We will be discussing two recent, relevant opinions in our weekly SoCal IP Institute meeting on Monday, April 11, 2011.  The first case is a decision imposes sanctions on an over-zealous use of confidential designations in Federal Circuit briefing. The second case affirms a TTAB decision to deny a trademark opposition.  A brief synopsis of the cases is presented below.

In re Violation of Rule 28(d), Misc. 976 (Fed. Cir. March 29, 2011) (attached). This is an order imposing sanctions upon a patent defendant, Sun Pharmaceutical Labs for extensive use of confidentiality desginations in violation of Fed. Cir. R. 28(d).  This is an appeal of a decision by the district court to enter a consent decree it believed was inconsistent with the terms to which it agreed.

Throughout Sun’s briefing of the appeal, it utilized confidential designations for legal argument, case citations and factual elements.  The Federal Circuit found the extensive use of confidential designations against public policy and otherwise unnecessary.  As a result, the Federal Circuit took the unusual step, for any court but especially for the Federal Circuit, of ordering sanctions of $1,000 against Sun’s counsel.

Citigroup, Inc. v. Capital City Bank Group, Inc., 2010-1369 (Fed. Cir. Mar. 28, 2011) (attached).  Citigroup appealed a decision of the Trademark Trial and Appeal Board to deny Citigroup’s opposition to several trademarks filed by Capital City Bank Group.  Citigroup has a number of marks including “CITI” and “CITIBANK”.   Capital City’s applications were for registration of various marks, each including the phrase “CAPITAL CITY BANK”.  The TTAB determined that Capital City’s marks should be allowed to register.

The TTAB reviewed the relevant DuPont factors and determined that the Capital City marks were not likely to cause confusion with the Citigroup marks.  While Citigroup’s marks were famous, the goods offered under the marks are similar and the channels of trade and classes of consumers are similar, the remaining factors weighed in favor of such a finding.  In particular, the spellings and words themselves were different and the word “Capital” was included in every Capital City application, therefore the marks themselves were distinct from one another.  The TTAB also determined that the was no actual confusion between the two sets of marks.  In view of these determinations and, having substantial evidence in support of the TTAB decision, the Federal Circuit affirmed.

All are invited to join us in our discussion of these cases during the SoCal IP Institute meeting on Monday, April 11, 2011 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Amanda Jones by 9 am Monday morning.