TTAB Likelihood of Confusion Ruling Precludes District Court Relitigation

B&B Hardware, Inc. owns the federally registered trademark SEALTIGHT for aerospace industry fasteners.  Hargis Industries, Inc. tried to register the trademark SEALTITE for construction industry fasteners with the United States Patent and Trademark Office (PTO).  B&B filed an opposition to Hargis’ trademark registration application.  The Trademark Trial and Appeal Board (TTAB) determined that registering Hargis’ SEALTITE would likely cause confusion with B&B’s SEALTIGHT trademark and refused to register Hargis’ mark. 

Concurrently with the TTAB proceeding, B&B sued Hargis for trademark infringement.  The district court refused to accept the TTAB’s likelihood of confusion ruling.  The case was sent to the jury, who found no likelihood of confusion.  The Eight Circuit affirmed the district court decision.  The Supreme Court recently ruled that the TTAB’s likelihood of confusion ruling should have precluded the issue from being relitigated in the district court.

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No Time Lag Allowed in Crediting Electronic Mortgage Payment

When a consumer makes a mortgage payment online, should the mortgage servicer be required to credit the electronic payment on the day the consumer authorizes the payment?  Elena Fridman’s mortgage payment to NYCB Mortgage Company, LLC (NYCB), her mortgage servicer, was due on the first day of each month.  She had a 15 day grace period in which to pay the mortgage before incurring a late fee.  She authorized NYCB to electronically transfer funds from her Bank of America checking account to pay her December 2012 mortgage on Thursday, December 13, 2012, after the 8:00 pm EST cutoff time.  NYCB, following its policies, did not credit Fridman’s mortgage account until Tuesday, December 18, 2012.  NYCB charged Fridman an $88.54 late fee.  Fridman sued NYCB, alleging violation of the Truth in Lending Act (TILA), 15 USC §1639f(a).

Fridman argued that the TILA requires mortgage servicers to credit electronic payments on the day the consumer authorizes the payment.  NYCB argued that electronic payments should be credited when the mortgage servicer receives the funds from the consumer’s external bank account.  The district court agreed with NYCB and granted NYCB’s motion for summary judgment.

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Availability to Provide Services is Not Trademark Use in Commerce

What is “use in commerce” for federal trademark registration application purposes?  David Couture filed a federal trademark application for PLAYDOM on May 30, 2008.  He submitted a screen shot of his single page website to demonstrate his use of the mark in commerce.  The website stated “welcome to We are proud to offer writing and production services for motion picture film, television, and new media. Please feel free to contact us if you are interested:”  (Opinion pdf page 2).  The website also indicated that it was “under construction.” 

The U.S. Patent and Trademark Office (PTO) registered the PLAYDOM trademark on January 31, 2009.  Services were not provided under the PLAYDOM mark until 2010.  Is offering a service, without actually providing the service, use in commerce for the purpose of meeting federal trademark registration application requirements?

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Media Outlet Use of Photo Not a Slam Dunk Fair Use

North Jersey Media Group (NJMG) owes the copyright to the seminal photograph of three firefighters raising the American flag in the rubble of the World Trade Center site on September 11, 2001 (the Work).  On September 11, 2013, Fox News posted a combined image of the Work next to the famous World War II photo of four U.S. Marines raising the American flag of Iwo Jima on the Justice with Judge Jeanine television show Facebook page.  Fox did not seek permission from NJMG before posting the combined image.  NJMG sued Jeanine Pirro and Fox News Network, LLC (collectively “Fox”) for copyright infringement.  Fox argued that their use was a fair use and brought a motion for summary judgment.  The district court denied Fox’s motion for summary judgment.

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