Incontestable - January 2011


In this issue: 1-800, Inc. v. Memorial Eye, P.A., 2010 WL 5149269 (D. Utah Dec. 13, 2010); Bd. of Regents of the Univ. of Wis. Sys. v. Phoenix Software Int’l, Inc., 2010 WL 5295853 (7th Cir. Dec. 28, 2010); Gray v. Novell, Inc., 2011 WL 69373 (11th Cir. Jan. 7, 2011); In re Van Valkenburgh, App. Ser. No. 77025789 (TTAB Jan. 7, 2011); Orouba Agrifoods Processing Co. v. United Food Imps., Canc. No. 92050739 (TTAB Dec. 28, 2010); False-Advertising Wars; and more.

Excerpt from 1-800, Inc. v. Memorial Eye...:

Defendant purchased keywords incorporating plaintiff’s 1-800 CONTACTS trademark that linked to sponsored advertisements for defendant’s competing products, and plaintiff sued for trademark infringement. Defendant argued that plaintiff’s claim was barred by the equitable doctrine of unclean hands because plaintiff itself had purchased other competitors’ trademarks as search-engine keywords to advertise its competing products. But the court held that the unclean hands defense did not apply when the plaintiff’s conduct was not related to the trademark at issue, i.e., plaintiff’s 1-800 CONTACTS trademark.

Plaintiff 1-800, Inc., the market leader in the field of replacement contact lenses, sold its products online under the federally registered trademark 1-800 CONTACTS. Defendant Memorial Eye, P.A., which also sold replacement contact lenses online, purchased keywords incorporating the 1-800 CONTACTS mark from Google and other search engines. When users searched for 1-800 CONTACTS, the search results displayed defendant’s advertisements in the paid sponsored links. Plaintiff objected to defendant’s actions several times over a period of a few years, but defendant continued to purchase the disputed keywords.

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