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Decisions in Brief

By John C. Gatz

Published in Landslide Vol. 11 No.2, ©2018 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.


Battle over Terms of Grumpy Cat License Agreement

Grumpy Cat Ltd. v. Grenade Beverage LLC, No. SA CV 15-2063-DOC (DFMx), 2018 U.S. Dist. LEXIS 91342, 2018 WL 2448126 (S.D. Cal. May 31, 2018). Grumpy Cat Ltd. is the owner of the intellectual property (IP) rights in images of Tardar Sauce, a cat with a grumpy face. In 2013, Grenade Beverage entered into a contract with Grumpy Cat Ltd. to use the cat’s likeness in promoting iced coffee products. Grenade used the cat’s image to promote not only iced coffees, but also non-iced products, including ground coffee. Grumpy Cat Ltd. sued Grenade for using the cat images in a way that went beyond the bounds of the contract. The contract text allowed Grenade to use Tardar Sauce’s likeness to promote “a line of Grumpy Cat–branded coffee products,” which was determined by the jury to be limited to iced coffee. The district court reached the question as to whether contract text stating that “additional products within the Product Category [nonalcoholic beverages] that may, upon the Parties’ mutual approval, be marketed hereunder” was a covenant or a condition. If it were determined to be a covenant, Grenade could not be sued for copyright or trademark infringement. If it was a condition, they could be sued for copyright and trademark infringement. The district court determined the language amounted to a condition, and therefore Grenade was not entitled to declaratory judgment on the copyright and trademark infringement questions.

Egyptian Copyright Heirs Lack Standing for Copyright against Derivative Work

Fahmy v. Jay-Z, 891 F.3d 823, 126 U.S.P.Q.2d 1722 (9th Cir. 2018). The heirs of Egyptian composer Baligh Hamdy sued Jay-Z for sampling the song “Khosara” in his hit “Big Pimpin’.” The district court dismissed the case based on a lack of standing by the heirs to bring copyright claims. The district court found that Egyptian law has a transferable right of “adaptation,” which (1) was transferred in a 2002 agreement that transferred all economic rights from the heirs, (2) is equivalent to the right to create a derivative work, and (3) is an economic right and not a moral right. The district court found that the 2002 agreement met all requirements under Egyptian law to transfer economic rights in a copyright, and that a reservation of royalties does not confer standing on the heirs to sue for copyright infringement.

The Ninth Circuit affirmed the district court. The Ninth Circuit started by looking at Egyptian copyright law and the moral rights and economic rights granted to authors. Egypt provides authors with moral rights to prevent “distortions” and “mutilations” of the author’s work, and these rights are not transferrable. Egypt also provides economic rights to allow an author to profit from his or her work. These economic rights are transferable and include the right to make reproductions and adaptations of the work. The Ninth Circuit found that the plain language of Egyptian copyright law provides for the transfer of the economic right to make derivative works by allowing the transfer of the right of adaptation. Next, the district court found that U.S. law does not recognize moral rights for copyrighted music. The district court further determined that any moral right provided by Egyptian law would only allow an injunction in Egypt to prevent the mutilation of the work, and not provide for any sort of economic damages.

Finally, the district court rejected the claims of the heirs that the 2002 agreement transferring the economic rights in “Khosara” was deficient, and found that the agreement was valid and clearly transferred the right to make derivative works. Therefore, the heirs lack standing to bring a copyright infringement suit.


Attorney Fees

Stone Basket Innovations, LLC v. Cook Medical LLC, 892 F.3d 1175, 127 U.S.P.Q.2d 1296 (Fed. Cir. 2018). The Federal Circuit affirmed the district court’s denial of Cook’s motion seeking attorney fees pursuant to 35 U.S.C. § 285. The Federal Circuit found that the district court did not abuse its discretion. The substantive strength of the plaintiff’s litigating position was not exceptionally weak. Moreover, Cook did not take any steps during the litigation to inform the plaintiff of the specific invalidity argument on which Cook relied on appeal to support its contention that the plaintiff should have known its conduct was clearly unreasonable or so objectively baseless as to merit attorney fees.

Claim Construction

Blackbird Tech LLC v. ELB Electronics, Inc., 895 F.3d 1374, 127 U.S.P.Q.2d 1290 (Fed. Cir. 2018). The Federal Circuit vacated and remanded the district court’s finding of noninfringement with respect to one claim based on incorrect claim construction of the term “attachment surface.”


WesternGeco LLC v. ION Geophysical Corp., 138 S. Ct. 2129, 127 U.S.P.Q.2d 1001 (2018). The U.S. Supreme Court held that a patentee that proves infringement of its patent by a company that ships the parts to be assembled overseas is entitled to recover lost foreign profits. In deciding whether lost foreign profits could be awarded, the Court followed a two-step process for determining extraterritoriality. First, the question is whether the presumption against extraterritoriality has been rebutted. If not, then the question is whether the case involves a domestic application of the statute. Here, the Supreme Court found the case to be resolved with this second step. The Supreme Court found 35 U.S.C. § 284 (as it relates to infringement under 35 U.S.C. § 271(f)(2)) is domestic—it refers to the act of exporting components from the United States.

Declaratory Judgment

AIDS Healthcare Foundation, Inc. v. Gilead Sciences, Inc., 890 F.3d 986, 126 U.S.P.Q.2d 1690 (Fed. Cir. 2018). The Federal Circuit confirmed the district court’s decision of dismissing the declaratory judgment action of Healthcare for lack of an actual controversy. The Federal Circuit noted that Healthcare’s requests for generic production of the patentee’s products elicited no response from the solicited pharmaceutical manufacturers. Neither Healthcare nor any producer of the patentee’s products is infringing or preparing to infringe any patent. An adverse economic interest alone is insufficient for maintaining a declaratory judgment action.

Double Patenting

UCB, Inc. v. Accord Healthcare, Inc., 890 F.3d 1313, 127 U.S.P.Q.2d 1010 (Fed. Cir. 2018). The Federal Circuit affirmed the district court’s conclusion that the asserted claims were not invalid. The district court applied the correct legal standards in its obviousness-type double patenting, obviousness, and anticipation analyses.

Inequitable Conduct/Attorney Fees

Energy Heating, LLC v. Heat On-The-Fly, LLC, 889 F.3d 1291, 126 U.S.P.Q.2d 1566 (Fed. Cir. 2018). The Federal Circuit affirmed the district court’s inequitable conduct ruling, as well as various state law rulings connected with a tortious interference claim. The Federal Circuit found that the patentee failed to disclose certain on-sale bar activities to the U.S. Patent and Trademark Office (USPTO). However, the Federal Circuit reversed and remanded the district court’s denial of attorney fees because the court failed to articulate a basis for denying attorney fees following the inequitable conduct finding.


FastShip, LLC v. United States, 892 F.3d 1298, 127 U.S.P.Q.2d 1165 (Fed. Cir. 2018). The Federal Circuit affirmed the U.S. Court of Federal Claims’ (USCFC’s) decision on two issues, but modified the damages award in a patent infringement suit against the U.S. Navy over combat ships and patents related to ship hulls and waterjet propulsion systems. First, the Federal Circuit affirmed the USCFC’s finding that one of the two categories of accused combat ships was not manufactured by or for the government, as required by 28 U.S.C. § 1498. Second, the Federal Circuit affirmed the USCFC’s infringement finding of the second category of accused combat ships based on an agreed construction. Third, the Federal Circuit increased the damages award by finding that the USCFC miscalculated the royalty base in reaching a damages finding.

Inter Partes Review (IPR)

Adidas AG v. Nike, Inc., 894 F.3d 1256, 127 U.S.P.Q.2d 1163 (Fed. Cir. 2018). The Federal Circuit remanded to the Patent Trial and Appeal Board (PTAB) for additional proceedings in view of SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018). Petitioner Adidas filed an IPR petition on two grounds. The PTAB instituted IPR on the first ground alone but ultimately found that Adidas had not met its burden of demonstrating any of the claims was unpatentable. During the pendency of Adidas’s appeal, the U.S. Supreme Court issued the SAS Institute decision, and Adidas promptly moved for remand for the PTAB to consider the second ground raised in its IPR petition. The Federal Circuit agreed.

WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308, 126 U.S.P.Q.2d 1541 (Fed. Cir. 2018). The Federal Circuit upheld six IPR written decisions invalidating all instituted claims of three challenged patents. The Federal Circuit concluded that the PTAB did not err in ruling that the petitions were not time-barred under 35 U.S.C. § 315(b), and that substantial evidence supported the unpatentability determinations.

IPR/Sovereign Immunity

Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc., 896 F.3d 1322, 127 U.S.P.Q.2d 1281 (Fed. Cir. 2018). The Federal Circuit affirmed the PTAB’s denial of a motion to terminate an IPR proceeding on the basis of sovereign immunity after titles to patents were transferred to the Saint Regis Mohawk Tribe in an effort to protect them. The Federal Circuit ultimately held that tribal sovereign immunity could not be asserted in IPRs because several factors illustrate that an IPR proceeding is more like an agency enforcement action than a civil suit brought by a private party.


General Hospital Corp. v. Sienna Biopharmaceuticals, Inc., 888 F.3d 1368, 126 U.S.P.Q.2d 1556 (Fed. Cir. 2018). On appeal from an interference proceeding, the Federal Circuit upheld the PTAB’s determination that the claims of the application lacked sufficient written description. However, the Federal Circuit held that the PTAB’s denial of General Hospital’s contingent motion to amend was arbitrary and capricious because the PTAB did not engage in a substantive analysis of the claim’s patentability.


In re VerHoef, 888 F.3d 1362, 126 U.S.P.Q.2d 1561 (Fed. Cir. 2018). The Federal Circuit upheld the rejection of a pending application under 35 U.S.C. § 102(f) because the application failed to name a joint inventor. The Federal Circuit reasoned that the missing joint inventor’s contribution was an essential element of the claimed invention because that conception did not occur until the contribution.


M-I Drilling Fluids UK Ltd. v. Dynamic Air Ltda., 890 F.3d 995, 126 U.S.P.Q.2d 1681 (Fed. Cir. 2018). The Federal Circuit reversed and remanded the district court’s dismissal for lack of personal jurisdiction. The district court found that because the accused infringer was not a U.S. company and that the contract relating to the accused infringing processes did not require that the processes occur on U.S.-flagged ships, there was no standing. The Federal Circuit disagreed, finding that the case was for patent infringement, not breach of contract. The accused infringer installed the systems on U.S.-flagged ships, which put the systems in U.S. jurisdiction.


Zeroclick, LLC v. Apple Inc., 891 F.3d 1003, 126 U.S.P.Q.2d 1765 (Fed. Cir. 2018). The Federal Circuit vacated and remanded the district court’s finding of the asserted claims as invalid for indefiniteness. The district court found the claims were indefinite as having means-plus-function limitations for which the specification did not disclose sufficient structure. The Federal Circuit disagreed with the district court’s findings of certain limitations as being means-plus-function limitations.


Anacor Pharmaceuticals, Inc. v. Iancu, 889 F.3d 1372, 126 U.S.P.Q.2d 1784 (Fed. Cir. 2018). The Federal Circuit affirmed the PTAB’s decision that the claims were invalid for obviousness.

Ericsson Inc. v. Intellectual Ventures I LLC, 890 F.3d 1336, 127 U.S.P.Q.2d 1149 (Fed. Cir. 2018). The Federal Circuit reversed in part, vacated in part, and remanded the PTAB’s patentability determination of the IPR. The Federal Circuit found that substantial evidence did not support the PTAB’s finding of no anticipation, and instead that the claim was anticipated. However, the Federal Circuit found that substantial evidence did not support the PTAB’s ruling of nonobviousness. Therefore, the Federal Circuit concluded the claim was not patentable and reversed the PTAB’s decision. The Federal Circuit vacated the decision as to the narrower claims and remanded for determination of patentability in view of its findings.

Impax Laboratories Inc. v. Lannett Holdings Inc., 893 F.3d 1372, 127 U.S.P.Q.2d 1219 (Fed. Cir. 2018). The Federal Circuit affirmed the district court’s decision finding that the claims of two patents were not invalid for obviousness.

In re Durance, 891 F.3d 991, 127 U.S.P.Q.2d 1141 (Fed. Cir. 2018). The Federal Circuit vacated and remanded the PTAB’s decision affirming an examiner’s obviousness rejection. The Federal Circuit found that the PTAB failed to consider arguments in the applicants’ reply brief that were properly made in response to the examiner’s answer.

PGS Geophysical AS v. Iancu, 891 F.3d 1354, 127 U.S.P.Q.2d 1032 (Fed. Cir. 2018). The Federal Circuit affirmed the PTAB’s ruling that the claims were unpatentable for obviousness. The Federal Circuit found that the PTAB properly found a motivation to combine the prior art references, and that the PTAB’s finding of no teaching away was sufficiently supported in the record.

Sirona Dental Systems GmbH v. Institut Straumann AG, 892 F.3d 1349, 127 U.S.P.Q.2d 1099 (Fed. Cir. 2018). The Federal Circuit affirmed in part, vacated in part, and remanded in part the PTAB’s holding of claims as being obvious and the PTAB’s denial of Sirona’s contingent motion to amend the claims. The Federal Circuit found substantial evidence supporting the factual findings on obviousness. The Federal Circuit vacated the PTAB’s denial of Sirona’s contingent motion to amend in view of the improper placement of the burden on Sirona to demonstrate the proposed claims were patentable, and remanded to the PTAB to reconsider.

Obviousness/Prior Publication

Medtronic, Inc. v. Barry, 891 F.3d 1368, 127 U.S.P.Q.2d 1208 (Fed. Cir. 2018). The Federal Circuit reviewed the PTAB’s decision in an IPR proceeding brought by Medtronic after being sued by Dr. Barry for infringement of two patents. The Federal Circuit affirmed the PTAB’s rejection of granting invalidity based on the two references because they did not render the patents obvious by themselves or in combination. The Federal Circuit addressed whether the PTAB correctly asserted that the video and presentation were not prior publications because they were not publicly available. The Federal Circuit laid out several factors including “the size and nature of the meetings and whether they are open to people interested in the subject matter of the material disclosed” and “whether there is an expectation of confidentiality between the distributor and the recipients of the materials.” The Federal Circuit remanded this issue because the record did not bear enough information based on these factors.

Petition Denied

Berkheimer v. HP Inc., 890 F.3d 1369, 127 U.S.P.Q.2d 1061 (Fed. Cir. 2018). The Federal Circuit denied HP Inc.’s petition for rehearing en banc.

Xitronix Corp. v. KLA-Tencor Corp., 892 F.3d 1194, 127 U.S.P.Q.2d 1026 (Fed. Cir. 2018). The Federal Circuit denied KLA-Tencor’s petition for rehearing en banc.

Post-Grant Review

Altaire Pharmaceuticals, Inc. v. Paragon Bioteck, Inc., 889 F.3d 1274, 126 U.S.P.Q.2d 1661 (Fed. Cir. 2018). The Federal Circuit reversed in part, vacated in part, and remanded the PTAB’s decision that the asserted claims were unpatentable for obviousness. The Federal Circuit found that the PTAB incorrectly refused to consider timely filed affidavits and other materials.

Printed Matter

Praxair Distribution, Inc. v. Mallinckrodt Hospital Products IP Ltd., 890 F.3d 1024 (Fed. Cir. 2018). The Federal Circuit affirmed in part and reversed in part the PTAB’s finding of all but one asserted claim as being obvious.


D Three Enterprises, LLC v. SunModo Corp., 890 F.3d 1042, 126 U.S.P.Q.2d 1673 (Fed. Cir. 2018). The Federal Circuit affirmed the district court’s finding of the claims being invalid due to the inability to claim priority to the provisional application. The Federal Circuit agreed with the district court’s holding that the provisional application lacked a written description relating to the claimed washerless assemblies.

Public Use/Claim Construction

Polara Engineering Inc. v. Campbell Co., 894 F.3d 1339, 127 U.S.P.Q.2d 1197 (Fed. Cir. 2018). The Federal Circuit affirmed two district court rulings against accused infringer Campbell. The Federal Circuit affirmed the district court’s denial of JMOL regarding invalidity for prior public use. Although Polara tested a prototype of the patented system in public nearly 20 months prior to the critical date, Polara presented evidence at trial that testing was needed at crosswalks of various sizes and configurations and during different weather conditions to ensure proper functionality for a device whose primary purpose is public safety. Second, the Federal Circuit affirmed the district court’s denial of JMOL regarding anticipation and obviousness.


XY, LLC v. Trans Ova Genetics, L.C., 890 F.3d 1282, 127 U.S.P.Q.2d 1084 (Fed. Cir. 2018). The Federal Circuit affirmed in part, vacated in part, dismissed in part, and remanded the district court’s antitrust, breach of contract, invalidity, willfulness, and ongoing royalty rate determinations. The Federal Circuit found that Trans Ova failed to carry the burden of proof for the antitrust counterclaims and therefore affirmed the district court’s finding. The Federal Circuit also found that the jury was properly instructed on materiality, and therefore affirmed the district court’s denial of Trans Ova’s motion on the breach of contract issues. The Federal Circuit affirmed the denial of Trans Ova’s motion for a new trial on invalidity, and dismissed as moot Trans Ova’s appeal of the district court’s willfulness finding. The Federal Circuit vacated the district court’s ongoing royalty rate and remanded. The district court focused on pre-verdict factors that were either irrelevant or less relevant than post-verdict factors, and could not provide any reasoned basis for lowering the royalty XY could recover for future infringement from the rate the jury provided for past infringement.

Subject Matter Eligibility—§ 101

Aatrix Software, Inc. v. Green Shades Software, Inc., 890 F.3d 1354, 127 U.S.P.Q.2d 1072 (Fed. Cir. 2018). The Federal Circuit denied the appellee’s petition for panel rehearing and rehearing en banc in a case in which the Federal Circuit held that, in the context of step two of the Alice patent eligibility analysis under 35 U.S.C. § 101, whether a claim element or combination of elements would have been well understood, routine, and conventional to a skilled artisan in the relevant field at a particular point in time is a question of fact.

SAP America, Inc. v. InvestPic, LLC, 890 F.3d 1016, 126 U.S.P.Q.2d 1638 (Fed. Cir. 2018). The Federal Circuit affirmed the district court’s ruling that certain claims directed to statistical methods for analyzing financial data were ineligible abstract ideas under § 101 and therefore invalid.


In re ZTE (USA) Inc., 890 F.3d 1008, 126 U.S.P.Q.2d 1626 (Fed. Cir. 2018). The Federal Circuit held that the plaintiff in a patent case bears the burden of establishing proper venue under 28 U.S.C. § 1400(b). The Federal Circuit granted the mandamus petition, finding that the district court failed to consider several factors bearing on whether the plaintiff met its burden to show that venue was proper.

In re BigCommerce, Inc., 890 F.3d 978, 126 U.S.P.Q.2d 1632 (Fed. Cir. 2016). The Federal Circuit held that in states where there are multiple judicial districts, a defendant is deemed to reside only in the single judicial district where it maintains a principal place of business. If a defendant does not maintain a principle place of business within a multidistrict state, the defendant is deemed to reside in the district where its registered office is located.

In re HTC Corp., 889 F.3d 1349, 126 U.S.P.Q.2d 1618 (Fed. Cir. 2018). The Federal Circuit denied a mandamus petition seeking review of the denial of HTC’s motion to dismiss for improper venue. In doing so, the Federal Circuit affirmed the long-standing principle that aliens are subject to venue anywhere in the United States and this was not changed by the U.S. Supreme Court’s TC Heartland decision.


Advanced Fluid Systems, Inc. v. Huber, 295 F. Supp. 3d 467 (M.D. Pa. 2018). The courts have not addressed whether the Pennsylvania Uniform Trade Secrets Act (PUTSA) allows for vicarious trade secret liability. The near unanimous consensus of federal and state courts holds that the Uniform Trade Secrets Act—on which the PUTSA is based—does contemplate vicarious liability when state law otherwise provides the cause of action. Pennsylvania law recognizes respondent superior liability for intentional and even criminal acts of an employee. As a result, the district court elected to join the majority of federal and state courts and held that the PUTSA authorizes vicarious trade secret liability.

BladeRoom Group, Ltd. v. Emerson Electric Co, No. 5:15-cv-01370-EJD, 2018 U.S. Dist. LEXIS 132071, 2018 WL 3707285 (N.D. Cal. Aug. 3, 2018). The jury found that BladeRoom proved by a preponderance of the evidence that it owned two trade secrets misappropriated by Emerson and that the misappropriation was willful and malicious. Emerson argued in a JMOL motion that proof of ownership of the two trade secrets required expert testimony. The district court found that expert testimony was unnecessary. BladeRoom proved the existence and ownership of the purloined trade secrets from fact witnesses.

Founder Starcoin, Inc. v. Launch Labs, Inc., No. 18-CV-972 JLS (MDD), 2018 U.S. Dist. LEXIS 113737, 2018 WL 3343790 (S.D. Cal. July 9, 2018). A plaintiff seeking relief for misappropriation of trade secrets must identify the trade secrets and carry the burden of showing they exist. A plaintiff must describe the subject matter of the trade secret with sufficient particularity to separate it from matters of general knowledge. The district court denied Founder’s motion for a preliminary injunction, finding that licensing digital collectibles based on athletes, entertainers, and celebrities and marrying this idea with the blockchain industry is overbroad and does not qualify as a valid trade secret.

PDC Machines Inc. v. Nel Hydrogen A/S, No. 17-5399, 2018 U.S. Dist. LEXIS 100506, 2018 WL 3008531 (E.D. Pa. June 15, 2018). The district court found that the plaintiff’s allegations that the defendants used its trade secrets to develop a high-pressure gas diaphragm processor were sufficient at the pleading stage. There is no requirement to identify specific trade secrets. The district court also found that allegations of Defend Trade Secrets Act (DTSA) pre-enactment acquisition of a trade secret coupled with post-enactment continued use are sufficient to state a claim under the DTSA.

Raytheon Co. v. Indigo Systems Corp., 895 F.3d 1333 (Fed. Cir. 2018). A jury found that Indigo did not misappropriate Raytheon’s trade secrets, and the district court denied Raytheon’s JMOL and new trial motions. The district court also denied Indigo’s motion for an award of attorney fees. The Federal Circuit affirmed. Raytheon’s argument that Indigo must have misappropriated the trade secrets because Indigo placed a former Raytheon employee in a position to do the same kind of work that he had done at Raytheon was insufficient to show that the former Raytheon employee shared Raytheon trade secrets with Indigo.


Deceptive/Deceptively Misdescriptive

In re Canine Caviar Pet Foods, Inc., 126 U.S.P.Q.2d 1590 (T.T.A.B. 2018). Canine Caviar appealed the refusal to register the mark CANINE CAVIAR for “animal foodstuffs, pet foods, edible pet treats.” The application was refused under Trademark Act (1) section 2(a) for being deceptive in relation to the goods, and (2) section 2(e)(1) for being deceptively misdescriptive.

Under the test for deceptiveness, the Trademark Trial and Appeal Board (TTAB) found that relevant consumers may understand CANINE CAVIAR to refer to a high-quality product or to refer to goods containing caviar (fish roe). However, even though the evidence indicated that a few companies appeared to offer caviar for pets, the evidence overwhelmingly suggested that caviar is almost never used as an ingredient in pet food, and thus even those consumers who perceive that caviar means fish roe are not likely to believe that the goods contain caviar. Accordingly, the TTAB found that CANINE CAVIAR was not deceptive of Canine Caviar’s goods. Additionally, as the first two prongs of the test for whether a mark is deceptive are the same as the test for whether a mark is deceptively misdescriptive, the TTAB determined the mark was also not deceptively misdescriptive. The TTAB also found that CANINE should be disclaimed.

Genericness/Highly Descriptive

Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 127 U.S.P.Q.2d 1041 (Fed. Cir. 2018). Coca-Cola filed applications for trademarks that included the term ZERO for soft drinks and sports drinks. Royal Crown and Dr Pepper/Seven Up (collectively, Royal Crown) opposed Coca-Cola’s applications on the grounds that the term ZERO was generic or at least highly descriptive and that Coca-Cola had not shown that its marks had acquired distinctiveness for the goods at issue. The TTAB determined that Royal Crown failed to demonstrate that ZERO was generic for the broad category of soft drinks, sports drinks, and energy drinks, which encompasses the narrow category of soft drinks, sport drinks, and energy drinks that contain minimal or no calories. Instead, Royal Crown had only offered indirect evidence of competitor use of ZERO, competitor trademark applications and registrations, consumer use of ZERO, and Coca-Cola’s owner use of ZERO. The TTAB did not determine whether ZERO was highly descriptive of the goods. On the issue of acquired distinctiveness, the TTAB found that Coca-Cola had established that it had acquired distinctiveness in the term ZERO.

The Federal Circuit determined that the TTAB erred in its framing of the genericness inquiry and that the TTAB should have determined the level of descriptiveness of the term ZERO before considering whether Coca-Cola had established the marks had acquired distinctiveness. Specifically, on the genericness issue, the TTAB failed to consider whether the relevant consuming public would consider the term ZERO to be generic for a subcategory of drinks with little or no calories/carbohydrates, noting that the term ZERO need not be equated with the broad genus but rather with a key aspect of at least a subgroup of the beverages claimed in the application. The Federal Circuit remanded this issue to apply the proper legal standard for genericness. The Federal Circuit also found that the TTAB had not made any finding as to the degree of descriptiveness of the term ZERO, in particular whether ZERO was highly descriptive, and thus vacated the TTAB’s finding on acquired distinctiveness and remanded for further proceedings.

Likelihood of Confusion

In re I-Coat Co., LLC, 126 U.S.P.Q.2d 1730 (T.T.A.B. 2018). Applicant I-Coat sought registration on the Principal Register of the mark INDIGO (in standard characters) and two INDIGO AR + Design marks in class 9 for “optical lenses, namely, corrective lenses sold through eye care professionals.” The examining attorney refused registration of all of the applications under section 2(d) of the Trademark Act based on a likelihood of confusion with the mark INDIGO for “ski glasses, ski goggles, goggles for sports, protective sport helmets; sunglasses, bags specifically adapted for protective helmets” in class 9 (the cited mark). The applicant appealed, and the TTAB affirmed.

The TTAB considered three Internet uses and three third-party registrations of INDIGO formative marks submitted by the applicant to show that the term INDIGO is significantly weak in connection with the involved goods. The TTAB found that the amount of Internet evidence presented to be insignificant and found that none of the third-party registrations was as similar to the cited mark as the applicant’s mark.

In considering the Du Pont factors, the TTAB recognized that two such factors are key: the similarities between the marks and the similarities of the goods and services. Here, the applicant’s INDIGO mark in standard characters was identical to the cited mark. With respect to the applicant’s two design marks, the TTAB noted that “AR” was disclaimed and displayed much smaller than the term INDIGO and, as such, the most dominant feature of the marks was the term INDIGO. The TTAB also found that the totality of the Internet and third-party registrations presented sufficiently demonstrated that consumers would readily expect the goods of the applicant’s mark and the cited mark to come from the same sources. Specifically, the TTAB noted that although the applicant’s goods were limited to sale “through eye care professionals,” the identification of goods in the cited mark did not recite any limitations as to the channels of trade in which its goods would be offered. Finally, the TTAB found that even careful purchasers who noticed the difference between the marks would not ascribe them to differences in source but would see the marks as variations of each other, pointing to a single source. Thus, the refusal to register the applicant’s marks on the ground of likelihood of confusion was affirmed as to all three applications.

Opposition Procedure

Trans-High Corp. v. JFC Tobacco Corp., 127 U.S.P.Q.2d 1175 (T.T.A.B. 2018). Trans-High’s uncontested motion to extend the close of discovery by 30 days and its motion to extend the time to respond to opposer JFC Tobacco’s written requests by 15 days was granted by the TTAB. The TTAB found that the applicant filed its motions before the respective time periods expired. The TTAB noted that the proper standard is good cause and that it is generally liberal in granting extensions of time before the specified period of time elapses, provided that the moving party is not guilty of negligence or bad faith and the privilege of extensions has not been abused. Here, the TTAB found that the good cause standard was met, even though neither party took advantage of first five months of the discovery period. The applicant indicated that it experienced delays during proceedings as a result of Puerto Rico hurricanes and, in view of the holiday season, it was difficult for the applicant’s counsel to reach the applicant to provide substantive and timely responses to the opposer’s discovery requests. Furthermore, the TTAB noted that this was the applicant’s first request to extend any deadline in proceeding and, as such, the extension privilege had not been abused.

John C. Gatz

John C. Gatz is a member of the firm Nixon Peabody in Chicago, Illinois.

Column contributors include the following writers: Copyrights: Zachary J. Smolinski, Smolinski Rosario Law P.C.; Michael N. Spink, Brinks, Hofer, Gilson & Lione; and 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, CaptureRx; and Angelo Christopher, Nixon Peabody LLP. Trade Secrets: R. Mark Halligan, FisherBroyles LLP. Trademarks: Elizabeth W. Baio, Nixon Peabody LLP; and Amy L. Sierocki, Blumenfield & Shereff LLP.

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