October 2010 Prosecution Lunch – Trademark


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Topics covered in this month’s trademark prosecution presentation include discussions of a recent Federal Circuit case about contributory liability, a Ninth Circuit case about the first sale doctrine and copyright linceses, a Seventh Circuit case regarding standing and what is a commercial interest under the Lanham Act, and a Federal Circuit case addressing inherent disctinctiveness of trade dress.

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October 2010 Prosecution Lunch – Trademark

  1. 1. Prosecution Lunch October 2010
  2. 2. Trademark Bullies? • USPTO is requesting feedback from U.S. trademark owners, practitioners, and others regarding their experiences with litigation tactics, especially those involving an attempt to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner. – Accepts anecdotal evidence – Eliciting suggestions to address any allegedly problematic litigation tactics.
  3. 3. Credit Card Processing = Contributory Liability? • Gucci successfully litigated against TheBagAddiction.com, which admitted that they sold counterfeit Gucci products • Gucci sued credit card processing services who knowingly enabled these sales by marketing to “high risk accounts” such as “replica merchants” • Factual allegations sufficient to support intentional inducement or sufficient control theories (sought out by marketing and could have prevented transactions) • Motion to dismiss for failure to state a claim DENIED. • Gucci America Inc. v. Frontline Processing Corp., No. 09 Civ. 6925(HB), 2010 WL 2541367 (S.D.N.Y. June 23, 2010),
  4. 4. Can’t Sell A Copyright License • Vernor purchased copies of Autodesk’s AUTOCAD from a licensee and then resold them on eBay • Autodesk sent C&D letter, Vernor filed DJ for non- infringement - District Ct. granted Vernor SJ based on 1st sale doctrine • Ninth Circuit reversed and vacated: – Autodesk distributes Release 14 pursuant to a limited license agreement in which it reserves title to the software copies and imposes significant use and transfer restrictions on its customers. – Because Vernor did not purchase the Release 14 copies from an owner, he may not invoke the first sale doctrine • Vernor v. Autodesk Inc., 96 USPQ2d 1201 (9th Cir. 2010)
  5. 5. Is Beverly Stayart Famous? • Beverly Stayart searched her name in Yahoo, found links to pharmaceuticals & pornography. • Believes she is the only “Beverly Stayart” • Bev claims to be a “sophisticated, well- educated, and highly intelligent professional women.” – She has an MBA from U.Chicago, – is passionate about the environment, particularly “the plight of wild horses, wolves and baby seals.” – She has written two poems about baby seals that appear on a Danish website
  6. 6. Is Beverly Famous? • Bev sued Yahoo and others under Lanham Act demanding that “shameful” search results be removed • D.Ct. dismissed for lack of standing • 7th Cir. Affirmed: – Standing requires a “commercial interest”, 43(a) usually asserted against competitors – Bev’s humanitarian efforts, advocacy, boycotting and “scholarly posts” Stayart v. Yahoo!, Inc. et al, No. 09-3379 (7th Cir. Sept. 30, 2010)
  7. 7. Trade (Un)Dress • In re Chippendales USA, Inc. (FC 2010) • 1979: intro of “Cuffs & Collar” costumes • 2003: Reg. No. 2,694,613, based on acquired distinctiveness (no inherent distinctiveness) • 2008: Section 8/15, mark is “incontestable”
  8. 8. Trade (Un)Dress • New application in 2005: inherently distinctive • TTAB refuses registration – Test: Seabrook Foods (CCPA 1977) – Factors: 1) common shape/design; 2) unique, unusual in particular field; 3) mere refinement of well-known ornamentation for class • FC affirmed – “Packaging,” not “product design”; Samara Bros. N/A – Cuffs & Collar costume “mere refine- ment” of Playboy Bunny costume