Trademark Law Briefs

Spin Master, Ltd. v. Zobmondo Entertainment, LLC, 2011 U.S.Dist. LEXIS 25261

This is an exciting sequel to the Would You Rather… 9th Cir. decision I wrote about last year.  In that case, the 9th Cir. said the district court erred in granting a cancellation based on descriptiveness.  This meant defendant’s other grounds for summary judgment- fraud on the PTO- needed to be considered after all.

This decision illustrates just how difficult it is to prove a subjective intent to mislead the PTO in an application (though, to be fair, this didn’t appear to be a particularly close case based on the facts the district court lays out). 

Bauer Bros. LLC v. Nike, Inc., 2011 U.S.Dist. LEXIS 23025 (S.D. Cal. 2011)

Bauer Bros. sued Nike for infringement based on the phrase “Don’t Tread on Me” on various clothing items.  Nike counter-claimed that Bauer fraudulently obtained its registration by claiming use on a number of items it hadn’t actually sold with the mark and for claiming Bauer had exclusive right to use the mark while knowing the mark had historical significance and had been used by third-parties.  Bauer sought to dismiss the fraud based counter-claims based on failure to specifically plead facts showing fraud.

Because Nike claimed it had done an investigation on the items and named several that it believed were not actually in use, the claim was plead sufficiently.

However, not so the claims about the exclusive right to use the mark.  Nike said, rather generically, “Bauer was fully aware of the historical significance and origin of the phrase,” and “Bauer was fully wawre that third parties had used and were using the phrase… on apparel.”  First, the Nike faile to offer any authority for the proposition that a trademark with historical signficance is not subject to registration (further more, it didn’t allege with particularity what that historical signficance was).  Second, Nike failed to specifically naem any specific person or entity who previously used the prhase on apparel or that the other user had rights superio to Bauer that Bauer knew of.

City of Carlsbad v. Shah, 2009 US Dist.  96890 (SD Cal 2009)

Plaintiffs announced the name “The Crossings at Carlsbad” for a new community golf course in October 2006.  On November 21, 2006, Defendant registered a number of domain names featuring variations on “the Crossings at Carlsbad.”  Beginning on November 30, 2006 he filed for several intent to use trademark applications in the name for golf related items and a golf course itself.  Plaintiff’s filed for trademarks in the name and associated logo beginning on July 16, 2007.  Plaintiffs filed a partial motion for summary judgment for a declaratory judgment regarding trademark rights.  The court granted the motion for summary judgment and authorized the USPTO to register Plaintiffs’ pending applications and deny registration of Defendant’s applications. (more…)