Category Archives: Federal Cases

Ninth Circuit Provides Roadmap for Reverse Confusion Claims

On July 7, 2017, the Ninth Circuit issued a decision clarifying issues related to pleading and proving reverse trademark confusion claims.

Marketquest Group, Inc. sued BIC over use of the phrase “The WRITE Pen Choice for 30 Years” based on Marketquest’s rights in the mark “The Write Choice.”  The district court granted BIC’s motion for summary judgment, holding that although there was some likelihood of confusion, further analysis was unnecessary because fair use provided a complete defense to Marketquest’s infringement claims. Continue reading

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Trademark and Patent Applicants Opting for a District Court Appeal Must Pay PTO’s Attorney Fees

On June 23, 2017, the Federal Circuit held that, whether they win or lose, patent applicants who appeal adverse PTAB decisions directly to a district court must pay the PTO’s attorneys’ fees.

Patent applicants seeking judicial review of Board decisions have two options under the America Invents Act: appeal to the Federal Circuit under 35 U.S.C. § 141, or to the Eastern District of Virginia under 35 U.S.C. § 145.  Appeals taken under Section 145 offer certain benefits to the applicant, such as allowing discovery and the introduction of further evidence.  Section 145 also provides that applicants must pay “[a]ll the expenses of the proceeding.”  When Dr. Hans Klingemann’s patent application directed to a method of treating cancer was rejected as obvious, Nantkwest, the assignee of the application, appealed under Section 145.  After prevailing on the merits, the Director of the PTO moved for expert and attorneys’ fees, citing the “all expenses” provision of the statute. Continue reading

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Third Circuit Rules “McCarthy Test” Determines Ownership of Unregistered Trademarks

The Third Circuit has held that where a manufacturer and its exclusive distributor have no written contract designating which party owns an unregistered trademark, the “McCarthy test,” rather than the “first use test,” should be used to decide ownership.

Covertech Fabricating, Inc. is a Canadian manufacturer of protective packaging and reflective insulation.  TVM Building Products, Inc. distributes specialty building materials.  For over fifteen years, Covertech sold numerous reflective insulation products under its rFOIL mark, which is registered in the United States.  The rFOIL brands include ULTRA NT RADIANT BARRIER and ULTRA CONCRETE UNDERPAD.  Covertech registered the ULTRA mark in Canada in 2010.     Continue reading

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