Welsh v. Big Ten Conf., Inc., No. 08 C 1342, Slip Op. (N.D. Ill. Nov. 21, 2008) (Gottschall, J.).
Judge Gottschall granted defendant the Big Ten Conference’s motion to dismiss plaintiff’s complaint, but denied the Big Ten’s motion for its attorney’s fees. Plaintiff claimed that it presented the Big Ten with a trade secret business plan for a Big Ten television network named the "Big Ten Network." The Big Ten allegedly told plaintiff it was not interested and then several years later started the Big Ten Network using plaintiff’s trade secrets, including the Big Ten Network name. Plaintiff claimed that the Big Ten violated § 38 of the Lanham Act by filing a false declaration with the PTO stating that the Big Ten had the sole right to use the Big Ten Network mark in commerce. Plaintiff argued that the Big Ten should have disclosed plaintiff’s trade secret rights in the mark. But the Court held that even if plaintiff could establish trade secret rights, the Seventh Circuit had held that it was "far from clear" whether trade secret claims fall within the scope of § 38, which is directed to statements about ownership, as opposed to statements about use in commerce. Additionally, the Court held that plaintiff’s alleged development of the name did not necessarily grant plaintiff any rights in the trademark. Trademark rights are granted based upon use, not discovery or invention. And inclusion in a business plan is not a "use in commerce." Having dismissed plaintiff’s federal claim and noting that the parties were not diverse, the Court declined to exercise supplemental jurisdiction over the remaining state law claims and dismissed the case.
The Court denied the Big Ten’s request for its fees. First, the case was resolved on a motion to dismiss filed two months after the complaint and while plaintiff’s arguments lost, the theory had not been "squarely rejected by the Seventh Circuit." As such, plaintiff’s suit could not be deemed "oppressive" as is required for an award of fees.