Fair Use Defense: No Burden on Defendant to Prove Absence of Confusion
January 27, 2005
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.
Avoid and Overcome Descriptive Objections under Section 2(e) of the Lanham Act
December 30, 2004
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.
IP News
December 30, 2004
Highlights of the latest intellectual property news and cases from around the country.
Raising the Stakes in Copyright Litigation: The Availability of Punitive Damages
December 30, 2004
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.
Effectively Using Partial Summary Judgment Motions in Patent Cases
December 30, 2004
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.
Enhancing Your Firm's Web Presence
December 27, 2004
Your law firm's Web site design has remained static for years. While it may be functional, it's not generating the traffic you originally envisioned, it's not interactive and the overall design is looking a tad dated. You may also not have anyone in-house who can devote the requisite time and effort needed to make the firm's site a productive new business and practice development 24/7/365 marketing tool. <br>Many law firms still don't understand that a poorly designed Web site can damage the firm's credibility and impair its image. So what's the solution? Seek the services of a Web-crafting firm that will not just be a vendor, but a Web partner and architectural strategist.
The Strategy Toolbox
December 02, 2004
Researchers and technology managers may not deal with IP every day like IP professionals do, but they are still exposed to all sorts of patent strategy tools, especially when they are attempting to develop a patent strategy for a business. The advertisements for these tools typically imply that life would be so much simpler if only they used the vendor's latest and greatest tool. Many of these tools are very useful; however, most tools also have limitations. Having a framework from which to evaluate these tools is therefore helpful to researchers and managers.
Five Reasons to Do a Trademark Audit
November 30, 2004
While a company's brands are among its most critical and valuable business assets, too little attention is usually devoted to identifying, developing, protecting and exploiting those assets. Gaps in trademark asset protection are often not discovered until a company seeks to enforce or is forced to defend its brands and encounters obstacles that could have been avoided.
