Our weekly SoCal IP Institute meeting on Monday, February 11, 2013 will be a discussion of a recent Supreme Court Trademark case and upcoming changes based upon the America Invents Act (AIA).
Already, LLC v. Nike, Inc. Case No. 11-982 (Jan 9, 2013) (available here)
Nike brought a trademark infringement lawsuit against Already claiming that two of Already’s products infringed Nike’s “Air Force 1” trademark. While the case was pending, Nike unilaterally granted a “covenant not to sue” Already under any trademark or unfair competition claims for either of the allegedly infringing products or any “colorable imitation” of those products. Nike then moved to dismiss its claims and Already’s counterclaim of invalidity of Nike’s mark with prejudice based upon Article III mootness. The district court dismissed and the 2nd Circuit affirmed.
The Supreme Court here unanimously agreed. If Nike was able to show, as it did show here, that it “could not reasonably be expected” to resume its enforcement efforts against Already, then the case was moot. The case or controversy between Nike and Already was moot, despite apparent facts indicating that the case and the trademark dispute had hindered Already’s capability to obtain financing and other investment. This was irrelevant to the trademark-related case or controversy and, therefore, the dismissal was affirmed.
In addition, Mark A. Goldstein will discuss upcoming changes based upon the America Invents Act (AIA).
All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, February 11, 2013 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 Attalla by 9 am Monday morning.