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    Trademarks

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    5/22/2014
    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.
    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: 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.
    1/16/2013
    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.
    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, 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.

    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.
    4/01/2015
    Cuba: US Companies Need Trademarks
    Companies should consider Cuban trademark protection now.
    Source: Latinvex
    Authors: William P. Atkins, Richard L. Kirkpatrick
    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 2014
    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.
    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: 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.

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