Friday, January 3, 2014

It's 2014 - Happy New Year!

Thanks for reading my blog and/or following me!  I appreciate it.

Let's get right to it....

Hot off the press from the United States Patent and Trademark Office:
On January 1, 2014, the Nice Classification, Tenth Edition, version 2014 (NCL 10-2014), became effective. Changes to the class headings are available at  To see a comprehensive list of all the new or changed entries, on or after January 1, 2014 please use the following search strategy in the USPTO ID Manual: “20140101”. See also the Noteworthy Changes to the Nice Classification System under the Nice Agreement, Tenth Edition, version 2014 at Noteworthy Changes to the Nice Classification System under the Nice Agreement, Tenth Edition, version 2014.
This is important information for trademark practicioners, so check it out at your earliest convenience.

Have a great 2014!  As always, comments welcome.

Tuesday, December 10, 2013

New Ninth Circuit Law re Irreparable Harm in Trademark & Copyright Cases

Quick update for all my IPeeps! (new term I coined to refer to my IP colleagues... don't steal it).

Ninth Circuit rejects presumption of irreparable harm for trademark ownersHerb Reed Enterprises, LLC v. Florida Entertainment Management, No. 12-16868 (9th Cir. Dec. 2, 2013).  See eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006) in which the Supreme Court rejected a similar presumption of irreparable harm in patent cases, which “effectively overruled” the Ninth Circuit’s prior decisions re trademark and copyright irreparable harm.

Ninth Circuit rejects presumption of irreparable harm for copyright owners.  Perfect 10, Inc. v. Google, Inc., No. 10-56316 (9th Cir. Aug. 3, 2011).

Links to cases:

Herb Reed case
Perfect 10 case
eBay case
See also, Winter case  

In Winter, the Court held that a party seeking an injunction in a non-patent case must show that irreparable harm is “likely,” not merely “possible.”

Get over it….. ;-)

Happy Holidays!

Tuesday, November 12, 2013

Trademark Oppositions in the United States - Is The Cost Worth The Benefit?

I found this interesting article about the costs and benefits of US trademark oppositions.  I think you will find it informative.

Comments welcome!

Have a great week.

Wednesday, October 2, 2013

IN RE CITY OF HOUSTON - Local Government Entity Cannot Register a Trademark for its Official Insignia

Another interesting case, more so because it is a case of first impression!  I would have thought this had come up at some point or another before now....  Anyway, the court upheld the decision of the TTAB that Section 2(b) of the Lanham Act prohibits the registration of these insignia.

Houston and Washington, D.C. both were attempting to register their city seals.  Both received final rejections from the TTAB and appealed to the Federal Circuit.

The court stated: "Section 2(b) prohibits registration of an "insignia of the United States, or of any State or municipality." We see nothing in this plain language that suggests a government entity such as Houston should be exempted from the reach of the prohibition."

The case is an interesting read:

Comments welcomed.

Tuesday, October 1, 2013

Viacom CEO Philippe Dauman Loses UDRP Over Registration of His Name

I thought this was interesting because a famous person's name is often also a source indicator of goods and/or services.  In this case, the WIPO arbitrators acknowledged that is often true while explaining that in Mr. Dauman's case, his name does not serve as a source indicatory.  His name is well known, perhaps famous, but not a source indicator.  That is a requirement under the UDRP and therefore the UDRP complaint was denied.

You can read the decision here:

As always, comments welcome.

Wednesday, September 11, 2013

Sculptor's Copyright Claims Improperly Dismissed

An author's claims were dismissed by a federal magistrate judge becuase he ruled her copyright submission was not in an orderly form -  as required for copyrighting a collection of unpublished works -  and therefore the copyright was invalid.

The author submitted her application with some photos bound in a booklet and some loose photos.  The scupture at issue was depicted in one of the loose photos.

On appeal, Judge Easterbrook logically pointed out that the Copyright Office found the deposit sufficient to issue a registration.  Judge Easterbrook noted that "The Register found the submission adequate; a district court should not set aside an agency's application of its own regulations without strong reason."

Judge Easterbrook wondered how the magistrate could have determined that the copyright submission was not orderly when it was not in the record.  Oops......

Here's a link to an article from Bloomberg and the case:

Have a great day!

Wednesday, August 28, 2013

Groklaw Tech Blog Shuts Down Citing US Government Monitoring

Check out this article from the ABA Journal about the Groklaw shutdown.  It's an interesting article, although I think the shutdown is a kneejerk/emotional reaction rather than a well-reasoned response to this issue.  What is your take?

Comments welcome and have a great day!