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22 June 2010

Bold promises from the IP czar's shiny joint strategic plan

Among the many detailed ideas included in the Joint Strategic Plan, published today by President Obama's IP enforcement coordinator, is the promise of the government to help and listen to "victims" (clarified as rights holders) of IP infringement - and even a full review of IP laws.

14 June 2010

IP attorneys reminded that creative arguments must have reasonable basis

In Franklin Mint Company v Manatt Phelps & Phillips LLP, the Franklin Mint Company, which is known for its commemorative plates, has succeeded in its malicious prosecution claim against the lawyers representing the estate of the late Princess Diana. The case presents a cautionary tale for trademark lawyers: creative arguments must have a reasonable basis in the fundamental principles of trademark law.

09 June 2010

Lanham Act claim cannot circumvent FDA's exclusive jurisdiction

In PhotoMedex Inc v Irwin, the US Court of Appeals for the Ninth Circuit has affirmed a California district court holding that a party may not sue under the Lanham Act to assert a Food, Drug and Cosmetic Act violation if doing so impedes upon the Food and Drug Administration’s exclusive enforcement authority.

04 June 2010

USPTO powers up for futuristic trademark services (with help from Google)

Keen readers of this blog will be familiar with the push for free trademark data. Over the past year, we have reported on various initiatives to open up trademark registers around the world. Today WIPO launches its free WIPO Gold service to provide IP data to the public via a web portal that is reminiscent of an old WTR front cover. In the US, following our revelation that the USPTO was searching for a partner that could open up the US trademark database, the organization looked no further than info-troll Google, which has just published bulk US trademark data for all to see.

17 May 2010

District court decision reversed as genuine issue of material fact remained

In Zobmondo Entertainment LLC v Falls Media LLC, the US Court of Appeals for the Ninth Circuit has reversed a grant of summary judgment in favour of an accused trademark infringer, holding that questions of fact existed as to whether the trademark WOULD YOU RATHER...? as applied to board games was suggestive or merely descriptive.

10 May 2010

It looks like the USPTO desires free trademark data for all, too

Here's a gentle whisper from the United States Patent and Trademark Office (USPTO). It appears that the agency is searching for a partner that can help it open up its trademark register to the public free of charge. The USPTO, which already operates a searchable trademark database, made noises last year about developing its technology in the interests of transparency and user experience.

04 May 2010

'Non-commercial use' defence unavailable in TTAB dilution cases

In American Express Marketing & Development Corporation v Gilad Development Corporation, the TTAB has issued a precedential opinion holding that the 'non-commercial use' exception is unavailable in a TTAB proceeding in which a dilution claim is asserted. The TTAB noted that the applicability of this exception as an affirmative defence to a dilution claim was “an issue of first impression”.

30 April 2010

Is the Special 301 Report out of date?

The Special 301 Report is starting to look tired. Not only will ACTA be a much stronger instrument in stopping the counterfeit trade, but the White House plan to fight IP theft through better stakeholder coordination sounds like a much more sensible approach to the problem.

30 April 2010

Rosetta Stone v Google thrown out: mark owners need new tactics

There is no stopping Google selling trademark terms as keywords. That is the message from the US courts this week. A judge from the US District Court for the Eastern District of Virginia has dismissed Rosetta Stone's case against the search giant, effectively killing off once and for all the conventional method of attacking the AdWords programme.

28 April 2010

Chanel's brand may need a polish if it cannot stop No 6

If you thought that Chanel's registration for NO 5 in Class 3 was enough to stop a competitor registering NO 6 in the same class, think again. The USPTO has just rejected Chanel's opposition to the NO 6 mark, in a move that could stop owners of famous brands in their tracks.

23 April 2010

Blow for Pernod Ricard in HAVANA CLUB Case

In a lengthy dispute between Pernod Ricard USA LLC and Bacardi USA Inc that has crossed two federal circuits, two federal agencies and two decades over who controls the HAVANA CLUB mark for rum, a US judge has held that Bacardi has the right to use the mark for rum in the United States, and that its Havana Club labels are neither false nor misleading.

16 April 2010

Tiffany loses to eBay in latest online trademark infringement battle

In Tiffany (NJ) Inc v eBay Inc, the US Court of Appeals for the Second Circuit has affirmed in part and reversed in part a July 2008 district court’s holding. Among other things, the Second Circuit agreed with the lower court's holding regarding trademark infringement, stating that eBay made a lawfully nominative 'fair use' of the famous TIFFANY mark.

08 April 2010

Bacardi ducks confusion challenge in latest HAVANA CLUB win

While rum drinkers can tell that if it looks like a duck, swims like a duck and quacks like a duck then it probably is a duck, brand owners accustomed to arguing that their trademarks function primarily as source identifiers will read the most recent HAVANA CLUB rum judgment with dismay.

06 April 2010

Call for legislative change as Utah takes the fight to cybersquatters

Utah has thrown the gauntlet down to other US states by signing the E-Commerce Integrity Act, amid calls for the 1999 Anticybersquatting Consumer Protection Act to be reviewed. The landmark legislation places the state at the head of the fight against cybersquatting and the question now is whether other states will follow Utah’s lead and increase the remedies available to brand owners.

30 March 2010

Espinel must heed brand owners' call for cooperation

Victoria Espinel has set to work on her colossal task of better coordinating IP enforcement across US government departments, with key stakeholders demanding increased government transparency and closer cooperation between agencies and industry.