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Trademark Year in Review (2004): Overview of Litigation and Legislative Developments Boston Bar Association January 20, 2005 Julia Huston, Esq. (617) 443-9292 ext 264 [email protected] Developments in the Supreme Court KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 125 S.Ct. 542 (2004) District court found MICROCOLOR for permanent makeup to be fair use Ninth Circuit reversed Supreme Court reversed and remanded Defendant need not prove a lack of likelihood of confusion However, some likelihood of confusion factors may bear on fair use Intent to adopt another’s mark suggests lacks of good faith fair use Actual confusion suggests that defendant may not be using in descriptive manner, but as a trademark Developments in the First Circuit Beacon Mut. Ins. Co. v. OneBeacon Ins. Group, 376 F.3d 8 (1st Cir. 2004) ONEBEACON and BEACON MUTUAL marks for worker compensation insurance services Caused actual confusion among injured workers, health care workers, third party insurers, and attorneys No actual confusion among purchasers (employer) Reversed summary judgment for defendant Infringement caused actual confusion among those in a position to influence sales and others, and therefore harmed plaintiff’s goodwill and reputation Author Names as Trademarks Flynn v. AK Peters, Ltd., 377 F.3d 13 (1st Cir. 2004) No secondary meaning in name among book purchasers Zyla v. Wadsworth, 360 F.3d 243 (1st Cir. 2004) False attribution of authorship actionable under copyright law General Healthcare Ltd. v. Qashat, 364 F.3d 332 (1st Cir. 2004) Intra-company shipments from U.S. to U.K. followed by overseas sales do not constitute “use in commerce” One party’s decreasing contacts with the U.S. and failure to assert ownership of the mark for over a decade resulted in abandonment of the mark. Developments in Other Circuits Likelihood of Confusion Playboy Enterprises, Inc. v. Netscape Comm. Corp., 354 F.3d 1020 (9th Cir. 2004) Netscape “keyed” to banner ads Summary judgment to Netscape reversed Initial interest confusion actionable in Ninth Circuit Trade Dress Gateway, Inc. v. Companion Products, Inc., 384 F.3d 503 (8th Cir. 2004) Cowprint trade dress protectable Dippin’ Dots, Inc. v. Frosty Bites Distrib., LLC, 369 F.3d 1197 (11th Cir. 2004) (cert. petition filed November 10, 2004) Beaded design of ice cream not protectable Dilution Nissan Motor Co. v. Nissan Computer Corp., 378 F.3d 1002 (9th Cir. 2004) Prospective application of FTDA affirmed Fame must be measured as of date of defendant’s first diluting use Savin Corp. v. The Savin Group, 391 F.3d 439 (2d Cir. 2004) Use of identical marks give rise to presumption of actual dilution SAVIN could be famous for office support services New Dilution Legislation? Likelihood of dilution, not actual dilution, standard Acquired distinctiveness qualifies No more “niche fame” Tarnishment actionable Fair Use and Nominative Fair Use Defenses Scott Fetzer Co. v. House of Vacuums Inc., 381 F.3d 477 (5th Cir. 2004) Use of KIRBY for vacuum cleaners by unauthorized dealer permissible Bumble Bee Seafoods, L.L.C. v. UFS Indus. Inc., 71 USPQ2d 1684 (S.D.N.Y. 2004) Use of BUMBLEE BEE TUNA by maker of tuna salad permissible Descriptiveness and Genericness FREEBIES held generic Retail Services Inc. v. Freebies Publishing, 364 F.3d 535 (4th Cir. 2004) PATENTS.COM held descriptive In re Oppedahl & Larson LLP, 373 F.3d 1171 (Fed. Cir. 2004) LAWOFFICE.NET held descriptive DeGidio v. West Group Corp., 355 F.3d 506 (6th Cir. 2004), cert. denied, 124 S.Ct 2842 Use of Personal Names as Marks BRENNAN’S weak, no distinctiveness in New York City Brennan’s, Inc. v. Brennan’s Restaurant, L.L.C., 360 F.3d 125 (2d Cir. 2004) NILES the camel protectable Peacable Planet Inc. v. Ty Inc., 362 F.3d 986 (7th Cir.) (2004), cert. denied, 125 S.Ct 275 (2004) Developments in Massachusetts Baystate Savings Bank v. Baystate Financial Services, LLC, 338 F.Supp.2d 181 (D. Mass. 2004) (Gorton, J.) No preliminary injunction for BAYSTATE No acquired distinctiveness despite use since 1895 Different services Savings bank services Investment and insurance services Converse Inc. v. Reebok International, Ltd., 328 F.Supp.2d 166 (D. Mass. 2004) (Lindsay, J.) Denied motion for contempt Sanctioned plaintiff for bringing motion Reebok’s use of the mark ALL-STAR in the phrase NBA DOWNTIME ALL-STAR GRAFFITI Consent decree covered ALL-STAR and all Converse trademarks “So as to be likely to cause confusion, mistake or deception as to source” Failed to comply with the specificity requirements of Rule 65(d) What to Watch for in 2005 Trademark Infringement Cases Ken’s Foods, Inc. v. Ken’s Steak House, Inc. (Judge Gertner) Zone Perfect Nutrition Company v. Hershey Foods Corp., Hershey Chocolate & Confectionary Corp., and Barry D. Sears (Judge Stearns) Massachusetts Institute of Technology v. Beat the House, LLC (Judge Tauro) False Advertising Cases Vermont Pure Holdings LTD v. Nestle Waters North America, Inc. and Nestle SA (Judge Woodlock) First Act Inc. v. Brook Mays Music Company, Inc. (Judge Harrington) McNeil-PPC, Inc. v. Pfizer, Inc. (SDNY) Closing Thoughts Trademark Year in Review (2004): Overview of Litigation and Legislative Developments Boston Bar Association January 20, 2005 Julia Huston, Esq. (617) 443-9292 ext 264 [email protected]