United States Seventh Circuit

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Bd. of Regents of Univ. of Wisconsin Sys. v. Phoenix Int'l Software, Inc., 08-4164

In 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, district court's dismissal of plaintiff's federal counterclaims on sovereign immunity grounds and grant of Wisconsin's motion for summary judgment is reversed and remanded where: 1) 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; but 2) 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 counterclaims.

Appellate Information

  • Argued 06/04/2009
  • Decided 12/28/2010
  • Published 12/28/2010



  • United States Seventh Circuit


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