Maryland Intellectual Property Lawyer & Attorney : Brian Wm. Higgins : Serving Baltimore, Columbia, Frederick

     "eBay tumbled Tiffany's carefully stacked legal arguments," writes law professor and Counterfeit Chic blogger Susan Scafidi.  On Monday, the U.S. District Court for the Southern District of New York held that eBay is not liable to Tiffany & Co. for the sale of counterfeit goods through its auction website. The court ruled that Tiffany, and similar companies, are ultimately responsible for policing their trademarks online, rather than auction-based companies like eBay. "The court's ruling is in line with well established legal precedent which holds that the obligation to enforce trademarks rests with the trademark holder," wrote eBay in a published statement on its website Monday. 

     You win one, you lose one. In stark contrast to the findings of the New York court, just a few weeks ago the Tribunal de Commerce court in Paris ordered Ebay to pay over $60 million dollars to Louis Vuitton and Christian Dior for allowing the sale of counterfeit merchandise through the company's auction website. The Paris court described eBay's anti-counterfeit measures as "empty."  The court concluded that eBay had committed "serious errors" in permitting the sale of counterfeit goods, which, the court found, violated Louis Vuitton and Christian Dior's copyrights and trademarks. eBay is apparently appealing the ruling. In a published statement on its website, eBay characterized Louis Vuitton's and Christian Dior's lawsuit as an "overreaching...attempt to impose, in France, a business model that restricts consumer choice through an anti-competitive business practice."

 

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     In Grand Canyon West Ranch v. Hualapai Tribe, TTAB No. 91162008 (June 30, 2008), the Trademark Trial and Appeal Board found that an applicant, not registrant, committed fraud on the Trademark Office when it represented to the Office that it provided services in association with its mark GRAND CANYON WEST that, in fact, it did not offer. 

     Applicant Hualapai Tribe ("People of the Tall Pine"), whose tribal lands border the Colorado River and Grand Canyon in the western portion of the Canyon, filed an application for the mark GRAND CANYON WEST for a variety of services under Section 1(a), App. Ser. No. 76484111. The examiner prosecuting the application issued an office action requesting further clarification as to the services associated with the mark. The applicant responded in kind, stating that it provided, among other services, horseback rides, bicycle tours, and tractor-based tram rides. During the publication phase, the mark was opposed by Grand Canyon West Ranch, which argued that the mark was merely descriptive, and that the applicant had committed fraud on the PTO by including services in the application that they were not, in fact, offering under the mark.

     The Board found that the mark was not merely descriptive. However, it agreed with Ranch's fraud argument. Specifically, the Board found that there was no evidence that applicant provided horseback rides, bicycle tours, or tractor-based tram rides, as identified in the application. The applicant argued that the error was inadvertent, that it was due to innocent and reasonable reliance on the examiner's instructions to applicant suggesting appropriate services. The Board said that it could not excuse the error. The applicant, it wrote, had an affirmative duty to correct the identification set forth in the examiner's amendment if it contained errors. 

      Acknowledgment: information for this post provided by Alain Lapter, Esq.

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     U.S. Patent & Trademark Office (PTO) records show that for the period January through June 2008, the PTO received 28 trademark applications from Maryland resident or entities (based on a search of "owner address" records using TESS). That number is a 55% decline in the number of applications received for the same period in 2007 (62), but only a 3% decline over 2006 numbers (29).

     The number of registrations to Maryland individuals or entities in the first half of 2008 was down compared to last year. According to the PTO, 23 registrations were effective during the period January through June 2008, which is a 4% decline in the number of registrations for the same period in 2007 (24 registrations), but is the same number of registrations in 2006 (23).

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• Nacre AS v. Silynx Communications, Inc., No. 07-cv-02676, filed Oct. 2, 2007; assigned to J. Williams.

     Plaintiff Nacre AS is a Norwegian company that alleges ownership of U.S. registered trademark QUIETPRO, as well as U.S. Patent No. 7,039,195 (“Ear Terminal”) and U.S. Patent No. 6,567,524 (“Noise Protection Verification Device”). In September 2007, Nacre filed a trademark opposition proceeding against Rockville, MD-based Silynx Communications' QUIETOPS mark before the U.S. Trademark Trial and Appeal Board. That proceeding was stayed when, in October 2007, Nacre filed the above lawsuit against Silynx and its CEO, Gil Limonchik, alleging trademark and patent infringement. On June 12, 2008, the infringement allegations against Limonchik were dismissed without prejudice. Memorandum and Opinion (June 12, 2008). Limonchik, who according to court papers was a former Nacre consultant, had filed a motion to dismiss with prejudice under Rule 12(b)(6) (failure to state a claim).

     In granting the motion as to Count I (trademark infringement), Judge Williams stated that in order for a trademark claim against a corporate officer to survive a Rule 12(b)(6) motion, a plaintiff must allege, in addition to a corporation's infringing activity, that the individual corporate officer played an active role in the infringing activity. In this case, Judge Williams found Nacre's complaint failed to state factual allegations to indicate what actions Limonchik had taken in an individual capacity to infringe upon the QUIETPRO (R) mark. The only relevant allegations in Nacre's complaint, Judge Williams said, were "Defendant have and are infringing the rights of Nacre in QUIETPRO (R) under 15 U.S.C. 1125 and the common law" and "Defendants' infringement of Nacre's rights in QUIETPRO (R) is and has been willful."  Neither of those statements mentioned what specific role Limonchik played in the infringement, Williams found.      

     In granting the motion as to Counts II and III (patent infringement), Judge Williams found Nacre's complaint failed to allege facts sufficient to preclude dismissal of these counts. No part of the complaint, he wrote, offered facts to justify piercing the corporate veil, to demonstrate Limonchik's specific intent or action to induce infringement or facts to support contributory infringement liability.

     Nacre's case is not completely lost, however. Judge Williams' dismissal was made, as noted above, without prejudice as to Nacre's right to amend its complaint to add more factual allegations:

"Plaintiff has walked a fine line in drafting the complaint. It is possible to conjecture facts which would support Defendant Limonchik's liability in this case. However, the law requires a plaintiff to allege enough facts to put the defendant on notice of the claims and the grounds for those claims. Here, Plaintiff has not stated clear grounds for the claims alleged in the complaint."

     Judge Williams noted that "[Limonchik] has not offered any evidence that he would be prejudiced by an amendment [of the complaint], that an amendment would be futile, or that Plaintiff engaged in undue delay. * * * Defendant asks for dismissal with prejudice solely on the grounds that Plaintiff has failed to allege sufficient facts."

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     Below are summaries of recent IP-related lawsuits filed in the the U.S. District Court for the District of Maryland in 2008 (source: Justia).

• Magnus v. Association of Pet Dog Trainers, No. 8:2008cv00850; filed April 4, 2008; assigned to J. Williams

   Plaintiff Vicki Lynn Magnus, a Waldorf, MD, resident, filed this declaratory judgment action against the Association of Pet Dog Trainers (APDT), a New Jersey company based in Greenville, SC. APDT allegedly owns the registered mark for its acronym name. According to her complaint, Magnus, a former member of APDT, created an Internet message board on December 1, 2003, "for discussion of issues of common interest" among other APDT members. Claiming the board was protected under the doctrine of fair use (copyright), the Lanham Act (trademark), and free speech under the First Amendment, Magnus received a cease and desist letter from APDT in 2006. When she objected, her membership was allegedly terminated "without cause." About the same time, APDT sent a "take down" letter to the Internet Service Provider and host of the message board, which complied with the request. Magnus is seeking relief in the form of a declaration that her use of the APDT acronym is lawful, noninfringing, and qualifies as a fair use.

• Nutramax Laboratories, Inc. v. Theodosakis, No. 1:2008cv00879, filed April 7, 2008; assigned to J. Blake

     Nutramax is a Maryland company based in Edgewood, MD. Defendants are Jason Theodosakis, M.D., and Supplement Testing Institute, Inc. (STI), which allegedly sell nutritional supplements, including those allegedly covered by U.S. Patent No. 6,797,289, for “Use of anabolic agents, anti-catabolic agents, antioxidant agents, and analgesics for protection, treatment and repair of connective tissues in humans and animals.” Claim 1 of the ‘289 patent covers a “synergistic combination of an aminosugar and avocado/soybean unsponifiables [ASU].” Nutramax sells Cosamin® ASU and Avoca ASU® under the '289 patent. This is the second lawsuit filed this year by Nutramax in which it asserts the '289 patent (see here).

• National Fallen Firefighters Foundation v. TWL Corp., No. 1:2008cv00896, April 9, 2008; assigned to J. Davis

      This trademark infringement lawsuit involves the mark EVERYONE GOES HOME owned by NFFF, and defendants use of EVERYBODY GOES HOME in connection with a training simulation program.

• Bill Me Later, Inc. v. MODASolutions Corp., No. 1:2008cv00897, filed April 9, 2008; assigned to J. Blake

     This trademark infringement, trademark dilution, and unfair competition lawsuit involves the mark BILL ME LATER, allegedly owned by plaintiff, who is seeking monetary damages, and attorney's fee, among other relief, from Canada-based MODASolutions.

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     Below are summaries of recent IP-related lawsuits filed in the the U.S. District Court for the District of Maryland in 2008 (source: Justia).

• Emerson Electric Co. v. John Does 1-10, No. 1:2008cv00734; filed March 20, 2008; assigned to J. Blake

     Plaintiff Emerson Electric, a Missouri company, states "This is a Complaint for an injunction, damages, and other appropriate relief to prevent unknown Defendants from engaging in a widespread fraudulent internet scheme that involves the infringement and misappropriation of Plaintiff’s trademarks. In this scheme, Defendants have impersonated Emerson and its chairman David N. Farr in emails and on internet job boards to trick unsuspecting internet users into believing they have obtained jobs with Emerson. In their supposed capacity as Emerson employees, these victims have – on instruction from Defendants – unwittingly cashed fraudulent United States Postal Service money orders or certified checks on behalf of Defendants. Defendants’ scam has caused Emerson irreparable harm, damaged its reputation, damaged its [EMERSON] mark, caused confusion in the marketplace as to the origin of the job offers and Emerson’s role in the scam, and caused Emerson to incur significant expenses and utilize significant resources in an effort to halt the scammers and stop the fraud."

     Plaintiff alleges trademark infringement under the Lanham Act (15 U.S.C. § 1114), false designation of origin under the Lanham Act (15 U.S.C. § 1125(a)), unfair competition/false advertising under the Lanham Act (15 U.S.C. § 1125(a)), Maryland common law unfair competition against all defendants.

• VTran Media Technologies, LLC v. Antietam Cable Television, Inc., No. 1:2008cv00739; filed March 21, 2008; assigned to J. Garbis

 

• Almo Music Corporation et al v. Three Pols, LLC, No. 1:2008cv00747; filed March 25, 2008; assigned to J. Motz 

     This copyright infringement case was filed by plaintiffs Almo Music Corporation, Mighty Underdog Music, Sony/ATV Tunes LLC, Odnil Music Limited, Fifty-Six Hope Road Music Limited, Get Jet Music, Inc., Cherry Lane Music Publishing Co., Inc. and Dimensional Music of 1091 against defendants Three Pols, LLC, Joshua E. Gursky and Grant R. Gursky.  

• Broadcast Music, Inc. et al v. Carullo Steele, Inc., No. 1:2008cv00824; filed April 2, 2008; assigned to J. Bennett

     This copyright infringement case was brought by plaintiff Broadcast Music, Inc. (BMI), the licensee of copyrighted works owned by co-plaintiffs EMI Blackwood Music, Inc., House of Cash, Inc., Songs of Universal, Inc., EMI Virgin Songs, Inc., Elijah Blue Music, Unichappell Music, Inc., ABKCO Music, Inc., EMI Algree Music Corp., Wayne Hodge, Sony/ATV Songs, LLC, Leon E. Brooks, III and Ronnie Gene Dunn.

     Plaintiffs allege that defendants Carullo Steele, Inc., owner/operator of Freddies Bel Air (Bel Air, MD), and Stephen J. Carullo, Jr., an alleged officer of Carullo Steele, Inc., publicly performed copyrighted works owned/licensed by plaintiffs.

     Max Stadfeld of Offit Kurman, P.A. (Owings Mills, MD) filed the complaint on behalf of the plaintiffs.

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    The table below identifies the top 10 states having the most copyright, trademark, and patent lawsuits filed in their respective U.S. district courts during the first quarter of 2008 (source Justia.com). The numbers show that California had the most filings, followed by, in order, Texas, New York, Illinois, Florida, Pennsylvania, North Carolina, New Jersey, Ohio, and Michigan.  The table shows Maryland's ranking: 24th overall, but 15th for trademark and copyright filings. 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

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     U.S. Patent & Trademark Office (PTO) records show that for the period January through March 2008, the PTO received 15 trademark applications from Maryland resident or entities (based on a search of "owner address" records using TESS). That number is a 38% decline in the number of applications received for the same period in 2007 (24), and a 6% decline over 2006 numbers (16).

     The number of registrations to Maryland individuals or entities in the first quarter of 2008 was down compared to last year. According to the PTO, 8 registrations were effective during the period January through March 2008, which is a 43% decline in the number of registrations for the same period in 2007 (14 registrations), and an 11% decline over 2006 numbers (9).

 

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• #18: Sunoco, Inc. (R&M) v. IDK, Inc., No. 8:2008cv00605; filed March 6, 2008; assigned to J. Titus 

     Pennsylvania-based Sunoco, Inc., markets and distributes petroleum products, including motor fuels, to distributors and service stations in Maryland. According to its complaint, Defendants IDK, Inc., and IDK Properties are Maryland entities, and Defendant Kogod is a Maryland resident. Reportedly, Sunoco's predecessor in interest and one or more of the Defendants entered into a reseller agreement that permitted IDK to use certain of Plaintiffs' trade names, trademarks, and trade dress in connection with the sale of motor fuel at Defendants' premises. Plaintiff is alleging, among other things, infringement of the SUNOCO and SUN trademark, and deceptive trade practice in violation of Md. Code Ann., Com. Law §13-301(2)(i):

"Unfair or deceptive trade practices include any: (2) Representation that:
(i) Consumer goods, consumer realty, or consumer services have a sponsorship, approval, accessory, characteristic, ingredient, use, benefit, or quantity which they do not have."  

     Charles Carpenter of Pepper Hamilton LLP (Washington, DC) filed the complaint on behalf of Sunoco.

 

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• Nacre AS v. Silynx Communications, Inc., No. 07-cv-02676, filed Oct. 2, 2007.

     Update:  Rockville, MD-based Silynx Communications and Norway's Nacre AS have been facing off on all fronts in their battle to gain control of the U.S. military tactical hearing protection and communications headset market, including the intellectual property front. In September 2007, Nacre, which owns the QUIETPRO trademark, filed a trademark opposition proceeding against Silynx's QUIETOPS mark before the U.S. Trademark Trial and Appeal Board. That proceeding was stayed when, in October 2007, Nacre filed a trademark and patent infringement lawsuit against Silynx in the U.S. District Court for the District of Maryland, which is pending (additional counsel for Nacre just recently motioned for pro hac admission to the Maryland court). In January 2008, Silynx lost its protest of an award from the Dept. of the Navy to Nacre to acquire a quantity of combat radio headsets from the company.

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     In 2007, the World Intellectual Property Organization (WIPO) saw almost 40,000 trademark applications, a 9.5% increase from 2006. This included an 18.8% increase in filings from U.S. applicants. Nevertheless, according to United Nations trademark agency statistics, the U.S. ranks third behind Germany and France in the filing of international trademark applications. Alain Lapter, a trademark attorney at Blank Rome, surmises that one reason the U.S. lags behind is that it remains the largest consumer economy in the world, and U.S. trademark holders may be content with spending their resources building their brands at home rather than seeking protection overseas. In contrast, although Germany is a considerable economy, German business owners may have a greater desire to seek protection in other countries within the European Union where geographic proximity and the free movement of goods and services under the First Pillar of the European Community may be incentives to filing international applications.

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     Below are summaries of recent IP-related lawsuits filed in the the U.S. District Court for the District of Maryland in 2008 (source: Justia). The first summary involves a discovery matter relating to a patent lawsuit filed in the E.D. Texas.

• #8:  Candela Corporation v. Palomar Medical Technologies, Inc., No. 8:2008cv00268, filed January 31, 2008; assigned to J. Williams

     This lawsuit was filed in and is pending in the U.S. District Court for the Eastern District of Texas (No. 9-06-cv-277RHC). It involves patents covering treatment of wrinkles in the skin using radiation-emitting devices (U.S. 5,810,801; 6,120,497; and 6,659,999). 

     The case is before the U.S. District Court for the District of Maryland to enforce a subpoena duces tecum issued from the Maryland court to Dr. Hema Sundaram, ordering her to permit production, inspection, and copying of specified documents sought by patentee Candela. Candela's theory of infringement is that Palomar has induced physicians and others to use the accused devices, and it now seeks information from 16 physicians about how they operated the accused devices, and whether communications from Palomar to those physicians indicated how the accused devices should be operated for wrinkle treatment. That type of evidence is classic inducement evidence that patentees typically seek. 

     Candela's motion recognizes a number of privacy issues involved in seeking production of medical-related documents from physicians in patent infringement cases. Objecting to the subpoena, Dr. Sundaram's counsel stated that the protective order in place was insufficient to protect medical records or patient information in view of the Health Insurance Portability and Accountability Act (HIPAA). Patent counsel need to be aware of HIPAA's requirements because redactions alone may not be in compliance unless they remove all "individually identifiable health information."

• #9:  Green v. Conagra Foods, Inc., No. 1:2008cv00296, filed February 4, 2008, assigned to J. Quarles

     Green, a Michigan resident, alleges ownership of U.S. Patent No. 5,315,083, which is directed to a microwave cooking utensil as shown in the patent (see below). Green sued ConAgra, which is reportedly a Nebraska company, in Maryland because ConAgra sold infringing utensils in Maryland, according to the complaint.

• #10:  The Lindy Bowman Company v. Jeanmarie Creations, LLC, No. 1:2008cv00313, filed February 5, 2008, assigned to J. Quarles

      This trademark infringement, false designation of origin, unfair competition, and passing off case involves Elkridge, MD-based The Lindy Bowman Company, and defendants Jeanmarie Creations and Walgreens. Plaintiff alleges ownership and use of GIFT WRAP IN A SNAP mark for pre-packaged gift wrap kits. Plaintiff is seeking an injunction, an accounting, and unspecified monetary relief.

• #11:  EO Mfg., Inc. v. Ridge Tool Co., No. 1:2008cv00311, filed February 5, 2008; assigned to J. Bennett

     This patent infringement case involves EO Mfg., an Illinois company and the assignee of U.S. Patent No. 7,096,764, which is directed to a pipe wrench. Defendant Ridge Tool is an Ohio company. Jurisdiction is predicated on allegations of defendant's sale of allegedly infringing products in Maryland.

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     U.S. Patent & Trademark Office (PTO) searchable records show that for the period January through December 2007, the PTO registered 83 federal trademarks to Marylanders (based on a search of "owner address" records using TESS). The PTO registered 57 trademarks to Marylanders for the same period in 2006 (a 46% difference), and 38 trademarks in 2005 (a 118% difference).

     Some of the more notable or interesting marks registered in 2007 include Registration 3291904 for ORIOLES (filed Oct. 20, 2005), Registration 3214009 for DLA PIPER, Registration 3217622 for RAVENS, Registration 3359033 for SOME THINGS.....ARE JUST TOO GOOD TO WAIT FOR (owner: Maryland 3D Ultrasound; what else!), Registration 3338092 for FESTIVUS MAXIMUS, and Registration 3300301 for CHESAPEAKE BAY WEEK (owner: Maryland Public Broadcasting Commission).

     In terms of applications, Marylanders submitted 85 trademark applications to the PTO in 2007, which is the same number submitted in 2006, but ten more than the 75 applications submitted in 2005.

 

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     The sixth IP-related lawsuit filed in the U.S. District Court for the District of Maryland in 2008 involves a trademark dispute (source: Justia). 

• #6: Flagstar Bank, FSB v. Fundstar Financial, LLC, No. 8:2008cv00206, filed January 24, 2008; assigned to J. Messitte

     Michigan-based Flagstar Bank allegedly owns federal trademarks FLAGSTAR and FLAGSTAR BANK (word and design), which it uses in connection with lending and banking services. Defendant Fundstar Financial, based in Germantown, MD, allegedly began using the marks FUNDSTAR and FUNDSTAR FINANCIAL (word and design), in connection with mortgage banking services in Maryland. Plaintiff Flagstar is suing for trademark infringement; false designation of origin or sponsorship, false advertising, and trade dress; and common law trademark infringement.

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Summary: The U.S. District Court for Distict of Maryland denied motion to stay on abstention grounds in favor of a pending state court action in the Circuit Court for Montgomery County, MD, pursuant to Colorado River Water Conservation Dist. v. United States, 424 U.S. 800 (1976). In doing so, the Court found that Defendants had not overcome the “heavily weighted” balance in favor of retaining jurisdiction, and therefore Defendants had failed to establish the “extraordinary circumstances” necessary to justify Colorado River abstention. Memorandum Opinion published January 15, 2008.

Parallel proceedings

      This trademark dispute, captioned Extra Space Storage, LLC v. Maisel-Hollins Development Co. et al, No. 1:2007cv02351, involves two concurrent lawsuits arising out of the parties’ desire to use their respective service marks in Maryland.

     Extra Space registered its service mark, EXTRA SPACE STORAGE, with the United States Patent and Trademark Office in 1998 or 1999. Defendants’ predecessor in title registered its service mark, “EXTRA SPACE SELF STORAGE,” with the Maryland Office of the Secretary of State in 2003.

     On June 26, 2007, Maisel-Hollins filed its state court lawsuit against Extra Space Storage, a Delaware entity based in Salt Lake City, Utah. The lawsuit alleged violation of Maisel-Hollins’s common law and state registration rights.

     Extra Space filed its answer on September 5, 2007, but without counterclaims. Instead, also on September 5, 2007, Extra Space filed the above-captioned federal lawsuit, alleging infringement of its EXTRA SPACE STORAGE mark. Extra Space named the lone plaintiff in the state case, Maisel-Hollins, and five of its affiliates as Defendants.

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     Below are summaries of the first four IP-related lawsuits filed in the the U.S. District Court for the District of Maryland in 2008 (source: Justia). These lawsuits involve allegations of patent, copyright, and trademark infringement, misappropriation of trade secrets, defamation, and a host of other state law claims. We begin with an interesting case involving Maryland's business trade/company name statute.

• #1:  Nationwide Handyman, LLC v. Nationwide Handyman & Remodeling, Inc., No. 1:2008cv00019, filed Jan. 3, 2008

    This lawsuit pits two Maryland entities and their owners against each other. Plaintiff Nationwide Handyman, LLC alleges ownership of the federally-registered NATIONWIDE HANDYMAN trademark, the same being registered with the State of Maryland as a corporate name. Plaintiff contends that Defendant Nationwide Handyman & Remodeling, Inc., led by principal Joe Butts, violated Maryland Code Annotated § 1-504, which states the following (source: Michie's Legal Resources):

"An entity name must be distinguishable upon the records of the Department [of Assessments and Taxation] from:

(1) The entity name of an entity organized or authorized to transact business in the State;

(2) An entity name reserved or registered under this subtitle; and

(3) The disclosed assumed name adopted by a foreign entity authorized to transact business in this State."

     Plaintiff further alleges that Defendant violated Maryland Code Annotated § 13-301, which defines unfair or deceptive trade practices in Maryland as "false, falsely disparaging, or misleading oral or written statement, visual description, or other representation of any kind which has the capacity, tendency, or effect of deceiving or misleading consumers." Other allegations include violations of the Lanham Act. Plaintiff is seeking an injunction and monetary damages.

     This case highlights one advantage of registering a company name in Maryland: § 1-504 is available as a cause of action to those who register their business name. Thus, companies should register their business name in addition to registering their trademarks with the U.S. Patent & Trademark Office and the Maryland Secretary of State.

     Shawn Whittaker of The Law Offices of Shawn C. Whittaker PC filed the Complaint on behalf of the Plaintiff.

     Three more cases after the jump...

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     Thirty-four plaintiffs filed 39 trademark infringement lawsuits in the District Court for the District of Maryland in 2007 (see a list of the lawsuits and the parties involved after the jump). The 39 lawsuits involved 63 defendants (individuals and entities).  By comparison, in 2006, 37 patent infringement lawsuits were filed in Maryland. 

     Topping the list of companies filing the most trademark infringement lawsuits in Maryland in 2007 were Nutramax Laboratories, Inc., the Edgewood, MD, company that specializes in nutritional supplements (4 lawsuits), and Young Again Products, Inc.,the Maryland company that describes itself as being "in the business of production and sale of health and nutritional supplements" (3 lawsuits). Nutramax also topped the list of companies filing the most patent infringement lawsuits in Maryland in 2007 (see related post here).

     The 39 lawsuits filed last year were assigned to 11 Maryland District Court Judges: Bennett (3), Blake (2), Chasanow (1), Davis (4), Garbis (3), Legg (4), Motz (5), Nickerson (1), Quarles (5), Titus (1), and Williams (4).

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     Below is a summary of the two IP-related cases filed in the the U.S. District Court for the District of Maryland last week (source: Justia). Both lawsuits involve allegations of trademark infringement.

• Sage Dining Services, Inc. v. Morrison Management Specialists, Inc., No. 1:2007cv03247, filed Dec. 4, 2007 

     SAGE Dining, a Delaware entity based in Towson, MD, is "one of the premier providers of dining services and gourmet catering to private schools, colleges, and corporations in the United States" (SAGE reportedly stands for "setting a good example"). Morrison Mgmt. Specialists, an Atlanta, GA, entity, is "the nation's only specialist dedicated exclusively to healthcare and senior dining food services."

     SAGE owns the federally-registered THE SPICE OF LIFE, SAGE, and SAGE DINING SERVICES service marks. It contends that Morrison has used the mark THE SPICE OF LIFE in commerce in an infringing manner that creates a likelihood of confusion, its actions amount to unfair competiton, and it is liable for infringement under Maryland common law.

     Steven Hollman and Robert Wolinsky of Hogan & Hartson (Washington, D.C.) filed the complaing on behalf of SAGE. 

• American Mensa, Ltd. v. Inpharmatica, LTD and Biofocus DPI, LTD, No., No. 1:2007cv03283, filed Dec. 6, 2007

     Plaintiff American Mensa is a New York limited liability company based in Arlington, TX (aside: does TX recognize the "Ltd." designation as short-hand for LLC?). Mensa claims to own several federally-registered trademarks for MENSA that are used in connection with various goods and services. Mensa, of course, is a membership organization open to "persons who have attained a score within the top two percent of the general population on approved intelligence tests."

     Defendant Inpharmatica, Ltd. is a UK entity with a London address. According to a search, the company is related to defendant BioFocus DPI (they share the same URL, for example). BioFocus, which is also a UK entity, provides drug discovery services.

     Mensa and Inpharmatica are battling before the PTO Trademark Trial and Appeal Board in an opposition proceeding involving Inpharmatica's ADMENSA trademark application, which Inpharmatica filed in 2004.

     Mensa alleges in its complaint that it has used its mark in connection with the dissemination of biological information and research. It contends that Inpharmatica has traded on the goodwill established by Mensa in the MENSA mark. It states that Inpharmatica has allegedly continued to use the ADMENSA mark in commerce despite the opposition proceedings, which caused Mensa to file the present lawsuit.  In its complaint, Mensa is alleging trademark infringement, unfair competition based on false association/sponsorship, dilution of the MENSA mark, and common law trademark infringement.

      In case you're wondering, Mensa is asserting personal jurisdiction in Maryland based on statements Inpharmatica made during the opposition regarding the geographical use of its mark in the U.S. (it apparently included Maryland in its contentions of geographical use). Personal jurisdiction over BioFocus is based on alleged contacts by BioFocus with Cystic Fibrosis Foundation Therapeutics, Inc., which is a Bethesda, MD, entity (its URL has an .edu domain). BioFocus allegedly has sold ADMENSA software in Maryland.

     Michelle Marcus of Venable LLP (Washington, D.C.) filed the complaint on behalf of Mensa.

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     Of the many IP cases summarized on the Maryland IP Law blog recently, two have garnered the most attention from site visitors: Technology Patents LLC v. Deutsche Telekom, which I summarized in November, and Nacre v. Silynx Communications, which I discussed in October. I can understand why the Technology Patents case has received attention: the patent infringement allegations involve popular text messaging technology, and the number of defendants that have been sued (131) makes the lawsuit one of the largest ever filed in the District Court for the District of Maryland.

     It is not as apparent, however, why the Nacre v. Silynx case has received the attention that it has. Perhaps it is the subject matter of the lawsuit, which, according to Nacre's complaint involves “two-way radios and wireless communicators for use in combat, in battlefield conditions, in military, military special forces, and law enforcement activities.” This would seem to be a huge market today.

     Or perhaps it is the competitiveness between the parties, both of which claim on their respective websites to be the "world's leader" in communications equipment that incorporates sophisticated noise canceling/noise protection technology. Nacre sells to the U.S. and foreign governments. Rockville, MD-based Silynx Communications states on its website that its headsets are used by the U.S. Special Operations Command (USSOCOM), U.S. Army, USMC and the world’s elite Special Forces.

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Summary:  Number of applications down, but registrations up 41% over 2006 numbers

The first eleven months of 2007 saw an increase in the number of federal trademarks registered to Maryland entities and/or individuals, compared to the same period in 2006. U.S. Patent & Trademark Office (PTO) searchable records show that for the period January through November 2007, the PTO registered 69 federal trademarks to Marylanders (based on a search of "owner address" records using TESS). The PTO registered 49 federal trademarks to Marylanders for the same period in 2006 (a 41% difference).

In November, the PTO registered 15 trademarks for Maryland entities/individuals, including "Everything Matters" to DLA Piper US LLP (a Maryland limited liability partnership), which the firm displays on its website (top right):

 

In terms of filed applications, the PTO received 79 applications for trademarks from Maryland entities and individuals for the first eleven months of 2007, compared to 83 applications received during the same period in 2006 (a 5% decrease).

 

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     Below is a summary of the four IP-related cases filed in the the U.S. District Court for the District of Maryland last week (source: Justia). They involve a patent infringement case involving prostate cancer, a trademark infringement case involving rock climbing walls, a copyright infringement case involving Bob Marley's music, and a franchisor-franchisee trademark dispute.

• Lonza Group AG v. Northwest Biotherapeutics, Inc., No. 8:2007cv03177, filed Nov. 27, 2007

     Switzerland-based Lonza Group AG is reportedly the exclusive sub-licensee of U.S. Patent No. 5,122,464 ("Method for dominant selection in eucaryotic cells"), U.S. Patent No. 5,770,359 ("Recombinant DNA sequences, vectors containing them and method for the use thereof"), and U.S. Patent No. 5,827,739 ("Recombinant DNA sequences, vectors containing them and method for the use thereof"). It is reportedly the owner of U.S. Patent No. 5,591,639 ("Recombinant DNA expression vectors"), U.S. Patent No. 5,658,759 ("Recombinant DNA expression vectors"), U.S. Patent No. 5,879,936 ("Recombinant DNA methods, vectors and host cells"), U.S. Patent No. 5,891,693 ("Recombinant DNA methods vectors and host cells"), and U.S. Patent No. 5,981,216 ("Transformed myeloma cell-line and a process for the expression of a gene coding for a eukaryotic polypeptide employing same").

     Defendant Northwest Biotherapeutics is headquartered in Bethesda, MD. According to Lonza's complaint, Northwest has been conducting Phase II/III clinical trials involving its DCVax prostate product, which Lonza believes uses Lonza's patented GS expression technology. It is asserting patent infringement, conversion, and unjust enrichment.

     See previous post here concerning an injunction against Lonza recently issued by the District Court for the District of Maryland. 

     Nixon Peabody's (Washington, D.C.) Robert Fletcher and colleagues filed the complaint on behalf of Lonza.

• Pyramide USA, Inc. v. Meissner et al., No. 1:2007cv03198 , filed Nov. 26, 2007

     This case was brought by Frederick, MD-based Pyramide USA, Inc., which sells modular fiberglass climbing wall systems. In its complaint, Pyramide contends that it is the owner of the federally registered AQUACLIMB trademark, which it uses in connection with climbing walls installed poolside. Richard K. Meissner and HI5 Climb, LLC allegedly sell poolside climbing walls under the name AQUACLEAR. Mr. Meissner is apparently the owner of U.S. Patent No. 6,872,167, which is directed to "Artificial rock climbing arrangement adapted for water environment."

     Pyramide is alleging trademark and trade dress infringement, tortious interference with contractual and business relationships and prospective business relationships, unfair competition, and market endangerment. It is seeking a declaratory judgment of noninfringement and invalidity of the '168 patent. 

     Pyramide's "market endangerment" claim is particularly interesting. Pyramide contends that defendants' installation of poolside climbing walls creates a risk of injury (because defendants' products are allegedly "unsafe, untested, and unapproved") where none previously existed in the market, and thus creates the potential for foreclosure of the market to pool side climbing walls. This, in turn, according to Pyramide, endangers its reputation (by confusion of its products with defendants' products), and has allegedly exposed Pyramide to potential liability risks.

     Joseph Zito of ZITO TLP (Washington, D.C.) filed the complaint on behalf of Pyramide.

• Odnil Music Limited et al v. 132 Dock Street Corporation et al, No. 1:2007cv03203, filed Nov. 27, 2007

     This copyright infringement case was brought by Odnil Music and Fifty-Six Hope Road Music, alleged owners of rights in certain Bob Marley and Vincent Ford music compositions (e.g., "Is This Love," "No Woman, No Cry"), against 132 Dock Street, which owns Annapolis' Armadillo's, for alleged unauthorized public performances of the compositions. Plaintiffs are seeking statutory damages, costs, and legal fees.

• Maid to Perfection Corp, v. Vernet et al, No. 1:2007cv03175, filed Nov. 27, 2007

     Plaintiff MTP is a Maryland corporation based in Hagerstown, which allegedly owns the MAID TO PERFECTION service mark. Defendant Vernet is allegedly a Maryland resident. Defendant Maid to Perfection of Washington, DC, is allegedly a DC corporation controller by Vernet. In its complaint, MTP contends that defendants entered into and then breached a franchise agreement, have infringed and diluted the aforementioned service mark, have unfairly competed against MTP, and have falsely advertised their association with MTP. Nixon Peabody's John Bramlette and Andrew Zappia filed the complaint on behalf of MTP.

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     Last week, there was one IP-related case filed in the the U.S. District Court for the District of Maryland (source: Justia), this one captioned Union of Orthodox Jewish Congregations of America v. The Wilder Spice Company, No. 1:2007cv03122 (D. Md. 2007) (filed Nov. 21, 2007).

     Plaintiff Union of Orthodox Jewish Congregations of America is a New York not-for-profit corporation with its principal place of business in New York City. The Orthodox Union provides kosher product certifications for products prepared according to special Jewish dietary laws. On its website, Orthodox Union states that the word kosher means "proper or acceptable," and the term originates from "kosher laws [that] have their origin in the Bible, and are detailed in the Talmud and the other codes of Jewish traditions. They have been applied through the centuries to ever-changing situations, and these rulings, both ancient and modern, govern OU Kosher certification." The Orthodox Union is the alleged owner of the OU mark, which has reportedly been used in commerce since 1925 on food-related products as an indicator that such products have been certified as kosher.

     Defendant Wilder Spice Company is a Baltimore, Maryland-based company that, according to court papers, sells spice products in the U.S. under branded and private labels through retail, foodservice, and industrial channels. Orthodox Union alleges that Wilder forged a Letter of Certification that falsely represented that the Orthodox Union had certified Wilder products as kosher, and that several of Wilder's products have been sold bearing the OU mark. It is claiming federal and state trademark infringement under the Lanham Act (15 U.S.C. § 1114(1)), false designation of origin (15 U.S.C. § 1125(a)), dilution of its allegedly famous mark (11 U.S.C. § 1125(c)), and common law unfair competition and trademark infringement. Orthodox Union is seeking a preliminary and permanent injunction, an accounting, and monetary damages.

     David Butler and Jason Scherr of Bingham McCutchen LLP (Washington, DC) filed the complaint on behalf of Orthodox Union.

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     In Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, __ F.3d ___ (4th Cir. Nov. 13, 2007), the Court of Appeals for the Fourth Circuit affirmed a district court judgment that Nevada-based Haute Diggity Dog, LLC did not infringe Paris-based Louis Vuitton Malletier S.A.'s famous LOUIS VUITTON trademark by selling small imitations of handbags labeled "Chewy Vuiton" and that mimic LVM's LOUIS VUITTON handbags. In doing so, the Court found that, while the "Chewy Vuiton" dog toys undisputedly evoke LVM handbags of similar shape, design, and color, and use "CV" in lieu of the LV mark, and use other symbols and colors imitating LVM's Multicolor and Cherry designs, the "Chewy Vuiton" dog toys are successful parodies of LVM handbags and the LVM marks and trade dress used in connection with the marketing and sale of those handbags.

     LVM commenced an action against Haute Diggity Dog in 2002, alleging trademark infringement under 15 U.S.C. § 1114(1)(a), trademark dilution under 15 U.S.C. § 1125(c), copyright infringement under 17 U.S.C. § 501, and related statutory and common law violations. To prove trademark infringement, LVM had to establish (1) that it owns a valid and protectable mark; (2) that Haute Diggity Dog used a "reproduction, counterfeit, copy, or colorable imitation" of that mark in commerce and without LVM’s consent; and (3) that Haute Diggity Dog’s use was likely to cause confusion. To determine whether the "Chewy Vuiton" product line created a likelihood of confusion, the Fourth Circuit considered the nonexclusive Pizzeria Uno factors (1) the strength or distinctiveness of the plaintiff’s mark; (2) the similarity of the two marks; (3) the similarity of the goods or services the marks identify; (4) the similarity of the facilities the two parties use in their businesses; (5) the similarity of the advertising used by the two parties; (6) the defendant’s intent; and (7) actual confusion.

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Question: What do Montana's slogan “'The Last Best Place” and federal appropriations legislation have in common?  One was used to stop the other from becoming the trademark of a Nevada company.

    Sec. 206 of the Science, State, Justice, Commerce, and Related Agencies Appropriations Act of 2006 prohibits the use of federal funds to "register, issue, transfer, or enforce any trademark of the phrase THE LAST BEST PLACE." It was added to the 2006 and 2007 federal appropriations legislation by Montana Sen. Conrad Burns (Sen. Max Baucus continued the tradition for the 2008 bill) in response to attempts by Last Best Beef, LLC, a Nevada company, to trademark the phrase in connection with a variety of different products and services. The phrase, however, happens to be Montana’s slogan. When President Bush signed the appropriations acts into law, the PTO withdrew registration for several of the Last Best Beef’s trademark applications. Last Best Beef responded by filing a civil lawsuit against the PTO (see Senate approves ‘Last Best' measure). 

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     Below is a summary of the IP-related cases filed in the the U.S. District Court for the District of Maryland during the week beginning October 1, 2007 (source: Justia), beginning with an IP NIMBY case: 

• Invenergy Wind North America LLC v. John Doe Numbers 1 Through 10, 07civ02643, filed Oct. 1, 2007. 

     According to the complaint, this case arises from an email that plaintiff Invenergy, a Delaware entity based out of Chicago, alleges that opponents to its proposed Moresville Energy wind turbine energy project sent to landowners and leaseholders of land Invenergy needs for its project. The complained of email, which included Invenergy's logos and trademarks, was allegedly designed to look like it originated from Invenergy itself. The complaint includes claims of trademark and copyright infringement, trademark dilution, tortious interference, and libel.

  &