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Media Alerts - Swatch v. Beehive - Fourth Circuit
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February 20, 2014
  Swatch v. Beehive - Fourth Circuit
Headline: Fourth Circuit Reminds District Courts to "Watch" Standard of Review

Area of Law: Trademark

Issue Presented: Whether a District Court reviews an appeal from the Trademark Trial and Appeal Board ("TTAB") with a "de novo" or hybrid standard of review.

Brief Summary: Beehive registered "Swap" with the United States Patent and Trademark Office ("PTO") for use with its interchangeable watch line. Swatch objected to Beehive's application to register the mark, alleging likelihood of confusion, mere descriptiveness, and trademark dilution. After the Trademark Trial and Appeal Board rejected Swatch's claims, Swatch filed suit in the Eastern District of Virginia, re-alleging the PTO claims and alleging related infringement and unfair competition claims. The District Court affirmed the TTAB's decision and dismissed Swatch's claims by using a "hybrid" standard of review." Under this hybrid standard, the District Court acted as an appellate court in reviewing the TTAB's findings and acted as a trial court in examining the new claims.

The United States Court of Appeals for the Fourth Circuit agreed with the District Court's conclusion that Swap did not infringe Swatch's trademark. However, the court rejected the District Court's standard of review. The court noted that 15 U.S.C. § 1071(b), which allowed Swatch to file in federal court, required the District Court to review both the TTAB record and any new evidence submitted by the parties de novo and to act as finder of fact. The court found that although the District Court erred in using a deferential standard in reviewing the TTAB record, the District Court, in essence, had to engage in a de novo review in order to affirm the TTAB's decision. For this reason, the court affirmed the decision.

For the full text of this opinion, please click here

Panel: Judges NIEMEYER, KING, and DUNCAN

Date of Issued Opinion: 01/07/2014

Docket Number: No. 12-2126

Decided: Affirmed

Case Alert Author: Whitney C. Levandusky

Counsel: Jeffrey A. Lindenbaum, COLLEN IP, INTELLECTUAL PROPERTY LAW, PC, Ossining, New York, for Appellant. William Jerome Utermohlen, OLIFF & BERRIDGE, PLC, Alexandria, Virginia, for Appellee

Author of Opinion: Duncan, J.

Case Alert Circuit Supervisor: Professor Renée Hutchins

Edited: 02/20/2014 at 01:49 PM by Renee Hutchins

    Posted By: Renee Hutchins @ 02/20/2014 01:38 PM     4th Circuit  

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