The federal district court in Madison, Wisconsin erred by finding, as a matter of law, that the University of Wisconsin's registered CONDOR mark for computer software was not likely to be confused with a software company's previously registered CONDOR mark, according to the U.S. Court of Appeals in Chicago. A petition by the software company to cancel the university's registration had been granted by the Trademark Trial and Appeal Board. On review, the district court improperly rejected the TTAB's factual findings and misapplied the likelihood of confusion test (TRADEMARK LAW GUIDE ¶60,340). The appellate court affirmed, however, the district court's dismissal of the software company's trademark infringement counterclaims on sovereign immunity grounds (TRADEMARK LAW GUIDE ¶60,313).

Likelihood of Confusion

In the cancellation proceeding, the TTAB had determined that the parties' software products were sufficiently related for confusion to be likely. The company's CONDOR registration --obtained in 1997 --described the underlying software as "computer software for on-line programming development, library management and systems utilities functioning on mainframe systems." The university's CONDOR registration --obtained in 2001 --was for "computer network operating system software, downloaded from a global computer network, that delivers large amounts of computational power by utilizing idle computing resources in a network of individual computer workstations."

Although the software company's goods were used in a mainframe environment, and the university's goods were used in a network of individual computer workstations, the company presented evidence that its software was usable beyond the mainframe environment and could be run on a workstation or a network of workstations. In addition, both programs were downloadable. The TTAB concluded that the marks were identical and that both products performed similar functions, such that even sophisticated purchasers were likely to believe there was some relationship or association between the sources of the products.

The district court's review of the TTAB's decision was considered de novo when the parties presented new evidence and asserted additional claims, the appellate court noted. The university had presented new evidence --particularly with regard to the sophistication of purchasers. However, that evidence did not render the TTAB's findings immaterial. The district court was required to afford deference to the fact findings of the TTAB, the appellate court said. Thus, the TTAB's findings were reinstated.

The university's new evidence raised genuine issues of material fact. Therefore, the district court's entry of summary judgment in the university's favor was reversed, and the case was remanded for trial of the issue of likelihood of confusion.

Sovereign Immunity

Although the software company could go forward with its administrative action to cancel the university's registration, the software company could not pursue a civil action for trademark infringement against the university, the appellate court decided. The university --as a branch of the State of Wisconsin --was protected by sovereign immunity under the Eleventh Amendment.

The Trademark Remedy Clarification Act of 1992 did not abrogate the university's immunity, in the court's view. The TRCA was not materially different from the Patent Remedy Act, under which Congress had sought to abrogate states' immunity from patent infringement suits, and which had found unconstitutional by the U.S. Supreme Court in College Savings Bank v. Florida Prepaid Postsecondary Education Expense Board, 527 U.S. 627 (1999).

The university did not waive its immunity by participating in the federal trademark system, the court said. The university's choice to register its mark was otherwise lawful activity, and the company did not and could not suggest that the receipt of trademark registration is specifically conditioned on a waiver of immunity.

Nor did the university waive immunity by filing suit to review the TTAB's cancellation of its CONDOR registration. The university originally had been haled into litigation with the company involuntarily, as a defendant, when the company filed its cancellation petition. The university's decision to pursue an appeal in the district court rather than the appellate court --which it, like private parties to cancellation proceedings, was statutorily entitled to do --gave it the official title of plaintiff, but title was not what mattered for sovereign immunity purposes.

Board of Regents of the University of Wisconsin System, 7th Cir., ¶61,739.