IP Law Daily, WORTH NOTING—Other IP law developments, (Jul 22, 2016)

A periodic roundup of other items of interest to the Intellectual Property community:

TRADEMARK—TTAB: A Trademark Examining Attorney’s refusal to register an application to register the mark SMARTSOCKS, in standard characters, for "[h]osiery; [s]ocks" in International Class 25 was affirmed as to the registered mark SMART SOCKS SOCKS THAT THINK ON YOUR FEET and design, the Trademark Trial and Appeal Board has decided. The dominant portion of the registered mark was SMART SOCKS because it appeared in larger lettering than the remainder of the mark. Thus, both the applicant’s SMART SOCKS mark and the registered mark engender highly similar meanings and commercial impressions, the Board explained. However, the refusal to register was reversed as to a second registered mark, HEEL 2 HEAL SMARTSOCKS and design, because the dominant portion of that mark was the visually larger phrase "Heal 2 Heal," whereas the term "SMARTSOCKS" was smaller and relegated to the bottom right corner of the design. Consumers were much more likely to remember the phrase "Heel 2 Heel" in calling for the goods represented by the second of the registered marks (In re America Directo Corporation, July 19, 2016, Lykos, A.).

PATENT—D. Utah: Asia Focus International Group ("AFIG") had sufficient contacts with Utah to allow the federal district court in Salt Lake City to exercise jurisdiction personal for the purpose of patent infringement claims brought by Edizone, the court ruled. 37 sales of allegedly infringing honeycomb-gel insoles by AFIG to customers in Utah amounted to purposeful availment of the Utah forum. Further, the sales constituted purposeful activity by AFIG since it accepted orders it knew were coming from Utah and fulfilled those orders by shipping the product to Utah residences. Finally, AFIG failed to show that the exercise of personal jurisdiction would be constitutionally unreasonable (Edizone, LLC v. Asia Focus Int’l Group, Inc., July 21, 2016, Parrish, J.).

PATENT—E.D. Mich.: There was no clear error in the court’s earlier decision that sales of automotive parts to Michigan residents by Texas defendant Auto Lighthouse through websites allowed the federal district court in Detroit to exercise specific jurisdiction over Auto Lighthouse and two other Texas defendants without offending constitutional due process, the court determined. Thus, the defendants’ motion for reconsideration was denied. The defendants’ arguments, that the court erred by relying on certain Federal Circuit and Second Circuit precedents, were without merit (Ford Global Technologies, LLC v. New World Int’l Inc., July 19, 2016, Michelson, L.).

PATENT—N.D. Ill.: A complaint filed by Atlas IP against the City of Naperville, Illinois, asserting infringement of Atlas IP’s U.S. Patent No. 5,371,734 ("the ’734 patent") for a medium access control ("MAC") protocol for a wireless network failed to allege how the accused products practice, or contain an equivalent of, each limitation of representative claim 1, the federal district court in Chicago has decided. First, the "powering off" limitation is pleaded in the complaint as a conclusory allegation that "a smart meter has the ability to power off" without any other factual support. Additionally, the "frame" limitation only alleged that "the Gatekeeper transmits at least one frame of data to a smart meter…" This allegation, too, was far too conclusory to survive dismissal under Twombly/Iqbal, according to the court. Thus, Naperville’s motion to dismiss was granted (Atlas IP, LLC v. City of Naperville, July 19, 2016, Coleman, S.).

PATENT—W.D. Tex.: The parties were relieved of the court's Order issued March 9, 2016, entering summary judgment in favor of plaintiff David G. Kaden on his claim that defendant Chamisa Arts’ "Trailwise Adjustable Saddle Liners" and "JenXtreme Adjustable Liners" infringe claims one through three and five through twenty of U.S. Patent Number 7,401,454, entitled "Saddle Fitting System and Method," the federal district court in El Paso has ruled. Kaden failed to comply with Rule 4's requirement to serve Chamisa Arts with a summons or complaint, even though Kaden previously served Chamisa Arts’ registered agent, Ms. Smith, with the original summons and complaint, because neither of those documents named Chamisa Arts as a party. Further, the case was dismissed for failure to serve under Rule 4(m) because Kaden failed to demonstrate good cause for his failure to serve Chamisa Arts within 120 days of filing the amended complaint (Kaden v. Chamisa Arts, Inc., July 15, 2016, Briones, D.).

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