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September 07, 2021 Decisions in Brief

September/October 2021 Decisions in Brief

John C. Gatz

©2021. Published in Landslide, Vol. 14, No. 1, September/October 2021, 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.


Oh, How the Tables Have Turned

RJ Control Consultants, Inc. v. Multiject, LLC, 981 F.3d 446, 2020 U.S.P.Q.2d 11394 (6th Cir. 2020). RJ Control and Paul E. Rogers appealed the district court’s summary judgment grant in favor of the defendants and its denial of the plaintiffs’ motion to compel discovery, asserting that the district court erred in granting summary judgment and arguing that there is a genuine issue of fact as to whether the defendants copied their design of a turntable control system and that the district court failed to even consider the copying of their software code.

The parties agreed that plaintiff Rogers as the principal and sole shareholder of RJ Control would develop a rotary turntable control system for Jack Elder and his company, Multiject. Rogers’s work included the design of the system and the underlying software code to operate the turntable. Rogers updated the design of the control system and labeled the new drawing “Design 3.” The parties disputed the status of payment for Design 3.

Rogers obtained two copyright registrations for the Design 3 control system, one for the technical drawings of the system and another for the system software code. Rogers sued the defendants, alleging, among other claims, copyright infringement of both copyright registrations. The district court granted the defendants’ motions for summary judgment.

The Sixth Circuit Court of Appeals agreed with the defendants and upheld the district court’s summary judgment decision regarding the claim of infringement of the technical drawings of Design 3. The Sixth Circuit held that, under the Copyright Act, the defendants did not infringe the plaintiffs’ copyright in the drawing by producing the turntable control system depicted in the design. The Sixth Circuit cited several cases clearly explaining that a copyright in a technical drawing extends only to the drawing itself, and not to the subject of the drawing or the use of that drawing to create the useful article described in the drawing. The Sixth Circuit reversed summary judgment as to the copyright of the software code. The Sixth Circuit noted that to properly consider the copyright of software requires a line-by-line analysis, by a software expert, which the district court did not do before granting summary judgment.

Transformation of a Derivative Is Not Transformative for Fair Use

Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, 992 F.3d 99, 2021 U.S.P.Q.2d 363 (2d Cir. 2021). Defendants Lynn Goldsmith and Lynn Goldsmith, Ltd., appealed the district court’s grant of summary judgment in favor of plaintiff Andy Warhol Foundation (AWF), asserting that the district court erred in its assessment of the four-factor test for fair use.

Goldsmith is a professional photographer primarily focusing on celebrity photography, with a special focus on rock-and-roll musicians. Goldsmith photographed the artist Prince and later licensed one photograph (Goldsmith Photograph) to Vanity Fair to use as a source photograph for an artist, which allowed Vanity Fair to publish an illustration based on the photograph. Goldsmith was unaware the artist was to be Andy Warhol. At the request of Vanity Fair, Warhol created an image that was used by Vanity Fair alongside an article on Prince, with an attribution to Goldsmith. In addition to the Vanity Fair image, Warhol also created 15 additional works based on the Goldsmith Photograph that became known as the “Prince Series,” without Goldsmith’s authorization or knowledge. After Prince’s death, Condé Nast obtained permission from AWF to utilize another image from the Prince Series in a tribute magazine, for which Goldsmith received no credit.

AWF sought a declaratory judgment that the Prince Series was fair use, and the district court granted it summary judgment after determining that the Prince Series was so transformative that Warhol created a new work altogether, with a different purpose, expression, meaning, or message from the Goldsmith Photograph.

The Second Circuit Court of Appeals conducted its own fair use assessment of the Prince Series, outlining what it felt was an important distinction for the first factor, namely, the differences between the meaning of “transformed” as used in the definition for a derivative work in Copyright Act § 101, which a copyright owner has the exclusive right to create or to authorize the creation of, and the way in which a copyrighted work must be “transformative” to create a fundamentally different and new artistic purpose and character that stands apart from the raw material used to create it, in order to support the position that the unauthorized use of another’s work is fair. The Second Circuit also carefully distinguished its current analysis of the first fair use factor from an earlier decision in order to highlight that fair use is a context-sensitive inquiry with no bright-line rules, and in fact there are many mitigating and aggravating facts that may arise in certain scenarios.

After finding that each fair use factor ultimately weighed in favor of Goldsmith and finding the Prince Series not to be fair use, the Second Circuit turned to the plaintiff’s request that if not fair use, the Second Circuit find the Prince Series not substantially similar to the Goldsmith Photograph. The Second Circuit noted that such a request is illogical because there would be no reason to invoke the fair use affirmative defense if the Prince Series was not in fact substantially similar to the Goldsmith Photograph. The Second Circuit ultimately held that both works were in fact substantially similar as a matter of law because the degree to which the Goldsmith Photograph remains recognizable in the Prince Series leaves no debate on the issue. The Second Circuit reversed the plaintiff’s motion for summary judgment, vacated the district court’s dismissal of the defendants’ counterclaim for infringement, and remanded the case for further proceedings.



Micron Technology, Inc. v. North Star Innovations, Inc., Nos. 2020-1303, 2020-1402, 2021 WL 1750130, 2021 U.S.P.Q.2d 497 (Fed. Cir. May 4, 2021). The Federal Circuit Court of Appeals affirmed the Patent Trial and Appeal Board’s (PTAB’s) final written decision in an inter partes review (IPR) as to the challenged grounds in both the appeal and the cross-appeal. The Federal Circuit found that substantial evidence supported the PTAB’s claim constructions, and that certain claims were anticipated while other claims were not.

Attorney Fees

Arunachalam v. International Business Machines Corp., 989 F.3d 988, 2021 U.S.P.Q.2d 239 (Fed. Cir. 2021). The Federal Circuit affirmed the award of monetary sanctions in the form of attorney fees in response to the patentee’s vexatious and wanton litigation conduct.

Claim Construction/Claim Vitiation/Function-Way-Result Test

Edgewell Personal Care Brands, LLC v. Munchkin, Inc., 989 F.3d 1358, 2021 U.S.P.Q.2d 282 (Fed. Cir. 2021). The Federal Circuit vacated in part, reversed in part, and remanded the district court’s grant of summary judgment of noninfringement of two patents related to refill cassettes for diaper pails. The Federal Circuit found the district court’s construction of the term “clearance” too narrow because it would be at odds with many of the disclosed embodiments and was not required by the claims. The Federal Circuit also addressed the district court’s noninfringement judgment, which held that a single structure limitation comprised of two components would be vitiated if the multipart accused product were found to be equivalent. The Federal Circuit reversed, finding that the district court erred in evaluating this element as a binary choice between a single-component structure and a multi-component structure, rather than evaluating whether a reasonable juror could find that the accused products perform substantially the same function, in substantially the same way, achieving substantially the same result as the claims.


Cap Export, LLC v. Zinus, Inc., No. 2020-2087, 2021 WL 1773696, 2021 U.S.P.Q.2d 495 (Fed. Cir. May 5, 2021). The Federal Circuit affirmed the district court’s setting aside of the judgment and injunction because it found that Zinus’s president and expert witness misrepresented his knowledge of highly material prior art.


Amgen Inc. v. Sanofi, Aventisub LLC, 987 F.3d 1080, 2021 U.S.P.Q.2d 169 (Fed. Cir. 2021). The Federal Circuit affirmed the district court’s judgment as a matter of law of lack of enablement of two asserted claims. The Federal Circuit agreed with the district court’s ruling that the specification did not enable the claims without undue experimentation.

Equitable Intervening Rights

John Bean Technologies Corp. v. Morris & Associates, Inc., 988 F.3d 1334, 2021 U.S.P.Q.2d 201 (Fed. Cir. 2021). The Federal Circuit affirmed the district court’s granting in part of the summary judgment as to equitable intervening rights. The Federal Circuit found that the district court did not abuse its discretion in making its determination.


Uniloc 2017 LLC v. Facebook Inc., 989 F.3d 1018, 2021 U.S.P.Q.2d 283 (Fed. Cir. 2021). The Federal Circuit affirmed the PTAB’s determination that LG and Facebook were not estopped. The Federal Circuit initially determined that 35 U.S.C. § 314(d) did not preclude judicial review of the PTAB’s application of § 315(e)(1)’s estoppel provision because the alleged estoppel-triggering event did not occur at institution, but after institution. The Federal Circuit then held that even though Facebook was estopped from challenging selected claims of the patent due to joining a prior IPR (the Apple IPR), it was not estopped from challenging other claims that were not part of the Apple IPR. LG was not estopped because it was not a real party in interest or privy to Facebook. The Federal Circuit also affirmed the PTAB’s findings that the challenged claims were obvious.


Wi-LAN Inc. v. Sharp Electronics Corp., 992 F.3d 1366, 2021 U.S.P.Q.2d 399 (Fed. Cir. 2021). The Federal Circuit affirmed the district court’s summary judgment and stipulation of noninfringement of the patents.


Infinity Computer Products, Inc. v. Oki Data Americas, Inc., 987 F.3d 1053, 2021 U.S.P.Q.2d 160 (Fed. Cir. 2021). The claim terms “passive link” and “computer” were held to be indefinite because the patentee took conflicting positions on the endpoint of the “passive link” during prosecution. The Federal Circuit found that a skilled person would not be able to determine the beginning and the end of the “passive” link based on the conflicting statements during prosecution.

Rain Computing, Inc. v. Samsung Electronics America, Inc., 989 F.3d 1002, 2021 U.S.P.Q.2d 284 (Fed. Cir. 2021). The Federal Circuit reversed the district court’s finding that claims reciting a “user identification module” were not indefinite. The patent was directed to efficiently delivering software packages to a client terminal in a network based on user demands. The Federal Circuit agreed with the district court that the “user identification module” invoked 35 U.S.C. § 112, ¶ 6 because the term “module” is a well-known nonce word and “user identification” merely describes the function of the module. The Federal Circuit disagreed with the district court’s finding that sufficient structure was disclosed, reasoning that the specification disclosed only a general purpose computer without disclosing any specialized software/algorithm for performing the recited function.

Synchronoss Technologies, Inc. v. Dropbox, Inc., 987 F.3d 1358, 2021 U.S.P.Q.2d 176 (Fed. Cir. 2021). The Federal Circuit affirmed the district court’s findings that all asserted claims were either invalid for indefiniteness or not infringed. Regarding one patent, the patentee admitted that the claims included an impossibility, thus rendering the claims indefinite. The claims of the second patent were indefinite because the specification did not disclose sufficient structure to construe a claim term. The remaining patent was found to be not infringed.


ABS Global, Inc. v. Cytonome/ST, LLC, 984 F.3d 1017, 2021 U.S.P.Q.2d 31 (Fed. Cir. 2021). Cytonome sued ABS, asserting infringement of several patents, including the ’161 patent. Thereafter, ABS petitioned for IPR, and the PTAB issued a final written decision invalidating certain claims of the ’161 patent. The district court then granted ABS’s summary judgment motion for noninfringement of the ’161 patent. Cytonome appealed the PTAB’s final written decision, but ABS disclaimed its right to appeal the district court’s noninfringement decision. The Federal Circuit held that the voluntary disclaimer mooted any dispute regarding the IPR under the voluntary cessation doctrine. In particular, there was no evidence that ABS was developing or planning to develop any future products that might arguably infringe.

Issue Preclusion

SynQor, Inc. v. Vicor Corp., 988 F.3d 1341, 2021 U.S.P.Q.2d 208 (Fed. Cir. 2021). The Federal Circuit vacated the PTAB’s decision finding certain claims obvious. The action regarding other claims was moot because the patent expired. The Federal Circuit found that issue preclusion applies in the administrative context, and therefore the decision of the administrative body holds when all of the parties have already had the right to present evidence and legal argument in support of their claims.

Judicial Review/Mandamus Relief

Mylan Laboratories Ltd. v. Janssen Pharmaceutica, N.V., 989 F.3d 1375, 2021 U.S.P.Q.2d 298 (Fed. Cir. 2021). The Federal Circuit dismissed Mylan’s appeal for lack of jurisdiction. First, the Federal Circuit discussed Mylan’s direct appeal and found that because Mylan was appealing the PTAB’s denial of institution, 35 U.S.C. § 314(d)—which makes institution decisions final and nonappealable—precluded any judicial review of the PTAB’s decision. Second, the Federal Circuit discussed Mylan’s mandamus appeal. The Federal Circuit preliminarily determined that (1) § 314(d) only concerned direct appeals, and thus did not preclude mandamus relief; and (2) Federal Circuit precedent had implicitly confirmed the existence of mandamus jurisdiction as it pertained to institution decisions. The Federal Circuit also found that Mylan had triggered its exclusive jurisdiction by filing its petition. The Federal Circuit concluded, however, that because the PTAB was statutorily granted discretion as to institute decisions, combined with the prohibition on direct appeal of such decisions, the reviewability of decisions denying institution narrowed solely to colorable constitutional claims. Because Mylan did not identify a meritorious procedural or substantive due process claim, it provided no clear and indisputable right to relief. Thus, the action was dismissed.


Canfield Scientific, Inc. v. Melanoscan, LLC, 987 F.3d 1375, 2021 U.S.P.Q.2d 194 (Fed. Cir. 2021). The Federal Circuit reversed in part, vacated in part, and remanded the PTAB’s decision in an IPR. The Federal Circuit found that the independent claims were obvious as a combination of known elements that did no more than yield predictable results.

M & K Holdings, Inc. v. Samsung Electronics Co., 985 F.3d 1376, 2021 U.S.P.Q.2d 123 (Fed. Cir. 2021). The Federal Circuit affirmed in part and vacated in part the PTAB’s final written decision holding a claim unpatentable in an IPR. The Federal Circuit affirmed the PTAB’s finding that the references qualified as printed publications because full copies were made available during a conference and from the organization’s website. However, the PTAB impermissibly deviated from the obviousness theory in the petition by finding the claim anticipated by the asserted references.

Raytheon Technologies Corp. v. General Electric Co., 993 F.3d 1374, 2021 U.S.P.Q.2d 434 (Fed. Cir. 2021). The Federal Circuit reversed the final IPR decision of the PTAB finding the claims obvious. The Federal Circuit found that the prior art failed to enable a skilled artisan to make and use the claimed invention.

Patent-Eligible Subject Matter

cxLoyalty, Inc. v. Maritz Holdings Inc., 986 F.3d 1367, 2021 U.S.P.Q.2d 148 (Fed. Cir. 2021). The Federal Circuit affirmed the PTAB’s finding that the challenged claims in a covered business method review petition were patent ineligible under 35 U.S.C. § 101. The original claims were directed to facilitating a commercial transaction, which amounted to a fundamental economic practice and therefore an abstract idea. The PTAB, however, erred in finding proposed substitute claims patentable. The Federal Circuit found that the substitute claims were directed to an abstract idea for the same reason as the original claims.

In re Board of Trustees of the Leland Stanford Junior University, 991 F.3d 1245, 2021 U.S.P.Q.2d 361 (Fed. Cir. 2021). The Federal Circuit affirmed the PTAB’s decision, which had affirmed an examiner’s decision to reject the patent application method claims as being ineligible subject matter. The method claims were directed to mathematical calculations and statistical modeling related to haplotype phasing (i.e., a process for determining from which parent certain genes are inherited), associated mental processes, and generic computer implementation steps (e.g., receiving, storing, and extracting data). Because there was nothing that changed the character of the claims into a practical application, the Federal Circuit deemed them to be directed to patent-ineligible abstract ideas under step one of the two-part Alice test. The Federal Circuit also determined that the specification did not demonstrate an improvement of a technological process, rejecting Stanford’s argument that increased accuracy saved the claims at step one and instead concluding that improving computational accuracy is different from improving an overall technological process. Regarding Alice step two, because the record demonstrated that the claimed method was performed using known, generic computer technology, the Federal Circuit affirmed the PTAB’s step two.

Patent Term Adjustment

Chudik v. Hirshfeld, 987 F.3d 1033, 2021 U.S.P.Q.2d 149 (Fed. Cir. 2021). The patentee was not entitled to a further patent term adjustment under 35 U.S.C. § 154(b)(1)(C)(iii) for the periods where notices of appeal were pending during prosecution, but the PTAB issued no decision because the examiner reopened prosecution. The U.S. Patent and Trademark Office’s interpretation of the statute was reasonable and entitled to deference under the Chevron doctrine.

Public Access to Information

DePuy Synthes Products, Inc. v. Veterinary Orthopedic Implants, Inc., 990 F.3d 1364, 2021 U.S.P.Q.2d 299 (Fed. Cir. 2021). The Federal Circuit decided an interlocutory appeal by affirming the district court’s decision unsealing a complaint and other allegedly confidential information. The Federal Circuit determined that it had jurisdiction to hear this interlocutory appeal under the collateral order doctrine. The Federal Circuit then analyzed the trade secret status of the sealed information. Applying the Florida Uniform Trade Secrets Act (law of the appropriate state), the Federal Circuit found that none of the sealed information qualified as a trade secret.

Right to a Jury Trial

Bayer Healthcare LLC v. Baxalta Inc., 989 F.3d 964, 2021 U.S.P.Q.2d 235 (Fed. Cir. 2021). The Federal Circuit affirmed the district court’s findings of infringement, enablement, damages, and no willful infringement. Among the findings regarding claim construction, enablement, and infringement, the Federal Circuit found that the Seventh Amendment right to a jury trial does not attach to the award of pre-verdict supplemental damages.


Apple Inc. v. Qualcomm Inc., 992 F.3d 1378, 2021 U.S.P.Q.2d 403 (Fed. Cir. 2021). The Federal Circuit dismissed Apple’s appeal of the IPR of the PTAB’s final written decision. Apple argued that it had standing based on its payment obligations but failed to prove that the validity of the challenged patents would impact the ongoing payment obligations. Apple also failed to establish any injury in fact that could give rise to a potential suit after the expiration of the license agreement. Any harm from estoppel was insufficient to provide standing.

Mojave Desert Holdings, LLC v. Crocs, Inc., 995 F.3d 969, 2021 U.S.P.Q.2d 454 (Fed. Cir. 2021). The Federal Circuit granted U.S.A. Dawgs and Mojave’s motion to substitute Mojave as Dawgs’ successor-in-interest following a bankruptcy asset sale, wherein Dawgs assigned all of its assets to Mojave through the sale, including Dawgs’ interest as the requester in the IPR.

Trade Secrets

AcryliCon USA, LLC v. Silikal GmbH, 985 F.3d 1350, 2021 U.S.P.Q.2d 101 (11th Cir. 2021). This case involved the sale of a formula for an industrial flooring resin. The plaintiff (AC-USA) sued the defendant for breach of contract and misappropriation of trade secrets in violation of the Georgia Trade Secrets Act. The jury awarded $1.5 million on each of the two claims, and the district court awarded $3 million in punitive damages on the misappropriation claim. Silikal appealed to the Eleventh Circuit Court of Appeals. Silikal used the formula without AC-USA’s consent. Even if AC-USA had the trade secret, AC-USA had to show that: (1) Silikal owed AC-USA a duty to maintain the formula’s secrecy or limit its use; and (2) this duty arose when Silikal acquired the formula. AC-USA did not exist when Silikal acquired the formula, so the trade secrets misappropriation claim was dismissed and damage awards were vacated.

CGB Diversified Services, Inc. v. Baumgart, No. 1:20-cv-00031-SRC, 2020 U.S. Dist. LEXIS 226356, 2020 WL 469156 (E.D. Mo. Dec. 1, 2020). Plaintiff Diversified alleged that Baumgart used its trade secrets and other confidential information to solicit its customers in the crop insurance industry. There were also allegations that Baumgart downloaded 27 applications containing confidential information about Diversified’s customers. Two days later, Baumgart wiped his computer and departed to work in a similar position for a competitor. While Diversified based its allegations that Baumgart disclosed or used this confidential information in competition with Diversified on information and belief, the district court found that the court could reasonably infer that Baumgart misappropriated Diversified’s trade secrets. Baumgart’s motion to dismiss was denied.

Cincom Systems, Inc. v. LabWare, Inc., No. 1:20-cv-83, 2021 U.S. Dist. LEXIS 31945, 2021 WL 675437 (S.D. Ohio Feb. 22, 2021). Plaintiff Cincom, a software development company, discovered at a conference in Germany that defendant LabWare was using its proprietary software without a valid license agreement. Cincom sued LabWare, alleging copyright infringement, trade secret misappropriation, common-law conversion, and unjust enrichment. LabWare filed a Rule 12(b)(6) motion to dismiss the trade secret misappropriation claim. The district court denied the motion to dismiss because Cincom identified the trade secret as “Smalltalk/V/Visual Smalltalk/Visual Smalltalk Enterprise” software. The district court ruled that any further specificity desired by the defendant could be achieved through discovery.

Zurich American Life Insurance Co. v. Nagel, No. 20-cv-11091 (JSR), 2021 U.S. Dist. LEXIS 89781, 2021 WL 1877364 (S.D.N.Y. May 11, 2021). Zurich alleged that Nagel forwarded confidential company materials to his personal email account. Zurich contended that after Nagel was terminated, he took these electronic materials (emails) with him and refused to permit inspection of his personal electronic devices or to certify that he no longer had Zurich’s confidential information. Assuming the existence of a trade secret in the emails, the district court dismissed the case because there were no allegations of actual or threatened misappropriation. Nagel was authorized to acquire the information, so he did not acquire it by improper means. There were no allegations of disclosure or use. In a case of first impression, the district court found that merely threatening to keep trade secrets, without threatening to use or disclose them, does not give rise to a Defend Trade Secrets Act claim.



Authentic Apparel Group, LLC v. United States, 989 F.3d 1008, 2021 U.S.P.Q.2d 259 (Fed. Cir. 2021). The Federal Circuit affirmed the U.S. Court of Federal Claims’ grant of summary judgment in favor of the government in Authentic’s and Ron Reuben’s action against the Department of the Army for breach of contract in connection with a trademark licensing agreement.

The Army granted Authentic a license to manufacture and sell clothing bearing the Army’s trademarks in exchange for royalties. The agreement required the Army’s advance approval and gave the Army broad approval discretion over any products and marketing materials bearing the Army’s trademarks as long as the Army did not act arbitrarily or in bad faith. After a dispute about royalties (which were eventually paid by Authentic), Authentic and Reuben sued in the Federal Claims Court for breach of contract. The Federal Claims Court dismissed Reuben as a plaintiff for lack of standing and granted the government’s motions for summary judgment. Authentic appealed.

The Federal Circuit affirmed Reuben’s dismissal for lack of standing, finding that he was not in privity of contract with the government. The Federal Circuit also affirmed the Federal Claims Court’s determination that in view of the exculpatory clauses in the license agreement, Authentic could not recover damages based on the Army’s exercise of judgment regarding approval of products and marketing materials. Thus, the decisions of the Federal Claims Court were affirmed.

Likelihood of Confusion

QuickTrip West, Inc. v. Weigel Stores, Inc., 984 F.3d 1031, 2021 U.S.P.Q.2d 35 (Fed. Cir. 2021). QuickTrip opposed Weigel’s registration of the design mark W WEIGEL’S KITCHEN NOW OPEN based on an alleged likelihood of confusion with its stylized QT KITCHENS mark. The Federal Circuit affirmed the Trademark Trial and Appeal Board’s (TTAB’s) decision to dismiss the opposition.

QuickTrip and Weigel both operate combination gas stations and convenience stores and sell food therein. In response to a cease and desist letter from QuickTrip alleging that Weigel’s initial stylized W KITCHENS mark was too similar to QuickTrip’s QT KITCHENS design mark, Weigel modified the font and text of its mark. Weigel filed an application to register its modified design mark W WEIGEL’S KITCHEN NOW OPEN, which was opposed by QuickTrip based on an alleged likelihood of confusion. The TTAB dismissed the opposition.

The Federal Circuit affirmed the TTAB’s finding of no likelihood of confusion, based on the DuPont factors, as being supported by substantial evidence. It agreed that despite overlapping trade channels and classes of customers and similar conditions of purchase (all of which favored a likelihood of confusion finding), the dissimilarity of the marks strongly weighed against a likelihood of confusion. Specifically, although the respective marks both included the word “KITCHEN(S),” the court found that customers would not focus on that word since it was not the distinctive part of either mark. Rather, the Federal Circuit held that the appearance, sound, connotation, and commercial impression of the respective marks were dispositive against a likelihood of confusion. Thus, the TTAB’s decision was affirmed.

Specimens of Use/Failure to Function

In re Team Jesus LLC, 2020 U.S.P.Q.2d 11489 (T.T.A.B. 2020). Team Jesus sought to register the mark TEAM JESUS for clothing (class 25) and educational and entertainment services in the nature of activities to develop and enhance the spiritual lives of individuals (class 41). Team Jesus filed specimens of use, including brochures, flyers, presentations, and promotional material, and photos of clothing with TEAM JESUS on the inside hang tag as well as in large letters across the front of the clothing in an ornamental manner. The application was refused registration under sections 1, 2, 3, and 45 of the Trademark Act on the basis that the mark failed to function as a trademark. The examiner asserted that the mark was an informational social, political, religious, or similar kind of message, and submitted evidence showing use by a variety of sources in the context of clothing and entertainment and educational services associated with Jesus Christ and the Christian religion.

The TTAB determined that the evidence as a whole showed that TEAM JESUS was a commonplace message of Christian affiliation. Accordingly, the TTAB found that consumers would not perceive TEAM JESUS as an indicator of source that was capable of distinguishing Team Jesus’s goods and services in commerce. The refusal to register was therefore affirmed.

Standing/Trademark Cancellation Proceeding

Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 981 F.3d 1083, 2020 U.S.P.Q.2d 11438 (Fed. Cir. 2020). Naked TM filed a petition for rehearing en banc with the Federal Circuit in a matter involving a petition to cancel its trademark registration for NAKED for condoms. The Federal Circuit declined to revisit its decision, which found that Australian Therapeutic had standing to file the petition.

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John C. Gatz


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


Column contributors include the following writers: Copyrights: Jenni Psihoules and Kaleigh Morrison, Nixon Peabody LLP; and Mark R. Anderson, Actuate Law LLC. Patents: Cynthia K. Barnett, Johnson & Johnson; R. Trevor Carter and Andrew M. McCoy, Faegre Drinker Biddle & Reath LLP; Robert W. (Bill) Mason, Southwest Research Institute; 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.