When is a proceeding not a proceeding, or more precisely, when is a proceeding affecting a mark not a proceeding affecting a mark? No mere word game, the answer can have a profound impact on foreign trademark owners who routinely (and perhaps unthinkingly) appoint their U.S. attorneys as agents to accept service in proceedings affecting their marks. The answer ' or at least an answer ' recently was provided by the U.S. District Court for the Eastern District of California in E&J Gallo Winery v. Cantine Rallo, S.p.A., slip op. 1:04 cv 5153 (OWW) (Aug. 17, 2005), where just such a profound impact faced an Italian winery with a long history whose American counsel accepted service of a summons and complaint in an infringement suit, but made only fleeting efforts to alert his foreign client. The court vacated a default judgment that threatened to terminate a 50-year business in this country because the domestic attorney designated by the foreign trademark applicant under 15 U.S.C. §1051(e) to receive service in "proceedings" affecting the mark was deemed not authorized to receive service in a "litigation" affecting the mark. (The defendant's failure to answer was also deemed excusable neglect. Following the default, the author is now representing the defendant.)
- November 02, 2005Jonathan Moskin
Over the years, courts frequently have been called upon to determine the nature and extent of the diligence required of licensees, assignees and other parties granted exclusive rights to exploit intellectual property. Dating back to Justice Benjamin N. Cardozo's opinion in Wood v. Lucy, Lady Duff-Gordon, 222 N.Y. 88, 118 N.E. 214 (1917), the courts consistently have held such parties to an implied promise to exercise some measure of diligence to commercialize the transferred property in those cases in which the grantor was completely reliant upon the productivity of the intellectual property user to generate royalties or other consideration.
November 02, 2005Paul Dennis ConnuckHighlights of the latest franchising cases from around the country.
November 01, 2005Genevieve Beck and Jon SwierzewskiThe tide of franchising regulation continued to sweep across Europe as Belgium brought its new franchise disclosure law into effect.
November 01, 2005Mark AbellA working draft of a paper by three Australian academic researchers offers some insights about why franchisees choose to leave franchising systems and, more importantly, what franchisors can do to make the exits less likely to happen and less likely to lead to litigation when they do. The researchers are Lorelle Frazer, Bill Merrilees, and Owen Wright, from the Service Industry Research Centre, Griffith University, Brisbane, Australia.
November 01, 2005Kevin AdlerHighlights of the latest franchising news from around the country.
November 01, 2005ALM Staff | Law Journal Newsletters |U.S. Senators Turning Up Heat on Peer-to-Peer Pirates Lawmakers pushed federal authorities last month to crack down on peer-to-peer (P2P) services that…
November 01, 2005Samuel Fineman, Esq.Highlights of the latest product liability cases from around the country.
November 01, 2005ALM Staff | Law Journal Newsletters |Secretary of the Department of Homeland Security ("DHS") Michael Chertoff told the U.S. Chamber of Commerce that the DHS is seeking to shield more anti-terror research companies from product liability suits. Since January 2005, the DHS has overcome its reluctance to limit product liability for many research and development companies that manufacture anti-terror technology. There is still, however, debate over liability protections afforded by legislation to shield manufacturers of bioterrorism vaccines.
November 01, 2005ALM Staff | Law Journal Newsletters |The first part of this article discussed the case law of both state and federal courts with regard to the admissibility of child testimony and the suggestibility of child witnesses. The conclusion discusses whether the child witness understands that he or she can affect the outcome of the litigation, as well as other issues related to the reliability of the child's testimony.
November 01, 2005Maureen O'Connor, James H. Rotondo and Allyssa McCabe