OTR Wheel Engineering, Inc. v. West Worldwide Services, Inc., No. 16-35897 (9th Cir. 2018)
Annotate this CaseOTR filed suit against Defendant West, asserting various claims under the Lanham Act and state law. Primarily at issue on appeal was whether West could be found liable for reverse passing off under the Lanham Act. The Ninth Circuit affirmed the judgment, holding that West was liable for reverse passing off because he did not simply copy OTR's intellectual property but passed off genuine OTR products as his own. In this case, West asked one of OTR's suppliers to provide him with sample tires from OTR's molds; he asked the supplier to remove OTR's identifying information from the tires; and he wanted to use the tires to obtain business from one of OTR's customers. The panel affirmed the district court's conclusion that West did not establish that OTR committed fraud on the United States Patent and Trademark Office, and held that fraud on the PTO must be established by clear and convincing evidence. The panel also affirmed the denial of a new trial on the issue of trade dress validity and the district court's rejection of a proposed jury instruction. The panel addressed additional issues in a concurrently filed memorandum disposition.
Court Description: Lanham Act. The panel affirmed the district court’s judgment after a jury trial, holding defendants liable for reverse passing off under the Lanham Act. The parties were competitors in the business of selling industrial tires. Defendant West asked a supplier of plaintiff OTR to provide him with sample tires from OTR’s molds, and he asked the supplier to remove OTR’s identifying information from the tires so that he could use the tires to obtain business from one of OTR’s customers. The panel held that West could be found liable for reverse passing off because he did not simply copy OTR’s intellectual property, but rather passed off genuine OTR products as his own. The panel affirmed the district court’s conclusion that West did not establish that OTR committed fraud on the United States Patent and Trademark Office. The panel confirmed that fraud on the PTO must be established by clear and convincing evidence. The panel affirmed the district court’s order denying a new trial on the issue of trade dress validity. OTR WHEEL ENG’G V. WEST WORLDWIDE SERVS. 3 The panel affirmed the district court’s rejection of a proposed jury instruction asserting a claim for infringement of an unregistered trade dress. The panel explained that a registered claim converts to an unregistered claim if the registration is invalidated; thus, a plaintiff does not need to separately plead the identical unregistered claim. But where the unregistered claim would cover something more than the registered claim, a plaintiff must put a defendant on notice of such through the pleadings. The panel addressed additional issues in a concurrently filed memorandum disposition.
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