• IP BLAWG

    Get Me the One with the Pretty Colors

    Beverly A. Berneman
    9/15/20

    This blog recently discussed the inability to protect movement during a sightseeing tour as trade dress (“Emotionally Yours”, 6/2/2020). Other types of trade dress can also have problems.

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  • Benefits Bulletin

    Coronavirus Benefits Lawsuits Have Begun

    Andrew S. Williams
    9/2/20

    Former participants in a 401(k) profit sharing plan have filed suit in Federal court in New Jersey seeking recovery of investment losses allocated to their accounts by the employer-sponsor.

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  • IP BLAWG

    The Devil is in the Contract Details

    Beverly A. Berneman
    9/1/20

    Next time you look at a bottle of Listerine, think of it as a lesson in contract drafting.

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  • IP BLAWG

    Hast Thou Forsaken Me Chiclets?

    Beverly A. Berneman
    8/26/20

    Mondelez International Inc. owns a lot of trademarks. One of them is “Chiclets” for gum. Mondelez almost lost it.

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  • IP BLAWG

    These Are Not the Patent Droids You Are Looking For

    Beverly A. Berneman
    8/11/20

    The US Patent Office (“USPTO”) has bad news for CP30, R2D2 Wall-E and all of their robot friends. They don’t qualify as an inventor of a patent.

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  • IP BLAWG

    Possession is 9/10ths of Trade Secrets Law

    Beverly A. Berneman
    7/28/20

    Kevin Huber worked for AFS as a full time sales engineer for Advanced Fluid Systems, a hydraulic systems manufacturer. The Virginia Commonwealth Space Authority awarded a contract to AFS to build, install and maintain a launch pad for a NASA facility. Under the contract, the Space Authority owned the plans created by AFS. The plans were marked as confidential and were considered trade secrets. Three years later, the Space Authority ran into financial difficulty and assigned the Agreement to Orbital Sciences Corporation. So now Orbital owned the trade secrets. But, AFS still had a right to possess them so that it could perform on the agreement.

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  • IP BLAWG

    The Sky Has Its Limits

    Beverly A. Berneman
    7/21/20

    Retired attorney, Richard Bell, had a cottage industry suing people for copyright infringement of a picture of the Indianapolis skyline. Richard alleged that he took the photo in March 2000 for his law firm’s website. He registered the copyright in 2011, after his former law firm stopped using the photo on its website.

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  • IP BLAWG

    Data Links

    Beverly A. Berneman
    7/14/20

    HiQ uses an automated application to look at publicly available data on social media and provide analytics to its customers. This is called “data scraping”. Businesses use the data for all sorts of things designed to increase revenue.

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  • IP BLAWG

    Book Your .Com Now

    Beverly A. Berneman
    7/7/20

    On June 30, 2020, the Supreme Court of the U.S. ended the long battle between Booking.com and the United States Patent and Trademark Office (USPTO).

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  • IP BLAWG

    Bad Spaniel Has First Amendment Rights

    Beverly A. Berneman
    6/30/20

    VIP Products LLP sells a series of dog toys called “Silly Squeakers”. The toys are often fashioned to look like well-known beverage containers. One of the toys is called “Bad Spaniels”. It looks like a Jack Daniel’s whiskey bottle but with alterations. Of course, the name was changed from Jack Daniel’s to Bad Spaniels. But it didn’t stop there. Instead of “Old No. 7”, it said “Old No. 2 on your Tennessee Carpet” (which should resonate with dog owners). The alcohol description read 42% POO BY VOL” and “100% SMELLY” (again something instantly recognized by dog owners).

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  • IP BLAWG

    Lucky Shot

    Beverly A. Berneman
    6/23/20

    Alex Cruz was on his way to visit his girlfriend in the Tribeca neighborhood of New York City. He heard a commotion, took out his iPhone and took a snap shot. He thought he was just taking a photo of the police subduing a crazy person. What he really caught was a picture of law enforcement taking down a suspected terrorist. Alex shared the photo with a friend who then posted the photo on Instagram.

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  • IP BLAWG

    Sexing for Bovines

    Beverly A. Berneman
    6/16/20

    Sex predicting technology for bovines is an extremely lucrative business. The revenues are $200 million industry worldwide with about $50 million of that in the USA.

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  • IP BLAWG

    Your Joint or Mine?

    Beverly A. Berneman
    6/9/20

    The Hard Rock Café’s operating company, JC Hospitality LLC, tried to register the trademark “The Joint” for its casino based music venues. The USPTO refused registration. On appeal, the TTAB affirmed. Hard Rock then appealed to the Federal Circuit Court of Appeals who also affirmed the refusal.

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  • IP BLAWG

    Emotionally Yours

    Beverly A. Berneman
    6/2/20

    A motion trademark is generally considered a type of trademark called “trade dress”. Trade dress protects the visual appearance of a product. Some examples are: (1) the zoom-in view of a female statue at the beginning of every Columbia Pictures' movie (Reg. No. 1,975,999), (2) the "duck march" associated with PEABODY hotels (Reg. No. 2,710,415), and (3) the lighting effects that rotate around the microphone of Apple's SIRI personal assistant and knowledge navigator (Reg. No. 4,471,608).

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  • IP BLAWG

    Star Struck is Struck

    Beverly A. Berneman
    5/26/20

    Kfir Moyal is a pop artist who has created commissioned pieces for celebrities like the Kardashians, Paris Hilton, Gloria Estefan, Flo Rida and Lil’ Kim. His signature style is to take a photograph and add a glittery sheen to it.

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  • IP BLAWG

    Lucky Brand Gets Lucky

    Beverly A. Berneman
    5/19/20

    For about 20 years, Lucky Brand Dungarees, Inc. has been battling Marcel Fashions Group, Inc. over their trademarks. The US Supreme Court finally ended Lucky Brand’s struggle. At least for now.

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  • IP BLAWG

    States’ Rights: A Loss and a Win

    Beverly A. Berneman
    5/12/20

    Two recent US Supreme Court cases give a loss for the State of Georgia and a win for the State of North Carolina.

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  • IP BLAWG

    Zazzle’s Defense Didn’t Dazzle the Court

    Beverly A. Berneman
    5/5/20

    Zazzle, Inc. is an on-line marketplace for imprinted merchandise. Zazzle will then imprint the image on things like coffee mugs, t-shirts and, these days, face masks. Zazzle uses stock images but it also allows someone to upload their artwork or a graphic.

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  • IP BLAWG

    Reply All

    Beverly A. Berneman
    4/28/20

    If the words “reply all” sound familiar to you, then you probably use email to communicate with others for various and sundry reasons. Despite their widespread use, these two words became the subject of trademark litigation.

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  • IP BLAWG

    Dropping in Bankruptcy

    Beverly A. Berneman
    4/21/20

    Thru Inc. sued Dropbox for trademark infringement claiming to own the “DropBox” trademark. After a lot of litigation and some really good discovery, Dropbox was able to show that Thru may have had some bare rights to the “DropBox” mark but it never actually used the mark. Thru then sat back and watched as DropBox branded itself and became a household name for shareable file storage. Then Thru continued to drag its heels in litigation to cash in on DropBox’s initial public offering in 2018. DropBox discovered emails from Thru’s CEO which unabashedly chronicled Thru’s strategy. In the end, DropBox obtained a $2.3 million judgment that included attorney’s fees and costs.

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  • IP BLAWG

    Public Exposure

    Beverly A. Berneman
    4/14/20

    For your stay at home pleasure, 2020 has granted us with a whole inventory of content that is now in the public domain.

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  • Benefits Bulletin

    What Health Plan Fiduciaries Need to Worry About

    Andrew S. Williams
    2/25/20

    Much has been written about excess fee claims involving 401(k) and 403(b) retirement plans. In fact, a St. Louis law firm has specialized in filing class action excess fee cases around the country. So, the personal risk to retirement plan fiduciaries has been well documented.

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  • IP BLAWG

    USPTO Has to Go Dutch

    Beverly A. Berneman
    2/25/20

    In the U.S., each side usually pays their own attorney’s fees. This is called the American Rule. Until about six years ago, that rule applied to appeals from USPTO decisions. So, if an applicant appealed the USPTO’s decision not to issue a patent or register a trademark, the applicant paid the applicant’s attorney’s fees and the USPTO paid its staff attorneys their salaries. Then about 6 years ago, the USPTO decided anyone who appealed an adverse ruling should have to pay the USPTO’s attorneys’ fees as well as their own.

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  • IP BLAWG

    The Cyber Insurance Flip Side

    Beverly A. Berneman
    2/18/20

    We’ve covered denial of insurance coverage for trade secret misappropriation and affirming insurance coverage for copyright infringement. Now we turn our attention to the newer kid on the insurance block, cyber insurance.

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  • IP BLAWG

    Insurance Flip Side

    Beverly A. Berneman
    2/11/20

    Last week’s blog covered a situation where an insurance company wasn’t required to cover the costs of defending a misappropriation of trade secrets case. This week’s blog covers a situation where the insurance company was required to cover the cost of defense of an Intellectual Property dispute.

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