Our weekly SoCal IP Institute meeting on Monday, September 16, 2013 will be a discussion of a recent Federal Circuit decision regarding design patents and a First Circuit decision regarding trademark infringement. Brief synopses of the cases appear below.

Dorpan, S.L. V. Hotel Melia, Inc., Case No. 12-1679 (1st Cir. August 28, 2013) (available here).  This is a trademark infringement case between two hotels using the mark “Melia” in Puerto Rico. Plaintiff Dorpan has several registered marks using the name “Melia” since at least the late 1990s. Defendant Hotel Melia has operated a hotel named Hotel Melia in Ponce, Puerto Rico for more than a century. Defendant has never registered its mark with the USPTO. In 2007, Dorpan opened a hotel called “Gran Melia” about eighty miles from Ponce. The district court ruled on summary judgment that the marks could co-exist. On appeal, the First Circuit vacated the district court’s decision and held that the marks cannot co-exist in Puerto Rico without creating a likelihood of confusion among consumers.

High Point Design LLC v. Buyer’s Direct, Inc., Case No. 12-1455 (Fed. Cir. September 11, 2013) (available here). On a summary judgment motion, the district court held that BDI’s design patent was invalid based on the fact that it was obvious in light of the prior art and because it was primarily functional rather than ornamental. The district court also dismissed BDI’s trade dress claims. On appeal, the Federal Circuit reversed the district court’s decision as to the grant of summary judgment of invalidity finding that the district court made errors in its obviousness and functionality analysis. The Federal Circuit also vacated the district court’s dismissal of BDI’s trade dress claims and remanded to the district court to reconsider its decision denying BDI’s request to amend the pleadings.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, September 16, 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 Smith by 9 am Monday morning.