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). 

ProMex, LLC v. Hernandez, 2011 U.S.Dist. LEXIS 21832 (C.D. Cal. 2011)

This case is informative on what could happen when that settlement agreement is breached down the line.  After an initial infringement suit, plaintiff and defendant agreed that defendant could use its mark only in Southern California.  They also agreed plaintiff would abandon another unrelated registration.  Defendant sold outside Southern California so plaintiff sued for infringement and breach of contract.  Defendant said it didn’t have to perform because plaintiff never abandoned its registration. (more…)

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…)

Coach, Inc. v. Abner’s Fashion, et al., 2009 U.S. Dist. LEXIS 121761 (C.D. Cal. 2009)

The court granted summary judgment to Coach in a case of counterfeit goods.  The defendants were unable to raise any triable issue of fact that the goods were not infringing.

Ruiz Food Products v. Camino Real Foods, Inc., 2009 US Dist. LEXIS 105941 (E.D. Cal. 2009)

Plaintiff alleged that Defendant’s new packaging for burritos (sold in multi-burrito packages) infringed on its trade dress.  Plaintiff filed for a preliminary injunction.  The court compared the packaging in question and determined that a preliminary injunction was not warranted but invited Plaintiff to refile the motion if it discovered evidence of actual confusion or evidence of a higher the degree of care in purchasing of Mexican food. (more…)