Justia U.S. Federal Circuit Court of Appeals Opinion Summaries

Berger manufactures, imports, and sells watches, clocks, and personal care products. It filed an intent-to-use application at the Patent and Trademark Office, to register the mark “iWatch” for 30 different goods in the general categories: watches, clocks, and goods related to watches or clocks. Berger declared “a bona fide intention to use or use through [Berger’s] related company or licensee the mark in commerce on or in connection with the identified goods and/or services.” The PTO approved the application for publication. Swatch filed an opposition, claiming that “iWatch” is confusingly similar to its mark, “Swatch,” and that Berger lacked a bona fide intent to use the mark in commerce (15 U.S.C. 1051(b)(1)). The Trademark Trial and Appeal Board considered the testimony of Berger’s owner and CEO that he did not expect the iWatch mark to be used for clocks and personal care products. His paralegal testified that she was told that the list was intended to “leave all doors open.” The Board concluded that Berger lacked intent to use the mark on clocks and related goods and lacked a genuine plan to commercialize the mark on watches, but only intended to reserve a right in the mark. The Federal Circuit affirmed, finding the conclusion supported by substantial evidence. View "M.Z. Berger & Co., Inc. v. Swtch AG" on Justia Law

A jury found that Samsung smartphones infringed and diluted Apple’s patents and trade dresses amd awarded Apple $290,456,793. The Federal Circuit affirmed the verdict on the design patent infringements, the validity of two utility patent claims, and the damages awarded for the design and utility patent infringements, but reversed findings that the asserted trade dresses are protectable. Apple claimed elements from its iPhone 3G and 3GS products to define an asserted unregistered trade dress: a rectangular product with four evenly rounded corners; a flat, clear surface covering the front of the product; a display screen under the clear surface; substantial black borders above and below the display screen and narrower black borders on either side of the screen; and when the device is on, a row of small dots on the display screen, a matrix of colorful square icons with evenly rounded corners within the display screen, and an unchanging bottom dock of colorful square icons with evenly rounded corners set off from the display’s other icons. The registered trade dress claims the design details in each of the 16 icons on the iPhone’s home screen framed by the iPhone’s rounded-rectangular shape with silver edges and a black background. View "Apple, Inc. v. Samsung Elecs. Co., Inc." on Justia Law

PV applied to register PRETZEL CRISPS in standard character format for “pretzels” on an intent-to-use basis under the Lanham Act, 15 U.S.C. 1051. The trademark examiner refused registration on the Principal Register, finding the proposed mark merely descriptive. PV: amended its identification of goods to “pretzel crackers;” disclaimed the exclusive right to use “pretzel” apart from the mark as a whole; and obtained registration on the Supplemental Register. Years later, PV again sought to register PRETZEL CRISPS on the Principal Register, identifying October, 2004 as its first use of the mark in commerce, disclaiming the exclusive right to use the term “pretzel” apart from the mark as shown, and claiming acquired distinctiveness in the mark as a whole. Frito-Lay filed opposition, arguing that the term PRETZEL CRISPS is generic for pretzel crackers and not registrable and that PRETZEL CRISPS is highly descriptive of a type of cracker product and has not acquired distinctiveness. Frito-Lay also moved to cancel the supplemental registration. The Trademark Trial and Appeal Board granted the petition for cancellation, finding that “pretzel crisps” was a compound term, not a phrase, and was generic. The Federal Circuit vacated: the Board overlooked or disregarded a genericness survey as to which it apparently found no flaw and applied the incorrect legal standard in assessing whether the term was generic. View "Princeton Vanguard, LLC v. Frito-Lay of N. Am., Inc." on Justia Law

Tam, the “front man” for Asian-American dance rock band The Slants, filed the 263 application, seeking to register the mark THE SLANTS for “Entertainment, namely, live performances by a musical band.” Tam attached specimens featuring the band name set against Asian motifs. The examining attorney found the mark disparaging to people of Asian descent under 15 U.S.C. 1052(a) and refused to register it. The Trademark Trial and Appeal Board dismissed for failure to file a brief and the application was deemed abandoned. Tam then filed the 044 application, seeking to register the mark THE SLANTS for identical services as in the 263 application. In the 044 application, Tam claims use of the mark since 2006. Specimens attached to the 044 application do not contain Asian motifs. The examining attorney again found the mark THE SLANTS disparaging and declined to register it. The Board affirmed, stating that “it is abundantly clear from the record not only that THE SLANTS . . . would have the ‘likely meaning’ of people of Asian descent but also that such meaning has been so perceived and has prompted significant responses by prospective attendees or hosts of the band’s performances.” The Federal Circuit affirmed. View "In re: Tam" on Justia Law

TriVita filed trademark application Serial No. 77/658,158 to register the mark NOPALEA on the Principal Register for dietary and nutritional supplements “containing, in whole or in substantial part, nopal juice.” The examiner rejected the application under section 2(e)(1) of the Lanham Act as “descriptive of a feature of applicant’s goods on the grounds that applicant’s products contain nopal which is derived from an [ex]tract of the nopalea plant.” The Trademark Trial and Appeal Board and the Federal Circuit affirmed, rejecting an argument that “nopalea plant” is not a term used in the food industry, and that the term is not descriptive because TriVita’s products contain extracts from the Opunti genus of nopal cactus, not the Nopalea genus. Various websites show Nopalea as the name of a genus of cactus used in food and supplements. Some of TriVita’s affiliates explicitly state on their website that TriVita’s products were derived from the Nopalea cactus. Consumers may well assume, as do some of TriVita’s affiliates, that, as a characteristic of nopal juice, TriVita’s goods derive from genus nopalea. View "In re: Trivita, Inc." on Justia Law

In May 2008, Couture applied to register the service mark PLAYDOM under Lanham Act, 15 U.S.C. 1051(a), submitting a “[s]creen capture of [a] website offering Entertainment Services in commerce.” His website, www.playdominc.com, then included only a single page, stating: “[w]elcome to PlaydomInc.com. We are proud to offer writing and production services for motion picture film, television, and new media. Please feel free to contact us if you are interested: playdominc@gmail.com,” with the notice: “Website Under Construction.” No services under the mark were provided until 2010. The PLAYDOM mark was registered by the U.S. Patent and Trademark Office in January 2009. On February 9, 2009, Playdom, Inc. applied to register the identical mark. The registered mark was cited as a ground for rejecting the application. Playdom, Inc. sought to cancel the registration of Couture’s mark as void ab initio because Couturehad not used the mark in commerce as of the date of the application. The Board granted cancellation, stating that Couture “had not rendered his services as of the filing date of his application” because he had “merely posted a website advertising his readiness, willingness and ability to render said services.” The Federal Circuit affirmed. View "Couture v. Playdom, Inc." on Justia Law

Newbridge, headquartered in Newbridge, Ireland, designs, manufactures and sells housewares and silverware around the world under the mark NEWBRIDGE HOME. Newbridge designs its products in Newbridge, Ireland, and manufactures someof its products there. In the U.S. its products are available for sale through its website and through retail outlets that feature products from Ireland. The NEWBRIDGE HOME mark is the subject of an International Registration, which was filed through the International Bureau of the World Intellectual Property Organization. Newbridge sought protection of the mark pursuant to the Madrid Agreement and Madrid Protocol, under which the U.S. Patent and Trademark Office (PTO) examines international registrations for compliance with U.S. law, 15 U.S.C. 1141. Newbridge disclaimed the word HOME apart from the mark as a whole in the application. It sought registration for listed items of silverware, jewelry, desk items and kitchenware. The Trademark Examiner refused to register the mark as being primarily geographically descriptive. The Trademark Trial and Appeal Board affirmed. The Federal Circuit reversed. The evidence as a whole suggests that Newbridge, Ireland, is not generally known; to the relevant public the mark NEWBRIDGE is not primarily geographically descriptive of the goods, which is what matters. View "In re: Newbridge Cutlery Co." on Justia Law

St. Helena conducts a 10-day residential health improvement program at its California in-patient facility. St. Helena applied to the U.S. Patent and Trademark Office to register the mark “TAKETEN,” identifying the service as “[h]ealth care services, namely, evaluating weight and lifestyle health and implementing weight and lifestyle health improvement plans in a hospital-based residential program” in class 44. The examiner refused to register the mark, citing likelihood of confusion with the “TAKE 10!” mark shown in the 657 Registration and commonly owned U.S. Registration 182 for the mark “TAKE 10! (and Design). Both cited registrations are for “printed manuals, posters, stickers, activity cards and educational worksheets dealing with physical activity and physical fitness” in class 16. The registration for “TAKE 10! (and Design)” also identifies goods in class 9: “pre-recorded videocassettes featuring physical activity and physical fitness promotion programs.” The Trademark Trial and Appeal Board affirmed under 15 U.S.C. 1052(d). The Federal Circuit reversed, agreeing with the Board’s assessment of the respective marks themselves, but holding that substantial evidence did not support the denial based on the 657 Registration, given the dissimilarities in the respective services and goods and the high degree of consumer care. View "In re: St. Helena Hosp." on Justia Law

Stauffer, pro se, filed a qui tam action against Brooks Brothers under the then-version of the false-marking statute, 35 U.S.C. 292, claiming that Brooks Brothers marked its bow ties with expired patent numbers. In 2011, while the action was pending, the President signed into law the America Invents Act, 125 Stat. 284A, which eliminated the false-marking statute’s qui tam provision, so that only a “person who has suffered a competitive injury” may bring a claim. The AIA also expressly states that marking a product with an expired patent is not a false-marking violation and that the amendments apply to all pending cases. Stauffer argued that the AIA amendments were unconstitutional because they amounted to a pardon by Congress, violating the doctrine of separation of powers, and also violated the common-law principle that prohibits use of a pardon to vitiate a qui tam action once the action has commenced. The district court dismissed for lack of standing. The Federal Circuit affirmed, finding that the amendments did not constitute a pardon and that even if the law had not changed, Stauffer might have lost his lawsuit, and, therefore, could not have acquired a private-property interest in his share of the statutory penalty. View "Stauffer v. Brooks Brothers, Inc." on Justia Law

Nordic sought trademark registration for CHILDREN’S DHA for nutritional supplements. Nordic agreed to disclaim the exclusive use of “DHA” apart from use in the mark as a whole and clarified that the goods at issue are “designed for use by children.” The examiner rejected the mark as generic, or alternatively, as lacking acquired distinctiveness. The Trademark Trial and Appeal Board found that the relevant goods were adequately defined by Nordic’s description: “nutritional supplements containing DHA” and that the relevant public for these goods “consists of parents or other adults seeking nutritional supplements containing DHA for children.” Citing dictionary definitions of “child” and “DHA,” the Board concluded that “children’s DHA” merely described an essential fatty acid for children, without indicating a source. The record also included third-party uses of “children’s DHA” both to describe DHA products for children in general and children’s DHA products other than Nordic’s. the Board concluded that children’s DHA “is the generic name for nutritional supplements containing DHA inasmuch as this wording encompasses nutritional supplements containing DHA formulated for children.” In the alternative, if the mark was not generic, the Board found that although Nordic has enjoyed commercial success with its products bearing the children’s DHA label, the mark was not acting as a source identifier and had not acquired distinctiveness. The Federal Circuit affirmed.View "In re: Nordic Naturals, Inc." on Justia Law