In a recent decision, the Second Circuit affirmed a district court's decision in a trademark case not to enter an order pursuant to 15 U.S.C. § 1119.  § 1119 permits a court to enter an order regarding registrability and cancellation of marks at the USPTO.  The prevailing defendant asked the district court to order the USPTO to dismiss a related cancellation proceeding.  The party had not requested an order under § 1119 in its counterclaims, but instead sought it by way of a Rule 59(e) motion to amend the final judgment in the case.  The district court denied the motion, concluding the defendant could simply raise the issue as a matter of issue preclusion.

The Second Circuit affirmed.  The court held there was no abuse of discretion in denying the Rule 59(e) motion.  Further, the court noted § 1119 is permissive, such that the court was not required to grant such relief.

More detail of Empresa Cubana del Tabaco v. Culbro Corp. after the jump.

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In a recent decision, the Second Circuit decided the one outstanding issue from a case it had previously decided in March 2007 (previously blogged here), namely whether the "famous marks" doctrine the court held Congress has not yet incorporated into federal trademark law might support a New York common law claim for unfair competition.  The Second Circuit certified two questions to the New York Court of Appeals before resolving the issue.  With the answers back, the court affirmed the district court grant of summary judgment to the defendants in its entirety.

With the case now fully decided by the Second Circuit, the way is now clear for a possible appeal to the Supreme Court, as this case conflicts with the Ninth Circuit's 2004 decision in Grupo Gigante S.A. de C.V. v. Dallo & Co., which recognized the "famous marks" doctrine rejected by the Second Circuit in this case.

More detail of ITC Ltd. v. Punchgini, Inc. after the jump.

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In a decision yesterday, the Ninth Circuit affirmed a district court's finding that the mark "Perfumebay" was likely to be confused with eBay, and affirmed an injunction barring the use of the domains perfumebay.com and perfume-bay.com (as of today, both these domains are still functional).  The court also affirmed the finding that the use of "Perfume Bay" was not likely to cause confusion, in part because "PerfumeBay" incorporates the full "eBay" trademark, whereas "Perfume Bay," with the addition of the space between the words, no longer incorporates the whole eBay trademark.

The Ninth Circuit reversed the district court's finding of no likely dilution under California law, stating that "it does not appear that the district court fully considered the highly distinctive qualities of eBay's famous mark."  Perfumebay's use of the suffix "Bay" may cause consumers to "no longer associate the usage of the 'Bay' suffix with eBay's unique services," causing the "uniqueness" of eBay's mark to be "diluted in direct proportion to the extent consumers, particularly internet users, disassociate the eBay mark with eBay's services."

More detail of Perfumebay.com, Inc. v. eBay Inc. after the jump.

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