Say What You Will About Trademarks Simon Tam chose to name his band “The Slants” with the intent to reclaim the term and erase the denigrating connotations associated with it. However, he was confronted with the denial of his trademark application based on the disparagement clause of the Lanham Act. This raised an interesting issue of whether the disparagement clause violates […] Continue Reading →
Supreme Court Rules for Biosimilar Applicants under the BPCIA On June 12, 2017, the Supreme Court released a decision in Sandoz Inc. v. Amgen Inc., which involved a case emerging out of the Biologics Price Competition and Innovation Act. The Biologics Price Competition and Innovation Act of 2009 (BPCIA) provides an abbreviated pathway for biosimilar products of already licensed biological products (reference products) […] Continue Reading →
Patent Applications – What Happens After They Are Filed? You have worked with an MVS attorney to get your invention covered by a patent application, and the application has been filed. Great! Have you ever wondered what happens to the application at the US Patent Office? Part of it depends on if you have filed a provisional application or a utility application. If you […] Continue Reading →
Does Play-Doh Smell Distinct? Hasbro Thinks So Most of the time when we think of trademarks, we think of words, slogans, and logos. But trademarks can be more than that. Some companies have been able to obtain trademarks for colors. For example, Tiffany and Co. has registrations for its Tiffany Blue, an example of which is Reg. No. 2,359,351. Similarly, 3M has a […] Continue Reading →
‘Fame’ is Not All-Or-Nothing The Court of Appeals for the Federal Circuit (“CAFC”) vacated a decision by the Trademark Trial and Appeal Board (the “Board”) denying a petition by Joseph Phelps Vineyards, LLC for cancellation of a trademark held by Fairmont Holdings, LLC. The CAFC held that the Board used an incorrect standard when analyzing the ‘fame’ factor for […] Continue Reading →
Spotify Settles Class Action Lawsuit for $43.4 Million In February of last year, I wrote a blog discussing the filing of a class action lawsuit against Spotify seeking $150 million in unpaid mechanical royalties (Read the previous post here). In a settlement announced on Friday, Spotify has agreed to set up a fund worth $43.4 million to compensate songwriters and publishers whose compositions […] Continue Reading →
U.S. Supreme Court Extends the Limitation of “Exhaustion” for Patent Rights A United States patent entitles the patent holder to exclude others from making, using, offering for sale, or selling [its] invention throughout the United States or importing the invention into the United States. However, when a patentee sells one of its products, the patentee can no longer control that item through the patent laws— its […] Continue Reading →
Federal Circuit Opinion Does Little to Resolve Questions Regarding Online Retailers’ Liability for “Offers to Sell” Under 35 U.S. Code § 271(a), anyone who, without authorization, “offers to sell” a patented invention in the United States infringes said patent. This basis for liability is distinct from liability for theactual sale of a product and does not require acceptance of the offer—raising interesting questions for online retailers like Amazon. Notably, when an […] Continue Reading →
U.S. Supreme Court Limits Where Patent Infringement Defendants Can be Sued In TC Heartland LLC v. Kraft Foods Group Brands LLC, the U.S. Supreme Court limited the locations that patent infringement suits can be brought against a defendant, i.e., venue for the lawsuit. Proper venue is established by 28 U.S.C. § 1400(b) as the place where (1) the defendant resides or (2) where the defendant has […] Continue Reading →
7 Reasons to Consider China in Developing an IP Strategy China now may have a better patent system for enforcing patent rights through litigation, as compared to their patent protection in past years. Before you dismiss this notion completely, consider the following: A very high win rate, up to 75% – 95%, is possible for a patent owner, especially a foreign patent owner, in a litigation. […] Continue Reading →