Trademark Prosecution History Estoppel

The Minnesota District Court encountered the rare issue of trademark prosecution history estoppel in Eniva Corp. v. Global Water Solutions, Inc., 440 F.Supp.2d 1042 (D. Minn. 2006). Eniva sold a liquid dietary supplement under the trademark VIBE and obtained a federal trademark registration for VIBE as applied to dietary supplements. Global marketed "energy water" under the trademark AQUAVIBE. Eniva sued for trademark infringement. Global moved for summary judgment based on the defense of prosecution history estoppel, which is not an absolute rule in trademark law. Under this argument, Global claimed that Eniva made statements to the USPTO in its registration proceedings that contradicted its position in the present litigation. The court declined to adopt the prosecution history estoppel rule at the summary judgment stage but held that Global may raise the defense at trial.

Minnesota Law Firm Wins Cybersquatting Case

The Minnesota district court granted a permanent injunction for cybersquatting and trademark infringement claims in Faegre & Benson, LLP v. Purdy, 447 F.Supp.2d 1008 (D. Minn. 2006). Purdy, an anti-abortion activist, registered numerous domain names that incorporated a variation of the law firm name Faegre & Benson, such as www.faegre-benson.com (now an inactive site). On these websites, Purdy published graphic abortion-related images and forceful anti-abortion statements. Purdy offered to stop his conduct only if the law firm agreed to quit donating money to Planned Parenthood or if the law firm would agree to donate money to anti-abortion organizations. The court found Purdy had engaged in cybersquatting and trademark infringement and granted Faegre & Benson a permanent injunction against Purdy.

Issues of Fact Present in Trademark Infringement/False Advertising Dispute

The Eighth Circuit reversed a grant of summary judgment on trademark infringement and false advertising claims in Mid-State Aftermarket Body Parts, Inc. v. MQVP, Inc., 466 F.3d 630 (8th Cir. 2006) (/06/10/053057P.pdf). MQVP designed a system for assuring quality in automotive parts and tracing the sales history of each part. They received three federal service mark registrations. Mid-State, a distributor of aftermarket auto parts, advertised they had "MQVP parts available." The district court granted summary judgment to Mid-State primarily on grounds that (a) MQVP used its service marks to identify goods; and (b) Mid-State's use was a certification mark use that could not be protected by a service mark registration. The Eighth Circuit held that service marks may be used to identify goods associated with the services, and a service mark owner is entitled to protection against certification mark use.

Circuit Split on False Advertising Standing

The Eighth Circuit did not take sides on a circuit split on false advertising standing in American Ass'n of Orthodontists v. Yellow Book USA, 434 F.3d 1100 (8th Cir. 2006) ( /06/01/043521P.pdf). The AAO is a national trade organization of orthodontists. They sued Yellow Book for false advertising because Yellow Book lists general dentists under the heading "Dentists-Orthodontists." The circuits are split as to the proper test for standing for a false advertising claim: (1) some circuits hold only a competitor may have false advertising standing; (2) other circuits apply a more flexible multi-factor test that permits noncompetitor standing. The Eighth Circuit noted the split but declined to select a test because the AAO would fail to establish standing under either test.

"Brick Oven" Too Generic for Trademark Protection

The Eighth Circuit affirmed summary judgment denying trademark protection for "Brick Oven" as applied to frozen pizzas. Schwan's IP, LLC v. Kraft Pizza Co., 460 F.3d 971 (8th Cir. 2006) (/06/08/053463P.pdf). In March 2003, Schwan's labeled its Freschetta brand pizzas as Freschetta Brick Oven pizzas. At the time, no one else in the industry used the phrase "brick oven" in conjunction with frozen pizzas. Schwan's tried to get a federal trademark registration for "Brick Oven," but they failed in all three attempts. Later in 2003, Kraft labeled its Tombstone brand as Tombstone Brick Oven pizzas. Schwan's filed a lawsuit claiming trademark infringement. The court held that Brick Oven is a type of pizza that is too generic for trademark protection. The court observed that commentators, retailers, newspapers and restaurants all use the term Brick Oven to identify pizzas cooked in a brick oven.

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