Top 10 Trademark Cases for the Month of May 2010

1. Am. Needle, Inc. v. NFL, No. 08-661, SUPREME COURT OF THE UNITED STATES, 176 L. Ed. 2d 947; 2010 U.S. LEXIS 4166; 94 U.S.P.Q.2D (BNA) 1673; 2010-1 Trade Cas. (CCH) P77,019; 22 Fla. L. Weekly Fed. S 347, January 13, 2010, Argued, May 24, 2010, Decided,  The LEXIS pagination of this document is subject to change pending release of the final published version.

OVERVIEW:  Agreements among a football league, its teams, and a licensor formed by the teams to license their intellectual property constituted concerted action that was subject to antitrust scrutiny under 15 U.S.C.S. § 1. The teams' decisions to collectively license their separately owned trademarks joined together independent centers of decisionmaking.

CORE TERMS:  team's, entity, football, conspiracy, intellectual property, concerted action, license, cooperation, independent action, joint ventures ...

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2. Brayton Purcell LLP v. Recordon & Recordon, No. 07-15383, UNITED STATES COURT OF APPEALS FOR THE NINTH CIRCUIT, 606 F.3d 1124; 2010 U.S. App. LEXIS 10928; 94 U.S.P.Q.2D (BNA) 1808, October 21, 2008, Argued and Submitted, San Francisco, California, May 28, 2010, Filed

OVERVIEW:  Where plaintiff Northern California law firm alleged that defendant San Diego law firm engaged in copyright infringement by making commercial use of plaintiff's website to compete for clients, plaintiff satisfied the "purposeful direction" prong for personal jurisdiction in the Northern District of California pursuant to 28 U.S.C.S. § 1404(a).

CORE TERMS:  website, venue, elder, aiming, personal jurisdiction, targeting, beaches, passive, intentional act, aimed ...

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3. Deere & Co. v. ITC, 2009-1016, UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT, 605 F.3d 1350; 2010 U.S. App. LEXIS 10709, May 26, 2010, Decided

OVERVIEW:  Where the U.S. International Trade Commission improperly applied the "all or substantially all" test in a gray market infringement action under 19 U.S.C.S. § 1337 in determining that a harvester manufacturer was not entitled to an exclusion order, remand was necessary to determine whether 96.6 to 95.9 percent was "substantially all".

CORE TERMS:  harvester, dealer, trademark, consumer, importation, authorization, forage, total number, gray market, apparent authority ...

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4. Vizio, Inc. v. ITC, 2009-1386, UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT, 605 F.3d 1330; 2010 U.S. App. LEXIS 10724, May 26, 2010, Decided

OVERVIEW:  International Trade Commission properly found that makers of certain digital television products violated 19 U.S.C.S. § 1337 through importation or sale of digital televisions that infringed claims of a patent. However, products that employed a "work-around" did not infringe because they did not satisfy all of the patent claim limitations.

CORE TERMS:  map, channel, datastream, decoding, infringement, stream, packetized, suitable, invention, packet ...

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5. Carter v. ALK Holdings, Inc., 2008-1168, UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT, 605 F.3d 1319; 2010 U.S. App. LEXIS 10456; 94 U.S.P.Q.2D (BNA) 1769, May 24, 2010, Decided

OVERVIEW:  Determination of patent attorney's compliance with Manual of Patent Examination Procedure (MPEP) and Code of Federal Regulations (CFR) was a necessary element of the malpractice claim. Count VIII, which alleged violation of fiduciary duty, involved a substantial question of federal patent law and, as to Fed. R. Civ. P. 11, was not frivolous.

CORE TERMS:  patent, inventor's, frivolous, patent law, practitioner, trademark, invention, fiduciary duty, malpractice, federal law ...

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6. United States v. Garcia, No. 09-10534, UNITED STATES COURT OF APPEALS FOR THE ELEVENTH CIRCUIT, 606 F.3d 1317; 2010 U.S. App. LEXIS 10380; 22 Fla. L. Weekly Fed. C 870, May 21, 2010, Decided, May 21, 2010, Filed

OVERVIEW:  Defendant's sentence was reversed because the Government had not demonstrated that defendant's Arizona aggravated assault conviction was the result of intentional or knowing conduct so as to qualify as a "crime of violence" under U.S. Sentencing Guidelines Manual § 2L1.2; therefore, the court erroneously enhanced defendant's sentence by 16 levels.

CORE TERMS:  aggravated assault, crime of violence, generic, immigration, recklessness, physical force, qualify, assault, sentencing, enhancement ...

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7. V Secret Catalogue, Inc. v. Moseley, No. 08-5793, UNITED STATES COURT OF APPEALS FOR THE SIXTH CIRCUIT,  10a0144p.06;, 605 F.3d 382; 2010 U.S. App. LEXIS 10150; 2010 FED App. 0144P (6th Cir.), January 21, 2010, Argued, May 19, 2010, Decided, May 19, 2010, Filed

OVERVIEW:  In a trademark dilution case under the Trademark Dilution Revision Act of 2006, 15 U.S.C.S. § 1125(c), a local store was properly enjoined from using the name "Victor's Little Secret" to sell sex products because it did not rebut the strong inference of tarnishment that arose from its semantic association with the famous "Victoria's Secret" mark.

CORE TERMS:  secret, dilution, tarnishment, trademark, famous, reputation, sexual, junior, senior, burden of proof ...

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8. College Network, Inc. v. Moore Educ. Publrs., Inc., No. 09-50596, UNITED STATES COURT OF APPEALS FOR THE FIFTH CIRCUIT, 2010 U.S. App. LEXIS 9734, May 12, 2010, Filed,  PLEASE REFER TO FEDERAL RULES OF APPELLATE PROCEDURE RULE 32.1 GOVERNING THE CITATION TO UNPUBLISHED OPINIONS.

OVERVIEW:  A competitor's argument that its prior strong reputation and professional endorsements created a reasonable probability that it would enter into new contracts was not sufficient to support a jury's verdict on its tortious interference with prospective business relations claim, as tortious interference could not be inferred from falling profits.

CORE TERMS:  defamation, matter of law, reputation, tortious interference, defamatory, lost profits, Lanham Act TCN, undiscoverable, inherently, trademark ...

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9. Sadeh v. Biggs, 2010-1026, UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT, 2010 U.S. App. LEXIS 9665, May 12, 2010, Decided,  THIS DECISION WAS ISSUED AS UNPUBLISHED OR NONPRECEDENTIAL AND MAY NOT BE CITED AS PRECEDENT. PLEASE REFER TO FEDERAL RULES OF APPELLATE PROCEDURE RULE 32.1 GOVERNING THE CITATION TO UNPUBLISHED OPINIONS.

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10. Fred Bevs., Inc. v. Fred's Capital Mgmt. Co., 2010-1007, UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT, 605 F.3d 963; 2010 U.S. App. LEXIS 9664, May 12, 2010, Decided

OVERVIEW:  Court reversed Trademark Trial and Appeal Board's (TTAB's) decision denying a beverage company's motion for leave to amend its petition seeking cancellation of another company's trademark registration because the beverage company had not submitted $ 300 payment required by 37 C.F.R. § 2.6(a)(16). TTAB had not adopted a rule requiring that payment.

CORE TERMS:  cancellation, leave to amend, registration, accompanied, trademark, Amend, accompany, present case, arbitrary and capricious, requisite ...

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