IP Newsflash - February 12, 2016

SUPREME COURT CASES

The Supreme Court Denies Cert Challenging the Use of Third-Party Registrations and Website Printouts as Evidence of Actual Use

The U.S. Supreme Court denied New Millennium Sports, S.L.U.'s (New Millennium) writ to review the Federal Circuit's holding overturning a decision by the Trademark Trial and Appeal Board (TTAB). New Millennium is a Spanish company that owns a trademark with an animal paw print element and the word "KELME" in connection with sports clothing. In 2009, Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA (Jack Wolfskin) applied for a trademark with a paw print design in connection with clothing. New Millennium filed an opposition against Jack Wolfskin in 2010.

The TTAB sustained New Millennium's opposition, finding that consumers are likely to confuse the parties' marks. The TTAB also refused to cancel New Millennium's mark. Jack Wolfskin appealed. In 2015, the Federal Circuit affirmed the TTAB with respect to the refusal to cancel New Millennium's mark but reversed the TTAB with respect to New Millennium's opposition. Specifically, the Federal Circuit disagreed with the TTAB's finding that the "other marks in use" factor was neutral. Instead, the Federal Circuit concluded that this factor demonstrates that New Millennium's mark is relatively weak because numerous third-parties have registered and used paw print designs in connection with clothing. Thus, the Federal Circuit held that there is no likelihood of confusion.

New Millennium filed a petition challenging the Federal Circuit's holdings. First, it contended that third-party registrations do not constitute evidence of actual use under prior case law. Second, it stated that the Federal Circuit improperly relied on third-party website printouts. It claimed that without proper authentication, such printouts lacks probative value and cannot demonstrate actual use. The Supreme Court denied the cert petition without explanation, leaving the Federal Circuit's holdings intact.

New Millennium Sports, S.L.U., v. Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA, Case No. 15-660 (U.S. Supreme Court, Jan. 25, 2016).

- Author: Yimeng Dou

FEDERAL CIRCUIT CASES

Claims for Pre-issuance Damages Require Actual Notice of and Substantially Identical Claims between the Published Application and the Issued Patent

In a case of first impression involving actual notice under 35 U.S.C. §154(d), the Federal Circuit affirmed the district court's grant of summary...