Week’s news headlines – Jun 2nd 2017

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Federal Circuit vacates TTAB decision over wine mark
The US Court of Appeals for the Federal Circuit has vacated and remanded a decision by the Trademark Trial and Appeal Board (TTAB) over a wine company’s trademark.

Metatags: the invisible enemy
Website owners should monitor metatags carefully to avoid claims of trademark infringement, as one case in Mexico highlights. Begoña Cancino of Creel, García-Cuéllar, Aiza y Enriquez reports

From green technology to famous trademarks: legal changes in Brazil
There have been a host of legal changes in Brazil since 2016, with IP owners in a range of industries needing to take note of the new laws. Pedro Bhering and Jiuliano Maurer of Bhering Advogados report

Microsoft obtains injunction against IP infringer
In October last year Microsoft sued Hanson’s Geeks, an Arizona-based company that sold computer software, according to the claim

Hotel California owners deny Eagles TM claim
The owners of a Mexican hotel have argued that a trademark infringement lawsuit brought by US rock band Eagles should be dismissed.

Protecting trademarks across borders
In the era of globalisation, trademark laws should be more uniform in order to assist brand owners, particularly those with famous trademarks, say Jaya Mandelia and Namrita Kochhar of Singh & Singh Law Firm

Haribo and Coca-Cola seek to settle differences over TM
In December 2015, Haribo filed a trademark application at the US Patent and Trademark Office (USPTO) for a ‘Haribo’ mark

Jelly bean maker sues cosmetics company over TM
The case was filed at the US District Court for the Northern District of California on Tuesday, May 30

CrossFit wins injunction against gym
The order was handed down by District Judge Matthew Leitman at the US District Court for the Eastern District of Michigan, Southern Division, on Wednesday, May 31

TTAB Must Consider ‘Fame’ of Trademark Using Totality of Circumstances
The Federal Circuit vacated and remanded the Trademark Trial and Appeal Board’s decision to deny the trademark cancellation petition, finding that the Board used an incorrect standard for “fame” in its likelihood of confusion analysis. The Board used an all-or-nothing approach when it should have viewed “fame” under the totality of the circumstances in relation to other confusion factors


Intellectual Property

How New Musicians Can Protect Their Music’s Intellectual Property
It’s not just businesses and corporate environments that need intellectual property protection – artists of all kinds must protect their work too. Specifically, musicians have a lot to copyright and trademark – band names, original music, and album art, to name a few.

Inside Google’s IP battle with Uber
Google is looking to leverage different forms of intellectual property in its pending battle with Uber. As all eyes turn to the increasingly acrimonious lawsuit, is this the start of the next big IP war?



Peak Games and Hasbro settle mobile game copyright dispute
Peak Games and Hasbro, the creator of “My Little Pony”, have reached an out-of-court settlement over their copyright infringement case surrounding a mobile phone game.

Coalition urges EU to address damaging digital copyright proposals
In an open letter to Members of the European Parliament attending the Competitiveness Council, the Copyright for Creativity initiative urged lawmakers to “oppose the most damaging aspects” of the copyright proposals

Drake beats copyright claim with fair use argument
In his song “Pound Cake/Paris Morton Music 2”, from the 2013 album “Nothing Was the Same”, Drake sampled a 1982 spoken-word recording, “Jimmy Smith Rap”

Spotify reaches $43.5M settlement over class action suit on unpaid royalties for copyrighted songs
Recent news reports have indicated that on Friday, May 26th, online music streaming service Spotify, which has its headquarters in Sweden, agreed to a $43.5 million settlement to prevent a class action suit filing from proceeding in court. The class action suit included allegations that Spotify failed to pay mechanical royalties to songwriters for some of the songs which have been available to consumers through the online music service



McDonald’s sued for patent infringement over internet software
The case was filed in the US District Court for the Northern District of Illinois Eastern Division on Tuesday, May 23

Invention to Patent 101 – Everything You Need to Know to Get Started
So you have an idea and want to file a patent application?

Crossed lines over smartphones
Businesses must conduct sufficient prior risk assessment before substantial implementation of technology not owned by them, as the case of Iwncomm v Sony illustrates. Nikita Xue and Linda Wu of HongFangLaw explain the nuances.

University of Tennessee sues software company for patent infringement
The complaint was filed in the US District Court for the Middle District of Tennessee on Friday, May 26

Federal Circuit backs IBM in software dispute
In a decision handed down on Friday, May 26, the court upheld a finding by the US District Court for the Northern District of California that a patent owned by Twin Peaks was invalid as indefinite

USITC institutes Nikon patent probe
ASML, a manufacturer of semiconductor lithography systems, and its optical component supplier Carl Zeiss (a company) filed a complaint against Nikon in April

Administrative patent enforcement continues to surge in China – it’s great news for SMEs and start-ups
Few Chinese IP developments over the past year had the amount of mainstream media appeal than the short-lived injunction ordered by the Beijing IP Office against Apple’s iPhone 6. Though the sales ban was quickly stayed pending an appeal to the Beijing IP Court, and there’s no evidence that any actual sales in the city were impacted, it was a reminder that not only are patent injunctions available in China, but you don’t require a full-fledged civil lawsuit to obtain them

New US Chapter of the International IP Commercialization Council calls for key fixes to the US patent system
There has been much debate in recent years about the ongoing state of patent rights in the US, with some arguing that their erosion poses a serious threat to the country’s economy. It was against that backdrop that the International IP Commercialization Council (IIPCC) recently held its first event in the US focused specifically on IP policy

Strategic Patent Portfolio Decision-making: From filing to maintenance
The America Invents Act (AIA) changed U.S. patent laws from first to invent to first to file, making it all the more critical that patent applications be filed earlier in the process because date of invention is no longer relevant. But the AIA did much more than change the U.S. to a first to file system. The AIA also ushered in post grant challenges and created a Patent Trial and Appeal Board (PTAB), which many patent owners see as hostile to patent rights and favorable to invalidity challenges.

SCOTUS asks for government views in patent profits suit
The US Supreme Court has asked the government for its views in a patent infringement dispute, WesternGeco v Ion Geophysical

Impression v Lexmark ruling may reduce options for patent owners, say lawyers
The US Supreme Court handed down its decision in the Impression Products v Lexmark dispute yesterday, with several lawyers tipping it to have a considerable impact on patent owners

USPTO backlog lower than it’s been in more than a decade: Michelle Lee
“Our shrinking backlog, along with greater finances, and strong support from the public, has allowed the agency to engage in an exceptional effort to enhance patent quality,” she said.

PTAB wrongly invalidated patent, says Federal Circuit
In a decision handed down yesterday, May 31, the court held that the board had erred in its legal analysis when invalidating US patent number 7,382,771

USPTO backlog lower than it’s been in more than a decade: Michelle Lee
The backlog of unexamined patent applications and pendencies at the US Patent and Trademark Office (USPTO) is lower than it’s been in more than a decade, according to Michelle Lee, director at the office

Patent filings could fall 69% in East Texas after TC Heartland ruling
The US Supreme Court’s recent decision in TC Heartland v Kraft Foods could drive a 69% drop in patent filings in the US District Court for the Eastern District of Texas in 2017, according to Unified Patents



Harley-Davidson obtains injunction against online counterfeiting group
The final judgment order against the group was delivered in the US District Court for the Northern District of Illinois Eastern Division on Tuesday, May 23.

Louis Vuitton seeks injunction against online counterfeiters
Filed at the US District Court for the Southern District of Florida on May 24, the lawsuit sought injunctive relief and damages against the defendants for trademark infringement

The path ahead
The International Trademark Association’s policy priorities for the year are counterfeiting, internet governance and expansion, and brand restrictions, as its president Joe Ferretti writes ahead of the association’s Annual Meeting


Domain Name

BetVictor wins jackpot in complaint over domain names
The complaint was filed at the World Intellectual Property Organization Arbitration and Mediation Center in February.

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