The Intellectual Property Strategist

Importers Inc. buys used HEAVY WEIGHT motorcycles in Japan and sells them in the United States. Heavy Weight Inc., the owner of the HEAVY WEIGHT trademark in the United States and Japan, seeks to enjoin their sale. Heavy Weight proves that the imported HEAVY WEIGHT motorcycles are materially different from their domestic counterparts because, among other things, they have smaller tires and a lower maximum speed. Although Importers Inc. includes a disclaimer at the point of sale, the court rules for Heavy Weight.

Highlights of the latest intellectual property news from around the country.

Features

In <i>Markman v. Westview Instruments, Inc.,</i> 517 U.S. 370 (1996), the Supreme Court held that patent claim construction is an issue of law to be decided exclusively by the court rather than the jury. As a result, district court judges now routinely conduct what is referred to as pretrial <i>Markman</i> hearings in order to resolve disputes about the meaning of words or phrases in patent claims. Prior to <i>Markman,</i> claim construction took place at trial and was decided by the judge or the jury with appropriate instructions from the court.

Features

Why maintain national trademark registrations in Europe? Your biggest client, the hypothetical Copsi-Cola, Inc., a U.S. beverage manufacturer, with a 95-year-old U.S. trademark registration for the popular POWERSWEET drink, a high-sugar soda, is attempting to expand its trademark rights in the European market and needs your advice. Copsi-Cola has also owned registrations in three of the 15 European Union ("EU") member countries for more than 50 years: France, Spain and Portugal. Copsi-Cola has begun market research in advance of selling its POWERSWEET drink in five more EU member countries, including the United Kingdom, Germany and the Benelux countries, and has asked you to file applications in the national trademark offices in those countries. Copsi-Cola also wants the option of using its mark in all EU member countries.

It is no secret that more than a few biotech and pharmaceutical companies perform drug discovery offshore and then import the results. Holders of U.S. patents on drug discovery tools (such as molecular screening methods) have wondered for years whether data or drugs resulting from such activities constitute a "product made" under The Process Patent Amendments Act of 1988 (the "Act"). The Court of Appeals for the Federal Circuit ("Federal Circuit") &mdash; in a setback to the U.S. drug discovery industry &mdash; has now held that they do not. <i>See Bayer AG v. Housey Pharm., Inc.,</i> 340 F.3d 1367 (Fed. Cir. 2003).

Features

In a decision interpreting Section 2(e)(3) of the Lanham Act (15 U.S.C. &sect;1052(e)(3)), the Federal Circuit Court of Appeals has adopted a new three-part test to be used by the U.S. Patent and Trademark Office (PTO) in determining whether a trademark is "primarily geographically deceptively misdescriptive" ("misdescriptive"). <i>In re California Innovations, Inc.,</i> 329 F.3d 1334 (Fed. Cir. 2003). The Federal Circuit held that the amendments to the Lanham Act resulting from the North American Free Trade Agreement (NAFTA) changed the rules under which the PTO may deny registration to misdescriptive marks.