Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.
1. Following the Supreme Court’s recent decision in the Arthrex case, which side-stepped a finding of unconstitutionality in connection with the appointment of Patent Trial and Appeal Board (PTAB) judges by requiring the availability of discretionary USPTO Director review of PTAB final written decisions, the USPTO issued interim procedures for the review mechanism. The procedures permit one who is unhappy with a PTAB decision to submit a request for Director review within 30 days of the final written decision.
2. In an opinion that may not be much of a surprise, but one which confirmed an important legal point, the Tenth Circuit Court of Appeals ruled that the “exceptional case” standard for patent cases set forth in the Supreme Court’s Octane Fitness opinion also applies within the Tenth Circuit to “exceptional case” determinations in trademark cases under the Lanham Act (federal trademark law). For context, in order for a prevailing party to obtain an award of attorneys’ fees in a patent or trademark case, one must show, at a minimum, that the case is “exceptional.”
3. In a recent decision from the Southern District of New York, the Court denied a temporary restraining order and preliminary injunction to a trademark owner alleging that the show and apparel company Puma infringed the mark. The mark in question, for lack of a better description, looks like a hand drawing of novelty vampire teeth (but are intended to reflect a roaring animal). At any rate, the Court, in considering the Polaroid factors for likelihood of confusion, found that the mark was strong. In considering the similarity of the marks, the Court acknowledged that the plaintiff’s mark was similar to one of Puma’s having teeth, but not others having teeth. It is a bit odd that the Court viewed the plaintiff’s mark against a number of Puma’s marks having teeth collectively, rather than one against another. The Court could have said the similarity factor weighed in favor of Puma on the non-similar marks, but in favor of the plaintiff on the mark that was similar. Nonetheless, it may not have made a difference between the competitive proximity/channels of trade were quite different and unlikely to become closer, there was no actual confusion, and no apparent bad faith. Thus, other than a strong mark, and perhaps one similar mark, the vast majority of the Polaroid factors weighed against the plaintiff. Thus, the Court denied the TRO and preliminary injunction. The takeaway here is that injunctive relief carries with it a higher threshold of proof because of its exigency, and when seeking such relief, one must have stronger evidence than the plaintiff had in this case.