusal to register. 162. In re La Peregrina Ltd., 86 U.S.P.Q.2d 1645 (T.T.A.B. 2008). 163. Id. at 1648. 164. Id. at 1648-49. 38 Vol. 99 TMR 10. Genericness a. Mark Found to Be Generic In re Lens.com, Inc. The Board affirmed the refusal of two applications on the basis of genericness. In In re Lens.com, Inc., 165 an application for LENS in connection with retail store services featuring “contact eyewear products rendered via a global computer network” was refused as merely descriptive, and then as being generic after the applicant asserted a claim of acquired distinctiveness. 166 Applying the test for genericness set forth in H. Marvin Ginn Corp., 167 the Board determined that the category of services at issue is retail Internet store services featuring contact lenses. Relying on dictionary definitions establishing that LENS is shorthand for “contact lens” as well as a screen shot from the applicant’s website showing that it sells contact lenses, the Board found that “lens” is understood primarily to refer to that category of products. Because “lens” is a name for the contact eyewear comprising the subject matter of applicant’s services, it is also generic for the retail Internet store services themselves. 168 And although the word “lens” does not appear in the applicant’s recitation of services, the Board found that it was included in the broader term “contact eyewear products.” If the mark LENS is generic for part of the services the applicant offers under its mark, then the mark is unregistrable. 169 In re Active Ankle Systems, Inc. Similarly, the Board affirmed the Examining Attorney’s refusal to register DORSAL NIGHT SPLINT as being generic for an “orthopedic splint for the foot and ankle.” 170 As a threshold matter, the applicant and Examining Attorney disagreed as to the proper test for genericness of the applicant’s mark. The applicant contended that the mark is a phrase, and genericness should be determined as to the entire phrase. 171 The Examining Attorney contended that the mark is a compound word and therefore genericness may be determined if each of the words are generic. 172 165. In re Lens.com, Inc., 83 U.S.P.Q.2d 1444 (T.T.A.B. 2007). 166. 15 U.S.C. § 1052(d). 167. H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 U.S.P.Q. 528 (Fed. Cir. 1986. 168. In re Candy Bouquet Int’l, Inc., 73 U.S.P.Q.2d 1883 (T.T.A.B. 2004). 169. In re Lens.com, Inc., 83 U.S.P.Q.2d at 1447. 170. In re Active Ankle Sys., Inc., 83 U.S.P.Q.2d 1532 (T.T.A.B. 2007). 171. See In re Am. Fertility Soc’y, 188 F.3d 1341 (Fed. Cir. 1999). 172. See In re Gould Paper Corp., 834 F.2d 1017 (Fed. Cir. 1987). Vol. 99 TMR 39 The Board agreed with the applicant, finding the three words of the mark to be multiple words joined together as a phrase. As a result, the Board determined genericness as to the entire phrase. Applying the relevant test, 173 the Board found that the applicant properly defined the class of goods as “orthopedic splints for the foot and ankle to be worn while sleeping,” but disagreed with the applicant that the relevant public should be limited to podiatrists, finding that the relevant public also includes the general public who are ultimate consumers of the product. The Board found next that the relevant public would understand DORSAL NIGHT SPLINT to refer to that genus of goods. The dictionary definition of DORSAL is “upper surface of an organ,” and the term would be generic for any type of orthopedic splint worn on the back of the foot. The Internet evidence of record showed that the applicant’s competitors—and applicant—used the phrase DORSAL NIGHT SPLINT in a generic sense to refer to orthopedic foot splints. Indeed, the applicant admitted during prosecution that “night splint” is generic. The Board relied on two Nexis excerpts and eight Internet excerpts, introduced as evidence, that used the entire phrase “dorsal night splints” in a generic sense to refer to orthopedic foot splints. The Board found these excerpts sufficient to establish that the phrase as a whole is generic for the applicant’s goods as identified. As a result, the Board found that the relevant purchasing public would not perceive DORSAL NIGHT SPLINT as source-identifying, and affirmed the refusal to register. 11. Procedural Issues a. Evidence (1) Wikipedia Evidence Found Admissible In re IP Carrier Consulting Group The Board livened up a garden variety descriptiveness case by considering for the first time whether evidence taken from the Wikipedia website www.wikipedia.org is admissible in Board proceedings. 174 For the Internet-challenged, Wikipedia is a collaborative encyclopedia in which Internet users not only write the entries, but also edit them. The Board noted that there are no special qualifications needed to be a Wikipedia author, and that the articles can contain misinformation, false information, oversight, omissions, outright vandalism or unchecked 173. H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc, 782 F.2d 987, 228 U.S.P.Q. 528 (Fed. Cir. 1986). 174. In re IP Carrier Consulting Group, 84 U.S.P.Q.2d 1028 (T.T.A.B. 2007). 40 Vol. 99 TMR information. However, it pointed out that at least one other court found Wikipedia information not inherently unreliable, particularly when the opposing party may “apply the tools of the adversary system to his report.” 175 The Board held that it would consider Wikipedia evidence so long as the non-authoring party had the opportunity to rebut it by submitting other evidence that could call its accuracy into question. 176 The Board noted that the better practice is to corroborate the Wikipedia evidence with other reliable sources, including the Wikipedia article’s own source material. 177 Not to ignore the larger picture, the Board found ipPICS and ipPIPE both to be primarily merely descriptive 178 of telecommunications access services allowing the user to access high speed transmission of images and video via a global computer network, computers and wireless devices. Therefore, it affirmed the refusals to register both marks. PART III. INTER PARTES CASES By Jordan S. Weinstein A. United States Court of Appeals for the Fourth Circuit 1. Subpoena Power Over Foreign Trademark Applicant Rosenruist-Gestao e Servicos LDA v. Virgin Enterprises Ltd. In what was probably the most significant opposition-related case of the year, the United States Court of Appeals for the Federal Circuit considered whether an opposer can force an applicant, which is a Portuguese corporation with no U.S. offices, personnel, sales agents, or other U.S. contacts, to appear in the United States for a testimony deposition in an opposition proceeding. 179 The Board’s Manual of Procedure provides that a foreign party can only be compelled to testify orally through Hague Convention procedures or the issuance of Letters Rogatory. 180 175. Alfa Corp. v. OAO Alfa Bank, 475 F. Supp. 357, 362 (S.D.N.Y. 2007). 176. In re IP Carrier Consulting Group, 84 U.S.P.Q.2d 1028, 1032 (T.T.A.B. 2007). 177. Id. at 1032-1033. 178. 15 U.S.C. § 1052(e)(1). 179. Rosenruist-Gestao e Servicos LDA v. Virgin Enters. Ltd., 511 F.3d 437, 85 U.S.P.Q. 2d 1385 (4th Cir. 2007). 180. TBMP §§ 703.01(f)(3), 404.03(c)(2). Vol. 99 TMR 41 In this case, the opposer served the applicant’s lawyer with a subpoena for the applicant’s testimony deposition pursuant to Federal Rule of Civil Procedure 30(b)(6). The subpoena was issued under authority of the subpoena provision of the Patent Act, which provides in part that “the clerk of any United States Court for the district wherein testimony is to be taken [in a PTO proceeding] shall . . . issue a subpoena for any witness residing or being within such district, commanding him to appear and testify. . . .” 181 The applicant moved to quash the subpoena, arguing that the District Court lacked authority to issue it and that service was ineffective even if the subpoena was issued properly. The District Court concluded that the subpoena had been properly issued, and that service was effective because the applicant had designated counsel to accept service. The opposer then re-served the subpoena and rescheduled the deposition. The applicant informed the opposer that there was no designee who resided or was within the district. The opposer moved to compel and the applicant argued in response that all its potential designees were foreign citizens residing outside the United States; that the court did not have jurisdiction over the applicant to enforce the subpoena; and that as a corporation, the applicant did not qualify as a witness under 35 U.S.C. § 24, which pertains only to natural persons. The District Court partly denied the motion to compel. It found that even though the subpoena was valid, the applicant is not required to produce a designee in the district because the word “witness” in the statute referred only to natural persons. The opposer appealed and the Fourth Circuit reversed. The court found that the term “witness” in the statute is not limited to natural persons, so it can reach corporations in other jurisdictions. 182 Although the applicant argued that the subpoena was invalid because it was not “residing or being within” the district and because it lacked sufficient contacts with the Eastern District of Virginia, the Fourth Circuit refused to hear these arguments. The District Court had previously determined that the subpoena was valid and the applicant had failed to appeal that issue. To raise it now would be to alter or modify the judgment below, which would require a cross-appeal. As the applicant did not file one, the Fourth Circuit declined to hear these issues. 183 In a lengthy, considered dissent, Judge Wilkerson stated: In a first for any Federal Court, my colleagues hold that a foreign company that has no United States employees, 181. 35 U.S.C. § 24. 182. Rosenruist-Gestao e Servicos, 85 U.S.P.Q. 2d at 1391. See also Yousuf v. Samantar, 451 F.3d 248 (D.C. Cir. 2006). 183. Id. at 1392. See also El Paso Nat’l Gas Co. v. Neztsosie, 526 U.S. 473 (1999). 42 Vol. 99 TMR locations or business activities must produce a designee to testify at a deposition in the Eastern District of Virginia so long as it has applied for a trademark registration with a government office located there. As a result, foreign witnesses can be compelled to travel to the United States and give inperson deposition testimony at the behest of any litigant in a trademark dispute . . . though the PTO’s own procedures call for obtaining testimony from foreign companies through other means. 184 He argued that the majority failed properly to apply the statute, sidestepped legislative cannons of construction seeking to protect against international discord and disregarded the views of the PTO whose proceedings Section 24 was intended to aid. In March 2008, the applicant filed a Petition for Writ of Certiorari to the U.S. Supreme Court. There will likely be more to report in next year’s 2010 edition. B. Trademark Trial and Appeal Board 1. Bona Fide Intention to Use a. Intention to Use Not Found L.C. Licensing, Inc. v. Berman The Board sustained an opposition to the mark ENYCE in connection with custom automotive accessories, in part because the applicant lacked the requisite bona fide intention to use the mark in commerce on the identified goods. 185 The Board based its decision on the absence of documentary evidence memorializing the applicant’s bona fide intent, finding the lack of such evidence sufficient to prove the lack of a bona fide intent in the absence of other facts to explain or outweigh the lack of documentary evidence. 186 The Board noted that the applicant admitted in answers to the opposer’s interrogatories that it had no documents evidencing its intent to use the mark. The Board found that the applicant’s testimony on the subject of whether he intended to use the mark on the goods listed in the application provided no facts explaining or outweighing that lack of documentary evidence. In addition, the court found inadequate the applicant’s testimony that it decided to forego creating a business model until a decision was 184. Id. at 1393-94 (citations omitted). 185. L.C. Licensing Inc v. Berman, 86 U.S.P.Q.2d 1883 (T.T.A.B. 2008). The opposition was also sustained on the ground of likelihood of confusion, discussed supra, Part I.A. 186. Commodore Elecs. Ltd. v. CBM Kabushiki Kaisha, 26 U.S.P.Q. 2d 1503 (T.T.A.B. 1993). Vol. 99 TMR 43 rendered on the opposition, as the applicant failed to explain why there were no documents showing an intent to use the mark at the time the application was filed. The Board found that the applicant’s mere assertion in testimony that it intended to use the mark on one of the products listed in the application was not sufficiently credible evidence, absent corroboration of any sort, to establish a bona fide intention to use the mark. As a result, the Board concluded that the applicant had no bona fide intention to use the mark in commerce on custom automotive accessories when he filed the application, and the Board sustained the opposition on that ground. Opposers and applicants should be aware that the Board is willing to sustain oppositions based on an applicant’s lack of written documentation to evidence its intent to use a mark. 2. Likelihood of Confusion Standard Schering-Plough HealthCare Products, Inc. v. Ing-Jing Huang Where an opposition is based on a plurality of marks, the comparison of these marks to the applicant’s mark at issue is ordinarily made one-to-one. The Board sustained an opposition based on two marks, in which the opposer asserted that its marks should be considered together. 187 The opposer based its opposition on its marks DR. SCHOLL’S and AIR-PILLO, each registered for footwear and related products, including insoles. The opposer contended that its two marks should be considered together to determine likelihood of confusion, rather than each being compared to the applicant’s mark. The Board agreed. In order for the marks to be considered together, two elements need to be satisfied. First, the marks must have been used or are being used together on a single product or in marketing. 188 Second, the opposer’s marks must be used in such a fashion that it would be proper to combine them for purposes of comparison. 189 The Board held that the opposer’s marks qualified for joint consideration, finding that the opposer routinely uses the marks together as a house brand and a sub-brand and in very close proximity, and that the evidence of record was sufficient to 187. Schering-Plough HealthCare Prods., Inc. v. Ing-Jing Huang, 84 U.S.P.Q.2d 1323 (T.T.A.B. 2007). In the interest of full disclosure, the author notes his law firm’s participation as counsel for Opposer in this case. 188. See H.D. Hudson Mfg. Co. v. Food Mach. & Chem. Corp., 230 F.2d 445, 109 U.S.P.Q. 48 (C.C.P.A. 1956); and Simoniz Co. v. Hysan Prods. Co., 142 U.S.P.Q. 377 (T.T.A.B. 1964). 189. See W. Union Tel. Co. v. Graphnet Sys., Inc., 204 U.S.P.Q.2d 971 (T.T.A.B. 1979); Mallinckrodt, Inc. v. Ciba-Geigy Corp., 195 U.S.P.Q. 665 (T.T.A.B. 1977). 44 Vol. 99 TMR establish that the marks had come to be known together as indicators of origin for the opposer’s goods, given their widespread joint use, the quantity of units sold, and extensive advertising, all of which resulted in the fame of the house mark and renown of the sub-brand. 190 In this case, the Board found that the test was satisfied. A comparison of both marks together to the applicant’s mark indicated a likelihood of confusion and the opposition was sustained. 3. Standing a. Opposer Had Standing to Oppose Target Brands, Inc. v. Hughes A wholly-owned subsidiary that manages and protects its parent company’s intellectual property has standing to oppose a mark that may damage the parent company’s trademark rights. Neither the subsidiary nor the parent need market the identical goods sold by the applicant, but need only engage in the manufacture or sale of the same or related goods. In addition, the product sold by the applicant could be produced in the normal expansion of the opposer’s business. 191 The applicant applied to register ULTIMATE POLO (POLO disclaimed) for sun protective clothing for men, women and children, namely, shirts in Class 25. The application included a claim of acquired distinctiveness for the mark under Lanham Act Section 2(f). The application was opposed by a wholly-owned subsidiary of the Target Corporation, a retail store chain that markets women’s polo shirts, using the term “ultimate polo” in a descriptive manner. The opposer owns and manages the intellectual property rights of the Target Corporation, and as such, claimed that it would be harmed by registration of the term “ultimate polo.” The Notice of Opposition alleged that the applicant submitted insufficient evidence to establish Section 2(f) distinctiveness for the mark, and that the use of the mark relied upon by the applicant was not exclusive. In addition to denying the opposer’s allegations, the applicant asserted that the opposer lacked standing to bring the opposition, because Target Corporation does not use “ultimate polo” as a trademark, and does not sell or market sun protective clothing in connection with the designation “ultimate polo.” The Board rejected the challenge to the opposer’s standing. It noted that the 190. Schering-Plough HealthCare Prods., 84 U.S.P.Q.2d at 1327. 191. Target Brands, Inc. v. Hughes, 85 U.S.P.Q.2d 1676 (T.T.A.B. 2007); also discussed infra, at Part III.B.4.a. Vol. 99 TMR 45 opposer was in privity with Target Corporation, the opposer’s parent company that manufactures and sells shirts competitive with the applicant’s, and that is engaged in managing and protecting the parent company’s intellectual property rights. Furthermore, it is not necessary to market the identical goods for which a descriptive designation is used in order to oppose an application. It is sufficient that the opposer market related goods and that the opposer could produce the applicant’s products in the normal expansion of the opposer’s business. If the mark in question is found to be merely descriptive, damage is presumed because a registration would limit the opposer’s rights to use the descriptive designation in connection with the same or similar goods. 192 The Board found the applicant’s sun protective clothing to be in competition with the women’s polo shirts marketed by the opposer’s parent, Target Corporation. The harm to the opposer’s parent in being unable to use a descriptive term in connection with the marketing of its polo shirts justified standing for the opposer. 193 4. Acquired Distinctiveness a. Mark Had Not Acquired Distinctiveness Target Brands, Inc. v. Hughes The Board sustained an opposition against ULTIMATE POLO for protective clothing because the applicant’s proof of acquired distinctiveness was insufficient. 194 The applicant applied to register ULTIMATE POLO (POLO disclaimed) for sun protective clothing for men, women and children, namely, shirts in Class 25. The application included a claim of acquired distinctiveness for the mark under Lanham Act Section 2(f). 195 The application was opposed by a wholly-owned subsidiary of the Target Corporation, a retail store chain that markets women’s polo shirts using the term “ultimate polo” in a descriptive manner. The Notice of Opposition alleged that the applicant submitted insufficient evidence to establish Section 2(f) distinctiveness for the mark, and that the applicant’s use of the mark was not exclusive. The Board noted that a claim of acquired distinctiveness under Section 2(f) distinctiveness is a legal acknowledgement that the mark lacks distinctiveness. 196 The issuance of a registration 192. Fed. Glass Co. v. Corning Glass Works, 162 U.S.P.Q. 279, 282-83 (T.T.A.B. 1969). 193. Target Brands, 85 U.S.P.Q.2d at 1679. 194. Id. at 85 U.S.P.Q.2d 1676 (T.T.A.B. 2007); also discussed supra, Part III.B.3.a. 195. 15 U.S.C. § 1052(f). 196. Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572 (Fed. Cir. 1988). 46 Vol. 99 TMR with a Section 2(f) claim also creates a legal presumption that the applicant presented a prima facie showing of acquired distinctiveness. 197 Assuming the opposer presents a prima facie case successfully rebutting this presumption, the ultimate burden of persuasion is on the applicant to establish by a preponderance of the evidence that the mark has acquired distinctiveness. 198 This standard becomes more difficult to meet as the mark's level of descriptiveness increases. 199 The Board first evaluated the degree of descriptiveness of the term “ultimate polo,” as this determined the amount of evidence necessary to show acquired distinctiveness. 200 The Board found the mark highly descriptive as it combined the laudatory term ULTIMATE and the term POLO, which is a shortening of the generic term “polo shirt.” 201 Because the mark is highly descriptive, the Board agreed with the opposer that the applicant had submitted insufficient evidence to establish acquired distinctiveness. The applicant’s use of the mark since 1992 was characterized as lengthy, but previous decisions of the Board and the Federal Circuit had found usage of such duration insufficient by itself to establish Section 2(f) distinctiveness. 202 Without additional information such as market share or ranking of sales level in the industry, it was not enough to provide the highly descriptive term “ultimate polo” with acquired distinctiveness. 203 The Board also acknowledged that the applicant spent a substantial sum on advertising and promotional efforts. However, the figures provided by the applicant covered all its marks, and therefore it was not possible to determine how much was spent on the mark ULTIMATE POLO. The Board also acknowledged that the applicant had spent substantial sums of money for product promotion, but this only suggested an attempt at acquiring distinctiveness for the mark, and did not demonstrate that the efforts were successful. 204 The Board agreed with the opposer that its parent corporation’s use of ULTIMATE POLO, and some 30 other entities had used the term so extensively in connection with clothing that 197. Id. at 1004. 198. Id. at 1008. 199. Yamaha Int’l, 840 F.2d at 1581. 200. In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 4 U.S.P.Q.2d 1141 (Fed. Cir. 1987). 201. Target Brands, 85 U.S.P.Q.2d at 1680. 202. Id. at 1681. 203. Id. 204. Id. See also In re Pingel Enters., Inc., 46 U.S.P.Q.2d 1811 (T.T.A.B. 1988). Vol. 99 TMR 47 the applicant’s use fails to qualify as “substantially exclusive” as required under Section 2(f). 205 The Board rejected the applicant’s contention that these uses were inconsequential because Target Corporation’s goods were unrelated and marketed in separate channels of trade. 206 As a result, the Board sustained the opposition. In re IC! Berlin brillen GmbH The Board rejected the applicant’s claim of acquired distinctiveness 207 for its earpiece design for eyewear frames on the ground that consumers would not view the design as a trademark but merely as a component of the product. 208 The Board agreed with the Examining Attorney’s conclusion that the earpiece design was not inherently distinctive and that the applicant had not met its burden of establishing that the design had attained a secondary meaning in the marketplace. 209 In affirming the Examiner’s refusal of registration, the Board focused on the applicant’s failure to engage in “look for” advertising or any other advertising efforts that highlighted the trademark significance of the design. The applicant’s magazine advertisements describing the frame models, weight, and color options, and various celebrity advertisements were insufficient because none specifically mentioned the earpiece design. 210 The applicant argued that the lack of “look for” advertising was insignificant because eyewear manufacturers routinely place their trademarks on the earpiece. However, the Board rejected this argument because the record was devoid of evidence supporting the applicant’s claim, and because word and logo marks on earpieces differ in nature from the actual design of the earpiece. The Board was not persuaded by declarations of distinctiveness from at least 10 opticians, as their statements failed to establish an association of the design with the applicant by a sufficient portion of the purchasing public. The Board characterized the applicant’s sales of 470,000 units sold over five years, and $115,000 in advertising in a single year, as “not impressive” because it would constitute a small percentage of total eyewear sales for the stated period. 211 Finally, while the applicant’s 205. Target Brands, 85 U.S.P.Q.2d at 1682. 206. Id. 207. U.S.C. 1052(f). 208. In re IC! Berlin brillen GmbH, 85 U.S.P.Q.2d 2021 (T.T.A.B. 2008). 209. Id. 210. Id. at 2024-25. 211. Id. at 2025. 48 Vol. 99 TMR evidence of five year’s exclusive and continuous use of the earpiece design may serve as prima facie evidence of acquired distinctiveness, the statutory language is permissive and not mandatory, so the Board may attribute more or less weight to that evidence depending on the facts and circumstances. 212 Here, the Board concluded that the evidence did not merit sufficient weight to prove acquired distinctiveness, and it affirmed the refusal to register. 5. Priority of Use Westrex Corp. v. New Sensor Corp. The Board dismissed an opposition because the opposer’s presales activities on which it relied for priority were insufficient to constitute use analogous to use of the mark in commerce. 213 The opposer opposed applications for GENALEX GOLD LION and GOLD LION for electron tubes, based on its use analogous to trademark use in connection with GOLD LION for electron tubes. The opposer submitted evidence of $50,000-60,000 spent on advertising the mark over an 11-year period, 8 e-mails it received from prospects inquiring when the products would be released, and evidence that it took but cancelled an order for the products. The applicant moved for summary judgment to dismiss the opposition because neither the opposer nor its predecessor in interest is the prior user, and the Board agreed. While priority is an issue because the opposer does not own an existing registration on which it can rely, 214 a party may establish prior rights in a mark through use analogous to trademark use, which creates a public awareness that the designation serves as a trademark and identifies the party as a source. 215 For pre-sales activity to qualify as analogous use, it must be more than mere advertising. The test is whether the analogous use was sufficiently clear, widespread and repetitive to create an association between the mark and the source; whether the analogous use had a substantial impact on the purchasing public; whether the user established its intent to appropriate the mark; 216 and whether 212. Id. See 15 U.S.C. § 1052(f). 213. Westrex Corp. v. New Sensor Corp., 83 U.S.P.Q.2d 1215 (T.T.A.B. 2007). 214. 15 U.S.C. § 1052(d). See King Candy Co., Inc. v. Eunice King’s Kitchen, 496 F.2d 1400 (C.C.P.A. 1974). 215. See 35 U.S.C. §§ 1052(d) and 1127; TAB Sys. v. PacTel Teletrack, 77 F.3d 1372, 37 U.S.P.Q.2d 1879 (Fed. Cir. 1996), vacating PacTel Teletrack v. TAB Sys., 32 U.S.P.Q.2d 1668 (T.T.A.B. 1994). 216. TAB Sys., 37 U.S.P.Q.2d at 1882. Vol. 99 TMR 49 actual, technical trademark use followed in a commercially reasonable time period. 217 In this case, the Board found that the opposer’s analogous use efforts had an insignificant effect on potential purchasers. They involved an insubstantial number of prospective customers and thus had no significant effect on the purchasing public. 218 The Board found that the opposer’s advertising expenditures were similarly insufficient to establish the creation of an association of public identification between the mark and the source. Finally, the Board determined that a significant amount of time had elapsed between the opposer’s predecessor’s pre-sale activities and its first sale. The Board found that this period was not commercially reasonable and it indicated that the opposer’s predecessor’s activities were too sporadic to create use analogous to trademark use. 219 The opposer also based priority on a claim that its predecessor assigned the mark to it, and therefore the opposer could rely on its predecessor’s first-use date as a priority basis. The Board rejected this argument as well, finding that the opposer’s predecessor’s two U.S. sales, three months apart, failed to support a finding of prior continuous use of the mark sufficient to support priority. Finding that there were no genuine issues of material fact and that the applicant was entitled to judgment as a matter of law, the Board entered judgment against the opposer and dismissed the opposition with prejudice. a. Pan American Convention (1) Pan American Convention Priority Recognized Diaz v. Servicios de Franquicia Pardo’s S.A.C. A case involving two Peruvian chicken restaurants gave the Board the opportunity to consider whether a Peruvian trademark registration asserted under the Pan American Convention is a valid basis for priority of use. 220 The applicant sought summary judgment that it had priority over the opposer’s identical mark. The opposer was the first to file an application in the United States, but the applicant claimed priority based upon its prior registrations issued in Peru, which the applicant asserted were entitled to priority based upon Section 7 of the General Inter- 217. Dyneer Corp. v. Auto. Prods. plc, 37 U.S.P.Q.2d 1251 (T.T.A.B. 1995); Evans Chemetics, Inc. v. Chemetics Int’l Ltd., 207 U.S.P.Q. 695 (T.T.A.B. 1980). 218. Westrex, 83 U.S.P.Q.2d at 1218-19. 219. Id. at 1219. 220. Diaz v. Servicios de Franquicia Pardo’s S.A.C., 83 U.S.P.Q. 2d 1320 (TTAB 2007). 50 Vol. 99 TMR American Convention for Trademark and Commercial Protection of Washington, 1929 (the Pan American Convention). 221 Taking up the issue of whether an opposer may assert priority under Article 7 of the Pan American Convention in an opposition proceeding, the Board answered in the affirmative. It explained that the intent of the Pan American Convention was to create a uniform system for the protection of foreign trademarks; that Article 7 of the Convention confers a priority right on eligible trademark owners where its requirements have been satisfied; and that the Board has subject matter jurisdiction to entertain a claim under Article 7 of the Convention because the Board has the authority to determine prior rights arising from common law use when it adjudicates likelihood of confusion claims. 222 To prevail on the priority issue based on the Convention, the applicant must prove that it owned a prior registration protected in Peru, a Convention country, that the applicant may have known that the opposer was using or trying to register an interfering mark in the United States, that the opposer knew that the applicant’s mark existed and was continuously used prior to the opposer using its mark in the United States, and that the applicant complied with the domestic requirement for registration, namely, filing for protection of its mark under Section 44 of the Lanham Act. The Board found that the applicant had a valid subsisting Peruvian registration for PARDO’S CHICKEN, that the opposer’s mark was in standard typeface and color scheme and therefore constituted an interfering mark, that the opposer had admitted to knowing about the applicant’s PARDO’S CHICKEN restaurants in Peru prior to using its marks in the United States and that the applicant complied with the domestic legislation by filing a U.S. application under Section 44(e). 223 Thus, there was no genuine issue of material fact that the applicant was entitled to priority and the opposition was dismissed. b. Morehouse Defense to Priority (1) Morehouse Defense Not Applicable Green Spot (Thailand) Ltd. v. Vitasoy International Holdings Ltd. The Board granted summary judgment to the opposer in an opposition involving two identical marks, finding that the applicant’s prior registration failed to qualify for a Morehouse 221. 46 Stat. 2907. 222. 35 U.S.C. § 1052(d). 223. Diaz, 83 U.S.P.Q.2d at 1328. Vol. 99 TMR 51 defense. 224 The opposer proved first use of VITAMILK for “a variety of beverage products” sold in commerce as of December 2003, while the applicant’s intent-to-use application for VITAMILK for, inter alia, “soy beverages, namely, fruit juices and fruit drinks made with soy” was not filed until June 2004. The Morehouse defense 225 is an equitable doctrine holding that an opposer cannot be damaged by a pending application if the applicant already owns a prior registration for the same mark identifying essentially the same goods or services. 226 To determine whether the defense is applicable, the Board must determine if the applicant’s two marks are essentially the same. 227 Here, the applicant owned a prior registration for a mark composed of Chinese characters pronounced as “VI TA NAI” or “VI TA LAI” for milk substitute made from soy beans. The applicant claimed that its registration was a foreign equivalent 228 of its pending mark because prospective purchasers would transliterate the first two characters as “VI TA” and translate the third character as “milk.” The Board disagreed for two reasons. First, it found that the registered mark was dramatically different in appearance and pronunciation from the applicant’s pending mark. Second, the Board held that the doctrine of foreign equivalents did not apply, at least in the case of a Morehouse defense, because the first two characters have no relevant meaning. Thus, the prior registration was not a foreign equivalent of the pending application. The applicant also argued that the fame of its mark in other countries should provide it with priority, but the Board held that fame in other countries alone cannot establish priority in the United States. 229 There being no remaining factual issue as to likelihood of confusion, the Board sustained the opposition on summary judgment. 224. Green Spot (Thailand) Ltd. v. Vitasoy Int’l Holdings Ltd., 86 U.S.P.Q.2d 1283 (T.T.A.B. 2008). 225. Morehouse Mfg. Corp. v. J. Strickland & Co., 407 F.2d 881 (C.C.P.A. 1969). 226. Green Spot (Thailand), 86 U.S.P.Q.2d at 1285 (T.T.A.B. 2008), citing Morehouse Mfg. Corp. v. J. Strickland & Co., 407 F.2d 881 (C.C.P.A. 1969). 227. Continental Nut Co. v. Le Cordon Bleu, 494 F.2d 1395 (C.C.P.A. 1974). 228. See, e.g., In re Oriental Daily News, Inc., 230 U.S.P.Q. 637 (T.T.A.B. 1986). 229. See Person’s Co. Ltd. v. Christman, 14 U.S.P.Q.2d 1477 (Fed. Cir. 1990). 52 Vol. 99 TMR 6. Ownership a. Applicant Was Not Owner of Mark at Filing Time Great Seats Ltd. v. Great Seats Inc The Board granted a petition to cancel a registration for GREAT SEATS INC on the basis that the applicant was not the owner of the mark at the time the application was filed. 230 The registrant’s story is a tale of two companies, referred to here for purposes of brevity as the 410 Company (Wholesale Tickets, Inc., Maryland Corporation No. D 3048410) and the 660 Company (Great Seats Inc, Maryland Corporation No. D 4635660). The 410 Company was formed in 1990, and in 1995, began using and advertising the mark GREAT SEATS. That use continued to and through the time of the current proceeding. In July 1997, the 410 Company changed its name to Great Seats, Inc. The 660 Company was formed in March 1997 and filed the application at issue for GREAT SEATS & Design on April 21, 1997. On the same day in July 1997, when the 410 Company changed its name to Great Seats, Inc, the 660 Company changed its name to Premier Entertainment. On November 4, 2004, the 660 Company executed an assignment of the mark to the 410 Company, with an effective date nunc pro tunc of October 7, 1999. That same date, the 660 Company ceased to exist. The petitioner alleged that the 660 Company’s registration for GREAT SEATS & Design was void ab initio because the application was not filed by the actual owner of the mark and because the respondent committed fraud. Only the owner of a mark may file an application for use-based registration of that mark. The application is void ab initio if the filing entity does not own the mark as of the filing date. 231 This statutory requirement cannot be waived. 232 The Board found that the 410 Company, the actual user of the mark, was the owner of the mark as of the application filing date, and that the 660 Company, which had filed the application, was not. The 660 Company was not using the mark when the application was filed and all use of the mark was made by the 410 Company. Therefore, the 660 Company had no basis to file the application. The respondent argued that the 660 Company was entitled to file the application because the 410 and 660 Companies were merely earlier and later manifestations of the same entity. The Board rejected this argument because this was not a case where one organization turned into another, as a single continuing 230. Great Seats Ltd. v. Great Seats. Inc., 84 U.S.P.Q. 2d 1235 (T.T.A.B. 2007). 231. 15 U.S.C. § 1051(a), 37 C.F.R. § 2.71(e). 232. Huang v. Tzu Wei Chen Food, Ltd., 849 F.2d 1458 (Fed. Cir. 1988). Vol. 99 TMR 53 commercial enterprise; rather, both entities were in existence as of the application filing date and the application was filed by the wrong one. 233 Alternatively, the respondent argued that the 410 Company and the 660 Company were related companies 234 and therefore the 410 Company’s prior use inured to the benefit of the 660 Company. The Board rejected this argument as well. The mere fact that both companies were controlled by the same person (who served as president of each company) did not prove that the companies were related under the Lanham Act. 235 There was no evidence of any arrangement between the corporations that one controlled the other’s use of the mark, nor was there evidence that the individual exercised control over the 410 Company in his capacity as an officer of the 660 Company. Because the Board found that the applicant/660 Company was not the owner of the mark at the time the application was filed, the Board found the application to be void ab initio and granted the petition to cancel. 7. Abandonment a. Change in Mark Format Was Not Abandonment Paris Glove of Canada, Ltd. v. SBC/Sporto Corp. The Board granted summary judgment to a cancellation respondent on the ground that filing a specimen with a maintenance affidavit bearing a modified version of the mark did not, in this case, constitute abandonment of that mark. 236 The registrant obtained a registration for AQUA STOP with the words arranged in linear fashion, one on top of the other. The specimen submitted in support of registration showed the mark in that format. Five years later, the registrant filed a maintenance declaration with a specimen showing the words of the mark arranged in a semi-circular format. The reverse side of the specimen showed the mark in a linear form, but with the words side-by-side rather than one on top of the other. The petitioner petitioned to cancel based on abandonment and on fraud. The respondent sought summary judgment that it had not abandoned 233. Compare Accu Personal Inc. v. Accu Staff Inc., 38 U.S.P.Q.2d 1443 (T.T.A.B. 1996) (two entities constitute single continuing commercial enterprise, application deemed filed by owner of mark even if applicant misidentified in application) with Deltronics, Inc. v. H. L. Dalis, Inc., 158 U.S.P.Q. 475 (T.T.A.B. 1968) (two companies had different legal existences; wrong entity filed application, void ab initio). 234. See 15 U.S.C. §§ 1055 and 1127. 235. See Beech Aircraft Corp. v. Lightning Aircraft Co. Inc., 1 U.S.P.Q.2d 1290 (T.T.A.B. 1986). 236. Paris Glove of Canada, Ltd. v. SBC/Sporto Corp., 84 U.S.P.Q.2d 1856 (T.T.A.B. 2007). 54 Vol. 99 TMR its mark and that it had not committed fraud. The Board granted summary judgment to the respondent. Turning first to the abandonment issue, the Board considered whether the forms of the mark appearing on the specimen submitted with the Section 8 237 Declaration constituted a continuing use of the mark as registered or, in other words, whether the new form of the mark was a material alteration 238 of the initial form. 239 There is a material alteration if the old and new formats create differing commercial impressions. 240 The Board found the displays to be substantially the same. The commercial impression was dependent upon the literal term AQUA STOP and not on the semi-circular or linear forms of display of those words. The additional stylization elements were not integral to the term AQUA STOP such that a new composite mark was formed. Therefore, the Board granted summary judgment to the respondent on this issue. 8. Fraud a. Applicant Did Not Commit Fraud Paris Glove of Canada, Ltd. v. SBC/Sporto Corp. Returning to Paris Glove v. SBC, 241 the respondent also sought summary judgment that it had not committed fraud by filing its maintenance Declaration with its revised mark and its specimen. The Board also granted summary judgment on this issue. The Board found that the respondent had truthfully apprised the USPTO of the manner of use of its mark. Nothing was withheld or concealed from the USPTO, and because the respondent’s statements were truthful, its intent in making those statements was immaterial. 242 Finding also for the respondent on summary judgment that it had not engaged in naked licensing and there being no other ground for cancellation, the Board granted summary judgment to the respondent and dismissed the cancellation petition with prejudice. 237. 35 U.S.C. § 1058. 238. 37 CFR §§ 2.72 and 2.73. 239. Paris Glove, 84 U.S.P.Q.2d at 1860. 240. Id. at 1861. See also 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §§ 19:58:50 and 19:133 (4th Ed. 2007) [hereinafter McCarthy]. 241. Paris Glove, 84 U.S.P.Q.2d 1856. 242. Id. at 1863. Vol. 99 TMR 55 b. Applicant Committed Fraud Sinclair Oil Corp. v. Kendrick Medinol-type 243 fraud continues to be a hot issue. In an opposition against STAACHIE’S CO. 1996 & Design, the Board found that the filing of a fictitious name registration and making and disseminating 25 sample products in 1996 were an insufficient basis for a statement under oath in 2001 that the mark was in use in commerce. 244 Although the applicant was permitted during the opposition proceeding to amend the basis of the application, 245 this tactic was of no assistance because amending the filing basis to intent-to-use does not protect the application from a claim of fraud. 246 Hachette Filipacchi Presse v. Elle Belle A registration for ELLE BELLE in connection with various clothing items was cancelled on summary judgment for fraud after the respondent admitted it had not used the mark in connection with a significant number of the goods listed in the use-based application at the time it was filed. 247 The Board found that the respondent’s false statements in the application were not excused because its president was an immigrant whose primary language was not English, because he was unaware of the requirements for a use-based application, or because the respondent’s attorney misunderstood the respondent’s president and did not personally review the application with him. The respondent thought it was rescued by the Post Registration Division of the USPTO, which accepted a post-registration amendment to delete the goods with which the mark was not used. However, the Board disabused the respondent of this notion, holding that when a registration is the subject of a Board proceeding, it is the Board, not the Post Registration Division, that has jurisdiction to determine the propriety of a proposed amendment to the registration. 248 That the Post Registration Divison entered the amendment does not preempt the Board’s authority to determine the issue of fraud, nor would the amendment serve to cure the fraud. 249 243. See Medinol Ltd. v. Neuro Vasx, Inc., 67 U.S.P.Q.2d 1205 (T.T.A.B. 2006). 244. Sinclair Oil Corp. v. Kendrick, 85 U.S.P.Q.2d 1031 (T.T.A.B. 2007). 245. Id. at 1033. 246. See Grand Canyon W. Ranch, LLC v. Hualapai Tribe, 78 U.S.P.Q.2d 1696 (T.T.A.B. 2006). 247. Hachette Filipacchi Presse v. Elle Belle, LLC, 85 U.S.P.Q.2d 1090 (T.T.A.B. 2007). 248. See 37 CFR § 2.133(a) and TBMP § 514.01. 249. Medinol Ltd. v. Neuro Vasx, Inc., 67 U.S.P.Q. 1205 (T.T.A.B. 2006). 56 Vol. 99 TMR Herbaceuticals Inc. v. Xel Herbaceuticals Inc. The Board granted summary judgment cancelling four registrations on the basis of Medinol-type 250 fraud, rejecting among others the novel argument that a Statement of Use can be divided into sworn and unsworn sections, and that a false statement in the “unsworn” section would not constitute fraud. 251 Faced with evidence that the respondent’s attorney had signed statements of use that included goods that the respondent admitted were not in use, the respondent noted that the Declaration in its Statement of Use stated that the mark was in use in connection with “the goods/services [listed in the Statement of Use] . . .,” while the body of the Statement of Use stated that the mark was in use in connection with “all goods and/or services” (emphasis added). The respondent argued that the two statements had different meanings; that only the statement in the Declaration section was made under oath, and that only a false statement made in the Declaration should be considered fraudulent. Further, the respondent made the more conventional argument that the effect of the fraud, if any, should be limited to cancellation of the registration for the specific goods which were not being sold, as the respondent truthfully stated the mark was in use in connection with the remaining goods. The Board flatly rejected the former argument, holding that the declaration relates to all parts of the document containing the declaration, 252 and that a different result would foster the belief that applicants’ false statements had no serious consequences. 253 As to the latter argument, the Board stated that: [P]artial cancellation is not the appropriate remedy here. Partial cancellation would merely place Xel in the same position in which it would have been had it filed statements of use which accurately reflected the goods on which the marks were being used. Rather, if fraud can be shown in the procurement of a registration, the registration is void in the international class or classes in which fraud based on nonuse has been committed. 254 It is ironic that the Board rejected the respondent’s plea for partial cancellation and then stated that the exact remedy would 250. Medinol Ltd. v. Neuro Vasx, Inc., 67 U.S.P.Q.2d 1205 (T.T.A.B. 2003). 251. Herbaceuticals Inc. v. Xel Herbaceuticals Inc., 86 U.S.P.Q.2d 1572 (T.T.A.B. 2008). 252. Medinol, 67 U.S.P.Q.2d at 1209. 253. Herbaceuticals, 86 U.S.P.Q.2d at 1578. 254. Id. at 1577 (emphasis added); citing Gen. Car and Truck Leasing Sys., Inc. v. Gen. Rent-A-Car Inc., 17 U.S.P.Q.2d 1398, 1401 (S.D. Fla. 1990), aff'g Gen. Rent-A-Car Inc. v. Gen. Leaseways, Inc., Canc. No. 14,870 (T.T.A.B. May 2, 1998). Vol. 99 TMR 57 apply in the case of a multiple-class registration. To the writer’s knowledge, this is the first time that the Board has pronounced that fraud stops at the border of the Class. However, the statement is dicta: none of the registrations at issue contained multiple classes. Finding that the respondent knew or should have known at the time it submitted its Statements of Use that the mark was not in use on all the goods identified in the Notices of Allowance, the Board held these incorrect statements constituted fraud and cancelled four of the six registrations involved in the proceeding. As for the two remaining registrations, the Board found that material issues of fact remained to be resolved at trial. 9. Laches a. Laches May Be Considered Even if Underlying Registration Is Cancelled Fishking Processors, Inc. v. Fisher King Seafoods, Ltd. The Board ruled that it could consider the respondent’s affirmative defense of laches in a petition to cancel FISHER KING SEAFOODS for seafood, even though the registration had already been cancelled when the registrant failed to file an affidavit of continued use. 255 Upon cancellation of the registration, the Board issued an order to show cause why judgment should not be entered. The registrant asserted that the failure to file an affidavit of continued use was inadvertent. The Board found that this discharged the order to show cause, and asked the petitioner if it wanted to continue with the proceeding. The petitioner did, because it wanted the Board to decide issues of priority and likelihood of confusion. The petitioner sought summary judgment that the registrant’s laches defense was extinguished when its registration expired. The respondent countered that laches still applied because the petitioner’s delay in seeking cancellation was not extinguished by cancellation of the registration. The Board agreed with the respondent. Although a laches defense must be tied to a party’s registration to be cognizable before the Board, the failure to object to a registration is not extinguished by the expiration of that registration, even though the period of delay ended when the registration expired. 256 Expiration of the registration does not 255. Fishking Processors, Inc. v. Fisher King Seafoods, Ltd., 83 U.S.P.Q.2d 1762 (T.T.A.B. 2007). 256. Aquion Partners, L.P. v. Enviroguard Prods., Ltd., 43 U.S.P.Q.2d 1371 (T.T.A.B. 1997). 58 Vol. 99 TMR extinguish either actual or constructive notice during the term of the registration; therefore, the respondent could assert the laches defense even though its registration had been cancelled. 257 Finding that genuine issues of fact existed as to when the petitioner should have been aware of the registration and whether its delay in seeking cancellation was excusable, the Board denied summary judgment on the laches defense. b. Laches Found but Excused for Progressive Encroachment Jansen Enterprises, Inc. v. Rind The Board found that laches applied to a petitioner who sought to cancel a registration only six days shy of its fifth anniversary, but that laches was excused by progressive encroachment. 258 The respondent based its laches defense on constructive notice from the date of its registration, as well as the petitioner’s failure to take action despite more than four years of sending cease and desist letters to the respondent. In the meantime, the respondent had expanded its business by opening another restaurant in another location. While the Board found that there was undue delay on these facts, it also found that the delay was excused under the progressive encroachment doctrine. Progressive encroachment defeats a finding of laches where the defendant changes the format or method of use of its mark and that change significantly impacts the petitioner’s goodwill. 259 Determining that the progressive encroachment doctrine is applicable to cancellation proceedings, 260 the Board that found that the doctrine applied in this case because four months before the petitioner filed its petition to cancel, the respondent had changed its menu to begin selling pizza, the same goods featured at the petitioner’s restaurants. As a result, the Board found that the petitioner’s earlier delay in taking action was excused because it brought the cancellation proceeding shortly after learning about the changes in the respondent’s menu. As a result, the Board denied the respondent’s laches defense. Finding a likelihood of confusion between the petitioner’s mark IZZY’S (stylized) for restaurant services and the respondent’s IZZY’S & Design mark 257. Fish King Processors, 83 U.S.P.Q.2d at 1765. 258. Jansen Enters., Inc. v. Rind, 85 U.S.P.Q.2d 1104 (T.T.A.B. 2007). 259. 5 McCarthy, supra note 245, § 31:19. See also ProFitness Physical Therapy Center v. Pro-Fit Orthopedic and Sports Physical Therapy P.C., 314 F.3d 62 (2d Cir. 2002); Westchester Media v. PRLUSA Holdings, Inc., 214 F.3d 658 (5th Cir. 2000). 260. Jansen Elecs., 85 U.S.P.Q.2d at 1117. Vol. 99 TMR 59 for restaurant services featuring bagels, the Board granted the petition for cancellation. 10. Misrepresentation a. Misrepresentation Claim Dismissed Otto International Inc. v. Otto Kern GmbH The Board dismissed a petition to cancel based on a claim of misrepresentation of source 261 for failure to set forth specific facts making out the claim. 262 The petitioner sought to cancel the respondent’s registration for OTTO KERN, which had already celebrated its fifth anniversary. The respondent moved to dismiss the cancellation petition, asserting that it was too late to cancel the registration based on likelihood of confusion because that ground is unavailable after five years. 263 The petitioner countered that its petition to cancel was based not on likelihood of confusion, but instead on misrepresentation of source and abandonment. 264 The Board found that certain allegations in the petition to cancel were of the type typically presented in support of a likelihood of confusion claim, alleging that the petitioner’s actions to develop good will in its marks and that the parties marks are confusingly similar. Upholding that such a claim would be time-barred under Section 14(3) of the Act, the Board granted the respondent’s motion to dismiss with respect to a claim under Section 2(d) 265 of the Act. The Board granted the respondent’s motion to dismiss the misrepresentation claim as well. For a misrepresentation claim to lie under Section 14(c) of the Act, 266 there must be more than a bald allegation tracking the language of the statute. Rather, the petitioner must set out specific facts reflecting that there was a deliberate misrepresentation of source, a blatant misuse of the mark, or conduct amounting to passing off. 267 The petitioner failed to allege such facts. Finally, the Board found that the petitioner provided no facts to support its allegation that the respondent had abandoned the mark. For such a claim to be sufficient, a plaintiff must set forth a prima facia case of abandonment by pleading nonuse for at least three consecutive years, or non-use for a lesser 261. 15 U.S.C. § 1064(c). 262. Otto Int’l Inc. v. Otto Kern GmbH, 83 U.S.P.Q.2d 1861 (T.T.A.B. 2007). 263. 15 U.S.C. § 1052(e). 264. Id. § 1064(c). 265. Id. § 1052(d). 266. Id. § 1064(c). 267. Otto Int’l, 83 U.S.P.Q.2d at 1864. 60 Vol. 99 TMR period coupled with an intent not to resume use. Alleging neither, the petitioner’s abandonment claim was legally insufficient. Having found all of the grounds for the petitioner’s cancellation petition legally insufficient, the Board granted the respondent’s motion to dismiss but allowed the petitioner 30 days to file an amended petition to cancel if it could allege facts that sufficiently set forth its claims of abandonment or misrepresentation. 11. Analogous Use as Basis to Oppose Intent-to-Use Application a. Analogous Use Found to Be Proper Basis to Oppose Fair Indigo LLC v. Style Conscience The Board denied a motion to dismiss an opposition proceeding which was based in part on the theory that an opposer cannot establish priority over an intent-to-use application based upon use analogous to trademark use. 268 The applicant’s intent-touse application for STYLE CONSCIENCE for jewelry was opposed based upon STYLE WITH A CONSCIENCE for jewelry. The opposer claimed priority based upon use analogous to trademark use made prior to the applicant’s filing date. Rather than answer the Notice of Opposition, the applicant filed a motion to dismiss, arguing that the opposer failed properly to plead priority because the applicant’s constructive use date, namely the filing date of its application, preceded both the filing date and the date of first use of the opposer’s pleaded application. The applicant argued that the Notice of Opposition was defective because the opposer failed to allege the requisite elements for pleading priority based on analogous use. 269 Recognizing that only notice pleading is required under the Federal Rules of Civil Procedure, 270 and that the allegations of a complaint should be construed liberally, 271 the Board found that the opposer’s allegation constituted adequate notice pleading of its reliance on analogous use to establish priority. The applicant advanced the interesting argument that permitting an opposer to assert priority over an intent-to-use application by analogous use contravenes the legislative intent of the intent-to-use provisions of 268. Fair Indigo LLC v. Style Conscience, 85 U.S.P.Q.2d 1536 (T.T.A.B. 2007). 269. See TAB Sys. v. PacTel Teletrac, 77 F.3d 1372, 37 U.S.P.Q.2d 1879 (Fed. Cir. 1996). 270. Harsco Corp. v. Elec. Scis. Inc., 9 U.S.P.Q.2d 1570 (T.T.A.B. 1988). 271. Scotch Whiskey Ass’n v. U.S. Distilled Prods. Co., 952 F.2d 1317, 21 U.S.P.Q.2d 1145 (Fed. Cir. 1991). Vol. 99 TMR 61 the Trademark (Lanham) Act. 272 The applicant contended that awarding priority over an intent-to-use application through anything less than use in commerce would nullify the stated policy of constructive use for encouraging prompt registration of trademarks. 273 The Board noted that adoption of the intent-to-use system by the Trademark Law Revision Act of 1988 (TLRA) had no effect on the manner of proving priority. 274 The Board found that the allegations set forth in the Notice of Opposition constituted adequate notice of pleading of the opposer’s claims, and denied the applicant’s motion to dismiss. 12. Procedural Issues a. Proof of Service (1) Proof of Service Absent Actual Service is Insufficient Springfield Inc. v. XD The Board dismissed an opposition that failed to effect actual service in accordance with the proof of service contained in the Notice of Opposition. 275 On the last day of the extended opposition period, the opposer filed electronically a Notice of Opposition incorporating proof of service via a checked box. However, the opposer failed to serve the applicant until nearly 20 days afterward. The opposer then filed a motion to amend its notice of opposition to cure the defective proof of service by correcting the actual service date. The Board denied the motion and dismissed the opposition because the opposer failed to comply with the service rules. A Notice of Opposition or Petition for Cancellation must include proof of service accompanied by actual service to maintain the filing date. 276 A promise to make service at some point in the future is insufficient for this purpose. Proof of service absent actual service is meaningless and insufficient to sustain an opposition’s filing date. 277 Likewise, without proof of service, the Board will not institute an opposition even if service was actually effected. 278 The Board noted that the opposer would not be without 272. 15 U.S.C. § 1051(b). 273. See Senate Judiciary Committee Report on S. 1883, S. Rep. No. 100-515 (Sept. 15, 1998). 274. See Corp. Document Servs., Inc. v. I.C.E.D. Mgmt. Inc., 48 U.S.P.Q.2d 1477 (T.T.A.B. 1998). 275. Springfield Inc. v. XD, 86 U.S.P.Q.2d 1063 (T.T.A.B. 2008). 276. 37 C.F.R. § 2.101. 277. Id. at 1064. 278. Id. 62 Vol. 99 TMR recourse because it may petition to cancel the applicant’s mark if and when it registers. b. Petition for Cancellation After Fifth Anniversary (1) Petition Dismissed Finanz St. Honoré B.V. v. Johnson & Johnson In a case of first impression, the Board considered whether Section 14(3) of the Lanham Act 279 permits cancellation of a registration at any time when part of a mark is alleged to be generic for the goods or services. 280 The applicant in an opposition proceeding counter-claimed to cancel the opposer’s registrations for LOVE’S BABY SOFT, both of which were more than five years old. The basis was that the registrations failed to include disclaimers of the generic terms of the marks. The opposer moved to dismiss the counter-claims as being time-barred. Section 14(3) of the Lanham Act 281 permits cancellation of a registration at any time, even after the registration’s fifth anniversary, 282 if the registered mark becomes the generic name for the goods or services. However, does Section 14(3) permit cancellation if only part of the registered mark is alleged to be generic for the goods or services? In a case of first impression, the Board said no. Section 14(3) only provides for a claim based on an allegation that the mark as a whole is generic, not where a portion is alleged to be generic. 283 Because the allegation is not one of the enumerated possible grounds for cancellation under Section 14(3) and because the counterclaim was filed more than five years after issuance of the registration, it was time-barred and was stricken. c. Standing (1) Opposer Had Standing to Oppose Target Brands, Inc. v. Hughes A wholly-owned subsidiary that manages and protects its parent company’s intellectual property has standing to oppose a 279. 15 U.S.C. § 1064(3). 280. Finanz St. Honoré B.V. v. Johnson & Johnson, 85 U.S.P.Q.2d 1478 (T.T.A.B. 2007). 281. 15 U.S.C. § 1064(3). 282. Compare 15 U.S.C. § 1064(1), which allows any person who believes he is or will be damaged by registration of a mark to petition to cancel it on any basis within five years of the date of registration. Conversely, § 1064(3) only allows certain bases to be alleged after the registration’s fifth anniversary. 283. Finanz St. Honoré B.V., 85 U.S.P.Q.2d at 1480. Vol. 99 TMR 63 mark that may damage the parent company’s trademark rights. Neither the subsidiary nor the parent need market the identical goods sold by the applicant, but need only engage in the manufacture or sale of the same or related goods, and that the product sold by the applicant could be produced in the normal expansion of the opposer’s business. 284 The applicant applied to register ULTIMATE POLO (“POLO” disclaimed) for sun protective clothing for men, women and children, namely, shirts in International Class 25. The application included a claim of acquired distinctiveness for the mark under Lanham Act Section 2(f). The application was opposed by a whollyowned subsidiary of the Target Corporation, a retail store chain that markets women’s polo shirts using the term “ultimate polo” in a descriptive manner. The opposer owns and manages the intellectual property rights of the Target Corporation, and as such, claimed that it would be harmed by registration of the term ULTIMATE POLO. The Notice of Opposition alleged that the applicant submitted insufficient evidence to establish Section 2(f) distinctiveness for the mark, and that the use of the mark relied upon by the applicant was not exclusive. In addition to denying the opposer’s allegations, the applicant asserted that the opposer lacked standing to bring the opposition, because Target Corporation does not use ULTIMATE POLO as a trademark, and does not sell or market sun protective clothing in connection with the designation ULTIMATE POLO. The Board rejected the challenge to the opposer’s standing. It noted that the opposer was in privity with Target Corporation, that the opposer’s parent company manufactures and sells shirts that are competitive with the applicant’s, and that the opposer is engaged in managing and protecting the parent company’s intellectual property rights. In addition, it is not necessary to market the identical goods for which a descriptive designation is used in order to oppose an application. It is sufficient that the opposer market related goods and that the opposer could produce the applicant’s products in the normal expansion of the opposer’s business. If the mark in question is found to be merely descriptive, damage is presumed because a registration would limit the opposer’s rights to use the descriptive designation in connection with the same or similar goods. 285 The Board found the applicant’s sun protective clothing to be in competition with the women’s polo shirts marketed by the opposer’s parent, Target Corporation. The harm to the opposer’s parent in being unable to use a descriptive term in 284. Target Brands, Inc. v. Hughes, 85 U.S.P.Q.2d 1676 (T.T.A.B. 2007). 285. Fed. Glass Co. v. Corning Glass Works, 162 U.S.P.Q. 279, 282-83 (T.T.A.B. 1969). 64 Vol. 99 TMR connection with the marketing of its polo shirts justified standing for the opposer. 286 Corporación Habanos S.A. v. Guantanamera Cigars Co. A Cuban company was able to establish standing to oppose a U.S. application despite the fact that the Cuban company cannot sell its products in the U.S. due to embargo. 287 The opposer, a Cuban cigar manufacturer, sought to oppose an application for GUANTANAMERA for “tobacco, namely cigars” based upon its own application for GUANTANAMERA for cigars, articles for smokers and matches, which had been suspended pending final disposition of the applicant’s mark. Further, the opposer submitted a letter from the U.S. Department of Treasury confirming the opposer’s ability to oppose registration of a new trademark in which Cuba has an interest. 288 The Board found that the opposer had a real interest in the outcome of the proceeding, and that as a Cuban entity, it was not restricted from pursuing an opposition. 289 Therefore, the opposer had established its standing to oppose. (2) Opposer Lacked Standing to Oppose Demon International LC v. Lynch The Board dismissed an opposition after trial regarding the opposer’s DEMON mark without reaching the merits because the opposer failed to prove standing or priority and insufficiently pleaded its claims. 290 Demon International LC opposed William Lynch’s application for the mark DEMON MX and Design for t-shirts, hooded sweatshirts, hats, knit caps, gloves, and motocross jerseys based on a likelihood of confusion with and dilution of the opposer’s DEMON mark for a variety of men’s and women’s clothing and headwear items. Because the opposer did not submit proof of ownership or issuance of its asserted registration and failed to allege or prove that its DEMON mark was famous, both claims were dismissed. The Board found the opposer’s dilution claim to be insufficient because it did not allege the fame of the opposer’s mark, and the 286. Target Brands, 86 U.S.P.Q.2d at 1679. 287. Corporación Habanos S.A. v. Guantanamera Cigars Co., 86 U.S.P.Q.2d 1473 (T.T.A.B. 2008). 288. Section 515.527 of the Cuban Assets Control Regulations, 31 C.F.R. Part 515. 289. Corporación Habanos S.A. v. Guantanamera Cigars Co., 86 U.S.P.Q.2d 1473 (T.T.A.B. 2008); see Ritchie v. Simpson, 170 F.3d 1092 (Fed. Cir. 1999); Jewelers Vigilance Comm., Inc. v. Ullenberg Corp., 823 F.2d 490 (Fed. Cir. 1987). 290. Demon Int’l LC v. Lynch, 86 U.S.P.Q.2d 1058 (T.T.A.B. 2008). Vol. 99 TMR 65 opposer’s brief contained no arguments to support a finding of fame or dilution. In fact, the opposer failed to enter any evidence into the record at all, which consisted only of the opposed application and the pleadings. 291 The Board also dismissed the opposer’s priority and likelihood of confusion claims for lack of standing. The opposer argued in its trial brief that it owned a prior registration for the mark DEMON to support its claim, but the record included no evidence of issuance or ownership of the registration. The opposer merely averred in its Notice of Opposition that it owned an application “in the process of publication.” 292 While the applicant stated in its Answer that it “does not dispute” the filing of the opposer’s application, the Board concluded that those words were not sufficient to constitute an admission of the opposer’s ownership or the validity of a registration, and absent clear, unequivocal and informed admissions, the opposer must prove its case. 293 Because the opposer did not make of record evidence of prior use, the Board found that the opposer failed to establish prior proprietary rights in the DEMON mark. Finding no proper basis for the opposition, the Board dismissed it for lack of standing and lack of proof of priority. (3) Collateral Estoppel i. Collateral Estoppel Not Found DaimlerChrysler Corp. v. Maydak In a case illustrating that an opposer may not always get what it wants but can sometimes get what it needs, the Board sustained an opposition to FORADODGE for consulting and information services, not on the ground of claim preclusion argued by the opposer, but rather, on the unpleaded ground that a prior civil court decision precluded the applicant from registering the mark. 294 The opposer sought summary judgment based upon a civil court decision in which the opposer, the plaintiff in that case, prevailed in a claim under the Anti-Cybersquatting Consumer Protection Act (ACPA). 295 Granting the plaintiff’s motion for 291. Id. at 1059. 292. Id. 293. Id. at 1060-61 (the Board viewed the “does not dispute” phrase as a statement that the applicant had insufficient information to dispute the contention that constituted an effective denial). 294. DaimlerChrysler Corp. v. Maydak, 86 U.S.P.Q.2d 1945 (T.T.A.B. 2008). Discussed infra, Part III.B.12.e.(2)i. 295. DaimlerChrysler Corp. v. Maydak, Case No. 98-CVG-74186-DT (E.D. Mich. 2003), aff’d, DaimlerChrysler v. Maydak, 388 F.3d 201 (6th Cir. 2004). 66 Vol. 99 TMR summary judgment, the court also granted the plaintiff a permanent injunction that prevented the applicant, the defendant in that case, from using or registering FORADODGE or FORADODGE.COM. The plaintiff voluntarily dismissed the other claims without prejudice, the defendant appealed and the Circuit Court affirmed the District Court’s decision in its entirety. Back before the Board, the opposer sought summary judgment based upon collateral estoppel, arguing that the District Court’s ruling on the ACPA claim mandated a finding by the Board that the applicant’s use of FORADODGE and the domain name FORADODGE.COM would likely cause confusion with the opposer’s DODGE marks. For collateral estoppel to apply, there must be an identity of issues with the prior preceding, the issues must actually have been litigated, the determination of the issues must have been necessary to the resulting judgment, and the party defending against collateral estoppel must have had a full and fair opportunity to litigate the issues in the prior trial. 296 Comparing the nature of a claim under the ACPA to the registrability issue before it, the Board concluded that while some likelihood of confusion issues were indeed litigated in connection with the ACPA claim, others were not determined, such as the relatedness of the parties’ respective goods and services. Nevertheless, the Board found that the opposer was entitled to summary judgment because the court issued a permanent injunction preventing the applicant from using or registering FORADODGE for any products and services, implicitly including those services at issue in the opposition. The Board found that it was a legal impossibility for the applicant to obtain a registration because the court’s injunction permanently prohibited the applicant from using the applied-for mark. As a result, the Board granted the opposer summary judgment and refused registration to the applicant. d. Motions Practice (1) Motion to Withdraw Admissions i. Motion Granted in Part, Denied in Part Giersch v. Scripps Networks, Inc. In a cancellation proceeding where a respondent failed timely to respond to admission requests, the Board denied the respondent’s motion to reopen the time to respond, but granted a 296. Id. at 1948, quoting Mayer/Berkshire Corp. v. Berkshire Fashions Inc., 424 F.3d 1229 (Fed. Cir. 2005). Vol. 99 TMR 67 motion to withdraw and amend its answers. 297 The petitioner filed a motion for summary judgment that the respondent committed fraud, asserting that petitioner’s Requests for Admissions were deemed admitted when the respondent failed to serve written answers or objections within 30 days after service of the requests. 298 The respondent filed cross motions to reopen its time to respond to the petitioner’s admission requests under Federal Rule of Civil Procedure 6(b)(2) or alternatively to withdraw the admissions under Rule 36(b) and submit amended responses. While both motions seek the same result, each motion has a different standard. A motion to reopen the time to respond requires the movant to show that the failure timely to respond was the result of excusable neglect. A motion to withdraw has two requirements: First, that presentation of the action on the merits would be served by withdrawal of the admissions, and second, that the party who obtained the admissions cannot satisfy the court that it will be prejudiced in maintaining its action or defense on the merits. 299 The Board denied the motion to reopen the time to answer, finding that the respondent’s excuse for neglect—that it had mistakenly assumed that the petitioner’s counsel would agree to a third extension request upon the respondent’s counsel’s return from an overseas business trip—was insufficient. However, the Board granted the respondent’s motion to withdraw and amend its answers. The Board found that the merits of the action would be served by allowing the respondent to try its case on these critical issues rather than simply admit them, and that the petitioner would not be prejudiced in this particular case because the motion for summary judgment had been filed before the close of discovery and therefore any prejudice could be mitigated by extending the discovery deadline. 300 Exercising its discretion pursuant to Rule 36(b), the Board granted the motion to withdraw the admissions and agreed to accept the substitute responses. 297. Giersch v. Scripps Networks, Inc., 85 U.S.P.Q.2d 1306 (T.T.A.B. 2007). 298. Fed. R. Civ. P. 36. 299. Fed. R. Civ. P. 36(b). See also Hadley v. U. S., 45 F.3d 1345 (9th Cir. 1995); McClanahan v. Aetna Life Ins. Co., 144 F.R.D. 316 (W.D. Va. 1992). 300. See Johnston Pump/General Valve, Inc. v. Chromalloy Am. Corp., 13 U.S.P.Q.2d 1719 (T.T.A.B. 1988). 68 Vol. 99 TMR (2) Motion to Strike i. Motion Denied DaimlerChrysler Corp. v. Maydak In an opposition proceeding, the Board denied the opposer/movant’s motion to strike the applicant’s response to the opposer’s summary judgment motion on the bases that it was filed late, that it was not properly signed, and that the opposer did not receive its service copy. 301 In this case, the response was filed electronically, and because every electronic response must include an electronic signature incorporating a symbol between two forward slash marks (“/s/”), the Board concluded that the response was properly signed. The Board also found no evidence from which to conclude that the applicant did not serve a copy of the response on the opposer. Finally, even though the response was filed late, the Board decided to accept and consider the response because there would be no prejudice to the opposer and because it was important to review the submissions of both parties in order to consider the substance of the underlying dispute in addition to the issue of claim preclusion. 302 (3) Motion for Sanctions i. Sanctions Granted HighBeam Marketing LLC v. Highbeam Research LLC The Board granted two motions for sanctions and one motion to compel based on opposer’s failure to cooperate in discovery. 303 The applicant sought sanctions based on the opposer's failure to comply with the Board's order compelling discovery, and on the opposer's role in causing the failure of its expert witness to appear for a subpoenaed discovery deposition. The applicant requested judgment in its favor or, in the alternative, that the opposer be precluded from introducing evidence at trial on the following subjects for which additional discovery was compelled but not fully produced: (1) alleged instances of actual confusion, (2) the alleged relatedness of the services at issue, and (3) the alleged overlap of purchasers thereof. The applicant also requested that the opposer be precluded from 301. DaimlerChrysler Corp. v. Maydak, 86 U.S.P.Q.2d 1945 (T.T.A.B. 2008). Discussed supra, Part III.B.12.c(3)(i). 302. Id. at 1946-47; discussed supra, Part III.B.12.c.(3)(i). 303. HighBeam Marketing LLC v. Highbeam Research LLC, 85 U.S.P.Q.2d 1902 (T.T.A.B. 2008). Vol. 99 TMR 69 introducing at trial any evidence of the opposer’s expert’s survey regarding these subjects. The applicant also filed a motion to compel three of the opposer's employees to appear for discovery depositions. Although the applicant filed its motions more than ten months after issuance of the Board’s March 30, 2006 order compelling discovery, the Board rejected the opposer’s contention that the applicant’s motions were untimely, in view of an intervening extension and suspension. Upon resumption of the proceedings, the applicant promptly and repeatedly raised objections regarding the sufficiency of the opposer’s discovery responses. As the applicant filed its motion for discovery sanctions less than two months after resumption of proceedings, the Board concluded that there was no unreasonable delay. The Board also found baseless the opposer’s objection that neither the Board nor the applicant provided it with warning that a motion for sanctions was imminent. The Board noted that unlike a motion to compel discovery, there is no requirement to make a good faith effort to resolve the parties’ dispute prior to filing a motion for discovery sanctions. 304 Turning to the substantive motions, the Board agreed that the opposer’s failure to provide complete responses to the applicant’s discovery requests merited sanctions. After the Board previously granted the applicant’s motion to compel the opposer to serve further responses to various discovery requests, the opposer served some further responses, but these responses were still incomplete. Indeed, the Board found that the opposer confirmed this by serving further responses after the applicant filed its motion for sanctions. For these reasons, the Board found the opposer’s disclosures to be an insufficient response to its order compelling production, and entered discovery sanctions against the opposer. The sanctions prohibited the opposer from using as evidence at trial any information or documents related to alleged instances of actual confusion, the alleged relatedness of the services at issue, and the alleged overlap of purchasers, which the opposer failed to produce prior to the applicant's motion for discovery sanctions. Additionally, the Board sanctioned the opposer for its role in causing the opposer’s expert witness to fail to appear for a noticed and subpoenaed deposition. The opposer had retained its expert witness to collect survey evidence. When the applicant asked the opposer when its expert might be available for a discovery deposition, the opposer eventually indicated that its expert would be available only for the time period January 17-19, 2007 in the Houston area, and only if the applicant agreed to pay for the 304. 37 C.F.R. § 2.120(g); TBMP § 527 (2d ed. rev. 2004). 70 Vol. 99 TMR expert’s time and travel at a rate of $370 per hour. The applicant served a subpoena on the expert, compelling her to appear for a discovery deposition on January 18, 2007, and also to produce certain documents for inspection. The applicant advised the opposer of the deposition, and indicated that it intended to pay the expert only the statutory witness fee and mileage. Counsel for the opposer responded that the expert would testify only if the expert’s requested fees and travel expenses were paid beforehand, and as the opposer assumed that this was unacceptable to the applicant, stated that the deposition would not take place. The Board noted that counsel for the opposer had clearly prevented the deposition by insisting that the applicant pay the expert prior to the deposition. The Board stated that the expert could have attempted to quash the subpoena in federal court or to resolve the fee dispute after testifying, instead of defying the subpoena. Based on the opposer’s counsel’s role in preventing the expert from complying with the subpoena, the Board held that sanctions against the opposer were warranted. The Board precluded the opposer from using at trial the expert’s survey, any report summarizing the survey results, or any testimony from the expert. The Board believed that the sanctions were authorized by Trademark Rule 2.120(g)(2), but to the extent that there was any question regarding the applicability of this rule, the Board could also rely on its inherent authority. 305 Finally, the Board granted a further motion to compel, requiring the opposer's employees to appear for discovery depositions. The record showed that the applicant made repeated attempts to compel three of the opposer’s employees to appear for discovery depositions. While the applicant had made a good faith effort to resolve the dispute, 306 the opposer did not cooperate. Accordingly, the Board granted the applicant’s motion to compel, giving the opposer 30 days to produce the three employees for depositions. M.C.I. Foods Inc. v. Bunte The Board held that the ultimate sanction of adverse judgment is inappropriate for failure to comply with an order by the Board compelling discovery, but lesser sanctions are appropriate. 307 M.C.I. Foods and Brady Bunte filed petitions to cancel each other’s registrations for CABO-based marks for Mexican food products and chips respectively. The proceedings were consolidated and Bunte filed motions to compel discovery in 305. Cent. Mfg., Inc. v. Third Millennium, Inc., 61 U.S.P.Q.2d 1210 (T.T.A.B. 2001)). 306. 37 C.F.R. § 2.120(e)(1). 307. M.C.I. Foods, Inc. v. Bunte, 86 U.S.P.Q.2d 1044 (T.T.A.B. 2008). Vol. 99 TMR 71 both cases that were granted as uncontested. After the motions were filed, but before the orders were entered, M.C.I. Foods served some untimely discovery answers and objections to Bunte’s requests for admissions and interrogatories, and indicated that it would make responsive documents available—some upon entry of a suitable protective order. M.C.I. failed to produce documents or provide a log of privileged documents. Bunte moved for sanctions. The Board agreed with Bunte that M.C.I.’s discovery efforts were sanctionable for two reasons. First, a promise to produce unspecified documents at a later time is an insufficient response to a Board order compelling production, regardless of the reason. Second, a party can no longer withhold documents awaiting entry of a protective order because the Board’s standard protective order is, in effect, by rule. 308 During the discovery phase, parties may resolve disputes about the manner and place of production of documents as they desire, but after a motion to compel has been granted, the responding party must comply with the discovery requests in the manner set forth by the requesting party unless otherwise specified by the Board. 309 As a result, the Board found M.C.I. Foods’ statement that it would make documents available to be insufficient as Bunte specifically requested the documents be produced in its counsel’s office. While the Board concluded that M.C.I. Foods had failed to comply with its orders compelling discovery responses, entering a default judgment “would go too far.” 310 However, the Board found that lesser sanctions would be appropriate, including strict compliance without objection to Bunte’s requests, copying responsive documents at M.C.I. Foods’ expense, serving a privilege log, and prohibitions on use of the documents produced pursuant to the grant of sanctions. (4) Motion for Extension of Discovery Period i. Motion Denied National Football League v. DNH Management LLC The Board denied a motion by opposers National Football League and NFL Properties LLC to extend discovery in an opposition by 90 days. The applicant DNH Management LLC filed a motion to quash the opposers’ noticed discovery deposition, or in 308. Id.; see 37 C.F.R. § 2.116(g). 309. Id. at 1046. 310. Id. at 1048; see Elec. Indus. Ass’n v. Potega, 50 U.S.P.Q.2d 1775, 1777 (T.T.A.B. 1999). 72 Vol. 99 TMR the alternative, for the entry of a protective order pursuant to Federal Rule of Civil Procedure 26(c)(1). 311 The standard for granting an extension of the discovery period is good cause. 312 A request for an extension of the discovery period will generally be granted as long as the moving party has not been guilty of negligence or bad faith, and the privilege of extensions is not abused. 313 However, the party requesting the extension must establish that it was diligent in meeting its responsibilities with respect to the discovery process. 314 On the one hand, the Board noted that this was the opposers’ first request for an extension, that the opposers had not abused the opportunity to request extensions, and that there was no evidence of bad faith on their part. Nevertheless, the Board observed that the opposers had not served written discovery requests until the final day of discovery, and that they did not attempt to depose the applicant during the discovery period. This lack of effort did not rise to the showing necessary to establish good cause to support an extension of the discovery period for any length of time. 315 Accordingly, the Board denied the opposers’ request for an extension of the discovery period. The Board was not persuaded by the opposers’ argument that their discovery efforts were delayed because the parties were engaged in settlement discussions. Once the applicant filed an answer, the opposers should have realized that the opposition was going to proceed. However, the opposers did not attempt to initiate settlement discussions with the applicant until more than two months later, and they did not serve initial discovery requests until two days after discovery closed. Furthermore, there was no evidence in the record to suggest that the applicant was even disposed to consider a settlement offer. On the last day of discovery, the opposers noticed a discovery deposition under Rule 30(b)(6), seeking designation by the applicant of a witness for a deposition to take place on a date after the close of discovery. However, absent a stipulation between the parties, discovery depositions must be noticed and taken during the discovery period as originally set or extended. 316 As the discovery period had not been extended, the Board granted the 311. Nat’l Football League v. DNH Mgmt. LLC, 85 U.S.P.Q.2d 1852 (T.T.A.B. 2008). 312. Fed. R. Civ. P. 6(b) and TBMP § 509 (2d ed. rev. 2004). 313. Nat’l Football League, 85 U.S.P.Q.2d at 1854. 314. Sunkist Growers, Inc. v. Benjamin Ansehl Co., 229 U.S.P.Q. 147, 149 (T.T.A.B. 1985). 315. See Leumme, Inc. v. D.B. Plus Inc., 53 U.S.P.Q.2d 1758, 1760 (T.T.A.B. 1999). 316. Trademark Rule 2.120(a); TBMP § 404.01 (2d ed. rev. 2004). Vol. 99 TMR 73 applicant’s motion to quash the notice of deposition. The applicant’s alternative motion for a protective order was therefore denied as moot. By denying the opposers’ extension requests in a published decision, the Board was serving notice on practitioners that it expects parties to show diligence in prosecution, even for the very first extension request, if that request is opposed. PART IV. TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION IN THE COURTS OF GENERAL JURISDICTION By Theodore H. Davis, Jr. A. Acquisition of Trademark Rights 1. What Can Qualify as a Protectable Mark? The deliberately broad definition of a “trademark” contained in Section 45 of the Lanham Act 317 has led to any manner of designations receiving protection as marks, 318 including strings of musical notes. 319 Nevertheless, courts have consistently balked at extending trademark protection to entire songs, and not necessarily because the songs cannot meet the factual prerequisites of use in commerce, distinctiveness, and nonfunctionality. Rather, as reflected in one opinion over the past year, there are perceived unique legal barriers to protection: A musical composition . . . cannot be protected as its own trademark under the Lanham Act. In addition, the Lanham Act has been held not to permit a plaintiff to state a . . . claim predicated on the use of an allegedly distinctive “signature” sound recording. Moreover, a [good that incorporates and reproduces a song] is a tangible good, and protection of the underlying “sound” captured in it exceeds the scope of the Lanham Act. 320 317. 15 U.S.C. § 1127 (2006). 318. See, e.g., Universal Tube & Rollform Equip. Corp. v. YouTube Inc., 504 F. Supp. 2d 260, 264-66 (N.D. Ohio 2007) (declining, on motion to dismiss, to hold that plaintiff’s claimed domain names did not function as marks). 319. See, e.g., In re Gen. Elec. Broad. Co., 199 U.S.P.Q. 560 (T.T.A.B. 1978) (affirming registrability of musical chimes as service mark). 320. Romantics v. Activision Publ’g, Inc., 532 F. Supp. 2d 884, 889 (E.D. Mich. 2008) (citations omitted). 74 Vol. 99 TMR 2. The Use in Commerce Requirement a. The Nature and Quantity of Use Necessary to Establish Protectable Rights “Ordinarily, a party establishes ownership of a mark by being the first to use the mark in commerce,” 321 and the Lanham Act is replete with sections codifying this requirement. Sections 32 and 43(a) recognize it as a prerequisite for the protection of a mark under a likelihood-of-confusion-based theory. 322 Likewise, Section 43(c) mandates it in an action to protect the fame and distinctiveness of the underlying mark from likely dilution. 323 There are, of course, exceptions to this general rule in the Lanham Act as well, including one found in Section 5. 324 Under it, a party claiming priority need not necessarily establish that it has itself used the mark to which it claims rights; rather, “[i]f first use of a mark by a person is controlled by the registrant or applicant for registration of the mark with respect to the nature and quality of the goods or services, such first use shall inure to the benefit of the registrant or applicant, as the case may be.” 325 Although most often invoked in the licensing context, 326 this provision assumed center stage in a case in which five federal service mark registrations were secured by the founder of two non-profit organizations and of three for-profit corporations. 327 Following the founder’s death, his estate and two of three for-profit corporations sued the nonprofits, only to find themselves preliminarily enjoined from the marks’ use. Vacating the preliminary injunction, the D.C. Circuit rejected the nonprofits’ argument that, as nonprofits, they were not “related” to the founder in a way that their use of the marks could inure to his benefit. Holding that “[t]he statute does not expressly require formal corporate control, as the district court suggested,” 328 the court therefore remanded the action to the district court to determine whether the nonprofits’ use of the marks had indeed been controlled by the founder. 329 321. Estate of Coll-Monge v. Inner Peace Movement, 524 F.3d 1341, 1347 (D.C. Cir. 2008). 322. 15 U.S.C. §§ 1114, 1125(a) (2006). 323. 15 U.S.C.A. § 1125(c) (West Supp. 2007). 324. 15 U.S.C. § 1055. 325. Id. 326. See, e.g., Univ. of Kan. v. Sinks, 565 F. Supp. 2d 1216, 1242-43 (D. Kan. 2008) (recognizing licensor’s protectable rights to marks used by licensees, rather than licensor itself). 327. See Estate of Coll-Monge v. Inner Peace Movement, 524 F.3d 1341 (D.C. Cir. 2008). 328. Id. at 1348. 329. See id. at 1349. Vol. 99 TMR 75 Another significant exception to the general prerequisite of use in commerce can be found in Section 1(b), which governs intent-to-use applications. 330 Although Section 1(d) requires a demonstration of use in commerce before a registration will issue from the USPTO, 331 the rights attaching to such a registration “relate back” to the application’s filing date under Section 7. 332 The contingent nature of this process led one plaintiff to assert that the defendant’s mere filing of an intent-to-use application did not give the defendant priority in an inter partes dispute under Section 2(d) 333 before the Trademark Trial and Appeal Board. 334 The D.C. Circuit would have none of this argument: [A]n intent-to-use applicant prevails over any opposer who began using a similar mark after the intent-to-use filing date. Covering applications of all types, including § 1(b) applications, § 2(d) simply says a mark [sic] is invalid if there is a likelihood of confusion with a mark “previously used.” “Previously used” must mean used before some date, and for a pending § 1(b) application, there is only one date that could apply: the filing date. . . . Holding to the contrary, as [the plaintiff] urges, would not only make nonsense of § 2(d) but would also vitiate the intentto-use application system itself. . . . [T]he legislative history supports our conclusion, based on the text of § 2(d), that an intent-to-use applicant may rely on his filing date to establish priority during an opposition proceeding. 335 In the same opinion, however, the court rejected the claim by the defendant that only use in commerce of the plaintiff’s mark would give the plaintiff standing to oppose the defendant’s application. On the contrary, it held, “adoption of the mark by use analogous to strict trademark use will . . . suffice.” 336 As a consequence, “[a]n opposer may rely upon myriad forms of activity besides sales themselves, including, among others, regular business contacts, after-sales services, advertising of various forms, and marketing. Even marketing of a trademarked product before the product is ready for sale has the potential to defeat a rival’s registration.” 337 330. Id. 331. 15 U.S.C. § 1051. 332. Id. § 1057. 333. Id. § 1052(d). 334. See Aktieselskabet AF 21. November 2001 v. Fame Jeans Inc., 525 F.3d 8 (D.C. Cir. 2008). 335. Id. at 18-19 (citation omitted). 336. Id. at 20. 337. Id. (citations omitted). 76 Vol. 99 TMR In contrast to those in which claims of priority succeeded, 338 a number of reported decisions took issue with plaintiffs’ allegations of actual use in commerce, with an opinion from the Second Circuit leading the way. 339 The counterclaim plaintiff was a corporate consultant who had unsuccessfully pitched a personalized credit card concept using the slogan “My Life, My Card,” to several credit card providers. Litigation resulted when, after being turned down by American Express, the counterclaim plaintiff saw that company using the same slogan in a global advertising campaign. The district court entered summary judgment in favor of American Express, and the Second Circuit affirmed. As to the counterclaim plaintiff’s claims of actual use in commerce, the Second Circuit noted of the record that “the only reasonable conclusion that can be drawn is that “My Life, My Card was a component of [the counterclaim plaintiff’s] business proposal to the credit card companies rather than a mark designating the origin of any goods or services he offered to them.” 340 In particular, “for the obvious reason that [the counterclaim plaintiff] did not sell credit cards, he never displayed the slogan to card consumers.” 341 Under these circumstances, the court held that the slogan had not been used to differentiate the plaintiff’s goods and services. Instead, “the slogan served as ‘a mere advertisement for itself as a hypothetical commodity.’” 342 Unable to demonstrate actual use in commerce, the counterclaim plaintiff fell back on a claim that he enjoyed protectable rights under the analogous use doctrine. The court was unmoved. As it noted, analogous use sufficient to create protectable rights must be so open and notorious that a claimed mark has become “‘popularized in the public mind’ so that the relevant segment of the public identifies the marked goods with the mark’s adopter.” 343 Here, however, “[the counterclaim plaintiff] used his slogan only in communications with a few commercial actors within the credit card industry. There was no public 338. In addition to those finding actual prior use of their marks by plaintiffs, at least one opinion deferred resolution of the issue on the defendant’s motion for summary judgment. See Spira Footwear, Inc. v. Basic Sports Apparel, Inc., 545 F. Supp. 2d 591, 594-95 (W.D. Tex. 2008) (finding that testimony by employees of counterclaim plaintiff of sales created justiciable issue of fact, notwithstanding apparent absence of corroborating documentary evidence). 339. See Am. Express Co. v. Goetz, 515 F.3d 156 (2d Cir.) (per curiam), cert. denied, 129 S. Ct. 176 (2008). 340. Id. at 160. 341. Id. 342. Id. at 161 (citation omitted). 343. Id. at 162 (quoting Housing & Servs., Inc. v. Minton, No. Civ. 2725, 1997 WL 349949, at *4 (S.D.N.Y. June 24, 2007)). Vol. 99 TMR 77 exposure of the My Life, My Card slogan.” 344 Equally damning, “[the counterclaim plaintiff] himself, in a series of emails . . . indicated that he wanted to keep a low profile for the project and for the website. Such use was neither open nor notorious and the My Life, My card never came to be associated with [the counterclaim plaintiff] in the public mind.” 345 Finally, even the counterclaim plaintiff’s failure to proceed with his own use after discovering that of American Express weighed against his claims of analogous use: “The doctrine . . . has not been stretched so far as to obviate the requirement that [the counterclaim plaintiff] show eventual actual use.” 346 Another court was confronted with competing claims to several marks traceable to a single company that had once been engaged in several businesses, including the operation of an inn and the manufacture and sale of various arts and crafts. 347 Ownership of the individual businesses diverged over the years, and the eventual purchaser of the inn asserted exclusive ownership rights to the marks in a suit against the owners of a gift shop on the same campus. The plaintiff moved for summary judgment on the issue of the marks’ ownership but fell short. In denying the plaintiff’s motion, the court observed that “[t]he . . . Marks, to the extent that they were used in the business of the Inn, were passed with the sale of the Inn from owner to owner. However, the business of the Inn was food, drink, lodging, and, perhaps, entertainment.” 348 As a consequence, “it does not follow that the succession of owners of the Inn acquired exclusive ownership of the Marks as . . . identifier[s] of furniture and other goods for sale [by the defendants].” 349 A perhaps less successful attempt to unravel a tangled series of transactions in the priority dispute originated in a license under which the plaintiff’s mark was affixed to toys produced by the defendant. 350 The court first relied on the defendant’s copyright registration to conclude that the defendant had adduced presumptive evidence of its ownership of the trade dress. It also concluded that the defendant had used the trade dress in commerce by producing and selling goods incorporating the design. In contrast, “[the plaintiff] has not offered any evidence that, based 344. Id. 345. Id. at 162. 346. Id. 347. See Margaret Wendt Found. Holdings Inc. v. Roycroft Assocs., 84 U.S.P.Q.2d 1690 (W.D.N.Y. 2007). 348. Id. at 1695. 349. Id. 350. See Pilot Corp. v. Fisher-Price, Inc., 501 F. Supp. 2d 292 (D. Conn. 2007). 78 Vol. 99 TMR on the use of the disputed trade dress, [the plaintiff] has become identified as the source of the . . . toy.” 351 The court was not surprised by this failure: As it explained, “[the defendant] was, in fact the source of the . . . toy at all relevant times; it manufactured and distributed the toy during the years when the disputed trade dress was in use.” 352 One of the more imaginative, but still unsuccessful, claims to actual use in commerce came in a bankruptcy proceeding originating in the refusal of a tax protestor to satisfy his obligations to the federal government. 353 Apparently relying on the conventional practice within the trademark bar of capitalizing trademarks and service marks to distinguish them from ordinary words, the debtor claimed in a convoluted argument that the federal government’s capitalization of his name in delinquency notices and pleadings had created a protectable mark in his name that was worth a modest $10,000,000. The court rejected the debtor’s attempt to offset his liability with the value of his putative mark: [T]he position espoused by the Debtor would necessarily have to be read to include all citizens of the United States. However, this begs the question [as] to the soundness and validity of this argument since there are numerous American citizens who bear the same name. It is inconceivable, if not impossible, and surely contradictory to trademark law, to assume that every person has a commercial interest in a common law trademark in his or her name. This would have a duplicating effect [of creating] trademarks of exactly the same mark, which is wholly inconsistent with the notion of trademark law—the interest in a unique mark. Moreover, this purported interaction between the individual, the government, and his or her pseudo trademark does not come close to establishing legal adoption and use of a mark on goods or services for commercial purposes. . . . 354 Of course, no Lanham Act year would be complete without a reported opinion rejecting claims of prior use in commerce by Leo Stoller and his affiliated companies, with this year’s exemplar coming from the Seventh Circuit. 355 That court heard an appeal from the rejection of claims by several of Stoller’s companies that they had established protectable rights to the STEALTH mark for baseballs and other sporting goods prior to the defendants’ 351. Id. at 298. 352. Id. 353. See In re Wrubleski, 380 B.R. 635 (Bankr. S.D. Fla. 2008). 354. Id. at 640. 355. See Cent. Mfg., Inc. v. Brett, 492 F.3d 876 (7th Cir. 2007). Vol. 99 TMR 79 introduction in 1999 of baseball bats under the same mark. After having missed a number of deadlines to document their alleged prior use of the mark, the plaintiffs produced “several documents” in the form of quote sheets and one that purported to summarize the plaintiffs’ annual sales without reference to particular transactions. The appellate court agreed with the district court that this showing was inadequate as a matter of law: Even if the sufficiency of [the plaintiffs’] use were not a question of fact warranting deferential treatment on appellate review, it would not be a close question: there is absolutely nothing in the record upon which any reasonable person could conclude that [the lead plaintiff] and its predecessors actually sold “Stealth” baseballs prior to [the defendants’] first use of the mark in 1999. . . . It is unfathomable that a company claiming to have engaged in thousands of dollars of sales of a product for more than a decade would be unable to produce even a single purchase order or invoice as proof. Self-serving deposition testimony is not enough to defeat a motion for summary judgment. 356 b. The Well-Known Marks Doctrine After several years of spinning off opinions from both state and federal courts alike, the long-running litigation in ITC Ltd. v. Punchgini 357 finally ground to an apparent halt. Having earlier disposed of the plaintiff’s claims that the fame and notoriety of its BUKHARA mark for restaurant services entitled the mark to protection under federal law, despite its not being used in commerce, the Second Circuit took its shot at the plaintiff’s state law arguments. With the guidance of the New York Court of Appeals’ prior clarification of the common law tort of misappropriation in that state, 358 the Second Circuit held that, “to pursue an unfair competition claim, [the plaintiff] must adduce proof of both deliberate copying and ‘secondary meaning.’” 359 Because the original district court opinion in the action had held as a matter of law that the plaintiff’s mark did not have secondary meaning, the Second Circuit concluded that the plaintiff could not possibly satisfy the new state law standard for liability: 356. Id. at 883 (citation omitted). 357. 482 F.3d 135 (2d Cir.), certified questions accepted, 870 N.E.2d 151 (N.Y.), cert. denied, 128 S. Ct. 288, certified questions answered, 880 N.E.2d 852 (N.Y. 2007), later proceedings, 518 F.3d 159 (2d Cir. 2008). 358. See ITC Ltd. v. Punchgini, 880 N.E.2d 852 (N.Y. 2007), later proceedings, 518 F.3d 159 (2d Cir. 2008). 359. Punchgini, 518 F.3d at 161. 80 Vol. 99 TMR Like the district court, we observe that [the plaintiff’s] proffered evidence of goodwill derived entirely from foreign media reports and sources and was unaccompanied by any evidence that would permit an inference that such reports or sources reach the relevant consumer market in New York. [The plaintiff] proffered no evidence that it had directly targeted advertising of its Indian or other foreign “Bukhara” restaurants to the United States. It made no attempt to prove its goodwill in the relevant market through consumer study evidence linking the Bukhara mark to itself, and it presented no research reports demonstrating strong brand name recognition for the Bukhara mark anywhere in the United States. Moreover, the record is devoid of any evidence of actual overlap between customers of defendants’ restaurant and [the plaintiff’s] Bukhara, aside from [the plaintiff’s] own inadmissible speculation. Absent admissible evidence, however, a reasonable factfinder could not conclude that potential customers of defendants’ restaurant would primarily associate the Bukhara mark with [the plaintiff], particularly in light of evidence that numerous Indian restaurants in Massachusetts, Washington, Virginia, and around the world have used the name “Bukhara,” all without any affiliation or association with [the plaintiff]. 360 Accordingly, it affirmed the district court’s dismissal of the plaintiff’s state law claims as a matter of law. Following what appears to have been the final disposition of ITC, however, the plaintiff in another case succeeded in securing relief under the clarified state law tort. 361 There, the owner of the COHIBA mark for cigars in a number of jurisdictions outside the United States, which was prevented from doing business in the United States by the Cuban Embargo, challenged the use of the same mark by a United States company. In determining that the plaintiff was entitled to relief under New York common law, the court noted that the standard for a finding of misappropriation under ITC did not require a showing of bad faith by the defendant: “The Court was . . . clear in its articulation of the showing necessary to establish a misappropriation claim under New York law, and nowhere in its opinion did the Court make reference to or point to facts that would indicate that a separate showing of bad faith is necessary to prove misappropriation.” 362 Accordingly, it held in the plaintiff’s favor on the basis of findings of fact earlier in 360. Id. at 163 (internal quotation marks and citations omitted). 361. See Empresa Cubana del Tabaco v. Culbro Corp., No. 97 Civ. 8399, 2008 WL 4949351 (S.D.N.Y. Nov. 19, 2008). 362. Id. at *4. Vol. 99 TMR 81 the litigation that: (1) the defendant had deliberately copied the plaintiff’s mark; and (2) consumers of cigars in New York associated the COHIBA mark with the plaintiff. 363 The court did not, however, address the nature of the relief to which the plaintiff was entitled. c. Use-Based Geographic Rights Under Section 7(c) of the Act, 364 the owner of a mark registered on the USPTO’s Principal Register enjoys national priority of rights dating back to the filing date of its application. In the absence of a federal registration, however, the rights of mark owners are generally limited to the geographic areas in which they do business or into which their reputation extends. A defendant able to establish that it adopted an allegedly infringing mark in good faith and in a geographic area remote from that of a plaintiff lacking a federal registration therefore may be able to escape liability; indeed, under ordinary circumstances, it is entitled to protect its territory from incursions by the plaintiff. 365 Thus, for example, one plaintiff with limited operations in Massachusetts secured a preliminary injunction that protected its mark in only four counties in that state. 366 The same result held in a different dispute between two New Jersey parties using the same mark in closely related contexts but in different areas of the state. 367 Evaluating the scope of the parties’ respective geographic rights on the plaintiffs’ motion for a preliminary injunction, the court held as a threshold matter that “[a] senior user must . . . show entitlement to trademark protection in a particular market by providing evidence of (1) market penetration in a particular market, (2) reputation in a particular market, or (3) a ‘zone of natural expansion’ extending into a particular market.” 368 In a scholarly opinion that identified and applied a number of subfactors within each of these factors, the court found that the plaintiffs’ showing under each was insufficient to show that their rights extended into the defendants’ areas of operation prior to the defendants’ occupation of those areas. Thus, the sixty-five and seventy-three mile distances between the parties’ stores proved to be an insurmountable obstacle to the 363. Id. at *7-9. 364. 15 U.S.C. § 1057(c) (2006). 365. See generally United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918); Hanover Star Milling Co. v. Metcalf, 240 U.S. 403 (1916). 366. See Commerce Bank & Trust Co. v. TD Banknorth, Inc., 554 F. Supp. 2d 77, 88-89 (D. Mass. 2008). 367. See MNI Mgmt., Inc. v. Wine King, LLC, 542 F. Supp. 2d 389 (D.N.J. 2008). 368. Id. at 406. 82 Vol. 99 TMR plaintiffs’ entitlement to relief, especially in light of the plaintiffs’ failure to demonstrate that the defendants had adopted their mark in good faith. 369 3. Distinctiveness a. Effect of Federal Registrations on the Distinctiveness Inquiry Consistent with the recitation in both Sections 7(b) and 33(a) of the Act that a registration on the Principal Register “shall be prima facie evidence of the validity of the registered mark,” 370 courts faced with evaluating the distinctiveness of marks registered on the Principal Register generally recognize that the registrants can demonstrate at least some degree of distinctiveness for their marks by proffering registrations less than five years old or for which no Section 15 declaration had otherwise been filed. 371 An issue on which those courts recently have differed, however, was the precise nature of the burden-shifting effected by these provisions. For example, some courts held that a challenger to the validity of a registered mark under these circumstances has the burden of proof to demonstrate invalidity by a preponderance of the evidence. 372 Among them was the Sixth Circuit, which addressed the validity of a non-incontestably registered mark that the parties agreed was geographically descriptive. 373 Reviewing the prima facie evidence of validity attaching to the registration, the court held that “[t]he effect of the statutory presumption contained in [Section 33(a)] is to shift the burden of proof to the alleged infringer, in this case [the defendant], to prove the absence of secondary meaning.” 374 Moreover, because that presumption extended to the entirety of the registrant’s mark, the registrant could avail itself of the presumption without the need to register separately each word making up the mark. 375 The D.C. Circuit reached a similar conclusion, albeit in an opinion that set out to diminish, rather than expand, the 369. See id. at 410-14. 370. 15 U.S.C. §§ 1057(b), 1114 (2006). 371. By the same token, “[u]nregistered marks have no presumption of validity, unlike federally registered marks. Thus, a plaintiff must prove that an unregistered mark is valid and protectable.” MNI Mgmt., 542 F. Supp. 2d at 404 (citation omitted). 372. See, e.g., Johnson & Johnson Consumer Cos. v. Aini, 540 F. Supp. 2d 374, 389 (E.D.N.Y. 2008); Auto. Club v. Auto Club Ltd., 83 U.S.P.Q.2d 1440, 1442 (C.D. Cal. 2007). 373. See Leelanau Wine Cellars, Ltd. v. Black & Red, Inc., 502 F.3d 504 (6th Cir. 2007). 374. Id. at 514. 375. See id. Vol. 99 TMR 83 evidentiary value of registrations. 376 The precise issue before the court was whether the challenger to an inter partes decision of the Trademark Trial and Appeal Board in a district court appeal could rely upon new evidence and testimony not before the Board. In answering this question affirmatively, the court rejected the argument that Board decisions were entitled to the deference provided for by the Administrative Procedure Act. As one basis for this holding, the court noted that “[u]nlike an ordinary agency, whose decisions we would review under the deferential standards of [5 U.S.C. §] 706, the PTO’s decision to register a trademark is subject to later collateral attack during which the registration is only prima facie evidence of the mark’s validity, rebuttable by a preponderance of the evidence.” 377 Uncertainty over the burden-shifting effect of a federal registration extended to the context of incontestability as well. Although some courts got it right, 378 one district court faced with both a plaintiff armed with incontestable registrations and a defendant armed with strong evidence that the underlying marks were generic wavered on the issue of whether the registrations obligated the defendant to prove genericness by a preponderance of the evidence or merely to produce evidence or testimony to that effect. 379 It ultimately dodged the issue in disposing of the plaintiff’s motion for a preliminary injunction, however, concluding that “[t]his Court need not definitively choose, at this stage, which burden applies, . . . because even applying the higher burden— requiring the alleged infringer to prove by a preponderance of the evidence that the term is generic—[the defendant] has at this juncture presented sufficient evidence of the [marks’] genericness to defeat [the plaintiff’s] motion for a preliminary injunction.” 380 The Tenth Circuit acknowledged the effect that Section 33(a) might have on the distinctiveness inquiry but became confused on the timing of that effect in a case in which the plaintiffs’ registration had issued after their dispute with the defendants had 376. See Aktieselskabet AF 21. November 2001 v. Fame Jean Inc., 525 F.3d 8 (D.C. Cir. 2008). 377. Id. at 14. 378. “An ‘incontestable’ mark cannot be challenged as lacking secondary meaning; such marks are conclusively presumed to be nondescriptive or to have acquired secondary meaning.” Univ. of Kan. v. Sinks, 565 F. Supp. 2d 1216, 1241 (D. Kan. 2008) (internal quotation marks omitted); see also Hodgon Powder Co. v. Alliant Techsystems, Inc., 497 F. Supp. 2d 1221, 1236 (D. Kan. 2007) (entering summary judgment in favor of owner of incontestable registration on affirmative defense that registrant’s mark lacked distinctiveness). 379. See Hasbro, Inc. v. MGA Entm’t, Inc., 497 F. Supp. 2d 337 (D.R.I. 2007). 380. Id. at 342. 84 Vol. 99 TMR begun. 381 Although ultimately concluding that it was unnecessary to resolve the issue, the court held that “[i]t is not clear that a mark must be registered at the time the suit is filed to benefit from the statutory presumption [of validity]. . . .” 382 The correct rule, of course, is that the prima facie evidence of validity attaching to a registered mark relates back to the filing date of the registrant’s application, subject to any use of its mark the defendant can demonstrate prior to that date. 383 b. Distinctiveness of Word Marks (1) Generic Terms and Designations “Because they serve primarily to describe products rather than identify their sources, generic terms are incapable of becoming trademarks, at least in connection with the products that they designate.” 384 As is usually the case, most allegations that claimed marks were generic failed to make the grade, 385 but there were nevertheless some exceptions to this general rule. The most notable such exception came in a First Circuit opinion arising from a dispute between two amphibious boat tour companies, each of which operated under names that included the phrase “duck tours.” 386 In granting the plaintiff’s motion for a preliminary injunction, the district court concluded that the plaintiff’s claimed “Boston duck tours” mark was “nongeneric” based on the absence from the dictionary it consulted of a definition of “duck” as an amphibious boat. 387 Reversing this analysis, the First Circuit held that the district court had erred because it “did not consider three types of evidence typically considered integral to the genericism determination: uses (1) by the media and other third parties, (2) within the industry generally, and (3) by [the plaintiff] itself.” 388 As to the first of these considerations, the appellate court concluded that “the district court overlooked articles in the media and other third-party sources that use the phrase ‘duck tours’ generically to refer to 381. See Utah Lighthouse Ministry v. Found. for Apologetic Info. & Research, 527 F.3d 1045 (10th Cir. 2008). 382. Id. at 1052 n.3. 383. See 15 U.S.C. § 1115(b) (2006). 384. Boston Duck Tours, LP v. Super Duck Tours, LLC, 531 F.3d 1, 14 (1st Cir. 2008). 385. See, e.g., McZeal v. Sprint Nextel Corp., 501 F.3d 1354, 1358 (Fed. Cir. 2007) (vacating determination of genericness of claimed INTERNATIONAL WALKIE TALKIE mark for telecommunications services on motion to dismiss as premature). 386. See Boston Duck Tours, 531 F.3d at 8-10. 387. See id. at 16. 388. Id. at 19. Vol. 99 TMR 85 amphibious, sightseeing tours.” 389 As to the second, it noted that “the [district] court overlooked the widespread generic use of ‘duck’ and ‘duck tours’ by other companies around the country that provide the same amphibious sight-seeing services.” 390 And, as to the third, “the district court did not consider [the plaintiff’s] own generic use of the phrase ‘duck tour,’ which provides strong evidence against its claim that the term is primarily associated with its company rather than the services it provides.” 391 In invalidating the plaintiff’s claimed mark based on these considerations, the First Circuit dismissed a number of arguments advanced by the plaintiff in response to the defendant’s showing. It led off by rejecting the plaintiff’s evidence of actual confusion, which the court attributed to the plaintiff having been the sole provider of amphibious tours in the Boston market in which both parties now competed: Although trademark law is designed to prevent consumer confusion between inherently distinctive marks or descriptive marks that have acquired secondary meaning, it is not intended to prevent confusion between two similar, generic [claimed] marks, or, relatedly, between marks when one mark has acquired a “de facto secondary meaning” through its exclusive use of a generic term that causes customers to associate the term with that specific source. 392 Other considerations unsuccessfully urged upon the appellate court by the plaintiff included the absence of disclaimers of “duck tours” from some (but not all) of the plaintiff’s federal registrations, 393 the defendant’s past arguments to the USPTO that the phrase was not generic, 394 and at least some additional dictionaries that defined “duck” without referring to amphibious vehicles. 395 In a less extensive analysis, the Eleventh Circuit had little difficulty affirming a finding that the letters “WSI” were generic for welding services. 396 The court began its analysis by noting that the plaintiff routinely used its “Welding Services, Inc.” trade name as a generic noun. Of this practice, the court remarked that “[a] would-be proprietor’s use of the words in the mark to refer to the 389. Id. 390. Id. 391. Id. at 20. 392. Id. at 21 (citations omitted). 393. See id. at 22. 394. See id. at 22-23. 395. See id. at 23. 396. See Welding Servs., Inc. v. Forman, 509 F.3d 1351 (11th Cir. 2007). 86 Vol. 99 TMR kind of services it and its competitors provide is powerful evidence that the words in the putative mark are being used generically.” 397 This did not necessarily resolve the issue of the distinctiveness of “WSI” as an abbreviation for the trade name because “[a]bbreviations of generic words may become protectable if the party claiming protection for such an abbreviation shows that the abbreviation has a meaning distinct from the underlying words in the mind of the public.” 398 On that issue, however, the record established that the plaintiff had never promoted the abbreviation independently of the associated generic words, and that the abbreviation therefore had never acquired the necessary independent meaning. 399 The plaintiff had adduced evidence and testimony of long-time use and millions of dollars of sales and advertising expenditures, but this was a “different kind of evidence” than that required. 400 In an opinion rejecting a motion for a preliminary injunction, another court concluded that the plaintiff’s claimed “memory” mark was likely to be proven generic for “a class of card (or cardvariant) matching games.” 401 Although the plaintiff brought to the table two incontestable registrations, one dating back to 1967, the defendant responded with evidence of generic uses of the term as early as 1947. This documentation included not only standard dictionary entries, but published card game references as well, the latter of which the court explained “are essentially trade publications clearly directed to consumers is competent, and in this case compelling, evidence of genericness.” 402 Further evidence of genericness came in the form of a “substantial volume” of generic uses by third-party competitors on the Internet. 403 Under the circumstances, the defendant’s failure to offer survey evidence in support of its attack on the plaintiff’s rights was not dispositive. 404 In a different case, generic uses by third parties proved to be similarly fatal to claims by both litigants of trademark rights to the word “raaga” for Indian and South Asian music. 405 At a preliminary injunction hearing, the plaintiff’s principal testified 397. Id. at 1359. 398. Id. 399. See id. 400. Id. 401. See Hasbro, Inc. v. MGA Entm’t, Inc., 497 F. Supp. 2d 337, 340 (D.R.I. 2007). 402. Id. at 343 n.6. 403. See id. at 344-45. 404. See id. at 345. 405. See Vista India v. Raaga, LLC, 501 F. Supp. 2d 605 (D.N.J. 2007). Vol. 99 TMR 87 that “raaga . . . is something you can’t trademark.” 406 Although characterizing this testimony as “a remarkable admission that cannot be ignored,” 407 the court declined to treat it as dispositive. Instead, the court turned to evidence from several online musical references, which, among other generic uses, noted that the literal definition of the word in Hindi was “color, mood or feeling. Raaga is so called because it creates a particular mood in the listeners. Raaga is a central concept in Indian music.” 408 From these uses, the court concluded that “if ‘raaga’ literally means color or passion or rhythmic patterns, but it is commonly understood to refer to Indian or South Asian music generally, then it follows that the RAAGA mark is not protectable because it is a generic term in Hindi and to the relevant public that purchases Indian and South Asian music.” 409 (2) Descriptive Marks “‘A mark is descriptive if it describes the product’s features, qualities, or ingredients in ordinary language or describes the use to which the product is put.’” 410 One of the most notable opinions to address the spectrum of distinctiveness over the past year concluded that a mark previously found to be generic in one context could be descriptive when used in another. 411 The earlier case had been brought by Harley-Davidson and resulted in a holding by the Second Circuit that the claimed “hog” mark was generic as a matter of law for motorcycles. 412 The defendant in the second case was an organizer of ocean cruises for motorcycle enthusiasts. On the basis of the earlier Second Circuit holding, the defendants claimed that the word “hog” in its HOGS ON THE HIGH SEAS trade name was a generic use beyond the scope of Harley-Davidson’s rights. The district court accepted the defendant’s argument that Harley-Davidson was collaterally estopped from claiming protectable rights to the word and entered summary judgment in the defendant’s favor. On appeal, however, the Seventh Circuit reversed. After disposing of the district court’s collateral estoppel holding, the appellate court noted that Harley-Davidson sought in the case 406. Quoted in id. at 616. 407. Id. 408. Quoted in id. at 614. 409. Id. at 615. 410. Constellation Brands, Inc. v. Arbor Hill Assocs., 535 F. Supp. 2d 347, 363 (W.D.N.Y. 2008) (quoting Lane Capital Mgmt., Inc. v. Lane Capital Mgmt., Inc., 192 F.3d 337, 344 (2d Cir. 1999)). 411. See H-D Mich., Inc. v. Top Quality Serv., Inc., 496 F.3d 755 (7th Cir. 2007). 412. See Harley Davidson, Inc. v. Grottanelli, Inc., 164 F.3d 806 (2d Cir. 1999). 88 Vol. 99 TMR before it to protect the HOG mark for motorcycle club services, not for motorcycles themselves. This distinction prevented HarleyDavidson’s use of the mark from being considered generic. Referring to Harley-Davidson’s officially licensed owners’ group, the court explained: The word “hog” is not commonly used as a name for a motorcyclist club. It is a name for a motorcycle. As such, Harley’s use of the word “hog” to refer to the Harley Owners Group is not generic; rather, it is descriptive because it describes the club’s members: people who enjoy motorcycles. 413 According to the court, “[t]hough a consumer might conclude that [the defendant’s] trade name means ‘Motorcycles on the High Seas,’ that is not what [the defendant] is selling. [The defendant’s] service does not invite motorcycles to travel on the ocean; it invites motorcyclists to travel on the ocean.” 414 In another case originating in the transportation industry, the marks at issue were TRACKER, TRACKERDMS, and FINANCE EXPRESS. 415 The plaintiff used the marks in connection with an online technology platform that automated and facilitated credit relationships between lenders and dealers of used automobiles. The court had little difficulty concluding that the first of these was descriptive, in part because of widespread descriptive use by third parties. 416 After finding that DMS stood for “dealer management system,” it also placed the plaintiff’s second mark into the descriptive category because “merely combining ‘Tracker’ with an acronym that accurately and thoroughly describes the product at issue does not evoke a new and unique commercial impression.” 417 The court then found the final mark at issue descriptive with the explanation that “[w]hen combined, the term ‘Finance Express’ conveys to consumers that they will be able to receive financial services in an expedited manner. Because a consumer need not engage in any multistage reasoning or use any imagination to understand the significance of the service or goods, the mark is merely descriptive.” 418 One mark was found to be descriptive without serious consideration of whether it was actually generic. 419 Seeking to promote his retail cigar store, the counterclaim plaintiff retained 413. H-D Mich., 496 F.3d at 761-62. 414. Id. at 762 (citation omitted). 415. See Fin. Express LLC v. Nowcom Corp., 565 F. Supp. 2d 1160 (C.D. Cal. 2008). 416. See id. at 1169-70. 417. Id. at 1170. 418. Id. 419. See Ligotti v. Garofalo, 562 F. Supp. 2d 204 (D.N.H. 2008). Vol. 99 TMR 89 and then filmed the counterclaim defendant, who performed a series of “rants” on various topics while playing on his ItalianAmerican ethnicity. When the parties’ relationship had run its course, each claimed the rights to the mark under which the counterclaim defendant had performed, namely, THE GUY FROM BOSTON. The parties’ cross-motions for preliminary injunctive relief apparently did not address the mark’s distinctiveness at length, but the court tackled the issue head-on, finding: The category of descriptive marks includes geographic designations that merely identify a subset of the services’ attributes, i.e., their location or origin. “The Guy From Boston” serves that purpose; not only did [the counterclaim defendant] choose that name as a way to capitalize on his own ties to Boston, but the services marketed under the name depend heavily on that locale for their style, in particular the character’s accent, and their substance, which often trends toward issues of local interest. 420 Some cases presented entirely predictable findings of descriptiveness. Thus, for example, the Sixth Circuit agreed with the parties before it that LEELANAU was geographically descriptive when used as an element of marks for wine produced on Michigan’s Leelanau Peninsula. 421 The SPEEDY BAIL BONDS and A-SPEEDY BAIL BONDS marks were not surprisingly found to be descriptive of bail bond services. 422 When used in connection with hair care products, the LONG ’N STRONG mark also fell safely into the category of a descriptive mark. 423 The title Prayer Power in the Eyes of Faith for a religious book was similarly found to be descriptive when the book’s author attempted to claim protectable trademark rights to the title. 424 Finally, in a suit brought by a clothing company named after its founder to enjoin the founder from using his name as a mark after parting ways with the company, the court held that “the name needs to have reached a level of recognition such that the consuming public would associate the name with a particular source. This applies to surnames, combinations of first names and surnames, first names alone, as well as combinations of a person’s first two names.” 425 420. Id. at 215-16 (citations omitted). 421. See Leelanau Wine Cellars, Ltd. v. Black & Red, Inc., 502 F.3d 504, 513-15 (6th Cir. 2007). 422. See Lederman Bonding Co. v. Sweetalia, 83 U.S.P.Q.2d 1660, 1663 (D. Colo. 2006). 423. See Rush Indus. v. Garnier LLC, 496 F. Supp. 2d 220, 226 (E.D.N.Y. 2007). 424. See Douglas v. Osteen, 560 F. Supp. 2d 362, 369 (E.D. Pa. 2008). 425. Paul Frank Indus. v. Sunich, 502 F. Supp. 2d 1094, 1098 (C.D. Cal. 2007); accord Ptak Bros. Jewelry Inc. v. Ptak, 83 U.S.P.Q.2d 1519, 1524 (S.D.N.Y. 2007) (“The Second Circuit has made clear that family names are descriptive and do not by themselves identify [the origin of] a product.”). 90 Vol. 99 TMR (3) Suggestive Marks “Suggestive marks suggest an idea of the qualities and characteristics of the goods [associated with a claimed mark], but require customer imagination, thought or perception to determine what the product is.” 426 One of the few marks to be found suggestive over the past year was COMMERCE BANK, used in connection with banking services: Although the issue is close, the mark COMMERCE BANK is properly classified as suggestive rather than [descriptive]. Some words often used in the names of banking institutions— such as “Community,” “National,” or “Mutual,” for example— are descriptive of a specific characteristic of such an institution. The term “Commerce,” by contrast, requires some exercise of imagination. It does not simply describe the type of bank that it is, but rather is intended to create an image of a bank that promotes commerce, or serves commerce, and is therefore a good place to do business. 427 The court found further support for its conclusion in the defendants’ past success in convincing the Trademark Trial and Appeal Board of the suggestiveness of their own COMMERCE BANK mark. 428 Two additional marks found suggestive over the past year were NEXT GENERATION and NGI for pharmaceutical impactors used to measure the size of aerosol particles. 429 The defendant claimed the marks were generic, relying heavily on (1) the absence of federal registrations covering them, (2) the plaintiff’s failure to use the TM symbol with the marks, and (3) occasional uses of the marks as nouns in the plaintiff’s promotional materials. In holding the plaintiff entitled to a preliminary injunction, the court was unmoved by each of these considerations. Under its analysis, “‘Next Generation’ does not describe an impactor; nor does it convey any information about the impactor’s characteristics, design, or qualities, other than, possibly, that it is a new design. Similarly, the acronym ‘NGI’ does not obviously describe anything at all.” 430 What’s more, “[t]he terms at issue bear some relationship to the product in that the device is the newest type, or next generation, of impactor available. However, the terms do not 426. MNI Mgmt., Inc. v. Wine King, LLC, 542 F. Supp. 2d 389, 405 (D.N.J. 2008) (finding WINE KING mark suggestive of alcoholic beverage and barware retail store services). 427. Commerce Bank & Trust Co. v. TD Banknorth, Inc., 554 F. Supp. 2d 77, 84 (D. Mass. 2008). 428. See id. 429. See MSP Corp. v. Westech Instruments, Inc., 500 F. Supp. 2d 1198 (D. Minn. 2007). 430. Id. at 1209. Vol. 99 TMR 91 literally describe the product and require imagination to connect them to the impactor.” 431 When used in connection with a children’s magnetic drawing toy, the MAGNA DOODLE mark similarly wound up the subject of a finding of suggestiveness. 432 According to the court, “[a]lthough the term ‘doodle’ is largely descriptive, it requires some imagination to get from ‘magna’ to ‘magnetic,’ and overall, it requires some imagination to conjure the image of a magnetic drawing toy from the term ‘Magna Doodle.’” 433 As a consequence, “the . . . mark is best characterized as suggestive.” 434 Finally, the DEALTRACE mark was found suggestive of an online software product used in the automotive industry. 435 As the court reaching this conclusion explained, “[a]lthough the term ‘DealTrace’ is suggestive of its purpose—to trace deals—it is not immediately apparent what product is at issue or to whom the product is directed. . . . Because there is a mental leap between the concept of trading deals and the fact that this is a software service intended to aid automobile dealers contracting with lenders, ‘DealTrace’ is a suggestive mark.” 436 (4) Arbitrary Marks “‘An arbitrary mark applies a common word in an unfamiliar way.’” 437 Courts had few occasions to find that marks fell into this category over the past year but proved equal to the task when faced with it. Thus, for example, one court concluded that VISA was an arbitrary mark for financial and banking services. 438 Although relying in part on past case law reaching the same conclusion, the court’s primary focus was on a dictionary definition of the word as “an endorsement made by an authorized representative of one country upon a passport issued by another, permitting the passport holders [sic] entry into or transit through the country making the endorsement.” 439 Finding the mark inherently distinctive, the court remarked that “[t]he Visa mark is arbitrary when used in connection with the goods and services provided by Visa International, such as financial and banking 431. Id. 432. See Pilot Corp. v. Fisher-Price, Inc., 501 F. Supp. 2d 292 (D. Conn. 2007). 433. Id. at 303. 434. Id. 435. See Fin. Express LLC v. Nowcom Corp., 564 F. Supp. 2d 1160 (C.D. Cal. 2008). 436. Id. at 1169. 437. Constellation Brands, Inc. v. Arbor Hill Assocs., 535 F. Supp. 2d 347, 363 (W.D.N.Y. 2008). 438. See Visa Int’l Serv. Ass’n v. JSL Corp., 533 F. Supp. 2d 1089 (D. Nev. 2007). 439. Quoted in id. at 1095. 92 Vol. 99 TMR services, because the dictionary or common meaning of ‘visa’ does not describe any characteristic of these goods and services.” 440 Other courts found marks arbitrary in more cursory analyses. One placed the SLY mark for an online publication into the arbitrary category after finding that “[t]he word ‘SLY’ is not a generic term and does not suggest or describe plaintiff[’]s fashion/lifestyle magazine in any way.” 441 Marks similarly determined to be arbitrary indicators of origin without extended discussion included ARBOR HILL for wine, 442 VICTORIA’S SECRET for lingerie, 443 NO NAME for meats, fish, and poultry, 444 and both ARTISAN and a fleur de lis design for sinks, the latter of which the court felt might also be fanciful. 445 (5) Fanciful or Coined Marks Findings that marks were fanciful were characteristically rare over the past year. Still, however, they did make appearances in at least a few cases. Thus, for example, one court concluded that the AMBI mark was fanciful when used with cosmetic products, “as it is not a real word but was invented for its use as a mark.” 446 Another court determined that several marks incorporating the word REXAL for wholesale electronics distributorship services were “properly classified as ‘arbitrary’ or even ‘fanciful’”; the court’s subsequent observation that “they are not comprised of readily recognizable ‘common words’” suggested that the marks properly fell within the latter category. 447 Finally, although concluding that a plaintiff’s fleur de lis design mark for sinks might be arbitrary, one court found that the design might also be 440. Id. 441. See Sly Magazine, LLC v. Weider Publ’ns L.L.C., 529 F. Supp. 2d 425, 437 (S.D.N.Y. 2007). 442. See Constellation Brands, Inc. v. Arbor Hill Assocs., 535 F. Supp. 2d 347, 363 & n.16 (W.D.N.Y. 2008). 443. See V Secret Catalogue, Inc. v. Moseley, 558 F. Supp. 2d 734, 746 (W.D. Ky. 2008) (referring to classification of mark in prior appellate opinion). 444. See J&B Wholesale Distrib. Inc. v. Redux Beverages LLC, 85 U.S.P.Q.2d 1623, 1626 (D. Minn. 2007). 445. See Artisan Mfg. Corp. v. All Granite & Marble Corp., 559 F. Supp. 2d 442, 450 (S.D.N.Y. 2008). For an example of another court either unwilling or unable to make a definitive placement of a design mark on the spectrum of distinctiveness, see Board of Regents v. KST Elec., Ltd., 550 F. Supp. 2d 657, 671 (W.D. Tex. 2008) (“[The plaintiff university’s] longhorn silhouette logo is a fanciful or arbitrary mark; a longhorn silhouette is no way descriptive of [the plaintiff’s] educational enterprise.” (citations omitted)). 446. Johnson & Johnson Consumer Cos. v. Aini, 540 F. Supp. 2d 374, 390 (E.D.N.Y. 2008). 447. Rexel, Inc. v. Rexel Int’l Trading Corp., 540 F. Supp. 2d 1154, 1165 (C.D. Cal. 2007). Vol. 99 TMR 93 fanciful because it included “minimal stylization beyond the common fleur de lis shape.” 448 c. Distinctiveness of Trade Dress The placement of trade dresses on the spectrum of distinctiveness was not a frequent subject of litigation over the past year. In cases in which the issue was disputed, 449 however, plaintiffs generally came up short. A leading example of this pattern came in an action to protect an alleged trade dress consisting of the design and blue color of a device used in the pharmaceutical industry to measure the size of aerosol particles. 450 Seeking to avoid the effect of Wal-Mart Stores, Inc. v. Samara Brothers, 451 the plaintiff argued that the visible housing of its impactors was packaging for the device’s internal workings, rather than part of the goods themselves. Invoking Wal-Mart, the court disagreed: “The housing . . . is part of the product itself, not mere packaging. The exterior . . ., even if artistic and non-functional, is part of the product design. And, to the extent that the question is a close one, the Supreme Court has explicitly urged courts to require secondary meaning.” 452 As a consequence, the court rejected the plaintiff’s claims of inherent distinctiveness. A claim of inherent distinctiveness did, however, succeed in a case in which the plaintiff asserted rights to a trade dress consisting of “a table game played on a semi-circular gaming table that is based on a four-card hand of poker.” 453 Although the designation at issue might properly have been found to fall within Wal-Mart’s scope, the court found on the plaintiff’s preliminary injunction motion that the design “appears inherently distinctive when considering all of the elements together.” 454 This arguable error in evaluating the design’s inherent distinctiveness, however, was mooted by the court’s later finding that the design had acquired secondary meaning. 455 448. See Artisan Mfg. Corp. v. All Granite & Marble Corp., 559 F. Supp. 2d 442, 450 (S.D.N.Y. 2008). 449. For an example of a case in which the defendant improbably failed to contest the plaintiff’s claims of an inherently distinctive product design, see Gen. Motors Corp. v. Urban Gorilla, LLC, 500 F.3d 1222, 1227 (10th Cir. 2007) (“[The plaintiff] claims that the design of [its] vehicles constitutes an inherently distinctive trade dress. Because [the defendant] does not contest this assertion on appeal, we will assume, without deciding, that [the plaintiff] could sufficiently demonstrate this factor at a trial on the merits.”). 450. See MSP Corp. v. Westech Instruments, Inc., 500 F. Supp. 2d 1198 (D. Minn. 2007). 451. 529 U.S. 205 (2000). 452. MSP, 500 F. Supp. 2d at 1212 (citation omitted). 453. Shuffle Master Inc. v. Awada, 83 U.S.P.Q.2d 1054, 1055 (D. Nev. 2006). 454. Id. at 1056. 455. See id. at 1056-57. 94 Vol. 99 TMR d. Secondary Meaning Determinations (1) Cases Finding Secondary Meaning Cases in which secondary meaning was found were sparse over the past year. In a dispute between two providers of goods and services used to promote lending in the automotive industry, the plaintiff sought to protect three descriptive marks. 456 Many of the secondary meaning factors considered by the Ninth Circuit district court hearing the case were standard and apparently not disputed between the parties: “Generally, secondary meaning is proven through evidence related to the amount and manner of the advertising of the mark, sales volume, consumer testimony, whether use of the mark was exclusive, and consumer surveys.” 457 The issue of the defendants’ alleged copying of the plaintiff’s marks, however, was another thing altogether. That copying had taken place in the context of the defendants’ use of the marks as domain names and as triggers for sponsored advertising. Reviewing Ninth Circuit authority from other contexts, the court concluded that “[t]hese are exactly the type of circumstances . . . in which it is appropriate for the Court to conclude that deliberate copying suffices to support an inference of secondary meaning [based on intentional copying].” 458 The court therefore found the marks descriptive without expressly addressing any other evidence of acquired distinctiveness that might have been introduced into the record. 459 The significance of intentional copying under Ninth Circuit doctrine also came into play in a case in which the plaintiff asserted rights to the appearance of a gaming table. 460 Comparing the parties’ respective tables, the court found that “[d]efendants’ intent to copy may be inferred from evidence that they had their own version of a four card poker game table felt design for several years before switching to the subject design of this case, which is strikingly similar to [p]laintiff’s table felt design.” 461 The plaintiff’s claim to acquired distinctiveness was also aided by its showing that it had “gone to great lengths to advertise and promote its . . . trade dress, and have made significant sales in the gaming market.” 462 Finally, the court found persuasive survey evidence 456. See Fin. Express LLC v. Nowcom Corp., 564 F. Supp. 2d 1160 (C.D. Cal. 2008). 457. Id. at 1170. 458. Id. at 1172. 459. See id. 460. See Shuffle Master Inc. v. Awada, 83 U.S.P.Q.2d 1054 (D. Nev. 2006). 461. Id. at 1057. 462. Id. Vol. 99 TMR 95 that 35 percent of casino managers polled associated the plaintiff’s design “with a single source.” 463 Whatever its probative value when it exists, intentional copying is not a prerequisite for a finding of secondary meaning. For example, a plaintiff in the clothing industry successfully demonstrated the acquired distinctiveness of its founder’s name in a suit against that founder with apparent reliance on the founder’s intent. 464 Although not identifying any particular doctrinal test governing its resolution of the issue, the court noted that: Through marketing, promotions, advertising, media attention and other publicity, the [plaintiff’s] mark has gained widespread recognition and popularity. [The plaintiff] sells products with the . . . mark at nearly two-thousand retail stores worldwide; it has co-branded deals with various companies, including Sanrio, Oscar Mayer, Barbie, the Elvis Presley estate and John Deere; and in 2005, it sold over $40 million in goods bearing the . . . mark. 465 With even the defendant admitting that the plaintiff’s use of the mark had “achieved enormous success and public recognition,” 466 the court found that “[r]etailers, other well-known companies, the public, and [the defendant] himself all provide ample support for the notion that . . . the mark has attained a level of strength and recognition deserving of protection.” 467 Finally, in a cursory treatment of the issue, one court issued a preliminary injunction after finding that the plaintiff had demonstrated the acquired distinctiveness of its surname mark. 468 The court first credited the plaintiff’s showing that the plaintiff had been operating under its name “for several decades” during which it had served over 30,000 customers. 469 Going beyond these considerations, the court also found probative testimony by a witness for the plaintiff that its “annual sales and gross profits . . . ranged from three to six million dollars.” 470 It therefore concluded that “[a]lthough [the plaintiff’s] name is not inherently distinctive, there is evidence to show it has acquired distinctiveness, and is entitled to some protection.” 471 463. See id. 464. See Paul Frank Indus. v. Sunich, 502 F. Supp. 2d 1094 (C.D. Cal. 2008). 465. Id. at 1100. 466. Quoted in id. 467. Id. 468. See Ptak Bros. Jewelry Inc. v. Ptak, 83 U.S.P.Q.2d 1519 (S.D.N.Y. 2007). 469. See id. at 1524. 470. Id. 471. Id. 96 Vol. 99 TMR (2) Cases Declining to Find Secondary Meaning As usual, a number of plaintiffs failing to demonstrate the inherent distinctiveness of their marks also failed to prove the marks’ acquired distinctiveness. 472 For example, in rejecting a plaintiff’s claims of secondary meaning, one Third Circuit district court identified the nonexclusive factors governing inquiries into acquired distinctiveness in that jurisdiction: (1) the extent of the plaintiff’s sales and advertising; (2) the length of the mark’s use; (3) the exclusivity of the mark’s use; (4) the fact of copying by the defendant; (5) the results of customer surveys; (6) direct testimony by customers; (7) the use of the mark in trade journals; (8) the size of the plaintiff; (9) sales volume under the mark; (10) the number of the plaintiff’s customers; and (11) actual confusion. 473 Although citing the factors in a preliminary injunction brief, the plaintiff failed to introduce evidence or testimony under any of them except alleged sales under the mark of $2-3 million dollars, three articles referring to the plaintiff but dated after the defendant’s entry into the marketplace, and a claimed investment of $2,000 in promotional expenses. 474 Properly holding that the plaintiff’s mark must have acquired secondary meaning prior to the date of first use of the defendant’s mark, the court concluded that the plaintiff had not demonstrated sufficient distinctiveness to warrant a preliminary injunction against the defendant’s use. 475 Another Third Circuit district court opinion applying the same factors served up a reminder of the difficulty in proving secondary meaning for non-verbal marks. 476 The claimed designation at issue was a combination of blue and black markings applied to flexible endoscopic medical probes. The plaintiffs were able to demonstrate thirty years’ worth of use, but their success ended there. Although the plaintiffs claimed to have had at least some “look for” advertising emphasizing the color blue (but not black), they apparently failed to introduce it into evidence. The record was equally devoid of direct consumer testimony or survey evidence of distinctiveness. The final consideration leading the court to reject 472. See, e.g., Douglas v. Osteen, 560 F. Supp. 2d 362, 369-70 (E.D. Pa. 2008) (granting defendants’ motion to dismiss based on plaintiff’s failure to allege secondary meaning in complaint); Lederman Bonding Co. v. Sweetalia, 83 U.S.P.Q.2d 1660, 1663 (D. Colo. 2006) (declining to enter preliminary injunction in part because “[the plaintiff] proffered no evidence via witness testimony, affidavit, or otherwise that would demonstrate that his advertising efforts successfully linked his trade name to his . . . business in the minds of the public”). 473. See Vista India v. Raaga, LLC, 501 F. Supp. 2d 605, 618 (D.N.J. 2007). 474. See id. at 619. 475. See id. 476. See ERBE Electromedizin GmbH v. Canady Tech. LLC, 529 F. Supp. 2d 577 (W.D. Pa. 2007). Vol. 99 TMR 97 the plaintiffs’ aspirations to protectable mark status was the use by a third party of blue in connection with competitive products. Summary judgment in the defendants’ favor followed. 477 A claim of exclusive rights to the color blue similarly failed to make the grade in the pharmaceutical industry, even when coupled with an allegedly (but obviously not) inherently distinctive product configuration. 478 As to the secondary meaning of the configuration, the court concluded from the plaintiff’s preliminary injunction papers that “[the plaintiff] has provided no evidence that it highlighted the shape in its advertisements or how much it spent on advertising, and there is no evidence that consumers associate the shape with one source. Additionally, there is evidence that, in this industry, consumers expect products to come from multiple sources but have the same shape. . . .” 479 The plaintiff’s showing on the acquired distinctiveness of its claimed color mark was equally wanting, especially because it relied on “unsubstantiated assertion[s] of its employee, consultant, and distributor that consumers associate the alleged mark[] with [the plaintiff] and that [the plaintiff] substantially advertises the alleged marks.” 480 In particular, “[the plaintiff] has provided no evidence of the scope of its advertising or the effects those efforts have had on relevant consumers. Moreover, the marketing materials that [the plaintiff] does provide do not highlight the claimed color.” 481 With the plaintiff unable to establish intentional copying by the defendants to the court’s satisfaction, the final basis of its claim of secondary meaning failed. 482 Finally, a claim that the ubiquitous smiley face design had acquired distinctiveness for retail store services met with a judicial scowl. 483 In opposition to a motion for summary judgment on the issue, the counterclaim plaintiff adduced declaration testimony from a senior marketing manager with a relatively limited tenure at the company. Rejecting the testimony as too conclusory to be probative, the court observed that the declaration contained no specific facts regarding the length and nature of the smiley face’s use, the nature and extent of advertising and promotion of the smiley face, [the counterclaim plaintiff’s] efforts to promote a connection between the smiley face and its business, or the degree of actual recognition by the public that 477. See id. at 603. 478. See MSP Corp. v. Westech Instruments, Inc., 500 F. Supp. 2d 1198 (D. Minn. 2007). 479. Id. at 1213. 480. Id. at 1214. 481. Id. 482. See id. 483. See Smith v. Wal-Mart Stores, Inc., 537 F. Supp. 2d 1302 (N.D. Ga. 2008). 98 Vol. 99 TMR the smiley face designates [the counterclaim plaintiff’s] products or services. 484 (3) Secondary Meaning to be Determined The inherently factual nature of the secondary meaning inquiry often stands as an obstacle to defendants seeking its resolution on motions to dismiss. 485 In a case in which the plaintiff objected to the defendant’s use of his name in its advertising after he had left the defendant’s employ, the defendant argued that the plaintiff had failed to aver that his name had acquired secondary meaning. 486 The court began its analysis by referring to the Third Circuit’s factors for determining secondary meaning: (1) the extent of sales and advertising leading to buyer association; (2) length of use; (3) exclusivity of use; (4) the fact of copying; (5) customer surveys; (6) customer testimony; (7) the use of the mark in trade journals; (8) the size of the company; (9) the number of sales; (10) the number of customers; and (11) actual confusion. 487 It then held that the following allegations in the complaint sufficiently established the secondary meaning of the plaintiff’s name to survive a motion to dismiss: (1) the plaintiff’s status as a “well-known chef, caterer, and event planner in the Philadelphia area . . . [with an] excellent reputation”; (2) extensive sales by the defendant during the plaintiff’s tenure with the plaintiff; (3) intentional copying by the defendant; and (4) the existence of actual confusion. 488 In the final analysis, “the words ‘secondary meaning’ need not appear in the complaint; the complaint need only contain allegations that, [viewed] in the light most favorable to [the plaintiff], demonstrate the existence of a secondary meaning.” 489 Summary judgment proved an equally ineffective mechanism in some cases for resolving the issue of acquired distinctiveness. For example, a pair of plaintiffs seeking to protect the trade dress of an athletic shoe came to the table with “significant circumstantial evidence of sales, advertising, product placement, 484. Id. at 1315. 485. See, e.g., Through The Door Inc. v. J.C. Penny Co., 83 U.S.P.Q.2d 1538, 1541 (W.D. Wis. 2007) (declining to dismiss defendants’ motion to dismiss on ground that plaintiff’s complaint contained “at least an allegation which permits the inference of secondary meaning”). 486. See Lewis v. Marriott Int’l, Inc., 527 F. Supp. 2d 422 (E.D. Pa. 2007). 487. Id. at 426 (quoting Commerce Nat’l Ins. Servs., Inc. v. Commerce Ins. Agency, 214 F.3d 432, 438 (3d Cir. 2000)). 488. See id. at 427. 489. Id. Vol. 99 TMR 99 and unsolicited media attention.” 490 Despite this showing, a court reviewing the plaintiffs’ request for a finding of acquired distinctiveness as a matter of law was unconvinced. The court first noted that circumstantial evidence of this sort did not conclusively demonstrate that consumers associated the trade dress with the plaintiffs. In addition, “evidence of extensive sales or product popularity is not necessarily indicative of secondary meaning. Such evidence can be attributed to dozens of factors, only one of which may be the drawing power of the trademark.” 491 Finally, “much of [the plaintiffs’] evidence of secondary meaning comes from the declaration of one of [their] own employees,” which “[a]side from the hearsay and authentication problems associated with such evidence,” raised the specter of a biased witness. 492 Under these circumstances, the court concluded, “[t]he resolution of the issue of secondary meaning will involve factual determinations based [on] the credibility [of witnesses] and the weight of the evidence.” 493 Another court declined to reach a decision as a matter of law on the acquired distinctiveness of the plaintiff’s AUTO CLUB mark for roadside assistance and automobile insurance programs. 494 The defendant moved for summary judgment, relying primarily on the rejection by the USPTO of an application to register the plaintiff’s mark. In response, the plaintiff introduced survey results indicating that 76% of respondents recognized the words “auto club” as a brand, a third-party declaration similarly attesting to the public’s brand recognition of the words, media articles associating the words with the plaintiff, testimony by a witness for the plaintiff of its promotional expenditures, and evidence and testimony of actual confusion. 495 Not surprisingly, the court concluded from the record that “Plaintiff has met the requirements for a non-movant to survive a motion for summary judgment.” 496 e. Survey Evidence of Distinctiveness Survey evidence of distinctiveness played a role in relatively few cases reported over the past year. One opinion that did find survey responses persuasive came in a suit between two 490. See adidas-Am., Inc. v. Payless Shoesource, Inc., 546 F. Supp. 2d 1029, 1086 (D. Or.), reconsideration denied, 540 F. Supp. 2d 1176 (D. Or. 2008). 491. Id. (internal quotation marks omitted). 492. Id. 493. Id. 494. See Auto. Club v. Auto Club Ltd., 83 U.S.P.Q.2d 1440 (C.D. Cal. 2007). 495. See id. at 1443. 496. Id. 100 Vol. 99 TMR manufacturers of gaming tables. 497 Although other factual showings by the plaintiff also factored into the analysis, the court found “[a]dditionally persuasive . . . [the plaintiff’s] . . . survey of table game managers from a cross-section of casinos in the United States indicating that 35% of individuals interviewed associated [the plaintiff’s table] with a single source.” 498 As it explained, “[v]arious courts have held that such a percentage of recognition (approximately 30% or more) is probative of secondary meaning.” 499 The court did not, however, explain the methodology used by the plaintiff’s expert to generate the favorable results. A different was unconvinced by a defense survey purporting to demonstrate the ineligibility of a mark used by the University of Texas for protection against likely dilution. 500 One flaw identified by the court was the survey’s presentation of a “whited out” version of the university’s mark, rather than an accurate depiction of the mark in the burnt orange color in which the university used it. The court also faulted the defendant’s expert witness for concluding that respondents associating the mark with “Texas football” or “the Texas Longhorns” were not referring to the plaintiff in their answers, especially as the survey contained leading questions apparently intended to produce those responses. Finally, the court noted that the defendant’s expert had admitted to “numerous errors” in coding responses to the survey, which “almost invariably were to the benefit [the defendant] and to the detriment of [the university].” 501 4. Functional Features a. Effect of Federal Registrations on the Functionality Inquiry The evidentiary weight properly accorded federal registrations on the Principal Register in the functionality inquiry was not the subject of much judicial attention over the past year. One court, however, confirmed that the claimant to trade dress rights in an unregistered design bears the burden of proving nonfunctionality. 502 497. See Shuffle Master Inc. v. Awada, 83 U.S.P.Q.2d 1054 (D. Nev. 2006). 498. Id. at 1057. 499. Id. at 1057 n.1. 500. See Bd. of Regents v. KST Elec., Ltd., 550 F. Supp. 2d 657 (W.D. Tex. 2008). 501. Id. at 676. 502. See MSP Corp. v. Westech Instruments, Inc., 500 F. Supp. 2d 1198, 1212 (D. Minn. 2007). Vol. 99 TMR 101 b. Utilitarian Functionality Just as a finding that a mark lacks distinctiveness may not have preclusive effect in later litigation, so too can technological evolution within an industry render a once-functional design nonfunctional. The most recent example of this phenomenon came in a dispute between manufacturers and sellers of athletic shoes, in which the plaintiffs sought to protect a design that had been state-of-the-art upon its introduction in 1969. 503 In rejecting the defendant’s motion for summary judgment, the court noted that “there is authority for the proposition that product features once deemed wholly functional can be transformed over time to nonfunctional, source-indicating features.” 504 Some cases presented claims of utilitarian functionality that might have been better addressed under the rubric of aesthetic functionality. 505 In one such proceeding, a manufacturer and a distributor of medical equipment alleged protectable rights to the color blue for flexible endoscopic probes. 506 Although its challenge to the plaintiffs’ claimed rights might have sounded in a claim of aesthetic functionality, the defendant instead argued that the color blue was functional because it enhanced endoscopic identification during surgery. The court was convinced. Granting a defense motion for summary judgment, it rejected the conclusory allegation by one of the plaintiffs’ witnesses that other colors were available to the defendant. As it explained, the mere availability of alternative design elements is an insufficient basis for a finding of nonfunctionality. 507 Not all defense claims of functionality succeeded, however, including one in an action to protect the shape of a device used in the pharmaceutical industry to measure the size of aerosol particles. 508 The housing of the device had a “puzzle-piece shape” that conformed to its inner workings. This led the defendants to argue that the shape made the overall device weigh less, a characteristic that they claimed rendered the shape functional. In addition to proffering evidence of alternative designs of equal 503. See adidas-Am., Inc. v. Payless Shoesource, Inc., 546 F. Supp. 2d 1029 (D. Or.), reconsideration denied, 540 F. Supp. 2d 1176 (D. Or. 2008). 504. Id. at 1084. 505. See, e.g., Univ. of Kan. v. Sinks, 565 F. Supp. 2d 1216, 1261 (D. Kan. 2008) (rejecting claims of functionality for verbal and design marks used in connection with T-shirts on ground that “there is no evidence that [the] marks are essential to the quality of [the] Tshirts, or affect how the T-shirts ‘work’”). 506. See ERBE Electromedizin GmbH v. Canady Tech. LLC, 529 F. Supp. 2d 577 (W.D. Pa. 2007). 507. Id. at 602. 508. See MSP Corp. v. Westech Instruments, Inc., 500 F. Supp. 2d 1198 (D. Minn. 2007). 102 Vol. 99 TMR mass, the plaintiff pointed out that the defendants’ advertising failed to tout the lightness of their own products, and that the housing of the device in question remained stationary when the device was used. This record produced a finding that “[t]he evidence before the Court does not show that the puzzle-piece shape materially lowers the [device’s] weight or that [the defendants] used the shape in order to lower that weight.” 509 The failure of another attempt to rebut a prima facie case of utilitarian functionality involved a claim of trade dress rights to a gaming table. 510 Applying Ninth Circuit doctrine, the court initially observed that: The Court considers four factors in determining whether a trade dress is functional: (1) whether the design yields a utilitarian advantage, (2) whether alternative designs are available, (3) whether advertising touts the utilitarian advantages of the design, and (4) whether the particular design results from a comparatively simple or inexpensive method of manufacture. 511 The analysis actually employed by the court, however, focused almost exclusively on the availability of alternative designs and in particular on the defendants’ claim that the plaintiff’s design was mandated by the rules of the poker variations played on it. In granting the plaintiff’s motion for a preliminary injunction, the court looked to the history of the defendants’ own product line to find that “Defendants existed in the market . . . for several years using a table design that was different in appearance than [that of the plaintiff].” 512 Indeed, “following the Court’s [earlier] issuance of [a] TRO Defendants came forward with yet another design that did not mirror [the plaintiff’s].” 513 c. Aesthetic Functionality Just as disputes over utilitarian functionality have been on the wane, so too has the number of opinions addressing defense allegations of aesthetic functionality declined in recent years. In a departure from this general trend, however, one district court rejected a defendant’s claims that the gold and green color scheme featured on the packaging for antibiotic ointment was aesthetically functional. 514 Chief among the considerations leading to summary 509. Id. at 1213. 510. See Shuffle Master Inc. v. Awada, 83 U.S.P.Q.2d 1054 (D. Nev. 2006). 511. Id. at 1057. 512. Id. at 1058. 513. Id. 514. See Johnson & Johnson v. Actavis Group hf, 87 U.S.P.Q.2d 1125 (S.D.N.Y. 2008). Vol. 99 TMR 103 judgment in the plaintiff’s favor was evidence that “[o]ther colors, such as blue, white, and orange are prevalent in the packaging of first-aid products that are customarily sold in the aisle in which [the parties’] products are found.” 515 B. Establishing Liability 1. Proving Use in Commerce by Defendants To trigger liability, the Lanham Act’s statutory causes of action require that a defendant be using the challenged mark in commerce. 516 The issue of precisely what satisfies this requirement produced inconsistent opinions, especially in the Internet context. a. Cases Finding Use in Commerce by Defendants Distinguishing the Second Circuit rule that no use in commerce has occurred if that use is not visible to online users, the Eleventh Circuit affirmed a preliminary injunction against the use by a group of defendants of the plaintiff’s marks as metatags. 517 The court grounded its result in part on the fact that search results generated by the defendants’ activities somehow displayed the plaintiff’s marks, but it also squarely took on, and rejected, the Second Circuit’s decision in 1-800-Contacts, Inc. v. WhenU.Com, Inc.: 518 [T]o the extent the 1-800-Contacts court based its “use” analysis on the fact that the defendant did not display the plaintiff’s trademark, we think the Second Circuit’s analysis is questionable. Although we believe that the absence of such a display is relevant in deciding whether there is a likelihood of confusion, . . . this fact is not relevant in deciding whether there is a use in commerce in connection with any sale or advertising of goods. 519 Another opinion unsympathetic to a no-use-in-commerce argument arose from the defendants’ use of the plaintiff’s marks as domain names, triggers for sponsored advertising, and 515. Id. at 1128. 516. See 15 U.S.C. §§ 1114, 1125(a), 1125(c) (2006). 517. See N. Am. Med. Corp. v. Axiom Worldwide, Inc., 522 F.3d 1211 (11th Cir. 2008). 518. 414 F.3d 400 (2d Cir. 2005). For an application of 1-800-Contacts in the metatag context by a Second Circuit district court, see S & L Vitamins, Inc. v. Australian Gold, Inc., 521 F. Supp. 2d 188, 202 (E.D.N.Y. 2007) (granting counterclaim defendant’s motion for summary judgment on ground that “by purchasing keywords and sponsored links and using the [counterclaim plaintiff’s] Marks in its metadata, [the counterclaim defendant] has not ‘used’ the Marks in the trademark sense and, therefore, does not provide an independent basis for a trademark infringement claim”). 519. N. Am. Med. Corp., 522 F.3d at 1219-20. 104 Vol. 99 TMR metatags. 520 The court held that the plaintiff was entitled to a preliminary injunction against each of these practices: [The defendants] actually used [the plaintiff’s] trademarks to engage in two levels of commercial transactions; first, [the defendants] used the marks to purchase advertising from third parties that was directed at [the plaintiff’s] potential users, and second, [the defendants] profited from [the plaintiff’s] marks when [they] transacted with internet users who were initially searching for [the plaintiff’s] products but ultimately purchased [the defendants’] products. Similarly, [the defendants’] practice of embedding [the plaintiff’s] marks in [the defendants’] HTML code to ensure that [the defendants] will appear higher on a list of search results for [the plaintiff’s] products also constitutes “use in commerce” of Plaintiff’s marks. Through all three of these web-based practices, [the defendants] used [the plaintiff’s] marks to increase the likelihood of engaging in commercial transactions with [the plaintiff’s] potential customers. 521 In a more conventional dispute over whether a defendant’s conduct rose to the status of a use in commerce, “hundreds” of the plaintiff’s actual or prospective customers had received from a “John Doe” address an anonymous e-mail with an attached set of PowerPoint slides that, among other references to the plaintiff, reproduced the plaintiff’s mark on each slide. 522 The defendant acknowledged having prepared the slide presentation but argued that it had done so only for internal use by its own sales force. Granting the plaintiff’s motion for a preliminary injunction, the court was unmoved by the defendant’s claim that it had not used the plaintiff’s mark in commerce. As it noted, “whether or not Defendant authorized or condoned the distribution of the Presentation, it was distributed.” 523 Based on the absence of evidence that any other parties had had access to the presentation, the court therefore concluded that “either Defendant or one of its employees must have distributed the presentation or provided the presentation to the individual who did so.” 524 Outside the context of Internet-related disputes, one court made short work of the theory that references to the plaintiff’s marks in telephone conversations with consumers and in the forwarding of consumer data to financial institutions did not 520. See Fin. Express LLC v. Nowcom Corp., 564 F. Supp. 2d 1160 (C.D. Cal. 2008). 521. Id. at 1173-74. 522. See SuccessFactors, Inc. v. Softscape, Inc., 544 F. Supp. 2d 975, 977-78 (N.D. Cal. 2008). 523. Id. at 981. 524. Id. Vol. 99 TMR 105 constitute actionable uses in commerce. 525 The defendant advancing this theory did not actively solicit consumers to make sales—that was done by the lead defendants—but it did provide “back-office” services that exposed its use of the plaintiff’s marks to third parties, including consumers with customer service-related inquiries. In declining to dismiss the plaintiff’s infringement allegations for failure to state a claim, the court observed that “other district courts have construed the phrase ‘use in commerce’ broadly enough to encompass a defendant who did not actually sell or promote any goods or services.” 526 Particularly as the plaintiff averred that one function of the defendant’s call center was to convince consumers not to revoke sales consummated by the lead defendants, the plaintiff’s claims of direct infringement and dilution were allowed to proceed. 527 b. Cases Declining to Find Use in Commerce by Defendants The leading opinion over the past year to reject the allegation that the use of a challenged mark was not an actionable one in commerce came from the Tenth Circuit. 528 The plaintiff sold a variety of written materials critical of the Church of Jesus Christ of Latter Day Saints, while the lead defendant provided information defending the church. Targeting the plaintiff’s website, an individual defendant sympathetic to the lead defendant established a competing site with imagery and verbiage at least reminiscent of the plaintiff’s site. 529 Nevertheless, as the court explained: The [individual defendant’s] website contains no advertising and offers no goods or services for sale. The 525. See Medline Indus. v. Strategic Commercial Solutions, Inc., 553 F. Supp. 2d 979 (N.D. Ill. 2008). 526. Id. at 991. 527. See id. at 991-92. 528. See Utah Lighthouse Ministry v. Found. for Apologetic Info. & Research, 527 F.3d 1045 (10th Cir. 2008). 529. As the websites were compared by the Tenth Circuit: The design elements are similar, including the image of a lighthouse with black and white barbershop stripes. However, the words “Destroy, Mislead, and Deceive” are written across the stripes on the [individual defendant’s] website. Prominent text on the [individual defendant’s] consists of a slight modification of the language located in the same position on the [plaintiff’s] website. For example, the [plaintiff’s] states: “Welcome to the Official Website of the Utah Lighthouse Ministry, founded by Jerald and Sandra Tanner.” In comparison, the [individual defendant’s] website states: “Welcome to an official website about the Utah Lighthouse Ministry, which was founded by Jerald and Sandra Tanner.” Id. at 1049. 106 Vol. 99 TMR [individual defendant’s] website includes sixteen external hyperlinks. Eleven of those hyperlinks point to the website of an organization at Brigham Young University. Three hyperlinks point to articles on the [lead defendant’s] website that are critical of the [plaintiff’s founders], and another takes viewers directly to the [lead defendant’s] website. The other external hyperlink is to the website of the LDS Church. 530 Under these circumstances, the Tenth Circuit affirmed the district court’s conclusion as a matter of law that the defendants had not engaged in an actionable use in commerce. Rejecting the plaintiff’s reliance on the hyperlinks on the individual defendant’s site that connected it to the lead defendant’s site, the appellate court noted that “the offending websites offered critical commentary about the trademark owner, and the use of the trademark was separated from any goods or services offered for sale.” 531 The court made similarly short shrift of the plaintiff’s argument that the individual defendant’s website prevented consumers from accessing the plaintiff’s site, holding instead that “[i]n our view, the defendant in a trademark infringement and unfair competition case must use the [challenged] mark in connection with the goods or services of a competing producer, not merely to make a comment on the trademark owner’s goods or services.” 532 Finally, it held that, although the Internet was generally an instrumentality of interstate commerce, that characteristic did not render any use of the medium an actionable one within the meaning of the Lanham Act. 533 Even the otherwise commercial sale of goods did not prevent entry of summary judgment in favor of one counterclaim defendant alleged to have tarnished certain marks owned by Wal-Mart in violation of federal and Georgia dilution law. 534 The counterclaim defendant was a self-styled parodist who used deliberate imitations of Wal-Mart’s marks to compare Wal-Mart to both the Nazi regime and al Qaeda. Granting the counterclaim defendant’s motion for summary judgment, the court observed: The Court is convinced that a reasonable juror could only find that [the counterclaim defendant] primarily intended to express himself with his Walocaust and Wal-Qaeda concepts and that commercial success was a secondary motive at most. [The counterclaim defendant] has strongly adverse opinions about Wal-Mart; he believes that it has a destructive effect on 530. Id. 531. Id. at 1053. 532. Id. at 1053-54. 533. See id. at 1054. 534. See Smith v. Wal-Mart Stores, Inc., 537 F. Supp. 2d 1302 (N.D. Ga. 2008). Vol. 99 TMR 107 communities, treats workers badly and has a damaging influence on the United States as a whole. He invented the term “Walocaust” to encapsulate his feelings about Wal-Mart, and he created his Walocaust designs with the intent of calling attention to his beliefs and his cause. He never expected to have any exclusive rights to the word. He created the term “Wal-Qaeda” and designs incorporating it with similar expressive intent. The Court has found those designs to be successful parodies. Thus, [the counterclaim defendant’s] parodic work is considered noncommercial speech and therefore not subject to Wal-Mart’s trademark dilution claims, despite the fact that [the counterclaim defendant] sold the designs to the public on t-shirts and other novelty merchandise. 535 Just as the mere filing of an intent-to-use application does not give the applicant standing to prosecute an action to protect the underlying mark, so too does such a filing not, in and of itself, trigger potential liability for the applicant. In one case demonstrating this principle, the defendant had applied to register five marks found objectionable by the plaintiff but claimed in sworn testimony that it had not taken any affirmative steps to use any of them. 536 For their part, the plaintiffs proved unable to adduce any evidence or testimony to the contrary. Under these circumstances, the court concluded that the defendant’s activities “fall short of constituting the ‘use in commerce’ that is required for Plaintiffs to prevail on their infringement claims and/or establish the existence of an actual ‘case or controversy’ under Article III.” 537 c. Use in Commerce by Defendants to Be Determined In a particularly interesting case to examine whether an actionable use in commerce had occurred—albeit one that did not resolve the issue—the counterclaim defendant had once been credentialed by the counterclaim plaintiff, an organization of radiologic technologists, but had let her credentials lapse. 538 She subsequently altered a card issued to her earlier by the counterclaim plaintiff to suggest that she had maintained her credentials and then presented the card to a potential employer, which notified the counterclaim plaintiff of the alteration. As hostilities escalated between the parties, the counterclaim plaintiff 535. Id. at 1340. 536. See Rexel, Inc. v. Rexel Int’l Trading Corp., 540 F. Supp. 2d 1154 (C.D. Cal. 2008). 537. Id. at 1161. 538. See Vistein v. Am. Registry of Radiologic Technologists, 509 F. Supp. 2d 666 (N.D. Ohio 2007). 108 Vol. 99 TMR asserted that the presentation of the altered card infringed the mark that appeared on it. The counterclaim defendant predictably moved for summary judgment, but the court declined to find as a matter of law that the counterclaim plaintiff’s mark had not been used in commerce. Instead, the court held that the record sufficiently demonstrated that the mark’s use had been connected to the counterclaim defendant’s attempted distribution of her services as a radiologic technician that the counterclaim plaintiff was entitled to present its infringement claims to a jury. 539 Another court deferring resolution of the issue of whether the defendants were engaged in the required “use in commerce” did so in the context of a motion to dismiss filed by two defendants in the business of “parking” domain names. 540 In denying the motion, the court initially observed that “[u]ltimately, [the moving defendants’] position would require this court to go outside the pleadings to determine exactly what role [the moving defendants] play in the complex world of domain name ownership, use, registration, and monetization.” 541 Particularly as “‘use’ has been interpreted broadly in other cases involving the internet and domain names,” 542 the court held that “[t]he [complaint] sufficiently pleads facts such that it is plausible that there was ‘use in commerce’ and ‘in connection with the sale, offering for sale, distribution, or advertising of goods and services.’” 543 2. Likelihood of Confusion a. Factors Considered (1) The First Circuit The First Circuit chose not to alter the Pignons factors 544 governing likelihood of confusion determinations in that jurisdiction. Courts therefore continued to look to and apply the following considerations: (1) the similarity of the parties’ marks; (2) the similarity of the parties’ goods; (3) the relationship between the parties’ channels of distribution; (4) the relationship between the parties’ advertising; (5) the classes of prospective purchasers; 539. See id. at 683-84. 540. See Vulcan Golf, LLC v. Google Inc., 552 F. Supp. 2d 752 (N.D. Ill. 2008). 541. Id. at 768. 542. Id. 543. Id. at 769. 544. See Pignons S.A. de Mécanique de Précision v. Polaroid Corp., 657 F.2d 482, 487 (1st Cir. 1981). Vol. 99 TMR 109 (6) evidence of actual confusion; (7) the defendant’s intent in adopting its mark; and (8) the strength of the plaintiff’s mark. 545 (2) The Second Circuit The Polaroid test 546 continued to hold sway in the Second Circuit, with courts there examining: (1) the strength of the plaintiff’s mark; (2) the degree of similarity between the marks; (3) the proximity of the products or services; (4) the likelihood that the senior user will “bridge the gap” into the junior user’s product service line; (5) evidence of actual confusion between the marks; (6) whether the defendant adopted the mark in good faith; (7) the quality of defendant’s products or services; and (8) the sophistication of the parties’ customers. 547 (3) The Third Circuit The Third Circuit’s Lapp test for likely confusion 548 continued to mandate consideration of: (1) the degree of similarity between the parties’ marks; (2) the strength of the plaintiff’s mark; (3) the price of the goods or services and other factors indicative of consumers’ care and attention when making a purchase; (4) the length of time of the defendant’s use of its mark without actual confusion; (5) the defendant’s intent when adopting its mark; (6) any evidence of actual confusion; (7) whether the goods or services, if not competitive, are marketed through the same channels of trade and advertised through the same media; (8) the extent to which the targets of the parties’ sales efforts are the same; (9) the relationship of the goods or services in the minds of consumers 545. See Venture Tape Corp. v. McGills Glass Warehouse, 540 F.3d 56, 60-61 (1st Cir. 2008); Boston Duck Tours, LP v. Super Duck Tours, LLC, 531 F.3d 1, 10 n.6 (1st Cir. 2008); Commerce Bank & Trust Co. v. TD Banknorth, Inc., 554 F. Supp. 2d 77, 85 (D. Mass. 2008). 546. See Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961). 547. See, e.g., Artisan Mfg. Corp. v. All Granite & Marble Corp., 559 F. Supp. 2d 442, 450 (S.D.N.Y. 2008); Prot. One Alarm Monitoring, Inc. v. Executive Prot. One Sec. Serv., LLC, 553 F. Supp. 2d 201, 206 (E.D.N.Y. 2008); Rodgers v. Wright, 544 F. Supp. 2d 302, 311 (S.D.N.Y. 2008); GMA Accessories, Inc. v. Bop, LLC, 507 F. Supp. 2d 361, 364 (S.D.N.Y. 2007), vacated in part, No. 07 Civ. 3219 LTS/DCF, 2008 WL 762782 (S.D.N.Y. Mar. 20, 2008); Louis Vuitton Malletier v. Dooney & Bourke, 561 F. Supp. 2d 368, 378-79 (S.D.N.Y. 2008); Johnson & Johnson Consumer Cos. v. Aini, 540 F. Supp. 2d 374, 389-90 (E.D.N.Y. 2008); Constellation Brands, Inc. v. Arbor Hill Assocs., 535 F. Supp. 2d 347, 364 (W.D.N.Y. 2008); Sly Magazine, LLC v. Weider Publ’ns LLC, 529 F. Supp. 2d 425, 437 (S.D.N.Y. 2007); Biosafe-One, Inc. v. Hawks, 524 F. Supp. 2d 452, 464 (S.D.N.Y. 2007); Ptak Bros. Jewelry Inc. v. Ptak, 83 U.S.P.Q.2d 1519, 1523 (S.D.N.Y. 2007); S & L Vitamins, Inc. v. Australian Gold, Inc., 521 F. Supp. 2d 188, 205 (E.D.N.Y. 2007) Cartier v. Aaron Faber, Inc., 512 F. Supp. 2d 165, 169 (S.D.N.Y. 2007); Patsy’s Italian Rest., Inc. v. Banas, 508 F. Supp. 2d 194, 215 (E.D.N.Y. 2007); Pilot Corp. v. Fisher-Price, Inc., 501 F. Supp. 2d 292, 302 (D. Conn. 2007); Rush Indus. v. Garnier LLC, 496 F. Supp. 2d 220, 225 (E.D.N.Y. 2007). 548. See Interpace Corp. v. Lapp, Inc., 721 F.2d 460, 463 (3d Cir. 1983). 110 Vol. 99 TMR because of the similarity of function; and (10) other facts suggesting that the consuming public might expect the prior owner to expand into the defendant’s market. 549 (4) The Fourth Circuit The Fourth Circuit’s Pizzeria Uno test for liability 550 remained unchanged, with courts there examining: (1) the strength or distinctiveness of the plaintiff’s mark; (2) the similarity of the parties’ marks; (3) the similarity of the parties’ goods or services; (4) the similarity of the parties’ facilities or retail outlets; (5) the similarity of the parties’ advertising; (6) the defendant’s intent; and (7) the existence of any actual confusion. 551 (5) The Fifth Circuit Fifth Circuit courts bounced between seven-factor and eightfactor tests for evaluating the likelihood of confusion between marks. Some courts considered the following nonexclusive factors: (1) the type of mark allegedly infringed; (2) the similarity between the parties’ marks; (3) the similarity between the parties’ goods or services; (4) the identity of the retail outlets and purchasers; (5) the identity of the advertising media used; (6) the defendant’s intent; and (7) any evidence of actual confusion. 552 Others, however, looked toward: (1) the strength of the plaintiff’s mark; (2) the similarity between the parties’ marks; (3) the similarity between the parties’ goods and services; (4) any identity between the parties’ retail outlets and purchasers; (5) the similarity of the parties’ advertising media; (6) the defendant’s intent; (7) the extent of any actual confusion; and (8) the degree of care exercised by potential purchasers. 553 549. See, e.g., McNeil Nutritionals, LLC v. Heartland Sweeteners, LLC, 511 F.3d 350, 358 (3d Cir. 2007); Primepoint, L.L.C. v. Primepay, Inc., 545 F. Supp. 2d 426, 435 (D.N.J. 2008); MNI Mgmt., Inc. v. Wine King, LLC, 542 F. Supp. 2d 389, 408 (D.N.J. 2008). 550. See Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1527 (4th Cir. 1984). 551. See, e.g., Lulu Enters. v. N-F Newsite LLC, 85 U.S.P.Q.2d 1367, 1369 (E.D.N.C. 2007); Maurag, Inc. v. Bertuglia, 494 F. Supp. 2d 395, 397-98 (E.D. Va. 2007). 552. See, e.g., Bd. of Regents v. KST Elec., Ltd., 550 F. Supp. 2d 657, 670 (W.D. Tex. 2008); Montalto v. Viacom Int’l, Inc., 545 F. Supp. 2d 556, 559 (S.D. Miss. 2008); Philip Morris USA Inc. v. Lee, 547 F. Supp. 2d 667, 674 (W.D. Tex.), later proceedings, 547 F. Supp. 2d 685 (W.D. Tex. 2008); DS Waters of Am., Inc. v. Princess Abita Water, L.L.C., 539 F. Supp. 2d 853, 861 (E.D. La. 2008). 553. See, e.g., Paulsson Geophysical Servs., Inc. v. Sigmar, 529 F.3d 303, 310 (5th Cir. 2008); Am. Rice, Inc. v. Producers Rice Mill, Inc., 518 F.3d 321, 329 (5th Cir. 2008). Vol. 99 TMR 111 (6) The Sixth Circuit The relevant factors for consideration in Sixth Circuit likelihood of confusion determinations remained the same and included: (1) the strength of the plaintiff’s mark; (2) the relatedness of the parties’ goods; (3) the similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) the likely degree of purchaser care; (7) the defendant’s intent in selecting the challenged mark; and (8) the likelihood of expansion of the parties’ product lines. 554 (7) The Seventh Circuit Somewhat unusually, there were no reported opinions from courts in the Seventh Circuit addressing the test for likelihood of confusion in that jurisdiction. One unreported decision, however, considered: (1) the degree of similarity between the parties’ marks in appearance and suggestion; (2) the similarity of the products on which the marks are used; (3) the area and manner of concurrent use by the parties of their respective marks; (4) the degree of care likely to be exercised by consumers; (5) the strength of the plaintiff’s mark; (6) any evidence of actual confusion; and (7) any evidence of the defendant’s intent to palm off its products as those of the plaintiff. 555 (8) The Eighth Circuit The test for likely confusion remained unchanged in the Eighth Circuit over the past year, and included consideration of: (1) the strength of the plaintiff’s mark; (2) the similarity of the parties’ marks; (3) the degree to which the parties’ products competed with each other; (4) the alleged infringer’s intent to pass off its goods as those of the plaintiff; (5) the degree of care reasonably expected of potential customers; and (6) actual confusion. 556 554. See, e.g., Leelanau Wine Cellars, Ltd. v. Black & Red, Inc., 502 F.3d 504, 515 (6th Cir. 2007); Future Lawn, Inc. v. Maumee Bay Landscape Contractors, L.L.C., 542 F. Supp. 2d 769, 777 (N.D. Ohio 2008); Hayes Lemmerz Int’l, Inc. v. Epilogics Group, 531 F. Supp. 2d 789, 810 (E.D. Mich. 2007); Vistein v. Am. Registry of Radiologic Technologists, 509 F. Supp. 2d 666, 703 (N.D. Ohio 2007). 555. See Allen Bros. v. AB Foods LLC, No. 06 C 1269, 2008 WL 345600, at *2 (N.D. Ill. Feb. 6, 2008). 556. See, e.g., J&B Wholesale Distrib. Inc. v. Redux Beverages LLC, 85 U.S.P.Q.2d 1623, 1625-26 (D. Minn. 2007); MSP Corp. v. Westech Instruments, Inc., 500 F. Supp. 2d 1198, 1209 (D. Minn. 2007). 112 Vol. 99 TMR (9) The Ninth Circuit In conventional infringement and unfair competition cases, Ninth Circuit courts identified the following factors as relevant to the likelihood of confusion analysis: (1) the strength of the plaintiff’s mark; (2) the relatedness of the parties’ goods; (3) the similarity of the parties’ marks; (4) evidence of actual confusion; (5) marketing channels used by the parties; (6) the degree of care consumers are likely to exercise when making purchases; (7) the intent of the defendant in selecting its mark; and (8) the likelihood that the parties will expand their product lines. 557 One panel of the court confirmed that three of these factors may assume greater importance if the parties are active online: In the internet context, “the three most important . . . factors in evaluating a likelihood of confusion are (1) the similarity of the marks, (2) the relatedness of the goods and services, and (3) the parties’ simultaneous use of the Web as a marketing channel. When this controlling troika or internet trinity suggests confusion is likely, the other factors must weigh strongly against a likelihood of confusion to avoid the finding of infringement. If the internet trinity does not clearly indicate a likelihood of consumer confusion, a district court can conclude the infringement analysis only by balancing all the . . . factors within the unique context of each case.” 558 Nevertheless, another panel drew the line at further reductions in the number of factors considered, rejecting a district court’s entry of summary judgment of nonliability based on alleged dissimilarities between the parties’ marks: [W]e have never countenanced a likelihood of confusion determination based on a consideration of dissimilarity alone or, indeed, on the consideration of any single factor. Instead, we have regularly applied all the relevant factors, noting that a final likelihood of confusion determination may rest on those factors that are of the most relative importance in any given 557. See, e.g., Perfumebay.com Inc. v. eBay Inc., 506 F.3d 1165, 1172 (9th Cir. 2007); Freecycle Network, Inc. v. Oey, 505 F.3d 898, 903 n.5 (9th Cir. 2007); Best W. Int’l, Inc. v. Patel, 523 F. Supp. 2d 979, 990 (D. Ariz. 2007); Hit Entm’t, Inc. v. Nat’l Disc. Costume Co., 552 F. Supp. 2d 1099, 1104 (S.D. Cal. 2008); Paul Frank Indus. v. Sunich, 502 F. Supp. 2d 1094, 1100 (C.D. Cal. 2008); Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628, 632 (9th Cir. 2008); Fin. Express LLC v. Nowcom Corp., 565 F. Supp. 2d 1160, 1174 (C.D. Cal. 2008); Rexel, Inc. v. Rexel Int’l Trading Corp., 540 F. Supp. 2d 1154, 1163-64 (C.D. Cal. 2008); adidas-Am., Inc. v. Payless Shoesource, Inc., 546 F. Supp. 2d 1029, 1052 (D. Or.), reconsideration denied, 540 F. Supp. 2d 1176 (D. Or. 2008); Munhwa Broad. Corp. v. Solafide Inc., 84 U.S.P.Q.2d 1993, 1998 (C.D. Cal. 2007); Shuffle Master Inc. v. Awada, 83 U.S.P.Q.2d 1054, 1058 (D. Nev. 2006). 558. Perfumebay.com, 506 F.3d at 1173-74 (quoting Interstellar Starship Servs., Ltd. v. Epix, Inc., 304 F.3d 936, 942 (9th Cir. 2002)) (citations omitted). Vol. 99 TMR 113 case. Thus, while a likelihood of confusion determination may ultimately rest on a subset of factors, evidence of relatively important factors must be considered as part of that set. 559 (10) The Tenth Circuit The Tenth Circuit offered the following restatement of its test for infringement: Likelihood of confusion is typically evaluated according to a six-factor test in which the court considers: (1) the degree of similarity between the marks; (2) the intent of the alleged infringer in using [its] mark; (3) evidence of actual confusion; (4) similarity of [the parties’] products and manner of marketing; (5) the degree of care likely to be exercised by purchasers; and (6) the strength or weakness of the marks. No one factor is dispositive. 560 (11) The Eleventh Circuit Courts in the Eleventh Circuit continued to apply a sevenfactor test for likely confusion, taking into account: (1) the strength of the plaintiff’s mark; (2) the similarity of the parties’ marks; (3) the similarity of the parties’ goods; (4) the similarity of the parties’ retail outlets and purchasers; (5) the similarity of the parties’ advertising media; (6) the defendant’s intent; and (7) the extent of any actual confusion. 561 One panel of the Eleventh Circuit itself affirmed a finding of no likelihood of confusion despite the district court’s failure to mention the factors at all: “Because the bottom line is the likelihood of consumer confusion, application of the . . . factors entails more than the mechanistic summation of the number of factors on each side; it involves an evaluation of the ‘overall balance.’” 562 559. Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628, 633 (9th Cir. 2008) (citation omitted). 560. Utah Lighthouse Ministry v. Found. for Apologetic Info. & Research, 527 F.3d 1045, 1055 (10th Cir. 2008); see also John Allan Co. v. Craig Allen Co., 540 F.3d 1133, 1138 (10th Cir. 2008); Vail Assocs. v. Vend-Tel-Co., Ltd., 516 F.3d 853, 863 (10th Cir. 2008); Gen. Motors Corp. v. Urban Gorilla, LLC, 500 F.3d 1222, 1227 (10th Cir. 2007); Univ. of Kan. v. Sinks, 565 F. Supp. 2d 1216, 1243 (D. Kan. 2008); Hodgon Powder Co. v. Alliant Techsystems, Inc., 497 F. Supp. 2d 1221, 1239 (D. Kan. 2007); Lederman Bonding Co. v. Sweetalia, 83 U.S.P.Q.2d 1660, 1663 (D. Colo. 2006). 561. See, e.g., Welding Servs., Inc. v. Forman, 509 F.3d 1351, 1360 (11th Cir. 2007); Custom Mfg. & Eng’g, Inc. v. Midway Servs., Inc., 508 F.3d 641, 648 (11th Cir. 2007); Smith v. Wal-Mart Stores, Inc., 537 F. Supp. 2d 1302, 1316 (N.D. Ga. 2008); Dunkin’ Donuts Franchised Rests. LLC v. Cardillo Capital, Inc., 551 F. Supp. 2d 1333, 1338 (M.D. Fla. 2008); PepsiCo Inc. v. #1 Wholesale LLC, 84 U.S.P.Q.2d 1040, 1044 (N.D. Ga. 2007). 562. Custom Mfg. & Eng’g, 508 F.3d at 649. 114 Vol. 99 TMR (12) The District of Columbia Circuit There were no apparent reported cases during the past year bearing on the District of Columbia Circuit’s test for likelihood of confusion. b. Findings (1) Likelihood of Confusion: Preliminary Relief Successful challenges to the denial of motions for preliminary injunctive relief are relatively rare, but a manufacturer of artificial sweetener proved equal to the task, at least as to one of three “store brand” competitors it accused of misappropriating the trade dress of its packaging. 563 Both the district court in the first instance and the Third Circuit on appeal concluded that color coding practices in the industry did not increase the risk of confusion, that the parties’ purchasers exercised at least “some heightened care and attention,” and that there was no credible evidence of actual confusion. 564 Although otherwise concluding that the parties’ trade dresses were similar, the district court found that the consumers would nevertheless be aware of the origin of the defendant’s goods because of a relatively inconspicuous logo used by the defendant and because of the consumers’ mere presence in the defendant’s store. Of this finding, the appellate court remarked that: The danger in the District Court’s result is that producers of store-brand products will be held to a lower standard of infringing behavior, that is, they effectively would acquire per se immunity as long as the store brand’s name or logo appears somewhere on the allegedly infringing package, even when the [defendant’s] name or logo is tiny. The Lanham Act does not support such a per se rule. 565 Concluding that confusion was likely, it remanded the action to the district court, 566 which got religion and concluded that the plaintiff was indeed entitled to a preliminary injunction. 567 Other findings of likely confusion on motions for preliminary injunctive relief were made by trial courts in the first instance, often in cases involving closely similar marks for directly 563. See McNeil Nutritionals, LLC v. Heartland Sweeteners, LLC, 511 F.3d 350 (3d Cir. 2007), on remand, 566 F. Supp. 2d 378 (E.D. Pa. 2008). 564. See id. at 364-67. 565. Id. at 367-68. 566. See id. at 369. 567. See McNeil Nutritionals, 566 F. Supp. 2d 378. Vol. 99 TMR 115 competitive goods and services. 568 For example, one plaintiff successfully protected its ABITA SPRINGS mark for water against the use of a composite mark that included the words PRINCESS ABITA NATURAL SPRING WATER SOURCE: ABITA SPRINGS. 569 The defendant argued unsuccessfully that the focal point of its mark was a stylized Native American princess, but the court saw things differently: “[T]he word ‘ABITA’ is displayed in a font size significantly larger than . . . the image of the Indian Princess, and ‘ABITA’ catches the eye before the princess is even noticed.” 570 From there, it was off to the races for the plaintiff. Glossing over the absence of actual confusion, the court concluded that “considering the striking similarity of the marks, the identical goods which they identify, and the identical channels in which they are sold, it is very likely that consumers will confuse the two products, or believe they are somehow affiliated or derive from the same source.” 571 A likelihood of confusion also arose in the market for sinks and granite countertops. 572 The defendant sold the latter goods and previously had been an authorized distributor of the plaintiff’s sinks. Following the termination of that relationship, the defendant promised customers that they would receive one of the plaintiff’s sinks with each purchase of the defendant’s countertops, only to deliver sinks manufactured by a third party bearing a stylized crown design mark similar to the fleur de lis design mark used by the plaintiff. The court found that at least some consumers actually had been confused either by the defendant’s use of the plaintiff’s word mark in its sales presentations or by the appearance of the design mark on the sinks delivered by the defendant. Other considerations lining up in the plaintiff’s favor included the similarities between the parties’ design marks, the defendant’s bad faith, and the competitive proximity of the parties’ 568. See, e.g., Ligotti v. Garofalo, 562 F. Supp. 2d 204, 214 (D.N.H. 2008) (entering temporary restraining order based on parties’ agreement that confusion was likely to result from their concurrent use of identical marks in connection with identical services); Paulsson Geophysical Servs., Inc. v. Sigmar, 529 F.3d 303, 311 (5th Cir. 2008) (affirming, in brief analysis, entry of preliminary injunction against use of identical mark in connection with identical goods); Best W. Int’l, Inc. v. Patel, 523 F. Supp. 2d 979, 989-91 (D. Ariz. 2007) (entering preliminary injunction against continued use of licensed mark by terminated licensee); Cmty. of Christ Copyright Corp. v. Miller, 85 U.S.P.Q.2d 1314, 1316 (W.D. Mo. 2007) (entering preliminary injunction on ground that “[b]ecause the marks are identical, used in the same geographic location, and used for identical services, Plaintiffs are entitled to a presumption that there is a likelihood of confusion”). 569. See DS Waters of Am., Inc. v. Princess Abita Water, L.L.C., 539 F. Supp. 2d 853 (E.D. La. 2008). 570. Id. at 862. 571. Id. at 863. 572. See Artisan Mfg. Corp. v. All Granite & Marble Corp., 559 F. Supp. 2d 442 (S.D.N.Y. 2008). 116 Vol. 99 TMR goods. With the sophistication of the parties’ customers unable to save the day for the defendant, the plaintiff’s motion for a preliminary injunction was granted. 573 Evidence of actual confusion similarly played a role in one district court’s decision to grant a preliminary injunction against the use of a stylized version of the TD COMMERCE BANK mark in connection with financial services. 574 The plaintiff’s mark was COMMERCE BANK for identical services, and it was able to bring to the table “substantial evidence of actual confusion” in the form of consumer inquiries about the parties’ possible affiliation and at least one misdirected e-mail. With the factors of mark similarity, competitive proximity, shared customers, identical channels of trade, common advertising, and mark strength favoring the plaintiff, the defendants’ successful argument that they had not adopted their mark in good faith failed to tip the balance. 575 In yet another case, this one from the jewelry industry, in which evidence of actual confusion weighed in favor of liability, the plaintiff adduced evidence and testimony of “twenty-nine instances where customers and retail jewelers have actually been confused about whether a catalog sent to them was from [the plaintiff] or defendants.” 576 The existence of actual confusion was hardly surprising, as the parties were making directly competitive uses of the PTAK BROS. JEWELRY and PTAK BROS. marks. Although the defendants responded to the plaintiff’s showing with sworn declaration testimony that they had not encountered any actual confusion, the court found that “[t]he blanket declaration . . . is unpersuasive in light of the evidence produced by [the plaintiff].” 577 Preliminary injunctive relief followed. 578 Arguably less convincing evidence of actual confusion came into play in a case brought by the owners of the stylized DAE JANG GEUM mark for a variety of goods associated with a television show of the same name about a sixteenth century cook in the Korean Royal Kitchen. 579 The defendant sold Asian noodles under the identical words and with a similar design, which led to a Korean language newspaper reporter noting that the defendant’s packaging had caught his attention. 580 The court rather generously 573. See id. at 450-53. 574. See Commerce Bank & Trust Co. v. TD Banknorth, Inc., 554 F. Supp. 2d 77 (D. Mass. 2008). 575. See id. at 85-88. 576. Ptak Bros. Jewelry Inc. v. Ptak, 83 U.S.P.Q.2d 1519, 1524-25 (S.D.N.Y. 2007). 577. Id. at 1525. 578. See id. 579. See Munhwa Broad. Corp. v. Solafide Inc., 84 U.S.P.Q.2d 1993 (C.D. Cal. 2007). 580. See id. at 2000. Vol. 99 TMR 117 found that “[t]his article demonstrates actual initial interest confusion. . . .” 581 Whether that actually was the case, however, was a moot point in light of the virtual identity of the parties’ marks, the competitive proximity of their goods, the acquired strength of the plaintiff’s mark, the defendant’s “intent to deceive the public into thinking its ramen noodles were somehow sponsored by or connected to [the plaintiff’s] hit show,” the likelihood of the plaintiff licensing food items in the future, and the low degree of care exercised by the defendant’s customers. 582 These holdings notwithstanding, a showing of actual confusion is no more necessary to a finding of likely confusion on motions for preliminary injunctive relief than it is in other contexts, especially if the defendant has only recently begun use of its mark. 583 In one case demonstrating this point, the defendants had misappropriated a number of marks owned by the plaintiff for a number of purposes. 584 These included the incorporation of the marks into domain names purchased by the defendants, their use as keywords to trigger advertising for the defendants’ directly competitive goods and services, and their appearance in hidden metatags in HTML text on the defendants’ websites. Relying heavily on the defendants’ online posting of a putative press release that, although criticizing the plaintiff’s product, appeared to have been issued by both parties, the court found that the defendants had created actionable initial interest confusion. 585 Other considerations weighing in favor of preliminary injunctive relief included the strength of the plaintiff’s marks, the competitive proximity of the parties’ goods, and the defendants’ bad faith. 586 The apparent absence of evidence of actual confusion was similarly no obstacle to the issuance of preliminary relief in a case in which the plaintiff and the defendants alike believed they were entitled to use NEXT GENERATION and NGI marks in connection with closely similar impactors that measured the size of 581. Id. 582. See id. at 1998-2001. 583. See, e.g., Paul Frank Indus. v. Sunich, 502 F. Supp. 2d 1094, 1101 (C.D. Cal. 2008) (finding confusion likely between PAUL FRANK and PAUL FRANK SUNICH marks for clothing despite absence of actual confusion); J&B Wholesale Distrib. Inc. v. Redux Beverages LLC, 85 U.S.P.Q.2d 1623, 1628 (D. Minn. 2007) (finding confusion likely between NO NAME mark for meats, fish, and poultry and NO NAME for energy drinks, in part because “[a]s [the defendant] only recently started using [its] mark, lack of actual confusion is not be given significant weight”). 584. See Fin. Express LLC v. Nowcom Corp., 564 F. Supp. 2d 1160 (C.D. Cal. 2008). 585. See id. at 1175-76, 1177. 586. See id. at 1176 n.6. 118 Vol. 99 TMR aerosol particles used in the pharmaceutical industry. 587 The plaintiff claimed to have encountered actual confusion even before the defendants’ products had hit the market, but the court characterized the plaintiff’s showing as “weak because it is based on vague hearsay with little foundation.” 588 Neither this conclusion nor the court’s findings that the plaintiff had failed to demonstrate the strength of its mark, that the defendants had not acted in bad faith, and that the parties’ customers were sophisticated sidetracked the final result, however. On the contrary, the similarities in the parties’ marks and goods, coupled with a past friendly relationship that had evolved into direct competition, led to holdings that the plaintiff was likely to prevail on its infringement claims. 589 Finally, one belatedly reported opinion from 2006 demonstrated that intentional copying can play a significant role in the likelihood of confusion analysis. 590 The designation sought to be protected was the design of a gaming table, and the plaintiff’s factual showing demonstrated to the court’s satisfaction that copying had occurred. Of this, it remarked, “if an accused infringer knowingly adopts a mark similar to another’s, ‘courts will presume that it can achieve its purpose in deceiving the public.’” 591 Other considerations weighing in the plaintiff’s favor included a nearidentity in the appearances of the parties’ tables, the parties’ shared customers and advertising channels, and public recognition of the plaintiff’s design. 592 (2) Likelihood of Confusion: As a Matter of Law Although reported district court opinions finding infringement as a matter of law are less common than those granting summary judgment motions by defendants, they did make at least some appearances over the past year. 593 Some were easy calls, including one that presented a battle between the federal registrant of the 843-TURF mark and a competitor using the 720-TURF mark for 587. See MSP Corp. v. Westech Instruments, Inc., 500 F. Supp. 2d 1198 (D. Minn. 2007). 588. Id. at 1211. 589. See id. at 1209-11, 590. See Shuffle Master Inc. v. Awada, 83 U.S.P.Q.2d 1054 (D. Nev. 2006). 591. Id. at 1058 (quoting Caesars World, Inc. v. Milanian, 247 F. Supp. 2d 1171, 1200 (D. Nev. 2003)). 592. See id. at 1058. 593. See, e.g., Univ. of Kan. v. Sinks, 565 F. Supp. 2d 1216, 1244-45 (D. Kan. 2008) (finding confusion likely as a matter of law between “substantially similar” marks used in connection with directly competitive T-shirts); Dunkin’ Donuts Franchised Rests. LLC v. Cardillo Capital, Inc., 551 F. Supp. 2d 1333, 1338 (M.D. Fla. 2008) (finding that terminated franchisees’ continued use of franchisors’ marks created likelihood of confusion as a matter of law). Vol. 99 TMR 119 directly competitive services; once the validity of the plaintiff’s mark had been established, all the relevant factors other than actual confusion and intent fell into place in the plaintiff’s favor. 594 Likewise, another court invoked record evidence of actual confusion to find that the federally registered CHIC mark for a musical group had been infringed as a matter of law by the use of LADIES OF CHIC and FIRST LADIES OF CHIC for the same services by former members of the plaintiff’s group. 595 Still another court entered summary judgment of infringement in an action in which the defendants were using marks identical to those of the plaintiffs in connection with directly competitive costumes of children’s television characters. 596 Appeals from the entry by district courts of summary judgment of liability were relatively infrequent, but one did reach the First Circuit, which affirmed. 597 The parties were direct competitors in the niche market of specialty adhesive tapes and foils used in the stained glass industry, which led the defendants to incorporate the plaintiff’s trademarks into metatags and hidden text on their website. In one of the more infirm arguments to make an appearance in recent case law, the defendants argued that, even if they had intended to divert the plaintiff’s potential online customers to their own website, there was no record evidence of actual confusion demonstrating that they had succeeded in this purpose. Concluding that every other relevant consideration weighed in the plaintiff’s favor, the court held that “[the defendants’] various protestations below and on appeal that there is no direct evidence of actual consumer confusion, even if accepted as true, are ultimately beside the point.” 598 Other cases finding infringement as a matter of law presented closer questions, with one opinion in particular addressing the issue of what significance the distinction between trademarks and service marks should have in the relevant analysis. 599 The plaintiffs’ mark was REXEL, used in connection with wholesale distributorship services in the consumer electronic goods industry, while the defendant used a stylized version of the same word for electrical parts, supplies, and equipment. The court characterized the defendant’s argument that confusion was unlikely because the 594. See Future Lawn, Inc. v. Maumee Bay Landscape Contractors, L.L.C., 542 F. Supp. 2d 769, 776-79 (N.D. Ohio 2008). 595. See Rodgers v. Wright, 544 F. Supp. 2d 302, 310-12 (S.D.N.Y. 2008). 596. See Hit Entm’t, Inc. v. Nat’l Disc. Costume Co., 552 F. Supp. 2d 1099, 1106 (S.D. Cal. 2008). 597. See Venture Tape Corp. v. McGills Glass Warehouse, 540 F.3d 56 (1st Cir. 2008). 598. Id. at 61. 599. See Rexel, Inc. v. Rexel Int’l Trading Corp., 540 F. Supp. 2d 1154 (C.D. Cal. 2008). 120 Vol. 99 TMR parties were engaged in unrelated businesses as a “non-sequitor,” further observing that “Defendant does not offer any authority . . . to stand for the proposition that a senior user’s service mark can never be infringed by a junior user’s use of a similar mark on goods.” 600 Although concluding that the plaintiffs’ evidence of actual confusion in the form of a single allegedly misdirected phone call was “extremely minimal,” 601 the court otherwise concluded that the remaining likelihood of confusion factors weighed in their favor. 602 (3) Likelihood of Confusion: After Trial One of the more notable findings of likely confusion following a trial on the merits came in a declaratory judgment action that ultimately found its way to the Ninth Circuit. 603 The appellee (and senior user) used the EBAY mark in connection with online auction services, while the appellant (and junior user) used several marks featuring the conjoined elements PERFUME and BAY in connection with online perfume sales. Applying a deferential standard of review to the district court’s finding that confusion was likely, the Ninth Circuit held that the inquiry was governed by its “internet trinity” of factors, namely, (1) the similarity between the parties’ marks, (2) the relatedness of the parties’ goods and services, and (3) the parties’ simultaneous use of the Internet as a marketing tool. 604 With each of these factors favoring the appellee, the appellant was required to show that the remaining Ninth Circuit likelihood of confusion factors weighed strongly against a finding of liability. 605 This showing the appellant failed to make, especially in light of the Ninth Circuit’s further distinguishing between the Internet and bricks-and-mortar contexts: [The appellant] is correct that “Perfumebay” and “eBay” are pronounced differently and have different meanings. However, we must evaluate the marks as they are utilized in the marketplace. This requires an analysis of the marks in their Internet usage, not simply as the terms are pronounced or viewed in the abstract. Internet users type “perfumebay as a domain name and as an Internet search term, and click onto “perfumebay” links as search results. Internet users do not 600. Id. at 1163. 601. Id. at 1168. 602. See id. at 1163-72. 603. See Perfumebay.com Inc. v. eBay Inc., 506 F.3d 1165 (9th Cir. 2007). 604. See id. at 1173. 605. See id. at 1175. Vol. 99 TMR 121 utilize verbal communication as a basis for the services they seek. The likelihood of confusion, therefore, does not arise in a vacuum, but rather from the manner in which “perfumebay” is used on the internet. 606 The Ninth Circuit was not alone in reviewing factual findings of likely confusion, with the Eleventh Circuit in particular also getting into the act. In an appeal from a jury verdict of infringement, that court took a hard line toward a group of trademark licensees who had shortened the licensed mark to a form not expressly authorized by the license. 607 The mark covered by the license was HEALTH-CHEM DIAGNOSTICS, used in connection with transdermal diagnostic pharmaceutical patches. When the licensees sued the licensors for nonperformance of certain non-trademark obligations, the licensors counterclaimed for infringement based on the licensees’ abbreviation of the licensed mark to HEALTH-CHEM. The appellate court noted that the licensed mark was suggestive, “thus putting it in the second strongest category,” and that the record included testimony of actual confusion. 608 Affirming the jury’s finding that confusion was likely between the full and abbreviated versions of the mark, the court held that “because the two most important factors in determining the likelihood of confusion—type of mark and actual confusion—weighed in favor of finding such confusion, there was sufficient evidence to support reasonable jury’s finding of infringement.” 609 In another opinion affirming a finding of likely confusion after a trial between two users of the same mark for charity medical transportation services, the Eleventh Circuit confirmed that its doctrine did not require a showing of actual confusion for a finding of liability. 610 At trial, the plaintiff put forward two employees as witnesses, who described instances of actual confusion they had encountered among potential donors and medical personnel. Brushing aside the defendants’ challenge on appeal to the district court’s reliance on this allegedly hearsay testimony, the Eleventh Circuit observed that “although the evidence of actual confusion occupied a large portion of the district court opinion, it was largely superfluous to the court’s ultimate finding of infringement.” 611 Rather, the parties’ use of identical marks for identical services 606. Id. 607. See Aronowitz v. Health-Chem Corp., 513 F.3d 1229 (11th Cir. 2008). 608. Id. at 1240. 609. Id. 610. See Angel Flight of Ga., Inc. v. Angel Flight Am., Inc., 522 F.3d 1200 (11th Cir. 2008). 611. Id. at 1206. 122 Vol. 99 TMR targeted toward the same consumers and potential donors, coupled with the district court’s finding that the defendants “had intentionally exploited the goodwill associated with [the plaintiff’s] mark,” precluded the district court’s finding of likely confusion from being clearly erroneous. 612 The deference properly accorded to a jury verdict, as well as facts favorable to the plaintiff, led to the Seventh Circuit’s affirmance of a finding of infringement. 613 The plaintiff, the owner of the BEANIE BABIES mark for plush beanbag toys shaped like various animals, challenged the defendant’s use of SCREENIE BABIES for a similar line of products that featured chamois on their bellies and could be used to clean computer screens. On appeal, the Seventh Circuit acknowledged this difference between the parties’ products, but also noted that the chamois belly on each of the defendant’s goods was “invisible unless the animal is viewed from the bottom.” 614 It was equally dismissive of the defendant’s reliance on the differing tags used by the parties, holding that “customers might well believe that [the plaintiff], having decided to make a screen cleaner rather than the conventional ‘Beanie Baby’ toy, had changed the tag’s appearance.” 615 Finally, it rejected the significance of the differing outlets through which the parties’ goods were sold on the ground that “the issue is only whether the [defendant’s mark] on a nearly identical-looking product is likely to make a significant number of consumers think that [the defendant’s] product is actually a . . . brand [of the plaintiff]; and the jury was entitled to answer the question in the affirmative.” 616 The Fifth Circuit similarly proved receptive to a finding of infringement, this one following a bench trial. 617 The case arose from the use by competing rice producers of stylized marks featuring hat-wearing girls. Affirming the district court’s finding that the plaintiff’s mark was a strong one, the appellate court noted that the mark was not only inherently distinctive but also had “strong established secondary meaning in the market.” 618 The factor of mark similarity also weighed in the plaintiff’s favor in light of the use by both parties of a girl-with-hat motif and the tendency of consumers to call for “girl rice” when ordering the plaintiff’s product. 619 From there, it was all downhill for the 612. Id. at 1206-07. 613. See Ty, Inc. v. Softbelly’s, Inc., 517 F.3d 494 (7th Cir. 2008). 614. Id. at 500. 615. Id. 616. Id. 617. See Am. Rice, Inc. v. Producers Rice Mill, Inc., 518 F.3d 321 (5th Cir. 2008). 618. Id. at 331. 619. See id. at 332. Vol. 99 TMR 123 defendant, especially on the likelihood of confusion factor of the defendant’s intent, which the court held to favor liability based on the defendant’s preexisting knowledge of the plaintiff’s mark and its use of a stylized girl design only when competing with the plaintiff. 620 (4) Likelihood of Confusion to Be Determined As always, the difficulty in demonstrating either liability or nonliability for infringement as a matter of law led some courts to defer resolution of the issue until full trials on the merits. The most notable opinion to reach this result came from the Ninth Circuit, which used the occasion to lecture district courts within its jurisdiction on the significance of mark dissimilarity in the likelihood of confusion analysis. 621 The plaintiff sought to protect a stylized version of its HOT WHEELS mark, used in connection with miniature vehicles, against the defendant’s use of HOT RIGZ in stylized form for miniature trucks. The district court entered summary judgment in the defendant’s favor based largely on the perceived dissimilarity between the parties’ marks, but the district court vacated this holding on the ground that: To hold otherwise would allow the possibility that persuasive evidence of a single factor may be considered at the expense of relevant evidence of others. This problem is particularly acute where, as here, a court relies on the dissimilarity of the marks to conclude that no likelihood of confusion exist. In such a case, the potential for a judge to elevate his or her own subjective impressions of the relative dissimilarity of the marks over evidence of, for example, actual confusion, is great. And where the subjective impressions of a particular judge are weighed at the expense of other relevant evidence, the value of the multi-factor approach sanctioned by the Court is undermined. .... . . . [T]hough it may be true that very dissimilar marks will rarely present a significant likelihood of confusion, dissimilarity alone does not obviate the need to inquire into evidence of other important factors. Only upon such an inquiry may a court ensure that its judgment as to the likelihood of confusion is fully informed and without error. 622 The Tenth Circuit also had the opportunity to clarify the significance of one of its likelihood of confusion factors, namely, 620. See id. at 332-33. 621. See Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628 (9th Cir. 2008). 622. Id. at 633-34. 124 Vol. 99 TMR that of the bad faith adoption of a mark by a junior party. 623 The parties’ marks were JOHN ALLAN’S and CRAIG ALLEN’S, both used in connection with men’s grooming salons. In finding after a bench trial that the marks were not likely to be confused, the district court noted that the defendants had deliberately adopted their CRAIG ALLEN’S mark to take advantage of the plaintiff’s goodwill; at the same time, however, that court placed dispositive weight on the fact that the defendants’ mark referred to the full name of one of their principals, Craig Allen Tatro. Concluding that the district court’s “internally inconsistent findings” on the subject of the defendant’s intent constituted legal error, as did its failure to take into account record testimony of actual confusion, the Tenth Circuit reversed. In the process, it explained that: Evidence of intent to copy does not create a rebuttable presumption of likelihood of confusion, thereby shifting the burden to the defendant, as [the plaintiff] argues. Instead, the intent of the alleged infringer remains but one factor in our analysis. A finding that the infringer intended to copy may lead to an inference of confusion, even a strong one, but the inference is a permissive one. 624 Decisions to defer resolution of the likelihood of confusion inquiry also came from district courts entertaining litigants’ motions to dismiss 625 or for summary judgment. 626 One example came in a declaratory judgment action by the owner of the ARBOR MIST mark for wine against the owner of the ARBOR HILL mark for competitive goods. 627 In addition to finding that the counterclaim plaintiff had received misdirected calls and correspondence, the court also concluded that visitors to the 623. See John Allan Co. v. Craig Allen Co., 540 F.3d 1133 (10th Cir. 2008). 624. Id. at 1139 n.4. 625. See, e.g., Just Enters. v. O’Malley & Langan, P.C., 560 F. Supp. 2d 345, 350 (M.D. Pa. 2008) (declining to decide, on motion to dismiss, whether plaintiff was pursuing an “improper broadening” of its registered mark by challenging the use of an allegedly similar mark in connection with services not covered by its registration); Vulcan Golf, LLC v. Google Inc., 552 F. Supp. 2d 752, 769 (N.D. Ill. 2008) (denying motion to dismiss “given that the ‘likelihood of confusion’ is a fact-specific inquiry best left for decision after discovery”). 626. See, e.g., Hit Entm’t, Inc. v. Nat’l Disc. Costume Co., 552 F. Supp. 2d 1099, 1105 (S.D. Cal. 2008) (denying motion for summary judgment in action to protect trade dress of costumes “absent evidence regarding who buys the allegedly infringing costumes sold by Defendants, how the allegedly infringing costumes are utilized, what marketing channels (if any) are used, and actual confusion”); S & L Vitamins, Inc. v. Australian Gold, Inc., 521 F. Supp. 2d 188, 205 (E.D.N.Y. 2007) (denying defense motion for summary judgment grounded solely in alleged absence of actual confusion); Patsy’s Italian Rest., Inc. v. Banas, 508 F. Supp. 2d 194, 215 (E.D.N.Y. 2007) (denying motion for summary judgment on ground that moving papers were “devoid of any discussion relating to a likelihood of confusion” between the parties’ marks). 627. See Constellation Brands, Inc. v. Arbor Hill Assocs., 535 F. Supp. 2d 347 (W.D.N.Y. 2008). Vol. 99 TMR 125 counterclaim plaintiff’s winery had also been confused by the similarity between the parties’ marks: “[S]ix instances involved actual purchasers of [the counterclaim defendants’ wine], and as many as 6240 instances . . . involved people who stopped at the [counterclaim plaintiff’s winery] assuming that they could buy [the counterclaim defendants’ wine]. . . . [M]ost, if not all, of these persons assumed that there was a connection between the products based solely on the similarity of the names.” 628 Especially when it was coupled with the directly competitive nature of the parties’ goods and the lack of sophistication of their customers, the court held that this showing precluded a grant of the counterclaim defendants’ motion for summary judgment; more surprisingly, however, it relied on the weakness of the counterclaim plaintiff’s mark, “the very different impressions” created by the parties’ presentations of their marks, the counterclaim defendant’s good faith, and the lack of inferiority of the counterclaim defendant’s wine to deny the counterclaim plaintiff’s cross-motion. 629 Another opinion deferring resolution of the ultimate issue of liability came in a battle between purveyors of athletic shoes, in which the plaintiffs sought to protect a registered mark consisting of three parallel stripes with serrated edges against the defendant’s use of shoes bearing two and four stripes without serrated edges. 630 The defendant’s motion for summary judgment relied heavily on the differing numbers of stripes featured on the parties’ shoes, but the court declined to give this consideration dispositive weight on the ground that “‘few would be stupid enough to make exact copies of another’s mark or symbol. It has been well said that the most successful form of copying is to employ enough points of similarity to confuse the public with enough points of difference to confuse the courts.’” 631 Having disposed of that issue, the court found that there was record evidence favoring the plaintiffs’ claims under the other likelihood of confusion factors of record, including the competitive nature of the parties’ products, an overlap in their customers and marketing channels, the strength of the plaintiffs’ mark, the defendant’s “knowing imitation” of the plaintiffs’ mark, survey evidence of actual confusion, and the relatively unsophisticated nature of the defendant’s customers. 632 628. Id. at 368-69. 629. See id. at 364-72. 630. See adidas-Am., Inc. v. Payless Shoesource, Inc., 546 F. Supp. 2d 1029 (D. Or.), reconsideration denied, 540 F. Supp. 2d 1176 (D. Or. 2008). 631. Id. at 1053 (quoting Baker v. Master Printers Union, 34 F. Supp. 808, 811 (D.N.J. 1940)). 632. See id. at 1054-60. 126 Vol. 99 TMR Actual confusion, directly competitive goods, and the defendant’s status as a former licensee failed to carry the day as a matter of law for the University of Kansas in its suit against the purveyors of T-shirts that featured reproductions of the university’s trademarks on their front sides. 633 According to the court, the messages printed on the backs of the shirts warranted sending the university’s infringement claims to a jury: [T]he overall look, sound, and meaning of the [defendants’] shirts is . . . different from the licensed shirts in that they reference either sex or alcohol, use irreverent language, make insulting references to rival universities such as Kansas State University or the University of Missouri, or reference individual players and coaches of the KU athletic teams in contravention of an NCAA rule. KU cannot deny that these are important differences in the overall presentation of the marks to consumers and it is undisputed that these references are neither condoned by KU nor used on officially licensed products. 634 A different court similarly found a defense motion for summary judgment wanting in an action in which the parties’ goods and services were not competitive. 635 The defendant was an electric company using a stylized longhorn steer design that was “clearly saliently similar” to a depiction of the same breed of ungulate used by the University of Texas in connection with its various services. 636 The defendant successfully established a lack of competition between the parties, but the court noted that “this factor is not as weighty as the others given that direct competition or intrinsic relatedness between the mark holder and the alleged infringer is not required.” 637 The plaintiff pulled away from there, scoring points grounded in the strength of its mark and the defendant’s awareness of the plaintiff’s mark before adopting its own. Under these circumstances, the court held, “[the plaintiff] has established a material fact issue as to the likelihood of confusion element of its federal trademark infringement and unfair competition causes of action.” 638 A final opinion of note, which denied the parties’ cross-motions for summary judgment on likelihood of confusion grounds, addressed a claim that the counterclaim defendant’s unauthorized service mark use of the counterclaim plaintiff’s collective 633. See Univ. of Kan. v. Sinks, 565 F. Supp. 2d 1216 (D. Kan. 2008). 634. Id. at 1246. 635. See Bd. of Regents v. KST Elec., Ltd., 550 F. Supp. 2d 657 (W.D. Tex. 2008). 636. See id. at 672. 637. Id. 638. Id. at 673. Vol. 99 TMR 127 membership mark could not lead to a likelihood of confusion. 639 Specifically, the “relevant buyer class” for the counterclaim defendant’s services—employers of radiologic technologists—was allegedly completely distinct from that targeted by the counterclaim plaintiff—the radiologic technologists themselves. This theory was viewed with a jaundiced eye by the court, which noted that “[a]lthough the [counterclaim plaintiff] does not itself perform services in connection with its mark, the services provided by its members are identical to those [the counterclaim defendant] was attempting to provide and/or maintain through her infringing use.” 640 Despite the parties’ use of the same marks in these closely related contexts, however, the court also found that enough evidence—mostly that bearing on intent and alleged actual confusion—supported the counterclaim plaintiff’s position that summary judgment was improper. 641 (5) Unlikelihood of Confusion: Preliminary Relief Actual confusion can be highly probative evidence that confusion is likely, but several opinions drove home the point that even the existence of confused consumers may not carry the day for plaintiffs seeking preliminary injunctive relief. Thus, for example, one court denying a preliminary injunction declined to give weight to the counterclaim plaintiff’s testimony of misdirected telephone calls based on his failure to present “evidence that customers were confused about which business they were attempting to reach, or that directory assistance erroneously connected them to [the counterclaim defendants’] business when they were actually trying to reach [his] business.” 642 Of equal importance, there was no showing that the source of any confusion was the counterclaim defendants’ mark, rather than “several other” similar marks used by third parties. 643 The Third Circuit also dismissed proffered evidence and testimony of actual confusion. 644 That court affirmed the denial of a preliminary injunction to the manufacturer of SPLENDA artificial sweetener against two “store brand” competitors that allegedly had misappropriated the plaintiff’s trade dress. The 639. See Vistein v. Am. Registry of Radiologic Technologists, 509 F. Supp. 2d 666 (N.D. Ohio 2007). 640. Id. at 703-04. 641. See id. at 704. 642. Lederman Bonding Co. v. Sweetalia, 83 U.S.P.Q.2d 1660, 1664 (D. Colo. 2006). 643. See id. 644. See McNeil Nutritionals, LLC v. Heartland Sweeteners, LLC, 511 F.3d 350 (3d Cir. 2007). The court did, however, vacate the denial of preliminary relief as to a third competitor. See id. at 359-69. 128 Vol. 99 TMR plaintiff introduced testimony by a consumer who had purchased the product of one of the competitors by mistake, but the appellate court held that the district court had not abused its discretion in according the testimony limited weight. As it pointed out, the consumer admitted that she was a “surgical strike” shopper who had been “just buzzing through the market and was not wearing her reading glasses at the time.” 645 Her additional concession that she was not a comparison shopper rendered her “not representative of the kind of shopper ordinarily purchasing [the parties’] sucralose.” 646 Moving on to other considerations, the Third Circuit concluded that one factor above all supported the district court’s finding that confusion was unlikely, namely, the presence on the defendants’ packaging of their SAFEWAY and FOOD LION house marks. The court disclaimed any intent to suggest that “the prominent presence of another well-known mark is an affirmative defense to every trade dress infringement action.” 647 Nevertheless, it also held that “this fact unquestionably plays a role in a district court’s analysis of the . . . factor [of trade dress similarity], such that it may cause the overall impressions created by two trade dresses to be different enough for . . . [this] factor to be weighed in a defendant’s favor.” 648 With the court able to identify additional differences between the parties’ trade dresses that were “not minute ones found only upon examination with a microscope,” it held that the district court had not committed clear error in denying the plaintiff’s motion. 649 A demonstration of actual confusion similarly failed to carry the day for a plaintiff attempting to defend entry of a preliminary injunction on appeal. 650 The plaintiff owned a composite mark, the verbal component of which was BOSTON DUCK TOURS, for amphibious boat tours, while the defendant used SUPER DUCK TOURS for the same services. With the First Circuit concluding that “duck tours” was generic, the playing field suddenly became slanted in the defendant’s favor. To begin with, the court held that the proper comparison when evaluating the similarity between the parties’ marks was between “Boston” and “Super,” which it concluded were “reasonably, although not completely, dissimilar.” 651 Moreover, although the plaintiff brought to the table 645. Quoted in id. at 356. 646. Id. at 365. 647. Id. at 361. 648. Id. 649. Id. at 362. 650. See Boston Duck Tours, LP v. Super Duck Tours, LLC, 531 F.3d 1 (1st Cir. 2008). 651. Id. at 25. Vol. 99 TMR 129 “several dozen” examples of actual confusion, the court attributed them to the parties’ concurrent use of the generic phrase “duck tours.” 652 With mark similarity and actual confusion no longer considerations, the directly competitive nature of the parties’ services could not save the plaintiff’s case. 653 A substantially identical result held with respect to the plaintiff’s claims to a stylized duck design, which it alleged the defendant also had infringed. 654 Other factors proved dispositive in another appellate court’s decision to affirm the denial of preliminary relief. 655 The motion in question had been brought by an automobile manufacturer seeking to block the sale of conversion kits that would allegedly allow purchasers to make their vehicles resemble those of the plaintiff. Applying the deferential abuse of discretion standard of review, the Tenth Circuit held that the district court had not erred in concluding that the plaintiff had failed to back up its allegations of bad faith copying by the defendant. Of equal importance, the record suggested that there was a “genuine question” as to the strength of the plaintiff’s trade dress, that purchasers of the plaintiff’s high-priced vehicles were sophisticated and therefore not prone to confusion, and that the parties’ products—“a body kit requiring assembly and a finished vehicle”—were “inherently different.” 656 Accordingly, the district court had not abused its discretion in denying relief. 657 At the trial court level, one district court confirmed that the likelihood of confusion between two marks in an infringement action (as opposed to a registrability proceeding before the Board) must be determined through reference to actual marketplace conditions. 658 Seeking to bolster its motion for a preliminary injunction by demonstrating the related nature of the parties’ services, the plaintiff invited the court to look to the defendant’s expansive intent-to-use application, which the court characterized as reflecting the defendant’s intent “to use its mark in nearly every line of business imaginable, including . . . services identical to those provided by Plaintiff.” 659 The court declined the invitation, holding instead that there was “no merit to the idea that a court should use federal registration statements to determine the 652. See id. at 25. 653. See id. at 25-27. 654. See id. at 28-31. 655. See Gen. Motors Corp. v. Urban Gorilla, LLC, 500 F.3d 1222 (10th Cir. 2007). 656. Id. at 1228. 657. See id. 658. See Lulu Enters. v. N-F Newsite LLC, 85 U.S.P.Q.2d 1367 (E.D.N.C. 2007). 659. Id. at 1370. 130 Vol. 99 TMR similarity of goods and services represented by competing marks.” 660 Testimony by the defendant’s CEO that the defendant did indeed intend to use its mark in connection with the services recited in the application was outweighed by certain “sealed evidence and Defendant’s assurances to the Court at oral argument, which indicate that Defendant’s plans are very narrow.” 661 Another district court denying preliminary injunctive relief focused on the factor of visual dissimilarity. 662 The parties were competing producers of industrial-strength septic tank system cleaning products, with the plaintiffs using the BIO-SAFE mark and the defendants the NEWTECHBIO mark. The plaintiffs’ infringement claims were coupled with allegations that the defendants had purchased the plaintiffs’ mark as a key word to trigger Internet advertising and had copied portions of the plaintiffs’ website for use on their own. Although the parties used the same advertising media to compete for the same unsophisticated customers at the same price points, these considerations failed to carry the day in light of the absence of credible evidence of actual confusion or of the defendants’ bad faith and especially because of the dissimilarities of the appearances of their websites: “The shapes of the logos, company names, color placement, navigation, organizational elements, and layout of the websites would not be confused by potential purchasers.” 663 Finally, faced with competing claims to the unregistered WINE KING mark in connection with retail store services in the alcoholic beverage field, one court assigned considerable weight to the distance between the parties’ stores in disposing of the plaintiffs’ claims of infringement. 664 Although the lack of a geographic overlap between the parties’ operations precluded a claim of direct likelihood of confusion under the Tea Rose-Rectanus doctrine, 665 it also came into play in the court’s rejection of the plaintiffs’ allegations of reverse confusion. Specifically, despite the mark’s inherent distinctiveness, the parties’ respective uses of it had failed to generate any notoriety outside of their markets, therefore precluding it from enjoying any commercial strength. Coupled with the defendants’ good faith in adopting their mark, this consideration outweighed others favoring the plaintiffs, 660. Id. 661. Id. 662. See Biosafe-One, Inc. v. Hawks, 524 F. Supp. 2d 452 (S.D.N.Y. 2007). 663. Id. at 464. 664. See MNI Mgmt., Inc. v. Wine King, LLC, 542 F. Supp. 2d 389 (D.N.J. 2008). 665. United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918); Hanover Star Milling Co. v. Metcalf, 240 U.S. 403 (1915). Vol. 99 TMR 131 including the otherwise directly competitive nature of the parties’ services, the fact that “[c]onsumers typically do not exercise a high degree of care when purchasing a relatively low cost item, such as a bottle of alcohol,” “some similarities between the parties’ [promotional] campaigns,” and evidence of actual confusion among the plaintiffs’ suppliers. 666 (6) Unlikelihood of Confusion: As a Matter of Law The most interesting development in case law finding no likelihood of confusion as a matter of law was the willingness of the Seventh and Eleventh Circuits to affirm entry of summary judgment of nonliability based on dissimilarities between marks. In the case before the Eleventh Circuit, the plaintiff sought to protect a stylized WSI logo for welding services against the defendants’ use of a stylized WTI logo for the same services. 667 Affirming the district court’s entry of summary judgment in the defendants’ favor, the Eleventh Circuit acknowledged that the parties offered competitive services promoted through similar advertising and sales methods. Nevertheless, it held that: Visual comparison of the two logos shows that they are not similar. The WSI mark consists of stylized letters in an ordinary circle. The WTI mark consists of plain block letters with an orange “swoosh” design, meant to convey rotational movement, wrapping around the middle of the letters. The words “Welding Technologies, Inc” appear below the letters [of the plaintiff’s logo]. There is not the least possibility of confusing the two stylized logos. Overwhelming visual similarity can defeat an infringement claim, even where the other six [likelihood of confusion] factors all weigh in favor of the plaintiff. 668 If the Eleventh Circuit paid only lip service to likelihood of confusion factors other than mark similarity, the Seventh Circuit took this analysis one step further. 669 The plaintiff in the appeal before the court owned a federal registration of the TOP mark for tobacco, while the defendant sold a directly competitive product in containers bearing the phrase “Fresh-TopTM Canister.” Reproducing a side-by-side comparison of the parties’ packaging in its opinion, the court held that the visual dissimilarity of the uses in question warranted a finding of no likelihood of confusion as a matter of law. Of the plaintiff’s invitation to engage in a doctrinal 666. MNI Mgmt., 542 F. Supp. 2d at 414-18. 667. See Welding Servs., Inc. v. Forman, 509 F.3d 1351 (11th Cir. 2007). 668. Id. at 1361. 669. See Top Tobacco, L.P. v. N. Atl. Operating Co., 509 F.3d 380 (7th Cir. 2007). 132 Vol. 99 TMR analysis of the other likelihood of confusion factors, the court observed: What [the plaintiff] wants us to do is to ignore the pictures and the lack of any reason to believe that anyone ever has been befuddled. Like other courts, this circuit has articulated a multi-factor approach to assessing the probability of confusion. These factors include whether the trademarks use the same word, whether they sound alike, and so on. . . . A list of factors designed as proxies for the likelihood of confusion can’t supersede the statutory inquiry. If we know for sure that consumers are not confused about a product’s origin, there is no need to consult even a single proxy. 670 Of course, some disputes involved not wholly distinguishable, but instead closely similar marks. Under most circumstances, “[c]ases where a defendant uses an identical mark on competitive goods hardly ever find their way into the appellate reports. Such cases are open and shut and do not involve protracted litigation to determine liability.” 671 Nevertheless, one Eleventh Circuit opinion affirming the district court’s entry of summary judgment of noninfringement did so on just these facts, in substantial part because the allegedly infringing mark could not be seen easily by the public or anyone else. 672 The goods in question were printed circuit boards, which were incorporated into water meter reading systems produced by the lead defendant for installation in such locations as apartment complexes. After a falling out with the plaintiff, the lead defendant commissioned another defendant to produce circuit boards to replace those previously supplied by the plaintiff. When the boards arrived bearing a notice that they had been produced by the plaintiff, the plaintiff filed suit, alleging that individuals seeing the boards would likely be confused into thinking that the boards had originated with or from the plaintiff. As had the district court, the Eleventh Circuit held that there was no likelihood of confusion as a matter of law, largely because of the lack of visibility of the offending notices: Not only could they not be viewed “without first removing the opaque plastic housing units that completely cover the circuit boards in question,” they were routinely installed “as high as possible in attics, roofs, and exterior walls to reduce transmission interferences.” 673 As the 670. Id. at 383 (citation omitted). 671. Wynn Oil Co. v. Thomas, 839 F.2d 1183, 1191 (6th Cir. 1988) (internal quotation marks and citation omitted); see also Reflange, Inc. v. R-Con Int’l, 17 U.S.P.Q.2d 1125, 1131 (T.T.A.B. 1990) (“[C]onfusion between identical marks used for identical goods is inevitable.”). 672. See Custom Mfg. & Eng’g, Inc. v. Midway Servs., Inc., 508 F.3d 641 (11th Cir. 2007). 673. Id. at 650. Vol. 99 TMR 133 court explained the significance of these facts, “[the plaintiff] proposes that the proper inquiry is whether purchasers who have seen [the] putatively offending circuit boards are likely to be confused. [The plaintiff] thus seeks to omit the antecedent question of whether purchasers are likely to see the circuit boards at all.” 674 Although the plaintiff gamely argued that either thirdparty repair technicians or fire marshals investigating the causes of fire might encounter the circuit boards in their fully labeled glory, the court reminded it that the standard was whether confusion was likely. Because there was no record evidence in favor of the plaintiff’s position on this issue, summary judgment in the defendants’ favor had been appropriate. 675 The Seventh Circuit proved equally willing to uphold a finding of noninfringement as a matter of law in a case that also involved the use of identical marks. 676 The lead plaintiff was a co-founder of a popular Chicago restaurant, who objected to the opening by his co-founders of similar restaurants featuring the same name and trade dress in New York and Las Vegas. Reviewing a series of contracts governing the parties’ relationship, the district court determined that they allowed any two co-founders of the original restaurant to open new restaurants outside of the Chicago area and to use the original restaurant’s “intellectual property” when doing so. The district court therefore dismissed the plaintiffs’ action for failure to state a claim, and the Seventh Circuit affirmed. As the appellate court explained, “where [a] trademark holder has authorized another to use its mark, there can be no likelihood of confusion and no violation of the Lanham Act if the alleged infringer uses the mark as authorized.” 677 In a more run-of-the-mill infringement dispute, the Ninth Circuit affirmed the grant of a defense motion for summary judgment, albeit in an opinion that was otherwise favorable for federal registrants in that jurisdiction. 678 It is a common argument by defendants charged with the infringement of registered marks that their goods and services fall outside the scope of the registrations in question. As the Ninth Circuit properly recognized, a registration on the Principal Registration has significance to the validity of the registrant’s rights to the underlying mark, and not to the separate and independent issue of whether those rights have been infringed: 674. Id. at 652. 675. Id. at 651-52. 676. See Segal v. Geisha NYC LLC, 517 F.3d 501 (7th Cir. 2008). 677. Id. at 506. 678. See Applied Info. Scis. Corp. v. eBay, Inc., 511 F.3d 966 (9th Cir. 2007). 134 Vol. 99 TMR A registered trademark holder’s protectable interest is limited to those goods and services described in its registration. . . . However, the scope of validity and the scope of relief for infringement are not coextensive. Although the validity of a registered mark extends only to the listed goods or services, an owner’s remedies against confusion with its valid mark are not so circumscribed. The language of the infringement statute, 15 U.S.C. § 1114, does not limit remedies for allegedly infringing uses to those within the ambit of [the] registration. . . . Thus a trademark owner may seek redress if another’s use of the mark on different goods or services is likely to cause confusion with the owner’s use of the mark in connection with its registered goods. . . . . . . Having established a protectable interest by proving it is the owner of a registered trademark, the owner does not additionally have to show that the defendant’s allegedly confusing use involves the same goods or services listed in the registration. 679 Despite this promising start for the plaintiff, its claims ultimately fell short because it failed in response to the defendant’s motion for summary judgment to adduce admissible evidence of likely confusion or to address the relevant likelihood of confusion factors. 680 The Tenth Circuit similarly proved receptive to the entry of summary judgment of nonliability below. 681 The plaintiff and the defendants were competing purveyors of negative and positive information, respectively, concerning the Church of Jesus Christ of Latter Day Saints. To drive online traffic to the website of the lead defendant, an individual defendant established a site that used the plaintiff’s marks to refer critically to it and that contained hyperlinks to the lead defendant’s site. Although both the plaintiff and the lead defendant sold publications on their sites, the court was unconvinced that consumers were likely to confuse the two: It is true that [the plaintiff] and [the lead defendant] both operate online bookstores and sell overlapping sets of book titles. However, any potential for confusion created by the similarity in goods and manner of marketing is mitigated by the lengthy path a consumer must take to reach the goods offered [by the lead defendant] for sale. The [lead defendant’s] bookstore does not use [the plaintiff’s] trademark, and a 679. Id. at 971, 972. 680. See id. at 973. 681. See Utah Lighthouse Ministry v. Found. for Apologetic Info. & Research, 527 F.3d 1045 (10th Cir. 2008). Vol. 99 TMR 135 searcher must click through [an intervening] website that does not resemble the [plaintiff’s] website in order to reach [the lead defendant’s] bookstore. 682 The court found further support for the district court’s holding in the weakness of the plaintiff’s mark 683 and the nature of the intervening website operated by the individual defendant, which it considered to be a parody: “The fact that [the individual defendant’s] website is a successful parody weighs heavily against a finding of likelihood of confusion.” 684 District courts also found plaintiffs’ infringement claims meritless as a matter of law. 685 The most notable opinion to come from those quarters was the latest installment of the long-running trade dress dispute between two competing handbag manufacturers. 686 In that action, the plaintiff sought protection for the appearance of bags featuring two registered “monogram” marks “set in thirty-three colors . . . [and] arranged on a white or black background.” 687 The subject of the plaintiff’s ire was the defendant’s manufacture and sale of bags bearing its own monogram marks, which were also presented in multiple colors and on white or black backgrounds. 688 In entering summary judgment of noninfringement, the court was skeptical of virtually all of the plaintiff’s showing, but it was most hostile to that bearing on alleged actual confusion between the parties’ designs. As characterized by the court, the plaintiff had adduced evidence and testimony demonstrating that the defendant’s bags “call[ed] to mind” the plaintiff’s bags when consumers encountered the former. 689 Of this phenomenon, the court observed that the plaintiff’s evidence “actually demonstrates that despite the fact that one source’s bag may remind some consumers of the bags of another source, consumers are generally aware that the two . . . designs come from different unaffiliated sources which they were able to distinguish and identify by name.” 690 The court was unswayed even by the plaintiff’s claim 682. Id. at 1056. 683. See id. 684. Id. at 1057. 685. See, e.g., Hayes Lemmerz Int’l, Inc. v. Epilogics Group, 531 F. Supp. 2d 789, 809 (E.D. Mich. 2007) (granting defense motion for summary judgment without extended analysis). 686. See Louis Vuitton Malletier v. Dooney & Bourke, 561 F. Supp. 2d 368 (S.D.N.Y. 2008). 687. Id. at 373. 688. See id. 689. Id. at 387. 690. Id. 136 Vol. 99 TMR that some consumers mistakenly believed the plaintiff had copied the defendant’s designs: As it explained, such a showing “weighs in defendant’s favor because it tends to show that consumers are not misled as to the source, sponsorship, or affiliation of [the defendant’s] products with [those of the plaintiff]. Indeed, they recognize that their products are distinct and originate from independent and unaffiliated sources.” 691 As applied by the court, the aggregate of other likelihood of confusion factors also weighed in the defendant’s favor. Although acknowledging that “there are obvious similarities between the products bearing the marks at issue,” the court nevertheless found that “[the] plaintiff has offered no proof that the similarity in the marks is likely to confuse ordinary consumers, whether it is at the point of initial interest, point-of-sale, or post-sale, and the differences between the marks are likely to be memorable enough to dispel confusion even under market conditions.” 692 As to intent, the court was unwilling to conclude that the defendant’s awareness of the plaintiff’s design when producing its own constituted bad faith or an attempt to deceive consumers. 693 Moreover, “[i]t cannot be reasonably disputed that consumers of products offered by both [the parties] are sophisticated and discerning.” 694 Under these circumstances, the strength of the plaintiff’s marks and the directly competitive nature of the parties’ products failed to create a justiciable issue of fact as to the defendant’s nonliability for infringement. 695 Summary judgment of nonliability also held in a declaratory judgment action in which Wal-Mart asserted a counterclaim for infringement against the purveyor of various goods bearing such slogans as WALOCAUST, WAL-QUEDA, FREEMDOM HATER MART: As the court explained, the counterclaim defendant “believes that Wal-Mart has a destructive effect on communities, treats workers badly, and has a damaging influence on the United States as a whole . . . and its communities that [he] likens to that of the Nazi regime.” 696 Having given Wal-Mart’s proffered survey evidence of actual confusion little weight, the court found that the relevant factors other than mark strength either favored the counterclaim defendant or were neutral. In particular, the court found that the counterclaim defendant “couples portions of WalMart’s registered trademarks with unflattering words, images and 691. Id. 692. Id. at 384 (internal quotation marks omitted). 693. See id. at 388. 694. Id. at 389. 695. See id. at 389-90. 696. Smith v. Wal-Mart Stores, Inc., 537 F. Supp. 2d 1302, 1309 (N.D. Ga. 2008). Vol. 99 TMR 137 portions of words that no rational consumer would expect WalMart to associate with its own marks.” 697 It additionally found that the counterclaim defendant had acted in good faith “[b]ecause [he] used Wal-Mart’s marks in parodies, and because the evidence overwhelmingly shows that [he] actively intended to avoid actual consumer confusion.” 698 Under the circumstances, “the Court is convinced that no fair-minded jury could find that a reasonable consumer is likely to be confused by the challenged marks.” 699 Even showings of actual confusion failed to carry the day for some trademark owners seeking to ward off summary judgment motions. 700 For example, one district court opinion finding no likelihood of confusion as a matter of law reached that conclusion despite evidence of “nearly 100” misdirected e-mails sent by consumers apparently unable to distinguish between the parties. 701 The parties each provided publications under the SLY mark, with the plaintiff’s product appearing online, and the defendants’ in hard copy form. Among third parties mistakenly sending e-mails intended for the defendants to the plaintiff were consumers seeking subscription information, commentators on the defendants’ articles, respondents to a survey offered by the defendants, and at least one advertiser. 702 Adopting a narrow view of the significance of these incidents, the court held that “[t]here is no evidence in this regard that anyone has made a mistaken purchasing decision—that is bought defendants’ magazine thinking it was plaintiff’s or placed advertising with plaintiff thinking it was advertising with defendants.” 703 Consequently, “[t]here is no reason to believe that the confusion represented by the emails could inflict commercial injury in the form of either [sic] diversion of sales, damage to goodwill, or loss of control over reputation.” 704 The court’s evaluation of the similarity between the parties’ marks was equally improbable: Because the marks featured differing 697. Id. at 1336. 698. Id. at 1338. 699. Id. at 1339. 700. See, e.g., St. Croix Printing Equip., Inc. v. Sexton, 578 F. Supp. 2d 1195, 1197-1200 (D. Minn. 2008) (entering summary judgment of nonliability after rejecting plaintiff’s proffered testimony of alleged actual confusion); Gregerson v. Vilana Fin., Inc., 84 U.S.P.Q.2d 1245, 1250 (D. Minn. 2007) (dismissing testimony of actual confusion allegedly caused by defendant’s website on ground that viewers were confused by substantive content of site, rather than its source). 701. See Sly Magazine, LLC v. Weider Publ’ns LLC, 529 F. Supp. 2d 425, 437 (S.D.N.Y. 2007). 702. See id. at 440. 703. Id. 704. Id. at 441. 138 Vol. 99 TMR stylization, the court concluded they were not similar for likelihood of confusion purposes. With these considerations thus disposed of, the court then found that the lack of competitive proximity of the parties’ products, the unlikelihood that the parties would bridge the gap between them, the absence of a bad faith intent by the defendants, the lack of any evidence that the defendant’s magazine was of low quality, and the sophistication of the parties’ customers all weighed against a finding of liability. 705 Anecdotal and survey evidence of actual confusion similarly failed to place into material dispute the unlikelihood of confusion between the MAGNA DOODLE and DOODLE PRO marks, both of which were used in connection with children’s magnetic drawing toys. 706 The court dismissed the plaintiff’s various claims of ongoing marketplace confusion for several reasons, but most centered on the absence of an established connection between the confusion cited by the plaintiff and the marks used by the parties; rather, in the court’s view, much of the plaintiff’s showing demonstrated only that the parties’ products were similar. 707 Moreover, the plaintiff’s survey evidence was deficient because it failed to present respondents with the parties’ marks as the marks were used in context. 708 With actual confusion thus disposed of, the court placed considerable weight on the “low” degree of similarity between the parties’ marks, 709 as well as the USPTO’s ex parte approval of an application to register the defendant’s mark despite a prior registration of the plaintiff’s mark. 710 Summary judgment of nonliability resulted, despite other findings by the court that the plaintiff owned a “strong” mark, the parties’ goods were directly competitive, the defendant had perhaps acted in bad faith, and that the sophistication of the parties’ customers was low. 711 Of course, although under no obligation to do so, defendants can affirmatively seek to dispel the prospect of likely confusion by commissioning their own consumer surveys. Such was the strategy adopted by a producer of hair care products sold under “the descriptive name . . .‘Long & Strong’” in an infringement action brought by the owner of the LONG ’N STRONG mark for similar goods. 712 According to the court, the answers given by the “vast 705. See id. at 437-42. 706. See Pilot Corp. v. Fisher-Price, 501 F. Supp. 2d 292 (D. Conn. 2007). 707. See id. at 305-07. 708. See id. at 307-08. 709. According to the court, “[t]he placement of the word ‘Doodle’ differs in that it comes second in ‘Magna Doodle’ but first in ‘Doodle Pro.’ In addition, the non-shared words in the marks, ‘Magna’ and ‘Pro’ are not similar.” Id. at 304. 710. See id. at 302-03, 310. 711. See id. at 302-10. 712. See Rush Indus. v. Garnier LLC, 496 F. Supp. 2d 220 (E.D.N.Y. 2007). Vol. 99 TMR 139 majority” of respondents failed to reflect any confusion. 713 Moreover, although the plaintiff introduced a log putatively documenting misdirected phone calls, deposition testimony established that the log had been created after the commencement of litigation and, in any case, the log failed to tie any consumer confusion to the defendant’s product. In light of what the court considered to be the weakness of the plaintiff’s mark, dissimilarities in the parties’ presentation of their marks, and the defendant’s good faith, the plaintiff’s evidence of alleged actual confusion and the competitive proximity of the parties’ goods failed to prevent entry of summary judgment in the defendant’s favor. 714 Other cases presented facts that lent themselves more readily to entry of summary judgment of nonliability. One plaintiff’s infringement claims turned on the allegation that the defendant’s airing of a televised reality program entitled The Joe Schmo Show infringed the plaintiff’s federally registered JOE SHMO mark for “music compact discs.” 715 Notwithstanding at least some degree of similarity between the parties’ designations, the court found that “there is no evidence that plaintiff’s mark is distinctive or wellknown, even in plaintiff’s own field of music performance.” 716 The plaintiff’s fortunes went downhill from there, with the court further concluding there was “no similarity” between the parties’ services and no evidence suggesting shared distribution channels or advertising media, a bad faith intent by the defendant, or actual confusion. 717 Under these circumstances, the court agreed with the defendant that “even though ‘Joe Shmo’ and ‘The Joe Schmoe Show’ [sic] may be phonetically similar (though certainly not identical), they are easy for the public to distinguish in context and as used in connection with totally different goods and services, i.e., in their presentation.” 718 (7) Unlikelihood of Confusion: After Trial The Second, Sixth, Ninth, and Tenth Circuits affirmed findings of nonliability made after full trials on the merits, with the Second Circuit’s opinion offering a clarification of that jurisdiction’s “safe distance” rule. 719 Having lost claims that the parties’ stylized polo-related marks for clothing were confusingly 713. See id. at 227. 714. See id. at 225-30. 715. See Montalto v. Viacom Int’l, Inc., 545 F. Supp. 2d 556 (S.D. Miss. 2008). 716. Id. at 559. 717. See id. at 559-61. 718. Id. at 560. 719. See PRL USA Holdings, Inc. v. U.S. Polo Ass’n, 520 F.3d 109 (2d Cir. 2008). 140 Vol. 99 TMR similar, the plaintiff argued that the district court had erred by failing to instruct the jury that a finding of infringement in a longsince-resolved prior dispute between the parties required the defendants to keep a safe distance from the plaintiff’s marks on a going-forward basis. The appellate court noted two purposes underlying its past recognition of the rule. First, “[a]n obligation on the part of a previously adjudicated infringer to maintain a safe distance from infringing the plaintiff’s marks has been found to serve a useful purpose in fashioning injunctions based on a finding of infringement, especially where the infringement was abusive or in bad faith.” 720 Second, “[i]t also has been found useful in contempt proceedings, . . . thus relieving the reviewing court of the need to retry the entire range of issues that may be relevant in an infringement action for each small variation the defendant makes to the enjoined mark.” 721 Nevertheless, the Second Circuit ultimately rejected the need for the plaintiff’s proposed instruction on the ground that: [The plaintiff] . . . cites no authority establishing that such an instruction must be given in a civil infringement action alleging a new infringement by one previously adjudicated to have infringed the plaintiff’s mark. When one sues for infringement of a trademark, the standard that comes into play is whether the [junior] mark is likely to cause confusion. Insertion of the concept of “safe distance” would change the standard of liability. If the “safe distance” instruction were used, the jury would be invited to find liability based on a mark which was not likely to cause confusion, leaving unclear to the jurors which standard should govern. 722 In the same opinion, the Second Circuit also rejected the plaintiff’s challenge to the exclusion of a document prepared by a third party who was “occasionally retained” by one of the defendants “to collect quotations from famous people relating to the sport of polo.” 723 The document recited, inter alia, that “[e]veryone knows we’re ripping off [the plaintiff],” 724 which not surprisingly led the plaintiff to offer the document as evidence of the defendant’s bad faith. Applying a deferential abuse of discretion standard, the Second Circuit noted that the third-party author of the document was not an authorized representative on the subject of the creation of the defendants’ marks. Under the circumstances, “[t]he proper probative value of the evidence was 720. Id. at 117 (citations omitted). 721. Id. at 118. 722. Id. (footnote omitted). 723. See id. at 188-19. 724. Quoted in id. at 118. Vol. 99 TMR 141 either minimal or non-existent and its capacity for prejudice was high.” 725 The Sixth Circuit’s affirmance of a finding of nonliability arose out of a dispute between two purveyors of wine. 726 The plaintiff owned a federal registration of the LEELANAU CELLARS mark for wine, while the defendants sold competitive goods under the CHATEAU DE LEELANAU mark. Central to the Sixth Circuit’s affirmance of a bench verdict of nonliability was the district court’s finding that the plaintiff’s mark was a geographically descriptive weak one; in particular, “the district court was correct that the federal designation of [Michigan’s] Leelanau Peninsula as an [American Viticultural Area] substantially decreased the possibility that a potential consumer would, upon seeing the mark, necessarily think of [the plaintiff’s] product.” 727 Another consideration underlying the appellate court’s decision included the inclusion of the words “Cellars” and “Chateau de” in the parties’ marks, “differences [that] are sufficiently significant to conclude that the marks are not so similar that they would produce a likelihood of confusion among purchasers.” 728 Other considerations included an absence of overlapping marketing channels, the sophisticated nature of the parties’ customers, and a lack of bad faith on the defendants’ part. 729 With the court concluding that the plaintiff’s survey evidence was unpersuasive and that its proffered anecdotal evidence of actual confusion “lacked the details necessary” to be probative, 730 the finding of no likelihood of confusion was affirmed. 731 The Tenth Circuit proved similarly unreceptive to an invitation to overturn a finding of noninfringement following a bench trial. 732 The plaintiffs owned a federal registration of the VAIL mark for a variety of goods and services associated with a ski resort, while the defendants owned a registration of 1-800-SKIVAIL, which they used in connection with “marketing services related to the ski industry.” 733 At trial, the plaintiffs had elicited testimony of actual confusion from a third-party witness, but the Tenth Circuit held that the district court had “understandably” discounted that testimony after the witness also testified that she 725. Id. at 119. 726. See Leelanau Wine Cellars, Ltd. v. Black & Red, Inc., 502 F.3d 504 (6th Cir. 2007). 727. Id. at 516. 728. Id. at 517. 729. See id. at 519-22. 730. See id. at 518-19. 731. See id. at 521. 732. See Vail Assocs. v. Vend-Tel-Co., Ltd., 516 F.3d 853 (10th Cir. 2008). 733. Quoted in id. at 857. 142 Vol. 99 TMR had felt coerced into signing an earlier affidavit to similar effect. 734 The appellate court also rejected a challenge to the district court’s finding that the plaintiff’s mark was weak, primarily because of the mark’s geographically descriptive nature and evidence that the plaintiffs had rarely promoted the mark without an accompanying design. 735 Other considerations underlying the appellate court’s affirmance of the bench verdict of nonliability included the absence of evidence and testimony establishing the defendants’ bad faith, the “minimal” similarities between the parties’ marks, the parties’ differing marketing strategies, and the “not cheap” nature of skiing excursions. 736 Although otherwise affirming a finding of liability in a declaratory judgment action brought by a user of the PERFUMEBAY mark for online perfume sales against the owner of the EBAY mark for online auction services, the Ninth Circuit did throw the plaintiff one bone. 737 The district court had found the plaintiff’s conjoined use of “perfume” and “bay” were likely to cause confusion, but that uses of the words separated by even a space were not. Concluding that the defendant’s challenge to the latter finding was “persuasive,” the appellate court nevertheless held that the defendant had failed to establish that the district court had clearly erred. 738 District courts also reached findings of no likelihood of confusion that were not reviewed by circuit courts. One such outcome occurred in the latest installment of a long-running dispute between two associations of purebred walking horse aficionados. 739 The gravamen of the plaintiff’s claim was that the defendant had infringed the plaintiff’s trademarks by advertising that it would accept certificates issued by the plaintiff as evidence of the pure bloodlines of horses covered by the certificates. Although there was no dispute that the defendant was using an identical mark in connection with closely related services, the court found that these considerations were outweighed by the absence of any cognizable actual confusion and the sophistication of the parties’ customers, the latter of which the court determined “weighs heavily in favor of the defendant.” 740 734. See id. at 864. 735. See id. at 865-68. 736. See id. at 868-72. 737. See Perfumebay.com Inc. v. eBay Inc., 506 F.3d 1165 (9th Cir. 2007). 738. See id. at 1182. 739. See Tenn. Walking Horse Breeders’ & Exhibitors Ass’n v. Nat’l Walking Horse Ass’n, 528 F. Supp. 2d 772 (M.D. Tenn. 2007). 740. Id. at 782. Vol. 99 TMR 143 c. Survey Evidence of Confusion With survey evidence of actual confusion is now routinely found to be admissible over hearsay objections, motions to exclude it no more often focus on the methodology used by the conducting expert. In one such case, a defendant was charged with trade dress infringement based on its sales of 268 separate lots of shoes that it claimed were “noticeably distinguishable” from each other. 741 In addition to running a single survey in the case at hand, the plaintiffs’ expert relied in his report on the results of past surveys he had conducted for the plaintiffs in previous cases against third parties selling similar shoes. Seeking to exclude the expert’s testimony, the defendant argued that the expert was required to conduct individual surveys for each lot actually at issue in the litigation, rather than basing his opinions in part on the past surveys in the earlier cases. Denying the defendant’s motion in limine, the district court held that “[w]here actually surveyed products and subsequently accused products share common and prominent features, a trademark infringement plaintiff need not create new likelihood of confusion surveys for each newly accused product.” 742 What’s more, as to the case-specific survey conducted by the expert, “all of [the] accused shoes, including those which [the expert] actually surveyed, share a common and prominent feature (i.e., two- or four-parallel, equidistant and diagonal stripes that allegedly infringe the [three equidistant and diagonal stripes claimed by the plaintiff]).” 743 As a consequence, these and other criticisms leveled by the defendant were relevant to the surveys’ weight, rather than their admissibility. 744 This is not to say, however, that all admissible surveys necessarily affect the outcome of litigation in which they are introduced. For example, one counterclaim plaintiff seeking to block the online sale of goods bearing commentary highly critical of its business practices sought to bolster its case through survey evidence of allegedly confused respondents. 745 Although accepting the credentials of the plaintiff’s expert, the court faulted the survey for targeting an overbroad universe, of which “only a small percentage . . . would be potential purchasers of [the counterclaim defendant’s] products,” 746 for failing to take into account the 741. Quoted in adidas-Am., Inc. v. Payless Shoesource, Inc., 546 F. Supp. 2d 1029, 1044 (D. Or.), reconsideration denied, 540 F. Supp. 2d 1176 (D. Or. 2008). 742. Id. at 1045. 743. Id. 744. See id. 745. See Smith v. Wal-Mart Stores, Inc., 537 F. Supp. 2d 1302 (N.D. Ga. 2008). 746. Id. at 1325. 144 Vol. 99 TMR behavior of Internet shoppers, 747 for using leading questions, 748 for extrapolating respondents’ reactions to two stimuli to the much larger number of goods sold by the plaintiff, 749 and for using a small and non-random survey sample. 750 After reviewing these deficiencies, the court held that “although this is a close case, the Court concludes that the better option is to admit the survey evidence and to consider the survey’s flaws in determining the evidentiary weight to assign the survey in the likelihood of confusion analysis”; 751 that weight, as it turned out, was virtually nil. 752 Another survey similarly survived a challenge to its admissibility but ultimately had little impact on the outcome of the case following a bench trial. 753 The parties were competing wine producers located on Michigan’s Leelanau peninsula. Although the plaintiff’s survey had properly included adults likely to purchase wine in the $5 to $14 price range, “there was no attempt to survey only those people who would purchase moderately priced wines produced in the state of Michigan, undoubtedly a distinct group.” 754 Of equal significance, the survey failed to limit respondents to wine purchasers who frequented wine-tasting rooms, the primary channel of distribution for the defendants’ products; whether the opinions of consumers of wine distributed through all channels, including wine-tasting rooms, might matter went unaddressed. 755 The combination of these considerations led the Sixth Circuit to conclude that the district court had not erred in finding that the survey failed to replicate actual market conditions: “[I]t is unlikely that a purchaser of [the defendants’ wine] would find herself faced with the need to distinguish among various wines or, having walked into [the defendants’] tasting room, erroneously believe that she was in fact at [the plaintiff’s place of business].” 756 A similar failure to expose respondents to the parties’ marks as they appeared in the marketplace led a different court to discount a survey purporting to demonstrate a respectable 22% 747. See id. at 1327-28. 748. See id. at 1331-32. 749. See id. at 1332-33. 750. See id. at 1333-34. 751. Id. at 1334. 752. See id. at 1334-45. 753. See Leelanau Wine Cellars, Ltd. v. Black & Red, Inc., 502 F.3d 504 (6th Cir. 2007). 754. Id. at 518. 755. See id. 756. Id. Vol. 99 TMR 145 rate of confusion. 757 The court faulted the plaintiff’s expert for numerous violations of generally accepted survey methodology, beginning with the absence from the survey’s stimuli of the logos used by the parties, as well as the products sold under those logos. Of equal significance, the survey’s control questions invited respondents to compare marks with differing background colors, while the parties’ marks were presented with the same background. The survey therefore was no barrier to entry of summary judgment in the defendant’s favor because it demonstrated only that consumers were more likely in a vacuum to confuse the parties’ marks when “written in purple on a yellow background” than they were to confuse control marks written on distinguishable backgrounds. 758 Not all surveys survived admissibility challenges, with one court in particular adopting a mammoth report from two law professors acting as special masters that disposed of two confusionbased studies put forward by the plaintiff and one advanced by the defendant. 759 The case arose from the apparent emulation by the defendant of a series of handbags featuring the plaintiff’s monogram mark. Somewhat unusually, the first survey relied upon by the plaintiff used videos of models carrying the parties’ bags as stimuli, which caused the “[t]he parties strenuously [to] dispute the degree to which a respondent could perceive, if at all, the details of each of the bags shown in the videos.” 760 After reviewing statements by respondents suggesting that the defendants had the better side of that particular dispute, the special masters’ report concluded that the stimuli had been deliberately distorted to produce positive responses based on the “look” of the bags themselves. 761 This in turn had allowed the expert supervising the survey to take perceived liberties in the coding of responses, particularly as he had failed to instruct respondents not to guess in their responses. 762 That the control used “had little in common with the bags at issue in this case” 763 was yet another reason why the survey’s flaws warranted its exclusion. 764 757. See Pilot Corp. v. Fisher-Price, Inc., 501 F. Supp. 2d 292, 308 (D. Conn. 2007). 758. See id. at 308. 759. See Louis Vuitton Malletier v. Dooney & Bourke, 525 F. Supp. 2d 558 (S.D.N.Y. 2007), later proceedings, 561 F. Supp. 2d 368 (S.D.N.Y. 2008). 760. Id. at 584. 761. See id. at 595-95. 762. See id. at 587-89. 763. Id. at 595. 764. See id. at 598. 146 Vol. 99 TMR The plaintiff’s second survey received an equally frosty reception. Taking their cue from an earlier opinion by the court criticizing the same survey, the special masters focused on what they characterized as “very serious discrepancies between [the expert report’s] account of the conduct of the survey and the survey that was actually conducted.” 765 In particular, they noted deposition testimony disclosing that the survey had been conducted in two parts, with approximately half the respondents exposed to one control and the other half exposed to another. Comparing this testimony to the expert report, the special masters observed that the circumstances “very strongly suggest that the survey was not reported in an accurate manner and that the survey was not conducted in an objective manner.” 766 Accordingly, “because of the serious questions surrounding the implementation of survey methods and the reporting of its results, the [survey’s] probative value, if any, is substantially outweighed by it potential to mislead to jury and to create unfair prejudice. Therefore, it should be excluded. . . .” 767 Unfortunately for the defendants, their own survey fared no better. An earlier survey they had commissioned from the same expert had been faulted by the district court for exposing respondents to bags clearly labeled with the defendants’ brand name. The new survey considered by the special masters was intended to address the labeling problem with the earlier survey that had been identified by the district court. As the special masters noted, however, the new survey itself suffered from an inappropriate universe of respondents and locations, the lack of a sequential presentation of stimuli, and an ineffective control. 768 Concluding that “[the defendants] [have] not come close to proving that [their expert] employed reliable methods in a reliable manner,” 769 the special masters therefore recommended that the results of both the earlier and later surveys be excluded, a recommendation that the district court subsequently adopted. 770 A “pilot” study submitted in another case similarly fell short of the mark. 771 To begin with, the survey report failed to identify the surveyor responsible for preparing it, nor did that individual appear by declaration or live testimony to explain the methodology 765. Id. at 601. 766. Id. at 603. 767. Id. 768. See id. at 632-33. 769. Id. at 631. 770. See id. at 574. 771. See Constellation Brands, Inc. v. Arbor Hill Assocs., 535 F. Supp. 2d 347 (W.D.N.Y. 2008). Vol. 99 TMR 147 underlying the report. Moreover, the court noted, “[t]he survey report does not indicate what questions were asked, nor does it state the respondent[s’] verbatim responses.” 772 Even more damning, “[t]he report states that the ‘pilot survey’ or ‘first phase’ survey is not a complete survey, and is intended to be used ‘as the basis for making a ‘go’ or ‘no go’ decision on whether to proceed with a complete survey.’” 773 Glossing over the proffering party’s failure to produce the report in response to its opponent’s discovery requests, the court not surprisingly held that “[e]ven if [the proffering party] had produced the survey summary during discovery, the Court would exclude it in any event, since it does not satisfy the criteria for admissibility.” 774 One excluded survey went further still in disregarding generally accepted methodology. 775 Granting the defendant’s motion to strike the report of the plaintiff’s survey expert, the court initially found that the universe of respondents was underinclusive. 776 Its explanation of a number of additional bases for exclusion requires no editorial commentary: [T]he survey process was not objective. The survey was designed by plaintiff’s counsel. Nothing in the record suggests that plaintiff’s counsel has any experience with designing or conducting market surveys. Plaintiff’s employees conducted the survey while they were wearing shirts and hats with plaintiff’s logo. The survey was taken at plaintiff’s promotional booth, which had large signs with plaintiff’s logo and other promotional material on display. The participants were given free samples of plaintiff’s [goods] and a chance to win [more]. Additionally, a biased method was used for the selection of participants—only people familiar with plaintiff were surveyed. 777 d. Effect of Disclaimers Reliance on disclaimers of nonaffiliation by defendants is often a disfavored strategy, 778 but it succeeded with unusual frequency 772. Id. at 357. 773. Id. 774. Id. at 367. 775. See Hodgdon Powder Co. v. Alliant Techsystems, Inc., 512 F. Supp. 2d 1178 (D. Kan. 2007). 776. See id. at 1181-82. 777. Id. at 1182. 778. See, e.g., Klein-Becker usa LLC v. Englert, 83 U.S.P.Q.2d 1112, 1114 (D. Utah 2007) (granting preliminary injunction despite defendants’ disclaimer on ground that “[t]he disclaimer, only added since this litigation began, is not conspicuous on the [defendants’] website”). 148 Vol. 99 TMR over the past year. 779 One example of a successful disclaimer came in an action in which the defendant was reselling diverted dietary supplements over the Internet. 780 The defendant’s website did not feature any pictures of the plaintiff’s products “and most importantly, it prominently displays a disclaimer in the first paragraph of the page where a customer may buy the [resold] products.” 781 Granting a defense motion for summary judgment, the court observed that “the effectiveness of a disclaimer may generally be a question of fact.” 782 It nevertheless rather generously held that: “a disclaimer expressly declaring that the seller is ‘not affiliated’ with the owner of the trademark or is ‘not an authorized distributor’ of the trademark owner’s products has been held to be an effective means of preventing confusion in the minds of consumers as to affiliation with the owner of the trademark.” 783 Disclaimers also disposed of the likelihood-of-confusion claims of a restaurateur seeking injunctive relief against a group of competitors who were (accurately) advertising that the lead defendant was the “former owner” of the “original” restaurant operated by the plaintiff. 784 Although the court acknowledged that the defendants’ advertising might be regarded as a permissible nominative fair use, it instead treated the challenged statements as disclaimers. Following a bench trial, it found that “[t]he advertisements clearly distinguish between [the defendants’] restaurants and [that of the plaintiff].” 785 Specifically, “[t]he use of the words ‘former’ and ‘original’ imply, in this unique situation, that there is no current affiliation and that the goods or services are distinct. . . . The prefatory words ‘former’ and ‘original’ effectively serve as disclaimers that guard against customer confusion, rather than ruses to create confusion.” 786 A final example of the successful invocation of disclaimers appeared in an opinion denying the parties’ cross-motions for 779. See, e.g., Ptak Bros. Jewelry Inc. v. Ptak, 83 U.S.P.Q.2d 1519, 1525 (S.D.N.Y. 2007) (holding, in dispute between family members in the jewelry industry, that defendants were entitled to refer to family surname in history of their company, provided they also use disclaimer of nonaffliation with plaintiff). 780. See Standard Process, Inc. v. Banks, 554 F. Supp. 2d 866 (E.D. Wis. 2008). 781. Id. at 869. 782. Id. 783. Id. (quoting Graham Webb Int’l Ltd. P’ship v. Emporium Drug Mart, Inc., 916 F. Supp. 909, 917 (E.D. Ark. 1995)). 784. See Maurag, Inc. v. Bertuglia, 494 F. Supp. 2d 395 (E.D. Va. 2007). 785. Id. at 398. 786. Id. Vol. 99 TMR 149 summary judgment as to the likelihood of confusion between marks used in connection with directly competitive sportswear. 787 According to the court, “it is undisputed that there are over 100 disclaimers prominently posted at the [defendants’] retail store and online.” 788 Evaluating the significance of this evidence, it initially noted that “‘there is a body of academic literature that questions the effectiveness of disclaimers in preventing consumer confusion as to the source of a product.’” 789 In the final analysis, however, “a reasonable jury could consider this evidence and determine that it contributes to a finding of no likelihood of confusion at the point of sale.” 790 A more characteristic view of the efficacy of disclaimers came in a case brought by a clothing company named for its founder against the founder and another company named for him that he started after parting ways with the plaintiff. 791 The court was sympathetic to the defendants, but it was skeptical of their argument that disclaimers affixed to their clothing could dispel the likelihood of confusion between the parties’ marks. To begin with, the proposed disclaimers were “not practical,” especially because “there is simply not enough space on the [defendants’] labels to include a prominent disclaimer.” 792 Of equal importance, “a disclaimer is unlikely to be effective in this situation where the sight and sound of [the founder’s] name . . . is remarkably similar to the [plaintiff’s] mark.” 793 As a consequence, the court held, the proper remedy was to allow the defendants only “to use [the founder’s] full name . . . in signatures, business meetings, and other such contexts where use of the name does not a resemble a trademark or trade name, and does not appear on goods similar to those sold by [the plaintiff].” 794 3. Dilution a. Retroactivity of the Trademark Dilution Revision Act of 2006 Most courts properly recognized that the likelihood of dilution standard implemented as a matter of federal law by the 787. See Univ. of Kan. v. Sinks, 565 F. Supp. 2d 1216 (D. Kan. 2008). 788. Id. at 1254. 789. Id. (quoting Home Box Office, Inc. v. Showtime/The Movie Channel, Inc., 832 F.2d 1311, 1315-16 (2d Cir. 1987)). 790. Id. 791. See Paul Frank Indus. v. Sunich, 502 F. Supp. 2d 1094 (C.D. Cal. 2008). 792. Id. at 1102. 793. Id. 794. Id. at 1103. 150 Vol. 99 TMR Trademark Dilution Revision Act of 2006 (TDRA) applies retroactively to plaintiffs’ claims for injunctive relief under Section 43(c), with the Federal Trademark Dilution Act of 1996 (FTDA) remaining applicable to claims for monetary relief. 795 Still, however, there were tribunals that remained unclear on the concept. 796 Chief among these was the Ninth Circuit, which mistakenly held in one opinion that “[b]ecause this action was filed in 2004, prior to the 2006 amendment of [Section 43(c)], the previous version of [Section 43(c)] applies.” 797 The Tenth Circuit also applied an actual dilution standard in an appeal from the rejection of a pre-amendment Section 43(c) claim, although apparently only as a result of the plaintiff’s rather inexplicable failure to brief the issue of retroactivity on appeal. 798 Another plaintiff making the same error before a district court paid the price by having its federal dilution claim dismissed as a matter of law for failure to adduce evidence or testimony of actual dilution. 799 b. Proving Mark Fame and Distinctiveness Not all marks that are protectable in the first instance qualify for protection against dilution, especially under the post-TDRA Section 43(c). 800 For example, the Seventh Circuit was unconvinced 795. See, e.g., Louis Vuitton Malletier v. Dooney & Bourke, 561 F. Supp. 2d 368, 391 (S.D.N.Y. 2008) (“[The plaintiff] must establish actual dilution in order to recover monetary damages on its [federal] dilution claim.”); V Secret Catalogue, Inc. v. Moseley, 558 F. Supp. 2d 734, 738 (W.D. Ky. 2008) (“The TDRA applies to the dilution claim herein . . ., as [the plaintiff] seeks only prospective injunctive relief.”); adidas-Am., Inc. v. Payless Shoesource, Inc., 546 F. Supp. 2d 1029, 1061 (D. Or.) (“[T]he parties agree that (1) the TDRA’s relaxed ‘likelihood of dilution’ standard applies retroactively to [the plaintiff’s] claims for injunctive relief, while (2) the FTDA governs [the plaintiff’s] claims for monetary damages.”), reconsideration denied, 540 F. Supp. 2d 1176 (D. Or. 2008). 796. See, e.g., Designer Skin, LLC v. S & L Vitamins, Inc., 560 F. Supp. 2d 811, 820 (D. Ariz. 2008) (requiring the plaintiff to prove that “the defendant’s use is causing actual harm to the trademark holder”). 797. Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628, 634 (9th Cir. 2007). For an example of a subsequent Ninth Circuit district court opinion applying this (incorrect) rule, see Visa Int’l Serv. Ass’n v. JSL Corp., 533 F. Supp. 2d 1089, 1091 (D. Nev. 2007) (“[U]nder Jada Toys, this court will apply the pre-amendment FTDA as interpreted by the Supreme Court’s Moseley decision.”). 798. See Gen. Motors Corp. v. Urban Gorilla, LLC, 500 F.3d 1222, 1229 n.4 (10th Cir. 2007). 799. See Tenn. Walking Horse Breeders’ & Exhibitors Ass’n v. Nat’l Walking Horse Ass’n, 528 F. Supp. 2d 772, 784 n.7 (M.D. Tenn. 2007). 800. See, e.g., Alfa Corp. v. Alfa Mortgage Inc., 560 F. Supp. 2d 1166, 1176-77 (M.D. Ala. 2008) (declining, on unopposed motion for default judgment, to find plaintiff’s mark famous in light of absence of factual allegations of the mark’s distinctiveness, duration and extent of use, and degree of public recognition); Johnson & Johnson v. Am. Nat’l Red Cross, 552 F. Supp. 2d 434, 447-48 (S.D.N.Y. 2008) (entering summary judgment of nonliability on federal and New York dilution claims on ground that defendants’ longstanding use of mark Vol. 99 TMR 151 that the TOP mark for tobacco was famous and distinctive in the first instance, much less that it had these characteristics outside of the plaintiff’s niche market. 801 Citing to third-party uses in the same industry, the appellate court additionally observed that: When [the plaintiff] obtained a federal registration for its brand of loose cigarette tobacco, it assured the Patent and Trademark Office that it was claiming only limited rights in the word “top.” It could hardly be otherwise: the word “top” is too common, and too widely used to refer to the lids of packages—as well as parts of clothing ensembles, masts of ships, summits of mountains, bundles of wool used in spinning, half-innings of baseball, positions in appellate litigation (the top-side brief), and flavors of quark—to be appropriated by a single firm. 802 Under this analysis, of course, any dictionary definitions of the words underlying a verbal mark apparently would weigh against a finding of protectability, even in the absence of evidence that those words were being used as trademarks. Although one institution of higher learning managed to fend off a defense motion for summary judgment on the issue of mark fame based largely on the notoriety of its athletic programs, 803 the University of Texas was not so fortunate. 804 Its ill-fated claim to protection against likely dilution came in an action asserting rights to a stylized silhouette of a longhorn steer in connection with the school’s various goods and services. The university presented “evidence of famousness that at first blush appears impressive.” 805 Nevertheless, because that evidence centered around the success of the university’s athletic programs, the court precluded plaintiff from establishing the exclusive use of its own mark); Vista India v. Raaga, LLC, 501 F. Supp. 2d 605, 622-23 (D.N.J. 2007) (denying dilution-based motion for preliminary injunction on ground that plaintiff’s mark was generic or descriptive but lacking secondary meaning); Hodgdon Powder Co. v. Alliant Techsystems, Inc., 497 F. Supp. 2d 1221, 1232-33 (D. Kan. 2007) (entering summary judgment of nonliability on federal dilution claim based on finding that “plaintiff has presented no evidence demonstrating the level of public recognition of its mark or that [the mark] is famous outside of the narrow gunpowder market”); see also Montalto v. Viacom Int’l, Inc., 545 F. Supp. 2d 556, 561-62 (S.D. Miss. 2008) (entering summary judgment of nonliability under Mississippi dilution statute, Miss. Code Ann. § 75-25-25 (2005), on ground that “[a]s plaintiff has offered no proof that his mark is famous . . . his claim for trademark dilution will be dismissed”). 801. See Top Tobacco, L.P. v. N. Atl. Operating Co., 509 F.3d 380 (7th Cir. 2007). 802. Id. at 383. 803. See Univ. of Kan. v. Sinks, 565 F. Supp. 2d 1216, 1258-59 (D. Kan. 2008) (declining to hold university’s marks ineligible as a matter of law for protection against likely dilution based on evidence of sales of licensed merchandise under university’s marks and national broadcasts of athletic events). 804. See Bd. of Regents v. KST Elec., Ltd., 550 F. Supp. 2d 657 (W.D. Tex. 2008). 805. Id. at 677. 152 Vol. 99 TMR concluded that it did nothing more than establish niche market fame. It therefore entered summary judgment in the defendant’s favor because “[r]eading through the evidence, it is not at all clear that if one is not a college football fan (or, to a much lesser extent, college baseball or basketball fan) would recognize the [mark] as being associated with [the university], as all of the evidence relates to the use of the [mark] in sporting events.” 806 The university’s success in discrediting a survey introduced by the defendant to demonstrate the relative obscurity of its mark did not affect the outcome. 807 The revised test for protection under Section 43(c) similarly tripped up the owners of the BIO-SAFE mark for septic tank cleaning products when they sought preliminary injunctive relief against a competitor: Plaintiffs have failed to demonstrate that their trademark[] [is] famous within the meaning of the statute. Plaintiffs’ mark has been in use for only five years. Furthermore, there is no evidence presented that the reach of the advertising or publicity of Bio-Safe is broad, nor has evidence been presented that the amount, volume, and extent of sales under the mark is at a level that demonstrates the necessary degree of recognition by the general U.S. public. Plaintiffs’ conclusory statements that Bio-Safe is well-known and highly regarded for having high quality products in the industry are insufficient. 808 One district court interpreting the New York dilution statute 809 similarly disposed of a plaintiff’s aspirations to protection. 810 The plaintiff’s mark was SLY, which it had used in connection with an online women’s fashion magazine for approximately four months prior to the defendants’ introduction of a more masculine hard-copy publication associated with Sylvester Stallone. The court acknowledged that the plaintiff’s mark was inherently distinctive, but it nevertheless faulted the plaintiff for having “picked an already diluted name—one that was strongly associated with Mr. Stallone.” 811 The plaintiff’s dilution claim therefore fell short as a matter of law. 806. Id. at 678. 807. See id. 675-78. 808. Biosafe-One, Inc. v. Hawks, 524 F. Supp. 2d 452, 466-67 (S.D.N.Y. 2007). 809. N.Y. Gen. Bus. L. § 360-1 (McKinney 2008). 810. See Sly Magazine, LLC v. Weider Publ’ns L.L.C., 529 F. Supp. 2d 425 (S.D.N.Y. 2007). 811. Id. at 443. Vol. 99 TMR 153 Nevertheless, some marks passed muster even under federal law, 812 most notably the VICTORIA’S SECRET mark. 813 On remand from the Supreme Court’s application of the now-obsolete FTDA, 814 the mark’s owner successfully demonstrated its eligibility for protection through the submission of affidavit testimony bearing on the following: (1) the number of retail stores operating under the mark; (2) the wide range of goods sold under it; (3) the worldwide distribution of those goods through Internet sales; (4) rankings by third-party media sources; (5) sales volume under the mark; (6) the geographic proximity of stores operating under the mark to that of the plaintiff; and (7) the scope of the mark owner’s promotional efforts. 815 With the defendants apparently failing to challenge this showing, a finding of fame and distinctiveness as a matter of law followed. 816 Another set of plaintiffs, manufacturers of athletic footwear, sought to prove liability under the new Section 43(c), as well as their entitlement to monetary relief under the statute’s original version. 817 The plaintiffs’ federally registered mark consisted of three parallel stripes with serrated edges, which, in denying the defendant’s motion for summary judgment, the court concluded was sufficiently famous and distinctive to qualify for protection under either the TDRA or the FTDA. Chief among the considerations driving this conclusion were two prior cases in which the same court had found the same mark eligible for protection. 818 Referring to, but not otherwise describing, the plaintiff’s “huge” promotional expenditures, the court ultimately held that “[g]iven the extensive evidence [the plaintiffs] submitted as to each of the statutory ‘fame’ factors, [their] failure to conduct a fame survey is not dispositive.” 819 One plaintiff, a manufacturer of high-end handbags, aimed low but wound up with a finding of sufficient mark fame and 812. See, e.g., PepsiCo Inc. v. #1 Wholesale LLC, 84 U.S.P.Q.2d 1040, 1044 (N.D. Ga. 2007) (finding, on stipulated findings of fact, that the plaintiff’s PEPSI, DIET PEPSI, MOUNTAIN DEW, SIERRA MIST, AQUAFINA, CHEETOS, DORITOS, and FRITOS marks “are unquestionably famous as a result of their long use and [the plaintiff’s] extensive sale of products under the marks”). 813. See V Secret Catalogue, Inc. v. Moseley, 558 F. Supp. 2d 734 (W.D. Ky. 2008). 814. See Moseley v. V Secret Catalogue, Inc., 537 U.S. 418 (2003). 815. Id. at 743-44. 816. See id. at 743. 817. See adidas-Am., Inc. v. Payless Shoesource, Inc., 546 F. Supp. 2d 1029 (D. Or.), reconsideration denied, 540 F. Supp. 2d 1176 (D. Or. 2008). 818. See id. at 1063 (citing adidas Am., Inc. v. Kmart Corp., No. CV-05-120-ST, 2006 WL 2044857 (D. Or. June 15, 2006); adidas-Salomon AG v. Target Corp., 228 F. Supp. 2d 1192 (D. Or. 2002)). 819. Id. at 1061 n.12. 154 Vol. 99 TMR distinctiveness despite itself. 820 In response to the defendant’s motion for summary judgment, the plaintiff argued that there was enough record evidence and testimony to create a justiciable question of fact on the question of the fame and distinctiveness of its mark. Noting sardonically the plaintiff’s “apparent willingness to have this issue resolved by the fact-finder,” the court held that the plaintiff’s responsive papers established “the distinctive quality and great degree of recognition enjoyed by the [the plaintiff’s mark] . . . even outside of the fashionista world.” 821 Chief among the considerations driving this finding were “a deluge of unsolicited media coverage and attention” and extensive advertising expenditures demonstrating that “far beyond a narrow, niche market, the . . . mark achieved a high level of fame in the broad fashion market by [the defendant’s entry].” 822 Accordingly, “even under the high standard of fame required to sustain a [federal] dilution claim, the [plaintiff’s] mark meets that standard as a matter of law.” 823 Notwithstanding the increased standard for mark distinctiveness under Section 43(c), some plaintiffs availed themselves of the more lenient tests for eligibility under state law. For example, one trademark owner qualified for relief under the New York dilution statute 824 merely by demonstrating that its mark had distinctiveness in the first instance. 825 A different court applying the Minnesota dilution statute 826 conducted the inquiry a bit more rigorously, finding the plaintiff’s mark famous and distinctive on showings that the mark had been used for three decades in the state and over a decade elsewhere, had been the subject of $50 million in advertising, and was affixed to goods sold “in major retail grocery stores.” The court also found probative that “the extensive placement of [the plaintiff’s] products [is] complemented by [the plaintiff’s] website, which allows consumers to purchase product online.” 827 820. See Louis Vuitton Malletier v. Dooney & Bourke, 561 F. Supp. 2d 368 (S.D.N.Y. 2008). 821. Id. at 391. 822. Id. 823. Id. 824. N.Y. Gen. Bus. L. § 360-1 (McKinney 2008). 825. See Johnson & Johnson Consumer Cos. v. Aini, 540 F. Supp. 2d 374, 394 (E.D.N.Y. 2008). 826. Minn. Stat. Ann. § 333.285 (West 2008). 827. J&B Wholesale Distrib. Inc. v. Redux Beverages LLC, 85 U.S.P.Q.2d 1623, 1628 (D. Minn. 2007). Vol. 99 TMR 155 c. Proving Actual or Likely Dilution (1) Actual or Likely Dilution by Tarnishment Traditionally, the only surefire way for a plaintiff to secure a finding of either actual or likely dilution has been to establish that the defendant is using a similar mark in a prurient context. The latest victims of this principle were Victor and Kathy Moseley, whose luck changed for the worse after their fifteen minutes of fame as successful litigants before the United States Supreme Court. 828 On remand, and aided by the intervening passage of the TDRA’s more forgiving likelihood of dilution standard, the affiliated owners of the VICTORIA’S SECRET mark had little trouble proving as a matter of law that the Moseleys’ operation of a low-rent sex shop under the VICTOR’S SECRET and VICTOR’S LITTLE SECRET marks violated the revised Section 43(c). 829 Referring to correspondence received by the plaintiffs from a military officer objecting to the nature of the Moseleys’ store, the court explained that: The evidence in this case supports a finding of a likelihood of dilution by tarnishment. The army colonel’s offended reaction to the use of “Victor’s Secret,” what he clearly believed to be a bastardization of the VICTORIA’S SECRET mark, for the promotion of “unwholesome, tawdry merchandise,” suggests the likelihood that the reputation and standing of the VICTORIA’S SECRET mark would be tarnished. . . . [The lead plaintiff] has stated that it scrupulously avoids sexually explicit goods while cultivating a “sexy and playful” image. . . . The use of the remarkably similar “Victor’s Secret” or “Victor’s Little Secret” in connection with the sale of intimate lingerie along with sex toys and adult videos tarnishes the reputation of the VICTORIA’S SECRET mark. Thus we find a likelihood of dilution of the mark. . . . 830 Association of a plaintiff’s mark with contraband also is a sure ticket to a finding of either actual or likely dilution. 831 For example, a finding of likely tarnishment occurred in a case in 828. See Moseley v. V Secret Catalogue, Inc., 537 U.S. 418 (2003). 829. See V Secret Catalogue v. Moseley, 558 F. Supp. 2d 734 (W.D. Ky. 2008). 830. Id. at 750. 831. See, e.g., J&B Wholesale Distrib. Inc. v. Redux Beverages LLC, 85 U.S.P.Q.2d 1623, 1628-29 (D. Minn. 2007) (finding actual dilution based on defendant’s original use of COCAINE mark for goods eventually sold under mark identical to that of plaintiff). But see Univ. of Kan. v. Sinks, 565 F. Supp. 2d 1216, 1260 (D. Kan. 2008) (declining to find likely dilution as a matter of law caused by defendants’ use of plaintiffs’ marks on T-shirts accompanied by references to sex and alcohol). 156 Vol. 99 TMR which the defendants had incorporated concealed containers into packaging for food and beverages sold by the plaintiff. 832 One basis for the court’s conclusion that this conduct violated both Section 43(c) and the Georgia dilution statute 833 might have been that the resulting products had sharp edges and still contained stale food that might be consumed by unwary members of the public. 834 As the sole express support for its finding of a likelihood of dilution by tarnishment, however, the court relied on the stipulated purpose of the defendants’ modified goods: “[The defendants’] marketing and sale of [their goods] is likely to dilute and tarnish the [plaintiff’s marks] because [the defendants use] the marks on goods commonly associated with the concealment of illicit narcotics.” 835 Outside of contexts in which a defendant is using an emulation of the plaintiff’s mark in connection with pornography or similarly disfavored goods and services, findings of actual or likely tarnishment are relatively rare. One plaintiff, however, successfully prosecuted a tarnishment claim under New York state law in a case in which the defendants had imported and sold goods to which the plaintiff’s mark may have been legitimately affixed but that differed materially from their domestic counterparts. 836 Chief among those differences were those in the active ingredients contained the imported goods and their domestic counterparts. On the basis of evidence that the imported goods were of comparatively reduced strength, the court concluded that they were of inferior quality, a finding that sealed the defendants’ fate on the plaintiff’s motion for summary judgment. 837 A more characteristic treatment of the tarnishment inquiry came in an action brought by the publisher of an online magazine under the SLY mark against a group of defendants who had put out a hard-copy magazine under the same mark. 838 Granting a defense motion for summary judgment on the plaintiff’s claims under the New York state statute, the court found that the plaintiff had failed to adduce evidence or testimony of tarnishment. As it explained, “[t]here is no allegation that defendants’ publication is of shoddy quality. Nor can it be said that defendants’ magazine is ‘unwholesome’ or ‘unsavory.’” 839 832. See PepsiCo Inc. v. #1 Wholesale LLC, 84 U.S.P.Q.2d 1040 (N.D. Ga. 2007). 833. O.C.G.A. § 10-1-451(b) (2000). 834. See Pepsico, 84 U.S.P.Q. at 1043. 835. Id. at 1044. 836. See Johnson & Johnson Consumer Cos. v. Aini, 540 F. Supp. 2d 374 (E.D.N.Y. 2008). 837. See id. at 394. 838. See Sly Magazine, LLC v. Weider Publ’ns L.L.C., 529 F. Supp. 2d 425 (S.D.N.Y. 2007). 839. Id. at 444. Vol. 99 TMR 157 (2) Actual or Likely Dilution by Blurring The Ninth Circuit’s unexpected protectionist turn toward trademark owners was reflected in two decisions by that court vacating entry of summary judgment in favor of defendants charged with violating state and federal dilution laws. In the first case, the court heard an appeal from a holding that the plaintiff had failed as a matter of law to satisfy what the district court believed was the requirement under Section 43(c) that the plaintiff demonstrate the actual dilution of its mark. 840 Rather than take the most obvious route to overturning this holding—that congressional adoption of the likelihood of dilution standard in 2006 had retroactive effect—the appellate court instead looked to the plaintiff’s factual showing. It noted that the plaintiff had submitted the results of two surveys, the first of which exposed respondents to the defendants’ mark and asked them who they believed manufactured goods bearing the mark and whether the mark was used with the permission of another party. The second survey exposed respondents to the defendants’ packaging and asked them who they believed put out the associated product. Of the less-than-compelling results—the surveys yielded 28% and 7% positive results, respectively—the court observed that “[n]ot only do these surveys indicate that consumers associate one mark with the other; they suggest, too, that [the plaintiff’s] mark does not adequately identify its product because [the defendant] is able to convey, through the use of its [mark], the impression that [the plaintiff] either produces or allows the production of [the defendant’s goods].” 841 Accordingly, it remanded the action for a determination of whether dilution actually had occurred. Applying the California state dilution-by-blurring doctrine in an action brought by the online auction services provider eBay, another panel of the Ninth Circuit confronted the proper relationship between mark strength and the degree of similarity between the parties’ marks necessary to support a finding of liability for dilution. 842 The court acknowledged its past authority to the effect that “‘[t]he mark used by the alleged diluter must be identical, or nearly identical, to the protected mark for a dilution claim to succeed.’” 843 Nevertheless, it also recognized that it previously had held that “‘the similarity requirement may be less stringent in circumstances in which the senior mark is highly distinctive and the junior mark is being used for a closely related 840. Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628 (9th Cir. 2008). 841. Id. at 636. 842. See Perfumebay.com Inc. v. eBay Inc., 506 F.3d 1165 (9th Cir. 2007). 843. Id. at 1180 (quoting Nissan Motor Co. v. Nissan Computer Corp., 378 F.3d 1002, 1011 (9th Cir. 2004)). 158 Vol. 99 TMR product.’” 844 To resolve this apparent inconsistency, the court imported into the dilution context the infringement principle that “‘[t]he stronger a mark—meaning the more likely it is to be remembered and associated in the public mind with the mark’s owner—the greater the protection that is accorded by the trademark laws.’” 845 It then held that the district court had failed to take into account the fame of the EBAY mark en route to a finding that no dilution was likely; accordingly, that aspect of the district court’s opinion was reversed. 846 Addressing the same prior Ninth Circuit case law requiring marks to be identical or nearly identical for actual or likely blurring to occur, one district court in the Ninth Circuit concluded that a mark consisting of three parallel stripes with serrated edges for athletic shoes was sufficiently similar to four-stripe designs used by the defendant to preclude a grant of the defendant’s motion for summary judgment. 847 The court explained that “[a]lthough [the defendant’s] four-stripe designs are not identical to [the plaintiffs’] Three-Stripe Mark, a reasonable fact-finder could conclude that the marks are ‘nearly identical’ or essentially the same.’” 848 In reaching this conclusion, the court relied heavily on survey evidence of actual confusion suggesting that 41 percent of respondents viewing the defendant’s shoes believed they had seen three stripes, rather than four. 849 Because “[w]hether the marks at issue are nearly identical is a context-specific and factintensive inquiry,” entry of summary judgment in the defendant’s favor was inappropriate. 850 Another Ninth Circuit district court similarly reached a finding of likely dilution, an outcome made notable by the absence of a corresponding finding that confusion was likely. 851 The plaintiff’s mark was NIKE, registered for a variety of sporting goods and related products, while the defendant used NIKEPAL for goods and services sold to analytical, environmental, and scientific laboratories. Notwithstanding the differing spellings and pronunciations of the marks, the plaintiff demonstrated to the court’s satisfaction at trial that “[t]he parties’ marks are nearly 844. Id. (quoting Thane Int’l, Inc. v. Trek Bicycle Corp., 305 F.3d 894, 907 (9th Cir. 2002)). 845. Id. at 1181 (quoting Brookfield Commc’ns, Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036, 1058 (9th Cir. 1999)). 846. See id. 847. See adidas-Am., Inc. v. Payless Shoesource, Inc., 546 F. Supp. 2d 1029 (D. Or.), reconsideration denied, 540 F. Supp. 2d 1176 (D. Or. 2008). 848. Id. at 1053. 849. See id. at 1064-65. 850. Id. at 1065. 851. See Nike, Inc. v. Nikepal Int’l, Inc., 84 U.S.P.Q.2d 1820 (E.D. Cal. 2007). Vol. 99 TMR 159 identical.” 852 Working through the remaining likelihood of dilution factors set forth in Section 43(c)(2)(a), 853 the court found that the plaintiff enjoyed substantially exclusive use of its “at the very least[] suggestive” and “readily recognized” marks, despite a thirdparty registration of NIKE for mechanical and hydraulic lifting jacks. 854 Dismissing testimony of his good faith by the defendant’s principal as “not credible,” 855 the court then moved to the last consideration—whether consumers actually associated the defendant’s mark with the plaintiff. Two showings by the plaintiff established that this was the case, the first of which was that the registrar of the defendant’s “nikepal” domain names had placed advertising for the plaintiff’s goods on the defendant’s “under construction” website. The second was survey evidence that “over 87% of the people in [the defendant’s] own customer pool associated the stimulus ‘Nikepal’ with NIKE.” 856 Under the circumstances, the court held, “there is a likelihood that [the] NIKE [mark] will suffer dilution if [the defendant] is allowed to continue its use of NIKEPAL.” 857 In contrast, other courts were less sympathetic to plaintiffs’ dilution-by-blurring claims, with the leading example being the Kentucky district court assigned to the long-running dilution action brought by a group of companies affiliated with Victoria’s Secret against Victor and Kathy Moseley. 858 After receiving correspondence objecting to their use of VICTOR’S SECRET for the retail sale of lingerie and various unmentionable items, the Moseleys transitioned to VICTOR’S LITTLE SECRET, which did little to dampen the plaintiffs’ hostility toward them. On the parties’ cross motions for summary judgment, the court noted that “[t]he word ‘Little’ is substantially smaller than the words ‘Victor’s’ and ‘Secret,’ so much as to make it an afterthought in the advertising.” 859 Much of the court’s analysis appeared to weigh in the plaintiffs’ favor, including its findings that the Moseleys’ mark was “substantially similar” to the plaintiffs’ VICTORIA’S SECRET mark, that the plaintiffs’ mark was arbitrary (and therefore inherently distinctive), that the plaintiffs enjoyed substantially exclusive use of their mark, that the plaintiffs’ mark enjoyed a high degree of recognition among consumers, that the Moseleys 852. Id. at 1826-27. 853. 15 U.S.C. § 1125(c)(2)(a) (2006). 854. Nike, 84 U.S.P.Q.2d at 1827-28. 855. Id. at 1828. 856. Id. 857. Id. 858. See V Secret Catalogue, Inc. v. Moseley, 558 F. Supp. 2d 734 (W.D. Ky. 2008). 859. Id. at 745. 160 Vol. 99 TMR had intended to associate themselves with the plaintiffs, and that there was an actual association between the parties’ marks, at least in the mind of one member of the public, who had written to the plaintiffs to complain about the Moseleys’ store. 860 Nevertheless, the court rather improbably entered summary judgment in the Moseleys’ favor, concluding that “[w]hile it is possible that a blurring of . . . distinctiveness could occur in the minds of some consumers, we deal here with likelihood of blurring.” 861 In another dispute, this one between two manufacturers of handbags, the defendant successfully moved for summary judgment on the plaintiff’s federal and New York dilution claims. 862 As to the former, the court noted that the plaintiff’s pursuit of monetary relief required it to prove that the defendant’s designs had actually diluted the distinctiveness of the plaintiff’s marks. 863 Rejecting the plaintiff’s showing that some consumers believed that the defendant had copied the plaintiff’s marks, the court concluded that “the evidence demonstrates that, rather than eroding the strength of [the plaintiff’s] mark, some consumers that made the mental association between the marks at issue directed any ‘offense’ they might have felt from the association towards defendant rather than plaintiff.” 864 Moreover, “[a]s [the plaintiff’s] own witness affirmed, [the plaintiff’s] reputation and standing in the handbag industry has only increased since . . . the introduction and success of [the defendant’s] bags in the market.” 865 Similarly dismissing the plaintiff’s claims under the New York dilution statute as a matter of law, the court held that dissimilarities in the parties’ marks, the sophistication of their customers, and the plaintiff’s merely “de minimis” evidence of the defendant’s predatory intent outweighed any significance that might be attributed to the directly competitive nature of the parties’ products. 866 In another case disposing of a New York state dilution claim, the plaintiff owner of the SLY mark for an online magazine challenged the distribution of a hard-copy publication under the same name. 867 Entertaining the defendants’ motion for summary 860. See id. at 744-48. 861. Id. at 748-49. 862. See Louis Vuitton Malletier v. Dooney & Bourke, 561 F. Supp. 2d 368 (S.D.N.Y. 2008). 863. See id. at 392. 864. Id. 865. Id. 866. See id. 867. See Sly Magazine, LLC v. Weider Publ’ns L.L.C., 529 F. Supp. 2d 425 (S.D.N.Y. 2007). Vol. 99 TMR 161 judgment, the district court determined that: (1) the defendants had not misappropriated or modified the plaintiff’s mark to identify their magazine; (2) there was no evidence that the defendants’ use of their mark would prevent the plaintiff’s mark from identifying the source of the plaintiff’s magazine; and (3) the defendants’ magazine had not overwhelmed the plaintiff’s online publication during the brief period in which the defendants’ magazine had been published. 868 Summary judgment of nonliability followed. 869 The Supreme Court’s dictum in Moseley v. V Secret Catalogue, Inc. 870 that a defendant’s use of a mark identical to that of a plaintiff may be circumstantial evidence of dilution 871 continued to come into play in cases in which plaintiffs were either unable or unwilling to present more tangible evidence of liability. For example, some plaintiffs established liability under a dilution-byblurring theory with nothing more than a showing that the parties’ marks were identical. 872 At the same time, however, the Tenth Circuit rejected a plaintiff’s otherwise unsubstantiated claims of actual dilution because of record evidence that the parties’ trade dresses were not, in fact, identical. 873 (3) Survey Evidence of Actual or Likely Dilution In contrast to their infringement counterparts, surveys intended to document actual or likely dilution historically have not played significant roles in opinions resolving dilution-related claims, and two such surveys held inadmissible in the same case from the Southern District of New York continued this trend. 874 The first survey purported to measure both likelihood of confusion and likelihood of dilution, a combined purpose that the special masters to whom the admissibility of the survey had been referred found to be a fatal deficiency. Although faulting the expert conducting the survey for various methodological errors, the most significant criticism the special masters leveled at the likelihoodof-dilution component of the survey was that it was based on “a fundamental misunderstanding of the theory of dilution by 868. See id. at 444. 869. See id. 870. 537 U.S. 418 (2003). 871. See id. at 434. 872. See, e.g., Johnson & Johnson Consumer Cos. v. Aini, 540 F. Supp. 2d 374, 394-95 (E.D.N.Y. 2008). 873. See Gen. Motors Corp. v. Urban Gorilla, LLC, 500 F.3d 1222, 1229 (10th Cir. 2007). 874. See Louis Vuitton Malletier v. Dooney & Bourke, 525 F. Supp. 2d 558 (S.D.N.Y. 2007), later proceedings, 561 F. Supp. 2d 368 (S.D.N.Y 2008). 162 Vol. 99 TMR blurring.” 875 Specifically, the special masters advised the district court that “[i]t is axiomatic in trademark doctrine that a consumer—or, as here, a survey respondent—who is confused as to source cannot also demonstrate blurring.” 876 The basis for this conclusion was Professor McCarthy’s observation to similar effect; 877 a prior statement by the Second Circuit that “[a] junior use that confuses consumers as to which mark is which surely dilutes the distinctiveness of the senior mark” 878 was dismissed as “dicta . . . [that] confuse[s] the binary relationship between confusion and dilution.” 879 The second survey focused only on the likelihood of dilution caused by the defendant’s marks and sought to measure the extent to which respondents’ awareness of the availability of the defendant’s branded goods influenced their perception of the goods of either party. Survey responses reflecting a “negative reaction” to the defendant’s goods, a reduced tendency to buy the plaintiff’s goods, an increased tendency to buy the defendant’s goods, and the perception that the plaintiff’s goods “less distinctive” and “less exclusive” were coded as documenting “aspects of dilution.” 880 In recommending that the results of this survey also be excluded, the special masters criticized the failure of the expert’s report to disclose an earlier pilot survey that yielded little or no evidence of likely dilution, an omission “suggest[ing] that the whole process may not have been conducted in a manner to ensure objectivity.” 881 Moreover, as to the substance of the responses elicited from respondents, an increased interests [sic] in the [defendant’s goods] does not indicate dilution by either blurring or tarnishment [of the plaintiff’s] mark]—and the [expert’s report] does not show that the [defendant’s mark] has somehow impaired the ability of the [plaintiff’s mark] to serve as a source identifier of [the plaintiff]. It also fails to show that the [defendant’s mark] has “tarnished” the reputation of [the plaintiff] or otherwise imbued the [plaintiff’s mark] with negative associations or derogatory connotations. A consumer’s increased willingness to buy [the defendant’s goods] on its own says nothing all about the status of [the plaintiff’s] mark. 875. Id. at 598. 876. Id. 877. See id. at 598-99 (citing 4 McCarthy, supra note 245, § 24.69). 878. Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208, 219 (2d Cir. 1999), overruled in part by Moseley v. V Secret Catalogue, Inc., 537 U.S. 418 (2003). 879. Louis Vuitton Malletier, 525 F. Supp. 2d at 599. 880. Id. at 600-01 (internal quotation marks omitted). 881. Id. at 612. Vol. 99 TMR 163 .... . . . [I]nstead, it may simply indicate that the respondent preferred the [defendant’s goods] to the design of the [plaintiff’s] competing [goods], or that the respondent preferred [the defendant’s goods] in general to those manufactured by [the plaintiff]. 882 d. Preemption of State Dilution Statutes Although the issue of the availability of the dilution doctrine to protect product designs is a subject of great interest in the academy, courts address the issue infrequently, especially with respect to claims that federal law preempts state dilution statutes in this context. The concept of preemption under the Supremacy Clause is that state laws inconsistent with federal policy cannot stand. 883 Although a logical corollary of this principle is that state action consistent with federal policy should withstand scrutiny, one court held that the Oregon dilution statute 884 was preempted to the extent that it had been invoked to protect a shoe design: Oregon’s dilution law would interfere with federal patent law by allowing [the plaintiff] to forever exclude others from making and selling an unpatented product design without requiring [the plaintiff] to meet the rigorous standards for obtaining a federal patent. In effect, the Oregon anti-dilution statute would provide perpetual “patent-like protection for an intellectual creation that would otherwise remain unprotected as a matter of law.” 885 In reaching this conclusion, the court left unaddressed the substantive identity between the Oregon statute and Section 43(c), which, following amendment by the TDRA, expressly adopts the protectability of trade dress as a matter of federal law. 886 Rather 882. Id. at 610-11 (citations omitted). 883. The Supreme Court has rejected the proposition that the Constitution’s Intellectual Property Clause, U.S. Const. art I, § 8, cl. 8, has any direct application to the states: Our decisions . . . have made it clear that the Patent and Copyright Clauses do not, by their own force or by negative implication, deprive the States of the power to adopt rules for the promotion of intellectual creation within their own jurisdictions. Thus, where Congress determines that neither federal protection nor freedom from restraint is required by the national interest, the States remain free to promote originality and creativity in their own domains. Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 165 (1989) (internal quotation marks and citation omitted). 884. Or. Rev. Stat. § 647.107 (West 2008). 885. adidas-Am., Inc. v. Payless Shoesource, Inc., 546 F. Supp. 2d 1029, 1068 (D. Or.) (quoting Bonito Boats, 489 U.S. at 168), reconsideration denied, 540 F. Supp. 2d 1176 (D. Or. 2008). 886. See 15 U.S.C. § 1125(c)(4) (2006). 164 Vol. 99 TMR than impermissibly conflicting with federal policy in the area, the cause of action created by the Oregon statute might well be viewed as promoting that policy. 4. Section 42 Claims Section 42 does not expressly contemplate a private cause of action; rather, its language is in the nature of an import-exclusion provision targeted towards goods bearing marks that “copy or simulate” those of senior users. 887 Nevertheless, courts increasingly have interpreted this provision as authorizing relief in civil actions under much the same circumstances as in conventional infringement suits. Joining the crowd over the past year was a Fifth Circuit district court, which, having found the defendant liable as a matter of law for the importation of goods bearing counterfeit marks, concluded in a brief analysis that the same underlying facts warranted entry of summary judgment of liability on the plaintiff’s Section 42 claims as well. 888 5. Section 43(a) Claims a. Passing Off and Reverse Passing Off As usual, a number of plaintiffs were unable to resist the temptation to pile passing off or reverse passing off claims under Section 43(a) onto what would otherwise be standard copyright cases. Although the Supreme Court’s 2003 decision in Dastar Corp. v. Twentieth Century Fox Film Corp. 889 was not the exclusive basis for disposing of the reliance by plaintiffs on Section 43(a), 890 it made an appearance in a number of cases, including one in which the Eleventh Circuit affirmed entry of summary judgment of nonliability on claims brought by a manufacturer of rug adhesive tape against a former distributor of the plaintiff’s product, as well as the distributor’s parent corporation. 891 The basis of the plaintiff’s claims was that the defendants had engaged in unfair competition by discontinuing their distribution of the plaintiff’s product and introducing their own competing one. Thereafter, there was at least some period of time during which both parties’ 887. Id. § 1124. 888. See Philip Morris USA Inc. v. Lee, 547 F. Supp. 2d 667, 677 (W.D. Tex.), later proceedings, 547 F. Supp. 2d 685 (W.D. Tex. 2008). 889. 539 U.S. 23 (2003). 890. See, e.g., Tiseo Architects, Inc. v. B & B Pools Serv. & Supply Co., 495 F.3d 344, 348 (6th Cir. 2007) (affirming dismissal of plaintiff’s reverse passing off claims on ground that parties’ works were not substantially similar within of meaning of federal copyright law). 891. See Optimum Techs., Inc. v. Henkel Consumer Adhesives, Inc., 496 F.3d 1231 (11th Cir. 2007). Vol. 99 TMR 165 products were commingled by retailers, but the Eleventh Circuit concluded that this circumstance was an insufficient basis for a finding of liability: “Here, there is no evidence that [the lead defendant] substituted its . . . product on store shelves while suggesting that [the product’s] source was [the plaintiff]. . . .” 892 Accordingly, the court upheld entry of summary judgment of nonliability on the plaintiff’s passing off claims. 893 Dastar proved to be an insurmountable obstacle to plaintiffs asserting false designation of origin claims under Section 43(a)(1)(A) on facts similar to those in Dastar itself. 894 The most notable opinion to arise from this scenario called the plaintiff to task for failure to withdraw its Section 43(a)(1)(A) claim once Dastar had been called to its attention. 895 In response, the plaintiff argued that Dastar was distinguishable because the video at issue in that case had been in the public domain, whereas the video underlying the plaintiff’s claim remained under copyright protection. The court rejected this argument both because the plaintiff failed “to offer any meaningful explanation of why this fact distinguishes Dastar” and because the plaintiff “has not cited a single instance where a court has agreed with the argument that Dastar was inapplicable when the work in issue was copyrighted.” 896 Dastar did not prove fatal to all claims in the passing off context. As the Dastar Court itself noted, Section 43(a)(1)(A) allows claims for reverse passing off if a defendant has misrepresented the origin of an actual article manufactured by the plaintiff (as opposed to a copy of one). 897 Consistent with this principle, one district court found after a bench trial that a defendant had engaged in just such conduct by displaying a set of the plaintiff’s furniture in the defendant’s booth at a trade show. 898 The absence of any brands on the displayed furniture led the court to conclude that “[i]t would be difficult to fathom a situation where 892. Id. at 1248. 893. See id. 894. See, e.g., Brainard v. Vassar, 561 F. Supp. 2d 922, 933-36 (M.D. Tenn. 2008) (granting defense motion to dismiss federal unfair competition claims grounded in allegations that “defendants stole [plaintiffs’] idea for a song, presented in the form of a demo tape, repackaged that song under their own authorship, and sold it”); Silverstein v. Penguin Putnam Inc., 522 F. Supp. 2d 579, 600-02 (S.D.N.Y. 2007) (rejecting plaintiff’s claim of reverse passing off in connection with defendant’s alleged reproduction of compilation not subject to copyright protection). 895. See Contractual Obligation Prods., LLC v. AMC Networks, Inc., 546 F. Supp. 2d 120 (S.D.N.Y. 2008). 896. Id. at 130. 897. See Dastar, 539 U.S. at 31. 898. See Universal Furniture Int’l Inc. v. Collezione Europa USA Inc., 84 U.S.P.Q.2d 1956 (M.D.N.C. 2007). 166 Vol. 99 TMR a customer would not be confused by seeing two different companies marketing the same furniture under different names.” 899 Finally, an unusual passing off theory led to an unusual application of Dastar. 900 The case had been brought by a manufacturer of dietary supplements against a competitor and its subsidiaries, as well as against several publishers of bodybuilding magazines. The gravamen of the plaintiff’s Section 43(a) claim was that its competitors had written editorial content appearing in the magazines without disclosing their authorship of the material. The court dismissed this allegation for failure to state a claim. It interpreted Dastar as standing for the proposition that “the mere act of publishing a written work without proper attribution to its creative source is not actionable under the Lanham Act.” 901 In particular, “the failure to properly name contributors to a written work does not provide a basis for liability. . . .” 902 b. False Endorsement Claims of false association under Section 43(a) are most commonly brought by celebrity plaintiffs or at least by those with at least some degree of notoriety. 903 This phenomenon led one set of defendants faced with a Section 43(a) claim brought by a Jane Doe plaintiff to assert in support of a motion to dismiss that the plaintiff’s obscurity prevented her from asserting a claim for which relief could be granted. 904 The court was unconvinced. Noting the absence of any authority supporting the defendants’ argument, the court declined to dismiss the action on the ground that “the plaintiff’s claim for false designation under [Section 43(a)] does not fail simply because she is not a ‘celebrity.’” 905 In a case in which the plaintiff’s fame was similarly disputed at the pleading stage, the plaintiff was the former executive chef at the defendant’s hotel. 906 His complaint articulated a classic false association scenario, namely, that the defendant had continued to use his name in its advertising after the parties had parted ways. 899. Id. at 1968. 900. See Wellnx Life Scis. Inc. v. Iovate Health Scis. Research Inc., 516 F. Supp. 2d 270 (S.D.N.Y. 2007). 901. Id. at 285. 902. Id. 286. 903. See, e.g., Paul v. Judicial Watch, Inc., 543 F. Supp. 2d 1, 9 (D.D.C. 2008) (dismissing claim of false association grounded in (accurate) description of whistleblower in Senate campaign as a “former client”). 904. See Doe v. Friendfinder Network, Inc., 540 F. Supp. 2d 288 (D.N.H. 2008). 905. Id. at 306. 906. See Lewis v. Marriott Int’l, Inc., 527 F. Supp. 2d 422 (E.D. Pa. 2007). Vol. 99 TMR 167 In moving to dismiss the complaint, the defendant successfully— but wrongly—convinced the district court that the plaintiff was required to demonstrate secondary meaning for his name to prevail. In light of the court’s conclusion that the plaintiff had sufficiently averred acquired distinctiveness to escape dismissal of his complaint, 907 the error proved to be a harmless one. The better approach may have been to recognize that Section 43(a)(a)(1)’s prohibition on “false or misleading description[s] of fact” and its prohibition on “false designation[s] of origin” have produced divergent bodies of law and that the requirement of distinctiveness contemplated by the latter does not facilely transfer to the former. With courts increasingly moving toward modified versions of trademark infringement’s likelihood of confusion test for liability, a final opinion of note provided at least a doctrinal framework for addressing the fame and notoriety of a false endorsement plaintiff. 908 The particular plaintiff at issue was a model who objected to the appearance of her image in advertising for home theater equipment. Rejecting the defendants’ argument that the plaintiff was too obscure to qualify for protection under a false endorsement theory, the court held that liability properly should turn on an examination of the following factors: (1) the level of recognition of the plaintiff among the segment of society targeted by the plaintiff’s product; (2) the relationship between the plaintiff’s fame or success to the defendant’s product; (3) the similarity of the likeness used by the defendant to that of the actual plaintiff; (4) evidence of actual confusion; (5) marketing channels used by the parties; (6) the likely degree of purchaser care; (7) the defendants’ intent in selecting its reference to the plaintiff; and (8) the likelihood of an expansion of the parties’ product lines. 909 Although the plaintiff’s relative lack of notoriety was not a bright-line bar to her case, as the defendants urged, it was a factual consideration that weighed against her claims, as did the absence of actual confusion, the likely high degree of care exercised by consumers of the defendants’ goods, the lack of evidence that the defendants had acted in bad faith, and the low likelihood of the plaintiff expanding her modeling services into the electronics industry. Under these circumstances, the plaintiff’s showings that the image used in the defendants’ advertising was clearly that of the plaintiff and that authorized images of her had appeared in the same media as the defendants’ advertisements 907. See id. at 426-28. 908. See Ji v. Bose Corp., 538 F. Supp. 2d 349 (D. Mass.), later proceedings, 578 F. Supp. 2d 217 (D. Mass. 2008). 909. See id. at 351. 168 Vol. 99 TMR featuring her were insufficient to ward off entry of summary judgment in the defendants’ favor. 910 c. False Advertising and Commercial Disparagement Section 43(a) of the Lanham Act sets forth the federal cause of action for false advertising. Most applications of it over the past year used a standard test for liability that varies from jurisdiction to jurisdiction only in the precise statement of the elements: To establish . . . success on the merits of a false advertising claim under this section, the [plaintiff] must demonstrate the following: “(1) the ads of the opposing party were false or misleading, (2) the ads deceived, or had the capacity to deceive, consumers, (3) the deception had a material effect on purchasing decisions, (4) the misrepresented product or service affects interstate commerce, and (5) the [plaintiff] has been—or is likely to be—injured as a result of the false advertising.” 911 The Ninth Circuit offered a variation on this theme: Under the Lanham Act, a prima facie case requires a showing that (1) the defendant made a false statement either about the plaintiff’s or its own product; (2) the statement was made in commercial advertisement or promotion; (3) the statement actually deceived or had the tendency to deceive a substantial segment of its audience; (4) the deception [was] material; (5) the defendant caused its false statement to enter interstate commerce; and (6) the plaintiff has been or is likely to be injured as a result of the false statement, either by direct 910. See id. at 352-53. 911. N. Am. Med. Corp. v. Axiom Worldwide, Inc., 522 F.3d 1211, 1224 (11th Cir. 2008) (quoting Johnson & Johnson Vision Care, Inc. v. 1-800 Contacts, Inc., 299 F.3d 1242, 1247 (11th Cir. 2002)); see also Schlotzsky’s, Ltd. v. Sterling Purchasing & Nat’l Distrib. Co., 520 F.3d 393, 400 (5th Cir. 2008); Nemet Chevrolet, Ltd. v. Consumeraffairs.com, Inc., 564 F. Supp. 2d 544, 554 (E.D. Va. 2008); Int’l Techs. Consultants, Inc. v. Stewart, 554 F. Supp. 2d 750, 759 (E.D. Mich. 2008); Healthport Corp. v. Tanita Corp. of Am., 563 F. Supp. 2d 1169, 1178 (D. Or. 2008); Landrau v. Solis-Betancourt, 554 F. Supp. 2d 117, 123 (D.P.R. 2008); Oreck Direct, LLC v. Dyson, Inc., 544 F. Supp. 2d 502, 509 (E.D. La. 2008); White Mule Co. v. ATC Leasing Co., 540 F. Supp. 2d 869, 894 (N.D. Ohio 2008); Parker v. Learn the Skills Corp., 530 F. Supp. 2d 661, 679 (D. Del. 2008); Doe v. Friendfinder Network, Inc., 540 F. Supp. 2d 288, 305 (D.N.H. 2008); Sanderson Farms, Inc. v. Tyson Foods, Inc., 549 F. Supp. 2d 708, 713 (D. Md. 2008); SuccessFactors, Inc. v. Softscape, Inc., 544 F. Supp. 2d 975, 982 (N.D. Cal. 2008); Bassett Seamless Guttering, Inc. v. Gutterguard, LLC, 501 F. Supp. 2d 738, 745 (M.D.N.C. 2007); MSP Corp. v. Westech Instruments, Inc., 500 F. Supp. 2d 1198, 1215 (D. Minn. 2007); ConsulNet Computing Inc. v. Moore, 84 U.S.P.Q.2d 1640, 1647 (E.D. Pa. 2007); CKE Rest. v. Jack in the Box, Inc., 494 F. Supp. 2d 1139, 1144 (C.D. Cal. 2007); Taser Int’l Inc. v. Bestex Co., 84 U.S.P.Q.2d 1186, 1192 (C.D. Cal. 2007); Outdoor Techs. Inc. v. Vinyl Visions LLC, 83 U.S.P.Q.2d 1418, 1421 (S.D. Ohio 2006). For a closely similar restatement of this test, see NetQuote, Inc. v. Byrd, 504 F. Supp. 2d 1126, 1333 (D. Colo. 2007). Vol. 99 TMR 169 diversion of sales from itself to the defendant, or by a lessening of goodwill associated with the plaintiff’s product. 912 Whatever the test for liability applied, most courts distinguished between literally false advertising, on the one hand, and literally true but misleading advertising, on the other. Some courts reiterated the majority rule that “‘[i]f a plaintiff proves that a challenged claim is literally false, a court may grant relief without considering whether the buying public was actually misled; actual consumer deception need not be proved.’” 913 In contrast, the Eleventh Circuit continued to adhere to the minority rule, holding that “[e]ven when a court finds that a defendant’s ads are literally false, the plaintiff, to succeed on a claim of false advertising, must still establish that the defendant’s deception is likely to influence the purchasing decision.” 914 As it further explained, “[t]he materiality requirement is based on the premise that not all deceptions affect consumer decisions.” 915 (1) Proving Use in “Commercial Advertising and Promotion” by Defendants Assuming that an allegedly false statement has occurred in the first instance, 916 it must nevertheless have been one in “commercial advertising and promotion” to be actionable under Section 43(a), a requirement that has increasingly attracted judicial attention. 917 The most interesting example of this 912. Newcal Indus. v. IKON Office Solutions, Inc., 513 F.3d 1038, 1052 (9th Cir. 2008) (internal quotation marks omitted). 913. MSP, 500 F. Supp. 2d at 1215 (quoting United Indus. v. Clorox Co., 140 F.3d 1175, 1180 (8th Cir. 1998)); see also Standard Process, Inc. v. Total Health Discount, Inc., 559 F. Supp. 2d 932, 939-40 (E.D. Wis. 2008); Int’l Techs. Consultants, 554 F. Supp. 2d at 759; Healthport Corp. v. Tanita Corp. of Am., 563 F. Supp. 2d 1169, 1179-80 (D. Or. 2008); Oreck Direct, LLC v. Dyson, Inc, 544 F. Supp. 2d 502, 515 (E.D. La. 2008); Schering-Plough Healthcare Prods., Inc. v. Schwarz Pharma, Inc., 547 F. Supp. 2d 939, 942 (E.D. Wis. 2008); ConsulNet Computing, 84 U.S.P.Q.2d at 1647; Bassett Seamless Guttering, Inc. v. GutterGuard, LLC, 501 F. Supp. 2d 738, 745 (M.D.N.C. 2007); Taser Int’l, 84 U.S.P.Q.2d at 1192; Outdoor Techs., 83 U.S.P.Q.2d at 1421. 914. N. Am. Med. Corp., 522 F.3d at 1226 (internal quotation marks omitted). 915. Id. (internal quotation marks omitted). 916. For an example of an opinion dismissing an allegation of false advertising based on the plaintiff’s failure to identify an allegedly false statement by the defendants, see Wellnx Life Scis. Inc. v. Iovate Health Scis. Research Inc., 516 F. Supp. 2d 270, 286 (S.D.N.Y. 2007) (holding that failure to disclose facts is not actionable unless that failure results in an otherwise accurate affirmative statement being false). 917. See, e.g., Futuristic Fences, Inc. v. Illusion Fence Corp., 558 F. Supp. 2d 1270, 127882 (S.D. Fla. 2008) (holding as a matter of law that four letters sent to the trade did not constitute commercial advertising or promotion); Landrau v. Solis-Betancourt, 554 F. Supp. 2d 117, 123 (D.P.R. 2008) (holding as a matter of law that allegedly inaccurate statements in article by third-party freelance journalist did not constitute commercial advertising or promotion by defendants); Oreck Direct, LLC v. Dyson, Inc., Inc, 544 F. Supp. 2d 502, 512- 170 Vol. 99 TMR phenomenon over the past year came in a dispute between two claimants to a trademark for rum that had been expropriated during the Cuban revolution. 918 The plaintiff’s complaint asserted that the defendant’s public announcement of ownership was actionable under Section 43(a), but the court disagreed. Accepting the defendant’s argument that its announcement had concerned the trademark in question, rather than the associated goods, it held that the plaintiff had failed to aver the use of a false statement “on or in connection with any goods or services” within the meaning of Section 43(a). 919 Similarly rejecting the plaintiff’s theory that the defendant’s claim to own the mark constituted a false statement of the “nature, characteristics, qualities, or geographic origin” of the defendant’s rum, the court dismissed the plaintiff’s false advertising cause of action for failure to state a claim. 920 In another case reaching a similar outcome, the challenged statements were not that the defendant owned the mark in question, but instead that the mark was generic. 921 Objecting to the defendant’s campaign to place the mark in the public domain through its widespread generic use, the plaintiff invoked Section 43(a) to secure a preliminary injunction. On appeal, however, the Ninth Circuit reversed, holding that: As a threshold matter, [the defendant’s] actions likely did not constitute a “use in commerce,” as the record in this case does not indicate they were made to promote any competing service or reap any commercial benefit whatsoever. Rather, based on his view that the term was generic, [the defendant] simply expressed an opinion that [the plaintiff] lacked trademark rights in the term . . . and encouraged like-minded individuals to continue to use the term in its generic sense and to inform the PTO of their opinions. 922 15 (E.D. La. 2008) (holding plaintiff’s false advertising claims barred by res judicata after concluding that challenged claims were being made in commercial advertising and promotion at time of earlier suit); White Mule Co. v. ATC Leasing Co., 540 F. Supp. 2d 869, 898 (N.D. Ohio 2008) (granting defense motion to dismiss allegations of false advertising grounded in statements made in single conversation between parties, despite presence of third party); Silverstein v. Penguin Putnam Inc., 522 F. Supp. 2d 579, 603 (S.D.N.Y. 2007) (finding in defendant’s favor on false advertising claim in light of plaintiff’s failure “to allege any false statement of fact by [the defendant] at all, much less one made in commercial advertising or promotion”). 918. See Pernod Ricard USA LLC v. Bacardi U.S.A., Inc., 505 F. Supp. 2d 245 (D. Del. 2007). 919. Id. at 255. 920. Id. at 256. 921. See Freecycle Network, Inc. v. Oey, 505 F.3d 898 (9th Cir. 2007). 922. Id. at 903 (citations omitted). Vol. 99 TMR 171 A multifactored test played a role in a Fourth Circuit district court’s grant of a defense motion for summary judgment on the theory that the plaintiff had failed to allege sufficiently that the defendant had disseminated false statements in commerce: A representation constitutes . . . commercial advertising or promotion under § 43(a)(1)(B) of the Lanham Act if it is: 1) commercial speech; 2) by a defendant who is in commercial competition with plaintiff; 3) for the purpose of influencing consumers to buy defendant’s good or service; and 4) [the] representation [is] disseminated sufficiently to the relevant purchasing public to constitute advertising promotion within that industry. 923 The challenged statements appeared in posts on the defendant’s consumer review website, which led the court to hold that the plaintiff could not satisfy this test: “Defendant is not in commercial competition with Plaintiffs. This would in turn prevent a finding that the representations at issue constitute advertising under the Lanham Act.” 924 The court therefore dismissed the plaintiff’s false advertising allegations for failure to state a claim. 925 Other courts focused on the quantum of allegedly false statements at issue. 926 For example, with all the other relevant factors not seriously in dispute, one court looked at the extent to which the defendant had circulated the alleged misrepresentations at issue, holding that “although representations less formal than those made as part of a classic advertising campaign may suffice, they must be disseminated sufficiently to the relevant purchasing public.” 927 The challenged statements had been made in sales presentations to potential customers of both parties and totaled six in number. Particularly as the market for the parties was nationwide in scope, the court concluded that “even if all six of the alleged statements of the defendant were deemed admissible, the result would be the same. The impact was simply too narrow and contained to implicate the Lanham Act.” 928 Six also proved to be the magic number for a defendant haled into federal court in the Southern District of New York. 929 The six 923. Nemet Chevrolet, Ltd. v. Consumeraffairs.com, Inc., 564 F. Supp. 2d 544, 554 (E.D. Va. 2008). 924. Id. at 554-55. 925. See id. at 555. 926. See, e.g., ConsulNet Computing Inc. v. Moore, 84 U.S.P.Q.2d 1640, 1650-51 (E.D. Pa. 2007) (finding as a matter of law that single misrepresentation alleged by plaintiff did not rise to the level of “commercial advertising or promotion”). 927. Applied Med. Res. Corp. v. Steur, 527 F. Supp. 2d 489, 493 (E.D. Va. 2007). 928. Id. at 494. 929. See Chamilia LLC v. Pandora Jewelry LLC, 85 U.S.P.Q.2d 1169 (S.D.N.Y. 2007). 172 Vol. 99 TMR alleged misrepresentations identified by the plaintiff had been made either orally at jewelry trade shows or in telephone conversations with jewelry retailers. When the defendant moved for summary judgment on the ground that the statements had not constituted commercial advertising or promotion, the court held that “no minimum number of statements is required. Rather, the ‘touchstone of whether a defendant’s actions may be considered “commercial advertising or promotion” under the Lanham Act is that the contested representations are part of an organized campaign to penetrate the relevant market.’” 930 Applying this standard, the court noted that “[w]hile neither party has produced evidence of the precise size of the jewelry market or the number of potential jewelry retailers, it is clear that the market involves hundreds, if not thousands, of customers.” 931 Under these circumstances, no rational jury could find that the six conversations challenged by the plaintiff fell within the scope of Section 43(a). 932 Other plaintiffs had better luck, 933 including one that provided consulting services to manufacturers of glass floats. 934 Its complaint alleged that a pair of its competitors had sent letters to at least two such manufacturers expressing “grave concerns about the ownership of the float technology being used” by the manufacturers and urging them to “consider the history of those involved.” 935 Rather than answering on the merits, the defendants moved to dismiss for failure to state a claim, arguing that the plaintiff had insufficiently alleged that they had engaged in actionable advertising and promotion. The court rejected the two underlying bases of this theory in short order. It first dismissed the argument that the primary communication at issue had not promoted the defendants’ services, holding instead that “the unmistakable meaning and intent of the letter is the assertion that Defendants own the technology in question and are more competent and trustworthy consultants than Plaintiff as to its implementation.” 936 Unconvinced by the defendants’ assertion that the letters had not been widely disseminated enough to constitute 930. Id. at 1176-77 (quoting Fashion Boutique of Short Hills, Inc. v. Fendi USA, Inc., 314 F.3d 48, 57 (2d Cir. 2002)). 931. Id. at 1178. 932. See id. at 1178-79. 933. See Healthport Corp. v. Tanita Corp. of Am., 563 F. Supp. 2d 1169, 1178-79 (D. Or. 2008) (finding that defendants had engaged in commercial advertising and promotion based on appearance of literally false statements on defendants websites and accessibility of websites to public). 934. See Int’l Techs. Consultants, Inc. v. Stewart, 554 F. Supp. 2d 750 (E.D. Mich. 2008). 935. Quoted in id. at 754. 936. Id. at 755-56. Vol. 99 TMR 173 advertising, it next held that “a single communication may be sufficient to meet the definition where the relevant market for the goods and services involved is small.” 937 A different plaintiff, this one in the Ninth Circuit, successfully challenged a PowerPoint slide presentation prepared by the defendant, which was disseminated anonymously to existing and prospective customers of the plaintiff. 938 Rejecting the defendant’s argument that the circulation of the presentation was not the use of an advertisement in commerce, the court noted that: The Ninth Circuit has held that representations may be considered advertisements if they are 1) commercial speech; 2) by a defendant who is in commercial competition with plaintiff; 3) for the purpose of influencing consumers to buy defendant’s goods or service. While the representations need not be made in a classic advertising “campaign” but may consist instead of more informal types of “promotion,” the representations 4) must be disseminated sufficiently to the relevant purchasing public to constitute “advertising” or “promotion” within that industry. 939 Applying this test without extended discussion, the court held that “Plaintiff has demonstrated a fair likelihood of success on the merits of its Lanham Act false advertising claim.” 940 Another opinion rejected the argument that a label approved by the Food and Drug Administration for packaged poultry could not qualify as an advertisement within the meaning of Section 43(a). 941 Rejecting the defendant’s motion to dismiss the complaint for failure to state a claim, the court noted of the language approved by FDA that “[p]oint-of-purchase materials that merely restate the language approved for the label cannot fairly be characterized as advertising.” 942 Still, however, “point-of-purchase materials that may well be considered labeling . . . often contain images and promotional slogans in conjunction with the language approved for the label. This sort of labeling is merely advertising 937. Id. at 758. On this point, the plaintiff argued that the relevant market consisted of only four to six float glass manufacturers in any given year, while the defendants claimed that the actual number was in the 20 to 25 range. The court found that the difference between these estimates was irrelevant: “Even if the world-wide market is as large as Defendants suggest, a single engagement for the construction of a float glass facility would, in my view, represent a significant penetration of the relevant market.” Id. at 758-59. 938. See SuccessFactors, Inc. v. Softscape, Inc., 544 F. Supp. 2d 975 (N.D. Cal. 2008). 939. Id. at 982 (quoting Rice v. Fox Broad. Co., 330 F.3d 1170, 1181 (9th Cir. 2003)). 940. Id. at 983. 941. See Sanderson Farms, Inc. v. Tyson Foods, Inc., 549 F. Supp. 2d 708 (D. Md. 2008). 942. Id. at 717. 174 Vol. 99 TMR by another name.” 943 Dismissal was therefore inappropriate because “[f]alse and misleading images and slogans contained in a magazine advertisement are no less false and misleading, and consequently no less actionable under the Lanham Act, when they are transposed onto a piece of cardboard and placed in the poultry section of a grocery store.” 944 (2) False or Misleading Statements of Fact i. “Puffery” Advertising by a provider of copying services that it could deliver “flexibility” in its “cost-per-copy” contracts and that it would lower copying costs led its competitors to allege in a lawsuit that it had engaged in false advertising. 945 The district court concluded that these statements were nonactionable “puffery,” and the Ninth Circuit affirmed. The appellate court held that “[a] statement is considered puffery if the claim is extremely unlikely to induce consumer reliance. Ultimately, the difference between a statement of fact and mere puffery rests in the specificity or generality of the claim.” 946 Specifically, “a statement that is quantifiable, that makes a claim as to the ‘specific or absolute characteristics of a product,’ may be an actionable statement of fact while a general, subjective claim about a product is nonactionable puffery.” 947 Under an application of these principles, the statement in question was not sufficiently quantifiable as to be a basis for liability: “Rather, it is a general assertion that [the defendant] provides its customers with low costs and with flexibility. That kind of general assertion is classic puffery.” 948 A challenge to a defendant’s promotion of the websites it designed for real estate agents as “worry-free” and “automatic” similarly fell victim to a finding of nonactionable puffery. 949 Focusing only on the former description, the court granted the defendant’s motion for summary judgment on the ground that “[t]he promise that [the defendant’s] websites will alleviate ‘worry’ by generating leads is not an objectively measurable claim about [the defendant’s] product. Rather, the promise is ‘broad, vague, 943. Id. 944. Id. 945. See Newcal Indus. v. IKON Office Solutions, Inc., 513 F.3d 1038 (9th Cir. 2008). 946. Id. at 1053. 947. Id. (quoting Cook, Perkiss & Liehe, Inc. v. N. Cal. Collection Serv., Inc., 911 F.2d 242, 245 (9th Cir. 1990)). 948. Id. 949. See ConsulNet Computing Inc. v. Moore, 84 U.S.P.Q.2d 1640 (E.D. Pa. 2007). Vol. 99 TMR 175 and commendatory.’” 950 As a consequence, “[the defendant’s] alleged false statement is . . . mere puffery and therefore not actionable under the Lanham Act.” 951 Although not expressly referring to the challenged advertising as puffery, a different court granted a defense motion to dismiss in an action grounded in allegations of antitrust violations and utility patent infringement. 952 In the midst of negotiating with the plaintiffs, a third party was presented with a cease-and-desist letter suggesting that the plaintiffs’ products infringed patents owned by the defendants. Applying Ohio law, the court observed that the inquiry into whether a challenged statement was either a protected opinion or an actionable factual assertion properly should turn on four issues: “‘(1) the specific language used in the assertion, (2) whether the statement is verifiable, (3) the general context of the statement, and (4) the broader context in which the statement appears.’” 953 Without an extended analysis of these factors, the court held that both the plaintiffs’ threats to sue in the first instance and their prediction that they would prevail on the merits of those claims constituted nonactionable statements of opinion. 954 A final case in which puffery was found was brought by an individual plaintiff who hawked advice on a public online forum on how to seduce women. 955 The plaintiff alleged that the defendants had maligned him on the public forum, as well as doing so on private websites that broadcast information on the plaintiff’s mental health and writing abilities and encouraged other participants in the industry to avoid contact with him. The court proved receptive to a defense motion to dismiss for failure to state a claim. It first explained that “[o]nly statements of fact capable of being proven false are actionable under the Lanham Act because, when personal opinions on nonverifiable opinions are given, the recipient is likely to assume only that the communicator believes the statement, not that the statement is true.” 956 It then applied this standard to the facts before it, holding that “[t]he allegations under which plaintiff seeks relief under the Lanham Act speak more to name calling and personal opinions regarding plaintiff, rather than false and misleading statement[s] regarding 950. Id. at 1649 (quoting Castrol Inc. v. Pennzoil Co., 987 F.2d 939, 945 (3d Cir. 1993)). 951. Id. 952. See White Mule Co. v. ATC Leasing Co., 540 F. Supp. 2d 869 (N.D. Ohio 2008). 953. Id. at 895 (quoting Ne. Ohio Coll. of Massotherapy v. Burek, 759 N.E.2d 869, 869 (Ohio Ct. App. 2001)). 954. See id. 955. See Parker v. Learn the Skills Corp., 530 F. Supp. 2d 661 (D. Del. 2008). 956. Id. at 679. 176 Vol. 99 TMR defendants’ products or plaintiff’s products. Indeed, many of the statements are juvenile.” 957 Not all defense claims of puffery resulted in the dismissal of false advertising claims, at least as a matter of law. In one case in which the plaintiff’s claims were allowed to proceed to trial, the challenged representations were that the defendant’s vinyl fencing came with the “strongest warranty” and was “most weatherable.” 958 On the defendant’s motion for summary judgment, the court dismissed the plaintiff’s claims as to the former statement, concluding that it was “puffing that does not violate the Lanham Act.” 959 As to the latter, however, the court noted that the focus of the defendant’s overall advertising was that its products were resistant to yellowing. Because this claim was grounded in test results, and because of the availability of industry standards on the subject, the plaintiff’s objections to the defendant’s “most weatherable” representation survived summary judgment. 960 ii. Literally False Claims Findings of literal falsity were relatively rare, but they did occur, 961 especially in disputes between manufacturers of medical devices. Affirming entry of a preliminary injunction in one such case, the Eleventh Circuit held that the district court had not clearly erred in determining that two statements disseminated in interstate commerce by manufacturers of a spinal “traction” device were literally false. 962 The first statement was that the defendants were affiliated with NASA; as it turned out, the only tie between them was that one engineer working on the defendants’ device had NASA training. The second was that the defendants’ device been “approved” by the Food and Drug Administration when, in fact, the device was eligible only for FDA “clearance.” 963 Having ratified the finding of literal falsity below, the appellate court then concluded that the statements were material to consumer purchasing 957. Id. 958. See Outdoor Techs. Inc. v. Vinyl Visions LLC, 83 U.S.P.Q.2d 1418 (S.D. Ohio 2006). 959. Id. at 1421. 960. See id. at 1422-23. 961. See, e.g., Schlotzsky’s, Ltd. v. Sterling Purchasing & Nat’l Distrib. Co., 520 F.3d 393, 403 (5th Cir. 2008) (affirming entry of permanent injunction based on district court’s finding of literally false advertising). 962. See N. Am. Med. Corp. v. Axiom Worldwide, Inc., 522 F.3d 1211, 1225 (11th Cir. 2008). 963. See id. Vol. 99 TMR 177 decisions, largely on the basis of letters from physicians expressing concerning that the defendants’ claims had been questioned. 964 A district court similarly found claims relating to another device used in the medical field to be literally false. 965 One subject of the plaintiff’s ire was nothing more than the defendants’ use of two marks determined to belong to the plaintiff; in finding this use to be literally false advertising, the court reached an outcome that presumably would render any trademark infringement actionable false advertising as well. 966 Other findings of literal falsity by the court were on firmer doctrinal ground, however. Those related to a consortium of companies that had participated in the development of the device sold by the plaintiff. As did the plaintiff, the defendants produced their device according to the consortium’s specifications, but this did not justify claims that their device had been “validated” by the consortium: “[T]he evidence and multiple dictionary definitions show[] that an instrument is validated when it has been approved or confirmed valid and there is no evidence that [the defendants’ device] has been approved by the Consortium or any other body or even tested by [the defendants themselves].” 967 Promotional claims by yet another manufacturer of medical devices similarly resulted in findings of literal falsity. 968 The actionable nature of one set of claims, those relating to the educational credentials of the defendant’s principal, posed little difficulty to the court, as the defendant admitted that the claims were literally false. 969 Nevertheless, a different statement—that the defendant was marketing “the only metabolic analyzer patented in the United States and abroad for unequaled accuracy and validity in the prediction of human body composition”— required a more in-depth review that produced a finding of literal falsity for three reasons: First, if the statement means the [defendant’s device] is the only patented metabolic analyzer in the United States and abroad, that is a literally false statement . . . [because] other patented body composition analyzers can perform the same function. Second, if the statement means the [defendant’s device] is patented for unequaled accuracy and validity, or that it is the only one patented for those characteristics, that too is literally 964. See id. at 1225-26. 965. See MSP Corp. v. Westech Instruments, Inc., 500 F. Supp. 2d 1198 (D. Minn. 2007). 966. See id. at 1215. 967. Id. at 1216. 968. See Healthport Corp. v. Tanita Corp. of Am., 563 F. Supp. 2d 1169 (D. Or. 2008). 969. See id. at 1179. 178 Vol. 99 TMR false . . . [because the defendant] did not review patents for body composition analyzers when it created [its] advertisement and thus did not substantiate its assertion. More importantly, [the defendant’s] patents do not indicate the patents were awarded for “unequaled accuracy and validity.” Finally, if the [defendant’s] statement means [its device] is unsurpassed in accuracy and validity when compared to other body composition analyzers, [the defendant] cannot substantiate that claim. [The defendant’s] principals testified they did no comparative or tests to verify their product was “unsurpassed in accuracy and validity.” Although [the defendant] claims to rely on studies to substantiate [its] claims, those studies simply do not support [the defendant’s] assertions. The studies merely conclude that [its device] is accurate. However, the studies do not suggest the [device] may be more accurate than competing products, nor do the studies compare the [device] with other body composition analyzers. 970 In cases in which outcomes were on the merits, 971 other courts reached more typical findings of nonliability when evaluating claims of literal falsity. 972 For example, one counterclaim plaintiff fell short in its attempt to demonstrate that the counterclaim defendant’s electronic stun guns had been falsely advertised as nonlethal. 973 Proffered expert witness testimony to this effect was excluded, however, which left the counterclaim plaintiff only with documentary evidence that skeletal muscle and respiratory nerves were “responsive” to shocks delivered by all manufacturers’ devices and that some deaths had occurred “proximate” to the use of the counterclaim defendant’s devices. 974 Because the counterclaim plaintiff’s showing failed to establish a cause and effect relationship between use of the counterclaim defendant’s devices 970. Id. 971. For examples of courts declining to resolve allegations of literally false advertising as a matter of law, see Gristede’s Foods, Inc. v. Unkechauge Nation, 532 F. Supp. 2d 439, 450 (E.D.N.Y. 2007) (declining to grant motion to dismiss for failure to state a claim); Bassett Seamless Guttering, Inc. v. GutterGuard, LLC, 501 F. Supp. 2d 738, 745-46 (M.D.N.C. 2007) (declining to grant defense motion for summary judgment). 972. See, e.g., Midlothian Labs. v. Pamlab, L.L.C., 509 F. Supp. 2d 1095, 1097-98 (M.D. Ala. 2007) (rejecting claims that the marketing of a pharmaceutical product as the generic equivalent of a competitive product constituted false advertising); Outdoor Techs. Inc. v. Vinyl Visions LLC, 83 U.S.P.Q.2d 1418, 1423 (S.D. Ohio 2006) (rejecting theory that advertising of defendant’s product as having protective coating constituted literally false representation that defendant’s product was only product with such a coating). 973. See Taser Int’l Inc. v. Bestex Co., 84 U.S.P.Q.2d 1186 (C.D. Cal. 2007). 974. Quoted in id. at 1196. Vol. 99 TMR 179 and resulting mortality, the court held that the counterclaim defendant was entitled to summary judgment. 975 Another failed claim of literally false advertising arose out of the jewelry industry. 976 In prior litigation between the parties, the defendant had secured a consent injunction against the plaintiff’s imitation of jewelry manufactured and sold by defendant. The defendant capitalized on this victory by sending out letters to the trade advising it that the plaintiff was a “knock-off company” selling jewelry that was a “cheap imitation” of the defendant’s products. 977 The plaintiff argued that the defendant’s accusations were literally false, but the court disagreed. In granting the defendant’s motion for summary judgment, it held that “[the plaintiff] in fact signed a consent decree . . . where it admitted to creating goods that infringed on Defendant’s designs. Thus, no reasonable juror could find that the description of Plaintiff as a ‘knock-off company’ is false.” 978 A final defense verdict of nonliability as a matter of law came in an action in which the parties were directly competitive designers of web sites for real estate agents. 979 The defendant had represented to potential clients that 10.5 percent of visitors to sites it designed submitted identifying information and that the sites made it “possible to triple your real estate sales while working no more than a standard 40-hour work week.” 980 The plaintiff challenged each of these statements as literally false but failed to identify adequate record evidence or testimony weighing in favor of such a conclusion in its response to the defendant’s motion for summary judgment. Drilling into the defendant’s advertisements, the court found that they limited the scope of the first statement to “top performing sites” the defendant had designed. 981 Moreover, although the plaintiff introduced testimony from two real estate agents who had not tripled their sales after engaging the plaintiff’s 975. See id. at 1196-97. An additional basis for the counterclaim plaintiff’s claim of false advertising, one relating to the cut-off circuitry of the counterclaim defendant’s devices, was also found wanting as a matter of law after the counterclaim plaintiff failed to describe the allegedly false advertising to the court’s satisfaction. See id. at 1197. 976. See Chamilia LLC v. Pandora Jewelry LLC, 85 U.S.P.Q.2d 1169 (S.D.N.Y. 2007). 977. Quoted in id. at 1176. 978. Id. (citation omitted). The plaintiff fared marginally better with an alternative claim that the defendant had falsely represented in commerce that its goods enjoyed patent protection. Based on competing testimony on whether the defendant had claimed ownership of an extant patent, as opposed to a mere pending application, the court held that it would be inappropriate to resolve the issue on summary judgment. See id. at 1175-76. 979. See ConsulNet Computing Inc. v. Moore, 84 U.S.P.Q.2d 1640 (E.D. Pa. 2007). 980. Quoted in id. at 1647. 981. Id. at 1648. 180 Vol. 99 TMR services, the court held that this showing failed to demonstrate that such an increase was not “possible.” 982 iii. Accurate, But Misleading, Claims Allegations that a defendant has disseminated implied falsehoods in commerce typically must be supported by survey evidence of the advertising’s materiality to consumers. 983 The most interesting case by far over the past year to address this requirement was brought by the purveyors of the “Angus Burger” against a competitor whose television commercials relied heavily on the unfortunate phonetic similarity between “Angus” and “anus.” 984 Taking issue with the commercials’ suggestion that the meat in their burgers came from a portion of the bovine anatomy not typically consumed by humans, the plaintiffs sought to demonstrate its entitlement to a preliminary injunction by relying on a “pilot survey” as extrinsic evidence of deception. As described by the court, “[t]he survey generally asked consumers to select one of four potential answers to . . . questions posed about what the commercials said.” 985 This methodology, the court concluded, fell short of the mark: Plaintiffs’ survey uses leading and suggestive questions, and consumers were not permitted to articulate their own impressions of the commercials. Typically, consumer perception surveys begin with open-ended questions that permit consumers to identify the primary message of a commercial and any source of deception. In Plaintiffs’ survey, the questions were unfairly framed as to beg the results that Plaintiffs ultimately received. . . . By providing the consumers with the suggested response, Plaintiffs increased the likelihood of biased results. Further, Plaintiffs’ survey is worded in such a way as to obscure whether any inference suggested by the commercial was negated because the consumer understood the joke. These deficiencies . . . weaken the relevance and the credibility of the survey evidence to the point where it sheds little if any light on the issue of [deception]. 986 Not all claims of false-by-implication claims fell on deaf judicial ears, however. In one case producing a preliminary 982. See id. at 1649. 983. See generally S & L Vitamins, Inc. v. Australian Gold, Inc., 521 F. Supp. 2d 188, 208-10 (E.D.N.Y. 2007). 984. See CKE Rest. v. Jack in the Box, Inc., 494 F. Supp. 2d 1139 (C.D. Cal. 2007). 985. Id. at 1144. 986. Id. at 1144-45 (record citation omitted). Vol. 99 TMR 181 injunction, the plaintiff manufactured a device used in the pharmaceutical industry according to specifications developed by a consortium of companies. 987 Using specifications developed by the consortium, the defendants manufactured a competing device, which they promoted with numerous references to the consortium and to a peer-reviewed study that reported test data for the plaintiff’s product. The court agreed with the plaintiff that these practices were “false by necessary implication” and therefore actionable. 988 Despite this conclusion, the court improbably found that the representations were also literally false and therefore did not require a showing of materiality to be enjoined. 989 (3) Causation and Likelihood of Injury The causation prong of a prima facie case for false advertising is one that is addressed with comparative infrequency, 990 but it is nevertheless one that plaintiffs should take seriously. 991 One opinion driving that point home came in a dispute between several restaurant chains, one of which had launched television commercials ridiculing the others’ sale of hamburgers made with Angus beef. 992 To prove the materiality of the commercials to consumer purchasing decisions, the plaintiffs introduced survey evidence, which they claimed also demonstrated the actual harm they had suffered. The court disagreed, holding instead that: While the Court accepts that Plaintiffs may show that [the challenged commercials] are relevant to a consumer, Plaintiffs’ survey does not adequately support Plaintiffs’ contention that they are likely to be harmed. In fact, Plaintiffs’ survey establishes that consumers are not as unsophisticated and gullible as Plaintiffs suggest. While Plaintiffs’ survey indicates that 17% of consumers were less likely to buy hamburgers made with Angus beef, the survey also revealed that 14% of consumers were more likely to buy hamburgers made with Angus beef. This result undermines any interpretation of the 987. See MSP Corp. v. Westech Instruments, Inc., 500 F. Supp. 2d 1198 (D. Minn. 2007). 988. See id. at 1216-17. 989. See id. at 1217. 990. See, e.g., id. (finding, in cursory analysis, injury arising from defendants’ “falsely marketing a direct[ly] competit[ive] . . . device”). 991. See, e.g., Florczak v. Oberriter, 857 N.Y.S.2d 308, 310 (N.Y. App. Div. 2008) (affirming entry of summary judgment of nonliability on false advertising claim under New York law based on plaintiff’s failure to prove damage caused by defendants’ alleged conduct). 992. See CKE Rest. v. Jack in the Box, Inc., 494 F. Supp. 2d 1139 (C.D. Cal. 2007). 182 Vol. 99 TMR survey as establishing that Plaintiffs are significantly harmed. 993 The court was equally unsympathetic to the plaintiffs’ argument that actual harm could be presumed as a matter of law because the commercials in question were comparative advertising. Although acknowledging opinions applying such a rule, the court noted that it was restricted to cases in which the defendants’ advertising made direct references to the plaintiffs’ products. In contrast, “[h]ere, there is no such direct comparison to Plaintiffs’ product. The challenged commercials merely refer to ‘our competitor’s product.’ While a non-comparative commercial may produce a valid claim against the entity making the statement, such a commercial does not carry with it [a] presumption of harm. . . .” 994 Affirming a jury finding of liability, the Fifth Circuit was far more receptive to a plaintiff’s claims of false advertising. 995 The jury awarded $350,000 in actual damages, but the district court struck the award as unsupported by the record, leading the defendants to argue that the finding of liability in the first instance could not stand. The Fifth Circuit agreed with the defendant that “at least the likelihood of injury must be proven in this case even if only injunctive relief is to be ordered.” 996 Nevertheless, it also noted that “the injury requirement under Section 43(a) can be satisfied even though a party fails to establish a specific amount of actual loss.” 997 Because the record demonstrated that the defendant had intended to “maximiz[e] [the defendant’s] income at the expense of others including [the plaintiff]” the court held that “[t]he district court did not err in awarding injunctive relief without finding a precise measure of monetary damages.” 998 (4) Statements Related to the Enforcement of Patent Rights Counterclaims for false advertising are routine in patent infringement suits in which the patentee has disseminated information on the suit to the trade or to the defendant’s customers. The Federal Circuit has long held that federal patent 993. Id. at 1145. 994. Id. 995. See Schlotzsky’s, Ltd. v. Sterling Purchasing & Nat’l Distrib. Co., 520 F.3d 393 (5th Cir. 2008). 996. Id. at 401. 997. Id. 998. Id. Vol. 99 TMR 183 law bars the imposition of liability for publicizing a patent in the marketplace unless the patent holder acted in bad faith, and that state law causes of action against the same conduct are preempted if the patentee acted in good faith; 999 thus, “a patentee with a good faith belief that its patents are being infringed must be allowed to make its rights known to a potential infringer. . . .” 1000 Likewise, the Supreme Court has held that the imposition of liability grounded in prior claims of copyright infringement is inappropriate unless (1) “the [prior] lawsuit must be objectively baseless in the sense that no reasonable litigant could realistically expect success on the merits”; and (2) in initiating the prior proceedings, the defendant had a subjective intent to injure the plaintiff. 1001 These principles were applied in several contexts over the past year. One false advertising case arose out of an earlier International Trade Commission proceeding brought by the defendant. 1002 In it, the Federal Circuit held that the defendant’s partial success before the ITC precluded liability for its having publicized its claims. It therefore affirmed the district court’s entry of summary judgment in the defendant’s favor on the ground that “when an underlying infringement suit was not unsuccessful, there is no basis to determine that the plaintiff in that suit lacked probable cause or, as it applies to the present situation, had no objective basis to claim infringement before filing suit.” 1003 A similar result was obtained in a Ninth Circuit appeal. 1004 In an earlier action, the defendants had sued the plaintiffs for utility patent infringement but had dropped their allegations after adverse claim construction rulings. Following the dismissal of the action, the plaintiffs (and former defendants) filed a lawsuit of their own, alleging that the accusations of patent infringement made to the trade by the original plaintiffs and their counsel constituted false advertising under Section 43(a), as well as malicious prosecution and a violation of federal antitrust law. The district court dismissed these claims as a matter of law, and the Ninth Circuit affirmed in an application of Federal Circuit doctrine. In particular, it held that the requirement of bad faith applied with equal force to the defendants’ counsel in the original action on the ground that “plaintiffs offer no good reason why the 999. See, e.g., Zenith Elecs. Corp. v. Exzec, Inc., 182 F.3d 1340, 1355 (Fed. Cir. 1999). 1000. TruePosition, Inc. v. Andrew Corp., 507 F. Supp. 2d 447, 461 (D. Del. 2007). 1001. Prof. Real Estate Inv., Inc. v. Columbia Pictures Indus., 508 U.S. 49, 60 (1993). 1002. See Dominant Semiconductors Sdn. Bhd. v. Osram GmbH, 524 F.3d 1254 (Fed. Cir. 2008). 1003. Id. 1262-63. 1004. See Fisher Tool Co. v. Gillet Outillage, 530 F.3d 1063 (9th Cir. 2008). 184 Vol. 99 TMR bad-faith requirement should apply only to the patent-holder and not also to those who act in concert with him to enforce his patent rights.” 1005 Summary judgment of nonliability had therefore been appropriate because “[the] [p]laintiffs haven’t presented any evidence that [the] defendants drafted or forwarded the letters [alleging infringement] in bad faith.” 1006 Finally, the Federal Circuit itself had the opportunity to apply its own case law in an appeal from the denial of a preliminary injunction against the dissemination of allegations of patent infringement. 1007 As it had before the district court, the counterclaim plaintiff asserted on appeal that the patentee had acted in bad faith by using “sham” litigation against a third party to overturn a finding by the Board of Patent Appeals and Interferences that the patentee had suppressed, concealed, or abandoned his invention. The gravamen of the counterclaim plaintiff’s claim was that the patentee had fraudulently procured a settlement with the third party, pursuant to which the third party would agree not to contest a motion to vacate the Patent Board’s opinion. Holding that the district court had not abused its discretion by refusing to enter preliminary relief, the Federal Circuit examined the record of the litigation against the third party to conclude, among other things, that “[t]he fact that both [the plaintiff] and [the third party] took from the settlement something of value points to a constructive, mutually beneficial resolution to a legitimate dispute.” 1008 (5) Statements Related to Copyright Rights One plaintiff articulated a novel theory of liability for false advertising, but the Ninth Circuit wasn’t biting. 1009 The parties were competitive producers and sellers of karaoke recordings. Objecting to the defendants’ representations that their recordings were fully licensed by the owners of the copyrights covering the underlying works, the plaintiff asserted that the defendants had misrepresented in interstate commerce the nature, characteristics, and qualities of the recordings. The district court dismissed this claim, and the Ninth Circuit affirmed. According to the appellate court, “[c]onstruing the Lanham Act to cover misrepresentations about copyright licensing status . . . would allow competitors engaged in the distribution of copyrightable materials to litigate 1005. Id. at 1068. 1006. Id. 1007. See Judkins v. HT Window Fashion Corp., 529 F.3d 1334 (Fed. Cir. 2008). 1008. Id. at 1340. 1009. See Sybersound Records, Inc. v. UAV Corp., 517 F.3d 1137 (9th Cir. 2008). Vol. 99 TMR 185 the [alleged] underlying copyright infringement when they have no standing to do so. . . .” 1010 d. Other Section 43(a) Claims As usual, the broad language of Section 43(a) led plaintiffs to articulate a number of imaginative causes of action based on the statute, one of which was summarily disposed of by the Ninth Circuit. 1011 Objecting to the plaintiff’s claim of trademark rights to the FREECYCLE mark for the online coordination of recycling services, the defendant began to advocate the generic use of the word and to encourage third parties to write to the USPTO urging the agency to reject the plaintiff’s pending application. This led the plaintiff to assert that the defendant had “disparaged” the plaintiff’s mark in violation of Section 43(a). Vacating a preliminary injunction to the extent that it had been based on this theory, the appellate court held that “no such claim exists under the Lanham Act.” 1012 Moreover, even if there were such a claim, the court noted that the defendant had done nothing more than to express a nonactionable opinion of the mark’s unprotectability. 1013 It then held that: [T]rademark owners are free (and perhaps wise) to take action to prevent their marks from becoming generic and entering the public domain—e.g., through a public relations campaign or active policing of the mark’s use. The Lanham Act itself, however, contains no provision preventing the use of a trademarked term in its generic sense. . . . [T]he use of a mark in its generic sense is actionable under the Lanham Act only when such use also satisfies the elements of a specified cause of action—e.g., infringement, false designation of origin, false advertising, or dilution. [The plaintiff’s] mere frustration with [the defendant’s] opinion and frustration with his activities cannot render [the defendant] liable under the Lanham Act. 1014 6. Cybersquatting Claims a. In Rem Actions As usual, there were fewer in rem actions under the ACPA than their in personam counterparts, but one court hearing such a 1010. Id. at 1144. 1011. See Freecycle Network, Inc. v. Oey, 505 F.3d 898 (9th Cir. 2007). 1012. Id. at 904. 1013. Id. at 904-05. 1014. Id. at 906 (citations omitted). 186 Vol. 99 TMR cause of action broke new ground in identifying a basis for a finding of a bad faith intent to profit that had not been previously recognized in reported opinions. 1015 That basis was the association of copycat, or “phishing” websites associated with the challenged domain names. Particularly when coupled with the confusing similarity between the plaintiffs’ marks and the dominant portion of the domains, the court had little difficulty concluding as a matter of law that “[t]he Defendant Domain Names are being used to deceive and divert Internet users seeking [the plaintiffs’] products or services.” 1016 b. In Personam Actions To recover under the ACPA in an in personam action, a plaintiff must demonstrate that: (1) its mark is either distinctive or famous; (2) the challenged domain is identical to, likely to be confused with, or likely dilutive of its mark; and (3) the defendant acted with a bad faith intent to profit from the plaintiff’s mark when registering the challenged domain. 1017 Although some courts gloss over them, 1018 these requirements are separate and independent from each other, which means that a plaintiff’s failure to demonstrate that the defendant had acted in bad faith obviates the need to consider the other prerequisites for relief. 1019 In one case driving home this point, the court credited testimony by the defendant’s principal, an Australian resident, that he was unaware of the plaintiff’s use of its claimed mark in New Jersey at the time he registered the challenged domain on the defendant’s behalf. 1020 The court therefore held that “the ACPA dictates that [the defendant] shall not be liable under the Act because there is no bad faith intent.” 1021 The Tenth Circuit reached a similar holding on a different set of facts. 1022 Taking issue with the plaintiff’s dissemination of information critical of his church, an individual defendant in the 1015. See Atlas Copco AB v. Atlascopcoiran.com, 533 F. Supp. 2d 610 (E.D. Va. 2008). 1016. Id. at 614. 1017. See Vista India v. Raaga, LLC, 501 F. Supp. 2d 605, 621 (D.N.J. 2007). 1018. See, e.g., Maui Land & Pineapple Co. v. Ewing, 549 F. Supp. 2d 1253, 1256 (D. Haw. 2008) (entering default judgment of liability based only on finding that “Defendant has engaged in cyberpiracy in violation of 15 U.S.C. § 1125(d) by registering an identical or confusingly similar domain name”). 1019. See id. at 621; see also Lulu Enters. v. N-F Newsite LLC, 85 U.S.P.Q.2d 1367, 1372 (E.D.N.C. 2007); Gregerson v. Vilana Fin. Inc., 84 U.S.P.Q.2d 1245, 1250-51 (D. Minn. 2006). 1020. See Vista India, 501 F. Supp. 2d at 621. 1021. Id. at 622. 1022. See Utah Lighthouse Ministry v. Found. for Apologetic Info. & Research, 527 F.3d 1045 (10th Cir. 2008). Vol. 99 TMR 187 case registered several domain names “virtually identical” to marks used by the plaintiff. 1023 He then set up a website that used both the plaintiff’s mark and imagery reminiscent of that found on the plaintiff’s own site. Nevertheless, in affirming entry of summary judgment in the favor of all the defendants, the Tenth Circuit rejected the plaintiff’s claims that the defendants had acted with the required bad faith intent to profit from his actions. As the appellate court explained, “[t]he district court determined that Defendants’ use was entirely noncommercial, and a fair use parody, and therefore found that Defendants did not use the mark in bad faith.” 1024 Coupled with the plaintiff’s failure to demonstrate the distinctiveness of its mark below, this determination merited the rejection of its cybersquatting claims as a matter of law. 1025 These holdings notwithstanding, not all plaintiffs alleging a bad faith intent under the ACPA went home empty-handed. Following a bench trial, one court weighed the factors expressly set forth in Section 43(d)(1)(A)(i) and found that those of record were “more or less evenly balanced.” 1026 It then pointed out, however, that “[t]he statute makes explicit . . . that the nine factors are not the only relevant factors a court may consider in determining whether a person had a bad faith intent to profit.” 1027 In particular, “[w]eighing heavily in [the plaintiff’s] favor is the fact that [the defendant] registered [the domain name in question] for the express purpose of keeping [the plaintiff]—the defendant’s] primary and, perhaps, only competitor—from using that domain name.” 1028 A finding of liability was therefore appropriate because “[a]lthough [the defendant] may not have intended to profit directly by its own use of the . . . domain name, it did intend to profit indirectly by harming its competitor.” 1029 Some courts declined to resolve the merits of cybersquatting claims at the pleading stage, but instead chose to defer their decisions until later. For example, in his opposition to a motion by the owner of the JUDICIAL WATCH mark for leave to amend its answer to assert a counterclaim for cybersquatting, the plaintiff argued that his savingjudicialwatch.org domain name was insufficiently similar to support a finding of liability. 1030 The court declined to reach such a result on the limited record before it, 1023. Id. at 1058. 1024. Id. 1025. See id. at 1057. 1026. Silver Ring Splint Co. v. Digisplint, Inc., 567 F. Supp. 2d 847, 856 (W.D. Va. 2008). 1027. Id. 1028. Id. 1029. Id. at 857. 1030. See Klayman v. Judicial Watch, Inc., 247 F.R.D. 10 (D.D.C. 2007). 188 Vol. 99 TMR however, just as it also rejected the plaintiff’s claims that the proposed counterclaim failed to aver the required bad faith intent by the plaintiff. As to this latter putative deficiency, the court noted that the defendant’s pleading claimed that the plaintiff had no rights to the JUDICIAL WATCH name, that he intended to divert the defendant’s supporters to his own website, and that he had purposefully concealed his identity when registering the domain. Of these allegations, the court remarked that “[e]ach . . . is relevant to one of the nine factors that the ACPA specifically provides courts may consider in determining whether a person has the requisite bad faith.” 1031 As a consequence, “the Court cannot determine on the current record whether [the plaintiff] actually had . . . bad faith, but can determine that [the defendant’s] cybersquatting claim might survive a motion to dismiss for failure to state a claim.” 1032 Leave to amend was therefore granted. 1033 In an opinion similarly denying the motions of several defendants to dismiss, a different court confronted the issue of whether certain defendants alleged either to engaged in the “parking” of domain names or to have been in privity with other defendants doing the parking fell within the scope of the ACPA. 1034 The plaintiffs’ allegations against several defendants clearly were sufficient to withstand scrutiny at the pleading stage. 1035 Those against the search service Google, however, arguably presented a closer issue, particularly as the plaintiffs did not aver that Google itself had registered any of the domains in question. The court denied Google’s motion to dismiss nonetheless, holding that “[t]he [complaint] alleges that Google pays registrants for its use of the purportedly deceptive domain names, provides domain performance reporting, participates in the tasting of domain names, uses semantics technology to analyze the meaning of domain names and select revenue maximizing advertisements and controls and maintains that advertising.” 1036 7. Recovery for Fraudulent Procurement of Registrations Section 38 of the Act provides a civil cause of action against “[a]ny person who shall procure registration in the Patent and 1031. Id. at 16. 1032. See id. 1033. See id. 1034. See, e.g., Vulcan Golf, LLC v. Google Inc., 552 F. Supp. 2d 752 (N.D. Ill. 2008). 1035. See id. at 763-64 (declining to determine whether moving defendants actually were registrants of domain names and whether those names were confusingly similar to the plaintiffs’ marks). 1036. Id. at 765. Vol. 99 TMR 189 Trademark Office of a mark by a false or fraudulent declaration or representation, oral or in writing, or by any false means.” 1037 To recover under this cause of action, the challenger to a registration must demonstrate: (1) [a] false representation regarding a material fact [or a failure to disclose a material fact]; (2) the registrant’s knowledge or belief that the representation is false (scienter); (3) the intention to induce action or refraining from action in reliance on the misrepresentation; (4) reasonable reliance on the misrepresentation; and (5) damages proximately resulting from that reliance. 1038 As one set of plaintiffs discovered, the appearance of the word “registration” in the statute is not without significance. 1039 Challenging the defendants’ application to register an allegedly infringing mark with the USPTO in a federal district court action, the plaintiffs invoked Section 38 as a basis of their entitlement to relief. Granting the defendants’ motion to dismiss, the court made short work of the plaintiffs’ claimed cause of action: “[W]hile it may be true that allegations of fraud on the USPTO may be raised at the TTAB level prior to the registration of a mark, it is nonetheless clear that [a] trademark owner must have actually procured a federal trademark registration in order for its deeds to be actionable in federal court under Section 38.” 1040 8. State and Common Law Claims a. Preemption of State Unfair Competition Causes of Action Although it is not the sole mechanism for a holding of preemption in the unfair competition context, 1041 Section 301 of the Copyright Act of 1976 1042 often stands front and center in preemption disputes. In particular, because it provides for the federal preemption of “all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope 1037. 15 U.S.C. § 1120 (2006). 1038. Hodgon Powder Co. v. Alliant Techsystems, Inc., 497 F. Supp. 2d 1221, 1234 (D. Kan. 2007) (quoting Stanfield v. Osborne Indus., 52 F.3d 867, 874 (10th Cir. 1995)) (second set of brackets in original). 1039. See Gaudreau v. Am. Promotional Events, Inc., 511 F. Supp. 2d 152 (D.D.C. 2007). 1040. Id. at 160. 1041. See, e.g., Holk v. Snapple Beverage Corp., 574 F. Supp. 2d 447 (D.N.J. 2008) (holding that Federal Food, Drug, and Cosmetic Act preempted plaintiff’s challenge to defendant’s advertising of beverages as “all natural” under New Jersey law). 1042. 17 U.S.C. § 301 (2006). 190 Vol. 99 TMR of copyright,” 1043 this provision often has proven a stumbling block to plaintiffs seeking to advance state law causes of action that might or might not be coextensive with copyright claims. 1044 The leading example of this phenomenon over the past year came in an action brought by the current members of the pop group The Romantics, who had sold the copyright to their hit song What I Like About You years earlier. 1045 When the copyright owner licensed use of the song for use in connection with a video game, the musicians and their corporation sued those involved in the game’s production and sale, alleging, inter alia, that a rerecorded version of the song appearing in the game violated their rights of publicity. Rejecting their motion for a preliminary injunction, the court held that “[h]ere, Plaintiffs’ ‘identity’ claims to the sound of the Song are essentially claims regarding the licensing of a copyrighted work, falling squarely within the ‘subject matter’ of the Copyright Act.” 1046 A dispute over musical rights led to another holding of preemption at the hands of the Ninth Circuit. 1047 Competitors of the plaintiff in the karaoke industry, the defendants advertised their recordings as having been fully licensed under copyright law. The plaintiff questioned the veracity of these representations and asserted that the defendants’ dissemination of them violated California unfair law. In reviewing the district court’s dismissal of the plaintiff’s claims on preemption grounds, the Ninth Circuit first observed that “the plaintiff lacks standing to bring a claim of copyright infringement.” 1048 From this premise, it concluded that: If we were to permit [the plaintiff’s] claims based on incidences of copyright infringement to proceed, [the plaintiff] would be litigating a third party copyright infringement claim under the guise of state law; to prevail on either the 1043. Id. 1044. See, e.g., Rutledge v. High Point Reg’l Health Sys., 558 F. Supp. 2d 611, 616-24 (M.D.N.C. 2008) (dismissing as preempted claims against alleged copiers of surgical instruction manual under the North Carolina Unfair and Deceptive Trade Practices Act); Jalbert v. Grautski, 554 F. Supp. 2d 57, 74-75 (D. Mass. 2008) (holding plaintiff’s Massachusetts conversion and unfair and deceptive trade practices act causes of action preempted as a matter of law); Through The Door Inc. v. J.C. Penny Co., 83 U.S.P.Q.2d 1538, 1541 (W.D. Wis. 2007) (granting defendants’ motion to dismiss misappropriation claim under Wisconsin law on ground that “[t]his claim is based on nothing more than improper copying and reuse of the [plaintiff’s] catalogs, precisely the same as the copyright claims”); Orange County Choppers, Inc. v. Olaes Enters., 497 F. Supp. 2d 541, 556 (S.D.N.Y. 2007) (holding New York state law misappropriation claim grounded solely in alleged copying of plaintiff’s creative expression preempted by Copyright Act). 1045. See Romantics v. Activision Publ’g, Inc., 532 F. Supp. 2d 884 (E.D. Mich. 2008). 1046. Id. at 889. 1047. See Sybersound Records, Inc. v. UAV Corp., 517 F.3d 1137 (9th Cir. 2008). 1048. Id. at 1150. Vol. 99 TMR 191 infringement claim or the claim based on misrepresentations of whether infringement occurred, [the plaintiff] would have to prove that copyright infringement occurred. Accordingly, the state law claims that necessarily depend on such a showing were properly dismissed. 1049 Nevertheless, not all preemption claims succeeded, including one arising from an Illinois cause of action that cried out for dismissal. 1050 The plaintiffs were associated with the deceased performer James Brown, who alleged that the defendant’s marketing of photographs of Brown violated the Illinois right of publicity statute. 1051 The defendant either owned the copyrights covering the photographs or otherwise had permission to license them. Because the statute applied to unauthorized uses of “an individual’s identity . . . on or in connection with the offering for sale or sale of a product, merchandise, goods, or services . . . for purposes of advertising or promoting products, merchandise, goods, or services,” 1052 the defendant argued that it was not selling a product, but was instead merely offering licenses to the photographs. Notwithstanding the obvious merit of this argument, the court improbably concluded that there was a “vast difference of opinion regarding the interpretation of what [the defendant] sells and the legal effect of such sales.” 1053 It then credited the plaintiffs’ argument that “the images of James Brown advertised for sale on [the defendant’s] Web site do, in fact, constitute fixed work on the Internet in that the ‘licenses’ result in a tangible photograph to the end user.” 1054 Because “it is possible that the photos as displayed on [the defendant’s] Internet Web page can be interpreted as tangible [products],” a holding of preemption was inappropriate. 1055 b. Right of Publicity Although the typical right of publicity claim turns on the allegedly unauthorized use of a plaintiff’s name or image, the cause of action can be used to protect other aspects of a plaintiff’s persona as well. 1056 Nevertheless, not everything qualifies for 1049. Id at 1151. 1050. See Brown v. ACMI Pop Div., 873 N.E.2d 954 (Ill. App. Ct. 2007). 1051. 735 ILCS 1075/1 et seq. (West 2008). 1052. Id. 1075/5. 1053. Brown, 873 N.E.2d at 962. 1054. Id. at 963. 1055. Id. 1056. See, e.g., Hauf v. Life Extension Found., 547 F. Supp. 2d 771, 777-78 (W.D. Mich. 2008) (sustaining right of publicity claim grounded in alleged misuse of personal story against motion to dismiss). 192 Vol. 99 TMR protection, as the members of the pop group The Romantics discovered. 1057 Objecting to the use of their hit song What I Like About You by a videogame manufacturer that had secured a license from the current copyright owner, the band members and their corporation sought a preliminary injunction on the theory that the song’s use violated their rights of publicity under Michigan law. Denying the requested relief, the court held that “Michigan law has never recognized [a] right of publicity in the sound of a voice, even if distinctive, nor has it recognized a right of publicity for a combination of voices, and thus Plaintiffs fail to state a cognizable claim for violation of the right of publicity.” 1058 A different, but equally creative, right of publicity claim also produced a restrictive application of the state law cause of action at issue. 1059 Having regularly performed in Times Square “wearing only a white cowboy hat, cowboy boots, and underpants, and carrying a guitar strategically placed to give the illusion of nudity,” 1060 the plaintiff had achieved great notoriety as “The Naked Cowboy.” To capitalize on his fame, the defendants purchased advertising on Times Square billboards “featuring a blue M & M [candy] dressed exactly like The Naked Cowboy, wearing only a white cowboy hat, cowboy boots, and underpants, and carrying a guitar.” 1061 Seeking to vindicate the alleged misappropriation of his persona, the plaintiff sued under the New York right of privacy statutes, 1062 only to have the court grant the defendants’ motion to dismiss for failure to state a claim. According to the court, “[t]he plain language of the [statutes] makes it clear that the statutory right to privacy does not extend to fictitious characters adopted or created by celebrities”; rather, they referred to “any person” and “any living person.” 1063 Dismissal was therefore appropriate because “[t]he Naked Cowboy is not a living person, but a character [the plaintiff] takes on while performing. The privacy statutes were not intended to protect a trademarked, costumed character publicly performed by a person.” 1064 In yet another failed right of publicity suit, a group of plaintiffs seeking to recover for the use of Marilyn Monroe’s image 1057. See Romantics v. Activision Publ’g, Inc., 532 F. Supp. 2d 884 (E.D. Mich. 2008). 1058. Id. at 888. 1059. See Burck v. Mars, Inc., 571 F. Supp. 2d 446 (S.D.N.Y. 2008). 1060. Id. at 448. 1061. Id. (internal quotation marks omitted). 1062. N.Y. Civ. Rights Law §§ 50-51 (McKinney 2008). 1063. Burck, 571 F. Supp. 2d at 453. 1064. Id. Vol. 99 TMR 193 on a T-Shirt similarly came up short. 1065 Following a tortured procedural history, the case wound up in federal court in the Southern District of New York, which addressed the issue of whether the actress’s successors in interest enjoyed post-mortem rights under New York, California, or Indiana law. The court held that they did not. As to New York law, the court noted that the relevant statute was available only to living persons, while the California and Indiana statutes 1066 had been passed years after Monroe’s death. Beyond holding that the post-mortem rights granted by the California and Indiana statutes could not be given retroactive effect, 1067 the court also relied on two estate law considerations in entering summary judgment of nonliability: (1) Monroe’s will did not reflect an intent to transfer her right of publicity; 1068 and (2) “a testator is presumed, as a matter of law, to know that he cannot dispose of property over which he has no testamentary power, including property he does not own at the time of his death.” 1069 Finally, a California district court confirmed that a misappropriation of identity claim under that state’s common law will not lie against the mere publication of an article with unfavorable commentary about, and photographs of, the plaintiff. 1070 The plaintiff was an venerable member of the Hawaiian surfing community, whose idiosyncrasies and criminal record were apparently well-known at least in some circles before the defendants’ article highlighted them. In granting the defendants’ motion for summary judgment, the court held that “[l]iability under this legal theory is generally limited to unauthorized use in connection with the promotion or advertisement of a product or service and not, as is the case here, for use in a magazine story. This is true even if the article was arguably motivated by [the magazine’s] desire for profits or tangentially results in increased income.” 1071 These outcomes were not characteristic of all right of publicity disputes. In a more traditional right of publicity dispute decided under New Hampshire law, the plaintiff objected to a false online profile of herself used by the defendants to promote their adult 1065. See Shaw Family Archives Ltd. v. CMG Worldwide Inc., 486 F. Supp. 2d 309 (S.D.N.Y. 2007). 1066. Ind. Code Ann. §§ 32-36-1-1-20 (West 2008); Cal. Civ. Code Ann. § 3344.1 (West 2008). 1067. See Shaw Family Archives, 486 F. Supp. 2d at 313-19. 1068. See id. at 317-18. 1069. Id. at 318. 1070. See Chapman v. Journal Concepts, Inc., 528 F. Supp. 2d 1081 (D. Haw. 2007). 1071. Id. at 1096. 194 Vol. 99 TMR websites. 1072 The defendants moved to dismiss the plaintiff’s complaint on the ground that it failed to aver that the defendants’ conduct had caused the plaintiff’s identity to lose value. Denying the motion, the court held that evidence of at least some quantifiable damage was not a prerequisite for relief; rather, “‘[s]ome damage to the commercial value of an identity is presumed once it is proved that [the] defendant has made an unpermitted use of some identifiable aspect of identity in such a commercial context that one can state that such damage is likely. . . .’” 1073 It did, however, note that a showing of commercial damage would ultimately be necessary for the plaintiff to recover monetary damages. 1074 The Eleventh Circuit interpreted Georgia law in a manner similarly favorable to a group of physicians who alleged that their identities had been misappropriated by preferred provider organizations to sell medical discount cards. 1075 The parties had a contractual relationship not described at length in the opinion, which had led the district court to conclude that the plaintiffs’ only remedy lay in a breach of contract action. The appellate court reversed, holding that Georgia law and that of other states as well “all recognize[] that a use outside the scope of the permission granted in a contract not only constitutes breach of contract, but also gives rise to an action by the licensor for invasion of privacy or infringement of the right of publicity.” 1076 A vacatur and remand were therefore appropriate. 1077 In an application of Pennsylvania statutory and common law, one district court confronted the question of whether a plaintiff alleging the unlawful use of his name must first establish that the name has commercial value. 1078 Although intimating that “[a]n allegation of commercial value may not be required,” 1079 the court ultimately held that it need not resolve the issue on the defendant’s motion to dismiss because the plaintiff’s complaint sufficiently alleged the commercial value the defendant argued was necessary. Among other allegations leading to this conclusion were those that the plaintiff had invested time in creating his reputation in the industry “from the early 1980s onward,” that the 1072. See Doe v. FriendFinder Network, Inc., 540 F. Supp. 2d 288 (D.N.H. 2008). 1073. Id. at 304 (quoting J. Thomas McCarthy, Rights of Publicity and Privacy § 3:2 (2d ed. 2007)) (first set of brackets in original). 1074. See id. 1075. See Rivell v. Private Health Care Sys., Inc., 520 F.3d 1308 (11th Cir. 2008). 1076. Id. at 1310. 1077. See id. at 1311. 1078. See Lewis v. Marriott Int’l, Inc., 527 F. Supp. 2d 422 (E.D. Pa. 2007). 1079. Id. at 428 n.6. Vol. 99 TMR 195 defendant had promoted the plaintiff’s name while employing him, and that the plaintiff had enjoyed commercial success in his line of work. 1080 Finally, the estate of Mickey Mantle and its executrix successfully established a violation of the late baseball player’s right of publicity, although the court also deferred until trial resolution of the issue of whether the plaintiffs’ claims were barred by laches. 1081 Prior to his death, Mantle entered into a contract with the defendants that authorized them to make a documentary film about him and to promote the film by using his name, biography, physical likeness, and voice, which the court collectively desribed as the “Mantle Indicia.” On the parties’ motions for summary judgment, the court determined that the defendants had exceeded their authority under the contract by: (1) manufacturing and selling goods that used the Mantle Indicia but did not refer to the film; (2) selling third-party merchandise that used the Mantle Indicia but did not refer to the film; (3) operating a website replete with references to Mantle but that did not mention the film “on approximately fifty percent of its pages”; and (4) the website’s description of itself as “The Official Mickey Mantle Website” and “The Official Licensed Website and Catalogue.” 1082 c. Other State Statutory and Common Law Unfair Competition Claims (1) Arizona Innovations in the water heater industry led to a clarification under Arizona law of the distinction between the torts of commercial defamation and product disparagement. 1083 Seeking to prevent erosion of their market share, the defendant manufacturers of gas-powered tankless water heaters ran advertising that pointed out alleged deficiencies in electric tankless water heaters. The advertising did not expressly mention the plaintiffs, who had invented the electric tankless water heater, and this led the court to dismiss the plaintiffs’ commercial disparagement cause of action on the ground that “[s]tatements about a type of product alone are not sufficient to support a claim for defamation against a manufacturer of such products.” 1084 Nevertheless, the court allowed the plaintiffs’ product disparagement claim to proceed with the explanation that 1080. Id. at 428. 1081. See Estate of Mantle v. Rothgeb, 537 F. Supp. 2d 533 (S.D.N.Y. 2008). 1082. See id. at 538-39. 1083. See Seitz v. Rheem Mfg, Co., 544 F. Supp. 2d 901 (D. Ariz. 2008). 1084. Id. at 908. 196 Vol. 99 TMR “[c]onsidering Plaintiffs’ status as the inventor of the electric tankless water heater, reasonable minds could find that the general statements about electric tankless water heaters were directed at Plaintiffs’ products.” 1085 (2) Colorado A Colorado federal district court had the occasion to clarify and apply that state’s unfair competition in an action brought by the operator of a website allowing access to insurance referrals and quotes from multiple insurance companies. 1086 The plaintiff alleged that a competitor and an individual defendant employed by the competitor had flooded the plaintiff’s website with requests for information from fictitious individuals, thereby misleading the insurance companies affiliated with the plaintiff into pursuing leads that would never yield business. Granting the defendants’ motion to dismiss, the court concluded that the Colorado common law of unfair competition required a demonstration that the public was likely to be deceived. Even if the insurance companies fell within this category, “the deception was of a very different nature from the deception of passing off or appropriation. It was simply the deception as to the bonafides of those who purported to use the [plaintiff’s] system.” 1087 (3) Illinois In an opinion addressing the scope of the Illinois Consumer and Deceptive Business Practices Act, 1088 a federal district court confirmed that a cause of action under that statute will lie only if the events underlying the claim occurred primarily and substantially in Illinois. 1089 The gravamen of the plaintiffs’ complaint was that defendants had engaged in a scheme to “park,” monetize, and sell domain names similar to marks owned by the plaintiffs. The complaint recited that each of the plaintiffs had “significant contacts” with Illinois, but it failed to aver that the defendants’ conduct had occurred in the state. 1090 As a consequence, the court dismissed the cause of action with leave to leave plaintiffs to replead. 1091 1085. Id. at 909. 1086. See NetQuote, Inc. v. Byrd, 504 F. Supp. 2d 1126 (D. Colo. 2007). 1087. Id. at 1132. 1088. 815 ICLS 510/2(a)(3) (West 2008). 1089. See Vulcan Golf, LLC v. Google Inc., 552 F. Supp. 2d 752 (N.D. Ill. 2008). 1090. See id. at 775. 1091. See id. Vol. 99 TMR 197 (4) New York As always, New York law proved to be fertile ground for unfair competition disputes. One federal district court confronted the issue of whether New York common law provided a remedy against the alleged unjust enrichment of defendants who had promoted the Russian nature of vodka actually produced in Latvia. 1092 On the defendants’ motion to dismiss, the court noted that “[t]o state a claim for unjust enrichment under New York Law, a plaintiff must allege the following: (1) the plaintiff conferred a benefit upon defendants, (2) that the defendants will obtain the conferred benefit without adequately compensating [the] plaintiff, and (3) ‘equity and good conscience require restitution.’” 1093 Although the court concluded that the plaintiffs had failed to satisfy the first prerequisite for relief, its dismissal of the plaintiffs’ claims relied most heavily on a wholly independent consideration not part of the standard doctrinal test for liability, namely, that the defendants’ advertising practices predated the plaintiffs’ market entry. According to the court, “[t]he proposition that a vodka, which has existed for approximately forty years longer than [the plaintiffs’] vodka, has ‘misappropriated’ the goodwill owed to [the plaintiffs] is ludicrous.” 1094 The New York statutory causes of action for deceptive trade practices and false advertising 1095 took center stage in a case brought by a retailer of cigarettes against several Native American tribes and their members based on the tribes’ advertising of reservation-sold cigarettes as “tax-free” or “cheap.” 1096 The court noted with respect to both statutes that “[t]o establish a prima facie case . . . a plaintiff must demonstrate that ‘(1) the defendant’s deceptive acts were directed at consumers, (2) the acts are misleading in a material way, and (3) the plaintiff has been injured as a result.’” 1097 The plaintiff’s claims were grounded in the theory that only Native Americans enjoyed the tax-free benefits that the defendants offered, and that the defendants’ advertising those benefits to non-Native Americans was false and misleading. Upholding the plaintiff’s complaint against a motion to dismiss, the court held that “to the extent that plaintiff’s allegations are true and the defendants advertise that their cigarettes are taxfree, this is misrepresentation, as it is likely to mislead the 1092. See Russian Standard Vodka (USA), Inc. v. Allied Domecq Spirits & Wine USA, Inc., 523 F. Supp. 2d 376 (S.D.N.Y. 2007). 1093. Id. at 385 (quoting Kaye v. Grossman, 202 F.3d 611, 616 (2d Cir. 2000)). 1094. Id. at 385-86. 1095. N.Y. Gen. Bus. Law §§ 349-50 (McKinney 2008). 1096. Gristede’s Foods, Inc. v. Unkechauge Nation, 532 F. Supp. 2d 439 (E.D.N.Y. 2007). 1097. Id. at 450 (quoting Maurizio v. Goldsmith, 230 F.3d 518, 521 (2d Cir. 2000). 198 Vol. 99 TMR consumer into believing that he or she need not pay taxes on purchased cigarettes.” 1098 As a consequence, “[the plaintiff] has properly alleged a misleading and deceptive act, practice or advertisement. . . .” 1099 (5) Ohio Federal district courts applying state unfair competition law causes of action often take the course of least resistance and hold that the state statute in question is coextensive with the Lanham Act. Such was the outcome in an application of the Ohio Deceptive Trade Practices Act, 1100 in which the court was confronted with the sale of goods bearing genuinely affixed marks but which had not been authorized for sale by the mark’s owner. 1101 Having found as a matter of law that this scenario rendered the defendants liable for having trafficked in goods bearing counterfeit marks under the Lanham Act, the court entered summary judgment in the plaintiff’s favor under state law, as well as on the ground that “the analysis under the Lanham Act claim is applicable to [the] plaintiff’s claim under the Ohio Deceptive Trade Practices Act.” 1102 A different opinion applying the same legislation confirmed that direct competition was not a prerequisite for protection. 1103 The counterclaim plaintiff owned a collective membership mark, which it alleged had been infringed in the course of a false representation by the counterclaim defendant that she had been credentialed by the counterclaim plaintiff. The counterclaim defendant moved for summary judgment on the theory that, because the parties were not direct competitors, no liability was possible under the state statute. Denying the motion, the court held the relevant issue to be whether the parties’ services were sufficiently related that they would be likely to be connected in the minds of potential purchasers. More specifically, “[t]he [counterclaim plaintiff] has demonstrated that although [it] does not itself perform the same services in connection with its mark, the services provided by its members are identical to those [the counterclaim defendant] was attempting to provide and/or maintain through her infringing use.” 1104 1098. Id. at 451. 1099. Id. 1100. Ohio Rev. Code Ann. § 4165.01 (West 2008). 1101. See FURminator, Inc. v. Kirk Weaver Enters., 545 F. Supp. 2d 685 (S.D. Ohio 2008). 1102. Id. at 691. 1103. See Vistein v. Am. Registry of Radiologic Technologists, 509 F. Supp. 2d 666 (N.D. Ohio 2007). 1104. Id. at 707. Vol. 99 TMR 199 In another somewhat less conventional dispute under Ohio law, the plaintiff owner of the utube.com domain name claimed that YouTube’s use of the YOUTUBE mark and youtube.com domain name was actionable as a trespass on chattels because it had led confused consumers to access the plaintiff’s website by mistake. 1105 Weighing YouTube’s motion to dismiss, the court noted that “[d]espite being a well-aged cause of action, trespass to chattels has been applied in the context of the Internet.” 1106 Nevertheless, it also held that “the focus of a trespass to chattel claim, although it involves something as amorphous as ‘the Internet,’ must still maintain some link to a physical object. . . .” 1107 The court rejected the argument that the plaintiff’s domain name constituted just such a physical object; rather, “[a] domain name is an intangible object, much like a street address or a telephone number, which, though it may ultimately point to an approximate or precise physical location, is without physical substance, and it is therefore impossible to make ‘physical contact’ with it.” 1108 In contrast, the computers used to host the plaintiff’s website were tangible objects within the meaning of the tort, but the plaintiff did not own them, and, additionally, any trespass on them that may had occurred had been undertaken by confused consumers, instead of YouTube. 1109 Because there were no allegations that YouTube had coerced or defrauded those consumers into contacting the host computers, the plaintiff’s trespass claim was deficient as a matter of law. 1110 The court then addressed the plaintiff’s claim that the YOUTUBE mark and youtube.com domain name were actionable nuisances under Ohio law. Reviewing past case law recognizing the tort of nuisance in disputes involving real property, the court dismissed this allegation as well for failure to state a claim on the grounds that “[the plaintiff] has provided virtually no legal support for its contention that a private nuisance can exist when no land is involved. Nor has [the plaintiff] shown any support for the proposition that a domain name, a website, or a computer that hosts a website somehow constitutes real property.” 1111 1105. See Universal Tube & Rollform Equip. Corp. v. YouTube Inc., 504 F. Supp. 2d 260 (N.D. Ohio 2007). 1106. Id. at 268. 1107. Id. 1108. Id. 1109. See id. 1110. See id. at 270. 1111. Id. 200 Vol. 99 TMR 9. Contributory Infringement and Vicarious Liability Unfair competition law recognizes two types of secondary liability—contributory infringement and vicarious liability. When a provider of online photographs of the “world’s most beautiful natural models” found itself victimized by the unauthorized reproduction and sale of its photographs, it took the unusual step of suing not the infringers themselves, but instead financial companies that had processed credit card transactions involving the allegedly infringing copies. 1112 According to the plaintiff, the defendants had received repeated notices of the plaintiff’s objections, but had failed to prevent further sales of the allegedly infringing goods. The district court held that the plaintiff had failed to state a claim, and the Ninth Circuit affirmed. Having first disposed of the plaintiff’s claims of secondary liability for copyright infringement, the appellate court noted that “[t]he tests of secondary trademark infringement are even more difficult to satisfy than those required to find secondary copyright infringement.” 1113 It then held: To be held liable for contributory trademark infringement, a defendant must have (1) “intentionally induced” the primary infringer to infringe, or (2) continued to supply an infringing product to an infringer with knowledge that the infringer is mislabeling the particular product supplied. When the alleged direct infringer supplies a service rather than a product, . . . the court must consider the extent of control exercised by the defendant over the third party’s means of infringement. .... Vicarious liability for trademark infringement requires a finding that the defendant and the infringer have an apparent partnership, have authority to bind one another in transactions with third parties or exercise joint ownership or control over the infringing product. 1114 The court concluded that the plaintiff’s allegations were indeed deficient as a matter of law under both theories. As to contributory infringement, the court held that the plaintiff had failed to aver facts sufficient to establish that the third parties in question had infringed the plaintiff’s mark, much less that the defendants had assisted them in doing so; moreover, the complaint was equally devoid of allegations that the defendants had any control over the third parties’ activities. And, as to vicarious 1112. See Perfect 10, Inc. v. VISA Int’l Serv. Ass’n, 494 F.3d 788, 793 (9th Cir. 2007), cert. denied, 128 S. Ct. 2871 (2008). 1113. Id. at 806. 1114. Id. at 807 (internal quotation marks and citations omitted). Vol. 99 TMR 201 infringement, the court rejected the plaintiff’s claim that there was a “symbiotic” relationship between the defendants and the third parties, rather than an arrangement that provided “a means of settling the resulting debits and credits among the [third parties] and the relevant consumers.” 1115 Accordingly, the court affirmed the dismissal of the plaintiff’s claims under the Lanham Act for failure to state claims upon which relief could be granted. 1116 The Eleventh Circuit proved similarly hostile toward a claim of secondary liability in a case brought by a manufacturer of rug adhesive tape against one of its former distributors. 1117 Rather than continuing to distribute the plaintiff’s goods, the defendant introduced a competing product, which it sold through the same retailers it had once used to market the plaintiff’s product. The record suggested that, following the defendant’s transition to its own product, there had been a period of time in which the retailers had commingled the parties’ goods and may have even associated the defendant’s goods with promotional materials bearing the plaintiff’s mark. Affirming entry of summary judgment in the defendant’s favor on the plaintiff’s claims of contributory infringement, the Eleventh Circuit noted that the plaintiff had failed to assert such a theory in its complaint. 1118 Of equal importance, the record contained no evidence of the defendant’s “knowing participation” in any infringement undertaken by the retailers. 1119 Nevertheless, at least some claims of secondary liability withstood scrutiny, especially at the pleading stage. 1120 For example, one defendant unsuccessfully sought the dismissal of infringement and dilution claims against it on the theory that it had merely provided customer care services in connection with infringing transactions negotiated by other defendants. 1121 The court held that the moving defendant’s conduct might well 1115. Id. at 808. 1116. See id. at 807-08. The plaintiff’s California state law unfair competition, false advertising, right of publicity, libel, and intentional interference with economic relations claims met the same fate for much the same reasons. See id. at 809-10. 1117. See Optimum Techs., Inc. v. Henkel Consumer Adhesives, Inc., 496 F.3d 1231 (11th Cir. 2007). 1118. See id. at 1244-45. 1119. See id. at 1246-47. 1120. See, e.g., Vulcan Golf, LLC v. Google Inc., 552 F. Supp. 2d 752, 770 (N.D. Ill. 2008) (denying motion to dismiss based on plaintiffs’ allegations that moving defendant was aware of infringement undertaken by parties with which moving defendant was in privity); ProteoTech, Inc. v. Unicity Int’l, Inc., 547 F. Supp. 2d 1174, 1179-80 (W.D. Wash. 2008) (declining to dismiss plaintiff’s allegations of contributory infringement, “[a]lthough the details are sparse”). 1121. See Medline Indus. v. Strategic Commercial Solutions, Inc., 553 F. Supp. 2d 979 (N.D. Ill. 2008). 202 Vol. 99 TMR constitute contributory infringement, especially in light of the plaintiff’s allegations that the services provided by the moving defendant included efforts to convince consumers calling its telephone lines not to revoke the transactions. It therefore declined to dismiss the action, holding instead that the plaintiff’s claims could proceed. 1122 10. Personal Liability “‘[P]ersonal liability for trademark infringement and unfair competition is established if [an individual] is a moving, active conscious force behind [the defendant corporation’s] infringement’” 1123 or, in other words, if the individual defendant is the alter ego of an infringing corporate defendant. 1124 One court applying this standard held an individual defendant liable for infringement as a matter of law, while at the same time holding that factual disputes precluded a similar finding with respect to another individual defendant. 1125 Addressing the role of the first individual defendant in infringement undertaken by a corporate defendant, the court noted that the individual had been “the president and sole shareholder of [the corporation], and the only individual with check writing authority on behalf of [the corporation].” 1126 At the same time, however, the court credited evidence and testimony that the second individual defendant had merely been a consultant for the corporation and therefore denied the plaintiff’s motion for summary judgment as to that defendant. 1127 The disposition of other summary judgment motions on the subject of personal liability also demonstrated the inherently factual nature of the inquiry. 1128 For example, a court hearing cross-motions for summary judgment concluded from the record that one individual defendant had “personally arranged” for the 1122. See id. at 991-92. 1123. Johnson & Johnson Consumer Cos. v. Aini, 540 F. Supp. 2d 374, 397 (E.D.N.Y. 2008) (quoting Bambu Sales, Inc. v. Sultana Crackers, Inc., 683 F. Supp. 899, 913 (E.D.N.Y. 1988)) (third set of brackets in original). 1124. See, e.g., Mad Dogg Athletics, Inc. v. NYC Holding, 565 F. Supp. 2d 1127 (C.D. Cal. 2008) (allowing post-judgment amendment to add owner of corporate defendant). 1125. See Johnson & Johnson, 540 F. Supp. 2d at 393-94. 1126. Id. at 393. 1127. See id. at 394. 1128. See, e.g., Univ. of Kan. v. Sinks, 565 F. Supp. 2d 1216, 1239-40 (D. Kan. 2008) (denying defense motion for summary judgment based on record evidence of individual creating and approving challenged T-shirt designs); Hit Entm’t, Inc. v. Nat’l Disc. Costume Co., 552 F. Supp. 2d 1099, 1106 (S.D. Cal. 2008) (holding, without extended analysis or references to record, that disputed factual issue prevented determination of individual defendants’ personal liability as a matter of law). Vol. 99 TMR 203 purchase of genuine goods originally manufactured by the plaintiff, the modification of those goods in a manner that rendered the marks on them counterfeit, and the subsequent sales of those goods without disclosure of the modifications. 1129 The court had little difficulty finding that defendant personally liable as a matter of law, but balked at doing the same for a second individual targeted by the plaintiffs. The second defendant was a 50 percent owner of the lead corporate defendant; nevertheless, his deposition failed to yield any testimony that he had been involved in, or approved of, the first defendant’s activities. Accordingly, resolution of the issue of the second defendant’s personal liability was deferred until trial. 1130 Finally, one individual defendant successfully staved off a motion for summary judgment in a counterfeiting action brought against him by a watch manufacturer. 1131 Otherwise self-employed as a professional poker player, the defendant took a job with the operators of an online retailer selling watches bearing counterfeit imitations of the plaintiff’s marks. Based on the defendant’s deposition testimony, the court found that “[n]inety percent of his work . . . entailed answering phone calls to his cell phone from [the retailer’s] customers”; his remaining responsibilities included purchasing two bags of watches from a wholesaler. 1132 Declining to accept as a matter of law the plaintiff’s argument that the defendant had been an active participant in the retailer’s unlawful activities, the court held that “[b]ased on the record evidence of Defendant’s limited role in the alleged infringement, a reasonable jury could find that Defendant was not the moving force in the decision to engage in infringement and did not cause the infringement to occur.” 1133 C. Counterfeiting Matters Defendants alleged to have trafficked in goods bearing counterfeit marks fared poorly in both criminal and civil proceedings. 1134 For example, an appeal to the Eleventh Circuit from a conviction for conspiracy to traffic in goods bearing counterfeit marks produced a relatively rare intersection of unfair 1129. See Cartier v. Aaron Faber, Inc., 512 F. Supp. 2d 165, 170 (S.D.N.Y. 2007). 1130. See id. 1131. See Rolex Watch U.S.A., Inc. v. Bonney, 546 F. Supp. 2d 1304 (M.D. Fla. 2008). 1132. Id. at 1306. 1133. Id. 1134. See, e.g., Magasouba v. Mukasey, 543 F.3d 13 (1st Cir. 2008) (holding trafficking in goods bearing counterfeit marks to be a crime of moral turpitude meriting deportation); Tall v. Mukasey, 517 F.3d 1115 (9th Cir. 2008) (same). 204 Vol. 99 TMR competition law and the federal criminal sentencing guidelines. 1135 The guidelines authorize the enhancement of sentences to take into account the value of the unauthorized goods involved, which led the district court to take such a step based on the goods’ value in the United States. Challenging this methodology, the appellants argued that the appropriate benchmark was what the goods would command in the Latin American markets in which most were intended to be sold. Treating the district court’s resolution of this issue as a factual finding entitled to a deferential review, the appellate court noted that “it is undisputed that the [appellants] sold goods in Miami. Though they may have shipped the majority of their products to Latin America for sale, that does not render the district court’s decision to use the United States market clearly erroneous.” 1136 Of equal importance, the court ultimately held that the distinction was not a meaningful one “[g]iven the length, breadth, and depth of the [appellants’] counterfeiting scheme. . . . [I]f there was any error in calculating the retail value of the goods . . ., that error did not affect the sentences that were imposed.” 1137 In the civil law context, plaintiffs in two cases benefited from judicial definitions of “counterfeit” that reached what might, under slightly different circumstances, be considered genuine goods. In the first case, the defendants had taken stainless steel watches manufactured by the plaintiffs, modified them to add new bezels and jewels, and then sold them in a manner suggesting that the watches were a higher-end white gold model. 1138 Taking the defendants to task for failing either to disclose their modifications to the watches or to add an additional mark that might communicate that the added features came from a source other than the plaintiffs, the court held that “[a] product is deemed counterfeit if it contains an original mark that is likely to deceive the public as to its origin.” 1139 It therefore entered summary judgment in the plaintiffs’ favor on the ground that “[t]he retention of the Plaintiffs’ marks with no indication that the watches had been significantly altered . . . creates a likelihood that customers would be deceived into believing that the alterations were performed by the original manufacturers.” 1140 The second case similarly resulted in a holding that the unauthorized sale of genuine goods can result in civil liability for 1135. See U.S. v. Lozano, 490 F.3d 1317 (11th Cir. 2007). 1136. Id. at 1323. 1137. Id. at 1325. 1138. See Cartier, Inc. v. Aaron Faber, Inc., 512 F. Supp. 2d 165 (S.D.N.Y. 2007). 1139. Id. at 169. 1140. Id. Vol. 99 TMR 205 counterfeiting. 1141 The case involved the defendants’ importation and sale of “gray market” cosmetic products. Central to the court’s entry of summary judgment in the plaintiff’s favor were material differences in the active ingredients of the imported cosmetics, as well as the absence of expiration dates, batch codes, and warning notices on their packaging. These types of differences often are used by similarly situated plaintiffs to prove defendants’ liability for infringement, but the court went beyond that well-established proposition of law to hold as a matter of law that the goods bore counterfeit marks. Thus, the defendants were subject not only to the usual remedies available to prevailing plaintiffs but to an award of statutory damages as well. 1142 Not all allegations of counterfeiting struck pay dirt. 1143 One holding of nonliability occurred in a civil action brought by the owner of the COLGATE mark for toothpaste against purveyors of a competitive product sold under the COLDDATE mark. 1144 According to the court, which granted the defendants’ motion for summary judgment, “[i]n general, . . . marks that are similar to [a plaintiff’s] registered mark, but differ by two or more letters, are not likely to be considered counterfeit.” 1145 D. Defenses 1. Legal Defenses a. First Amendment In contrast to the usual failed invocations of the First Amendment in unfair competition cases, the past year produced a number of success stories. 1146 The most notable came in a 1141. See Johnson & Johnson Consumer Cos. v. Aini, 540 F. Supp. 2d 374 (E.D.N.Y. 2008). 1142. See id. at 387, 396. 1143. See, e.g., Prince of Peace Enters. v. Top Quality Food Mkt., LLC, 496 F. Supp. 2d 354, 355-57 (S.D.N.Y. 2007) (declining to allow plaintiff to supplement record in support of motion for reconsideration of prior order denying in part plaintiff’s application for an ex parte seizure of goods bearing allegedly counterfeit marks). 1144. See Colgate-Palmolive Co. v. J.M.D. All-Star Imp. & Exp., Inc., 486 F. Supp. 2d 286 (S.D.N.Y. 2007). 1145. Id. at 291. 1146. See, e.g., Landrau v. Solis-Betancourt, 554 F. Supp. 2d 117, 124 (D.P.R. 2008) (holding, in cursory analysis, that First Amendment barred claims of false advertising by defendants grounded in allegedly inaccurate statements in article by third-party journalist); Smith v. Wal-Mart Stores, Inc., 537 F. Supp. 2d 1302, 1349 (N.D. Ga. 2008) (granting summary judgment in favor of counterclaim defendant alleged to have tarnished counterclaim plaintiff’s marks by selling merchandise bearing parodies of the marks); Gregerson v. Vilana Fin. Inc., 84 U.S.P.Q.2d 1219, 1221 (D. Minn. 2006) (declining to issue preliminary injunction against incorporation of counterclaim plaintiffs’ marks into counterclaim defendant’s websites on ground that “because visitors to . . . [the] web sites are reading critical comments about [the counterclaim plaintiffs], [the counterclaim defendant] 206 Vol. 99 TMR constitutional challenge to an Arizona right of publicity statute 1147 that placed a number of restrictions on the use of the names of United States soldiers. 1148 As part of his protests against the war in Iraq, the plaintiff sold T-shirts on which he superimposed antiwar messages on the names of deceased soldiers. He filed suit to enjoin enforcement of the state statute on constitutional grounds and received a favorable reception by the court. Reviewing the content of the plaintiff’s shirts, the court noted that “[m]essages such as ‘Bush Lied—They Died’ obviously critique the initiation and administration of the war in Iraq, perhaps the most salient and hotly debated issue in current American politics.” 1149 Moreover, “[t]he mere fact [the plaintiff] sells the t-shirts does not transform them into less-protected commercial speech.” 1150 Because the statute was a disfavored content-based restriction, 1151 and because the state’s proffered justifications for it could not survive the strict scrutiny required by the Constitution, 1152 “prosecution of [the plaintiff] would undoubtedly violate his First Amendment rights. . . .” 1153 Accordingly, a preliminary injunction against the statute’s enforcement was appropriate. 1154 Another defense victory came in a declaratory judgment action brought by the producer of a fantasy baseball league that used the names and statistics of major league players. 1155 The lead does have a First Amendment right to free expression”), later proceedings, 84 U.S.P.Q.2d 1245 (D. Minn. 2007). 1147. Ariz. Rev. Stat. Ann. § 13-3726 (West 2008). 1148. See Frazier v. Boomsma, 84 U.S.P.Q.2d 1779 (D. Ariz. 2007). 1149. Id. at 1790. 1150. Id. 1151. According to the court: The law is not directly a categorical ban on speech because it permits [the plaintiff] to use the names of the deceased soldiers if he obtains consent from each soldier’s family. However, the transaction costs involved in obtaining consent from the designated family member of each soldier make the restriction effectively indistinguishable from a flat prohibition. Given the difficulty and cost of finding, contacting, and obtaining consent from the soldiers’ numerous representatives, the time when [the plaintiff] may use the names is effectively never, the place is nowhere, the manner is nohow. Id. at 1791-92. 1152. The state asserted three underlying purposes for the statute: (1) “to establish by statute a soldier or soldier's family’s common-law right to publicity and thus to prevent a third person from profiting without consent from that soldier's name or likeness”; (2) “to prevent a misleading impression that a soldier has endorsed a particular point of view when he or she has not”; and (3) “to protect military families in mourning for their sons and daughters killed in the war.” Quoted in id. at 1792. 1153. Id. at 1795. 1154. See id. 1155. See C.B.C. Distrib. & Mktg., Inc. v. Major League Baseball Advanced Media, L.P., 505 F.3d 818 (8th Cir. 2007), cert. denied, 128 S. Ct. 2872 (2008). Vol. 99 TMR 207 defendant was a licensee of the players’ rights of publicity, which it sought to vindicate in counterclaim brought under Missouri law. On an appeal from entry of summary judgment of nonliability in the plaintiff’s favor, the Eighth Circuit concluded that the commercial nature of the use of the players’ identities established that their rights of publicity had indeed been violated. 1156 Citing to Zacchini v. Scripps-Howard Broadcasting, 1157 however, the appellate court noted that “[t]he Supreme Court has directed that state law rights of publicity must be balanced against first amendment considerations, and here we conclude that the former must give way to the latter.” 1158 In doing so, the court assigned great weight to the fact that the players already received compensation for their exertions: Economic interests that states seek to promote include the right of an individual to reap the rewards of his or her endeavors and an individual’s right to earn a living. Other motives for creating a publicity right are the desire to provide incentives to encourage a person’s productive activities and to protect consumers from misleading advertising. But major league baseball players are rewarded, and handsomely, too, for their participation in games and can earn additional large sums from endorsements and sponsorship arrangements. Nor is there any danger here that consumers will be misled, because the fantasy baseball games depend on the inclusion of all players and thus cannot create a false impression that some particular player with “star power” is endorsing CBC’s products. Then there are so-called non-monetary interests that publicity rights are sometimes thought to advance. These include protecting natural rights, rewarding celebrity labors, and avoiding emotional harm. We do not see that any of these interests are especially relevant here, where baseball players are rewarded separately for their labors, and where any emotional harm would most likely be caused by a player’s actual performance, in which case media coverage would cause the same harm. We also note that some courts have indicated that the right of publicity is intended to promote only economic interests and that noneconomic interests are more directly served by so-called rights of privacy. 1159 1156. See id. at 823. 1157. 433 U.S. 562 (1977). 1158. C.B.C. Distrib. & Mktg., 505 F.3d at 823 (citation omitted). 1159. Id. at 824 (citations omitted). 208 Vol. 99 TMR In a First Amendment case presenting a more traditional set of facts, a surfing publication ran an article on an aging surfer, which highlighted a number of his eccentricities, as well as his past criminal record and drug use. 1160 The surfer responded with a blunderbuss complaint targeting the publication, its editors and publisher, the author of the article, and the photographer of the pictures accompanying the article. Entering summary judgment of nonliability on the plaintiff’s California state law claim for misappropriation of his identity, the court held that “Defendants’ publication of newsworthy matters which are in the public interest is constitutionally privileged.” 1161 It then held the defendants’ article was indeed newsworthy: “[The author’s] tale of his interactions with Plaintiff—including Plaintiff’s quirky mannerisms, quips, and colorful history—sheds light on one of surfing’s more intriguing personalities and, by extension, on the sport and culture itself.” 1162 Other courts were less sympathetic to defendants’ claims of First Amendment protection. 1163 One such tribunal was confronted with a motion to dismiss claims of false endorsement brought by noted Times Square street performer The Naked Cowboy. The subject of the plaintiff’s ire was advertising placed by the owner of the M & M mark for candy, which featured such a bonbon in attire (or lack thereof) resembling the plaintiff’s work uniform. 1164 The defendants claimed that their “M & M Cowboys” were a protected parody, arguing that pieces of their candy had also appeared as King Kong climbing the Empire State Building, the Statute of Liberty, and a rider in a Central Park carriage; as a consequence, the promotion at issue properly should be evaluated as part of the larger campaign commenting on New York City landmarks. Although not rejecting this argument outright, the court nevertheless noted that some consumers “may mistakenly believe that The Naked Cowboy himself endorsed the copying of his ‘trademarked likeness’ because the M & M Cowboy characters appear in a commercial setting (i.e., on the video billboard and inside the M & M World store).” 1165 Because “[t]he complaint plausibly argues that consumers would believe that the M & M Cowboy characters were promoting a product rather than merely 1160. See Chapman v. Journal Concepts, Inc., 528 F. Supp. 2d 1081 (D. Haw. 2007). 1161. Id. at 1096 (internal quotation marks omitted). 1162. Id. at 1097. 1163. See, e.g., Univ. of Kan. v. Sinks, 565 F. Supp. 2d 1216, 1262 (D. Kan. 2008) (dismissing defendants’ First Amendment defense on summary judgment on ground that “there are many ways in which the defendants could express their views without allegedly infringing on [the plaintiffs’] trademarks”). 1164. See Burck v. Mars, Inc., 571 F. Supp. 2d 446 (S.D.N.Y. 2008). 1165. Id. at 456. Vol. 99 TMR 209 parodying The Naked Cowboy, and that viewers would believe that The Naked Cowboy had endorsed M & Ms,” dismissal at the pleading stage was inappropriate. 1166 For much the same reasons, the court denied the plaintiff’s motion to strike claims of parody appearing in the defendants’ answer. 1167 b. Abandonment (1) Non-Use Under Section 45 of the Act, mere nonuse of a mark will not work a forfeiture of the owner’s rights; 1168 rather, abandonment of a mark occurs only “[w]hen its use has been discontinued with an intent not to resume such use.” 1169 Although abandonment is an affirmative defense, Section 45 provides at least some assistance to defendants by providing that “[n]onuse for 3 consecutive years shall be prima facie evidence of abandonment.” 1170 This reference to “prima facie evidence” once led the Eleventh Circuit to hold that a plaintiff with three years of nonuse had the burden of proof to demonstrate that it had not abandoned its rights. 1171 More recently, however, that court has increasingly adopted the majority rule that Section 45 merely shifts the burden of production to the plaintiff. The occasion for the latest statement of this principle came in a case in which the plaintiff sought to escape Section 45’s effect by, as characterized by the Eleventh Circuit, presenting “the bare assertion by its CEO that it intended to resume use if it could find ample funding and the unsupported assertion that [a third party] had requested more information from [the plaintiff] after it sent [the third party] a letter soliciting a joint venture.” 1172 The appellate court acknowledged that “[t]he burden of production, although not the ultimate burden of persuasion” had shifted to the plaintiff to demonstrate the absence of abandonment. 1173 Still, however, it also observed that “if all a party had to do to avoid a finding of abandonment was to aver that 1166. Id. 1167. See id. at 456-57. 1168. See, e.g., PDL Inc. v. All Star Driving Sch., 84 U.S.P.Q.2d 1927, 1928 (E.D. Cal. 2007) (denying motion to dismiss counterclaims to protect discontinued mark based on counterclaim plaintiffs’ apparent intent to resume use upon receipt of favorable outcome in litigation). 1169. 15 U.S.C. § 1127 (2006). 1170. Id. 1171. See E. Remy Martin & Co. v. Shaw-Ross Int’l Imports, Inc., 756 F.2d 1525, 1532 (11th Cir. 1985). 1172. Natural Answers, Inc. v. SmithKline Beecham Corp., 529 F.3d 1325, 1330 (11th Cir. 2008). 1173. Id. 210 Vol. 99 TMR it never intended to abandon the trademark, then no trademark would ever be abandoned, no matter how long its use had been withdrawn from the market, or how inchoate and speculative any intention to resume its use.” 1174 With the plaintiff unable to do more than argue that it had not intended to abandon its mark, the appellate court affirmed entry of summary judgment in the defendant’s favor. 1175 Concrete efforts to bring marks back into the marketplace did serve to defeat a claim of abandonment in another case, however, despite an eight-year period of nonuse by the plaintiff’s predecessor. 1176 The marks in question were used in connection with an inn built between 1903 and 1905. By 1987, the inn was closed by the plaintiff’s predecessor for renovation and restoration work, and it only reopened in 1995. Seeking to head off a finding of abandonment, the plaintiff filed a motion for summary judgment on the issue, which the court granted. As the court concluded, the ongoing work on the inn during the period of closure established that “[i]t was clearly the intention” of the plaintiff and its predecessor to resume the marks’ use. 1177 On a different abandonment-related issue, it is a persistent misperception among trademark laity that the lapsing of a federal registration necessarily renders the underlying mark fair game for adoption by another party. 1178 In one case that did little to clarify matters, 1179 the USPTO mistakenly cancelled a registration owned by the lead plaintiff after misreading a Second Circuit opinion that had not, in fact, ordered the cancellation. 1180 Although this error was eventually recognized, the agency once again ordered the registration cancelled in light of the lead plaintiff’s failure to file a Section 8 declaration, which had come due while the registration was improperly moribund. The court rejected the defendants’ claims that this sequence of events resulted in the abandonment of the underlying mark. The obvious ground for such a result was that the mark clearly remained in use, but the court instead focused on the circumstances that had led to the Section 8 declaration not being filed: Because the lead plaintiff had acted reasonably in not submitting maintenance papers for the then1174. Id. 1175. See id. 1176. See Margaret Wendt Found. Holdings Inc. v. Roycroft Assocs., 84 U.S.P.Q.2d 1690 (W.D.N.Y. 2007). 1177. Id. at 1695. 1178. See, e.g., Rodgers v. Wright, 544 F. Supp. 2d 302, 309-310 (S.D.N.Y. 2008) (rejecting apparent argument by defendants that lapsing of plaintiff’s registration resulted in forfeiture of rights). 1179. See Patsy’s Italian Rest., Inc. v. Banas, 508 F. Supp. 2d 194 (E.D.N.Y. 2007). 1180. See Patsy’s Brand, Inc. v. I.O.B. Realty, Inc., 317 F.3d 209 (2d Cir. 2003). Vol. 99 TMR 211 nonexistent registration, the defendants’ argument that the lead plaintiff had abandoned its rights as a matter of law was without merit. 1181 Independent of a forfeiture of rights caused by the nonuse of a mark, Section 45 of the Act provides that abandonment will lie “[w]hen any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark.” 1182 Despite the availability of this alternative mechanism for a finding of abandonment, one court made clear that the mere presence of third-party users of similar marks in the marketplace will not in and of itself satisfy the statute’s requirements, especially if the owner of the mark in question has “shown efforts to police the mark through numerous cease and desist letters.” 1183 On evidence of just such efforts by the plaintiff, the court therefore denied the defendant’s motion for summary judgment on abandonment grounds. 1184 Finally, and although not resulting in an actual holding on the subject by that court, two Ninth Circuit judges stridently disagreed in the same case on the burden of proof imposed on a defendant asserting the affirmative defense of abandonment. 1185 One noted that “meeting a strict burden requires proof by clear and convincing evidence” and that “[b]efore the enactment of the Lanham Act, courts often required strict proof to establish forfeiture”; 1186 accordingly, he would have required the defendant to demonstrate abandonment by clear and convincing evidence. 1187 The other judge, however, reviewed Section 45’s definition of abandonment and concluded that “[t]he statute does not impose a burden beyond the preponderance of the evidence standard applicable in civil matters. Nor is there any evidence that Congress intended to raise the bar to clear and convincing evidence. . . .” 1188 She therefore would have held the issue to be an open one in that jurisdiction. 1189 1181. See Patsy’s Italian Rest., 508 F. Supp. 2d at 212. 1182. 15 U.S.C. § 1127 (2006). 1183. Auto. Club v. Auto Club Ltd., 83 U.S.P.Q.2d 1438, 1444 (C.D. Cal. 2007). 1184. See id. 1185. See Grocery Outlet Inc. v. Albertson’s Inc., 497 F.3d 949 (9th Cir. 2007) (per curiam). 1186. Id. at 952 (Wallace, J., concurring). 1187. Id. (Wallace, J., concurring). 1188. Id. at 953-54 (McKeown, J., concurring). 1189. See id. at 953 (McKeown, J., concurring). 212 Vol. 99 TMR (2) “Naked” Licensing “Where a licensor retains no control over the nature or quality of goods or services provided in connection with the mark . . . such ‘naked licensing’ will result in abandonment.” 1190 Although often urged on courts, actual findings of abandonment through naked licensing are relatively rare in modern case law. One example of this phenomenon came in a dispute between New York pizzerias with competing claims to virtually identical marks. 1191 Moving for summary judgment, the plaintiffs argued that the defendants had engaged in naked licensing by failing to supervise their franchisees—including the plaintiffs themselves—adequately. In response, the defendants introduced testimony from their “controlling officers” that they routinely had performed unannounced quality inspections of the franchises and had provided the plaintiffs with recipes, a sample menu, and oral instructions on how to operate their restaurant. Of apparently even greater significance to the court, “[o]n at least one occasion, [one of the controlling officers] taste-tested the pizza.” 1192 This showing was sufficient to render the plaintiffs’ motion without merit. (3) Failure to Police In addition to abandonment by non-use and naked licensing, a mark owner can, under certain circumstances, forfeit the rights to its mark by failing to police unauthorized uses of the same mark. As one court explained in granting summary judgment of nonabandonment, however, the proper focus of the failure-to-police inquiry is whether the mark owner’s inaction has caused the mark to lose its significance as a mark. 1193 Consequently, “[i]n reviewing allegations that a plaintiff has abandoned a trademark by failing to enforce it . . . the mere existence of third-party infringers is irrelevant”; 1194 rather, in the absence of additional evidence bearing on the mark’s continued significance (or a lack of it) to consumers, “a plaintiff’s failure to sue potentially infringing third parties may be relevant [only] to the strength of the mark. . . .” 1195 Particularly because the third parties proffered by the defendant were not using the plaintiffs’ mark itself, but were instead using 1190. Patsy’s Italian Rest., Inc. v. Banas, 508 F. Supp. 2d 194, 213 (E.D.N.Y. 2007). 1191. See id. at 212-13. 1192. Id. at 213. 1193. See adidas-Am., Inc. v. Payless Shoesource, Inc., 546 F. Supp. 2d 1029, 1076 (D. Or.), reconsideration denied, 540 F. Supp. 2d 1176 (D. Or. 2008). 1194. Id. 1195. Id. Vol. 99 TMR 213 marks more closely similar to those of the defendant, the defendant’s abandonment defense was not well-taken. 1196 c. Fair Descriptive Use Fair descriptive use by a defendant of either the plaintiff’s trademark or the words making up the plaintiff’s trademark may be justified under either of two theories. First, Section 33(b)(4) of the Act recognizes as a defense to the conclusive evidentiary presumption attaching to an incontestable registered mark that a defendant is using the mark “fairly and in good faith only to describe the [associated] goods or services . . . or their geographic origin.” 1197 Second, the common law preserves defendants’ ability to use descriptive terms in their primary descriptive sense; 1198 consequently, a defendant in an action to protect a registered mark who first satisfies Section 33(b)(4)’s requirements can then fall back on the common law to provide a defense on the merits. If a trademark use is, in fact, at issue, the fair descriptive use defense is unavailable. 1199 Thus, for example, an infringement and unfair competition suit between the owner of the federally registered CHIC mark for music entertainment services and two of his former colleagues, who were using the LADIES OF CHIC and FIRST LADIES OF CHIC marks, led to summary judgment of liability. 1200 The court properly noted that the defendants’ fair descriptive use defense was dependent on showings that: (1) they were making non-trademark uses of the challenged designations; (2) in a descriptive sense; and (3) in good faith. Resolving the issue by finding that the defendants had failed to satisfy the first prong of the relevant analysis, the court found that the defendants had made trademark uses of the challenged designation by holding themselves out under the designations during performances: “Defendants’ intent in this regard is evidenced in particular by the 1196. See id. at 1077-78. 1197. 15 U.S.C. § 1115(b)(4) (2006). 1198. See, e.g., Creamette Co. v. Conlin, 191 F.2d 108, 112 (5th Cir. 1951). 1199. See, e.g., Univ. of Kan. v. Sinks, 565 F. Supp. 2d 1216, 1261 (D. Kan. 2008) (rejecting claims of fair descriptive use on ground that “[t]here is no evidence [that] the defendants intended to use any of plaintiffs’ marks in the descriptive sense”); Cmty. of Christ Copyright Corp. v. Miller, 85 U.S.P.Q.2d 1314, 1316 (W.D. Mo. 2007) (rejecting fair descriptive use defense by breakaway church congregation on ground that “Defendants’ use of the trademarks in their sign and in advertising is not merely descriptive of faith and beliefs; they are invitations to the public to join in worship in the defendant church”); Auto. Club v. Auto Club, 83 U.S.P.Q.2d 1440, 1444 (C.D. Cal. 2007) (denying defendants’ motion for summary judgment on ground that “Defendants’ use of [the challenged term] as part of the company name and website domain name is use as a trademark or service mark and not only descriptive use”). 1200. See Rodgers v. Wright, 544 F. Supp. 2d 302 (S.D.N.Y. 2008). 214 Vol. 99 TMR prominent placement of the Chic mark in defendants’ promotional materials.” 1201 In contrast, two findings of permissible fair descriptive use came in litigation involving motorcycles. The first came in a suit brought by an artist doing business under the SCARECROW mark, which was often accompanied by a scarecrow design. 1202 The plaintiff’s specialty was painting motorcycles, and, when a group of defendants associated with Harley-Davidson, began promoting “radical paint sets” that contained templates and paints for their own scarecrow designs, the plaintiff sued on the theory that the kits violated his rights to his unregistered marks. In granting the defendants’ motion for summary judgment, the court concluded that it was the HARLEY-DAVIDSON mark under which the defendants’ kits were sold and that “[t]he term ‘Scarecrow’ was not used in a trademark sense, but rather in a descriptive sense to describe a particular product featuring a scarecrow originating from Harley-Davidson.” 1203 The court also found that the defendants’ use was indeed a descriptive one, concluding that “it is difficult to understand how the term ‘Scarecrow’ could not be considered descriptive of an image of a scarecrow.” 1204 It then determined that the defendants’ use of the term had been in good faith, and that, in particular, the defendants’ failure to produce a trademark clearance opinion did not demonstrate the contrary. 1205 Under these circumstances, “the evidence is so one-sided that there can be no doubt about whether the defendants’ use of the term ‘Scarecrow’ and the scarecrow image was fair use.” 1206 The other motorcycle-related case orignated in a challenge to Harley-Davidson’s use of the phrase “ride hard” in association with various goods. 1207 Evaluating a defense motion for summary judgment, the court first found that Harley-Davidson had not used the phrase as a trademark because the company had neither applied to register it nor placed it on the hang tags or labels for its goods. 1208 As to the issue of whether Harley-Davidson had used the term descriptively, the court concluded that “Harley-Davidson used ‘Ride Hard’ to describe the prospective consumer’s response to riding a Harley-Davidson motorcycle or wearing apparel with the 1201. Id. at 312. 1202. See Ciociola v. Harley-Davidson Inc., 552 F. Supp. 2d 845 (E.D. Wis. 2008). 1203. Id. at 860. 1204. Id. at 862. 1205. See id. at 864-65. 1206. Id. at 865. 1207. See Bell v. Harley-Davidson Motor Co., 539 F. Supp. 2d 1249 (S.D. Cal. 2008). 1208. See id. at 1258. Vol. 99 TMR 215 trademarked [sic] Harley-Davidson logo.” 1209 The presence of that logo and other Harley-Davidson indicia of origin also served to demonstrate the company’s good faith in using the phrase, a consideration reinforced by Harley-Davidson’s adoption of the phrase prior to the plaintiff’s use of it as a mark. 1210 Summary judgment was therefore appropriate because, “[u]nder these facts, Harley-Davidson is not legally required to abandon ‘Ride Hard’ for a similar phrase.” 1211 As always, some confused courts applied Section 33(b)(4)’s fair descriptive use in situations in which the nominative fair use defense was far more appropriate. Chief among the offenders was a district court that entered summary judgment of nonliability in a dispute between two registries of Tennessee Walking Horses. 1212 The plaintiff objected to announcements that the defendant would accept certificates issued by the plaintiff as proof of the pedigrees of the horses covered by the certificates. The defendant’s use of the plaintiff’s name in the announcements was clearly a trademark one that referred to the plaintiff and the plaintiff’s services, but the court improbably concluded that “the Defendant used the Plaintiff’s trademark in a descriptive sense to descibe its own offerings—indicating the type of registration certificates it would accept in registering a horse.” 1213 The better characterization was one reached by the court several lines later: “[R]eferring to [the plaintiff’s] certificates by using Plaintiff’s trademarked name was the only way to describe Plaintiff’s certificates. . . .” 1214 d. Nominative Fair Use As has increasingly been the case in recent years, the Ninth Circuit’s New Kids on the Block analysis 1215 remained the leading test for evaluating nominative fair use claims, especially those involving comparative advertising. 1216 That test allows the use of another’s mark if three conditions are satisfied: 1209. Id. 1210. See id. at 1258-59. 1211. Id. at 1259. 1212. See Tenn. Walking Horse Breeders’ & Exhibitors Ass’n v. Nat’l Walking Horse Ass’n, 528 F. Supp. 2d 772 (M.D. Tenn. 2007). 1213. Id. at 783. 1214. Id. (emphasis added). 1215. See New Kids on the Block v. News Am. Publ’g, Inc., 971 F.2d 302, 308 (9th Cir. 1992). 1216. See, e.g., FrontRange Solutions USA, Inc. v. NewRoad Software, Inc., 505 F. Supp. 2d 821, 834-35 (D. Colo. 2007) (holding references to plaintiff’s mark in e-mail advertising to be nominative fair uses as a matter of law). 216 Vol. 99 TMR “First, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and third, the [junior] user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.” 1217 As always, the nominative fair use defense made appearances in cases in which defendants advertised genuine but diverted goods. 1218 One district court addressing this scenario invoked the New Kids on the Block test to excuse from liability a set of defendants reselling genuine but diverted tanning products bearing the plaintiffs’ marks. 1219 In addition to alleging infringement, the plaintiffs also challenged the defendants’ conduct under a dilution theory, and it was in the latter context that the court evaluated the merits of the defendants’ invocation of the nominative fair use doctrine. Granting the defendants’ motion for summary judgment, the court found each prong of the New Kids test satisfied. First, it held, there was no acceptable substitute terminology available to describe the plaintiffs’ products other than the trademarks associated with them. Second, the defendants were using no more of the plaintiffs’ marks than was necessary. Finally, although the plaintiffs argued that the defendants’ use of their marks as metatags resulted in the defendants’ website having better placement in search engine results, they failed to support this theory with record evidence or testimony: “[This theory] is based on nothing more but a lawyer’s say-so, and unsupported arguments are insufficient to defeat a motion for summary judgment.” 1220 In a longer opinion denying a preliminary injunction for numerous other reasons, one court threw in a relatively cursory analysis of the nominative fair use doctrine as well. 1221 The defendants, manufacturers and distributors of a video game, had 1217. Designer Skin, LLC v. S & L Vitamins, Inc., 560 F. Supp. 2d 811, 821 (D. Ariz. 2008) (quoting New Kids on the Block v. News Am. Publ’g, Inc., 971 F.2d 302, 308 (9th Cir. 1992)). 1218. See, e.g., S & L Vitamins, Inc. v. Australian Gold, Inc., 521 F. Supp. 2d 188, 207 (E.D.N.Y. 2007) (holding counterclaim defendant’s use of counterclaim plaintiff’s marks as metatags to be fair nominative use as a matter of law but denying defense motion for summary judgment as to use of counterclaim plaintiff’s marks in visible portions of counterclaim defendant’s website); see also Standard Process, Inc. v. Total Health Discount, Inc., 559 F. Supp. 2d 932, 938-39 (E.D. Wis. 2008) (holding that disputed issues of fact precluded resolution of defendant reseller’s claims of nominative fair use as a matter of law). 1219. See Designer Skin, 560 F. Supp. 2d at 820-21. 1220. Id. at 821. 1221. See Romantics v. Activision Publ’g, Inc., 532 F. Supp. 2d 884 (E.D. Mich. 2008). Vol. 99 TMR 217 secured a license to use a copyrighted song originally performed by the plaintiffs, the members of the 1980s pop group The Romantics. Having rerecorded the song, the defendants then described it in the credits to their game as “made famous by The Romantics.” 1222 Rejecting the plaintiffs’ motion for preliminary relief, the court held that the reference to the band’s name was not an infringement and, “even if that were not so, an accurate reference to the name of the group in this context would be permissible and immune from liability under the ‘nominative use’ doctrine.” 1223 These holdings notwithstanding, one Ninth Circuit court rejected a nominative fair use defense, although neither expressly referring to it by name nor explaining with precision the doctrinal test it was applying. 1224 The gravamen of the plaintiff’s complaint was the defendants had incorporated its marks into domain names for the defendants’ websites, purchased the marks as keywords for sponsored advertising, and hidden the marks in HTML text intended to create more favorable search results. The court’s disposal of the defendants’ claim of fair use was swift. It noted that the defendants did not sell the plaintiff’s branded goods on their website; on the contrary, they sold their own directly competitive goods and services. Under these circumstances, the challenged uses could not be considered descriptive ones, especially as the defendants had failed both to minimize their use of the marks and to include a disclaimer of nonaffiliation on their websites. 1225 e. Innocent Infringer Section 32(2)(B) recognizes as a defense to all but a prayer for injunctive relief that the defendant is an “innocent infringer[]” engaged in the publishing or distribution of “newspapers, magazines, or other similar periodicals.” 1226 Two opinions demonstrated that, although the defense is easily invoked in pleadings, actually proving it is another thing altogether, especially as a matter of law. The first opinion rejected a motion to dismiss for failure to state a claim by a defendant claiming both innocence and the discontinuance of the advertising in question, the combination of which allegedly rendered the plaintiff’s prayer for relief moot; because each prong of the defendant’s argument required the court to look outside of the pleadings, dismissal was inappropriate. 1227 The second opinion denied a defense motion for 1222. Quoted in id. at 890. 1223. Id. 1224. See Fin. Express LLC v. Nowcom Corp., 564 F. Supp. 2d 1160 (C.D. Cal. 2008). 1225. See id. at 1176-77. 1226. 15 U.S.C. § 1114(2)(b) (2006). 1227. See Vulcan Golf, LLC v. Google Inc., 552 F. Supp. 2d 752, 770-71(N.D. Ill. 2008). 218 Vol. 99 TMR summary judgment on the ground that there was sufficient record evidence and testimony to allow a reasonable jury to conclude that the moving defendant had not innocently participated in the alleged infringement, even if, as that defendant argued, the plaintiff was required to show that the defendant had acted with bad faith. 1228 f. Antitrust Violations Assertions that a plaintiff’s strategy for enforcing the rights to a mark has violated United States antitrust law are relatively rare in the first instance, and are successful with even less frequency. One example of such a defense came in a dispute between two plaintiffs that produced athletic shoes bearing three stripes, on the one hand, and a defendant that produced competing models featuring two and four stripes, on the other hand. 1229 Based on a coexistence agreement between the plaintiffs and a third-party manufacturer of four-stripe shoes that, inter alia, barred the parties to the agreement from selling their shoes through the defendant’s stores, the defendant argued that the plaintiffs had violated Section 1 of the Sherman Act 1230 by engaging in a per se illegal antitrust conspiracy to divide up the market for striped shoes, as well as a group boycott to eliminate competition in that market. Granting summary judgment to the plaintiffs, the district court disagreed. The court noted that “[the defendant’s] pleadings bear no mention of any ‘conspiracy,’ ‘contract,’ ‘agreement,’ or a restraint on trade” and that the defendant’s witnesses had failed to identify any factual evidence of a conspiratorial compact. 1231 Under these circumstances, the plaintiffs’ agreement with the third party could not be considered a per se violation of Section 1 because “[t]o the contrary, the agreement reflects [the plaintiffs’] and [the third party’s] legitimate efforts to protect their respective marks and avoid consumer confusion.” 1232 The agreement likewise did not violate Section 1 under a “rule of reason” analysis because there was no record evidence or testimony that the agreement had been motivated by a desire to curtail competition or that it actually resulted in the required unreasonable restraint on competition. 1233 1228. See Univ. of Kan. v. Sinks, 565 F. Supp. 2d 1216, 1237-39 (D. Kan. 2008). 1229. See adidas-Am. v. Payless Shoesource, Inc., 546 F. Supp. 2d 1029 (D. Or.), reconsideration denied, 540 F. Supp. 2d 1176 (D. Or. 2008). 1230. 15 U.S.C. § 1 (2006). 1231. Id. at 1079. 1232. Id. at 1080. 1233. See id. at 1081. Vol. 99 TMR 219 A far more commonly alleged trademark-related antitrust violation is that the defendant has impermissibly tied the use of a licensed mark to the purchase of some other item. Based on the Supreme Court’s 1992 opinion in Eastman Kodak Co. v. Image Technical Services, Inc., 1234 the Ninth Circuit allowed a tying claim to move forward in a case in which the allegedly tied items were aftermarket goods and services that were wholly dependent on the primary market for their existence. 1235 In the absence from another case of that consideration, however, the Seventh Circuit would have none of this theory: It rejected a tying claim brought against the owner of the MARATHON trademark for the retail sale of gasoline with the observation that “Marathon does of course have a ‘monopoly’ of Marathon franchises. But ‘Marathon’ is not a market; it is a trademark; and a trademark does not confer a monopoly; all it does is prevent a competitor from attaching the same name to his product.” 1236 g. Advice of Counsel Defendants often assert that they have acted in good faith by relying on the advice of counsel, either to escape a finding of liability in the first instance or to avoid the imposition of certain monetary remedies. An example of the latter phenomenon came in a case in which a defendant moved for summary judgment on the plaintiffs’ request for an accounting of profits, for which the district court required a showing of willfulness. 1237 The court noted both that “[a] defendant’s reliance on the advice of counsel is relevant to the question of willfulness” and that “obtaining the advice of counsel generally negates a finding of willfulness unless the advice is ignored or is found to be incompetent.” 1238 Nevertheless, it also held that “[i]f the opinion is not competent, then it is of little value in showing the good faith belief of the infringer.” 1239 It further explained: Whether advice is competent, and whether it was reasonable to rely on the advice, depends on several factors, including: (1) the background research performed by the attorney; (2) whether the opinions were written or oral; (3) the objectivity of the opinions; (4) whether the attorneys rendering 1234. 504 U.S. 451 (1992). 1235. See Newcal Indus. v. IKON Office Solutions, Inc. 513 F.3d 1038, 1044-51 (9th Cir. 2008). 1236. Sheridan v. Marathon Petroleum Co., 530 F.3d 590, 595 (7th Cir. 2008). 1237. See adidas-Am. v. Payless Shoesource, Inc., 546 F. Supp. 2d 1029 (D. Or.), reconsideration denied, 540 F. Supp. 2d 1176 (D. Or. 2008). 1238. Id. at 1047. 1239. Id. 220 Vol. 99 TMR the opinions were trademark lawyers; (5) whether the opinions were detailed or merely conclusory; and (6) whether material information was withheld from the attorney. 1240 In an application of this standard, the court found the defendant’s showing was inadequate for myriad reasons. To begin with, the defendant was unable to prove that its counsel had reviewed each of the allegedly infringing goods at issue in the case, which led the court to observe that “[w]ith respect to the unreviewed [goods], it is difficult to see how [the defendant] can rely on advice that it did not actually seek or obtain.” 1241 Moreover, because even those opinions that the defendant had secured had been solicited after the inception of the dispute, “[the defendant’s] failure to obtain advice of counsel before engaging in the conduct at issue undermines its contention that it acted in good faith reliance on the advice of its counsel. It also raises the inference that the opinions were designed simply to bolster [the defendant’s] advice of counsel defense.” 1242 Finally, “[p]erhaps the most telling characteristic of the opinion letters proffered by [the defendant], is the conclusory and superficial nature of the opinions themselves. In many cases, the entire substance of [the defendant’s] counsel’s ‘detailed’ advice consists of a single phrase or sentence.” 1243 Under these circumstances, “there are genuine issues of material fact as to whether the advice of counsel obtained by [the defendant] was competent as a matter of law.” 1244 h. Statute of Limitations Plaintiffs that have delayed bringing federal claims often face allegations of laches, but delay in seeking vindication of state law rights can also result in the application of state statutes of limitations. One district court hit a trifecta of sorts, in that it was forced to determine which of the statutes of limitations of Montana, North Dakota, or the District of Columbia would apply to claims brought by the plaintiffs under Montana and North Dakota law. 1245 The court resolved this dilemma by applying the three-year catchall statute of its own forum—the District of Columbia—on the theory that the issue was a procedural, rather than a substantive one. 1246 As far as the plaintiffs’ request for 1240. Id. at 1048. 1241. Id. 1242. Id. at 1049. 1243. Id. at 1050. 1244. Id. at 1051. 1245. See Gaudreau v. Am. Promotional Events, Inc., 511 F. Supp. 2d 152 (D.D.C. 2007). 1246. See id. at 157. Vol. 99 TMR 221 injunctive relief was concerned, the issue was moot in light of the court’s conclusion that “because trademark infringement is a continuing tort, plaintiffs’ state law trademark infringement claims are not time-barred. . . .” 1247 Nevertheless, the court did dismiss the plaintiffs’ request for damages arising outside of the three-year period defined by the statute. 1248 District of Columbia law also came into play in the dismissal of a plaintiff’s attempt to recover for the unauthorized appropriation by the defendants of his name in a fundraising newsletter. 1249 Noting that D.C. courts treated the tort of misappropriation as equivalent to that of invasion of privacy, the federal district court hearing the case determined that the oneyear statute of limitations applicable to “libel, slander, and similar intentional torts[] applies to any invasion of privacy claims because such claims are types of defamation.” 1250 Because the offending newsletter had been published thirteen months prior to the filing of the action, and because the plaintiff’s complaint failed to allege adequately that the defendants were engaged in a continuing tort, the plaintiff’s claim was time-barred. 1251 2. Equitable Defenses a. Unclean Hands The defense of unclean hands rarely succeeds in unfair competition actions, 1252 and one definition of the defense offered up by the Ninth Circuit in the infringement context demonstrates why: Unclean hands is a defense to a Lanham Act infringement suit. Trademark law's unclean hands defense springs from the rationale that it is essential that the plaintiff should not in his trade mark, or in his advertisements and business, be himself guilty of any false or misleading representation. To show that a trademark plaintiff's conduct is inequitable, defendant must show that plaintiff used the trademark to deceive consumers. 1253 1247. Id. at 158. 1248. See id. 1249. See Paul v. Judicial Watch, Inc., 543 F. Supp. 2d 1 (D.D.C. 2008). 1250. Id. at 10 (citing D.C. Code § 12-301(4) (2008)). 1251. See id. 1252. See, e.g., Pedinol Pharmacal, Inc. v. Rising Pharms., Inc., 512 F. Supp. 2d 137 (E.D.N.Y. 2007) (declining to grant defendant’s motion for summary judgment grounded in theory that plaintiff was marketing its goods without FDA approval). 1253. Perfumebay.com Inc. v. eBay Inc., 506 F.3d 1165, 1177 (9th Cir. 2007) (internal quotation marks and citations omitted). 222 Vol. 99 TMR As this definition suggests, the successful invocation of unclean hands ordinarily requires a demonstration of a nexus between the rights asserted by the plaintiff and the inequitable conduct in which it has allegedly engaged. An example of such a result held in litigation over two television commercials satirically suggesting that meat in the plaintiffs’ “Angus burgers” came not from Angus cattle but instead from the extreme posteriors of cows. 1254 Responding to the plaintiffs’ claims that the commercials constituted false advertising, the defendant pointed out that the plaintiffs themselves had run advertising “involv[ing] a play on the term milkshake with the humorous image of shaking a cow” and “play[ing] on the term nuggets [in ‘chicken nuggets’], potentially suggesting that the term signifies testicles.” 1255 Addressing the latter commercial, the court held that “unlike Defendant’s commercial, the message of Plaintiffs’ nuggets commercial is that nuggets do not come from a body part of a chicken. . . . This is inherently different than Defendant’s commercials, which potentially imply that an Angus burger is made from an unsavory cut of beef.” 1256 Accordingly, and despite rejecting on the merits the plaintiffs’ motion for a preliminary injunction against the defendant’s alleged false advertising claims, the court also held that the defendant’s unclean hands defense was unlikely to succeed. 1257 b. Laches “To establish laches, the defendant has the burden of proving (1) lack of diligence by [the] plaintiff[], and (2) resulting prejudice to [the] defendant.” 1258 Several courts concluded that defendants before them had failed to establish the first of these requirements, 1259 with one confirming that an inter partes opposer is not obligated to file suit if it wishes to escape a later finding of 1254. See CKE Rest. v. Jack in the Box, Inc., 494 F. Supp. 2d 1139 (C.D. Cal. 2007). 1255. Id. at 1147. 1256. Id. 1257. Id. at 1148. 1258. Gaudreau v. Am. Promotional Events, Inc., 511 F. Supp. 2d 152, 158 (D.D.C. 2007). For a variation on this test, see Argus Research Group v. Argus Media, Inc., 562 F. Supp. 2d 260, 272 (D. Conn. 2008) (“A defendant claiming laches must show that: (1) the plaintiff had knowledge of the defendant’s use of its mark; (2) the plaintiff inexcusably delayed taking action with respect to that use; and (3) the defendant would be prejudiced if the court permitted the plaintiff to assert its rights belatedly.”). 1259. See, e.g., Am. Rice, Inc. v. Producers Rice Mill, Inc., 518 F.3d 321, 334 (5th Cir. 2008) (holding plaintiff’s delay in bringing suit excused by lack of knowledge of defendant’s use); Univ. of Kan. v. Sinks, 565 F. Supp. 2d 1216, 1261 (D. Kan. 2008) (holding as a matter of law that plaintiffs’ seven-month delay in bringing suit did not rise to the level of inexcusable delay). Vol. 99 TMR 223 laches as to any infringement claims it may have. 1260 As the court explained, “[n]umerous courts have recognized that pursuing an opposition in the USPTO excuses delay in filing suit on a Lanham Act claim.” 1261 One district court took this general concept one step further in suggesting that a plaintiff need do nothing more than send a cease-and-desist letter to preserve its rights. 1262 Having discovered the defendant’s allegedly infringing use no later than 2002, the plaintiff communicated its objections in writing in March of that year. It waited until December of 2006 to file suit, however, which predictably led the defendant to assert laches. Rejecting the defendant’s motion for summary judgment, the court held that “‘[a]ny acts after receiving a cease and desist letter are at the defendant’s own risk because it is on notice of the plaintiff’s objection to such acts.’ Thus, the only delay relevant to the laches defense is the delay between when [the plaintiff] became aware of [the defendant’s] use of its logo, and when [the plaintiff] objected to that use with its cease-and-desist letter.” 1263 Other courts similarly excused plaintiffs’ alleged delays in bringing suit. Chief among these was the Eleventh Circuit, which held that two considerations in the case before it precluded the district court’s rejection of the defendants’ laches claims from being an abuse of discretion. 1264 First, the defendants had largely been absent from the plaintiff’s territory until approximately two years before suit was filed, at which point, in a “change of tack,” they began opening offices there. 1265 Second, and of greater importance, the parties’ use of identical marks for identical services targeted toward identical audiences rendered confusion inevitable, a consideration that rendered any showing of laches irrelevant in the face of “‘the paramount value of the public interest’” in avoiding confusion. 1266 Another court rejecting claims of unreasonable delay applied the familiar rule that even if laches bars a challenge to a defendant’s original use, it may not be applicable to subsequent expanded uses. 1267 The parties claimed rights to substantively 1260. See Gaudreau, 511 F. Supp. 2d at 159. 1261. Id. 1262. See Bd. of Regents v. KST Elec., Ltd., 550 F. Supp. 2d 657 (W.D. Tex. 2008). 1263. Id. at 668 (quoting Elvis Presley Enters. v. Capece, 141 F. 3d 188, 205 (5th Cir. 1998)) (citation omitted). 1264. See Angel Flight of Ga., Inc. v. Angle Flight Am., Inc., 522 F.3d 1200 (11th Cir. 2008). 1265. See at 1207. 1266. Id. at 1208 (quoting SunAmerica Corp. v. Sun Life Assurance Co. of Canada, 77 F.3d 1325, 1337 (11th Cir. 1996)). 1267. See Patsy’s Italian Rest., Inc. v. Banas, 508 F. Supp. 2d 194 (E.D.N.Y. 2007). 224 Vol. 99 TMR identical marks used in connection with New York City pizzerias. The defendants had operated at least some of their restaurants in Manhattan for over six decades, and it was undisputed that the plaintiffs were aware of those locations since at least as early as the mid-1990s. Citing the plaintiffs’ alleged inaction, the defendants moved for summary judgment on their laches defense but came up short. As the court pointed out, the plaintiffs were not challenging the defendants’ original uses, but instead the defendants’ far more recent expansion to Long Island and Staten Island. Moreover, the plaintiffs had “promptly” challenged those uses upon discovering them. Under these circumstances, the defendants could not establish laches as a matter of law. 1268 Sporadic efforts between the parties and their predecessors to resolve a different dispute proved to be a sufficient explanation for the plaintiff’s approximately fourteen-year delay in actually bringing suit. 1269 Entertaining the defendants’ motion for summary judgment on the issue, the court referred to the six-year statute of limitations applicable to fraud claims under New York law 1270 and observed that “when suit is brought after the statutory period has elapsed, the burden is on the plaintiff to prove the circumstances making it inequitable to apply laches to the case.” 1271 Because the delay in question well exceeded the state statute of limitations, “[t]o defeat defendants’ motion for summary judgment, plaintiff must provide sufficient evidence to raise a genuine issue respecting either the reasonableness of the delay or the existence of prejudice.” 1272 This it did to the court’s satisfaction: “Genuine efforts have been made over the years to resolve issues relating to ownership of the Marks to the mutual benefit of all parties. Under these circumstances, . . . plaintiff has provided sufficient evidence to raise a genuine issue with respect to the reasonableness of the delay in bringing suit.” 1273 Of course, even if a plaintiff has unreasonably delayed in bringing an action, that consideration may be an insufficient basis for a finding of laches if the defendant cannot demonstrate any resulting prejudice. One district court distinguished between two types of prejudice in this context, the first of which was evidentiary prejudice: 1268. See id. at 221. 1269. See Magaret Wendt Found. Holdings Inc. v. Roycroft Assocs., 84 U.S.P.Q.2d 1690 (W.D.N.Y. 2007). 1270. N.Y. C.P.L.R.§ 213(8) (McKinney 2008). 1271. Magaret Wendt Found. Holdings, 84 U.S.P.Q.2d at 1696. 1272. Id. 1273. Id. at 1697. Vol. 99 TMR 225 Evidentiary prejudice includes such things as lost, stale, or degraded evidence, or witnesses whose memories have faded or who have died. Evidentiary prejudice may arise by reason of a defendant’s inability to present a full and fair defense on the merits due to the loss of records, the death of a witness, or the unreliability of memories of long past events, thereby undermining the court’s ability to judge the facts. 1274 Finding that the defendant had adduced nothing more than conclusory references to lost documents and missing witnesses, the court held that the defendant had failed to carry its burden: “To prove evidentiary prejudice, [the defendant] must do more than speculate as to evidence that might have been available had [the plaintiff] sued at an earlier date.” 1275 The defendant was equally unsuccessful in establishing the second form of prejudice, namely, expectations-based prejudice. As explained by the court, “[a] defendant may establish expectationsbased prejudice ‘by showing that during plaintiff’s delay, it invested money to expand its business or entered into business transactions based on [its] presumed rights.’” 1276 The court additionally noted of this type of prejudice, however, that: The courts that have found expectation[s]-based prejudice . . . have done so only where the defendant was using the infringing word or design as a trademark, and thus had built up goodwill in the mark as a designation of source. This is because laches is premised, in part, on the notion that it would be inequitable to allow a dilatory plaintiff to divest a defendant of its trade name, and the goodwill it has built around that name, thereby requiring the defendant to “recast” its entire business identity and “re-educate” its consumers. 1277 As to this type of prejudice, the court noted that the defendant claimed to be using the designations at issue as mere decorations; as a consequence, the court rejected the claim of laches as a matter of law because “[the defendant’s] economic investment in the use of ornamental or decorative . . . designs, which are not intended to signify source, cannot constitute expectations-based prejudice.” 1278 1274. adidas-Am., Inc. v. Payless Shoesource, Inc., 546 F. Supp. 2d 1029, 1072 (D. Or.) (internal quotation marks and citations omitted), reconsideration denied, 540 F. Supp. 2d 1176 (D. Or. 2008). 1275. Id. at 1072-73. 1276. Id. at 1073 (quoting Miller v. Glenn Miller Prods., Inc., 454 F.3d 975, 999 (9th Cir. 2006)). 1277. Id. (citations omitted). 1278. Id. at 1074. 226 Vol. 99 TMR Not all claimants were able to explain away their delay. 1279 In one notable example of a successful laches defense, the counterclaim plaintiff was aware of the counterclaim defendant’s alleged infringement for fourteen years before rousing itself to assert claims of infringement in a lawsuit. 1280 Crediting a showing of laches set forth in the counterclaim defendant’s summary judgment papers, the court first noted that: In lawsuits filed under the Lanham Act, the doctrine of laches plays a more important role than it otherwise might because the Act does not contain a statute of limitations on trademark infringement claims. . . . Once [the] relevant state limitations period has run, an allegedly infringing party is entitled to a presumption that the doctrine of laches applies. 1281 Citing the three-year statute of limitations contained in the Wisconsin Deceptive Trade Practices Act, 1282 the court found that the counterclaim plaintiff’s delay in bringing suit “was nearly five times longer” than that necessary to create a presumption of unreasonableness. 1283 That presumption was not overcome by either the counterclaim plaintiff’s alleged belief that the counterclaim defendant had discontinued its allegedly infringing use in response to an unanswered demand letter sent years earlier or that the counterclaim defendant had engaged in progressive encroachment. As to the former, the court concluded that “[the counterclaim plaintiff] had no plausible basis for assuming that [the counterclaim defendant’s] silence implied its acceptance of the cease and desist letter.” 1284 And, as to the latter, the court held that “the doctrine of progressive encroachment does not extend to all cases in which there has been a change in the alleged infringer’s marketing or manufacturing, only to those in which the changes worsened the potential likelihood of confusion.” 1285 Because the counterclaim plaintiff’s inaction had occurred even after the counterclaim defendant’s alleged expansion of sales and territory, its delay was unreasonable. 1286 With the counterclaim 1279. For an example of a court being particularly generous to an allegedly infringing defendant, see Hodgon Powder Co. v. Alliant Techsystems, Inc., 497 F. Supp. 2d 1221, 1235 (D. Kan. 2007) (denying plaintiff’s motion for summary judgment on ground that “plaintiff has not shown that its seventh month delay was excusable as a matter of law”). 1280. See Wis. Cheese Group v. V & V Supremo Foods, Inc., 537 F. Supp. 2d 994 (W.D. Wis. 2008). 1281. Id. at 1000. 1282. Wis. Stat. Ann. § 100.18(11)(b)(3) (West 2008). 1283. Wis. Cheese Group, 537 F. Supp. 2d at 1001. 1284. Id. 1285. Id. at 1002. 1286. See id. at 1002-03. Vol. 99 TMR 227 defendant able to demonstrate “clear evidence of economic prejudice” arising from that delay, the counterclaim plaintiff’s requests for both injunctive and monetary relief were barred as a matter of law. 1287 With one exception, 1288 this outcome was characteristic of the judicial disposition of claims of progressive encroachment. Thus, for example, such a claim also failed to carry the day in the face of a knowing delay of approximately three decades in bringing suit. 1289 The plaintiffs were members of a musical group that had performed since 1959 under the mark THE WAILERS. “[A]s early as the 1970s,” the plaintiffs became aware of an ultimately more famous band using in succession the marks BOB MARLEY & THE WAILERS, THE BOB MARLEY WAILERS, and THE WAILERS. 1290 When the plaintiffs finally filed suit in 2007, they sought to excuse their inaction by arguing that only the defendants’ use of THE WAILERS, which the plaintiffs claimed to have first encountered in the late 1990s, constituted infringement. Granting the defendants’ motion for summary judgment, the court found this distinction to be “without legal or logical support.” 1291 The plaintiffs’ inability to identify any record support for their claim that the defendants’ initial use of THE WAILERS had been de minimis was an additional basis for the rejection of their claims of progressive encroachment. 1292 A final slow-to-anger plaintiff was aware of the defendant’s use of an allegedly infringing mark for twelve years before asserting its objections. 1293 Referring to the six-year statute of limitations applicable to fraud claims under New York law, the court concluded that a presumption of laches applied. It then made short work of the plaintiff’s “convoluted” attempt to defeat that presumption, which was the argument that if the defendant prevailed on a counterclaim for infringement of its own mark, that victory would represent a change in the relevant law that would excuse the plaintiff’s delay. This theory was dismissed with a curt “the Court disagrees.” 1294 1287. See id. 1003-05. 1288. See Argus Research Group v. Argus Media, Inc. , 562 F.3d 260, 279-80 (D. Conn. 2008) (holding that undeveloped factual record on the issue of the defendant’s evolving use of their mark precluded grant of defense motion for summary judgment). 1289. See Ormsby v. Barrett, 85 U.S.P.Q.2d 1700 (W.D. Wash. 2008). 1290. See id. at 1701-02. 1291. Id. at 1703. 1292. See id. 1293. See Constellation Brands, Inc. v. Arbor Hill Assocs., 535 F. Supp. 2d 347 (W.D.N.Y. 2008). 1294. Id. at 363. 228 Vol. 99 TMR c. Acquiescence As summarized by one court: Estoppel by acquiescence includes the two elements of laches—(1) plaintiff’s unreasonable and inexcusable delay, (2) inducing the belief that it has abandoned its claim against the infringer—and adds (3) affirmative conduct inducing the belief that it has abandoned its claim against the alleged infringer, and (4) detrimental reliance by [the] infringer. The distinguishing feature of the acquiescence defense is the element of active or explicit consent to the use of an allegedly infringing mark. 1295 Seeking a favorable application of this standard, the defendant in the action claimed that the plaintiffs had engaged in the required affirmative conduct twice over. According to the defendant, the first occasion was the plaintiffs’ transmittal of, and then failure to follow up on, a cease-and-desist letter addressed to the defendant, while the second was the plaintiffs’ entry into a coexistence agreement with a third party that used a mark arguably similar to those of the parties. Addressing the first of these, the court concluded that “[the plaintiffs’] failure to follow-up is not sufficient to support a finding of estoppel by acquiescence.” 1296 And, as to the second, the court held that “[the plaintiffs’] agreement with [the third party] is not evidence that [the plaintiffs] ‘affirmatively’ acted to abandon [their] claim against [the defendant]. Thus, the defense fails.” 1297 Of course, even if a defendant is otherwise able to satisfy the prima facie elements of an acquiescence defense, a more significant consideration may trump that showing. For example, the Eleventh Circuit in one case glossed over the doctrinal requirements for a showing of acquiescence altogether in holding that the rejection of the defense below had not been an abuse of discretion. 1298 The basis for this holding was the appellate court’s holding that the parties’ use of the identical marks for identical services targeted toward identical consumers rendered confusion inevitable. Under 1295. adidas-Am., Inc. v. Payless Shoesource, Inc., 546 F. Supp. 2d 1029, 1075 (D. Or.) (internal quotation marks and citations omitted), reconsideration denied, 540 F. Supp. 2d 1176 (D. Or. 2008). For a variation on this test, see Argus Research Group v. Argus Media, Inc., 562 F. Supp. 2d 260, 272 (D. Conn. 2008) ([T]o support a defense of acquiescence, a defendant must show that: (1) the plaintiff actively represented that it would not assert its trademark rights; (2) the delay between that representation and the bringing of suit was not excusable; and (3) the delay caused the plaintiff undue prejudice.”). 1296. adidas-Am., 546 F. Supp. 2d at 1075. 1297. Id. 1298. See Angel Flight of Ga., Inc. v. Angel Flight Am., Inc., 522 F.3d 1200 (11th Cir. 2008). Vol. 99 TMR 229 these circumstances, the public’s interest in avoiding confusion trumped any interest the defendant might have in the continuing use of its mark. 1299 Independent of the merits of the acquiescence defense before it, the Second Circuit confronted the (thornier) issue of whether evidence of settlement negotiations between the parties could be used to demonstrate the plaintiff’s affirmative consent to the allegedly infringing conduct. 1300 At trial, the defendants argued that the plaintiff had earlier represented that it did not object to one of the marks used by the defendants. The jury rejected the defendants’ acquiescence defense, but nevertheless found that the mark in question was noninfringing. On appeal, the plaintiff argued that the defendants’ proffered defense was nothing more than a pretext aimed at getting the substance of the negotiations before the jury. Specifically, the plaintiff asserted that the defendants’ true purpose in arguing acquiescence was to suggest to the jury that if the plaintiff did not object to the mark, the mark must not be confusingly similar to those of the plaintiff. Thus, the admission of the parties’ negotiations had violated Rule 408 of the Federal Rules of Civil Procedure. The Second Circuit was unconvinced. It noted that Rule 408 “does not require exclusion when the evidence is offered for another purpose.” 1301 Moreover, “[the lead defendant] presented evidence that it had received . . . assurances from [the plaintiff] with respect to [the challenged] mark. The only way it could place its entitlement to estoppel in contention was by offering that evidence.” 1302 Apparently giving the evidence more weight than the jury had given it, the appellate court ultimately held that “[w]hile we recognize that in some instances a defendant could employ a claim of estoppel pretextually and abusively as a ploy to suggest impermissible inferences derived from settlement discussions.” 1303 d. Waiver Although infrequently invoked in unfair competition litigation, the equitable defense of waiver “‘is the intentional relinquishment of a known right with knowledge of its existence and the intent to relinquish it.’” 1304 In the single reported case in which the doctrine 1299. See id. at 1207-08. 1300. See PRL USA Holdings, Inc. v. U.S. Polo Ass’n, Inc., 520 F.3d 109 (2d Cir. 2008). 1301. Id. at 113. 1302. Id. 1303. Id. 1304. adidas-Am., Inc. v. Payless Shoesource, Inc., 546 F. Supp. 2d 1029, 1075 (D. Or. ) (quoting U.S. v. King Features Entm’t, Inc., 843 F.2d 394, 399 (9th Cir. 1988)), reconsideration denied, 540 F. Supp. 2d 1176 (D. Or. 2008). 230 Vol. 99 TMR was asserted over the past year, the defendant argued that the plaintiffs’ entry into a coexistence agreement with a third party barred them from seeking relief against the defendant. Entering summary judgment in the plaintiffs’ favor, the court held that the plaintiffs’ arrangement with the third party could not be considered a waiver of their rights as to an unrelated party such as the defendant. 1305 e. Estoppel In a dispute between manufacturers and distributors of athletic shoes, the defendant argued that the equitable defense of estoppel protected it from liability. 1306 Entering summary judgment in the plaintiffs’ favor, the court distinguished the doctrine from waiver, explaining that “estoppel focuses not on a party’s intent, but rather on the effects of his conduct on another. Estoppel arises only when a party’s conduct misleads another to believe that a right will not be enforced and causes him to act to his detriment in reliance upon this belief.” 1307 Although holding on the parties’ cross-motions for summary judgment that a justiciable issue of fact existed as to whether the plaintiffs had unreasonably delayed in bringing their claims, the court nevertheless concluded that “[the defendant] proffers no evidence that [the plaintiffs’] failure to act caused [the defendant] to sell potentially infringing [goods].” 1308 With the defendant unable to prove the required element of reliance, judgment as a matter of law in the plaintiffs’ favor followed. f. Claim and Issue Preclusion United States law generally recognizes three doctrines under which a litigant may be barred from relitigating a particular issue in either a later proceeding in the same case or a later case: (1) res judicata; (2) collateral estoppel; and (3) judicial estoppel. Only the first two of these doctrines made appearances in the case law over the past year. In one case applying both res judicata and collateral estoppel principles, the pro se plaintiff had previously prosecuted an infringement action against a large number of defendants, only to lose on summary judgment after he was unable to demonstrate protectable rights to his claimed mark. 1309 When he subsequently 1305. See id. at 1074-75. 1306. See id. at 1075. 1307. Id. 1308. Id. 1309. Akhenaten v. Najee, LLC, 544 F. Supp. 2d 320, 325-26 (S.D.N.Y. 2008). Vol. 99 TMR 231 filed another pro se complaint, many of the defendants he had targeted in the second action moved to dismiss the action on res judicata grounds. Converting the motion to one for summary judgment, the court held that the moving defendants were entitled to judgment as a matter of law. The court first explained that: Under the doctrine of res judicata, a party may be precluded from relitigating claims that either were raised or could have been raised during a prior litigation. Res judicata applies when “(1) the previous action involved an adjudication on the merits, (2) the previous action involved the [parties] or those in privity with them [and] (3) the claims asserted in the subsequent action were, or could have been, raised in the prior action.” 1310 Applying this standard, the court then held that, although some of the moving defendants had not been named or served in the first action, all of the defendants shared a common interest in an issue addressed by the first action, namely, whether the plaintiff had any protectable rights in the first instance. Because the moving defendants were therefore in privity with the defendants in the first action, the first action had been an adjudication on the merits, and both actions arose from a common nucleus of facts, a holding of res judicata was appropriate. 1311 The court then turned its attention to the moving defendants’ claim of collateral estoppel, holding that four conditions must be satisfied for the doctrine to apply: (1) the issues in both actions were identical; (2) the issues in the first action must have been actually litigated and decided; (3) there had been a full and fair opportunity for litigation of the first action; (4) the issues previously litigated must have been necessary to support a final judgment on the merits. 1312 The court noted that at least some of the plaintiff’s claims in the second action either had not been raised in, or had not been necessary to the resolution of, the first action. Nevertheless, the key issue in both cases—whether the plaintiff had protectable rights to his claimed mark in the first instance—had been fully litigated. As a consequence, the plaintiff was collaterally estopped from pursuing this claim or any other claims that were dependent on it. 1313 Not all opinions addressing possible issue preclusion did so using both res judicata and collateral estoppel principles. On the pure collateral estoppel front, the Seventh Circuit heard an appeal 1310. Id. at 327 (quoting Pike v. Freeman, 266 F.3d 78, 91 (2d Cir. 2001)) (citations omitted) (brackets in original)). 1311. See id. at 327-31. 1312. See id. at 331. 1313. See id. at 332. 232 Vol. 99 TMR from a district court holding that a finding of genericness in an earlier case was binding in later litigation brought by the same plaintiff. 1314 The marks in each case—HOG—were identical, but were used with different goods and services; specifically, motorcycles in the first case and a motorcycle owners’ group and ocean cruises in the second. Reviewing the district court’s invocation of collateral estoppel, the Seventh Circuit held: For a ruling to have collateral estoppel effect, four elements must be met: (1) the issue sought to be precluded must be the same as that involved in the prior litigation, (2) the issue must have been actually litigated, (3) the determination of the issue must have been essential to the final judgment, and (4) the party against whom estoppel is invoked must be fully represented in the prior action. 1315 It ultimately concluded that issue preclusion principles did not apply, as the earlier case had not addressed whether the plaintiff’s mark was generic for either the owners’ group services to which the plaintiff was now asserting rights or the cruise services provided by the defendant. 1316 In an action in which only res judicata was at issue, a manufacturer of vacuum cleaners filed a false advertising action only four months after settling a similar suit against the same defendant. 1317 In opposition to the defendant’s motion to dismiss, the plaintiff argued that the new action challenged the defendant’s promotion of a particular model that had not been on the market at the time of the earlier settlement. Noting that the plaintiff had had ample notice of the defendant’s advertising practices in the earlier case, the court held that the second action was barred under the Fifth Circuit’s standard for res judicata: The party asserting the defense of res judicata must meet four elements: “(1) the parties in both the prior suit and the current suit must be identical; (2) a court of competent jurisdiction must have rendered the first judgment; (3) the prior judgment must have been final and on the merits; and (4) the plaintiff must raise the same cause of action in both suits.” 1318 Only the last of these requirements was disputed between the parties, and the court was unwilling to hold that the intervening introduction of the defendant’s new model, which to that point had 1314. See H-D Mich., Inc. v. Top Quality Serv., Inc., 496 F.3d 755 (7th Cir. 2007). 1315. Id. at 760 (internal quotation marks omitted). 1316. See id. at 761-62. 1317. See Oreck Direct, LLC v. Dyson, Inc., 544 F. Supp. 2d 502 (E.D. La. 2008). 1318. Id. at 508 (quoting Davis v. Dallas Area Rapid Transit, 383 F.3d 309, 313 (5th Cir. 2004)). Vol. 99 TMR 233 been marketed to retailers, rendered the plaintiff’s claims in the second action substantively different from its claims in the first action, which had challenged advertising by the defendant to consumers: [A]ll the elements of a false advertising claim with respect to [the defendant’s] retail promotion of the [new model] existed during the pendency of the first action. [The plaintiff] alleges that [the defendant] makes literally false claims about a product destined for a group of consumers for whose dollars [the defendant] competes that is likely to cause it injury. . . . [B]efore final judgment in the first case, [the defendant] made the same claims to a group of consumers for whose shelf space [the plaintiff] also competes. Such claims, if literally false, threatened [the plaintiff] with injury similar to that resulting from claims made to individual consumers. 1319 The plaintiff’s complaint was therefore dismissed with prejudice for failure to state a claim. 1320 E. Remedies 1. Injunctive Relief a. Ex Parte Preliminary Relief In the early days of Section 35(d), 1321 courts were relatively willing to enter orders authorizing the seizure of goods bearing counterfeit marks, but judicial receptiveness to ex parte motions by trademark plaintiffs may be on the wane. The latest example of this possible trend came in an opinion dissolving an earlier seizure order on the ground that the record failed to establish that the defendants “would destroy, move, hide, or otherwise make the seized goods inaccessible, or that an order other than an ex parte seizure order would not be adequate to ensure that [the plaintiff] will have adequate remedies if defendants are ultimately found to have infringed [the plaintiff’s] trademark.” 1322 Specifically, the court found, “[the defendants] are incorporated businesses with inventories, assets, and a fixed physical presence. . . . They have appeared in this action, they are represented by competent reputable counsel, and they appear to sincerely believe that they have done nothing wrong.” 1323 Consequently, “[a]lthough the 1319. Id. at 516. 1320. See id. 1321. 15 U.S.C. § 1116(d)(1)(A) (2006). 1322. Beltronics USA, Inc. v. Midwest Inventory Distrib. LLC, 522 F. Supp. 2d 1318, 1323 (D. Kan. 2007), later proceedings, 545 F. Supp. 2d 1188 (D. Kan. 2008). 1323. Id. at 1324. 234 Vol. 99 TMR evidence suggests that defendants’ methods of doing business . . . might be less than ideal, there is simply no evidence in the record from which the court can find that defendants are the type of flyby-night defendants who will seek to evade the court’s jurisdiction.” 1324 b. Preliminary Injunctions Although it is a standard requirement for preliminary injunctive relief that the plaintiff will suffer irreparable harm in the absence of an injunction, trademark plaintiffs able to demonstrate a likelihood of success on the merits traditionally have had an easy time satisfying this prerequisite. 1325 In virtually every jurisdiction, “the infringement of a trademark is, by its very nature, an activity which causes irreparable harm—irreparable in the sense that no final decree of a court can adequately compensate a plaintiff for the confusion that has already occurred.” 1326 Consequently, “[i]n the context of trademark litigation, irreparable harm is generally presumed if a plaintiff demonstrates a likelihood of success on the merits.” 1327 Nevertheless, that rule may soon fall by the wayside as a result of eBay Inc. v. MercExchange, L.L.C., 1328 in which the Supreme Court overturned the Federal Circuit’s practice of mandating injunctive relief in virtually any case in which patent infringement had been demonstrated. Although the Sixth and 1324. Id. 1325. By the same token, of course, a plaintiff unable to demonstrate that it is likely to prevail on the merits of its claims will have difficulty securing preliminary relief. See, e.g., Gen. Motors Corp. v. Urban Gorilla, LLC, 500 F.3d 1222, 1229-30 (10th Cir. 2007); MNI Mgmt., Inc. v. Wine King, LLC, 542 F. Supp. 2d 389, 418 (D.N.J. 2008); Vista India v. Raaga, LLC, 501 F. Supp. 2d 605, 624-25 (D.N.J. 2007); ConWest Res., Inc. v. Playtime Novelties, Inc., 84 U.S.P.Q.2d 1019, 1027 (N.D. Cal. 2006); cf. Robert Trent Jones II, Inc. v. GFSI, Inc., 537 F. Supp. 2d 1061, 1068 (N.D. Cal. 2008) (rejecting reliance on presumption of irreparable harm by trademark licensor unable to demonstrate breach of license agreement). 1326. Carling Brewing Co. v. Philip Morris, Inc., 277 F. Supp. 326, 335 (N.D. Ga. 1967). 1327. Commerce Bank & Trust Co. v. TD Banknorth, Inc., 554 F. Supp. 2d 77, 87 (D. Mass. 2008); see also McNeil Nutritionals, LLC v. Heartland Sweeteners LLC, 566 F. Supp. 2d 378, 393 (E.D. Pa. 2008); Fin. Express LLC v. Nowcom Corp., 564 F. Supp. 2d 1160, 1178 (C.D. Cal. 2008); Ligotti v. Garofalo, 562 F. Supp. 2d 204, 227 (D.N.H. 2008); DS Waters of Am., Inc. v. Princess Abita Water, L.L.C., 539 F. Supp. 2d 853, 863 (E.D. La. 2008); BiosafeOne, Inc. v. Hawks, 524 F. Supp. 2d 452, 462 (S.D.N.Y. 2007); Best W. Int’l, Inc. v. Patel, 523 F. Supp. 2d 979, 991 (D. Ariz. 2007); Paul Frank Indus. v. Sunich, 502 F. Supp. 2d 1094, 1102 (C.D. Cal. 2007); Ptak Bros. Jewelry Inc. v. Ptak, 83 U.S.P.Q.2d 1519, 1523 (S.D.N.Y. 2007); J&B Wholesale Distrib. Inc. v. Redux Beverages LLC, 85 U.S.P.Q.2d 1623, 1629 (D. Minn. 2007); Cmty. of Christ Copyright Corp. v. Miller, 85 U.S.P.Q.2d 1314, 1316 (W.D. Mo. 2007); MSP Corp. v. Westech Instruments, Inc., 500 F. Supp. 2d 1198, 1217 (D. Minn. 2007); Shuffle Master Inc. v. Awada, 83 U.S.P.Q.2d 1054, 1059 (D. Nev. 2006). 1328. 547 U.S. 388 (2006). Vol. 99 TMR 235 Ninth Circuits previously had acknowledged eBay’s possible significance to unfair competition litigation in cursory discussions affirming the entry of relief, 1329 the Eleventh Circuit became the first federal appellate court to vacate a preliminary injunction based on the Supreme Court’s rejection of categorical rules in the area. 1330 Hearing an appeal in an infringement and false advertising action, the court observed that: [O]ur prior cases . . . extend a presumption of irreparable harm once a plaintiff establishes a likelihood of success on the merits of a trademark infringement claim. . . . Nonetheless, although established law entitles [the plaintiffs] to this presumption in the trademark infringement context, a recent U.S. Supreme Court case calls into question whether courts may presume irreparable harm merely because a plaintiff in an intellectual property case has demonstrated a likelihood of success on the merits. . . . Although eBay dealt with the Patent Act and with permanent injunctive relief, a strong case can be made that eBay's holding necessarily extends to the grant of preliminary injunctions under the Lanham Act. Similar to the Patent Act, the Lanham Act grants federal courts the “power to grant injunctions, according to the principles of equity and upon such terms as the court may deem reasonable.” Furthermore, no obvious distinction exists between permanent and preliminary injunctive relief to suggest that eBay should not apply to the latter. Because the language of the Lanham Act— granting federal courts the power to grant injunctions “according to the principles of equity and upon such terms as the court may deem reasonable”—is so similar to the language of the Patent Act, we conclude that the Supreme Court’s eBay case is applicable to the instant case. 1331 Notwithstanding this holding, the court did not reverse the district court outright but instead remanded the action for a reexamination of any irreparable harm the plaintiffs might have been suffering as a result of the defendants’ infringement. In particular, it instructed the lower court to address the issue of whether the presumption of irreparable harm traditionally attaching to a showing of infringement actually was the sort of categorical rule barred by eBay. It additionally observed that: 1329. See Audi AG v. D’Amato, 469 F.3d 534 (6th Cir. 2006) (affirming entry of permanent injunction); Reno Air Racing Ass’n v. McCord, 452 F.3d 1126 (9th Cir. 2006) (affirming permanent injunction). 1330. See N. Am. Med. Corp. v. Axiom Worldwide, Inc., 522 F.3d 1211 (11th Cir. 2008). 1331. Id. at 1227-28 (quoting 15 U.S.C. § 1116(a) (2006)). 236 Vol. 99 TMR the district court may well conclude on remand that it can readily reach an appropriate decision by fully applying eBay without the benefit of a presumption of irreparable injury, or it may well decide that the particular circumstances of the instant case bear substantial parallels to previous cases such that a presumption of irreparable injury is an appropriate exercise of its discretion in light of the historical traditions. 1332 In the wake of the Eleventh Circuit’s analysis, the Fifth Circuit had the opportunity to take up the same question. 1333 Reviewing the entry of a preliminary injunction, that court noted that the issue of whether a likelihood of confusion necessarily should produce a finding of irreparable harm was “a difficult question considering the Supreme Court’s opinion in eBay.” 1334 Still, however, it concluded that there was no need to answer that question because “[t]he facts of this case support a finding of a substantial threat of irreparable injury.” 1335 Those facts included the large financial value of a series of contracts that had led to the defendants’ infringement, the plaintiff’s interest in developing the geographic market occupied by the defendants, the “small pool” of customers for the services provided by the plaintiff, and the fact that the services provided by the defendants under the infringing mark were evolving, which meant that “[the plaintiff] had lost control of the quality of the technology that was being associated with the mark.” 1336 Under these circumstances, “the damage to [the plaintiff] could not be undone by monetary remedies,” and the district court’s finding of irreparable harm was not clearly erroneous. 1337 Two district court opinions predating that of the Eleventh Circuit also contained possible work-arounds should the Eleventh Circuit’s application of eBay become the law of the land. In the first, the defendants sold goods that had either been stolen before being placed into the stream of commerce or that bore counterfeit marks. 1338 In granting the plaintiffs’ motion for a preliminary injunction, the court held that: Plaintiffs have not merely shown a prima facie case of trademark infringement. They have also shown irreparable harm by showing that they have expended considerable 1332. Id. at 1228. 1333. See Paulsson Geophysical Servs., Inc. v. Sigmar, 529 F.3d 303 (5th Cir. 2008). 1334. Id. at 313. 1335. Id. 1336. Id. 1337. Id. 1338. See Klein-Becker usa LLC v. Englert, 83 U.S.P.Q.2d 1112 (D. Utah 2007). Vol. 99 TMR 237 resources in establishing and maintaining their quality controls and that there will be a loss of reputation, trade, and goodwill if counterfeit product or product that does not meet its quality controls is sold. This threatened injury to Plaintiffs’ control over the quality of the product that bears their mark is irreparable. Further, the extent of loss of consumer goodwill and reputation that Plaintiffs could suffer from the sale of counterfeit product is largely unquantifiable, as is the harm caused by the diversion of sales by Defendants from Plaintiffs’ authorized resellers and the harm caused to Plaintiffs’ ability to enter into future agreements with new resellers. 1339 In the second case, the plaintiff’s mark was used in connection with a television show about a sixteenth-century Korean chef. 1340 When the defendant began selling ramen noodles under the same mark, the plaintiff sought and received a preliminary injunction. As the court noted, however, the plaintiff did not merely rely upon a presumption of irreparable harm arising from its demonstration of a likelihood of confusion between the parties’ marks. Instead, it additionally invoked the impending use of its mark for a franchised restaurant system, which it demonstrated to the court’s satisfaction would be threatened by the questionable composition of the defendant’s noodles: Because [the plaintiff] cannot control the quality of [the defendant’s] ramen noodles, batches of which [the defendant] has admitted contained sodium percarbonate, a compound found in household cleaning products, [the plaintiff] will suffer irreparable injury to its goodwill if consumers tasting [the defendant’s] instant ramen noodles associate the ramen with [the plaintiff’s] show depicting a royal chef. 1341 Independent of its significance in trademark litigation, the issue of what constitutes irreparable harm also arose in the false advertising context, with the Eleventh Circuit again taking the lead. 1342 Although the district court in the action had concluded that proof of literal falsity constituted irreparable harm, the appellate court held that “[p]roof of falsity is generally only sufficient to sustain a finding of irreparable injury when the false statement is made in the context of comparative advertising between the plaintiff’s and defendant’s products.” 1343 Because the district court had relied solely on a presumption of irreparable 1339. Id. at 1116-17 (footnote omitted). 1340. See Munhwa Broad. Corp. v. Solafide Inc., 84 U.S.P.Q.2d 1993 (C.D. Cal. 2007). 1341. Id. at 2001. 1342. See N. Am. Med. Corp. v. Axiom Worldwide, Inc., 522 F.3d 1211 (11th Cir. 2008). 1343. Id. at 1227. 238 Vol. 99 TMR harm despite the absence of any comparative advertising by the plaintiff, it had abused its discretion in entering a preliminary injunction. 1344 A vacatur and remand was thus appropriate in that context as well. 1345 Other false advertising cases in which the parties were direct competitors did produce findings of irreparable harm. 1346 In one such case, the advertising in question was a putative PowerPoint sales presentation of the plaintiff, which actually had been prepared by the defendant and then widely disseminated via email by an unknown party. 1347 Based on its commitment to prevent further distribution of the presentation, the defendant argued that the plaintiff would not be irreparably harmed in the absence of injunctive relief. The court granted the plaintiff’s motion for a preliminary injunction anyway, holding that “Defendant has continued publicly to attest to the veracity of the material contained in the presentation. Moreover, there is no evidence that Defendant has publicly acknowledged that it, not Plaintiff’s dissatisfied customers, created the presentation.” 1348 Motions for preliminary relief obviously also can be denied because the requested relief will cause substantial harm to the non-movant. For example, one set of defendants escaped entry of a preliminary injunction in part because of the court’s conclusion that “[w]hile the harm Plaintiffs complain of is speculative, the issuance of an injunction would injure Defendants in an actual, imminent, and irreparable manner.” 1349 The defendants sought to keep a video game on the market during the holiday season, circumstances that led the court to find that “[a]n injunction would encroach upon Defendants’ First Amendment rights to create the [g]ame, and Defendants will suffer enormous financial impact if the injunction is granted.” 1350 Moreover, “due to the public nature of this case, an injunction could irreparably harm [the lead defendant’s] substantial goodwill and tarnish its reputation in both the music industry and the general public.” 1351 Particularly as the plaintiffs were unlikely to post the “substantial” bond that 1344. See id. 1345. See id. 1346. See, e.g., Hipsaver Co. v. J.T. Posey Co., 497 F. Supp. 2d 96, 109 (D. Mass. 2007) (“[T]he weight of the caselaw in this circuit supports a rebuttable presumption of causation and injury for willful literally false advertising in a two firm market where a defendant makes comparative statements targeting a direct competitor’s products.”). 1347. See SuccessFactors, Inc. v. Softscape, Inc., 544 F. Supp. 2d 975 (N.D. Cal. 2008). 1348. Id. at 983. 1349. Romantics v. Activision Publ’g, Inc., 532 F. Supp. 2d 884, 890 (E.D. Mich. 2008). 1350. Id. at 891. 1351. Id. Vol. 99 TMR 239 would be required to support the injunction, their motion was denied. 1352 A final opinion of note bearing on preliminary injunctive relief addressed not the requirements for its entry, but instead the issue of which party properly should bear the costs of compliance. 1353 Having been tagged with a finding that it had engaged in deceptive trade practices, one counterclaim defendant was required by a temporary restraining order to mail remedial notices to recipients of an earlier mailing it had undertaken. On appeal to the D.C. Circuit, the counterclaim defendant unsuccessfully objected to the district court’s imposition on it of the costs of the mailing. Upholding issuance of the restraining order itself as a proper exercise of the district court’s discretion, the appellate court declined to disturb the district court’s allocation of the associated costs. 1354 c. Permanent Injunctions Under ordinary circumstances, a finding of unfair competition will entitle the plaintiff to injunctive relief, even if there are other considerations at stake. Nevertheless, just as the Second Circuit clarified the significance of the “safe distance” rule in the context of liability determinations, 1355 so too did the Tenth Circuit confirm that the rule does not mandate the crafting of permanent injunctions to eliminate “all possibilities” of confusion. 1356 The rule’s proper scope was placed before the latter court in an appeal from a district court determination that a design mark used by the defendants infringed the plaintiff’s rights to a similar design. Based on that finding of infringement, the plaintiff had unsuccessfully sought permanent injunctive relief against the defendant’s use of an accompanying word mark found to be noninfringing. On appeal, the Tenth Circuit did not agree that the safe distance rule required the issuance of the requested injunction: Rather, “[a]lthough a district court may require a prior infringer to choose a mark that avoids all possibilities of confusion, it is ‘not required as a matter of law to do so.’ The district court was well within its discretion to deny [the plaintiff] injunctive relief on these grounds.” 1357 1352. Id. 1353. See Estate of Coll-Monge v. Inner Peace Movement, 524 F.3d 1341 (D.C. Cir. 2008). 1354. See id. at 1350. 1355. See PRL USA Holdings, Inc. v. U.S. Polo Ass’n, 520 F.3d 109, 117-18 (2d Cir. 2008). 1356. See John Allan Co. v. Craig Allen Co., 540 F.3d 1133 (10th Cir. 2008). 1357. Id. at 1142 (quoting Badger Meter, Inc. v. Grinnell Corp., 13 F.3d 1145, 1156 (7th Cir. 1994)). 240 Vol. 99 TMR As this outcome demonstrates, the precise terms of any permanent injunctive relief entered by a trial court are ordinarily subject to a deferential abuse of discretion standard on appeal. Thus, for example, the Supreme Court of Alabama squarely rejected an invitation by one prevailing plaintiff to review the terms of a narrowly tailored permanent injunction on a de novo basis. 1358 Referring to Eleventh Circuit authority, the Court held instead that: Because we are reviewing the entry of a permanent injunction entered on a Lanham Act claim, we conclude that it is appropriate to review the . . . scope of the injunction for an excess of discretion, especially in view of the fact that the trial court based its findings of fact that led to the crafting of the injunction upon the verdict in favor of [the plaintiff] after a lengthy trial and after considering [additional] evidence during [a] hearing on . . . postjudgment motions. 1359 The Eleventh Circuit itself also had the opportunity to apply an abuse of discretion standard in reviewing the terms of a permanent injunction. 1360 When a provider of charitable medical transportation devices prevailed in an infringement suit, the district court entered a permanent injunction against most uses of the defendants’ mark in the geographic territory in which the plaintiff operated. On appeal, the defendants argued that the public’s interest in free medical transportation was as important a consideration as was its interest in avoiding confusion. The court rejected this argument on the ground that the district court’s injunction allowed the defendants to continue to fly patients in and out of the plaintiff’s territory, even if it did bar them from soliciting donations and otherwise promoting their services there. It therefore affirmed both the issuance and scope of the injunction as within the district court’s discretion. 1361 At the district court level, requests for permanent injunctions requiring defendants to conduct corrective advertising have been sparse in recent times. In the only apparent reported opinion to dispose of such a request on the merits, the defendant had been found liable as a matter of law for literally false advertising. 1362 Despite otherwise bringing the hammer down on the defendant, the court was not sympathetic to the prevailing plaintiff’s suggestion that the defendant be required to post corrective 1358. See Classroomdirect.com, LLC v. Draphix, LLC, 992 So. 2d 692 (Ala. 2008). 1359. Id. at 702. 1360. See Angel Flight of Ga., Inc. v. Angel Flight Am., Inc., 522 F.3d 1200 (11th Cir. 2008). 1361. See id. at 1208-09. 1362. See Healthport Corp. v. Tanita Corp. of Am., 563 F. Supp. 2d 1169 (D. Or. 2008). Vol. 99 TMR 241 statements on its website and to send corrective statements to its past and existing clients. In particular, the court noted the absence of any record evidence or testimony “that a large audience actually viewed the site or that consumers were and continue to be actually be deceived about the nature of [the defendant’s] products.” 1363 Under these circumstances, it held that corrective advertising would not be appropriate. 1364 d. Contempt Courts are generally reluctant to find litigants in contempt, and such was the case over the past year in trademark and unfair competition litigation. One of the few opinions to address the issue at length did so in the context of a motion against a lead alleged contemnor who, although being the founder and principal of the original defendant in the action, had never been named as an individual defendant. 1365 Following the termination of the original action and the dissolution of the defendant targeted by it, the lead alleged contemnor founded another organization that began using marks falling within the scope of the permanent injunction in the original action. In considering the plaintiff’s allegation that the new organization and its principals were in contempt of that injunction, the court held the relevant issue to be whether the new organization was “effectively the same as the bound entity, despite a change in incorporeal formalities—a fact-sensitive and ‘elusive’ inquiry that looks to ‘whether there is a substantial continuity of identity between the two organizations.’” 1366 After an extensive review of the connections between the organizations, the court concluded that the two were “not so similar . . . as to compel a finding of privity.” 1367 The same result held with respect to another alleged corporate contemnor, despite its representations in trademark applications submitted to the USPTO that it and the other alleged contemnor were the “legal successors” to the original defendant. 1368 1363. Id. at 1182. 1364. See id. 1365. See Nat’l Spiritual Assembly v. Nat’l Spiritual Assembly, 547 F. Supp. 2d 879 (N.D. Ill. 2008). 1366. Id. at 892 (quoting Vacco v. Operation Rescue Nat’l, 80 F.3d 64, 70-71 (2d Cir. 1996)). 1367. Id. 1368. See id. at 898-89. 242 Vol. 99 TMR 2. Monetary Recovery a. Actual Damages (1) Calculation of Actual Damages Assuming that the appropriate quantum of actual damages is not defined by a prior contract between the parties, 1369 information relating to a plaintiff’s actual damages is typically within the possession of the plaintiff itself, many courts require at least some degree of detailed factual support for any awards, especially support in the form of actual confusion and a decline in sales. Not so for one panel of the Eleventh Circuit, which concluded in an appeal from jury findings of breach of contract and trademark infringement that “[u]nlike in the case of future lost profits caused by breach of contract, ‘Lanham Act damages may be awarded even when they are not susceptible to precise calculations.’” 1370 The court noted that the counterclaim plaintiff had sought an award of up to $120,000 for the costs associated with the development of a “corrective website,” corrective advertising through third-party media, and attendance at trade shows “to reestablish [the counterclaim plaintiffs’] identity in the market.” 1371 Based on the showings in support of these figures, the court upheld an award of $25,000 on the ground that “[t]he jury in this case awarded only a small percentage of the up to $120,000 requested by [the counterclaim plaintiff] in connection with its trademark infringement claim.” 1372 In a different case, however, the same court took a skeptical view of an attempt to establish actual damages of $7.6 million through expert witness testimony. 1373 The plaintiff’s infringement claims were grounded in a number of alleged activities by the defendants, but the district court threw out much of the plaintiff’s case as a matter of law. All that remained after that court’s summary judgment order was the plaintiff’s allegation that the defendants had infringed the plaintiff’s mark by displaying it on their website. Despite this narrowing of the issues, the plaintiff’s damages expert conceded at trial that he had based his estimated damages on the plaintiff’s original allegations, and that he had not 1369. For an example of an award under these circumstances, see Dunkin’ Donuts Franchised Rests. LLC v. Cardillo Capital, Inc., 551 F. Supp. 2d 1333, 1339 (M.D. Fla. 2008). 1370. Aronowitz v. Health-Chem Corp., 513 F.3d 1229, 1241 (11th Cir. 2008) (quoting Ramada Inns, Inc. v. Gadsden Motel Co., 804 F.2d 1562, 1565 (11th Cir. 1986)). 1371. Id. 1372. Id. 1373. See Optimum Techs., Inc. v. Henkel Consumer Adhesives, Inc., 496 F.3d 1231 (11th Cir. 2007). Vol. 99 TMR 243 come up with a modified figure tied to the alleged online activities that remained in the case. When a jury became deadlocked on the defendants’ liability for these activities, the district court granted the defendants’ renewed motion for summary judgment, and the Eleventh Circuit affirmed. According to the appellate court, the plaintiff had “introduced no evidence of the actual monetary damages that it suffered from [the defendants’] alleged trademark infringements and unfair competition on [their website.]” 1374 (2) Augmentation of Awards of Actual Damages Section 35(a) authorizes the award of actual damages “for any sum above the amount found as actual damages, not exceeding three times such amount” 1375 and Section 35(b) provides that, in the absence of extenuating circumstances, courts “shall” treble any award in a case in which the defendant has trafficked in goods or services using counterfeit marks. 1376 Courts rarely accept invitations from prevailing plaintiffs to exercise this authority, however, and a recent example of this phenomenon came in an action in which the defendants defaulted and withdrew from the action. 1377 At trial, the jury found that the plaintiffs were entitled to actual damages of $300,000, which was a fraction of the $3,800,000 they had sought. The plaintiffs were no more successful with their motion to augment the jury’s award under both Section 35(a) and Section 35(b), which the court rejected for a number of reasons. The court rejected the Section 35(a) component of the plaintiffs’ motion based on Federal Circuit authority holding that damages in the form of lost profits were not subject to augmentation, the court’s conclusion that “the basic award itself already lies at the outer fringe of the credible supporting evidence,” the plaintiffs’ “opportunistic omission . . . of certain undisputed facts and the distortion of others,” and the lead defendant’s “colorable” (if ultimately incorrect) belief that she was entitled to use the mark in question. 1378 And, taking into account the same considerations, the court rejected the plaintiffs’ reliance on Section 35(b) with the observation that “[n]umerous district courts have found extenuating circumstances and declined to award treble damages in cases where the defendant’s actions arguably had less justification than the facts demonstrated here.” 1379 1374. Id. at 1252. 1375. 15 U.S.C. § 1117(a) (2006). 1376. Id. § 1117(b). 1377. See Diálogo, LLC v. Bauza, 549 F. Supp. 2d 131 (D. Mass. 2008). 1378. Id. at 137-38 (citing Thompson v. Haynes, 305 F.3d 1369, 1380 (Fed. Cir. 2002)). 1379. Id. at 140. 244 Vol. 99 TMR b. Statutory Damages There are two bases for awards of statutory damages in federal unfair competition cases. First, Section 35(c) provides that, in cases involving the trafficking of goods bearing counterfeit marks, the plaintiff may elect to receive “not less than $500 or more than $100,000 per counterfeit mark per type of goods or services sold”; moreover, an award of up to $1,000,000 is possible “if the court finds that use of the counterfeit mark was willful.” 1380 Second, in cases involving violations of the ACPA, Section 35(d) allows a prevailing plaintiff to elect an award of statutory damages “in the amount of not less than $1,000 and not more than $100,000 per domain name, as the court considers just,” 1381 provided that registration of the domain name in question occurred after the effective date of the ACPA. 1382 As one court explained in a case over the past year involving pirated computer software, awards under at least the first of these provisions and those under the Copyright Act are not mutually exclusive: Defendants did not commit only one wrongful act. Had Defendants sold Plaintiff’s computer programs without representing that they were Microsoft programs, Defendants would have committed only copyright infringement. If Defendants had represented that the computer programs were [Plaintiff’s], when in fact they were not, then Defendants violated the Lanham Act. While there was one act, there were two wrongs. 1383 One example of an award of statutory damages came in an action brought by a cigarette manufacturer against traffickers in goods bearing counterfeit imitations of the manufacturer’s marks. 1384 Following a bench trial, the court offered up a laundry list of the factors considered in past cases evaluating whether the defendants’ conduct constituted willful violations of the Lanham Act: (1) whether the same conduct underlying the Lanham Act violation also resulted in the defendant’s [criminal] conviction for trafficking [in] counterfeit goods; (2) whether the defendant continued to import counterfeit [goods] after Customs seized 1380. 15 U.S.C. § 1117(c)(1)-(2) (2006). 1381. Id. § 1117(d). 1382. For an example of an opinion denying an award of statutory damages against a defendant that had registered its domain name after the ACPA’s effective date, see Silver Ring Splint Co. v. Digisplint, Inc., 567 F. Supp. 2d 847, 857 (W.D. Va. 2008). 1383. Microsoft Corp. v. Nop, 549 F. Supp. 2d 1233 (E.D. Cal. 2008) (quoting Microsoft Corp. v. Tierra Computer, Inc., 184 F. Supp. 2d 1329, 1331 (N.D. Ga. 2001)). 1384. See Philip Morris USA Inc. v. Lee, 547 F. Supp. 2d 685 (W.D. Tex. 2008). Vol. 99 TMR 245 similar goods; (3) the quantity of the counterfeit goods imported [and sold]; (4) whether the defendant ceased using the counterfeit goods upon receiving notice of the infringing nature of his conduct; (5) whether the defendant believed in good faith that his use of [the challenged] trademark was lawful; (6) the purchase price of [the] counterfeit goods; (7) whether the defendant attempted to verify the authenticity of [the] goods; (8) whether the defendant boasted about his . . . conduct to others; and (9) whether the defendant actively defended against the infringement claims. 1385 Applying these considerations, the court was sufficiently generous toward the lead defendant in that it held him liable for only two statutory damage awards of $100,000 apiece. 1386 In particular, it found that “his lack of knowledge [of the unlawful nature of the cigarettes] does not equate to a deliberate attempt to avoid learning of the illegal nature of his conduct.” 1387 As evidence of the lead defendant’s relative good faith, the court cited his attempts to verify the authenticity of the cigarettes by asking his suppliers to provide him with a certificate from the manufacturer. Of this, the court remarked that “[w]hile [the lead defendant] could have undertaken more scrutinizing and exhaustive efforts to verify the authenticity of the cigarettes, the Court finds that his efforts do not establish willful blindness.” 1388 On the contrary, “[i]t appears [he] misplaced his trust in business associates who may have taken advantage of [his] eagerness to benefit from what appeared to be a lucrative business endeavor.” 1389 The court was decidedly less sympathetic toward two other defendants in the action, however. In contrast to the lead defendant, the second defendant conceded that he had sought to enjoy the same profits as he had seen a third party enjoy from the trafficking in goods bearing counterfeit marks. 1390 Moreover, not only had the second defendant failed to take any action to confirm the cigarettes’ authenticity, he had boasted that his contacts in Customs would permit the cigarettes to be imported without interdiction. 1391 Under these circumstances, the court concluded that “statutory damages in an amount of $500,000.00 per mark infringed, or $1 million total, are reasonably necessary to compensate [the plaintiff] and strongly deter [the second 1385. Id. at 694 (citations omitted). 1386. See id. at 696-67. 1387. Id. at 694. 1388. Id. at 694-95. 1389. Id. at 695. 1390. See id. at 697. 1391. See id. 246 Vol. 99 TMR defendant] from future infringement.” 1392 The third defendant fared even more poorly: Having found that he had “acted willfully, intending to deceive consumers, when he advertised, sold, and distributed counterfeit cigarettes in the United States, conduct which he has admittedly engaged in since 1999,” the court deemed a $2 million award of statutory damages appropriate without extended analysis. 1393 A multimillion dollar award of statutory damages also came in a case arising from the defendants’ sale of cosmetics bearing counterfeit marks. 1394 The court’s order entering a default judgment against one of the defendants confused and conflated the different categories of monetary relief under the Lanham Act. 1395 It did identify statutory damages as one option, however, only to employ a rather novel method for calculating the proper quantum of that remedy. Specifically, although rejecting the plaintiff’s attempted demonstration of the defendant’s profits as part of the equitable remedy of an accounting, the court accepted the same figure—$2,238,624.50—“as just for an award of statutory damages” and “appropriate to compensate [the plaintiff] and to deter [the defendant] from engaging in infringing conduct in the future.” 1396 A different court made a more considered use of the defendants’ profits as a benchmark for an award of statutory damages. 1397 After concluding that the plaintiffs were entitled to statutory damages, the court noted in response to the lack of express guidelines in the Lanham Act that: As guidance, many courts have considered the following factors for the award of statutory damages under an analogous provision of the Copyright Act: (1) the expenses saved and the profits reaped; (2) the revenues lost by the plaintiff; (3) the value of the copyright; (4) the deterrent effect on others besides the defendant; (5) whether the defendant’s conduct was innocent or willful; (6) whether a defendant has cooperated in providing particular records from which to assess the value of the infringing material produced; and (7) the potential for discouraging the defendant. 1398 1392. Id. 1393. See Philip Morris USA Inc. v. Lee, 547 F. Supp. 2d 667, 679-80 (W.D. Tex.), later proceedings, 547 F. Supp. 2d 685 (W.D. Tex. 2008). 1394. See Chanel, Inc. v. Gordashevsky, 558 F. Supp. 2d 532 (D.N.J. 2008). 1395. See, e.g., id. at 537 (“A plaintiff who succeeds in showing a violation of its registered marks may recover actual damages measured by the defendant’s profits.”). 1396. Id. at 538. 1397. See Cartier v. Symbolix Inc., 544 F. Supp. 2d 316 (S.D.N.Y. 2008). 1398. Id. at 318 (internal quotation marks omitted). Vol. 99 TMR 247 This lengthy list of factors notwithstanding, the court ultimately rested its analysis only on the first, fourth, and sixth. The court initially determined that the defendants had trafficked in goods bearing counterfeit marks on three occasions, “which resulted in approximately $2,100 in illegal profits.” 1399 Without indicating which consideration might be entitled to greater weight, the court then balanced the defendants’ deliberate misconduct with the fact that “once litigation began, defendants were cooperative in the production of available records and made no additional infringing sales.” 1400 Under the circumstances, the court granted the plaintiffs’ request to enter statutory damages in the amount of three times the defendants’ profits: “[A] trebling of profits is appropriate to reflect the willful nature of the infringement and to deter others from similar violations.” 1401 Finally, one court threw the book at a group of defendants held liable as a matter of law for trafficking in cosmetic products bearing counterfeit marks. 1402 The defendants’ explanation of their conduct was less than compelling: They believed they were selling stolen legitimate goods, rather than counterfeit ones. “Either way,” the court remarked, “Defendants’ conduct is less than commendable.” 1403 Under the circumstances, the court concluded that “the . . . Defendants distributed counterfeit products in violation of the Lanham Act, and did so with at least a willful blindness, or a reckless disregard for [the] Plaintiff’s rights.” 1404 It therefore referred the matter to a magistrate judge to determine an appropriate quantum of statutory damages. 1405 c. Liquidated Damages Whether a liquidated damages provision in a trademarkrelated contract is enforceable depends on state law, and New Jersey law proved favorable to one licensor seeking to collect $204,000 in liquidated damages due under the express terms of the license between it and a group of defendants. 1406 Rejecting the defendants’ argument that the requested remedy was unreasonable, the court relied on several considerations to conclude that enforcement was appropriate. It first concluded that 1399. Id. at 319. 1400. Id. 1401. Id. 1402. See Johnson & Johnson Consumer Cos. v. Aini, 540 F. Supp. 2d 374 (E.D.N.Y. 2008). 1403. Id. at 391. 1404. Id. at 396. 1405. Id. 1406. See Days Inn Worldwide, Inc. v. BFC Mgmt., Inc., 544 F. Supp. 2d 401 (D.N.J. 2008). 248 Vol. 99 TMR the parties had enjoyed equal bargaining power when negotiating the license. Next, it agreed with the plaintiff that the precise quantum of actual damages was “very difficult to assess.” 1407 Finally, it found that the liquidated damages provided for by the license were reasonable when compared with the $49,739.76 otherwise entered by the court as monetary relief. 1408 d. Punitive Damages Recovery of punitive damages in infringement actions is rare, 1409 but an example of such an award came in litigation in Montana courts under that state’s law. 1410 The quantum of that relief was $100,000, and it was awarded as a result of the defendant’s default, rather than necessarily a determination on the merits of the plaintiff’s request for it. Challenging the award on appeal to the Montana Supreme Court, the defendant argued that it had not been afforded the opportunity to contest the plaintiff’s showing. The Court disagreed, holding instead that the defendant should have approached the trial court under a catchall provision of the Montana Rules of Civil Procedure allowing motions to set aside judgments in “situations other than those [otherwise] enumerated.” 1411 Because the defendant had failed to challenge the award under the appropriate rule, the Court declined to hear its objections on appeal. 1412 e. Accountings of Profits (1) Plaintiffs’ Entitlement to Accountings Courts continued to split on the issue of whether a plaintiff seeking an accounting of the defendant’s profits under Section 35 must demonstrate that the defendant willfully engaged in unfair competition, with some holding that such a demonstration was necessary. 1413 Thus, for example, although noting the differing approaches taken by the various circuits, one First Circuit district court held that the “better view of the evolving caselaw in this 1407. Id. at 406. 1408. See id. at 407. 1409. See, e.g., Future Lawn, Inc. v, Maumee Bay Landscape Contractors, L.L.C., 542 F. Supp. 2d 769, 781 (N.D. Ohio 2008) (denying award of punitive damages to prevailing plaintiff under Ohio law on ground that “defendant’s acts of infringement were not malicious, fraudulent, deliberate or willful”). 1410. See Mont. Prof’l Sports, LLC v. Nat’l Indoor Football League, LLC, 180 P.3d 1142 (Mont. 2008). 1411. Mont. R. Civ. P. 60(b)(6). 1412. See Mont. Prof’l Sports, 180 P.3d at 1150-51. 1413. See, e.g., Univ. of Kan. v. Sinks, 565 F. Supp. 2d 1216, 1255-56 (D. Kan. 2008). Vol. 99 TMR 249 circuit is that a plaintiff must prove willfulness” to be entitled to an accounting. 1414 This was especially true, it concluded, if a prevailing plaintiff were unable to prove any actual harm from the defendant’s conduct. 1415 Other courts disagreed, 1416 with one Second Circuit district court relying on the 1999 amendment to Section 35 to conclude that a showing of willful infringement is not a prerequisite for an accounting of the profits a defendant might have enjoyed from its unfair competition. 1417 Since the amendment, Section 35(a) has authorized accountings of profits in cases involving “a violation of any right of the registrant of a mark registered in the Patent and Trademark Office, a violation under [Section 43(a) or Section 43(d)], or a willful violation of [Section 43(c)].” 1418 Based on the appearance of the word “willful” only in conjunction with violations of Sections 32, 43(a), and 43(d), the court concluded that Section 35’s plain language prevented willfulness from being a prerequisite for an accounting. Accordingly, it denied a defense motion for summary judgment seeking the plaintiffs’ request for a disgorgement of profits. 1419 The same opinion also addressed the issue of whether the defendants’ lack of knowledge of the registrations covering the plaintiffs’ marks barred an accounting under Section 29, which provides that in actions under Section 32 “no profits and no damages shall be recovered . . . unless the defendant had actual notice of the registration.” 1420 Rejecting the defendants’ argument that their ignorance of the plaintiffs’ registrations immunized them against monetary recovery, the court engaged in an end run around Section 29’s express language made possible by the defendants’ having trafficked in goods bearing counterfeit marks. Turning to Section 35(b), the court held that that provision set forth a basis for an accounting that was independent of whatever 1414. Hipsaver Co. v. J.T. Posey Co., 497 F. Supp. 2d 96, 107 (D. Mass. 2007). 1415. See id. 1416. See, e.g., Healthport Corp. v. Tanita Corp. of Am., 563 F. Supp. 2d 1169, 1181-82 (D. Or. 2008) (holding that willful infringement not a prerequisite for an accounting but nevertheless denying accounting in light of absence of benefit to defendant or harm to plaintiff from defendant’s false advertising). 1417. See Cartier v. Aaron Faber, Inc., 512 F. Supp. 2d 165 (S.D.N.Y. 2007). Although characterizing the monetary relief sought by the plaintiffs as “damages” at times, the court otherwise noted that “Plaintiffs seek an award for profits and costs, but not actual damages.” Id. at 172. 1418. 15 U.S.C. § 1117 (2006). 1419. See Cartier, 512 F. Supp. 2d at 172-73. 1420. 15 U.S.C. § 1111. 250 Vol. 99 TMR monetary relief to which the plaintiffs were otherwise entitled, including, apparently, any relief barred by Section 29. 1421 These holdings notwithstanding, one court did enter summary judgment in the counterclaim defendant’s favor on the issue of whether the counterclaim plaintiff was entitled to an accounting of profits. 1422 The case was an unusual one in which the counterclaim defendant held a job that required her to be credentialed by the counterclaim plaintiff. Those credentials lapsed after she took the job, which led the counterclaim plaintiff to allege that its mark had been infringed by the counterclaim defendant’s continued holding out of herself as being credentialed. The court was unmoved by the counterclaim plaintiff’s claim that it was entitled to recover the profits attributable to this conduct. It noted that the counterclaim defendant had had the necessary credentials when applying for the job and that, upon receiving a demand letter from the counterclaim plaintiff, she had advised her employer of her now-uncredentialed status and then resigned. The counterclaim defendant was therefore entitled to summary judgment on the ground that she had not earned any profits to which the counterclaim would be entitled. 1423 (2) The Accounting Process Section 35(a) governs the mechanics of an accounting of an infringing defendant’s profits and provides in relevant part that: In assessing profits the plaintiff shall be required to prove defendant’s sales only; defendant must prove all elements of cost or deduction claimed. . . . If the court shall find that the amount of the recovery based on profits is either inadequate or excessive the court may in its discretion enter judgment for such sum as the court shall find to be just, according to the circumstances of the case. 1424 On one level, this language is clear: A prevailing plaintiff need demonstrate an infringing defendant’s “sales only,” with the defendant then bearing the burden to prove “all” offsets from those sales. In contrast to the Copyright Act, however, which allows a prevailing plaintiff to recover “any profits . . . that are attributable to the infringement,” 1425 Section 35 does not expressly define the starting point of the analysis—“the defendant’s sales only”—in 1421. See Cartier, 512 F. Supp. 2d at 172. 1422. See Vistein v. Am. Registry of Radiologic Technologists, 509 F. Supp. 2d 666 (N.D. Ohio 2007). 1423. See id. at 705. 1424. 15 U.S.C. § 1117 (2006). 1425. 17 U.S.C. § 504(b) (2006). Vol. 99 TMR 251 accountings under the Lanham Act. Consequently, the statute arguably leaves open the question of whether a prevailing plaintiff entitled to an accounting must apportion the defendant’s revenues between infringing sales and noninfringing sales or, alternatively, whether the defendant bears the burden of this apportionment if it wishes to escape the possible disgorgement of all its overall revenues. Courts often avoid this issue, 1426 but two federal appellate opinions squarely addressed it over the past year, with each holding strongly in favor of the prevailing plaintiff. The first came from the First Circuit, which heard an appeal of a district court order requiring the disgorgement of $230,339.17. 1427 This figure represented the plaintiff’s estimate of the profits enjoyed by the defendants and was based on $1.9 million in gross sales documented in their income tax returns; the defendants did not themselves introduce any evidence on the subject. Rejecting the defendants’ argument that sales of the actual infringing goods had been less than one percent of their gross revenues and that the plaintiff’s showing before the district court should have taken that figure into account, the First Circuit held: This argument entirely misplaces the burden of proof for a profit award under the Lanham Act. We have held that once the plaintiff has shown direct competition and infringement, the statute places the burden on the infringer to show the limits of the direct competition. This allocation of burdens arises from the language of the Lanham Act itself: “In assessing profits the plaintiff shall be required to prove defendant's sales only; defendant must prove all elements of cost or deduction claimed.” Here, [the plaintiff] met its burden by introducing tax returns showing [the defendants’] gross sales over the relevant time period. [The defendants] then had the burden of producing evidentiary documentation that some of those sales were unrelated to and unaided by [the defendants’] illicit use of [the plaintiff’s] marks. The company produced no such evidence. As a result, there was no clear error in the district court’s determination that $230,339.17 represented an equitable share of [the defendants’] $1.9 1426. See, e.g., Louis Vuitton Malletier v. Dooney & Bourke, 525 F. Supp. 2d 558, 657-60 (S.D.N.Y. 2007) (placing responsibility on the court, rather than the jury, to conduct an apportionment according to the equities of the case but not addressing the parties’ respective burdens in the apportionment process), later proceedings, 561 F. Supp. 2d 368 (S.D.N.Y 2008). 1427. See Venture Tape Corp. v. McGills Glass Warehouse, 540 F.3d 56 (1st Cir. 2008). 252 Vol. 99 TMR million in gross sales during the three-and-a-half year infringement period. 1428 Less than two weeks later, and without reference to the First Circuit opinion, the Seventh Circuit reached the same holding in an action against two infringing offshore defendants that chose not appear in the action. 1429 Although granting the plaintiff’s motion for a default judgment, the district court characterized the plaintiff’s request for the equitable remedy of an accounting as one for the legal remedy of an award of actual damages and required the plaintiff to apportion the defendants’ overall revenues—taken from the defendants’ annual reports—between infringing and noninfringing sources with “reasonable certainty.” The Seventh Circuit reversed on the ground that “the district court, despite mentioning in passing the proper standard for an accounting of profits, made a fundamental error of law by failing to distinguish between [the plaintiff’s] right to the defendants’ profits and its right to its damages.” 1430 Like the First Circuit, the court then held that the plaintiff had discharged its burden under Section 35(a) by proving the defendants’ gross, rather than infringing, sales: [W]hen the district court in this case assumed that it had to segregate [the defendants’] legitimate revenues from those that [the defendants] derived through [their] infringement, and that [the plaintiff] had to bear the risk of uncertainty about the proper characterization of the revenues, it erred. . . . In doing so, the court relieved [the defendants] of [their] burden to show which portions of [their] gross income were not attributable to [their] infringing uses. .... The burden was . . . on [the defendants] to show that certain portions of [their] revenues—which for purposes of the award after the default judgment [the plaintiff] established by using [the defendants’] own public financial statements and reports—were not obtained through [their] infringement of [the plaintiff’s] marks. 1431 Because the defendants had completely failed to carry their burden on either apportionment or permissible deductions, the court noted that the plaintiff’s request for only a percentage of the U.S. profits 1428. Id. at 64 (quoting 15 U.S.C. § 1117)(a) (2006) (internal quotation marks and citation omitted). 1429. See WMS Gaming Inc. v. WPC Prods. Ltd., 542 F.3d 601 (7th Cir. 2008). 1430. Id. at 607. 1431. Id. at 608. Vol. 99 TMR 253 generated by a single operating unit of the defendants was “more generous to [the defendants] than it had to be.” 1432 Another notable application of Section 35 over the past year arose from a Fifth Circuit appeal. 1433 At trial, the defendant in the action had failed to adduce any evidence or testimony of permissible deductions from its overall revenues. Instead, as a cooperative organization, it argued that it had not itself enjoyed any profits because it had passed them through to its members. Although initially rejecting this theory, the district court was eventually won over, and it ordered an accounting of $227.10 based largely on supplemental evidence consisting of the defendant’s tax return for the year in which the infringement had occurred. 1434 The Fifth Circuit was less convinced, however, holding that the defendant’s treatment for tax purposes was irrelevant to the calculation of its profits for purposes of Section 35: “We conclude . . . that profits earned by [the defendant] are . . . profits for purposes of the Lanham Act, regardless of how such profits are passed on or how they are taxed.” 1435 Accordingly, it held that the district court had abused its discretion and ordered an accounting in the full amount of the revenues enjoyed by the defendant during the period of infringement. 1436 Adopting the report and recommendations of two law professors acting as special masters, a Second Circuit district court tackled the issue of under what circumstances an infringing defendant may deduct a proportionate amount of its overhead expenses in the accounting process. 1437 The question arose in the context of the parties’ cross-motions to exclude expert reports on the quantum of profits to which the plaintiff might be entitled. The plaintiff’s expert adopted the “incremental approach” when evaluating the merits of the defendant’s claimed deductions. In an application of this methodology, “only those costs that were incurred as a direct result of the production of the infringing items are to be deducted from profits”; 1438 in contrast, the defendant’s expert proposed a “full absorption” approach, which would allow all of the defendant’s overhead costs to come into play. 1439 1432. Id. 1433. See Am. Rice, Inc. v. Producers Rice Mill, Inc., 518 F.3d 321 (5th Cir. 2008). 1434. See id. at 338. 1435. Id. at 340. 1436. See id. at 340-41. 1437. See Louis Vuitton Malletier v. Dooney & Bourke, 525 F. Supp. 2d 558 (S.D.N.Y 2008), later proceedings, 561, F. Supp. 2d 368 (S.D.N.Y. 2008). 1438. Id. at 654. 1439. Quoting an earlier opinion, the special masters offered the following explanation of the distinction between the parties’ competing approaches: 254 Vol. 99 TMR Denying the defendant’s motion to strike the plaintiff’s expert report, the special masters observed that “[t]he dispute over whether the ‘incremental approach’ or the ‘full absorption’ method should be used to determine [deductible] costs is not a question of the reliability of expert methodology but is rather a question of substantive law.” 1440 Surveying Second Circuit case law on the subject, they then concluded that: Both parties are correct in their positions under the substantive law, insofar as they go. In assessing the defendant’s net profit from the infringing sales, courts are to use the “full absorption” method, but only if the defendant proves the connection between a general cost such as overhead and the infringing sales. Because of this substantive law condition on using general costs to offset profits, it cannot be said at this point that [the expert’s] use of the “incremental” method is improper. His opinion on net profits conditionally fits the facts of the case, the condition being [the defendant’s] inability to prove a sufficient connection between any of the expenses not credited by [the expert] and the production and sale of the [infringing goods]. At trial, [the expert’s] opinion could therefore be expressed conditionally, i.e., assuming that [the defendant] cannot connect the general expenses that [the expert] refused to deduct, then the amount of any net profits . . . is X amount—subject to adjustment . . . for any particular expenses that [the defendant] can connect [to its infringement]. . . . 1441 For much the same reasons, the special masters recommended against the exclusion of the defendant’s expert report, which relied on the competing absorption methodology. 1442 (3) Augmentation of Accountings Although Section 35 permits the augmentation of accountings of infringing defendants’ profits, courts enter this relief infrequently at best. An Alabama trial court hearing Lanham Act For example, if defendant had bought new machinery to produce the infringing [goods], this would be deductible under either approach. However, if it used the same machinery to produce the infringing items that had been used to produce noninfringing items, the costs of operating and maintaining such machinery would be deductible under the full absorption approach (to the extent that the machinery was used for the infringing items) [but] under the incremental approach, no deduction at all would be allowed for such costs. Id. at 654 n.289 (quoting Warner Bros. v. Gay Toys, Inc., 598 F. Supp. 2d 424, 428 n.2 (S.D.N.Y. 1984)) (second set of brackets in original). 1440. Id. at 655. 1441. Id. at 656. 1442. See id. at 678-79. Vol. 99 TMR 255 claims did so, however, and its decision on the issue wound up before that state’s court of last resort. 1443 Having been allocated initial responsibility for the equitable remedy of an accounting, the jury in the case determined that the defendant’s awardable profits were $150,000. Noting that the defendant’s own expert witness had testified at trial that its net profits during the period of infringement were $246,930, and that even that figure had been reduced by the $172,828 the defendant had invested in the defense of the action, the trial court increased the award to the sum of those two figures, or $419,758. 1444 Mistakenly describing the resulting monetary relief as an award of actual damages, the Supreme Court of Alabama affirmed, holding that “[t]he trial court’s award is supported by [the defendant’s] own expert witness; we therefore conclude that the trial court’s calculation of damages was not clearly erroneous and that the trial court was entirely within its discretion in awarding the additional damages.” 1445 A federal district court also got into the action over the past year, albeit in an opinion that also referred to what it was awarding as “damages.” 1446 Having settled on an initial figure of $16,579.92, “which is the gross . . . revenue during the period of infringement,” the court noted that the defendants had continued to use the plaintiff’s marks despite their termination as franchisees in the plaintiff’s hotel system. 1447 Under the circumstances, the court held that the defendants had “possessed the requisite intent so as to entitle Plaintiff to treble damages [sic] in the amount of $49,739.76.” 1448 f. Attorneys’ Fees Awards of attorneys’ fees to prevailing parties in trademark and unfair competition litigation 1449 are left to the discretion of trial courts, 1450 and there are a number of mechanisms authorizing 1443. See Classroomdirect.com, LLC v. Draphix, LLC, 992 So. 2d 692 (Ala. 2008). 1444. See id. at 700. 1445. Id. at 717. 1446. See Days Inn Worldwide, Inc. v. BFC Mgmt., Inc., 544 F. Supp. 2d 401 (D.N.J. 2008). 1447. Id. at 405-06. 1448. Id. at 406. 1449. Parties that do not prevail on the merits obviously are not entitled to awards of fees. See, e.g., Perfumebay.com Inc. v. eBay Inc., 506 F.3d 1165, 1178 (9th Cir. 2007) (“The district court did not abuse its discretion in denying attorneys’ fees to [the appellant because the appellant] was not a prevailing party. . . .”). 1450. The deferential attitude of appellate courts to the disposition of fee petitions is reflected in the observation by the Supreme Court of Alabama over the past year that “[o]ur research has failed to locate a case in which a United States Court of Appeals has reversed a trial court’s decision on whether to award attorney fees in a Lanham Act case.” 256 Vol. 99 TMR the exercise of that discretion. Although it is possible in some jurisdictions for prevailing parties to secure awards of fees under state law, 1451 most cases to have addressed the subject have done so under federal law, which recognizes a number of bases for fee awards. For example, the Federal Rules of Appellate Procedure authorize awards of fees to reimburse the expenses of frivolous appeals. 1452 As in any federal court action, a court hearing a trademark case also may award fees if a litigant has “unreasonably and vexatiously” multiplied the proceedings in a case. 1453 Similarly, courts may impose awards of fees in the form of sanctions under Rule 11 of the Federal Rules of Civil Procedure. 1454 Federal courts likewise have the inherent power to award fees if bad-faith litigation practices by the parties justify them 1455 or as a condition to the lifting of a default judgment. 1456 Of greatest importance, however, are the provisions of Section 35 of the Act, which, in light of their importance to the case law over the past year, merit reproduction at length: (a) When a violation of any right of the registrant of a mark registered in the Patent and Trademark Office, a violation under section [43(a)] or (d) or a willful violation under section [43(c)], shall have been established . . ., the plaintiff shall be entitled, subject to the provisions of sections [29 and 32], and subject to the principles of equity, to recover (1) defendant’s profits, (2) any damages sustained by the plaintiff, and (3) the costs of the action. . . . The court in exceptional cases may award reasonable attorney fees to the prevailing party. (b) In assessing damages under subsection (a), the court shall, unless the court finds extenuating circumstances, enter judgment for three times such profits or damages, whichever is greater, together with a reasonable attorney’s fee, in the case of any violation of section [32(1)(a)] . . . that consists of intentionally using a mark or designation, knowing such mark Classroomdirect.com, LLC v. Draphix, LLC, 992 So. 2d 692, 713 (Ala. 2008); see also Venture Tape Corp. v. McGills Glass Warehouse, 540 F.3d 56, 64 (1st Cir. 2008) (declining to disturb district court award of fees as abuse of discretion). 1451. See, e.g., Contractual Obligation Prods., LLC v. AMC Networks, Inc., 546 F. Supp. 2d 120, 131-32 (S.D.N.Y. 2008) (awarding fees under California law to prevailing defendants). 1452. Fed. R. App. P. 38. 1453. 28 U.S.C. § 1927 (2006). 1454. Fed. R. Civ. P. 11. 1455. See, e.g., San Juan Prods., Inc. v. San Juan Pools, Inc., 849 F.2d 468 (10th Cir. 1988). 1456. See, e.g., E. & J. Gallo Winery v. Cantine Rallo, S.P.A., 430 F. Supp. 2d 1064, 109495 (E.D. Cal. 2005). Vol. 99 TMR 257 or designation is a counterfeit mark . . . in connection with the sale, offering for sale, or distribution of goods or services. . . . (c) In a case involving the use of a counterfeit mark . . . in connection with the sale, offering for sale, or distribution of goods or services, the plaintiff may elect, at any time before final judgment is rendered by the trial court, to recover, instead of actual damages and profits under subsection (a), an award of statutory damages for any such use in connection with the sale, offering for sale, or distribution of goods or services in the amount of— (1) not less than $1,000 or more than $200,000 per counterfeit mark per type of goods or services sold, offered for sale, or distributed, as the court considers just; or (2) if the court finds that the use of the counterfeit mark was willful, not more than $2,000,000 per counterfeit mark per type of goods or services sold, offered for sale, or distributed, as the court considers just. (d) In a case involving a violation of section [43(d)(1)], the plaintiff may elect, at any time before final judgment is rendered by the trial court, to recover, instead of actual damages and profits, an award of statutory damages in the amount of not less than $1,000 and not more than $100,000 per domain name, as the court considers just. 1457 (1) Awards in Favor of Prevailing Plaintiffs Congress amended Section 35(c) in 1996 to introduce statutory damages as a remedy for the trafficking in goods and services associated with counterfeit marks. 1458 Although, as noted above, Section 35(c) provides for statutory damages “instead of actual damages and profits under subsection (a),” this language does not on its face except attorneys’ fees from the available remedies under this subsection. Nevertheless, the Ninth Circuit held in K & N Engineering v. Bulat 1459 that a plaintiff electing statutory damages under Section 35(c) is precluded from seeking attorneys’ fees under Section 35(b). Interpreting this language, the K & N Engineering court stated that “Section [35(c)] makes no provision for attorney’s fees; nor does § [35(b)] authorize such fees for a plaintiff seeking statutory damages under § [35(c)]. Section [35(b)’s] attorney’s fees provision applies only in cases with actual damages under § [35(a)].” 1460 Although the court held that attorneys’ fees under 1457. 15 U.S.C. § 1117. 1458. Id. § 1117(c). 1459. 510 F.3d 1079 (9th Cir. 2007). 1460. Id. at 1082. 258 Vol. 99 TMR Section 35(b) are not available in connection with statutory damages under Section 35(c), it left open the possibility that a plaintiff electing statutory damages could recover attorney’s fees for “exceptional cases” under Section 35(a). 1461 At the outset, this analysis fails to accord proper significance to the express language of subsections (a), (b), and (c) in Section 35. As reflected in the quotation above, Section 35(a) authorizes awards of (1) “defendant’s profits,” (2) “any damages sustained by the plaintiff,” (3) “the costs of the action,” and (4) “in exceptional cases . . . reasonable attorney fees to the prevailing party.” 1462 In cases involving counterfeit marks, Section 35(b) provides for augmented remedies, but it does not recite them as a stand-alone list; rather, it incorporates Section 35(a)’s remedies by reference. 1463 Section 35(c) in turn allows a prevailing plaintiff in a counterfeiting action to elect an award of statutory damages “instead of actual damages and profits under [Section 35(a)].” 1464 Section 35(c) does not, however, provide that an award of statutory damages may be elected “instead of attorneys’ fees,” or, for that matter, “instead of the costs of the action.” The express identification of only two of Section 35(a)’s remedies necessarily means that the other two Section 35(a) remedies are excluded from Section 35(c)’s “instead of” language under the principle of expressio unius. 1465 Moreover, the availability of attorneys’ fees under Section 35(b) is neither expressly nor implicitly linked to an award of actual damages under Section 35(a); rather, it provides only that an award of fees may be made “together with” any assessment of damages or profits that might be made under Section 35(a). 1466 The proper reading of Section 35(c) therefore is that statutory damages only take the place of damages and an accounting of the defendant’s profits, rather than affecting the plaintiff’s entitlement to attorneys’ fees and costs. Beyond the express text of Section 35(c), the legislative history of the 1996 amendments that produced the statute’s current language contains no readily apparent evidence that Congress intended to eliminate the availability of attorneys’ fees to prevailing plaintiffs electing statutory damages. The 1461. See id. at 1082 n.5. 1462. 15 U.S.C. § 1117(a). 1463. See id. § 1117(b). 1464. Id. § 1117(c). 1465. See, e.g., Fleischmann Distilling Corp. v. Maier Brewing Co., 386 U.S. 714 (1967) (holding attorneys’ fees unrecoverable in actions under Lanham Act in light of absence of express authorization in the then-extant version of Section 35). 1466. Cf. Centaur Commc’ns, Ltd. v. A/S/M Commc’ns, Inc., 830 F.2d 1217, 1229 (2d Cir. 1987) (holding, in non-counterfeiting case, that a showing of actual damages is not a prerequisite for award of fees under Section 35(a)). Vol. 99 TMR 259 accompanying House Report noted that the legislation “amends § 35 of the Lanham Act to allow trademark owners to opt for judicially determined statutory damages, rather than actual damages and profits.” 1467 And one of the bill’s sponsors noted that “by providing for judicially determined statutory damages for trademark owners, this bill will make it easier to combat commercial counterfeiting,” an assessment inconsistent with an intent to cut back on other remedies available under prior law. 1468 Finally, most courts awarding fees have held that “[a]lthough the term ‘exceptional’ is not defined in the statute, ‘generally a trademark case is exceptional for purposes of an award of attorneys’ fees when the infringement is malicious, fraudulent, deliberate or willful.’” 1469 Cases in which direct evidence of this sort of infringement is available are rare, but they do exist, especially in the context of goods bearing counterfeit marks. Thus, even before the 1988 amendment to Section 35(b) making fee awards against adjudicated counterfeiters mandatory in the absence of extenuating circumstances, courts routinely found that the intentional use of spurious imitations of plaintiffs’ marks warranted this remedy. 1470 Moreover, this general rule was applicable not only to actual counterfeiters, but also to retailers who failed to confirm the authenticity of the goods sold by them. 1471 As a result, a statutory amendment confirming the availability of fees to prevailing plaintiffs electing awards of statutory damages would be far more consistent with the traditional treatment of the issue under that statute as a whole. The better approach was taken by the Seventh Circuit, which affirmed an award of attorneys’ fees under Section 35(b) despite the plaintiff’s recovery of statutory damages under Section 35(d) as well. 1472 Contesting the fee award, the defendants argued that they had not knowingly sold cigarettes bearing counterfeit imitations of the plaintiff’s marks. Although noting as an initial matter that awards under Section 35(d) were subject to review on a de novo basis, rather than under the abuse of discretion standard 1467. H.R. Rep. No. 104-556, at 8 (1996), as reprinted in 1996 U.S.C.C.A.N. 1074, 1081. 1468. 146 Cong. Rec. H5778 (daily ed. June 4, 1996) (statement of Rep. Schroeder). 1469. Hearst Corp. v. Or. Worsted Co., 58 U.S.P.Q.2d 1761, 1765 (D. Or. 2001) (quoting Lindy Pen Co. v. Bic Pen Corp., 982 F.2d 1400, 1409 (9th Cir. 1993)). 1470. See, e.g., Playboy Enters. v. Baccarat Clothing Co., 692 F.2d 1272 (9th Cir. 1982) (reversing as abuse of discretion district court’s refusal to award fees); see also Gucci Shops, Inc. v. Dreyfoos & Assocs., 222 U.S.P.Q. 302 (S.D. Fla. 1983) (finding case to be exceptional based on defendants’ counterfeiting); Polo Fashions, Inc. v. Gentlemen’s Corner Wholesale, Inc., 221 U.S.P.Q. 147 (D.S.C. 1983) (same). 1471. See, e.g., Adidas Sportschuhfabriken Adi Dassler Stiftung & Co. v. New Generation, 16 U.S.P.Q.2d 1237 (S.D.N.Y. 1990). 1472. See Lorillard Tobacco Co. v. A & E Oil, Inc., 503 F.3d 588 (7th Cir. 2007). 260 Vol. 99 TMR applicable to awards under Section 35(a), 1473 the appellate court was otherwise unsympathetic to the defendants. Rather than requiring a showing of actual knowledge, it held that Section 35(b) mandated only a demonstration that the defendants had been willfully blind to the unlawful nature of the goods they had sold. On this issue, “[t]here is simply no evidence in the record to support defendants’ claims of an innocent source for the counterfeit cigarettes.” 1474 Specifically, the goods in question bore clearly fake tax stamps, the defendants were unable to agree among themselves as to how cartons seized by the plaintiff had found their way to the defendants’ shelves, and there was no convincing evidence that the defendants might have acquired the goods from a legitimate source. 1475 With the defendants further unable to identify any extenuating circumstances that might otherwise excuse their conduct, the imposition of fees against them stood. 1476 Independent of the relationship between subparagraphs (b) and (d) of Section 35, other opinions presented more straightforward applications of the “exceptional case” standard of Section 35(a), with plaintiffs more often than not winding up with the short end of the stick. 1477 The most extreme example of this came in a case in which a district court had held a defendant liable for trafficking in counterfeit goods and tagged him with $200,000 in statutory damages. 1478 Addressing the plaintiff’s request for an award of fees, the court acknowledged that “[i]ntentional infringement may establish an exceptional case.” 1479 Still, however, 1473. According to the court: Ordinarily, a district court’s decision to award attorneys’ fees is reviewed for abuse of discretion. The award of fees in this case, however, was not made in the discretion of the district court, but rather followed from statutory language requiring the award of attorneys’ fees if the defendants knowingly used a counterfeit mark. Because the award of attorneys’ fees follows from an application of statutory language, we review the district court’s application of the statute de novo as a question of law. Id. at 591 (citations omitted). 1474. Id. at 593. 1475. See id. at 592-94. 1476. See id. at 595. 1477. See, e.g., Judkins v. HT Window Fashion Corp., 529 F.3d 1334, 1344 (Fed. Cir. 2008) (denying, in cursory analysis, fee petition brought by prevailing appellant); Healthport Corp. v. Tanita Corp. of Am., 563 F. Supp. 2d 1169, 1183 (D. Or. 2008) (declining to award fees to prevailing false advertising plaintiff on ground that literally false statement by defendant was “only marginally material to consumer purchasing decisions”); Johnson & Johnson Consumer Cos. v. Aini, 540 F. Supp. 2d 374, 396-97 (E.D.N.Y. 2008) (declining to award fees to prevailing plaintiff despite finding that defendants had acted with willful blindness in trafficking in goods bearing counterfeit marks). 1478. See Philip Morris USA Inc. v. Lee, 547 F. Supp. 2d 685 (W.D. Tex. 2008). 1479. Id. at 697. Vol. 99 TMR 261 it held that “a finding of willfulness for the purpose of awarding statutory damages does not bind a court in determining whether or not a case is exceptional. . . . In deciding whether to award attorney’s fees, the Court should consider all of the evidence, including the testimony of the defendant, and appraise the defendant’s motives.” 1480 Having done so, the court found that the plaintiff had failed to demonstrate, by what it regarded as the required clear and convincing showing, that the defendant was aware of the unlawful nature of his conduct: “There is evidence that [the defendant] had concerns regarding the authenticity of the [goods he was selling] and undertook to dispel those concerns. While [his] efforts . . . may have been ultimately insufficient, . . . [he] did not act maliciously, fraudulently, or willfully, and does not show a high degree of culpability. . . .” 1481 The Fifth Circuit faced another issue bearing on the entitlement of a plaintiff to an award of attorneys’ fees and similarly resolved it in the defendant’s favor. 1482 Following a bench trial on claims for breach of contract and infringement, a prevailing plaintiff sought an award of fees under the former cause of action and an accounting of profits under the latter. Applying Texas election of remedies doctrine, the district court held that the plaintiff was restricted to the judgment that afforded it the greater remedy. The Fifth Circuit affirmed, holding that “[w]ere this Court to grant both awards to [the plaintiff], we would be picking and choosing from damage elements arising under different theories, which is impermissible under Texas law.” 1483 Finally, the Supreme Court of Alabama also stepped up to the plate to affirm the denial of a prevailing plaintiff’s fee petition. 1484 The case had been tried to a jury, which awarded only $150,000 of the $5,000,000 in compensatory damages sought by the plaintiff and also rejected the plaintiff’s request for an award of punitive damages under state law. 1485 Reviewing the trial court’s refusal to award fees for an abuse of discretion, the Court noted that “[a]lthough the Lanham Act does not define the term ‘exceptional,’ the . . . Eleventh Circuit has stated that ‘the legislative history of the Act suggests that exceptional cases are those where the infringing party acts in a “malicious,” “fraudulent,” “deliberate,” or 1480. Id. at 697-98. 1481. Id. at 698. 1482. See Am. Rice, Inc. v. Producers Rice Mill, Inc., 518 F.3d 321 (5th Cir. 2008). 1483. Id. at 336. 1484. See Classroomdirect.com, LLC v. Draphix, LLC, 992 So. 2d 692 (Ala. 2008) 1485. See id. at 712. 262 Vol. 99 TMR “willful” manner.’” 1486 Moreover, “[w]hether this Court would find this case an ‘exceptional’ one that would support an attorney-fee award under the Lanham Act is not the relevant inquiry here.” 1487 Consequently, it held that “especially in light of the jury’s decision to award minimal compensatory damages and no punitive damages, we cannot say that the trial court exceeded its discretion in apparently concluding that this case was not an exceptional one that would mandate an award of attorney fees under the Lanham Act.” 1488 Nevertheless, some plaintiffs did not leave court emptyhanded, 1489 and, indeed, the Fifth Circuit affirmed an award of fees in another case. 1490 The gravamen of the plaintiff’s case on the merits was that the defendant had repeatedly represented to the trade and to the plaintiff’s franchisors that the defendant was the exclusive purchasing agent for the plaintiff’s franchise system. The Fifth Circuit adopted a two-tiered standard of review: it reviewed the district court’s finding of bad faith for clear error and the district court’s award of fees for an abuse of discretion. The district court’s actions passed muster under both standards, and the fee award stood. 1491 Within the universe of reported district court opinions denying fee petitions, one in particular described a record that cried out for an award of fees in favor of the prevailing plaintiff. 1492 In prior litigation brought by the defendants to determine rights to the marks in question, a Hawaii state court had entered summary judgment in favor of the plaintiff’s predecessor. Despite this loss, the defendants proceeded to use the marks in connection with goods and services identical to those of the plaintiff until they were found liable as a matter of law for the marks’ infringement. Rejecting the defendants’ claims of good faith, the court faulted them for having failed to produce a noninfringement opinion from counsel and for relying on minor differences between the parties’ presentations of their marks in defending against the plaintiff’s claims of infringement. Moreover, the court noted, the defendants 1486. Id. (quoting Burger King Corp. v. Pilgrim’s Pride Corp., 15 F.3d 166, 168 (11th Cir. 1994) (quoting H.R. Rep. No. 93-524, at 2 (1974), as reprinted in 1974 U.S.C.C.A.N. 7132, 7133)). 1487. Id. at 713. 1488. Id. 1489. See, e.g., Venture Tape Corp. v. McGills Glass Warehouse, 540 F.3d 56, 64 (1st Cir. 2008) (affirming award of fees to prevailing plaintiff based on district court finding that defendants had willfully infringed plaintiff’s marks). 1490. See Schlotzsky’s, Ltd. v. Sterling Purchasing & Nat’l Distrib. Co., 520 F.3d 393 (5th Cir. 2008). 1491. See id. at 402. 1492. See World Triathalon Corp. v. Dunbar, 539 F. Supp. 2d 1270 (D. Haw. 2008). Vol. 99 TMR 263 had misrepresented themselves as the marks’ owners to licensees of the plaintiff and had even secured state registrations of two of them. 1493 Because “Defendants’ infringement was not a close case,” 1494 the relatively sporadic nature of that infringement did not affect the plaintiff’s entitlement to an award of fees. 1495 Finally, several courts confirmed that a defendant who has defaulted in response to a complaint alleging willful infringement will not be heard to complain of any resulting fee award under Section 35. 1496 The Ninth Circuit was among them, holding in one case that “[t]he district court entered [a] default and [the defendant] concedes that its default occurred with respect to a complaint that pled willfulness. Thus, all factual allegations in the complaint are deemed true, including the allegation of [the defendant’s] willful infringement of [the plaintiff’s] trademarks.” 1497 Under these circumstances, “[the] default sufficiently establishes [the plaintiff’s] entitlement to attorneys’ fees under the Lanham Act.” 1498 (2) Awards in Favor of Prevailing Defendants As is the case with prevailing plaintiffs, prevailing defendants seeking fee awards often did so without success. 1499 For example, one plaintiff’s infringement claims fell short as a matter of law “because in opposing [the defendant’s] motion for summary judgment [the plaintiff] failed to produce any admissible evidence tending to show a likelihood of confusion, or address any of the . . . factors required for a likelihood of confusion analysis.” 1500 Despite 1493. See id. at 1275-78. 1494. Id. at 1276. 1495. See id. at 1279. 1496. See, e.g., Alfa Corp. v. Alfa Mortgage Inc., 560 F. Supp. 2d 1166, 1177-78 (M.D. Ala. 2008) (finding defaulting defendant’s willful infringement established by allegations in complaint); Chanel, Inc. v. Gordashevsky, 558 F. Supp. 2d 532, 538-39 (D.N.J. 2008) (finding case to be an exceptional one based on defaulting defendant’s failure to contest allegations of willful infringement); Prot. One Alarm Monitoring, Inc. v. Executive Prot. One Sec. Serv., LLC, 553 F. Supp. 2d 201, 208 (E.D.N.Y. 2008) (finding an award of fees appropriate on ground that “a default requires that the factual allegations in the complaint be accepted as true and plaintiff plead[ed] the necessary facts for willful infringement”); Philip Morris USA Inc. v. Lee, 547 F. Supp. 2d 667, 681 (W.D. Tex.) (awarding fees based on defendant’s admission of longstanding sales of goods bearing counterfeit marks and failure to enter formal appearance in proceeding), later proceedings, 547 F. Supp. 2d 685 (W.D. Tex. 2008). 1497. Derek Andrew, Inc. v. Poof Apparel Corp., 528 F.3d 696, 702 (9th Cir. 2008). 1498. Id. 1499. See, e.g., Silberstein v. Fox Entm’t Group, 536 F. Supp. 2d 440, 445 (S.D.N.Y. 2008) (holding, in cursory analysis, that plaintiff’s unsuccessful but “not baseless” claim of prior use in commerce did not warrant imposition of fees). 1500. Applied Info. Scis. Corp. v. eBay, Inc., 511 F.3d 966, 973 (9th Cir. 2007). 264 Vol. 99 TMR the weakness of its case on the merits, however, the plaintiff escaped an award of fees by the district court. On appeal, the Ninth Circuit affirmed, citing the district court’s finding of “no compelling proof that [the plaintiff] acted capriciously or pursued litigation to harass [the defendant], or that [the plaintiff] intended to bring a meritless or unreasonable case against [the defendant].” 1501 Not all prevailing defendants struck out. Having successfully defended against allegations of infringement, one set of defendants scored reimbursement of their fees based both on the lack of merit of the plaintiffs’ case and on the plaintiffs’ misconduct during the litigation: [The lead plaintiff] filed an infringement lawsuit without evidence of any sales of [the goods allegedly covered by its mark] to support its claim to rights in the . . . mark for such products. It ignored requests to produce documents to support its claim, forcing the defendants’ lawyers to go to court to compel action. [The lead plaintiff’s principal] offered confused, misleading deposition testimony with unfulfilled promises of cooperation. And the documents eventually produced effectively made a mockery of the entire proceeding. 1502 Even without misconduct of this sort in the course of litigation, the lack of merit of a plaintiff’s claims produced a fee award in another case. 1503 The plaintiff objected to the defendants’ release of a television series without crediting the plaintiff for its contributions to the series. After the plaintiff’s preliminary injunction motion was denied because its claim of a false designation of origin under Section 43(a)(1)(A) was barred by the Supreme Court’s decision in Dastar Corp. v. Twentieth Century Fox Film Corp., 1504 the plaintiff switched gears and alleged that the defendants had engaged in false advertising in violation of Section 43(a)(1)(B). Because the plaintiff failed to establish that it was a competitor of the defendants, however, this new theory also fell short. 1505 Entertaining the defendants’ fee petition, the court acknowledged that “[d]efendants in a Lanham Act action are not entitled to attorney’s fees merely because plaintiff’s claim was meritless and unable to survive summary judgment.” 1506 Nevertheless, “because plaintiff’s Lanham Act claim was 1501. Id. at 973. 1502. See Cent. Mfg., Inc. v. Brett, 492 F.3d 876, 884 (7th Cir. 2007). 1503. See Contractual Obligation Prods., LLC v. AMC Networks, Inc., 546 F. Supp. 2d 120 (S.D.N.Y. 2008). 1504. 539 U.S. 23 (2003). 1505. See Contractual Obligation Prods., 546 F. Supp. 2d at 131. 1506. Id. at 129. Vol. 99 TMR 265 completely lacking in legal merit and . . . plaintiff had actual knowledge that its Lanham Act claims [were] baseless, this case does present exceptional circumstances warranting an award of attorneys’ fees to defendants.” 1507 (3) Calculation of Attorneys’ Fees By far and away, the most detailed opinion over the past year to address the proper methodology for calculating awards of fees came from a district court that had granted a fee petition under Rule 37 as a sanction for discovery violations by the defendant. 1508 The plaintiff had pursued two successful motions to compel, the second of which resulted in the fee order. In evaluating the plaintiff’s showing of its investment in the second motion, the court initially noted that: The proper method of awarding attorneys’ fees for a violation of Rule 37 is the lodestar method, in which the court multiplies a reasonable hourly rate by a reasonable number of hours expended. The burden is on the moving party to prove that the request for attorneys’ fees is reasonable. However, if the party opposing the fee request objects with specificity the Court has a great deal of discretion to adjust the fee award in light of those objections. .... To determine the proper compensation, the Court must set a reasonable hourly rate, or lodestar, to apply to each attorney’s time. The Court must choose a rate that is sufficient to attract competent counsel, but not so excessive as to produce a windfall. Generally, this means that the rates must be in line with rates charged by other attorneys of comparable skill, reputation, and ability within the community. 1509 Because the defendant did not contest the reasonableness of the rates of the plaintiff’s counsel, the court moved on to review the quantum of the hours worked at those rates. In sustaining the defendant’s objections to many of those hours, the court held that the plaintiff was seeking to recover for at least some time that would have been invested in the ordinary course of prosecuting the case even if the motion to compel had never been filed. Thus, for example, the court disallowed the plaintiff’s attempted recovery for “indexing, organizing and reviewing documents” that the defendant produced in connection with the motions to compel. 1510 1507. Id. at 131. 1508. See Tequila Centinela, S.A. de C.V. v. Bacardi & Co., 248 F.R.D. 64 (D.D.C. 2008). 1509. Id. at 68 (internal quotation marks and citations omitted). 1510. See id. at 69. 266 Vol. 99 TMR The court also took to task the plaintiff’s claim for time spent plotting strategy: “Here, time spent discussing ongoing issues such as the status of and adequacy of [the defendant’s] discovery responses do not necessarily constitute hours reasonably spent on filing the motion to compel nor do they directly arise from it.” 1511 It next concluded that redundancies in the billing records of plaintiff’s counsel justified further reductions in the amount sought. 1512 The upshot was that the plaintiff’s request for $56,593.80 in fees yielded an award of $31,436.16. 1513 Another opinion effected a similar reduction in a lodestar award to a prevailing plaintiff for similar reasons. 1514 As a threshold matter, the court declined to accept the defendant’s invitation to carve out fees incurred in the prosecution of the plaintiff’s non-Lanham Act claims because, in its estimation, “the claims all arise out of the same facts and occurrences, [and] it is impossible to differentiate between the work on specific claims and thus impossible to apportion the fees between the Lanham Act and non-Lanham Act claims.” 1515 Nevertheless, it went on to point out its authority to reduce any lodestar award through an application of the Ninth Circuit’s Kerr factors, which include: “(1) the time and labor required, (2) the novelty and difficulty of the questions involved, (3) the skill requisite to perform the legal service properly, (4) the preclusion of other employment by the attorney due to acceptance of the case, (5) the customary fee, (6) whether the fee is fixed or contingent, (7) time limitations imposed by the client or the circumstances, (8) the amount involved and the results obtained, (9) the experience, reputation, and ability of the attorneys, (10) the ‘undesirability’ of the case, (11) the nature and length of the professional relationship with the client, and (12) awards in similar cases.” 1516 In preparing to apply this standard, neither the court’s views on reasonable billing rates nor the plaintiff’s documentation worked to the plaintiff’s advantage. As to the former, the court concluded that the billing rates of many (but not all) of the personnel staffing the plaintiff’s case “exceed this community’s prevailing rates” and therefore should be scaled back. 1517 And, as 1511. Id. at 70. 1512. See id. at 71-73. 1513. See id. at 68, 73. 1514. See World Triathalon Corp. v. Dunbar, 539 F. Supp. 2d 1270 (D. Haw. 2008). 1515. Id. at 1282. 1516. Id. (quoting Kerr v. Screen Extras Guild, Inc., 526 F.2d 67, 70 (9th Cir. 1975)). 1517. See id. at 1284. Vol. 99 TMR 267 to the latter, the court faulted the plaintiff’s showing for “block billing, inadequate time entries, and billings in quarter-hour increments.” 1518 The block billing was viewed with a particularly jaundiced judicial eye: “The majority of counsel’s billings constitute the practice of block billing, as there are multiple tasks listed for single time entries, which makes it difficult, if not impossible, for the Court to determine the reasonableness of the hours expended. Accordingly, an across-the-board reduction of 15% is appropriate.” 1519 Having thus reduced the claimed rates and hours of plaintiff’s counsel, the court declined to apply the Kerr factors to work a further adjustment to the requested fees. 1520 Similar deficiencies in another fee petition produced a similar outcome in an opinion adopting in full the report from the magistrate judge assigned to review the petition. 1521 The court first noted that “[i]n calculating a ‘reasonable’ fee award, the court must first establish a reasonable hourly rate, which is ‘the rate a paying client is willing to pay.’ Reasonable hourly rates are determined by reference to fees in the community in which the action is pending and the skill and experience of the attorneys who worked on the matter.” 1522 Although distinguishing between the partner, associate, and paralegals working on its behalf at one of two firms it used, the plaintiff failed to set forth the credentials of those individuals. Despite any appearance by the defendant to dispute these rates, this opened the door for the court to reduce the rates of the partner and the associate at that firm from $375 and $275 per hour to $300 and $250, respectively. 1523 In contrast, the credentials of the attorneys at the second firm were expressly set forth in the petition and their rates were left unchanged. 1524 This pattern continued once the court turned its attention to the hours invested in the case by the two firms. Reviewing the time entries of the first firm, the court noted that “[w]here, as here, the application for fees is voluminous, the court may order an across-the-board percentage reduction in compensable hours.” 1525 It then found “a thirty percent reduction in plaintiff’s counsel’s billing records sufficient to account for some vague entries and 1518. Id. 1519. Id. at 1285. 1520. See id. at 1287. 1521. See Prot. One Alarm Monitoring, Inc. v. Executive Prot. One Sec. Serv., LLC, 553 F. Supp. 2d 201 (E.D.N.Y. 2008). 1522. Id. at 208 (quoting Arbor Hill Concerned Citizens Neighborhood Ass’n v. County of Albany, 493 F.3d 110, 112 (2d Cir. 2007)). 1523. See id. at 209. 1524. See id. at 210. 1525. Id. at 209. 268 Vol. 99 TMR some duplicative and excessive work in this routine default matter.” 1526 Once again, the second firm’s showing met with a more positive reception, as it demonstrated that the firm’s work was “not excessively duplicative.” 1527 A similar failure to appear by the defendant in a case in the Middle District of Alabama was no obstacle to the court’s reduction of the hourly rates claimed by California-based counsel for the prevailing plaintiff. 1528 “[B]ecause the overall number of hours expended is reasonable,” the court declined “to critique every time entry.” 1529 As to the billing rates at issue, however, the court noted that “[b]eyond an unsworn declaration from Plaintiff’s most experienced counsel attorney stating that the fees were necessary and reasonable, Plaintiff failed to provide the Court with any other supporting documentation to establish the reasonableness of counsel’s [sic] fees.” 1530 Relying on its “own expertise” on the subject, the court acknowledged that “Plaintiff appears to have an established relationship with counsel,” as well as the “highly specialized training and knowledge required of counsel in conducting a federal trademark action.” 1531 Nevertheless, it also found that “counsel’s requested rates are based on the markets in which they practice and not the prevailing market rate, which, in this case, is that of Montgomery, Alabama.” 1532 Accordingly, it limited the rates requested to “what is reasonable in [the] Montgomery market.” 1533 A final issue to occupy courts entertaining fee petitions was that of apportionment. One court split the baby in determining what portion of the fees incurred by a set of prevailing defendants was awardable. 1534 The occasion for the award in the first instance was the plaintiff’s prosecution of a reverse passing off theory that the Supreme Court had earlier rejected on virtually identical facts 1526. Id. 1527. Id. at 210. 1528. See Alfa Corp. v. Alfa Mortgage Inc., 560 F. Supp. 2d 1166 (M.D. Ala. 2008). 1529. Id. at 1179. 1530. Id. at 179-80. 1531. Id. at 1180. 1532. Id. 1533. Id. According to the court: In this market, the Court has found the range of $300.00 to $375.00 applicable for attorneys with over 20 years of experience. It also has found the applicable range for attorneys with 10 years of experience at $200.00 to $250.00, and the applicable range for an attorney with one or two years of experience at $160.00 to $185.00. Id. (citations omitted). 1534. See Contractual Obligation Prods., LLC v. AMC Networks, Inc., 546 F. Supp. 2d 120 (S.D.N.Y. 2008). Vol. 99 TMR 269 in Dastar Corp. v. Twentieth Century Fox Film Corp. 1535 The court generously credited the plaintiff for not having known about Dastar at the time the lawsuit was filed. Its patience was exhausted, however, when the plaintiff continued to press the claim even after a denial of its preliminary injunction motion called Dastar to its attention. This led the court to deny the defendants’ fee petition to the extent that the petition covered work done through the denial of the preliminary injunction; the petition was granted as to defense work done after that date. 1536 g. Awards of Costs The most detailed treatment of a prevailing party’s request for the taxation of its costs came in a discovery dispute. 1537 Flush with the successful prosecution of two motions to compel, the plaintiff in the action arrived in court with a request for reimbursement of $8,578.58 in costs. The court began its analysis by noting that “[o]ut of pocket expenses such as reasonable photocopying, postage, long distance telephone, messenger, and transportation and parking costs” were customarily taxed against losing parties. 1538 Nevertheless, it also concluded that “[l]ooking at [the plaintiff’s] billing entries, the Court cannot determine what portion of [the plaintiff’s] expenses was used toward the filing of the two motions, and what portion was used toward other litigation activities which are not compensable (i.e. document review).” 1539 Because the plaintiff’s showing did not “reasonably link” many of its claimed costs to the motions to compel, the court limited the plaintiff’s recovery to electronic research fees and certain photocopying expenses that were so linked. The plaintiff’s request for $8,578.58 in costs therefore yielded only $1,869.00. 1540 The proper quantum of taxable costs also came into play following entry of summary judgment in favor of a prevailing plaintiff. 1541 Because the plaintiff failed to file documentation of its claimed costs, the court conditioned its award on the plaintiff’s submission of a supplemental declaration with all receipts attached. 1542 Pending the filing of that document, however, the court addressed the unverified figures recited in the plaintiff’s bill 1535. 539 U.S. 23 (2003). 1536. Contractual Obligation Prods., 546 F. Supp. 2d at 131. 1537. See Tequila Centinela, S.A. de C.V. v. Bacardi & Co., 248 F.R.D. 64 (D.D.C. 2008). 1538. Id. at 73. 1539. Id. 1540. Id. 1541. See World Triathalon Corp. v. Dunbar, 539 F. Supp. 2d 1270 (D. Haw. 2008). 1542. See id. at 1288. 270 Vol. 99 TMR of costs and reduced most of them. Claimed expenses sent to the chopping block included vague “mileage” expenses associated with service of the complaint and summons and of third-party subpoenas, inadequately described court reporter fees, and an application fee for admission to the Hawaii State Bar Association. Surviving intact were witness fees, “postage/mailing costs,” and notary costs. 1543 One opinion paring down a bill of costs demonstrated that a defendant’s default and failure to appear may not be a free ticket to a full award. 1544 The court allowed the plaintiff’s request for costs related to copying and binding, filing fees, telephone calls, regular and first class mail, and electronic research, but it balked at those cryptically described as “miscellaneous” and “lawyers services.” The latter two categories were disallowed on the ground that they were “not routine costs and were not explained in the [accompanying] declarations and attached bills.” 1545 Finally, one case served as a useful reminder that, even if a prevailing party has established the quantum of its awardable costs as a factual matter, awards of costs under Section 35(a) are subject to the “principles of equity.” 1546 Following a bench trial that resulted in a finding of liability but only modest compensatory damages, the trial court had awarded only one-half of the prevailing plaintiff’s costs. 1547 Rejecting the plaintiff’s challenge to this decision on appeal, the Supreme Court of Alabama held that the trial court’s decision had not been an abuse of discretion in light of “all the facts and circumstances of this case”; 1548 what those circumstances might have been, however, went unexplained. F. Procedural Matters 1. Declaratory Judgment Actions Both Article III of the U.S. Constitution and the federal Declaratory Judgment Act require federal courts acting under their authority to find the existence of an “actual controversy” before proceeding. 1549 Recipients of demand letters frequently file declaratory judgment action seeking findings of nonliability, and these actions frequently lead to responsive motions to dismiss on 1543. See id. at 1287-90. 1544. See Prot. One Alarm Monitoring, Inc. v. Executive Prot. One Sec. Serv., 553 F. Supp. 2d 201 (E.D.N.Y. 2008). 1545. Id. at 210. 1546. See Classroomdirect.com, LLC v. Draphix, LLC, 992 So. 2d 692 (Ala. 2008). 1547. See id. at 700. 1548. Id. at 713. 1549. U.S. Const. art. III, § 2, cl. 1 b; 28 U.S.C. § 2201 (2006). Vol. 99 TMR 271 the theory that the letters have not created the required case and controversy. 1550 Although this strategy often has failed to bear fruit in the unfair competition context, that may be changing as a result of the Supreme Court’s 2007 decision in MedImmune, Inc. v. Genentech, Inc. 1551 In MedImmune, the Court jettisoned the traditional test for determining the existence of a case and controversy between the parties, which until then had focused on whether the declaratory judgment plaintiff faced a reasonable apprehension of imminent suit, in favor of a more flexible standard. That flexibility was perhaps best demonstrated by the outcome in MedImmune, which allowed a declaratory judgment action to proceed despite the plaintiff’s agreement to discontinue the past conduct that had led to the defendant’s objections; under the new standard, a declaratory judgment plaintiff’s legal exposure for future conduct may make the grade. 1552 Another case in which MedImmune played a key role involved the plaintiffs’ promotional claims that, inter alia, they were distributing “a truly authentic Russian vodka of the highest quality.” 1553 The lead defendant sent a demand letter alleging that the plaintiffs were falsely claiming that its vodka was the only authentic Russian vodka available in the United States, while a second defendant held a press conference to similar effect and then initiated a proceeding before the National Advertising Division of the Council of Better Business Bureaus; the connection between a third defendant and the plaintiffs’ claimed injury was less apparent. 1554 The plaintiffs sought declaratory relief, and the defendants moved to dismiss on the ground that their conduct had not created the case and controversy required by Article III. Denying the defendants’ motion as to any future conduct by the plaintiffs, the court held that: Here, plaintiffs allege that they have an advertising campaign centered on highlighting the distinction between [the parties’] vodka, and that they plan to question the authenticity of [the defendants’] vodka. Defendants have engaged in conduct that indicates that there would be a controversy between the parties by sending a cease-and-desist letter to plaintiffs and initiating a proceeding at the NAD. Both parties[’] conduct 1550. See, e.g., World Religious Relief v. Gospel Music Channel, 563 F. Supp. 2d 714, 71617 (E.D. Mich. 2008) (dismissing declaratory judgment action on ground that correspondence between parties had failed to create justiciable case and controversy). 1551. 549 U.S. 118 (2007). 1552. See id. at 126-27. 1553. Quoted in Russian Standard Vodka (USA), Inc. v. Allied Domecq Spirits & Wine USA, Inc., 523 F. Supp. 2d 376, 379 (S.D.N.Y. 2007). 1554. See id. at 378-80. 272 Vol. 99 TMR indicate that “there is a substantial controversy, between . . . parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of [a] declaratory judgment” regarding any future statements that plaintiffs will make regarding . . . [the] authenticity [of the defendants’ vodka]. 1555 Falling back on pre-MedImmune authority, the court additionally held that: (1) an exercise of jurisdiction would serve a useful purpose “in settling . . . legal issues because a threat of future suit still exists concerning plaintiffs[’] future advertising campaigns”; and (2) its disposition of the parties’ various claims against each other “would offer relief from uncertainty because the parties would be on notice of their rights regarding plaintiffs’ ability to comment on [the defendants’ vodka’s] authenticity as a Russian product.” 1556 At the same time, however, the court dismissed the action as to the third set of defendants. Although those defendants apparently had not participated in the preparation of the demand letter or the press conference, the plaintiffs argued that the conduct of the other defendants “extend[ed]” to the third defendant. The court did not suffer this theory gladly: “Because plaintiffs have failed to indicate in their complaint conduct by these defendants that alleges an actual controversy, the court cannot even reach the question of whether or not that conduct is of sufficient immediacy and reality to warrant the issuance of declaratory judgment.” 1557 The Ninth Circuit showed signs of becoming more flexible in its application of Article III even without expressly relying on MedImmune. Under ordinary circumstances, the mere filing of an opposition proceeding does not confer standing upon the challenged applicant. According to one Ninth Circuit opinion, however, the filing of multiple oppositions coupled with oral and written threats of litigation may do the trick under that court’s “flexible” approach to determining whether a declaratory judgment plaintiff faces a reasonable apprehension of suit: In applying this standard, we focus[] upon the position and perceptions of the plaintiff, declining to identify specific acts or intentions of the defendant that would automatically constitute a threat of litigation. The acts of the defendant [a]re instead to be examined in view of their likely impact on competition and the risks imposed upon the plaintiff, to 1555. Id. at 383 (quoting MedImmune, Inc. v. Genentech, Inc., 127 S. Ct. 764, 771 (2007)). 1556. Id. 1557. See id. at 385 (internal quotation marks omitted). Vol. 99 TMR 273 determine if the threat perceived by the plaintiff were [sic] real and reasonable. 1558 Concluding that the district court had failed to demonstrate sufficient flexibility when finding that no cognizable controversy existed between the parties, the Ninth Circuit observed that [u]nder the circumstances of this case, [the plaintiff’s] perception of threats was more than reasonable. Not only did [the defendant] allegedly make three concrete threats of infringement litigation, but it did so on the heels of years of unsuccessful and tense settlement negotiations, and after [the defendant] initiated seven actions in the TTAB. [The plaintiff] thus had good reason to worry about the stability and profitability of its product lines, and to suspect that [the defendant] would make good on its threats and seek hefty damages for any infringement. 1559 In reaching this conclusion, the court rejected the theory— frequently but unsuccessfully invoked by declaratory judgment defendants—that demand letters received by the plaintiff during the pendency of the opposition were privileged settlement correspondence that could not be used to satisfy Article III’s requirements. The court noted that Rule 408(a) of the Federal Rules of Evidence barred the use of an opponent’s offers to compromise only “when offered to prove liability for, invalidity of, or amount of a claim that was disputed as to validity or amount, or to impeach through a prior inconsistent statement or contradiction”; as it also pointed out, however, Rule 408(b) provided that “[t]his Rule does not require exclusion if the evidence is offered for purposes not prohibited by subsection (a).” 1560 Concluding that the use of the correspondence to establish the existence of a case and controversy fell within subsection (b) of the Rule, the court explained that the Rule was “designed to ensure that parties may make offers during settlement negotiations without fear that those same offers will be used to establish liability should settlement efforts fail. When statements made during settlement are introduced for a purpose unrelated to liability, the policy underlying the Rule is not injured.” 1561 1558. Rhoades v. Avon Prods., Inc., 504 F.3d 1151, 1157 (9th Cir. 2007) (quoting Chesebrough-Pond’s, Inc. v. Faberge, Inc., 666 F.2d 393, 396 (9th Cir. 1982)) (brackets in original). 1559. Id. at 1158. 1560. Quoted in id. at 1160. 1561. Id. at 1161-62. 274 Vol. 99 TMR Finally, one motion to dismiss a declaratory judgment action proved particularly unsuccessful. 1562 During the pendency of settlement negotiations, the plaintiff had proposed that the parties give each other three-days’ notice before filing suit. The defendant failed to give “a reciprocal assurance,” but it nevertheless sought to enforce the three-day proposal when the plaintiff filed suit without any notice. The court proved unreceptive to the defendant’s invitation to dismiss the action, noting that the defendant “does not allege that there was any reasonable likelihood that further negotiations between the parties would have been successful.” 1563 Beyond that, the defendant was unable to establish that it would have sued the plaintiff in another forum or that it would be disadvantaged by having to litigate its infringement claims as counterclaims in the plaintiff’s suit. Because “[the defendant] has not presented a compelling argument for declining jurisdiction over [the plaintiff’s] declaratory judgment claim,” the defendant’s challenge to that jurisdiction was without merit. 1564 2. Standing As summarized by one court, “[t]he doctrine of standing incorporates both a constitutional and a prudential element. Constitutional standing is a threshold issue that must be addressed before examining issues of prudential standing and statutory interpretation.” 1565 As usual, defendants’ challenges to the standing of plaintiffs to bring unfair competition actions produced mixed results. a. Cases Finding Standing Notwithstanding a recent burst of opinions declining to recognizing the prudential standing of plaintiffs asserting false advertising claims, one plaintiff managed to fend off a motion to dismiss grounded in this theory. 1566 The defendant in the action had publicly announced that it owned a trademark for rum that had been expropriated during the Cuban revolution. This led the plaintiff, also a claimant to the mark, to challenge the announcement as false advertising. Challenging both the constitutional and prudential standing of the plaintiff, the defendant moved to dismiss the action for failure to state a claim. 1562. See Constellation Brands, Inc. v. Arbor Hill Assocs., 535 F. Supp. 2d 347 (W.D.N.Y. 2008). 1563. Id. at 359. 1564. Id. 1565. Pernod Ricard USA LLC v. Bacardi U.S.A., Inc., 505 F. Supp. 2d 245, 251 (D. Del. 2007) (citation omitted). 1566. See id. at 251-54. Vol. 99 TMR 275 The court held that the plaintiff was required to make three showings to establish its constitutional standing, namely, that: (1) the plaintiff had suffered an injury in fact; (2) a causal nexus existed between the injury and the challenged conduct; and (3) it was likely that the injury would be redressed by a favorable judicial decision. 1567 In holding that the plaintiff had satisfied the first two of these requirements, the court relied heavily on the directly competitive nature of the parties’ products. And, as to the third, the court concluded that the plaintiff’s request for awards of its actual damages and attorneys’ fees “would sufficiently redress its alleged injuries” to make the grade. 1568 The defendant’s challenge to the plaintiff’s prudential standing also failed. The court explained that: Prudential standing embraces the following principles: “(1) the plaintiff generally must assert his own legal rights and interests, and cannot rest his claim to relief on the legal rights or interests of third parties; (2) even when the plaintiff has alleged redressable injury sufficient to meet the requirements of Article III, the federal courts will not adjudicate abstract questions of wide public significance which amount to generalized grievances pervasively shared and most appropriately addressed in the representative branches; and (3) the plaintiff’s complaint must fall within the zone of interests to be protected or regulated by the statute or constitutional guarantee in question.” 1569 Applying these considerations, the court noted that “[b]ecause plaintiff competes head-to-head with defendant, plaintiff is at a competitive disadvantage if defendant advances its market position through false advertisements. The court, therefore, finds that the nature of plaintiff’s alleged injury is of the type that Congress sought to redress by providing a private remedy for Lanham Act violations.” 1570 Moreover, “[p]laintiff is in the proper position to claim that defendant’s activities directly lowered its sales and profits if purchasers are consciously selecting defendant’s rum, rather than plaintiff’s, as a result of defendant’s advertisement.” 1571 Particularly because “[p]laintiff, as defendant’s direct market competitor, is of the class of persons whose selfinterest would normally motivate them to vindicate the public 1567. See id. at 251. 1568. Id. at 252. 1569. Id. (quoting Trump Hotels & Casino Resorts, Inc. v. Mirage Resorts, Inc., 140 F.3d 478, 485 (3d Cir. 1998)). 1570. Id. at 253. 1571. Id. at 254. 276 Vol. 99 TMR interest in a false advertising claim,” the defendant’s motion to dismiss on standing grounds was denied. 1572 Another trend was similarly bucked. Many courts hearing false advertising cases have restricted standing to direct competitors of the defendant. Reported opinions allowing false advertising claims by differently situated plaintiffs can and do occur, however, and the past year produced just such an exception to the general rule. 1573 The defendants were operators of “adult web communities,” who used online profiles of their members as “teasers” to drive traffic to their sites. Upon discovering that the defendants were using as just such a teaser a false profile of her created by an unknown third party, the plaintiff filed suit under a variety of causes of action, including one for false advertising under Section 43(a). Without expressly addressing the issue of the plaintiff’s standing to proceed, the court allowed the action to go forward after satisfying itself that the plaintiff had stated a prima facie case of false advertising. 1574 Finally, one court addressing a defense motion to dismiss distinguished between the requirement for standing under Section 32, on the one hand, and that under Section 43(a), on the other. 1575 The plaintiff was the licensee of a registered mark owned by a third party, and, under the court’s reading of the license agreement, “only had rights to use the trademarks for the limited purpose of selling [licensed] goods within a certain territory during the term of the agreement. These rights were not exclusive, and the [agreement] did not vest ownership of the trademarks in [the plaintiff].” 1576 Although these circumstances prevented the plaintiff from pursuing its putative Section 32 cause of action, 1577 a different result held with respect to the plaintiff’s claims under Section 43(a), the language of which, the court held, “confers standing on trademark licensees.” 1578 b. Cases Declining to Find Standing The Eleventh Circuit continued its hostility toward claims of prudential standing in a case brought by a former manufacturer of a non-nicotine product to help reduce tobacco dependence. 1579 1572. Id. 1573. See Doe v. Friendfinder Network, Inc., 540 F. Supp. 2d 288 (D.N.H. 2008). 1574. See id. at 306-06. 1575. See Coyne’s & Co. v. Enesco, LLC, 565 F. Supp. 2d 1027 (D. Minn. 2008). 1576. Id. at 1043. 1577. See id. 1578. Id. at 1044. 1579. See Natural Answers, Inc. v. SmithKline Beecham Corp., 529 F.3d 1325 (11th Cir. 2008). Vol. 99 TMR 277 Affirming entry of summary judgment in the defendant’s favor, the court identified five considerations upon which it previously had relied in evaluating the prudential standing of plaintiffs in false advertising cases: (1) whether the plaintiff’s alleged injury was the type that Congress sought to redress in providing a private remedy; (2) the directness or remoteness of the claimed injury; (3) the proximity or remotenesss of the defendant to the alleged injurious conduct; (4) the speculativeness of the plaintiff’s damages claim; and (5) the risk of duplicative damages or complexity in apportioning damages. 1580 Relying heavily on the plaintiff’s absence from the market to conclude that “not a single one” of these factors favored the plaintiff. Its treatment of the first was characteristic: “Here, . . . [the plaintiff] could suffer no . . . commercial or competitive injury, because it was no longer selling or promoting [its own products] at the time of the alleged injury.” 1581 A demonstration of prudential standing proved to be a similarly insurmountable obstacle for a group of automobile dealers who brought a number of claims, including one for infringement, against a consumer review website. 1582 The gravamen of the plaintiffs’ claim was that the defendant’s use of the CONSUMERAFFAIRS.COM mark was likely to lead consumers to believe that the defendant was either a government agency or affiliated with one. The court was unconvinced. After reviewing the tests for prudential standing applied by various circuits, the court concluded that the plaintiffs could not satisfy any of them: Ultimately, the Court finds that regardless of which existing standard for existing prudential standing were to be applied to [the] Lanham Act claim, the Court would be forced to find that Plaintiffs lack standing because they are not in competition with Defendant and their alleged injury is not the sort that the Lanham Act [seeks] to prevent. 1583 A different court similarly held actual competition to be a prerequisite for a counterclaim arising from the plaintiff’s having publicized the underlying suit. 1584 The defendants alleged that a press release by the plaintiff contained false representations, but the court held that this allegation was an insufficient basis for recognizing their standing. As it pointed out: 1580. See id. at 1331. 1581. Id. 1582. See Nemet Chevrolet, Ltd. v. Consumeraffairs.com, Inc., 564 F. Supp. 2d 544 (E.D. Va. 2008). 1583. Id. at 553. 1584. See Encompass Ins. Co. v. Giampa, 522 F. Supp. 2d 300 (D. Mass. 2007). 278 Vol. 99 TMR [T]he defendants have not attempted to assert that the parties compete in some line of trade or commerce, and it is apparent from the pleadings in this matter that [the plaintiff], an insurance company, is not in competition with any of the defendants, all of whom are providers of chiropractic services. Consequently, the defendants are unable to state a claim for false advertising under the Lanham Act. 1585 If some parties represented by counsel could not establish their standing in federal court, so too did at least one pro se plaintiff fall short. 1586 The plaintiff asserted rights to a mark he claimed had been infringed by a group of defendants, one of whom owned a federal registration of the same mark. The plaintiff had failed to establish his rights to the mark in a prior action, however, and the court held that he was barred by both res judicata and collateral estoppel principles from relitigating the issue. This in turn led to a holding that the plaintiff did not have standing to pursue his claim that the federal registrant had defrauded the USPTO in the application process. 1587 3. Jurisdictional Issues a. Personal Jurisdiction There are two primary mechanisms through which United States courts can exercise personal jurisdiction over defendants in unfair competition litigation. The first is one that predates the Internet age and that is most commonly invoked by courts: The personal jurisdiction inquiry traditionally proceeds in two steps: (1) analysis of a state’s long-arm statute to determine if it authorizes the case in state courts of general jurisdiction, and (2) an inquiry into the constitutional reasonableness of an exercise of jurisdiction. . . . The standard for determining the existence of personal jurisdiction over a nonresident defendant varies, depending on whether the defendant’s contacts with the forum state also provide the basis for the suit. If a defendant’s contacts with the state form the basis of the suit, “specific jurisdiction” is available, whereas “general jurisdiction” is available only when contacts are so pervasive as to justify jurisdiction on matters unrelated to those contacts. 1588 1585. Id. at 311 (citation omitted). 1586. See Akhenaten v. Najee, LLC, 544 F. Supp. 2d 320 (S.D.N.Y. 2008). 1587. See id. at 332-33. 1588. Silver Ring Splint Co. v. Digisplint, Inc. 508 F. Supp. 2d 508, 511-512 (W.D. Va. 2007) (internal quotation marks and citation omitted), later proceedings, 567 F. Supp. 847 (W.D. Va. 2008). Vol. 99 TMR 279 In addition to this traditional analysis, plaintiffs faced with non-U.S. defendants have in recent years increasingly turned to Federal Rule of Civil Procedure 4(k)(2) as an alternative means of establishing the propriety of an exercise of jurisdiction. That rule provides that: For a claim that arises under federal law, serving a summons or filing a waiver of service establishes personal jurisdiction over a defendant if: (A) the defendant is not subject to jurisdiction in any state’s courts of general jurisdiction; and (B) exercising jurisdiction is consistent with the United States Constitution and laws. 1589 (1) Opinions Exercising Personal Jurisdiction As has increasingly been the case in recent years, many disputes over personal jurisdiction turned on the nature and extent of the defendant’s online presence. 1590 Adopting the increasingly accepted standard first set forth in Zippo Mfg. Co. v. Zippo Dot Com, Inc., 1591 one court held that: The Zippo test contemplates a spectrum of commercial activity consisting of three categories of websites. The first category envisions websites by which a defendant clearly does business over the Internet by entering into contracts with residents of other states which involve the knowing and repeated transmission of files over the Internet. This type of website makes personal jurisdiction appropriate. The other end of the spectrum involves passive websites devoid of interactivity that constitute nothing more than advertisements. Jurisdiction based on this type of site is not appropriate. In the middle are websites that allow some exchange of information with the 1589. Fed. R. Civ. P. 4(k)(2). 1590. See, e.g., Mad Dogg Athletics, Inc. v. NYC Holding, 565 F. Supp. 2d 1127, 1130 (C.D. Cal. 2008) (exercising personal jurisdiction over individual defendant found to be alter ego of corporate defendant trafficking in infringing domain names on grounds that “[d]efendant both purposefully availed itself of the benefits of the forum state and committed a tort directed at, and likely to cause harm in, the forum state of California”); Iovate Health Scis., Inc. v. Allmax Nutrition, Inc., 549 F. Supp. 2d 127, 128-29 (D. Mass. 2008) (exercising personal jurisdiction over corporate defendant under Massachusetts law based on apparently uncontested allegations of infringing Internet sales to Massachusetts residents); Cenage Learning, Inc. v. Buckeye Books, 531 F. Supp. 2d 596, 599 (S.D.N.Y. 2008) (exercising personal jurisdiction under New York law over defendant making online sales into New York); Auto. Club v. Auto Club Ltd., 83 U.S.P.Q.2d 1438, 1440 (C.D. Cal.) (holding, in cursory analysis, that “[b]ecause Defendants operate a website that may be accessed by California residents, there is no dispute that Defendants are ‘doing business’ in California”), later proceedings, 83 U.S.P.Q.2d 1440 (C.D. Cal. 2007). 1591. 952 F. Supp. 1119 (W.D. Pa. 1997). 280 Vol. 99 TMR defendant’s host computer. In this arena, the exercise of jurisdiction is determined by the level of interactivity and commercial nature of the exchange of information that occurs on the [w]ebsite. 1592 Finding that the website of the lead corporate defendant fell into the middle category, the court concluded that an exercise of specific personal jurisdiction over that defendant was appropriate because it had “intentionally directed the infringing marks at Texas residents through its website, availing themselves of this forum.” 1593 The defendant’s awareness that the mark owner was a Texas domiciliary provided additional support for this conclusion. 1594 Disputes over the propriety of the exercise of personal jurisdiction were also resolved in favor of plaintiffs without reliance on the defendants’ online presence. 1595 In a case in which the court expressly declined to take into consideration the accessibility of the defendants’ website in the forum state, the defendants were in the business of reselling the plaintiff’s nutritional and dietary supplements and had taken the added step of registering numerous variations on the plaintiff’s trademarks. 1596 Denying the defendants’ motion to dismiss for want of personal jurisdiction under Texas law, the court concluded that “the record establishes prima facie evidence that Defendants intentionally infringed [the plaintiff’s] trademarks with knowledge that their tortious actions would harm [the plaintiff] in Texas, the location of its principal place of business.” 1597 That the defendants were former employees of the plaintiff and also had (falsely) represented on their website that they were located in Texas was only further support for the court’s conclusion that the Texas longarm statute was satisfied; 1598 the same considerations also resulted in the satisfaction of constitutional notions of fair play and substantial justice. 1599 Yet another Texas federal district court found an exercise of jurisdiction proper on the basis of evidence that the defendants 1592. Powerhouse Prods., Inc. v. Widgery, 564 F. Supp. 2d 672, 679 (E.D. Tex. 2008) (internal quotation marks and citations omitted). 1593. Id. 1594. See id. 1595. See, e.g., Red Bull GmbH v. RLED, LLC, 515 F. Supp. 2d 641, 646-47 (M.D.N.C. 2007) (holding, in straightforward analysis, that defendants’ sale of allegedly infringing goods in forum was sufficient basis for exercise of personal jurisdiction). 1596. See First Fitness Int’l, Inc. v. Thomas, 533 F. Supp. 2d 651 (N.D. Tex. 2008). 1597. Id. at 656. 1598. See id. 1599. See id. at 657-58. Vol. 99 TMR 281 had known that their participation in the distribution of cigarettes bearing counterfeit marks would result in the cigarettes’ eventual sale in Texas. 1600 The court initially held that the defendants could not be forced to answer for their conduct in Texas, but it reconsidered that decision on the basis of new evidence and testimony submitted by the plaintiff. According to the plaintiff, the new showing demonstrated that, in addition to acting as escrow agents for the sale of the cigarettes into Texas, the defendants had inspected them before the transaction closed and had even helped negotiate the terms of the deal. Although the defendants “vigorously contested” the plaintiff’s allegations, the court concluded that it need not determine the veracity of those allegations at the pleading stage; rather, those allegations sufficiently demonstrated the defendants’ eligibility to be haled into court in Texas that the earlier dismissal of the plaintiff’s claims had been inappropriate. 1601 In a less traditional analysis, but one with increasing traction, some courts invoked Rule 4(k)(2) as a basis for an exercise of personal jurisdiction over foreign defendants. 1602 These included a Virginia district court, which exercised jurisdiction over a Canadian corporation, despite the court’s earlier findings that the defendant was subject to neither specific nor general jurisdiction under Virginia law. 1603 The court noted that: Rule 4(k)(2) is in essence a federal long-arm statute. It was adopted to remedy a gap in federal personal jurisdiction law in situations where a defendant does not reside in the United States, and lacks contacts with a single state sufficient to justify personal jurisdiction, but has enough contacts with the United States as a whole to satisfy due process requirements. 1604 Quoting prior Fourth Circuit authority, it then held that: In order to obtain jurisdiction under Rule 4(k)(2) . . . three requirements must be met. First, the suit must arise under federal law. Second, the defendant must not be subject to personal jurisdiction in any state. Third, the defendant must 1600. See Philip Morris USA Inc. v. Lee, 494 F. Supp. 2d 544 (W.D. Tex. 2007), later proceedings, 547 F. Supp. 2d 667 (W.D. Tex.), later proceedings, 547 F. Supp. 2d 685 (W.D. Tex. 2008). 1601. See id. at 553-54. 1602. See, e.g., WMS Gaming Inc. v. WPC Prods. Ltd., 542 F.3d 601, 605 (7th Cir. 2008) (noting in dictum that “it does appear to us that [the defendants’] business contacts with the United States probably would have sufficed to secure personal jurisdiction under Fed. R. Civ. P. 4(k)(2)”). 1603. See Silver Ring Splint Co. v. Digisplint, Inc., 508 F. Supp. 2d 508 (W.D. Va. 2007), later proceedings, 567 F. Supp. 847 (W.D. Va. 2008). 1604. Id. at 513 (internal quotation marks and citations omitted). 282 Vol. 99 TMR have contacts with the United States consistent with the Constitution and laws of the United States. 1605 With the first and third of these requirements not seriously in doubt, the court’s analysis focused on the extent to which the defendant was not subject to an exercise of personal jurisdiction in any state. On that subject, the court placed upon the defendant the burden of identifying a more appropriate forum to which the defendant did not object: “‘Naming a more appropriate state would amount to a consent to personal jurisdiction there. . . . If, however, the defendant contends that he cannot be sued in the forum state and refuses to identify any other suit is possible, then the federal court is entitled to use Rule 4(k)(2).’” 1606 Because the defendant’s strategy throughout the proceedings had been to argue affirmatively that there were no states in which it was subject to an exercise of personal jurisdiction, the court concluded that the requirements of Rule 4(k)(2) had been met. 1607 A similar result held in an action in an Illinois district court against a Canadian corporation with no facilities or personnel in the United States. 1608 The defendant provided verification and customer care services for United States clients, including those located in Georgia, New York, Utah, Kentucky, Nevada, California, Colorado, Texas, Florida, and Rhode Island. These long-distance relationships were insufficient to satisfy the requirements of the Illinois long-arm statute, but they did demonstrate that the defendant had “‘ample contacts with the nation as a whole’ such that this Court’s exercise of personal jurisdiction over [the defendant] accords with the minimum contacts due process analysis. . . .” 1609 When given the option of identifying an alternative forum in which it was willing to agree to an exercise of personal jurisdiction, the defendant declined, leading the court to conclude that the action was properly before it. 1610 1605. Id. (quoting Saudi v. Northrup Grumman Corp., 427 F.3d 271, 275 (4th Cir. 2005)) (ellipses in original) (internal quotation marks omitted). 1606. Id. 516 (quoting ISI Int’l, Inc. v. Borden Ladner Gervais LLP, 256 F.3d 548, 552 (7th Cir. 2001)). 1607. See id. at 517. 1608. See Medline Indus. v. Strategic Commercial Solutions, Inc., 553 F. Supp. 2d 979 (N.D. Ill. 2008). 1609. Id. at 988 (quoting ISI Int’l, Inc. v. Borden Ladner Gervais LLP, 256 F.3d 548, 551 (7th Cir. 2001)). 1610. See id. at 988. Vol. 99 TMR 283 (2) Opinions Declining to Exercise Personal Jurisdiction Several cases over the past year drove home the point that a website accessible in the forum state will not in and of itself establish the propriety of an exercise of personal jurisdiction in that state over the website’s operator. 1611 A Virginia district court applying this rule rejected the plaintiff’s attempted reliance on such a site (and a single delivery of an allegedly infringing good into the forum) in support of a claim of general jurisdiction with the observation that “if general jurisdiction were found in this case, the limitations on personal jurisdiction would be essentially obliterated for almost any business with an online presence.” 1612 The plaintiff’s claims of specific jurisdiction similarly fell by the wayside on the grounds that: The fact that a website is available in Virginia—and even the fact that it is used by Virginians—is not the same as an intentional direction of activities toward Virginia. . . . The same is true of a single sale initiated via fax by a Virginian. Moreover, the fact that Defendant’s few other non-internet marketing attempts could also have been seen by Virginians is simply more of the same and cannot amount to “purposeful availment.” 1613 A Florida district court reached a similar result in an application of the Due Process Clause. 1614 The defendants were all non-Florida domiciliaries, but they operated websites accessible in that state, and the plaintiffs attempted to use that circumstance to hale them into court there. That attempt failed. Granting the defendants’ motion to dismiss, the court rejected the plaintiffs’ reliance on the defendants’ operation of the websites on the ground that “[w]hile these websites likely are as accessible from Florida as they are from any other state or anywhere in the world where Internet access is available, such accessibility does not amount to [the] ‘purposeful availment’ of conducting activities [in] Florida.” 1615 The court similarly accorded little weight to the fact 1611. See, e.g., Powerhouse Prods., Inc. v. Widgery, 564 F. Supp. 2d 672, 680 (E.D. Tex. 2008) (declining to exercise personal jurisdiction under Texas law over defendant with passive website accessible in that state); On Site Gas Sys., Inc. v. USF Techs., Inc., 553 F. Supp. 2d 182, 185-86 (D. Conn. 2008); (holding that operation of passive website accessible in Connecticut did not render exercise of personal jurisdiction over defendants in that state proper); Minn. Public Radio v. Va. Beach Educ. Broad. Found., 519 F. Supp. 2d 970, 975-81 (D. Minn. 2007) (declining to exercising personal jurisdiction under Minnesota law over defendant with website accessible in that state). 1612. Silver Ring Splint Co. v. Digisplint, Inc., 508 F. Supp. 2d 508, 512 (W.D. Va. 2007). 1613. Id. at 513. 1614. See Dynetech Corp. v. Leonard Fitness, Inc., 523 F. Supp. 2d 1344 (M.D. Fla. 2007). 1615. Id. at 1348. 284 Vol. 99 TMR that the defendants’ sites had links to companies that sold the plaintiffs’ goods in Florida: “[T]he fact that the website of a company that sells products in Florida can be reached via a link on Defendants’ website is too narrow a thread on which to find a meaningful ‘contact’ for the purposes of due process.” 1616 Not all opinions declining to exercise personal jurisdiction over defendants turned on the nature of the defendant’s website and, indeed, some turned on applications of what is commonly known as the “effects test.” 1617 Perhaps the best-known example of this analysis came in Indianapolis Colts, Inc. v. Metropolitan Baltimore Football Club, 1618 in which the Seventh Circuit endorsed the locus of the plaintiff’s injury as a consideration in the inquiry into whether personal jurisdiction existed under Indiana law, 1619 and that holding has been applied under at least some interpretations of Illinois law. 1620 Nevertheless, it failed when invoked against a group of Canadian defendants who, although admitting they could be haled into court in New Hampshire, claimed not to have any ties to Illinois other than the fact that some of their transactions had been run through Illinois financial institutions. 1621 As the court explained in granting the defendants’ motion to dismiss, “‘Illinois does not acquire jurisdiction merely by the fact that [the] plaintiff felt harm here.’ For purposes of the Illinois Long Arm Statute, it is not enough that the trademark owner’s domicile is in Illinois.” 1622 b. Subject Matter Jurisdiction Few opinions turning on subject matter jurisdiction were reported over the past year. One exception came from a district court faced with the oft-invoked, if inevitably unsuccessful, 1616. Id. at 1347. 1617. See, e.g., JTH Tax, Inc. v. Liberty Servs. Title, Inc., 543 F. Supp. 2d 504, 506-09 (E.D. Va. 2008) (holding that alleged infringement by Florida domiciliary of mark owned by Virginia did not justify exercise of personal jurisdiction under Virginia law or Due Process Clause). 1618. 34 F.3d 410 (7th Cir. 1994). 1619. See id. at 411-12; see also Janmark, Inc. v. Reidy, 132 F.3d 1200, 1202 (7th Cir. 1997) (“[T]he state in which the injury . . . occurs may require the wrongdoer to answer for its deeds even if events were put in train outside its borders.”). 1620. See, e.g., Euromarket Designs, Inc. v. Crate & Barrel Ltd., 96 F. Supp. 2d 824, 835 (N.D. Ill. 2000) (“The Seventh Circuit has applied the effects doctrine to a trademark infringement case, holding that personal jurisdiction is proper in the state of the plaintiff’s principal place of business because the injury primarily occurs where the plaintiff lives.”). 1621. See Medline Indus. v. Strategic Commercial Solutions, Inc., 553 F. Supp. 2d 979 (N.D. Ill. 2008). 1622. Id. at 986 (quoting Berthold Types Ltd. v. European Mikrograf Corp., 102 F. Supp. 2d 928, 932 (N.D. Ill. 2000)). Vol. 99 TMR 285 argument made by defendants that their actions have had no effect on interstate commerce. 1623 The latest advocate of this theory to fall short was a Philadelphia hotel that continued to use the name of its executive chef in its advertising after the chef had left its employ. In denying the hotel’s motion to dismiss for failure to state a claim, the court acknowledged that the chef’s jurisdictional allegations were “general.” 1624 Nevertheless, it also held that “[i]t is reasonable to infer that customers from the greater Philadelphia area—in New Jersey and Delaware—would plan a wedding at a prominent hotel in Philadelphia, especially given the alleged extent of [the chef’s] renown.” 1625 Another opinion to examine federal subject matter jurisdiction came from the Federal Circuit, which addressed the propriety of a challenge in the Court of International Trade (CIT) to the imposition of an administrative fine by the Bureau of Customs and Border Protection. 1626 The fine had its origin in the interdiction of goods bearing counterfeit marks, which Customs had seized as the goods arrived from China. The appellant’s primary argument was that the CIT could entertain its attempt to have the fine overturned because the seizure constituted an “embargo” under Section 526(e) of the Tariff Act of 1930, 1627 a circumstance that would indeed confer subject matter jurisdiction on the CIT. Vacating the CIT’s holding that both this circumstance and subject matter jurisdiction existed, the Federal Circuit noted that “seized goods may subsequently be released for importation if the trademark owner consents. . . .” 1628 Because the ultimate disposition of the goods therefore was within the control of the trademark owner, rather than the government, the seizure did not qualify as an embargo. 1629 With several even more technical arguments advanced by the appellant in favor of subject matter jurisdiction similarly failing, the appellate court held that the CIT had not had the authority to hear the appellant’s case. 1630 A final opinion to weigh in on an issue of subject matter jurisdiction did so in a far more conventional context, namely, competing suits filed by the parties in different courts. 1631 On 1623. See Lewis v. Marriott Int’l, Inc., 527 F. Supp. 2d 422 (E.D. Pa. 2007). 1624. Id. at 425. 1625. Id. 1626. See Sakar Int’l, Inc. v. U.S., 516 F.3d 1340 (Fed. Cir.), cert. denied, 129 S. Ct. 488 (2008). 1627. 19 U.S.C. § 1526(e) (2006). 1628. Sakar, 516 F.3d at 1348. 1629. See id. 1630. See id. at 1349-50. 1631. See Intersearch Worldwide, Ltd. v. Intersearch Group, 544 F. Supp. 2d 949 (N.D. Cal. 2008). 286 Vol. 99 TMR December 19, 2006, the plaintiff sent a demand letter to the defendant, to which the defendant responded on December 19, 2006. When settlement discussions between the parties failed, the defendant filed a declaratory judgment action for noninfringement in the Southern District of New York on June 26, 2007, and served the plaintiff with the complaint and summons on August 28, 2008. The plaintiff then filed its own complaint for infringement in the Northern District of California, which prompted the defendant to move to dismiss that action on the ground that it had been filed after the defendant’s own New York action. The California court granted the defendant’s motion on the ground that “[t]here is a generally recognized doctrine of federal comity which permits a district court to decline jurisdiction over an action when a complaint involving the same parties and issues has already been filed in another district.” 1632 Although recognizing that there were exceptions to this general rule, the court declined to find that any was applicable to the facts before it. To begin with, it was apparently undisputed between the parties that the two actions presented an identity of issues and parties. 1633 Moreover, the defendant’s declaratory judgment action could not be considered an improper anticipatory suit because, with the exception of an opposition proceeding initiated against a pending application owned by the defendant, the plaintiff had done nothing else to suggest that litigation was imminent. 1634 Under these circumstances, the plaintiff’s claim that it was not subject to an exercise of personal jurisdiction in New York was irrelevant. As the court concluded, the issue before it was whether the New York court had jurisdiction over the New York action; whether that court could exercise personal jurisdiction over the parties was for it to decide. 1635 c. Primary Jurisdiction Under the primary jurisdiction doctrine, a court may defer resolution of issues before it in favor of an agency hearing a concurrent proceeding between the same parties. When faced with parallel inter partes disputes before the Trademark Trial and Appeal Board, a scattered few courts have suspended their own proceedings to allow the Board to apply its expertise. The majority rule, however, is that courts with experience applying routine principles of trademark law are in just as good a position to do so as is the Board. 1632. Id. at 957. 1633. See id. at 958-60. 1634. See id. at 961. 1635. See id. at 958, 962. Vol. 99 TMR 287 Such was the outcome in an appeal to the Ninth Circuit, in which the district court had dismissed a declaratory judgment action for noninfringement in light of the pendency of seven opposition proceedings before the Board. 1636 Citing favorably to First and Second Circuit authority, 1637 the appellate court reversed. It held that: Allowing the district court to decline a declaratory [judgment] action on a primary jurisdiction is sensible only if the agency is better equipped to handle the action. Here, however, Congress has not installed the PTO as the exclusive expert in the field. . . . [P]arties may litigate these issues in federal court without previously exhausting their claims before the TTAB. . . . More importantly, where, as here, there is a potential infringement lawsuit, federal courts are particularly well-suited to handle the claims so that the parties may quickly obtain a determination of their rights without accruing potential damages. 1638 Accordingly, the district court’s refusal to hear the case failed to withstand appellate scrutiny. 4. Venue a. Cases Finding Venue Appropriate The movant for a change of venue traditionally faces an uphill battle, and this proved true in several cases over the past year. 1639 In one, the Georgia defendants failed to have the infringement and ACPA claims against them transferred from Texas to their home state. 1640 The Texas court concluded that both public and private factors governed its disposition of the defendants’ motion: The private factors include: (1) access to sources of proof; (2) the availability of the compulsory process power[;] (3) costs to witnesses of appearing; and (4) any other practical considerations affecting the ease and expense of trial. The public interest factors include: (1) judicial economy; (2) 1636. See Rhoades v. Avon Prods., Inc., 504 F.3d 1151 (9th Cir. 2007). 1637. See PHC, Inc. v. Pioneer Healthcare, 75 F.3d 75 (1st Cir. 1996); Goya Foods, Inc. v. Tropicana Prods., Inc., 846 F.2d 848 (2d Cir. 1988). 1638. Rhoades, 504 F.3d at 1164 (citation omitted). 1639. See, e.g., Powerhouse Prods., Inc. v. Widgery, 564 F. Supp. 2d 672, 682 (E.D. Tex. 2008) (denying motion to transfer on grounds “that the convenience of the witnesses and parties is unlikely to be affected in any great measure by transfer, and that deference to the Plaintiffs’ choice of forum and the interests of justice would be best served by trying this lawsuit in this court”); Red Bull GmbH v. RLED, LLC, 515 F. Supp. 2d 641, 646 (M.D.N.C. 2007) (finding venue appropriate in light of allegations that defendant was engaged in passing off in forum). 1640. See First Fitness Int’l, Inc. v. Thomas, 533 F. Supp. 2d 651 (N.D. Tex. 2008). 288 Vol. 99 TMR interests associated with having local interests decided locally; (3) forum familiarity with the law at issue; and (4) problems arising from conflict of law. 1641 The defendants’ showing under these factors failed to do more than to establish that venue in Georgia would be no more convenient than in this district.” 1642 Moreover, while residents of all localities have an interest in preventing consumer confusion, the Court concludes that residents of this District have a particularly strong interest in this case because it was brought by a local company against alleged trademark infringers and cybersquatters who directed their action[s] at this forum and, until recently, purported to operate their allegedly unlawful operations from within this District. 1643 Under these circumstances, the defendants could not overcome the deference properly accorded to the plaintiff’s choice of forum. The plaintiffs’ choice of forum also carried the day in a suit by the Libyan government against the registrant of a number of domain names incorporating the words “Libya” or “Libyan” and “embassy.” 1644 When accessed, the domain names led to a website operated by a District of Columbia-based organization of which the defendant was the executive director. Although the defendant lived in Annapolis, Maryland, the District of Columbia federal court in which the plaintiffs had filed their claims declined either to dismiss the action for improper venue or to transfer it to the District of Maryland. As to the defendant’s motion to dismiss, the court found significant the location of the organization associated with the domain names, the defendant’s relationship to it, and a meeting by the defendant with the Libyan ambassador in the forum. 1645 And, as to the defendant’s motion to transfer, the court held in light of the geographic proximity between the two districts involved that “[a]t most, the defendant has demonstrated why, from his perspective, the District of Maryland is a slightly more convenient forum for himself, which is insufficient to nullify the plaintiff’s choice of forum.” 1646 That, in the court’s view, the plaintiffs’ claims had arisen in the District of Columbia was additional evidence that a transfer was inappropriate. 1647 1641. Id. at 658 (citation omitted). 1642. Id. 1643. Id. at 659. 1644. See Great Socialist People’s Libyan Arab Jamahiriya v. Miski, 496 F. Supp. 2d 137 (D.D.C. 2007). 1645. See id. at 143. 1646. Id. at 145. 1647. See id. Vol. 99 TMR 289 b. Cases Finding Venue Inappropriate A plaintiff’s choice of forum is entitled to deference in the evaluation of a motion to transfer for the convenience of the parties and witnesses, but that choice may not carry the day in and of itself, especially if the facts underlying the case have a tenuous connection to that forum. In a case in which such an unconvincing connection was found, the plaintiffs had an office in the Southern District of New York and had induced the defendants to ship some allegedly infringing product into that forum. 1648 Despite what might appear to be a prima facie nexus between the operative facts of the case, the court granted the defendant’s motion to transfer the action to the Northern District of California under an examination of the following factors: (1) [the] plaintiff’s choice of forum, (2) the locus of the operative facts, (3) the convenience of the witnesses, (4) the convenience and means of the parties, (5) the location of relevant documents and the relative ease of access to sources of proof, (6) the availability of process to compel attendance of unwilling witnesses, (7) a forum’s familiarity with the governing law, and (8) trial efficiency and the interest of justice based on the totality of the circumstances. Chief among the considerations driving the court’s decision was its conclusion that “[t]he only connection of this case to New York is the ordering of allegedly infringing items in New York and their shipment to New York.” 1649 Moreover, although resolution of the matter in New York would be more convenient to the plaintiffs, “[i]t is clear that as between the two parties, . . . [the plaintiffs] could better afford to put on its case in California than defendants could afford to defend their case in New York.” 1650 Because the remaining factors of record were neutral and favored neither party, “the totality of the circumstances” warranted a transfer. 1651 5. Pleading Requirements The notice pleading principles underlying the Federal Rules of Civil Procedure generally do not require much from plaintiffs, 1652 but such is not the case where Rule 9 is concerned. That rule 1648. See Cartier v. D & D Jewelry Imps., 510 F. Supp. 2d 344 (S.D.N.Y. 2007). 1649. Id. at 346. 1650. Id. at 347. 1651. Id. at 348. 1652. See, e.g., Res. Ctr. for Indep. Living, Inc. v. Ability Res., Inc., 534 F. Supp. 2d 1204, 1210 (D. Kan. 2008) (declining to grant motion to dismiss on ground that plaintiff had stated a “plausible claim of unfair competition,” despite absence of reference in complaint to “specific protectable mark”). 290 Vol. 99 TMR requires parties alleging fraud to state their averments with particularity, a mandate that one court held fully applicable to allegations that federal registrations have been fraudulently procured. 1653 The counterclaim plaintiff alleged that the counterclaim defendant had falsely represented to the USPTO that it enjoyed the exclusive right to use its mark when in fact the counterclaim plaintiff had advertised its mark in connection with competitive financial services. Evaluating the counterclaim defendant’s motion to dismiss, the court held that: [A] plaintiff claiming that the declaration or oath in the defendant’s application for registration was executed fraudulently, in that there was another use of the same or a confusingly similar mark at the time the oath was signed must allege particular facts which, if proven, would establish that: (1) there was in fact another use of the same or a confusingly similar mark at the time the oath was signed; (2) the other user had legal rights superior to applicant’s; (3) applicant knew that the other user had rights in the mark superior to applicant’s, and either believed that a likelihood of confusion would result from applicant’s use of its mark or had no reasonable basis for believing otherwise; and that (4) applicant, in failing to disclose these facts to the Patent and Trademark Office, intended to procure a registration to which it was not entitled. 1654 Under this standard, the counterclaim plaintiff’s allegations fell short for two reasons. First, the averment that the counterclaim plaintiff’s advertising had featured its mark was an insufficient basis to establish protectable trademark rights. Second, the counterclaim plaintiff had failed to allege specific facts demonstrating the counterclaim defendant’s awareness of the advertisements at the time the application was filed. 1655 6. Abstention Under certain circumstances, a federal court may abstain from hearing an action pending resolution of a related action in state court. Nevertheless, abstention is an “extraordinary and narrow exception” to the general rule that federal courts ordinarily should hear actions where federal subject matter jurisdiction exists, 1656 and it was the general rule followed by one federal district court in 1653. See Hana Fin., Inc. v. Hana Bank, 500 F. Supp. 2d 1228 (C.D. Cal. 2007). 1654. Id. at 1234 (quoting Intellimedia Sports Inc. v. Intellimedia Corp., 43 U.S.P.Q.2d 1203, 1206 (T.T.A.B. 1997)). 1655. See id. at 1234-37. 1656. Colorado River Water Conservation Dist. v. U.S., 424 U.S. 800, 813 (1976). Vol. 99 TMR 291 a case in which so-called Colorado River was invoked. 1657 The case before that court had been preceded by another one filed in Maryland state court, and one of the plaintiffs in the earlier-filed action—now a defendant in the federal action—moved the district court to suspend its proceedings pending resolution of the state court action. Denying the motion, the district court observed that: Abstention under Colorado River is only appropriate if this Court first determines that the federal and state suits are parallel. Next, this Court must balance several factors to determine whether the case represents an “exceptional circumstance.” The following six such factors have been identified by the United States Court of Appeals for the Fourth Circuit: “(1) whether the subject matter of the litigation involves property where the first court may assume in rem jurisdiction to the exclusion of others; (2) whether the federal forum is an inconvenient one; (3) the desirability of avoiding piecemeal litigation; (4) the relevant order in which the courts obtained jurisdiction and the progress achieved in each action; (5) whether state law or federal law provides the rule of decision on the merits; and (6) the adequacy of the state proceeding to protect the parties’ rights.” 1658 According to the district court, the defendant had failed to establish either that the proceedings were parallel or that the required exceptional circumstances existed. As to the former, the state court did not have before it the Lanham Act claims that had been advanced in the district court, which meant that “if this Court were to [abstain], outstanding legal issues would remain at the completion of the case in the state court.” 1659 And, as to the latter, the district court concluded that only the third of the Fourth Circuit’s factors might favor abstention, a consideration that was insufficient to carry the day. 1660 7. Discovery Issues Substantive trademark-related discovery disputes were few and far between. One, however, arose in a district court appeal from a Trademark Trial and Appeal Board proceeding in which the defendant sought to discover the identities of “all parties and/or 1657. See Extra Storage Space, LLC v. Maisel-Hollins Dev. Co., 527 F. Supp. 2d 462 (D. Md. 2007). 1658. Id. at 465-66 (quoting Chase Brexton Health Servs., Inc. v. Maryland, 411 F.3d 457, 462 (4th Cir. 2005)). 1659. Id. at 467. 1660. See id. at 467-68. 292 Vol. 99 TMR persons that have any rights in Plaintiff’s Mark.” 1661 In response to an interrogatory on the subject, the plaintiff represented that it was “the entity that has rights in Plaintiff’s Mark.” 1662 Granting the defendant’s motion to compel, the court held that “[the plaintiff’s] claim that it had rights in the Mark[] fails to indicate whether [the plaintiff] in fact has all rights in the Mark. As such, this Court will order [the plaintiff] to provide an unambiguous statement identifying all those having any rights to [the plaintiff’s] Mark.” 1663 The court was equally receptive to the defendant’s argument that the plaintiff should have to respond to two requests for admission that referred to “Plaintiff’s Goods,” with that phrase being defined as nineteen alcoholic beverages recited in an application filed by the plaintiff. The plaintiff contended that the requests were impermissibly vague and compound, but the court disagreed. Noting that compound requests that are separable into distinct components should be admitted or denied in sequence, the court held that “[the plaintiff] has failed to establish why it cannot provide an admission or denial for each of the 19 separate alcoholic beverages it identified in its application.” 1664 Accordingly, it granted this aspect of the defendant’s motion as well. The court also granted the defendant’s motion to compel supplementation of the plaintiff’s allegedly deficient responses to the defendant’s document requests, some of which addressed the plaintiff’s claimed date of first use. The requests sought the production of “all” responsive documents, even those that the plaintiff considered unreasonably duplicative or cumulative. The court was unsympathetic to the plaintiff’s objections, holding that “the requests are relevant to the pending case and reasonably calculated to lead to the discovery of admissible evidence. As such, this Court shall order [the plaintiff] to supplement its production with any and all remaining responsive documents that have not yet been produced.” 1665 An order compelling production of responsive documents also came in an action in which the plaintiff alleged that the defendant had participated in two transactions involving circuit breakers bearing counterfeit marks. 1666 The defendant advanced three primary arguments why no further production was necessary. 1661. Quoted in Tequila Centinela, S.A. de C.V. v. Bacardi & Co., 247 F.R.D. 198, 201 (D.D.C. 2008). 1662. Quoted in id. 1663. Id. 1664. Id. at 203 (footnote omitted). 1665. Id. at 204. 1666. See Square D Co. v. Gaffney-Kroese Supply Corp., 249 F.R.D. 537 (N.D. Ill. 2008). Vol. 99 TMR 293 These were that it had already produced records related to the two transactions expressly referred to by the plaintiff’s complaint, that any goods purchased from the plaintiff’s authorized distributors necessarily were genuine and therefore irrelevant, and that it had only purchased goods from those authorized distributors. As to the first of these assertions, the court held that “[the plaintiff’s] allegations regarding [the defendant’s] participation in two transactions involving counterfeit . . . circuit breakers give [the plaintiff] a legitimate basis to ascertain, via the discovery process, whether [the defendant] was involved in other such transactions.” 1667 It rejected the defendant’s second argument after concluding that “the fact that an entity that sold to [the defendant] might have been an authorized . . . distributor at the time does not necessarily mean that it was selling only genuine circuit breakers; it also could have been selling counterfeit products.” 1668 And, after conducting an in camera review of a somewhat cryptic roster of the defendant’s suppliers, the court concluded that it would be “far better for counsel” to determine whether those companies actually had been approved by the plaintiff. 1669 In an unrelated discovery dispute, one set of defendants responded to an infringement suit by seeking to depose the plaintiff’s trial lawyer. 1670 The parties previously had been in a licensee-licensor relationship, and the defendants argued that the lawyer had unique knowledge bearing on the license’s termination. Entertaining the plaintiff’s motion to quash, the court held that: [P]arties seeking to depose “opposing trial counsel” must demonstrate that “(1) no other means exist to obtain the information other than to depose opposing counsel . . .; (2) the information sought is relevant and nonprivileged; and (3) the information is crucial to the preparation of the case.” 1671 The defendants’ showing on each point fell short. As to the first, the defendants failed to identify any specific knowledge of the 1667. Id. at 540. 1668. Id. at 541. 1669. Id. at 542. The defendant did, however, emerge with one small victory, which was that the court refused to compel production of all records of the defendant’s purchases of circuit breakers at less than the lowest unit price at which the plaintiff sold the same models to its authorized distributors. Rather than accepting the plaintiff’s argument that such a fact pattern would establish the counterfeit nature of the goods so purchased, the court held that “[t]here could be other legitimate explanations—for example, a supplier’s effort to dispose of inventory that it could not sell at a profit.” Id. at 543. As a consequence, “[w]ithout further discussion, the Court is not prepared to say that purchase at a price below [the plaintiff’s] distributor price is, by itself, sufficiently indicative of counterfeiting to require production of documents relating to such purchases.” Id. 1670. See Sea Tow Int’l, Inc. v. Pontin, 246 F.R.D. 421 (E.D.N.Y. 2007). 1671. Id. at 424 (quoting In re Friedman, 350 F.3d 65, 71 (2d Cir. 2003) (ellipses in original). 294 Vol. 99 TMR plaintiff’s lawyer that could not be acquired from other sources. In its application of the second factor, the court found that the lawyer’s knowledge of the licensing agreement had arisen from his representation of the defendants, rather than from other sources. This in turn led to the third factor being resolved in the plaintiff’s favor, as “most, if not all, testimony that [the lawyer] could provide would be subject to the attorney-client privilege and the work product doctrine.” 1672 8. Expert Witness Testimony The admissibility of testimony from experts in such topics as monetary relief and survey evidence of actual confusion is sufficiently well-established that it is rarely litigated these days. 1673 Nevertheless, courts remain reluctant to accept expert opinions on such subjects as the plaintiff’s entitlement to rights in the first instance and on the ultimate issue of whether those rights have been violated. 1674 Thus, for example, one district court declined to allow a putative expert to testify on the likelihood of confusion between two marks because: [the witness] appears not to have relied on . . . a consumer survey but, rather, he drew his conclusions based upon his personal knowledge and expertise. . . . Furthermore, . . . testimony based solely on [the witness’s] personal opinion on the issue of likelihood of confusion should not be permitted because it would usurp the jury’s role in making fact determinations. 1675 A different court similarly faulted two experts hired by the counterclaim plaintiff in support of its claims that the counterclaim defendant had falsely advertised its electronic control devices, or “stun guns,” as non-lethal. 1676 The testimony of one witness was excluded because he had been identified only on the last day of the discovery period. 1677 The other witness had been 1672. Id. at 427. 1673. For an example of an opinion upholding the admissibility of testimony by an expert with experience designing social science surveys on how Internet users interact with websites to critique a likelihood of confusion survey, see Smith v. Wal-Mart Stores, Inc., 537 F. Supp. 2d 1302, 1324 (N.D. Ga. 2008). 1674. See, e.g., Pilot Corp. v. Fisher-Price, Inc., 501 F. Supp. 2d 292, 301-02 (D. Conn. 2007) (declining to accord weight to expert testimony of customs in the trade inconsistent with unambiguous terms of parties’ license agreement). 1675. Patsy’s Italian Rest., Inc. v. Banas, 531 F. Supp. 2d 483, 486 (E.D.N.Y. 2008). 1676. See Taser Int’l Inc. v. Bestex Co., 84 U.S.P.Q.2d 1186 (C.D. Cal. 2007), aff’d, No. 0755820, 2008 WL 5054289 (9th Cir. Nov. 21, 2008). 1677. See id. at 1193-94. Vol. 99 TMR 295 disclosed a mere five business days before the close of discovery, and his report was deficient in multiple respects: The report fails . . . to give any of the raw data measurements [the witness] obtained when he purportedly tested the power output of the [counterclaim defendant’s devices], the results of the calculations he used to compare those power output measurements to the safety thresholds, the raw data for the time that the [devices] could continue to deliver electrical impulses before their battery power was depleted, or his reasoning for concluding that such a time was “sufficient” to cause death. 1678 Accordingly, the court held that the witness’s testimony was inadmissible under both Federal Rule of Civil Procedure 26(a)(2)(B) and Federal Rule of Evidence 702. 1679 Another would-be expert fared even worse under an application of Rule 702(a) of the Indiana Rules of Evidence. 1680 In a dispute between family members operating funeral homes with similar marks, the plaintiffs sought to introduce expert witness testimony from the principal of a management consulting firm that specialized in the industry. Although initially opining that there was a likelihood of confusion between the parties’ marks, the witness admitted on cross-examination that “I wouldn’t say that I’m here to talk about confusion. I’d say that I’m here to talk about the effects on goodwill and the effects upon a new competitor opening up with a name that is similar to the existing business.” 1681 That was all the Court of Appeals of Indiana needed to hear before affirming the exclusion of the witness’s testimony below: “[The witness] simply does not have the qualifications to speak as an expert on the issue of confusion, as he himself said that he was not there to talk about confusion.” 1682 Finally, one court was unconvinced by the alleged probative value of testimony by an expert that similarities between the colors appearing on handbags produced by the parties reflected a bad faith intent to copy on the defendants’ part. 1683 The special masters to whom the admissibility of the expert’s report was referred were not impressed. After reviewing the highly technical “micro-analysis” conducted by the expert, the special masters 1678. See id. at 1194. 1679. See id. at 1194-96. 1680. See Burns-Kish Funeral Homes, Inc. v. Kish Funeral Homes, LLC, 889 N.E.2d 15 (Ind. Ct. App. 2008). 1681. Quoted in id. at 25. 1682. Id. 1683. See Louis Vuitton Malletier v. Dooney & Bourke, 525 F. Supp. 2d 558 (S.D.N.Y. 2007), later proceedings, 561 F. Supp. 2d 368 (S.D.N.Y 2008). 296 Vol. 99 TMR concluded that he was “sufficiently qualified to testify to issues pertaining to colorimetry.” 1684 Nevertheless, with respect to his proposed testimony of the chances of the defendants’ color scheme having been adopted innocently, the special masters noted that “[the expert’s] expertise in colorimetry does not establish his expertise as a statistician. An expert qualified in one subject matter does not thereby become an expert for all purposes.” 1685 In particular, “[the expert] provided no explanation for why he found that the common use of colors was statistically significant, gave no indication that he employed reliable statistical to his findings, and even failed to place a figure on the degree of probability that he determined.” 1686 In recommendations accepted by the district court, the special masters therefore concluded that the expert’s report as to the defendants’ intent should be excluded as insufficiently reliable; 1687 what’s more, they also prevailed upon the district court to disregard the report to the extent that it purported to advise the jury on how similar the parties’ colors were. 1688 In another recommendation adopted by the court, the special masters similarly urged the exclusion of a report by a different expert proffered by the plaintiff on the subject of whether the defendant’s alleged imitation of the plaintiff’s marks was likely to dilute the distinctiveness of those marks. The parties sold high-end handbags, which led the plaintiff’s expert to opine that “[t]he unique selling position earned by [the plaintiff’s marks] is diluted by the availability of the ‘less expensive’ similar products, thus reducing the attractiveness of the [plaintiff’s] trademarks to potential customers” and that this effect had shifted sales to the defendant. 1689 Unfortunately for the plaintiff’s expert, however, the plaintiff previously had represented to the court that it was not seeking monetary relief in the form of profits lost to the defendant. 1690 The special masters also looked to the multifactored test for likely dilution set forth in Section 43(c)(2)(B) to conclude that the existence or nonexistence of lost profits was not a relevant consideration in the likelihood of dilution analysis. 1691 Finally, the special masters faulted the expert for relying on a regression analysis conducted by another employee of his firm: Although the 1684. Id. at 641. 1685. Id. at 642. 1686. Id. at 643. 1687. See id.; see also id. at 646-48. 1688. See id. at 646-66. 1689. Quoted in id. at 653. 1690. See id. at 661. 1691. See id. at 660-64. Vol. 99 TMR 297 expert would have been entitled to rely upon work done by assistants, his lack of experience with regression analysis rendered him a mere “mouthpiece” for the individual actually conducting the analysis. As the special masters explained, “[i]t is true that . . . experts can rely on hearsay in reaching their own opinions. But a party cannot call an expert simply as a conduit for introducing hearsay under the guise that the testifying expert used the hearsay as the basis of his testimony.” 1692 9. Right to Jury Trial The Seventh Amendment provides that “in Suits at common law, where the value in controversy shall exceed twenty dollars, the right of trial by jury shall be preserved. . . .” 1693 Although claims to the legal remedy of actual damages clearly are covered by the amendment’s scope, whether the right to a jury trial extends to the equitable remedy of an accounting of the defendant’s profits has produced some judicial disagreement over the years. 1694 For example, based on the proposition that “the Seventh Amendment right to a jury trial does not apply to . . . equitable actions for disgorgement,” 1695 some courts have denied demands for jury trials where the only monetary relief sought is the equitable remedy of an accounting. 1696 At the same time, however, other courts have interpreted the Supreme Court’s holding in Dairy Queen, Inc. v. Wood, 1697 that a plaintiff asserting both infringement and breach of contract causes of action was entitled to a jury trial as standing for the proposition that claims for actual damages and those for accountings of profits are equally subject to Seventh Amendment guarantees. 1698 1692. Id. at 666. As far as the merits of the plaintiff’s claims of lost sales were concerned, the special masters noted that both the plaintiff’s expert and a counterexpert retained by the defendant had failed to take into account the possibility that factors other than the introduction of the defendant’s goods could have affected the plaintiff’s sales. See id. at 66670, 672-77. 1693. U.S. Const. amend. VII. 1694. Of course, a demand for a jury trial on the issue is a prerequisite for receiving one. See, e.g., Venture Tape Corp. v. McGills Glass Warehouse, 540 F.3d 56, 62-63 (1st Cir. 2008) (holding that defendants had waived any right to a trial by jury of the plaintiff’s request for an accounting by voluntarily participating in a bench trial). 1695. SEC v. Tome, 833 F.2d 1086, 1096 (2d Cir. 1987). 1696. See, e.g., G.A. Modefine S.A. v. Burlington Coat Factory Warehouse Corp., 888 F. Supp. 44, 45 (S.D.N.Y. 1995). 1697. 369 U.S. 469 (1962). 1698. See, e.g., Sid & Marty Krofft Television Prods., Inc. v. McDonald’s Corp., 562 F.2d 1157, 1174-75 (9th Cir. 1997). 298 Vol. 99 TMR Faced with these competing lines of authority, one district court upheld the plaintiffs’ right to a jury trial on their request for an accounting: [T]he Supreme Court has held that a claim for an accounting of profits in a trademark infringement action is a legal claim for relief, and thus gives rise to a right to a trial by jury. . . . After Dairy Queen, it is clear that a claim for an accounting of profits is treated as the equivalent of a claim for damages for jury trial purposes. Though a minority of courts have limited Dairy Queen to claims involving breach of contract, that interpretation is inconsistent with the plain language of Dairy Queen, which called [the] plaintiff’s claim “wholly legal,” whether construed as a complaint for breach of contract or trademark infringement. 1699 10. Extraterritorial Application of the Lanham Act Affirming the exercise of jurisdiction over allegations of infringement based on conduct occurring in Saudi Arabia, the Fifth Circuit held that “[i]n determining whether the district court’s exercise of extraterritorial jurisdiction was proper . . . the appropriate factors to consider [are] the sufficiency of the contacts in this country and the interests of the United States, including ‘the citizenship of the defendant, the effect on United States commerce, and the existence of any conflict with foreign law.’” 1700 Applying this test to the facts before it, the appellate court noted that “[the defendant] is an American corporation based in Suttgart, Arkansas, and [its] sales in Saudi Arabia have an effect on interstate commerce based on the processing, packaging, transportation, and distribution activities which take place in the United States before [its goods] reach[] Saudi Arabia.” 1701 With the defendant unable to demonstrate how an exercise of jurisdiction over the plaintiff’s claims would be an affront to Saudi sovereignty, its appeal fell short of the mark. 1702 The same court had little difficulty affirming a finding of liability against a group of U.S. companies and one U.S. national that claimed their allegedly unlawful acts had taken place in Mexico and had therefore had no effect on U.S. commerce. 1703 The court conducted an extensive review of the activities by the 1699. adidas-Am., Inc. v. Payless Shoesource, Inc., 546 F. Supp. 2d 1029, 1087 (D. Or.), reconsideration denied, 540 F. Supp. 2d 1176 (D. Or. 2008). 1700. Am. Rice, Inc. v. Producers Rice Mill, Inc., 518 F.3d 321, 327 (5th Cir. 2008) (quoting Am. Rice, Inc. v. Ark. Rice Growers Coop. Ass’n, 701 F.2d 408, 414 (5th Cir. 1983)). 1701. Id. at 328. 1702. See id. 1703. See Paulsson Geophysical Servs., Inc. v. Sigmar, 529 F.3d 303 (5th Cir. 2008). Vol. 99 TMR 299 defendants in the U.S. that led to the alleged infringement in Mexico. These included the negotiation of an oil exploration services contract, the use of “facilities of the State of Texas” to transfer a grant of rights to use technology developed by the plaintiff, the pursuit of financing, and the chartering of a boat. 1704 Rejecting the defendants’ argument that their conduct had had no effect on U.S. commerce, the court held that “[t]hese not only had some effect; they had a substantial effect on United States commerce. Although not necessarily violations of the Lanham Act, the activities were all ‘essential steps in the course of business consummated abroad,’ the misuse of [the plaintiff’s] trademarks.” 1705 The Fifth Circuit was not the only tribunal to take aim at extraterritorial unfair competition. One Second Circuit district court was confronted with two U.S. domiciliaries who had infringed the plaintiff’s CHIC mark as matter of law by giving musical performances in Europe under the LADIES OF CHIC and FIRST LADIES OF CHIC marks. 1706 Rejecting the defendants’ argument that their conduct was beyond the scope of federal law because it had not had a substantial effect on interstate commerce, the court held that prior Second Circuit authority plainly left open the possibility that an American infringer’s physical use of the stream of American commerce to compete with the trademark owner could constitute a substantial effect on American commerce, at least where those domestic activities materially support the foreign use of the mark and are in themselves domestic infringements of the [plaintiff’s] mark likely to confuse U.S. consumers. 1707 The court then found as a matter of law that the defendants’ conduct had indeed had such an effect. To begin with, “[w]hether the eventual performance was in the U.S. or abroad, it is undisputed that defendants directed, coordinated, and operated their [infringing] enterprise from the U.S.” 1708 Beyond that, “defendants advertised their availability to perform anywhere as ‘First Ladies of Chic’ on their own website, www.ladiesofchic.com, and on the websites of American promoters and talent agencies, thus using plaintiff’s mark in American commerce in a way that was likely to confuse domestic as well as foreign consumers.” 1709 Finally, “it is well-settled that the Lanham Act applies to an 1704. See id. at 308-09. 1705. Id. at 309 (quoting Steele v. Bulova Watch Co., 344 U.S. 280, 287 (1952)). 1706. See Rodgers v. Wright, 544 F. Supp. 2d 302 (S.D.N.Y. 2008). 1707. Id. at 314. 1708. Id. at 315. 1709. Id. 300 Vol. 99 TMR American defendant’s foreign infringement where that infringement results in a likelihood of . . . confusion of American consumers, such as when products bearing the infringing mark make their way back into the U.S.” 1710 Under these circumstances, “[t]he Court sees no reason why the Lanham Act should not also apply where a U.S. citizen’s foreign infringement is materially furthered by infringing domestic activities that will likely confuse American consumers.” 1711 11. Sanctions Although sanctions motions in trademark and unfair competition litigation produce reported opinions only infrequently, the past year produced four such opinions of note, two of which originated in the same case. That litigation originated in promotional claims by the defendant that its hypodermic needles for use on livestock were “detectable” if they broke off, therefore allowing them to be intercepted before entering the food supply. 1712 The plaintiff moved for a preliminary injunction based on a scientific study that the court found to have no probative value and then adopted a series of alternative arguments that the court found equally unconvincing. More importantly from the court’s perspective, the defendants repeatedly advised the plaintiff that the plaintiff’s claims of false advertising violated Rule 11 of the Federal Rules of Civil Procedure. Granting the defendants’ motion for sanctions, the court first explained that: A violation of Rule 11 occurs when a pleading is presented for any improper purpose, such as to harass or to cause unnecessary delay or needless increase in the cost of litigation, contains claims or contentions not warranted by existing law or by a nonfrivolous argument for extension or reversal of existing law, contains allegations or factual contentions that lack evidentiary support, or contains denials of factual contentions that are not warranted on the evidence. . . . The standard for imposition of Rule 11 sanctions is generally that the conduct of the party or its counsel was objectively unreasonable. 1713 1710. Id. 1711. Id. 1712. See Ideal Instruments, Inc. v. Rivard Instruments, Inc., 434 F. Supp. 2d 598 (N.D. Iowa), later proceedings, 434 F. Supp. 2d 640 (N.D. Iowa 2006), later proceedings, 243 F.R.D. 322 (N.D. Iowa), later proceedings, 245 F.R.D. 381 (N.D. Iowa 2007). 1713. Ideal Instruments, Inc. v. Rivard Instruments, Inc., 243 F.R.D. 322, 334 (N.D. Iowa) (internal quotation marks and citations omitted), later proceedings, 245 F.R.D. 381 (N.D. Iowa 2007). Vol. 99 TMR 301 Applying this standard, the court found that “it is clear that [the plaintiff] and its counsel . . . shirked their responsibilities to conduct a reasonable investigation of or inquiry about [their expert witness’s] test results before filing their Motion For Preliminary Injunction.” 1714 Not only could this initial failure not be cured by additional tests conducted by another expert, 1715 it created an inference that the plaintiff had brought its motion for an improper purpose. 1716 The court left the issue of the proper quantum of the sanctions warranted by the plaintiff’s conduct and that of its counsel for a later opinion. 1717 Examining the defendants’ request for an award of their fees and costs in that opinion, the court held that the circumstances under which it was reviewing the defendants’ petition did not warrant strict scrutiny. Rather: The determination of hours reasonably expended at a reasonable hourly rate is only the starting point for determination of the amount of a Rule 11 fee award, however. . . . [I]t is [also] appropriate for the court to consider whether the amount of the attorney fees and expenses awarded is necessary to deter repetition of the misconduct in question, . . . as well as the sanctioned party’s ability to pay, if the sanctioned party raises [its] ability to pay as a defense to the amount of the sanction claimed. Indeed, although the court may consider what amount of fees and expenses will fairly compensate the injured party for the reasonable attorney fees and costs that were occasioned by the filing of the sanctioned party’s frivolous action, the primary purpose of Rule 11 sanctions is to deter attorney and litigant misconduct, not to compensate the opposing party for all of its costs in defending against the frivolous action. 1718 Despite this ominous restatement of Rule 11 doctrine, the court ultimately ordered a flat sanction of $50,000 to be paid jointly by the plaintiff and its counsel. Although less than the award sought by the defendants, the court explained that its sanction “is considerably more than a ‘hand slap’ and is, instead, sufficiently substantial to give a party or attorney pause before filing a motion that the party or attorney should reasonably recognize lacks evidentiary support and that a factfinder might reasonably infer 1714. Id. at 342. 1715. See id. at 343-45. 1716. See id. at 345-46. 1717. See Ideal Instruments, Inc. v. Rivard Instruments, Inc., 245 F.R.D. 381 (N.D. Iowa 2007). 1718. Id. at 387-88 (internal quotations marks omitted) (citations omitted). 302 Vol. 99 TMR was . . . filed for an improper purpose.” 1719 The court did, however, decline to reduce any of the defendants’ claimed costs in responding to the preliminary injunction motion as an additional sanction. 1720 In the second case, a long-running dispute in the Northern District of Illinois over witness tampering by a prevailing plaintiff took another turn as the litigation wound up on appeal before the Seventh Circuit for a second time. 1721 Having secured from a jury an award of $713,000 in actual damages, the plaintiff was sanctioned in the same amount by the district court for its earlier efforts to discourage a potentially adverse witness from testifying. Concluding that the sanction was punitive in nature, the Seventh Circuit dodged the issue of whether the plaintiff’s misconduct must have been proven by clear and convincing evidence. Instead, it focused on the quantum of the sanction, holding that while [the Constitution] has been interpreted to require proof beyond a reasonable doubt to convict in a criminal case, [it] also imposes . . . limitations on the severity of punishment, so the permissible level of sanctions for misconduct in litigation . . . is, even when there is no heightened burden of proof, limited by notions of proportionality. 1722 Because the defendant had incurred only $78,000 in fees and costs litigating the issue of the plaintiff’s misconduct below, and because there was no allegation the misconduct had affected the outcome of the case on the merits, the Seventh Circuit held that the district court’s award of fifty-nine times that amount as a sanction was excessive. Accordingly, it reduced the sanction to the defendant’s $78,000 investment in pursuing the matter before the district court and otherwise reinstated the award of actual damages. 1723 In an even less successful motion for sanctions presented, the plaintiff in the third case argued that an ACPA counterclaim asserted against it improperly incorporated information contained in the sealed file of the plaintiff’s ongoing divorce proceedings. 1724 In response, the defendants argued that the plaintiff had voluntarily disclosed the information to them in a conversation prior to his termination as an employee. The court credited the defendants’ account and found sanctions inappropriate, noting in any case that the conversation had occurred prior to the sealing of 1719. Id. at 391. 1720. See id. at 392. 1721. See Ty, Inc. v. Softbelly’s, Inc., 517 F.3d 494 (7th Cir. 2008). 1722. Id. at 499. 1723. Id. at 499-500. 1724. See Klayman v. Judicial Watch, Inc., 247 F.R.D. 10 (D.D.C. 2007). Vol. 99 TMR 303 the file in the plaintiff’s proceeding. 1725 A second basis for sanctions alleged by the plaintiff, namely, that the counterclaim referred to privileged attorney-client communications, failed when the plaintiff was unable to establish that an attorney-client relationship existed. 1726 12. Court Review of, and Deference to, U.S. Patent and Trademark Office Decisions Federal courts often are called upon to review actions of the USPTO, with one opportunity to do so coming in appeals to district courts under Section 21 of the Lanham Act 1727 by litigants dissatisfied with decisions of the Trademark Trial and Appeal Board. Interpreting Section 21, one district court held both that additional evidence and issues may be considered in such an appeal, but also that the prior Board decision may not have preclusive weight: Although a district court owes a certain degree of deference to the TTAB’s findings of fact, both parties may introduce new evidence in a § 21(b) action. . . . [The appellee] presses the general rule that judicial review of agency action is limited to the issues presented before the agency. But this rule usually arises from statutes providing for judicial review, subject to statutory modification. Just so here: the Lanham Act directs a district court to conduct a new trial to decide whether an applicant is entitled to a registration. In that proceeding, the court may consider both new issues and new evidence that were not before the TTAB. . . . .... Moreover, the Lanham Act establishes a fluid relationship between the TTAB and the courts, in which the TTAB does not have the authority of an ordinary agency. Unlike an ordinary agency, whose decisions we would review under the deferential standards of the [Administrative Procedure Act], the PTO’s decision to register a trademark is subject to later collateral attack during which registration is only prima facie evidence of the mark’s validity, rebuttable by a preponderance of the evidence. Further, whereas ordinarily parties must exhaust their administrative remedies before seeking judicial review of agency decisions, the Lanham Act provides an 1725. See id. at 17. 1726. See id. at 17-18. 1727. 15 U.S.C. § 1071 (2006). 304 Vol. 99 TMR independent civil action to cancel a completed trademark registration without first petitioning the PTO. 1728 In overturning a prior Board finding of no likelihood of dilution, a different court noted that “‘[a]lthough the district court’s review of the TTAB’s decision is considered de novo when the parties present new evidence and assert additional claims, the district court must also afford deference to the fact findings of the TTAB.’” 1729 In the case before it, however, the court concluded that any deference due to the Board’s finding was outweighed by the plaintiff’s introduction of survey evidence that “the vast majority of . . . respondents, representing a significant segment of [the defendant’s] target customer group” associated the defendant’s mark with the plaintiff. 1730 It therefore found that “[a]lthough the court gives deference to [the] TTAB’s fact-finding, the evidence presented by [the plaintiff] in this proceeding compels reversal of the TTAB’s decision dismissing [the plaintiff’s] opposition to [the defendant’s application to register its] mark.” 1731 Of course, decisions made by examining attorneys can also come into play in later litigation. In one case presenting this scenario over the past year, the plaintiff sought to enforce the rights to several marks incorporating the words “auto club.” 1732 Although it owned four federal registrations, an application to register the words standing alone apparently had been rejected on the ground that the claimed mark was at best a generic term with de facto secondary meaning. 1733 Rejecting a motion by the defendants seeking to have the words declared generic as a matter of law “primarily” on the basis of the examiner’s action, the court noted that “[w]hile these findings are instructive, they are not conclusive or binding on the court.” 1734 It therefore held that the plaintiff’s factual showing of distinctiveness prevented the examiner’s disposition of the application from having preclusive effect. 1735 1728. Aktieselskabet AF 21. November 2001 v. Fame Jeans Inc., 525 F.3d 8, 12-13 (D.C. Cir. 2008) (citations omitted). 1729. See Nike, Inc. v. Nikepal Int’l, Inc., 84 U.S.P.Q.2d 1820, 1829 (E.D. Cal. 2007) (quoting CAE, Inc. v. Clean Air Eng’g, Inc., 267 F.3d 660, 674 (7th Cir. 2001)). 1730. Id. 1731. Id. 1732. See Auto. Club v. Auto Club Ltd., 83 U.S.P.Q.2d 1438 (C.D. Cal. 2007). 1733. See id. at 1443. 1734. Id. 1735. See id. Vol. 99 TMR 305 USPTO decisions met with friendlier receptions in other cases. 1736 The relevant issue disputed by the parties to one such proceeding was the distinctiveness of the plaintiff’s registered mark, 843-TURF for landscaping, gardening and/or lawn maintenance services. 1737 The court was impressed both that the USPTO had approved the plaintiff’s mark for registration in the first instance and that it had accepted the plaintiff’s combined declaration under Sections 8 and 15; 1738 as to the latter, the court held that the acceptance of the declaration “is persuasive proof that the registered mark is not merely descriptive.” 1739 It went on to observe that “in a case such as this, ‘courts should not overrule the action of the Patent Office to whose care Congress has entrusted the preliminary determination as to whether a mark fulfills the requirements of the statute.’” 1740 As a consequence, it accepted the judgment of the USPTO, “‘which is entrusted with the duty of administering the Lanham Act, and which is undoubtedly expert in these matters.’” 1741 13. Court Review of, and Deference to, NAD Decisions Although federal courts traditionally have been loathe to defer to non-judicial tribunals in their disposition of federal claims, one court broke with that pattern in an action involving a parallel proceeding brought by the defendants before the National Advertising Division of the Council of Better Business Bureaus. 1742 Granting the defendants’ motion to stay its own proceedings, the court held that a number of considerations warranted allowing the NAD to evaluate the merits of the parties’ dispute. These included: (1) the nominal harm to the plaintiffs of any delay; (2) the investment already made by the defendants in the NAD proceeding; (3) the potential benefit to the court of the NAD, “a highly reputable institution”; and (4) the public’s interest in having the NAD set industry standards in the area. 1743 1736. See, e.g., Pilot Corp. v. Fisher-Price, Inc., 501 F. Supp. 2d 292, 302-03, 310 (D. Conn. 2007) (according “great weight” to ex parte approval of application to register defendant’s mark, notwithstanding prior registration of plaintiff’s mark). 1737. See Future Lawn, Inc. v. Maumee Bay Landscape Contractors, L.L.C., 542 F. Supp. 2d 769 (N.D. Ohio 2008). 1738. See 15 U.S.C. §§ 1058, 1065 (2006). 1739. Future Lawn, 542 F. Supp. 2d at 775. 1740. Id. (quoting Aluminum Fabricating Co. v. Season-All Window Corp., 259 F.2d 314, 316 (2d Cir. 1958)). 1741. Id. at 776 (quoting Wynn Oil Co. v. Thomas, 839 F.2d 1183, 1190 (6th Cir. 1988)). 1742. See Russian Standard Vodka (USA), Inc. v. Allied Domecq Spirits & Wine USA, Inc., 523 F. Supp. 2d 376 (S.D.N.Y. 2007). 1743. See id. at 384-85. 306 Vol. 99 TMR G. Constitutional Matters With the exception of occasional claims of First Amendment protection by defendants, constitutional issues injected themselves into relatively few unfair competition cases over the past year. One exception was a challenge to the federal government’s seizure of a shipment of pharmaceutical products for possible use as evidence in a criminal proceeding against the shipment’s recipients. 1744 By the time the criminal proceedings had been resolved, the drugs’ expiration date had run, leading their owner to seek reimbursement under the Constitution’s Takings Clause. 1745 The Federal Circuit rejected this claim, holding that “[o]nce the government has lawfully seized property to be used as evidence in a criminal prosecution, it has wide latitude to retain it so long as the investigation continues, regardless of the effect on that property.” 1746 The apparently genuine nature of the goods did not affect this outcome: “So long as there is a tenable connection, the precise relationship of the drugs to the crime is not relevant; rather, the character of the government action is the sole determining factor.” 1747 Another case turning on a provision of the federal constitution arose from a claim under the South Dakota trademark act. 1748 Because the plaintiff had failed to allege any offending activity by the defendants in South Dakota, the defendants objected to the plaintiff’s proposed application of South Dakota law to them. Invoking the Dormant Commerce Clause, the court held that the defendants’ argument was well-taken: “Under the Commerce Clause, a state regulation is per se invalid when it has an ‘extraterritorial reach,’ that is, when the statute has the practical effect of controlling conduct beyond the boundaries of the state. . . . The Commerce Clause precludes application of a state statute to commerce that takes place wholly outside the state’s borders.” 1749 The court therefore entered summary judgment in the defendants’ favor “because South Dakota trademark law, to the extent that it is applicable to conduct alleged by these claims, cannot extend to ‘extraterritorial conduct.’” 1750 1744. See Amerisource Corp. v. U.S., 525 F.3d 1149 (Fed. Cir. 2008). 1745. U.S. Const. amend. V. 1746. Amerisource, 525 F.3d at 1154. 1747. Id. at 1155. 1748. See Pinnacle Pizza Co. v. Little Caesar Enters., 560 F. Supp. 2d 786 (D.S.D. 2008). 1749. Id. at 802 (quoting Cotto Waxo Co. v. Williams, 46 F.3d 790, 793 (8th Cir. 1995)) (ellipses in original). 1750. Id. Vol. 99 TMR 307 H. Judicial Authority Over Federal Registrations and Applications Section 37 of the Lanham Act provides that in any action involving a registered mark, 1751 the court “may determine the right to registration, order the cancellation of the registrations, in whole or in part, restore cancelled registrations, and otherwise rectify the register with respect to the registrations of any party to the action.” 1752 Reviewing a district court opinion ordering the cancellation of a registration covering a mark that had never been used in commerce, the Seventh Circuit confirmed that parties seeking to invoke Section 37 need not pursue relief before the Trademark Trial and Appeal Board first. 1753 In its view: Because a court’s decision may raise doubts about the validity of a trademark registration, [Section 37] arms the court with the power to update the federal trademark register to account for a[n underlying] mark’s actual legal status (or lack thereof) after it has been adjudicated, thereby reducing the potential for future uncertainty over the rights in [the] particular mark. 1754 The Eleventh Circuit also had the occasion to review a district court opinion ordering the cancellation of a registration under Section 37. 1755 The district court found that the registrant had made two fraudulent representations to the USPTO while pursuing the registration of its mark: (1) it had claimed a date of first use earlier than the actual date of first use; and (2) it failed to disclose concurrent users of the same mark with superior rights in their geographic areas. As to the first of these grounds, the appellate court properly held that “because the uncontroverted testimony established [the registrant] made valid [actual] use of the mark prior to the date it filed its registration application, the improper first use date contained in the application cannot be a basis for invalidating the registration.” 1756 As to the registrant’s failure to disclose the other concurrent users, however, the court upheld the district court’s inference that the omission had been 1751. For an example of a court holding Section 37 inapplicable in a case involving a federal application, see Universal Tube & Rollform Equip. Corp. v. YouTube Inc., 83 U.S.P.Q.2d 1023, 1027 (N.D. Ohio 2007). 1752. 15 U.S.C. § 1119 (2006). 1753. See Cent. Mfg., Inc. v. Brett, 492 F.3d 876 (7th Cir. 2007). 1754. Id. at 883. 1755. See Angel Flight of Ga., Inc. v. Angel Flight Am., Inc., 522 F.3d 1200 (11th Cir. 2008). 1756. Id. at 1210. 308 Vol. 99 TMR motivated by a bad faith intent and therefore affirmed the order of cancellation. 1757 The Eleventh Circuit’s opinion was something of an aberration, however, as most courts faced with allegations of fraudulent representations to the USPTO rejected them, including several opinions doing so as a matter of law. 1758 For example, one counterclaim for cancellation targeted a registration of the CLAYS mark for gunpowder used in clay target shooting. 1759 In response to an examining attorney’s inquiry, the registrant’s president recited in a declaration that “[s]o far as trade relevant to gunpowder is concerned, there is the shooting sport know [sic] as ‘shooting clays’ which involves using clay pigeons (clay discs) as the target. This is the only use of ‘CLAYS’ currently known to applicant in this field.” 1760 Granting the registrant’s motion for summary judgment, the court concluded that, far from concealing the applied-for mark’s status as a generic term in the closely related field of sport shooting, the registrant had affirmatively advised the USPTO of that fact; testimony by the registrant’s president of his good faith during the application process further demonstrated the registrant’s entitlement to summary judgment. 1761 Skepticism toward claims of fraud extended to the preliminary injunction context, in which one defendant alleging fraud by a plaintiff owner of several federal registrations of the ABITA SPRINGS mark for bottled water fell short completely. 1762 The gravamen of the defendant’s argument was that the plaintiff’s water came not from within the city limits of Abita Springs, Louisiana, but instead from an artesian well located two miles outside of the city’s political boundaries. The defendant argued that this cartographical quirk rendered the plaintiff’s mark primarily geographically deceptively misdescriptive, and that the plaintiff’s representations to the USPTO that its water came from 1757. Id. at 1211. 1758. See, e.g., Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 548 F. Supp. 2d 811, 813 (N.D. Cal. 2008) (dismissing counterclaim for cancellation grounded in allegedly fraudulent Section 15 declaration in light of the declaration’s untimeliness and subsequent rejection by the USPTO); Primepoint, L.L.C. v. Primepay, Inc., 545 F. Supp. 2d 426, 446-67 (D.N.J. 2008) (entering summary judgment in registrant’s favor on fraud claim grounded in theory that registrant merely targeted banks for referrals for its payroll services, rather than providing the “banking services” recited in its registration); Hana Fin., Inc. v. Hana Bank, 500 F. Supp. 2d 1228, 1233-38 (C.D. Cal. 2007) (dismissing counterclaim for cancellation of allegedly fraudulently procured registration for failure to state a claim). 1759. See Hodgon Powder Co. v. Alliant Techsystems, Inc., 497 F. Supp. 2d 1221 (D. Kan. 2007). 1760. Quoted in id. at 1235 (brackets in original). 1761. See id. at 1235. 1762. See DS Waters of Am., Inc. v. Princess Abita Water, L.L.C., 539 F. Supp. 2d 853 (E.D. La. 2008). Vol. 99 TMR 309 “a natural source in Abita Springs, Louisiana” constituted fraud. 1763 Requiring the defendant to prove fraud by clear and convincing evidence, the court concluded that “Plaintiff’s conduct surrounding its registration of its [m]arks fails to rise to the level of fraud. . . .” 1764 The clear and convincing evidence standard proved similarly fatal to claims of fraudulent procurement in two disputes between parties to alleged trademark licenses. In the first case, the plaintiff franchisee began using a particular mark in connection with its franchised restaurants that was unrelated to the marks used by the franchise system as a whole. 1765 The defendants encouraged other franchisees to use the mark, adopted it in their own stores, and eventually prosecuted an application to register it that recited the plaintiff’s date of first use. When the parties’ relationship came undone, the plaintiff argued that the franchise agreement granted it the rights to any “original advertising materials” and that the defendants had therefore defrauded the USPTO by claiming the plaintiff’s date of first use. The court was unconvinced by the plaintiff’s interpretation of the franchise agreement and held instead that any use of the mark by the plaintiff had inured to the benefit of the defendants. Under these circumstances, it held as a matter of law that the defendants’ claimed date of first use was “not unreasonable,” a conclusion that precluded the plaintiff from meeting its “heavy burden” to “prove the alleged fraud by clear and convincing evidence.” 1766 In the second case, the plaintiff had purchased a restaurant from the lead defendant in an agreement that allowed the plaintiff to use the name of the acquired restaurant “exclusively” at a single location. 1767 When the plaintiff subsequently registered the mark and then filed suit challenging the defendants’ references to their past involvement with the plaintiff’s restaurant, the defendants sought the cancellation of the plaintiff’s registration on two fraudbased grounds: (1) the plaintiff had been aware of the defendants’ operation of another restaurant under the same name when it filed its application; and (2) because the parties’ transaction in reality had been a license, the plaintiff’s sworn averment in its application that it was the owner of the underlying mark was necessarily false. The court rejected each argument following a bench trial. As to the former, the court found that the plaintiff “probably should have known, and indeed may have known” of the other restaurant 1763. Quoted in id. at 859. 1764. Id. at 860. 1765. See Pinnacle Pizza Co. v. Little Caesar Enters., 560 F. Supp. 2d 786 (D.S.D. 2008). 1766. Id. at 803 (internal quotation marks omitted). 1767. See Maurag, Inc. v. Bertuglia, 494 F. Supp. 2d 395 (E.D. Va. 2007). 310 Vol. 99 TMR under the same name, but it also concluded that the defendants had failed to demonstrate by clear and convincing evidence that the plaintiff had “actually intended to deceive the USPTO when it registered the . . . trademark.” 1768 And, as to the latter, it found that “[t]he arguable ambiguity in the [contract over whether it was an assignment or a license] prevents [the defendants] from proving fraudulent intent solely from the face of the contract, and there was no convincing parol evidence regarding the parties’ mutual intent when entering into the transaction.” 1769 At least some district opinions chose to defer their resolution of fraud-on-the-USPTO claims until trial. 1770 In one, for example, the defendant had secured a federal registration covering “shoes” when, in fact, the only goods the defendant had ever sold were slippers. 1771 Although the plaintiff argued in a motion for summary judgment that the defendant had unlawfully misrepresented the nature of its use of its mark, the court was unconvinced. Relying on a dictionary definition of “slipper” as “‘a low-cut shoe that is easily slipped on the foot,’” the court concluded that “there exists a genuine issue of material fact as to whether [the registrant’s] slipper is, in fact, a shoe.” 1772 Another opinion similarly denied a motion for summary judgment filed by a challenger to the registration in question, although not without some confusion over the viability of that claim. 1773 The plaintiff sought the cancellation of the defendant’s registration on the ground that the defendant had filed a fraudulent Section 15 declaration. In response, the defendant pointed out that such a filing was not recognized under Section 14 as a ground for cancellation of a registration that had passed its fifth anniversary of issuance. In concluding that there was a disputed issue of fact as to the defendant’s intent in executing the declaration, the court dodged the legal significance to the registration of any fraud in the Section 15 submission that might ultimately be proven. It did note, however, that “the weight of case 1768. Id. at 399-40. 1769. Id. at 400. 1770. See, e.g., Audiovox Corp. v. Monster Cable Prods., Inc., 544 F. Supp. 2d 155, 158-59 (E.D.N.Y. 2008) (declining to dismiss challenge to trade dress registration grounded in failure to disclose utility patents on ground that motion required court to go beyond pleadings and determine scope and materiality of patents in question). 1771. See Spira Footwear, Inc. v. Basic Sports Apparel, Inc., 545 F. Supp. 2d 591 (W.D. Tex. 2008). 1772. Id. at 595 (quoting Merriam Webster’s Collegiate Dictionary 1105 (10th ed. 1996)). 1773. See Constellation Brands, Inc. v. Arbor Hill Assocs., 535 F. Supp. 2d 347 (W.D.N.Y. 2008). Vol. 99 TMR 311 authority, although scant,” favored the availability of cancellation as a remedy. 1774 Although it was not alone in being victimized by this judicial failure to refer to the Lanham Act’s express text, 1775 the defendant’s argument on this issue was manifestly correct: The evidentiary presumptions created by the filing of a Section 15 affidavit are irrelevant to the validity of the registration itself, which is governed by Section 14 of the Act. 1776 After five years, the Act’s incontestability provisions restrict the grounds upon which registrations may be challenged, with Section 14(3) allowing cancellation only if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it was registered, or is functional, or has been abandoned, or its registration was obtained fraudulently or contrary to the provisions of . . . subsection (a), (b), or (c) of section [2] for a registration under this chapter or contrary to similar prohibitions of such prior Acts for a registration under such Acts, or if the registered mark is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used. 1777 The statute therefore allows cancellation only if the registration itself, and not the incontestable evidentiary presumptions secured by a Section 15 declaration, is obtained fraudulently. 1778 A Section 15 declaration is not an act in the “obtaining” of a registration because it is not a prerequisite for either the maintenance of a registration or Section 14's statute of limitations on cancellation actions. 1779 Indeed, judicial creation of the extrastatutory ground for cancellation would be particularly inappropriate in light of congressional awareness that some registrants would, in fact, file fraudulent declarations to obtain the benefits of incontestability 1774. Id. at 361. 1775. For another example of a court similarly declining to dismiss a claim of fraud grounded in the registrant’s allegedly false Section 15 declaration, see Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 548 F. Supp. 2d 811, 814 (N.D. Cal. 2008). 1776. See 15 U.S.C. § 1064 (2006). 1777. 15 U.S.C. § 1064(3) (2006). 1778. See Park ’N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 195 (1985) (“[Section 14(3)] allows cancellation of an incontestable [registration] at any time . . . if it was obtained fraudulently. . . .”). 1779. See, e.g., Imperial Tobacco Ltd. v. Philip Morris, Inc., 899 F.2d 1575, 1579 n.6 (Fed. Cir. 1990) (“[S]ection [14] is not dependent on the filing of a declaration under section 15 which provides incontestable rights of use. . . .”); W. Worldwide Enters. v. Qinqdao Brewery, 17 U.S.P.Q.2d 1137, 1139 (T.T.A.B. 1990) (“[A] registration that is over five years old may be cancelled solely on the grounds set forth in Section 14[3], irrespective of whether or not the owner of the registration has filed an affidavit under Section 15.”). 312 Vol. 99 TMR under Sections 15 and 33. Notwithstanding that awareness, Congress expressly chose to include such fraud as an affirmative defense to the evidentiary presumptions attaching to a registration while at the same time excluding Section 15 fraud as a ground for the cancellation of the registration itself under Section 14(3). 1780 I. Miscellaneous Matters 1. The Relationship Between Trademark Law and Copyright Law In contrast to the elevated level of judicial interest in the relationship between federal trademark and copyright law in recent years, the subject received little substantive judicial attention. 1781 In one of the few cases in which it was raised, the gravamen of the plaintiff’s complaint was that the defendant had infringed the plaintiff’s trade dress, presumably under Section 43(a), by misappropriating portions of the plaintiff’s catalog and other advertising materials. 1782 Denying the defendant’s motion to dismiss, the court acknowledged that “no Lanham Act claim is stated by merely alleging that unlawful use of copyrighted material is a false designation of origin of the copyrighted work itself.” 1783 At the same time, however, it properly recognized that the plaintiff’s claim “is not based on defendants passing off the copyrighted work as their own, but rather on use of the copyrighted material as trade dress to falsely represent that the general merchandise it sells [sic] originates with plaintiff.” 1784 It therefore declined to grant the defendant’s motion to dismiss, holding instead that “plaintiff’s claim that defendants are wrongfully using its trade dress in a way that will confuse purchasers concerning the origin of non-copyrighted merchandise or services is entirely distinct from [a] copyright claim and [is] an appropriate Lanham Act claim.” 1785 In another case, however, the plaintiff did fail to adduce evidence or testimony that the defendant’s reproduction of the plaintiff’s laminated prints was likely to create confusion. 1786 1780. See Park ’N Fly, 469 U.S. at 196-97 (distinctions drawn by incontestability provisions “cannot be attributed to inadvertence”). 1781. See, e.g., Sadhu Singh Hamad Trust v. Ajit Newspaper Adver., Mktg. & Commc’ns, Inc., 503 F. Supp. 2d 582 (E.D.N.Y. 2007) (noting past dismissal of plaintiff’s trademark claims while allowing copyright claims to go forward on ground that “trademark and copyright law are distinct in both purpose and registration process”). 1782. See Through The Door Inc. v. J.C. Penny Co., 83 U.S.P.Q.2d 1538 (W.D. Wis. 2007). 1783. Id. at 1540. 1784. Id. 1785. Id. 1786. See Jalbert v. Grautski, 554 F. Supp. 2d 57 (D. Mass. 2008). Vol. 99 TMR 313 Reviewing the record on the defendant’s motion for summary judgment, the court concluded that the plaintiff “has presented no evidence or argument to support his false designation of origin claim that differs from that presented in support of his copyright claim.” 1787 Accordingly, the plaintiff’s Section 43(a) claim was dismissed as a matter of law on the ground that it was “simply a copyright infringement claim in different clothing . . . [and] is duplicative of the copyright claim.” 1788 2. Assignments in Gross Most assignment in gross disputes arise in the context of priority battles in which one party alleges that the other failed to acquire the rights of a predecessor because no goodwill was transferred with the acquired mark. Nevertheless, a departure from this general scenario came in an appeal to the Second Circuit in which the parties differed over whether a series of contractual arrangements had given the defendant the right to use a particular technology in Argentina. 1789 There was no dispute that one of the documents in question had assigned the Argentinean rights to an associated trademark, and this led the defendant to argue that the technology necessarily must have been transferred as well; otherwise, the trademark assignment would have been one in gross. The Second Circuit found this argument wanting for several reasons, not the least of which was that the issue of whether an impermissible assignment had occurred was governed by Argentinean law, which the court concluded in dictum recognized assignments in gross. The court was also skeptical of the theory that, even under U.S. law, assignment of the technology would have been required for a finding that the trademark assignment was valid. Finally, it held that the parties might well have been attempting an assignment in gross, despite the invalidity of such a transfer under U.S. law. It therefore held that the district court had erred in holding as a matter of law that an assignment of the technology had occurred. 1790 3. Section 526 of the Tariff Act of 1930 Since the statute’s original passage in 1922, 1791 the proper interpretation of Section 526 of the Tariff Act of 1930 1792 in cases 1787. Id. at 74. 1788. Id. 1789. See Topps Co. v. Cadbury Stani S.A.I.C., 526 F.3d 63 (2d Cir. 2008). 1790. See id. at 70. 1791. Tariff Act of 1922, Pub. Law No. 67-318, ch. 356, 42 Stat. 858, 975. 1792. 19 U.S.C. § 1526 (2006). 314 Vol. 99 TMR involving genuine, but diverted goods, has been the subject of considerable judicial and academic debate. Outside of that context, however, courts usually have enforced its flat prohibition on the importation “into the United States [of] any merchandise of foreign manufacture if such merchandise . . . bears a trademark owned by a citizen of, or by a corporation or association created or organized within, the United States, and registered in the Patent and Trademark Office by a person domiciled in the United States.” 1793 Thus, one opinion over the past year held that a defendant’s liability for having trafficked in goods bearing counterfeit marks was a sufficient basis for finding that Section 526 had been violated as well. 1794 4. Exhaustion of Rights and Diverted Goods Although trademark owners ordinarily have little trouble challenging the uses of identical marks in connection with identical goods and services, that rule carries limited force in cases involving genuine goods placed into commerce by the owners of the marks affixed to the goods. 1795 As one court explained over the past year: Generally, a producer’s right to control distribution of its trademarked product does not extend beyond the first sale of the product, and therefore, resale by the first purchaser of the original article under the producer’s trademark does not constitute trademark infringement. “It is the essence of the ‘first sale’ doctrine that a purchaser who does no more than stock, display, and resell a producer’s product under the producer’s trademark violates no right conferred upon the producer by the Lanham Act.” 1796 A dramatic example of these principles in action came in a dispute between a manufacturer of hair care products, which sought to have a seller of diverted goods held in contempt of an injunction entered in earlier litigation between the parties. 1797 Not only did the court deny this relief, it took the additional step of 1793. Id. 1794. Philip Morris USA Inc. v. Lee, 547 F. Supp. 2d 667, 677-78 (W.D. Tex.), later proceedings, 547 F. Supp. 2d 685 (W.D. Tex. 2008). 1795. See, e.g., ConWest Res., Inc. v. Playtime Novelties, Inc., 84 U.S.P.Q.2d 1019, 102627 (N.D. Cal. 2006) (denying preliminary injunction against sale of genuine goods in light of plaintiff’s failure to demonstrate that goods had been repackaged or altered in any way). 1796. Beltronics USA, Inc. v. Midwest Inventory Distrib. LLC, 522 F. Supp. 2d 1318, 1326 (D. Kan. 2007) (quoting Australian Gold, Inc. v. Hatfield, 436 F.3d 1228, 1239 (10th Cir. 2006)), later proceedings, 545 F. Supp. 2d 1188 (D. Kan. 2008). 1797. See Matrix Essentials v. Quality King Distribs., Inc., 522 F. Supp. 2d 470 (E.D.N.Y. 2007). Vol. 99 TMR 315 dissolving the earlier injunction on the ground that “it is no longer equitable for the [earlier] [i]njunction to have prospective application. . . .” 1798 The court further explained that “[t]he re-sale of . . . genuine goods does not create consumer confusion and supports neither a claim of infringement nor unfair competition.” 1799 Because the earlier order apparently barred the defendant from reselling genuine goods materially identical to their authorized counterparts, “principles of equity militate against continuing application of the injunction. . . .” 1800 Not only is the resale of branded goods ordinarily protected by the first sale doctrine, so too is a defendant’s advertising of those goods. Challenging the resale of diverted tanning products bearing their marks, one set of plaintiffs additionally objected to the defendants’ use of those marks as Internet metatags and as triggers for sponsored advertising. 1801 The plaintiffs’ argument that these practices created actionable initial interest confusion because other products were offered on the site fell short. In language reminiscent of the nominative fair use defense—which was found to be applicable in a later section of its opinion—the court held that: In contrast to the deceptive conduct that forms the basis of a finding of initial interest confusion, [the lead defendant] uses [the lead plaintiff’s] marks to truthfully inform internet searchers where they can find [the lead plaintiff’s] products. Rather than deceive customers into visiting their websites, this use truthfully informs customers of the customers of the contents of those sites. Indeed, in practical effect [the lead defendant] invites [the lead plaintiff’s] customers to purchase [the lead plaintiff’s] products. The fact that these customers will have the opportunity to purchase competing products when they arrive at [the lead defendant’s] site is irrelevant. . . . 1802 The court then took issue with the Tenth Circuit’s decision in Australian Gold, Inc. v. Hatfield, 1803 which imposed liability on closely similar facts: [I]n this Court’s view, there is a meaningful distinction between (1) using a mark to attract potential customers to a website that only offers products of the mark holder’s 1798. Id. at 479. 1799. Id. at 478. 1800. Id. at 479. 1801. See Designer Skin, LLC v. S & L Vitamins, Inc., 560 F. Supp. 2d 811 (D. Ariz. 2008). 1802. Id. at 819. 1803. 436 F.3d 1228 (10th Cir. 2006). 316 Vol. 99 TMR competitors and (2) using a mark to attract potential customers to a website that offers the mark holder’s genuine products as well as the products of competitors. 1804 Nevertheless, the first sale doctrine applies only in cases in which the trademark owner itself has voluntarily placed the goods in question into the stream of commerce. Thus, for example, one opinion entering a preliminary injunction against the sale of stolen goods held that: [The first sale doctrine] has no application to stolen goods because [an] approved sale has not already occurred. It has no application to goods that have not been subject to the mark holder’s legitimate quality control standards, even if the goods are not otherwise counterfeit, because a trademark holder is entitled to maintain control of the quality of goods bearing its mark. 1805 A similar outcome was reached in a case in which. although perhaps not stolen, the goods had been kept off the market by the plaintiff because of possible defects among some of them. 1806 In granting the plaintiff’s motion for summary judgment, the court rejected the defendants’ argument that the goods they had sold did not have the defects. As it explained, “if a seller, for whatever reason, concludes that a product from a supplier does not meet quality standards, it can protect its interest in its trademark [for] the product by keeping it off the market.” 1807 The court was particularly unconvinced by the defendants’ suggestion that they were as qualified as the plaintiff to evaluate the quality of the goods they had been selling: “defendants provide no case where a trademark holder’s quality control standards were deemed insufficient when the holder itself rejected goods under its standards. The right to control the quality of goods remains the right of the trademark holder.” 1808 Moreover, even if otherwise applicable, the first sale doctrine is subject to an exception, which is that a finding of likelihood of confusion . . . and therefore liability will lie if a defendant has resold goods that are materially different from their authorized counterparts. Thus, for example, one district court entered a preliminary injunction against the continued resale of radar detectors from which the serial numbers had been removed and 1804. Designer Skin, 560 F. Supp. 2d at 820; accord Standard Process, Inc. v. Banks, 554 F. Supp. 2d 866, 871 (E.D. Wis. 2008). 1805. Klein-Becker usa LLC v. Englert, 83 U.S.P.Q.2d 1112, 1116 (D. Utah 2007) (internal quotation marks and footnotes omitted). 1806. See FURminator, Inc. v. Kirk Weaver Enters., 545 F. Supp. 2d 685 (N.D. Ohio 2008). 1807. Id. at 691. 1808. Id. Vol. 99 TMR 317 replaced with false ones. 1809 The defendants’ conduct came to light after consumers unsuccessfully returned the resold detectors to the plaintiff for warranty service, leading the court to conclude that “the removal or alteration of the original serial numbers . . . causes a likelihood of confusion because consumers with full knowledge of the implications of such an alteration would likely consider [the removal or alteration] to be relevant to their decision about whether to purchase the product.” 1810 Moreover, and independent of the warranty issue, “[c]ustomers . . . do not receive product and service assistance, product use information, software upgrades, rebates, and recalls.” 1811 At the same time, however, the specter of quality control may not be an entirely sufficient basis for enjoining the sale of diverted goods, especially if the goods in question lack some hidden characteristic unknown to consumers. 1812 One plaintiff learned this lesson the hard way despite its efforts to establish that it followed legitimate quality control measures and that non-conforming sales would diminish the value of its marks. 1813 The products at issue were dietary supplements, which the plaintiff sought to sell only through licensed health care professionals who had had a one-onone consultation with the patients who purchased the supplements. The plaintiff claimed that the defendant’s online distribution of diverted supplements without consultations rendered any supplements so distributed materially different and infringing. The court disagreed and entered summary judgment in the defendant’s favor. As it explained in finding no likelihood of confusion as a matter of law, “when the customer makes a purchase on the internet, the customer does not expect that he will receive individualized consultation. There is not a latent defect that due to a failure to observe a quality control measure of the product itself that the customer could not detect.” 1814 5. Interpretation of Trademark Licenses With the licensing of trademarks proceeding at an everincreasing pace, litigation over those licenses has increased as 1809. See Beltronics USA, Inc. v. Midwest Inventory Distrib. LLC, 522 F. Supp. 2d 1318, 1325-28 (D. Kan. 2007), later proceedings, 545 F. Supp. 2d 1188 (D. Kan. 2008). 1810. Id. at 1326. 1811. Id. at 1328. 1812. See, e.g., S & L Vitamins, Inc. v. Australian Gold, Inc., 521 F. Supp. 2d 188, 204-05 (E.D.N.Y. 2007) (rejecting argument that resale of diverted goods “manufactured, packaged, and inspected by” the counterclaim plaintiff was actionable based on the alleged absence of quality control at final point of sale). 1813. See Standard Process, Inc. v. Banks, 554 F. Supp. 2d 866 (E.D. Wis. 2008). 1814. Id. at 870. 318 Vol. 99 TMR well. In the leading example of a licensing relationship gone wrong, the Eighth Circuit addressed a declaratory judgment action brought by the producer of a fantasy baseball game against, inter alia, the licensor of the rights of publicity of the players referred to in the game. 1815 Holding that the First Amendment protected the licensee’s post-termination use of the players’ names and information, the court bootstrapped that conclusion into a determination that the licensee was excused from complying with the portion of the license barring it from challenging the licensor’s rights. It pointed out that the licensor had warranted to the licensee that the licensor was “the sole and exclusive holder of all right, title and interest” in the licensed material. 1816 Because, as it turned out, that recitation was inconsistent with the court’s earlier First Amendment holding, it was the licensor, and not the licensee, that had breached the agreement. 1817 Allegations of breach took center stage in another licensing dispute that ultimately turned on the meaning of the word “exclusive.” 1818 The plaintiff, an importer of pianos, had taken a license from the defendant, which was a manufacturer of those instruments. When the defendant announced its intent to import pianos bearing the licensed mark into the United States, the plaintiff pointed to a provision in the parties’ agreement granting to the plaintiff “an exclusive license to use the mark within the territory of the United States of America.” 1819 In accepting the plaintiff’s argument that its status as an exclusive licensee allowed it to block the defendant’s proposed importation, the court rejected two responsive arguments made by the defendant. First, it held that the plaintiff could not rely on an arguably inconsistent separate agreement between the parties executed at the same time as the license, in substantial part because of an “integration clause” in the license reciting that the terms of the license were the entirety of any agreement between the parties. 1820 It then looked to the express terms of the license to reject the argument that it would be “commercially absurd” to prevent the defendant from using its own mark, concluding that “[the defendant] did indeed intend to grant [the plaintiff] a license that excluded even [the defendant] from using the trademark for the duration of the 1815. See C.B.C. Distrib. & Mktg., Inc. v. Major League Baseball Advanced Media, L.P., 505 F.3d 818 (8th Cir. 2007). 1816. Quoted in id. at 825. 1817. See id. 1818. See Geneva Int’l Corp. v. Petrof, SPOL, S.R.O., 529 F. Supp. 2d 932 (N.D. Ill. 2007). 1819. Quoted in id. at 934. 1820. See id. at 937. Vol. 99 TMR 319 contract.” 1821 A preliminary injunction against the defendant’s planned importation followed. 1822 The Appellate Court of Illinois also mixed it up on the subject of license interpretation. 1823 The agreement in question, which predated the delivery of streaming media over the Internet, allowed a producer of sports-related programming to make certain uses of the MARCH MADNESS mark to promote “videos” and “media broadcasts.” When the producer began to use the mark in connection with content delivered through video-enabled wireless communication devices, the licensor objected on the ground that the license did not reach that far. With respect to media broadcasts, the court agreed with the plaintiff both that “the term . . . has a particular, limited meaning in the television industry” and that the producer’s use fell outside that meaning. 1824 A different result held where the definition of “videos” was concerned, however. One that subject, the court consulted a number of dictionaries to conclude that “‘video’ constitutes a ‘visual communication,’ especially when it involves moving images.” 1825 It found further support for this conclusion in “[t]he fact that there is no time limitation on the license, and no clause specifically excluding later-developed technology, [which] suggests that the terms of the license should be interpreted broadly.” 1826 Finally, “because the license agreement does not limit the manner in which ‘videos’ may be disseminated, it would be of no consequence for the [trial] court to hear evidence on how the video content actually makes its way . . . to an individual subscriber’s mobile telephone.” 1827 6. Interpretation and Enforcement of Settlement Agreements The proper interpretation of settlement agreements arose in a number of contexts. 1828 For example, two sets of parties to a breach of contract claim had resolved a prior dispute with an agreement by the defendants to amend a pending application to register the 1821. Id. at 938. 1822. See id. at 939-41. 1823. See Intersport, Inc. v. Nat’l Collegiate Athletic Ass’n, 885 N.E.2d 532 (App. Ct. Ill. 2008). 1824. Id. at 540. 1825. Id. at 541. 1826. Id. at 542. 1827. Id. at 544. 1828. See, e.g., Rolex Watch U.S.A., Inc. v. Bonney, 546 F. Supp. 2d 1304, 1307-08 (M.D. Fla. 2008) (finding, in denial of defense motion for summary judgment, that parties had not reached a “meeting of the minds” during settlement negotiations). 320 Vol. 99 TMR PETROLEUM ARGUS mark to exclude particular goods; in exchange, the plaintiffs agreed not to challenge either that application or two registrations of the ENERGY ARGUS mark owned by the defendants. 1829 When the defendants subsequently filed new applications to register ARGUS marks that recited the goods carved out of the earlier application, the plaintiffs alleged that the new applications violated the terms of the prior agreement. Entering summary judgment of nonliability, the court held that the defendants’ actions were a breach of neither the agreement’s express terms nor the covenant of good faith and fair dealing inherent in all contracts. Declining to consider the plaintiffs’ proffered parole evidence, it observed that “[a]s the language of the Agreement makes clear, this contract had a single purpose and that was to require [the defendants] to amend its trademark application for ‘PETROLEUM ARGUS’ in the manner detailed.” 1830 Specifically, “[t]here simply is no language in the Agreement to suggest that the parties intended to say anything about future registrations of other ‘ARGUS’ marks, or intended to limit use in any particular way. . . .” 1831 Seeking to escape a finding of willful infringement that might trigger an accounting of profits, the defendant in another case moved for summary judgment on the issue by invoking a prior settlement agreement between the parties that prohibited certain conduct by the defendant, but did not expressly address the conduct actually at issue in the case. 1832 Declining to resolve the issue as a matter of law, the district court noted that “[t]he 1994 Settlement Agreement simply prohibited [the defendant] from selling [goods] with the specific [mark] then at issue. . . . It did not authorize [the defendant] to intentionally infringe [the plaintiff’s mark] so long as [the defendant] avoided using [the earlier mark]. . . .” 1833 In any case, the court noted, the Ninth Circuit already had held in an earlier appeal that the earlier settlement agreement did not contain any forward-looking statements that precluded the plaintiff from ever challenging other future uses of allegedly infringing marks by the defendant. 1834 1829. See Argus Research Group v. Argus Media, Inc. , 562 F. Supp. 2d 260, 267-79 (D. Conn. 2008). 1830. Id. at 269. 1831. Id. 1832. See adidas-Am., Inc. v. Payless Shoesource, Inc., 546 F. Supp. 2d 1029 (D. Or.), reconsideration denied, 540 F. Supp. 2d 1176 (D. Or. 2008). 1833. Id. at 1047. 1834. See id. Vol. 99 TMR 321 7. Rights of Federally Chartered Organizations Congress often grants the exclusive rights to use and register particular marks to non-profit organization, and these rights may or may not be consistent with traditional trademark principles. One such congressional grant is implemented by a federal criminal provision that prohibits use of “the emblem of the Greek red cross on a white ground” by any party other than the American National Red Cross (ARC). 1835 When the ARC began to license other parties to use its emblem, it was sued by a party with grandfathered rights under the statute on the theory that the licensed uses violated the statute. 1836 In a scholarly opinion that addressed not only the federal criminal statute at issue, but also the Geneva Convention as well, the court granted the ARC’s motion for summary judgment. As it framed the issue, “[t]he real question . . . is whether the permission the statute gives to ARC to use its logo for any purpose, including commercial purposes, inherently contemplates that such uses will entail subsequent or subordinate uses by others in order to carry out the uses permitted to ARC.” 1837 The court resolved this issue in the ARC’s favor, holding that: It could hardly be otherwise, for surely every business use, or for that matter charitable use of the Red Cross emblem and words by ARC inevitably involves some subsequent “use” by a third party. Thus, even the ultimate purchasers of a product bearing the Red Cross emblem and words, whether sold to the purchaser by ARC, a licensor, a retailer, or whomever, will in some sense make “use” of the Red Cross emblem or words. No reasonable interpretation of the statute prohibits such use, or any other use that follows in the ordinary course, once ARC, through its employees or agents, has lawfully authorized the initial business use. 1838 The court then turned to the ARC’s counterclaims, which alleged that the plaintiff had violated the defendants’ rights by exceeding the scope of the uses permitted by the plaintiff’s grandfather clause. There were a number of aspects of this theory, but one was that the contents of an “emergency preparedness kit” sold by the plaintiff had changed since the 1905 passage of the federal statute in question, which the defendants argued had necessarily frozen the plaintiff’s product line place as of that year. Rejecting this and other similar arguments advanced by the 1835. 18 U.S.C. § 706 (2006). 1836. See Johnson & Johnson v. Am. Nat’l Red Cross, 552 F. Supp. 2d 434 (S.D.N.Y. 2008). 1837. Id. at 443. 1838. Id. 322 Vol. 99 TMR plaintiff, the court held that “[i]f ARC were correct that [the plaintiff] could only sell kits containing exactly the same products as those sold prior to 1905, [the plaintiff] would be constrained to continue forever selling kits that contain such antiquated products as cat gut ligatures and kidney plasters.” 1839 8. Licensor Liability for Alleged Torts of Licensees The usual scenario in which a trademark owner is sought to be held liable for the torts of their licensees involves a plaintiff injured by an allegedly defective product bearing the owner’s mark. A variation on that theme, however, occurred in a bankruptcy proceeding in which a group of plaintiffs alleged that they had been deceived into purchasing valueless equipment leases in part by the debtor’s licensed use of certain marks. 1840 Invoking New Jersey state law, the plaintiffs sought to recover from the licensors of the marks on the theory that the licensors’ obligation to monitor the nature and quality of the goods and services provided in connection with the marks extended to a duty to protect the public from misuses of the marks. The licensors argued that the plaintiffs had misstated the nature of their obligations as licensors, but the court declined to dismiss the plaintiffs’ complaint at the pleading stage. Instead, it held that “[w]hile a trademark owner does maintain a duty to police the use of its trademark to prevent loss of such mark, courts have also imposed liability where a party intentionally induces another to infringe upon a mark or knowingly participate in [a] fraudulent scheme.” 1841 Because “[a]t the motion to dismiss stage, this Court must draw all reasonable inferences in favor of the non-moving party,” the court held that the complaint sufficiently alleged the licensors’ participation in such a fraudulent scheme that dismissal was premature. 1842 9. United States Department of Agriculture Regulations When sued for false advertising based on statements found on its poultry labels, one defendant unsuccessfully moved to dismiss the plaintiffs’ complaint on the ground that the labels had been approved by the United States Department of Agriculture. 1843 1839. Id. at 451 (internal quotation marks omitted). 1840. See Wanland & Assocs. v. Nortel Networks Inc. (In re Norvergence, Inc.), 384 B.R. 315 (Bankr. D.N.J. 2008). 1841. Id. at 355. 1842. Id. at 355-56. 1843. See Sanderson Farms, Inc. v. Tyson Foods, Inc., 549 F. Supp. 2d 708 (D. Md. 2008). Vol. 99 TMR 323 There were two statements at issue: “Raised Without Antibiotics,” which the defendant had used until the USDA determined that there was indeed an antibiotic in its poultry feed, and “Raised Without Antibiotics that impact antibiotic resistance in humans,” which the defendant adopted after the agency had made its ruling. The court rejected the defendant’s argument that USDA approval of each label prevented the plaintiffs’ case from proceeding. As to the first label, the court held that “[w]ithout current USDA approval . . ., Defendant cannot rely on the USDA’s former (and briefly held) position to defend itself against allegations that it continues to run false and misleading advertisements carrying the ‘Raised Without Antibiotics’ language.” 1844 Moreover, even as to the second (USDA-approved) label, the court observed that: While [USDA’s] determination involves a highly technical and scientific review of the proposed label language, it does not involve a review of whether the language is misleading to the consumer when combined with images and promotional slogans. Undoubtedly, language that is technically and scientifically accurate on a label can be manipulated in an advertisement to create a message that is false and misleading to the consumer. The Lanham Act protects against precisely this situation by permitting claims based on language that, although literally true, nonetheless misleads or deceives consumers in an advertisement. 1845 The court therefore declined to dismiss the action for failure to state a claim. 1846 10. The Federal Food, Drug, and Cosmetic Act Efforts to challenge allegedly false advertising in the food, drug, and cosmetic industries often implicate the Federal Food, Drug, and Cosmetic Act (FFDCA), 1847 and the past year provided the usual opinions on the subject. 1848 In one example, the defendants advertised their products as “Rx only” and “prescription only.” 1849 Both the plaintiff and the defendants were able to rely on past FDA actions in support of their position: The effective ingredient underlying both parties’ products, 1844. Id. at 715. 1845. Id. at 720. 1846. See id. 1847. 21 U.S.C. §§ 301-399 (2006). 1848. See, e.g., Holk v. Snapple Beverage Corp., 574 F. Supp. 2d 447 (D.N.J. 2008) (holding claims under the New Jersey Consumer Fraud Act, N.J.S.A. § 56:8-1 et seq., preempted by FFDCA and implementing FDA regulations). 1849. See Schering-Plough Healthcare Prods., Inc. v. Schwarz Pharma, Inc., 547 F. Supp. 2d 939 (E.D. Wis. 2008). 324 Vol. 99 TMR Polyethylene Glycol 3350, was available without a prescription, but the particular product sold by the defendants required one. On the parties’ cross motions for summary judgment, the court was reluctant to reconcile the agency’s apparently inconsistent approaches to the regulation of Polyethylene Glycol 3350-based products: By requesting the court to determine whether the defendants can continue to market their prescription-only Polyethylene Glycol 3350 products, [the plaintiff] is in effect asking the court to step into the shoes of the FDA. The simultaneous marketing of the defendants’ prescription-only Polyethylene Glycol 3350 products and [the plaintiff’s] over-the-counter Polyethylene Glycol 3350 product, in addition to the labeling of those products, raises questions properly addressed by the FDA, not the court. 1850 The court therefore dismissed the plaintiff’s false advertising claims, although noting that the plaintiff was “free to petition the FDA to resolve the alleged labeling violations.” 1851 11. Cuban Asset Control Regulations The Byzantine statutory and regulatory framework governing relations between United States and Cuban domiciliaries produced a trademark-related opinion over the past year. 1852 The dispute leading to it originated in three documents issued by the federal Office of Foreign Assets Control (OFAC): (1) a license issued to a United States firm to defend a trademark infringement action filed against a Cuban company that owned a federal registration of a mark confiscated from its original owner by the Castro regime, which OFAC concluded did not authorize the renewal of the registration; (2) a subsequent letter ruling by an OFAC official that a license was required for the renewal of any Cuban-owned registrations; and (3) the denial of a license to the law firm that would have expressly authorized the renewal on the ground that it would result in an unlawful acquisition of property by the Cuban company. 1853 The Cuban company’s challenge to the first and third of these actions fell short, while its challenge to the second resulted in a draw. As to the first, the court held that the plain language of the 1850. Id. at 947. 1851. Id. 1852. See Empresa Cubana Exportadora de Alimentos y Productos Varios v. U.S. Dep’t of Treasury, 516 F. Supp. 2d 43 (D.D.C. 2007). 1853. See id. at 49-51. Vol. 99 TMR 325 original license did not extend to the registration’s renewal. 1854 Likewise, the Cuban company’s challenge to OFAC’s determination that the renewal of trademark registrations was equivalent to the acquisition of property rights was a nonreviewable one committed to OFAC’s discretion. 1855 The court did, however, hand the Cuban company a small victory by requiring OFAC to file an additional brief explaining the basis for its policy that the renewal of a trademark registration required the issuance of an express license in the first instance. 1856 12. The Telemarketing and Consumer Fraud and Abuse Prevention Act The Telemarketing and Consumer Fraud and Abuse Act (TCFAA) authorizes any “person” “adversely affected” by deceptive telemarketing practices to bring an action against the offending party. 1857 The lack of a statutory definition of “person” has led trademark owners victimized by the unauthorized use of their marks in telephone solicitations to assert claims under the TCFAA as well as under more conventional infringement and unfair competition causes of action. For the most part, these TCFAA claims have survived motions to dismiss for failure to state a claim, and such was the case last year: One court not only held that trademark owners (as well as individual recipients of misleading calls) have standing to proceed under the TCFAA, it also concluded that damage to the plaintiff’s goodwill and reputation could constitute the “actual damages” required by that statute. 1858 13. Insurance Coverage a. Cases Ordering Coverage When courts ordered insurance carriers to cover the defense of unfair competition claims under “advertising injury” clauses, they generally did so by applying principles similar to those found in the following restatement of North Carolina law: Generally speaking, the insurer’s duty to defend the insured is broader than its obligation to pay damages incurred by events covered by a particular policy. An insurer’s duty to defend is 1854. See id. at 55. 1855. See id. at 59. 1856. See id. at 56-57. 1857. See 15 U.S.C. § 6104(a) (2006). 1858. See Medline Indus. v. Strategic Commercial Solutions, Inc., 553 F. Supp. 2d 979, 989-90 (N.D. Ill. 2008). 326 Vol. 99 TMR ordinarily measured by the facts as alleged in the pleadings; its duty to pay is measured by the facts ultimately determined at trial. When the pleadings state facts demonstrating that the alleged injury is covered by the policy, then the insurer has a duty to defend, whether or not the insured is ultimately liable. 1859 Some courts interpreting standard advertising injury clauses under this doctrinal rule had no trouble finding coverage appropriate. 1860 Thus, for example, one court addressed the issue of whether Internet advertising qualified as a “paid announcement in . . . print or broadcast media” within the meaning of the policy at issue. 1861 In a declaratory judgment action brought by the carrier, the court held as a matter of law that the advertising did so qualify, holding that the carrier’s proffered construction of the policy to the contrary “does not comport with the principle that ‘[i]nsurance policies should be construed liberally in favor of the insured . . . so as to promote and not defeat the purpose of insurance.’” 1862 Two courts reached conventional findings that the obligation to defend an allegation of infringement of a “title” was broad enough to encompass claims of trademark infringement but did so in part by relying on the history of the standard “advertising injury” clause drafted by the Insurance Service Office (ISO) and used by many carriers. The first court addressed the significance of the ISO’s 1986 amendment to the standard clause, which, prior to that time, expressly excluded an obligation to defend against allegations of trademark, service mark, and trade name infringement. 1863 After the amendment, however, the standard clause did not contain the exclusion but instead referenced the “infringement of [a] copyright, title or slogan.” 1864 Reviewing a holding below that this language obligated the carrier to cover the defense of an infringement action, the court held that “‘[t]itle’ is 1859. Harleysville Mut. Ins. Co. v. Buzz Off Insect Shield, L.L.C., 664 S.E.2d 317, 320 (N.C. Ct. App. 2008) (quoting Waste Mgm’t v. Peerless Ins. Co., 340 S.E.2d 374, 377 (N.C. 1986)). 1860. See id. at 321 (interpreting obligation to cover defense of claims for “personal and advertising injury” as mandating coverage of underlying false advertising suit); see also Norfab Corp. v. Travelers Indem. Co., 555 F. Supp. 2d 505, 509 (E.D. Pa. 2008) (ordering coverage under Pennsylvania law in part because “[i]f . . . a provision in an insurance policy is ambiguous, the policy must be construed in favor of the insured and against the insurer who drafted the language”). 1861. See Jewelers Mut. Ins. v. Milne Jewelry Co., 83 U.S.P.Q.2d 1665 (D. Utah 2006). 1862. Id. at 1667 (quoting Simmons v. Farmers Ins. Group, 877 P.2d 1255, 1258 (Utah Ct. App. 1994) (brackets in original) (ellipses in original). 1863. See Acuity v. Bagadia, 750 N.W.2d 817, 826 (Wis. 2008). 1864. Quoted in Acuity v. Bagadia, 750 N.W.2d 817, 823 (Wis. 2008). Vol. 99 TMR 327 not a defined term in the policy; consequently, we give ‘title’ its plain, ordinary meaning. To do so, we consult dictionaries and the relevant case law that has addressed the issue of whether a trademark is included within the term, ‘title.’” 1865 Concluding that both of these resources supported a claim for coverage, the court additionally relied on the 1986 ISO amendment, which the court held implied “that claims related to trademark infringement would be included within the revised . . . policy.” 1866 The second court adopted a similar analysis, albeit one that turned on a later ISO amendment to that organization’s standard advertising injury clause. Applying Illinois law, the court first noted that “‘[i]n a duty-to-defend action, we begin with the deck stacked in favor of the insured.’” 1867 It then held, however, that “[m]ore persuasive, in the court’s view, is an analysis of the history surrounding [the] words used in the insurance policy.” 1868 Because the ISO had responded to the increasing trend to equate “title” with “trademark” by amending the clause to delete coverage for the defense of alleged infringements of titles in 1998, the presence of such an obligation in the policy in question required the carrier to step up to the plate. 1869 b. Cases Declining to Order Coverage A narrow definition of “personal and advertising injury” in a policy governed by Illinois law led to a victory as a matter of law for the carrier. 1870 The gravamen of the underlying action was that the insured had used the plaintiff’s trademarks in advertising representing that the insured’s air filters were fungible substitutes for those of the plaintiff. The plaintiff alleged both trademark infringement and false advertising, considerations that might ordinarily be expected to trigger coverage under the language of a standard policy. 1865. Id. at 824. 1866. Id. at 826. 1867. Capitol Indem. Corp. v. Elston Self Serv. Wholesale Groceries, Inc., 551 F. Supp. 2d 711, 718 (N.D. Ill. 2008) (quoting Del Monte Fresh Produce N.A., Inc. v. Transp. Ins. Co., 500 F.3d 640, 643 (7th Cir. 2007)). 1868. Id. at 720. 1869. See id. at 720-21. Independent of this holding, the court also concluded that the carrier’s obligation to defend against allegations of misappropriation of advertising ideas or style of doing business provided an additional basis for coverage, see id. at 721-26, and that allegations of intentional infringement in the underlying case did not bring the insured’s conduct within the scope of an intentional misconduct exclusion contained in the policy. See id. at 726 (“Although the . . . Complaint [in the underlying action] does include allegations that [the insureds] acted intentionally, [the plaintiff] need not prove that [the insureds] engaged in intentional or willful conduct to prevail.”). 1870. See Greenwich Ins. Co. v. RPS Prods., Inc., 882 N.E.2d 1202 (Ill. App. Ct. 2008). 328 Vol. 99 TMR The policy in question, however, defined “personal and advertising injury” as “[o]ral or written publication of material that slanders or libels a person or organization or disparages a person’s or organization’s goods, products or services,” “[t]he use of another’s advertising idea,” or “[i]nfringing upon another person’s copyright, trade dress or slogan.” 1871 Moreover, the policy also contained an exclusion for alleged trademark infringement that itself excluded allegations of trade dress infringement. Referring to the definition of “personal and advertising injury,” the court concluded that the allegations of false advertising in the underlying action did not fall within any of the three categories of torts recognized by the policy. 1872 And as to the exclusion, it held that “[n]ot only does trademark infringement not come within the enumerated offenses listed by the policy at issue, trademark infringement is specifically excluded from coverage. . . .” 1873 The trial court’s entry of summary judgment in the carrier’s favor therefore withstood appellate scrutiny. c. Coverage to Be Determined The opaque nature of many advertising injury clauses understandably leads some courts to defer ultimate resolution of the coverage inquiry. One was the Ninth Circuit, which reviewed the dismissal of a claim to coverage by the keyboardist of the 1960s band The Doors, who, along with his touring group, had been sued in underlying actions by the band’s drummer and by the parents and the wife of the band’s late vocalist, Jim Morrison. 1874 The district court dismissed the plaintiffs’ breach of contract claim for coverage on the theory that a “Field of Entertainment Business” exclusion in the plaintiffs’ policy swept in the plaintiffs’ conduct. Reviewing the claims in the underlying actions, however, the Ninth Circuit noted that they were silent as to the precise nature of the allegedly unlawful merchandise being sold by the plaintiffs. As a consequence, it was impossible to determine on a motion to dismiss whether the entirety of the plaintiffs’ conduct fell within the exclusion. As the appellate court explained, “[u]nder California law, an insurer must defend its insured ‘if the underlying complaint alleges the insured’s liability for damages potentially covered under the policy or if the complaint might be amended to give rise to a liability that would be covered by the policy.’” 1875 1871. Quoted in id. at 1211. 1872. See id. at 1211-12. 1873. Id. at 1212. 1874. See Manzarek v. St. Paul Fire & Marine Ins. Co., 519 F.3d 1025 (9th Cir. 2008). 1875. Id. at 1031 (quoting Montrose Chem. Corp. v. Superior Ct., 861 P.2d 1153, 1160 (Cal. 1993))). Vol. 99 TMR 329 14. State Taxation of Income Produced by Trademark Licenses State revenue departments have increasingly (and successfully) pursued nonresident companies for taxes on income from trademark licenses, and Louisiana joined the thundering herd over the past year. 1876 As was the case in numerous past disputes on the subject, the defendant was the intellectual property holding company Geoffrey, Inc. The issues at stake were familiar as well: (1) whether the targeted income fell within the scope of the applicable state statute; and, if so (2) whether application of that statute violated either (a) the Due Process Clause or (b) the Commerce Clause. Because the parties had entered into stipulations that resolved the former issue in the state’s favor, the main event became the constitutional analysis. Reflecting on the constitutional restriction’s on the state’s ability to tax nonresident entities, the court noted that “[t]he Due Process Clause concerns the fundamental fairness of government activity and requires some definite link, some minimum connection between a state and the person, property, or transaction it seeks to tax, and the income attributed to the state for tax purposes must be rationally related to values connected with the taxing state.” 1877 The focus of the court’s treatment of the Due Process challenge before it quickly became whether the Supreme Court’s decision in Quill Corp. v. North Dakota 1878 precluded Louisiana from taxing non-resident entities unless those entities had some physical presence in the state. The court concluded that Quill’s holding to this effect was limited to the sales and use taxes at issue in that case and that, as a consequence, “if a non-resident corporation purposefully avails itself of the benefits of an economic market in the forum state, it may subject itself to the state’s in personam jurisdiction even if it has no physical presence in the state. Accordingly, requirements of Due Process may be met irrespective of a corporation’s lack of physical presence in the taxing state.” 1879 The court was just as unreceptive to a Commerce Clause challenge to the state’s proposed imposition of liability. That challenge was grounded in the theory that the taxes in question saddled non-resident entities with administrative burdens, as well as direct financial obligations. In the absence of case law accepting 1876. See Bridges v. Geoffrey, Inc., 984 So. 2d 115 (La. Ct. App. 2008). 1877. Id. at 122. 1878. 504 U.S. 298 (1992). 1879. Bridges, 984 So. 2d at 122 (citation omitted). 330 Vol. 99 TMR this proposition, the court was unmoved, holding the defendant’s argument to be “without merit.” 1880 1880. Id. at 127. Vol. 99 TMR 331 TABLE OF CURRENT CASES REVIEWED ∗ 1-800-Contacts, Inc. v. WhenU.Com, Inc., 414 F.3d 400 (2d Cir. 2005) ............................................................................................103 In re 1st USA Realty Prof’ls, Inc., 84 U.S.P.Q.2d 1581 (T.T.A.B. 2007) ..............................................................................................10 7-Eleven Inc. v. Wechsler, 83 U.S.P.Q.2d 1715 (T.T.A.B. 2007) ...... 4 Accu Personal Inc. v. Accu Staff Inc., 38 U.S.P.Q.2d 1443 (T.T.A.B. 1996) ..............................................................................53 In re Active Ankle Sys., Inc., 83 U.S.P.Q.2d 1532 (T.T.A.B. 2007) ..............................................................................................38 Acuity v. Bagadia, 750 N.W.2d 817 (Wis. 2008) ........................... 326 adidas Am., Inc. v. Kmart Corp., No. CV-05-120-ST, 2006 WL 2044857 (D. Or. June 15, 2006) ..................................................153 Adidas Sportschuhfabriken Adi Dassler Stiftung & Co. v. New Generation, 16 U.S.P.Q.2d 1237 (S.D.N.Y. 1990) ...................... 259 adidas-Am., Inc. v. Payless Shoesource, Inc., 546 F. Supp. 2d 1029 (D. Or.), reconsideration denied, 540 F. Supp. 2d 1176 (D. Or. 2008) ..................... 5, 99, 101, 112, 125, 143, 150, 153, 158, 163, 212, 218, 219, 225, 228, 229, 298, 320 adidas-Salomon AG v. Target Corp., 228 F. Supp. 2d 1192 (D. Or. 2002) ......................................................................................153 Akhenaten v. Najee, LLC, 544 F. Supp. 2d 320 (S.D.N.Y. 2008) ....................................................................................230, 278 Aktieselskabet AF 21. November 2001 v. Fame Jeans Inc., 525 F.3d 8 (D.C. Cir. 2008) ....................................................75, 83, 304 Alfa Corp. v. Alfa Mortgage Inc., 560 F. Supp. 2d 1166 (M.D. Ala. 2008) .....................................................................150, 263, 268 Alfa Corp. v. OAO Alfa Bank, 475 F. Supp. 357 (S.D.N.Y. 2007) ..............................................................................................40 Allen Bros. v. AB Foods LLC, No. 06 C 1269, 2008 WL 345600 (N.D. Ill. Feb. 6, 2008) .................................................................111 Aluminum Fabricating Co. v. Season-All Window Corp., 259 F.2d 314 (2d Cir. 1958) ...............................................................305 Am. Express Co. v. Goetz, 515 F.3d 156 (2d Cir.) (per curiam), cert. denied, 129 S. Ct. 176 (2008) ................................................76 In re Am. Fertility Soc’y, 188 F.3d 1341 (Fed. Cir. 1999) ............... 38 Am. Rice, Inc. v. Ark. Rice Growers Coop. Ass’n, 701 F.2d 408 (5th Cir. 1983) .............................................................................298 ∗ References are to page numbers. 332 Vol. 99 TMR Am. Rice, Inc. v. Producers Rice Mill, Inc., 518 F.3d 321 (5th Cir. 2008) ............................................. 110, 122, 222, 253, 261, 298 Amerisource Corp. v. U.S., 525 F.3d 1149 (Fed. Cir. 2008) ......... 306 Angel Flight of Ga., Inc. v. Angel Flight Am., Inc., 522 F.3d 1200 (11th Cir. 2008) .................................. 121, 223, 228, 240, 307 In re Apparel Ventures, Inc., 229 U.S.P.Q. 225 (T.T.A.B. 1986) .... 12 Applied Info. Scis. Corp. v. eBay, Inc., 511 F.3d 966 (9th Cir. 2007) ....................................................................................133, 263 Applied Med. Res. Corp. v. Steur, 527 F. Supp. 2d 489 (E.D. Va. 2007) ............................................................................................171 Aquion Partners, L.P. v. Enviroguard Prods., Ltd., 43 U.S.P.Q.2d 1371 (T.T.A.B. 1997) ..................................................57 Arbor Hill Concerned Citizens Neighborhood Ass’n v. County of Albany, 493 F.3d 110 (2d Cir. 2007) ...........................................267 Argus Research Group v. Argus Media, Inc., 562 F. Supp. 2d 260 (D. Conn. 2008) ............................................. 222, 227, 228, 320 Aronowitz v. Health-Chem Corp., 513 F.3d 1229 (11th Cir. 2008) ....................................................................................121, 242 Artisan Mfg. Corp. v. All Granite & Marble Corp., 559 F. Supp. 2d 442 (S.D.N.Y. 2008) ............................................ 92, 93, 109, 115 Audi AG v. D’Amato, 469 F.3d 534 (6th Cir. 2006) .................. 3, 235 Audiovox Corp. v. Monster Cable Prods., Inc., 544 F. Supp. 2d 155 (E.D.N.Y. 2008) ....................................................................310 Australian Gold, Inc. v. Hatfield, 436 F.3d 1228 (10th Cir. 2006)), later proceedings, 545 F. Supp. 2d 1188 (D. Kan. 2008) ....................................................................................314, 315 Ava Enters., Inc. v. P.A.C. Trading Group, Inc., 86 U.S.P.Q.2d 1659 (T.T.A.B. 2007) .................................................................4, 17 Badger Meter, Inc. v. Grinnell Corp., 13 F.3d 1145 (7th Cir. 1994) ............................................................................................239 Baker v. Master Printers Union, 34 F. Supp. 808 (D.N.J. 1940) ............................................................................................125 Bambu Sales, Inc. v. Sultana Crackers, Inc., 683 F. Supp. 899 (E.D.N.Y. 1988) ...........................................................................202 Baroid Drilling Fluids Inc. v. SunDrilling Prods., 24 U.S.P.Q.2d 1048 (T.T.A.B. 1992) .....................................................................17 Bassett Seamless Guttering, Inc. v. Gutterguard, LLC, 501 F. Supp. 2d 738 (M.D.N.C. 2007) .................................... 168, 169, 178 In re Bayer Aktiengesellschaft, 488 F.3d 960 (Fed. Cir. 2007) ...... 17 Bd. of Regents v. KST Elec., Ltd., 550 F. Supp. 2d 657 (W.D. Tex. 2008) .................................................... 100, 110, 126, 151, 223 In re Beaverton Foods, Inc., 84 U.S.P.Q. 2d 1253 (T.T.A.B. 2007) ..............................................................................................31 Vol. 99 TMR 333 Beech Aircraft Corp. v. Lightning Aircraft Co. Inc., 1 U.S.P.Q.2d 1290 (T.T.A.B. 1986) ..................................................53 Bell v. Harley-Davidson Motor Co., 539 F. Supp. 2d 1249 (S.D. Cal. 2008) .....................................................................................214 Beltronics USA, Inc. v. Midwest Inventory Distrib. LLC, 522 F. Supp. 2d 1318 (D. Kan. 2007), later proceedings, 545 F. Supp. 2d 1188 (D. Kan. 2008) ...............................................233, 314, 317 In re Benthin Mgmt. GmbH, 37 U.S.P.Q.2d 1332 (T.T.A.B. 1995) ..............................................................................................29 Berthold Types Ltd. v. European Mikrograf Corp., 102 F. Supp. 2d 928 (N.D. Ill. 2000) .................................................................284 Best W. Int’l, Inc. v. Patel, 523 F. Supp. 2d 979 (D. Ariz. 2007) ........................................................................2, 112, 115, 234 Biosafe-One, Inc. v. Hawks, 524 F. Supp. 2d 452 (S.D.N.Y. 2007) ................................................................2, 109, 130, 152, 234 Black & Decker Corp. v. Emerson Elec. Co., 84 U.S.P.Q.2d 1482 (T.T.A.B. 2007) ........................................................................11, 16 Board of Regents v. KST Elec., Ltd., 550 F. Supp. 2d 657 (W.D. Tex. 2008) ......................................................................................92 Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141 (1989) ...........................................................................................163 Boston Duck Tours, LP v. Super Duck Tours, LLC, 531 F.3d 1 (1st Cir. 2008) ................................................................84, 109, 128 Brainard v. Vassar, 561 F. Supp. 2d 922 (M.D. Tenn. 2008) ....... 165 Bridges v. Geoffrey, Inc., 984 So. 2d 115 (La. Ct. App. 2008) ...... 329 Brookfield Commc’ns, Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036 (9th Cir. 1999) ....................................................................158 Brown v. ACMI Pop Div., 873 N.E.2d 954 (Ill. App. Ct. 2007)..... 191 Burck v. Mars, Inc., 571 F. Supp. 2d 446 (S.D.N.Y. 2008) ... 192, 208 Burger King Corp. v. Pilgrim’s Pride Corp., 15 F.3d 166 (11th Cir. 1994) .....................................................................................262 Burns-Kish Funeral Homes, Inc. v. Kish Funeral Homes, LLC, 889 N.E.2d 15 (Ind. Ct. App. 2008) ............................................295 BVD Licensing Corp. v. Rodriguez, 83 U.S.P.Q.2d 1500 (T.T.A.B. 2007) ................................................................................9 C.B.C. Distrib. & Mktg., Inc. v. Major League Baseball Advanced Media, L.P., 505 F.3d 818 (8th Cir. 2007), cert. denied, 128 S. Ct. 2872 (2008) .................................... 206, 207, 318 CAE, Inc. v. Clean Air Eng’g, Inc., 267 F.3d 660 (7th Cir. 2001) ............................................................................................304 Caesars World, Inc. v. Milanian, 247 F. Supp. 2d 1171 (D. Nev. 2003) ............................................................................................118 In re Cal. Innovations, Inc., 329 F.3d 1334 (Fed. Cir. 2003) ... 32, 35 334 Vol. 99 TMR In re Candy Bouquet Int’l, Inc., 73 U.S.P.Q.2d 1883 (T.T.A.B. 2004) ..............................................................................................38 Capitol Indem. Corp. v. Elston Self Serv. Wholesale Groceries, Inc., 551 F. Supp. 2d 711 (N.D. Ill. 2008)...................................327 Care First of Maryland, Inc. v. FirstHealth of the Carolinas, Inc., 77 U.S.P.Q.2d 1492 (T.T.A.B. 2005) .....................................16 Carling Brewing Co. v. Philip Morris, Inc., 277 F. Supp. 326 (N.D. Ga. 1967) ............................................................................234 Cartier v. Aaron Faber, Inc., 512 F. Supp. 2d 165 (S.D.N.Y. 2007) ............................................................ 109, 203, 204, 249, 250 Cartier v. D & D Jewelry Imps., 510 F. Supp. 2d 344 (S.D.N.Y. 2007) ............................................................................................289 Cartier v. Symbolix Inc., 544 F. Supp. 2d 316 (S.D.N.Y. 2008) ... 246 Castrol Inc. v. Pennzoil Co., 987 F.2d 939 (3d Cir. 1993) ............. 175 Cenage Learning, Inc. v. Buckeye Books, 531 F. Supp. 2d 596 (S.D.N.Y. 2008) ............................................................................279 Cent. Mfg., Inc. v. Brett, 492 F.3d 876 (7th Cir. 2007) ... 78, 264, 307 Cent. Mfg., Inc. v. Third Millennium, Inc., 61 U.S.P.Q.2d 1210 (T.T.A.B. 2001) ..............................................................................70 Centaur Commc’ns, Ltd. v. A/S/M Commc’ns, Inc., 830 F.2d 1217 (2d Cir. 1987) ......................................................................258 Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874 (Fed. Cir. 1992) .......................................................................11 Chamilia LLC v. Pandora Jewelry LLC, 85 U.S.P.Q.2d 1169 (S.D.N.Y. 2007) ....................................................................171, 179 Chanel, Inc. v. Gordashevsky, 558 F. Supp. 2d 532 (D.N.J. 2008) ....................................................................................246, 263 Chapman v. Journal Concepts, Inc., 528 F. Supp. 2d 1081 (D. Haw. 2007) ...........................................................................193, 208 Chase Brexton Health Servs., Inc. v. Maryland, 411 F.3d 457 (4th Cir. 2005) .............................................................................291 In re Cheezwhse.com, Inc., 85 U.S.P.Q.2d 1917 (T.T.A.B. 2008) ..... 6 Chesebrough-Pond’s, Inc. v. Faberge, Inc., 666 F.2d 393 (9th Cir. 1982) .....................................................................................273 In re Chica, Inc., 84 U.S.P.Q.2d 1845 (T.T.A.B. 2007).......... 6, 11, 23 Chicago Bears Football Club, Inc. v. Twelfth Man/Tennessee LLC, 83 U.S.P.Q.2d 1073 (T.T.A.B. 2007) .................................7, 8 China Healthways Inst. Inc. v. Xiaoming Wang, 83 U.S.P.Q.2d 1123 (Fed. Cir. 2007) ...................................................................7, 8 Ciociola v. Harley-Davidson Inc., 552 F. Supp. 2d 845 (E.D. Wis. 2008) ....................................................................................214 CKE Rest. v. Jack in the Box, Inc., 494 F. Supp. 2d 1139 (C.D. Cal. 2007) .............................................................168, 180, 181, 222 Vol. 99 TMR 335 Classroomdirect.com, LLC v. Draphix, LLC, 992 So. 2d 692 (Ala. 2008).................................................... 240, 255, 256, 261, 270 Cmty. of Christ Copyright Corp. v. Miller, 85 U.S.P.Q.2d 1314 (W.D. Mo. 2007) .......................................................2, 115, 213, 234 Colgate-Palmolive Co. v. J.M.D. All-Star Imp. & Exp., Inc., 486 F. Supp. 2d 286 (S.D.N.Y. 2007) .................................................205 Colorado River Water Conservation Dist. v. U.S., 424 U.S. 800 (1976) ...........................................................................................290 Commerce Bank & Trust Co. v. TD Banknorth, Inc., 554 F. Supp. 2d 77 (D. Mass. 2008) ...................... 2, 81, 90, 109, 116, 234 Commerce Nat’l Ins. Servs., Inc. v. Commerce Ins. Agency, 214 F.3d 432 (3d Cir. 2000) .................................................................98 Commodore Elecs. Ltd. v. CBM Kabushiki Kaisha, 26 U.S.P.Q. 2d 1503 (T.T.A.B. 1993) ................................................................42 Constellation Brands, Inc. v. Arbor Hill Assocs., 535 F. Supp. 2d 347 (W.D.N.Y. 2008) ................................... 87, 91, 92, 109, 124, 146, 227, 274, 310 ConsulNet Computing Inc. v. Moore, 84 U.S.P.Q.2d 1640 (E.D. Pa. 2007) ...................................................... 168, 169, 171, 174, 179 Continental Nut Co. v. Le Cordon Bleu, 494 F.2d 1395 (C.C.P.A. 1974) ..............................................................................51 Contour Chair-Lounge Co. v. The Englander Co., 324 F.2d 186, 139 U.S.P.Q. 285 (C.C.P.A. 1963) ...................................................8 Contractual Obligation Prods., LLC v. AMC Networks, Inc., 546 F. Supp. 2d 120 (S.D.N.Y. 2008) .................. 165, 256, 264, 268 ConWest Res., Inc. v. Playtime Novelties, Inc., 84 U.S.P.Q.2d 1019 (N.D. Cal. 2006) ..........................................................234, 314 Cook, Perkiss & Liehe, Inc. v. N. Cal. Collection Serv., Inc., 911 F.2d 242 (9th Cir. 1990) ..............................................................174 Corp. Document Servs., Inc. v. I.C.E.D. Mgmt. Inc., 48 U.S.P.Q.2d 1477 (T.T.A.B. 1998) ..................................................61 Corporación Habanos S.A. v. Guantanamera Cigars Co., 86 U.S.P.Q.2d 1473 (T.T.A.B. 2008) ............................................35, 64 Cotto Waxo Co. v. Williams, 46 F.3d 790 (8th Cir. 1995) ............. 306 Coyne’s & Co. v. Enesco, LLC, 565 F. Supp. 2d 1027 (D. Minn. 2008) ............................................................................................276 Creamette Co. v. Conlin, 191 F.2d 108 (5th Cir. 1951) ................ 213 Custom Mfg. & Eng’g, Inc. v. Midway Servs., Inc., 508 F.3d 641 (11th Cir. 2007) ...................................................................113, 132 DaimlerChrysler Corp. v. Maydak, 86 U.S.P.Q.2d 1945 (T.T.A.B. 2008) ........................................................................65, 68 Dairy Queen, Inc. v. Wood, 369 U.S. 469 (1962) ........................... 297 336 Vol. 99 TMR Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003) ...................................................................164, 165, 264, 269 Davis v. Dallas Area Rapid Transit, 383 F.3d 309 (5th Cir. 2004) ............................................................................................232 Days Inn Worldwide, Inc. v. BFC Mgmt., Inc., 544 F. Supp. 2d 401 (D.N.J. 2008).................................................................247, 255 Del Monte Fresh Produce N.A., Inc. v. Transp. Ins. Co., 500 F.3d 640 (7th Cir. 2007) ..............................................................327 In re Dell, Inc., 71 U.S.P.Q.2d 1725 (T.T.A.B. 2004) ................ 23, 25 Deltronics, Inc. v. H. L. Dalis, Inc., 158 U.S.P.Q. 475 (T.T.A.B. 1968) ..............................................................................................53 Demon Int’l LC v. Lynch, 86 U.S.P.Q.2d 1058 (T.T.A.B. 2008) ..... 64 Derek Andrew, Inc. v. Poof Apparel Corp., 528 F.3d 696 (9th Cir. 2008) .....................................................................................263 Designer Skin, LLC v. S & L Vitamins, Inc., 560 F. Supp. 2d 811 (D. Ariz. 2008) ..............................................150, 216, 315, 316 Diálogo, LLC v. Bauza, 549 F. Supp. 2d 131 (D. Mass. 2008) ...... 243 Diaz v. Servicios de Franquicia Pardo’s S.A.C., 83 U.S.P.Q. 2d 1320 (TTAB 2007) ...................................................................49, 50 Doe v. Friendfinder Network, Inc., 540 F. Supp. 2d 288 (D.N.H. 2008) ............................................................................166, 168, 276 Doe v. FriendFinder Network, Inc., 540 F. Supp. 2d 288 (D.N.H. 2008)...............................................................................194 Dominant Semiconductors Sdn. Bhd. v. Osram GmbH, 524 F.3d 1254 (Fed. Cir. 2008) ..........................................................183 Douglas v. Osteen, 560 F. Supp. 2d 362 (E.D. Pa. 2008) .......... 89, 96 DS Waters of Am., Inc. v. Princess Abita Water, L.L.C., 539 F. Supp. 2d 853 (E.D. La. 2008) .......................... 2, 110, 115, 234, 308 Dunkin’ Donuts Franchised Rests. LLC v. Cardillo Capital, Inc., 551 F. Supp. 2d 1333 (M.D. Fla. 2008) .............. 113, 118, 242 Dyneer Corp. v. Auto. Prods. plc, 37 U.S.P.Q.2d 1251 (T.T.A.B. 1995) ..............................................................................................49 Dynetech Corp. v. Leonard Fitness, Inc., 523 F. Supp. 2d 1344 (M.D. Fla. 2007)...........................................................................283 In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973) ..............................................................................9, 13, 14, 15 E. Remy Martin & Co. v. Shaw-Ross Int’l Imports, Inc., 756 F.2d 1525 (11th Cir. 1985) ..........................................................209 Eastman Kodak Co. v. Image Technical Servs., Inc., 504 U.S. 451 (1992) ....................................................................................219 eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006) ......... 2, 234 El Paso Nat’l Gas Co. v. Neztsosie, 526 U.S. 473 (1999) ................ 41 Vol. 99 TMR 337 Elec. Indus. Ass’n v. Potega, 50 U.S.P.Q.2d 1775, 1777 (T.T.A.B. 1999) ..............................................................................71 Elvis Presley Enters. v. Capece, 141 F. 3d 188 (5th Cir. 1998) ... 223 In re Emco, Inc., 158 U.S.P.Q. 622 (T.T.A.B. 1968) ........................ 21 Empresa Cubana del Tabaco v. Culbro Corp., No. 97 Civ. 8399, 2008 WL 4949351 (S.D.N.Y. Nov. 19, 2008) ................................80 Empresa Cubana Exportadora de Alimentos y Productos Varios v. U.S. Dep’t of Treasury, 516 F. Supp. 2d 43 (D.D.C. 2007) .... 324 Encompass Ins. Co. v. Giampa, 522 F. Supp. 2d 300 (D. Mass. 2007) ............................................................................................277 ERBE Electromedizin GmbH v. Canady Tech. LLC, 529 F. Supp. 2d 577 (W.D. Pa. 2007) ...............................................96, 101 Estate of Coll-Monge v. Inner Peace Movement, 524 F.3d 1341 (D.C. Cir. 2008)......................................................................74, 239 Estate of Mantle v. Rothgeb, 537 F. Supp. 2d 533 (S.D.N.Y. 2008) ............................................................................................195 Euromarket Designs, Inc. v. Crate & Barrel Ltd., 96 F. Supp. 2d 824 (N.D. Ill. 2000) .................................................................284 Evans Chemetics, Inc. v. Chemetics Int’l Ltd., 207 U.S.P.Q. 695 (T.T.A.B. 1980) ..............................................................................49 Ex parte Bank of Am. Nat’l Trust and Savings Assoc., 118 U.S.P.Q. 165 (Comm'r Pats. 1958) ...............................................26 Extra Storage Space, LLC v. Maisel-Hollins Dev. Co., 527 F. Supp. 2d 462 (D. Md. 2007) ........................................................291 Fair Indigo LLC v. Style Conscience, 85 U.S.P.Q.2d 1536 (T.T.A.B. 2007) ..............................................................................60 Fashion Boutique of Short Hills, Inc. v. Fendi USA, Inc., 314 F.3d 48 (2d Cir. 2002) .................................................................172 Fed. Glass Co. v. Corning Glass Works, 162 U.S.P.Q. 279, 28283 (T.T.A.B. 1969) ...................................................................45, 63 Fin. Express LLC v. Nowcom Corp., 564 F. Supp. 2d 1160 (C.D. Cal. 2008) ............................... 2, 88, 91, 94, 104, 112, 117, 217, 234 Finanz St. Honoré B.V. v. Johnson & Johnson, 85 U.S.P.Q.2d 1478 (T.T.A.B. 2007) .....................................................................62 First Fitness Int’l, Inc. v. Thomas, 533 F. Supp. 2d 651 (N.D. Tex. 2008) ............................................................................280, 287 Fisher Tool Co. v. Gillet Outillage, 530 F.3d 1063 (9th Cir. 2008) ............................................................................................183 Fishking Processors, Inc. v. Fisher King Seafoods, Ltd., 83 U.S.P.Q.2d 1762 (T.T.A.B. 2007) ............................................57, 58 Fleischmann Distilling Corp. v. Maier Brewing Co., 386 U.S. 714 (1967) ....................................................................................258 Florczak v. Oberriter, 857 N.Y.S.2d 308 (N.Y. App. Div. 2008) ... 181 338 Vol. 99 TMR Fort James Operating Co. v. Royal Paper Converting, Inc., 83 U.S.P.Q.2d 1624 (T.T.A.B. 2007) ..............................................9, 10 Frazier v. Boomsma, 84 U.S.P.Q.2d 1779 (D. Ariz. 2007) ............ 206 Freecycle Network, Inc. v. Oey, 505 F.3d 898 (9th Cir. 2007) ............................................................................112, 170, 185 In re Friedman, 350 F.3d 65 (2d Cir. 2003)...................................293 FrontRange Solutions USA, Inc. v. NewRoad Software, Inc., 505 F. Supp. 2d 821 (D. Colo. 2007) ...........................................215 FURminator, Inc. v. Kirk Weaver Enters., 545 F. Supp. 2d 685 (S.D. Ohio 2008) ..................................................................198, 316 Future Lawn, Inc. v. Maumee Bay Landscape Contractors, L.L.C., 542 F. Supp. 2d 769 (N.D. Ohio 2008) ... 111, 119, 248, 305 Futuristic Fences, Inc. v. Illusion Fence Corp., 558 F. Supp. 2d 1270 (S.D. Fla. 2008) ...................................................................169 G.A. Modefine S.A. v. Burlington Coat Factory Warehouse Corp., 888 F. Supp. 44 (S.D.N.Y. 1995) ......................................297 Gaudreau v. Am. Promotional Events, Inc., 511 F. Supp. 2d 152 (D.D.C. 2007) .......................................................189, 220, 222, 223 Gen. Car and Truck Leasing Sys., Inc. v. Gen. Rent-A-Car Inc., 17 U.S.P.Q.2d 1398 (S.D. Fla. 1990) ............................................56 In re Gen. Elec. Broad. Co., 199 U.S.P.Q. 560 (T.T.A.B. 1978) ...... 73 Gen. Motors Corp. v. Urban Gorilla, LLC, 500 F.3d 1222 (10th Cir. 2007) ............................................... 93, 113, 129, 150, 161, 234 Gen. Rent-A-Car Inc. v. Gen. Leaseways, Inc., Canc. No. 14,870 (T.T.A.B. May 2, 1998) ..................................................................56 Geneva Int’l Corp. v. Petrof, SPOL, S.R.O., 529 F. Supp. 2d 932 (N.D. Ill. 2007) .............................................................................318 Giersch v. Scripps Networks, Inc., 85 U.S.P.Q.2d 1306 (T.T.A.B. 2007) ........................................................................66, 67 GMA Accessories, Inc. v. Bop, LLC, 507 F. Supp. 2d 361 (S.D.N.Y. 2007), vacated in part, No. 07 Civ. 3219 LTS/DCF, 2008 WL 762782 (S.D.N.Y. Mar. 20, 2008) ................................109 In re Gould Paper Corp., 834 F.2d 1017 (Fed. Cir. 1987) ............... 38 Goya Foods, Inc. v. Tropicana Prods., Inc., 846 F.2d 848 (2d Cir. 1988) .....................................................................................287 Grand Canyon W. Ranch, LLC v. Hualapai Tribe, 78 U.S.P.Q.2d 1696 (T.T.A.B. 2006) ..................................................55 Grand Canyon W. Ranch, LLC v. Hualapai Tribe, 88 U.S.P.Q.2d 1501 (T.T.A.B. 2008) ....................................................6 Great Seats Ltd. v. Great Seats, Inc., 84 U.S.P.Q.2d 1235 (T.T.A.B. 2007) ..........................................................................5, 52 Great Socialist People’s Libyan Arab Jamahiriya v. Miski, 496 F. Supp. 2d 137 (D.D.C. 2007) ....................................................288 Vol. 99 TMR 339 Green Spot (Thailand) Ltd. v. Vitasoy Int’l Holdings Ltd., 86 U.S.P.Q.2d 1283 (T.T.A.B. 2008) ..............................................6, 51 Greenwich Ins. Co. v. RPS Prods., Inc., 882 N.E.2d 1202 (Ill. App. Ct. 2008) ..............................................................................327 Gregerson v. Vilana Fin., Inc., 84 U.S.P.Q.2d 1245 (D. Minn. 2007) ............................................................................137, 186, 205 In re Gregory, 70 U.S.P.Q.2d 1792 (T.T.A.B. 2004) ........................ 30 Gristede’s Foods, Inc. v. Unkechauge Nation, 532 F. Supp. 2d 439 (E.D.N.Y. 2007) ...........................................................178, 197 Grocery Outlet Inc. v. Albertson’s Inc., 497 F.3d 949 (9th Cir. 2007) (per curiam) .......................................................................211 Gucci Shops, Inc. v. Dreyfoos & Assocs., 222 U.S.P.Q. 302 (S.D. Fla. 1983) .....................................................................................259 H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987 (Fed. Cir. 1986) ..................................................18, 38, 39 H.D. Hudson Mfg. Co. v. Food Mach. & Chem. Corp., 230 F.2d 445, 109 U.S.P.Q. 48 (C.C.P.A. 1956) ...........................................43 Hachette Filipacchi Presse v. Elle Belle, LLC, 85 U.S.P.Q.2d 1090 (T.T.A.B. 2007) .....................................................................55 Hadley v. U. S., 45 F.3d 1345 (9th Cir. 1995) .................................67 Hana Fin., Inc. v. Hana Bank, 500 F. Supp. 2d 1228 (C.D. Cal. 2007) ....................................................................................290, 308 Hanover Star Milling Co. v. Metcalf, 240 U.S. 403 (1916) ..... 81, 130 Harley Davidson, Inc. v. Grottanelli, Inc., 164 F.3d 806 (2d Cir. 1999) ..............................................................................................87 Harleysville Mut. Ins. Co. v. Buzz Off Insect Shield, L.L.C., 664 S.E.2d 317 (N.C. Ct. App. 2008) .................................................326 Harsco Corp. v. Elec. Scis. Inc., 9 U.S.P.Q.2d 1570 (T.T.A.B. 1988) ..............................................................................................60 Hasbro, Inc. v. MGA Entm’t, Inc., 497 F. Supp. 2d 337 (D.R.I. 2007) ........................................................................................83, 86 Hauf v. Life Extension Found., 547 F. Supp. 2d 771 (W.D. Mich. 2008) ..................................................................................191 Hayes Lemmerz Int’l, Inc. v. Epilogics Group, 531 F. Supp. 2d 789 (E.D. Mich. 2007)..........................................................111, 135 H-D Mich., Inc. v. Top Quality Serv., Inc., 496 F.3d 755 (7th Cir. 2007) .....................................................................2, 87, 88, 232 Healthport Corp. v. Tanita Corp. of Am., 563 F. Supp. 2d 1169 (D. Or. 2008) ................................ 168, 169, 172, 177, 240, 249, 260 Hearst Corp. v. Or. Worsted Co., 58 U.S.P.Q.2d 1761 (D. Or. 2001) ............................................................................................259 Herbaceuticals Inc. v. Xel Herbaceuticals Inc., 86 U.S.P.Q.2d 1572 (T.T.A.B. 2008) .....................................................................56 340 Vol. 99 TMR HighBeam Marketing LLC v. Highbeam Research LLC, 85 U.S.P.Q.2d 1902 (T.T.A.B. 2008) ..................................................68 Hipsaver Co. v. J.T. Posey Co., 497 F. Supp. 2d 96 (D. Mass. 2007) ....................................................................................238, 249 Hit Entm’t, Inc. v. Nat’l Disc. Costume Co., 552 F. Supp. 2d 1099 (S.D. Cal. 2008)........................................... 112, 119, 124, 202 Hodgon Powder Co. v. Alliant Techsystems, Inc., 497 F. Supp. 2d 1221 (D. Kan. 2007) ................................. 83, 113, 189, 226, 308 Holk v. Snapple Beverage Corp., 574 F. Supp. 2d 447 (D.N.J. 2008) ....................................................................................189, 323 Hoover Co. v. Royal Appliance Mfg. Co., 238 F.3d 1357 (Fed. Cir. 2001) .......................................................................................18 Housing & Servs., Inc. v. Minton, No. Civ. 2725, 1997 WL 349949 (S.D.N.Y. June 24, 2007)..................................................76 Huang v. Tzu Wei Chen Food, Ltd., 849 F.2d 1458 (Fed. Cir. 1988) ..............................................................................................52 Ideal Instruments, Inc. v. Rivard Instruments, Inc., 434 F. Supp. 2d 598 (N.D. Iowa), later proceedings, 434 F. Supp. 2d 640 (N.D. Iowa 2006), later proceedings, 243 F.R.D. 322 (N.D. Iowa), later proceedings, 245 F.R.D. 381 (N.D. Iowa 2007) ....................................................................................300, 301 In re I. Lewis Cigar Mfg. Co., 205 F.2d 204 (C.C.P.A. 1953) .... 29, 30 In re IC! Berlin brillen GmbH, 85 U.S.P.Q.2d 2021 (T.T.A.B. 2008) ..............................................................................................47 In re ICE Futures U.S., Inc., 85 U.S.P.Q.2d 1664 (T.T.A.B. 2008) ........................................................................................22, 36 Imperial Tobacco Ltd. v. Philip Morris, Inc., 899 F.2d 1575 (Fed. Cir. 1990) ............................................................................311 Indianapolis Colts, Inc. v. Metropolitan Baltimore Football Club, 34 F.3d 410 (7th Cir. 1994) ...............................................284 Institute National des Appellations d’Origine v. Vintners Int’l Co., 958 F.2d 1574 (Fed. Cir. 1992) ..............................................21 Int’l Order of Job’s Daughters v. Lindeburg & Co., 727 F.2d 1087, 220 U.S.P.Q. 1017 (Fed. Cir. 1984) ......................................8 Int’l Techs. Consultants, Inc. v. Stewart, 554 F. Supp. 2d 750 (E.D. Mich. 2008).................................................................168, 172 Intellimedia Sports Inc. v. Intellimedia Corp., 43 U.S.P.Q.2d 1203 (T.T.A.B. 1997) ...................................................................290 Interpace Corp. v. Lapp, Inc., 721 F.2d 460 (3d Cir. 1983) .......... 109 Intersearch Worldwide, Ltd. v. Intersearch Group, 544 F. Supp. 2d 949 (N.D. Cal. 2008) ...............................................................285 Intersport, Inc. v. Nat’l Collegiate Athletic Ass’n, 885 N.E.2d 532 (App. Ct. Ill. 2008) ................................................................319 Vol. 99 TMR 341 Interstellar Starship Servs., Ltd. v. Epix, Inc., 304 F.3d 936 (9th Cir. 2002) .............................................................................112 Iovate Health Scis., Inc. v. Allmax Nutrition, Inc., 549 F. Supp. 2d 127 (D. Mass. 2008) ................................................................279 In re IP Carrier Consulting Group, 84 U.S.P.Q.2d 1028 (T.T.A.B. 2007) ........................................................................39, 40 ISI Int’l, Inc. v. Borden Ladner Gervais LLP, 256 F.3d 548 (7th Cir. 2001) .....................................................................................282 ITC Ltd. v. Punchgini, 482 F.3d 135 (2d Cir.), certified questions accepted, 870 N.E.2d 151 (N.Y.), cert. denied, 128 S. Ct. 288, certified questions answered, 880 N.E.2d 852 (N.Y. 2007), later proceedings, 518 F.3d 159 (2d Cir. 2008) ................. 79 J&B Wholesale Distrib. Inc. v. Redux Beverages LLC, 85 U.S.P.Q.2d 1623 (D. Minn. 2007) .... 2, 92, 111, 117, 154, 155, 234 Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628 (9th Cir. 2008) ........................................................ 4, 112, 113, 123, 150, 157 Jalbert v. Grautski, 554 F. Supp. 2d 57 (D. Mass. 2008) ..... 190, 312 Janmark, Inc. v. Reidy, 132 F.3d 1200 (7th Cir. 1997) ................ 284 Jansen Enters., Inc. v. Rind, 85 U.S.P.Q.2d 1104 (T.T.A.B. 2007) ..............................................................................................58 Jewelers Mut. Ins. v. Milne Jewelry Co., 83 U.S.P.Q.2d 1665 (D. Utah 2006) .............................................................................326 Jewelers Vigilance Comm., Inc. v. Ullenberg Corp., 823 F.2d 490 (Fed. Cir. 1987) .......................................................................64 Ji v. Bose Corp., 538 F. Supp. 2d 349 (D. Mass.), later proceedings, 578 F. Supp. 2d 217 (D. Mass. 2008) .................... 167 John Allan Co. v. Craig Allen Co., 540 F.3d 1133 (10th Cir. 2008) ............................................................................113, 124, 239 Johnson & Johnson Consumer Cos. v. Aini, 540 F. Supp. 2d 374 (E.D.N.Y. 2008) ....... 82, 92, 109, 154, 156, 161, 202, 205, 247, 260 Johnson & Johnson v. Actavis Group hf, 87 U.S.P.Q.2d 1125 (S.D.N.Y. 2008) ............................................................................102 Johnson & Johnson v. Am. Nat’l Red Cross, 552 F. Supp. 2d 434 (S.D.N.Y. 2008) .............................................................150, 321 Johnson & Johnson Vision Care, Inc. v. 1-800 Contacts, Inc., 299 F.3d 1242 (11th Cir. 2002) ...................................................168 Johnston Pump/General Valve, Inc. v. Chromalloy Am. Corp., 13 U.S.P.Q.2d 1719 (T.T.A.B. 1988) .............................................67 In re Jolley, 308 F.3d 1317 (Fed. Cir. 2002) ....................................18 In re JT Tobacconists, 59 U.S.P.Q.2d 1080 (T.T.A.B. 2001) ........... 28 JTH Tax, Inc. v. Liberty Servs. Title, Inc., 543 F. Supp. 2d 504 (E.D. Va. 2008) ............................................................................284 342 Vol. 99 TMR Judkins v. HT Window Fashion Corp., 529 F.3d 1334 (Fed. Cir. 2008) ....................................................................................184, 260 Just Enters. v. O’Malley & Langan, P.C., 560 F. Supp. 2d 345 (M.D. Pa. 2008) ............................................................................124 K & N Engineering v. Bulat, 510 F.3d 1079 (9th Cir. 2007) ........ 257 Kaye v. Grossman, 202 F.3d 611 (2d Cir. 2000) ........................... 197 Kerr v. Screen Extras Guild, Inc., 526 F.2d 67 (9th Cir. 1975) ............................................................................................266 King Candy Co., Inc. v. Eunice King’s Kitchen, 496 F.2d 1400 (C.C.P.A. 1974) ..............................................................................48 Klayman v. Judicial Watch, Inc., 247 F.R.D. 10 (D.D.C. 2007) ....................................................................................187, 302 Klein-Becker usa LLC v. Englert, 83 U.S.P.Q.2d 1112 (D. Utah 2007) ............................................................................147, 236, 316 L.C. Licensing, Inc. v. Berman, 86 U.S.P.Q.2d 1883 (T.T.A.B. 2008) ....................................................................................6, 13, 42 In re La Peregrina Ltd., 86 U.S.P.Q.2d 1645 (T.T.A.B. 2008) ........ 37 Land’s End, Inc. v. Manbeck, 797 F. Supp. 311 (E.D. Va. 1992) ........................................................................................23, 25 Landrau v. Solis-Betancourt, 554 F. Supp. 2d 117 (D.P.R. 2008) ............................................................................168, 169, 205 Lane Capital Mgmt., Inc. v. Lane Capital Mgmt., Inc., 192 F.3d 337 (2d Cir. 1999) ..........................................................................87 Last Best Beef, LLC v. Dudas, 455 F. Supp. 2d 496 (E.D. Va. 2006) ..............................................................................................20 Last Best Beef, LLC v. Dudas, 506 F.3d 333 (4th Cir. 2007) ..... 5, 19 Lederman Bonding Co. v. Sweetalia, 83 U.S.P.Q.2d 1660 (D. Colo. 2006) ...............................................................89, 96, 113, 127 Leelanau Wine Cellars, Ltd. v. Black & Red, Inc., 502 F.3d 504 (6th Cir. 2007) .................................................82, 89, 111, 141, 144 In re Lens.com, Inc., 83 U.S.P.Q.2d 1444 (T.T.A.B. 2007) ............. 38 Leumme, Inc. v. D.B. Plus Inc., 53 U.S.P.Q.2d 1758, 1760 (T.T.A.B. 1999) ..............................................................................72 Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 548 F. Supp. 2d 811 (N.D. Cal. 2008) ............................................308, 311 Lewis v. Marriott Int’l, Inc., 527 F. Supp. 2d 422 (E.D. Pa. 2007) ......................................................................98, 166, 194, 285 Ligotti v. Garofalo, 562 F. Supp. 2d 204 (D.N.H. 2008) ............ 2, 88, 115, 234 Lindy Pen Co. v. Bic Pen Corp., 982 F.2d 1400 (9th Cir. 1993) ... 259 Lorillard Tobacco Co. v. A & E Oil, Inc., 503 F.3d 588 (7th Cir. 2007) ............................................................................................259 Vol. 99 TMR 343 Louis Vuitton Malletier v. Dooney & Bourke, 525 F. Supp. 2d 558 (S.D.N.Y. 2007), later proceedings, 561 F. Supp. 2d 368 (S.D.N.Y. 2008) ........................................... 109, 135, 145, 150, 154, 160, 161, 251, 253, 295 Lucien Piccard Watch Corp. v. Since 1868 Crescent Corp., 314 F. Supp. 329 (S.D.N.Y. 1970) ........................................................31 Lulu Enters. v. N-F Newsite LLC, 85 U.S.P.Q.2d 1367 (E.D.N.C. 2007) .......................................................2, 110, 129, 186 In re Lyndale Farm, 186 F.2d 723 (C.C.P.A. 1951) ........................ 24 In re MBNA Am. Bank N.A., 340 F.3d 1328 (Fed. Cir. 2003) ........ 18 M.C.I. Foods, Inc. v. Bunte, 86 U.S.P.Q.2d 1044 (T.T.A.B. 2008) ..............................................................................................70 Mad Dogg Athletics, Inc. v. NYC Holding, 565 F. Supp. 2d 1127 (C.D. Cal. 2008) ...................................................................202, 279 Magasouba v. Mukasey, 543 F.3d 13 (1st Cir. 2008) .................... 203 Mallinckrodt, Inc. v. Ciba-Geigy Corp., 195 U.S.P.Q. 665 (T.T.A.B. 1977) ..............................................................................43 Manzarek v. St. Paul Fire & Marine Ins. Co., 519 F.3d 1025 (9th Cir. 2008) .............................................................................328 Margaret Wendt Found. Holdings Inc. v. Roycroft Assocs., 84 U.S.P.Q.2d 1690 (W.D.N.Y. 2007) ................................ 77, 210, 224 Matrix Essentials v. Quality King Distribs., Inc., 522 F. Supp. 2d 470 (E.D.N.Y. 2007) ...............................................................314 Maurag, Inc. v. Bertuglia, 494 F. Supp. 2d 395 (E.D. Va. 2007) ............................................................................110, 148, 309 Maurizio v. Goldsmith, 230 F.3d 518 (2d Cir. 2000) .................... 197 Mayer/Berkshire Corp. v. Berkshire Fashions Inc., 424 F.3d 1229 (Fed. Cir. 2005) .....................................................................66 McClanahan v. Aetna Life Ins. Co., 144 F.R.D. 316 (W.D. Va. 1992) ..............................................................................................67 McNeil Nutritionals, LLC v. Heartland Sweeteners, LLC, 566 F. Supp. 2d 378 (E.D. Pa. 2008) ............................. 2, 110, 114, 127 McZeal v. Sprint Nextel Corp., 501 F.3d 1354 (Fed. Cir. 2007) ..... 84 MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007) ...................................................................................271, 272 Medinol Ltd. v. Neuro Vasx, Inc., 67 U.S.P.Q.2d 1205 (T.T.A.B. 2006) ........................................................................................55, 56 Medline Indus. v. Strategic Commercial Solutions, Inc., 553 F. Supp. 2d 979 (N.D. Ill. 2008) ...................... 105, 201, 282, 284, 325 In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 4 U.S.P.Q.2d 1141 (Fed. Cir. 1987) .....................................................................46 In re MGA Entm’t, Inc., 84 U.S.P.Q.2d 1743 (T.T.A.B. 2007)........ 26 Microsoft Corp. v. Nop, 549 F. Supp. 2d 1233 (E.D. Cal. 2008) ... 244 344 Vol. 99 TMR Microsoft Corp. v. Tierra Computer, Inc., 184 F. Supp. 2d 1329 (N.D. Ga. 2001) ............................................................................244 Midlothian Labs. v. Pamlab, L.L.C., 509 F. Supp. 2d 1095 (M.D. Ala. 2007) ..........................................................................178 Miller v. Glenn Miller Prods., Inc., 454 F.3d 975 (9th Cir. 2006) ............................................................................................225 Minn. Public Radio v. Va. Beach Educ. Broad. Found., 519 F. Supp. 2d 970 (D. Minn. 2007) .....................................................283 MNI Mgmt., Inc. v. Wine King, LLC, 542 F. Supp. 2d 389 (D.N.J. 2008)...................................... 81, 82, 90, 110, 130, 131, 234 Mont. Prof’l Sports, LLC v. Nat’l Indoor Football League, LLC, 180 P.3d 1142 (Mont. 2008) ........................................................248 Montalto v. Viacom Int’l, Inc., 545 F. Supp. 2d 556 (S.D. Miss. 2008) ............................................................................110, 139, 151 Montrose Chem. Corp. v. Superior Ct., 861 P.2d 1153 (Cal. 1993 ..............................................................................................328 Morehouse Mfg. Corp. v. J. Strickland & Co., 407 F.2d 881 (C.C.P.A. 1969) ..............................................................................51 Moseley v. V Secret Catalogue, Inc., 537 U.S. 418 (2003) ...............................................................5, 153, 155, 161, 162 Motion Picture Assoc. of Am. Inc. v. Respect Sportswear, Inc., 83 U.S.P.Q.2d 1555 (T.T.A.B. 2007) ...............................................9 MSP Corp. v. Westech Instruments, Inc., 500 F. Supp. 2d 1198 (D. Minn. 2007)..................................... 2, 90, 93, 97, 100, 101, 111, 118, 168, 169, 177, 181, 234 Munhwa Broad. Corp. v. Solafide Inc., 84 U.S.P.Q.2d 1993 (C.D. Cal. 2007) ...........................................................112, 116, 237 N. Am. Med. Corp. v. Axiom Worldwide, Inc., 522 F.3d 1211 (11th Cir. 2008) ........................... 2, 3, 103, 168, 169, 176, 235, 237 Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208 (2d Cir. 1999) .... 162 Nat’l Football League v. DNH Mgmt. LLC, 85 U.S.P.Q.2d 1852 (T.T.A.B. 2008) ..........................................................................6, 72 Nat’l Spiritual Assembly v. Nat’l Spiritual Assembly, 547 F. Supp. 2d 879 (N.D. Ill. 2008) ......................................................241 Natural Answers, Inc. v. SmithKline Beecham Corp., 529 F.3d 1325 (11th Cir. 2008) ..........................................................209, 276 Ne. Ohio Coll. of Massotherapy v. Burek, 759 N.E.2d 869 (Ohio Ct. App. 2001) ..............................................................................175 Nemet Chevrolet, Ltd. v. Consumeraffairs.com, Inc., 564 F. Supp. 2d 544 (E.D. Va. 2008) ...................................... 168, 171, 277 NetQuote, Inc. v. Byrd, 504 F. Supp. 2d 1126 (D. Colo. 2007) ....................................................................................168, 196 Vol. 99 TMR 345 New Kids on the Block v. News Am. Publ’g, Inc., 971 F.2d 302 (9th Cir. 1992) .....................................................................215, 216 Newcal Indus. v. IKON Office Solutions, Inc., 513 F.3d 1038, 1052 (9th Cir. 2008) ....................................................169, 174, 219 Nike, Inc. v. Nikepal Int’l, Inc., 84 U.S.P.Q.2d 1820 (E.D. Cal. 2007) ........................................................................5, 158, 159, 304 Nissan Motor Co. v. Nissan Computer Corp., 378 F.3d 1002 (9th Cir. 2004) .............................................................................157 Norfab Corp. v. Travelers Indem. Co., 555 F. Supp. 2d 505 (E.D. Pa. 2008).............................................................................326 In re Omega SA, 494 F.3d 1362 (Fed. Cir. 2007) ............................ 19 On Site Gas Sys., Inc. v. USF Techs., Inc., 553 F. Supp. 2d 182 (D. Conn. 2008) ............................................................................283 Optimum Techs., Inc. v. Henkel Consumer Adhesives, Inc., 496 F.3d 1231 (11th Cir. 2007) .......................................... 164, 201, 242 Orange County Choppers, Inc. v. Olaes Enters., 497 F. Supp. 2d 541 (S.D.N.Y. 2007) ................................................................190 In re Oriental Daily News, Inc., 230 U.S.P.Q. 637 (T.T.A.B. 1986) ..............................................................................................51 Ormsby v. Barrett, 85 U.S.P.Q.2d 1700 (W.D. Wash. 2008) ........ 227 In re Osterberg, 83 U.S.P.Q.2d 1220 (T.T.A.B. 2007) ..................... 23 Otto Int’l Inc. v. Otto Kern GmbH, 83 U.S.P.Q.2d 1861 (T.T.A.B. 2007) ..............................................................................59 Outdoor Techs. Inc. v. Vinyl Visions LLC, 83 U.S.P.Q.2d 1418 (S.D. Ohio 2006) ..................................................168, 169, 176, 178 PacTel Teletrack v. TAB Sys., 32 U.S.P.Q.2d 1668 (T.T.A.B. 1994) ..............................................................................................48 Palm Bay Import, Inc. v. Veuve Clicquot Ponsardin Maison Fondée en 1772, 396 F.3d 1369, 73 U.S.P.Q.2d 1689 (Fed. Cir. 2005) .......................................................................................33 Parfums de Coeur Ltd. v. Lazarus, 83 U.S.P.Q.2d 1012 (T.T.A.B. 2007) ..............................................................................14 Paris Glove of Canada, Ltd. v. SBC/Sporto Corp., 84 U.S.P.Q.2d 1856 (T.T.A.B. 2007) ...............................................................53, 54 Park ’N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189 (1985) ...........................................................................................311 Parker v. Learn the Skills Corp., 530 F. Supp. 2d 661 (D. Del. 2008) ....................................................................................168, 175 Patsy’s Brand, Inc. v. I.O.B. Realty, Inc., 317 F.3d 209 (2d Cir. 2003) ............................................................................................210 Patsy’s Italian Rest., Inc. v. Banas, 508 F. Supp. 2d 194 (E.D.N.Y. 2007) ........................... 109, 124, 210, 211, 212, 223, 294 346 Vol. 99 TMR Paul Frank Indus. v. Sunich, 502 F. Supp. 2d 1094 (C.D. Cal. 2008) .................................................... 2, 89, 95, 112, 117, 149, 234 Paul v. Judicial Watch, Inc., 543 F. Supp. 2d 1 (D.D.C. 2008) ....................................................................................166, 221 Paulsson Geophysical Servs., Inc. v. Sigmar, 529 F.3d 303 (5th Cir. 2008) .............................................................110, 115, 236, 298 PDL Inc. v. All Star Driving Sch., 84 U.S.P.Q.2d 1927 (E.D. Cal. 2007) .....................................................................................209 Pedinol Pharmacal, Inc. v. Rising Pharms., Inc., 512 F. Supp. 2d 137 (E.D.N.Y. 2007) ...............................................................221 PepsiCo Inc. v. #1 Wholesale LLC, 84 U.S.P.Q.2d 1040 (N.D. Ga. 2007) ......................................................................113, 153, 156 Perfect 10, Inc. v. VISA Int’l Serv. Ass’n, 494 F.3d 788 (9th Cir. 2007), cert. denied, 128 S. Ct. 2871 (2008) .................................200 Perfumebay.com Inc. v. eBay Inc., 506 F.3d 1165 (9th Cir. 2007) ................................................ 5, 112, 120, 142, 157, 221, 255 Pernod Ricard USA LLC v. Bacardi U.S.A., Inc., 505 F. Supp. 2d 245 (D. Del. 2007) ...........................................................170, 274 Person’s Co. Ltd. v. Christman, 14 U.S.P.Q.2d 1477 (Fed. Cir. 1990) ..............................................................................................51 PHC, Inc. v. Pioneer Healthcare, 75 F.3d 75 (1st Cir. 1996) ....... 287 Philip Morris USA Inc. v. Lee, 547 F. Supp. 2d 667 (W.D. Tex.), later proceedings, 547 F. Supp. 2d 685 (W.D. Tex. 2008) .................................... 110, 164, 244, 246, 260, 263, 281, 314 In re Piano Factory Group, Inc., 85 U.S.P.Q.2d 1522 (T.T.A.B. 2006) ..............................................................................................30 Pignons S.A. de Mécanique de Précision v. Polaroid Corp., 657 F.2d 482 (1st Cir. 1981) ..............................................................108 Pike v. Freeman, 266 F.3d 78 (2d Cir. 2001) ................................231 Pilot Corp. v. Fisher-Price, 501 F. Supp. 2d 292 (D. Conn. 2007) ................................................ 77, 91, 109, 138, 145, 294, 305 Pilot Corp. v. Fisher-Price, Inc., 501 F. Supp. 2d 292 (D. Conn. 2007) ........................................................ 77, 91, 109, 145, 294, 305 In re Pingel Enters., Inc., 46 U.S.P.Q.2d 1811 (T.T.A.B. 1988) ..... 46 Pinnacle Pizza Co. v. Little Caesar Enters., 560 F. Supp. 2d 786 (D.S.D. 2008) ................................................................306, 309 Pizzeria Uno Corp. v. Temple, 747 F.2d 1522 (4th Cir. 1984) ..... 110 Playboy Enters. v. Baccarat Clothing Co., 692 F.2d 1272 (9th Cir. 1982) .....................................................................................259 Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961). ...........................................................................................109 Polo Fashions, Inc. v. Gentlemen’s Corner Wholesale, Inc., 221 U.S.P.Q. 147 (D.S.C. 1983) .........................................................259 Vol. 99 TMR 347 Posadas v. Nat’l City Bank, 296 U.S. 497 (1936) ............................ 20 Powerhouse Prods., Inc. v. Widgery, 564 F. Supp. 2d 672 (E.D. Tex. 2008) ....................................................................280, 283, 287 Primepoint, L.L.C. v. Primepay, Inc., 545 F. Supp. 2d 426 (D.N.J. 2008)........................................................................110, 308 Prince of Peace Enters. v. Top Quality Food Mkt., LLC, 496 F. Supp. 2d 354 (S.D.N.Y. 2007) .....................................................205 PRL USA Holdings, Inc. v. U.S. Polo Ass’n, 520 F.3d 109 (2d Cir. 2008) .....................................................................139, 229, 239 Prof. Real Estate Inv., Inc. v. Columbia Pictures Indus., 508 U.S. 49 (1993) ..............................................................................183 ProFitness Physical Therapy Center v. Pro-Fit Orthopedic and Sports Physical Therapy P.C., 314 F.3d 62 (2d Cir. 2002) .......... 58 ProQuest Info. and Learning Co. v. Island, 83 U.S.P.Q.2d 1351 (T.T.A.B. 2007) ................................................................................8 Prot. One Alarm Monitoring, Inc. v. Executive Prot. One Sec. Serv., LLC, 553 F. Supp. 2d 201 (E.D.N.Y. 2008) ............ 109, 263, 267, 270 ProteoTech, Inc. v. Unicity Int’l, Inc., 547 F. Supp. 2d 1174 (W.D. Wash. 2008).......................................................................201 Ptak Bros. Jewelry Inc. v. Ptak, 83 U.S.P.Q.2d 1519 (S.D.N.Y. 2007) .................................................... 2, 89, 95, 109, 116, 148, 234 Ramada Inns, Inc. v. Gadsden Motel Co., 804 F.2d 1562 (11th Cir. 1986) .....................................................................................242 Recot Inc. v. Becton, 214 F.3d 1322 (Fed. Cir. 2000) ........................ 9 Red Bull GmbH v. RLED, LLC, 515 F. Supp. 2d 641 (M.D.N.C. 2007) ....................................................................................280, 287 Reflange, Inc. v. R-Con Int’l, 17 U.S.P.Q.2d 1125 (T.T.A.B. 1990) ............................................................................................132 In re Reinforced Molding Corp., 152 U.S.P.Q. 820 (T.T.A.B. 1967) ..............................................................................................24 Reno Air Racing Ass’n v. McCord, 452 F.3d 1126 (9th Cir. 2006) ........................................................................................3, 235 Res. Ctr. for Indep. Living, Inc. v. Ability Res., Inc., 534 F. Supp. 2d 1204 (D. Kan. 2008) .....................................................289 Rexel, Inc. v. Rexel Int’l Trading Corp., 540 F. Supp. 2d 1154 (C.D. Cal. 2007) .....................................................92, 107, 112, 119 Rice v. Fox Broad. Co., 330 F.3d 1170 (9th Cir. 2003).................. 173 Ritchie v. Simpson, 170 F.3d 1092 (Fed. Cir. 1999) ....................... 64 Rivell v. Private Health Care Sys., Inc., 520 F.3d 1308 (11th Cir. 2008) .....................................................................................194 Robert Trent Jones II, Inc. v. GFSI, Inc., 537 F. Supp. 2d 1061 (N.D. Cal. 2008) ...........................................................................234 348 Vol. 99 TMR Robertson v. Seattle Audobon Soc’y, 503 U.S. 429 (1992) .............. 20 Rodgers v. Wright, 544 F. Supp. 2d 302 (S.D.N.Y. 2008) ............................................................ 109, 119, 210, 213, 299 Rolex Watch U.S.A., Inc. v. Bonney, 546 F. Supp. 2d 1304 (M.D. Fla. 2008) .............................................................................203, 319 Romantics v. Activision Publ’g, Inc., 532 F. Supp. 2d 884 (E.D. Mich. 2008) .................................................... 73, 190, 192, 216, 238 In re Rosedale Inc., 80 U.S.P.Q. 2d 1698 (T.T.A.B. 2006) .............. 18 In re Rosemont, Inc., 86 U.S.P.Q. 2d 1436 (T.T.A.B. 2008) ............ 18 Rosenruist-Gestao e Servicos LDA v. Virgin Enters. Ltd., 511 F.3d 437 (4th Cir. 2007) ......................................................5, 40, 41 In re Royal Body Care, Inc., 83 U.S.P.Q.2d 1564 ............................ 21 Rush Indus. v. Garnier LLC, 496 F. Supp. 2d 220 (E.D.N.Y. 2007) ..............................................................................89, 109, 138 Russian Standard Vodka (USA), Inc. v. Allied Domecq Spirits & Wine USA, Inc., 523 F. Supp. 2d 376 (S.D.N.Y. 2007) ............................................................................197, 271, 305 Rutledge v. High Point Reg’l Health Sys., 558 F. Supp. 2d 611 (M.D.N.C. 2008)...........................................................................190 S & L Vitamins, Inc. v. Australian Gold, Inc., 521 F. Supp. 2d 188 (E.D.N.Y. 2007) ............................ 103, 109, 124, 180, 216, 317 In re S. Park Cigar, Inc., 82 U.S.P.Q. 1507 (T.T.A.B. 2007)........... 27 Sadhu Singh Hamad Trust v. Ajit Newspaper Adver., Mktg. & Commc’ns, Inc., 503 F. Supp. 2d 582 (E.D.N.Y. 2007) .............. 312 Sakar Int’l, Inc. v. U.S., 516 F.3d 1340 (Fed. Cir.), cert. denied, 129 S. Ct. 488 (2008) ...................................................................285 Sanderson Farms, Inc. v. Tyson Foods, Inc., 549 F. Supp. 2d 708 (D. Md. 2008) ........................................................168, 173, 322 Saudi v. Northrup Grumman Corp., 427 F.3d 271 (4th Cir. 2005) ............................................................................................282 In re Save Venice New York, Inc., 259 F.3d 1346 (Fed. Cir. 2001) ..............................................................................................27 Schering-Plough HealthCare Prods., Inc. v. Ing-Jing Huang, 84 U.S.P.Q.2d 1323 (T.T.A.B. 2007) ............................................43, 44 Schering-Plough Healthcare Prods., Inc. v. Schwarz Pharma, Inc., 547 F. Supp. 2d 939 (E.D. Wis. 2008) ........................ 169, 323 Schlotzsky’s, Ltd. v. Sterling Purchasing & Nat’l Distrib. Co., 520 F.3d 393 (5th Cir. 2008) ............................... 168, 176, 182, 262 Scotch Whiskey Ass’n v. U.S. Distilled Prods. Co., 952 F.2d 1317 (Fed. Cir. 1991) .....................................................................60 Sea Tow Int’l, Inc. v. Pontin, 246 F.R.D. 421 (E.D.N.Y. 2007) ..... 293 SEC v. Tome, 833 F.2d 1086 (2d Cir. 1987) ..................................297 Segal v. Geisha NYC LLC, 517 F.3d 501 (7th Cir. 2008) ............. 133 Vol. 99 TMR 349 Seitz v. Rheem Mfg, Co., 544 F. Supp. 2d 901 (D. Ariz. 2008) ..... 195 Shaw Family Archives Ltd. v. CMG Worldwide Inc., 486 F. Supp. 2d 309 (S.D.N.Y. 2007) .....................................................193 Sheridan v. Marathon Petroleum Co., 530 F.3d 590 (7th Cir. 2008) ............................................................................................219 Shuffle Master Inc. v. Awada, 83 U.S.P.Q.2d 1054 (D. Nev. 2006) ................................................ 93, 94, 100, 102, 112, 118, 234 Sid & Marty Krofft Television Prods., Inc. v. McDonald’s Corp., 562 F.2d 1157 (9th Cir. 1997) .....................................................297 Silberstein v. Fox Entm’t Group, 536 F. Supp. 2d 440 (S.D.N.Y. 2008) ............................................................................................263 Silver Ring Splint Co. v. Digisplint, Inc., 567 F. Supp. 2d 847 (W.D. Va. 2008) ........................................... 187, 244, 278, 281, 283 Silverstein v. Penguin Putnam Inc., 522 F. Supp. 2d 579 (S.D.N.Y. 2007) ....................................................................165, 170 Simmons v. Farmers Ins. Group, 877 P.2d 1255 (Utah Ct. App. 1994) ............................................................................................326 Simoniz Co. v. Hysan Prods. Co., 142 U.S.P.Q. 377 (T.T.A.B. 1964) ..............................................................................................43 Sinclair Oil Corp. v. Kendrick, 85 U.S.P.Q.2d 1031 (T.T.A.B. 2007) ..........................................................................................6, 55 Sly Magazine, LLC v. Weider Publ’ns L.L.C., 529 F. Supp. 2d 425 (S.D.N.Y. 2007) ............................... 92, 109, 137, 152, 156, 160 Smith v. Wal-Mart Stores, Inc., 537 F. Supp. 2d 1302 (N.D. Ga. 2008) .............................................. 97, 106, 113, 136, 143, 205, 294 In re Snap-On Tools Corp., 159 U.S.P.Q. 254 (T.T.A.B. 1968) ....... 26 In re Société Générale des Eaux Minérales de Vittel S.A., 3 U.S.P.Q.2d 1450 (Fed. Cir. 1987) .................................................28 Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669 (Fed. Cir. 1984) ................................................................7 Spira Footwear, Inc. v. Basic Sports Apparel, Inc., 545 F. Supp. 2d 591 (W.D. Tex. 2008) ........................................................76, 310 In re Spirits Int’l N.V., 86 U.S.P.Q.2d 1078 (T.T.A.B. 2008) .......... 32 In re Spirits of New Merced, LLC, 85 U.S.P.Q.2d 1614 (T.T.A.B. 2007) ..............................................................................................27 Springfield Inc. v. XD, 86 U.S.P.Q.2d 1063 (T.T.A.B. 2008) ...... 6, 61 Square D Co. v. Gaffney-Kroese Supply Corp., 249 F.R.D. 537 (N.D. Ill. 2008) .............................................................................292 St. Croix Printing Equip., Inc. v. Sexton, 578 F. Supp. 2d 1195 (D. Minn. 2008)............................................................................137 Standard Process, Inc. v. Banks, 554 F. Supp. 2d 866 (E.D. Wis. 2008) ............................................................................148, 316, 317 350 Vol. 99 TMR Standard Process, Inc. v. Total Health Discount, Inc., 559 F. Supp. 2d 932 (E.D. Wis. 2008) ............................................169, 216 Stanfield v. Osborne Indus., 52 F.3d 867 (10th Cir. 1995) ........... 189 Steele v. Bulova Watch Co., 344 U.S. 280 (1952).......................... 299 In re Stewart Sandwiches Int’l, Inc., 220 U.S.P.Q. 93 (T.T.A.B. 1983) ..............................................................................................24 SuccessFactors, Inc. v. Softscape, Inc., 544 F. Supp. 2d 975 (N.D. Cal. 2008) ...................................................104, 168, 173, 238 SunAmerica Corp. v. Sun Life Assurance Co. of Canada, 77 F.3d 1325 (11th Cir. 1996) ..........................................................223 Sunkist Growers, Inc. v. Benjamin Ansehl Co., 229 U.S.P.Q. 147 (T.T.A.B. 1985) .......................................................................72 In re Supply Guys, Inc., 86 U.S.P.Q.2d 1488 (T.T.A.B. 2008) ........................................................................................24, 25 Sybersound Records, Inc. v. UAV Corp., 517 F.3d 1137 (9th Cir. 2008) ....................................................................................184, 190 Target Brands, Inc. v. Hughes, 85 U.S.P.Q.2d 1676 (T.T.A.B. 2007) ................................................................44, 45, 46, 62, 63, 64 Taser Int’l Inc. v. Bestex Co., 84 U.S.P.Q.2d 1186 (C.D. Cal. 2007) ....................................................................168, 169, 178, 294 Tenn. Valley Auth. v. Hill, 437 U.S. 153 (1978)..............................20 Tenn. Walking Horse Breeders’ & Exhibitors Ass’n v. Nat’l Walking Horse Ass’n, 528 F. Supp. 2d 772 (M.D. Tenn. 2007) ............................................................................142, 150, 215 Tequila Centinela, S.A. de C.V. v. Bacardi & Co., 248 F.R.D. 64 (D.D.C. 2008) ...............................................................265, 269, 292 Thane Int’l, Inc. v. Trek Bicycle Corp., 305 F.3d 894 (9th Cir. 2002) ............................................................................................158 In re The Pa. Fashion Factory, Inc., 588 F.2d 1343 (C.C.P.A. 1978) ..............................................................................................24 In re Thermo LabSystems, Inc., 85 U.S.P.Q.2d 1285 (T.T.A.B. 2007) ........................................................................................30, 31 In re Thomas, 79 U.S.P.Q.2d 1021 (T.T.A.B. 2006) .................. 33, 34 Thompson v. Haynes, 305 F.3d 1369 (Fed. Cir. 2002) .................. 243 In re Thortech, Inc., 85 U.S.P.Q.2d 1474 (T.T.A.B. 2007) .............. 25 Through The Door Inc. v. J.C. Penny Co., 83 U.S.P.Q.2d 1538 (W.D. Wis. 2007) ............................................................98, 190, 312 Tiseo Architects, Inc. v. B & B Pools Serv. & Supply Co., 495 F.3d 344 (6th Cir. 2007) ..............................................................164 Top Tobacco, L.P. v. N. Atl. Operating Co., 509 F.3d 380 (7th Cir. 2007) .........................................................................4, 131, 151 Topps Co. v. Cadbury Stani S.A.I.C., 526 F.3d 63 (2d Cir. 2008) ............................................................................................313 Vol. 99 TMR 351 Toro Co. v. ToroHead, Inc., 61 U.S.P.Q.2d 1164 (T.T.A.B. 2001) ..............................................................................................16 TruePosition, Inc. v. Andrew Corp., 507 F. Supp. 2d 447 (D. Del. 2007) .....................................................................................183 Trump Hotels & Casino Resorts, Inc. v. Mirage Resorts, Inc., 140 F.3d 478 (3d Cir. 1998) ........................................................275 Ty, Inc. v. Softbelly’s, Inc., 517 F.3d 494 (7th Cir. 2008) ..... 122, 302 U.S. v. King Features Entm’t, Inc., 843 F.2d 394 (9th Cir. 1988)), reconsideration denied, 540 F. Supp. 2d 1176 (D. Or. 2008) ............................................................................................229 U.S. v. Lozano, 490 F.3d 1317 (11th Cir. 2007) ............................ 204 United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918) .....................................................................................81, 130 United Indus. v. Clorox Co., 140 F.3d 1175 (8th Cir. 1998) ......... 169 Univ. Book Store v. Univ. of Wisc. Board of Regents, 37 U.S.P.Q.2d 1385 (T.T.A.B. 1994) ....................................................8 Univ. of Kan. v. Sinks, 565 F. Supp. 2d 1216 (D. Kan. 2008) ........................................... 2, 74, 83, 101, 113, 118, 126, 149, 151, 155, 202, 208, 213, 218, 222, 248 Universal Furniture Int’l Inc. v. Collezione Europa USA Inc., 84 U.S.P.Q.2d 1956 (M.D.N.C. 2007) .....................................2, 165 Universal Tube & Rollform Equip. Corp. v. YouTube Inc., 504 F. Supp. 2d 260 (N.D. Ohio 2007)................................. 73, 199, 307 Utah Lighthouse Ministry v. Found. for Apologetic Info. & Research, 527 F.3d 1045 (10th Cir. 2008) .... 84, 105, 113, 134, 186 V Secret Catalogue, Inc. v. Moseley, 558 F. Supp. 2d 734 (W.D. Ky. 2008) .................................................... 5, 92, 150, 153, 155, 159 Vacco v. Operation Rescue Nat’l, 80 F.3d 64 (2d Cir. 1996) ......... 241 Vail Assocs. v. Vend-Tel-Co., Ltd., 516 F.3d 853 (10th Cir. 2008) ....................................................................................113, 141 In re Valenite, Inc., 84 U.S.P.Q.2d 1346 (T.T.A.B. 2007) ......... 21, 25 Venture Tape Corp. v. McGills Glass Warehouse, 540 F.3d 56 (1st Cir. 2008) .................................. 3, 109, 119, 251, 256, 262, 297 Vibe Records Inc. v. Vibe Media Group LLC, 88 U.S.P.Q.2d 1280 (T.T.A.B. 2008) .......................................................................6 Visa Int’l Serv. Ass’n v. JSL Corp., 533 F. Supp. 2d 1089 (D. 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2009 US Annual Review - International Trademark Association

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