We will be discussing one Federal Circuit case and one 9th Circuit case during our weekly SoCal IP Institute meeting on Monday, October 15, 2012. Brief synopses are presented below.
In re Miracle Tuesday, LLC., Case No. 2011-1373 (Fed. Cir. October 4, 2012) (attached).
Miracle Tuesday filed an intent-to-use trademark application for the word mark “JPK PARIS 75” and design below in connection with sunglasses, wallets, handbags and purses, travel bags, suitcases, belts and shoes. The Trademark Trial and Appeal Board agreed with the examiner’s refusal to register the mark as being “primarily geographically deceptively misdescriptive.”
The Federal Circuit affirmed stating that there is no evidence showing a direct connection between petitioner’s goods and Paris and the Board properly found that there is insufficient evidence that the goods originate in Paris. The Court agreed that the geographical misrepresentation in the mark is material and would deceive a substantial portion of the relevant consumers regarding the source of the goods.
Microsoft Corp. v. Motorola, Inc., Case No. 12-35352 (9th Cir. September 28, 2012) (attached).
Microsoft sued Motorola for breach of contract in a Washington district court. Subsequently, Motorola filed a patent infringement suit against Microsoft in a Wisconsin district court and in Germany for patents relating to the H.264 video coding and the 802.11 WLAN standards, which is alleged to be used in Microsoft’s Xbox 360. In the German court, judgment was entered in favor of Motorola. The district court in Washington granted Microsoft’s motion for a preliminary injunction to enjoin Motorola from enforcing a German injunctive relief. Motorola appealed the preliminary injunction.
On appeal, the Court determined that the district court did not abuse its discretion in enjoining Motorola from proceeding with patent-infringement actions in Germany. The Court noted that there was an enforceable contract, which encompassed not just U.S. patents but also the patents at issue in the German suit. The district court did not abuse its discretion in determining that if it decided in favor of Microsoft, Microsoft’s contract-based claims would determine the propriety of enforcing the injunctive relief obtained in Germany. Also, the Court stated that the district court’s injunction did not create an intolerable impact on international comity. The case is a private dispute between two U.S. corporations under state contract law, which does not raise any public international issue. The Court determined that the district court’s narrowly tailored preliminary injunction was not an abuse of discretion.
All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, October 15, 2012 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.
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