Topics covered in this month’s trademark prosecution presentation include discussions of a recent Federal Circuit case about contributory liability, a Ninth Circuit case about the first sale doctrine and copyright linceses, a Seventh Circuit case regarding standing and what is a commercial interest under the Lanham Act, and a Federal Circuit case addressing inherent disctinctiveness of trade dress.

1. Prosecution Lunch
October 2010

2. Trademark Bullies?
• USPTO is requesting feedback from U.S.
trademark owners, practitioners, and others
regarding their experiences with litigation
tactics, especially those involving an attempt
to enforce trademark rights beyond a
reasonable interpretation of the scope of the
rights granted to the trademark owner.
– Accepts anecdotal evidence
– Eliciting suggestions to address any allegedly
problematic litigation tactics.

3. Credit Card Processing = Contributory Liability?
• Gucci successfully litigated against
TheBagAddiction.com, which admitted that they sold
counterfeit Gucci products
• Gucci sued credit card processing services who
knowingly enabled these sales by marketing to “high
risk accounts” such as “replica merchants”
• Factual allegations sufficient to support intentional
inducement or sufficient control theories (sought out
by marketing and could have prevented transactions)
• Motion to dismiss for failure to state a claim DENIED.
• Gucci America Inc. v. Frontline Processing Corp., No. 09 Civ.
6925(HB), 2010 WL 2541367 (S.D.N.Y. June 23, 2010),

4. Can’t Sell A Copyright License
• Vernor purchased copies of Autodesk’s AUTOCAD
from a licensee and then resold them on eBay
• Autodesk sent C&D letter, Vernor filed DJ for non-
infringement - District Ct. granted Vernor SJ based
on 1st
sale doctrine
• Ninth Circuit reversed and vacated:
– Autodesk distributes Release 14 pursuant to a limited
license agreement in which it reserves title to the
software copies and imposes significant use and transfer
restrictions on its customers.
– Because Vernor did not purchase the Release 14 copies
from an owner, he may not invoke the first sale doctrine
• Vernor v. Autodesk Inc., 96 USPQ2d 1201 (9th Cir. 2010)

5. Is Beverly Stayart Famous?
• Beverly Stayart searched her name in Yahoo,
found links to pharmaceuticals & pornography.
• Believes she is the only “Beverly Stayart”
• Bev claims to be a “sophisticated, well-
educated, and highly intelligent professional
women.”
– She has an MBA from U.Chicago,
– is passionate about the environment, particularly
“the plight of wild horses, wolves and
baby seals.”
– She has written two poems about baby
seals that appear on a Danish website

6. Is Beverly Famous?
• Bev sued Yahoo and others under Lanham
Act demanding that “shameful” search results
be removed
• D.Ct. dismissed for lack of standing
• 7th
Cir. Affirmed:
– Standing requires a “commercial interest”, 43(a)
usually asserted against competitors
– Bev’s humanitarian efforts, advocacy, boycotting
and “scholarly posts”
Stayart v. Yahoo!, Inc. et al, No. 09-3379 (7th
Cir. Sept. 30, 2010)

7. Trade (Un)Dress
• In re Chippendales USA, Inc.
(FC 2010)
• 1979: intro of “Cuffs & Collar” costumes
• 2003: Reg. No. 2,694,613, based on acquired
distinctiveness (no inherent distinctiveness)
• 2008: Section 8/15, mark is “incontestable”

8. Trade (Un)Dress
• New application in 2005: inherently distinctive
• TTAB refuses registration
– Test: Seabrook Foods (CCPA 1977)
– Factors: 1) common shape/design; 2) unique,
unusual in particular field; 3) mere refinement of
well-known ornamentation for class
• FC affirmed
– “Packaging,” not “product design”;
Samara Bros. N/A
– Cuffs & Collar costume “mere refine-
ment” of Playboy Bunny costume