US Trademark Cases of 2012-13

1. US Trademark Cases of 2012-13 Anthony Venturino Daniel Mullarkey Novak Druce Connolly Bove + Quigg LLP Washington, DC APRAM-AIPLA Joint Meeting 12 March 2013

2. Federal court jurisdiction Already, LLC v. Nike, Inc. – U.S. Supreme Court Decision, (Already L.L.C. d/b/a Yums v. Nike Inc., U.S., No. 11-982, 1/9/13). • This case dealt with when a federal court loses jurisdiction of case based upon a plaintiff’s covenant not to sue. • Trademark infringement suit initiated by Nike and Already LLC counterclaimed to invalidate Nike’s trademark registration for the trade dress of one of its shoes 2

3. Federal court jurisdiction • Issue • Is a counterclaim for invalidity moot when complainant covenants not to sue for trademark infringement? • Facts • After filing of suit, Nike entered into a covenant not to sue for trademark infringement with Already (stating “Already’s actions…no longer infringe or dilute the NIKE mark at a level sufficient to warrant the substantial and expense of continued litigation”) • Already continued its pursuit to invalidate the trademark for fear Nike would continue to threaten to sue Already for infringement (or threaten Already’s customers) 3

4. Federal court jurisdiction • U.S. Supreme Court held in Nike’s favor: • Nike had burden to show it could not reasonably be expected to resume its enforcement efforts against Already • Because Nike could not reasonably be expected to resume its enforcement efforts, competitor’s invalidity counterclaim was moot • It helped Nike that Already could file a petition to cancel the registration the USPTO regardless of Nike’s promise not to sue • The court warned Nike that, granting covenants not to sue may be a risky long-term strategy for a trademark holder. 4

5. Parody Research in Motion Limited v. Defining Presence Marketing Group, 102 U.S.P.Q.2d 1187 (TTAB 2012) • Defining Presence attempted to register the mark CRACKBERRYfor “marketing services, computer services, providing online chat rooms and electronic bulletin boards, and headgear” • RIM opposed the mark based on registrations for its BLACKBERRY mark for, among other things, “electronic handheld units for the wireless receipt and/or transmission of data; for “e-mail service; newsletter relating to internet e-mail services and wireless data messaging services and voice communication services; and technical support services 5

6. Parody • Holdings • Opposition sustained on both trademark infringement and dilution • BLACKBERRY is a famous mark • Rejected “parody” defense on the basis that the public itself adopted and popularized “crackberry” and the applicant’s services are closely related to opposer’s • When federal courts deal with questions of alleged infringement, the protective penumbra of free speech may well support the premise that members of the public have a right to use words in the English language to interest and amuse other persons. • However, when this Board is asked the narrower question of applicants’ right to registration under Section 2(d) of the Lanham Act, the First Amendment claim is not as strong. 6

7. Parody PRL USA Holdings Inc. v. Thread Pit, Inc. (TTAB May 14, 2012) • The TTAB canceled the Thread Pit mark upon a finding of a likelihood of confusion • Thread Pit’s Parody Defense -The intent of the mark was to parody the elite in society as embodied by the sport of polo • The Board Decision • The Polo Player design is famous and famous marks are entitled to more protection • Parodying a lifestyle is not a parody of a trademark • Parody is not a defense if the marks are otherwise confusingly similar 7

8. Keyword Ads can potentially infringe a trademark Rosetta Stone v. GOOGLE, 676 F.3d 144 (4thCir. Apr. 9, 2012) • Google auctioned marks for language learning products and services provider as keyword triggers for links sponsored by third party advertisers and allowing their use within sponsored links’ text or title. • Rosetta Stone and its sponsored sources are not the only purchasers of the keyword advertising containing the ROSETTA STONE mark • District Court • Granted Summary judgment for Google and against Rosetta Stone’s asserted claims of direct, contributory, and vicarious infringement and trademark dilution 8

9. Keyword Ads • The Fourth Circuit overruled the district court and remanded for further proceedings • Genuine issues of fact existed as to whether Google’s keyword advertising is likely to cause confusion for direct infringement – the relevant factors in this case: • Intent to Create confusion • Google conducted a study and concluded some confusion would result back in 2004 • Actual Confusion • 5 customer depositions was not de minimis considering Rosetta was only allowed 5 depositions and there was other evidence of actual confusion, so the court could infer a great number of confused customers for purposes ofsummary judgment • Sophistication of the consuming public

10. Functionality In re Becton, Dickinson & Co.,675 F.3d 1368 (Fed. Cir. 2012) • Issue: Whether a design of a close cap for blood collection tubes was functional, and thus ineligible for trademark protection 10

11. Functionality • Becton Dickinson argued the scope of the mark was extremely modest and limited, • asserted the elongated shape of the closure cap, the spacing of the ribs and their particular shapes, as well as the design relationship of those features to the whole of the closure cap are the design embraced by the mark • The TTAB acknowledged the mark had functional and non-functional elements • The TTAB refused trademark rights on the basis that the design was de jure functional • The Federal Circuit affirmed

12. Functionality • The Federal Circuit applied the four Morton-Norwich factors for whether a mark in its entirety is overall de jure functional, to “strike a balance between the ‘right to copy’ and the right to protect one’s method of trade identification” • 1. the existence of a utility patent disclosing the utilitarian advantages of the design • 2. advertising materials in which the originator of the design touts the design’s utilitarian advantages • 3. availability to competitors of functionally equivalent designs • 4. facts indicating the design results in comparatively simple or cheap method of manufacturing the product • The TTAB made no legal error by weighing the functional and non-functional features of the mark against each other

13. Thank you for your attention! Questions? Anthony Venturino Partner Novak Druce Connolly Bove + Quigg LLP 1875 Eye Street Washington, DC 20006 +1-202-659-0100 (phone) anthony.venturino@novakdruce.com 13