UDRP arbitration decision not entitled deference in civil action

A UDRP arbitration decision ordering transfer of a domain name is reviewed de novo in a later-filed action seeking a declaratory judgment of non-violation of the Anti-Cybersquatting Consumer Protection Act.  Stenzel v. Pifer, No. 2:06CV00049 (WD Wash 05/06); see also Hawes v. Network Solutions, Inc., 337 F.3d 377, 386 (4th Cir. 2003).

Concession agreement is not trademark use for purposes of establishing mark ownership

A concession agreement, which was silent as to ownership or use of trademarks, did not create an implied trademark license between a state parks department and a restaurant operator. (California Department of Parks and Recreation v. Bazaar del Mundo Inc., 9th Cir., No. 05-55828, 5/24/06). 

The state unsuccessfully argued that it owned the marks pursuant to 15 USC §1055, which states:  

"Where a registered mark or a mark sought to be registered is or may be used legitimately by related companies, such use shall inure to the benefit of the registrant or applicant for registration, and such use shall not affect the validity of such mark or of its registration, provided such mark is not used in such manner as to deceive the public. If first use of a mark by a person is controlled by the registrant or applicant for registration of the mark with respect to the nature and quality of the goods or services, such first use shall inure to the benefit of the registrant or applicant, as the case may be."

The state was not the registrant, or even an applicant for that matter, and as a result the restaurant owner owned the marks.

“BUFU” parody of “FUBU” not trademark infringement

GTFM LLC and FUBU Records LLC sell clothing under the popular "FUBU" mark, which stands for "For Us By Us."  The clothing is targeted at the "multicultural youth generation," and the two companies strive to promote youth empowerment through creativity and entrepreneurship.

In 2001, Universal Studios Inc. released the film How High, a satirical "stoner comedy" about two African American youths who find themselves attending Harvard University.  The movie pokes fun at the FUBU marks and image through references to a fictional fashion line of clothing "BUFU," which stands for "By Us, Fuck You."

The plaintiffs sued Universal for trademark infringement and dilution under the Lanham Act and common law, arguing that FUBU’s valuable name and reputation were injured by crudely profane ridicule and by its association with the type of repugnant stereotype that FUBU sought to correct (GTFM Studios LLC v. Universal Studios, Inc., SDNY No. 02CV0506 5/15/06).

In granting defendants’ motion for summary judgment on the basis of no likelihood of confusion, the court reasoned:

1.  "BUFU" was used as a parody, which is entitled to full protection under the First Amendment and pursuant to the substantial body of case law establishing "safe harbors" for that form of comical expression;

2.  in trademark infringement cases, parodies are protected where the mark is being used to lampoon or comment upon the trademark owner or the mark itself, in which expression, and not commercial exploitation of another’s trademark is the primary intent, and in which there is a need to evoke the original work being parodied;

3.  a parodist is not does not trade on the goodwill of the trademark owner to market its own goods; rather, the parodist’s sole purpose for using the mark is the parody itself, and precisely for that reason, the risk of consumer confusion is at its lowest; and

4.  defendants were not competing with plaintiffs by attempting to sell products under the name "BUFU." 

Factually flawed opinion is no help in rebutting claim of willful patent infringement

Good faith may normally be shown by obtaining the advice of legal counsel as to infringement or patent validity.  Read Corp. v. Portec, Inc., 970 F.2d 816, 828 (Fed.Cir. 1992).  If counsel’s opinion is found to be incompetent, however, a fact finder may discount its usefulness in determining a party’s good faith.  Id. at 828-829.

Consistent with Read, the Fed. Circuit held in Liquid Dynamics v. Vaughan that a noninfringement opinion written by patent counsel who was not given relevant factual information about an accused device may be discounted by a jury weighing whether to impose damages for willful infringement.

Default judgment in one Opposition does not act as res judicata in Opposition for co-pending application

ThinkSharp, Inc. filed two trademark applications:  one for the mark THINKSHARP plus design and the other for the word mark THINKSHARP.  Sharp Kabushiki Kaisha (Sharp) opposed both applications alleging the marks are confusingly similar to its family of SHARP marks.

ThinkSharp abandoned the design mark without Sharp’s consent and defended the word mark.  Sharp argued that under res judicata, the earlier default judgment barred ThinkSharp from continuing to contest the opposition to the word mark.  The TTAB disagreed and held that ThinkSharp was entitled to abandon one application and to pursue the other. 

On appeal, the Federal Circuit affirmed the TTAB decision and held that ThinkSharp’s choice to contest only the word mark Opposition was not barred by the default judgment in the design mark opposition.