Trademark Law Briefs

Collagen Nutraceuticals v. Neocell Corp., 2010 U.S. Dist. LEXIS 80216 (S.D. Cal. 2010)

I have to read between the lines a little to describe the procedural background.  It appears that the owners of the defendant corporation (Neocell), as individual defendants, filed a summary judgment motion, presumably on the grounds that only Neocell could be held liable for trademark infringement.  Collagen then asked the motion be denied to give Collagen further time to conduct discovery regarding the defendants’ positions at Neocell, and defendants’ knowledge of Plaintiff’s cease and desist letter and other infringing activities.  The court granted Collagen’s motion and denied the summary judgment motion (without prejudice) to allow Collagen to do discovery.  The court noted these facts could defeat summary judgment if they showed that the defendants orchestrated Neocell’s infringing activities or if they established alter ego liability.  Collagen showed that the facts likely existed and could be uncovered through discovery.  Finally, Collagen had only had two months to complete discovery at the time of the filing of the motion for summary judgment.

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…)

Value Selling Associates, LLC, et al. v. Temple, 2009 U.S. Dist. LEXIS 104174 (S.D. Cal. 2009)

Defendant sold its business to Plaintiff including all intellectual property rights and entered into a consulting agreement with Plaintiff.  The consulting arrangement was later terminated with a settlement agreement.  All agreements contained clauses stating that any dispute arising under or related to the agreement would be submitted to arbitration.  The Court ruled that trademark infringement claims for intellectual property that was part of the sale of the business related to the agreements and were therefore subject to the arbitration clauses. (more…)

ATM Expresss, Inc. v. ATM Express, Inc, 2009 U.S. Dist. LEXIS 83756 (S.D. Ca. 2009)

Plaintiff began using name in 1997.  Defendant began using name in 1999.  Plaintiff learned of Defendant’s use in 2001, filed for trademark in 2003, and sued defendant in 2007.  Court ruled in favor of Defendant’s Motion for Summary Judgment based on its laches defense. (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…)