False Advertising
Fourth Circuit
Foster v. Wintergreen Real Estate Company
2008-2356
USDC WD Virginia
Did the district court err when it dismissed plaintiff real estate investors’ complaint for lack of standing to sue a real estate agency on false advertising claims pursuant to 15 U.S.C. § 1125(a) based upon the court’s determination that plaintiffs were mere consumers and not competitors as required by Made in the USA Found. v. Phillips Foods, Inc., 365 F.3d 278 (4th Cir. 2004)?
Trade Identity
Federal Circuit
University of South Carolina v. University of Southern California
2009-1064
Trademark Trial and Appeal Board
Was the Trademark Trial and Appeal Board correct to decide on summary judgment that a “SC” logo registered for apparel by the University of Southern California bars the University of South Carolina from registering a separate “SC” logo on likelihood of confusion grounds and, further, that the latter party’s cancellation counterclaim alleging priority could not sustain?
University of Southern California Logo
University of South Carolina Logo
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Trade Identity
First Circuit
Great Clips, Inc. v. Hair Cuttery of Greater Boston, LLC
2009-1376
USDC Massachusetts
Given summary judgment proceedings on a purported settlement agreement in respect of Lanham Act claims, did one party have superior service mark rights over the other concerning dueling priority to GREAT CLIPS versus GREAT CUTS for services relating to hair cutting services pursuant to 15 U.S.C. §§ 1114(1), 1125(a), (c) (2006) and under Mass. Gen. Laws chs. 93A, 110H (2009)?
Trade Identity
Federal Circuit
In re Michael Sones
2009-1140
Trademark Trial and Appeal Board
Did the Trademark Trial and Appeal Board correctly apply Trademark Manual of Examining Procedure § 904.06(a)-(b) (4th ed. 2005) in support of its view that a website capture specimen submitted to evidence use in commerce had failed to show a picture of the goods in close proximity to the trademark ONE NATION UNDER GOD for charity bracelets sold online?
Specimen
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Trade Identity
Forum-shopping
Sixth Circuit
Medison America, Inc. v. Preferred Medical Systems, LLC
2007-6470, 2008-5325
USDC WD Tennessee
On summary judgment, did the district court err by awarding defendant its litigation costs and dismissing the Korean plaintiff’s Lanham Act, 15 U.S.C. § 1125(a)(1), action which alleged defendant falsely told prospective customers in Alabama, Georgia, Mississippi and Tennessee that plaintiff was unable to service its ultrasound equipment due to bankruptcy where, after twenty-two months of litigation, plaintiff had filed a substantially identical action in Tennessee state court and then attempted to amend its complaint to strip the district court of federal jurisdiction? (J. Kethledge opinion)
Trade Identity
Second Circuit
Starbucks Corp. v. Wolfe’s Borough Coffee, Inc.
2008-3331
USDC SD New York
Do the defendant’s unregistered trademarks CHARBUCKS BLEND and MISTER CHARBUCKS for very dark roasted coffee products infringe, dilute by blurring or otherwise violate the trade identity rights of plaintiff global coffee chain under the Lanham Act, 15 U.S.C. §§ 1114(1), 1125 and 1127, New York Gen. Bus. Law § 360-l and New York common law?
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Trade Identity
Claim Preclusion
Federal Circuit
American Rice, Inc. v. Dunmore Properties S.A.
2009-1313
Trademark Trial and Appeal Board
Was the same set of pertinent transactional facts at question thus triggering claim preclusion where the Trademark Trial and Appeal Board dismissed a 2007 petition to cancel, which alleged likelihood of confusion, dilution and fraud in procurement, concerning a federal trademark registration on BINT ALARAB for rice and the Office records disclose a 2003 cancellation proceeding that had been brought by the same petitioner and later dismissed with prejudice?
Trade Identity
Illinois Appellate Court, First District, Fifth Division
Jim Mullen Charitable Foundation v. World Ability Federation, NFP
1-07-2505
Circuit Court of Cook County
Was summary judgment in favor of defendant’s jus tertii defense properly granted where plaintiff nonprofit organization had obtained federal and state service mark registrations for NEW FREEDOM AWARDS in connection with fundraising on behalf of disabled persons, assigned title to the United States Department of Labor, licensed-back under an exclusive arrangement and then sued defendant on various trade identity and unfair competition claims that were based on rights plaintiff allegedly holds to NEW FREEDOM AWARDS?
Trade Identity
Federal Circuit
In re 1800Mattress.com IP, LLC
2009-1188
Trademark Trial and Appeal Board
Is the purported service mark MATTRESS.COM unregistrable as generic under 15 U.S.C. § 1091(c) for “online retail store services in the field of mattresses, beds, and bedding” given the two-step genus of goods or services inquiry set forth at H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987 (Fed. Cir. 1986)?
Trade Identity
Federal Circuit
The Cold War Museum, Inc. v. Cold War Air Museum, Inc.
2009-1172
Trademark Trial and Appeal Board
In view of British Seagull Ltd. v. Brunswick Corp., 28 USPQ2d 1197 (TTAB 1990) and 37 C.F.R. § 2.122(b), as well as the presumption of validity for issued registrations, was registrant in a cancellation proceeding required to formally resubmit evidence of acquired distinctiveness during the proceeding to avoid cancellation on 15 U.S.C. § 1052(e)(1) grounds given its service mark THE COLD WAR MUSEUM was only granted registration after registrant had provided the Office with substantial evidence showing five years of exclusive and continuous use in commerce under Section 2(f) due to the mark’s acknowledged lack of inherent distinctiveness?
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