Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

Trademark Registration Insufficient to Overcome Good Faith and Limited Geographic Use in UDRP Action

By Jonathan Uffelman

February 19, 2020

A recent UDRP decision demonstrates that a variety of factors can make success uncertain where a brand owner’s asserted mark has arguably descriptive or generic meanings, where the junior user showed a good faith basis for use of the mark, and where the brand owner’s services are geographically limited. Complainant Yonder, Inc. (“Yonder NC”) provides vacation home rental services in two areas of North Carolina under the registered mark YONDER. It conducted its business through…

AIA Blog

Where Are We Now? Are You Estopped or Not?

By Amanda Robinson

February 18, 2020

According to 35 U.S.C. §315(e)(1) and (2), a petitioner in an inter partes review (IPR) that results in a final written decision (FWD) may not raise in the USPTO or a civil action or an ITC proceeding “any ground that the petitioner raised or reasonably could have raised during that inter partes review.” While the statutory language seems relatively straightforward, there have been a variety of views in the courts regarding the scope of estoppel…

Incontestable Blog

Retweet of Infringing Materials Sufficient to Support Copyright Claim

By Brooke M. Wilner

February 17, 2020

“Winning isn’t normal.” That’s the titular quote from author Keith F. Bell’s sports psychology book, the beginning of the book’s most notable passage, and part of a tweet initially posted by a third party and retweeted by Joshua Lifrak, director of the Chicago Cubs’ Mental Skills Program. Based on that retweet, Dr. Bell brought a copyright infringement lawsuit against Mr. Lifrak and the Chicago Cubs. The District Court for the Northern District of Illinois recently…

Incontestable Blog

Control Panel Design Not Protectable by Copyright Under Star Athletica

By Samuel V. Eichner

February 11, 2020

Despite the existence of a copyright registration, the SDNY recently dismissed a copyright infringement claim for the control panel of a portable clothes dryer system, finding that the registered design covered a non-copyrightable utilitarian article. Plaintiff Town & Country Linen Corp. and Defendant Ingenious Designs LLC entered a three-year Mutual Non-Disclosure Agreement (“MNDA”), under which Town & Country designed and developed various concepts and products for Ingenious with the intention to negotiate future agreements…

Incontestable Blog

Bad Influence: FTC Settles Two Complaints Alleging Fake Social Media Influence

By Brooke M. Wilner Jessica L. Hannah

February 9, 2020

A strong online following can be a powerful marketing tool, signaling legitimacy, quality, and, of course, popularity. The push to capitalize on the power of online influence has led to social media advertising and professional influencers, but also to dishonesty. Two companies, Devumi, LLC and Sunday Riley Modern Skincare LLC, recently settled FTC complaints alleging that they had engaged in deceptive tactics to boost their clients’ social media influence. In the first-ever complaint of its…

AIA Blog

IPR and CBM Statistics for Final Written Decisions Issued in December 2019

By Daniel F. Klodowski Michael R. Galgano Zachery D. Olah

January 30, 2020

The Patent Trial and Appeal Board issued 27 IPR and CBM Final Written Decisions in December, including decisions following remands from the Federal Circuit, cancelling 292 (70.19%) instituted claims while declining to cancel 104 (25.00%) instituted claims. Patent owners conceded 20 (4.81%) instituted claims through motions to amend or disclaimer in cases reaching a final decision. For comparison, the cumulative average rate of instituted claims cancelled in IPR and CBM Final Written Decisions is about…

Incontestable Blog

Honest Concurrent Use? Bentley Motors Loses a Game of Grandmother's Footsteps in the UK

By Elena Valuiskich

January 29, 2020

Bentley Motors has driven itself into trouble over the use of the BENTLEY mark in the UK. It didn’t involve the motor side of the automotive legend, though. Rather, it was a long-winded quarrel with family-owned Bentley Clothing, which culminated in the recent High Court decision regarding BENTLEY-branded apparel. The following timeline sums up the rather busy background story that played an important role in the final decision— 1921—Bentley Motors’ predecessor started making and selling…

Prosecution First Blog

Phase 1 U.S. China Trade Deal: Patent Provisions

By Amanda Robinson

January 26, 2020

President Trump and China vice-premier Liu He signed a preliminary Economic and Trade Agreement (“the Agreement”) on January 15, 2020. In the press, it is referred to as “Phase 1.” Chapter 1 of the Agreement includes provisions related to intellectual property, and among those provisions are some patent related provisions that should be welcomed by innovative pharmaceutical patent holders. According to Art. 8.3, the Agreement shall enter into force within 30 days of signature by…

Incontestable Blog

Is Willfulness a Prerequisite to Trademark Damages? SCOTUS Hears Oral Argument

By Samuel V. Eichner

January 22, 2020

On January 14, 2020, the Supreme Court heard oral argument in Romag Fasteners, Inc. v. Fossil Inc., et al., in which the Court is poised to resolve a circuit split on whether willfulness is a prerequisite to award a trademark infringer’s profits. Counsel for Romag framed the issue by negating defendant’s chief textual argument, i.e. that the phrase “subject to principles of equity” in 15 U.S.C. § 1117(a) does not import a willfulness requirement…

Prosecution First Blog

A Belated Lesson in How to Avoid a Finding of Obviousness Based Upon Inherent Disclosure

By Amanda Robinson

January 12, 2020

Decision: Persion Pharms. LLC v. Alvogen Malta Operations Ltd., No. 2018-2361 (Fed. Cir. Dec. 27, 2019) (REYNA, O’Malley, Chen) Holding: The District Court of Delaware held Persion’s claims invalid for obviousness and lack of written description. The Federal Circuit affirmed the obviousness determination, recognizing the proper application of inherent disclosure in an obviousness determination, and did not reach the written description issue. Background: Persion owns U.S. Patent Nos. 9,265,760 (“the ʼ760 patent”) and 9,339,499…

Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Blogs

Blog Authors

Trademark Registration Insufficient to Overcome Good Faith and Limited Geographic Use in UDRP Action

Where Are We Now? Are You Estopped or Not?

Retweet of Infringing Materials Sufficient to Support Copyright Claim

Control Panel Design Not Protectable by Copyright Under Star Athletica

Bad Influence: FTC Settles Two Complaints Alleging Fake Social Media Influence

IPR and CBM Statistics for Final Written Decisions Issued in December 2019

Honest Concurrent Use? Bentley Motors Loses a Game of Grandmother's Footsteps in the UK

Phase 1 U.S. China Trade Deal: Patent Provisions

Is Willfulness a Prerequisite to Trademark Damages? SCOTUS Hears Oral Argument

A Belated Lesson in How to Avoid a Finding of Obviousness Based Upon Inherent Disclosure

Stay Connected

Company

Support

New to the Network

Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Blogs

Blog Authors

Latest from Finnegan, Henderson, Farabow, Garrett & Dunner, LLP