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Spotlight

    Trademarks

    Contact

    Bobby Ghajar
    Partner
    Los Angeles   
    +1.213.488.7100
    4/22/2014
    Podcast: Letter From Europe
    Author: Paul A. Harris
    Paul Harris is an Intellectual Property Litigation Partner in Pillsbury’s London office with over 25 years of experience in intellectual property cases. This is the first in a series of twice-monthly podcasts of Mr. Harris’s thoughts and observations on the commercial world, and Intellectual Property in particular. A transcript of the podcast is available for download on this page.
    12/5/2013
    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.
    1/22/2013
    Act Now to Prevent Loss of Patent Rights in March 16th Change to “First-Inventor-to-File” System
    Authors: Bradford C. Blaise, Patrick A. Doody
    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.
    1/16/2013
    A Covenant Not to Sue May Avoid Invalidity Claims
    Authors: Kelly W. Craven, Bobby Ghajar
    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.
    10/31/2012
    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.
    8/21/2012
    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.

    3/30/2012
    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.
    12/31/11
    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


    12/31/11
    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


    11/21/2011
    California Sets the Table for Regulation of Third-Party Wine Providers
    Authors: James M. Seff, Jerry R. Jolly, Carrie L. Bonnington
    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.

    10/7/2011
    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.
    9/7/2011
    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.
    7/25/2011
    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."

    4/27/2011
    FCC Enforcement Monitor
    Authors: Scott R. Flick, Christine A. Reilly
    Headlines:
    • FCC Begins to Move on Pending Video News Release Complaints
    • Failure to Monitor Tower Lighting Results in $12,000 Penalty


    4/20/2011
    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.
    4/18/2011
    Court Addresses Jurisdiction Issue Concerning Copyright Infringement and the Internet
    Authors: Kerry A. Brennan, David M. Tortell
    In a recent decision, the New York Court of Appeals concluded that an online library's alleged acts outside of New York, involving infringing copying and distribution over the Internet of copyrighted works, constituted a direct injury to a New York copyright holder for purposes of satisfying jurisdiction over the out-of-state library under New York's long-arm statute. Penguin Group (USA) Inc. v. American Buddha, 2011 BL 75585 (N.Y. March 24, 2011). The court determined the injury occurred at the location of the principal place of business of the copyright holder rather than the place of the alleged infringing act. Central to its finding was the court's emphasis on the ubiquitous nature of the Internet and "unique bundle of rights" held by a copyright owner.
    5/21/2008
    House Passes Bill Designed to Enhance Intellectual Property Enforcement
    Authors: Cydney A. Tune, Lawrence A. Schultis
    On May 8, 2008, the U.S. House of Representatives passed H.R. 4279, the “Prioritizing Resources and Organization for Intellectual Property Act of 2008,” on a 410-11 vote. Sponsored by Democrats John Conyers of Michigan and Howard Berman of California, as well as Republican Lamar Smith of Texas, the bill now moves to the Senate for consideration. The bill provides for a number of measures to promote enforcement of intellectual property rights.
    2/21/2006
    Trademarks on the Internet - Fair Play or Fair Game?
    Authors: Joseph R. Tiffany, Robert B. Burlingame
    When it comes to use of trademarks on the Internet, it’s all about fairness – fairness to the trademark owner, to the consumer, to competitors, and to purveyors of Internet searching and other services.
    6/3/2005
    European Community Design Registration
    Authors: Louisa Copeman
    4/21/2003
    Trademark Office Comes to California
    Authors: Richard L. Kirkpatrick
    4/2/2003
    Bulletin 03-03, The Madrid Protocol Approved by the U.S.
    Authors: Kerry A. Brennan, Carolina A. Fornos; Susan J. Kohlmann
    November/December 2013
    Bankruptcy Issues in Trademarks
    Source: IP Litigator
    Authors: Samuel S. Cavior, Richard L. Epling, Philip S. Warden
    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: Bobby Ghajar, Carolyn S. Toto
    This article originally appeared in the October 2013 issue of Managing Intellectual Property.
    6/10/2013
    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 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.
    December 2008/January 2009
    The War Over World of Warcraft
    Source: Copyright World, Issue #186
    Authors: Cydney A. Tune
    Cydney Tune, leader of Pillsbury's Copyrights and Media & Entertainment teams, and Pillsbury Corporate & Securities associate Christopher Lockard authored this article which originally appeared in Copyright World, December 2008/January 2009.
    12/17/2003
    New Rules on Trademarks Cast Wide Net
    Source: The Recorder
    Author: Robert B. Burlingame
    9/9/2003
    The Balanced Portfolio: Changes to Trademark Portfolio Administration given U.S. Accession to the Madrid Protocol
    Source: Thomson & Thomson on CD-ROM
    Author: Robert B. Burlingame
    4/16/2003
    Protocol Simplifies Registration Process in Foreign Countries
    Source: Daily Journal, San Francisco and Los Angeles
    Author: Robert B. Burlingame

     


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