Board of Regents of the University of Wisconsin System v. Phoenix International Software, Inc.
653 F.3d 448
| 7th Cir. | 2011Background
- Phoenix and the University of Wisconsin System dispute over CONDOR marks; both marks identical; Phoenix registered CONDOR for mainframe-focused software in 1997, Wisconsin registered identical CONDOR for networked, volunteer software; TTAB cancelled Wisconsin’s registration after finding likelihood of confusion; Wisconsin initiated district-court action to overturn TTAB decision while Phoenix asserted Lanham Act counterclaims; district court granted summary judgment for Wisconsin on the cancellation issue and dismissed counterclaims; on appeal, court held Wisconsin waived sovereign immunity under Lapides and reinstated counterclaims, remanding for trial on confusion; court also held that a full merits trial on likelihood of confusion is necessary and that waiver extends to compulsory counterclaims under Rule 13(a).
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Likelihood of confusion between CONDOR marks | Phoenix argues confusion likely given identical marks and overlapping goods | Wisconsin argues limited overlap and high consumer sophistication negate confusion | Remand for trial on likelihood of confusion |
| Wisconsin's sovereign immunity waiver | Phoenix contends Wisconsin waived immunity by filing in district court | Wisconsin contends no waiver occurred, immunity still applies | Wisconsin waived immunity via litigation conduct; counterclaims reinstated |
| Scope of waiver to counterclaims | Counterclaims arise from same transaction as TTAB dispute | Waiver limited to recoupment or same-transaction claims | Waiver extends to compulsory counterclaims under Rule 13(a) relevant to this case |
| Appropriate standard of review in a TTAB-challenge action | De novo review with new evidence permitted; TTAB findings deferred | Standard should respect TTAB’s substantial evidence and deferential aspects | De novo review with ability to consider new evidence; reversal on summary judgment |
Key Cases Cited
- AutoZone, Inc. v. Strick, 543 F.3d 923 (7th Cir. 2008) (likelihood of confusion framework and market use considerations)
- CAE, Inc. v. Clean Air Eng’g, Inc., 267 F.3d 660 (7th Cir.2001) (new action in district court allows broader record and relief)
- Octocom Systems, Inc. v. Houston Computer Services, Inc., 918 F.2d 937 (Fed. Cir.1990) (registrations cover similar products; use of registration scope matters)
- Lapides v. Bd. of Regents of Univ. Sys. of Ga., 535 U.S. 613 (U.S. 2002) (waiver by voluntary litigation conduct when state removes to federal court)
- Gardner v. New Jersey, 329 U.S. 565 (U.S. 1947) (state waives immunity by filing claims for adjudication in federal court)
- College Savings Bank v. Florida Prepaid Postsecondary Educ. Expense Bd., 527 U.S. 666 (U.S. 1999) (state immunity and the limits of constructive waiver; explicit vs. litigation-based waiver)
- Florida Prepaid Postsecondary Educ. Expense Board v. College Savings Bank, 527 U.S. 627 (U.S. 1999) (TRCA and State immunity discussion; foreign vs. state immunity)
- New Hampshire v. Ramsey, 366 F.3d 1 (1st Cir. 2004) (state participation in federal proceedings can waive immunity)
- United States v. Metropolitan St. Louis Sewer Dist., 578 F.3d 722 (8th Cir. 2009) (state waiver by litigation conduct in enforcement context)