Trademark Law Briefs

Lahoti v. Vericheck, Inc., 2011 U.S.App. LEXIS 3004 (9th Cir. 2011)

In an earlier case (586 F.3d 1190), the Court of Appeal affirmed a finding that Lahoti acted in bad faith as a cybersquatter when he registered vericheck.com.  However, the court remanded with instructions on how to determine whether a mark is suggestive or descriptive.  On remand, the district court again concluded the mark was suggestive.  Lahoti appealed.  The Court of Appeal affirmed the entire decision (including attorneys fees).

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…)