Topical Table of Contents: January 2004 (Issue No. 1: Decisions published Dec. 16-31)

Topical Table of Contents:

Assignment

Plaintiff's Predecessor Validly Assigned Marks To Plaintiff Even Though No Assets Were Transferred And Assignment Was Not Written

Gaffrig Performance Industries, Inc. v. Livorsi Marine, Inc.
(N.D. Ill. Dec. 22, 2003) 2003 U.S. Dist. LEXIS 23018

(decision after bench trial)

Case Summary

Court Decision

Attorneys' Fees

Order Granting Attorneys' Fees Was Supported By Sufficient Undisputed Evidence Of Willful And Deliberate Infringement

Earthquake Sound Corporation v. Bumper Industries
(9th Cir. Dec. 16, 2003) 2003 U.S. App. LEXIS 25286

(attorneys' fees award affirmed)

Case Summary

Court Decision

Attorneys' Fees Denied To Prevailing Defendants Because Plaintiff Presented Some Evidence Of Secondary Meaning And Suit Was Not "Oppressive"

Peaceable Planet, Inc. v. Ty, Inc., et al.
(N.D. Ill. Dec. 18, 2003) 2003 U.S. Dist. LEXIS 22774

(defendants' motion for attorneys' fees denied)

Case Summary

Court Decision

Cancellation Based On Fraud

Defendant's Trademark Registrations Are Cancelled Due To Fraudulent Response To PTO Office Action

Gaffrig Performance Industries, Inc. v. Livorsi Marine, Inc.
(N.D. Ill. Dec. 22, 2003) 2003 U.S. Dist. LEXIS 23018

(decision after bench trial)

Case Summary

Court Decision

Cybersquatting

Competitor's Registration Of Domain Name Virtually Identical To Plaintiff's Mark And Domain Name Constituted Cybersquatting

1-800 Contacts, Inc. v. WhenU.com, et al.
(S.D.N.Y. Dec. 22, 2003) 2003 U.S. Dist. LEXIS 22932

(granting motion for preliminary injunction)

Case Summary

Court Decision

Descriptive Marks

GAFFRIG Is A Surname, But Is Protectable As A Trademark Because It Has Acquired Secondary Meaning

Gaffrig Performance Industries, Inc. v. Livorsi Marine, Inc.
(N.D. Ill. Dec. 22, 2003) 2003 U.S. Dist. LEXIS 23018

(decision after bench trial)

Case Summary

Court Decision

Design Marks

The "O" Oval Design Element In Plaintiff's Composite GEORGI O Vodka Mark Is Not A Separate, Protectable Trademark

Star Industries, Inc. v. Bacardi & Company Ltd. Corp., et al.
(S.D.N.Y. Dec. 22, 2003) 2003 U.S. Dist. LEXIS 23411

(judgment for Defendants following bench trial)

Case Summary

Court Decision

Fair Use

Artist's Photos Of BARBIE Dolls Are Protected Fair Use

Mattel, Inc. et al. v. Walking Mt. Productions, et al.
(9th Cir. Dec. 29, 2003) 2003 U.S. App. LEXIS 26294

(affirming summary judgment for defendants)

Case Summary

Court Decision

Incontestable Registrations

Defendant's Incontestable Trade Dress Registration Did Not Preclude Finding That Defendant's Thermostat Design Was Functional And Not Entitled To Trade Dress Protection

Eco Manufacturing LLC v. Honeywell International Inc.
(7th Cir. Dec. 31, 2003) 2003 U.S. App. LEXIS 26430

(affirming denial of Defendant's motion for a preliminary injunction)

Case Summary

Court Decision

Infringer's Profits

Award Of Defendant's Profits Denied Under Equities Of Case In Action Against Seller Of Counterfeit Goods

Gucci America, Inc. v. Daffy's, Inc., et al.
(3rd Cir. Dec. 31, 2003) 2003 U.S. App. LEXIS 26467

(affirming district court's denial of recall order, injunctive relief, and accounting of profits)

Case Summary

Court Decision

Injunctive Relief

Injunctive Relief Denied Where Defendant Voluntarily Ceased Selling Plaintiff's Goods

Gucci America, Inc. v. Daffy's, Inc., et al.
(3rd Cir. Dec. 31, 2003) 2003 U.S. App. LEXIS 26467

(affirming district court's denial of recall order, injunctive relief, and accounting of profits)

Case Summary

Court Decision

Jurisdiction

Defendants' Website And Cease And Desist Letter Did Not Create Jurisdiction, Despite Adverse Effects On Plaintiff In Forum

Softee Manufacturing, LLC v. Mazner, et al.
(N.D. Ill. Dec. 18, 2003) 2003 U.S. Dist. LEXIS 22760

(granting motion to dismiss based on lack of jurisdiction)

Case Summary

Court Decision

Laches

Plaintiff's Six To Nine Year Delay Constituted Laches Barring Recovery Of Damages Because It Was Unreasonable And Prejudiced Defendant, But Plaintiff Is Nonetheless Entitled To Injunctive Relief

Gaffrig Performance Industries, Inc. v. Livorsi Marine, Inc.
(N.D. Ill. Dec. 22, 2003) 2003 U.S. Dist. LEXIS 23018

(decision after bench trial)

Case Summary

Court Decision

Licensing

Asset Purchase Agreement Granted Only A License, And Did Not Assign Mark

Gaffrig Performance Industries, Inc. v. Livorsi Marine, Inc.
(N.D. Ill. Dec. 22, 2003) 2003 U.S. Dist. LEXIS 23018

(decision after bench trial)

Case Summary

Court Decision

Mootness

Competitor's Voluntary Cessation Of Using Internet Pop-Up Ads Did Not Moot The Action Or Preclude Injunctive Relief

1-800 Contacts, Inc. v. WhenU.com, et al.
(S.D.N.Y. Dec. 22, 2003) 2003 U.S. Dist. LEXIS 22932

(granting motion for preliminary injunction)

Case Summary

Court Decision

Recall Of Counterfeit Goods

Court Denies Motion For Order Directing Recall Of Counterfeit Goods Sold To Public By Defendant Retailer

Gucci America, Inc. v. Daffy's, Inc., et al.
(3rd Cir. Dec. 31, 2003) 2003 U.S. App. LEXIS 26467

(affirming district court's denial of recall order, injunctive relief, and accounting of profits)

Case Summary

Court Decision

Suggestive Marks

1-800 CONTACTS Is A Suggestive, Not Descriptive Or Generic, Mark

1-800 Contacts, Inc. v. WhenU.com, et al.
(S.D.N.Y. Dec. 22, 2003) 2003 U.S. Dist. LEXIS 22932

(granting motion for preliminary injunction)

Case Summary

Court Decision

Trade Dress

District Court Did Not Err In Denying Defendant's Preliminary Injunction Motion Because Defendant's Thermostat Design Was Functional And Not Entitled To Trade Dress Protection

Eco Manufacturing LLC v. Honeywell International Inc.
(7th Cir. Dec. 31, 2003) 2003 U.S. App. LEXIS 26430

(affirming denial of Defendant's motion for a preliminary injunction)

Case Summary

Court Decision

Trademark Infringement

Licensee's Continued Use Of Mark After Expiration Of License Term Constituted Trademark Infringement

Gaffrig Performance Industries, Inc. v. Livorsi Marine, Inc.
(N.D. Ill. Dec. 22, 2003) 2003 U.S. Dist. LEXIS 23018

(decision after bench trial)

Case Summary

Court Decision

District Court's Entry Of Judgment For Plaintiff As Matter Of Law Following Jury Trial Reversed And Remanded Because Trademark Infringement Was A Question For The Jury

Ty Inc. v. Softbelly's, Inc., et al.
(7th Cir. Dec. 22, 2003) 2003 U.S. App. LEXIS 25883

(reversing entry of judgment as a matter of law by district court following jury trial)

Case Summary

Court Decision

Defendant's BACARDI O Rum Mark Does Not Infringe Plaintiff's GEORGI O Vodka Mark

Star Industries, Inc. v. Bacardi & Company Ltd. Corp., et al.
(S.D.N.Y. Dec. 22, 2003) 2003 U.S. Dist. LEXIS 23411

(judgment for Defendants following bench trial)

Case Summary

Court Decision


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