New Test Determines Primarily Geographically Misdescriptive Marks
November 01, 2003
In a decision interpreting Section 2(e)(3) of the Lanham Act (15 U.S.C. §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.
The Creditor in Possession
November 01, 2003
A hallmark of United States bankruptcy law has been the principle that a debtor should be provided with an opportunity to use the bankruptcy to get a "fresh start." That principle, initially applicable to individuals, was carried forward as an underlying premise of business reorganizations and coupled with the belief that reorganizations preserved going concern values. The value of reorganization as compared with liquidation in cases of major business failures was first realized in connection with the reorganization of railroads during the latter part of the 19th century that continued into the 20th century. In the context of the current economic environment, the underlying premise of railroad reorganizations of preserving going concern value may no longer be viable.
IP NEWS
October 02, 2003
Highlights of the latest intellectual property cases from around the country.
Supreme Court Expands Patent Jurisdiction
October 02, 2003
The U.S. Supreme Court recently issued a decision that will have a significant impact on the uniformity of patent law. As a result of <i>Holmes v. Vornado</i>, 535 U.S. 826, 122 S. Ct. 1889, 62 USPQ2d 1801 (2002), many cases involving patent counterclaims will be directed away from the Federal Circuit and into the regional circuit courts of appeals. Although this decision clarifies the jurisdiction of the Federal Circuit, it does so at the expense of consistency in patent law.
The New 'Material Effect' Test
October 02, 2003
In <i>Bayer AG v. Schein Pharm., Inc.</i>, 301 F.3d 1306 (Fed. Cir. 2002), the Federal Circuit articulated a new 'material effect' test for the best mode requirement. The court affirmed the validity of a patent covering the antibiotic drug ciprofloxacin on the grounds that it properly claimed priority to a parent application that satisfied the best mode requirement. With the priority date of the parent application, the patent was not invalidated under section 102(d) by an earlier filed foreign patent. The three-judge panel agreed that the parent application met the best mode requirement; however, the panel disagreed as to why the best mode requirement was satisfied. The majority reviewed the prior case law and found 'that the best mode of making and using the invention need be disclosed if it materially affects the properties of the claimed invention.' <i>Id.</i> at 1319-1320. Judge Radar concurred in the result, but strenuously objected to the creation of this additional criterion.
Just A Joke: The Parody Defense In Domain Name Cases
October 02, 2003
When should a third party be able to incorporate a trademark in a domain name as a form of parody? Historically the question of parody has more often been raised in copyright infringement cases where the defendant concedes that he has used a copyrighted work, but has done so in order to make a social criticism or comment. Generally courts will examine such claims by looking at whether the amount of the copyrighted work taken was no more than necessary to conjure up the original in the mind of the targeted audience and whether the parody was commenting on the copyrighted work or merely using the creativity of another to make a statement about some unrelated topic or issue. <i>See eg, Elsmere Music, Inc v. National Broadcasting Co.</i>, 482 F. Supp. 741, 747 (S.D.N.Y. 1980), aff'd, 623 F.2d 252 (2d Cir. 1980) (finding Saturday Night Live's use of 'I Love Sodom' to be protected parody of 'I Love New York').
Victor's Victorious
October 02, 2003
The United States Supreme Court decided its first Federal Trademark Dilution Act (FTDA) case on March 4, 2003, in <i>Moseley et al. dba Victor's Little Secret v. V Secret Catalogue, Inc. et al.</i> The Court granted <i>certiorari.</i> to settle the Circuits' differing opinions on whether relief under the FTDA requires a showing of objective proof of actual injury to the economic value of a famous mark, as opposed to a presumption of harm arising from a subjective 'likelihood of dilution' showing.
IP NEWS
October 02, 2003
Highlights of the latest IP news and cases from around the country.
Applying Attorney-Client Privilege Beyond the United States
October 02, 2003
The attorney-client privilege and work product immunity protect a bevy of communications between and among lawyers and clients. How do these doctrines apply when dealing with foreign attorneys and foreign patent agents? The recent decision in <i>Astra Aktiebolag v. Andrx Pharmaceuticals</i>, 208 F.R.D. 92 (S.D.N.Y. 2002), illustrates the complexities of a privilege analysis when communications take place on a global scale. In this case, defendant, Andrx, challenged claims of attorney-client privilege and work product immunity asserted by plaintiff Astra. The disputed documents fell into three categories.
