SoCal IP Law Group

The SoCal IP Law Blog

Monthly Archives: May 2011

SoCal IP Institute :: May 23, 2011 :: Intent to Use a Mark and Reverse Confusion

We will be discussing two recent, relevant opinions in our weekly SoCal IP Institute meeting on Monday, May 23, 2011. The first deals with the sufficiency of a trademark applicant’s intent to use an applied-for mark. The second case involves a claim of reverse confusion. A brief synopsis of the cases is presented below.

SmithKlein Beecham Corp. v. Omnisource DDS LLC, 97 U.S.P.Q.2d 1300 (T.T.A.B. December 10, 2010) (attached). SmithKlein opposed the registration of the AQUAJETT trademark by Omnisource on the basis that Omnisource lacked intent to use the mark on the goods when it filed the application. Omnisource was unable to produce evidence of intent to use other than the use of the word in patents directed to the goods and minutes from annual meetings with vague references to the development of products of the type identified. In view of the lack of evidence of intent to use, the TTAB found that Omnisource lacked the requisite intent.

THOIP v. The Walt Disney Co., 08 Civ. 7823 (S.D.N.Y. May 10, 2011) (attached). THOIP, owners of several unregistered trademarks in the “Little Miss” line such as the “Little Miss Trouble” shirt shown below, sued Disney for trademark infringement based upon its “Little Miss Disney” and “Miss Disney” lines of clothing. An example of Disney’s “Little Miss Perfect” t-shirt is shown below.

Both parties moved for summary judgment on the issue of reverse confusion. Disney moved to exclude a rather complex THOIP survey that was proffered in an effort to demonstrate so-called “reverse confusion” between the junior user (Disney) and the senior user (THOIP). The district court agreed with Disney and excluded the survey as flawed. First, the survey failed to be based upon market conditions likely to be found in reality. There was almost no evidence that these shirts would ever be sold side-by-side, but they were presented that way for the survey. Second, the survey failed to have an adequate “control” group because the alleged “control” group shirts were more unlike than like the Disney shirts. Third, the survey conflated confusion between two sources with mere confusion as to the source. For example, if a respondent indicated that he or she believed that two shirts, one by Disney and another by THOIP, were “put out” by the “same company”, he counted that as confusion, even without a mention of Disney. Fourth, the survey opened with a display of five sets of products, only two of which were T-shirts, either Little Miss or Miss Disney. In this context, the two products were clearly open to comparison. The survey was ruled inadmissible.

In response to the summary judgment motions, the court found that THOIP failed to show that its marks would be likely to become associated with those of Disney. Furthermore, THOIP failed to show actual confusion, after being invited by the court to do so, through the use of the flawed and excluded survey. In view of an earlier decision finding a close balance of the factors associated with the reverse confusion claim and the addition of two factors favoring Disney, the court concluded that reverse confusion could not be found and dismissed the case.

All are invited to join us in our discussion of these cases during the SoCal IP Institute meeting on Monday, May 23, 2011 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Amanda Jones by 9 am Monday morning.

Advertisements

SoCal IP Institute :: May 16, 2011 :: Ethics MCLE :: Unintentional Abandonment and Failure to Inform the Client of Full Scope of Settlement Agreement

We will be discussing two recent, intellectual property and ethics-related opinions in our weekly SoCal IP Institute meeting on Monday, May 16, 2011.  The first case pertains to unintentional delay and failing to inform the client of the status of pending applications.  The second case hinges on a client’s failure to apprehend the full scope of a settlement agreement and the attorney’s alleged failure to apprise the client of the full scope.  A brief synopsis of the cases is presented below.

Aristocrat Tech., Australia Pty. Ltd. v. Int’l. Game Tech., 2011 U.S. Dist LEXIS 48693 (N.D. Cal. May 6, 2011) (attached).  Aristocrat’s asserted patent was abandoned during the course of prosecution.  Int’l Game asserted inequitable conduct and all other issues were stayed while this issue was considered.  It came to light that Mr. Islam, the patent attorney for Aristocrat in the U.S. had failed to properly file the application claiming priority to a PCT application.  He was allegedly unaware of the abandonment, then transferred firms all the while failing to inform Aristocrat of the status of the application.  It was eventually revived and proceeded to issuance.

The court determined that the petitions to revive were not deceitful because the delay was unintentional, at least as to Aristocrat itself.  In this way, the petition to revive for “unintentional” delay was not false.  Thus, the court could not find any inequitable conduct on the part of Aristocrat.

Viking Corp. v. Van Dyck, 2011 Mich. App. LEXIS 612 (Mich. App. April 5, 2011) (attached).  Viking Corp. was sued by Central Sprinkler Company in 2003.  That suit eventually resulted in a settlement including a license to all patents claiming priority to the parent patent of the asserted group of patents.  The settlement agreement did not include Central’s parent company, Tyco.  Later, Tyco sued Viking separately on different patents.  This suit also resulted in a settlement.

Viking then filed a malpractice suit against their attorneys in the first case alleging that they failed to inform them that Tyco was not included in the original settlement agreement.  The appeals court here affirmed the lower court’s decision that malpractice was not present for a number of reasons.  First, there is a general presumption that a party to an agreement cannot later argue that it did not understand the agreement.  Second, even if they had known that they were not licensed as to Tyco, Viking failed to demonstrate that the failure to include Tyco in the settlement agreement was the proximate cause of their damage.

All are invited to join us in our discussion of these cases during the SoCal IP Institute meeting on Monday, May 16, 2011 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE ethics credit. If you will be joining us, please RSVP to Amanda Jones by 9 am Monday morning.

SoCal IP Institute :: May 9, 2011 :: False Marking Strikes Out and a Reaffirmation of Implied Contractual Protection for Movie Ideas

We will be discussing two recent, relevant opinions in our weekly SoCal IP Institute meeting on Monday, May 9, 2011.  The first case further develops the growing false marking jurisprudence.  The second case addresses the situation in which a movie production company uses an individual’s idea for a movie but fails to pay.  A brief synopsis of the cases is presented below.

Juniper Networks Inc. v. Shipley, 2010–1327 (Fed. Cir. April 29, 2011) (attached).  Mr. Shipley was inventor of two patents related to a “dynamic firewall”.  Mr. Shipley later assigned these patents to an unrelated third party who sued Juniper Networks for infringement.  Juniper Networks brought a qui tam action for a judgement of false marking of the patents based upon statements made on Mr. Shipley’s website from 2000 to the present regarding the systems covered by the patents.  Namely, Juniper Networks alleged that the indication on Shipley’s website that software embodying the patents was “in progress” of being created was a “marking” of the patents.  When Mr. Shipley’s hard drive crashed in 1999 losing the only known embodiment of those firewall products, Juniper Networks alleged that those markings became false when Mr. Shipley failed to remove them from his site.

Mr. Shipley moved to dismiss for failure to state a claim.  The district court granted the motion without leave to amend.  Juniper Networks appealed.  The Federal Circuit rejected Juniper Networks’ various assertions and affirmed the district court.  In particular, the Federal Circuit affirmed the district court’s decision that the alleged markings did not indicate that the website itself was protected by the software, that the district court need not consider other aspects of the false marking test when one element is not satisfied and that the proper standard of review under 12(b)(6) was applied.  The Federal Circuit also affirmed the district court’s dismissal without leave to amend because it was clear that the complaint could not be saved by any amendment.

Montz v. Pilgrim Films & Television, Inc., 08-56954 (9th Cir. May 4, 2011) (attached).  Larry Montz envisioned a television series following a group of paranormal investigators to real-world locations searching for confirmation of paranormal activity.  From 1996 to 2003 Mr. Montz pitched his idea to various television production companies.  In 2006, Mr. Montz sued the plaintiffs in this case after they began production and airing of the show Ghost Hunters on the Sci-Fi Channel.  Mr. Montz claimed copyright infringement and breach of an implied contract on the basis of his prior disclosure of the concept to the plaintiffs.

The District court dismissed the claims as preempted by Federal Copyright law and, absent a license, the plaintiffs were not under any obligation to pay for the concept.  The en banc panel of the 9th Circuit reversed concluding that copyright law did not preempt Mr. Montz claim for an implied-in-fact contract under long-standing California Supreme Court precedent in Desney v. Wilder, 299 P.2d 257 (Cal. 1956).  As a result, the case was remanded to the district court for further proceedings.

All are invited to join us in our discussion of these cases during the SoCal IP Institute meeting on Monday, May 9, 2011 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Amanda Jones by 9 am Monday morning.