Phase Forward Inc. v. Mary Noel Adams (PDF) 2007 U.S. Dist. LEXIS 56022 Decided July 24, 2007 Judge Fogel Phase Forward (PFI) has a registered trademark in Ã¢â?¬Å?Phase ForwardÃ¢â?¬Â? for Ã¢â?¬Å?computer software used in the management of clinical trials of pharmaceutical products and medial devices and management of data resulting therefrom.Ã¢â?¬Â? Adams filed an application to register the mark Ã¢â?¬Å?Phase ForwardÃ¢â?¬Â? for Ã¢â?¬Å?consultation services in the fields of product management, marketing and business planning.Ã¢â?¬Â? PFI filed an opposition after Adams ignored a cease-and-desist letter. The Trademark Trial and Appeal Board (TTAB) dismissed the opposition. PFI appealed to ND Cal. PFI filed a compliant for: (1) federal trademark infringement (2) federal unfair competition (3) federal trademark dilution (4) California trademark infringement (5) California trademark dilution (6) California unfair competition (7) California common law trademark infringement and unfair competition (8) a request for judicial review of the decision by the TTAB PFI submitted new evidence of infringement as allowed because Ã¢â?¬Å?[a] party appealing a decision of the TTAB under 15 U.S.C. 1071(b)(1) is permitted to introduce new evidence to the district court.Ã¢â?¬Â? The new evidence presented a question of material fact so summary judgment on claims 1, 2, 4, 6, 7, and 8 was denied. PFI then conceded that claim 3 should be dismissed because it cannot meet
the more rigorous standards set forth in the Trademark Dilution Revision Act (Ã¢â?¬Å?TDRAÃ¢â?¬Â?), and thus [PFI] agrees to dismiss Count III.
However, California trademark dilution still allows for the concept of Ã¢â?¬Å?niche fame.Ã¢â?¬Â? One of the large changes to the TDRA was the elimination of Ã¢â?¬Å?niche fame.Ã¢â?¬Â? As such, summary judgment was inappropriate for claim 5. Holding: Summary judgment GRANTED for Claim 3; DENIED for the rest.dis