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

• UPDATE: American Mensa, Ltd. v. Inpharmatica, Ltd. et al., No. 07-3283 (D. Md filed Dec. 6, 2007); assigned to J. Quarles

     As previously reported on this website, the U.S. District Court for the District of Maryland granted in part and denied in part Defendants' motion for summary judgment in the case of American Mensa v. Inpharmatica. In doing so, the court found in favor of Mensa on Defendants' motion for summary judgment of no trademark infringement or unfair competition because genuine issues of fact remained, but granted Defendants' motion for summary judgment of no trademark dilution because there was no evidence that Mensa's mark is famous. Now, after trial, a jury has returned its verdict form, finding in favor of the Defendants including, among other things, a finding that “Defendant’s use of the 'Admensa' and 'ADMEnsa' [marks] was not likely to cause confusion, or cause mistake, or to deceive about the affiliation, connection, or association of the Defendants with American Mensa as to the origin, sponsorship, or approval of their goods or services by American Mensa.” Judgment was entered by Judge Quarles on May 5, 2009.

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     Rockville, MD-based Yogiberry, Inc., filed an application for registration of the mark YOGIBERRY in the U.S. Trademark Office on March 11, 2008, which was approved for publication and subsequently published for opposition on September 2, 2008.  On November 21, 2008, Hanna-Barbera Productions, Inc., owner of several marks related to the Yogi Bear franchise of cartoons that first appeared on television in 1958, filed an opposition.  In its answer to the opposition, Yogiberry stated that its mark is related to retail frozen yogurt stores, and does not overlap with any goods and services associated with Hanna-Barbera's YOGI BEAR MARKS.  Yogiberry further stated that the parties' respective marks are not confusingly similar or likely to cause confusion amongst consumers or the trade.

     Yogiberry, Inc., is the owner of Registration No. 3498624 for the mark shown below, which was registered on September 9, 2008, based on an application filed February 4, 2008:

     In view of the above opposition, Yogiberry, Inc., and Pinkberry, Inc., filed in the U.S. District Court for the District of Maryland a stipulated motion to a stay their pending trademark litigation.  The parties' motion was granted.

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      Data available from Justia.com shows that the number of trademark lawsuits filed in the U.S. District Court for the District of Maryland (Greenbelt and Baltimore divisions combined) in 2008 (36; see table below comparing Districts) was slightly higher than the number initiated in 2007 (33). The number of parties named in those lawsuits was also higher year over year (about 160 parties in 2008 compared to about 100 parties in 2007).
 

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• American Mensa, Ltd. v. Inpharmatica, Ltd. et al., No. 07-3283 (D. Md filed Dec. 6, 2007); assigned to J. Quarles

     In American Mensa v. Inpharmatic, the U.S. District Court for the District of Maryland granted in part and denied in part Defendants' motion for summary judgment. In doing so, the court found in favor of Mensa on Defendants' motion for summary judgment of no trademark infringement or unfair competition because genuine issues of fact remained, but granted Defendants' motion for summary judgment of no trademark dilution because there was no evidence that Mensa's mark is famous.

     In June 2004, Inpharmatica applied for use of the ADMENSA mark for a variety of services. After the application was published for opposition, Mensa asked Inpharmatica to withdraw its application because the mark would damage Mensa; Inpharmatica refused. On November 22, 2006, Mensa filed an opposition to Inpharmatica’s application with the PTO’s Trademark Trial and Appeal Board. During discovery in the PTO proceeding, Mensa learned that Inpharmatica had begun using the ADMENSA mark in the U.S. On December 6, 2007, Mensa filed the present suit seeking an injunction and damages. On August 25, 2008, the Defendants moved for summary judgment on Mensa’s claims.

Trademark infringement and unfair competition

     Section 32(1) of the Lanham Act prohibits the use in commerce of a "reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale. . .or advertising of any goods or services . . . [that] is likely to cause confusion, or . . . mistake." § 1114(1).

     To prove trademark infringement or unfair competition, Mensa must show that (1) it owns a valid trademark; (2) the Defendants use a colorable imitation of the mark in commerce without Mensa’s consent; and (3) such use is likely to cause confusion. As to the issue of confusion, the court examined how the parties use their marks to determine the likelihood of confusion.

     Whether a mark is likely to cause confusion depends on several factors: (1) the strength or distinctiveness of the plaintiff’s mark; (2) the similarity of the marks; (3) the similarity of the goods or services the marks represent; (4) the similarity of the facilities the parties use in their business; (5) the similarity of the parties’ advertising; (6) the defendant’s intent; and (7) actual confusion. Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 259-60 (4th Cir. 2007).

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     U.S. Patent & Trademark Office (PTO) records show that in 2008, the PTO received 68 trademark applications from Maryland resident or entities (based on a search of "owner address" records using Trademark Electronic Search System, TESS, database). That number is a 20% decline in the number of applications received in 2007 (85), and a 22% decline over 2006 numbers (87).

     The number of registrations to Maryland individuals or entities in 2008 was also down compared to last year. According to the PTO, 53 registrations were effective in 2008 (as of December 31, 2008), which is a 36% decline in the number of registrations in 2007 (83 registrations), but is one more than the number of registrations in 2006 (52).

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• Man & Machine, Inc. v. Apple, Inc., No. 8:2008cv02453 (D. Md filed Sep. 18, 2008); assigned to J. Williams

     Man & Machine, Inc. (M&M), a Maryland company based in Landover, MD, owns the federally registered MIGHTY MOUSE trademark, which, according to Trademark Office records, was first used in commerce in 2004 (in connection with M&M's medical and industrial and hygienic waterproof computer mice products).

     In its Complaint, M&M contends that Apple's Mighty Mouse product infringes M&M's trademark, that Apple purchased the keyword "Mighty Mouse" from various Internet search engines to drive search engine traffice to Apple's website, and that Apple received an invalid license from CBS Operations for use of CBS's MIGHTY MOUSE trademark, which is allegedly the subject of a pending trademark application for computer mice, and is also the subject of a trademark opposition (CBS Corporation allegedly owns the mark MIGHTY MOUSE for use in connection with toys and children's apparel).

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     On September 10, 2008, Senator Ben Cardin (D-MD) added his support to S. 3325, the Enforcement of Intellectual Property Rights Act of 2008, one day before the Senate Judiciary ordered the bill "to be reported with amendments favorably." Cardin joins eight other co-sponsors of the legislation (Senators Leahy, Bayh, Cornyn, Hatch, Voinovich, Specter, Feinstein, and Whitehouse). Next stop for the bill in consideration by the entire Senate (once placed on the Senate Calendar).

• Enforcement of copyright laws

     S.3325, introduced July 24, 2008, would authorize the U.S. Attorney General to commence a civil action against any person who engages in conduct constituting a criminal offense under the copyright laws, 17 U.S.C. § 506, upon proof of such conduct by a preponderance of the evidence (compared to the much high criminal standard, the preponderance standard is estimated to result in more enforcement of copyright laws). A person found liable may be subject to a civil penalty under section 504 which shall be in an amount equal to the amount which would be awarded under 18 U.S.C. 3663(a)(1)(B) (i.e., the amount of the loss sustained by each victim as a result of the offense, considering the financial resources of the defendant) and restitution to the copyright owner aggrieved by the conduct.

• Enforcement of trademark laws

     S. 3325 would enhance remedies for trademark violations. Section 35(b) of the Trademark Act of 1946 (15 U.S.C. 1117(b)) would require a court, in assessing damages for any violation of section 32(1)(a) of the Act, or or in a case involving use of a counterfeit mark or designation, to enter judgment for three times profits or damages, whichever amount is greater, together with attorney’s fee, unless the court finds extenuating circumstances. Treble damages and attorney's fees are authorized where the violation consists of:

(1) intentionally using a mark or designation, knowing such mark or designation is a counterfeit mark in connection with the sale, offering for sale, or distribution of goods or services; or

(2) providing goods or services necessary to the commission of a violation specified in paragraph (1), with the intent that the recipient of the goods or services would put the goods or services to use in committing the violation.

     The court may also award prejudgment interest beginning on the date of the service of the claimant’s pleadings and ending on the date entry of judgment is made.

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• Pinkberry, Inc. v. Yogiberry, Inc., No. 8:2008cv02355 (D. Md. filed Sep. 9, 2008); assigned to J. Titus

     California-based Pinkberry, Inc. is a wildly popular upscale frozen yogurt restaurant with stores in New York and California. In its complaint against Olney, MD-based Yogiberry, Inc., Pinkberry characterizes its product line as "frozen yogurt with optional toppings that include fresh fruit, cereals and nuts, as well as smoothies and shaved ice under the distinctive Pinkberry branding in a unique, cafe-style restaurant setting." Comparing its branding success to "the way that Apple Computers revolutionized the computer industry," Pinkberry asserts that it has revolutionized the yogurt business by offering a product selection and consumer experience that are uniquely Pinkberry.  It cites Time, Fortune, Los Angeles Times, New York Times, and Reuters, as well as blogs, as evidence of its unique stature in the industry.

     Pinkberry contends that Yogiberry's business "deliberately imitates Pinkberry's highly distinctive branding and trade dress."  It contends that the use of the YOGIBERRY mark infringes the registered PINKBERRY mark, service marks, and trade name, in a confusingly similar manner to sell goods that unfairly compete with Pinkberry's, and it further contends that Yogiberry has misappropriated Pinkberry's trade dress.  Pinkberry is seeking an injunction, monetary damages, and forfeiture of signage.

     Reed Smith's Mark Wasserman (Falls Church, VA) filed the complaint on behalf of Pinkberry.

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     Below is a Wordle based on the last several months worth of posts on this website.  A Wordle is a “word cloud” generated from text in which greater prominence is given to words that appear more frequently in the source text.  In the Wordle below, one can see that the words "patent," "Maryland," "district," "court," and "judge" have found their way into the posts on this website more frequently than other words.

     Jonathan Feinberg of IBM Research is credited for providing the on-line Wordle tool.

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• 2008 Maryland trademark filings and registrations continue to trail 2007 numbers:

• Wake County, North Carolina, Superior Court Judge Donald Stephens ruled September 3, 2008, that two Chinese companies and a former Serenex employee must pay Serenex $57.5 million for damages. Serenex brought the action against the companies and former employee alleging corporate espionage and stolen trade secrets. [Womble Carlyle Trade Secret Blog]
   
• No. of IP-related lawsuits filed in the U.S. District Court for the District of Maryland in August 2008: 9
   
• Top states in Technology and Science, according to Milken Institute (with 2004 rankings):

1) Massachusetts (1)
2) Maryland (4)
3) Colorado (3)
4) California (2)
5) Washington (6)
6) Virginia (5)
7) Connecticut (10)
8) Utah (9)
9) New Hampshire (12)
10) Rhode Island (11)

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• Senate Passes Bill to Fix Administrative Law Judge Status

Reacting to revelations that several PTO Administrative Law Judges may have been appointed to their positions without proper authority, the Senate introduced and then passed S.3295 on July 22, 2008. The legislation, if enacted, would allows the Secretary of Commerce, in his or her discretion, to deem the appointment of an administrative patent or trademark judge who, before the date of the enactment of the legislation, held office pursuant to an appointment by the Director, to take effect on the date on which the Director initially appointed the administrative patent or trademark judge.  The bill, introduced by Sen. Patrick Leahy, Chairman, Senate Judiciary Committee, would also provide those ALJs a statutory defense if someone were to challenge their initial appointment.

• Enforcement of Intellectual Property Rights Act of 2008

On July 24, 2008, Senators Leahy, Specter, Bayh, Voinovich, Feinstein, and Cornyn introduced S. 3325 Enforcement of Intellectual Property Rights Act of 2008. Among other things, the legislation would authorize the U.S. Attorney General to commence a civil action against any person who engages in conduct constituting a criminal offense under the copyright laws, 17 U.S.C. § 506, upon proof of such conduct by a preponderance of the evidence (compared to the much high criminal standard, the preponderance standard is estimated to result in more enforcement of copyright laws). A person found liable may be subject to a civil penalty under section 504 which shall be in an amount equal to the amount which would be awarded under 18 U.S.C. 3663(a)(1)(B) (i.e., the amount of the loss sustained by each victim as a result of the offense, considering the financial resources of the defendant) and restitution to the copyright owner aggrieved by the conduct.

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     Even in soft economic times, companies continue to protect their intellectual property assets. According to statistics available from Justia.com, 63 complaints alleging liability under patent, copyright, and/or trademark laws were filed in the U.S. District Court for the District of Maryland during the period January 1 through July 31, 2008 (those complaints named approximately 80 defendants, some several times).  For the same period in 2007, just 52 complaints were filed (but close to 100 named defendants). That's a 21% increase in the number of filings in 2008.

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     "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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     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.

     Although the planned facility is to be located in Delaware County, New York, Maryland was chosen as the venue for the litigation, apparently because the permit applicant for the wind energy facility is Rockville, MD-based Moresville Energy LLC (a wholly-owned subsidiary of Invenergy), and because the email was allegedly sent by ten unidentified "John Does" (or "Jane Does") over networks owned by Hughes Network Systems , LLC, which is a Germantown, MD-based company.

     Thelen Reid's DC office filed the complaint, which did not identify local Maryland counsel.

     In the "old days," someone with a NIMBY (not in my backyard) issue would simply lie in front of a bulldozer, chain themselves to a Redwood, maneuver a boat in front of a fishing vessel, organize a protest rally, or file a lawsuit against the federal or state agency that issued a permit for a project they disagreed with (or all of the above). Apparently, if the above complaint is true, surreptitious emailing can now be added to the list of protest tactics.

     Three more interesting cases after the jump...

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     The first nine 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 September 2007, the PTO registered 45 federal trademarks to Marylanders (based on a search of "owner address" records using TESS). The PTO registered 35 federal trademarks to Marylanders for the same period in 2006 (a 29% difference). 


     

      In terms of filed applications, the PTO received 71 applications for trademarks from Maryland entities and individuals for the first nine months of 2007, compared to 65 applications received during the same period in 2006 (a 9% increase).

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     The U.S. District Court for the District of Maryland was chosen as the forum for litigating the following cases, as published by Justia:

• Moulin Rouge, S.A. v. Moulin Rouge Caterers, Inc. et al, 07 civ 02482 (D. Md. 2007), filed Sep. 18, 2007.

According to court papers, Plaintiff Moulin Rouge, S.A., is a Belgian corporation having its principal place of business in Paris, France. It owns the famous French trademark MOULIN ROUGE, which, in English, means "red windmill."  The mark has allegedly been in use in France continuously since 1889 when the famous Parisian cabaret first opened (first use in commerce in the U.S. since 1981). Moulin Rouge reportedly owns several U.S. trademark registrations covering live music stage shows and theater productions.  Defendants are Gaithersburg, MD-based Moulin Rouge Caterers and its owner Mohammad Taghi Yahyavi. Moulin Rouge, S.A., which is represented by Robert Bowie, Jr. of BOWIE & JENSEN LLC, is alleging trademark dilution, infringement, and unfair competition.

• Allegis Group, Inc. v. Bizet Human Asset Management, 07 civ 02497 (D. Md. 2007), filed Sep. 18, 2007.  

In court papers, Plaintiff Hanover, MD-based Allegis Group, Inc., which provide human capital services, alleges it has used the mark "PEOPLE. SERVICE. PERFORMANCE" in commerce before Pittsburgh, PA-based Bizet Human Asset Management began using  its federal trademark "PEOPLE.  PROCESS.  PERFORMANCE."  When Bizet allegedly failed to cease using its trademark on its website, despite canceling its registration, Allegis sued for infringement under 15 U.S.C. § 1051.  Allegis Group is represented by Sherry Flax of Saul Ewing LLP.

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     The U.S. District Court for the District of Maryland was chosen as the forum for litigating the following case(s), as published by Justia:

• Extra Space Storage, LLC v. Maisel-Hollins Development Co. et al , Case Number 1:2007cv02351, filed September 5, 2007

According to court papers filed September 5, 2007, Plaintiff Extra Space Storage, LLC, a Delaware entity based in Salt Lake City, Utah, sued Maryland-based Defendants Maisel-Hollins Development Co., Extra Space Management Co. LLC, Annapolis Self Storage Limited Partnership LLP, Silver Spring Extra Space LLC, Annapolis Extra Space LLC, and Post Management Co., for alleged trademark infringement under 15 U.S.C. § 1114.  The mark at issue is Plaintiff's federally-registered mark "Extra Space Storage" (the image above shows the mark used in commerce on Plaintiff's web site).

Plaintiff notes in its complaint that the State of Maryland issued a registration for the trademark "Extra Space Self Storage" to Defendant Maisel-Hollins Development Co.  Maryland's trademark records show that the mark was first used in Maryland in 1985; the mark has a registration date of June 15, 2007.  Plaintiff is seeking to cancel this registration in Maryland, among other requested relief.

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     The Port of Baltimore is the destination for approximately 40 million tons of bulk and container cargo each year, making the Port one of the busiest in the nation. Its popularity is the result of geography: two-thirds of the U.S. population lives within an overnight drive of Baltimore. With all that cargo coming into Baltimore, the Port is an obvious entry point for counterfeit goods that infringe federally-registered U.S. trademarks.

     The Department of Homeland Security plays a role in preventing infringing goods from entering U.S. markets by enforcing “parallel imports” regulations. According to Customs Directive No. 2310-008A, it is the policy of the U.S. Customs and Border Protection (part of DHS) to exclude from entry into the U.S., detain, and/or seize, violative trademarked goods. Under its intellectual property rights (IPR) enforcement regime, CBP may detain goods at ports where there is a “reasonable suspicion” that the goods bear marks which violate a federally registered trademark. The detaining Customs officers are tasked with assessing whether marks are counterfeit or confusingly similar to U.S. registered marks, making them the first line defenders against infringement originating at the borders. See Addressing Parallel Imports Goods Under U.S. Laws for more information about this subject (used by permission).

Notes:

• Thanks to Dave Weslow, co-author of the linked article, for the idea for this post

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     The table below shows how Maryland ranks among other states in terms of the number of lawsuits filed in federal district courts that raise patent, trademark, and/or copyright issues.  The table values are for the last twenty months.

Notes:

• Rankings are based on number of complaints filed between January 1, 2006, and August 31, 2007, and include cases filed in the District of Columbia.  States with multiple jurisdictions/divisions are combined.  Complete table available (please email me a request).
  
  
• Source: Justia.com.

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The U.S. District Court for the District of Maryland was chosen as the forum for litigating the following case(s), as published by Justia:

• Thirty Eight Street, Inc. v. State Line LC, Case Number 1:2007cv02210, filed August 20, 2007

According to court papers filed August 20, Plaintiffs Thirty Eight Street, Inc., and Vantage Hospitality Group, Inc. (formerly Best Value Inn Brand Membership, Inc.) are Florida entities that  allegedly own the marks BEST VALUE INN, BEST VALUE (right), and AMERICAS BEST VALUE INN BY VANTAGE.  Defendant State Line, LC, is reportedly a Hagerstown, Maryland-based entity.  Defendant Bharat Patel is allegedly a Maryland resident and owns State Line LC.  The filed Complaint alleges that Defendants infringed the asserted marks under 15 U.S.C. § 1114; violated the false advertising provisions of the Lanham Act, 15 U.S.C. § 1125(a); contributorily and/or vicariously infringed the marks; and violated several Maryland state statutes and common laws (e.g., Maryland Unfair or Deceptive Trade Practices Statute, unfair competition).  Plaintiffs are seeking an injunction, destruction of advertising materials, and an award of monetary damages, among other requested relief. 

• Young Again Products, Inc. v. Young Again Rejuvenation Clinic, LLC, Case Number 8:2007cv02254, filed August 24, 2007

Plaintiff Young Again Products, Inc., a Maryland company that describes itself as being "in the business of production and sale of health and nutritional supplements," has sued Young Again Rejuvenation Clinic, LLC, which is reportedly a New Jersey company operating the site youngagainclinic.com, for allegedly "engaged in the unauthorized use of the Young Again™ Mark by utilizing the Mark in its company name, in its website’s uniform resource locator (“URL”) (also referred to as the domain name) and/or on its website to offer its services and sell related supplement products, including hormone therapies" in violation of 15 U.S.C. §1125(a) (Lanham Act), dilution of a famous mark in violation of 15 U.S.C. §1125(c), and unfair competition in violation of Maryland's common law.  Young Again Products is seeking a declatory judgment enjoining Young Again Rejuvenation Clinic, LLC, from using the Young Again mark, monetary damages, and other relief.

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     The first seven 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 July 2007, the PTO registered 27 trademarks to Marylanders (based on a search of "owner address" records using TESS). The PTO registered 24 marks to Marylanders for the same period in 2006. 

     In terms of filed applications, the PTO received 65 applications for trademarks from Maryland entities and individuals for the first seven months of 2007, compared to 35 applications received during the same period in 2006. 

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Below is a list of recent trade secret, patent, trademark, and copyright news, announcements, and other information of some interest:

Trade Secrets:

• The new Intellectual Property Section of the Maryland State Bar Association (a new web site) is hosting a seminar and Webinar entitled Theft of Intellectual Property, Trade Secrets and Proprietary Information: Forensic Traces to Make Cases on Friday, September 28, 2007, from 8:00 – 10:00 a.m. at the University of Maryland School of Law, Room 107.

Patents:

• The PTO has proposed new rules to improve patent quality and reduce pendency during prosecution:  see the Notice of Proposed Rulemaking in the Federal Register for details, or the PTO's announcement for a summary

Trademarks/Trade Names:

• The PTO has finalized new rules affecting Trademark Trial and Appeal Board rules:  see the Final Rule in the Federal Register for details
• Useful form:  registration application for a Maryland Trademark or Servicemark
• Useful form:  application for Maryland Trade Name
  

Copyrights:

• The launch of a new Internet-based electronic search system for copyright registrations and recordations is still scheduled for roll-out in "Mid August" according to a Copyright Office announcement

General:

• A newly-formed entity in Maryland called the Center for New Technology Enterprise will be opening its virtual doors soon.  Headed by veteran serial entrepreneur and CEO Fred Provorney, the Center will provide a comprehensive trans-disciplinary program for facilitating technology commercialization and fostering collaboration among universities, research institutions, governmental research facilities and other individuals and entities, whether public or private.  The Center should be well received, especially in Maryland, with its large number of start-up biotechnology and other high technology companies, major University research centers, and several Government laboratories and research organizations.  Check back here for more information about this venture. 

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          The practice by which companies buy keywords from search engines to rank their web sites high when those keywords are used in searches is common.  However, the law is unsettled as to whether that practice constitutes trademark infringement when the purchased keywords are someone else's registered mark.  In some jurisdictions, including Maryland's federal District Court, this may be an issue of first impression. [1]  Maryland's court, however, may have the chance to address the issue if the case Young Again Products, Inc. v. Vitamins Home [2] is adjudicated.  The case involves Vitamins Home's alleged "engage[ment] in the unauthorized use of the Young Again™ Mark by utilizing the Mark in pay-for-placement and pay-for-rank search engine advertising to direct Internet customers to its on-line nutritional supplement store."

           A sampling of other jurisdiction's decisions may reveal how Maryland's federal District Court may decide the issue today [3]:  Government Employees Insur. Co. (GEICO)  v. Google, Inc., 330 F.Supp.2d 700 (E.D. Va. 2004) (finding Google's AdWords program a "use in commerce" under the Lanham Act);  GEICO  v. Google, Inc., 414 F.3d 400 (2d Cir. 2005) (finding that a paid-for advertisement that itself did not mention a mark used as the keyword search term either in the title or the text of the advertisement was not likely to cause confusion); 800-JR Cigar, Inc. v. GoTo.com, Inc. 437 F.Supp.2d 273 (D.N.J. 2006) (finding GoTo's conduct was a "use in commerce," but the issue of likelihood of confusion was not suitable for summary judgment because of disputed facts); Rescuecom Corp. v. Google, Inc. 456 F.Supp.2d 393 (N.D.N.Y. 2006) (granting motion to dismiss on the basis that Google's sale of other's trademarks as keywords was not a "use in commerce," and concluding that there must be an allegation of trademark use in the first instance to sustain a cause of action for trademark infringement); J.G. Wentworth SSC Ltd. v. Settlement Funding LLC, 2007 U.S. Dist. LEXIS 288 (E.D. Pa. 2007) (rejecting infringement contentions based on theory of "initial interest confusion").  This is only a partial listing of cases.

Comments and references:

• [1]  Brief Lexis search 
  
  
• [2]  Young Again Products, Inc. v. Vitamins Home, No. 07 Civ. 2073 (D. Md. filed Aug. 3, 2007)
  
  
• [3]  See Allison McDade, Use of Competitors' Trademarks as Keywords: Corporate Considerations, 2007 ABA IP Law Conference (2007) for a recent comprehensive analysis of the pay-for-click issue and case law cites.
  
  
• Thanks to attorney David Weslow at Sutherland Asbill & Brennan for providing information for this blog post

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The U.S. District Court for the District of Maryland was chosen as the forum for litigating the following case(s), as published by Justia:

• Archstone Consulting LLC v. Archstone Portfolio Solutions, LLC, Case Number 1:2007cv02070, filed Aug. 3, 2007

According to its Complaint, Plaintiff Archstone Consulting LLC, is a Delaware company that provides business and financial management services under its mark ARCHSTONE CONSULTING.  It alleges that Defendant Archstone Portfolio Solutions, LLC, is a Lutherville, MD-based company that reportedly provides institutional and individual investment consulting services under the name ARCHSTONE PORTFOLIO SOLUTIONS.  It further alleges that the ARCHSTONE PORTFOLIO SOLUTIONS name infringes its ARCHSTONE CONSULTING mark in violation of 15 U.S.C. 1114(1)(a).  Its Complaint includes claims of unfair competition under 15 U.S.C. 1125(a), and infringement and unfair competition under Maryland common law.

• Young Again Products, Inc. v. Vitamins Home, Case Number 1:2007cv02073, filed Aug. 3, 2007

Plaintiff Young Again Products, Inc., a Maryland company that describes itself as being "in the business of production and sale of health and nutritional supplements," has sued Vitamins Home, an Israeli company with a place of business in Texas, for allegedly "engag[ing] in the unauthorized use of the Young Again™ Mark by utilizing the Mark in pay-for-placement and pay- for-rank search engine advertising to direct Internet customers to its on-line nutritional supplement store," in violation of 15 U.S.C. sec. 1051. Other claims include dilution of a famous mark under 15 U.S.C. 1125(c), and common law unfair competition. Young Again Products is seeking a declaratory judgment enjoining Vitamins Home from using the Young Again mark, and other relief. 

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The U.S. District Court for the District of Maryland was chosen as the forum for litigating the following case(s), as published by Justia:

• Global Barbeque, LLC v. Rub, LLC, Case Number 1:2007cv02021, filed July 27, 2007

New York City-based Global Barbeque, LLC, and Rub BBQ Restaurant # 1 (the RUB BBQ restaurant) have sued Michael Marx (alleged owner of Baltimore's Rub Barbeque restaurant) and RUB, LLC, for alleged trademark infringement, dilution, and state law claims arising out of the use of the word RUB in connection with its retail food services.  Plaintiffs are seeking, among other relief, an injunction, an order barring use of the word RUB in connection with Defendants' web site URL, an accounting of profits, and compensatory and punitive damages.

• Tarpo Music Publishing v. Lifestyle, LLC, Case Number 1:2007cv02029, filed July 30, 2007 

Plaintiffs Tarpo Music Publishing, EMI April Music Inc., Notting Dale Songs, Inc., Controversy Music, Basement Boys Music, Inc., C-Water Publishing, Inc., WB Music Corp., Webo Girl Publishing, Inc., EMI Waterford Music, Inc., Jobete Music Co., Inc. and Rodsongs have sued Defendants Lifestyle, LLC, Leonard Clarke and Gyeong M. Cho for alleged copyright infringement based on "public performances of copyrighted musical compositions" at Baltimore's Red Maple bar, which is reportedly operated and managed by Defendants (see complaint).  Listed compositions include Ain't No Mountain High Enough, among five others alleged to be infringed. 

• Plastic Safety Systems, Inc. v. Road Safety, LLC, Case Number 1:2007cv02068, filed August 2, 2007

Cleveland, OH-based Plastic Safety Systems, Inc., has sued Glen Burnie, MD-based Road Safety, LLC and Millersville, MD-based Reliable Contracting Company, Inc., for allegedly infringing Plastic Safety's U.S. Patent No. 5,234,280, which is directed to traffic "channeling" devices in the form of large drums (see image).  According to its complaint, Defendants allegedly used or induced the use of infringing drums along Rt. 50 in Annapolis. 

• Young Again Products, Inc. v. JMS Partners Enterprises, Ltd., Case Number 1:2007cv02072, filed August 3, 2007

Plaintiff Young Again Products, Inc., a Maryland company that describes itself as being "in the business of production and sale of health and nutritional supplements," has sued JMS Partners Enterprises, Ltd., for allegedly "engag[ing] in the unauthorized use of the Young Again™ Mark by selling products displaying the Mark and by using the Mark on its website to sell its products" in violation of 28 U.S.C. 1338.  Other claims include unfair competition under 15 U.S.C. 1125(a) (Lanham Act), and dilution of a famous mark under 15 U.S.C. 1125(c).  Young Again Products is seeking a declatory judgment enjoining JMS from using the Young Again mark, and other relief.

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According to the University of Baltimore School of Law web site, staff from the U.S. Patent and Trademark Office (PTO) will provide free training on Tuesday, August 7, 2007, to inventors, would-be inventors, entrepreneurs, law firms, research firms and similarly interested parties in searching for U.S. patents and trademarks.  The training, conducting in cooperation with the Law School's Law Library, will teach how to use the PTO web site to search patents and trademarks, and how to access the PubWEST database, which is the same search tool used by PTO patent examiners.  Registration and continental breakfast are to begin at 8 a.m., followed by a training program from 9 a.m.-4 p.m.

Contact information:  Joanne Dugan; (410) 837-4373; patentlibrary@ubalt.edu.

Comments:

• UB's Law Library is one of two Patent and Trademark Depository Libraries (PTDL) in Maryland, and the most recent to be so designated.  The other PTDL is located in the Engineering and Physical Sciences Library in College Park, MD

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In In re Omega S.A., watchmaker Omega appealed a decision of the Trademark Trial and Appeal Board (TTAB) sustaining PTO's refusal to register Omega’s trademark AQUA TERRA in Class 14 for "chronographs" unless Omega limited "chronographs" to "chronographs for use as watches." The PTO’s refusal was based on its contention that the term "chronographs" can refer not only to watches in Class 14, but also to time recording instruments in Class 9.

Omega declined to amend its application, arguing that it already has several registered trademarks in Class 14 for use with "watches and chronographs," and that the term "chronographs" includes timepieces such as watches, whether or not "chronographs" also is used for time recording instruments. During proceedings, Omega expresses concern as to the effect the amendment could have on its existing registrations. On appeal, the Federal Circuit requested additional briefing on this point.  

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Ever wonder how you protect a trademark, service mark, or trade name in Maryland?  According to the Maryland Office of the Secretary of State - Trademarks & Servicemarks web site,

"Any person who adopts and uses a mark in Maryland may file in the Office of the Secretary of State an application for registration of the mark. If the statutory requirements have been met, the Secretary of State will issue a certificate of registration. Before a decision is made to deny an application, the applicant is entitled to a hearing before the Secretary of State or the Secretary's designee." (emphasis added)

The statement says "may file," not "shall file."  Obviously, there is no requirement that a person or entity register a trademark or service mark in Maryland. 

The purpose and benefit of registering? Notice!

"The primary benefit of registering a trademark or service mark with the Secretary of State is to give public notice of a person's claim of ownership of the trademark or service mark. This will reduce the likelihood that another person will inadvertently choose a mark confusingly similar to the registered mark." (emphasis added)

A trademark or service mark must be in commercial use before it may be registered with the Secretary of State.  More about Maryland trademarks and service marks may be found here.  The Office's web site provides the forms and information to apply for registration.  Of course, registration in Maryland does not mean a mark is registered outside the state.  For federal protection, one must apply for registration from the U.S. Trademark Office.

Maryland trade names are applied for through the Maryland State Department of Assessments and Taxation (SDAT).  The SDAT web site provides a Maryland trade name application form for applying for trade name status in Maryland. 

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          The U.S. District Court for the District of Maryland was chosen as the forum for litigating the following case(s), as published by Justia:

• Coach & Courier, LLC v. Kent Island Coach & Courier, Case Number 1:2007cv01918, filed July 19, 2007.

Plaintiff Coach & Courier, LLC has sued Defendants Kent Island Coach & Courier, South County Coach & Courier, Cleveland Coach & Courier, Medell Ventures, Inc., Kenneth L. Medell and Terri Robinson for trademark infringement under the Lanham Act, 15 U.S.C. § 1051 et seq.  Crofton, Maryland-based Coach & Courier is seeking an injunction, damages, and other relief for alleged unauthorized use of the trademark and trade name "Coach & Courier" (see image).  The parties reportedly provide transportation for hire services in Maryland.

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          The U.S. District Court for the District of Maryland was chosen as the forum for litigating the following cases, as published by Justia:

• Bianchi et al v. Orendorff et al, Case Number: 1:2007cv01713, filed June 28, 2007. 

Plaintiffs Josephine Bianchi and Joesph Bianchi have sued Defendants Greg Orendorff and Colleen Orendorff for trademark infringement under 15 U.S.C. § 1114.   The Bianchi’s are reportedly seeking $300,000 in damages from the Orendorff's.

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          The U.S. District Court for the District of Maryland was chosen as the forum for litigating the following cases, as published by Justia:

• Introsan Dental Products, Inc. v. Dentsply Tulsa Dental, Case Number: 1:2007cv01635, filed June 21, 2007. 

In this patent case, Canadian-based Introsan Dental Products, Inc., the identified owner of three U.S. patents according to U.S. Patent Office records, has sued Defendant Dentsply Tulsa Dental and Dentsply International for infringement.

• The American Board for Certification in Orthotics, Prosthetics and Pedorthics, Inc. v. Board for Orthotist/Prosthetist Certification, Inc., Case Number 1:2007cv01631 , filed June 20, 2007. 

This is a trademark infringement case involving Alexandria, Virginia-based ABCOP and Columbia, Maryland-based BOC. 

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