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

DuoProSS and Inviro sell medical syringes designed to prevent accidental needle sticks. A person using an Inviro syringe: rotates the plunger; pulls the plunger back, drawing the needle into the syringe barrel; and snaps off the plunger, sealing the needle inside. Inviro owns the two trademarks at issue: the “SNAP! design mark,” for use with “ medical, hypodermic, aspiration and injection syringes” and the “SNAP SIMPLY SAFER mark,” for use with “cannulae; medical, hypodermic, aspiration and injection needles; medical, hypodermic, aspiration and injection syringes.” Inviro petitioned to cancel a trademark registration owned by DuoProSS for the design mark BAKSNAP, for use with a “safety syringe for medical use.” DuoProSS counterclaimed for cancellation of several Inviro registrations, including the marks at issue. Inviro withdrew its petition and agreed to voluntarily surrender one registration. The Board concluded that other registrations for the SNAP mark in typed format were merely descriptive and ordered cancellation, but declined to cancel the SNAP! design mark and the SNAP SIMPLY SAFER word mark. The Federal Circuit reversed. The Board failed to consider one of the marks as a whole, unduly focusing on one portion (!) and erroneously concluded that puffing could render the marks more than descriptive.View "Duopross Meditech Corp. v. Inviro Med.Devices, Ltd." on Justia Law

In 1998, the U.S.PTO issued Registration 334 to WJ for the mark LENS in connection with “computer software featuring programs used for electronic ordering of contact lenses in the field of ophthalmology, optometry and opticianry.” In 2001, Lens.com, an online retailer of contact lenses applied for the mark LENS in connection with “retail store services featuring contact eyewear products rendered via a global computer network.” The PTO cited the 334 Registration as a bar based on likelihood of consumer confusion and refused registration of the mark as merely descriptive of services. In 2002, WJ assigned the registration to Lens.com, which withdrew its cancellation petition under a settlement agreement and obtained the 334 Registration for the mark LENS in connection with “computer software featuring programs used for electronic ordering of contact lenses in the field of ophthalmology, optometry and opticianry.” In 2008, 1-800 Contacts filed Cancellation 925 alleging that Lens.com abandoned or fraudulently obtained the mark LENS because Lens.com never sold or otherwise engaged in the trade of computer software. The Board granted summary judgment of abandonment on the ground that the software is merely incidental to sale of contact lenses, and is not a “good in trade,” solicited or purchased in the market for its intrinsic value.’” The Federal Circuit affirmed. View "Lens.com, Inc. v. 1-800 Contacts, Inc." on Justia Law

Nestle’s BEGGIN’ STRIPS registered mark for pet treats has been in continuous use since 1988 and has been registered since 1989. Midwestern manufactures and sells pet treats and filed an intent-to-use application with the Patent and Trademark Office, seeking to register the mark WAGGIN’ STRIPS for pet food and edible pet treats. Nestle opposed registration, arguing likelihood of confusion between the two marks. The district court ruled in favor of Nestle, finding likelihood of confusion. The Federal Circuit affirmed, finding that the district court properly admitted evidence submitted by Nestle. View "Midwestern Pet Foods, Inc. v. Societe des Produits Nestle, S.A." on Justia Law

BD applied to register with the U.S. Patent and Trademark Office a mark for "closures for medical collection tubes," asserting acquired distinctiveness based on five years of substantially exclusive, continuous use in commerce. The examining attorney refused registration under 15 U.S.C. 1052(e)(5) finding that the cap design was functional and that even if non-functional, the cap design was a non-distinctive configuration of the goods under 15 U.S.C. 1051-1052 and 1127. She found BD's declaration insufficient to show acquired distinctiveness under 15 U.S.C. 1052(f). The Trademark Trial and Appeal Board and the Federal Circuit affirmed on the basis that the cap is functional. View "In re Becton Dickinson & Co." on Justia Law

The Trademark Trial and Appeal Board found that a service mark, NATIONAL CHAMBER, submitted by the Chamber of Commerce of the USA, was correctly refused registration for being merely descriptive under 15 U.S.C. 1052(e)(1). The Federal Circuit affirmed, finding the decision supported by substantial evidence. View "In re: Chamber of Commerce of the United States of America" on Justia Law

Bridgestone registered the mark POTENZA for tires in 1984, stating use in commerce since 1981. Bridgestone registered the mark TURANZA for tires in 2004, stating use in commerce since 1991. Federal filed an intent-to-use application to register the mark MILANZA for tires in 2004. Bridgestone opposed registration, arguing likelihood of confusion. The Board gave little weight to survey evidence of consumer confusion as to the source of tires bearing the MILANZA mark, and held that the "dissimilarity of the marks simply outweighs the other relevant factors." The Federal Circuit reversed, noting the identity of the goods, the lengthy prior use of POTENZA and TURANZA, market strength of the POTENZA and TURANZA marks, and the similarities of words, sounds, and connotation with MILANZA. Sufficient similarity has been shown as would be likely to cause consumer confusion, deception, or mistake.View "Bridgestone Americas Tire Operations, LLC v. Federal Corp." on Justia Law

The Trademark Trial and Appeal Board affirmed an examining attorney's refusal to register the trademark XCEED, in standard character form, for agricultural seed, citing the Lanham Act, 15 U.S.C. 1052(d). A previously-registered word and design mark for agricultural seeds consisted of the characters X-Seed in stylized form. The Federal Circuit affirmed, finding substantial evidence that the XCEED mark would likely cause confusion with the X-Seed mark. View "In re Viterra" on Justia Law

Triumph publishes books and software to prepare teachers and students for standardized tests. In 2004, Triumph filed use-based applications for the COACH word mark, a stylized COACH mark, and a COACH mark and design. CSI sells handbags, luggage, clothing, watches, eye glasses, and wallets and has used the COACH mark since at least 1961. CSI owns 16 incontestable registrations for the COACH mark: all but one issued before Triumph's application. CSI filed Notice of Opposition on grounds of likelihood of confusion (15 U.S.C. 1052(d)) and dilution (15 U.S.C. 1125(c)). The Trademark Trial and Appeal Board dismissed. The Federal Circuit affirmed findings that there was no likelihood of confusion between the marks and that CSI failed to prove likelihood of dilution. Because of evidentiary errors, the court vacated and remanded a finding that, although Triumph's marks are merely descriptive, they have acquired secondary meaning, and were entitled to registration. View "Coach Serv., Inc. v. Triumph Learning, LLC" on Justia Law

Plaintiff owns registration for the mark G THE GOODYMAN. An examining attorney rejected defendant's application to register GOODY MAN for bakery goods, on the ground of likelihood of confusion with G THE GOODYMAN; the rejection is on appeal to the Trademark Trial and Appeal Board. Defendant filed a petition for cancellation of registration for G THE GOODYMAN, citing grounds of fraud and abandonment. Based on failure to comply with discovery orders, the Board entered default judgment against plaintiff and cancelled his registration of G THE GOODYMAN. On remand from the Federal Circuit, the Board held that the suspension of proceedings as required by Rule 2.127(d) was not automatic with plaintiff's filing of a motion for summary judgment, reinstated its default judgment, and cancelled plaintiff's trademark registration. The Federal Circuit affirmed, stating that default was reasonable, in light of plaintiff's repeated failures to comply, regardless of the court's reading of the Rule. View "Bendict v. Super Bakery, Inc." on Justia Law