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In what could be a significant decision, the Court of Appeals for the Federal Circuit (“CAFC”) this week overturned the Board’s decision that had sustained an opposition to PEACE LOVE AND JUICE (& design) for juice bar services based on a likelihood of confusion with Opposer’s PEACE & LOVE registered marks for use with restaurant services, and remanded the case to the Board for further determination. Juice Generation, Inc. v. GS Enterprises LLC, Case 14-1853 (CAFC, July 20, 2015).
The CAFC in particular noted that third-party registrations featuring the terms in the Opposer’s marks showed the weakness of the Opposer’s mark.
The CAFC also noted that costs (of the appeal) were awarded to appellant. I do not recall seeing such an award before.
Here are some key quotes from the CAFC opinion:
sufficient evidence of third-party use of similar marks can “show that customers …‘have been educated to distinguish between different … marks on the basis of minute distinctions.’”2 McCarthy on Trademarks and Unfair Competition §11:88 (4th ed.2015) (quoting Standard Brands, Inc. v. RJR Foods, Inc., 192 U.S.P.Q. 383 (T.T.A.B. 1976)).
The weaker an opposer’s mark, the closer an applicant’s mark can come with-out causing a likelihood of confusion and thereby invading what amounts to its comparatively narrower range of protection. Id. (“Evidence of third-party use of similar marks on similar goods is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection.”); In re Coors Brewing Co., 343 F.3d 1340, 1345 (Fed. Cir. 2003)(third-party use can establish that mark is not strong); Fleetwood Co. v. Mende, 298 F.2d 797, 799 (CCPA 1962) (“Where a party uses a weak mark, his competitors may come closer to his mark than would be the case with a strong mark without violating his rights.”).
In remanding to the TTAB, the CAFC also noted that the Board did not give proper consideration to whether Applicant’s “mark may convey a distinct meaning –  including by having different connotations in consumers’ minds – from the two-word phrase used by [Opposer].
Will this decision increase the role of third-party registrations in TTAB proceedings?
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Audio of Federal Circuit Oral Argument case: THE SLANTS

Posted by ipelton on: January 9th, 2015

This morning, the United States Court of Appeal for the Federal Circuit heard oral arguments regarding the trademark application for THE SLANTS. The TTAB had denied registration of the mark as disparaging under Section 2(a) of the Trademark Act in a precedential opinion October of 2013. See TTAB opinion here.

The argument today touched on multiple issues, including First Amendment issues. Of course, the REDSKINS trademark registration cancellation decision from the TTAB has been appealed to a District Court in Virginia and the issues raised in that appeal also include the Constitution and first amendment.

The audio of today’s hearing in THE SLANTS case (In Re Tam) at the Federal Circuit can be heard here:

http://www.cafc.uscourts.gov/oral-argument-recordings/search/audio.html

United States Court of Appeals for the Federal Circuit

 

A decision by the Court of Appeal for the Federal Circuit a few weeks ago has gone largely unnoticed. The case, In re MSTG, 08-CV-7411 (CAFC April 9, 2012), may have very significant ramifications in trademark and patent disputes.

MSTG sued AT&T Mobility for infringement of patents related to 3G mobile telcom technology. MSTG later sued a number of other parties as to these same patents. MTSG eventually settled with all parties except AT&T. One of the key issues in dispute litigated between MSTG and AT&T is the amount that constitutes a reasonable royalty if AT&T were found to have infringed the patents. In discovery, MSTG produced the requested license agreements with the other former defendants, but AT&T sought additional discovery regarding the negotiations of the settlement agreements on the theory that they too could be pertinent to the determination of a reasonable royalty and moved to compel production. Although the motion was initially denied, the magistrate judge granted the motion, finding that the documents could shed light on calculating a reasonable royalty and why the parties reached their royalty agreements.

The District Court (NDIL) adopted the order, and MSTG petitioned the Federal Circuit to stay discovery and vacate the order. As a matter of first impression, the Federal Circuit granted review. The question before the Federal Circuit was whether communications related to reasonable royalties and damages are protected from discovery based on a settlement negotiation privilege? 

The Federal Circuit ruled that both Supreme Court jurisprudence and policy do not support creation of a new ‘settlement’ privilege, note that : there is no consensus among the states to create such a privilege; Congress has spoken to this issue and chosen not to adopt a settlement privilege (FRE 408); The Advisory Committee of the Judicial Conference has not recommended the privilege; and the Supreme Court has previously ruled that a party seeking a new evidentiary privilege under FRE 501 demonstrate that it will effectively advance the public good. While MSTG contends that this privilege will ensure full and frank discussions in settlement negotiations, the Court found it insufficient to create a privilege.

The court ruled: “[W]e hold that settlement negotiations related to reasonable royalties and damage calculations are not protected by a settlement negotiation privilege.” And added: “While typically settlement negotiations that are admissible under Federal Rule of Evidence or disclosed to a party’s expert would be discoverable, the district court has discretion to limit discovery of material that is not itself admissible and that was not utilized by the opposing party to protect settlement confidentiality. Even as to such admissible or disclosed material, some protections may be appropriate.”

While the issue was specific to to the patent litigation before it, the Federal Circuit spoke more generally in terms of the Federal Rules of Evidence, so one could expect application into other areas of law over which the  Fed. Cir. has jurisdiction.

How could this apply to trademark cases? Are an adversaries negotiation details and communications with third parties subject to discovery?

Special thanks to law clerk Reid Morris who helped prepare this post.