Our weekly SoCal IP Institute meeting on Monday, March 9, 2015 will be a discussion of:
Acacia Patent Acquisition, LLC v. Superior Court of Orange County, Case No. G050226 (Cal. App. 4th 2/27/15 (available here). Acacia sought the disqualification of the law firm of AlvaradoSmith, which: (1) previously represented another law firm in an attorney fee dispute; and (2) in this case, represents an expert seeking consulting fees arising out of the same underlying litigation as the attorney fee dispute. The California Court of Appeals for the Fourth Appellate District issued a stay order and an order to show cause. Upon review of the matter, the court concluded that AlvaradoSmith’s wide-ranging access to privileged information in the first representation and the substantial relationship between the two matters requires the disqualification of AlvaradoSmith. The court entered relief countermanding the respondent court’s contrary order.
Here, Frankish Enterprises sought to register the mark:
in connection with “Entertainment services, namely, performing and competing in motor sports events in the nature of monster truck exhibitions.” The Examining Attorney refused registration on the basis that the mark did not function as a service mark. A second refusal was later added, that the specimen did not correspond to the mark as applied-for. The Examining Attorney was also, apparently, of the opinion that the mark was not inherently distinctive. Frankish appealed. Here, the TTAB pointed out that “it is settled that while trade dress in the nature of product design can never be inherently distinctive, product packaging trade dress and trade dress for services can be inherently distinctive.” There is a four-part test for determining whether trade dress is distinctive:
 whether it was a ‘common’ basic shape or design,  whether it was [not] unique or unusual in the particular field,  whether it was a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods, or  whether it was capable of creating a commercial impression distinct from the accompanying words.
The TTAB found that the test was met and, further, that the mark functioned as a service mark for the identified services. In addition, the usual use of a word mark, JURASSIC ATTACK, in connection with the design mark did not cause the applied-for mark to be mutilated. Thus, both refusals for registration were reversed.
All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, March 9, 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.