Trademark License Rights Survive Rejection in Bankruptcy

Settling a circuit split, the U.S. Supreme Court, in an 8-1 decision, has concluded that a trademark licensee’s rights are not automatically terminated when a debtor in bankruptcy rejects the license agreement.

The case, Mission Product Holdings, Inc. v. Tempnology, LLC (Mission Product), arose from a pre-bankruptcy trademark license agreement between Tempnology, LLC, the bankrupt debtor, and Mission Product Holdings, Inc. (Mission), which was granted a non-exclusive license to use Tempnology’s “Coolcore” trademarks. During the bankruptcy, Tempnology “rejected” the trademark license in accordance with the Bankruptcy Code. The Court held that, because rejection under the Bankruptcy Code operates only as a breach and not a rescission, the rejection did not deprive Mission of its right to use the trademarks under the license. Continue Reading

“Patent Attorneys Academy” established in Greece

While in some jurisdictions the concept of a “patent attorney” or also a “patent judge”, referring to persons who not only have knowledge of patent law but also acquire technical expertise in relation to patents, is common, this is not the case in Greece. Of course, there are lawyers with high-level expertise in patent law, as well as sections of the Courts that try cases related to industrial property law. At the same time though, the technical issues of disputed patents are mostly assessed by technical experts who the parties, as well as the Court, may each appoint in order to assist the Court to reach a decision in each case.

This situation does not seem to be about to change drastically any time soon in Greece. This being said however, the term “patent attorney” has very recently been officially added in the Greek legal vocabulary. In particular, Presidential Decree 31/2019, published in the Greek Government Gazette on 5 April 2019 (the issuance of which had been provided in Law 4512/2018, articles 123-124), provides for the establishment of the “Hellenic Industrial Property Academy” (the “Academy”), whose primary purpose will be to develop a system of national education, training and certification in the field of industrial property leading to the acquisition of the title of “certified patent consultant” (“patent attorney”) for successful candidates. “Patent attorney” in this sense would not, necessarily, mean a “patent lawyer” but a “patent consultant” with background studies either in Law or in Science/Technology. Continue Reading

Information on Filed Applications for Registration of Drugs has Become Publicly Available in Russia

Under the Federal Law “On drugs circulation” (Law), information on state registration of drugs in Russia shall be publicly available.

Pursuant to Art. 37(1) of the Law, MoH-s obligation is to disclose information regarding all filed applications for drug registration on its official website.

For a long period, MoH used to turn a blind eye to this obligation, keeping this information confidential. It used to be a negative factor and raised public concerns among professionals. Moreover, absence of this information used to pose additional risks for patent holders lacking information on the upcoming launches of generic drugs.
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Still Standing?: The Sometimes Rocky World Of Public Art

What distinguishes public art is the unique association of how it is made, where it is, and what it means.” The Association for Public Art

To many, the names “Rocky Balboa” and the “Italian Stallion” are as universal and front of mind as the names “Chuck Wepner” and the “Bayonne Bleeder” are regional and tucked into (or have already fallen out of or never made it into) the recesses of memory.  But this writer is not most people.  Though aspiring to be a child of the universe, I am at heart still a ten-year-old kid from Bayonne, New Jersey, at the south end of Hudson County who (in 1975) thought a guy from our neighborhood was about to pull off the greatest upset in sports history (at least in the pre-Miracle-on-Ice/before-Jimmy-V era).

You see, in the 9th round of the heavy weight championship fight that would inspire Sylvester Stallone to write Rocky (and Chuck to sue him on a right of publicity claim that later settled), Chuck Wepner knocked down Muhammed Ali (Really, you can see it for yourself).   Though Chuck’s dreams of wearing the crown and earning lots of money were short-lived after the GOAT got up furious, everybody in Bayonne (and wherever Stallone was) felt like a million bucks during those few moments of believing—including both the struggling actor and a ten-year-old that would later write for an IP blog.  But this isn’t about Wepner v. Stallone—this is about what curiously happened more recently when Chuck Wepner’s hometown wanted to honor him in various ways. Continue Reading

Descendants of Danish well-known scientist could not prevent the use of his name by a large Danish based stated-owned energy company

The descendants of a well-known Danish scientist could not prevent the commercial use of the name ØRSTED as a trademark, domain and company name by the Ørsted Group (former Dong Energy A/S).

The parties to the dispute

Before going into the details of the dispute, the parties are briefly presented in the following. H.C. Ørsted is a well-known Danish physicist and chemist who discovered that electric currents create magnetic fields, thereby establishing proof of a link between electricity and magnetism. This formed the basis for the electricity production we know and use today – especially in respect to more green energy sources. Continue Reading

Federal Circuit Reminds Us That Extrinsic Considerations Are Narrowly Construed in Trademark Matters

2018 saw a number of important trademark cases decided across the United States.  Two cases illustrated the similarities between genericness analysis and one of the likelihood of confusion factors considered by the Trademark Trial and Appeal Board (“TTAB”).  Royal Crown Co., Inc. v. The Coca-Cola Co., 892 F.3d 1358 (Fed. Cir. 2018) and Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1318 (Fed. Cir. 2018) showed that there is overlap in the analysis to be conducted under these two different legal theories and provides important lessons for practitioners to remember.

The first of the two cases decided was Royal Crown addressing genericness analysis.  At the TTAB, genericness is a two-step analysis: “First, what is the genus of goods or services at issue? Second, is the term sought to be registered . . . understood by the relevant public primarily to refer to that genus of goods or services?”  H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 990 (Fed. Cir. 1986). Continue Reading

Should Scandalous Trademarks Be Registered?

Suppose that you want to register a trademark that identifies a source of goods or services for your business.  What if the trademark is immoral or scandalous?  Should you register your scandalous trademark with the U.S. Patent and Trademark Office?  The answer may be YES!

In Matal v. Tam, 582 U.S. ___ (2017), the U.S. Supreme Court decided that the disparagement clause violated the Free Speech Clause of the First Amendment.  The U.S. Supreme Court found that trademarks are private speech and not government speech, that trademarks are not a form of government subsidized speech, and that the registration of trademarks is not a type of government program in which some content- and speaker-based restrictions are permitted.  Thus, the U.S. Supreme Court held that the disparagement clause violated the Free Speech Clause of the First Amendment.  Since the disparagement clause violates the Free Speech Clause of the First Amendment, should the U.S. Supreme Court decide that the scandalous clause of Section 2(a) also violates the Free Speech Clause of the First Amendment? Continue Reading

Rospatent gives the green light to foreign applicants from 11 states

As outlined in art. 1247 of the Russian Civil Code, any applicant may choose one of the options how to be represented before Rospatent:

  • directly, or
  • by a Russian patent attorney, or
  • by another representative (e.g., attorney-at-law)

The list is significantly shortened for foreign applicants: under art. 1247 (2) of the Civil Code, foreign citizens and legal entities may be represented before Rospatent only by Russian patent attorneys, unless otherwise envisaged by an international treaty.
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When appealing bears fruit: Pear Technologies v EUIPO – Apple

Are apples different from pears? Or are they both just fruit? Or, as cockney rhyming slang would have it, are they stairs? These are the questions (excepting the last one) that the distinguished judges of the Court of Justice of the European Communities (CJEU) have been gr-apple-ing with in the recent case of Pear Technologies v EUIPO – Apple [2019] EUECJ T-215/17. Aside from offering opportunities for highly amusing wordplay, this recent decision includes some useful guidance on the CJEU’s approach to the visual and conceptual comparison of signs in trade mark disputes.

The case is the result of an EU logo trade mark application (see below) by digital marketing company Pear Technologies Ltd (PTL) in 2014. The application, which was in three classes (9 (computer software), 35 (consultancy services) and 42 (computer services)), was opposed by Apple Inc. (Apple) before the European Intellectual Property Office (EUIPO). Apple based its opposition on its prior EU registration for the well-known apple logo (see below). Continue Reading

Apple Closed Two of Its Stores in Eastern Texas. The Reasoning May Surprise You – How patent laws can affect key business decisions

Apple, the technology giant which runs successful Apple Stores all over the world, announced that it will close its only two stores in eastern Texas by Friday, April 12.

Apple, however, did not announce why it was closing those two stores. This is especially intriguing since Apple likely generates millions of dollars in revenue each year from those stores.

It begs the question: why would Apple close its only two stores in that area when those stores are typically very successful to its business? Continue Reading