Newsletters
Reverse confusion claim over trademark logo doesn’t make the cut
A party in a trademark infringement case can seek a preliminary injunction to block the opposing party’s use of a mark during litigation. The outcome can provide a window into whether the party should expect to prevail at trial. This article looks at a recent case in which a trademark owner asserting a reverse confusion theory of infringement received a discouraging result.
Grubhub Inc. v. Relish Labs LLC, No. 22-1950 (7th Cir. Sept. 12, 2023).Loud and clear: Court shoots down “continuation” strategy for expanding patents
This article covers how a recent patent infringement ruling questions a common strategy used to obtain protection for new claims using an existing patent, and in turn provides accused infringers a potential avenue to invalidate the patents in question, and may upend the practice of targeted continuations.
Sonos, Inc. v. Google LLC, No. 20-06754 (N.D. Cal. Oct. 6, 2023).Are law firm emails protected in patent litigation?
This article reviews a case in which the plaintiff in an Ohio patent infringement case had an email with material it deemed confidential made public, potentially providing a roadmap to competitors on how to avoid infringing its patents.
Woodstream Corp. v. Nature’s Way Bird Products, LLC, No. 23-00294 (N.D. Ohio Sept. 20, 2023).What to know about contributory copyright infringement
This article reviews a recent case from the U.S. Court of Appeals for the Tenth Circuit in which the court provided some welcome clarity for a frequent point of confusion: the types of behavior that support a contributory copyright infringement claim.
Greer v. Moon, No. 21-4128 (10th Cir. Oct. 16, 2023).- April May 2024 Cantor Colburn IP Newsletter
Intraoffice emails can come back to haunt law firms if they end up in court — and not just in the case the emails are a part of. This article reviews a case in which the plaintiff in an Ohio patent infringement case had an email with material it deemed confidential made public, potentially providing a roadmap to competitors on how to avoid infringing its patents.
Woodstream Corp. v. Nature’s Way Bird Products, LLC, No. 23-00294 (N.D. Ohio Sept. 20, 2023)
- April May 2024 Cantor Colburn IP Newsletter
A recent patent infringement ruling did more than just reverse a hefty damages award against Google. It also questions a common strategy used to obtain protection for new claims using an existing patent, and in turn provides accused infringers a potential avenue to invalidate the patents in question. This article covers how this case may upend the practice of targeted continuations.
Sonos, Inc. v. Google LLC, No. 20-06754 (N.D. Cal. Oct. 6, 2023)
- The Patent Lawyer MagazineMarch/April 2024
The U.S. Judicial Briefing, "Inventor interviews – do a great job on these and make patent law easy," by Cantor Colburn partner Howard Levy, appears in The Patent Lawyer Magazine March/April 2024 Issue. Howard discusses how patent attorneys can approach inventor interviews to ensure that they are as successful as possible.
- April May 2024 Cantor Colburn IP NewsletterFebruary 27, 2024
A party in a trademark infringement case can seek a preliminary injunction to block the opposing party’s use of a mark during litigation. The outcome can provide a window into whether the party should expect to prevail at trial. This article looks at a recent case in which a trademark owner asserting a reverse confusion theory of infringement received a discouraging result. A short sidebar discusses why the defendant also was unlikely to succeed in establishing a likelihood of “forward confusion” caused by the junior trademark owner’s mark.
Grubhub Inc. v. Relish Labs LLC, No. 22-1950 (7th Cir. Sept. 12, 2023).
- April May 2024 Cantor Colburn IP NewsletterFebruary 27, 2024
Contributory copyright infringement — when a defendant causes or significantly contributes to another’s infringing activities and knows of the infringement — is often misunderstood. This article reviews a recent case from the U.S. Court of Appeals for the Tenth Circuit in which the court provided some welcome clarity for a frequent point of confusion: the types of behavior that support a contributory copyright infringement claim.
Greer v. Moon, No. 21-4128 (10th Cir. Oct. 16, 2023).
Families of patents could face more double-patenting challenges
This article reviews a decision that recently resolved a long-standing question about the interplay between obviousness-type double patenting (ODP) challenges and patent term adjustments (PTAs) granted by the USPTO because of delays in patent processing. A brief sidebar highlights the court’s dismissal of the patentee’s equitable arguments against an ODP rejection.
In re Cellect, LLC, No. 22-1293 (Fed. Cir. Aug. 28, 2023).Does derivative work copyright registration cover unregistered original works?
Copyright registration is a prerequisite for bringing an infringement action. But do litigants have recourse for an unregistered work if they registered a derivative work? This article discusses this issue in a case of first impression before the U.S. Court of Appeals for the Ninth Circuit.
Enterprise Management Limited, Inc. v. Construx Software Builders Inc., No. 22-35345 (9th Cir. July 17, 2023).Ups and downs: Words matter in trademark licensing agreement
A garage door company probably thought its settlement with a competitor over alleged trademark violations left it free from additional lawsuits regarding its use of the competitor’s marks. This article summarizes why a court ruled otherwise, instead holding that a trademark licensee could sue the company even though its licensing agreement didn’t expressly authorize it to do so.
D.H. Pace Company, Inc. v. OGD Equipment Co., LLC, No. 22-10985 (11th Cir. Aug. 22, 2023).Mandatory deposit of copyright works is unconstitutional
This article summarizes the court’s finding that requiring physical copies of works is “classic taking,” while copyright owners receive no additional benefit (compensation) from forfeiting works.
Valancourt Books, LLC v. Merrick B. Garland and Shira Perlmutter, No. 21-5203 (D.C. Cir. Aug. 29, 2023).- Cantor Colburn IP Newsletter February/March 2024
Can a patentee extend a patent term for the same invention by claiming a second patent for claims that aren’t “patentably distinct”? This is known as obviousness-type double patenting (ODP). The U.S. Court of Appeals for the Federal Circuit recently resolved a long-standing question about the interplay between ODP challenges and patent term adjustments (PTAs) granted by the U.S. Patent and Trademark Office (USPTO) because of delays in patent processing.
In re Cellect, LLC, No. 22-1293 (Fed. Cir. Aug. 28, 2023). - Cantor Colburn IP Newsletter February/March 2024
Copyright registration is a prerequisite for bringing an infringement action. But do you have recourse for an unregistered work if you registered a derivative work? According to a ruling in a case of first impression before the U.S. Court of Appeals for the Ninth Circuit, you might.
Enterprise Management Limited, Inc. v. Construx Software Builders Inc., No. 22-35345 (9th Cir. July 17, 2023). - Cantor Colburn IP Newsletter February/March 2024
A garage door company probably thought its settlement with a competitor over alleged trademark violations left it free from additional lawsuits regarding its use of the competitor’s marks. A court ruled otherwise, instead holding that a trademark licensee could sue the company even though its licensing agreement didn’t expressly authorize it to do so.
D.H. Pace Company, Inc. v. OGD Equipment Co., LLC, No. 22-10985 (11th Cir. Aug. 22, 2023). - Cantor Colburn IP Newsletter February/March 2024January 22, 2024
To the frustration and annoyance of many, the Copyright Act requires the owner of a copyright in a work to deposit two copies of the work with the U.S. Library of Congress within three months of its publication. Those parties should be encouraged by how the U.S. Court of Appeals for the District of Columbia ruled when it was recently asked for the first time to address the requirement’s constitutionality.
Valancourt Books, LLC v. Merrick B. Garland and Shira Perlmutter, No. 21-5203 (D.C. Cir. Aug. 29, 2023). - The Patent Lawyer, Annual Issue 2024
The U.S. Judicial Briefing, "Working examples in patent applications: how much detail to include?" by Asaf Batelman, appears in The Patent Lawyer Magazine 2023 Annual Issue.
Court schools trademark holder: Nearly identical trademark doesn’t infringe
This article looks at a decision from the U.S. Court of Appeals for the Tenth Circuit that upheld a lower court’s noninfringement judgment in a dispute involving two almost identical education-related marks.
M Welles & Assocs., Inc. v. Edwell, Inc., No. 22-1248 (10th Cir. May 31, 2023).Court rejects overly broad reissue patent application
This article summarizes a patentee’s attempt to broaden its patent through a patent reissue application.
In re: Float’N’Grill LLC, No. 22-1438 (Fed. Cir. July 12, 2023).Paying damages under both copyright and trademark laws
This article covers the reasons the court found to assess infringement damages based on both trademark and copyright laws regarding furntuiure makers' products.
Jason Scott Collection, Inc. v. Trendily Furniture, LLC, No. 21-16978 (9th Cir. May 30, 2023).Does commercial success affect an invention’s obviousness?
This article reviews a recent ruling by the U.S. Court of Appeals for the Federal Circuit that illustrates the role of secondary considerations - prior art cited as evidence of obviousness.
Yita LLC v. MacNeil IP LLC, No. 22-1373 (Fed. Cir. June 6, 2023).- Cantor Colburn Year End 2023 IP Newsletter
Judicial findings regarding trademark infringement tend to turn largely on the similarity — or dissimilarity — of the two marks at issue. But significant similarity is no guarantee that a trademark holder will prevail in court. This article looks at a decision from the U.S. Court of Appeals for the Tenth Circuit that upheld a lower court’s noninfringement judgment in a dispute involving two almost identical education-related marks. A short sidebar covers why the court rejected a proposed presumption of confusion.
M Welles & Assocs., Inc. v. Edwell, Inc., No. 22-1248 (10th Cir. May 31, 2023). - Cantor Colburn Year End 2023 IP Newsletter
Regrets — we’ve all had a few. A patentee, for example, might regret not obtaining broader patent protection. A reissue patent could come to the rescue, but only if certain requirements are met. One patentee recently learned this lesson the hard way. This article summarizes the patentee’s attempt to broaden its patent through a patent reissue application.
In re: Float’N’Grill LLC, No. 22-1438 (Fed. Cir. July 12, 2023). - Cantor Colburn Year End 2023 IP Newsletter
Two furniture makers landed in court after one copied the other’s designs. To the chagrin of the infringer, the copying provided the basis, not only for copyright infringement damages, but also for trade dress infringement damages that were six times as much. This article covers the reasons the court found to assess infringement damages based on both trademark and copyright laws.
Jason Scott Collection, Inc. v. Trendily Furniture, LLC, No. 21-16978 (9th Cir. May 30, 2023). - Cantor Colburn Year End 2023 IP Newsletter
Federal patent law prohibits the patenting of inventions that are obvious. While prior art such as earlier patents are often cited as evidence of obviousness, so-called “secondary-consideration” evidence can sometimes support a finding of nonobviousness even in the face of prior art — but not always. This article reviews a recent ruling by the U.S. Court of Appeals for the Federal Circuit that illustrates the role of secondary considerations.
Yita LLC v. MacNeil IP LLC, No. 22-1373 (Fed. Cir. June 6, 2023). SCOTUS rejects fair use defense in Warhol copyright case
Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, No. 21-869 (U.S. May 18, 2023).Supreme Court finds trademark owners can’t sue for foreign infringement
Abitron Austria GmbH v. Hetronic Int’l, Inc., No. 21-1043 (U.S. June 29, 2023).Barking up the wrong tree: Supreme Court limits trademark parodies
Jack Daniel’s Properties, Inc. v. VIP Products LLC, No. 22-148 (U.S. June 8, 2023).Too many cooks in the kitchen: Who’s an inventor?
HIP, Inc. v. Hormel Foods Corp., No. 22-1696 (Fed. Cir. May 2, 2023).- October / November 2023 IP Newsletter
Identifying an inventor on a patent application can be a complex analysis. This short article highlights a recent ruling from the U.S. Court of Appeals for the Federal Circuit that sheds light on the degree of contribution required to qualify as an inventor.
HIP, Inc. v. Hormel Foods Corp., No. 22-1696 (Fed. Cir. May 2, 2023). - October / November 2023 IP Newsletter
In a unanimous decision, the U.S. Supreme Court has for the first time considered the so-called Rogers test regarding the use of trademarks in “expressive works” — in this case, a dog toy mocking a famous whiskey brand. This article explains how the Court’s ruling in Jack Daniel’s Properties, Inc. v. VIP Products LLC, makes clear that liability for both trademark infringement and trademark dilution is heavily dependent on just how a defendant uses another’s mark.
Jack Daniel’s Properties, Inc. v. VIP Products LLC, No. 22-148 (U.S. June 8, 2023). - October / November 2023 IP NewsletterOctober 1, 2023
The U.S. Supreme Court has limited the reach of the Lanham Act, the federal trademark law, beyond American borders. The Court’s ruling in Abitron Austria GmbH v. Hetronic Int’l, Inc. could make trademark owners more vulnerable to global piracy of their goods. This article reviews the Court’s finding, the result being that U.S. trademark owners may be inadequately protected in a global marketplace. Abitron Austria GmbH v. Hetronic Int’l, Inc., No. 21-1043 (U.S. June 29, 2023).
- October / November 2023 IP NewsletterOctober 1, 2023
The U.S. Supreme Court has issued its much-anticipated ruling in a case that drew attention partly because it involved two widely renowned artists: the musician Prince and the visual artist Andy Warhol. More importantly, though, the high court weighed in on some of the limits of the fair use defense to copyright infringement. This article covers the fair use doctrine and its application in the case, notably that the original photo and the copying use shared substantially the same purpose. A short sidebar discusses other Warhol works that make an artistic commentary on consumerism, and thus had a different purpose from the original image.
Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, No. 21-869 (U.S. May 18, 2023). A slicing opinion: Court cuts trademark registration for Gruyere cheese
Swiss and French cheesemakers sought to obtain a trademark for the term GRUYERE. This article is about widespread agreement among the Trademark Trial and Appeal Board (TTAB) and two federal courts that the term is generic and therefore ineligible for trademark protection.
Interprofession du Gruyere; Syndicat Interprofessionnel du Gruyere. v. U.S. Dairy Export Council; Atalanta Corporation; Intercibus, Inc., No. 22-1041 (4th Cir. March 3, 2023).PTO director issues critical IPR clarification
This article reviews the USPTO director's opinion about how the PTAB should determine whether to institute an IPR of a patent when parallel litigation is already proceeding in federal district court.
CommScope Techs. LLC v. Dali Wireless, Inc., IPR No. 2022-01242 (PTO Feb. 27, 2023).Only if it’s human: setting the copyright standard for works with AI-generated content
This article summarizes the US Copyright Office guidance regarding works created solely by AI and those created with AI assistance.How to evaluate the patentability of a multiple dependent claim
This article untangles the USPTO director’s finding regarding patent dependent claims that have multiple dependencies — a popular claim drafting format in other countries, but a rather expensive pursuit in the United States.
Nested Bean, Inc. v. Big Beings USA Pty. Ltd., IPR No. 2020-01234 (PTO Feb. 24, 2023).- Cantor Colburn August / September 2023 IP Newsletter
Some Swiss and French cheesemakers recently ran into a brick wall when they attempted to obtain a trademark for the term GRUYERE. There was widespread agreement among the Trademark Trial and Appeal Board (TTAB) and two federal courts that the term is generic and therefore ineligible for trademark protection. This article covers the court’s review of the claim. A short sidebar highlights the trial court’s reliance on the U.S. Food and Drug Administration’s standard of identity when determining whether the term GRUYERE was generic.
Interprofession du Gruyere; Syndicat Interprofessionnel du Gruyere. v. U.S. Dairy Export Council; Atalanta Corporation; Intercibus, Inc., No. 22-1041 (4th Cir. March 3, 2023). - Cantor Colburn August / September 2023 IP Newsletter
The director of the U.S. Patent and Trademark Office recently addressed confusion over how the Patent Trial and Appeal Board (PTAB) should determine whether to institute an inter partes review (IPR) of a patent when parallel litigation is already proceeding in federal district court. This article reviews the opinion, which makes clear that, while it’s possible to obtain an IPR in such circumstances, it won’t be easy.
CommScope Techs. LLC v. Dali Wireless, Inc., IPR No. 2022-01242 (PTO Feb. 27, 2023). - Cantor Colburn August / September 2023 IP Newsletter
Artificial intelligence (AI) is disrupting a wide range of industries, including those involving the textual, visual and audio arts. It’s little surprise, then, that the U.S. Copyright Office has seen an increase in applications for copyright protection for AI-generated works. In response, the office released its first formal guidance regarding works containing material generated by AI in March 2023. This article summarizes the guidance, concluding that the future isn’t bright for works created solely by AI, but prospects are better for works that are merely AI-assisted.
- Cantor Colburn August / September 2023 IP Newsletter
A patent’s claims can get confusing, particularly when a patent’s dependent claims have multiple dependencies — a popular claim drafting format in other countries, but a rather expensive pursuit in the United States. The director of the U.S. Patent and Trademark Office might agree after stepping in to address how the Patent Trial and Appeal Board should evaluate the patentability of a multiple dependent claim. This article untangles the director’s finding.
Nested Bean, Inc. v. Big Beings USA Pty. Ltd., IPR No. 2020-01234 (PTO Feb. 24, 2023). Whose idea was this? Determination of patent inventorship issue requires trial
This article covers a recent ruling from the U.S. Court of Appeals for the Federal Circuit between actual contributions to an invention and “more prosaic” contributions to the process. A brief sidebar looks at why an overwhelming amount of evidence wasn’t enough for summary judgment.
Plastipak Packaging, Inc. v. Premium Waters, Inc., No. 21-2244 (Fed. Cir. Dec. 19, 2022).Amended trademark registration raises suspicion
Can a trademark holder facing a cancellation proceeding avoid judgment by simply deleting goods from its registration? The Trademark Trial and Appeal Board (TTAB) recently addressed this question for the first time — and the answer shouldn’t surprise you.
Ruifei (Shenzhen) Smart Technology Co., Ltd. v. Shenzhen Chengyan Science and Technology Co, Ltd., Cancellation No. 92077931 (TTAB Jan. 12, 2023); https://ttabvue.uspto.gov/ttabvue/v?pno=92077931&pty=CAN&eno=19.Minimal creativity required to secure copyright protection
A dispute between two testing companies is the latest example of the bar for how much creativity is necessary to secure copyright protection. This article reviews the case and the court’s reasoning behind it finding that the plaintiff’s creative choices merited copyright protection.
ACT, Inc. v. Worldwide Interactive Network, Inc., No. 21-5889, -5907, -6155 (6th Cir. Aug. 23, 2022).Dictionary finishes third in patent claim construction
Dictionaries have their place, but when it comes to interpreting the meaning of patent terms, that place generally isn’t first. This article reviews a case from the U.S. Court of Appeals for the Federal Circuit in which it laid out just when the dictionary may play a role in such “claim construction.”
Grace Instrument Indus., LLC v. Chandler Instruments Co., LLC, No. 21-2370 (Fed. Cir. Jan. 12, 2023).- Cantor Colburn June/July 2023 IP Newsletter
In patent law, the line between actual contributions to an invention and “more prosaic” contributions to the process can be difficult to draw. This article covers a recent ruling from the U.S. Court of Appeals for the Federal Circuit that drives this home. A brief sidebar looks at why an overwhelming amount of evidence wasn’t enough for summary judgment.
Plastipak Packaging, Inc. v. Premium Waters, Inc., No. 21-2244 (Fed. Cir. Dec. 19, 2022). - Cantor Colburn June / July 2023 IP Newsletter
Can a trademark holder facing a cancellation proceeding avoid judgment by simply deleting goods from its registration? The Trademark Trial and Appeal Board (TTAB) recently addressed this question for the first time. This article summarizes the TTAB’s conclusion that a respondent couldn’t moot the proceeding and avoid judgment as to deleted goods by deleting certain goods subject to the cancellation without the written consent of the petitioner.
Ruifei (Shenzhen) Smart Technology Co., Ltd. v. Shenzhen Chengyan Science and Technology Co, Ltd., Cancellation No. 92077931 (TTAB Jan. 12, 2023); https://ttabvue.uspto.gov/ttabvue/v?pno=92077931&pty=CAN&eno=19.
- Cantor Colburn June / July 2023 IP Newsletter
A dispute between two testing companies is the latest example of the bar for how much creativity is necessary to secure copyright protection. This article reviews the case and the court’s reasoning behind it finding that the plaintiff’s creative choices merited copyright protection.
ACT, Inc. v. Worldwide Interactive Network, Inc., No. 21-5889, -5907, -6155 (6th Cir. Aug. 23, 2022). - Cantor Colburn June / July 2023 IP Newsletter
Dictionaries have their place, but when it comes to interpreting the meaning of patent terms, that place generally isn’t first. This article reviews a case from the U.S. Court of Appeals for the Federal Circuit in which it laid out just when the dictionary may play a role in such “claim construction.”
Grace Instrument Indus., LLC v. Chandler Instruments Co., LLC, No. 21-2370 (Fed. Cir. Jan. 12, 2023).