• Opportunity:  Our client, a small software developer, owned a trademark used in connection with mainframe software.  The company filed a petition with the Trademark Trial and Appeal Board’s (TTAB) to cancel an identical trademark registration owned by the board of regents of a major university system for a different type of software.  After the TTAB granted the cancellation petition, the university system sued in federal district court in its home state for reversal.
  • Solution:  When the district court supported the university, we took our client’s claims to the Seventh Circuit Court of Appeals. After a second rehearing the court reversed the district court and found for our client. The circuit court held that the university could have brought a state court action against our client before the cancellation proceedings began or appealed the TTAB decision directly to the Federal Circuit.  By going to the district court, the circuit court concluded that the university voluntarily invoked federal jurisdiction and, hence, waived its sovereign immunity.   
  • Result:  The circuit court reversed the district court’s grant of summary judgment, reinstated our client’s counterclaims and remanded for further proceedings.

Note:  This case is Board of Regents of the University of Wisconsin System v. Phoenix International Software, Inc., 653 F. 3d 448 (7th Cir. 2011)