Trademark Law Briefs

Franklin Mint Company v. Manatt, Phelps & Phillips, LLP (2010) 184 Cal.App.4th 313

Court of Appeal says that the defendant lawfirm’s claims based on trademark rights in the name Princess Diana lacked probable cause under a malicious prosecution anaylsis because her name is so clearly descriptively associated with her as a person that the lawfirm should never have argued her name acted as a trademark for her charitable services.

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Zobmondo Entertainment, LLC v. Falls Media, LLC, 2010 USApp LEXIS 8559 (9th Cir. 2010)

I highly recommend READING THIS CASE- it is full of analysis on descriptive versus suggestive and the procedure and evidentiary presumptions at summary judgment.

The 9th circuit overturned the district court’s summary judgment in favor of Zobmondo which found as a matter of law “Would you rather…” was descriptive for board games and which cancelled Falls Media’s registered trademark.  The Court of Appeals held that in the light most favorable to Falls Media, there was a genuine issue of fact as to whether “Would you rather” was descriptive or suggestive under the imagination test and was likely suggestive under the “competitors’ needs” test. (more…)

CTF Development, Inc. v. Penta Hospitality, LLC, 2009 U.S. Dist. LEXIS 79757 (N.D. Cal. 2009)

After being sued by Plaintiff, Defendant started a TTAB action to cancel Plaintiff’s mark based on false statements in Plaintiff’s statement of use.  On Plaintiff’s motion, TTAB stayed its proceedings pending the district court outcome.  Defendant sought to stay the district court proceedings instead.  Because the TTAB proceedings were already stayed, the District Court denied the motion to at least allow discovery which would benefit either proceeding. (more…)

2007 US App LEXIS 29871 (9^th Cir 2007).  Decided December 28, 2007

Ruling: A trademark registration is prima facie evidence of the validity of a trademark and whether defendant has used the mark on the goods specified in the registration is irrelevant in establishing Plaintiff’s protectable interest.  If there is a protectable interest, the next question is whether Defendant’s use of the mark creates a likelihood of confusion. (more…)