Weekly IP Takeaways

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.

1. The Trademark Trial and Appeal Board (TTAB) issued a Final Decision dismissing an opposition proceeding filed by Monster Energy against the Cleveland Monsters minor league hockey team. The TTAB acknowledged that MONSTER was present in the hockey team’s applied-for mark, and the Opposer’s mark. The TTAB, however, noted that CLEVELAND distinguished the marks and gave different commercial impressions. The TTAB also noted the absence of any actual confusion. The fact that may have carried the day, however, was that Monster Energy conducted a promotional contest for hockey tickets for the Lake Erie Monsters (the predecessor of the Cleveland Monsters), and had thus, acquiesced to the usage of MONSTERS by the hockey team.

2. Competitors in the sweet tea field locked horns in a patent dispute. One of the asserted patents was subject of a post grant review (PGR) in the Patent Trial and Appeal Board (PTAB). The co-pending district court case in Alabama was stayed pending the outcome of the PGR. Pursuant to a motion to amend pilot program, the patent owner moved to amend its patent claims during the PGR, but the PTAB denied the motion, finding that the amended claims constituted new matter. The written opinion is here.

3. In a noteworthy decision out of the Chancery Court in Delaware, the Court denied a motion for preliminary injunction regarding a claim of trade secret misappropriation. The issue in the case was whether the plaintiff has taken reasonable steps to protect whatever trade secrets it may have had, and the Court answered in the negative. The plaintiff was attempting to expand franchise in waste compacting, and held Zoom calls for those interested. The plaintiff, however, did not avail itself of several of the most common security features in Zoom, including the use of passwords and the waiting room to admit participants. This set of facts led the Court to say that, “Smash did not take reasonable steps to protect their secrecy.” The motion for preliminary injunction was denied. The obvious takeaway here is that if one is going to discuss trade secrets in a Zoom meeting, the security features of Zoom should most definitely be employed.