Skip to Content

Technology and IP Case Watch

on Friday, 16 May 2014 in Technology & Intellectual Property Update: Arianna C. Goldstein, Editor

Battle of the Breweries Headed to Court

Anchor Brewing Co., LLC v. Mountain Shippers, LLC, Case 3:14-CV-00097-vlb (D. CONN).

On January 27, 2014, Anchor Brewing Company filed a lawsuit against Mountain Shippers and City Steam Brewery. Anchor Brewing Company manufactures, markets, and sells craft beer under the trademark “Anchor Steam” and has done so since 1934. City Steam Brewery also manufactures, markets and sells craft beer, but under the trademark “City Steam”. In its complaint, Anchor Brewing Company alleges that City Steam Brewery’s use of “City Steam” infringes on Anchor Brewing Company’s “Anchor Steam” mark. Notably, in addition to its infringement claim, Anchor Brewing Company is further charging City Steam Brewery with “cyberpiracy”, claiming that City Steam Brewery’s registration and use of was done in bad faith, with an intent to profit from a domain name confusingly similar to that owned by Anchor Brewing Company. The case is indicative of several disputes in the craft beer industry, where various breweries have filed registrations utilizing common words, and then send ‘cease and desist’ letters to other breweries using the same or similar words. Should the District of Connecticut reach a final decision in the case, it should provide some guidance into how the courts and TTAB are likely to examine these issues moving forward.

Inadvertent Disclaim: Federal Circuit Ruling on Payments Related Patent Dispute Shows the Importance of Responding Carefully to Examiner Inquiries.

E2Interactive, Inc. et al. v. Blackhawk Network, Inc., Case No. 13-1151 (Fed. Cir. March 12, 2014).

Plaintiff, Interactive Communications International Inc. is the exclusive licensee of U.S. Patent No. 7,578,439. The patent has a 1999 priority date and relates to the use of prepaid stored value gift cards at point-of-sale terminals. Plaintiff sued defendant, Blackhawk, alleging that defendant’s own transaction processing platform infringes plaintiff’s patent. At the district court level, the jury found in favor of plaintiff and awarded it $3.5 million as a reasonable royalty. Defendant argued that the district court erroneously construed various claim terms. The district court rejected this argument and defendant appealed to the Federal Circuit. The circuit court reversed the district court’s decision. The central issue on appeal was whether plaintiff’s patent claims required a “terminal identifier” sent from the point-of-sale terminal to a central processor, a step defendant’s system does not do. Defendant argued that plaintiff, during a re-examination, had disclaimed other means of identification in responding to a patent examiner’s inquiry. The circuit court agreed, finding that plaintiff had made a clear and unmistakable disclaimer and thereby limited the scope of its asserted claim. The circuit court reversed accordingly.

Struggling Businesses Face Extra-Hurdle in Enforcing Trademark Claims

Denimafia, Inc. v. New Balance Athletic Shoe, Inc. et al, Case No. 12 Civ. 4112 (S.D. N.Y. March 3, 2014).

On February 12, 2003, Plaintiff, Denimafia, filed an application for the “<=>” design mark, which was granted on June 1, 2004. Plaintiff manufactured clothing bearing the design mark from 2004 to 2007. Plaintiff ran into problems in 2008, however, and in the subsequent years, sold no or very few, products bearing the design mark. In 2010, defendant began to use a similar design mark on its footwear products. Plaintiff eventually sued defendant for trademark infringement, based on use of the similar design. The court rejected plaintiff’s claim, finding that, despite the fact both companies use a nearly identical design mark, there was no likelihood of confusion. The court based its finding partly on the fact that plaintiff’s business was struggling and, consequently, its mark was not strong. As evidence of the mark’s weakness, the court noted plaintiff’s relatively low sales in recent years and plaintiff’s own admission that it lacked money for advertising and relied on free marketing for its products, such as spray-painted logos on New York City street corners. According to the court, such marketing cannot support a finding of ‘acquired distinctiveness’ in the marketplace. Further bolstering the court’s decision was its finding that the goods and services offered under the trademark were different, as plaintiff had actually amended registration to exclude footwear, defendant’s principal product.

Eli. A. Rosenberg

1700 Farnam Street | Suite 1500 | Omaha, NE 68102 | 402.344.0500

Law Firm Website Design