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

Farag v. Defense Threat Reduction Agency, No. 07 C 1688, 2007 WL 2404625 (N.D. Ill. Aug. 15, 2007) (Hart, J.).

Judge Hart dismissed for lack of subject matter jurisdiction plaintiff's suit seeking that the Court order the PTO to place a secrecy order on plaintiff's patent application for a process of separating an isotope from uranium for use in nuclear applications.  Plaintiff's application is about to be published and plaintiff believes that publication of the application would allow use of his process for illicit purposes that might threaten national security.  The Invention Secrecy Act provides a patent applicant the right to appeal the issuance of a secrecy order, but not the right to appeal the denial of a secrecy order.  See 35 U.S.C. Section 181; 35 C.F.R. Section 5.4.  The Invention Secrecy Act also permits a suit for compensatory damages, but only based on damage created by a secrecy order, not the absence of one.  Finally, the Court noted that plaintiff might have a claim pursuant to the Administrative Procedure Act (the "APA"), but the APA requires that the plaintiff by harmed by the agency (PTO) action.  The Court noted that potential threat to national security based upon a review of plaintiff's patent application was too remote and general to create standing pursuant to the APA.  As a result, the Court dismissed plaintiff's complaint.  It is also interesting to note, the Court instructed plaintiff to file any appeal with the Seventh Circuit, instead of the Federal Circuit despite the fact that the case is focused on PTO procedure. 

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AutoZone, Inc. v. Strick, No. 03 C 8152, 2007 WL 683992 (N.D. Ill.  March 1, 2007) (Hart, J.).

Judge Hart denied plaintiffs' motion for a Fed. R. Civ. P. 54(b) entry of final judgment on plaintiffs' Lanham Act and related state law trademark infringement and dilution claims, which the Court dismissed in this opinion.  The Court denied the motion on two grounds.  First, plaintiffs notified the Court of their intent to file the motion 30 days after the Court's order dismissing the claims, but only entered it 37 days later.  The Court noted the Seventh Circuit standard is that a district court generally abuses its discretion by entering a Rule 54(b) judgment when the motion was filed more than 30 days after the underlying order was issued.*  Second, the Court denied the motion on substantive grounds.  Defendants' counterclaims, which were the only claims remaining in suit, involved overlapping factual issues with plaintiffs' dismissed claims.  Defendants sought cancellation of plaintiffs' Zone mark, one of the marks plaintiffs alleged defendants infringed in the dismissed claims.  Additionally, defendants' remaining claims alleged infringement of their Oil Zone mark, a mark that plaintiffs' dismissed claims alleged infringed their AutoZone and Zone marks.

*  The Court also noted that some litigants have argued that the Seventh Circuit standard is no longer good law, but stated that district courts throughout the Seventh Circuit continue to follow it with a string cite.

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AutoZone, Inc. v. Strick, __ F. Supp.2d __, 2006 WL 3626770 (N.D. Ill.  Dec. 7, 2006) (Hart, J.).

Judge Hart granted summary judgment for defendants and dismissed all of plaintiffs' claims in this trademark case.  First, the Court did a detailed analysis of each of the seven likelihood of confusion factors and determined that a reasonable jury could not find a likelihood of confusion between plaintiffs' AutoZone mark and defendants' Oil Zone and Wash Zone marks.  The Court found that plaintiffs' mark was strong, but held that there was not great similarity between the marks, that plaintiffs' and defendants' services were not similar, and that there was no evidence of actual confusion or intentional infringement.  As a result, the Court dismissed plaintiffs' trademark infringement and unfair competition claims.

The Court also dismissed plaintiffs' dilution claim.  Defendants argued that plaintiffs could not prove dilution.  Because plaintiffs bear the burden of proof on dilution, plaintiffs were required to rebut defendants' claim.  Instead of providing evidence of actual or likelihood of dilution, plaintiffs stated they "planned" to present circumstantial evidence of dilution, apparently at trial.  But because plaintiffs did not present any such evidence in their responsive papers, the Court dismissed the dilution claim.

Practice tip:  When responding to a summary judgment motion, make sure to respond to each of your opponent's arguments citing to facts that support you.  Without citing facts, it is difficult to raise an issue of fact.

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