Our weekly SoCal IP Institute meeting on Monday, April 13, 2015 will be a discussion of the following cases:

ProMark Brands Inc. v. GFA Brands Inc. (TTAB  March 27, 2015) (available here). Here, ProMark (later assigned to H.J. Heinz Company) opposed GFA’s trademark application for the plain word mark SMART BALANCE for: frozen appetizers containing poultry, meat, seafood or vegetables in International Class 29; frozen entrees consisting primarily of pasta or rice in International Class 30; soy chips and yucca chips; snack mixes consisting primarily of processed fruits, processed nuts, raisins and/or seeds; nut and seedbased snack bars in International Class 29; cake mix, frosting, cakes, frozen cakes, cookies, coffee, tea, hot chocolate, bread, rolls, crackers, pretzels, chips, snack mixes, spices, snack bars in International Class 30.

Opposers alleged likelihood of confusion with its SMART ONES (plain word mark) for:  Frozen entrees consisting primarily of chicken, fish and/or vegetables in International Class 29; Frozen desserts consisting of milk based or milk substitute based desserts, cakes, pies and mousses in International Class 30; Pre-cooked ready-to-eat frozen bread or wrap having a meat and/or vegetable filling with or without cheese in International Class 30; Pizza in International Class 30; Frozen foods, namely, breakfast sandwiches and muffins International Class 30.

Ultimately, ProMark failed to prove likelihood of confusion.  Namely, the shared word “SMART” was weak, descriptive in nature and commonly used, the parties had an extensive history of co-existence, the marks created different overall connotations and commercial impressions, and the survey evidence submitted  by ProMark was dubious.

Slep-Tone Entertainment Corporation v. Karaoke Kandu Store, (6th Cir. April 6, 2015)  (available here). Here, the Defendants argued that the district court erroneously denied their motion for attorney fees under 15 U.S.C. § 1117(a) following the judgment in their favor, and the 6th Circuit agreed.  The 6th Cir. held: “Here, the district court found the Defendants’ motion for attorney fees was untimely under Rule 54(d)(2)(B) because the Defendants filed their motion on September 13, 2013, twenty-one days after entry of the court’s August 23, 2013 judgment, and the Defendants offered no excuse for the untimely filing. But the district court failed to recognize that Slep-Tone’s timely Rule 52 motion, filed on September 5, 2013, was pending when the Defendants filed their motion for fees, thus tolling Rule 54(d)(2)(B)’s fourteen-day period pending resolution of the post-judgment motion”.   Regarding the second issue of whether this case was “exceptional” thereby warranting attorneys fees, the court held: “the question of whether this case is exceptional enough to merit fees to the prevailing party under § 1117(a) could very well turn on the district court’s final findings of fact and conclusions of law. Indeed, resolution of the pending motion could amend the judgment or clarify the issues in a way that is relevant to whether this case is exceptional under § 1117(a)…Moreover, after the district court denied the Defendants’ fees motion (but while the final judgment was suspended), the Supreme Court decided Octane Fitness, LLC v. ICON Health & Fitness, Inc., which clarified the meaning of “exceptional” under the Patent Act’s fee-shifting provision…” The case was thus Remanded.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, April 13, 2015 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 Noelle Smith by 9 am Monday morning.