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U.S. Intellectual Property and New Media Law Update GRAND AM IS A GRAND SLAM TBC Corporation v. Holsa, Inc. (Federal Circuit - Decided- October 9, 1997) AFTER THIS CASE, UNITED WE STAND AMERICA MAY STAND UNITED United We Stand America, Inc. v United We Stand, America New York, Inc. and Alex Rodriguez (Second Circuit - Decided- October 15, 1997) HOW TO BECOME AN EX EXPERT WITNESS American Board of Psychiatry and Neurology, Inc. v. Gloria Johnson-Powell, M.D. (First Circuit - Decided- October 23, 1997) WILL THE REAL JUNO PLEASE STAND UP Juno Online Services v. Juno Lighting, Inc. (ED Ill. -Decided- September 29, 1997) GRAND AM IS A GRAND SLAM TBC Corporation v. Holsa, Inc. (Federal Circuit - Decided- October 9, 1997) Applicant filed a trademark application with the US Patent and Trademark Office for the word mark GRAND SLAM for tires. Opposer TBC owns registrations for the trademarks GRAND AM, GRAND SPIRIT, GRAND SPORT and GRAND PRIX for tires. Opposer opposed, Applicant made a motion for summary judgment which the TTAB granted and the Federal Circuit overturned the grant of summary judgment. Below, the TTAB in finding summary judgment stated "Not withstanding the identity of the goods herein and opposer's considerable success in the marketplace, we find there is no likelihood of confusion between Applicant's mark GRAND SLAM and Opposer's mark GRAND PRIX, GRAND AM, GRAND SPORT and GRAND SPIRIT. We reach the finding because of the nature of the mark GRAND PRIX and the term GRAND and the distinct connotation of applicant's mark GRAND SLAM." Basically, the TTAB based its decision on the alleged weakness of GRAND and the difference in meaning between Applicant's GRAND SLAM and the other marks. The Federal Circuit found the Board's reasoning "unpersuasive." The Federal Circuit only found it necessary to compare the marks: GRAND AM and GRAND SLAM in holding that a likelihood of confusion exists. The Federal Circuit held "that it is at least likely that concurrent use of GRAND AM and GRAND SLAM on tires would cause mistake because of their similarity in various ways. They are both two-word marks beginning with the identical word GRAND. It does not matter that GRAND is 'laudatory,' a characteristic the Board thought contributed to its 'weakness' as a trademark. It is a major contributor to overall similarity." The decision is available on-line at: http://www.ll.georgetown.edu/Fed-Ct/Circuit/fed/opinions/96-1140.html AFTER THIS CASE, UNITED WE STAND AMERICA MAY STAND UNITED United We Stand America, Inc. v United We Stand, America New York, Inc. and Alex Rodriguez (Second Circuit - Decided- October 15, 1997) Defendants are a splinter group from Ross Perot's political campaign. The District Court entered default judgment against the Defendants after they failed to appear in an action brought to enjoin Defendants' use of plaintiff's registered service mark. Defendants' moved to vacate the default but were denied. This denial was appealed to the Second Circuit. Without going into the details, it appears that the Defendants by dismissing counsel and dragging their feet with regard to retention of new counsel, acted to delay answering the complaint and proceeding with the litigation. Since, for the default to be lifted, it must be shown that the neglect was excusable, the District Court and the Court of Appeals found such willful actions barred vacating the judgment. In addition, and more interesting legally, was the Court's analysis of one prong of the test to vacate. The second prong is a requirement that a defaulted defendant have a meritorious defense. As grounds for a meritorious defense, Defendants raised three arguments: (1) that political activities are not services under the Lanham Act; (2) that the use is entirely intrastate; and (3) that their use was protected by the First Amendment. Not unexpectedly, the Second Circuit indicated that each of these defenses was without merit. First, the Second Circuit found that protection of service marks is available to public service organizations as to merchants and manufacturers, citing a long list of cases and McCarthy on that point, including cases related to the NAACP, the Kappa Sigma fraternity, The American Diabetes Association, and the Junior Chamber of Commerce. With regard to the second attack, the Court noted that Congress' power to protect Plaintiff's mark in interstate commerce necessarily implies the power to regulate the Defendants' unauthorized use of the mark within the state borders. Finally, the Court rejected the First Amendment argument since the service mark is not being used for a purpose of communicating, comedy, news reporting or criticism, but rather by Defendants to associate themselves with the political movement. The decision can be viewed at: http://www.law.pace.edu/lawlib/legal/us-legal/judiciary/second-circuit/test3/96-9500.opn.html The United We Stand web site can be viewed at: http://www.uwsa.com/ HOW TO BECOME AN EX EXPERT WITNESS American Board of Psychiatry and Neurology, Inc. v. Gloria Johnson-Powell, M.D. (First Circuit - Decided- October 23, 1997) Plaintiff is a not-for-profit Illinois corporation that certifies psychiatrists and neurologists as specialists in their respective fields. Plaintiff is the owner of a federal certification mark for "The American Board of Psychiatrists and Neurologists" and authorizes use of this mark if an applicant has met the organization's requirements and has received a certificate or license to use the mark. Defendant is a prominent physician and psychiatrist who has testified as an expert witness in court. Although not certified by the Plaintiff, she claimed under oath, on several occasions that she was ABPN certified. She continued to use this false certification even after this had become an issue in another matter. When Plaintiff contacted her, she said it must have been a clerical error. A clerical error she kept making. Plaintiff brought an action against Defendant for certification mark infringement. The Court granted a temporary restraining order ex parte against the uncertified doctor. At the preliminary injunction hearing, the Defendant tendered her affidavit promising not to repeat her infringing conduct and attaching a redacted resume that did not include the reference to ABPN. She also asserted that she had not seen patients nor provided expert witness services since 1995. At this point, the Court denied the preliminary injunction reasoning that while the Plaintiff has shown a strong likelihood to prevail on the merits, it had failed to demonstrate a sufficient likelihood of irreparable harm in the near future. This decision was appealed to the First Circuit. The First Circuit reviewed a great deal of evidence pointing to bad faith on the part of Defendant. However, the Court of Appeals affirmed the denial indicating that the Judge's decision was not an abuse of discretion. The Court, however, made it clear that it believed that there was more than sufficient evidence for it to affirm an injunction if it had been granted. In doing so, the Court noted prior cases involving literal false statements where "only a slight likelihood of injury need to be shown to warrant injunctive relief." Aside from the question of infringement, the Defendant's conduct points out the importance of truly investigating not only the other side's expert witness, but your own. The decision can be viewed at: http://www.law.emory.edu/1circuit/oct97/97-1289.01a.html The American Board of Psychiatry and Neurology web site can be viewed at: http://www.abpn.com/ WILL THE REAL JUNO PLEASE STAND UP Juno Online Services v. Juno Lighting, Inc. (ED Ill. -Decided- September 29, 1997) Juno Lighting is a company which markets lighting fixtures and the like. It has had U.S. trademark registrations for JUNO and JUNO and logo, since 1978 directed to such lighting fixtures. Juno Online is an Internet service provider who obtained a domain name registration for JUNO.COM in December 1994 and subsequently began free e-mail service to its customers in April 1996. Juno Online currently services more than 1 out of 20 United States e-mail addresses and has a web page which is currently visited thousands of times a day. Juno Online, through a subsidiary, applied for federal service mark and trademark protection of the word JUNO as well as for various designs, slogans and phone numbers incorporating the term JUNO. Juno Lighting sent a letter to Juno Online stating their opposition to the Juno Online's use of JUNO. Juno Lighting also sent a letter to NSI on August 28, 1996 requesting that the domain name JUNO.COM be placed on hold. Juno On-Line then sued for declaratory judgment naming both Juno Lighting and NSI as defendants. NSI was dropped when it agreed not to suspend or place JUNO.COM on hold, until after it was notified of the Court decision. The complaint contains four counts. Count I seeks a declaration that Juno Online's use of the domain name JUNO.COM does not infringe or dilute Juno Lighting's trademark. In Count II Juno Online seeks a declaration that Defendants misused the Juno Lighting trademark as well as injunctive relief, monetary damages and cancellation of Juno Lighting's trademark registration; Count III alleges a Lanham Act violation arising from Juno Lighting's registration of the domain name JUNO-ONLINE.COM; and Count IV goes to unfair competition and deceptive trade practices. In turn, Juno Lighting counterclaimed for trademark infringement, dilution and unfair competition in violation of Illinois state law and moved to dismiss Counts II, III and IV. Judgment was entered in favor of Juno Lighting on Count II and the Court dismissed Counts III and IV, and dismissed all claims to monetary relief. The discussion of this dismissal is of interest to anyone who is interested in Internet law. The trademark misuse of Count II, is based on Juno Lighting's alleged attempt to put Juno On-Line out of business by requesting that NSI place JUNO.COM on hold and by obtaining the domain name JUNO-ONLINE.COM. The Court recognized that at this point trademark misuse is not a recognized affirmative defense and, heretofore, has been confined to assertion only as a defense to a trademark infringement suit. After an extended discussion of the history of misuse in general and its application to trademarks, the Court indicated that perhaps someday a Court may choose to recognize a new cause of action in situations which the mark holder does attempt to destroy its competitors by use of its mark "however, this is not such a case." The Court went on to note that such a claim was unnecessary here since if the claim was meritorious it has an adequate traditional remedies. Count III, under Section 43(a) of the Lanham Act, is based on Defendant's "warehousing" of the JUNO-ONLINE.COM domain name. The Court indicated that to successfully claim a violation of 43(a), a plaintiff must allege that defendant used the trademark. As noted in the statute itself, use in commerce is defined as a bona fide use of the mark in the ordinary course of trade and not made merely to reserve the right in a mark. Here, Juno Lighting made no use of the domain name JUNO-ONLINE.COM. The Court found this simply not a violation of 43(a). The Court also found that there was insufficient allegations as to monetary damages. The decision can be viewed at: http://www.ipcounselors.com/juno.htm Juno Online Services' web site is located at: http://www.juno.com/ |
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