TTAB Disregards Subjective Intent Element
May 31, 2007
Continuing a recent trend of toughening its position on fraud, the Trademark Trial and Appeal Board ('TTAB') has cancelled yet another registration because the registrant had failed to use the mark on every good for which it was registered. <i>Hachette Filipacchi Presse v. Elle Belle, LLC,</i> Cancellation No. 92042991 (T.T.A.B. April 9, 2007). This case is the second precedential decision this year in which the TTAB has cancelled a registration as fraudulently obtained because of overly broad claims regarding use of the mark. <i>See also Hurley Int'l LLC v. Volta,</i> 82 U.S.P.Q.2d 1339 (T.T.A.B. 2007).
IP News
April 30, 2007
Highlights of the latest intellectual property news from around the country.
IP Branding: Adding Value to a Business
April 30, 2007
As the U.S. economy begins to switch from an industrial model to a knowledge-based one, business owners must adapt their traditional means for conveying the value of their assets. Intellectual property ('IP') is an intangible asset often overlooked by investors in assessing the value of a business, because companies fail to provide a useful metric for its value. IP branding is a business strategy that educates potential investors, licensees, and even competitors about the quantifiable worth of a company's intangible assets, such as patents and trademarks. Although branding has historically functioned in the traditional trademark sense to identify tangible products and services and to distinguish them from competitors, thereby giving the owner of the brand market power, it applies equally to other forms of IP. In a nutshell, the value of a firm or business is equal to not only the inherent value of its IP, but also the value added from the successful branding of a company's intangible assets. This article presents four key steps, with a focus on patents and trademarks, toward adding an IP branding strategy to an existing business model.
Contracts for Future Patent Rights: Israel Bio-Engineering Project v. Amgen
April 30, 2007
In <i>Israel Bio-Engineering Project v. Amgen, Inc.</i>, 475 F.3d 1256 (Fed. Cir. 2007), the Federal Circuit addressed whether a plaintiff had independent standing to sue on a single patent claim, where the patent-in-suit contained two additional claims directed to subject matter that was discovered in part by a co-inventor who had not assigned his ownership rights in the patent to the plaintiff.
Ninth Circuit Follows TTAB Policy: Questions Remain As to What Kinds of Unlawful Acts Bar Trademark Rights
April 30, 2007
The Ninth Circuit, in a case of first impression in that circuit, recently adopted the long-standing policy of the U.S. Patent and Trademark Office's ('PTO') Trademark Trial and Appeal Board ('TTAB') that 'use in commerce only creates trademark rights when the use is <i>lawful</i>.' <i>CreAgri Inc v USANA Health Sciences Inc.</i>, 474 F.3d 626 (9th Cir. 2007). The Ninth Circuit in <i>CreAgri</i> noted that 'at least one [other] circuit has adopted and applied this rule. <i>See United Phosphorous, Ltd. v. Midland Fumigant, Inc.</i>, 205 F.3d 1219, 1225 (10th Cir. 2000).'
IP News
March 27, 2007
Highlights of the latest intellectual property news from around the country.
Trade Dress Limits On Copyright Licenses
March 27, 2007
The first federal case to consider directly the intersection of copyright and trade dress rights arose from a dispute over the use of revealing photographs of a young Marilyn Monroe on labels of red wine. The case, <i>Nova Wines, Inc. d/b/a/ Marilyn Wines v. Adler Fels Winery LLC</i>, out of the Northern District of California, was decided on a preliminary injunction motion and involved two commercial wine merchants intent on capitalizing on Monroe's enduring marketability.
Overpleaded Opposition Supports DJ Motion
March 27, 2007
Can a Notice of Opposition in the U.S. Patent and Trademark Office Trademark Trial and Appeal Board give rise to an actual controversy under the Declaratory Judgment Act to support a trademark Applicant's federal declaratory judgment action against the Opposer? Generally, it can't ' or more accurately, it doesn't. But in <i>Neilmed Products, Inc. v. Med-Systems, Inc.</i>, the Northern District of California found that the Notice of Opposition pleaded detailed factors relevant to liability for trademark infringement and dilution.
Foreign Patent Disputes Are Off-Limits For U.S. Courts
March 27, 2007
The U.S. Court of Appeals for the Federal Circuit recently addressed the jurisdictional reach of U.S. courts to adjudicate patent disputes involving foreign patents. In <i>Voda v. Cordis</i>, a split panel held that even if the district court had the authority to exercise supplemental jurisdiction over the foreign patent claims, the district court abused its discretion by exercising that authority. The court's opinion rests largely on comity and judicial economy considerations.
