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 Intellectual Property
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November
2010 |
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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
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GRR
Client Successful in Stopping Counterfeits in
Japan
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GRR recommends an active counterfeit
monitoring program for its clients who carry out global
manufacturing and marketing. Such a program may include
recording trademark registrations with the customs authorities
in jurisdictions in which the sale of counterfeit goods is
common and working with local governments to track down
counterfeiters. As a result of this type of program, GRR
client Anna Sui Corp., represented by Amy B.
Goldsmith, has been
successful in seizing and destroying counterfeit goods in
Japan, with the assistance of local law firm Soei. Recently, a
Chinese couple residing in Tokyo was arrested for distributing
counterfeit ANNA SUI goods in Japan.
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GRR
Celebrates 40th Anniversary
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On
October 21, 2010 GRR celebrated its 40th anniversary.
GRR thanks all of its clients and friends for their support
over the years and looks forward to continuing to provide its
clients with outstanding service and
representation. |
| Attorney
Presentations & Publications |
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Amy B.
Goldsmith will be giving a presentation on Privacy
and Data Security on December 7, 2010. Click here
for more information.
Diana
Muller and Maria A.
Savio were quoted
in an article in the November 2010 issue Intellectual Property
Magazine about counterfeiting in the sportswear
industry. A copy of the article is available here.
On November 8, 2010 Steven
Stern gave a presentation on copyright and design patent
protection of jewelry designs to students of the Gemological
Institute of America.
Diana
Muller and Jeffrey M.
Kaden participated in the ASIPI Round Table of
Patent Experts, which appeared in the October 2010 issue of
Corporate INTL. A copy of the article is available here.
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Golf--The
Mother of Invention?
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Now
that Fall is in full swing and the weather is getting colder,
for the golfers among us, there will be fewer opportunities to
take out the clubs and play a round. That said, it might be
time to think about purchasing some new equipment so that next
year, that allusive birdie, that drive that goes straight as
an arrow, or that chip from the sand that falls effortlessly
onto the green, becomes reality.
To
that end, here are some products that you might want to
consider. And what makes these products of particular interest
is that each of them has received the blessing of the United
States or a foreign country by being granted the protection of
a patent. In other words, the U.S. or foreign Patent Office
was convinced that each of these items was innovative and
therefore advantageous in some respect, that when used by the
golfer would likely dramatically improve his or her golf
game.
 For example, to improve your putting game, take a
look at U.S. Patent No. 6,846,244, which is directed to a
"Headband Golf Putter". The gist of the invention is that the
putter club is attached at the handle end to a headband that
is worn by the golf player. So instead of using your hands to
guide the putter towards the ball, you guessed it-the golfer
uses his or head instead.
One
problem many golfers have is that they are constantly loosing
the golf tee when they tee-off at the beginning of each hole.
Well, British Patent No. 2,345,447 entitled "A Golf Tee On A
Cord" attempts to solve this problem. According to the British
patent, a length of cord is provided that can be attached at
one end to a golf tee. The other end is wound onto a rotatable
spool; the spool can then be removably attached to golfer's
shoe. As can well be appreciated, you'll never lose another
tee.
The
Japanese are always coming up with innovative products for all
sorts of industries and activities, and the area of golf is
definitely no exception. In Japanese Patent No. 9,107,863
entitled "Tool To Prevent Golf Ball From Being Stolen", what
is described is an electrocondutive ball stand. It is used as
follows- when a bird comes by to try steal a golf ball, the
electrical system of the stand is closed, thereby mildly
shocking the bird so that it goes away. You'll never lose
another golf ball.
 Perhaps the most innovative product design is
disclosed in U.S. Patent No. 5,109,617, which is
directed to a "Heal Mounted Sand Trap Rake Accessory For Golf
Shoes". Attached to the rear of the heel of one or both golf
shoes is a small transversely mounted rake. Each rake includes
a pivot mechanism such that the rake can be selectively
lowered and thus be in raking contact with the sand surface as
needed. With this product, no more expending energy in order
to lift and operate a separate rake after hitting the ball out
of the sand.
With
these and other patented golf playing products, one's game is
undoubtedly bound to improve. See you on the
links!
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| James
Bond's Gun--A Registered Trademark |
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Product
configurations can be registered as trademarks in the United
States although doing so requires a significant showing to
prove to the Trademark Office that the configuration has
acquired secondary meaning such that consumers seeing the
configuration identify it as a source indicator.
 A recent
decision from the Trademark Office shows what it takes to
register a product configuration. Carl Walther GmbH,
maker of the Walther PPK handgun, sought to register the
configuration of the gun as a trademark for use in connection
with firearms; pistols; and air soft guns. The examining
attorney refused registration, finding that the configuration
had not acquired secondary meaning. Carl Walther PPK
appealed to the Trademark Trial and Appeal Board ("TTAB"),
which reversed (see decision here). According to the TTAB,
there was sufficient evidence that the configuration had
acquired secondary meaning. To support the application,
Carl Walther GmbH submitted: 1) the results of a
consumer recognition survey showing that approximately 54% of
the respondents stated that they were able to identify the
maker of the pistol based on its configuration (33% of the
participants correctly identified Carl Walther GmbH or its
licensees); 2) a declaration from a handgun expert stating
that the configuration of the Walther PPK is one of the most
recognizable gun configurations; 3) evidence of its promotion
of the Walther PPK and unsolicited press regarding the Walther
PPK; 4) evidence that the configuration of the Walther PPK has
been licensed to various parties for the purpose of making
replicas; and 5) evidence that the Walther PPK is known as
"James Bond's gun" and has been prominently featured in film
art and the opening sequences of the James Bond
films.
As
can be seen, quite a bit of evidence is necessary to support
the registration of a product configuration as a
trademark. As a result, applications to register product
configurations are generally more expensive than applications
to register word marks. Moreover, in view of the amount
of evidence needed to secure a registration, products that
have been in the marketplace are more likely to be registrable
than newer products. This means that product
configuration registrations will generally not be the first
means considered to protect the look of a product. If
they can be obtained, however, product configuration
registrations can be powerful tools. GRR has obtained
several product configuration registrations and is a leader in
obtaining this type of protection.
For further information,
contact Marc P.
Misthal.
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| The
Earth is Moving Under Timberland's Feet |
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We've mentioned before that it's
important to conduct trademark clearance searches before
adopting a new brand. If a recently filed litigation
proceeds to trial, we may find out if Timberland followed that
procedure and whether "earth" is truly exclusive for
footwear.
Meynard
Designs had the earth covered, or so it thought, with its
EARTH family of marks in the field of footwear. In
addition to an incontestable registration for the mark EARTH
itself for footwear, it owns registrations for EARTH SPIRIT
CLASSICS, MADE ON EARTH, EARTH GOLF, EARTH ORIGINS, EARTHIES
and EARTH VEGAN. Timberland decided to
adopt "the earth," and branded a footwear collection
EARTHKEEPERS. Meynard Designs notified Timberland that
"the earth" was off limits, but Timberland allegedly
disregarded the warning. Meynard filed a trademark
infringement complaint this October, claiming that not only
did Timberland adopt an earth-family mark, it emphasized
the word "earth" in its use of the brand. A copy of the
complaint is available here. The case is now pending in the
United States District Court for the District of
Massachusetts. Perhaps Timberland is reassessing its
allegiance to the earth? We will follow developments in
this case.
For more information, contact Maria A.
Savio. |
Research Contract Resulting in Prior
Invention in Another Country is Insufficient to Defend Against
Patent Infringement
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Solvay
S.A. v. Honeywell International, Inc., 2009-1161 (Fed Cir.
Oct. 13, 2010).
In
early 1994, Honeywell (then AlliedSignal, Inc.) entered into a
research contract with the Russian Scientific Center for
Applied Chemistry ("RSCAC"). Under the contract, RSCAC
developed a new process for making a chemical used in the
manufacture of refrigeration and heat storage systems.
RSCAC developed the process in Russia and sent a report,
detailing the invention, to Honeywell in the U.S.
Honeywell used the report to duplicate RSCAC's experiments
with similar conditions and equipment. Later in 1995,
Solvay filed a patent application for the same process.
Solvay's
application issued as a patent and Solvay sued Honeywell for
patent infringement. Honeywell defended the action
asserting a defense based on prior invention in this country
by another who had not abandoned, suppressed or concealed
it. Honeywell argued (and the District Court agreed)
that Honeywell conceived the invention in the United States
upon receipt of RSCAC's report. Accordingly, the
District Court found the patent invalid. On appeal, the
Federal Circuit reversed and found the patent valid. The
Federal Circuit held that Honeywell could not be an inventor
for purposes of the � 102(g) defense because Honeywell never
conceived of the invention. (Invention requires
conception of an idea and reduction of that idea to
practice.) RSCAC was the inventor though RSCAC was not
in this country.
The
ruling is a tough one for Honeywell. They had possession
of the invention prior to Solvay, but Honeywell cannot use
this fact as a defense to patent infringement. Other
than publicly disclosing the invention upon receipt from
RSCAC, it appears that all Honeywell could have done to
protect itself was file a patent application on behalf of
RSCAC and assign the application back to Honeywell.
The lesson learned from this case is that possession
and ownership are not the same.
For further information, contact Joshua
Matthews. Co-authored by Maysa
Razavi. |
Retailer Permitted to Bring Claims
for Unfair Competition and False Endorsement Arising out of
its Purchase of Counterfeit Goods
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Famous
Horse Inc. v. 5th Avenue Photo Inc., 08-4523 (2d Cir. Oct.
21, 2010).Famous Horse Inc. operates V.I.M.
stores in New York which sell low price brand name
clothing. In 2006 V.I.M. purchased jeans from the
defendants. V.I.M. subsequently discovered that the
jeans it had purchased were counterfeit and stopped selling
the jeans. The defendants continued selling the
counterfeit jeans to other clothing stores and in the course
of pursuing those sales told prospective customers that V.I.M.
was a satisfied customer.V.I.M. filed a lawsuit for false
endorsement, unfair competition and related claims after
learning what the defendants were telling prospective
customers. On the defendants' motion, the district court
dismissed the lawsuit and refused to allow V.I.M. to amend the
lawsuit to cure any deficiencies. V.I.M. then
appealed.The
court of appeals reversed the lower court's decision, finding
that V.I.M. had adequately stated a claim for false
endorsement. The court explained that V.I.M.'s
allegation that the defendants falsely "stated and implied to
its customers and prospective customers that V.I.M. was a
satisfied customer of" their jeans stated a claim that the
defendants had used a word, term, name or symbol or a false or
misleading statement of fact which is likely to deceive as to
the sponsorship or approval of the defendants' goods.
The court noted that a claim for false endorsement is broader
than a trademark infringement claim and does not require that
the alleged false endorsement use a plaintiff's trademark in
connection with particular goods or services.
The court of
appeals also found that V.I.M. was entitled to assert a claim
for unfair competition based on defendants' sale of
counterfeit goods to V.I.M. The court permitted the
claim to proceed even though V.I.M. did not own the trademark
that appeared on the counterfeit jeans. According to the
court, V.I.M. could assert the claim since it competes with
the defendants. Moreover, the sale of the counterfeit
jeans would harm its reputation as a discount store because
customers would believe that it sold jeans at higher
prices when compared to
the counterfeit jeans supplied by defendants and because
consumers who learned of the counterfeit jeans would believe
that V.I.M. sells counterfeit clothing. In permitting
V.I.M. to proceed with this claim, the court observed that
V.I.M. might find it difficult to prove actual harm or damages
at trial.Accordingly, the court of appeals
permitted V.I.M.'s lawsuit to
proceed. For further information, contact Marc P.
Misthal. |
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Intellectual
Property News Editorial Board: Amy B.
Goldsmith
(agoldsmith@grr.com),
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.
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