IP News
Highlights of the latest intellectual property news from around the country.
Use It or Lose It: Can Residual Goodwill Avert Abandonment?
The notorious legal battle over the right to use the MUSTANG RANCH trademark for legal brothel services illustrates the 'use it or lose it' adage as applied to trademark rights and the difficulty of establishing an excuse for nonuse. <i>Burgess v. Gilman</i>, 78 U.S.P.Q.2d 1773 (D. Nev. 2006). Because U.S. law does not permit the warehousing of trademarks, the owner of a trademark typically must use the mark in commerce or lose the ability to prevent others from using it. For this reason, '8 of the Lanham Act requires trademark owners to file a declaration of use between the fifth and sixth year after registration and with renewals. 15 U.S.C. '1058.
Patent Injunctions: Quo Vadis ' What Is the Expectation of a Patentee After eBay?
Whither goest thou?' Or, in plain English: Where are you going? That is the question that must be asked of the courts in the wake of the Supreme Court's recent decision in <i>eBay, Inc., v. MercExchange, LLC</i>, 126 S. Ct 1837 (2006), in which the Court reversed the long-standing practice in the Court of Appeals for the Federal Circuit (the 'Federal Circuit') of granting permanent injunctions in patent cases absent a persuasive reason for not doing so.
IP News
Highlights of the latest intellectual property news from around the country.
Patent Quality Improvements in the Works at the USPTO
In its ongoing efforts to improve the examination of software patents and resolve continued concerns over their quality, the U.S. Patent and Trademark Office ('PTO') has partnered with IBM, Open Source Development Labs ('OSDL'), and the open source community to try and achieve this goal. Among the proposals is the idea of establishing a searchable database containing an index of open source computer code. This database should make it easier for software code developers and patent examiners to locate relevant prior art.
Do Keyword Search Terms Constitute 'Use' of a Trademark?
It has been judicially noted that '[t]he Court must avoid excessive rigidity when applying the law in the Internet context because emerging technologies require a flexible approach.' <i>Edina Realty Inc. v. TheMLSonline.com</i>, D. Minn., No. 04-4371, March 20, 2006, <i>citing Brookfield Commc'ns, Inc. v. W. Coast Entm't Corp.</i>, 174 F.3d 1036, 1054 (9th Cir. 1999) (4 ECLR 384, May 5, 1999). Recently, conflicts involving one of the emerging Internet technologies, namely sponsored online key word advertising, have yielded, not only judicial flexibility, but also a fair amount of ambiguity in applying the laws of trademark infringement in Internet advertising contexts. Two recent federal district court decisions on the issue ' <i>Edina Realty v. TheMLSonline.com</i>, D. Minn., No. 04-4371, March 20, 2006; and <i>Merck & Co. Inc. v. Mediplan Health Consulting Inc. d/b/a RXNorth.com</i>, S.D.N.Y., No. 05 Civ 36550, March 30, 2006 ' illustrate the current legal muddle in their diametrically opposite conclusions on the threshold question at the heart of each analysis: Does the purchase and use of key word search terms constitute 'use' of a trademark under the Lanham Act?
In re EchoStar Communications: Implications for Opinion Practice in Patent Cases
The Court of Appeals for the Federal Circuit finally has opined on the scope of waiver of privilege in patent infringement litigation when an accused infringer relies on an attorney opinion to defend against a charge of willful infringement. <i>In re EchoStar Commc'ns Corp.</i>, 2006 U.S. App. LEXIS 11162 (Fed. Cir., May 1, 2006).
Departing Employees
Most companies have taken care to ensure that new and departing employees have completed Human Resource files with nondisclosure agreements, non-competition agreements (where applicable), invention and assignment agreements and various other agreements, acknowledgements and forms. Are companies doing enough to protect themselves from intellectual property theft by departing employees and consultants?
