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.