Spin Master, Ltd. v. Zobmondo Entertainment, LLC, 2011 U.S.Dist. LEXIS 25261

This is an exciting sequel to the Would You Rather… 9th Cir. decision I wrote about last year.  In that case, the 9th Cir. said the district court erred in granting a cancellation based on descriptiveness.  This meant defendant’s other grounds for summary judgment- fraud on the PTO- needed to be considered after all.

This decision illustrates just how difficult it is to prove a subjective intent to mislead the PTO in an application (though, to be fair, this didn’t appear to be a particularly close case based on the facts the district court lays out). 

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ProMex, LLC v. Hernandez, 2011 U.S.Dist. LEXIS 21832 (C.D. Cal. 2011)

This case is informative on what could happen when that settlement agreement is breached down the line.  After an initial infringement suit, plaintiff and defendant agreed that defendant could use its mark only in Southern California.  They also agreed plaintiff would abandon another unrelated registration.  Defendant sold outside Southern California so plaintiff sued for infringement and breach of contract.  Defendant said it didn’t have to perform because plaintiff never abandoned its registration.

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