For our weekly SoCal IP Institute meeting on Monday, May 2, 2016, we will discuss the following cases:

In re Jonathan Roche Fitness Ventures LLC, (TTAB April 15, 2016) (available here).  This is an appeal from the examining attorney’s refusal to register the mark NO EXCUSES DIET for a single book.  In response to the refusal, the applicant submitted additional materials, some bearing the mark, some not, related to the diet and exercise regimen recommended by the book.  The applicant then asserted that the mark was used on more than merely a book and, therefore, was entitled to registration.  The TTAB affirmed the refusal to register the mark.  However, the dissenting opinion suggests that marks for “books” in this context ought to be registerable if there are related products bearing the marks that demonstrate that the brand is associated with more than a single book.

Steiner et al. v. Lewmar et al. (2d. Cir. Mar. 7, 2016) (available here).  Plaintiff brought suit in the District of Connecticut in a breach of a trademark and patent license suit.  The license included an attorneys’ fees provision.  Fearing that Lewmar would be unable to to cover the entire damages requested, Steiner requested prejudgment remedy under Fed. R. Civ. P. 64 (seizure of property).  In response, Lewmar made a Rule 68 offer of judgment at a value of $175,000.  Steiner accepted, then several days after entry of judgment, moved for attorneys fees.

The district court denied the attorney’s fees request, but granted costs. Primarily because Steiner had included attorneys’ fees under his contract as one set of relief and had requested it in the prejudgment motion, the court and the appeals court both viewed it as a claim that was settled by an offer of judgment.  However, Steiner also alleged attorneys’ fees were available under the Connecticut Unfair Trade Practices Act.  Those attorneys’ fees may only have become available upon a determination that Steiner was the “prevailing party” in the suit.  Therefore, the 2nd Circuit remanded asking the lower court to make clear whether the CUTPA had been properly considered because the record was unclear.

All are invited to join us on Monday, May 2, 2016, 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 Moniquee Brown by 9 am Monday morning.