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NOVA

Posted April 11, 2011 - 11:12am

Here's the District Court's ruling, which was affirmed by the Appellate Court (as cited by Fifth above).

Here’s what I believe to be a reasonable (layperson’s) interpretation of what happened based on the cited court cases:

On February 7, 1946, Champion Play Corporation changed its name to Academy Award Products, Inc.

On April 17 and 18, 1946, Academy Award Products, Inc., filed seventeen applications for registration of the trade-mark "Academy Award". Each application contained the false sworn statement to the effect that the trade-mark was used by the corporation in connection with the goods therein described. One of these applications described watches and clocks and horological instruments.

On March 28, 1950, Academy Award Products, Inc., initiated action against Bulova alleging trademark infringement based on use of the words “Academy Award” in its watch ads.

Bulova counter-sued for damages alleged to have been sustained in consequence of procurement of the trade-mark by false means. The damages consisted of attorneys' fees and disbursements incurred in connection with plaintiff's registration and in defense of the suit.

On December 14, 1951, Academy Award Products’ registration of the trade-mark “Academy Award” was cancelled in a Patent Office proceeding on the grounds that it was procured by a false application.

On October 21, 1952, Bulova agreed to cease and desist from using the words "Academy Award" and "Oscar". This stipulation included a statement that it was the opinion of the Federal Trade Commission that Bulova, by its use of the words and symbol, had "represented directly or by implication that its ‘Academy Award Watches', after examination, testing and comparison with other watches, were awarded the `Oscar' by the Academy of Motion Picture Arts and Sciences for special meritorious achievement as to quality, workmanship, design, time-keeping qualities and other desirable qualities and characteristics; whereas, the aforesaid `Academy Award Watches' have not been examined, tested or compared with other watches nor awarded the `Oscar' by Academy of Motion Picture Arts and Sciences for any meritorious achievements, but the term `Academy Award' and the word `Oscar' are permitted to be used solely on the basis of the monetary consideration provided for in the aforesaid contract entered into by and between Bulova Watch Company, Inc., and Academy of Motion Picture Arts and Sciences."

Academy Award Product’s complaint against Bulova was dismissed with prejudice. However, Bulova’s counterclaim for damages was still open.

On March 8, 1955, the District Court for the Southern District of New York awarded Bulova damages in the amount of $7,913.01. That ruling was later affirmed on appeal.