Knobbe Martens

Not Clear Enough: The TTAB’s Standard for the Registrability of All-Purpose Word Marks Lacked Clarity

Justin J. Gillett & Susan E. Pratt, Ph.D.

IN RE: ERIK BRUNETTI

Before Lourie, Dyk, and Reyna. Appeal from the Trademark Trial and Appeal Board.

Summary:  The Federal Circuit vacated and remanded a decision of the Trademark Trial and Appeal Board (TTAB) refusing to register a commonplace word because the TTAB’s decision lacked clarity.


Words Matter: “Identical” Does Not Mean “Identical to a Portion Of”

Douglas B. Wentzel & Tyler S. Cox

LABORATORY CORPORATION OF AMERICA HOLDINGS v. QIAGEN SCIENCES LLC

Before Lourie, Dyk, and Cunningham.  Appeal from the United States District Court for the District of Delaware.

Summary: The Federal Circuit reversed the district court’s denial of JMOL of non-infringement, which rested on an incorrect construction of “identical” and was not supported by substantial evidence.


Bait, Switch, and Retrial: Federal Circuit Rebukes Trial Arguments That Reneged on Prior Representations

Daniel Kiang & Nicole E. Kim

MAGĒMĀ TECHNOLOGY LLC v. PHILLIPS 66

Before Moore, Stoll, and Bumb. Appeal from the District Court for the Southern District of Texas.

Summary: A district court abused its discretion by permitting a defendant to argue to a jury that actual testing was required to show infringement, after the same party successfully opposed a motion to compel by representing such testing was not necessary.


The Consequences of Converting Voluntary Dismissals

Jacob R. Rosenbaum & Jamal Perry

FUTURE LINK SYSTEMS, LLC v. REALTEK SEMICONDUCTOR CORPORATION

Before Reyna, Bryson, and Stoll.  Appeal from the United States District Court for the Western District of Texas.

Summary: The district court’s conversion of the plaintiff’s voluntary dismissal to a dismissal with prejudice made the defendant the prevailing party.

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