Fair Use Defense: No Burden on Defendant to Prove Absence of Confusion
On Dec. 8, 2004, the U.S. Supreme Court held that a party raising the statutory affirmative defense of fair use to a charge of trademark infringement does not have an independent burden to negate the likelihood of any confusion as to the source or origin of the trademark accused of infringement. <i>KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc.</i>, 543 U.S. ___, 2004 U.S. LEXIS 8170 (2004). The decision resolved a split between the circuits on the statutory, or "classic," fair use defense to trademark infringement.
Effectively Using Partial Summary Judgment Motions in Patent Cases
While not fully disposing of a case, partial summary judgment motions — even when denied — may effectively limit the scope of issues for trial. Knowing how the contours of the applicable federal rule, namely, Federal Rule of Civil Procedure 56, apply in the patent arena can be especially advantageous in complex patent matters involving multiple legal and factual issues. There are two particularly worthwhile topics for patent cases: first, the extent to which the courts differ over what is appropriate for decision upon a motion for partial summary judgment; and second, the requirements for "establishing" facts for the purposes of trial, even when a partial summary judgment motion is denied.
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IP News
Highlights of the latest intellectual property news and cases from around the country.
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Raising the Stakes in Copyright Litigation: The Availability of Punitive Damages
The threat of enhanced damages, particularly in the hands of a jury, can have a considerable effect influencing the strategic conduct of litigation. Assuming some merit to a claim — at least sufficient to withstand summary judgment — the possibility of a verdict doubled or trebled or otherwise multiplied to deter or punish perceived willful, malicious conduct, perhaps representing many times the plaintiff's actual damages or the defendants' profits, can indeed be something of a gun to the head. To some plaintiffs seeking to vindicate a perceived wrong, the prospect of punitive damages can, of course also be something akin to the brass ring, adding extra incentive spurring pursuit of a verdict to the very end, even in a case that might otherwise settle.
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Avoid and Overcome Descriptive Objections under Section 2(e) of the Lanham Act
Section 2(e) of the Lanham Act provides that no trademark shall be refused registration unless it consists of a mark which when used on or in connection with the goods or services of the applicant is merely descriptive or deceptively misdescriptive of them. Despite this caveat, trademark owners gravitate toward descriptive marks because they easily convey to the intended user something about the nature or characteristics of the goods or services. Because of that easy association, some trademark owners believe that they can obtain "exclusive" rights to a mark without having to expend the large amounts of money typically required to educate consumers of the connection between a mark and the goods or services with which it is associated when a less descriptive mark is adopted. For those who are keen to register marks that have some descriptive qualities but also hold the capacity for distinctiveness, taking appropriate precautions in preparing the application and presenting evidence of distinctiveness to the Patent and Trademark Office may greatly increase the likelihood of obtaining a Principal Register registration.
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IP News
Highlights of the latest intellectual property news and cases from around the country.
Taxing the Patent Laws
This past October, Rep. Howard Berman (D. Calif.) introduced the Patent Quality Assistance Act of 2004 (H.R. 5299, the "PQA Act"). The PQA Act seeks to implement many of the recommendations of the much-publicized FTC (October 2003) and National Research Council (April 2004) reports. The bill has been referred to the Judiciary Committee, which is not expected to act on it before the end of the 108th Congress. Rep. Berman introduced the bill at the end of this Congress, however, "with the intent of framing the debate going into the 109th Congress." 150 Cong. Rec. 1935.
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Tips for Effective Patent Application Drafting and Patent Prosecution
By now, patent attorneys who do a fair amount of patent application drafting and patent prosecution should be well versed in the fairly recent PTO rule changes dealing with various aspects of patent prosecution. Rather than discuss those rule changes, this article discusses 10 tips for better patent application drafting and patent prosecution. The first two tips deal with patent application drafting, the next four tips deal with prosecution of a patent application, the next three tips deal with things to do after receiving a notice of allowance, and the last tip deals with all stages of patent prosecution.
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