Topics covered in this month’s Trademark Group Luncheon include balancing of first amendment interests and trademark rights as applied to sports uniforms as well as a licensing debacle between Apple and the owner of the “iPad” trademark in China. The group delved into the copyright realm by discussing the protectability of a hookah base shape when that shape is a useful article that cannot be separated from its utilitarian elements.

1. Prosecution Group Luncheon
July 2012
Trademarks

2. Failure To Function, the next rejection?
MONTICELLO YELLOW Hand Sanitizer Dispenser
In re Thomas Jefferson Foundation, In re 3M Company, Serial Nos. 77701886
Inc., Serial No. 77967242 (June 29, and 77701928 (May 10, 2012) [not
2012) [not precedential]. precedential], reconsideration denied,
June 21, 2012.

3. Paint the University w/o a License
• First Amendment interests in artist's
depiction of state university's football uniforms
in paintings, prints, and calendars outweigh
any purported trademark rights in uniforms;
• public interest in free expression must be
weighed against public interest in avoiding
consumer confusion,
• content is artistically relevant … depiction of
uniforms is needed for realistic portrayal of
scenes from university's football history
• University of Alabama Board of Trustees v. New Life Art Inc., 11th Cir.,
6/11/12

4. Are Hookahs Really Useful?
• Shape of water container as base of hookah is
useful article ineligible for copyright protection,
even if shape is not critical to function,
– container's shape and container itself are "one
and the same,"
– it does not matter that container would still be
functional if it had different shape,
– artistic aspects of shape cannot be physically or
conceptually separable from container's
utilitarian elements
• Inhale Inc. v. Starbuzz Tobacco Inc., C.D. Cal., 6/18/12

6. Buy a Chinese iPad for $60 Million?
• Apple Inc. is paying $60 million to Proview
International Holdings Ltd. to settle a dispute
over the use of the "iPad" trademark in China.
• Proview registered an iPad trademark for a
desktop computer in 2001. In 2009, a
company set up by Apple bought the rights to
it from Proview for around $55,000, but
Proview later claimed that deal was only with
a Taiwan-based affiliate and did not cover
mainland China.
• Apple had $8 billion in Chinese sales Q1 2012