#aba-ipl

By Michelle Gregory[1]

The Deadmau5 v. Mickey Mouse issue encompasses a standoff between a musician seeking to protect his trademark and a character and mascot for a corporation. In July 2013, Deadmau5 applied for a trademark of his well-known mark consisting of a caricature of a circular mouse head with black circular ears, a black face, white eyes and a white mouth with the U.S. Patent and Trademark Office.[2] The registration of this trademark would cover every aspect of the use of this symbol.[3] This mark, known as the mau5head, is already a registered trademark in over 30 countries.[4] Deadmau5 is the stage name of EDM star Joel Zimmerman, who is a DJ, music producer and electronic artist that became popular in 2008.[5] The importance of this trademark to Deadmau5 stems from the fact that he wears a three-dimensional version of this signature mouse head every time he performs.

In March 2014, Disney announced that they have instigated an investigation of the trademark application filed by Deadmau5 with the US Trademark Office.[6] As of today, the only news pertaining to this investigation has been that Disney requested and was granted 90 days to investigate the claim and file a notice of opposition with the US Trademark Office.[7] To date, Disney has made no formal move to object to Deadmau5 potentially diluting its trademarks associated with its iconic character, Mickey Mouse. The next filing done in this action was on behalf of Deadmau5 on September 2, 2014 when he filed a 171-page trademark request with the US Patent and Trademark Office to change the image to include the artist’s name on the bottom of the symbol.[8]

Under the Lanham Act, “(1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which—(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person.”[9] The Lanham Act is the primary federal statute governing trademark law in the U.S. The unlawful use of the protected mark or a false or misleading statement related to the protected mark are protected under this act.[10] The claimant, which is Disney in this case, must prove that a false or misleading statement was made in commerce and that the statement creates a likelihood of confusion or dilution to the plaintiff.[11]

Disney could argue that the Deadmau5 logo would dilute the Disney’s Mickey Mouse symbol, which similarly consists of a circular mouse head with circular ears.  Under the Federal Trademark Dilution Act or 1995, which is an expansion of the Lanham Act, famous marks are protected against the dilution of the distinctive nature of a mark.[12] “There is no need to prove a likelihood of confusion, nor is there any need to show competition between the goods of the plaintiff and the defendant.[13] Therefore, it is possible to use a dilution cause of action against users of the same mark even when the defendant's goods and services bears no relation to the goods or services of the famous mark.[14]” In most cases, the available remedy is an injunction to prevent further dilution.[15] Dilution cases are usually brought when the defendant’s use of a mark causes blurring (the connection in the consumer’s mind between the two marks or services are weakened) or tarnishment (the defendant’s use is unsavory or unwholesome, or the mark is used in connection with inferior products.[16] Since Mickey Mouse is the most important character of Disney, granting Deadmau5’s trademark registration might blur the consumers’ interpretation of the meaning of the two symbols.

As an available equitable defense for Deadmau5, laches can be invoked when there is an unreasonable delay in pursuing a right or claim in a way that prejudices the opposing party.[17] An assertion of laches requires knowledge of a claim and unreasonable delay and neglect that, when taken together, hurt the opponent.[18] As stated by Rishi Iyengar, “given that the mau5head and other identifying deadmau5 trademarks have been used in the US and around the world for almost a decade,” it leaves one to wonder why this is just being brought about by Disney against Deadmau5.[19] It seems that Disney would not be able to meet the standard for dilution as it has not yet been evidenced to have shown a blurring of the marks in the minds of consumers. Moreover, allowing such a delay would cause unfair prejudice to Deadmau5. Money is being spent on litigating the issue and preparing a response to the investigative findings by Disney. Deadmau5 is able to continue to use the mark during this time but his plans for placing the mark on other items that require this patent are not allowed to be completed and therefore causing expenses and expected profits to be lost. The existence of these two images for almost a decade in the same economy seem to have never been an issue until Deadmau5 filed for an official trademark registration of his mark. Disney does not seem to have an excuse for bringing the claim after such a substantial delay. When the notice of opposition was filed, evidence should have previously been obtained. Circumstances could have changed during this lapse in time that no longer warrant a justifiable claim by Disney. It seems that the delay by Disney in filing their motion in opposition was done to merely prolong the inevitable point when Deadmau5 would obtain the trademark.

As another argument, Deadmau5’s legal team could bring up the fact that in 2012, Disney acquired LucasArts, which is a video game publisher and licensor that is especially known for its video games based on the Star Wars franchise.[20] LucasArts, while under Disney’s ownership, licensed Deadmau5’s “Ghosts ‘n Stuff” for a special mode in the Star Wars game that would feature a dancing Darth Vader.[21] Although this license agreement pertained only to licensing Deadmau5’s song, the agreement might be potential evidence that Disney had knowledge of and has not been concerned with Deadmau5’s mark in the past and only recently became concerned once Deadmau5’s trademark application was filed. Interestingly, Disney released a statement regarding a video on its website using “Ghosts ‘n Stuff,” stating that the music was “appropriately licensed” and that its trademark opposition is “not about the use of the Deadmau5 costume”.[22] Deadmau5 recently sent a cease and desist letter to Disney in September of 2014 regarding Disney using the Deadmau5 track as background music in a video to promote a spooky cartoon remix.[23] The video is 90-seconds and shows short clips from various Disney films with the caption “Enjoy a spooky cartoon Re-Micks to the tune of Deadmau5’s Ghosts ‘n’ Stuff.”[24] Next to the video is a prominently featured Deadmau5 mark, to which Deadmau5 states there is no licensing agreement between himself and Disney for them to use such distinguishing mark.[25] According to Deadmau5 this music and mark were used on Disney’s website in this video without his permission. 

Deadmau5 has shown his own form of reconciliation to the potential trademark issue by filing to add his name to the bottom of his image. This would be seen as an olive branch to show that co-existence is possible without leading to dilution of the Disney mark.  

Since Disney was granted 90 days to investigate and file opposition, their time period has thus run out. Should they be granted an extension or new time period to file and this case does reach the trial stage, an expectation of a consumer survey to determine if dilution has occurred would probably ensue. The fact that Disney has previously stated that they have used the Deadmau5 image in the past in a website video and that its concerns were not with the use of the Deadmau5 costume shows that Disney may have been silent on the issue after March 2014 because it may not think it has a strong enough case to oppose Deadmau5’s trademark application.

The Deadmau5 and Disney trademark issue portrays the common struggle in trademark law to balance protecting consumers, allowing companies to protect its reputation and intellectual property, and protecting First Amendment concerns.  Disney is a well-established and respected company that has developed famous trademarks composed of various interpretations of Mickey Mouse.  Deadmau5 is an artist who has developed an image and trademark that seems to have garnered its own secondary meaning different from that of Disney’s mouse symbols.  Should a company be able to prevent the trademark registration of a symbol that has developed its own secondary meaning as a source of Deadmau5’s goods and services? I think that to allow this would be too great of a burden on companies and people who have put the work into developing a reputation under a symbol that can be and is viewed as a distinct mark by the public.

[1] Michelle Gregory, J.D. is a recent graduate from Barry University School of Law.

[2] Eriq Gardner, Disney Investigating Deadmau5’s Attempt to Trademark Mouse Logo, Billboard.com, Apr. 1, 2014, available at http://www.billboard.com/articles/news/6029445/disney-investigating-deadmau5s-attempt-to-trademark-mouse-logo.

[3] Id.

[4] Rishi Iyengar, Deadmau5 Clashes with Disney over Ears Trademark, Time.com, Sept. 5, 2014, available at http://time.com/3272764/deadmau5-clashes-with-disney-over-ears-trademark/.

[5] Deadmau5, http://www.deadmau5.com/bio/

[6] Eriq Gardner, supra note 2.

[7] Id.

[8] Eriq Gardner, Why Deadmau5’ Trademark Battle with Disney Has Cost Him Dearly, Billboard, Sept. 12, 2014, available at http://www.billboard.com/articles/news/6251375/why-deadmau5-trademark-battle-with-disney-has-cost-him-dearly.

[9] 15 U.S.C. 1125 (a)(1).

[10] Id.

[11] 15 U.S.C. 1125 (a)(1)(A).

[12] BitLaw, Trademark Dilution, available at http://www.bitlaw.com/trademark/dilution.html.

[13] Id.

[14] Id.

[15] Id.

[16] Id.

[17] Deirdre R. Wheatley-Liss, Doctrine of Laches means you are “Out of Time”, LexisNexis Legal News Room Estate and Elder Law, Jan. 26, 2015, available at http://www.lexisnexis.com/legalnewsroom/estate-elder/b/estate-elder-blog/archive/2012/01/26/doctrine-of-laches-means-you-are-quot-out-of-time-quot.aspx.

[18] Id.

[19] Rishi Iyengar, supra note 3.

[20] Eriq Gardner, supra note 7.

[21] Id.

[22] Id.

[23] Jason MacNeil, Deadmau5 Roars Back With Cease and Desist Order Against Disney, Huffington Post Canada, Sept. 5, 2014, available at http://www.huffingtonpost.ca/2014/09/05/deadmau5-disney-cease-and-desist_n_5772348.html.

[24] Id.

by Erik A. Beith*

In Dastar Corp. v. Twentieth Century Fox Film Corp., the Supreme Court noted the danger of creating a “mutant copyright” by extending trademark protection to the author of a good.[1] While the Court’s concern in that case was with an author’s ability to control the subsequent use of a public domain work,[2] the same danger exists when an artist seeks trademark protection for aspects of his or her identity that are only loosely affiliated with commerce.[3] Take for example, the recent news that Taylor Swift has sought trademark registration for the phrase “This Sick Beat,” along with other phrases from her album 1989.[4] It is very unlikely, under the short phrases doctrine,[5] that “This Sick Beat” would qualify for copyright protection. Swift’s lawyers undoubtedly knew this, and opted instead for a trademark under the theory that the phrase identifies Taylor Swift as the source of marketing and promotional merchandise. Although it is certainly true that Taylor Swift would be protected from knock-off “This Sick Beat” shirts being sold on the streets and at her concerts if the mark is registered, one wonders if that really motivated her decision. Quite possibly, it was not a genuine concern for “consumer confusion” that led her to trademark the phrase, but rather the desire to obtain a copyright-like property right in the phrase itself.[6]

So what’s the problem with that? The problem is that, in this global age of holistic social media-driven brand campaigns, there is very little about an artist’s identity that does not loosely relate to “commerce” such that registration with the Patent and Trademark Office (“P.T.O.”) is feasible.[7] As a result, artists like Swift can now obtain an intellectual property right in aspects of their identity that would be barred from copyright protection on other grounds (such as “originality”).[8] This is only heightened by the Lanham Act’s Intent-to-Use provisions,[9] which no longer require the showing of actual use in commerce before filing a registration application, and by the federal dilution statute,[10] which provides a cause of action for infringing uses on unrelated goods.

The result is that legitimate concurrent uses of the phrase “This Sick Beat” in other contexts (think rap music) are now potentially infringing Taylor Swift’s rights, not because that phrase identifies her as the source of a commercial good in the minds of most consumers, but because she is the first to claim that phrase as belonging to her. While many European countries recognize such “moral rights of attribution,”[11] trademark law in America has historically been based on priority of use, not attribution.[12] Moreover, the scope of the fair use defense in the trademark context is far narrower than in copyright,[13] leaving potential infringers with few viable defenses. This clearly has a deterrent effect on other legitimate creative uses of “This Sick Beat,” and similar phrases, in contexts that pose no meaningful threat to the good will embodied in Swift’s brand.[14]

There is significant reason to worry about trademark rights being granted to creative aspects of an artist’s identity on a loose “use in commerce” theory because, unlike the Copyright and Patent Clause, the Commerce Clause does not provide that trademark protection should only exist for “limited times.”[15] To protect against this danger of unlimited monopoly, trademark law strikes a delicate and important balance between the rights of mark holders on the one hand, and the rights of consumers on the other.[16] By granting registration rights to phrases like “This Sick Beat,” which are only nominally “used in commerce,” the P.T.O. distorts this balance and threatens to hinder free speech and, ultimately, limit consumer choice.

* Erik A. Beith is a 2L at the George Washington University Law School, J.D. Candidate 2016.

[1] 539 U.S. 23, 37 (2003).

[2] Id.

[3] Because Congress regulates trademarks pursuant to the Commerce Clause, U.S. Const. art. I, § 8, cl. 3, all marks must be “used in commerce” to qualify for federal protection. See 15 U.S.C. §§ 1051(a)(1), 1127 (2012).

[4] See Swift, Taylor Trademarks, Justia Trademarks, https://trademarks.justia.com/owners/swift-taylor-1396036/page3 (last visited Mar. 10, 2015).

[5] See Ets–Hokin v. Skyy Spirits, Inc., 225 F.3d 1068, 1081 n.14 (9th Cir. 2000) (“Short phrases or expressions cannot be copyrighted, even if they are distinctively arranged or printed.”) (citation omitted).

[6] See generally Xiyin Tang, The Artist as Brand: Toward a Trademark Conception of Moral Rights, 122 Yale L. J. 218 (2012); 1 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 2[2] (4th ed. 2014).

[7] The P.T.O. will normally accept a verified claim of use in commerce “without investigation,” TMEP § 901.04 (8th ed. Oct. 2014), and as McCarthy notes, “[i]t is difficult to conceive of [a modern] act of infringement which is not ‘in commerce’ . . . .” 4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 25[57] (4th ed. 2014).

[8] See 17 U.S.C. § 102(a) (“Copyright protection subsists . . . in original works of authorship . . . .”); Ets-Hokin, 225 F.3d at 1081 n.14.

[9] 15 U.S.C. § 1051(a)(1).

[10] 15 U.S.C. § 1125(c).

[11] See Kenneth L. Port, The Expansion Trajectory: Trademark Jurisprudence in the Modern Age, 92 J. Pat. & Trademark Off. Soc’y 474, 488 (2010).

[12] See In re Trade-Mark Cases, 100 U.S. 82, 94 (1879).

[13] See 6 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 34[5] (4th ed. 2014).

[14] See Port, supra note 11, at 484 (“In expanding trademark law . . . , Congress has made the possibility of legitimate concurrent uses much less likely and consequently given more control to the holder of the trademark.”).

[15] U.S. Const. art. I, § 8, cl. 8 (Congress shall have power “[t]o promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”).

By Shannon Proctor*

           Tearful and saddened, Dr. Franklin R. Cockerill III, CEO of Mayo Medical Labs, broke the news to his long-term colleagues at Mayo Medical Labs.[1]  He would be retiring in the coming months and moving back to his home state of Nebraska to help his aging mother with the family fertilizer business.[2]  What he failed to mention in between the tears and heartfelt emails was that a few months prior he had secured a position with Quest as Vice President and Chief Laboratory Officer – Mayo Clinic’s biggest competitor.[3]  After Cockerill’s September 30th retirement date, and the retirement party confetti had settled, he began work the very next day at Quest on October 1, 2014.

           Realizing that Quest wasn’t quite Nebraska or retirement, Mayo Clinic immediately filed suit stating that Cockerill had misrepresented his departure causing irreparable harm to the company.  Mayo alleged that Cockerill had breached his fiduciary duty to act in good faith and avoid conflicts of interests when he sought candidacy for the Quest position over a period of several months while maintaining involvement with projects in direct competition with Quest.[4]  There was an allegation of breach of duty of loyalty of care for the provision of services and advice to Quest while still employed by Mayo.[5]  Mayo also alleged breach of contract in connection to the Intellectual Property Agreement Cockerill signed agreeing not to use confidential information outside of the scope of his employment.[6]  Lastly, Mayo alleged misappropriation of trade secret under Minnesota state law believing that Cockerill used his access to confidential and proprietary information to advance his role at Quest.[7]  In filing this suit Mayo Clinic sought damages and/or restitution and the enjoinment of Cockerill from working for Quest.[8]

           Trade secret suits of this type are often difficult to prove as there is not “hard” evidence only the appearance that something fishy is going on.  So what is one to do when they think their trade secret has been compromised?  Calling the police is not the best option in this case as this creates a police report accessible via an open records request; the trade secret would be compromised. You should begin with the almighty computer.  Have the computer taken out of service, as well as any company-issued cell phone, and confiscated immediately.  A sophisticated IT company or technician should then take a complete image of the hard drive checking the event log for interfacing with any portable storage device (i.e. USB).  This will alert you to the possibility of files being transferred off of the computer and to a storage device that you need to locate.

           The IT technician should then look for .PST files as these files allow for copying and access to network data while offline.  Essentially, this allows you to know if files were made available for access from a home computer.  Lastly, the Email folder needs to be copied to track past communications and potential leads. After completing all of these tasks and sorting through this data, there still may be no “hard” evidence, but there may be substantial circumstantial evidence of theft to lead to a desirable settlement.

           There are numerous potential causes of actions for the misappropriation of trade secret: State law misappropriation of trade secret; Computer crimes; Tortious interference (alleging the new employer knew that the employee was under an employment contract); Unjust enrichment; Conversion (theft); Copyright infringement (if there are copyrighted forms downloaded and taken); Recovery of expenses of litigation, generally; Breach of employee fiduciary duty; UTSA; and others.

           Mayo Clinic and Dr. Cockerill settled their lawsuit and Cockerill resigned from Quest on October 14, 2014 – after only two weeks of employment. 

* Shannon Proctor is a law student at Emory University School of Law, J.D. Candidate 2015. The author wishes to thank Doug Kertscher of Hill Kertscher & Wharton LLP for his case study.

[1] Mayo v. Cockerill, 55-CV-14-6861, Compl. P. 2 (D. Minn. 2014)

[2] Id.

[3] Id. at 3.

[4] Id. at 22.

[5] Id. at 23.

[6] Id. at 24.

[7] Id. at 25.

by Shannon Proctor*

                 Atrademark application was filed on December 13, 2014 with the U.S. Patent and Trademark Office.  So what?  Trademark applications are filed every day, you say?  This was no ordinary application on such an extraordinary day (12.13.14).  Catherine Crump of Illinois filed to have the phrase “I Can’t Breathe” trademarked for use on “clothing, namely hoodies, t-shirts for men, women, boys, girls and infants.”[1] The phrase was said repeatedly by Eric Garner as he was held in a chokehold by a New York City police officer leading to Garner’s death.

                 The episode was captured on film and a public outcry erupted when the officer was not indicted by a grand jury, causing masses of protestors to take to the streets chanting “I Can’t Breathe” and holding signs with these last words of Garner.  Since then, clothing with the phrase has been worn by professional athletes and celebrities.  Crump’s trademark registration, if granted, would provide federal protection of the mark, preventing others from using a similar mark with similar goods.

                 What exactly is a trademark and trademark protection?  The U.S. Patent and Trademark Office defines a trademark as “generally a word, phrase, symbol, or design, or a combination thereof, that identifies and distinguishes the source of the goods of one party from those of others.”[2]  This definition tells us that the mark must be distinctive or have acquired distinctiveness.  “I Can’t Breathe” surely is not distinctive, but the phrase has certainly acquired distinctiveness since the death of Garner and subsequent non-indictment by the grand jury.  The phrase is now used as a call for justice and equality and used to symbolize the solidarity and empathy felt by people across the nation.  

                 The use of the phrase on Crump’s hoodies may be capable of distinguishing her goods in commerce, which may allow the phrase to be registerable even if it is merely descriptive.[3]  When one seeks to register their mark it is done so to prevent others from using a similar mark in a manner that would confuse consumers as to the source of the goods or services.  The use of “I Can’t Breathe” would allow for Crump’s hoodies to be like no other hoodie and to be easily identified by consumers as her hoodie.

                 This is not the first foray into the registration of a man’s last words as a mark.  The Todd Beamer Foundation sought to obtain trademark protection for Todd Beamer’s last words of “Let’s Roll” before he, passengers, and crew of September 11th Flight 93 overtook hijackers of the plane and crashed it into an empty field instead of the intended target.  The Foundation sought use of the mark for “charitable fundraising services” following the tragedy.[4]  The mark was allowed and registered to the Foundation.  The examiner likely believed the mark had acquired distinctiveness through the heroic acts of Beamer even as far as garnering protection as a famous mark under Section 1125 of the Lanham Act.

                 Herein lies the difference between Catherine Crump and the Todd Beamer Foundation.  The Foundation was established by Beamer’s widow who sought to register the mark.[5]  Crump has “nothing to do with the Garner family,” and has not attempted to contact them about the registration.[6]  It would seem that the Foundation has a stronger claim to their mark as the true owner. Crump’s lack of familial or business connection would be grounds for rejection of the application under § 1052(a) of the Lanham Act as the use of the phrase would “falsely suggest a connection with persons, living or dead.”  In determining if a mark is no longer generic but has acquired distinctiveness, the public’s reaction to the mark, if there is any confusion as to origin or sponsorship of the mark, is a principal factor that should be weighed.[7] It is likely that the public may believe that Crump’s hoodies are associated with the Garner family in some way, causing confusion.

                 So is it the case that the speaker and/or their estate has more ownership right in a phrase spoken by the decedent?  If so, how would you establish ownership of a phrase spoken by someone who passed immediately afterwards?  Copyright law may provide some insight.  Copyright protects original works of authorship.[8] Copyright requires no real formalities to invoke the protection of your work. In fact, once a work is fixed in a tangible medium a copyright is created; registering just provides you with extra protections.[9] In the case of Eric Garner, the phrase “I Can’t Breathe” was fixed in a tangible medium when the confrontation with police was filmed by a bystander.  However, this would vest ownership of the copyright in the bystander.  In Garcia v. Google, the court held that subjects of copyrightable works may have a copyright claim to that work so long as there is some “some minimal degree of creativity.”[10]  So an argument, now stick with me, could be made that Garner’s exclamation of the phrase, and contemporaneous filming of the event, gave him copyright rights as he alerted police, evidencing some minimal “performance.”  

                 The phrase then went on to national infamy being easily recognized in connection with Garner’s situation.  So Garner’s copyright claim, based on Garcia, could be used to bolster the argument that any claim in the “I Can’t Breathe” mark belongs solely to Garner.  The argument is a stretch, but courts have crossed the boundaries of patent, copyright, and trademark law before in making determinations, and section 1125(3)(c)(1) of the Lanham allows the owner of a famous mark that has acquired distinctiveness to stop anyone from using the mark in commerce at any time after it has become famous to prevent dilution by blurring or dilution by tarnishment. Would the Garner family, or anyone, be able to oppose Crump’s registration on this ground?  Maybe.

                 Other registration attempts at trademarking tragedy, such as Aoan International Pty Ltd’s attempt to trademark “MH370” was promptly struck down by IP Australia as scandalous on the grounds that it would be offensive to sections of the community.  Public policy also frowns upon the exploitation of someone’s death and then limiting political and artistic expression by seeking to own the rights to someone’s dying words.  The Todd Beamer Foundation faced such backlash.[11] Crump believes she will not make any money off of the trademark; however, the Foundation has made money by licensing “Let’s Roll” to Walmart, the Florida State Football team, and others.[12] What is to become of Catherine Crump’s application?  It is still under examination.  

*Shannon Proctor is a law student at Emory University School of Law, J.D. Candidate 2015

[1] U.S. Trademark App. No. 86479784 (filed Dec. 13, 2014).  

[2] U.S. Patent and Trademark Office. Protecting Your Trademark: Enhancing Your Rights Through Federal Registration, (2015), available at http://www.uspto.gov/trademarks/basics/BasicFacts.pdf

[3] De Walt, Inc. v. Magna Power Tool Corp., 289 F.2d 656, 660 (C.C.P.A. 1961)

[4] U.S. Trademark Reg. No. 2691610 (issued Feb. 25, 2003).      

[5] Iconic figures from Sept. 11: Where are they now?, MSNBC, (Jan. 31, 12:15 pm 2015), available at http://www.nbcnews.com/id/39038466/ns/us_news-9_11_nine_years_later/t/iconic-figures-sept-where-are-they-now/#.VM0t6C4hPeM.

[6] Woman Seeks Trademark For "I Can’t Breathe," Dying New York Man's Final Words, The Smoking Gun, (Jan. 17, 2015 11:00 AM), available at http://www.thesmokinggun.com/buster/woman-files-for-I-Cant-Breathe-trademark-798432

[7] Scott v. Mego Int'l, Inc., 519 F. Supp. 1118, 1128 (D. Minn. 1981)

[8] Copyright in General, United States Copyright Office, (Jan. 31, 2015 2:30 PM), available at http://copyright.gov/help/faq/faq-general.html#automatic.

[9] 17 U.S.C.A. § 102.

[10] 743 F.3d 1258, 1263 (2014).

[11] Iconic, supra at note 5.

By Aryane Garansi

The best and most useful part of Trademark Day at the USPTO was being able to see a live action Inter Partes Proceeding before the Trademark Trial and Appeal Board. I was able to witness a partner from Jones Day represent The North Face Apparel Co. against Sanyang Industry Co., Ltd. for The North Face Summit Series mark. The North Face opposed Sanyang Industry’s application for an allegedly similar mark. The Administrative Trademark Judges that heard the trial were Judges Seeherman, Shaw, and Greenbaum. Attending this hearing was really great because it helped me as a potential litigator see how to form arguments, put forth the best arguments first, and see what not to do in this type of proceeding. Jones Day had displays of each of the marks so that the court could visualize the possible similarities to compare the two. Below are the marks at issue:

The North Face had already lost its appeal in New Zealand for this same type of opposition. At the TTAB, The North Face outlined many different arguments for priority, likelihood of confusion, zone of expansion in classification, and fame. The North Face also attempted to argue that these marks were identical stating that Sanyang Industry had merely turned the Summit mark on its side. The judge rebutted that argument stating that the mark turned on its side would not be identical, giving an example of a mark containing the number “8” and then turning it on its side to have the infinity sign (∞). These would be two completely different marks with different meanings. However, the ruling on this opposition has not been issued yet and the judge could have simply been playing devil’s advocate. 

By Sean Cooper

Last week, I joined the United States Patent and Trademark Office (USPTO) Trademark Ex Parte and Inter partes committees at their joint committee meeting at 29th Annual ABA Intellectual Property Law Section Spring Conference. Chair of the Ex parte committee, Francine D. Ward (@Francineward) of the Law Offices of Francine D. Ward,  and Chair of the Inter partes committee, Erik Pelton (@tm4smallbiz) of Erik M. Pelton & Associates, were both kind enough to let me sit in on the joint meeting.  Both committees are very active and have been instrumental in furthering the presence of Trademark attorneys within the Section of Intellectual Property Law.

The Ex parte committee covers practice before the USPTO “with respect to the preparation, filing, and prosecution of trademark applications, the registration of trademarks, and other ex parte trademark matters not within the scope of other committees.” Some of those matters include the administration of trademark examination of the USPTO and ex parte appeals to the Trademark Trial and Appeal board (TTAB). Similarly, the Inter partes committee covers various aspects of inter-parties proceedings before the USPTO TTAB, “including the administration of the Board and its fees and services,” and issues relating to the TTAB Manual of Procedure and the Trademark Rules of Practice.

At the meeting, both committees discussed their recent actions and policy initiatives as well as a few upcoming events. One of those events is the "ABA-IPL Trademark Day: Behind the Scenes at the USPTO" on September 18, 2014. “The program will feature presentations from Trademark Office officials on topics such as electronic application filings, USPTO website tools, TTAB filings and procedures, and more, as well as a live TTAB hearing in the afternoon.“ More information on this and other committee events are available to members of these committees.

Follow these links to view each committee’s web page and learn more about the Ex parte and Inter-parties committees:

USPTO Operations Relating to Trademarks and Ex Parte Trademark Practice

USPTO Inter-Partes Trademark Practice

  The USPTO Trademark  Ex Parte & Inter Partes joint meeting was covered by the following Law Student Reporters:  Sean Cooper (@CoopsIPLawBlog) from Widener University School of Law - Harrisburg and Phillip Turner (@phillip__turner) from Belmont University College of Law.

Reporting and Photography by Dewight Flinch Jr.

"Come learn about design patents. In five years, you'll wish you had." -Hannah Poteat

(Above: Panelists, from left to right, Philippe Signore, Andrew Rawlins, Damian Porcari, and Hannah Poteat.)

This panel discussed a healthy mix of design patent law, policy and best practices. It  recent case decisions, claim structure, and globalization. They also contrasted design patents to other forms of intellectual property.

The panelists agreed that good design lawyers make good design patents. Damian Porcari of Ford Global Technologies explained that drawings need to be good for both validity and enforcement. This can be challenging because unlike utility patents, design patents do not have flexible claim scope in the United States. Further, drawings cannot be changed once filed. Dr. Philippe Signore, partner at Oblon, Spivak, McClelland, Maier & Neustadt said that applicants must prepare drawings prepared carefully and have at least 1 generic drawing for each design.

Next, the panel discussed Richardson v. Stanley Works. In this case the Federal Circuit held that in an infringement analysis, it must separate out those particular elements that are "driven purely by utility" from those that are strictly ornamental. The court then relied on the ordinary observer test to say the designs produced different "overall visual effects" and were thus very different. While Porcari agreed with the court's result, he questioned the rationale and approach. "I think if they looked at the items as art, they would have gotten the right decision" said Porcari. The panelists were averse to 'forcing' utility patent approaches into design patent analyses. "That's not how designers think" said Signore.

Procuring design patent protection demands strategy, says Andrew Rawlins, partner at Foley & Lardner. This is partly because you can't have designs directed at specific inventions. Hence, classifications with 100 applications, consolidated renewals, consolidated changes, WIPO, and other international applications come into play, he continued. However, one must be deliberately ensure that designs that comply with foreign regulations serve the desired U.S. purposes as well.

Moderator Heather Poteat asked the panelists which protection they prefer and why: Copyrights, Trade Dress, or Design Patents. Signore shared the benefits and limitations of each, such as developing secondary meaning for trade dress, and tying copyrights to functions. He favored design patents for their wide range of applications.

To conclude, the panel debunked several myths about design patents. Rawlins and Porcari explained that design patent litigation is sometimes just as expensive as utility patent litigation. Porcari also explained that while it is easy to get an unenforceable design patent, a valuable design patent requires considerable skill. FInally, Rawlins asserted that design can patents have a broad scope.

By Stacy Yae (@stacypyae)

The Patent Litigation Committee is one of the most active committees in the ABA-IPL Section with 11 subcommittees and numerous volunteers. It is also one of the largest committees with 518 members on its roster as of April 5, 2014.

The Committee focuses on federal trial court practice in cases involving patent issues and proposals for improvements in the practice area, such as decreasing costs and lengths of pendency of lawsuits. The Committee actively cooperates with other committees and ABA entities on issues in relation to the Federal Rules of Civil Procedure, federal and local trial court rules, and other trial practice issues.

Chair Paul Richard Morico, along with Vice-Chairs Matthew Kemp Blackburn and Richard Stephen Stockton opened up the meeting by passing around a Supreme Court Docket Update, put together by the committee members. The Docket Update broke down important Supreme Court patent cases, the question presented in each case, status of the case, and past actions taken by the ABA-IPL. The committee further discussed important developments in patent litigation cases by calling upon each subcommittee to report on additional developments. These subcommittees include: 101 (Patent Eligibility), Damages/Remedies, Patent Exhaustion, 102/103 Invalidity Issues, 112, Inequitable Conduct, Infringement, NPE Litigation, E-Discovery, and Willful Infringement.

Several members at the meeting noted that volunteers were never in short supply – when a call for volunteers is issued, the Committee usually finds itself with many willing hands within minutes. The Patent Litigation Committee is vibrant, active, and current.

Committee conference calls are scheduled for the first Tuesday of each month at 3PM EST.