Chicago IP Attorney & Lawyer : R. David Donoghue : Chicago IP Litigation Blog

Judge Kennelly awarded defendant approximately $350,000 in attorney's fees, costs and interest, based upon defendant's fee petition. The Court previously held that plaintiff's “Beef Stick” and “Turkey Stick” marks were generic and ordered their cancellation -- click here for more on this case in the Blog's archives. The Court also denied plaintiff's motion for reconsideration of the genericness decision and held that defendant had a right to its reasonable attorney's fees and costs because the case was exceptional. There were several noteworthy rulings in the opinion:

• The Court held that defendant was owned not just its fees from the litigation, but also from the related TTAB because the substantive work and research in the earlier TTAB proceeding formed the core of defendant's successful motion for summary judgment of genericness. It did not matter that defendant initiated the TTAB proceeding.

• The Court awarded defendant its attorney's fees for time spent searching the internet for third party uses of “Beef Stick” and “Turkey Stick.” Internet searching was not clerical work because review of each use of the marks required legal analysis. Furthermore, the Court relied on the fruits of that research in granting summary judgment.

• The Court denied attorney's fees for work related to the Seventh Circuit's mediation program. The Seventh Circuit appeal was a separate proceeding and, therefore, it was not appropriate for the Court to award fees for work done that did not further this case, as the work in the TTAB proceeding did.

• The Court held that an administrative charge of 4% of an attorney's billings was reasonable and awarded it as part of attorney's fees, as opposed to costs. Defendant's counsel used the 4% administrative charge as a standard billing practice, instead of tracking long-distance telephone, copying, faxing and other incidental charges for each client and case. The Court held that 4% was a modest amount and was an “appropriate device” for estimating fees without incurring substantial overhead for monitoring those fees precisely.

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Several unrelated legal stories that are worth a read:

• An excellent Illinois Business Law Journal article regarding whether Google is losing its trademark to genericide.  It concludes that Google's mark is relatively safe, partly because Google's trademark is identical to its domain name.*
  
• Patent Troll Tracker has been unmasked.  The unmasking was based, at least in part, on Ray Niro's bounty for Troll Tracker's name.  As would be expected, Troll Tracker unmasked himself with class and a sense of humor.  He is taking a few weeks off from blogging to decide whether to continue.  I hope he decides to continue.  Troll Tracker is a powerful voice on some complex issues, and he is right that it is great to see another inhouse legal blogger.  Plus, it would be a shame for Troll Tracker to disappear just after Ron Coleman finally discovered him. 
  
• Blawg Review #148 is up at Blawg IT.  In addition to the usual links to law blog posts, Brett helps us smell the electronic roses with numerous non-legal video clips.

*  Hat tip to Michael Atkins at the Seattle Trademark Blog for pointing out the article during his Trademark Dilution Weekend.

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Hickory Farms, Inc. v. Snackmasters, Inc., No. 05 C 4541, 2007 WL 1576124 (N.D. Ill. May 29, 2007) (Kennelly, J.).

Judge Kennelly denied plaintiff’s motion for reconsideration of the Court’s decision that plaintiff’s "Beef Stick" and "Turkey Stick" marks were generic and the Court’s cancellation of the Beef Stick mark (you can read more about that opinion in the Blog’s archives). The Court denied plaintiff’s argument that it should be given more time, pursuant to Fed. R. Civ. P. 56(f) to conduct a survey to show that the marks are not generic. But the Court reasoned that plaintiff was free to conduct such a survey in the fourteen months of discovery leading up to defendant’s summary judgment motion. Furthermore, in its responsive briefing plaintiff specifically stated that plaintiff would “not seek to delay the briefing of this matter with its own survey at this time.” Instead, plaintiff suggested that it would conduct a survey if the Court denied defendant’s summary judgment motion. The Court held that after these statements, plaintiff’s current request to perform a survey was almost “frivolous.”

The Court also held that plaintiff’s evidence of its advertising investment and market share had not effect on the Court’s ruling that the marks were generic. A company’s marketing and advertising expenditures cannot make a mark less generic. Additionally, the fact that there is another generic term (summer sausage) for beef sticks and turkey sticks does not mean that beef stick and turkey stick cannot also be generic.

Practice Tip:  If you think you need evidence to survive summary judgment make your Rule 56(f) motion before or with your response brief.  Do not wait for a motion for reconsideration.

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Hickory Farms, Inc. v. Snackmasters, Inc., No. 05 C 4541, 2007 WL 772919 (N.D. Ill. Mar. 8, 2007) (Kennelly, J.).

Judge Kennelly held that plaintiff's "Beef Stick" and "Turkey Stick" marks were generic and canceled the Beef Stick mark, plaintiff had already let its "Turkey Stick" registration lapse.  Plaintiff alleged that defendant infringed its marks by marketing defendant's beef and turkey snacks in stick forms and labeling them "Beef Sticks" and "Turkey Sticks," respectively.  But defendant countered with evidence that numerous companies use the terms to refer to meat products sold sell in stick form.  For example, Trader Joe's, Flat Iron, Jimmy Dean, Slim Jim and Tombstone all sell meat stick products using the marks.  The Court held that the terms were generic because they name a class of goods -- meat packaged in a stick form.  The Court also noted that "it [was] difficult to imagine what else a seller would call a beef or turkey product packaged in stick form."

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McKillup Indus., Inc. v. Integrated Label Corp., No. 06 C 3279, 2006 WL 3775954 (N.D. Ill. Dec. 19, 2006) (Bucklo, J.).

Judge Bucklo denied summary judgment that defendant's "integrated labels," "integrated cards" and "integrated forms" marks were generic.  Plaintiff argued that the marks were generic based upon the separate dictionary definitions of "integrated" and "labels/cards/forms" (although there was no dictionary definition of either of the three whole marks) and evidence that competitors use the term, including a Google search of each of the marks.

The Court cited Door Systems, Inc. v. Pro-Line Door Systems, Inc., 83 F.3d 169 (7th Cir. 1996) for the proposition that the fact that a mark's component words are in the dictionary "cannot count for much."  Id. at 171.  In Door Systems, the Seventh Circuit held that "Seven-Up" was not generic even though its component words were.  Similarly, the Court held that the fact that "integrated," "label," "card" and "form" were defined in the dictionary did not weigh in favor of a genericness finding.

With respect to the evidence of the terms' use by competitors, the Court held that the limited evidence presented, which included use of other terms to refer to the products, was not sufficient to warrant summary judgment of genericness.  It was not clear from the evidence how far the alleged generic use extended into the relevant public perception or any specific geographic region.  As a result, summary judgment was denied.

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