Last night, I attended wine tasting. But this was no ordinary wine tasting. This was a wine tasting fit for the Philadelphia IP Law Association. We had a guest speaker, Mr. Paul W. Reidl, come and speak to us about trademark issues in the wine world.
He talked touched on issues such as surname, geographic, foreign equivalents, relatedness, and quality control issues, but what was most interesting to me was his case study: Kendall-Jackson Winery v. E. & J. Gallo Windery, 150 F.3d 1042 (9th Cir. 1998) (N.D. Cal.) (Walker, J.). For those of you who are familiar with Kendall-Jackson and Turning Leaf wines, this case will have more context to you. If you are not familiar, pictures of a Kendall-Jackson wine bottle and a Turning Leaf wine bottle are shown below. The actual wine bottles in the case looked a little different than the ones below (Burgundy/Bordeaux style bottles were in question), but you get the idea.
If I took a poll right now, I would be almost 100% certain that you think these two bottles look completely different. Well, Kendall-Jackson didn't think so. Kendall-Jackson filed a complaint alleging trademark infringement. They did also include a trade dress claim, but that was vague and none of the elements (i.e., bottle style, flanged top, cigar band wrapper, white label) functioned as a trade dress. Everything boiled down to the trademark (grape leaf). So let's look at the trademarks a little closer.
In summary judgment, the judge found that the leaf did not function as a trademark. At the same time, however, the judge said that a reasonable jury could find that the trade dress was distinctive and non-functional because of the "distinctive leaf." Yes. You heard correctly. The judge basically contradicted himself.
The parties proceeded to a jury trial, and the jury found no infringement. The jury thought that Kendall-Jackson had nothing to protect because the wine bottles from California generally share a similar look. Kendall-Jackson later filed a Motion for Judgment Notwithstanding the Verdict, but lost. Kendall-Jackson then appealed to the 9th Circuit, and the 9th Circuit affirmed.
What happened after this case was as equally interesting. Turning Leaf sued Kendall-Jackson for malicious prosecution, and they settled. Then Kendall-Jackson sued their lawyers for malpractice. I don't know what happened to that. I guess they settled too.
Last week, I gave a presentation on intellectual property law at 401 East Elm Alliance. The Alliance comprises a group of female solo practitioners who specializes in various areas of the law. The ladies were very nice to invite me to speak and they gave me a pretty good feedback on my slides. I thought I'd share them with you for your reference. Enjoy!
Starting a company is no easy task. I think one of the hardest things is making a name for yourself when starting from scratch. How do you stand apart from your competitors and attract customers? This is where trademarks come in. As you’re building your company’s brand, you’re really building your trademark.
Last night, I read an article from LA Times about David Tran, the creator of now very famous condiment, Sriracha. Everyone knows what Sriracha is. Mix it with mayo, and boom, you have spicy mayo. Mix it with ketchup, and boom, you have spicy ketchup. It goes with pretty much anything and everything. Add a little, add a lot, this thing is addicting as versatile.
I gave a roundtable talk the other day and a software developer asked me a question that stuck with me. He wanted to know if it was worth it for him to file a patent application for some software that he was developing. He told me that he and his investors were interested in filing a patent application, but they were hesitant because they weren’t sure if the patent would still be relevant in such a fast-paced industry.
I was doing some research today and came across B&B Hardware, Inc. v. Hargis Industries, Inc. This case was argued before the Supreme Court on December 2, 2014, little over two months ago. No decisions have been made yet.
For those of you unfamiliar with this case, the issue in this case was whether TTAB's finding of likelihood of confusion should preclude relitigating that issue in infringement action in an Article III court. If so, whether the district court is obliged to defer to TTAB's finding.
In December 2014, the U.S. Supreme Court granted a petition for certiorari from the Federal Circuit judgment in Commil USA LLC v. Cisco Systems, Inc., 720 F.3d 1361 (Fed. Cir. 2013). The question before the Court is whether a good-faith belief that a patent is invalid is a defense to inducement liability under 35 U.S.C. Section 271(b), which states:
"[w]hoever actively induces infringement of a patent shall be liable as an infringer."
This case is set for argument on Tuesday, March 31, 2015. So far, the petitioner filed its brief, and many amicus briefs followed. Check out the petitioner's brief here.
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I don’t know about you, but I feel like people have been just chugging along with software patent applications and blindly hoping that examiners would shed some light as to exactly what I need to do to the claims to make it patentable. There really hasn’t been a lot of guidance post Alice, although I’ve been seeing some arguments that you can use when you get § 101 rejections during prosecution.
It really is no secret that China is quickly, if not already, becoming a leader in patents. According to Thomson Reuters, over 600,000 patent applications were filed in China in 2013. This is approximately 15 times the number of patent applications filed in 2003. But is this really shocking to anyone? China has the second largest economy, and it’s the world’s hub for manufacturing. Plus, China has a huge population, so the chances are; it also has a huge population of inventors.
What is surprising though, is this. Chinese prisoners can have their sentences reduced for patenting inventions. The reason for this is to help prevent crime, save lives, and to increase technical innovations. So, patenting something that helps society is basically seen as doing a good deed while locked up.
While China isn’t relying on prisoners to strengthen their patent system, rewarding prisoners for patenting invention seems questionable to me. How do you invent good inventions while you’re in jail (i.e., you can’t experiment or test things in jail, I’m assuming)? And are prisoners really inventing things that change people’s lives?
It turns out, some wealthy prisoners are paying inventors (who are out of jail) to essentially purchase inventions and become owners of a resulting patent. Sounds pretty corrupt, if you ask me. And this definitely defeats the purpose of advancing technology. Will this policy stand? I would think this would need to be a very strict policy.
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