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http://myemail.constantcontact.com/University-Patent-Activity---Patent-Reform---Commercializing-Life-Science---Firm-Transitions.html?soid=1101656192068&aid=40_MgSaRgFg.

U. Wisconsin Waives Sovereign Immunity in Trademark Dispute

University of Wisconsin’s federal trademark registration for CONDOR (product page) was cancelled by the Trademark Trial and Appeal Board (TTAB) upon petition by a private firm (Phoenix) using the same mark.  Instead of appealing the cancellation from the TTAB to the Court of Appeals for the Federal Circuit (Federal Circuit), U. Wisconsin appealed to district court and Phoenix counter-claimed for trademark infringement.

The district court reserved the cancellation finding by the TTAB and held U. Wisconsin, as a state agency, had sovereign immunity from Phoenix’s counter-claim.  The Federal Circuit disagreed upon appeal.

Had U. Wisconsin stayed on the same train and appealed the TTAB proceeding to the Federal Circuit sovereign immunity would be maintained.  However, since U. Wisconsin initiated a new action in district court the immunity was waved.

As of August 10, 2011 the USPTO still has the U. Wisconsin CONDOR registration as active (TARR Status Page).

Full opinion.

Video: Trademarking a Hypothetical Product

In this example we’ll look at the various mistakes and pitfalls common to branding a new product.

What is the best trademark for this electric grill? A study in U.S. trademark practice.