Tuesday, 05 January 2010 18:59


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The French fashion house, Balenciaga Corp. has sued New York shoe company, Steve Madden Ltd. in the U.S. District Court for the Eastern District of New York claiming infringment of its trade dress and copyrights for manufacturing and selling knockoffs of its "Lego" shoe. Interestingly, "LEGO" is a registered trademark of Lego Juris A/S/ Corp.

To attain legal status as a trademark, a term must be deemed to be "distinctive" as used in connection with the goods and/or services being offered.  However, the degree of distinctiveness – and, therefore, the strength of a mark – can range from marks that are inherently distinctive (arbitrary, fanciful, and suggestive marks) to marks deemed unworthy of protection (generic marks and descriptive marks lacking secondary meaning.) The middle ground is occupied by descriptive marks that have achieved secondary meaning among the consuming public.   Because a party cannot prevail on a trademark claim unless its mark is distinctive, determining where a particular mark falls within the “distinctiveness” scale is a crucial determination in any trademark infringement suit.

As such, the recently decided Lahoti v. Vericheck – which overturned a lower court’s more rigid application of the “descriptiveness” analysis – has the potential to significantly impact future trademark litigation.  In Lahoti, the 9th Circuit Court of Appeals held that the lower District Court had made several errors of law in its descriptiveness analysis. Specifically, the lower court had held (1) that a trademark was descriptive only if it described all of the trademark owner’s businesses; and (2) that a trademark could be examined only by taking the entire mark into account.  Using this analysis, the lower held that the mark “VERICHECK” was not descriptive – even though one of the services offered was ‘check verification’ – as the mark did not “immediately call to mind the broad array of electronic transaction processing services” offered by the trademark owner.  

Thursday, 31 December 2009 18:55


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 As we say farewell to 2009, we must recognize that even in its final hours this year continues to provide vivid examples of the value of intellectual property rights. 

Specifically, this New Year’s Eve, Tavern on the Green will close its doors after 75 years in New York City’s Central Park.  And while many question how this landmark that declared $38 million in gross revenue in 2007, making it the second highest grossing restaurant in the US, now finds itself in bankruptcy, we want you to consider that despite the Baccarat and Waterford Chandeliers, the restaurant’s most valuable asset may be its trademark. 

After the final service at the Tavern this evening, the Bankruptcy Court must decide if this $19 million asset belongs to the City of New York and is therefore outside the proceeding, or if it belongs to the LeRoys personally, also arguably putting it outside of bankruptcy, or if it is owned by the bankruptcy estate and should be liquidated.   To Read More Click Here

Monday, 28 December 2009 18:52


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The federal false patent marking statute, 35 U.S.C. § 292, prohibits the false marking of "any unpatented article" with the word "patent" or other suggestions, such as advertising, that would indicate that the article is patented.  The goal of the statute is to avoid public deception as to whether a particular good is in fact patented. 

Several qui tam lawsuits, which are generally lawsuits brought by private individuals on behalf of the government, have been filed based on alleged violations of the false marking statute, and seek to impose up to a $500 penalty for each article that has been falsely marked.  For example, some of these lawsuits have been brought by consumers who have noticed expired patent numbers or false patent markings on everyday products, including paper cups and plastic utensils.     

There has been much debate over the appropriate penalty for falsely marking a patent number on a manufactured article.  On the one side of the debate are those, such as the consumers that filed the above-mentioned lawsuits, who contend that a penalty should be assessed for each and every manufactured article that bears the false marking.  They contend that, if a manufacturer decides to mark 1,000 products with a false patent marking, then the maximum penalty under the statute should be $500,000, or $500 per article, for each of the 1,000 items marked.   

On the other side of the debate are those, accused of false marking, that contend that the penalty should be imposed for each decision to mark a quantity of manufactured articles.  According to their contention, the statute should be interpreted such that, if a manufacturer were to decide to mark 1,000 items with a patent number, and the marking was later ruled to be a false marking, then the maximum penalty would be $500, based on the one decision to mark the articles. 

Earlier today, the Court of Appeals for the Federal Circuit issued a ruling that should clear up much of the debate.  In today's decision, the appellate court interpeted the false patent marking statute, 35 U.S.C. § 292, to require a penalty for each article or good that is falsely marked with a patent number, and not for each decision to mark a number of goods, as suggested by one of the parties.  The appellate court did note, however, that $500 is the maximum penalty for each falsely marked article, and that judges will continue to have discretion to assess a lower penalty, according to the circumstances of a given case.  

You can read the Federal Circuit's decision in Forest Group, Inc. v. Bon Tool Company et. al.here.


Wednesday, 18 December 2013 18:52


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Brands often tend to have life cycles.  Even longstanding or big-name brands may inevitably die out.  With trademarks and trademark law being strongly linked to brands (sometimes the terms "brand" and "trademark" are even used synonymously), the death of a brand can raise interesting trademark-related issues.  For example, questions arise as to whether, or when, others are free to pick up and start using the trademark of a defunct brand.  For a list of some familiar brands that appear to be on the brink, click here.

As some of you may know, Facebook changed its privacy settings on Wednesday, December 16, 2009. However, the new “easy to use settings wizard” has not be well received. Among one of the issues, is that as a result of the change a user who did not adjust his/her privacy settings has been publishing his/her status updates and photos to the entire internet as of Wednesday. And while Facebook claims that only forty percent of its 220 million users have opted for their old privacy setting while the rest have embraced the change, critics argue that the settings wizard distorts the facts and that many users are not even aware of the true implications of the switch. Many critics have gone on to add that the change is really a deliberate attempt by Facebook to compete with other micro-publishing sites like Twitter who have capitalized on the public aspect of social networking sites.
So it came as no surprise this morning when the Electronic Privacy Information Center, a coalition of privacy groups, asked the Federal Trade Commission (FTC) to investigate Facebook’s recent privacy changes and how the social networking site treats customer data which they claim is in violation of federal consumer protection laws.  The FTC has yet to comment on if and when it will investigate.
Wednesday, 16 December 2009 18:50


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Perhaps signaling that the clock may soon run out on pure 'Business Method' patents, several of the Supreme Court Justices, during oral arguments in Bilski and Warsaw v. Kappos last monthjoked whether patents should be permitted for innovations such as methods of horse whispering, methods of speed dating, or a method of teaching antitrust law. Although the exchange took on an air of judicial levity, the underlying message seems to point towards a decision invalidating an entire segment of already issued patents. This type of exchange ratchets up the anticipation and angst already being felt by a patent and corporate world that anxiously awaits the determination of whether "Business Method" patents will be dumped or stay the current bell of the ball. For more on this click here

Yesterday the Washington Redskins beat the Oakland Raiders and broke the Redskins’ nine game losing streak. And while everyone is talking about their win and ability to keep their fourth quarter lead, we would like to discuss their other big win. Specifically, we are referring to the Supreme Court’s rejection of an appeal from a Native American group who challenged the team’s trademarks as disparaging. 
The lawsuit was first filed in 1992 and sought to cancel the Redskins’ name and logo which was adopted in 1933 when the team was in Boston. The United States Patent and Trademark Office issued the registration in 1967. Not surprisingly, the issue before the court was laches and the interpretation of the federal statute that allows the cancellation of a registration “at any time” if the trademark contains “matter which disparage . . .  persons, living or dead . . . or bring them into contempt, or disrepute.”