IP UPDATE
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Go With the Flow: “A” Still Means “One or More”

by | Oct 26, 2023 |

The US Court of Appeals for the Federal Circuit reversed a claim construction that was adopted during an inter partes review (IPR) because the Patent Trial & Appeal Board erred in construing the contested limitation as limited to a single sample rather than including the possibility of plural samples. ABS Global, Inc. v. Cytonome/ST, LLC, Case No. 22-1761 (Fed. Cir. Oct. 19, 2023) (Reyna, Taranto, Stark, JJ.)

ABS and Genus plc (collectively, ABS) filed a petition to institute an IPR on a patent owned by Cytonome. The patent claims microfluidic devices for particle (e.g., cells, molecules and other particles of interest) processing. The claimed devices exploit the principles of laminar flow to hydrodynamically focus particles at a certain point along the flow path for inspection or other purposes. The claimed devices are capable of hydrodynamically focusing the flow of a particle-containing fluid (the sample fluid) by abutting the sample fluid on more than one side with a fluid that does not contain particles (the sheath fluid). Generally, the faster the sheath fluid flows relative to the sample fluid the more the sample fluid’s corresponding cross-section is compressed. Figure 3A of the patent is an example of how the claimed devices use sheath fluid (SF) to focus a sample fluid (S) along a channel (CL):

ABS’s petition argued that the challenged claims were anticipated or obvious at least in view of a prior publication that taught devices with a split sample stream. The Board disagreed, construing the challenged patent claims as directed to a single sample stream and concluding that ABS failed to demonstrate why those of ordinary skill—in view of the art cited in ABS’s petition—would have modified the prior art split sample stream into the claimed single sample stream. ABS appealed.

The Federal Circuit found that the Board erred in construing the challenged claims. In construing the independent claim as being limited to a single sample stream, the Board focused on two limitations: “an inlet configured to receive a sample stream” and “a fluid focusing region configured to focus the sample stream….” In limiting the claim to a single sample stream, the Board relied on the definite article preceding the second recitation of “sample stream” and noted that a plural-allowing interpretation would be inconsistent with a dependent claim that further requires the focusing fluid to be “introduced into the flow channel symmetrically with respect to a centerline of the sample stream.”

The Federal Circuit reversed the Board’s claim construction, concluding that the dependent claim was not inconsistent with a plural-streams interpretation for the independent claim and that the Board committed two errors in construing both claims. First, the Board did not properly apply what the Court refers to as the “general rule,” which is applicable to open-ended “comprising” claims that recite “a” or “an” before a noun. The Court explained that such a limitation should be construed to mean one or more unless context sufficiently indicates otherwise. Second, [...]

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Decoding Algorithms: Structural Sufficiency for Means-Plus-Function Claim Judged From Skilled Artisan’s Perspective

by | Oct 19, 2023 |

The US Court of Appeals for the Federal Circuit reiterated that in the context of construing computer-implemented means-plus-function limitations, if the specification discloses some arguable algorithm, even if a party contends that the algorithm is inadequate, the sufficiency of the purportedly-adequate structure disclosed in the specification must be evaluated in light of the knowledge possessed by a skilled artisan. Sisvel International S. A. v. Sierra Wireless, Inc., Case No. 22-1493 (Fed. Cir. Oct. 6, 2023) (Moore, Clevenger, Chen, JJ.)

Sisvel owns a patent directed to methods of channel coding when transmitting data in radio systems. The patent uses techniques called “link adaptation” and “incremental redundancy,” which are alleged to provide improvement over prior channel coding techniques. Sierra filed a petition for inter partes review (IPR) challenging certain claims as obvious over the Chen reference by itself and challenging those and other claims as obvious over the combination of the Chen and Eriksson references or the combination of the Chen and GSM references. The Patent Trial & Appeal Board found that some challenged claims were obvious based on Chen alone and that other claims were patentable over the proposed combination of references. Both parties appealed.

Sisvel appealed the Board’s unpatentability finding, arguing that Chen failed to disclose a second puncturing pattern. Sisvel also argued that the Board did not provide a sufficiently detailed explanation to support its finding that Chen disclosed the claimed “combining” limitation and ignored Sisvel’s rebuttal arguments. The Federal Circuit disagreed with Sisvel on both counts and affirmed the Board’s determination. Regarding the second puncturing pattern, the Court found that the independent claim required a “first puncturing pattern” and a “second puncturing pattern,” and that Chen expressly described that its coded transmissions are “generated by using punctured codes” and that “[p]uncturing reduces the number of code symbols to be retransmitted.” Therefore, the Court found that substantial evidence supported the Board’s finding that Chen taught a second puncturing pattern. Regarding the “combining” limitation, the Court affirmed the Board’s decision and concluded that Chen’s disclosure of “accumulating the code symbols from the transmitted and retransmitted coded data blocks,” also referred to in Chen as “interleaving,” taught the “combining” limitation. Overall, the Court determined that the Board’s analysis was sufficiently detailed, adequately addressed Sisvel’s related arguments and was supported by substantial evidence.

Sierra appealed the patentability finding, arguing that the Board’s finding that a skilled artisan would not have been motivated to combine Chen and the GSM references was not supported by substantial evidence. Sierra also argued that the Board erroneously found insufficient corresponding structure in the specification for the term “means for detecting.” The Federal Circuit concluded that substantial evidence supported the Board’s finding of a lack of motivation to combine Chen and the GSM references, but that the Board erred in analyzing the “means for detecting” limitation. Regarding motivation to combine, the Court explained that although an IPR petitioner has a low burden of explaining why a skilled artisan would have been motivated to combine various references to form [...]

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A Matter of Style: No Need to Select “Primary” Reference in Obviousness Challenge

by | Oct 19, 2023 |

The US Court of Appeals for the Federal Circuit affirmed an obviousness decision by the Patent Trial & Appeal Board, explaining that nothing requires a petitioner to identify a prior art reference as a “primary reference” in an obviousness challenge. Schwendimann v. Neenah, Inc., Case Nos. 22-1333; -1334; -1427; -1432 (Fed. Cir. Oct. 6, 2023) (Prost, Clevenger, Cunningham, JJ.)

Jodi Schwendimann filed lawsuits accusing Neenah of infringing several patents related to transfer sheets and methods for transferring images onto dark fabrics. Neenah filed several petitions for inter partes review (IPR) challenging various claims based on obviousness. The Board instituted the IPR challenges.

Schwendimann’s patents addressed a method for ensuring that dark images could be seen when transferred onto dark fabrics. Multilayer image transfer sheets were known in the prior art, teaching a two-step process to first apply a light background onto dark fabric and then apply the dark image on top. Schwendimann’s claims described a single-step solution, incorporating a white background, possibly of titanium dioxide, into the image transfer sheet so that a white background and dark image could be applied simultaneously onto a dark fabric.

All of the IPR petitions cited Kronzer as a prior art reference. Kronzer described multilayered image transfer sheets with varying configurations, although it lacked white pigment in a layer to transfer an image onto dark fabric. Another prior art reference, Oez, taught the use of a white pigment, such as titanium dioxide, in multilayered image transfer sheets. Schwendimann did not dispute that Kronzer and Oez taught or suggested all limitations recited in the challenged claims. Instead, she argued that there was no motivation for a skilled artisan to combine the references or to expect that such combination would yield a reasonable expectation of success. The Board considered and addressed each argument, relying on Neenah and Schwendimann’s experts’ testimony and the complementary and compatible nature of the references. The Board found the challenged claims obvious over Kronzer in view of Oez. Schwendimann appealed.

Schwendimann argued that substantial evidence did not support the Board’s findings that a skilled artisan would have been motivated to combine Kronzer and Oez and would have had a reasonable expectation of success in making the proposed combination. The Federal Circuit explained that substantial evidence means “such relevant evidence as a reasonable mind might accept as adequate to support a conclusion” and considered these two arguments together.

The Federal Circuit found that Schwendimann failed to show that the Board’s findings were not supported by “substantial evidence.” Like the Board, the Federal Circuit used both expert witnesses’ testimonies to explain that the references shared a common goal of improving image transfer characteristics. The Court found that Schwendimann’s arguments that Oez taught away from the proposed combination failed because Oez’s disclosure did not discourage a skilled artisan from using white pigment identified in the challenged patents or lead the skilled artisan in a direction divergent from the path taken in the challenged patents. Her argument that adding titanium dioxide into Kronzer’s transfer sheets could [...]

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PTO Proposes Rules Promoting Independence in Board Decision-Making

by | Oct 19, 2023 |

Seeking to bolster the independence of administrative patent judge (APJ) panels when issuing decisions and increase transparency regarding Patent Trial & Appeal Board processes, the US Patent & Trademark Office (PTO) issued a notice of proposed rulemaking concerning the pre-issuance internal circulation and review of decisions. Rules Governing Pre-Issuance Internal Circulation and Review of Decisions Within the Patent Trial and Appeal Board, 88 Fed. Reg. 69578 (Oct. 6, 2023)

The proposed rules were developed in response to a July 2022 request for comments and would refine and codify interim processes and standards that have been in place since May 2022. If adopted, the proposed rules would be codified as Section 43 in Title 37 of the Code of Federal Regulations (37 C.F.R. §§ 43.1-43.6) relating to Board proceedings pending under 37 C.F.R. §§ 41 and 42.

Under the rules in newly proposed §§ 43.3 and 43.4, prior to issuance of a decision by the panel, senior PTO management and non-management APJs at the PTO (as defined in § 43.2) would be barred from communicating, directly or through intermediaries, with any panel member (unless they were themselves panel members) regarding the decision. Limited communications would be permitted for procedural status and generally applicable paneling guidance that don’t directly or otherwise influence the paneling or repaneling of any specific proceeding. The proposed rules would not forbid a panel member from requesting input on a decision prior to issuance from non-panel senior APJs, however. The proposed rules would stipulate that it is within the panel’s sole discretion to adopt any edits, suggestions or feedback from non-panel APJs.

The proposed rules substantially follow the interim processes in place except for a change regarding pre-issuance circulation of decisions to a pool of non-management APJs, known as the circulation judge pool (CPJ). Under the interim process, certain categories of Board decisions are required to be circulated to the CPJ prior to issuance. Those decisions include all America Invents Act (AIA) institution decisions, AIA final written decisions, AIA decisions on rehearing, inter partes reexamination appeal decisions, designated categories of ex parte appeals, ex parte reexamination appeals and reissue appeal decisions and all Board decisions (including AIA and ex parte appeal decisions) following a remand from the US Court of Appeals for the Federal Circuit. Under the proposed rules, circulation to the CJP would be optional.

The PTO will accept comments until December 5, 2023, through the Federal eRulemaking Portal.



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Missed Shot: Lawsuit Against Related Company Doesn’t Toll Prescriptive Period

by | Oct 12, 2023 |

The US Court of Appeals for the Fifth Circuit affirmed a district court’s decision to dismiss claims under the Louisiana Unfair Trade Practices Act (LUTPA), finding that a dispute against a related company did not toll the statute of limitations. Carbon Six Barrels, LLC v. Proof Research, Inc., Case No. 22-30772 (5th Cir. Sept. 29, 2023) (Clement, Elrod, Willett, JJ.)

Proof Research and Carbon Six Barrels both manufacture gun barrels made of carbon fiber. Proof was the first of the parties to enter the market and in 2013 trademarked the unique mottled appearance of its barrels. In 2016, Proof discovered that Carbon Six intended to manufacture and sell similar-looking carbon-fiber barrels and sent a cease-and-desist letter. Carbon Six began production in 2017, sourcing barrel blanks from its sister company McGowen Precision Barrels. Proof filed a trademark infringement suit against McGowen, instead of Carbon Six, in the District of Montana. McGowen initiated a separate proceeding in the Trademark Trial & Appeal Board to cancel Proof’s trademark and was successful in doing so.

After the Board cancelled Proof’s trademark, Carbon Six sued Proof in the Middle District of Louisiana alleging that Proof fraudulently registered its trademark, violated LUTPA, and defamed Carbon Six during the initial litigation and Board proceeding. McGowen brought a similar suit in the District of Montana. Proof asserted several defenses in the lawsuit filed by Carbon Six, including a Rule 12(b)(6) motion to dismiss for failure to state a claim, arguing that Carbon Six’s claims were both untimely and legally insufficient. The district court denied Proof’s other defenses but granted the Rule 12(b)(6) motion, finding that Carbon Six’s claims were time-barred by Louisiana’s one-year prescriptive period and that Carbon Six’s LUTPA claim was also legally insufficient. Carbon Six appealed.

The Fifth Circuit affirmed, explaining that LUTPA has a one-year prescriptive period and that there was no doubt that the violations alleged by Carbon Six occurred more than a year before Carbon Six filed suit in early 2022. The Court reviewed all actions that could potentially give rise to liability under LUTPA and stated that even if any of these acts could give rise to liability, all actions occurred more than a year before Carbon Six’s suit.

Carbon Six attempted to rely on the continuing tort doctrine, alleging that the acts continuously violated LUTPA up until the Board cancelled Proof’s trademark in May 2021. Reviewing Louisiana law, the Fifth Circuit determined that the general principle of a continuing tort is a conduct-based question “asking whether the tortfeasor perpetuates the injury through overt, persistent, and ongoing acts.” The Court agreed with the district court that LUTPA’s prescriptive period is not suspended if a perpetuator of fraud fails to correct false statements, as that proposition would transform almost every business dispute into a continuing tort. The Fifth Circuit also determined that the district court’s conclusion that Carbon Six could not recover for Proof’s lawsuit against McGowan was correct, because the law supported the position that a sister corporation cannot sue on behalf [...]

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Just How Similar Must Competing Marks Be to Survive Dismissal?

by | Oct 5, 2023 |

After a de novo review, the US Court of Appeals for the Sixth Circuit affirmed in part and reversed in part a district court’s motion to dismiss, finding the competing marks sufficiently similar to avoid dismissal, and the attorneys’ fee award. Bliss Collection, LLC v. Latham Companies, LLC, Case Nos. 21-5723; -5361 (6th Cir. Sept 21, 2023) (Mathis, Bush, JJ.) (Larsen, J., dissenting).

This case between Bliss and Latham was the latest installment in a series of cases between the children’s clothing companies after a Bliss founder left to start Latham as a competitor company. Here, Bliss sued Latham for infringement of three trademarks for Bliss’s stylized lowercase “b” logo, appearing as if stitched out in thread. Bliss sued for federal copyright infringement, federal trademark infringement, federal trade dress infringement, federal false designation of origin and misappropriation of source, federal unfair competition, trademark under Kentucky law and unfair competition under Kentucky law.

The competing marks are depicted below:

Latham moved to dismiss, and the district court dismissed the federal copyright and trade dress claims. The district court did not initially dismiss the remaining claims, but later did so after a motion for reconsideration. The district court determined that Latham was not entitled to attorneys’ fees because the case was not exceptional, and Bliss had brought the suit in good faith. Bliss appealed the federal trademark infringement, federal trade dress infringement and trademark infringement under Kentucky common law only.

The Sixth Circuit focused its analysis on whether the amended complaint properly alleged that Latham’s logo was a use of Bliss’s trademark. The Court noted that dismissal was not warranted for anything but the most extreme cases, concluded that this was not such a case and reversed.

The Sixth Circuit found that Latham used the accused mark “in a trademark way” (i.e., to identify goods). Then, weighing the Frisch factors to determine likelihood of confusion between the marks, the Court found that the similarity between the marks and their “impression” favored Bliss despite the fact “that the logos share no words or homophones.” Overall, the Court found that five of the eight factors favored Bliss and that two were neutral. Only the likelihood of purchaser care factor was found to favor Latham. The Court thus found that Bliss had plausibly alleged a likelihood of confusion and that its complaint stated a federal trademark infringement claim. Applying the same logic to the state trademark claims, the Court also reversed the dismissal of those claims.

The Sixth Circuit affirmed the dismissal of the trade dress claim, however, because Bliss failed in its affirmative duty to plead facts in support of nonfunctional trade dress.

Turning to the attorneys’ fee award, the Sixth Circuit found that the mere fact that Bliss sued Latham was not sufficient to warrant an “exceptional” case finding in terms of an award for fees. The Court was also unpersuaded that the trade dress claim was worthy of a fee award as [...]

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Beware Enablement of Genus Antibody Claims

by | Oct 5, 2023 |

The US Court of Appeals for the Federal Circuit invalidated yet another set of antibody genus claims, finding the case “materially indistinguishable” from those in the 2023 Supreme Court of the United States case, Amgen v. Sanofi. The Federal Circuit concluded that patent claims covering a class of antibodies targeting functions of blood clotting factors were invalid for lack of enablement, echoing the reasoning followed by fellow Circuit Judge Dyk, who sat by designation in the district court. Baxalta Inc. and Baxalta GMBH v. Genentech, Inc., Case No. 2022-1461 (Fed. Cir. Sept. 20, 2023) (Moore, Clevenger, Chen, JJ.)

This case involves Baxalta’s patent covering antibody preparations that bind to blood clotting Factors IX/IXa and thereby increase the procoagulant activity of Factor IXa. This in turn activates another blood clotting factor, Factor X, that is useful to treat hemophilia, particularly in patients who develop inhibitors to blood clotting Factor VIII. The claim at issue recited “[a]n isolated antibody or antibody fragment thereof that binds Factor IX or Factor IXa and increases procoagulant activity of Factor IXa.”

Baxalta sued Genentech for infringement. In a prior appeal involving claim construction, the Federal Circuit vacated the district court’s grant of summary judgment of noninfringement and remanded for further proceedings. On remand, the district court granted Genentech’s motion for summary judgment for lack of enablement. Baxalta appealed.

Baxalta challenged the summary judgment of invalidity on enablement. Baxalta argued that a skilled artisan could make the full scope of the claimed antibodies without undue experimentation. With reference to the subject patent’s disclosure of using a prior art method known as the hybridoma technique for generating Factors IX/IXa antibodies, Baxalta argued that using routine screenings to find the antibodies exhibiting the claimed functions (i.e., those that bind Factors IX/IXa and increase procoagulant activity of Factor IXa) was within the skill of a skilled artisan without undue experimentation.

The Federal Circuit, citing Amgen, explained that the enablement standard under Section 112(a) requires that “the specification [] enable the full scope of the invention as defined by its claims,” allowing for “a reasonable amount of experimentation.” The Court explained that in Amgen, the patents at issue generically claimed all antibodies that bind to specific amino acid residues on a protein and blocked the protein from binding to LDL receptors. The Court observed that while the Amgen patent disclosed amino acid sequences of 26 antibodies, the claim scope could cover millions. Similarly, the Amgen patent disclosed a roadmap and another conservative substitution method for generating new antibodies and testing them for the claimed functions. In Amgen, the Supreme Court held that such methods were nothing more than “trial-and-error experimentation,” which, in the absence of “some general quality . . . running through the class that gives it a peculiar fitness for the particular purpose,” failed to enable the full scope in that case.

The Federal Circuit found the facts in this case “materially indistinguishable” from Amgen. Like the claims at issue in Amgen, Baxalta’s patent claims all [...]

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No Need To Be Explicit: Implicit Finding of Expectation of Success Is Sufficient

by | Oct 5, 2023 |

The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board unpatentability decision, finding that a combination of prior art references only requires an implicit indication of a reasonable expectation of success. Elekta Ltd. v. Zap Surgical Systems, Case No. 21-1985 (Fed. Cir. Sept. 21, 2023) (Reyna, Stoll, Stark JJ.)

Elekta owns a patent directed to a “method and apparatus for treatment by ionizing radiation.” The claimed invention uses a radiation source such as a linear accelerator (linac) mounted on concentric rings to deliver a beam of ionizing radiation to a target area on the patient. Zap challenged the patent as obvious in an inter partes review (IPR) proceeding. In its Final Written Decision, the Board agreed, concluding that a skilled artisan would have been motivated to combine the asserted prior art references. Elekta appealed.

Elekta raised three arguments on appeal:

  1. The Board’s findings on motivation to combine were not supported by substantial evidence.
  2. The Board failed to make any findings (explicit or implicit) on a reasonable expectation of success.
  3. Even if the Board made such findings, they were not supported by substantial evidence.

The Federal Circuit first considered the issue of motivation to combine the prior art references disclosing radiation imagery with references disclosing radiation therapy, noting that the obviousness determination does not always require the prior art to expressly state a motivation for every obviousness combination. Elekta had challenged the asserted combination based on a physical impracticality in combining the art due to the weight of the linac. The Board, however, disagreed largely because of the level of skill in the art in addition to its definition of the relevant field as one that “includes the engineering design of sturdy mechanical apparatuses capable of rotationally manipulating heavy devices.” The Court found that the Board’s finding of motivation to combine was supported by substantial evidence, including the prosecution history, the prior art teaching and the expert testimony of record.

The Federal Circuit next considered Elekta’s argument that the Board erred by failing to articulate findings on reasonable expectation of success. The Court explained that “an obviousness determination requires finding that a person of ordinary skill in the art would have had a reasonable expectation of success,” referring to “the likelihood of success in combining references to meet the limitations of the claimed invention.” The Court concluded, however, that unlike the motivation to combine determination, which must be an explicit analysis under KSR, a finding of reasonable expectation of success may be implicit. The Court acknowledged that this could be seen as being in tension with its review of Board determinations under the Administrative Procedure Act but concluded that “there is no such tension where the Board makes an implicit finding on reasonable expectation of success by considering and addressing other, intertwined arguments, including . . . those [regarding] a motivation to combine.”

Finally, the Federal Circuit addressed Elekta’s argument that, even if the Board made an implicit finding on reasonable expectation of [...]

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Seeking Harmony: Supreme Court to Consider Retrospective Relief for Timely Copyright Claims Under Discovery Rule

by | Oct 5, 2023 |

The Supreme Court of the United States agreed to consider whether a copyright plaintiff’s timely claim under the discovery rule is subject to retrospective relief for infringement occurring more than three years before the suit was filed. Warner Chappell Music, et al. v. Nealy, Case No. 22-1078 (Supr. Ct., Sept. 29, 2023) (certiorari granted). The specific question presented is as follows:

Whether, under the discovery accrual rule applied by the circuit courts and the Copyright Act’s statute of limitations for civil actions, 17 U. S. C. §507(b), a copyright plaintiff can recover damages for acts that allegedly occurred more than three years before the filing of a lawsuit.

Music Specialist and Sherman Nealy (collectively, Nealy) filed a copyright infringement suit against Warner alleging that Warner was using Nealy’s musical works based on invalid third-party licenses and in violation of 17 U.S.C. § 501. The alleged copyright infringement occurred as early as 10 years before Nealy filed the lawsuit. The district court denied Warner’s motion for summary judgment on statute of limitation grounds, finding that there was a genuine dispute of material fact regarding when Nealy’s claim accrual occurred. In a separate order, the district court certified for interlocutory appeal whether “damages in this copyright action are limited to the three-year lookback period as calculated from the date of the filing of the Complaint pursuant to the Copyright Act and Petrella.” Warner appealed.

The US Court of Appeals for the Eleventh Circuit agreed with the district court, issuing a decision that where a copyright plaintiff has a timely claim for infringement occurring more than three years before the filing of the lawsuit, the plaintiff may obtain retrospective relief for that infringement.

The Eleventh Circuit’s approach specifically disagreed with the Second Circuit’s approach to the application of the discovery rule, thereby creating a circuit split.



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What’s Kühler Than Kühl? No Likelihood of Confusion

by | Sep 28, 2023 |

Addressing unfair competition claims under the Lanham Act, the US Court of Appeals for the Tenth Circuit concluded that no reasonable juror would confuse an alcohol distributer’s use of the word “kühl” with use of a similar mark by a clothing company. Alfwear, Inc. v. Mast-Jägermeister US, Inc., Case No. 21-4029 (Fed. Cir. Sept. 7, 2023) (Holmes, Kelly, Carson, JJ.)

Alfwear has used the mark KÜHL on its outdoor apparel line since 1993 and has registered the mark in connection with apparel, wine and beer. Mast-Jägermeister US (MJUS), a German herbal liqueur distributor, began incorporating “kühl” into its advertisements on billboards, commercials and digital advertising in phrases such as “kühl as ice” and “drink it ice kühl.” In response, Alfwear filed suit against MJUS, asserting trademark infringement and unfair competition. The district court granted MJUS’s motion for summary judgment, finding that there was no likelihood of confusion because all but one factor for assessing likelihood of confusion supported MJUS. Alfwear appealed.

Alfwear argued that the district court erred by not concluding that MJUS’s use of the word “kühl” was likely to cause confusion with Alfwear’s use of the essentially the same word. To determine whether a likelihood of confusion exists, the following factors must be considered:

  • The degree of similarity between the marks
  • The intent of the alleged infringer in adopting its mark
  • Evidence of actual confusion
  • Similarity of products and manner of marketing
  • The degree of care likely to be exercised by purchasers
  • The strength or weakness of the marks.

The Tenth Circuit found that the two marks were not similar in sound, meaning or appearance, and that MJUS only used “kühl” in association with other MJUS marks. The Court explained that Alfwear often depicts the KÜHL mark alongside a logo of a shield-type shape containing a stylized, snow-covered mountain peak in the colors brown, black and white against a bright blue sky. In contrast, MJUS uses the word “kühl” in phrases such as “kühl shots” or “kühl as ice,” on top of a black or green background and accompanied by a combination of either the mark JÄGERMEISTER, the Jägermeister logo or images of a Jägermeister bottle.

The Tenth Circuit also found that MJUS did not intend to copy Alfwear’s mark, explaining that MJUS was not aware of Alfwear’s trademark when designing the new advertising campaign, and noting that when MJUS became aware of the trademark, MJUS intended to avoid infringement by not placing the mark on its apparel or liquor products. The Court also determined that there was insufficient evidence of actual confusion. Alfwear presented anecdotal evidence from Alfwear executives who had heard about confusion from individuals and survey evidence that demonstrated consumers experienced an approximately 30% chance of confusion. The Court found that the anecdotal evidence was de minimis and found that the survey was not designed properly because the products were not shown to survey participants as they would appear in the marketplace and used leading questions. The Court also found that the two [...]

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