Categories: Pattishall Involvement, Trademark (General)
Tags: Andrew N. Downer, Belinda J. Scrimenti, Non-Traditional Marks, Trademark Prosecution, TTAB, USPTO
By Belinda J. Scrimenti, Trademark Attorney
The famous Peabody Hotels in Memphis, Orlando and Little Rock are known for their iconic March of The Peabody Ducks, in which trained mallard ducks, guided by the “Duckmaster,” delight audiences twice-daily. A red carpet is rolled out, and the ducks leave their rooftop “penthouse,” proceed down an elevator, and march across the red carpet, up steps and into the beautiful fountains in The Peabody Hotels’ lobbies. The ducks spend their days leisurely swimming in the fountain, and at day’s end perform the March in reverse and retire for the night. The Ducks have appeared on numerous television broadcasts, including Oprah and numerous travel programs, and received enormous print publicity.
Knowing that the Duck March had become synonymous with The Peabody Hotels, the Hotels’ owner recognized the importance of protecting the valuable intellectual property of both the Duck March and “The Legend of the Ducks” – the 109-word story about how decades ago the Ducks came to march daily to The Peabody fountain. (more…)
By Andrew N. Downer, Trademark Attorney
Recently, the Trademark Trial and Appeal Board (“TTAB”) issued a decision providing guidance on the proper way to plead a fraud claim under the new Bose standard. The case – DaimlerChrysler Corp. and Chrysler, LLC v. American Motors Corp., Canc. No. 92045099 (Jan. 14, 2010) – is the TTAB’s first post-Bose decision to find a fraud claim to have been sufficiently pled. The DaimlerChrysler case also offers some interesting insights into the ability for fraud plaintiff’s to obtain summary disposition of their claims.
On August 31, 2009, the Federal Circuit overturned a line of TTAB decisions that had held that an applicant/registrant committed fraud in the procurement of a trademark registration when it “knew or should have known” that a material statement made to the PTO was false. In re Bose Corp., 91 U.S.P.Q.2d 1938 (Fed. Cir. 2009). The Federal Circuit found that the TTAB’s decisions lowered the standard for finding fraud to simple negligence, and instead held that an applicant’s/registrant’s subjective intent to deceive the PTO must be proven through clear and convincing evidence. Id. at 1940-41. (more…)
By Andrew N. Downer, Trademark Attorney
On August 31, 2009, the Federal Circuit issued an opinion that significantly impacts U.S. trademark owners, allowing them the opportunity to breathe a little easier with respect to their statements to the Patent and Trademark Office (“PTO”). The case – In re Bose Corp., No. 08-1448 – essentially overturns the PTO’s decision in Medinol v. Neuro Vasx, Inc., 67 U.S.P.Q.2d 1205 (T.T.A.B. 2003), and re-grounds the establishment of a claim of fraud on the PTO in traditional notions of intent. Medinol had relaxed the standard for proving fraud such that a claimant only had to prove that the applicant/registrant “should have known” a statement was false. The Federal Circuit’s opinion reestablishes that the applicant/registrant must have an intent to deceive the PTO, contrary to the PTO’s post-Medinol jurisprudence.
In the underlying case, Bose challenged Hexawave’s application to register the mark HEXAWAVE based on a likely confusion with Bose’s prior registration of WAVE. Hexawave counterclaimed for cancellation of Bose’s WAVE registration, alleging that Bose committed fraud when renewing its WAVE registration. Hexawave contended that Bose falsely claimed use of the mark on all of the listed goods when, in fact, it knew that it had stopped selling certain of the goods, namely, audio tape recorders and players. During discovery, Bose’s general counsel testified that he believed the WAVE mark was still in use in commerce because Bose was repairing those trademark-bearing goods and shipping them back to customers. The Board held that Bose’s belief was not reasonable, and cancelled Bose’s WAVE registration on the ground of fraud. (more…)
Judge Elaine Bucklo of the United States District Court for the Northern District of Illinois awarded over $2 million to Paxar Corproation, f/k/a Monarch Marking Systems and now a wholly-owned subsidiary of Avery Dennison Corp., in a lawsuit handled by Chicago trademark attorneys Brett August and Andrew Downer. The award in this trademark infringment and unfair competition case was for damages, costs and attorneys fees under a 1995 settlement agreement that was filed with the court as a consent judgment against Kap Graphics and Larry Fern. The settlement called for payments over 13 years and had a powerful liquidated-damages provision. Although initially expressing doubts about jurisdiction and the liquidated damages provision, today Judge Bucklo entered an order that states in part:
This Court has concluded that it does have jurisdiction to enforce the settlement because it was incorporated into a consent judgment. [Cites omitted.] Although harsh, the parties agreed that in the event of any default, Kap Graphics would be liable not only for the amount in default, but for $2,000,000.00 in liquidated damages, as well as attorney’s fees and costs.
The case is Monarch Marking Systems v. Kap Graphics Inc., et al., 1:93-cv-5082.