ROBERT M. ISACKSON
Winter 2021/2022
This issue coincides with the end of 2021, and it’s traditional to reflect back on how the year went and look forward to what is yet to come. For NYIPLA, the big look forward is to the 100th Annual Dinner in Honor of the Federal Judiciary, scheduled for Friday March 25, 2022 at the New York Hilton Midtown Hotel. Even as law firms and companies adjust their work from home and/or office and travel protocols, we are fingers-crossed planning a traditional in-person event, complete with hospitality suites before and after a sit-down dinner, with some entertainment, an Outstanding Public Service award, and a couple of speeches. NYIPLA remains cognizant that COVID19, its known and unknown variants, and any associated governmental regulations may require some changes to precisely how the Dinner proceeds. We will therefore be rigorous in our efforts to proceed in a manner that will protect the safety and well-being of our valued honored guests, members and their guests, as well as NYIPLA’s and Hilton’s administrators and staff on whom we depend to provide the exceptional experience we have come to expect. Details will be forthcoming. As IP professionals, we also are looking forward to what is likely to be a continued evolution of intellectual property law, as Congress and the courts administer the living Constitutional mandate to “promote the progress of science and useful arts” (Art. I, Section 8, Clause 8). Indeed, Congress already has before it a number of competing legislative proposals that were sidelined in 2021 by the infrastructure, budget and pandemic related bills. The possibilities range from Senator Leahy’s proposal to tweak and “improve” the ten year old Leahy-Smith America Invents Act (“AIA”), arguably “course correcting” how the courts have ruled and how the USPTO and PTAB have interpreted various provisions, to Congressman Massie’s bill to outright abolish and roll back all of the sweeping changes implemented by the AIA. There also is pending legislation that addresses the interplay of public policy underlying IP protection and health care costs, which has the potential to impact many of our members personally and professionally. Likewise, we look forward to the implementation of newly enacted trademark and copyright legislation and procedural rules, how the recent jurisprudence addressing IP issues will impact innovation and creativity, business opportunities, and the economy. And we await the confirmation of a new Director of the Patent and Trademark Office to implement the Biden Administration’s IP policies, whether it’s the current nominee Kathy Vidal or another. Some among us still look forward with eagerness to clarification, greater predictability and settling expectations regarding Section 101 patent eligibility, whether by Congressional legislation or the Supreme Court jurisprudence (e.g., accepting certiorari on the pending American Axlecase). Others look forward to maintaining the status quo, because current jurisprudence is working just fine, or managing it because they don’t see help on the horizon. Regardless, (at least) NYIPLA’s Legislative Action, Patent Law and Practice, and Litigation Committees are keeping watch for any new legislation or judicial pronouncements and will keep us informed of any meaningful developments. This all said, as a litigator I remain a bit bemused by the thought that any new legislation or court decision will actually do more than engender more litigation over what the new changes mean, let alone provide greater predictability in the outcome of patent eligibility challenges to the benefit of all stakeholders. NYIPLA also plans to proceed with its usual committee work, CLE presentations, and networking. However, for now in the short term, our plan remains to operate virtually and remotely. We will revisit the opportunity for in person activities as time passes. With respect to looking backward, despite the lack of in-person networking and face to face interaction, NYIPLA had a very full and busy year. Indeed our membership is up year on year, reflecting the strides we have made in engaging with our members through, for example, our many committees and their regular committee work, special projects, and our numerous quality, meaningful CLE presentations. Our wonderful and innovative IP Transactions Boot Camp got off the ground and our first cohort of attendees have graduated. This work also laid the groundwork for developing a focused Litigation Boot Camp, with details still to come. NYIPLA also continued supporting and working with the New York Intellectual Property Law Education Foundation in supporting its mission to fund scholarships to increase diversity among IP attorneys. Given our virtual status, we’ve also initiated some interesting collaborations with other bar associations, which we plan to launch this winter/spring. As a litigator, I know that for every winner there is usually a loser. As one who also works on IP transactions, those tend to be more of a win-win or lose-lose situation. In this regard, our planned President’s Forum on privacy didn’t happen and we can debate whether the fault was mine or the Senate’s clogged calendar for advancing legislation. Regardless, I’m going to claim a lemonade out of lemons victory because the Daniel Anderl Judicial Security and Privacy Act, with its detailed definition of personal identifying information that precipitated the concept of a forum on privacy and IP issues, was positively reported out of the Senate Judiciary Committee and is headed to the Senate floor for debate. The NYIPLA strongly supports this bill as it will greatly benefit our federal judiciary. As we move into 2022, I hope you are recharged from having had some personal well-being time over the holiday season, and recharge, and if not may find the time to do so soon, all the better to embrace the opportunities the new year may bring.
NYIPLA President's Corner
In This Issue:
President's Corner NYIPLA Spotlight: Q&A with Deirdre Clarke and Lauren Emerson Co-Chairs of NYIPLA’s Trademark Committee Eyes Up! That Perfect Brow Post Could Land Influencers in a Lawsuit By: Nicholas E. Forgione End of the Year Trademark Law Review By: Giselle Ayala Mateus, Esq. Notable Trademark Decisions, January 2022 By: Scott Greenberg and Anna Antonova Notable Trademark Decisions - Supplement, January 2022 By: Scott Greenberg Historian's Corner Board Minutes NYIPLA Events Moving Up and Moving On Welcome New Members Upcoming Programs
NYIPLA Calendar
2022 registration is open! THIS YEAR'S JUDGES DINNER WILL BE Hosted at the new york Hilton midtown hotel IN CELEBRATION OF THE FEDERAL JUDICIARY AND ITS ADMINISTRATION OF JUSTICE. For More information and to join us, Please CLick Here
What is one issue that the Trademark Committee is focusing on this year? Deirdre: As an initial matter, the Committee will focus on monitoring and analyzing changes in US law and practice and to the extent necessary, assist in advocating for stakeholders on behalf of the organization to promote change in the field or provide recommendations as to best change current practices. Beyond that, we look to engage with the membership at large to help increase awareness of changes, promote dialogue and education through programming. Lauren: The Committee is very interested to see the practical impact of the TMA coming into effect. Like many others, we’re also keeping a close eye on IP-related issues in the NFT space. - Why did you pursue a career in intellectual property law? Deirdre: Initially, IP law was not on my radar. I came to IP after working in healthcare for a number of years. I sought a change and with my science background I discovered that I could enter the field of IP. At first, I thought patents but then ended up doing trademarks and copyright instead. I have not looked back since. Lauren: I put my undergrad major in Japanese to use by landing a job at Pokemon USA after I graduated. I wound up working in licensing primarily, and got my first exposure to trademark and copyright issues as a result. Based on that experience, I decided to pursue law and IP specifically. - Do you work with a particular type of intellectual property in your practice? Deirdre: My practice primarily focuses on trademarks and copyright. Lauren: Everything but patent. - What do you see as a current challenge facing intellectual property attorneys? Deirdre: While not new, counterfeiting continues to be a challenge facing IP attorneys. With the Covid-19 pandemic and the increase of online sales, the counterfeit market really grew. The other challenge is new technologies like AI. - Are there any recent or foreseen changes (in the law or market) that will have an impact on your practice? Deirdre: Certainly, the recent changes at the United States Trademark Office by virtue of the Trademark Modernization Act and the formation of the Copyright Claims Board at the US Copyright Office (established by the CASE Act) are top of mind as both will undoubtedly make practitioners think more strategically about how to protect and enforce IP rights. Lauren: We are also keeping an eye on the Supreme Court’s decision in the Unicolors case in particular. - What is one thing you love to do other than work? Deirdre: I love to travel and greatly enjoy the arts – music, theater, dance and art. Lauren: For me, it’s weightlifting. I was all set to compete at the National Masters event in April of 2020 – that did not happen for obvious reasons, so now I have my sights set on qualifying for 2023. - What advice would you give to someone considering a career in intellectual property law? Deirdre: Go for it! The field is multi-faceted. You can focus on transactions or be a litigator. Further, you will never grow tired or bored of practicing in this field as it touches so many different industries. In fact, I would argue that you would be hard-pressed to not find an area of interest. Moreover, I love that I learn something new every day due in large part to the fact that the field continues to evolve and grow because of the advances in technology that affect intellectual property rights. Some of those technologies were not even a consideration when I first entered the field and so, I continually have to update myself on the latest thing or solicit the counsel of one of my colleagues or their children. Lastly, it is great to have a hand in bringing something to market whether it is helping to foster innovation to help society or enrich society through creative expression. Either way, I think that last part never gets old for me and so I would happily encourage someone to come onboard the IP train. Lauren: It’s a great area. It’s constantly evolving, it’s challenging, and you will almost certainly learn a lot about a variety of industries. That creates a lot of variety within the niche. One moment I’m talking to a romance novelist about getting rights back from a publisher. The next I’m dealing with a copyright litigation involving architectural works. And the next I’m dealing with a trademark opposition in Nigeria involving marks for automotive components. One thing that’s particularly fun and often overlooked about trademark prosecution in particular is how truly international that practice is. I interact with people across the globe on a daily basis.
Q&A with Deirdre Clarke and Lauren Emerson Co-Chairs of NYIPLA’s Trademark Committee
NYIPLA SPOTLIGHT
A recent case[1] in California could spell increased risks for influencers posting on social media and new headaches for brand owners. Beauty brand Rodan & Fields partnered with model and actress Molly Sims to promote its “Brow Defining Boost” eyebrow gel product on her popular blog. In August 2020, Sims authored a post on her blog, sponsored by Rodan & Fields, in which she favorably reviewed the brow gel product and included a picture of the product, the price, and a link to Rodan & Fields' website where readers could purchase the product. Waiting in the wings was Petunia Products, Inc., an international cosmetics brand, which owns the registered trademark Brow Boost ® used in connection with its eyebrow primer and conditioner product. Several months after Sims’ blog post, and after sending a cease and desist letter to Rodan & Fields, Petunia Products filed a Complaint in April 2021 in the United States District Court for the Central District of California against Rodan & Fields. In a novel twist, however, Petunia Products included Sims as an additional defendant in the complaint. Petunia Products alleged that Sims was on the hook for trademark infringement based on her sponsored blog post using the allegedly infringing "Brow Defining Boost" mark.[2] The Complaint alleged against all defendants: direct trademark infringement; contributory trademark infringement; false advertising under Cal. Bus. & Prof. Code § 17500; and unlawful and unfair business practices under Cal. Bus. & Prof. Code § 17200.[3] Sims filed a motion to dismiss arguing that she should not be liable for trademark infringement in her capacity as an influencer posting a sponsored post at the direction of a brand owner.[4] The court, however, disagreed and allowed the direct infringement claim against Sims to move forward. Deciding that Sims’ sponsored post was sufficient to establish commercial use of the allegedly infringing mark, the court distinguished Sims’ post from mere commentary protected by the First Amendment.[5] The court stated that it crossed into commercial use territory by virtue of it being a paid post that included a link to purchase the product on Rodan & Fields' website.[6] Sims similarly could not persuade the court that her post was not likely to create confusion among consumers. While noting that the likelihood of confusion analysis is heavily fact-based and rarely dismissed at this stage, the court found that Petunia Products sufficiently pleaded a likelihood of confusion claim.[7] The court held that the marks, products, consumers, and channels of trade at issue were similar enough to plausibly create a likelihood of confusion, and even though Sims' post clearly stated that the product was a Rodan & Fields product and that it was sponsored by Rodan & Fields, that did not eliminate a likelihood that consumers might assume an affiliation or partnership between the two competing brands.[8] Accordingly, the court allowed the direct trademark infringement claim and related unlawful and unfair business practices claim against Sims to move forward.[9] Finding that Petunia Products had not shown that Sims intentionally induced Rodan & Fields to allegedly infringe Petunia Products' Brow Boost ® mark, nor that she exercised any control over Rodan & Fields alleged infringement, the court dismissed the contributory infringement claim against Sims.[10] The court also dismissed the false advertising claim against Sims finding that Petunia Products had not shown that Sims had the requisite actual or constructive knowledge of falsity to support a false advertising claim against her.[11] While the case is still ongoing and Sims might escape liability, this decision raises new concerns for influencers, celebrities, and other talent working with brands. Similarly, brand owners may be forced to reevaluate how much financial exposure they are willing to risk when working with popular talent who may be fresh targets for infringement lawsuits. Brand owners could start seeing influencers across the board, but especially top influencers and celebrities, demand stronger indemnification provisions in their contracts or at least stronger representations made by the brand owner that its trademarks do not infringe another party's trademarks. While top influencers and other well-known celebrities would be the easy targets as defendants in trademark infringement lawsuits given their higher profiles and deeper pockets, other content creators and micro-influencers with less social media clout are also at risk of having to defend against trademark infringement claims. Smaller-scale influencers often do not have the bargaining power to get strong, if any, indemnity protections in their contracts with brands and would be vulnerable to a brand owner aggressively pursuing this enforcement strategy. A decision finding Sims liable for infringement could also change the calculus for brand-influencer partnerships. While an influencer might be swayed by the financial incentives that come from partnering with a brand, those might now have to be weighed against potential trademark infringement liability exposure. Likewise, brand owners might covet a popular influencer's endorsement of their product, but if the prevailing market shifts to incorporate ever stronger influencer indemnification protections, including for smaller influencers, brand owners' financial exposure will increase. Given the enormous and growing size of the influencer marketing arena, this is surely not the last trademark issue brands and influencers will have to navigate. [1] Petunia Products, Inc. v. Rodan & Fields, LLC, No. 21-00630 (C.D. Cal. Aug. 6, 2021). [2] Complaint,Petunia Products, Inc. v. Rodan & Fields, LLC, No. 21-00630 (C.D. Cal. Aug. 6, 2021), ECF No. 23. [3] Id. [4] Order Granting in Part and Denying in Part Defendant’s Motion to Dismiss,Petunia Products, Inc. v. Rodan & Fields, LLC, No. 21-00630 (C.D. Cal. Aug. 6, 2021), ECF No. 1. [5] Id. at 5. [6] Id. [7] Id. at 6. [8] Id. at 7. [9] Id. at 9. [10] Id. at 10-11. [11] Id. at 12.
Eyes Up! That Perfect Brow Post Could Land Influencers in a Lawsuit By: Nicholas E. Forgione
End of the Year Trademark Law Review By: Giselle Ayala Mateus, Esq.
This year has been very interesting for US trademark attorneys. Although the US Supreme Court did not rule on any trademark cases in 2021, lower courts and other authorities have been plenty busy. We have seen a little bit of everything, from new developments in trademark cancellation proceedings to unusually bold litigants. Let's look at some of the most interesting cases of 2021 and some of the ones coming in 2022. The Coca-Cola Company v. Meenaxi Enterprise, Inc., 2021 U.S.P.Q.2d 709 (TTAB 2021)[1] In 2016, Coca-Cola filed a cancellation petition against two trademark registrations under Section 14(3) of the Lanham Act. Under Section 14(3), a person may petition the Trademark Trial and Appeal Board to cancel a trademark registration "[a]t any time […] if the registered mark is being used by […] the registrant so as to misrepresent the source of the goods." Lanham Act §14(3), 15 USCS §1064(3). The trademarks at issue were "THUMS UP" and "LIMCA" in standard characters, registered in the International Class 32. To defend against Coca-Cola's petitions for cancellation, the Respondents, Meenaxi Enterprise Inc., asserted the defense of laches. However, the TTAB rejected this argument. Even though the cancellation request was filed three years after the trademarks' registration, Respondents offered no evidence of the asserted prejudice, or that Respondents relied on Coca-Cola's inaction when Respondents continued developing the marks. Coca-Cola on its parts submitted evidence of its ownership of the marks "THUMS UP" and "LIMCA" in India for soft drinks, where the marks are well known, and explained how the reputation of those products extends to the United States. The petitioner offered evidence of the brand's market share in India and globally as well as advertising materials and third-party publications. Additionally, Coca-Cola referred to the significant population of Indian American consumers who knew the marks and would be deceived or confused if the Respondents' marks were not canceled. The TTAB recognized that a party may petition to cancel a registration at any time, when the cause of action is within the zone of interests protected by Section 14 and when the petitioner has a reasonable belief that the registration will cause damages. Following Bayer Consumer Care AG v. Belmora L.L.C., 110 USPQ2d 1623, the Board explained that if Respondents continued using the THUMS UP and LIMCA marks to misrepresent to US consumers the source of Respondents’ products, Coca-Cola would lose the ability to control its reputation and suffer damages.[2] The Board emphasized from the record that Respondents selected Coca-Cola's identical marks, Respondents had a history of adopting other third-party marks, and Respondents’ corporate designee testimony revealed awareness of consumers prior knowledge of the marks in India. Therefore, the Board canceled the two trademarks, THUMS UP and LIMCA, on the ground of misrepresentation of source. Nike, Inc. v. MSCHF Product Studio, Inc. Docket No. 1:21cv1679[3] On March 29, 2021, Nike Inc. filed a lawsuit against MSCHF Product Studio, Inc., a local Brooklyn design studio, after discovering that Defendant was selling a modified version of Nike's popular Air Max 97s. The modified sneakers, called the "Satan Shoes," allegedly featuring a bronze pentagram and a drop of human blood, were being sold in collaboration with rapper Lil Nas X. Nike alleged trademark infringement, false designation of origin, unfair competition, and trademark dilution in its Complaint. Additionally, considering the outrage created by the sneakers and the wide media coverage of an alleged Nike's endorsement of satanism, Nike also requested a temporary restraining order against the MSCHF. To oppose Nike's petition, MSCHF asserted that there was no threat of imminent or immediate irreparable harm. MSCHF explained that it is an art collective that "[…] was founded to push the boundaries of today's culture through story-telling and performance art […]".[4] According to MSCHF, the modified version of the sneakers was an individualized work of art, and MSCHF artistic expressions were entitled to protection under the First Amendment. After reviewing the record, the United States District Court for the Eastern District of New York granted Nike Inc.'s petition. The Court explained that Nike had carried its burden at this stage by showing that MSCHF's actions were likely to confuse consumers about the origin, sponsorship, or approval of MSCHF's goods. Furthermore, MSCHF would have a full opportunity to pursue its First Amendment affirmative defense at the preliminary injunction stage.[5] After the order was issued, the parties reached a private settlement, and Nike dismissed the lawsuit with prejudice. It would have been interesting to see a development of the First Amendment argument. However, the odds of success were probably low. As it has been stated before by the Easter District of New York, it is a well-settled principle that the First Amendment confers a measure of protection in cases of unauthorized use of trademarks, when that use is a part of the expression of a communicative message, not when another's trademark is used without permission for the purpose of source identification.[6] Select Comfort Corp. v. Baxter, 996 F.3d 925[7] In 2012, Select Comfort Corp. started a lawsuit against John Baxter and Dires, LLC, in the United States District Court for the District of Minnesota, on the basis of trademark infringement and unfair and deceptive practices. At summary judgment, the district court rejected as a matter of law Plaintiff’s infringement theory based on presale or initial-interest confusion, holding that retail purchasers of mattresses were sophisticated consumers and Plaintiffs would have to show a likelihood of confusion at the time of purchase to prevail. Plaintiffs and Defendants sell competing adjustable air mattresses. Plaintiff’s registered marks include "SLEEP NUMBER"[8], "WHAT'S YOUR SLEEP NUMBER"[9] and "SELECT COMFORT"[10]. According to Plaintiff’s allegations, Defendants employed words or phrases identical or confusingly similar to Plaintiff’s trademarks in various online advertising formats (website URLs, search inquiry paid terms, embedded links in third-party sites, etc.) that could be viewed by users or detected organically by search engines, which resulted in internet-related consumer confusion by fraudulent misrepresentation. The Eight Circuit Court of Appeals rejected the district court's position. The main issue was the availability of a theory of initial-interest confusion[11] to support a trademark infringement cause of action under the Lanham Act. Under this theory, a trademark owner’s good will holds value at all times, therefore, it is entitled to protection against the threat of a competitor’s unlawful enjoyment.[12] Here, the court explained: “[t]o assess the likelihood of confusion as required for a showing of infringement, our circuit employs a list of nonexclusive factors […] This flexible, context-specific, and relative-rather-than-mechanical approach makes sense because the general function of the likelihood-of-confusion factors is to guide the finder of fact […] Although not addressing initial-interest confusion specifically, our Court has clearly established that claims of infringement are not limited solely to a likelihood of confusion at the time of purchase.”[13] Then, the circuit also considered the core of the dispute between the parties. The parties disputed the issue of consumer sophistication both in reference to shopping for mattresses and shopping online. To resolve the issue, it was unclear whether the consumer sophistication should be measured at the "point of click" for an online shopper, at the point of sale upon final purchase, or at points in between. The court explained: “[o]n the one hand, mattresses are relatively expensive among most consumers' purchases […] On the other hand, most people buy mattresses infrequently, so they enter the marketplace uneducated and susceptible to fast-talking sales people and brand confusion.”[14] The Eighth Circuit reversed, holding that a jury question existed as to the issue of consumer sophistication, and a grant of summary judgment on the theory of initial-interest confusion was an error. Considering the split between circuits as to issue of consumer confusion, Dires, LLC filed a petition for a writ of certiorari, arguing that the initial-interest confusion doctrine could impose liability for trademark infringement that occurs when a consumer first sees a mark online, beyond permissible. However, the petition for a writ of certiorari was denied. We might have to wait for more litigation before the Supreme Court enters the field to settle this. 2022 is around the corner, what is coming? Since the legalization of marihuana in the US, the entrepreneurial spirit of many Americans has sparked. So far, 18 states across the nation have legalized adult-use cannabis. Cannabis businesses in states with legal regimes are now spending money and time in developing distinctive visual looks, crafting the perfect logo, and devising ways to make their product packaging stand out. However, in the wake of legalization, some have appeared to copy their competitors’ logos and other have decided to take the protection of their marks beyond permissible. City Of New York V. Lopez, Dockect No. 1:21cv7862 On September 21, 2021, the City of New York filed a lawsuit against Rober Lopez (“Lopez”), an entrepreneur who operates a Cannabis online retail store, for trademark counterfeiting, false designation of origin, and unfair competition under the Lanham Act. According to the Complaint, Lopez willfully infringed the City’s rights over several trademarks by using nearly identical marks in connection with its branding and promotion of cannabis-related goods and services. Regarding the evidence offered by the plaintiff, the City highlighted Lopez’s Facebook post stating: “[..] there is no other NYC business owner that is in a better position to challenge the city on this issue […]I'm ready to engage in any level of #LegalWarfare…”[15]. It is interesting to note that despite the City being the owner of several federal trademark registrations, Lopez acquired several New York trademark registrations for logos and marks substantially similar. The City’s trademarks include “NYC”[16], “CITY OF NEW YORK PARKS & RECREATION”[17] and “THE CITY OF NEW YORK DEPARTMENT OF SANITATION”[18] in Classes 25, 28, 35 and 41. Until now, Lopez has filed no answer to the City’s complaint and a conference between the parties was scheduled for December 12th, 2021. Regarding Lopez’s federal trademark applications, the USPTO has already issued Office Actions stating that the applications present “likelihood of confusion” issues. As for the NY registrations, the City may have to file cancellation petitions against Lopez trademarks. The WM. Wrigley Jr. Company Litigations WM. Wrigley Jr. Company, a candy manufacturer, has filed three lawsuits in the US, against several sellers of cannabis products, alleging trademark infringement, dilution, and unfair competition. The Wrigley lawsuits are WM Wrigley Jr Co v. Terphogz LLC Docket No. 1:21-cv-02357[19] and WM Wrigley Jr Co v. Packaging Papi LLC, Docket No. 1:21-cv-02364[20] filed before the U.S. District Court for the Northern District of Illinois; and WM Wrigley Jr Co v. Conde d/b/a 2020Ediblez, Docket No. 5:21-cv-00777[21] filed before the U.S. District Court for the Central District of California. In the complaint, Wrigley alleges that the defendants are misappropriating Wrigley’s famous and federally registered trademarks, which include, SKITTLES,[22] STARBURST,[23] and LIFE SAVERS,[24] to promote edible cannabis candy products, specifically selling candies infused with tetrahydrocannabinol (“THC”), the main psychoactive component of cannabis. The litigation is still at its early stage. In Wm Wrigley Jr Co v. Terphogz LLC, the Defendant filed a motion to dismiss for lack of personal jurisdiction, specifically lack of continuous and systematic contacts with the forum state. However, the U.S. District Court for the Northern District of Illinois denied the motion and explained: “Terphogz did more than just sell a minimal number of products to Illinois residents; it operated an interactive website that allowed Illinois customers to calculate shipping charges and then shipped purchased products to Illinois customers. These actions suffice to show that Terphogz purposefully availed itself of doing business in Illinois. […] [Additionally] the claims brought by Wrigley arise out of the infringing products shipped to Illinois…”[25] Finally, considering the situs of material events, the relative ease of access to proof, the convenience of the parties in litigating in the respective forums, and the convenience of the witnesses, the court ruled that Terphogz failed to establish that the balance of private and public interests strongly favored transferring the case to California. In Wm Wrigley Jr Co v. Packaging Papi LLC, a Default Judgement Order was issued in favor of Wrigley. Wrigley was also awarded statutory damages in the amount of $1,600,000.[26] Finally, in Wm Wrigley Jr Co v. Conde d/b/a 2020Ediblez, Wrigley is stilling collecting evidence and getting information about all alleged infringers. In a motion filed before the United States District Court Central District of California, Wrigley submitted an ex parte application seeking an order to serve subpoenas on Internet Service Providers and directing them to produce subscriber information regarding two unidentified defendants owning and operating the websites located at: www.cannabis420supply.com and www.2020ediblez.com.[27] USPTO implementation of the Trademark Modernization Act Finally, I did not want to finish this review without commenting on the USPTO implementation of the Trademark Modernization Act (TMA) that went into effect on December 18, 2021. Here, it is worth highlighting that the TMA amends the Lanham Act in three key aspects. First, it institutes new tools to remove USPTO trademark filings based on inaccurate claims of use in commerce; second, the TMA provides for discretionary response deadlines to office actions; and third, the TMA restores the rebuttable presumption of irreparable harm increasing the brand owner’s chances of successfully obtaining injunctive relief. 1. New tools to remove USPTO trademark filings based on inaccurate claims of use in commerce The TMA provides for a broader and easier Letter of Protest system, creates a streamlined expungement procedure, and establishes new grounds for re-examination of a registration. Under the TMA, a Letter of Protest may be used not only to address issues of genericness, prior registrations, and ongoing litigation, but also to submit evidence that relates to any other ground of refusal such as the existence of conflicting marks or lack of use in commerce relating to the goods or services identified in the application. Additionally, Section 16 of that TMA provides that anyone can petition the USPTO to expunge a registration, in whole or in part, where there are specific goods or services in the registration, for which the trademark has never been used in US. 2. USPTO discretionary response deadlines to office actions Another interesting change procured by the TMA is that it now authorizes Examining Attorneys to set a shorter response period to address office actions. Before the TMA, the standard respond period was six months regardless of the content of the office action. However, examining attorneys can now vary the response period anywhere between two months and six months from the Office Action issuance date. The purpose of this measure is to procure quicker processing times and to deter the filing of fraudulent or meritless trademark applications. 3. TMA restores the rebuttable presumption of irreparable harm When it comes to addressing in a timely manner trademark infringement, one of the most important tools is an injunction. Before the TMA, circuit courts were split as to the applicable standard for injunctive relief. However, the TMA has now established a nation-wide standard of presumption of irreparable harm. This is one of the most important improvements procured by the TMA because it reduces the evidentiary burden on trademark owners for obtaining an injunction. Finally, comments… It has been another challenging year. There are many unresolved issues and more analysis to come. The Trademark Modernization Act is pretty new, and it will probably face challenges when it is fully operating. Moreover, the surge of new Cannabis business and trademarks poses new challenges, like whether the USPTO and the TTAB are willing to register these marks despite the lack of uniformity in the US regarding legalization. 2022 will definitely be a favorable year to promote discussions and continue working in procure of a more effective US trademark system. [1] The Coca-Cola Company v. Meenaxi Enterprise, Inc., 2021 U.S.P.Q.2d 709 (TTAB 2021). [2] Id. [3] Nike, Inc. v. MSCHF Product Studio, Inc. Docket No. 1:21cv1679. [4] Nike, Inc. v. MSCHF Product Studio, Inc. Docket No. 1:21cv1679. Document No. 14. Letter Regarding Plaintiff's Motion for a Temporary Restraining Order by MSCHF Product Studio, Inc. [5] Nike, Inc. v. MSCHF Product Studio, Inc. Docket No. 1:21cv1679. Document No. 18. Order to Show Cause. [6] Web-adviso v. Trump, 927 F. Supp. 2d 32 (E.D.N.Y. February 28, 2013). [7] Select Comfort Corp. v. Baxter, 996 F.3d 925. [8] USPTO, Trademark Electronic Search System (TESS). Serial Number:86624938. https://tmsearch.uspto.gov (Last visited: on December 4th, 2021). [9] USPTO, Trademark Electronic Search System (TESS). Serial Number:78157191. https://tmsearch.uspto.gov (Last visited: on December 4th, 2021). [10] USPTO, Trademark Electronic Search System (TESS). Serial Number:78125228. https://tmsearch.uspto.gov (Last visited: on December 4th, 2021). [11] Id. [12] Baxter, 996 F.3d 925, 930 (Quoting Checkpoint Sys. v. Check Point Software Techs., Inc., 269 F.3d 270.). [13] Baxter, 996 F.3d 925. [14] Baxter, 996 F.3d 925, 935. [15] City Of New York V. Lopez, Dockect No. 1:21cv7862. Document No. 1. The Complaint. [16] USPTO, Trademark Electronic Search System (TESS). Serial Number:3668124. https://tmsearch.uspto.gov (Last visited: on December 4th, 2021). [17] USPTO, Trademark Electronic Search System (TESS). Serial Number:3122929. https://tmsearch.uspto.gov (Last visited: on December 4th, 2021). [18] USPTO, Trademark Electronic Search System (TESS). Serial Number:3065742. https://tmsearch.uspto.gov (Last visited: on December 4th, 2021). [19] WM Wrigley Jr Co v. Terphogz LLC, Docket No. 1:21-cv-02357. [20] WM Wrigley Jr Co v. Packaging Papi LLC, Docket No. 1:21-cv-02364. [21] WM Wrigley Jr Co v. Conde d/b/a 2020Ediblez, Docket No. 5:21-cv-00777. [22] USPTO, Trademark Electronic Search System (TESS). Serial Number:86532089. https://tmsearch.uspto.gov (Last visited: on December 4th, 2021). [23] USPTO, Trademark Electronic Search System (TESS). Serial Number:86029183. https://tmsearch.uspto.gov (Last visited: on December 4th, 2021). [24] USPTO, Trademark Electronic Search System (TESS). Serial Number:2358709. https://tmsearch.uspto.gov (Last visited: on December 4th, 2021). [25] WM Wrigley Jr Co v. Terphogz LLC, Docket No. 1:21-cv-02357. Document No. 36. Court order denying Terphogz’s Motion to Dismiss. [26] WM Wrigley Jr Co v. Packaging Papi LLC, Docket No. 1:21-cv-02364. Document No. 32. Default Order Judgment. [27] WM Wrigley Jr Co v. Conde d/b/a 2020Ediblez, Docket No. 5:21-cv-00777. Docket No. 56. Order granting Ex Parte Petition [1]The Coca-Cola Company v. Meenaxi Enterprise, Inc., 2021 U.S.P.Q.2d 709 (TTAB 2021). [2]Id. [3]Nike, Inc. v. MSCHF Product Studio, Inc. Docket No. 1:21cv1679. [4]Nike, Inc. v. MSCHF Product Studio, Inc. Docket No. 1:21cv1679. Document No. 14. Letter Regarding Plaintiff's Motion for a Temporary Restraining Order by MSCHF Product Studio, Inc. [5]Nike, Inc. v. MSCHF Product Studio, Inc. Docket No. 1:21cv1679. Document No. 18. Order to Show Cause. [6]Web-adviso v. Trump, 927 F. Supp. 2d 32 (E.D.N.Y. February 28, 2013). [7]Select Comfort Corp. v. Baxter, 996 F.3d 925. [8]USPTO, Trademark Electronic Search System (TESS). Serial Number:86624938. https://tmsearch.uspto.gov (Last visited: on December 4th, 2021). [9]USPTO, Trademark Electronic Search System (TESS). Serial Number:78157191. https://tmsearch.uspto.gov (Last visited: on December 4th, 2021). [10]USPTO, Trademark Electronic Search System (TESS). Serial Number:78125228. https://tmsearch.uspto.gov (Last visited: on December 4th, 2021). [11]Id. [12]Baxter, 996 F.3d 925, 930 (Quoting Checkpoint Sys. v. Check Point Software Techs., Inc., 269 F.3d 270.). [13]Baxter, 996 F.3d 925. [14]Baxter, 996 F.3d 925, 935. [15]City Of New York V. Lopez, Dockect No. 1:21cv7862. Document No. 1. The Complaint. [16]USPTO, Trademark Electronic Search System (TESS). Serial Number:3668124. https://tmsearch.uspto.gov (Last visited: on December 4th, 2021). [17]USPTO, Trademark Electronic Search System (TESS). Serial Number:3122929. https://tmsearch.uspto.gov (Last visited: on December 4th, 2021). [18]USPTO, Trademark Electronic Search System (TESS). Serial Number:3065742. https://tmsearch.uspto.gov (Last visited: on December 4th, 2021). [19]WM Wrigley Jr Co v. Terphogz LLC, Docket No. 1:21-cv-02357. [20]WM Wrigley Jr Co v. Packaging Papi LLC, Docket No. 1:21-cv-02364. [21]WM Wrigley Jr Co v. Conde d/b/a 2020Ediblez, Docket No. 5:21-cv-00777. [22]USPTO, Trademark Electronic Search System (TESS). Serial Number:86532089. https://tmsearch.uspto.gov (Last visited: on December 4th, 2021). [23]USPTO, Trademark Electronic Search System (TESS). Serial Number:86029183. https://tmsearch.uspto.gov (Last visited: on December 4th, 2021). [24]USPTO, Trademark Electronic Search System (TESS). Serial Number:2358709. https://tmsearch.uspto.gov (Last visited: on December 4th, 2021). [25]WM Wrigley Jr Co v. Terphogz LLC, Docket No. 1:21-cv-02357. Document No. 36. Court order denying Terphogz’s Motion to Dismiss. [26]WM Wrigley Jr Co v. Packaging Papi LLC, Docket No. 1:21-cv-02364. Document No. 32. Default Order Judgment. [27]WM Wrigley Jr Co v. Conde d/b/a 2020Ediblez, Docket No. 5:21-cv-00777. Docket No. 56. Order granting Ex Parte Petition.
Notable Trademark Decisions, January 2022 By: Scott Greenberg and Anna Antonova
TTAB Upholds Refusal For Nonuse In Commerce Where The Subject Services Were Not Yet Rendered By Applicant Alessandra Suuberg (“Suuberg”) filed a US application, based on claimed use in commerce under Section 1(a) (15 U.S.C.§1051(a)), to register the mark HAVE SOME DECENCY in connection with the following services: Charitable fund raising; Charitable fundraising; Charitable fundraising services; Charitable services, namely, providing financial assistance to meet the physical, psychological, social and other special needs of disabled persons; Charitable services, namely, providing financial support to disadvantaged individuals in the United States and other countries for the purpose of facilitating health, wellness and economic development; Accepting and administering monetary charitable contributions; Accepting and administering monetary charitable contributions to fund medical research; On-line charitable fundraising. The specimen of use consisted of a website page that included a “Donate” button. The Examining Attorney refused registration under Trademark ActSections 1(a) and 45 (15 U.S.C.§§1051(a) and 1127), placing into the record with the Office Action pages from Suuberg’s website that indicated the following: (1) use of scrambled Latin characters known as "lorem ipsum", together with a statement that the "lorem ipsum" is for use by designers to mimic real copy, (2) an inoperable webpage following the "Donate" button, and (3) a statement by Suuberg that she was not accepting donations and that she was looking for volunteers to "get our organization off the ground". Suuberg appealed from the refusal and, in a precedential decision, the refusal was affirmed by the Trademark Trial and Appeal Board (the “Board”). In re Alessandra Suuberg, 2021 U.S.P.Q.2d 1209 (T.T.A.B. December 10, 2021). In her submissions in connection with the application, Suuberg indicated that, at the time that she filed the application, she: had recently finished a post-baccalaureate premedical program and research assistant positions in genetic and psychology research. had recently incorporated a non-profit organization, applied for tax exempt status, registered a domain name, and concurrently filed a trademark application for a phrase that best captured her project's purpose: encouraging 'decency' in medicine and medical research. was in the process of building a website that provided a means to get in touch, as well as an opportunity to get involved and participate in the planning process and early stages of her charitable endeavor. was not accepting donations from the general public through the website but was "researching the relevant laws and requirements that might apply to soliciting donations in various jurisdictions." Id. at *5. In general, Suuberg failed to establish that she was providing any of the charitable services identified in the application at the time of filing. Id. at *7. The Board noted that a mark is used in commerce "on services when [1] it is used or displayed in the sale or advertising of services and [2] the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services." Section 45 of the Trademark Act, 15 U.S.C.§1127. Citing the Court of Appeals for the Federal Circuit’s opinion in Couture v. Playdom, Inc., 778 F.3d 1379, 113 USPQ2d 2042, 2043 (Fed. Cir. 2015), the Board further noted that "an applicant's preparations to use a mark in commerce are insufficient to constitute use in commerce. Rather, the mark must be actually used in conjunction with the services described in the application for the mark." Id. at *6. In the present case, the Board held that, just as in Couture, Suuberg’s activities were preliminary and had not resulted in any use of the mark in commerce prior to the filing of the application: Applicant here was in the nascent stage of developing her business when she filed her application. She had just finished her education and had just formed an entity to develop her vision of "encouraging 'decency' in medicine and medical research." Applicant's incorporation of her organization, application for tax-exempt status and registration of her domain name did not accord her service mark rights. Id. at *6-7. The Board therefore held that the application was void ab initio and the refusal was therefore affirmed. The Board also noted that the Examining Attorney had twice suggested to Suuberg that she amend her application to seek registration under the intent-to-use provisions of Section 1(b) of the Trademark Act, 15 U.S.C.§1051(b), but Suuberg declined to do so. Id. at *9, n.13. In view of its affirmance of the refusal based on lack of use in commerce, the Board declined to consider the Examining Attorney’s other basis of refusal on the ground that the matter applied-for fails function as a mark because it is merely a commonplace message widely used by a variety of sources. In re Alessandra Suuberg, 2021 U.S.P.Q.2d 1209 (T.T.A.B. December 10, 2021) (precedential). [SG] Guitar Brand’s Appeal to Register the Color Cream as a Trademark Struck the Wrong Chord with the TTAB In a decision that reinforces the challenges of obtaining trademark rights in a color mark, the Board affirmed an Examining Attorney’s refusal to register the color cream as a mark for “electronic sound pickup[s] for guitars,” filed by Applicant Dimarzio, Inc. (Dimarzio). In re Dimarzio, Inc., 2021 U.S.P.Q.2d 1191, at *1 (T.T.A.B. 2021). Because color marks are not inherently distinctive, an applicant must show that the mark has acquired secondary meaning among the relevant members of the public. Id. at *6 (citing cases). The Examining Attorney issued a final refusal of the color mark, finding that Dimarzio failed to show the mark has acquired secondary meaning. Id. at *1-2. To succeed, Dimarzio would need to prove that consumers of guitar pickups understand that the color cream identifies Dimarzio as the source of guitar pickups, and not that it is merely an ornamental feature. Id. at *6. The Board agreed with the Examining Attorney that Dimarzio’s declarations and enforcement evidence did not establish that the relevant consumers understood the color cream to be a trademark for Dimarzio guitar pickups. Id. at *9-12. This evidence was not probative because it conflated the proposed color mark with a hybrid product configuration and color mark. Id. at * 9-10. The Board further agreed with the Examining Attorney that evidence of third-party uses of the color cream in connection with guitar pickups weighed against the finding that the color functions as a trademark for Dimarzio. Finally, the Board was not persuaded by Dizmarzio’s advertising evidence, finding that the advertisements indicate that consumers are likely to view the color cream as an ornamental color option rather than a trademark. Dimarzio did not offer surveys as evidence that its proposed color mark has acquired secondary meaning. Id. at *9. Instead, it provided dealer and customer declarations and evidence of its enforcement activities. The Board rejected this evidence because it conflated the proposed color mark with the product configuration mark, and failed to demonstrate that the color cream has acquired secondary meaning on its own. Id. at *9-11. Dimarzio’s evidence consisted of several fill-in-the-blank dealer and customer declarations; however, some declarants filled out more than one declaration. Id. at *9. Overall, only eight different declarants were represented. Id. The Board concluded that the declarations have little, if any probative value. Aside from other defects (including how few declarations were produced and their conclusory nature), the declarations’ fatal flaw was that they did not relate to the proposed color mark. Id. at *9-10. Rather, the declarations addressed the product configuration of the guitar pickups, but they did not demonstrate that an average consumer of guitar pickups would recognize the color cream as a source identifier for guitar pickups. Id. at *10-11. The Board similarly did not find convincing Dimarzio’s enforcement evidence. This evidence also demonstrated that the enforcement efforts pertained to Dimarzio’s registration for a hybrid “product configuration mark with color” for the same goods. Id. at *12. Accordingly, it was not clear whether the alleged infringers or copiers who were the targets of enforcement activities believed that consumers perceived the color mark as a source identifier on its own. Id. The Board next reviewed the Examining Attorney’s evidence of third-party use of the color cream in connection with guitar pickups, agreeing that this evidence undermined Dimarzio’s argument that its use of the color cream has been substantially exclusive and the color cream is a mark that identifies Dimarzio as the source of guitar pickups. Although the Applicant asserted that it has been selling pickups embodying the proposed mark since 1979, the Examining Attorney provided evidence that numerous third-party manufacturers of guitar pickups use the color cream. Id. at *13-18 (depicting images of third-party uses). Therefore, the Board upheld the finding that this third-party use evidence contradicts Dimarzio’s assertion that the color cream has come to identify a single source of guitar pickups. Id. at *19. Dimarzio conceded that other manufacturers of guitar pickups also use the color cream; however, it argued that the Examining Attorney’s evidence shows a “wrong shade of cream.” Id. at *20. Dimarzio further acknowledged that the color cream it claims as a trademark is not a Pantone shade but rather, a “distinctive color cream” that Dimarzio created in the 1970s. Id. Finding this description to be “self-serving,” the Board stated that such a description cannot be used to restrict the likely public perception of the claimed mark because the mark’s meaning is based on the impression “actually created by the mark in the minds of consumers, not on the impression that the applicant stated the mark is intended to convey.” Id. at *21-22; TMEP § 808.02. Even if the shades of the third-party guitar pickups were a different shade of cream from the applied-for mark, the shades are, nevertheless, “substantially similar,” or “close enough to impair Dimarzio’s ability to demonstrate that its proposed color has acquired distinctiveness in that market.” In re Dimarzio, Inc., 2021 U.S.P.Q.2d 1191, at *21. Dimarzio next argued that the third-party uses uncovered by the Examining Attorney are not probative because they are applied to “the wrong kind of guitar pickups.” Id. at *22-23. Specifically, Dimarzio argued that the mark is the color cream as applied to “the double coil rail pickups specifically” and not to “conventional double coil pickups” or every use of a double coil pickup. Id. at *23. The Board rejected this argument, relying on established precedent that the registrability of the mark must be decided based on the goods identified in the application regardless of the actual use. Id. (collecting cases). Here, the goods recited in the application were “electronic sound pickup for guitars,” and not a more limited type of guitar pickups as Dimarzio argued on appeal. Id. The Board further noted that evidence of Dimarzio’s actual use was not persuasive because it cannot be assumed that consumers are aware that Dimarzio restricts its use to a particular type of guitar pickups as described in the trademark application. Id. Therefore, Dimarzio cannot claim that the color cream is distinctive as applied to a specific type of guitar pickup because the application is for a color mark, not a product configuration mark, and the application encompasses the mark as applied to all types of guitar pickups, regardless of configuration. Id. at *24. Finally, the Board agreed with the Examining Attorney that lack of “look-for” advertising referencing the color cream weighed against a finding of secondary meaning. Even though “look-for” advertising is not a requirement, the Dimarzio’s use of color cream in its advertising does not indicate that the color serves a source-identifying function. Id. at *26-28. The advertising lists the color cream as one of several “color options” for consumers to choose from. Id. at *26. Therefore, consumers are likely to perceive the color cream as one of several ornamental color options, and not a trademark. Id. at *27. Concluding that multiple factors weigh heavily against a finding of secondary meaning, the Board affirmed the refusal to register the color cream as a trademark for guitar pickups. In re Dimarzio, Inc., 2021 U.S.P.Q.2d 1191 (T.T.A.B. 2021).[AA] The Board Affirms That a Lack of Bona Fide Intent to Use as to Some Goods and Services Does Not Entirely Invalidate the Trademark Application Monster Energy Company (“Monster”) opposed the intent-to-use application filed by Tom & Martha LLC (“Tom & Martha”) for the word mark LOCH MOOSE MONSTAH for a variety of goods and services in four International Classes. Monster Energy Co. v. Tom & Martha LLC, 2021 U.S.P.Q.2d 1197 (T.T.A.B. 2021). Monster initially filed an opposition based only on likelihood of confusion with its own portfolio of MONSTER-formative marks. Id. at * 2. In this action, it moved to amend its notice of opposition to add another ground of opposition, claiming that Tom & Martha lacked a bona fide intent to use the applied-for mark in commerce on all of the identified goods and services as of the filing date. Id. at *4-5. The motion to amend was unopposed and was granted. Id. at 2. With that procedural issue out of the way, the key issue before the Board concerned Monster’s motion for partial summary judgment on its claim that Tom & Martha lacked a bona fide indent to use the mark in connection with all of the goods and services recited in its application. The Board remarked that, generally, intent is a factual inquiry that is not well-suited for disposition on summary judgement motion. Id. at *8. Even though the evidentiary bar to survive the motion is not high, the applicant must provide evidence of intent that demonstrated more than a “mere subjective belief” but “firm” or “demonstrable” intent, as judged by a totality of the circumstances. Id. at *8-9 (citing M.Z. Berger & Co. v. Swatch AG, 787 F.3d 1368 (Fed. Cir. 2015)). The Board further stated that evidence that a party has capacity to market or manufacture a product can rebut a lack of bona fide intent to use claim. Id. at *9 (citing Wet Seal, Inc. v. FD Mgmt., Inc., 82 U.S.P.Q.2d 1629, 1643 (T.T.A.B. 2007)). Monster relied on Spirits In’l, B.V. v. S.S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri Birligi, 99 U.S.P.Q.2d 1545 (T.T.A.B. 2011), in arguing that an application is void as to all goods and services included in a class if an applicant does not have bona fide intent to use the mark in connection with at least one of the applied-for goods and services in that class. In Spirits, a beverage manufacturer applied for a mark reciting both alcoholic and non-alcoholic beverages; however, the opposer met its burden of proving that the applicant did not have bona fide intent to use the mark on alcoholic beverages. Id. at *10. The applicant not only failed to rebut this showing by producing evidence of intent but affirmatively stated that no such evidence existed. Id. The Board distinguished Spirits from the dispute before it, clarifying that “Spirits does not stand for the proposition that when a party is found to lack a bona fide intent to use its mark on some but not all of the goods and services in the application, the entire application, or relevant classes in the application, must fall.” Id. at *11. That result is only warranted if the party fails to produce any evidence to rebut a showing of a lack of intent (as was the case in Spirits). Id. The Board then recited a long line of precedent supporting its conclusion that an application is not void in its entirety if a lack of bona fide intent to use is found as to some but not all of the goods and services in the application. Id. at *11-12 (citing Wet Seal, 82 U.S.P.Q.2d at 1633; Syndicat Des Proprietaires Viticulteurs De Chateauneuf-Du-Pape v. Pasquier DesVignes, 107 U.S.P.Q.2d 1930, 1943 (T.T.A.B. 2013); Kelly Servs. v. Creative Harbor, LLC, 846 F.3d 857(6th Cir. 2017); Grand Canyon W. Ranch, LLC v. Hualapai Tribe, 78 U.S.P.Q.2d 1696, 1697 (T.T.A.B. 2006); Univ. of Ky. v. 40-0, LLC, 2021 U.S.P.Q.2d 253, at *17 (T.T.A.B. 2021)). Monster argued that Tom & Martha lacked a bona fide intent to use the proposed mark based on a narrow interpretation of statements that Tom & Martha’s member made in depositions. The company executive explained that its brand development strategy is to identify a brand, file an intent-to-use application reciting goods and services, and start the process of bringing the goods to market. Id. at *13-14. The decision to expand the product offerings under the mark is contingent on the success of the brand – if the initial products do well, then the company would introduce more products under the mark. Id. Evidence showed that Tom & Martha had used this strategy with its other marks and that it had the capability to market the goods that were recited in the application. Id. at *14-15. The Board rejected Monster’s interpretation of the member’s statements, concluding that when viewed in their entirety, the statements were consistent with the strategy. Id. at *13-14. Even if the statements indicated that Tom & Martha were not planning to offer all of the products, that does not mean it would not do so if the brand proved to be popular. Id. at *14. Ultimately, the Board concluded that the evidence advanced by Monster did not indicate an absence of a genuine dispute of material fact that Tom & Martha lacked a bona fide intent to use its mark in commerce. Accordingly, Monster’s motion for partial summary judgment was denied. Monster Energy Co. v. Tom & Martha LLC, 2021 U.S.P.Q.2d 1197 (T.T.A.B. 2021). [AA] TTAB Upholds Refusal Of “NATO” For Tents As Falsely Suggesting A Connection With The North Atlantic Treaty Organization International Watchman, Inc. (“IWI”) filed to register the mark “NATO” in connection with tents and other goods in International Class 22 such as canopies. The Examining Attorney in the USPTO refused registration under Section 2(a) of the Trademark Act (15 U.S.C.§1052(a)) on the ground that the mark falsely suggests a connection with the North Atlantic Treaty Organization. IWI appealed and, in a precedential decision, the refusal was affirmed by the USPTO’s Trademark Trial and Appeal Board (the “Board”). In re International Watchman, Inc., 2021 U.S.P.Q.2d 1171 (T.T.A.B. November 30, 2021). The Board noted that Section 2(a) prohibits the registration of a designation that consists of or comprises matter that may falsely suggest a connection with "persons, living or dead, institutions, beliefs, or national symbols ... ." The Board construes the term “institution”, which is not defined in the statute, in its ordinary dictionary meaning as an established organization, i.e. a body of persons formed for a common purpose. The trademark statute does provide that governmental entities are “persons” under the statute, and the Board held that this is the case regardless of whether the governmental entity is capable of suing or being sued. Therefore, the Board held as a threshold issue that the record establishes that the North Atlantic Treaty Organizationis an “institution” under 2(a). Evidence of record showed that the North Atlantic Treaty Organization is a structured intergovernmental organization and military alliance of the United States and other North American and European countries. As such, it is an established body of persons formed for a common purpose. Id. at *6-11. Having determined that the North Atlantic Treaty Organization is an “institution” entitled to protection under Section 2(a), the Board proceeded to apply the four-part test used to determine whether a given mark falsely suggests a connection with an institution, as set out in In re Pedersen, 109 USPQ2d 1185, 1188 (TTAB 2013). In applying this test to the record in the present case, the Board concluded that all four of the required elements of the test have been met, warranting refusal of the mark, as follows: (1) The mark is the same as, or a close approximation of, the name or identity previously used by another person or institution. The record amply showed that “NATO” is a well-recognized acronym for the North Atlantic Treaty Organization, used as such by the organization itself, third parties and the media. Such acronyms may be considered as the name or identity of an institution under Section 2(a). Id. at *13-18. (2) The mark would be recognized as such, in that it points uniquely and unmistakably to that person or institution. The Board held that this prong is satisfied where consumers would view the mark, when used on the goods at issue, as pointing uniquely to the person or institution at issue, even if the term has other meanings. Given the widespread use of “NATO” as the acronym name of the subject organization, combined with evidence of record showing the North Atlantic Treaty Organization’s use of its tents for its personnel within its military operations, the Board held that: consumers are likely to assume that "tents" and "tents made of textile materials" bearing the NATO trademark have the North Atlantic Treaty Organization's imprimatur. Indeed, first responders searching for high quality tents and camping enthusiasts would be enticed by any implied NATO sponsorship. Id. at *22. This warrants refusal for all goods in the class, which in this case is the entire application, given that the application is solely in Class 22. Id. at *23. (3) The person or institution named by the mark is not connected with the activities performed by the applicant under the mark. IWI admitted that the North Atlantic Treaty Organization has no connection with the goods sold by IWI under the mark. Id. at *24. (4) The fame or reputation of the person or institution is such that, when the mark is used with the applicant's goods or services, a connection with the person or institution would be presumed. The Board held that, contrary to IWI’s arguments, it is not necessary under this prong of the test that the institution in question actually provide goods of the type in question. It is sufficient if an applicant’s goods are of a type that consumers would associate in some fashion with the subject institution in view of the institution’s reputation. On this point, the Board held that NATO is famous under that name as a landmark political and military alliance and, as already noted, the record shows that military personnel, including NATO personnel, are housed in tents. Moreover, third-party advertisements of record tout the quality of such products being used by NATO forces. Therefore, prospective consumers encountering "tents" bearing the trademark NATO “would falsely assume sponsorship or approval by, or connection with the North Atlantic Treaty Organization.” Id. at *28. Finally, the Board rejected IWI’s argument that its prior registration of “NATO” for explosives and ammunition warrants registration in the present case based on the doctrines of res judicata and collateral estoppel. The Board held that the allowance of a trademark application by an Examining Attorney is not a final decision on the merits from a prior adjudication and is therefore is not a basis for res judicata or collateral estoppel. Moreover, the Board noted that the USPTO is not bound by the decision of an Examining Attorney in a previous application, based on a different record. Therefore, the Board affirmed the refusal in the present case. In re International Watchman, Inc., 2021 U.S.P.Q.2d 1171 (T.T.A.B. November 30, 2021) (precedential). [SG]
Notable Trademark Decisions - Supplement, January 2022 By: Scott Greenberg
CAFC Remands Fraud Claim To TTAB To Further Consider Falsity of Acquired Distinctiveness Statement Galperti S.r.l., an Italian company (Galperti-Italy) filed a US trademark application to register GALPERTI for metal flanges, fittings and forgings. After the application was refused under Section 2(e)(4) of the Trademark Act (15 U.S.C.§1052(e)(4)) on the ground of being primarily merely a surname, Galperti-Italy obtained the Examining Attorney’s approval of the application by claiming that the mark had acquired distinctiveness under Section 2(f) (15 U.S.C.§1052(f)) by virtue of the following (the “2(f) Statement”): "The mark has become distinctive of the goods listed in the application through the Applicant's substantially exclusive and continuous use in commerce for at least the five years immediately before the date of this statement." Registration issued, and Galperti, Inc., a Texas corporation (Galperti-USA), petitioned to cancel on grounds including fraud based on the 2(f) Statement. The Trademark Trial and Appeal Board (Board) dismissed the fraud claim on the ground that the above statement was not false. In a recent precedential decision, the U.S. Court of Appeals for the Federal Circuit (CAFC) has, for the second time, remanded the case to the Board to further consider the possible falsity of the 2(f) Statement. Galperti, Inc. v. Galperti S.R.L., 2021 U.S.P.Q.2d 1115 (Fed. Cir. November 12, 2021). Galperti-USA asserted three grounds for cancellation: likelihood of confusion with a previously used mark under Section 2(d), fraud in claiming ownership, and fraud in making the 2(f) Statement. The 2(f)-related fraud claim was based on evidence of Galperti-Italy’s knowledge of use of “Galperti” in the US by Galperti-USA and third parties which, according to Galperti-USA’s claims, rendered Galperti-Italy’s claim of substantially exclusive use of GALPERTI for the past five years a false and fraudulent statement. In its first decision, the Board held that the ownership-related claim had been forfeited by Galperti-USA and dismissed the other two claims on the merits. The Board dismissed the Section 2(d) claim based on its conclusion that Galperti-USA failed to prove prior use of the mark. Regarding the 2(f)-related fraud claim, the Board held that that Galperti-Italy's “mere knowledge of other players in the marketplace” was insufficient to make its statement to the PTO "'per se false.” Id. at *2. The Board therefore dismissed this fraud claim based on failure to prove the required element of a false statement, without reaching the additional elements of such a claim, namely that the false statement was made knowingly with intent to deceive the PTO. Galperti-USA appealed the Board’s two merits-based dismissals. In the first appeal, the CAFC affirmed the Board’s rejection of the 2(d) claim. However, on the 2(f)-related fraud claim, the CAFC held that the Board panel had not gone far enough in its analysis, because the absence of "per se" falsity does not imply the absence of falsity. On remand the Board would have to consider “whether the uses to which Galperti-USA pointed as showing the falsity of Galperti-Italy's representation to the PTO were significant or, instead, inconsequential.” Id. at *2-3. On remand, the Board again held that Galperti-USA had failed to prove the type of significant, not inconsequential, use by others that would make Galperti-Italy's representation false, and therefore again dismissed the fraud claim for lack of a false statement. In particular, the Board concluded, among other things, that Galperti-USA failed to show that the relied-upon uses of “Galperti” by parties other than Galperti-Italy were significant and consequential because (a) as to Galperti-USA’s own use, Galperti-USA would have had to show that it “had obtained proprietary rights in 'Galperti' by evidence of secondary meaning," which it failed to do, and (b) Galperti-USA could not benefit from third-party use of GALPERTI because there was no proven privity (though there was affiliation) between Galperti-USA and the third-party users such that use by the third parties inured to Galperti-USA’s benefit. Id. at *3. Galperti-USA again appealed, and the CAFC, in the present decision, determined that the two above-mentioned conclusions of the Board were not legally valid bases on which to conclude that the uses in question were inconsequential. As to Galperti-USA’s own use, the CAFC held that “even marketplace uses of a term lacking secondary meaning for the users” are among the uses that legitimately can be counted towards “undermining a claim of acquired distinctiveness of a term based on substantially exclusive use of the term as a mark for the statutory five-year period.” Id. at *4. As to the third-party uses, the CAFC held that “[u]se by anyone, regardless of relation to the challenger, may undercut a claim of substantially exclusive use.” Id. at *5. Therefore, the CAFC again remanded the case to the Board to further consider the 2(f)-related fraud claim, noting that the court could not “be confident that the Board's bottom-line finding of no significant non-Galperti-Italy use was unaffected by the two legal errors.”. Id. at *3. The CAFC also noted that it was not reaching the intent element of the fraud claim. Id. Galperti, Inc. v. Galperti S.R.L., 2021 U.S.P.Q.2d 1115 (Fed. Cir. November 12, 2021) (precedential).
Historians Corner
BY: DALE CARLSON*
As our Association begins its second century, we have an opportunity to celebrate where we are and where we have been. We celebrate our Association's heritage as our nation's largest regional IP law association - with a geographical reach from New York and New Jersey to Connecticut and Vermont. You may recall that our Association was founded early in 1922. Later that year, on December 6, 1922, a total of 252 persons attended our Association's first annual Judges Dinner. In addition to Judges Learned and Augustus Hand, the attendees included nine other judges, the Commissioner of Patents, and the presidents of the Chicago, Cleveland, Pittsburgh and American patent law associations. The first Judges Dinner was held at the Waldorf at a time when the Waldorf and Astoria were separate hotels at a site now occupied by the Empire State Building. The hotels were separated by a walkway dubbed "Peacock Alley" for the hotel guests in their fineries strutting between one and the other. The first Dinner featured a menu printed in the form of a patent to inventors "Cook" and "Chef". Since Prohibition was in force, the menu depicted an empty cocktail glass, the contents of which, although perhaps not made by a secret process, were certainly made by a process in secret. From its inception, the annual NYIPLA Judges Dinner marked milestones for our Association, and the sociability and good humor of its members. Each dinner featured some form of entertainment for the attendees. At the early dinners, the entertainment of choice was a play having some connection to patents since back then it was strictly a patent law organization. The producer of several of those plays was a patent lawyer-turned-playwright named Lawrence Langner. The first Langner play was entitled "Patent Applied For". It was a comedy about a tall blonde Australian lady who was the inventor of a new corset. The corset was intended to adjust the contours of the female anatomy to comply with then-current fashion trends. The third annual dinner in 1924 featured another Langner play entitled "The Famous Case of National Kink Safety Pin Co. vs. International Bump Co., et al. Or How Many Angels Can Dance on the Head of a (Safety) Pin?" The title says it all. This play was re-enacted by members of our Association at the Thurgood Marshall United States Courthouse in Manhattan in 2015 in honor of the 225thanniversary of the Southern District of New York. Recently, live music has been a mainstay at the Judges Dinners. One outstanding band leader and saxophonist named Ray "Dutch" Wolff performed at every Dinner from 1960 through 2012. As you may recall, in 1960, Dwight D. Eisenhower was President of the United States. Top hats for men and fur shawls for women were still the order of the day. Back then, our Association's Bulletin (now "The Report") was only a dream in the minds of the then newly constituted "Bulletin Committee", a dream that didn't materialize until the first issue of the Bulletin appeared in October 1961. The golden anniversary Dinner in 1972 was held at the Waldorf=Astoria in its current location on Park Avenue. It's dinner menu echoed that of the first one, featuring a reissue of the "Cook" and "Chef" patent. The contents of the cocktail glass were fully described since Prohibition was by then a distant memory. The seventy-fifth Dinner in 1997 featured a keep-sake booklet describing the history of our Association to date. The Dinner also featured keynote speeches by Giles S. Rich and William C. Conner. Both were patent lawyers, federal judges, and past presidents of our Association. As we enter 2022, we hope to emerge from the current pandemic to a happy centennial year and smooth sailing ahead. Hear, Hear! *Dale Carlson is NYIPLA past president and current historian. His email is dale.carlson@quinnipiac.edu.
"As Time Goes By - Hear, Hear: Our Centennial Year!"
MINUTES OF OCTOBER 12, 2021 MEETING OF THE BOARD OF DIRECTORS OF THE NEW YORK INTELLECTUAL PROPERTY LAW ASSOCIATION
The Board meeting was held via videoconference. President Rob Isackson called the meeting to order at approximately 4:05 p.m. In attendance were: Rob Isackson, President, presiding Patrice Jean David Goldberg Scott Greenberg Marc Pensabene Jenny Lee Jonathan Berschadsky Heather Schneider Cheryl Wang (joined around 4:45 pm) Colman Ragan (left at 4:50 pm) Rob Rando Diana Santos Feikje van Rein attended from the Association’s executive office. Eric Greenwald attended as Associate Advisory Council members. Paul Bondor, John Mancini, Gene Lee, Heather Schneider as well as Khalil Nobles and Christine Lauture from the AAC were unable to attend. The meeting was called to order by President Rob Isackson, Motion to waive reading of minutes was approved. A motion to approve minutes was passed. Financial Report. Treasurer Scott Greenberg reported on the financials. The revenue is lower than previous years due to less members and no-in person events. The expenses are lower as well however still resulting in a loss for the association. New Members. There were 13 new members: 1 practitioner and 13 students. Motions to waive reading of the names and admit new members were approved. Judges' Dinner. The board members discussed the possibility of an in-person event and decided to defer the decision to November. Feikje van Rein presented a new Judges' Dinner pricing proposal based on table location. The Board discussed and a motion was passed to approve the new pricing. Amicus Briefs Committee. David Goldberg reported that a decision was issued in Minerva Surgical, Inc. v. Hologic, Inc. where NYIPLA filed a brief. There are still three other pending cases. The committee is monitoring a number of other cases, including GSK v. Teva, the Amgencase, Warhol v. Goldsmith copyright case involving fair use, the FTC v. Impax Labs anti-trust case, Biogen method of treatment patent case and a Section 112 case where the issue is whether it is enough to knock out a patent if only one of the claims is validated. The committee is monitoring the Sulzer Mixpac trade dress case but unlikely to get involved. Legislative Action. Colman Ragan reported that the there are various legislative pieces moving in Congress regarding pharmaceuticals and anti-trust. Based on the last roundtable held by Sen. Tillis’ staff, it does not look like legislation amending Section 101 will move forward any time soon. The LAC is also keeping an eye on the Product Hoppinc/BPCIA legislation from Senator Cornyn as well as legislation relating to the ability to settle pharmaceutical patent disputes because those two proposals seem to have some momentum in Congress. Rob Isackson reported that the comments for the Section 101 Patent Eligibility report requested by Congress have been approved by the Board and will be filed the following day. Eric Greenwald from the AAC that they are reaching out to ChiPs for a possible roundtable program. Programs Jonathan Berschadsky provided an update for Dave Bomzer on the Fall IP Transactions Bootcamp. The first Bootcamp had a total of 35 participants including about 7 speakers/ instructors/ Board members.It went really well. Abigail Struthers asked for speaker suggestions for the Women in IP Law corporate panel during the Fall Patent webinar series. At 4:55 pm, a motion was made to adjourn the meeting to begin the committee reports, which was approved.
The Board meeting was held via videoconference. President Rob Isackson called the meeting to order at approximately 4:05 p.m. In attendance were: Rob Isackson, President, presiding Gene Lee John Mancini Patrice Jean David Goldberg Scott Greenberg Jenny Lee Jonathan Berschadsky Cheryl Wang Colman Ragan (left at 5:00 pm) Rob Rando Diana Santos (joined by 4:20 pm) Feikje van Rein attended from the Association’s executive office. Eric Greenwald attended as Associate Advisory Council members. Paul Bondor, Heather Schneider, Abby Struthers, Marc Pensabene as well as Khalil Nobles and Christine Lauture from the AAC were unable to attend. The meeting was called to order by President Rob Isackson, Motion to waive reading of minutes was approved. A motion to approve minutes was passed. Financial Report. Treasurer Scott Greenberg reported on the financials. Similar to last month, revenue down relative to prior years due to lack of in-person events. Last year, brought in around $10k whereas this year we expect around $5k. However, there are no expenses due to virtual programming. This report includes revenue from programs through end of October. New Members. There were 21 new members: 4 practitioners and 17 students (3 of which are pending bar admission). Motions to waive reading of the names and admit new members were approved. Life Members. Rob Isackson reported there are 2 applications pending board approval. Both requests are from past presidents, Chris Hughes (Cadwalader) and Ed Vassallo (Venable). Jonathan Berschadsky made a motion to approve the two applications. The motion was passed. Amicus Briefs Committee. David Goldberg reported that there were no proposals last month as things are still in a holding pattern. At the monthly meeting, the ABC discussed 6 new patent cases that were added to the watch list. Full details in the committee report. The ABC will monitor the following cases in addition to the existing list: Olaf Soot Design, LLC v. Daktronics, Inc. involving adoption of a new claim construction on appeal and reversal of jury verdict on that basis rather than remand; Chromadex, Inc. v. Elysium Healtha patent eligibility case for a formulation/pharmaceutical composition of a natural product; Apple, Inc. v. Optis Cellular Technology, LLC concerning mandamus review of IPR petition denial based on Fintiv factors; Infinity Computer Products, Inc. v. Oki Data Americas, Inc. which is a patent case on indefinitenes; Mobility Workx v. Unifited Patentsalso a patent case involving constitutional challenges to IPR institution; Epic Systems Corp., v. Tata Consultancy Service Limited concerning constitutionality of punitive damages under Wisconsin statute. Legislative Action. Colman Ragan reported that the Reconciliation Bill, which has not yet passed, contains pharmaceutical pricing bill that caps and controls pricing after exclusivity. This would have an impact on Hatch Waxman & BPCIA in terms of the value of patents as well as litigating them. The Section 101 Roundtable discussion indicates that it is not likely to go anywhere meaningful. The interested parties do agree the key issues are product hopping, BPCIA limit, and patent settlements. Kathy Vidal next director of USPTO. The board members discussed whether there was any indication how the USPTO may change or evolve under her direction. In-Person Events. YLC & Corporate Cocktail Mixer. The board discussed the cancellation of event last month. Eric Greenwald provided input from the AAC, noting that the students who signed up for that mixer were also on this month’s new member list. Eric proposed hosting next month’s committee meeting in-person in the evening. The board members agreed and discussed the value of a substitute event especially for the students who signed up to attend. A motion was made for a “Student Member Appreciation” event as a substitute for the cancelled mixer last month. The board members approved. Judges' Dinner. The board discussed the appetite for in-person events compared with the potential of a variant or surge and whether to consider a hybrid model. Feikje reported that based on her conversations with US Marshalls, the judges have so far been attending in-person events. The board members also discussed the force majeure clause with Hilton and the potential fee if we are unable to meet the minimum headcount. Colman noted that some in-house counsel members may not be able to attend due to employer restrictions. Although hosting in-person is a huge financial commitment, the board members agreed that there is likely pent-up demand for in-person events. Even planning for this as a loss leader, it is worth it for our members and the organization. Motion was made and passed by the board for in-person Judges' Dinner on March 25, 2022. Associate Advisory Council. Diana Santos will get in touch with Eric from AAC to discuss setting up a holiday mixer for the Young Lawyers Committee. Programs PTAB – Programming was well done as usual. Attendance has been regular for the monthly program. The committee has a great rapport with PTO. Fall IP Transactions Bootcamp – People were engaged and feedback has been positive from both attendees and board members. There was a drop off towards the end in terms of participation. Next year, it may make sense to move it up earlier. Diversity Roundtable – Cheryl reported that the speaker list will be finalized within one week. Event is December 2nd at 5pm. The program will be 1.5 hours on Zoom with Diversity CLE credit. The topic is Career Transitions in IP & Strategies for Success for Diverse Lawyers in Tech. Speakers will include in-house and private practice. First portion of program will be traditional panel format showcasing “success stories” and second portion will involve breakout rooms where each speaker will meet with a small group for young practitioners to discuss. Fall Patent CLE - Opened today with about 40 registrants. At 5:13 pm, a motion was made to adjourn the meeting, which was approved.
MINUTES OF NOVEMBER 9, 2021 MEETING OF THE BOARD OF DIRECTORS OF THE NEW YORK INTELLECTUAL PROPERTY LAW ASSOCIATION
MINUTES OF DECEMBER 16, 2021 MEETING OF THE BOARD OF DIRECTORS OF THE NEW YORK INTELLECTUAL PROPERTY LAW ASSOCIATION
The Board meeting was held via videoconference. President Rob Isackson called the meeting to order at approximately 4:05 p.m. In attendance were: Rob Isackson, President, presiding Diana Santos (left at 5 pm) Heather Schneider Robert Rando Gene Lee John Mancini Patrice Jean David Goldberg Scott Greenberg Jonathan Berschadsky Colman Ragan (left at 5:15 pm) Cheryl Wang (joined at 4:12 pm) Eric Greenwald (joined at 4:49 pm) Feikje van Rein and Christopher attended from the Association’s executive office. Eric Greenwald attended as Associate Advisory Council members. Jenny Lee, Marc Pensabene, Abby Struthers, Paul Bondor as well as Khalil Nobles and Christine Lauture from the AAC were unable to attend. The meeting was called to order by President Rob Isackson upon reaching quorum at 4:12 pm. Motion to waive reading of minutes was approved. A motion to approve minutes was passed. Financial Report. Treasurer Scott Greenberg that the financials were on similar footing similar to last month. New Members. Scott Greenberg reported that there were many new student members. The number of new members this month exceed last year’s numbers at this time. Motions to waive reading of the names and admit new members were approved. Amicus Briefs Committee. David Goldberg reported that it is still a slow period. There are no recommendations this month. The committee is following up on the watch list cases but much is still in a holding pattern. Legislative Action. Colman Ragan reported that the Judicial Security & Privacy Act white paper has been revised. The committee has communicated our support to Sen. Menendez and expects to hear back after the holiday. Not much else is happening as the focus is on Build Back Better. CA law which attempts to sanction reverse-payment patent settlement agreements was struck down. Federal district court granted preliminary injunction temporarily enjoining enforcement. Appeal is likely. The Copyright Office has begun implementing the CASE Act, including the Copyright Claims Board (“CCB”) which will begin hearings in spring 2022. The Office issued a notice of proposed rulemaking for the CCB and comments are due February 2022. Patent 101 Response: the committee members passed because it was not in their wheelhouse but discussed sending to other committees such as the Patent Litigation Committee and then consider sending to other organizations. DOJ has requested public comments on Draft Policy Statement on Licensing Negotiations and Remedies for Standards-Essential Patents Subject to F/RAND Commitments. PTAB and LAC will weigh in on whether to comment to changes to IPR in the pharmaceutical sector. In-Person Events. Board members discussed various concerns for hosting in-person events, including the January Board meeting. Particularly because the January meeting includes committee reports. Feikje noted that its important to revisit in January and then consider potentially for February. Judges' Dinner. Rob reported that proposed nominee Judge Stark is interested in accepting and very honored but not currently in a position to do anything public until his nomination to federal circuit has run its course. The board discussed alternative nominations for OPS recipient and dinner speaker, including Judge Lucy Koh, who is confirmed for elevation to 9th Circuit and Judge Sullivan, who is on the 2nd Circuit. For Supreme Court outreach status report, Justice Souter and Justice Barrett have been contacted so far. The Hilton contract is with the officers who discussed comments on specific provisions and agreed is ready for signature. The Conrad contract is pending final version. Associate Advisory Council. Diana Santos reported the difficulty in getting the council members to meet and expressed that it may be best to consider additional or alternate candidates. Eric is the only active member of the council. Programs Committee. Heather reported on the Litigation Bootcamp, which had 30 people registered. The board discussed how to improve and get more sign-up for spring, such as potentially adjusting the format to include less sessions, and providing opportunities that are not typically offered such as negotiating discovery disputes. A group will be created for alumni of NYIPLA transaction litigation. Colman reported the committee is considering the next Presidents’ Forum. Exploring legislative focus but Sen. Menendez was not able to be secured. Considering focusing on name, likeness, with respect to NFTs. Include the fashion law, entertainment & sports law, copyright & trademark law committees. Secure an academic to participate as well. Heather and Colman discussed the fireside chats, a program that the Patent Law Committee set up which is similar to the PTAB meetings set up, and the need to involve the Programs Committee to ensure support for successful event including advertising. Previous and Upcoming: PTAB – Programming was well done as usual. Attendance has been regular for the monthly program. The committee has a great rapport with PTO. Fall Patent CLE Series (Nov. 9-18) – Heather Schneider reported there was good attendance at every session. The virtual format has been successful. Diversity Roundtable (Dec. 2nd) – PTAB Committee Tackles Congressional Bills Relating to PTAB Reform – Rob Rando reported that there was great attendance, which included about 10 in-house & 20 outside counsel. So far, 7 commitments from in-house already. Inventor of the Year award nominations deadline is coming up. It will likely be extended. At 5:25 pm, a motion was made to adjourn the meeting, which was approved.
Fall Patent CLE Series By: David Bomzer and Lynn Russo, programs committee co-chairs From Tuesday, November 9, 2021 to Thursday, November 18, 2021, NYIPLA hosted a series of webinars that allowed attendees to explore the latest issues and trends in intellectual property. Panel topics included Recent Litigation Trends from an In-House Counsel Perspective Fireside Chat with Chief Administrative Judge Boalick, PTAB, USPTO Foreign Updates on Patent Law Litigating Patents in the COVID Era: Updates from the Top District Courts for Patent Litigation Legislative Developments 2021: Pending & Proposed Legislation That Would Affect IP Rights Preparing an Amicus Brief Submission on Behalf of the NYIPLA How Not to Destroy Your Trade Secrets Artificial Intelligence and the USPTO Trade Secrets Committee Counsels Practitioners on How (Not) to Destroy Your Trade Secrets The NYIPLA Trade Secrets Committee provided valuable practical advice on protecting trade secrets to NYIPLA’s members during the 2021 Fall Patent CLE Series. The Committee compiled a variety of trade secret identification and protection watch-outs for practitioners to consider as they counsel their clients in this continually developing area of trade secret law. The Committee addressed recent case law and news articles from trade secret experts in a paper that was prepared by Committee member Bill Marsillo, entitled “How (Not) to Destroy Your Trade Secrets” and is available at the NYIPLA website In addition, Committee members Rachel Blitzer, Laura Chubb, and Mark Schildkraut presented a panel on twenty considerations for preserving your clients’ trade secrets. These considerations covered five general areas: (I) The Basics, (II) The Workplace, (III) Some Unique Circumstances, (IV) Agreements, and (V) Litigation. More specifically, the topics covered by the panel included: Trade Secret vs. Confidential Considerations Identifying Your Trade Secrets Failing to Take Reasonable Measures to Protect Every Conceivable Measure Not Required Inconsistent Application of Reasonable Measures Overly Aggressive Confidentiality Requirements Poor Workplace Practices Balancing “Big Brother” Policies with Employee Monitoring Open Zoom Calls Lax Work from Home Procedures Displaying Before Thousands Passage of Time Including Trade Secret in a Published Patent Software and Source Code Issues Industry-Specific Watchouts Insufficient NDA Terms Joint Venture Agreements Failure to Sufficiently Describe Trade Secret Protective Orders / Motions to Seal Emergency Relief / TRO Challenges A recording of this panel can be accessed by visiting the NYIPLA website. Diversity Roundtable By: cheryl wang and Jenny lee On Thursday, December 2, 2021, NYIPLA featured distinguished speakers from in-house and private practice who discussed Career Transitions in IP & Strategies for Success for Diverse Lawyers in Tech. Attendees had an opportunity to join one of the small group discussions, each led by one of the speakers. PTAB Committee Tackles Congressional Bills Relating to PTAB Reform By: Kenneth Adamo and Charles Macedo, PTAB Committee C0-chairs On Tuesday, December 7, 2021, the PTAB Committee tackled a summary of the currently pending (and soon to be expected) bills in congress addressing potential reform of the PTAB, which includes: S.2891 (Restoring the American Invents Act), H.R. 5874 (Restoring America’s Leadership in Innovation Act), H.R. 5902 (Conducting Legally Efficient Administration and Resolution of Patents) and the old S.2082 (Stronger Patents Act of 2019), as well as the upcoming hearings on Kathi Vidal as next Director. Fireside Chat with Judge Michael Cygan on Ex Parte Appeals at the USPTO By: Clint Mehall and Joy Goudie, Patent Law & Practice Committee co-chairs On Friday, December 17, 2021, Patent Law & Practice Committee Co-chairs Clint Mehall and Joy Goudie had a Fireside Chat with PTAB Judge Michael Cygan on Ex Parte Appeals at the USPTO. Among other things, the Patent Law & Practice Committee discussed appeal vs. RCE strategy for patent applications, and the effectiveness of certain types of arguments before the PTAB on ex parte appeals. USPTO Returns to the NYIPLA PTAB Committee to Host PTAB Game Night to Kick Off the New Year By: Kenneth Adamo and Charles Macedo, PTAB Committee C0-chairs On Tuesday, January 4, 2022, the NYIPLA PTAB Committee was joined by a distinguished group of USPTO officials, including Vice Chief Judge Kal Deshpande, Judge Amanda Weiker, and Judge Eric Jeschke, to host the PTAB Game Night. The distinguished panel of judges elaborated on each answer with a few learning points in categories covering precedential decisions, motions, and PTAB myths. Zoom out with NYIPLA! By: Associate Advisory Council Are you excited about achieving your goals in 2022? Do you need to refocus or recharge mentally? Are you just plain tired of networking over Zoom? Well, we can answer yes to all of these questions, but we promise that our networking event, which was held on Thursday, January 13, 2022, will leave you anything but tired of Zoom! This refreshing event allowed attendees to network with NYIPLA board members, law firm associates and law students right before Dr. MLK weekend. Additionally, attendees had access to a wide array of accomplished attorneys, many of whom were willing to share the tips and tricks to their success. Presented by the Associate Advisory Counsel: Eric Greenwald, Wolf, Greenfield & Sacks, Christine-Marie Lauture, Lauture IP and Khalil Nobles, Gunderson Dettmer. Using Petitions Effectively in Patent Prosecution By: Clint Mehall and Joy Goudie, Patent Law & Practice Committee co-chairs The NYIPLA was honored to have Fenn Matthew, Deputy Director of the USPTO Office of Petitions host a presentation on Friday, January 28, 2022. It provided attendees with a high level overview of the Office of Petitions, including electronic resources, a brief discussion of ePetitions, where to find relevant petitions related data and statistics, and petitions-related updates. The latter half of the presentation provided helpful tips concerning petitions practice.
NYIPLA Events
Last First Firm/Company/Law School State Membership Abdool Allaric Rutgers Law School New Jersey Student Bank Anna Quinnipiac University School of Law New York Student Brittin K. Kaelin Kramer Levin Naftalis & Frankel LLP New York Active 3- Brown Noni Harvard Law School New York Student Conners Sean New York University School of Law New York Student Eisenberg Renata New York University School of Law New York Student Garber Kate Columbia Law School New York Student Hagiz Ron Quinn Emanuel Urquhart & Sullivan LLP New York Active 3+ Henley Christopher Syracuse University College of Law New York Student Herbst Halley Fordham University School of Law New York Student Hsu Chieh-Ming (Ben) The George Washington University Law School New York Student Kaczmarek Alexander New York University School of Law New York Student Kwon Janice Benjamin N Cardozo School of Law New York Student Miller Daniel Hall Booth Smith, P.C. Virginia Associate Miller Rodney Hall Booth Smith, P.C. Georgia Associate Montes Gabriella New York Law School New York Student Mudunuri Hari Manasa New York University School of Law New York Student Nad Karina Benjamin N. Cardozo School of Law New York Student Ng Jonathan Benjamin N Cardozo School of Law New Jersey Student Nutovits Jenevieve Georgetown University Law Center New York Student Onyebeke Lynn University of Virginia School of Law New York Student Pirraglia Alex St. John's University School of Law New York Student Redhage Keely Brooklyn Law School New York Student Shah Vipasa Fordham University School of Law New York Student Shastry Alekhya New York University School of Law New York Student Sklar Brandon The Law Office of Brandon N. Sklar New York Active 3+ Stiteler Alexandria St. John's University School of Law New York Student Stottele Mary Fross Zelnick Lehrman & Zissu, P.C. New York Active 3- Tasev Alexandra Pace Law School New York Student Wissing Gerard Wissing Miller LLP New York Active 3+ Xu Chuxin New York University School of Law New York Student Zhang Nancy Fordham University School of Law New York Student
WELCOME NEW MEMBERS
Peter Armenio, formerly of Quinn Emanuel Urquhart & Sullivan, LLP, has joined White and Case LLP as a Partner. Stuart Pollack, formerly of DLA Piper, has joined Kilpatrick Townsend & Stockton LLP as a Partner. Rhett Millsaps II, Christopher Sprigman, Mark McKenna, and Rebecca Tushnet have formed their own firm, Lex Lumina PLLC, with an office in New York. Charles LaPolla, formerly of Amster Rothstein & Ebenstein LLP, has joined Phillips Nizer LLP as a Partner. Colleen Tracy James, formerly of Quinn Emanuel Urquhart & Sullivan, LLP, has joined White and Case LLP as a Partner. Carl Morales, formerly of Dechert LLP, has joined Fenwick & West LLP as a Partner. Jayashree Mitra, formerly of Zuber Lawler & Del Duca LLP, has joined Fox Rothschild LLP as a Partner. Simon Roberts and Jason Leonard, formerly of Hogan Lovells, have joined McDermott Will & Emery LLP as Partners. Melissa Cabrera has been promoted to Principal at McKool Smith PC.
Moving Up & Moving On
Events and Announcements www.nyipla.org
Text
NYIPLA Publications Committee Editorial Team Committee Co-Chairs Kyle Koemm and Margaret Welsh Board Liaison Patrice Jean Committee Members Giselle Ayala Mateus Heather Bowen Dale Carlson Jayson Cohen William Dippert John Kenneth Felter Robert Greenfeld Richard Koehl Kyle Koemm Keith McWha Clint Mehall Suzanna Morales Calvin Wingfield Anna Bank NYIPLA Executive Office 229 Seventh Street, Suite 202. Garden City, NY 11530 Tel: 1.201.461.6603 Email: admin@nyipla.org Web: www.nyipla.org
FEBRUARY 02/01/2022 PTAB Committee Explores Latest PTAB POP Panel Decision on Timing of Fedwire Transfer for Purposes of PTAB Proceedings 02/10/2022 Recent Developments in the Law of Biologics and Biosimilars 02/17/2022 Presidents' Forum: Intellectual Property Issues Associated with Name, Image & Likeness in the NCAA MARCH 03/25/2022 100th Annual Dinner in Honor of the Federal Judiciary