July 2014

  • Intellectual Property

    Trademark Review (July 2014)

    Past Disparagement Results in Present Cancellation: REDSKINS Marks Cancelled by TTAB The Trademark Trial and Appeal Board (“TTAB”) cancelled six registrations for marks consisting in whole or in part of the term REDSKINS for use in connection with a professional football team, because the marks were found to be disparaging to Native Americans at the time they were registered (between 1967 and 1990). The Board found that when used in connection with football services, REDSKINS retains the meaning of “Native American.” Videos of football games, newspapers, and press guides created between 1967 and 1990 established that the respondent “made continuous efforts to associate its football services with Native American imagery.”
    By Knobbe Martens Olson & Bear LLP  
  • Intellectual Property

    Federal Circuit Review - Nautilus, Limelight, and Alice (July 2014)

    Supreme Court Sets New Indefiniteness Standard In Nautilus, Inc. v. Biosig Instruments, Inc., Appeal No. 13-169, the Supreme Court vacated and remanded Federal Circuit’s reversal of summary judgment because the Federal Circuit’s definiteness standard was too lenient. Biosig filed a patent infringement suit claiming Nautilus’ exercise machines infringed its patent. Biosig’s patent claims a heart rate monitor that includes a “live” electrode and “common” electrode “mounted . . . in spaced relationship with each other.” The district court granted Nautilus’ motion for summary judgment on the basis the claim term “in spaced relationship with each other” failed the definiteness requirement of 35 U.S.C. § 112, second paragraph. The Federal Circuit reversed and remanded, finding a patent claim meets the definiteness threshold so long as the claim is “amenable to construction” and the claim is not “insolubly ambiguous.” The Supreme Court held the Federal Circuit’s test does not satisfy the statute’s definiteness requirement and can leave courts without a reliable compass. The Court held a patent is invalid for indefiniteness if its claims, read in light of the specification and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention. The Court emphasized this standard not only takes into account the inherent limitations of language, but also requires a patent must be precise enough to afford clear notice of what is claimed. The Court vacated and remanded to the Federal Circuit for reconsideration under the proper standard.
    By Knobbe Martens Olson & Bear LLP  
  • Intellectual Property

    A Window into the Future for Apple’s Trade Dress?

    A few weeks back, Steve discussed Apple’s recent applications to register a trio of non-verbal trademarks. Spoiler alert: This post contains the USPTO’s ultimate decision regarding the registrability of the design and layout of various application icons as part of a computer operating system, using rectangular geometric figures in rows. However, it isn’t a spoiler for Apple’s applications referenced above (those applications have yet to be assigned to an examining attorney). No, instead, I’m referring to a since-abandoned application that provides some interesting contrast with Apple’s applications. In 2012, Microsoft filed an intent-to-use application for the mark shown below:
    By Tim Sitzmann  

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  • JD Supra

    In ESI Discovery: Are keywords, concepts and other searches simply antiques?

    The discovery of electronically stored information (ESI) is loaded with potential pitfalls and failure unless the parties add two components to the mix: cooperation and collaboration. Lacking those components, ESI discovery, at least sometimes, can be one of the more painful experiences for the average trial lawyer. The problem to overcome is largely that trial lawyers, by their nature, are competitive souls and tend toward competition rather than cooperation. Add to this personality that of the client who expects her lawyer to win everything, every time and we are off to the races. In a recent case, the Honorable Magistrate Judge Peggy Leen seems to deal with overly competitive parties and lawyers not inclined toward collaboration; in the recent decision in Progressive Casualty Insurance v. Delaney, 2014 WL 2112927 (D. Nev. May 20, 2014).
    By Laurie Briggs  
  • JD Supra

    Pursuit of a “Smoking Gun” May Be a Recipe for Disaster

    n the U.S District Court for the Northern District of Illinois, Judge Matthew F. Kennelly recently held that plaintiffs alleging price-fixing in the text messaging market were not entitled to an adverse inference after failing to prove that defendants T-Mobile and CTIA destroyed emails in bad faith. Judge Kennelly also granted the defendants’ motion for summary judgment, as plaintiffs were unable to meet the elevated pleading burden for collusion to fix prices for text messages in violation of the Sherman Antitrust Act. The plaintiffs had filed suit on behalf of customers who used pay-per-text-message services from Verizon Wireless, AT&T, Sprint, and T-Mobile. The Wall Street Journal published an article in September 2008, titled “Text Messaging Rates Come under Scrutiny,” inspired primarily by the antitrust investigation of Senator Herbert Kohl.[1] The day the article was published, a T-Mobile employee allegedly sent the text of the article via e-mail to both Adrian Hurditch, the company’s former Vice President of Services and Strategic Pricing, and Lisa Roddy, the company’s former Director of Marketing Planning and Analysis. Hurditch and Roddy e-mailed each other about the article; however, that e-mail thread no longer exists.
    By Bruce V. Miller  

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