Trademark Prosecution
Luncheon
March 2014
Are You A Canadian John Doe?
• February 2014, Federal Court of Canada ordered
an ISP to release the names and addresses of...
A TM Action May Have An Equal And
Opposite Cancellation Reaction
• 9th CA: No independent cause of action for
cancellation...
You Can’t Phone-In Your Specimen
• TTAB aff’d refusal to register the mark
TSUBAKI: THE CHOICE FOR CHAIN for
"industrial m...
You Write it – You’re Stuck With It
• Clark’s appealed the denial of a PI to enforce a non-
compete against former employe...
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March 2014 Trademark Luncheon Presentation

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March 2014 Trademark Luncheon Presentation

  1. 1. Trademark Prosecution Luncheon March 2014
  2. 2. Are You A Canadian John Doe? • February 2014, Federal Court of Canada ordered an ISP to release the names and addresses of 2000 subscribers alleged to have downloaded a copyrighted movie using peer to peer networks and BitTorrent. • encourages lower Courts to impose strict safeguards to prevent coercive settlement tactics. • First Canadian decision to order large scale production of customer information from a third party ISP in order to identify potential defendants in an action for illegal downloading • Voltage Pictures LLC v John Doe and Jane Doe
  3. 3. A TM Action May Have An Equal And Opposite Cancellation Reaction • 9th CA: No independent cause of action for cancellation of a trademark registration: – Section 37 of the Lanham Act gives a district court power to order cancellation of a trademark registration "in any action involving a registered mark." • Cancellation may be sought in federal court only "if there is already an ongoing action that involves a registered mark." • Air Aromatics, LLC v. Victoria's Secret Stores Brand Management, Inc., Appeal No. 12-55276 (9th Cir. February 28, 2014).
  4. 4. You Can’t Phone-In Your Specimen • TTAB aff’d refusal to register the mark TSUBAKI: THE CHOICE FOR CHAIN for "industrial machine parts" - Applicant failed to provide an acceptable specimen of use. • Tsubaki submitted six catalogs in which potential purchasers were invited to call the company phone number to obtain information and place an order. • That was not sufficient to qualify as acceptable specimens of trademark use. • In re U.S. Tsubaki, Inc., Serial No. 85267349 (March 7, 2014) [precedential].
  5. 5. You Write it – You’re Stuck With It • Clark’s appealed the denial of a PI to enforce a non- compete against former employee. Smith worked for Clark’s for ~14 years before joining Ferguson. • The trial court found the covenant to be overly broad and restrictive: – it prevents Smith from working directly or indirectly in any capacity for any other entity that seeks to solicit or provide services to any entity that was a customer of Clark’s during the 14 years Smith worked there. • Court declined to use the “blue pencil doctrine” – Clark’s had a fair opportunity to draft a reasonable and enforceable covenant yet failed to do so. • Clark's Sales and Service, Inc v. John D. Smith and Ferguson Enterprises, Inc., 49A02-1306-PL-552

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