The Trademark Trial and Appeal Board Announces a New Test for Comparing Standard Character Marks with Word & Design Marks

Order Affirming Refusal to Register, In re Aquitaine Wine USA, LLC, Serial No. 86928469  (TTAB Apr. 2, 2018) (Ritchie, Wolfson and Adlin)

The Federal Circuit left the following question open in its In re Viterra decision from 2012:  How do we compare standard character trademarks (e.g., non-stylized word marks) with design marks for purposes of determining likelihood of confusion?  More specifically, in addition to considering that variations of standard character marks can include any font style, size, or color, can we also consider that variations may include a design element?  In In re Aquitaine Wine, the Trademark Trial and Appeal Board (“Board”) answered this question in the negative. READ MORE

Reassessing Embedding: When In-Line Linking May Get You In Trouble

Opinion, Goldman v. Breitbart News Network, LLC, No. 17-03144 (S.D.N.Y. Feb. 15, 2018) (Judge Katherine B. Forrest)

News reporters, bloggers, and other online media outlets beware: know where your embedded images and social media posts originate, or risk unexpectedly finding yourself on the receiving end of a copyright claim due to the acts of another.  At very least, be prepared with defenses beyond the “server test.” READ MORE

California Post-TC Heartland: Venue Only Proper in District of Residence

Maxell, Ltd., v. Asustek Computer Inc., et al., 17-cv-7528, C.D. Cal. (March 20, 2018) (Judge Manual L. Real)

In a post TC Heartland world, California courts are tackling its application-to-venue disputes between judicial districts in multi-district states.  A consensus is emerging in the Central District of California that venue is only proper in the district in which the defendant resides, rather than anywhere in the stateREAD MORE

Tangled in the Web: T.T.A.B. Dismisses Opposition Relying on Uncorroborated Internet-Based Evidence

Order Dismissing Opposition to Registration, WeaponX Performance Products Ltd. v. Weapon X Motorsports, Inc., T.T.A.B. (March 14, 2018)

Proving trademark rights in opposing an application to register a mark is crucial.  Opposers must marshal evidence substantiating such rights, and must be careful to select appropriate and sufficient evidence.  In the digital age, where trademark use is frequently over the Internet, parties often rely on websites and other Internet usage to substantiate claims of priority and a likelihood of confusion.  Recently, the Trademark Trial and Appeal Board (“Board”) dismissed WeaponX Performance Products Ltd.’s (“WeaponX Performance” or “Opposer”) opposition to Weapon X Motorsports, Inc.’s (“Weapon X Motorsports” or “Applicant”) application to register WEAPON X MOTORSPORTS, offering a reminder in a precedential decision that evidence from the Internet alone is not adequate. READ MORE

No Foul: “Jumpman” Can Keep Soaring

Rentmeester v. Nike, Inc., No. 15-35509, 2018 WL 1055846, at *6 (9th Cir. Feb. 27, 2018) (Judge Paul J. Watford)

On February 27, the Ninth Circuit upheld the dismissal of copyright claims against Nike, Inc. alleging that the company’s popular photograph of Michael Jordan and its “Jumpman” logo infringed upon an earlier photograph taken by Jacobus Rentmeester. The court found that although Nike’s photo and logo were “obviously inspired” by the Rentmeester photograph, they were not “substantially similar” and therefore did not infringe upon Rentmeester’s copyrights. READ MORE

What Constitutes Sufficient Factual Allegations for an Induced-Patent-Infringement Claim?

Order Granting Defendants’ Motion to Dismiss with Leave to Amend, CyWee Group Ltd. v. HTC Corp., W.D. Wash. (March 1, 2018) (Judge James L. Robart)

Actively inducing patent infringement incurs liability under 35 U.S.C. § 271(b).  Inducement occurs when the alleged inducer knew of the patent, knew that the induced act would infringe the patent, and intended to bring about the infringement.  Under the plausibility requirement, a complaint incorporating an infringement analysis of a seller’s product can satisfy the requisite knowledge of the patent and of the infringing act.  A recent opinion from the Western District of Washington, however, shows that alleging the requisite intent requires more than alleging that a defendant created and distributed general marketing and technical materials about the accused product.  Rather, to survive a motion to dismiss, a complaint must include facts connecting the defendant’s acts or materials to an infringing use of the patent. READ MORE

Applying a Law of Nature to Getting Desired Results Does Not Confer Patent Eligibility

Order Granting Motion for Summary Judgment of Invalidity, American Axle & Manufacturing, Inc., v. Neapco Holdings LLC and Neapco Drivelines LLC, (D. Del. Feb. 27, 2018) (Judge Leonard P. Stark)

In a recent patent infringement action filed in the District of Delaware, plaintiff American Axel & Manufacturing, Inc. (“Plaintiff”) and defendants Neapco Holdings LLC and Neapco Drivelines LLC (collectively “Defendants”) filed cross-motions for summary judgment on the issue of patent eligibility under 35 U.S.C. § 101. The patent at the core of the cross-motions was Plaintiff’s U.S. Patent No. 7,774,911 (“the ‘911 patent”), which disclosed a method for attenuating driveline vibrations transmitted through a shaft assembly in a vehicle.[1] Defendants argued that the asserted claims of the ‘911 patent were invalid because they were not directed to any specific discrete liner design but rather to a solution to the problem of attenuating shell and bending mode vibrations generally, by applying physics. The Court agreed with Defendants and found the patent invalid. READ MORE

Texas Supreme Court First to Extend Attorney-Client Privilege to Patent Agents

In re Andrew Silver, Tex. (February 23, 2018) (Justice John Phillip Devine)

Last week, the Texas Supreme Court ruled that a client’s communications with his registered patent agent are protected under the attorney-client privilege as defined by the state’s evidence rules. READ MORE