Wednesday, March 30, 2011
Monday, March 28, 2011
Monday, March 21, 2011
In Community of Christ Copyright Corp. v. Devon Park Restoration Branch of Jesus Christ’s Church, No. 10-1707 (8th Cir. Mar. 21, 2011), the Eighth Circuit addressed several issues:
● whether the mark REORGANIZED CHURCH OF JESUS CHRIST OF LATTER DAY SAINTS is generic (no, in part because of lack of proof of what the public thought and in part based on precedent that church names generally are considered descriptive, not generic);
● whether the use of a church’s trademark by an unauthorized congregation can constitute trademark infringement (yes, it can, and, in this case, did);
● whether the plaintiff was entitled to a permanent injunction (yes, because it prevailed on the merits and irreparable harm is presumed in trademark cases – no mention of the possible impact of eBay, Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006)); and
● whether it was an abuse of discretion to whack a small independent congregation with a $348,000 attorneys fees award (no, because there was “willful infringement” in that the defendant ignored the plaintiff’s cease-and-desist letter – which seems like a pretty flimsy reason given the defenses in this unique case resulted in a published opinion).
Wednesday, March 09, 2011
9th Cir.: Purchase of Competitors' Trademark for Google AdWords Listing is "Use in Commerce"; Court Clarifies Confusion Analysis in Internet Setting
At the threshold, the 9th Circuit agreed with the 2d Circuit’s decision in Rescuecom Corp. v. Google Inc., 562 F.3d 123 (2d Cir. 2009) that Google’s sale of a trademark as a trigger for an AdWords listing qualifies as a “use in commerce.”
In probably the most significant aspect of its attempt to clarify how to apply the Sleekcraft confusion factors in this setting, the 9th Circuit indicated that when assessing the “similarity” of the parties’ marks, the courts must pay attention to the “labeling and appearance” of the purchased advertisement, including whether it identifies the alleged infringer’s business. The court also noted that the graphics and text that the Internet service provider (here, Google) uses to distinguish the purchased ads from the search results also plays into the confusion calculus, as does the degree of care exercised by typical searchers.