Weekly IP Takeaways

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

1. In a trademark case out of the United States Court of Appeals for the Second Circuit, the Court held that an Oregon Brewing Company’s superior, common law rights in connection with the trademark ROGUE for apparel overcame the Plaintiff/junior user’s registered rights to sell apparel under the ROGUE name, even though the brewing company did not sell in department or clothing-only stores. The Court noted that, “OBC maintained its senior common law rights against Excelled’s intervening junior use of the mark for the same items of ROGUE-branded clothing that OBC has sold continuously since 1989.” Thus, common law trademark rights in connection with particular goods maintain priority over junior, registered trademark rights for the same goods, even if the goods associated with each mark are not sold in the same venues. The opinion is here.

2. In a ruling on a Rule 12(b)(6) motion out of the Southern District of New York, the plaintiff’s claims for, inter alia, false advertising under the Lanham Act and unfair competition under New York law were not adequately pled. The basic premise of the case was that the defendant, a patent owner, was informing alleged customers of the plaintiff that the plaintiff’s product infringed defendant’s patents. The false advertising claim was deficient because it did not contain plausible factual allegations to show sufficient dissemination to the relevant purchasing public for the matter to be considered advertising or other type of commercial statement. The Court also determined that there were insufficient allegations of objective baselessness of the patent infringement assertions or bad faith, as required to assert Lanham Act claims related to improper notice letters to a competitor’s customers and the like. This ruling essentially re-affirms existing law in this area and reminds practitioners to be careful when communicating infringement allegations to a competitor’s customers. It also reminds counsel to make sure to include sufficient details in a pleading to meet the high standards of objective baselessness and bad faith, if attempting to assert tortious or false communications by a competitor to one’s own customers. The opinion is here.

3. As noted several weeks ago, when litigants take the U.S. Patent and Trademark Office (“USPTO”) to court to challenge the denial of a trademark application (or potentially for other reasons), the challenger is required to pay the USPTO’s legal fees in defending the action, regardless of whether the USPTO wins or loses. The Fourth Circuit Court of Appeals followed its own precedent, as held in the recent Booking.com case. Last week, the U.S. Supreme Court granted certiorari in Nantkwest v. Iancu for essentially the same issue, but as to a patent challenge. As also previously noted, in this author’s opinion, requiring litigants to reimburse the USPTO, particularly when the USPTO loses, will likely have a chilling effect on challenging USPTO decisions on patents and trademarks.