CHICAGO (CN) – The 7th Circuit will rehear a trademark infringement case, ruling to withdraw its December decision in favor of a university regents board over a private company. Each ruling on the nearly 4-year-old case has reversed a previous decision.
The case involves identically named networking software owned, respectively, by the University of Wisconsin and Phoenix International Software.
Phoenix trademarked CONDOR in 1997 as “computer software for online programming development, library management and system utilities functioning on mainframe systems.” It had used mark unregistered since 1978.
In 2001, the Board of Regents of the University of Wisconsin System registered its mark for software that “delivers a large amount of computational power by utilizing idle computing resources in a network of individual computer workstations.”
After Phoenix balked at the new product, the Trademark Trial and Appeal Board cancelled Wisconsin’s trademark, finding substantial likelihood that consumers would confuse the two products.
The school board filed suit in a Madison, Wis., federal court, winning a reversal from Judge Barbara Crabb, who ruled that the trademark board should have made its decision exclusively on the descriptions of the products in their trademark registrations. Crabb also dismissed Phoenix’s requests for damages, finding that the school was protected by sovereign immunity.
Phoenix appealed, and the 7th Circuit voted 2-1 to reverse in part on Dec. 28. The federal appeals court found that the board had correctly applied a likelihood-of-confusion balancing test and remanded for trial on the confusion issue, but it upheld the District Court’s decision as to sovereign immunity.
In its opinion, the court found no substantial difference between the Trademark Remedy Clarification Act of 1992, under which the claim had been brought, and the Patent Remedy Act. The Patent Remedy Act was previously found unconstitutional by the Supreme Court in Florida Prepaid v. College Savings Band.
Judge Diane Wood dissented, saying that Wisconsin had “effectively waived its sovereign immunity for all matters that might arise in that particular case, including counterclaims” by filing suit in District Court.
Had the case been appealed directly to the appeals court, it would have been limited to the board’s decision, barring Phoenix’s infringement claim, Wood wrote.
On Thursday, the December verdict was set aside a complete panel of the Chicago-based appeals court said it would rehear the case.
Briefs must be filed by March 8, with oral arguments to follow.