TTAB Decisions Past: Will They Come Back to Haunt You in Federal Court?
October 08, 2004
When a dispute arises between parties regarding the use and registrability of a trademark, counsel often must weigh the facts and circumstances to advise a client whether it would be best to commence an action in the PTO's Trademark Trial and Appeal Board ("TTAB") or file suit in federal court. In some cases however, counsel will find a client in the midst of a TTAB proceeding ' or worse ' after an unfavorable decision has been rendered against the client in an opposition or cancellation proceeding. In such situations, counsel must assess what preclusive effect, if any, the prior administrative decision may have in a subsequent trademark infringement action in federal district court.
Newcomer's Trademark Rights Take Back Seat in Limited Area to Local Prior User
October 08, 2004
What happens when a large newcomer to a geographic region with a federal registration for its service mark encounters a smaller pre-existing business in that region with prior use of a similar mark for the same services? Enjoinable reverse infringement results, according to the U.S. Court of Appeals for the Third Circuit. <i>Citizens Financial Group, Inc. v. Citizens National Bank of Evans City,<i> Case Nos. 03-2868 and 03-3175 (3d Cir. 2004).
The Digital Millennium Copyright Act: A Potent New Weapon in the Aftermarket Wars
September 02, 2004
For more than a century, original equipment manufacturers ("OEMs") have sought, with only limited success, the aid of the courts to enforce restrictions against competitors' sales of products designed to complement or replace components of their proprietary technologies. At stake in each of these cases was a lucrative aftermarket for products directed to the OEM's patented technology and a "razor-and-blades" business model by which the OEM strove to attain a large installed user base for its equipment in hopes of "locking-in" customers to that aftermarket.
IP News
September 02, 2004
Highlights of the latest intellectual property news and cases from around the country.
The Importance of Defining Novel Terms in Patenting Nanotechnology Inventions
September 02, 2004
Descriptive terminology is essential to providing effective patent protection for nanotechnology inventions, particularly from the perspective of future licensing and litigation activities. One of the key difficulties in patenting nanotech inventions, however, arises from the absence of established terminology. Failure to clearly define one's invention can lead to a number of unfortunate consequences, ranging from an overly narrow patent covering a limited scope of subject matter to a vague or overly broad patent susceptible to invalidation. This article will discuss: 1) recent decisions from the Federal Circuit that reveal how the use of descriptive terminology is essential to patenting nanotech inventions effectively, 2) how those decisions pose special problems for nanotech inventions, and 3) how those problems can be addressed through nanotech inventors acting as their own lexicographers and defining key terms in their patent specifications.
Community Patent: The EU Stuck Again?
September 02, 2004
The European Union ("EU") has once again failed to come to an agreement regarding a single unitary Community patent. At the May 18, 2004 Competitiveness Council meeting, the Council of the European Union ("Council") could not reach a unanimous agreement on the proposal for a Council Regulation on the Community patent. The only outstanding issue that has been a stumbling block all along, <i>ie,</i> languages and translation costs of the patent claims, remained unresolved. The EU's main decision-making body concluded that all conceivable compromise solutions had been tried. Accordingly, it stated its intent to refer the matter to the Presidency of the European Council.
From Cradle to Grave
August 31, 2004
Bankruptcy lawyers may not get involved in their clients' transactions until it is too late. They may be called in only upon the occurrence of a default, litigation, or the commencement of a bankruptcy case. At that point, they are faced with deals that have been "set in stone" -- drafted and structured by lawyers specializing in the front-end, who may have looked at the transaction from an overly optimistic viewpoint, especially in the case of a long-term deal with another party that presently is in good financial health.
Spyware: Courts and Legislatures Respond
August 09, 2004
Most find it to be a nuisance. Advertisers consider it to be cutting edge. Either way, spyware (or adware) is receiving a lot of attention recently in the press, in the courts and in legislatures around the country.
European Community Trademark: Two Tracks, One Destination
August 09, 2004
In late June 2004, the European Community acceded to the World Intellectual Property Organization (WIPO) Madrid Protocol on the international registration of trademarks. This development is likely to have a long-standing effect for U.S. trademark owners who wish to obtain trademark protection in the European Community. Indeed, since the inception of the European Community Trademark (CTM) system, U.S. applicants have positioned themselves as leaders in filing new CTM applications. According to recent statistics of the Office for Harmonization in the Internal Market (OHIM), U.S. trademark owners filed approximately 90,000 CTM applications, which constitutes close to 25% of all applications filed. For comparison, the second and third places taken by Germany and the United Kingdom, with 62,000 and 47,000 applications, respectively, are markedly behind the United States in CTM filings.
IP News
August 09, 2004
Highlights of the latest intellectual property news and cases from around the country.
