Tag Archives: Ninth Circuit

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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“GOOGLE” Survives Attempted Genericide

On May 16, 2017, the Ninth Circuit affirmed Google Inc.’s summary judgment win in a lawsuit that sought to cancel the GOOGLE mark on the ground it has become generic.

In early 2012, David Elliot registered 763 domain names that included the word “google.”  Google filed and won a UDRP proceeding that found the domains had been registered in bad faith, and ordered transfer of the domains to Google.  Elliot then filed suit in district court, petitioning to cancel the GOOGLE trademark on the ground that the word “google” is primarily understood by the public as a generic term used to describe the act of internet searching.  At summary judgment, Google argued that Elliot had failed to present sufficient evidence to support such a finding.  Elliot, on the other hand, argued that the majority of the relevant public uses “google” as a verb, and verb use constitutes generic use as a matter of law.  The district court sided with Google. Continue reading

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Ninth Circuit Holds Octane Fitness’s Fee-Shifting Standard Applies To The Lanham Act

On October 24, 2016, the Ninth Circuit became the latest federal court of appeals to hold that the Supreme Court’s 2014 decision in Octane Fitness, LLC v. ICON Health & Fitness, Inc., which outlined the standard for finding a case “exceptional” in patent fee-shifting disputes, applies to the Lanham Act.

Both the Lanham Act and the Patent Act provide that “the court in exceptional cases may award reasonable attorney fees to the prevailing party.”  In Octane Fitness, the Supreme Court overturned the Federal Circuit’s existing standard for awarding attorney fees under the Patent Act, holding that a district court should look to the “totality of the circumstances” to determine if a case is exceptional.  The Court explained that an “exceptional” case is one that stands out from others with respect to: (1) “the substantive strength of a party’s litigation positions (considering both the governing law and the facts of the case)”; or (2) “the unreasonable manner in which the case was litigated.”  Factors for courts to consider include frivolousness, motivation, factual or legal unreasonableness, and “the need in particular circumstances to advance considerations of compensation and deterrence.”  Further, the Court lowered the burden of proof, holding a party’s entitlement to fees must be proven by a preponderance of the evidence.  Continue reading

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