Two companies with similar marks operated in the same region for more than 40 years without any actual confusion arising for consumers. Nonetheless, the Trademark Trial and Appeal Board (TTAB) found a disqualifying likelihood of confusion when one company tried to...
Timing matters in inter partes review
Inter partes review (IPR) offers parties an expedited opportunity to challenge the validity of a patent outside of court. But, as one challenger recently learned the hard way, it’s critical that arguments against patentability be raised at the proper time. Out of the...
Back to the future
Federal Circuit rejects narrow approach to relation back doctrine The U.S. Court of Appeals for the Federal Circuit, the appellate court that hears all patent-related appeals, recently revived an infringement lawsuit based on the relation back doctrine. The court...
Food for thought: Court rules banana costume is copyrightable
In 2017, the U.S. Supreme Court in Star Athletica, L.L.C. v. Varsity Brands, Inc., established a two-part test for analyzing which elements of a piece of clothing are design elements protectable by copyright and which are nonprotectable functional elements. The U.S....
Third Circuit rejects copyright presumption in favor of permanent injunctions
After securing a copyright infringement verdict, it should be easier to obtain a permanent injunction against the infringing party, right? Not so in several jurisdictions. The U.S. Court of Appeals for the Third Circuit has now made it harder for copyright holders to...
Actual consumer confusion irrelevant in trademark profits determination
It’s easy to understand why willful infringement deserves a harsher punishment than nonwillful infringement. But it’s not always so easy to understand the type of conduct that gives rise to the level of “willful.” The U.S. Court of Appeals for the Second Circuit has...
Beyond words: Federal Circuit faults PTAB’s written description analysis
The Patent Trial and Appeal Board (PTAB) doesn’t always get it right. This was demonstrated once again in a case where the U.S. Court of Appeals for the Federal Circuit found that the board had improperly failed to consider some vital factors when evaluating whether a...
COVID-19 – Precautionary Plan
As the situation in the US and across the world is changing rapidly, Patterson Thuente IP is taking precautionary steps to ensure the health and safety of our employees by allowing all attorneys and staff to work from home effective Monday, March 16. We have put...
Auto parts’ aesthetic appeal doesn’t invalidate design patents
Holders of design patents received some welcome news recently from a case in which some auto parts distributors sought declaratory judgment for invalidity of design patents to sell parts that were covered by a major vehicle manufacturer’s designs. The U.S. Court of...
IP due diligence in corporate transactions
The strength of a company’s intellectual property portfolio often drives the value of corporate transactions. Regardless of whether you are the acquisition target or the buyer in a transaction involving IP, the due diligence process should be designed to reveal the...