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Trademark 2001 Application to Register Color Blue as Trademark for Rental Car Services Rejected on Procedural Ground -- In re Thrifty, Inc. 01-1111 -- On Dec. 13 the Federal Circuit upheld a USPTO decision refusing to register a mark used by rental car company Thrifty, Inc. Thrifty's original application was for "the color blue" applied to a building, such as a rental car center. The USPTO found that Thrifty, impermissibly, materially amended the original application to cover a wide variety of objects in addition to a building. The Federal Circuit found substantial evidence to support the board's findings. The court noted that consumers may recognize color as distinctive "with respect to certain objects (e.g.,blue vehicle rental centers), but not for other objects (e.g., blue rental cars). " Subject Matter of Patent Claim for Chemicals Filter May Have Been Disclaimed in USPTO -- Pall Corp. v. PTI Technologies Inc. 00-1203,-1215 -- In an opinion by Judge Dyk on Aug. 7, the Federal Circuit remanded the case to the lower court to consider whether Pall disclaimed subject matter during prosecution in the USPTO that its patent otherwise would cover. The Pall patent is for a device that filters high-temperature corrosive acids used in etching semiconductor chips. In the USPTO, Pall submitted an information disclosure statement asserting that subject matter claimed in its patent is not disclosed in a one-page PTI advertising brochure describing a device sold under the same trademark as the PTI device that Pall alleges is infringing. The Federal Circuit said the issue is what one of ordinary skill in the art would believe to have been disclosed by the brochure. If the brochure disclosed the allegedly infringing device, Pall disclaimed it. "Venice Collection" Trademark Unregistrable for Products Traditionally Made in Venice, Italy and Related Products -- In re Save Venice New York, Inc. 00-1450 -- In an opinion by Judge Gajarsa on July 27, the Federal Circuit upheld a USPTO refusal to register a mark including the phrase "The Venice Collection"and other components connected with Venice, Italy. The USPTO found the mark when used with the applicant's goods is "primarily geographically deceptively misdescriptive." The Federal Circuit applied a two-part test: (1) Whether the mark's primary significance is a generally known geographic location, and (2) Whether consumers would reasonably believe the applicant's goods are connected with the geographic location, when in fact they are not. The Federal Circuit decided the USPTO relied on substantial evidence in finding the mark is primarily geographic and consumers viewing the mark would mistakenly believe the goods originated in Venice, Italy. The mark is unregistrable for traditional Venetian goods and related goods or services the public is likely to believe originate there. Highway Contractor's Patent and Trademark Suit Against Florida Barred by Sovereign Immunity Doctrine -- State Contracting & Engineering Corp. v. State of Florida Dept. of Transportation 00-1434 -- On July 20 in an opinion by Judge Dyk the Federal Circuit upheld a ruling that Florida is immune from State Contracting's suit under federal patent and trademark laws. State Contracting, a successful bidder on a highway construction project, sued for patent infringement when the state and other contractors used its improved sound wall invention in other contracts. The suit also includes a federal trademark act claim for misrepresentation by the state that the invention is unpatented. The Federal Circuit decided the suit against the state is barred by 11th amendment sovereign immunity as interpreted by the U.S. Supreme Court in the 1999 Florida Prepaid and College Savings Bank cases. The state did not waive its sovereign immunity by filing a counterclaim in 1998, because at that time the state did not have a reasonable expectation the sovereign immunity defense would prevail. However, the Federal Circuit overturned the lower court's interpretation that State Contracting's agreement with the state gave a patent license to private contractors under future contracts. Challenger That Delayed 27 Years Cannot Attack LEMANS Tire Trademark For Suggesting False Connection -- Bridgestone/Firestone Research, Inc. v. Automobile Club de L'Ouest de la France 00-1036 -- On April 6 the Federal Circuit overruled a USPTO decision canceling Bridgestone/Firestone's registration of the trademark LEMANS for tires. The Club is attempting to cancel the mark under Trademark Act section 2(a), on the ground the mark falsely suggests a connection with the Club and its sponsorship of the famed Le Mans automobile race. The Federal Circuit ruled the petition to cancel is barred by laches. The Club unduly delayed, since the mark was registered for 27 years before the Club filed to cancel and the Club was constructively on notice of the mark. Bridgestone/Firestone was prejudiced because of its investment over the lengthy period. The USPTO made an error in law in requiring specific evidence of "reliance" for a laches defense. Term "1-888-M-A-T-R-E-S-S" Is Not Generic and Registration of Equivalent Trademark Shows It Has Acquired Distinctiveness -- In re Dial-A-Mattress Operating Corp. 00-1197 -- On Feb. 13 the Federal Circuit overruled the USPTO's refusal to register the term "1-888-M-A-T-R-E-S-S" as a trademark for telephone shop-at-home retail services in the field of mattresses. The Federal Circuit first decided the USPTO applied the wrong test in declaring the term generic. The rule that a term is generic if it is composed of a combination of terms that themselves are generic does not apply if the term is more akin to a phrase than to a compound word, the court said. Instead the term must be judged as a whole. The court then decided the USPTO was incorrect in its alternative holding that Dial-A- Mattress failed to present insufficient evidence of acquired distinctiveness to permit registration of the term. The court held "1-888-M-A-T-R-E-S-S" is the legal equivalent of a mark already registered by Dial-A-Mattress, "(212) M-A-T- T-R-E-S," and the company is entitled to rely on the latter mark to show acquired distinctiveness. Hoover Fails to Stop Registration of Trademark "The First Name in Floorcare" -- Hoover Co. v. Royal Appliance Mfg. Co. 00-1219 -- On Jan. 31 the Federal Circuit upheld a USPTO decision in favor of Royal, whose application to register the vacuum cleaner trademark "The First Name in Floorcare" is opposed by Hoover. The Federal Circuit agreed substantial evidence supports the conclusion that the mark is not likely to be confused with Hoover's unregistered slogan "Number One in Floorcare." Hoover's slogan is a generally laudatory, descriptive phrase and has not acquired distinctiveness, so Hoover does not have a trademark on which a likelihood of confusion claim can be based. The court declined to rule for the first time on appeal on whether **Royal's** slogan is a generally laudatory, descriptive phrase U. S. Olympic Committee Wins Contest Over Pan American -- U.S. Olympic Committee v. Toy Truck Lines, Inc. 00-1196 -- On Jan. 16 the Federal Circuit overruled a USPTO decision dismissing an opposition filed by the Olympic Committee in 1997 to Toy Trucks registration of the trademark Pan American for miniature trucks. The USPTO declined to consider the1998 Olympic and Amateur Sports Act, which was enacted after the opposition was filed, and found no likelihood of confusion with the Olympic Committees Pan American Games. The Federal Circuit said the USPTO must consider the 1998 law, which gives rights in Pan American without regard to likelihood of confusion. Cases must be decided in accordance with the law existing at the time of decision unless vested rights are affected by the change in law, which was not the case here since Toy Truck's application to register was based on intent to use. Confusion Likely Between French-Sounding Hair Care Product Trademark Trevive . . . and Tres . . . -- Han Beauty, Inc. v. Alberto-Culver Co. 00-1198 -- On Jan. 9 the Federal Circuit upheld a USPTO ruling that Han’s trademark TREVIVE NUTRIENTS FOR THE LIFE OF YOUR HAIR for hair care products is likely to be confused with Alberto-Culver’s TRES family of marks for hair care products, and therefore the Han mark cannot be registered in the USPTO. Alberto-Culver owns a number of marks with the TRES prefix that sound and look like French terms. Substantial evidence shows that both TRE and TRES in the context in which they are used by the parties will be perceived as French terms and pronounced 'Tray.' The Ultimate Bike Rack in Trademark -- Load Llama the Ultimate Bike Rack is a Descriptive Phrase-- In re Nett Designs, Inc. 00-1075 -- On Jan. 9 the Federal Circuit upheld a USPTO ruling that the phrase “the Ultimate Bike Rack” is descriptive and therefore must be disclaimed in the trademark “Load Llama the Ultimate Bike Rack,” which identifies bicycle racks and accessories. The USPTO relied on dictionary definitions of the word “ultimate” and concluded the phrase “the ultimate bike rack” is a laudatory descriptive phrase. The court decided the USPTO ruling was based on substantial evidence. The court found little persuasive value in other trademark registrations submitted to the USPTO containing the word “ultimate. 2000 Supreme Court Rules That Unregistered Product Design as Distinguished From Product Packaging Cannot Be Protected as Trademark Without Showing Acquired Distinctiveness— Wal-Mart Stores, Inc. v. Samara Brothers, Inc. 99-150—On March 22 the U.S. Supreme Court held Samara Brothers cannot protect the design of a line of children's clothing in an action for infringement of trade dress under section 43(a) of the Trademark Act without showing that the design has acquired secondary meaning —i.e., that the design's primary significance in the minds of the public is to identify the product's source rather than the product itself. The court said product design, like color, can never be inherently distinctive. In a unanimous opinion by Justice Scalia, the court distinguished between product design and product packaging, which can be inherently distinctive. The opinion explained that the court's 1992 decision in Two Pesos, Inc. v. Taco Cabana, Inc. does not compel a different result, because the restaurant decor at issue in that case was product packaging or akin to product packaging. "Fido Lay" Trademark for Dog Snacks May Be Confused With Famous "Frito-Lay" Trademark for Snack Foods—Recot, Inc. v. M.C. Becton 99-1291—On June 7 the Federal Circuit ruled that the USPTO made four errors when it decided Becton’s trademark “Fido Lay” for pet foods is not likely to be confused with Recot’s mark “Frito-Lay” for snack foods. (1) The USPTO, on the ground the products were not closely related, did not accord full weight to the fame of the Frito-Lay mark (Frito-Lay products enjoy more than a 50 percent share of the $12 billion domestic snack food market). (2) The USPTO did not consider evidence several companies produce both human foods and pet foods. (3) The USPTO did not give full weight to evidence the products are inexpensive and may be purchased on impulse. (4) The USPTO considered the appearance, sound and connotation of only parts of the marks—"Frito" and "Fido." Challenge to Trademark Not Barred by Judgment Against Firm Not “In Privity” With Challenger—International Nutrition Co. v. Horphag Research, Ltd. 99-1385—On July 27 the Federal Circuit overturned the USPTO’s dismissal of a petition by International Nutrition Corp. (INC) to cancel Horphag’s federal registration of the trademark Pycnogenol, for products made from plant extracts. The issue was whether INC was bound by a default judgment against the firm SCERPA, which challenged the same mark in the USPTO in 1992. The USPTO dismissal of INC’s petition was based on SCERPA’s 1994 transfer of rights to INC in a similar French mark. Since it was not clear that SCERPA transferred rights to INC in the disputed mark, however, the Federal Circuit concluded the USPTO did not make factual findings needed to establish INC was “in privity” with SCERPA and thus bound by the judgment against SCERPA. Trademark LASERSWING for Golf Clubs Likely to be Confused With LASER for Golf Clubs - - Tom Cunningham v. Laser Golf Corp. 99-1585 -- On Aug. 15 the Federal Circuit upheld a USPTO decision to cancel Cunningham's registration of the mark LASERSWING for golf clubs. Cunningham's product looks like a wood but is used by golfers to practice their swings with the aid of light-emitting diodes contained in the head. Laser Golf, owner of a registration of the mark LASER for golf clubs, asserted likelihood of confusion. The Federal Circuit agreed with the USPTO's conclusion of likelihood of confusion based on an analysis of factors in the classic 1973 Dupont opinion. Among other things, the Federal Circuit said (1) the USPTO is required to consider only those of the 13 Dupont factors for which evidence is presented; (2) differences between Cunningham's club and ordinary clubs are not probative, because the USPTO must look at the registration to determine the scope of goods covered and Cunningham's registration is for "golf clubs"; and (3) Cunningham's uses of color and specific fonts are not probative, because his registration is for the mark LASERSWING shown in a "typed drawing," not limited to the mark as actually used. Bar Petition to Cancel Trademark Registration in USPTO -- Jet, Inc. v. Sewage Aeration Systems 99-1518 -- On Aug. 23 the Federal Circuit overturned the USPTO’s dismissal of Jet’s petition to cancel SAS’s trademark registration. Both parties make sewage and waste-water treatment devices. Earlier a court had ruled that SAS’s use of AEROB-A-JET did not infringe Jet’s mark, JET, because the marks were not likely to be confused. Reasoning that Jet’s petition to cancel SAS’s mark involved the same claim, the USPTO dismissed the petition on the ground of res judicata, also known as “claim preclusion.” The Federal Circuit disagreed, declaring that a petition to cancel a mark is not based on the same factual allegations as a claim for infringement, and in addition noting that the infringement case did not involve a second Jet mark, JET AERATION. The Federal Circuit said that on remand the USPTO can consider “issue preclusion,” also known as collateral estoppel. Chief Judge Mayer dissented Earlier Decision of No Trademark Infringement Did Not Bar Petition to Cancel Trademark Registration in USPTO -- Jet, Inc. v. Sewage Aeration Systems 99-1518 -- On Aug. 23 the Federal Circuit overturned the USPTO’s dismissal of Jet’s petition to cancel SAS’s trademark registration. Both parties make sewage and waste-water treatment devices. Earlier a court had ruled that SAS’s use of AEROB-A-JET did not infringe Jet’s mark, JET, because the marks were not likely to be confused. Reasoning that Jet’s petition to cancel SAS’s mark involved the same claim, the USPTO dismissed the petition on the ground of res judicata, also known as “claim preclusion.” The Federal Circuit disagreed, declaring that a petition to cancel a mark is not based on the same factual allegations as a claim for infringement, and in addition noting that the infringement case did not involve a second Jet mark, JET AERATION. The Federal Circuit said that on remand the USPTO can consider “issue preclusion,” also known as collateral estoppel. Chief Judge Mayer dissented Trademark “On-Line Today” For Internet Connection Services is Likely to be Confused With “Online Today” for Internet Content Services -- On-Line Careline, Inc. v. America Online, Inc. 99-1432 -- On Oct. 10 the Federal Circuit upheld a USPTO decision that On-Line Careline’s mark “On-Line Today” for Internet connection services is likely to be confused with AOL’s mark “Online Today” used to identify Internet content, and therefore On-Line Careline’s mark cannot be federally registered. Applying the substantial evidence standard of review and the “Dupont” factors for determining likelihood of confusion, the Federal Circuit agreed confusion would be likely. The court rejected On-Line Careline arguments that services identified by the marks are dissimilar and channels of trade are different. The court also agreed that AOL’s mark had not been abandoned for lack of use; AOL’s use in an on-screen menu was use in accordance with its federal registration. 1999 Used Kubota Tractors Made for Japanese Market Infringe Kubota Trademark When Imported Into U.S. -- Gamut Trading Co. v. U.S. International Trade Commission 97-1414 -- On Dec. 22 the Federal Circuit upheld a ruling that Gamut infringed trademark rights of Kubota Tractor Corp. under section 337 of the Tariff Act of 1930. Gamut imports used tractors into the U.S. that are made by Kubota for the Japanese market. The tractors differ from those Kubota makes for the U.S. market in structural strength, speed, wheel-base and tread-width dimensions, absence of English-language warning and instructional labels, and absence of parts and service in the U.S. The court agreed the used tractors **differ materially,** which, the court said, is the basic issue in "gray market goods" cases. Gamut must affix a permanent, non-removable label alerting consumers to the nature of the tractors. "The Best Beer in America" Incapable of Functioning as a Trademark -- In re Boston Beer Co. 99-1123 -- On Dec. 7 the Federal Circuit upheld the USPTO's refusal to register the proposed mark "The Best Beer in America" for beer and ale. Boston Beer argued that the mark is registrable because it has acquired distinctiveness. Evidence included the fact that the beer received awards at beer competitions. The Federal Circuit concluded, however, that the phase is highly laudatory and descriptive of the product and nothing more than a claim of superiority. Indeed, the Federal Circuit said, the phrase is so highly laudatory and descriptive that it is incapable of functioning as a trademark. Registrability of Trademark NEW YORK WAYS GALLERY Not Salvaged by Disclaiming NEW YORK -- In re Wada 99-1160 -- On Oct. 20 the Federal Circuit upheld the USPTO's refusal to register the trademark NEW YORK WAYS GALLERY for leather goods. The court upheld the USPTO's factual determination that the mark is barred from registration because it is primarily geographically deceptively misdescriptive. Wada had disclaimed any exclusive rights to the term NEW YORK apart from its use within the composite mark. The court agreed with the USPTO, however, that after the NAFTA amendments to the Lanham Act the disclaimer of a geographic term should no longer salvage registrability of a primarily geographically deceptively misdescriptive mark. The court reasoned that the policy for such marks should be like that for deceptive marks and unlike that for marks containing generic terms, which can be registered with a disclaimer. Rust-Type Colors for Lighting Fixtures Might Be Entitled to Trademark Protection -- L.D. Kichler Co. v. Davoil, Inc. 98-1488 -- On Sept. 30 the Federal Circuit reversed a summary judgment that Kichler has no trademark rights in "rust-type" colors for electrical lighting fixtures. Rust-type colors are said to be color-compatible with many interior furnishings. The lower court decided the colors are "de jure functional" and therefore cannot be protected. However, the Federal Circuit remanded for a determination of whether rust-type "is one of a few colors that are uniquely superior for use in home decorating" and therefore not entitled to trademark protection. The appeals court noted that "mere taste or preference" cannot render a color de jure functional. Fact That "Society" and "Reproductive Medicine" Are Generic Does Not Make "Society for Reproductive Medicine" Generic -- In re The American Fertility Society 98-1540 -- On August 19 the Federal Circuit overturned a holding by the USPTO Trademark Trial and Appeal Board. Relying on evidence that "society" and "reproductive medicine" are generic, the USPTO had held that the phrase "Society for Reproductive Medicine" also is generic and therefore incapable of functioning as a trademark. The Federal Circuit, however, said the USPTO "cannot simply cite definitions and generic use of the constituent terms of a mark in lieu of conducting an inquiry into the meaning of the disputed phrase as a whole." The USPTO produced no evidence of the public's understanding of the phrase "Society for Reproductive Medicine" as a whole as it relates to services provided by the Society. Application to Register "Phantom" Trademark, Containing Placeholder for a Term That Changes, is Rejected - - In re International Flavors & Fragrances Inc. 98-1517 -- On July 20 the Federal Circuit upheld a ruling of the USPTO that International Flavors & Fragrances cannot register a "phantom" trademark such as "LIVING XXXX FLAVORS," in which XXXX is a placeholder serving to denote "a specific herb, fruit, plant or vegetable" such as STRAWBERRY or CILANTRO. The Federal Circuit agreed that applications seeking to register "phantom" marks violate the one-mark-per-registration requirement of the federal trademark act. Individual Has Standing to Oppose Registration of Trademarks by O.J. Simpson on Ground of Morality -- Ritchie v. Simpson 97-1371 -- On March 15 the Federal Circuit, overruling the USPTO, decided that a member of the public, William B. Ritchie of Concord, NH, has standing to oppose applications filed by O.J. Simpson to register the marks O.J. SIMPSON, O.J., and THE JUICE. Ritchie contends the marks are immoral or scandalous. The majority concluded that Ritchie meets the "real interest" test based on his allegation that his family values could be damaged by "marks that allegedly are synonymous with wife-beater and wife-murderer." In deciding that Ritchie has a "reasonable" belief of damages, the court noted that Ritchie claims he has petitions signed by people from all over the U.S. who agree with him. The majority said the issue is standing to oppose registration of the marks, and not Simpson's morals. Judge Newman dissented. 1998 Manufacturer of Statues Unable to Stop Purchaser From Registering Statue as Trademark -- Young v. AGB Corp. 98-1055 -- On August 17 the Federal Circuit dismissed Young's opposition to registration of AGB's trademark. Young, who manufactures large animal statues, sold a 20-foot-long statue of a steer to a steak restaurant owned by AGB, which used the statue for years to promote its restaurant services. Young sold identical statues, produced from the same mold, to other parties including a competing restaurant. AGB filed to register the statue as a service mark in the USPTO, and Young opposed. The Federal Circuit agreed that Young failed to cite any statutory ground in the Trademark Act of 1946, as amended, that would prevent registration. An allegation of "economic damage," without more, although sufficient to establish standing of the party, is insufficient to avoid dismissal of a trademark opposition for failure to state a claim. Data Processing System for Mutual Funds Cannot Not Be Denied Patent as Mathematical Algorithm or Business Method -- State Street Bank & Trust Co. v. Signature Financial Group, Inc. 96-1327 -- On July 23, in a very closely-watched case, the Federal Circuit reversed the lower court and declared that Signature's data processing system is a type of subject matter that can be patented. Identified by the registered trademark "Hub and Spoke," the system facilitates a structure in which mutual funds (Spokes) pool their assets in an investment portfolio (Hub) organized as a partnership. The system calculates totals including the true asset value of each Spoke. The Federal Circuit said the system is not a mathematical algorithm that is a mere abstract idea, because it produces "a useful, concrete and tangible result" -- a share price fixed for recording and reporting purposes. The Federal Circuit also rejected the alternative theory for invalidating the patent, the "business method" exception to statutory subject matter, stating flatly that there is no business method exception. Judge Wants USPTO to Explain Weight of Factors in Likelihood of Confusion of Trademarks -- Champagne Louis Roederer S.A. v. Delicato Vineyards 98-1032 -- On July 16 the Federal Circuit upheld a decision that Delicato's "Crystal Creek" mark for wine is not likely to be confused with Roederer's "Cristal" and "Cristal Champagne" marks for champagne. The court's short opinion accepted the USPTO's conclusion that dissimilarity in the appearance, sound, significance, and commercial impression of the marks meant no likelihood of confusion, even though the USPTO found that other "Dupont factors" supported Roederer's argument of likelihood of confusion -- same class of goods, same channels of trade, same or similar customers, and fact that Roederer's mark was a very strong indicator of origin for its champagne. In a lengthy concurring opinion, however, Judge Michel took the USPTO to task for failing to explain the weight given to the various factors. Canadian Trademark Abandoned in U.S. for Failure to Use in U.S. -- Rivard v. Linville -- On Jan. 8, in a case that has been in litigation for 6 ½ years, the Federal Circuit upheld a decision to cancel Rivard's registered mark ULTRACUTS. Rivard is a Canadian hairdresser who registered his mark in the U.S. in 1986, based on an earlier Canadian registration, without use in the U.S. In 1991 Linville petitioned to cancel the mark by proving no use for two years. (The statute now requires three years.) Two years of no use shifted the burden to Rivard to produce evidence that he intended to use in the U.S.
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