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Bd. of Regents of The Univ. of Wis. v. Phoenix Int'l. Software, Inc.

By Matthew Siegal and William Seymour

You can't sue the king ' unless he lets you, even if he didn't mean to. By challenging the Trademark Trial and Appeal Board's (“TTAB” or “the Board”) decision to cancel its trademark registration for “CONDOR,” the state of Wisconsin unintentionally waived its sovereign immunity and opened itself to a suit for trademark infringement by Phoenix International Software, Inc. (“Phoenix”).

On Aug. 5, 2011, on rehearing, the Seventh Circuit issued its unanimous decision in Bd. of Regents of the Univ. Wisconsin v. Phoenix Int'l. Software, Inc., __ F.3d __, 2011 WL 3436879 (7th Cir. 2011) (“Wisconsin II “), reversing its prior decision and holding that Wisconsin waived sovereign immunity when it filed a suit in federal district court challenging the TTAB's decision to cancel Wisconsin's trademark registration for “CONDOR.” As a result, Phoenix's counterclaims for trademark infringement and false designation of origin were not barred under Wisconsin's inherent sovereign immunity.

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