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U.S. Intellectual Property and New Media Law Update ONLINE ONLY ONE "ONLINE TODAY" On-Line Careline v. American Online Inc. (Fed. Cir. - October 10, 2000) COME CLEAN FELLAS The Clorox Company Puerto Rico v. The Proctor & Gamble Commercial Company (First Cir., - October 3, 2000) INEQUITABLE (SEMI-)CONDUCT(OR) The Li Second Family Limited Partnership v. Toshiba Corporation et al. (Fed. Cir. - November 8, 2000) HAVEN'T A CLUE Hasbro, Inc. v. Clue Computing, Inc. (First Cir. - November 7, 2000) ONLINE ONLY ONE "ONLINE TODAY" On-Line Careline v. American Online Inc. (Fed. Cir. - October 10, 2000) This is an appeal from an opposition and cancellation proceeding before the TTAB. AOL provides Internet access under the mark CompuServe Information Services. This service provides online features such as news information, banking, shopping and email. One of AOL's informational features is an electronic publication called "Online Today." On-Line Careline is an Internet service provider which markets its services under the name "On-Line Today." When On-Line Careline filed an application for "On-Line Today," AOL opposed. On-Line Careline retaliated, moving to cancel AOL's registration for its magazine based on abandonment of the mark. The TTAB agreed with AOL; refused to register "On-Line Today" and to cancel AOL's prior registration for "Online Today." In doing so, the court confirmed that the standard of review of questions of fact by the TTAB was that of the Administrative Procedure Act, 5 U.S.C. 706 (2000). This section provides that a review in court shall hold unlawful and set aside agency actions, findings and conclusions found to be "(A) arbitrary, capricious, abuse of discretion, or otherwise not in accordance with the law; or . . . (E) unsupported by substantial evidence . . ." The substantial evidence standard required the reviewing court to ask whether a reasonable person might find that the evidentiary record supports the agency's conclusions. The court looked to see if the TTAB had received substantial evidence in support of its decision and found it. While On-Line Careline admitted the similarity of the marks, it argued that the services were dissimilar since On-Line Careline provided Internet connection services where AOL's "Online Today" services involved Internet content. The TTAB's conclusion that the services were different but were closely related would support the TTAB's finding in favor of AOL. The court went on to note similarities in trade channels. With regard to the cancellation petition, AOL's registration was for the services of "providing access to online computer services offering computer industry news, commentary and product reviews." The basis for the petition was that AOL now used the mark to provide content. The TTAB's analysis involved determining the meaning of "providing access" and its finding that access could mean enabling users to obtain a particular service. Under this definition, AOL had not abandoned the mark since, among other things, the online magazine was linked to the sites discussed. Both findings of the TTAB were supported by substantial evidence. This decision can be viewed at: http://caselaw.lp.findlaw.com/cgi-bin/getcase.pl?court=Fed&navby=case&no=991432 COME CLEAN FELLAS The Clorox Company Puerto Rico v. The Proctor & Gamble Commercial Company (First Cir., - October 3, 2000) Proctor & Gamble and Clorox have had open warfare in the courts on a number of different matters which range across the entire area of intellectual property. This case enters the world of false advertising. Proctor & Gamble has a detergent, "Ace con Balanqueadur," (Ace with whitener) in Puerto Rico. Its advertising tag line was "M s blanco no se puede" (whiter is not possible). The Clorox Company cried dirty since it believed that no detergent brings out the whites like their chlorine bleach when used with a detergent. Proctor & Gamble modified its pitch, inviting consumers to compare "con su detergente. . .m s blanco no se puede." "Compare with your detergent . . whiter is not possible." Still feeling soiled by this commercial, Clorox sued alleging false advertisement under Section 43(a) of the Lanham Act. After Clorox moved for a preliminary injunction the District Court dismissed the false advertising claim sua sponte. Here, the First Circuit vacated the dismissal to let the parties clean their linen in public. Ace contains a compound with high levels of surfactants and enzymes which function as a whitener and a color enhancer. In fact, it was the same formula Proctor & Gamble uses in Liquid Tide with Bleach Alternative. After some consumer studies determined that an obstacle to gaining an enhanced market share for the product was the public's perception that chlorine bleach was necessary to get clothes white, Proctor & Gamble implemented the offending advertising campaign to convince the public that Ace was a superior option than using a lower priced detergent in conjunction with chlorine bleach. Clorox went so far in its suit to seek to permanently enjoin Proctor & Gamble from "making any claims that Ace gets clothes 'the whitest possible,' without the use of Clorox." Essentially, Clorox was saying that its trademark Clorox meant chlorine bleach and its chlorine bleach was better for whitening clothes than Proctor & Gamble's surfactants and enzymes. There was no briefing on the issue or warning of the dismissal which occurred during a preliminary injunction proceeding. The First Circuit found this summary dismissal inappropriate. The evidence that Clorox introduced during its motion for preliminary injunction did not allow the judge to turn the hearing into a one for summary judgment without warning. The court then went on to review the Lanham Act false advertising claims and found that Clorox had stated a claim as to literal falsity of the advertisement and by its product name. The court also found that Clorox had stated a proper claim of misleading advertising. The decision can be viewed at: http://caselaw.lp.findlaw.com/scripts/getcase.pl?court=1st&navby=case&no=991608 INEQUITABLE (SEMI-)CONDUCT(OR) The Li Second Family Limited Partnership v. Toshiba Corporation et al. (Fed. Cir. - November 8, 2000) This is the story of inequitable conduct that arose out of a complex file history. Probably over simplifying it, the facts are that when the patentee found his patent application for a semiconductor device rejected over prior art in a first application, and he attempted to claim the priority date of several earlier applications. Both the Examiner and the Board of Patent Appeals and Interferences found that he could not, since the earlier references did not teach a key limitation. The patentee was also prosecuting a second related application in front of a different Examiner and amended the claims to have the same key limitation. When this Examiner rejected the claims based on the same prior art as in the other case, the patentee again tried to claim the earlier application's priority date. The patentee did not inform the second Examiner of the Board's rejection of similar arguments with regard to the first application and, in fact, positively argued that all the key limitations were contained in the purported parent applications. The arguments were successful and the Examiner allowed the case that led to the patent in suit. The court found that the patentee's non-disclosure of the Board's decision and misrepresentation of priority dates easily satisfied the test of materiality. Intent was equally implied by the conduct and the District Court was correct in finding the patent unenforceable due to inequitable conduct. The decision can be viewed at: http://caselaw.lp.findlaw.com/cgi-bin/getcase.pl?court=Fed&navby=case&no=991451 HAVEN'T A CLUE Hasbro, Inc. v. Clue Computing, Inc. (First Cir. - November 7, 2000) Another day, another domain name dispute. This one, however, not under the Anti-Cybersquatting Consumer Protection Act but under trademark and dilution law and because of that, lost by the Plaintiff. I would think the vast majority of the readers have on some rainy day in his or her youth played the game "Clue." The mark "Clue" was registered in the U.S. Patent and Trademark Office in 1950 and has been on the Office's Principal Register ever since. Plaintiff Hasbro owns the trademark. In 1994 a partnership was formed under the name Clue Computing for computer services unrelated to the Hasbro mark and was later incorporated as Clue Computing Inc. As far as I can tell from the opinion of the First Circuit, the name is the only correlative between the board game and this Defendant. Of course, Clue Computing registered clue.com as its domain name address. In 1996 Hasbro notified NSI, who informed the Defendant that it intended to terminate its use of the domain name. Clue Computing responded by suing NSI in Colorado State Court. Clue won a preliminary injunction against the threatened termination. Hasbro then sued Clue Computing in Federal District Court in Massachusetts charging both trademark infringement and dilution under the applicable provision of the Lanham Act and the Massachusetts Anti-Dilution Act. The District Court granted summary judgment in favor of Clue Computing on the trademark infringement claim and decided on the merits in favor of Clue Computing on Hasbro's federal and state dilution claims. In a very small nutshell, the District Court granted summary judgment in favor of Clue Computing on Hasbro's trademark infringement claim since there was no significant evidence to establish similarity between Hasbro's goods and Clue Computing's services. The worse that can be shown was that a few surfers looking for things about the board game accidentally ended up at the Clue Computing site. Thereupon the confusion was immediately eliminated by one look at the web page. The Court also found that the Clue mark was not famous and that Clue Computing's use of the domain name did not blur or tarnish Hasbro's mark. The First Circuit praised the District Court's thorough and careful analysis which justified denial of the relief. The decision can be viewed at: http://caselaw.lp.findlaw.com/scripts/getcase.pl?court=1st&navby=case&no=001297 |
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