WI District Court Finds University of Wisconsin System Immune from Trademark Suit

Holding:

The U.S. District Court for the Western District of Wisconsin in this case regarding plaintiff's trademark "Condor" dismissed defendant's counterclaims for trademark infringement. Plaintiff Board of Regents of the University of Wisconsin System ("Plaintiff") filed this civil action for a review of the Trademark Trial and Appeal Board's decision ("TTAB") that cancelled its trademark. In response, defendant Phoenix Software International, Inc. ("Defendant") filed counterclaims for trademark infringement, among others. The district court granted plaintiff's motion to dismiss counterclaims on the ground of sovereign immunity. Specifically, the district court held that plaintiff enjoys sovereign immunity as a branch of the state and that its immunity has been neither abrogated by the enactment of the Trademark Remedy Clarification Act ("Act"), nor waived by plaintiff's participation in the federal trademark system. In addition, plaintiff did not waive its immunity by filing the present suit because its appeal could not be construed as a voluntary invocation of federal jurisdiction.

Detailed Summary:

Plaintiff filed this civil action seeking review of a decision of the TTAB in which the TTAB cancelled a trademark of plaintiff’s for “CONDOR.” Opinion, pp. 1-2. Defendant filed counterclaims against plaintiff for trademark infringement related to plaintiff’s use of its CONDOR mark. Before the district court was plaintiff’s motion to dismiss defendant’s federal counterclaims on the ground of immunity. Although defendant asserted related state law claims, those claims were dismissed with prejudice pursuant to the parties’ stipulation. Id., citing Dkt. #18.

Plaintiff argued that it is immune from suit under the Eleventh Amendment because it is a branch of the…

More Updates