Photo of James Stewart

By: Elena Varese

*This post originally appeared in IPT Italy Blog

The Milan Court of Appeal has overturned the first instance decision and partially upheld Gucci’s claims, stating that Guess has committed an act of unfair competition, by parasitically copying a number of products of the well-known fashion house of Florence.comp.png

A comparison between two products of Gucci and Guess


Continue Reading Gucci / Guess – The Italian Appeal: Gucci’s half victory against Guess on the ground of unfair competition

This post originally appeared in DLA Piper’s Sports, Media and Entertainment Blog

By Patrick Van Eecke & Elisabeth Verbrugge

The Global Privacy Enforcement Network (GPEN) recently released the results of the global privacy sweep of mobile applications it conducted in May 2014.

More than 25 privacy commissions around the world examined a total of 1,211 mobile apps. The sweep targeted both Apple and Android apps, both free and paying apps, both public and private sector apps and covered a variety of different types of apps, ranging from games over health apps to banking apps. The privacy commissions’ reviews focused in particular on transparency and consent.


Continue Reading GLOBAL: Mobile apps – increasing privacy transparency is on top of your to-do list!

By: Thomas E. Zutic and John M. Nading 

Unlike the vast majority of jurisdictions around the world, under the US Trademark Act, only someone “who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce may request registration of its trademark on the principal register.” Over the last year, the United States Trademark Trial and Appeal Board (TTAB) has issued two precedential decisions emphasizing this requirement and sustaining oppositions lodged against trademark applications based on a lack of bona fide intent to use the opposed mark in US commerce. 


Continue Reading Surviving a Trademark Opposition Challenge: Do You Have a True ‘Intent-to-Use’? 5 Key Tips

By Erica J. Pascal

Biosimilar products have not yet reached the US market, but debates on the laws and regulations that will govern them have been raging for some time. It isn’t just federal law at issue. State law may have a profound impact as well. State law governs the ability of a pharmacist to make substitutions for a prescribed branded drug. Thus, at the end of the day, these laws impact the sales ratio of branded to generic drugs.

 State laws governing the substitution of generic versions of small molecule (chemical) drugs primarily divide into two categories: permissive and mandatory. Under permissive regulations, a pharmacist may substitute the generic version, whereas under mandatory laws, the pharmacist must make the substitution if a generic version is available. Both types of laws allow the prescriber to prohibit generic substitution with a “do not substitute” or similar indication on the prescription.


Continue Reading Substitution Allowed? State Biosimilars Laws Are Evolving

On 15 April 2014, the European Trade Mark and Design Network published a Common Communication on the Common Practice of the Scope of Protection of Black and White (“B&W”) Marks (the “Communication”).  Four months on, we look at how the Communication is affecting brand-owners.

The Communication was prompted by the inconsistent degrees of protection being afforded to B&W trade marks by national EU trade mark offices.  Whilst some offices (such as the UK IPO) have traditionally extended protection of a mark registered in B&W to cover all colour combinations, others have taken a more literal approach meaning that trade marks which are filed in B&W are only protected as such.


Continue Reading IP Alert: NEW RULES ON THE SCOPE OF PROTECTION FOR BLACK & WHITE TRADE MARKS IN THE EU: BLACK & WHITE OR CLEAR AS MUD?

By David Kramer & James Stewart

On Thursday, August 14, 2014, the Washington Redskins filed a much-anticipated appeal in the U.S. District Court for the Eastern District of Virginia of a June Trademark Trial and Appeal Board decision which resulted in cancellation of six of the team’s federal trademark registrations containing the word REDSKIN. As previously reported in Re:Marks, the TTAB issued a divided ruling which stated that the Redskin Registrations “must be cancelled because they were disparaging to Native Americans at the time of registration,” in violation of Section 2(a) of the Trademark Act, which prohibits the registration of trademarks that disparage persons or bring them into contempt or disrepute.

 


Continue Reading REDSKINS APPEAL TTAB RULING

By David Kramer and James Stewart

In a ruling that has quickly spread throughout social media, the Trademark Trial and Appeal Board (the “Board”) issued an order cancelling six trademark registrations which contain the word REDSKIN (the “Redskins Registrations”), owned by the Washington, D.C. professional football team, the Redskins (the “Team”).  In a divided ruling, the Board stated that the Redskin Registrations “must be cancelled because they were disparaging to Native Americans at the time of registration,” in violation of Section 2(a) of the Trademark Act, which prohibits the registration of trademarks that disparage persons or bring them into contempt or disrepute. 

While there is some confusion about the implications of this decision for the future of the Team’s name, the Board prominently noted the limited effect of its decision at the outset of its opinion.  Specifically, the Board stated that the decision only concerns the right to federal registration of REDSKIN-formative trademarks, noting that the Board lacks any authority to prohibit the Team from use of its REDSKIN-formative trademarks


Continue Reading TTAB Cancels REDSKINS Trademark Registrations

By Andrew N. Stein

Section 112, paragraph 2 of the Patent Act requires that a patent “conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor [] regards as the invention.” The Federal Circuit consistently has held that this statutory requirement is met, and a claim is not invalid as indefinite, so long as the claim is “amenable to construction,” and is not, as construed, “insolubly ambiguous.” See, e.g., Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005).

However, yesterday, in Nautilus, Inc. v. Biosig Inst., Inc., 572 U.S. ___ (2014), the United States Supreme Court unanimously held that the Federal Circuit’s indefiniteness standard bred “lower court confusion” because it “lack[ed] the precision §112, ¶2” demands. Slip Op. at 11-12.  Writing for the Court, Justice Ruth Bader Ginsburg went so far as to say that the standard “can leave courts and the patent bar at sea without a reliable compass.” Id. at 13.


Continue Reading Supreme Court eases standard for proving patent definiteness – or does it?

The United States Supreme Court on Monday issued two unanimous decisions that affect patent law in the United States.  Here are our brief reviews about these decisions and their meaning for your business.

Supreme Court Eases Standard For Proving Patent Indefiniteness – Or Does It? 

By Andrew N. Stein

Section 112, paragraph 2 of the Patent Act requires that a patent “conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor… regards as the invention.” The Federal Circuit consistently has held that this statutory requirement is met, and a claim is not invalid as indefinite, so long as the claim is “amenable to construction,” and is not, as construed, “insolubly ambiguous.”

However, yesterday, in Nautilus, Inc. v. Biosig Inst., Inc., the United States Supreme Court unanimously held that the Federal Circuit’s indefiniteness standard bred “lower court confusion” because it “lack[ed] the precision §112, ¶2” demands.

Writing for the Court, Justice Ruth Bader Ginsburg went so far as to say that the standard “can leave courts and the patent bar at sea without a reliable compass.”

Commentators and others in the patent bar are already reading the Nautilus opinion as lowering the bar for proving a patent is indefinite. However, much uncertainty remains as to the mechanics of how invalidity will be shown under the Supreme Court’s new standard. Read the full story here.


Continue Reading Two Unanimous Patent Decisions From the Supreme Court