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Decisions in Brief

Decisions in Brief

John C. Gatz

©2016. Published in Landslide, Vol. 8, No. 6, July/August 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.


Web Code is Copyrightable

Media.Net Advertising FZ-LLC v. Netseer, Inc., 117 U.S.P.Q.2d 1701 (N.D. Cal. 2016).

Media.Net sued NetSeer for copyright infringement, alleging that NetSeer had improperly copied Media.Net’s hypertext markup language (HTML) code while creating a competing contextual advertising product. NetSeer moved for summary judgment on the copyright infringement claim, arguing that Media.Net could not own a valid copyright in the code because the material in its registrations was not copyrightable.

In evaluating whether Media.Net’s HTML code was copyrightable, the district court looked to the U.S. Copyright Office’s Compendium of Copyright Practices for guidance, adopting the Compendium’s interpretations of copyright law where the district court found them reasonable and persuasive. NetSeer argued that the HTML code contained only Cascading Style Sheets (CSS), which are uncopyrightable. Media.Net argued that its code contained class names and comments that warranted copyright protection. The district court stated that HTML code can be registered as a literary work, while CSS generally cannot be registered. Thus, the district court found that portions of Plaintiff’s HTML code met the requisite level of creativity to be copyrightable.

Despite finding that the code contained copyrightable subject matter, the district court granted NetSeer’s motion to dismiss the copyright action because Media.Net failed to allege which portions of its code NetSeer infringed. Media.Net was granted leave to amend its statements to allege facts regarding both the infringed portions and NetSeer’s access to Media.Net’s code.



Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309, 117 U.S.P.Q.2d 1753 (Fed. Cir. 2016).

The Federal Circuit held that the PTAB need not address every ground raised by Synopsys in its IPR petition and affirmed the PTAB’s findings that only a portion of the instituted claims were anticipated and that the patentee, Mentor, failed to carry its burden on its motion to amend. The Federal Circuit concluded that the PTAB’s final decision does not need to address all grounds raised in the initial petition, even though § 318(a) directs the PTAB to issue a final decision with respect to “any patent claim challenged by the petitioner.” The Federal Circuit relied on the fact that different language is used in § 314(a) (“claims challenged in the petition”), which suggests that § 318(a) has a different meaning than § 314(a).

Civil Procedure

Ethicon Endo-Surgery, Inc., v. Covidien LP, 812 F.3d 1023, 117 U.S.P.Q.2d 1639 (Fed. Cir. 2016).

The Federal Circuit held that 35 U.S.C. § 314(d) does not preclude it from hearing a challenge to the authority of the PTAB to render a final decision. The Federal Circuit also held that neither the statute nor the Constitution precludes the same PTAB panel that made a decision to institute an inter partes review from making a final determination. The America Invents Act gave the Director the authority to determine if an IPR should be initiated and that authority was delegated by the Director to the PTAB.

Claim Construction

Avid Tech., Inc. v. Harmonic, Inc., 812 F.3d 1040, 117 U.S.P.Q.2d 1560 (Fed. Cir. 2016).

The Federal Circuit vacated and remanded the district court’s finding of noninfringement based on claim construction. The Federal Circuit found that the district court erred in narrowing the claim scope due to the prosecution history.

CardSoft (Assignment for the Benefit of Creditors), LLC v. VeriFone, Inc., 807 F.3d 1346, 117 U.S.P.Q.2d 1354 (Fed. Cir. 2015).

The Federal Circuit reversed the district court’s claim construction. In a first case, after the Federal Circuit reversed the district court’s adoption of CardSoft’s proposed construction, the Supreme Court held that the Federal Circuit must review a district court’s ultimate claim interpretation as well as its interpretations of evidence intrinsic to the patent de novo and it subsidiary factual findings about extrinsic evidence for clear error. This case came before the Federal Circuit a second time in view of the Supreme Court decision. Because this case did not involve factual findings to which the Federal Circuit owed deference under the Supreme Court decision, the Federal Circuit again reversed the district court’s construction.

Convolve, Inc. v. Compaq Comput. Corp., 812 F.3d 1313, 117 U.S.P.Q.2d 1882 (Fed. Cir. 2016).

The Federal Circuit agreed with the district court that the alleged infringing devices did not possess a user interface, but concluded the district court erred by importing limitations into its construction of the “command” steps of the asserted claims. The Federal Circuit affirmed the grant of summary judgment that select devices did not infringe the asserted claims, but vacated the grant of summary judgment of non-infringement as to other devices as to certain asserted claims because the devices did meet the “command” limitation.

Trs. Of Columbia Univ. in City of New York v. Symantec Corp., 811 F.3d 1359, 117 U.S.P.Q.2d 1659 (Fed. Cir. 2016).

The Federal Circuit found that the district court incorrectly construed the term “anomalous” in the asserted claims and remanded the case for further proceedings.


Commonwealth Scientific & Indus. Research Organisation v. Cisco Sys., Inc., 809 F.3d 1295, 117 U.S.P.Q.2d 1527 (Fed. Cir. 2015).

The Federal Circuit vacated and remanded the damages’ calculations. The Federal Circuit found that the district court was not required to use a damages’ model that relies upon the smallest salable patentable unit that was used in prior negotiations between the parties. However, the Federal Circuit found that the district court did err in not considering that the patent was essential to a standard.

Rosebud LMS Inc. v. Adobe Sys., 812 F.3d 1070, 117 U.S.P.Q.2d 1717 (Fed. Cir. 2016).

The Federal Circuit affirmed the granting of Adobe’s motion for summary judgment, finding that Rosebud was not entitled to pre-issuance damages under 35 U.S.C. § 154(d). Rosebud filed three suits against Adobe for patent infringement. In the third patent infringement suit, the patent at issue was a continuation of the prior patent in suit, which itself was a continuation of the first patent in suit. The Federal Circuit noted that to obtain pre-issuance damages the infringer must have actual notice of the published patent application. Constructive knowledge would not satisfy the actual notice requirement. Knowledge of related patents did not serve this function, and Adobe had removed infringing components 10 months before the grant of the patent in suit. Thus, Rosebud was not entitled to pre-issuance damages.

Due Process

Nuance Commc’ns, Inc. v. ABBYY USA Software House, Inc., 813 F.3d 1368, 117 U.S.P.Q.2d 1944 (Fed. Cir. 2016).

The Federal Circuit affirmed the district court’s claim construction and the district court’s entry of final judgment against Nuance’s patents, even those Nuance chose not to assert at trial. Nuance argued that the district court erred in adopting a dictionary definition for the disputed terms that conflicted with intrinsic evidence. The district court, however, did nothing to limit Nuance’s ability to present its evidence on this issue, and its instruction to the jury did not prevent the jury from fully considering each party’s position. Nuance further actively participated in voluntarily narrowing the case, and never objected until it had already lost at trial. Thus, the Federal Circuit found no due process violation and the district court properly found that Nuance was not entitled to a second trial on the unselected patents.

Exceptional Cases/Attorneys’ Fees

Lumen View Tech. LLC v., Inc., 811 F.3d 479, 117 U.S.P.Q.2d 1465 (Fed. Cir. 2016).

The Federal Circuit affirmed-in-part, vacated-in-part, and remanded the district court’s grant of the defendant’s motion. The Federal Circuit declined to find an abuse of discretion by the district court in finding the case exceptional because the allegations of infringement were ill-supported and, thus, the lawsuit appeared to be baseless. The Federal Circuit vacated the attorney fee award and remanded the case for recalculating a reasonable fee award.


Commil USA, LLC v. Cisco Sys., Inc., 813 F.3d 994, 117 U.S.P.Q.2d 1656 (Fed. Cir. 2015).

On remand from the Supreme Court, the Federal Circuit concluded that substantial evidence did not support the jury’s finding that the defendant’s devices, when used, perform a running step from the asserted claims. The plaintiff’s own expert conceded that the alleged infringing system supports multiple connected devices at the same time, but only runs one copy of the protocol at any one time where a reasonable jury could not have concluded that the defendant’s devices run a separate copy of the protocol for each connected device.


Wi-LAN, Inc. v. Apple Inc., 811 F.3d 455, 117 U.S.P.Q.2d 1552 (Fed. Cir. 2016).

The Federal Circuit affirmed the district court’s denial of JMOL as to infringement, but reversed as to no invalidity. The Federal Circuit affirmed the jury’s verdict as substantial evidence supported the jury’s verdict that the difference between the accused products and the claimed invention was not insubstantial. The invalidity ruling was reversed as the district court’s reasoning relied upon a post-verdict claim construction, which was not allowed at the JMOL stage.


TriVascular, Inc. v. Samuels, 812 F.3d 1056, 117 U.S.P.Q.2d 1802 (Fed. Cir. 2016).

The Federal Circuit affirmed the PTAB’s holding that TriVascular failed to satisfy its burden in inter partes review. TriVascular appealed the PTAB’s findings with respect to claim construction and obviousness. The Federal Circuit rejected TriVascular’s proposed construction, however, as unreasonably broad. The Federal Circuit rejected TriVascular’s obviousness argument because the “proposed substitution would destroy the basic objective” of a feature of the applied prior art reference.

Judicial Review

SightSound Techs., LLC v. Apple Inc., 809 F.3d 1307, 117 U.S.P.Q.2d 1341 (Fed. Cir. 2015).

The Federal Circuit held that it lacked jurisdiction to review the PTO’s decision to consider issues not explicitly raised in the petitions. Apple had not raised the issue of obviousness in its petitions requesting review of the patents. The Federal Circuit also held that it did have jurisdiction to review whether the patents qualified as CBM patents, and affirmed the PTAB’s determination that the patents qualified as CBM patents. The Federal Circuit also affirmed the PTAB’s final decision with respect to claim construction and obviousness.

Moot Controversies

Synopsys, Inc. v. Lee, 812 F.3d 1076, 117 U.S.P.Q.2d 1779 (Fed. Cir. 2016).

Synopsys challenged the PTAB’s ability to address only some of the claims raised in an IPR petition. In a companion case decided the same day, Synopsys Inc. v. Mentor Graphics Corp., the Federal Circuit held that the PTAB may issue decisions on fewer than all of the claims raised in the petition for IPR. Thus, the Federal Circuit dismissed the case as moot.


ACCO Brands Corp. v. Fellowes, Inc., 813 F.3d 1361, 117 U.S.P.Q.2d 1951 (Fed. Cir. 2016).

The Federal Circuit reversed the PTAB’s finding that the Examiner failed to make a prima facie showing of obviousness and remanded the PTAB’s decision to further consider whether rebuttal evidence changed the outcome on obviousness and whether the dependent claims provided independent grounds of nonobviousness. The Federal Circuit found that the Examiner successfully set out a prima facie case that the claims would have been obvious, but since other evidence was not considered in view of this finding, remanded for further consideration.

In re Urbanski, 809 F.3d 1237, 117 U.S.P.Q.2d 1499 (Fed. Cir. 2016).

The Federal Circuit affirmed the PTAB’s decision affirming rejection of certain claims as being obvious. The Federal Circuit agreed with the PTAB that there was substantial evidence supporting the finding of obviousness.

Merck & Cie v. Gnosis S.p.A., 808 F.3d 829, 117 U.S.P.Q.2d 1393 (Fed. Cir. 2015).

The Federal Circuit affirmed the PTAB’s conclusion that a patent directed to methods of using folates to lower levels of homocysteine in the human body was obvious, rejecting the patentee’s (Merck’s) arguments that the prior art taught away from the claimed method and that objective indicia of nonobviousness suggested the patentability of the relevant claims. At issue were three references that disclosed all of the limitations at issue in the various claims on which the PTAB instituted IPR. To support these arguments, Merck cited to isolated portions of several prior art references, but the court dismissed these arguments for failing to consider the prior art as a whole, which presented conflicting information about whether the prior art unambiguously taught what Merck asserted. The Federal Circuit found that Merck’s evidence of nexus between the merits of the invention and the evidence of commercial success, licensing, copying, and industry praise was weak.

Nike, Inc. v. Adidas AG, 812 F.3d 1326,117 U.S.P.Q.2d 1967 (Fed. Cir. 2016).

The Federal Circuit affirmed-in-part, vacated-in-part, and remanded the PTAB’s denial of Nike’s motion to amend for cancelling its claims and proposing substitute claims. The PTAB granted Nike’s motion to cancel claims, but denied the motion as to substitute claims because Nike failed to meet its burden of establishing patentability of the substitute claims. Nike argued that the burden was on the petitioner to prove unpatentability of newly proposed substitute claims. The Federal Circuit disagreed and found no error in the PTAB’s placement of the burden on Nike. The PTAB failed to properly analyze the secondary considerations of obviousness, so the Federal Circuit remanded to the PTAB to examine Nike’s evidence and its impact.

Purdue Pharma L.P. v. Epic Pharma, LLC, 811 F.3d 1345, 117 U.S.P.Q.2d 1733 (Fed. Cir. 2016).

The Federal Circuit affirmed the district court’s holding that all of the asserted claims were invalid. Purdue had claimed the end product, not a particular method for creating the product. Thus, the Federal Circuit looked at potential structural and functional differences. Finding none as compared to the prior art products, the Federal Circuit found that the district court did not err in disregarding the claimed process limitation in its obviousness determination. The Federal Circuit likewise found the district court did not err with respect to rejecting Purdue’s secondary consideration arguments.

S. Ala. Med. Sci. Found. v. Gnosis S.p.A., 808 F.3d 823, 117 U.S.P.Q.2d 1405 (Fed. Cir. 2015).

The Federal Circuit affirmed a finding of obviousness by the PTAB despite the PTAB’s error in assessing secondary consideration licensing evidence. The PTAB’s error in assessing licensing evidence was requiring a nexus between the claimed invention and the licensed products. Instead, the test is whether a nexus exists between “the patent and the licensing activity itself, such that the factfinder can infer that the licensing ‘arose out of recognition and acceptance of the subject matter claimed’ in the patent.”


Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 117 U.S.P.Q.2d 1410 (Fed. Cir. 2015).

The Federal Circuit affirmed the PTAB’s refusal to allow the petitioner to submit supplemental information and finding that the petitioner failed to show that two claims of the challenged patent would have been obvious.

Patent Eligibility

Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 117 U.S.P.Q.2d 1693 (Fed. Cir. 2016).

The Federal Circuit affirmed the decision denying Mortgage Grader’s motion to strike First Choice Loan’s patent-ineligibility defense (§101) and the grant of First Choice Loan’s motion for summary judgment that the asserted claims were patent-ineligible. Mortgage Grader contended that the district court should have granted its motion to strike because First Loan had removed the defense previously, thereby precluding First Choice Loan from proceeding with its §101 defense. First Choice argued that the Supreme Court’s decision in Alice constituted good cause for amending its defense. The Federal Circuit agreed that the district court did not abuse its discretion, and found that Mortgage Grader had adequate time to develop its response to the defense.

Patent Exhaustion

Lexmark Int’l, Inc. v. Impression Prods., Inc., _________, 117 U.S.P.Q.2d 1817 (Fed. Cir. 2016) (en banc).

The Federal Circuit affirmed-in-part, reversed-in-part, and remanded to the district court for further review of its decision in an action for infringement of patents relating to toner cartridges. The Federal Circuit affirmed the principles of its earlier decisions in Mallinckrodt v. Medipart and Jazz Photo v. ITC concerning the unified code of patent exhaustion. The Federal Circuit affirmed that a patentee, when selling a patented article subject to a single-use/no-resale restriction that is lawful and clearly communicated to the purchaser, does not by that sale give the buyer, or downstream buyers, the resale/reuse authority that has been expressly denied. The Federal Circuit further affirmed that a U.S. patentee, merely by selling or authorizing the sale of a U.S. patented article abroad, does not authorize the buyer to import the article and sell and use it in the U.S. Those acts are considered infringing acts in the absence of patentee-conferred authority.

Patent Misuse/Inequitable Conduct

TransWeb, LLC v. 3M Innovative Props. Co., 812 F.3d 1295, 117 U.S.P.Q.2d 1617 (Fed. Cir. 2016).

The Federal Circuit affirmed the invalidity, non-infringement, and unenforceability of the process patents. The jury’s finding of antitrust violations and the trebling of attorney’s fees were also affirmed. The district court noted certain circumstantial evidence suggesting a specific intent by employees of patentee to hide the prior art nature of the alleged infringers own products. It was determined that there was a sufficient basis on which a reasonable jury could conclude that the U.S. was the relevant geographic market for the respirators at issue in the case, thus, supporting the antitrust claim for patents found to be unenforceable due to inequitable conduct by the patentee.

Permanent Injunction

Apple Inc. v. Samsung Elecs. Co., 809 F.3d 633, 117 U.S.P.Q.2d 1469 (Fed. Cir. 2015).

The Federal Circuit vacated and remanded the district court’s order denying the patentee’s request for a permanent injunction. The Federal Circuit found that the district court erred when it required, to find irreparable harm, the patentee to prove that the infringing features were the exclusive or predominant reason why consumers bought the infringing products.


Pfizer, Inc. v. Lee, 811 F.3d 466, 117 U.S.P.Q.2d 1781 (Fed. Cir. 2016).

The Federal Circuit affirmed the district court’s holding that an incomplete restriction requirement satisfied the notice requirement of 35 U.S.C. § 132, thereby preventing accrual of an “A-Delay” that would have justified patent term extension. During prosecution, the Examiner issued a restriction requirement, but neglected to categorize six dependent claims of the 144 pending claims. The applicant, Wyeth, informed the examiner of this omission, so the Examiner issued a corrected restriction requirement that categorized those six claims. Wyeth sought a judgment to add the 197 days between the issuance of the first and second restriction requirements. The Federal Circuit commented that “it did not require significant guesswork . . . to determine where the inadvertently omitted claims belonged,” especially given that the independent claims from which the six omitted claims depended had been categorized. Because Wyeth had sufficient notice based on the first restriction requirement, which neglected only six dependent claims, Wyeth could have responded to that first restriction requirement, thus preventing A-Delay accrual between the issuances of the first and second restriction requirements.


The Dow Chem. Co. v. Nova Chems. Corp. (Canada), 809 F.3d 1223, 117 U.S.P.Q.2d 1445 (Fed. Cir. 2015).

The Federal Circuit denied the patentee’s combined petition for rehearing and rehearing en banc in a case in which a panel of the Federal Circuit held the asserted claims to be invalid for indefiniteness since there were three known methods for determining the claimed “coefficient,” and the patentee’s expert developed a fourth method for doing so during the litigation, but each method produced different results and nothing in the patent’s intrinsic evidence provided guidance on which method should be used.

Reissue/Written Description

Zoltek Corp. v. United States, _______, 117 U.S.P.Q.2d 1866 (Fed. Cir. 2016).

The Federal Circuit reversed the Court of Federal Claims for its erroneous holding that the asserted reissue claims were invalid as obvious and lacking written description. The reissued claims, directed to a process for manufacturing carbon fiber sheet materials, did not lack written description support, even though claims were broadened when the step of preparing a starting material was eliminated. The specification did not state that the step of preparing the starting material was needed to be performed by the same entity as the later steps of the process.


TriReme Med., LLC v. AngioScore, Inc., 812 F.3d 1050, 117 U.S.P.Q.2d 1568 (Fed. Cir. 2016).

The Federal Circuit reversed and remanded the district court’s dismissal of the case for lack of standing. At issue is whether an inventor assigned away all of his rights to the patent, thus stripping the inventor of standing. The inventor signed an agreement stating that all prior inventions were to be listed in an exhibit. No inventions were identified. AngioScore argued that all such inventions before the executed agreement by the inventors were owned by them. The district court disagreed. The Federal Circuit agreed that the prior inventions were not automatically assigned. The case was remanded for the district court to determine whether work done after the effective date of the contract affected the assignment.


G&E Real Estate, Inc. v. Avison Young-Washington, D.C., LLC, 2016 U.S. Dist. LEXIS 23439 (D.D.C. 2016).

A plaintiff must identify, with particularity, each trade secret it claims was misappropriated. This must be done to allow the finder of fact to distinguish a legitimate trade secret from other confidential information that is not a trade secret or is publicly available information. Here, the only secret that the plaintiff identified with particularity is the mere existence of a relationship with Grubb and Ellis. The plaintiff never identified the secrets themselves that were transmitted to him. Thus, the plaintiff’s misappropriation of trade secrets claim fails.

Nejla K. Lane & Lane Legal Servs., P.C. v. Le Brocq, 2016 U.S. Dist. LEXIS 40667 (D. Ill. 2016).

The defendant argued that the plaintiffs’ ITSA claim fails because the plaintiffs did not allege that the defendant has used any of the supposed trade secrets in his business or suffered any damages from such use. While proving unauthorized use of a trade secret is one means of establishing liability under the ITSA, it is not the only means because liability also attaches for improper acquisition or disclosure of a trade secret. In their complaint, the plaintiffs alleged that the defendant wrongfully acquired its trade secrets through improper means when he stole the information upon leaving the firm. This allegation, if true, could establish a violation of the ITSA. Thus, the district court found no basis to dismiss on this ground.

Orthofix Inc. v. Gordon, 2016 U.S. Dist. LEXIS 38852 (C.D. Ill. 2016).

ITSA is the sole remedy for tort claims arising from the misappropriation of a trade secret. This means that the common law of Illinois cannot be used to bring a tort claim for the misappropriation of trade secrets, and cannot be plead as an alternative theory to an ITSA claim. The question, then, is whether Orthofix’s claims for tortious interference grounded in the misappropriation of confidential information, as opposed to trade secrets are preempted by ITSA. Orthofix argued that every conceivable piece of playbook information is a trade secret just as surely as it is confidential. If that reasoning is accepted, every piece of misappropriated information on which the tortious interference claim is based must logically be, by Orthofix’s lights, trade secret information. Because the exact scope, and success or failure, of Orthofix’s trade secret and breach of contract claims has not yet been determined, Gordon cannot obtain a JMOL.

Stryker Corp. v. Ridgeway, 2016 U.S. Dist. LEXIS 10636 (W.D. Mich. 2016).

Biomet contended that there is no evidence that it threatened to misappropriate trade secrets, or that it encouraged, solicited, or condoned Steitzer’s alleged misappropriation of Stryker’s trade secrets. Stryker responded that liability for Steitzer’s conduct is imputed to Biomet because it “knew of Steitzer’s bad acts, participated in those bad acts, and did nothing to prevent [them].” But, Stryker offered no evidence to support these assertions. Stryker also argued that Biomet is vicariously liable for the conduct of Steitzer because Steitzer was an employee or agent of Biomet. But, Stryker’s assertion of vicarious liability for actual misappropriation does not address the issue raised by Biomet, which is whether Stryker can obtain injunctive relief against Biomet for threatened misappropriation. Stryker noted that Biomet continues to use the pricing proposed by Steitzer in Biomet’s price agreement with Albany Medical. But Biomet’s price agreement is not a Stryker trade secret, and its continued use does not threaten to misappropriate any Stryker trade secrets. Thus, the district court will grant summary judgment in favor of Biomet to the extent that Stryker asserted a claim for threatened misappropriation.

Wilson v. Corning, Inc., 2016 U.S. Dist. LEXIS 37731 (D. Minn. 2016).

Corning maintained that no act by it after April 21, 2005, can constitute trade secret misappropriation and moved for partial summary judgment on any such claim. The defendants argued that the introduction of its HYPERFlask and HYPERStack products, as well as the filing and issuance of Corning’s patents all occurred after the plaintiffs’ patents were published, and therefore those actions cannot constitute trade secret misappropriation. The district court agreed that, to the extent that the plaintiffs’ asserted trade secrets are contained in the published patents, there can be no claim for misappropriation for use that occurs after publication. The plaintiffs, however, asserted that not all of Wilson Wolf’s trade secrets were published in its patents, and that those particular trade secrets remain secret. Even accepting that the plaintiffs have fairly alleged that they disclosed trade secret information outside of the information published in its patents, the district court concluded that the plaintiffs have not identified any such particular trade secret with sufficient specificity.


Likelihood of Confusion

In re Bay State Brewing Co., 117 U.S.P.Q.2d 1958 (TTAB 2016).

The TTAB affirmed the refusal to register the mark TIME TRAVELER BLONDE (with “Blonde” disclaimed) in class 32 for “beer” on the ground of likelihood of confusion with the mark “TIME TRAVELER” for “beer, ale, and lager” in class 32. Theapplicant conceded that there was a likelihood of confusion between its mark and the registrant’s mark. The applicant asserted, however, that it had a consent agreement with the registrant and that “confusion is likely unless they both adhere to the terms of the [agreement].” The consent agreement, among other provisions, provided that the applicant would not use the applied-for mark outside of New England and the State of New York, while the registrant’s use, however, was not geographically limited.

The TTAB considered the du Pont factors, all of which weighed in favor of a finding of a likelihood of confusion. The TTAB noted several problems with the consent agreement. First, the parties agreed to allow use of their respective marks in the same territories (New England and New York). Second, the registration that the applicant would obtain would not reflect the geographical use restrictions that it voluntarily restricted itself to, thereby rendering the registration misleading. The TTAB also noted that although the consent agreement provided that the parties would not use the trade dress of the other, more protection was sought by requesting registration of standard character marks. Furthermore, the terms of the agreement required only that the parties did not use each other’s trade dress, which the TTAB found did not alleviate a likelihood of confusion between virtually identical marks used on virtually identical products.

Thus, the TTAB noted that, despite the Federal Circuit’s instruction that consent agreements should be given great weight, the specific consent agreement here was outweighed by other relevant likelihood of confusion factors, such as the virtually identical marks, channels of trade, and purchasers. The refusal to register the mark was affirmed.

Opposition based on Section 2(a)

Bos. Athletic Ass’n v. Velocity, LLC, 117 U.S.P.Q.2d 1492 (TTAB 2015).

The TTAB dismissed BAA’s opposition to a trademark application filed by Velocity for MARATHON MONDAY for clothing. BAA opposed Velocity’s application because it created a false suggestion of a connection with BAA, the organizer of the Boston Marathon. BAA did not register MARATHON MONDAY, but BAA had used both BOSTON MARATHON and MARATHON MONDAY in association with marathon races, and thus had a “real interest” sufficient to establish standing in the case.

Under Section 2(a), a registration may be prohibited if it “falsely suggest[s] a connection with persons, living or dead, institutions, beliefs or national symbols.” To establish such a claim, BAA had to establish that (1) MARATHON MONDAY is, or is a close approximation of, BAA’s name or identity; (2) MARATHON MONDAY would be recognized by purchasers of Velocity’s goods as pointing uniquely and unmistakably to BAA; (3) BAA is not connected with the goods sold by Velocity; and (4) BAA’s name or identity is sufficiently famous such that a connection with BAA is presumed.

The TTAB found that MARATHON MONDAY was not a close approximation of BAA’s identity and that MARATHON MONDAY would not be uniquely and unmistakably recognized as pointing to BAA. Additionally, Velocity provided evidence that established that other entities use MARATHON MONDAY to refer to marathons other than the Boston Marathon. Without needing to analyze the third and fourth factors, the TTAB dismissed the opposition and MARATHON MONDAY was allowed to proceed to registration.

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; Michael N. Spink, Brinks, Hofer, Gilson & Lione; Mark R. Anderson, Akerman LLP. Patents: Cynthia K. Barnett, Johnson & Johnson; R. Trevor Carter, Daniel M. Lechleiter, and 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.