Trademark infringement action
Bd. of Regents of Univ. of Wisconsin Sys. v. Phoenix Int'l Software, Inc., 08-4164
, concerned the Board of Regents of the University of Wisconsin System's (Wisconsin) action challenging the Trademark Trial and Appeal Board's (TTAB) grant of plaintiff's petition to cancel Wisconsin's registration of the mark "CONDOR" on the grounds that Wisconsin's registration would create confusion in trade.
In reversing and remanding the district court's grant of Wisconsin's
motion for summary judgment, the court held that, because the district
court misapplied the likelihood of confusion test by mistakenly assuming
that the similarity of the products' functions was the dispositive
issue in this case, and improperly rejected the TTAB's factual findings,
plaintiff is entitled to a trial on the likelihood of confusion issue.
However, the court held that the district court properly dismissed
plaintiff's federal counterclaims on sovereign immunity grounds in
holding that Wisconsin is protected by the Eleventh Amendment from
plaintiff's counterclaims and it has not through its appeal from the
TTAB's decision waived its sovereign immunity defense to plaintiff's