"Trademark Strategies for 2012" Presentation to the American Bar Association's Cyberspace Institute in Austin Texas on January 28, 2011. The presentation explores recent changes to the practice of trademark law, and what the future might hold for trademark owners and attorneys who advise them.
Knobbe Martens Partners Catherine Holland, Lynda Zadra-Symes, Jeff Van Hoosear and Jonathan Hyman give insight into the major trademark law issues across multiple jurisdictions, covering: ownership and scope of trademarks, application for registration, appeal of failed applications, third-party opposition to registration, duration and maintenance of marks, assignment, markings, types of trademark enforcement proceedings, procedural format and timing, discovery, litigation costs, defenses and remedies and appeals.
Reproduced with permission from Law Business Research Ltd. This article was first published in Getting the Deal Through: Trademarks 2016, (published in September 2015) For further information please visit www.gettingthedealthrough.com.
As the legal landscape continues to evolve in terms of intellectual property law, the Los Angeles Business Journal once again turned to some of the leading IP attorneys and experts in the region to get their assessments regarding the current state of IP legislation, the new rules of copyright protection, licensing and technology, and the various trends that they have been observing, and in some cases, driving. Below is a series of questions the Business Journal posed to these experts and the unique responses they provided – offering a glimpse into the state of intellectual property law in 2014 – from the perspectives of those in the trenches of our region today.
The U.S. Supreme Court recently made a significant change to the geographic location where patent infringement lawsuits may be filed. In TC Heartland v. Kraft Food Groups, decided on May 22, 2017, the Supreme Court unanimously limited the venue for patent suits against domestic corporations to either (1) the defendantʼs state of incorporation, or (2) where the defendant has a regular place of business and committed allegedly infringing acts. This decision represents a break from 30
years of precedent that allowed patent owners to sue essentially anywhere in the U.S. that the defendant sold the allegedly infringing products.
By Nicholas Zovko and Brandon Smith, Knobbe Martens
Knobbe Martens Partners Catherine Holland, Lynda Zadra-Symes, Jeff Van Hoosear and Jonathan Hyman give insight into the major trademark law issues across multiple jurisdictions, covering: ownership and scope of trademarks, application for registration, appeal of failed applications, third-party opposition to registration, duration and maintenance of marks, assignment, markings, types of trademark enforcement proceedings, procedural format and timing, discovery, litigation costs, defenses and remedies and appeals.
Reproduced with permission from Law Business Research Ltd. This article was first published in Getting the Deal Through: Trademarks 2016, (published in September 2015) For further information please visit www.gettingthedealthrough.com.
As the legal landscape continues to evolve in terms of intellectual property law, the Los Angeles Business Journal once again turned to some of the leading IP attorneys and experts in the region to get their assessments regarding the current state of IP legislation, the new rules of copyright protection, licensing and technology, and the various trends that they have been observing, and in some cases, driving. Below is a series of questions the Business Journal posed to these experts and the unique responses they provided – offering a glimpse into the state of intellectual property law in 2014 – from the perspectives of those in the trenches of our region today.
The U.S. Supreme Court recently made a significant change to the geographic location where patent infringement lawsuits may be filed. In TC Heartland v. Kraft Food Groups, decided on May 22, 2017, the Supreme Court unanimously limited the venue for patent suits against domestic corporations to either (1) the defendantʼs state of incorporation, or (2) where the defendant has a regular place of business and committed allegedly infringing acts. This decision represents a break from 30
years of precedent that allowed patent owners to sue essentially anywhere in the U.S. that the defendant sold the allegedly infringing products.
By Nicholas Zovko and Brandon Smith, Knobbe Martens
On May 11, 2016, the President signed into law the Defend Trade Secrets Act (DTSA). The DTSA significantly expands protection of intellectual property rights by creating a body of trade secrets law that applies nationwide and by allowing businesses to enforce their trade secret rights in federal court. Previously, trade secrets were protected only by state laws (which varied from state to state), and trade secret claims ordinarily could be brought only in state court. The new federal law does not preempt the state laws; it provides an additional avenue for protection and enforcement.
The Trademark Review is a monthly newsletter prepared by Knobbe Martens attorneys covering relevant and current issues in trademark law.
In this Issue:
Facebook Stops FACEMAIL
The Battle of the Rolled Chips
Quiksilver Hit with $3.5 Million Punitive Damages Award
In today’s challenging economic environment, businesses are looking for ways to improve their competitive advantage. One important way is through branding, which includes one or more trademarks. Some trademarks and brands are stronger than others. This presentation addresses how to develop, use, and protect a powerful brand while avoiding potential infringement litigation.
Starting May 13, significant changes in the law of design patents come into effect. First, the U.S. and Japan both join the Hague Agreement for the Registration of Industrial Designs. Second, all U.S. design patents filed May 13 or later will have a 15-year term from issuance. This is an increase from the current 14-year term. Third, starting May 13, applicants are no longer required to file a petition and pay fees to include color drawings in U.S. design applications.
Knobbe Martens Partner Mauricio Uribe recently wrote "The Effect of Microsoft v. Motorola" for Bloomberg BNA's Patent, Trademark & Copyright Journal. Uribe discusses how Judge James L. Robart’s framework for determining a royalty rate for infringement of a standard essential patent ‘‘is now on the cusp of changing the patent litigation landscape.’’
This presentation discusses the nuts and bolts of filing complaints as well as the elements required to file a UDRP action. In addition, the presentation provides an overview of the UDRP process and practical tips on how to handle the UDRP and URS processes.
August 2011 Trademark Group Lunch
Topics covered in this month’s trademark presentation included:
• Trademark applicants’ websites being used for rejections
• Involuntary waiver of sovereign immunity to trademark infringement
• New test for likelihood of confusion and dilution by blurring
• Update on Google AdWords litigation in the European Union
On May 11, 2016, the President signed into law the Defend Trade Secrets Act (DTSA). The DTSA significantly expands protection of intellectual property rights by creating a body of trade secrets law that applies nationwide and by allowing businesses to enforce their trade secret rights in federal court. Previously, trade secrets were protected only by state laws (which varied from state to state), and trade secret claims ordinarily could be brought only in state court. The new federal law does not preempt the state laws; it provides an additional avenue for protection and enforcement.
The Trademark Review is a monthly newsletter prepared by Knobbe Martens attorneys covering relevant and current issues in trademark law.
In this Issue:
Facebook Stops FACEMAIL
The Battle of the Rolled Chips
Quiksilver Hit with $3.5 Million Punitive Damages Award
In today’s challenging economic environment, businesses are looking for ways to improve their competitive advantage. One important way is through branding, which includes one or more trademarks. Some trademarks and brands are stronger than others. This presentation addresses how to develop, use, and protect a powerful brand while avoiding potential infringement litigation.
Starting May 13, significant changes in the law of design patents come into effect. First, the U.S. and Japan both join the Hague Agreement for the Registration of Industrial Designs. Second, all U.S. design patents filed May 13 or later will have a 15-year term from issuance. This is an increase from the current 14-year term. Third, starting May 13, applicants are no longer required to file a petition and pay fees to include color drawings in U.S. design applications.
Knobbe Martens Partner Mauricio Uribe recently wrote "The Effect of Microsoft v. Motorola" for Bloomberg BNA's Patent, Trademark & Copyright Journal. Uribe discusses how Judge James L. Robart’s framework for determining a royalty rate for infringement of a standard essential patent ‘‘is now on the cusp of changing the patent litigation landscape.’’
This presentation discusses the nuts and bolts of filing complaints as well as the elements required to file a UDRP action. In addition, the presentation provides an overview of the UDRP process and practical tips on how to handle the UDRP and URS processes.
August 2011 Trademark Group Lunch
Topics covered in this month’s trademark presentation included:
• Trademark applicants’ websites being used for rejections
• Involuntary waiver of sovereign immunity to trademark infringement
• New test for likelihood of confusion and dilution by blurring
• Update on Google AdWords litigation in the European Union
This paper was for my International Business Law (IBS320) class back in the Spring of April 2009. This paper goes into detail about the art of counterfeiting currency, as well as trademark infringement cases from Apple to FBI and Chinese seizures. In my opinion, it is an interesting topic and well written paper. There is no Power Point associated with this paper, but I think it would have been a great Power Point to make if it was demanded by the professor.
3Kaur15 U.S.C.S. § 1125 ™False designations of ori.docxtamicawaysmith
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15 U.S.C.S. § 1125
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False designations of origin, false descriptions, and dilution forbidden
Shagandeep Kaur
Business 154: Business Law
Gary Patterson
Research Project
December 10, 2014
Table of Contents
Title
Page number
I. Introduction
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II. Legislation
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III. Rationale
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IV. Case Analysis
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Case 1.
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Case 2.
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V. Conclusion
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a. Social Impact
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b. Personal Opinion
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References
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I. Introduction
The Lanham Act, also known as the trademark act, was enacted in 1946 with the purpose of being a federal trademark statue of law. This law originated so that various merchants are able to maintain their commerce through their reputation and brand without having other competitors take advantage of diluting the brand through similar names or trademarks that impersonate the original merchant. This act is filed under title 15, Commerce and Trade, because it pertains to merchants and their businesses. Chapter 22, Trademarks and general provisions, has this law as a subsection. This paper will be covering § 1125, which deals with false designations of origin, false descriptions, and dilution. The two cases that are covered will go into depth about how the courts interpret the law and whether or not it has a significant impact on commerce.
This topic is of interest to me because it takes many years for a business to build their reputation and brand-worth and another person may try to make money off of that brand even if they have no right to. This usually occurs with high end reputable brands, such as, Gucci, Chanel, Louis Vuitton, Coke, et cetera, when people make knock offs or duplicates of that brand and sell them as genuine. This ends up diluting the brand and is also considered false designation of origin since it’s not the real brand. It’s really tempting to purchase knockoffs of such luxury items but at the end of the day, the people selling those items are infringing on trademarks and can be held liable in court under this Chapter and subsection.
II. Legislation
This law comes under Title 15, Commerce and Trade, and under Chapter 22, Trademarks and general provisions, and under § 1125, false designations of origin, false descriptions, and dilution are forbidden.
15 USCS § 1125
(a) Civil action.
(1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which--
(A) Is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or
(B) I ...
Topics covered in this month’s trademark prosecution presentation include discussions of recent changes to the TEAS system, Patent and Trademark Office alerts, trademark foreign equivalents, scandalous marks, and state sovereign immunity.
California Bar Cyberspace Committee presentation on the essentials of cyberspace law focusing on user generated content, privacy and online advertising. President by Committee Co-Chair Bennet Kelley, Vice Chair Robert Hawn and Committee member Nicole Ozer.
Privacy & Security of Consumer and Employee Information - Conference MaterialsRachel Hamilton
The ever increasing use of social media by employees in the workforce, privacy violations with online behavioral advertising,and potential privacy and security risks associated with social media sites have prompted federal and state regulators to create stricter enforcement initiatives to protect the privacy of consumer and employee information. The industry is one step closer to a national cyber notification law which will not only pre-empt state notification bills but permanently change how companies and organizations respond to data breaches.
Similar to PELTON PowerPoint: ABA Cyberspace Institute 2011-01-28 (20)
Trademark Bullying & the Streisand Effecterikpelton
Trademark bullying continues to be a topic of great interest and controversy. This presentation features examples of the Streisand effect and how it relates to trademark bullying situations.
Trademark Expo Games from The Little City & Erik M Pelton & Associateserikpelton
Game pamphlet about trademarks and places presented by The Little City and Erik M. Pelton & Associates. Originally distributed at the 2011 National Trademark Expo held at the US Patent and Trademark Office (USPTO).
2. What does the future oftrademark law look like? Not terribly different from the present, but with: More social media More apps and technology platforms More brands More entrepreneurs in this economy More expansion of existing brands Reg. No. 2651340 The mark consists of a depiction of the Driskill Hotel as it appeared in 1886.
7. More options for defendantsCYBERSPACE® Reg. No. 1975275 for “telephone communications service”
8.
9. NEW YORK YANKEES® YANKEES® NY® THE HOUSE THAT RUTH BUILT® YANKEES UNIVERSE® BRONX BOMBERS YANKEE HANKEE® YANKEEOGRAPHY® NEW YORK YANKEES®Portfolio Highlights Reg. No. 2029421 The drawing is a two-dimensional representation of the mark, which consists of the design elements and color combinations appearing on a three-dimensional baseball uniform… The uniform is white with navy blue pinstripes…
18. More Options Against Infringers Personal jurisdiction based on online sales Seller operating online store may be subject to personal jurisdiction in every state in which it has made sales Chloe v. Queen Bee of Beverly Hills, LLC, No. 09-3361-cv, ___ F.3d ___ (2nd Cir August 5, 2010) Sale of 1 counterfeit bag to Plaintiff’s attorney in NY, plus at least 52 other sales of designer handbags in general to NY, was sufficient shipment of counterfeit bag was not a "one-off transaction," but rather a part of a larger business plan purposefully directed at NY consumers. Illinois v Hemi Group, LLC, No., 622 F.3d 754 (7th Cir. 2010) The only specific sales to Illinois resident identified in complaint were instigated by a special agent of the Department of Revenue But where website expressly stated company would sell to consumers in any state except NY, personal jurisdiction in Ill. found. Court noted refusal to sell in NY indicated Defendant knew sales could subject it to personal jurisdiction
19. More Options Against Infringers Personal jurisdiction in the trademark holder’s state Using Calder test [Calder v. Jones, 465 US 783, 789 (1984)], the 7th and 11th Circuits found personal jurisdiction in infringed trademark owner’s state because the activity expressly aimed at forum where trademark owner located Indianapolis Colts, Inc. v. Metro. Baltimore Football Club ltd. P’ship, 34 F.3d 410, 411-12 (7th Cir 1994) Licciardo v. Lovelady, 544 F.3d 1280, 1288 (11th Cir. 2008) AUSTIN – LIVE MUSIC CAPITAL OF THE WORLD® Reg. No. 2392553 for “Promoting of conventions and tourism in Austin, Texas; retail store services, featuring clothing, …”
20. More Options Against Infringers Potential contributory infringement liability of companies processing payments for the infringing party In 2007, the Ninth Circuit found Visa and Mastercard not liable for copyright infringement even though their credit card services were used to sell infringing photographs. Perfect 10 v. Visa Int'l Service Ass'n., 494 F.3d 788 (9th Cir. 2007) But in a 2010 trademark case, S.D.N.Y. found otherwise Gucci went after three companies that set up and serviced the counterfeiter’s merchant credit card accounts; each had some knowledge of the nature of the counterfeiter’s business. Court found each could be held liable for contributory infringement, because they “knowingly provide[d] a financial bridge between buyers and sellers of [counterfeit products]…. making a profit on every sale.” Gucci America, Inc. v. Frontline Processing Corp., Case No. 09 Civ. 6925 (S.D.N.Y. June 23, 2010)
21. More Options for Defendants Declaratory Judgments Supreme Court creates new test for patent cases in 2007 Rejected previous “reasonable-apprehension-of-suit” standard New test: whether facts alleged, under all the circumstances, show a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 126-27 (2007): TTAB Oppositions sufficient for subject matter jurisdiction 6 yrs. had passed since last Defendant’s litigation threat, but had filed 5 T.T.A.B. Oppositions in the interim Surefoot LC v. Sure Foot Corp., 531 F.3d 1236 (10th Cir. 2008).
23. More Options for Defendants Publicity attacks Increasingly popular tool available for Defendants to fight back. Use social media and other tools to put pressure back on complaining (larger) party The North Face Apparel Corp. vs. The South Butt LLC (E.D. of Mo., filed Dec. 10, 2009) (settled). The South Butt accused of infringing North Face® trademarks. North Face® suit resulted in media attention, and support South Butt. Case was settled and South Butt still in business. Monster Energy & Hansen Beverage Company Owners of Monster Energy® beverage threatened infringement suit over microbrew called The Vermonster®. Facebook fan page grew to 10,000+ fans in less than 2 weeks. Hansen soon backed down. Led to Congress in 2010 directing USPTO to study “aggressive trademark litigation tactics” Federal Bureau of Investigation & Wikimedia Foundation FBI sought to have its seal removed from from Wikpedia page, claiming it was a violation of the law. Wikipedia fought back publicly, posting the FBI’s demand letter and their response, and FBI apparently backed down from its request.