Posts Tagged: "Guest Contributor"

Although every case had its own special facts reflecting unique personalities, technologies and business models, one necessary element was present in every single case. Somebody had done something stupid. And they still do. Sometimes it’s about what people do when getting ready to leave their job and go into competition. They brazenly solicit customers or foment discontent among the staff they want to recruit. They use the company’s computer system to research and prepare their business plan. They download thousands of confidential files they’re not supposed to have anyway, and then try to cover their tracks by using specialized software – I’m not making this up– called “Evidence Destroyer.”

On October 30, the Federal Circuit Court of Appeals reversed a decision from the International Trade Court invalidating the Converse Chuck Taylor sneaker design trade dress.  Converse Inc. v. ITC, No. 2016-2497, 2018 WL 5536405 (Fed. Cir. Oct. 30, 2018).  At first glance, this appeared to be great news for Converse.  However, the decision highlights multiple obstacles that Converse, and other brand owners, will continue to face as they seek to enforce product design trade dress in the US.

The number of trademark applications being filed by foreign companies with the United States Patent and Trademark Office (USPTO) has been growing steadily – and in China’s case rapidly – since 2013. In 2013, a total of 328,180 trademark applications were filed in the USPTO, of which 57,977 (17%) were filed by foreign applicants. In 2017, 451,009 trademark applications were filed with the USPTO and the total number filed by foreign-based applicants rose to 119,883 (26%)… It is important for U.S. companies to recognize that the increases in trademark filings in general and by foreign companies, in particular, signify future stiff competition in the marketplace and potentially serious threats to existing trademarks.

The default position of brands has often been to protect as many marks as possible, driving other applicants out and helping establish a well-known and profitable identity. When names can make or break a brand, a significant number of trademarks are created purely for protection. However, these protective practices lead to a systemic problem. When new entrants to a market are faced with trademark clutter, their only choice is to adopt equally aggressive application strategies. This behavior leads to more clutter and further reduces the available pool of marks for the next generation of applicants.

It’s football season, so of course we should be talking about beer. Specifically, beer secrets. For fourteen years James Clark had an enviable job at Anheuser-Busch, where he had access to the brewer’s confidential recipes. For unexplained reasons he resigned. Instead of joining a competitor, he went to see a lawyer about planning a class action against his former employer for “intentionally overstating the alcohol content” of the company’s “malt beverages.”… Anheuser-Busch sued him for misappropriation of its secrets for making beer.

A trademark audit is a review of a brand owner’s current trademark portfolio to ensure that the brand owner’s trademark usage and trademark holdings are sufficient, comprehensive, and accurate. Good practices requires that a trademark audit be conducted yearly, or any time an existing trademark portfolio is acquired, even if there has already been IP due diligence. The primary goal of conducting a trademark audit is to ensure that there are no deficiencies in protection.

Black Friday is one of the most important retail events of the year for brands and consumers alike. This sales event is particularly tempting for price-centric Millennials whose diverse buying habits put them at increased risk of falling for fakes. Representing one of the biggest Black Friday consumer segments, they are particularly vulnerable to counterfeiters. Last year alone, our data show that an estimated $482 million were lost on Black Friday from Millennials who unwittingly bought fakes online.

Courts consistently focus on the availability of non-infringing substitutes as of the date of the hypothetical negotiation. In most of the cases reviewed, the determination of available substitutes was limited to those available at the date of first infringement. If an alternative introduced after the hypothetical negotiation was considered, its impact was discounted to reflect uncertainty as of the date of the negotiation. For example cases, please contact the author. From a review of the above cases, it is clear that the book of wisdom can be relevant and useful, but it is not always allowed by courts. Use and acceptance of the book of wisdom is case and court specific.

A closely watched cross-border trademark case finally has been resolved, and the results of the case have implications for global trademark holders. A  U.S. District Court Judge in the Eastern District of Virginia granted Bayer AG’s motion for summary judgment, dismissing rival Belmora’s claims to the trademark FLANAX. In Mexico, Bayer uses the FLANAX mark for the popular pain medication known elsewhere as Aleve (naproxen), and successfully blocked Belmora’s attempt to market its own naproxen product under the mark FLANAX in the United States. The ruling also affirms a U.S. Trial and Appeal Board ruling that cancelled Belmora’s U.S. trademark for FLANAX, which the company secured in 2005. The United States Court of Appeals for the Fourth Circuit had previously determined that the Lanham Act authorized Bayer’s claims against Belmora for unfair competition under §43(a) and its cancellation action under §14(3).

When it comes to gathering information prior to settling on a prospective licensee, less is certainly not more. For this reason, companies angling to license software must not be shy about asking the questions presented here. Without a doubt, by learning as much as possible about potential partners before finalizing agreements, software licensors can significantly minimize downside risk. Appropriate due diligence is the means to that end. Whether by way of a thorough licensing application or more in-depth background investigation conducted by legal counsel, a licensor’s complete grasp of a licensee’s work, reputation, experience, reach, financial condition, litigation history and potential conflicts of interest will go a long way to ensure a successful licensing relationship.

Andy Bitter, a former sports journalist covering the travails and triumphs of the Virginia Tech football team, was sued last month by his former employer, a local newspaper, for trade secret theft. According to the plaintiff Roanoke Times he was obligated by the company’s employee handbook to turn over all company property, and this necessarily included the Twitter account he had used to stay in touch with his 17,000+ followers… In spite of the mess it created, the Roanoke Times has reminded us of some important questions for industry in the information age. Who owns social media accounts? What role do they play in building competitive advantage? And how should companies manage their use?

For the innovators capitalizing on the legal growth, distribution, and commercial sale of cannabis, the procurement of intellectual property rights can go a long way in the monetization of their ideas, products, and services. As with any new venture, solidifying an IP protection strategy early on can maximize the benefits of a new invention and minimize risk the of potential infringement. This rings especially true in a field where so few patents, copyrights, and trademarks have been issued… It is not impossible to secure IP rights on cannabis-related inventions, but there are a number of factors to consider and a number of complexities to be aware of.

When Congress permitted sound recordings to be copyrighted over four decades ago, it didn’t extend that coverage to pre-1972 recordings. This issue, and the piecemeal nature of licensing for digital music on a per-work, per song basis, were part of the impetus for the stakeholders in the music industry to work together to create the Music Modernization Act, signed into law on October 11, 2018… Not all issues in the music industry were solved by the Music Modernization Act: licensing of physical sound recordings (vinyl and CDs) will still occur on a per-work, per song basis. Terrestrial radio pays songwriters and publishers royalties for playing music, but it doesn’t pay performance or sound-recording royalties. And while the goal of one public database is laudable, the responsibility still lies with songwriters and publishers to submit copyright applications and to submit all of their musical works and sound recordings to the MLC… While there is still work to be done, the Music Modernization Act does solve some long-standing issues in the music industry.

Early protection of intellectual property rights is a critical component in any business’ efforts to secure a competitive advantage in the marketplace. A recent report has found that patenting activity for cannabis food and drink has seen a large increase in global activity, in the last five years. 242 simple patent families have been filed in 2015, up from only 144 simple patent families filed in 2012. However, not a single food and beverage company was found to be among the top 10 applicants. Is this a sign that food and beverage companies are not well positioned to benefit from ongoing cannabis legalisation?

Although running an early-stage startup is exhilarating, do not let your brand name protection be swallowed up by all the excitement. Neglecting to properly secure a trademark for your company and products can lead to expensive consequences in the future, such as being forced to rebrand just as you’re gaining traction or being unable to stop infringers from using your brand name. Below are 5 of the most common mistakes businesses make with trademarks and what you can do to avoid them.