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Federal Circuit Case Law |
China Healthways Institute, Inc. v. Xiaoming Wang
Decided June 22, 2007
In determining likelihood of trademark confusion "[i]t is incorrect to compare marks by eliminating portions thereof and then simply comparing the residue."
China Institute sold electric massagers under the "Chi" trade name and opposed Wang’s trademark application for "CHI PLUS" to cover Wang’s later marketed electric massager. The US PTO Trademark Trial and Appeal Board denied China Institute’s opposition. China Institute appealed to the Federal Circuit.
The Federal Circuit reversed because "the word ‘Chi’ is a significant component of these marks when viewed in their entirety." Furthermore, the "addition of the word ‘PLUS’ in Wang’s mark is unlikely to avoid the confusion for (because) ‘Plus’ ordinarily connotes a superior product, not one from a different source."
The PTO seemed to have over-relied on the generic meaning ("vital energy and vital force") of the word "chi." Another problem was that the PTO did not consider evidence of trademark confusion because China Institute failed to file that evidence at the proper time.
M2 Software, Inc. v. M2 Communications, Inc.
Decided June 7, 2006
Judge Mayer with Judges Bryson and Prost
Trademark confusion is less likely, even
for virtually identical trademarks, when the marks are directed to "separate and
distinct" industries.
M2 Software, which owns the trademark "M2" for the film and music industries,
opposed M2 Communications’ registration for the mark "M2 Communications" for the
health, pharmacy and medicine fields. The PTO Trademark Trial and Appeal Board
dismissed the opposition because "any overlap between the parties’ prospective
purchasers or channels of trade is de minimis."
M2 Communications appealed to the Federal Circuit, which affirmed because "[t]he
unrelated nature of the parties’ goods and their different purchasers and
channels of trade are factors that weigh heavily against M2 Software." The court
further pointed out that "[i]t is difficult to establish likelihood of confusion
in the absence of overlap as to either factor."
M2 Software was first to register the mark "M2" but had only registered for the music entertainment fields. A trademark registrant should seriously consider paying the extra money and registering for additional commercial fields, if there is concern about others using the mark in different trade channels of interest.
Shen Manufacturing Co., Inc. v. The Ritz Hotel Limited
Decided December 17, 2004
pdf copy
Judge Mayer with Judges Schall and Prost
"The ultimate conclusion of similarity or dissimilarity of (trade)marks must rest on consideration of the marks in their entirety."
Ritz filed a first group of trademark applications for phrases that contain "RITZ" for shower curtains, dinnerware, and floor and wall coverings. Shen, which had used the "RITZ" mark for kitchen textiles and bathroom towels since 1892, filed oppositions to the registrations. The PTO dismissed Shen's oppositions, but sustained oppositions to a second group of RITZ marks for cooking and clothing. Shen appealed and Ritz cross appealed to the Federal Circuit.
The Federal Circuit affirmed the dismissal of oppositions to the first group of marks but reversed the decision that sustained the oppositions to the second group. A theme in this case was that the Ritz Hotel marks, while including "RITZ," further comprised other features such as "Paris" or a crest, which distinguished them sufficiently to avoid likely confusion in the minds of the consumer. This opinion stressed the "strong commercial impression" that "conjures images of fancy, even swanky ladies," that differs much from Shen's RITZ mark, which "invokes images, in any of cleaning, cooking or manual labor." The Federal Circuit held that the mark "RITZ" for use with cooking classes would be confused with Shen's "RITZ" mark used on Shen's kitchen textiles because ""the test is not that goods and services must be related if used together, but merely that that finding is part of the underlying factual inquiry…" and reversed that portion of the decision.
In determining the likelihood of confusion between marks, the court relied on three "DuPont" factors: the "alleged fame of Shen's RITZ mark;" the similarity of the marks and the relatedness of the goods. Shen's sales were far less than sales of the Ritz Hotel, indicating much less fame, and the court found lifestyle differences to support dissimilarity of the goods.
The Nautilus Group, Inc. v. Icon Health and Fitness, Inc.
Decided June 21, 2004
pdf copy
Judge Schall with Judges Michel and Prost
* Trademark likelihood of confusion may be "premised on a combination of identical functionality of products and only somewhat similar marks"
Nautilus sued Icon for alleged patent and trademark infringement at the U.S. District Court for the Western District of Washington. Judge Marsha Pechman granted Nautilus a preliminary injunction barring Icon's use of the "Crossbar" trademark for its exercise equipment based on a likelihood of confusion over Nautilus's "Bowflex" trademark. Icon appealed to the Federal Circuit.
The Federal Circuit reviewed the factors for establishing likelihood of confusion according to ninth circuit law and affirmed. A dominant factor was the fact that the competing products were "virtually interchangeable" and therefore "less similarity between the marks was necessary" to show likeliness of consumer confusion. A second major point was "that Nautilus had invested significantly in the brand name" and the strength of Nautilus's registered mark weighed in its favor.
Trademark law favors trademarks that are registered early and promoted heavily. The Federal Circuit in this case noted that Nautilus "has invested in excess of $233 million in promotion" (versus Icon's expenditure of $13 million) and that Icon deliberately "chose to incorporate the term 'bow' (in its trademark) in an attempt to capture some of the market of BowFlex."
M2 Software, Inc. v. M2 Communications, Inc.
Decided June 7, 2006
Judge Mayer with Judges Bryson and Prost
* Trademark confusion is less likely, even
for virtually identical trademarks, when the marks are directed to "separate and
distinct" industries.
M2 Software, which owns the trademark "M2" for the film and music industries,
opposed M2 Communications’ registration for the mark "M2 Communications" for the
health, pharmacy and medicine fields. The PTO Trademark Trial and Appeal Board
dismissed the opposition because "any overlap between the parties’ prospective
purchasers or channels of trade is de minimis."
M2 Communications appealed to the Federal Circuit, which affirmed because "[t]he
unrelated nature of the parties’ goods and their different purchasers and
channels of trade are factors that weigh heavily against M2 Software." The court
further pointed out that "[i]t is difficult to establish likelihood of confusion
in the absence of overlap as to either factor."
M2 Software was first to register the mark "M2" but had only registered for the music entertainment fields. A trademark registrant should seriously consider paying the extra money and registering for additional commercial fields, if there is concern about others using the mark in different trade channels of interest.
Amini Innovation Corporation v. Anthony California, Inc. and James Chang
Decided March 3, 2006
Judge Rader with Judes Mayer and Dyk
* “Summary judgment is not highly favored on questions of substantial similarity in copyright cases.”
Amini, a furniture maker, sued competitor Anthony for alleged copyright
violation and design patent infringement, at the U.S. District Court for the
Central District of California. Judge S. James Otero granted Anthony summary
judgment of non-infringement after finding no similarity under a 9th
circuit two part test for copyright similarity. This test includes: 1. an
objective comparison of specific expressive elements; and 2. a subjective
comparison of “whether the ordinary reasonable audience would find the works
substantially similar in the ‘total concept and feel of the works.’” Amini
appealed to the Federal Circuit.
The Federal Circuit reversed because the district “court’s conclusion appears to be based primarily on its own visual inspection” and “on summary judgment the Ninth Circuit disfavors application of the subjective-intrinsic part” of the infringement test.
Copyright litigants should focus on the issue of “total concept and feel” of a contested design to get past the summary judgment stage and have this subjective determination made during trial.
Lawman Armor Corporation v. Winner
International, LLC and Winner Holding LLC
Decided February 22, 2006
Judge Friedman with Judges Michel and Dyk
* The point of novelty test, which focuses design patent infringement
determination on differences of a patented design from prior art, does not
acknowledge a combination of the differences itself as novel.
Lawman sued Winner at the U.S. District Court for the Eastern District of Pennsylvania for alleged infringement of Lawman’s design patent claims to a steering lock. Judge Robert Kelly evaluated infringement under the two part test of: 1) ordinary observer test of whether the patented design as a whole is substantially the same as the accused design; and 2) point of novelty test to determine if the accused device appropriates the patented novelty, which distinguishes the design over the prior art. The court found that all points of novelty were found in the prior art, over protestations from Lawman that the combination of points itself is novel, and granted Winner summary judgment of non-infringement. Lawman appealed.
The Federal Circuit affirmed, noting that “[t]he purpose of the ‘points of novelty’ approach …is to focus on those aspects of a design which render the design different from prior art designs” and Lawman’s argument would stand this test “on its head.”
The design patentee-plaintiff in this case mixed utility patent law (103 obviousness) with design patent principles when wielding his design patent. Utility patents generally are more useful than design patents, which can be designed around more easily.