January 01, 2016 Decisions in Brief

Decisions in Brief

John C. Gatz

©2016. Published in Landslide, Vol. 8, No. 3, January/February 2016, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

COPYRIGHTS

Are we Exclusive?

Minden Pictures, Inc. v. John Wiley & Sons, Inc., 795 F.3d 997, 115 U.S.P.Q.2d 1576 (9th Cir. 2015). Minden Pictures is a stock photograph licensing company that acts as the exclusive licensing agent for a number of photographers. Wiley is a textbook publishing company that had licensed numerous photographs from Minden, but had purportedly exceeded the scope of those licenses. Minden sued for Wiley copyright infringement. Wiley moved to dismiss the case, and argued Minden did not have standing to sue as an exclusive licensee of the copyrights at issue, as the photographers retained some rights to license the individual photographic works. The district court granted Wiley’s motion. Minden appealed.

The Ninth Circuit reversed. Minden had an exclusive license to the reproduction rights of the photographs, as the agreements with the photographers provided Minden with the “exclusive right” to authorize reproduction of the photographs. The Ninth Circuit did not accept Wiley’s argument that Minden had a non-exclusive license because the photographers could still license their photographs in some situations. The Ninth Circuit saw “no reason why the divisibility principle should not apply with equal force when the interest granted is an exclusive license to grant licenses to others.” Because Minden was the sole and exclusive agent for the purpose of licensing the reproduction of the copyrighted photographs, Minden was an exclusive licensee of the copyrights, and had standing to sue Wiley.

Fair Use Status Must Be Considered in Takedown Cases

Lenz v. Universal Music., 115 U.S.P.Q.2d 1965 (9th Cir. 2015). Stephanie Lenz posted a 29-second home video to YouTube featuring her kids dancing to Prince’s “Let’s Go Crazy.” Universal, the company tasked with overseeing the use of Prince’s songs online, sent a takedown notification to YouTube. YouTube removed the video. Lenz counter-notified asking for its reinstatement, which Universal objected to. Lenz then counter-notified again, resulting in YouTube reinstating the video. Lenz argued that she was owed damages under § 512(f) of the DMCA due to Universal’s failure to consider that the use of “Let’s Go Crazy” in the video might be fair use.

Citing 17 U.S.C § 512(c)(3)(A), the Ninth Circuit noted that per the DMCA takedown rules, a copyright holder looking to have content removed must state a good faith belief that “the infringing material ‘is not authorized by the copyright owner, its agent, or the law.’” Universal argued that, because fair use is an affirmative defense, fair use is not an “authorized use.” But, the Ninth Circuit disagreed, stating that fair use is authorized by the law and a copyright holder must consider the existence of fair use before sending a takedown notification. The Ninth Circuit determined that Universal’s actions were to be judged “by the subjective beliefs [Universal] formed about the video,” and that “a jury must determine whether Universal’s actions were sufficient to form a subjective good faith about the video’s fair use or lack thereof.”

Save the Cheerleader, Save the Copyright

Varsity Brands, Inc., et al. v. Star Athletica, LLC, 799 F.3d 468, 115 U.S.P.Q.2d 1773 (6th Cir. 2015). Plaintiff Varsity designs and manufactures apparel and accessories for use in cheerleading and other athletic activities. Varsity employs designers who sketch design concepts consisting of original combinations, positionings, and arrangements of elements that include V’s (chevrons), lines, curves, stripes, angles, diagonals, inverted V’s, coloring, and shapes, without regard to functional aspects of the uniforms. Varsity obtained copyright registrations on various design elements of the uniforms, and sued Star Athletica based on its selling uniforms having similar designs. Star successfully argued in the district court that Varsity’s designs were not copyrightable because the graphic elements were not physically or conceptually separable from the utilitarian function of a cheerleading uniform, and in particular because the “colors, stripes, chevrons, and similar designs” are typically associated with sports in general, especially cheerleading.

After finding that a determination of registrability by the Copyright Office is entitled to Skidmore deference, the Sixth Circuit overturned the district court. The Sixth Circuit noted the many variations of the standard for conceptual separability, and acknowledged Star’s argument that a decorative function is one of the utilitarian aspects of a cheerleader uniform (e.g., to identify a team). Nonetheless, the Sixth Circuit held that the arrangement of stripes, chevrons, color blocks, and zigzags can exist independently of the utilitarian aspects of a cheerleading uniform, and therefore was protectable. The Sixth Circuit noted that the designs were transferrable to articles other than the traditional cheerleading uniform, and the interchangeability of Varsity’s various designs was evidence that the graphic designs did not affect whether a uniform still functions as a cheerleading uniform.

PATENTS

Appealability

Versata Dev. Grp., Inc. v. Lee, 793 F.3d 1352, 115 U.S.P.Q.2d 1708 (Fed. Cir. 2015).The Federal Circuit affirmed the district court’s dismissal of the action for lack of subject matter jurisdiction and failure to state a claim. This case was a companion case that was consolidated for argument purposes but decided separately. Versata sued the PTO to set aside the PTAB’s decision to institute covered business method patent review. The Federal Circuit found that the district court was correct as a matter of law when it dismissed Versata’s suit.

Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 115 U.S.P.Q.2d 1681 (Fed. Cir. 2015). In the first appeal of a covered business method patent review, the Federal Circuit affirmed the PTAB’s final written decision. The Federal Circuit concluded that as a general principle it may review issues decided during the PTAB review process, regardless of when they first arose in the process, if they are part of or a predicate to the ultimate merits. The Federal Circuit confirmed that the claimed invention was a covered business method patent and did not fall within the meaning of a “technological invention.” The Federal Circuit further confirmed that the proper claim construction review standard was the broadest reasonable interpretation standard. The Federal Circuit confirmed that the statutory requirements for patentability under § 101 apply to covered business method patent appeals, and that the patent claims were properly held invalid under § 101.

Attorney’s Fees

Gaymar Indus., Inc. v. Cincinnati Sub-Zero Prods., Inc., 790 F.3d 1369, 115 U.S.P.Q.2d 1397 (Fed. Cir. 2015). The Federal Circuit affirmed-in-part, reversed-in-part, and remanded from the district court’s denial of defendant’s request for attorney’s fees. The district court refused attorney’s fees on the basis of the alleged infringer’s own misconduct. However, the Federal Circuit found the determination of misconduct to be clear error. The Federal Circuit found the alleged infringer’s statements to be overstatements, but stated none of the cited examples amounts to misrepresentation or litigation misconduct.

Breach of Contract

Personalized User Model, LLP v. Google Inc., 797 F.3d 1341, 115 U.S.P.Q.2d 1873 (Fed. Cir. 2015). The Federal Circuit affirmed the district court’s JMOL, finding that Google’s counterclaim was time-barred under the applicable statute of limitations.

Claim Construction

Lighting Ballast Control LLC v. Philips Elecs. N. Am. Corp., 790 F.3d 1329, 115 U.S.P.Q.2d 1357 (Fed. Cir. 2015). The Federal Circuit affirmed the district court’s judgment. The Federal Circuit initially found that the alleged infringer did not waive its rights to claim construction arguments, stating the alleged infringer was “not required to object to claim construction under Rule 51 after they made its claim construction position clear to the court and the court rejected it.” The district court had made findings of fact on claim construction based on extrinsic evidence. The Federal Circuit, under the Supreme Court’s ruling in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., stated “while the ultimate question of the proper construction of a claim is a legal question that this court reviews de novo, there may be underlying ‘subsidiary’ factual findings by the district court related to the extrinsic record that are reviewed for clear error.” The Federal Circuit found the district court’s findings to be supported by the record.

Collateral Estoppel

SpeedTrack, Inc. v. Office Depot, Inc., 791 F.3d 1317, 115 U.S.P.Q.2d 1559 (Fed. Cir. 2015). The Federal Circuit affirmed the district court’s decision granting summary judgment in favor of defendants on the grounds that the infringement claims were barred in part by res judicata and in full under Kessler doctrine. The Kessler doctrine, “bars a patent infringement action against a customer of a seller who has previously prevailed against a patentee because of invalidity or noninfringement of the patent.” In a prior case, SpeedTrack sued Walmart using the same software the accused infringers were using, without success.

Damages

WesternGeco LLC v. Ion Geophysical Corp., 791 F.3d 1340, 115 U.S.P.Q.2d 1597 (Fed. Cir. 2015). The Federal Circuit reversed the district court’s award of $93 million in lost profits resulting from conduct occurring outside the United States. The patentee sought lost profits resulting from lost contracts for services performed on the high seas outside the United States. None of the contracts was negotiated or signed in the United States, and the services were performed outside the United States. While § 271(f) imposes liability on a domestic entity shipping components abroad (just as if the infringing product was manufactured in the United States), the majority noted that Congress did not extend the law to cover uses abroad of the articles created from the exported components.

Exceptional Case

SFA Sys., LLC v. Newegg Inc., 793 F.3d 1344, 115 U.S.P.Q.2d 1758 (Fed. Cir. 2015). The Federal Circuit affirmed the denial of attorneys’ fees to the defendant. SFA sued multiple accused infringers, including Newegg. After the district court issued its claim construction order, but before the parties exchanged expert reports, SFA voluntarily dismissed the suit with prejudice and convenanted not to sue Newegg. Newegg then moved for attorneys’ fees, which was denied The Federal Circuit held that the district court did not abuse its discretion in concluding that SFA’s litigation position was not one that stands out from others with respect to the substantive strength of SFA’s litigating position Here, the Federal Circuit found that Newegg failed to submit sufficient evidence of a pattern of litigation misconduct by SFA.

Indefiniteness

The Dow Chem. Co. v. NOVA Chems. Corp. (Canada), _____, 115 U.S.P.Q.2d 2024 (Fed. Cir. 2015). The Federal Circuit reversed the district court’s decision finding the claims to be definite and awarding supplemental damages. The patentee argued that the Federal Circuit could not determine the claims were indefinite, because in a prior appeal, the claims had been found to be definite, and this appeal was regarding damages. However, while the current appeal was pending, the Supreme Court abrogated the Federal Circuit’s test for determining indefiniteness. Due to the change in law, the Federal Circuit was allowed to review the indefiniteness claim.

Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 115 U.S.P.Q.2d 1880 (Fed. Cir. 2015). The Federal Circuit reversed the district court’s grant of invalidity of one of the utility patents as being indefinite and instead determined that the specification provided sufficient guidance to a person of ordinary skill in the art as to the scope of the claims. The Federal Circuit also vacated the grant of summary judgment of noninfringement on a second utility patent because genuine disputes as to material facts were improperly resolved in favor of Covidien rather than Ethicon. The Federal Circuit also reversed the district court’s grant of invalidity based on functionality of the design patents because the district court evaluated the claimed design focusing too much on the unclaimed utilitarian aspects of the underlying article rather than the claimed designs of that underlying article. The district court’s grant of summary judgment of noninfringement of the design patents was affirmed as the claimed ornamental designs were plainly dissimilar from the accused products.

Indefiniteness/Design Patents

Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 115 U.S.P.Q.2d 1880 (Fed. Cir. 2015). The Federal Circuit: (1) reversed the district court’s summary judgment ruling that one of the asserted utility patents was invalid as indefinite; (2) vacated the district court’s summary judgment ruling that Covidien did not infringe another asserted utility patent; (3) reversed the district court’s ruling that the asserted design patents were invalid as primarily functional; and (4) affirmed the district court’s grant of summary judgment of non-infringement of the asserted design patents. On indefiniteness, Ethicon’s expert sufficiently explained how the specification taught, and one of ordinary skill in the art would have known, how to calculate the claimed “average clamping pressure” limitation. he Federal Circuit stated that: “[i]f such an understanding of how to measure the claimed average pressures was within the scope of knowledge possessed by one of ordinary skill in the art, there is no requirement for the specification to identify a particular measurement technique.” Turning to the asserted design patents, the Federal Circuit stated that the key inquiry is whether the ornamental designs of the claimed utilitarian objects (a trigger, a knob, and a button) were the only possible designs for obtaining the desired function of the overall device. Because the claimed designs were not the only available design options, the Federal Circuit concluded that the design patents were not invalid as primarily functional.

Judicial Procedure

Personalized User Model, LLP v. Google Inc., 797 F.3d 1341, 115 U.S.P.Q.2d 1873 (Fed. Cir. 2015). The Federal Circuit affirmed the district court’s grant of summary judgment on breach of contract counterclaims and dismissed a cross-appeal because the Federal Circuit held it lacked jurisdiction over the issue because there was no longer a case or controversy on the noninfringement issue. The district court found that the claims were not infringed and the cross-appellant did not seek further district court proceedings on infringement. Furthermore, the PTO cancelled all the asserted claims in an inter parte reexamination. Thus, there was no remaining issue on claim construction to be decided.

Jurisdiction

Celgard, LLC v. SK Innovation Co., 792 F.3d 1373, 115 U.S.P.Q.2d 1569 (Fed. Cir. 2015). The Federal Circuit affirmed the district court’s dismissal of the patent infringement action against a South Korean company for lack of personal jurisdiction. The Federal Circuit held that the district court was correct in declining to exercise jurisdiction over SKI based on any activity SKI directed at the forum state, the joint agreement between SKI and KMC, or the unilateral actions of two Kia dealers. The Federal Circuit also declined to exercise personal jurisdiction under a stream-of-commerce theory. There was no evidence establishing that SKI’s products actually entered the forum state.

In re Cuozzo Speed Techs., LLC., 793 F.3d 1268, 115 U.S.P.Q.2d 1425 (Fed. Cir. 2015). The Federal Circuit held that it lacked jurisdiction to review the PTO’s decision to institute inter partes review. The Federal Circuit further affirmed the PTAB’s final determination, finding no error in the claim constructions under the broadest reasonable interpretation standard, the PTAB’s obviousness determination, and the PTAB’s denial of Cuozzo’s motion to amend. Review of the decision to institute IPR is prohibited by statute, even after a final decision by the PTAB, though mandamus may have been available to challenge the PTO’s decision to grant the petition in situations where the PTO clearly and indisputably exceeded its authority.

Obviousness

Allergan, Inc. v. Sandoz Inc., 796 F.3d 1293, 115 U.S.P.Q.2d 2012 (Fed. Cir. 2015). The Federal Circuit affirmed the district court’s finding that the claims were not invalid for obviousness, lack of enablement, or lack of written description. Despite references teaching ranges of chemicals that included the claimed range, the Federal Circuit found the district court was not clearly erroneous in holding the references taught away from the combination. Specifically, the Federal Circuit found “the record shows that the claimed amounts of the two different ingredients could and did materially and unpredictably alter the property of the claimed formulation.”

On-Sale Bar

The Meds. Co. v. Hospira, Inc., 791 F.3d 1368, 115 U.S.P.Q.2d 1587 (Fed. Cir. 2015). The Federal Circuit reversed the district court’s determination that the on-sale bar did not apply because the district court clearly erred in finding that the claimed invention was not commercially offered for sale. The Federal Circuit found that “if a product that is offered for sale inherently possesses each of the limitations of the claims, then the invention is on sale, whether or not the parties to the transaction recognize that the product possesses the claimed characteristics.”

Patent Term Adjustment (PTA)

Mohsenzadeh v. Lee, 790 F.3d 1377, 115 U.S.P.Q.2d 1483 (Fed. Cir. 2015). The Federal Circuit affirmed the district court’s decision in favor of the PTO’s calculation of PTA for two patents that issued from divisional applications. The court interpreted 35 USC § 154(b)(1)(A) to clearly show that the term of any patent arising from a continuing application is not restored for delay in the prosecution of the parent patent’s application.

Daiichi Sankyo Co. v. Lee, 791 F.3d 1373, 115 U.S.P.Q.2d 1653 (Fed. Cir. 2015). The Federal Circuit affirmed the PTO’s decisions on PTA for two Daiichi patents, which Daiichi had challenged as being too short. The PTO denied Daiichi’s requests to reconsider the PTA periods, because Daiichi sought reconsideration more than 180 days after the patents issued, which deadline was prescribed by PTO regulations based on 35 U.S.C. § 154(b)(4). The Federal Circuit found that the PTO’s adoption of the 180-day deadline for regulatory review of PTA was within the PTO’s discretion and neither arbitrary nor capricious.

Patentability Under 35 U.S.C. § 101

Intellectual Ventures I LLC v. Capital One Bank (USA), N.A., 792 F.3d 1363, 115 U.S.P.Q.2d 1636 (Fed. Cir. 2015). The Federal Circuit affirmed the district court’s claim construction underlying the parties’ stipulation that one of three asserted patents was not infringed and also affirmed the district court’s finding that the other two patents were invalid due to claiming unpatentable abstract ideas under 35 U.S.C. § 101. In analyzing the § 101 issues, the Federal Circuit made clear that claim “[s]teps that do nothing more than spell out what it means to ‘apply it on a computer’ cannot confer patent-eligibility. Requiring the use of a ‘software’ ‘brain’ ‘tasked with tailoring information and providing it to the user’ provides no additional limitation beyond applying an abstract idea, restricted to the Internet, on a generic computer.”

Patentable Subject Matter

Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 115 U.S.P.Q.2d 1414 (Fed. Cir. 2015). The Federal Circuit affirmed the district court’s grant of motion to dismiss on basis of unpatentable subject matter. The district court determined that the patent claimed “the use of a conventional web browser Back and Forward navigational functionalities without data loss in an online application consisting of dynamically generated web pages.” The Federal Circuit agreed that this is an abstract idea.

Re-Examination

Airbus S.A.S. v. Firepass Corp., 793 F.3d 1376, 115 U.S.P.Q.2d 1860 (Fed. Cir. 2015). The Federal Circuit reversed and remanded the district court’s dismissal of cross-appeal for lack of jurisdiction. Although the Federal Circuit agreed that a party may not appeal from an examiner’s decision that a proposed rejection fails to raise a substantial new question of patentability on the ground that such a decision is one favorable to patentability. The Federal Circuit stated that “the provision requiring a determination of a substantial new question of patentability was not applicable to the case once the Director already had ordered reexamination on the ground that other prior art raised a substantial new question of patentability.”

Rehearing

In re Cuozzo Speed Techs., _____, 115 U.S.P.Q.2d 1442 (Fed. Cir. 2015). The Federal Circuit denied Cuozzo’s petition for rehearing en banc on the issue of the broadest reasonable interpretation standard in inter partes review proceedings.

Validity

Circuit Check Inc. v. QXQ Inc., 793 F.3d 1297, 115 U.S.P.Q.2d 1442 (Fed. Cir. 2015). The Federal Circuit reversed the district court’s judgment as a matter of law that the patents were invalid as obvious and remanded the case. The jury determined that the claims were nonobvious, and the district court found that substantial evidence supported the jury’s findings.

TRADE SECRETS

Destiny Health, Inc. v. Conn. Gen. Life Ins. Co., 2015 IL App (1st) 142530 (Ill. App. Ct. 1st Dist. 2015). The fact that the information provided by Destiny might have made Cigna more informed in evaluating whether to partner with Destiny or another vendor in developing an incentive-points program does not support an inference that Cigna misappropriated Destiny’s trade secrets absent some showing that Cigna would not have been able to develop its incentive-points program without using Destiny’s trade secrets.

Global Imaging Acquisitions Group, LLC v. Rubenstein, 2015 U.S. Dist. LEXIS 128334, 2015 WL 5618803 (E.D. Wis. 2015). The complaint does not allege that the individual defendants personally misappropriated a trade secret, hacked into Global’s computers, or stole one of Global’s hard drives. But, a member of a conspiracy is liable for torts committed by other members in the course of the conspiracy.

Kehoe Component Sales Inc. v. Best Lighting Prods., 796 F.3d 576, 115 USPQ2d 1900 (6th Cir. Ohio 2015). The UTSA’s declaration that a continuing misappropriation constitutes a single claim expressly adopts the approach that a limitation period runs only from an initial misappropriation and rejects the approach that the period is triggered anew with each act of misappropriation. The first discovered misappropriation of a trade secret commences the limitation period, placing the focus on the breach of the relationship between the parties at the time the secret is disclosed.

Lilith Games (Shanghai) Co. v. uCool, Inc., 2015 U.S. Dist. LEXIS 128619, 2015 WL 5591612 (N.D. Cal. 2015). The district court found that Lilith’s efforts to maintain the confidentially of its source code, while not as rigorous as they could have been, were sufficiently reasonable to maintain the code as a trade secret. Lilith keeps its source code on a secure server and limits access only to those employees who need it to perform their duties. Lilith also encrypts its source codes so that it cannot be easily deciphered.

Walco, Inc. v. County of Idaho, 2015 Ida. LEXIS 244, 2015 WL 5618233 (Idaho 2015). Under certain circumstances, a person can recover damages for the misappropriation of a trade secret. However, to recover, the information allegedly misappropriated must be a trade secret. Because the plaintiff’s proposal could not qualify as a trade secret once it was opened and the dollar amount was read aloud at the public meeting without objection from the plaintiff’s representative, the defendant’s possession of the proposal after the meeting could not constitute misappropriation.

Welenco, Inc. v. Corbell, 2015 U.S. Dist. LEXIS 112971, 2015 WL 5026190 (E.D. Cal. 2015). A customer list may qualify as a trade secret because of its “economic value” if its disclosure would allow a competitor to direct its sales efforts to those customers who have already shown a willingness to use a unique type of service or product as opposed to a list of people who only might be interested. Here, the plaintiff took reasonable steps to protect this information.

TRADEMARKS

Bona Fide Intent to Use Mark in Commerce

M.Z. Berger & Co. v. Swatch AG, 787 F.3d 1368, 114 U.S.P.Q.2d 1892 (Fed. Cir. 2015). The Federal Circuit affirmed the TTAB decision sustaining an opposition to an intent-to-use application for the mark iWATCH for watches, clocks and goods related to watches and/or clocks, owned by M.Z. Berger. Swatch filed the opposition based on its mark, SWATCH. Berger appealed the TTAB’s denial of registration due to its determination that Berger lacked a bona fide intent to use the mark in commerce at the time the application was filed.

The Federal Circuit first determined that a lack of a bona fide intent to use a mark in commerce is proper statutory grounds for challenging a pending application. The Federal Circuit further found that an applicant’s intent must be demonstrable and more than a mere subjective belief. This determination is made on a case-by-case basis. The Federal Circuit agreed with the TTAB that Berger lacked the bona fide intent to use the mark in commerce. The Federal Circuit found substantial evidence supported the decision, noting the inconsistent testimony provided by Berger’s employees, the lack of nexus between Berger’s ability to produce watches and the capacity to produce a “smart” watch, and the lack of documentary evidence submitted by Berger. The Federal Circuit determined that at the time the application was filed, Berger’s intent was to reserve a right in the mark and not a bona fide intent to use the mark in commerce.

Concurrent Use

Bad Boys Bail Bonds, Inc. v. Yowell, 115 U.S.P.Q.2d 1925 (T.T.A.B. 2015). Registrant Yowell filed a motion for summary judgment on the ground that concurrent use applicant Bad Boys could not at trial show that it used the applied-for composite mark for BAD BOYS BAIL BONDS in commerce prior to the filing date of Yowell’s underlying registration for the mark BAD BOYS BAIL BONDS “IN JAIL, WE BAIL.” The TTAB granted the motion, refusing registration based on concurrent use.

Bad Boys filed an application to register the composite mark BAD BOYS BAIL BONDS with a design element in several classes. Registration was refused under Section 2(d) of the Lanham Act based on Yowell’s registration for BAD BOYS BAIL BONDS “IN JAIL, WE BAIL.” Bad Boys amended its application to seek concurrent use registration. During the concurrent use proceeding, Yowell moved for summary judgment on the basis that Bad Boys’ use in commerce of the applied-for mark was not prior to the December 29, 1999 filing date of Yowell’s underlying registration. The evidence of use presented by Bad Boys only showed use of the words “Bad Boys Bail Bonds” (without the design element) and only related to one of the several applied-for classes. The TTAB rejected Bad Boys’ argument that only the words in its composite mark were relevant to the proceeding because the Section 2(d) refusal focused on the wording of the composite mark, not on the design element. Rather, the TTAB found that a determination of the right to concurrent registration must be made on the basis of the composite mark as a whole as it appeared in the concurrent use application.

Because there was no genuine dispute of material fact that Bad Boys did not use the applied-for composite mark in commerce with respect to the goods or services in any of the classes in the application prior to the filing date of the underlying registration, the TTAB granted Yowell’s summary judgment motion. Concurrent registration was refused, and the concurrent use proceeding was dissolved.

Infringement/Likelihood of Confusion

Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 U.S.P.Q.2d 1816 (T.T.A.B. 2015). The TTAB sustained Anheuser’s opposition to a trademark application filed by Innvopak for WINEBUD in connection with “alcoholic beverages except beers; wines and still wines and sparkling wines; beverages containing wine, namely, sparkling fruit wind and still fruit wine; ready to drink alcoholic beverages except beers” on the grounds of likelihood of confusion with several marks owned by Anheuser for the mark BUD and BUD-formative marks for beer.

The TTAB determined that Anheuser had clearly established priority with respect to its use of the BUD and BUD-formative marks for beer, and that the BUD and BUD-formative marks met the applicable standard for fame. On reviewing the likelihood of confusion factors, the TTAB disagreed with Innvopak’s claims that consumers would understand that WINEBUD was a fanciful mark formed from the nouns WINE and BUD. Moreover, the TTAB determined that the dominant element in WINEBUD was identical in appearance and sounds to Anheuser’s BUD mark, and that the additional word WINE was insufficient to distinguish it from Anheuser’s mark. The TTAB also took note that various alcoholic beverages – including beer and wine – are related for purposes of a likelihood of confusion analysis, as beer and other alcoholic beverages are sold in the same channels of trade. As these products can be sold at low price points, it is more likely that a hurried customer would assume a connection between the source of the products. Thus, the TTAB found a likelihood of confusion with Anheuser’s BUD marks and refused registration of the WINEBUD mark.

Likelihood of Confusion

Swiss Grill Ltd. V. Wolf Steel Ltd., 115 U.S.P.Q.2d 2001 (T.T.A.B. 2015). Swiss Grill opposed Wolf Steel Ltd.’s intent-to-use application for registration of SWISS GRILLS (with GRILLS disclaimed) as a trademark for barbeques and outdoor grills on grounds of likelihood of confusion with their SWISS GRILL mark and of lack of bona fide intent to use the mark in commerce. The TTAB sustained on both grounds.

The parties were former business partners, both based outside of the United States. In 2009, about two weeks after Wolf Steel became aware of Swiss Grill’s use of the mark SWISS GRILL in Europe, it filed its own UK application to register SWISS GRILLS, which was later withdrawn in response to Swiss Grill’s demand to do so in view of Swiss Grill’s prior Community Trademark application for its SWISS GRILL & Design mark. Swiss Grill sent sample SWISS GRILL barbeques to a U.S. distributor in December 2010. In June 2011, Wolf Steel filed its U.S. application for SWISS GRILLS, admitting that, at that time, it was aware of Swiss Grill s’ use of the SWISS GRILL mark outside of the United States. In December of 2012, Swiss Grill filed its own U.S. application for SWISS GRILL, in standard characters, with GRILL disclaimed, for “barbeques and outdoor grills,” based on a first use date of July 2010. Wolf Steel alleged that it had an intent to use its mark for a specialty grill product – “dubiously identified as ‘Confidential’” – that was within the scope of the identified “barbeques and outdoor grills.” Swiss Grill, on the other hand, alleged that Wolf Steel, during the course of the opposition proceedings, shifted its alleged use to an alleged intent to use of the specialty product that was not within the scope of the original identification.

The TTAB found that none of the documentary evidence produced by Wolf Steel predated the filing of its application or related to Wolf Steel’s intent to use the SWISS GRILLS mark in the United States. It also found that Wolf Steel’s discovery responses contained internal inconsistencies that cast serious doubts on their credibility. As such, the entirety of the circumstances led the TTAB to find that Wolf Steel, at the time its application was filed, lacked a bona fide intent to use the mark in commerce. Thus, the TTAB sustained the opposition, finding that Swiss Grill had established priority of use and likelihood of confusion.

John C. Gatz

John C. Gatz is a member of the firm Nixon Peabody LLP in Chicago. Column Contributors include the following writers: Copyrights: Zachary J. Smolinski, Panduit Corporation; Michael N. Spink, Brinks, Gilson & Lione; Mark R. Anderson, Akerman LLP. Patents: Cynthia K. Barnett,Johnson & Johnson; R. Trevor Carter, Daniel M. Lechleiter, Andrew M. McCoy, Faegre Baker Daniels LLP; Robert W. (Bill) Mason, CeloNova BioSciences, Inc. ; Peter J. Prommer, Nixon Peabody LLP. Trade Secrets: R. Mark Halligan, FisherBroyles LLP. Trademarks: Janet M. Garetto and Elizabeth W. Baio, Nixon Peabody LLP; Amy L. Sierocki.