Posts made in July, 2013

Preliminary Injunctions for Trademark Infringement

Posted by on Jul 30, 2013

When you accuse someone of infringing your valuable trademark, what actually happens?  In American Rena International Corp v. Sis-Joyce International the United States Court of Appeals for the Ninth Circuit issued a ruling that very clearly articulated the standards for what is known as a preliminary injunction. Preliminary Injunctions, Generally Imagine a dispute between two parties.  Party P, the plaintiff, accuses party D, the defendant, of doing something wrong – let’s hypothetically say that D has taken to shooting a shotgun into the air in his own backyard which is next door to P’s duck pond.  Let’s further hypothetically say that P is in the business...

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Secondary Meaning

Posted by on Jul 23, 2013

Terms that are merely descriptive are not usually protectable under the Lanham Act as trademarks.  For example, one could not get a trademark on the term “FRIED CHICKEN” because the term simply describes an entire class of product.  If that was the end of the discussion, this would, all in all, be a fairly simple and clear rule.  However there is one major exception to this rule – when the descriptive term has acquired secondary meaning. Secondary meaning is always dependent on the consuming public.  The rationale behind allowing terms with secondary meaning to be eligible for trademark protection is as follows.  Certain words, with an ordinary (descriptive)...

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Trademark Trial and Appeal Board & Infringement Lawsuits

Posted by on Jul 16, 2013

In B&B Hardware v. Hargis Industries the United States Court of Appeals for the Eighth Circuit ruled on a contentious case of trademark infringement litigation that had been going on for over fifteen years.  One of the central issues was the very, very interesting role of decisions made by the Trademark Trial and Appeals Board (TTAB) which is an adjudicatory branch of the United States Patent and Trademark Office (USPTO.) Background of the Case Plaintiff B&B makes a type of fastener device used in the aerospace industry that it sells under the brand “Sealtight.”  Defendant Hargis makes a type of self-drilling, self-taping screw in widespread use in the...

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Navigating Different Intellectual Property Protections

Posted by on Jul 12, 2013

You now have a business and with it, a whole lot of ideas on how to brand it, market it, and make big waves in the industry. But how do you navigate the different types of intellectual property regimes to go about protecting your ideas? There are three (technically four if you count trade secrets, but we’ll cover that in a future post) intellectual property regimes that are available to you, provided that your idea meets the provisions. They are patents, copyright, and trademark, and each regime is codified to provide you a different protection for each one of your ideas. So, to see how these regimes work together and separately to help protect your ideas, let’s...

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Genericide: How Success May Cancel A Trademark

Posted by on Jul 9, 2013

What do the terms “Thermos,” “Aspirin,” and “Yo-Yo” have in common?  They are all very successful products that have actually lost their trademark protection under the Lanham Act due to a doctrine known as Genericide.  In general, when accused of trademark infringement, one of the common defenses is “genericness.”  This defense says that the term is so broad that it doesn’t actually identify a unique source but instead describes an entire class of products.  A term may inherently be generic (“bed”) or may become generic through genericide (“Murphy bed.”)  Here we’ll look at the latter case. Section 14 of the Lanham act says that “The...

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