Ninth Circuit clarifies differences between proof of protectable trademark and proof of infringement In a decision Friday, the Ninth Circuit clarified the differences in use requirements to prove the existence of a protectable trademark as compared to trademark infringement. The plaintiff and defendant both used the same mark, but in connection with different services. The defendant successfully argued at the district court that because the plaintiff did not […] Continue Reading →
Fourth Circuit: Subpoena to foreign corporation valid even though no U.S. business contacts The Fourth Circuit last week addressed a district court's ability to issue subpoenas to foreign witnesses in USPTO administrative proceedings. The court held that a district court may issue a Rule 30(b)(6) subpoena to a foreign corporation who is party to an opposition, even if the party has no officers, directors or managing agents who […] Continue Reading →
Amici piling up in lawsuit challenging new claim and continuation rules Although the parties' motions for summary judgment have been filed, the amici keep coming forward in the consolidated lawsuits challenging the new claim and continuation rules. This brings the total number of amici in this case over 30, filing 19 20 (as of 1/4) total briefs. While the vast majority of amici filings support the […] Continue Reading →
Third Circuit: Some store brand sucralose packaging confusing; injunction denial partially reversed In a Christmas Eve decision, the Third Circuit partially reversed a district court's denial of a preliminary injunction regarding "store brand" sucralose sweeteners. McNeil Nutritionals, makers of Splenda®, brought suit against a company that produces several different sucralose products that bear the store's name and compete with Splenda®. The district court found McNeil not likely […] Continue Reading →
Term defined in specification limited even though partially characterized as exemplary In a recent decision, the Federal Circuit vacated and remanded a limited exclusion order by the International Trade Commission. The ITC entered an exclusion order that prevented importation of products produced by a method that infringed two patents.The Federal Circuit vacated the finding of infringement, holding that under the correct claim construction, there was no […] Continue Reading →
AUTM releases 2006 annual licensing survey The Association of University Technology Managers (AUTM) has released its summary report for the 2006 AUTM U.S. Licensing Activity Survey. The yearly survey is an ongoing effort of the organization to assist in informing the public about academic technology transfer professionals in order to improve public understanding of their activities. The 2006 Annual Report reflects […] Continue Reading →
Fifth Circuit: Beyonce song does not infringe songwriter’s copyright In a decision last week, the Fifth Circuit affirmed a district court's grant of summary judgment of no copyright infringement. A plaintiff brought suit against the singer Beyoncé Knowles and several parties with whom she is associated alleging that Beyoncé's song "Baby Boy" infringed the plaintiff's work. The district court granted summary judgment of noninfringement […] Continue Reading →
Motions for summary judgment filed in lawsuit challenging claim and continuation rules Yesterday the parties filed their motions for summary judgment in the cases brought by GlaxoSmithKline (GSK) and Dr. Tafas challenging the USPTO's new claim and continuation limit rules. Apparently the earlier order setting the deadline for amicus briefs did not apply to the parties' motions, as earlier speculated. The deadline for briefs in opposition is […] Continue Reading →
Ninth Circuit: Attorney fees only available for trademark counterfeiting when actual damages sought In a decision Tuesday, the Ninth Circuit reversed a district court's decision awarding $100,000 in attorney's fees for trademark counterfeiting under 15 U.S.C. § 1117(c). The court reached this decision based on the language of § 1117: While § 1117(b), the provision allowing attorney's fees, states that they shall be awarded when damages are assessed […] Continue Reading →
Eleventh Circuit: No likely confusion between stylized logos for competing welding companies In a decision this week, the Eleventh Circuit affirmed a grant of summary judgment of no service mark infringement. The court held that there were no triable issues of fact as to whether the companies' service marks were confusingly similar, the existence of actual confusion, and the defendant's intent.More details of Welding Servs., Inc. v. […] Continue Reading →