TTABlog Recommended Reading: Baird on 2005 CAFC Trademark Decisions

Steve Baird of Minneapolis-based Winthrop & Weinstine has published an article reviewing the CAFC's trademark decisions for the year 2005, in which he skillfully summarizes and comments on the court's dozen rulings. Stephen R. Baird, "2005 Trademark Decisions of the Federal Circuit," 55 Am. U. Law Rev. 1263 (May 2006).


Mr. Baird, a former clerk to Senior Judge Wilson Cowen of the CAFC, observes:

"The Federal Circuit was not as prolific in 2005 as compared to past years in issuing trademark opinions. The court chose to issue precedential trademark decisions in only six cases. Only one of the cases -- the SKF USA decision concerning gray mark goods -- was identified by the court as involving an issue of first impression, namely whether the differences between domestic goods and gray market goods must be physically manifested in the product or packaging in order to qualify as 'materially different' and thus infringing. While none of the 2005 Federal Circuit trademark cases can fairly be described as groundbreaking, they do advance the court's growing and important body of trademark law."

Nine of the CAFC's 12 decisions concerned the TTAB and five of the nine were deemed precedential. The court affirmed six TTAB rulings, affirmed two in part, and vacated one, as listed below (linked to the corresponding TTABlog posting).

Affirmed:

• In re Stereotaxis Inc. [precedential]
• Stoller v. Northern Telepresence Corp.
• In re Rath [precedential]
• In re Precision Cuts, Inc.
• Stoller v. Hyperstealth Biotechnology Corp.
• In re Innovation Development Group

Affirmed in part:

• In re Steelbuilding.com [precedential]
• Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772 [precedential]

Vacated:

• Mayer/Berkshire Corp. v. Berkshire Fashions Inc. [precedential]

Steve will be a speaker at the upcoming 2006 Midwest IP Institute in Minneapolis (September 25 and 26), where he, along with Commissioner of Trademarks Lynne G. Beresford, will discuss "The Year in Trademark Law." (download brochure here).


Text Copyright John L. Welch 2006.