Prosecution Group Luncheon

							Prosecution Group Luncheon
        Trademarks
         August, 2011
    USPTO: Trademark Assignments Online
• Recorded trademark assignments are now viewable online,
  including the cover sheet and any underlying documents

• Entity type and citizenship information for the receiving party are
  now mandatory fields on the Assignment Recordation Cover
  Sheet.

• All ownership information received from the International Bureau
  (IB) of WIPO for Madrid applications) can now be entered into the
  assignment databases to be viewable on the USPTO website.

• October target date to send Notices of Recordation and Notices of
  Non-Recordation for trademark assignments via e-mail
            Foot-in-mouth Websites
Applicant's own use confirmed
  generic/descriptive meaning:
• TREE RADAR = generic
• YELLOW EMERALDS =
  descriptive
• SOLAR WINDOWS =
  descriptive, “solar cells and
  films are used 'to produce a
  transparent solar window.’ ”
7th Circuit REVERSED by … the 7th Circuit
•   Phoenix registered CONDOR for software in 1997
•   Univ. Wisconsin registered CONDOR for software in 2001
     – Phoenix petitioned to cancel – won in TTAB
•   Wis. appealed to D.Ct. – Phoenix counterclaimed for infringement
     – Dist. Ct. dismissed counterclaims due to sovereign immunity

•   Dec. 2010: 7th Cir. TRCA unconstitutional - TM infringement claims not allowed against
    states, (violates 11th Amendment) unless state waived immunity
     – Participating in USPTO application is not a waiver
     – Appealing to district court is not waiver – involuntary lawsuit
•   Aug. 2011: on Rehearing: by filing in D.Ct. state waived immunity:
     – the state availed itself of the advantages of a fresh lawsuit, choosing that path over
       a number of others available. It would be anomalous if, after invoking federal
       jurisdiction, the state could declare that the federal court has no authority to
       consider related aspects of the case. Cf. Lapides, 535 U.S. at 619. Phoenix’s
       counterclaims are compulsory in nature and thus lie well within the scope of
       Wisconsin’s waiver of immunity.
“sufficiently similar” Dilution

• Nike opposed JUST JESU IT for athletic apparel in view of JUST
  DO IT.
• Fame admitted by pro se Applicant, “Who isn’t aware of Opposer’s
  Mark? At least in the free world.”
• TTAB found likelihood of confusion and dilution by blurring
• Previous test “substantial similarity” or “near identity”; now:
   – “we will use the same test as for determining the similarity or
     dissimilarity of the marks in the likelihood of confusion analysis,
     that is, the similarity or dissimilarity of the marks in their entireties
     as to appearance, sound, connotation and commercial
     impression.”

•   Nike, Inc. v. Peter Maher and Patricia Hoyt Maher, (August 9, 2011) [precedential].
              eBay Infringement, EU Style
• Ct. of Justice of EU judgment L’Oreal v. eBay:
   – Google Adwords triggered by L’Oreal’s TMs purchased by eBay
      created an obvious association between L’Oréal and eBay.
         eBay will only be liable where the advertising does not enable
          a reasonably well-informed and reasonably observant internet
          user (or only enables them with difficulty) to ascertain whether
          the goods originate from the trade mark proprietor or from a
          third party.
   – Contributory infringement: eBay liable if it played an active role to
      give it knowledge of, or control over the data stored on its
      systems.
         where the operator provides assistance to optimize the
          presentation of the offers for sale or promotes those offers the
          operator will be taking an active role.