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.

[More]

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.

[More]

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.

[More]

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.

[More]

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.

[More]