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    Another Step to Speed Up the Company Registration Process in China
    Authors: David A. Livdahl, Jenny (Jia) Sheng, Lisa (Huiyuan) Li, Wenjun Cai
    Under the current company registration procedures of the People’s Republic of China, before undertaking the approval and/or registration procedures for establishing a company, the investor(s) of a new company must first file a Name Pre-approval application with the company registration authority, the State Administration of Industry and Commerce (SAIC) or its local counterparts (AICs,). The AICs will reject a name pre-approval application if the proposed name is identical to the name of an existing company registered in the same industry in the same municipality. On October 18, 2016, SAIC issued its Guiding Opinion on Opening-up Enterprise Name Database and Promoting the Reform of Enterprise Name Registration (Guiding Opinion) to request local AICs to open their company name databases to the public. Now an applicant can check the company names of existing companies in the database to avoid using a duplicate name. This will simplify the company establishment process. Furthermore, SAIC indicated that it aims to abolish the name pre-approval requirement entirely in the near future.
    Intent to Lose? Be Wary of Pitfalls Involving Intent-to-Use Trademark Applications.
    Authors: Carolyn S. Toto, Mark R. Kendrick, Bobby Ghajar
    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.
    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: 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, Amy L. Pierce, Nathaniel R. Smith, Brian D. Martin
    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.
    Source: Latinvex
    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.
    November/December 2013
    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.
    October 2013
    How Trade Mark Defendants are Winning from MedImmune
    Source: Managing Intellectual Property
    Authors: Carolyn S. Toto, Bobby Ghajar
    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.
    September 2011
    2012 Project Finance - United States
    Source: Getting the Deal Through
    Authors: Philip J. 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.

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