For our weekly SoCal IP Institute meeting on Monday, July 6th, 2020 we will discuss the following cases:
United States Patent & Trademark Office (USPTO) v. Booking.Com B.V. 10658 (Supreme Court)(available here)
The USPTO had an almost blanket rule that adding .com to a generic trademark term still renders the generic.com mark generic. When Bookings.com went to register the trademark Booking.com, the USPTO denied their application. The Supreme Court disagreed said the Court, “A term styled ‘generic.com’ is a generic name for a class of goods or services only if the term has that meaning to consumers.”
Newton v. Diamond (9th Cir 2004) (available here)
An old case, but a good one to review. This case goes over the triviality doctrine and how it applies to de minimis copying of a copyrighted work.
V.V.V. & Sons Edible Oils v. Meenakshi Overseas (9th Cir) (available here)
Plaintiff filed a petition for cancellation before the TTAB for three marks. The TTAB dismissed the petition as to the first mark based on claim preclusion and allowed claims against the other two marks to proceed. The district court dismissed plaintiffs’ claims as to the first mark based on claim preclusion and granted defendant’s unopposed motion to dismiss the remaining claims. The 9th Circuit reversed regarding the first mark finding that an exception to claim preclusion applied because an interparty proceeding before the TTAB is a limited proceeding involving registration of a trademark, and the TTAB had no power to decide plaintiff’s claims of infringement, dilution, and unfair competition or to grant either injunctive relief or damages.
All are invited to attend. Due to the Covid-19 situation the meeting will be conducted electronically via zoom. Join us by using this link at 12:00pm PT. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Elisha Manzur by 9 am Monday morning.
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