The Intellectual Property Committee will meet in advance of the Florida IP Symposium this Thursday, March 25th at 3:00 P.M. at the beautiful Hyatt Regency in Downtown Tampa. Please join us as we network with fellow IP lawyers and preview the IP Symposium program to take place on Friday, March 26, 2010.
To review the agenda for the meeting, click here. See you there!
The third annual Nova Southeastern University Sports and Entertainment Law Symposium will be held at the Shepard Broad Law Center – Davie, Florida on Saturday, February 20, 2010. The agenda includes speakers on sports law as well as adult entertainment. For information and to register, click here.
The Patent and Trademark Office announced October 8, 2009, that it will rescind the claiming and continuations rules package that have been the subject of litigation in Tafas v. Kappos. The parties to that litigation have agreed to request the Federal Circuit to dismiss the appeal in that case and to vacate the district court decision below.
“AIPLA applauds the decision of Director Kappos to rescind this hugely unpopular rules package,” stated AIPLA’s Executive Director Todd Dickinson. “And we certainly hope the courts will act quickly and favorably on this motion. We view this as a significant step by Director Kappos towards rebuilding the relationship between the USPTO and the user community. Hopefully, we can now continue to move forward and work with the Director in a constructive way to address the challenges facing the USPTO.”
The U.S. Court of Appeals for the Federal Circuit has vacated a half-billion dollar award against Microsoft Corp. for use of its “pop-up calendar” in Microsoft Outlook. The court affirmed patent validity and infringement judgments that Microsoft had also challenged, but ruled that the jury’s damages calculation lacked sufficient evidentiary support. In particular, the court made clear that “fundamental differences exist between lump-sum agreements and running-royalty agreements,” especially as applied to “a minimally used feature.”
To read the decision, click here.
Interesting and informative resource entitled “Secondary Trademark Infringement.” More of a treatise than a blog. To read it, click here.
In a widely anticipated appeal, In re Bose Corp., No. 2008-1448, slip op. (Fed Cir. Aug 31, 2009), the Court of Appeals for the Federal Circuit overturned the Trademark Trial and Appeal Board’s holding in Medinol Ltd v. NeuroVasx Inc., 67 U.S.P.Q.2d 1205 (T.T.A.B. 2003) regarding fraudulent procurement of Federal trademark registrations.
Under Medinol and its progeny, a trademark registration or renewal could be canceled as fraudulent by the TTAB if it contained a material representation that the applicant knew, or should have known, was false at the time it was made. However, as the Federal Circuit points out in its 12-page opinion strongly disapproving of the Medinol doctrine:
By equating “should have known” of the falsity with a subjective intent, the Board erroneously lowered the fraud standard to a simple negligence standard.
We have previously stated that “[m]ere negligence is not sufficient to infer fraud or dishonesty.” We even held that “a finding that particular conduct amounts to ‘gross negligence’ does not of itself justify an inference of intent to deceive.” The principle that the standard for finding intent to deceive is stricter than the standard for negligence or gross negligence, even though announced in patent inequitable conduct cases, applies with equal force to trademark fraud cases. After all, an allegation of fraud in a trademark case, as in any other case, should not be taken lightly. Thus, we hold that a trademark is obtained fraudulently under the Lanham Act only if the applicant or registrant knowingly makes a false, material representation with the intent to deceive the PTO.
Bose, slip o. at 6-7 (internal citations omitted, emphasis added)
The Court went on to further hold that the standard of proof required to demonstrate fraud is “clear and convincing evidence.” The Court also held that where a misrepresentation is made in connection with an allegation of use in a trademark application or registration, where the misrepresentation is proven without a showing of fraud, the proper remedy is not to cancel the entire registration but rather to restrict it to those goods and services where use in commerce can be actually demonstrated.
The Court did not indicate whether in cases where fraud is demonstrated, cancellation of the entire registration is proper even where the material misrepresentation concerned only some goods or services. The Court also left open the door for an exception to its holding in the event that “reckless disregard for the truth”, instead of scienter, is proven against the applicant. Bose, slip op. at 9, fn. 2.
