University-related trademark law case

October 4, 2011

Case: Board Of Regents Of The University Of Wisconsin System v. Phoenix International Software, Inc. (7th Cir., Aug. 5, 2011) What happened:

This case presents complex questions about the law of trademark and the law of sovereign immunity, as the latter applies to a state university. . . . Their dispute centers around two computer programs, each of which holds the registered trademark “CONDOR.” Their dispute centers around two computer programs, each of which holds the registered trademark “CONDOR.”

Decision: On the trademark issue, the appeals court held that the issue of trademark infringement by the university software product was sufficiently close such that a trial would be needed to decide that issue. On the sovereign immunity issue, the state university waived its sovereign immunity when it filed suit in the federal district court seeking to reverse a decision made by the Trademark Office. Comment: Be careful not to lose sovereign immunity by litigation conduct, such as the filing of lawsuits.