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Prosecution Group Luncheon
          July 2012



       Trademarks
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2012) [not precedential].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.
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
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
July 2012 Prosecution Group Luncheon
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

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July 2012 Prosecution Group Luncheon

  • 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