|
 Intellectual Property
News | |
| Join Our List
|
| | |
|
May 2010 |
|
|
The
purpose of this newsletter is 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. | |
| | |
| GRR
Client Prevails in Colombian Trademark
Dispute |
|
GRR client Global
Brand Holdings, owner of the XOXO trademark, sought to
register its trademark in Colombia. When its application
was blocked by registrations owned by Broxxo Moda of Colombia,
Global Brand Holdings, represented by GRR attorneys Diana Muller and Marc P.
Misthal and
the Colombian firm of Prieto & Carrizosa, sought the
cancellation of Broxxo's registrations for XOXO. The
Colombian trademark authorities initially denied the request
to cancel the blocking registrations, but that determination
was reversed on appeal to the Superintendency of Industry and
Commerce. A copy of the decision in Spanish can be found
here. In reaching its
decision, the Superintendency found that the evidence
submitted by Broxxo, which mainly consisted of invoices, did
not support its position that it was using the XOXO
mark. According to the Superintendency, the use of XOXO
on the invoices submitted by Broxxo included other expressions
that totally altered the registered mark XOXO, and Broxxo
failed to submit catalogs, labels or other commercial evidence
of actual use of the mark XOXO in the marketplace. The
authority further suggested that Broxxo may have used the term
XOXO for an internal purpose and if so, that was not a
use that could support a finding of trademark rights.
This finding was bolstered by the fact that Broxxo did not
submit samples of any goods which actually bore the XOXO mark.
Furthermore, Global Brand Holdings, following advice from GRR,
was able to cancel a number of Colombian registrations
obtained by Broxxo for its OXXO mark due to
non-use. |
| Attorney
Presentations & Publications |
|
|
|
| Restaurants
Settle Fight Over Right to Sell Food that Kills
Customers! |
|
In January, the
"Heart Attack Grill" in Chandler, Arizona sued the "Heart
Stoppers Sports Grill" in Delray Beach, Florida for
trademark and trade dress infringement. In the suit, the
plaintiff claimed that although the names had
differences, both restaurants feature "monstrously fatty
menus, scantily clad 'nurse' waitresses and signage with an
EKG design." In addition, at both restaurants, customers
over 350 pounds were entitled to eat for free. Counsel
for defendant Heart Stoppers disagreed. According to the
defendant, its restaurant is "medically themed" since
it is decorated with defibrillators, dialysis machines
and has tables that resemble
wheelchairs.
Rather than a
fight to the death, on May 3, 2010, the parties settled and
the defendant agreed to make various changes to its
restaurant. Click here
to see the Consent Judgment.
For more
information contact Richard S.
Schurin. |
| Start-Ups Need a Strong Patent
Portfolio More than Ever |
|
For many years GRR, has been advising
small companies and start-ups to obtain protection for their
intellectual property, and especially patents, as soon as
possible. This protection is especially important for
start-ups looking for venture capital. A recent study
quantitatively supports this advice. In the
March/April 2010 issue of Intellectual Asset Management an article
entitled "IP in Early Stage Commercial and Investment Success"
presents a detailed and compelling financial analysis of
start-up or "early-stage" companies. In the
article, three authors from IP Vision, Inc. of Boston,
define a successful "early-stage" company as one that has been
either been acquired or went public, while an unsuccessful
company is one that is out of business. The authors
surveyed the patent portfolios of over 600 early stage
companies and report that there is a very strong correlation
between winners and a strong IP portfolio. In fact,
according to the article, "companies with high quality IP
ratings are over six times more likely to be winners than
losers."
This study illustrates that before investing,
venture capitalists are likely to be extremely sensitive to
the IP portfolio of a start-up company. Therefore,
it is very important that a start-up or early-stage company
consult an intellectual property attorney as early as possible
to assist in the preparation of a comprehensive strategy that
will lead to a strong IP
portfolio.
|
| Supreme Court to Determine Whether
U.S. Copyright Act Precludes Importation of Foreign
Manufactured Gray Market Goods |
|
The Supreme Court
will be revisiting the issue of gray goods in its next term,
having agreed on April 19, 2010 to review the decision in
Costco Wholesale Corp. v.
Omega, S.A.,
541 F.3d 982 (9th Cir. 2008).
In Costco, the
watch manufacturer Omega sued Costco to prevent the sale of
genuine Omega watches manufactured in Switzerland.
Costco had acquired the watches from a third
party who had purchased the watches (which bear a copyrighted
globe design on their underside) from authorized Omega
distributors outside of the United States. Omega's
lawsuit accused Costco of violating its distribution right
under the Copyright Act. Costco argued that Omega's
initial foreign sales precluded any claim of infringement
under the first sale doctrine, and the lower court
agreed. The appellate court reversed, explaining that
the first sale doctrine does not apply to imported goods
manufactured abroad.
It will likely be a year
before the Supreme Court issues its decision, but, whichever
way the Court rules, the decision is likely to have a
commercial impact.
|
| How Green is Your
IP? |
|
Each day, more and more companies and individuals are
paying attention to the social, political and economic
responsibilities associated with the environment. This
attention translates into the labeling of products and
services as "environmentally friendly" or
"green."
Developing truly "green"
products often requires redesigning old products, selecting
new components, or developing less polluting or less
resource-intensive manufacturing processes. The
redesigned products or the processes for making them may be
patentable even if the original products were not or if the
original patents expired. Developing a new, green-themed
brand for these products also provides an additional
opportunity for a business to impress its customer
base.
A business seeking to properly protect its
intellectual property rights in new green products or
processes should take the following
steps:
? Keep
your ideas secret---within your own corporate structure
---until patent and/or trademark applications have been filed,
in order to avoid losing foreign protection (where filing
first wins, not the first
innovator);
? Conduct
trademark clearance searches so your marketing campaign isn't
derailed by a cease and desist letter requesting your company
to immediately stop using the other party's
trademark;
? Conduct
patentability searches to best position your invention, so
that the Patent Office understands the innovation you have
made in your field of
use;
? File copyright
applications within three months to preserve rights to request
attorneys' fees and statutory damages;
and
? Comply with all
governmental regulations regarding the "green" labeling of
your product.
Recent "green" innovations include
LED lights (which use much less energy than standard
incandescent bulbs), electric car batteries, and more
efficient solar shingles. You, too, can take advantage of the
"green" movement by producing and marketing new products that
are environmentally friendly---Kermit, it is
easy being green!
|
| No Presumption of Irreparable Harm
When Seeking Injunctive Relief |
|
Salinger v.
Colting,
09-2878-cv (2d Cir. April 30, 2010)
J.D. Salinger
sued Frank Colting for copyright infringement, arguing that
Mr. Colting's book 60 Years Later: Coming Through the
Rye, about a seventy-six year old Holden Caulfield and Mr.
Salinger, infringed his copyright in The Catcher in the
Rye (see our prior article here). The lower court
agreed and issued an injunction barring the sale of 60
Years Later: Coming Through the Rye. Mr.
Colting appealed the lower court's decision, arguing that in
determining whether to issue an injunction the lower court had
applied the wrong standard and had presumed that the
publication of 60 Years Later: Coming Through the
Rye would cause irreparable harm to Mr. Salinger.
The appellate court agreed that the lower court had applied
the wrong standard, explaining that a 2006 Supreme Court case
precluded the lower court from presuming that there would be
any irreparable harm and requiring, instead, that it consider
(1) whether Mr. Salinger had suffered an irreparable injury;
(2) whether remedies available at law, such as monetary
damages, would inadequately compensate for that injury; (3)
whether the balance of hardships between the plaintiff and
defendant warranted an injunction; and (4) whether the
injunction would serve the public interest. Since the
lower court did not consider these factors, the appellate
court sent the case back to the lower court. In doing
so, the appellate court specifically found that 60 Years
Later: Coming Through the Rye is substantially
similar to The Catcher in the Rye and that Mr. Colting
is not likely to succeed on his fair use defense, essentially
telling the lower court that it should rule in Mr. Salinger's
favor so long as he makes the required
showings.
|
| Basic
Research Held Unpatentable |
|
Ariad Pharmaceuticals, Inc. v. Eli
Lilly and Co., 598
F.3d 1336 (Fed. Cir. 2010).
The question of whether one may go
directly from the bathtub (where Archimedes conceived the law
of buoyancy) to the patent office has been answered negatively
by imposing a written description requirement that goes beyond
merely disclosing how to make and practice the
invention. Basic pioneering research may not be patented
by university researchers who do not provide specific examples
of its application.
The Federal Circuit, en banc, recently
held that in addition to the requirement that the disclosure
of a patent must describe how to reduce the invention to
practice, it must also demonstrate "possession" of the
invention.
Specifically, the
inventors in Ariad
discovered a previously unknown protein, NF-kB (Nuclear Factor
kappaB), which was found to mediate certain intercellular
signaling. The scientists/inventors from MIT and Harvard
postulated that reducing NF-kB activity might reduce the
symptoms of certain diseases, and they identified three
general methods of achieving that reduction. The
scientists/inventors did not try any of those methods, and
although they did discuss them in the patent specification,
the postulated physiological result was not mentioned.
However, other scientists successfully conducted further
experiments building on this scientific achievement.
Ariad argued that the patentees had made a basic discovery and
were not required to demonstrate its application in order to
patent their "pioneering" achievement. The court deemed
the absence of any specific example of the postulated method
of reducing symptoms to be a failure in the description of the
invention.
The court noted that the written
description doctrine disadvantages universities to the extent
that basic research cannot be patented, where universities may
not have the resources or inclination to work out the
practical applications of its research. It stated, "That
is no failure of the law's interpretation, but its
intention. Patents are not awarded for academic
theories, no matter how groundbreaking or necessary to the
later patentable inventions of others."
From a practical
point of view, therefore, innovators who have made basic
discoveries need expert guidance regarding how far towards
practical application they will have to take their discoveries
to achieve patent protection.
|
|
|
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 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.
This newsletter may contain promotional
material and/or attorney advertising. If you would like
to be removed from the distribution list, please click on the
SafeUnsubscribe link below.
| | |
|
Gottlieb, Rackman & Reisman,
P.C. | 270 Madison Avenue | New York | NY |
10016 | 
|
|
