Geisha LLC d/b/a Japonais v. Tuccillo, No. 05 C 5529, Slip Op. (N.D. Ill. Mar. 13, 2009) (Pallmeyer, J.).*
Judge Pallmeyer denied plaintiff’s motion for summary judgment regarding its Lanham Act false designation claim. Plaintiff began using the Japonais mark in conjunction with its Chicago area European/Japanese fusion restaurant in 2003. Plaintiff later opened New York and Las Vegas locations. But plaintiff did not register the Japonais mark. In 2004, defendant filed an intent to use trademark application for the Japonais mark to be used in connection with restaurants. In order to receive the registration, defendant was required to use the mark in commerce. Once that use occurred and was properly documented, defendant’s mark would have a 2004 constructive use date, as opposed to the later date of actual first use. Defendant has filed a verified statement of use, so the parties agree that defendant’s registration is a formality. Plaintiff, however, believed that it would succeed in a cancellation proceeding against the mark.
The Court noted that as the senior user, plaintiff had a right to use the mark in the Chicago area. But there was a question of fact as to whether plaintiff’s later opened New York restaurant had sufficiently penetrated the New York market before defendant’s 2004 constructive use date. Furthermore, to the extent plaintiff had actual notice of defendant’s application, any rights plaintiff might have had in New York would not be enforceable against defendant. Furthermore, the Court noted that granting plaintiff’s motion could result in the bizarre outcome of defendant being liable for violating plaintiff’s trademark today, but tomorrow, after issuance of defendant’s mark, defendant may be able to assert the trademark against plaintiff.
* For more on this case, click here to read the Blog’s archives about the case or here for a Las Vegas Trademark Attorney post about the case.
Blawg Review #182 is up at Dave Gulbransen’s blog — click here to read it. Having just passed the Illinois bar exam (congratulations), Gulbransen did his review in the form of the multiple choice portion of the exam. You can even check your answers. Gulbransen’s exam contains a heavy dose of IP, unlike the exam itself. Here are a few of the IP posts:
- Citizen Media Law Project — discussing Digital Millennium Copyright Act take down notices as used by, or against, the presidential campaigns and how the appeal process does not help campaigns because it takes 10 – 14 days.
- Las Vegas Trademark Attorney — discussing a suit over the Little House on the Prairie trademarks.
- Mass Law Blog — discussing an award of attorney’s fees based upon "advocacy abuse" when plaintiff’s counsel argued outside the claim constructions at trial.
Jones Day v. BlockShopper.com, No. 08 C 4572 (N.D. Ill.) (Darrah, J.).
As I have described in earlier posts (click here, here and here) plaintiff Jones Day sued defendants, BlockShopper LLC and two individuals associated with the website (collectively "Blockshopper"), for allegedly using Jones Day’s service marks and linking to its website in at least two articles discussing Chicago real estate transactions of Jones Day associates. Jones Day claims service mark infringement, Lanham Act false designation of origin, Lanham Act dilution, and state law deceptive trade practices and unfair competition. Plaintiff also moved for a temporary restraining order (“TRO”). The parties stipulated to a TRO which the Court entered ordering defendants not to: 1) use Jones Day’s service mark; 2) use any content from or link to Jones Day’s website; or reference Jones Day in Blockshopper headlines.
Last Friday, Blockshopper filed a motion to dismiss. And several public interest groups — the Electronic Frontier Foundation, Public Knowledge and the Citizen Media Law Project — has sought leave to file this amicus brief supporting Blockshopper’s motion to dismiss. Jones Day opposed the motion, arguing that the three groups and their arguments do not meet any of the Seventh Circuit’s standards for amicus filings. I will keep you posted about the case generally and as to whether the Court enters the amicus brief.
And the case continues to draw fairly strong legal blog interest:
The legal blog commentary continues to run heavily against Jones Day and in favor of Blockshopper.