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 Intellectual Property
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July 2009
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The purpose of this newsletter to keep in
touch with our friends and colleagues as well as
provide practical information and news relating to
Intellectual Property law.
Please forward this newsletter to anyone who
might be interested. Previous issues of
GRR Intellectual Property News can be found on our
website. | |
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GRR Client Defeats Motion for Summary
Judgment
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In November 2007 Alphaville Design, Inc. ("Alphaville")
filed a Declaratory Judgment Action in
San Francisco against GRR client Knoll, Inc. The lawsuit
sought to challenge the validity of Knoll's trademark
registrations for the configuration of the Barcelona Chair,
Barcelona Stool, Barcelona Couch, Barcelona Table and Flat
Brno Chair. In response, Knoll asserted that Alphaville
was infringing its trademarks by selling, without
authorization, furniture in the configurations that are the
subject of Knoll's trademark registrations. In November
2008 Alphaville filed a Motion for Summary Judgment asking the
Court to invalidate Knoll's trademark registrations. Led
by GRR attorneys George Gottlieb
and Marc P. Misthal,
a team of lawyers from GRR fought Alphaville's motion on
behalf of Knoll. The court denied Alphaville's motion in
its entirety. According to the court, Alphaville did not
present sufficient evidence to support its claims that Knoll
committed fraud on the Trademark Office; as a result, there
was no basis for invalidating Knoll's trademark
registrations. Likewise, the Court ruled that Alphaville
had not adequately supported its claim that Knoll unreasonably
delayed in taking action against Alphaville, or that it had
not infringed Knoll's BARCELONA trademark. A copy of the
court's decision can be found here. The
case will now proceed to trial.
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| Attorney
Presentations &
Publications |
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On July 7, 2009, Tiberiu Weisz
spoke about intellectual property and its relationship to
building a business at the "Business Success Series" program
sponsored by the Queens Library and the United States Small
Business Administration. Amy B. Goldsmith
and Marc P. Misthal
were interviewed for an article in the July 2009 issue
of Art Calendar regarding website privacy
policies.
Amy B. Goldsmith
was quoted in article about an invention that would permit
internet users to prioritize uploads and downloads. The
article can be found here.
GRR attorneys are traveling around the world to meet
with their clients. In July GRR attorneys will be
traveling to Chile and Israel. Later this year, GRR
attorneys will be traveling to Ecuador and
Peru. |
| Gene Patents:
Here Today, Gone Tomorrow? |
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| In 1980, the Supreme Court decided that a live,
human-made micro-organism for eating crude oil could be the
subject of a patent. As a result of that decision,
the Patent Office has issued thousands of patents on isolated
and purified sequences of DNA and the proteins produced by
them.
Myriad Genetics of Utah owns patents on
certain breast cancer genes, and because it owns those
patents, Myriad is the only provider of diagnostic tests
relating to these genes, charging $3000 per test. On May 12,
2009, a lawsuit was filed against Myriad in New York by
several medical associations, universities, physicians and
patients diagnosed with breast cancer who cannot afford to pay
for the test. Plaintiffs argue that the Supreme Court was
wrong to permit patents to be issued on genes because they are
products of nature and further argue that the Myriad patents
violate the First Amendment because patenting of genes limits
research and the free flow of information.
Plaintiffs are represented by the
ACLU and the Public Patent Foundation, who are interested in a
public hearing of the basic issue: should isolated and
purified genes even be patented? Since the Supreme
Court's decision, the Patent Office's practice has been to
issue patents on basic genes, thus furthering the "progress of
useful arts". The biotech industry argues that issuing
patents on genes enables them to recoup on the massive
investment necessary to conduct genetic research and that the
research would not be conducted without the chance of
reimbursement.
Myraid may seek to dismiss the case on the ground that
the plaintiffs' lack standing to assert their claims, in which
case the New York court may not have the opportunity to decide
the question raised by the case. The ACLU/PPF will
likely argue that standing can be based on public policy
rationales, and that the universities, at least, should not be
required to actually compete with Myriad (thus opening
themselves up to massive damage awards) prior to challenging
the patents.
Patent cases take a long time to wend their way
through the court system so these questions won't be answered
right away. In the meantime, the Patent Office will continue
to consider patent applications filed for genes, diagnostic
tests and gene therapy. We shall follow this case
closely. For further information,
contact Amy B.
Goldsmith. |
What's in a
Name?
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The United States Patent and Trademark Office ("PTO")
has been inconsistent in assessing whether to register or
refuse to register marks consisting of surnames. A
recent decision by the Trademark Trial and Appeal Board
("TTAB") might bring some consistency to the PTO's
determinations.
Under the Trademark Act, a mark
that is "primarily merely a surname" is not registrable.
The traditional test used to determine whether a mark is
"primarily merely a surname" is: (1) the degree of the
surname's rareness; (2) whether anyone connected with
applicant has the mark as a surname; (3) whether the mark has
any recognized meaning; an (4) whether the mark has the "look
and sound" of a surname.
In In re Hall Wines,
Serial No. 78/926,151 (TTAB, February 10, 2009) (not
precedential), the TTAB reversed the Examining Attorney's
refusal to register BERGFELD based on the rareness of the name
BERGFELD. In support of its argument, the applicant
presented evidence that the name BERGFELD appeared in
Lexis/Nexis P-Find databases a mere 300 times and that,
according to data from the U.S. Census Bureau, the name
BERGFELD ranked 20,391 in frequency. Based on the
applicant's evidence, the TTAB held that the mark was entitled
to registration based on largely on the rareness factor,
which, it stated, should be given more weight than the other
factors in the test. In reaching this conclusion, the
TTAB acknowledged the inconsistency in determining the
registrability of surnames. Hopefully this decision will
lend some consistency to future decisions by the Trademark
Office on the registrability of surnames.
For
further information, contact Barbara H.
Loewenthal.
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| Justice Department
Investigating Proposed Google Books
Settlement |
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In a July 2, 2009 letter to the judge presiding over
the Google Books litigation (see our prior report here), the
U.S. Department of Justice (DOJ) informed the court that
while it had reached no conclusions on the merits, the
proposed settlement raised issues that warranted further
investigation. In response to the letter, the court
issued an order permitting the DOJ to orally present its
position at the October 7, 2009 fairness hearing or to file a
written submission setting forth its position by September 18,
2009. The DOJ's interest in the proposed settlement
could affect the form of any final settlement in the case, so
we will continue to monitor the situation and report on
further developments.
For further
information, contact Joshua
Matthews. |
Dramatic Changes in Venezuelan Intellectual
Property Law
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Notwithstanding the Venezuelan government's decision to
withdraw from the Andean Community of Nations on March 22,
2006, Venezuela continued to apply rulings of the Andean
Commission until last year, when the Venezuelan Intellectual
Property Registry "reminded" the authorities and the legal
community that the Venezuelan intellectual property
legislation of 1955 was and is in fact in force. This action
caused a great deal of confusion, and it has recently come to
directly affect the protection of intellectual property in
Venezuela.
Since at least 2003, the Venezuelan
government has not granted any patents, and at least 7,500
patent applications are waiting for approval. The Venezuelan
authorities claim that the delay is for administrative
reasons, but in reality, the causes may be politically
motivated. The Venezuelan press recently published
statements from government officials, including the President
and the Minister of Commerce, questioning the value of the
patent system and characterizing it as a mechanism of
domination by the multinational companies. The general view of
the government is that patents cannot restrict Venezuelan
companies from producing articles of great importance to the
country, such as pharmaceutical, agricultural or food
products. This position is supported by the old 1955 IP
law now in place, which prohibits the granting of patents for
pharmaceutical products and beverages.
The recent
discussion arose as a result of some patents owned by a
Swedish company for a milk container. The importers of
the containers experienced delays in importing the containers,
which in turn caused delays in the distribution of milk in
Venezuela. As a result of the delays, the government launched
an investigation to determine why the containers were not
manufactured in Venezuela and learned that the technology to
manufacture these containers was the subject of patent
protection in Venezuela. The government indicated that
it will seriously consider annulling patents, especially in
the pharmaceutical field, benefiting the production of
generics.
So far, attorneys in Venezuela say
that they are not very alarmed and view the declarations of
the government as "populist" statements. Venezuelan
intellectual property attorneys seem convinced that although
there will be changes to the IP laws, existing patents will
not be canceled and new ones will be granted.
The
consequences of such a dramatic change in the patent laws
could affect not only the pharmaceutical products but many
other industries. We are monitoring these developments
very carefully.
For further information, contact Diana
Muller.
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| .mx Domain
Names Available for Registration |
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If your company or client does business in Mexico, they
should consider registering a .mx domain name.
NIC Mexico, the organization responsible for managing .mx
domain names, has announced the reopening of domain name
registration directly under .mx. In 1989 use of the .mx
domain was limited to universities and educational institutes.
The sub-domain .edu.mx was created later for academic
entities; the sub-domains .com.mx, .gov.mx, .edu.mx, .org.mx
and .net.mx were subsequently introduced.
As part of
the reopening of the .mx domain, NIC Mexico is currently only
accepting applications from registrants who had registered
domain names prior to March 2009. During this period,
which ends on July 31, 2009, registrants can only apply to
register .mx domain names identical to the domain registered
in one of the sub-domains (so that the registrant of
trademark.com.mx can only register trademark.mx) . It is
contemplated that there will be an opposition period from
August 1st until August 31st but the rules are yet to be
announced.
From September 1, 2009 through October 31,
2009, registration of domain names under the .mx domain will
be open to the public on a first come, first served
basis. Anyone who is not a current registrant of a .mx
domain name and is interested in registering a .mx domain name
should do so during this "landrush" period.
For further
information, contact Diana Muller or
Marc P.
Misthal. |
| Appeals Court Reverses Injunction Prohibiting
Use of "Abboud" Name; Sends Case Back for
Trial |
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In a long simmering dispute, the Court of Appeals for the
Second Circuit reversed an injunction issued by the District
Court in New York, which prohibited the designer Joseph Abboud
and related companies from using the "Abboud" and " Joseph
Abboud" trademarks and names. In 2000, Joseph Abboud sold
certain assets, including rights to the "Joseph Abboud"
trademark, to JA Apparel Corp. In August 2007 an article
appeared in the Wall Street Journal reporting that Mr. Abboud
was planning to launch a new clothing line under the label
"jaz" and intended to use his name on marketing and
promotional materials for the brand. JA Apparel sued Mr.
Abboud for trademark infringement and related causes of
action. The District Court found that JA Apparel, in an
"unambiguous contract", paid Mr. Abboud over 60 millions
dollars for the rights it purchased, and that Mr. Abboud's
proposed use of " Jaz by the award-winning designer Joseph
Abboud" violated that contract. The Court of Appeals looked at
the same evidence and found the contract ambiguous because it
was unclear whether the contract conveyed only trademark
rights or all rights to use Mr. Abboud's name. The Court of
Appeals found the proposed use to be a descriptive use and not
a trademark use and, therefore, held that Mr. Abboud's
proposed use would only be prohibited if the contract had
conveyed all rights to his name. The case was sent back for
trial, so that testimony from all parties could be given in
order to determine the scope of the rights conveyed by the
contract. For further information, contact George
Gottlieb. |
Guitar Design Likely to Cause Confusion With
Headstock Design
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Gibson Guitar, Corp.
v. Concordia Investment Partners, Inc., Opposition No.
91170847 (TTAB June 10, 2009).
Concordia
Investment Partners, Inc. ("Concordia") sought to register the
configuration of a guitar. Gibson Guitar Corp.
("Gibson") opposed the application, alleging that Concordia's
guitar configuration incorporated a headstock design identical
to the "Dove Wing Head Peg" used by Gibson since at least as
early as 1922. Gibson's headstock design is also the
subject of an incontestable federal trademark
registration. The Trademark Office sustained the
opposition, finding that there was a likelihood of confusion
between Concordia's guitar configuration and Gibson's
headstock design. According to the Trademark Office,
Gibson had proved the fame of its headstock design by
introducing sales information and samples of promotional
materials featuring the headstock design, and other factors,
such as the channels of trade in which the marks are used and
the goods on which they are used, also favored a finding of a
likelihood of confusion. In reaching its conclusion, the
Trademark Office also noted that it was the custom of guitar
makers to use distinct headstocks as source indicators.
Thus, since it found Gibson's headstock design distinctive and
famous, the Trademark Office concluded that Concordia's design
"approached too closely to the well-known trademark of a
competitor" and refused registration of Concordia's guitar
configuration.
For more information, contact Marc P.
Misthal.
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| Reasonable Consumers Should Know That The
"Crunch Berries" in Cap'n Crunch Crunch
Berries Cereal are Not a Real Fruit
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In her complaint against the makers of Cap'n Crunch
cereal, Janine Sugwara, a resident of California, claimed that
for the last four years she purchased Cap'n Crunch Crunch
Berries cereal believing that it contained real fruit, i.e.,
crunch berries, and that she was shocked to discover that
crunch berries were actually brightly colored cereal
balls. Judge Morrison England, Jr. of the United
District Court for the Eastern District of California did not
buy the argument. In rejecting her case at
the outset via a motion to dismiss, Judge England found that
no reasonable consumer could possibly believe
that Cap'n Crunch Crunch Berries cereal contained a
type of fruit, crunch berries, that in reality does not
exist. In his decision he found ... "So far as
this Court has been made aware, there is no such fruit growing
in the wild or occurring naturally in any part of the
world." Judge England also noted that another
federal court had "previously rejected substantially similar
claims directed against the makers of Fruit Loops cereal, and
brought by these same Plaintiff
attorneys." We do not yet have any information
that these attorneys are planning a similar case against
the makers of Goldfish crackers, but we would not be
surprised. Click here for a copy
of the decision in the Crunch Berries case. For further
information, contact Richard S.
Schurin. |
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Intellectual Property News Editorial Board: Richard S.
Schurin ( rschurin@grr.com), Marc P. Misthal
( mmisthal@grr.com), and Steven Stern ( sstern@grr.com)
of Gottlieb, Rackman
& Reisman, P.C. Suggestions, questions and
comments should be directed to the Editorial Board by email or
telephone (212) 684-3900. For nearly forty years,
Gottlieb, Rackman & Reisman, P.C. has provided legal
advice and guidance on all aspects of patent, trademark,
copyright, and unfair competition law, tailoring its counsel
to the specific needs of its clients.
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