Intent to Lose? Be Wary of Pitfalls Involving Intent-to-Use Trademark Applications.
Authors: Bobby Ghajar, Carolyn S. Toto, Mark R. Kendrick
Merger and Acquisitions often involve the acquisition and/or assignment of trademarks. Companies acquiring trademarks must beware of potential problems lurking with intent-to-use (ITU) trademark applications (or applications which started as ITU applications), such as improper assignment or lack of a bona fide intent to use the mark. We review the case law highlighting these issues and provide practice pointers to address these issues.
Ninth Circuit Eliminates Presumption of Irreparable Injury for Plaintiffs Seeking Preliminary Injunctions in Trademark Cases
Authors: Bobby Ghajar, Marcus D. Peterson
Ending years of uncertainty and division among district courts, the Ninth Circuit recently ruled that a trademark plaintiff must establish a likelihood of irreparable harm to obtain a preliminary injunction in a trademark case. In Herb Reed Enterprises, LLC v. Fla. Ent. Mgmt., Inc., Case No. 12-16868 (9th Cir. Dec 2, 2013), the court once and for all eliminated the presumption of irreparable harm that trademark plaintiffs had previously enjoyed upon showing a likelihood of success on the merits.
Act Now to Prevent Loss of Patent Rights in March 16th Change to “First-Inventor-to-File” System
Authors: Patrick A. Doody, Bradford C. Blaise
One of the most significant changes of the 2011 Leahy-Smith America Invents Act (“AIA”) takes effect on March 16, 2013, when the U.S. transitions from a “First-to-Invent” to a “First-Inventor-to-File” patent system, effectively creating a “race to the patent office.” The AIA also considerably broadens the scope of available prior art that may be applied to U.S. patent applications falling under the new first-inventor-to-file system. Further, patents issuing on any such applications may be challenged by third parties using a new opposition-like post-grant review proceeding at the U.S. Patent Office. These and other challenges make it critical to evaluate and adapt your patent filing strategies now in order to prevent a loss of patent rights.
A Covenant Not to Sue May Avoid Invalidity Claims
Authors: Bobby Ghajar, Kelly W. Craven
Last week, in Already, LLC v. Nike, Inc. (opinion attached), the Supreme Court unanimously decided that the voluntary cessation doctrine, most often used when a defendant claims its voluntary compliance moots a case where it is “absolutely clear that the allegedly wrongful behavior would not reasonably be expected to recur,” mooted trademark invalidity counterclaims where the plaintiff entered a sufficiently broad covenant not to sue. Thus, regardless whether Nike provided the covenant not to sue to avoid a vigorous cancellation claim against one of its trademarks, or whether it provided the covenant not to sue because the costs of the litigation outweighed any perceivable benefit of pursuing a case against infringing shoes that were no longer being sold, the choice remained Nike’s to make.
Protect Your Intellectual Property Rights in Myanmar/Burma – Key Steps to Take Now
Authors: Aaron R. Hutman, Mark D. Litvack
This also appeared in Intellectual Property Law360, International Trade Law360 and Public Policy Law360 on November 14, 2012.With the relaxation of sanctions regimes around the world in 2012, Myanmar (also known as Burma) offers opportunities for both small businesses and the largest and most recognized companies around the world. Large or small, companies are finding that Myanmar’s intellectual property (IP) laws generally do not recognize their trademarks and other property. It is necessary to take steps locally to establish and protect IP rights. Implementation of a strategy for protective measures should be at the top of the list of actions for companies considering entry into this opening market.
USPTO Trials: Understanding the Scope and Rules of Discovery
Authors: Bryan P. Collins
Discovery may perhaps be one of the most difficult items for clients, lawyers, and their adversaries alike to deal with, particularly in patent litigation. In its newly issued rules for trial proceedings before the Patent Trial & Appeal Board (“the PTAB”), the U.S. Patent and Trademark Office has attempted to strike a better balance between disclosure of the information needed to properly prepare for and litigate the proceeding, and the costs of obtaining and exchanging such information.
Caution: Tribal Names Not a Free-For-All
Authors: Blaine I. Green, Robert B. Burlingame, Jeffrey Jacobi
The Navajo Nation's recent lawsuit reminds companies that unauthorized use of American Indian tribal names might be considered infringement and might also violate the federal Indian Arts & Crafts Act.
Quickly Clearing a Disputed Trademark
"With limited time to prepare and in the context of an aggressive adversary, Pillsbury was able to achieve an excellent result for Clearwire at the preliminary injunction phase of the litigation. "
—Chuck Lobsenz, Senior Corporate Counsel/Director of Intellectual Property, Clearwire
Clarifying a Lack of Trademark Confusion in Online Marketing
"Defendants observe correctly that 'trademark laws protect against mistaken purchasing decisions, and not against general confusion due to coexistence.' "
—U.S. District Court Judge Jeremy Fogel, noting Pillsbury's arguments in his favorable decision
California Sets the Table for Regulation of Third-Party Wine Providers
Authors: James M. Seff, Carrie L. Bonnington, Jerry R. Jolly
On November 1, 2011 the California Department of Alcoholic Beverage Control (ABC) issued new guidance regarding the regulation of the ever-increasing number of third-party wine providers (now known informally as TPPs) who advertise and facilitate wine sales on the Internet.
While Suing Large Radio Station Groups, Patentholder Seeks 'Voluntary' License Fee Agreements with Smaller Station Owners
Authors: William P. Atkins, Richard R. Zaragoza
In recent months, the owners of radio stations throughout the country have received letters from representatives of Mission Abstract Data, L.L.C., d/b/a DigiMedia (“MAD”), encouraging them to enter into patent license fee agreements with the company. MAD’s letter points out that it has sued some of the nation’s largest radio group owners. Undoubtedly, MAD will use the monies derived from the license fee agreements to help fund the current litigation as well as to demonstrate the “legitimacy” of its patent holdings. This Advisory is intended to provide radio stations with important background information on the case and to identify factors that may come into play as station owners consider the risks, as well as the options, available to them.
Protect Your Trademarks From .XXX Infringers—Reserve Marks Before Oct. 28
Author: Robert B. Burlingame
After more than a decade of heated debate, the .xxx Top Level Domain (i.e., domain names ending in .xxx rather than .com) is about to launch, and a critical “sunrise period” for trademark owners opened today, September 7.
Overly Suspicious Plaintiff's Beliefs Do Not Satisfy the Reasonable Consumer Standard
Authors: Christine A. Scheuneman, Brian D. Martin, Amy L. Pierce, Nathaniel R. Smith
California's First District Court of Appeal held that a class action complaint did not state a cause of action because no reasonable consumer would interpret the green drop on Fiji water bottles to represent environmental superiority or a third party endorsement. In these days of "inevitable and readily available Internet criticism and suspicion of virtually any corporate enterprise," a reasonable consumer does not include "one who is overly suspicious."
FCC Enforcement Monitor
Authors: Scott R. Flick, Christine A. Reilly
- FCC Begins to Move on Pending Video News Release Complaints
- Failure to Monitor Tower Lighting Results in $12,000 Penalty
Seeking to Attract More High-Tech Industry, UK Plans New Tax Regime for Patent Income
Authors: Raymond L. Sweigart, Steven P. Farmer
Whilst the idea of creating a “Patent Box” in the UK (i.e., a special taxing regime for income arising from patents) is nothing particularly new, the UK Chancellor has recently announced that a detailed consultation document on the pending regime will be published in May 2011. Companies, particularly those involved in R&D and manufacturing, who wish to make use of this preferential UK tax band should, therefore, very much “watch this space” and consider how they may participate in the looming consultation.
Cuba: US Companies Need Trademarks
Companies should consider Cuban trademark protection now.
Authors: William P. Atkins, Richard L. Kirkpatrick
This article also was published in Issue 03 of Grapevine Magazine in 2015.In December 2014, President Obama made an unexpected announcement signaling a “new course” for Cuba after more than fifty years of comprehensive U.S. sanctions. The changes to U.S. sanctions and export policy under the Cuban Assets Control Regulations and Export Administration Regulations (EAR) implemented in January 2015, although limited, opened new business opportunities for U.S. companies. Further liberalization may be considered in the future with Congressional support, although that is the subject of heated discussions in Washington, D.C. For now, it will make sense for many companies to consider strategic first steps in Cuba, including for intellectual property protection.
Ingrid & Isabel, LLC v. Baby Be Mine, LLC
Source: E-Commerce Law Reports
Authors: Bobby Ghajar, Lori Levine
A California Court has found that the ‘look and feel’ of a website is protectable trade dress and suggests nuances for pleading and maintaining the claim, in a decision that marks the emergence of a new field of law.
Bankruptcy Issues in Trademarks
Source: IP Litigator
Authors: Samuel S. Cavior, Richard L. Epling
This article was originally published in IP Litigator, Volume 19, Number 6, November/December 2013.
How Trade Mark Defendants are Winning from MedImmune
Source: Managing Intellectual Property
Authors: Bobby Ghajar, Carolyn S. Toto
This article originally appeared in the October 2013 issue of Managing Intellectual Property.
Oprah's Trademark Woes Provide Cautionary Tale
Source: Daily Journal
Authors: Richard L. Kirkpatrick, Laura C. Gustafson
In “Oprah's Trademark Woes Provide Cautionary Tale,” Pillsbury partner Richard Kirkpatrick and counsel Laura Gustafson discuss the Second Circuit’s decision in Kelly-Brown v. Oprah Winfrey. They examine the problem of using short phrases in connection with primary or secondary brands in advertising and caution how certain phrases could become trademark traps for the unwary, as the Oprah case highlights.
2012 Project Finance - United States
Source: Getting the Deal Through
Authors: Philip Jonathan Tendler
Energy team co-leader Rob James and Finance partner Philip Tendler, chapter co-authors, discuss project finance—collateral, security interests, liens, bankruptcy, offshore accounts, foreign investment, ownership restrictions, health/safety laws, and PPPs.