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. 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
In a recent trademark infringement case, Judge James Otero of the Central District of California recently went against an advisory jury opinion and found that the plaintiff, Allstate Insurance Corporation (“Allstate”), failed to show likelihood of consumer confusion. Allstate brought suit against Kia Motor Corporation (“Kia”) in 2016, alleging that its “Drivewise” trademark used in connection with a usage-based insurance program that allows insurers to lower or raise insurances rates based on driving performance was infringed by Kia’s “Drive Wise” driver assistance system, which includes features such as blind spot detection, lane keeping assistance, smart cruise control, and autonomous emergency braking. Following a trial, an advisory jury reached a verdict in favor of Allstate finding a likelihood of consumer confusion. READ MORE
Orrick has published a client alert titled, “Federal Circuit Makes Way for FUCT, Striking Down the Statutory Bar on Immoral or Scandalous Trademark Registrations as Unconstitutional,” discussing the recent U.S. Court of Appeals for the Federal Circuit decision involving the Lanham Act’s ban on registering immoral or scandalous trademarks as unconstitutional on First Amendment grounds. Read the full alert here.
Trademark applicants know the familiar sinking feeling when their clearance search turns up a potentially conflicting mark already on the Principal Register. But the situation is not hopeless, and registrants and applicants seeking to register similar marks are often able to reach an amicable coexistence agreement that allows both sides to use and register their respective marks. However, a recent decision from the Trademark Trial and Appeal Board has shown that, when it comes to a coexistence agreement, the devil may be in the details. READ MORE
In an effort to protect itself against genericide—the death of a trademark because the brand name becomes synonymous with the type of product—Velcro’s legal department released a video two weeks ago pleading with the public to stop saying “Velcro” and start saying “hook and loop” or “self-adhesive straps.” (Watch it, really.) Amazingly, Velcro’s play on the ballad “We are the World” has already gone viral. Though the comments on the video are mixed, Velcro’s video is certainly raising awareness of its brand. READ MORE
Winemaker Fetzer Vineyards recently escaped a trademark infringement lawsuit brought by Sazerac Co. Inc. over the label design and imagery featured on its 1000 Stories red zinfandel wine product. Sazerac produces a bourbon called Buffalo Trace which features a label that contains an image of a buffalo facing head-on towards the right, as well as an image of a buffalo on the neck of the bottle and white and gold lettering. Sazerac has used the Buffalo Trace trade dress in commerce since 1999, and has several federal trademark registrations for the buffalo design and the word mark BUFFALO TRACE. In 2013, Fetzer developed a male-orientated bourbon aged wine brand and selected the buffalo as the icon for the brand based in part on an article in the Smithsonian magazine entitled “101 Objects that Made America.” Although Fetzer’s wine label also featured an image of a buffalo in which the entire animal is visible, on its wine label the animal faces toward the left and is placed on a black background. The following image is a comparison shot of the two respective bottles:
Trademark litigants often submit survey evidence to prove that there is (or is not) a likelihood of consumer confusion between two trademarks. Parties hoping to rely on such surveys should be careful, however, to mimic market conditions as closely as possible—for instance, ensuring that the emulated market conditions include an appropriate context reflecting how purchases actually are made. Parties also should heed professional survey research in constructing survey designs, so that the results are considered trustworthy and directed to the relevant issue. READ MORE
The question whether and under what circumstances the Lanham Act and the Copyright Act will be applied to conduct occurring at least partially outside the United States grows increasingly important as the world economy continues to globalize and many manufacturers seek to extend their franchises across borders. Two recent federal court decisions have addressed this issue, underscoring the somewhat anomalous differences in extraterritorial enforcement of trade dress and copyright laws, as well as the ability of plaintiffs to obtain injunctive relief with extraterritorial effect. READ MORE
Trademark portfolio owners have long known the pitfalls in securing trade dress protection for a single color. The Trademark Trial and Appeal Board recently underscored those difficulties in affirming the Trademark Office’s refusal to register the color yellow as trade dress in connection with General Mills’ Cheerios cereal. READ MORE
We’re excited to announce the recent transition of Orrick’s former NorCal IP blog into its new iteration – IP Landscape (Today’s News, Tomorrow’s Strategy)! Our new blog is more comprehensive in scope and will focus on a variety of intellectual property issues and events, both national and international, that are likely to affect the bottom line for many technology-driven enterprises. Through our blog, you’ll find information and updates to help drive business strategies.
We hope this new blog will be an entertaining and useful resource for those interested in the latest case law, happenings and events that affect the entire landscape of intellectual property. We’ll be covering patent, trademark and copyright rulings in what might be described as the most “popular” venues, such as the Northern and Central Districts of California, the Eastern District of Texas, the District of Delaware, the International Trade Commission (ITC), and the Patent Trial and Appeal Board (PTAB). We will also be reporting on other IP-related and newsworthy events, such as significant developments in copyright, trademark, antitrust, entertainment and trade secret litigation, not to mention legislative changes, local networking events, IP licensing issues and other hot topics of interest. READ MORE