In a decision Wednesday, the Third Circuit affirmed a district court's grant of summary judgment in a trademark case, finding the asserted mark not protectible as a matter of law.

The district court granted summary judgment that the mark was generic.  On appeal, the Third Circuit held there was a genuine issue of fact as to genericness, but that even if it the mark was descriptive, there was no genuine issue as to secondary meaning and upheld the summary judgment.  Specifically, the plaintiff had no evidence that it had independently used the mark at issue separate and apart from its house mark, so evidence of sales and marketing of the product could not support an inference of secondary meaning.  Further, the plaintiff did not perform a secondary meaning survey.  As a result, "under the specific circumstances presented by this case," the evidence presented was insufficient to generate a genuine issue of material fact.  Accordingly, the court affirmed the district court's grant of summary judgment.

More concerning E.T. Browne Drug Co. v. Cococare Prods., Inc. after the jump.

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In a lengthy decision last week, the First Circuit held a district court erred in finding the term "duck tour" nongeneric in the context of sightseeing tours on amphibious vehicles.  The district court, based largely on the nongenericness of this aspect of the parties' marks, found the plaintiff was likely to succeed in its infringement claims, and entered a preliminary injunction.  The defendant appealed.

The First Circuit vacated the injunction.  The district court's erroneous holding regarding the generic nature of "duck tour" caused the district court to give too much weight to those terms in the composite marks in its likelihood of confusion analysis.  As a result, the district court also erred in finding both a likelihood of confusion and a likelihood of success on the merits for both the word marks and design marks at issue.  Therefore, the court vacated the district court's preliminary injunction.

More concerning Boston Duck Tours, LP v. Super Duck Tours, LLC after the jump.

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In a decision Friday, the Seventh Circuit affirmed a jury verdict of trademark infringement, but reversed the district court's ruling holding the plaintiff had forfeited damages because of improper conduct towards a prospective witness. The court dealt with whether the burden of proof for the sanction was by clear and convincing evidence or as the district court concluded, by a mere preponderance of the evidence.

The court ultimately decided that when the appropriate burden of proof is not clear, the issue is resolved within the limits of proportionality.  Specifically, a larger sanction requires a higher degree of harm caused by the misconduct.  Since, there was no harm caused by the misconduct, the district court's imposition of the sanction was revered.  The harm was mitigated in this case because the defendant decided not to call the witness in question, which turned out to be a tactical mistake, as the witness was going to offer testimony on a potentially meritorious defense, namely that the mark at issue was generic.

More detail of Ty Inc. v. Softbelly's, Inc. after the jump.

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In a decision this week, the Eleventh Circuit affirmed a grant of summary judgment of no service mark infringement.  The court held that there were no triable issues of fact as to whether the companies' service marks were confusingly similar, the existence of actual confusion, and the defendant's intent.

More details of Welding Servs., Inc. v. Foreman after the jump.

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In a decision yesterday, the Ninth Circuit vacated a preliminary injunction preventing an individual from "making any comments that could be construed as to disparage" a possible trademark and logo. The court concluded that the injunction was improperly granted since the plaintiff failed to present a likelihood of success on the merits by failing to show a likelihood of confusion, and that no claim for "trademark disparagement" existed under the Lanham Act.

More detail of Freecycle Network, Inc. v. Oey after the jump.

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The First Circuit on Friday held that, in the context of certain carbine firearms, the term "M4" was generic, and therefore not subject to trademark protection.  The court found that notwithstanding a registration on the principal register, the evidence presented was such that the only reasonable inference was that M4 was generic in the minds of the purchasing public for the carbine firearm the military had designated as the "M4."

More details of Colt Defense LLC v. Bushmaster Firearms, Inc. after the jump.

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The truth is finally out — "Lawyers" are generic.  Really, "lawyers.com" is generic.  In a case before the Federal Circuit, the Court affirmed the holding of the Trademark Trial and Appeal Board (TTAB) which denied registration of the mark LAWYERS.COM for providing an online interactive database featuring information exchange in the fields of law, legal news, and legal services as a generic mark. 

More details after the jump.

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