KB-IP Law Firm

Author: Karish Bjorgum

  • Intellectual Property for the Plaintiff’s Bar: Trying a Trademark Reverse Confusion Case

    Intellectual Property for the Plaintiff’s Bar: Trying a Trademark Reverse Confusion Case

    By Eric Bjorgum, first published in Forum (July/August 2008).

    There are many opportunities for plaintiff’s attorneys to pursue intellectual property claims. For copyright and patent claims, the requirement of a federal registration can pose a barrier to immediately filing suit. But one legal theory in intellectual property, perhaps more than any other, is suited to the plaintiff’s bar: so-called “reverse confusion” trademark infringement.

    As I will explain below, reverse confusion involves the use by a large company of a trademark confusingly similar to a small company’s older trademark. In the Internet age, reverse confusion becomes more prevalent because marks that could not have been used in the same context (or even the same state) can be seen within seconds of each other. As the Ninth Circuit has stated: “[w]hereas in the world of bricks and mortar, one may be able to distinguish easily between an expensive restaurant in New York and a mediocre one in Los Angeles, see, e.g., Sardi’s Restaurant, 755 F.2d at 723-24, the Web is a very different world.” (GoTo.com, Inc. v. Walt Disney Co. (9th Cir. 2000) 202F.3d 1199, 1206-07 [finding that parties’ services were similar, for purposes of establishing likelihood of confusion of Web site “GoTo” and “Go Network” logos in trademark infringement suit, where both entities operated Web search engines and were, therefore, direct competitors, even if one were to concentrate on the areas of entertainment and leisure].)

    Late last year, I went to trial as cocounsel to plaintiff’s powerhouse Panish, Shea & Boyle, LLP in a reverse confusion case (Positive Ions, Inc. v. Ion Media Networks, U.S.D.C., Central Dist. of California, Case No. CV06-4296 ABC (FMx)) involving a dispute over the mark ION between an Internet and television company. In the coming years, it is said that Internet and television will merge in what is known as “convergence.” We learnedmany things about trying such a case and moving it to resolution quickly. This article is intended to pass along some of those insights for plaintiff’s attorneys pursuing these claims.

     

    I. BASICS OF TRADEMARK REVERSE CONFUSION,

     

    Trademark protection is a valuable right for the little guy. This is because trademark rights are gained through mere use, and they last indefinitely. Remember: the key to trademark law is use in connection with a good or service. A strong trademark is one that is “arbitrary” (i.e., it does not describe the goods or services, such as how “Greyhound” does not describe a bus service) and is used in connection with a good or service in such a way that it identifies the source of the good or service. Trademark rights begin the moment such use begins. The strength of those rights is determined by the extensiveness of the use and arbitrariness of the mark.

    A trademark registration will give the user stronger rights nationally, but an unregistered mark can be just as strong if it is supported by strong customer recognition, advertising and national use. For litigation purposes, the claim for infringement of the registered mark is brought under 15 U.S.c. section 1114, and the claim for the use ofthe unregistered mark is brought under 15 U.S.c. section lI25(a) (also known as a “section 43(a) claim” under the Lanham Act, or “federal unfair competition”).

    But, practically, claims for infringement of registered or unregistered marks are nearly identical. (GoTo.com, supra, 202 F.3d at 1205 fn. 3.) Infringement of a trademark does not require actual confusion between the marks but only a “likelihood of confusion.” In the Ninth Circuit, likelihood of confusion is assessed under the so-called “Sleekcraft factors.’” The Sleekcraft case requires that, when assessing likelihood ofconfusion, the following factors be considered:

     

    • I. strength of the mark;
    • 2. proximity of the goods;
    • 3. similarity of the marks;
    • 4. evidence of actual confusion;
    • 5. marketing channels used;
    • 6. type of goods and the degree of care likely to be exercised by the purchaser;
    • 7. defendant’s intent in selecting the mark; and
    • 8. likelihood of expansion of the product lines.

    (AMF Inc. v. Sleekcraft Boats (9th Cir. 1979) 599 F.2d 341, 348 -349.)

    As a final bit of terminology, the first person or company to use the mark in connection with the good or service is called the “senior user.” The second user of an arguably similar mark in connection with an arguably similar good or service is the “junior user.”

    In many trademark cases, the senior user is a large company pursuing its rights (e.g., MatteI’s use ofBARBIE in connection with a toy fashion doll) against a smaller company that the large company alleges is using a similar mark in connection with similar goods (e.g., BARBRA in connection with a doll). However, if trademark infringement were limited to claims by big companies, trademark rights would slowly accrue only for the benefit of large players in the market (remember “likelihood of expansion” is part of the test), leaving little protection for the mall company with a brilliant idea and mark. “Reverse confusion” can level this playing field.

    Reverse confusion is just confusion like any other, but the infringementanalysis is slightly altered toward the realities of a small senior user fighting a larger junior user. Thus, in a case of reverse confusion, the small company with the great trademark is the senior user if it was first to use the mark in commerce; the large company is the junior user. The essence of reverse confusion is that, even though there may be little chance that the junior user is trying to capitalize on the smaller senior user’s market share, the small company will have its horizons for growth cut short by the large company. In the seminal Ninth Circuit case of Dreamwerks v. Dreamworks, the court described the larger company’s mark as casting a “shadow” over the small company. In that case, the senior user was a small company that put on science fiction conventions, and the junior user was the well-known Dreamworks film studio. The court stated that, if the roles were reversed, there would be no doubt that the larger Dreamworks would have stated a claim for trademark infringement. As the court explained, “The reason for this, of course, is that a famous mark like DreamWorks SKG casts a long shadow. Does the result change in a reverse infringement case because the long shadow is cast by the junior mark? We think not.” (Dreamwerks Production Group, Inc. v. SKG Studio (9th Cir. 1998) 142 F.3d 1127, 1130.)

    As another example, assume that a small company has a cola drink called “Purple” that is marketed only in Southern California. That company is accruing trademark rights in the mark PURPLE. If Coca Cola later does a national launch of a cola called “Purple,” consumers outside of California are likely to think Coca Cola was the first “Purple.” Worse, if the small company tries to move into that market, consumers will think that it is trying to copy Coca Cola’s product when, in fact, the small company was the senior user. 2

    II. THE POSITIVE IONS CASE

    Amidst this daunting legal framework, my firm took on a plaintiff’s reverse confusion case in 2006. The case had personal significance because our firm had established reverse confusion in the Ninth Circuit in the Dreamwerks case, and this was our first foray back into that issue as a plaintiff since then. Also, it was a chance to work with Panish, Shea & Boyle, LLP with whom we have had a long history.

    Our client, the plaintiff Positive Ions, Inc., had a registered mark in the word ION for use in connection with placing advertisements for the goods of others on a global computer network. The plaintiff also had over 1,000 domain names starting with “ion,” such as “ionLosAngeles.com” and “ionTelevision.com.” In 2006, a television broadcasting network known as Pax Television changed its name to Ion Television. Positive Ions began to receive email and other communications indicating that consumers may be confused. (Indeed, one voice mail involved a publicized incident of pornography being shown on the defendant’s station in Phoenix, and it appeared that the caller thought the plaintiff was somehow responsible.) Also, our client wanted to put videoon its web pages, and it appeared that it may be cut off by Ion Television.

    A. Internet “Convergence” – A Wave of Confusion?

    We believed the companies were on a collision course because of the coming “convergence” of television and the Internet. As noted above, the Internet provides a forum for a wave of trademark confusion; convergence is just one subset of that possibility. Throughout 2006 and 2007, the newspapers were full of articles about the demise of broadcast television in favor of television viewable on the Internet. Because Posi ti ve Ions had a trademark registration for use of “ion” in connection with “a global computer network,” it feared that the emergence ofIon Television as a broadcaster meant it would only be a matter of time before Ion Television launched a considerable Internet presence, thus destroying any chance that my client had of showing video on its own Ion Network.

    In 2009, all television is set to “go digital” so that there will be no analog broadcast television. Digital broadcast television will be able to carry many more channels on the same radio spectrum that is now used by analog television. Also, there will be a potential for more interaction with the television, so that it will act more like a computer terminal. Companies will begin developing hand held devices to receive digital television, and the lines between television and Internet will become even more blurry.

     

    B. Ion – The Trial

     

    The case was filed in the Central District of California, and, somewhat to our amazement, proceeded all the way to trial. Brian Pan ish was lead trial counsel, and the case settled on the second day when the defendant’s CEO was on the stand, under Panish’s blistering crossexamination.

    The defendant was represented by a large national law firm that pressed every argument. Eventually, during the trial, the court issued rulings on motions in limine that showed considerable downside risk was possible for the defendant. I believe one ruling in particular led the defendant to settle. In that ruling, the court clearly declared that if the defendant lost the case, the court would seriously consider issuing a permanent injunction against the defendant’s continued use of Ion Television. This had essentially reversed an earlier decision by the court in which it granted summary judgment on the issue that the defendant was the “senior user” ofION in television.

    After much reflection and consideration of the trial and surrounding events, I concluded that there were things we could have done differently to bring the case into focus more quickly. Hopefully, these lessons will help other plaintiff’s attorneys attempting to negotiate the murky waters of trademark reverse confusion:

    1. Consider the injunction your chief remedy:

    In reverse confusion, damages are difficult to prove. This is because (unlike the BARBIE example above), the junior user is not trying to trade on the goodwill ofthe smaller senior user company. Instead, the larger company is really snuffing out the potential of the small company. When dealing with startups – particularly on the Internet – proving lost future income can be difficult.

    Further, reverse confusion verdicts are trending down. When reverse confusion first arose, use of the traditional corrective advertising remedy (calculated by the large defendant’s advertising budget) resulted in some very large verdicts. The courts eventually developed various factors to limit these verdicts, and proof of all these issues can result in a sideshow from the infringement.

    In our case, we sought the trademark damage theories of corrective advertising and damage to the mark, as measured by damage to the plaintiff’s brand. To pursue these theories, we chose expensive experts with complex theories. In the end, the expert witnesses became a distraction and increased the skepticism of the defendant’s counsel.

    It is important to remember that in trademark law, an injunction is the preferred remedy. This is because consumer confusion is the main evil to be avoided, and the best way to avoid confusion is to make the infringing party stop using the mark. Damages are always difficult in trademark cases, but more so in reverse confusion. Further, the plaintiff increases the risk that a jury will think it is bringing a bogus claim if the damage numbers are unrealistic and rely on too many PhD’s. Thus, focusing on the injunction remedy can actually help move the case to settlement for money. This was apparent in the Positive Ion case because, once it looked like the defendant had a serious risk of changing its name, the case moved toward settlement. Further, a plaintiff can avoid a lot of briefing and time-consuming Daubert motions before trial if the damages theories are simple and result in conservative numbers.

    2. Simplify the case for the court

    Keeping the case simple for the court is obviously always a good idea, but it is very important in reverse trademark confusion. We know that courts are busy. A normal “forward confusion” case is difficult enough because trademark infringement(in the Ninth Circuit) requires weighing oft~e eight”Sleekcrajt factors.” Other circuits have similarly complex tests. There is a mass ofcase law dealing with weighing each ofthese factors differently for different situations. The court can be easily distracted. As we saw in the Positive Ion case with the “senior user” argument, the court can be distracted by novel arguments. We perhaps would have been better off focusing the court’s attention on the difficulties of reverse confusion.

    Also, the Ninth Circuit pattern instructions can be made to fit a reverse confusion case, but the effort to do so should be made early and not just before trial. While it is sometimes advisable to keep as many balls in the air as possible until trial so that counsel can roll with the punches, a reverse confusion case is sufficiently confusing on its own that plaintiff’s counsel will have many chances to alter the presentation of the case as it progresses. For instance, in the Positive Ion case, we argued the “family of marks” doctrine up until trial, as well as potential trademark claims on many of the important domain names used by our client. At the court’s suggestion, we dropped these arguments just before trial, but, in retrospect, we possibly could have done so earlier.

    In sum, in reverse confusion, plaintiff’s energy should go toward simplifying and explaining the case to the court. It will be difficult enough to get the jury instructions tailored to the reverse confusion scenario without have a lot of extraneous issues at pretrial.

    3. Bifurcation is preferred

    Oftentimes, a plaintiff’s attorney will resist bifurcation of liability and damages on the idea that it is good to get the damages evidence before the jury in the first phase. In reverse trademark confusion, this is not always a good strategy. This is because, by the very definition of reverse confusion, the plaintiff will look like it is “swinging for the bleachers” on damages against a large rival. The risk will be that the jury perceives the plaintiff as greedy and relying on smoke and mirrors damages reports.

    Worse yet, because damages are difficult to prove, much of the case can be taken up by arguing the damages issue rather than the facts of trademark confusion, which are much more likely to be favorable to the small party. This is particularly so in the Internet context, where courts have held that confusion is more likely by the ability of consumers to quickly switch between web pages. This is a key factor in favor of the plaintiff, and the jury needs to focus on it.

    Most importantly, putting off damages until the second phase helps drive the point home that the plaintiff really just wants the defendant to stop using its mark. Thejudge will likely grant an injunction if infringement is found by the jury. The plaintiff should not create an unfavorable impression with the judge by taking up a lot oftrial time trying to establish damages. All of these risks were heightened in the Positive Ion case because start up companies (again, particularly on the Internet) are not known for keeping their books completely up to the date and in order. They are usually too busy trying to stay in business.

    Finally – and this will be relief to plaintiff’s attorneys – bifurcation means that the plaintiff does not need to agonize over how much money to request while putting on its liability case. The trial lawyer can focus on liability and the nine factors needed to prove it.

    In sum, the coming months and years hold promise for plaintiff’s attorneys looking for to enter the intellectual property market via a plaintiff’s trademark suit. One key driver of that will be the incidence of confusion on the Internet. However, when preparing and trying a case of reverse confusion, it is important to remember to keep the case simple for the court and jury, recognize the power of the injunction remedy, and seriously question your instincts on the question of bifurcation. With these considerations in mind, a plaintiff’s attorney should be able to reach a positive result for the client without losing too much sleep.

    1. Trademark cases can be brought in state court as well, though the wisdom of doing so varies with every case, and cases involving federally registered marks can be removed to federal court.

    2. In a reverse confusion case, the most important Sleekcrajl factors are (I) the strength of the marks, (2) the similarity of the marks, and (3) the relatedness of the goods. (Moose Creek, Inc. v. Abercrombie & Fitch Co., (C.O. Cal. 2004) 331 FSupp.2d 1214.) Further, in the Web context two of these factors are heavily weighted. The inth Circuit has stated: “In the context of the Web in particular, the three most important Sleekcrajl factors are (1) the similarity of the marks, (2) the relatedness of the goods or services, and (3) the’ ‘simultaneous use of the Web as a marketing channel.” (GoTo.com, supra, 202 F3d at 1205.)

  • IP Law & the Arts

    IP Law & the Arts

    The intersection of law and the arts presents unique challenges calling upon different aspects of intellectual property law.  A particular artistic problem may involve elements of copyright, trademark and even patent law.

    However, before the practicalities of representing an artist are dealt with, the attorney must first listen to the artist.  The key initial step in assisting an artist with a legal problem is to really listen to the artist for her or his explanation of that problem. Artists are by nature sensitive and perceptive people.  Usually an artist is not the loudest voice in the room, but the artist’s observations will be among the most subtle and likely to assist the attorney in obtaining a favorable outcome.  Often the solution is not only monetary; it involves obtaining peace of mind so the artist can continue to work.

    Once the artist’s concerns and observations are taken into account, it is time to consider all of the legal tools available in the situation.   For instance, an artist whose iconic image has been appropriated for commercial use will need to consider–at least–copyright, trademark and unfair competition law.  If the work may have been made for hire, the state law of agency or contract may come into play.  Thus, the successful art lawyer cannot simply be a copyright or contract attorney.

    To take another example, a graphic artist may ask inquire of the attorney whether it is desirable to obtain a copyright registration on a drawing used to create a functional object.  Unbeknownst to the artist, the best protection may be in a design patent or trade dress.  Only a lawyer who knows patent law will recognize this issue.

    Finally, the term “artist” should not be constrained to visual artists, but should also include writers, musicians and even choreographers and architects.  (Also, the issues regarding photography are increasingly complex as anyone with a digital camera can produce thousands of copyrightable images in one day.)  For instance, a writer may have an obvious copyright issue in his or her story, but there may also be more subtle problems of  trademarks, signature characters and the elusive concepts of “branding.”   Only a firm with the breadth of experience in all of intellectual property law can “see the whole field” of art law.  The attorneys at Karish & Bjorgum have that experience.

    Representative art law matters and clients include:

    1.    Twitchell v. United States, et al.:  This case was an epic battle by muralist Kent Twtichell to raise awareness and obtain vindication of his rights after the government and its contractors unceremoniously wiped out his 70 foot high “Ed Ruscha Monument” in downtown Los Angeles.  Karish and Bjorgum attorneys assisted in obtaining a public settlement under the obscure Visual Artists Rights Act was more than five times the next largest settlement under that law.  The case has re-energized the public art community in Los Angeles.

    2.    Baum v. Marder:  This case involved a dispute amongst ostensible co-authors of the famed “Letters from a Nut” series of books, which are widely rumored to be written by Jerry Seinfeld.  Karish & Bjorgum lawyers represented the Defendant, Barry Marder.  Even though he was sued, Mr. Marder walked away with all copyrights in the books and the trademark rights in its principal character that have allowed him to publish three more books, sign multiple production deals and develop a thriving Internet business — all with intellectual property that had lain fallow for years because of a soured personal relationship.

    3.      “Ring of Fire” Investigation:  Following the death of Johnny Cash’s first wife, Karish & Bjorgum lawyers were enlisted to investigate the writing of “Ring of Fire.”  Their findings were detailed in the epilogue to the paperback edition of Vivian Cash Distin’s posthumous biography “I Walked The Line.”  Though the investigation cast doubt on the traditional “Ring of Fire” story, no formal legal action was taken, as the benefits of such action would have been outweighed by familial turmoil.  This is an instance of Firm attorneys putting the overall interest of the client ahead of immediate financial gain and notoriety.

    4.     Edward Colver Representation:  Firm attorneys have represented underground rock photographer and controversial artist Edward Colver as he has fought to solidify his legacy amidst a sea of illegal copying and misunderstanding of his work.  Since obtaining the services of Firm lawyers, Colver has stopped copying of his work by a major shoe company, has developed a relationship with a noted gallery and has launched a provocative brand of clothing.  Key to this success was the initial legal protection of Colver’s rights and an overall understanding of the underground music community.

    5.      Str8t Up, Inc.:  In a very recent success, client Str8t Up, Inc. has had its first offering (“Alaskan Bush Pilots”) picked up for production by The History Channel.  Firm lawyers operated in association with other counsel to review contracts from a fresh, non-industry and pro-intellectual property perspective.  Oftentimes, typical Hollywood contracts that have been passed down through generations of attorneys can benefit from a fresh review–especially by attorneys who are not beholden to the studios or the “talent” for their livelihood.

  • Enforcing IP: Privileges and Anti-SLAPP Practice

    Enforcing IP: Privileges and Anti-SLAPP Practice

    As intellectual property litigators, the attorneys of Karish & Bjorgum often run into issues involving allegations of wrongful conduct arising from enforcement of intellectual property rights.  This issue can arise when notification of a suit is sent to the trade or even when a cease and desist letter is sent.  Sometimes the defendant of the suit or the recipient of the letter will retaliate with a lawsuit claiming malicious prosecution, abuse of process, interference with contract or some other tort allegedly based upon the underlying dispute.

    The response to such a counterclaim is often a motion to dismiss based upon First Amendment principles and/or a so-called “anti-SLAPP” (“strategic lawsuit against public participation”) motion.  Many states have anti-SLAPP statutes, which are intended to allow quick dismissal of claims arising from activity protected under the Constitution.  The prototypical anti-SLAPP situation involves an individual speaking out about a “public issue” (such as at a city council meeting) and then being sued for defamation in response.  The goal of the person or company bringing suit is not to win but to distract and wear down the speaker.  However, in addition to obvious situations such as public meetings, activity protected under the anti-SLAPP statute often includes lawsuits, good faith threats of lawsuits and cease and desist letters.

    Anti-SLAPP statutes usually have strong tactical advantages for the movants.  In California, filing such a motion immediately stays fact discovery, provides a mandatory award of fees for the successful movant, and allows for an immediate right of appeal if unsuccessful.  However, once beyond the vanilla state court case,  the anti-SLAPP terrain becomes exponentially difficult, and many federal litigators miss this issue altogether.  For instance, under the Erie doctrine, only some of these procedural advantages apply in federal court.  However, the First Amendment and federal Noerr-Pennington doctrine can be used to obtain similar results.  And California has passed statutes to limit the application of the anti-SLAPP statute, as well as special rules for “SLAPP back” cases.

    Attorneys at Karish & Bjorgum have been involved in many novel applications of the anti-SLAPP statute and Noerr-Pennington doctrine.

    Representative cases include:

    MM&R, Inc. v. Stitch n Genius, LLC (USDC, Central District of California):  Interpreting Federal Circuit precedent, federal court held that California’s anti-SLAPP statute applies to counterclaims based upon letters notifying the trade of patent rights and lawsuit.

    Gallagher v. Moon (L.A. Sup. Ct.):  State Court granted anti-SLAPP motions of landowner’s wife and tenant in case based upon alleged wrongful execution of judgment on real property.

    Sosa v. DIRECTV (9th Circuit):  Federal court of Appeals held that Noerr-Pennington doctrine applies to RICO and state law claims against DIRECTV, based upon its efforts to curb piracy of access cards.

    DIRECTV cases (various Federal Courts):  U.S. District Courts in Georgia, New York and Michigan held that local anti-SLAPP statutes or Noerr-Pennington doctrine applied to attempts by DIRECTV to settle infringement disputes with subscribers.

    Mattel, Inc. v. Christian (California Court of Appeal):  In a rare reversal of anti-SLAPP motion granted against large company, the California Court of Appeal holds that Mattel, Inc. stated defamation claims based upon statements made to tabloid television show regarding earlier case.

    So, if you are a holder of intellectual property rights wishing to begin an enforcement campaign — or if you have already threatened in response to such a campaign or feel that another company is wrongfully pursuing its own intellectual property rights against you — you may need to obtain legal advice on the scope of protected speech.  If you have been sued for such conduct, you may be entitled to fees and a quick dismissal.  Contact Karish & Bjorgum for further consultation.

  • Beware – False Marking May Cost You Big

    Beware – False Marking May Cost You Big

    In its decision on December 28, 2009 in The Forest Group, Inc. v. Bon Tool Company, the Federal Circuit clearly set forth the standards and possible penalties for false marking (placing a patent number on a product when the product is not covered by that patent).

    False marking is covered under 35 U.S.C. §292.  Pursuant to §292, a false marking claim consists of (1) marking an unpatented article with (2) intent to deceive the public.  See Clontech Labs. Inc. v. Invitrogen Corp., 406 F.3d 1347, 1352 (Fed. Cir. 2005). “Intent to deceive is a state of mind arising when a party acts with sufficient knowledge that what it is saying is not so and consequently that the recipient of its saying will be misled into thinking that the statement is true.” ld.(citing Seven Cases of Eckman’s Alterative v. United States, 239 U.S. 510, 517–18 (1916)).  A party asserting false marking must show by a preponderance of the evidence that the accused party did not have a reasonable belief that the articles were properly marked. Id. at 1352–53. An assertion by a party that it did not intend to deceive, standing alone, “is worthless as proof of no intent to deceive where there is knowledge of falsehood.” Id. at 1352.

    Once it is clear that a product is not properly marked, the analysis comes down to whether the defendant had intent to deceive.  The court looks to such Factors as: how obvious it was that the product was outside the patent claims, whether the defendant was advised by patent counsel to mark the product and the educational level and sophistication of the defendant.  Proving intent to deceive may be difficult in situations where the scope of the claims has not been interpreted and the product is close to the claimed language.  However, in circumstances where knowledge of falsehood is clear, defendants may be face hefty fines in suits that can be brought by any member of the public.

    In The Forest Group, Inc. v. Bon Tool Company, the Federal Circuit was asked to opine on whether §292 intended a fine for the entire act of false marking not to exceed $500 regardless of the number of falsely marked products or whether each falsely marked product could be assessed a fine of up to $500.  The Federal Circuit held that each falsely marked product could be assessed a fine of up to $500 even though prior courts had reached a contrary result, mostly because the wording of the statue was changed over time.  The Court pointed out that the statute clearly intended this measure of damages, that a fine not to exceed $500 regardless of the number of falsely marked products would clearly eviscerate the statute, and that policy considerations support the per article interpretation of §292.

    The policy considerations pointed out by the Federal Circuit include: “that acts of false marking deter innovation and stifle competition in the marketplace”; that “[i]f an article that is within the public domain is falsely marked, potential competitors may be dissuaded from entering the same market”; that “[f]alse marks may also deter scientific research when an inventor sees a mark and decides to forego continued research to avoid possible infringement”; and that “false marking can also cause unnecessary investment in design around or costs incurred to analyze the validity or enforceability of a patent whose number has been marked upon a product with which a competitor would like to compete.”  The Court noted that the injuries occur each time an article is falsely marked, and that the more articles that are falsely marked the greater the chance that competitors will see the falsely marked article and be deterred from competing.

    The Forest Group argued that interpreting the fine of §292 to apply on a per article basis would encourage a rash of false marking litigation by plaintiffs in qui tam suits who had not suffered any direct harm.  The Federal Circuit held that such suits were explicitly provided for and encouraged by 35 U.S.C. §292 so that individuals can help control false marking.  The language of 35 U.S.C. §292(b) states that “Any person may sue for the penalty, in which event one-half shall go to the person suing and the other to the use of the United States.”  The Court noted that a maximum fine of $500 for the entire act of false marking regardless of the number of falsely marked products would not provide sufficient financial motivation for plaintiffs in qui tam suits.

    However, before you run out and bring a bunch of qui tam suits for false marking you should note that a court does not have to fine at a rate of $500 per article marked.  The Federal Circuit held that 35 U.S.C. §292 provides for a maximum of “not more than $500 for each such offense” thereby allowing for a range of fines.  The district courts should “balance encouraging enforcement of an important public policy and imposing disproportionately large penalties for small, inexpensive items produced in large quantities.”  The Federal Circuit did not provide a list of factors for district courts to use in determining the appropriate fine per article falsely marked.  However, the Federal Circuit noted that in case of inexpensive mass-produced articles, a court has the discretion to determine that a fraction of a penny per article is a proper penalty.
    In The Forest Group, Inc. v. Bon Tool Company, the false marking claim was brought as a counterclaim by a defendant accused of patent infringement.  Clients accused of patent infringement should carefully evaluate whether a counterclaim for false marking is warranted.

    Additionally, clients who believe a product in the marketplace is falsely marked should consider action to put the producer and seller of the article on notice of the false marking.  In situations where the producer and seller are clearly aware that the article is falsely marked, then a qui tam suit may be justified.

    Karish & Bjorgum, PC is a full service intellectual property law firm specializing in intellectual property litigation in the federal and state courts.  We help our clients protect the names of their businesses and their products and the ideas behind them.

  • What is a patent?

    What is a patent?

    A patent is a property right given by the U.S. government that allows a patent owner to exclude others from making, using, offering for sale, or selling an invention in the United States for a limited time.  The U.S. government awards patent so that inventors will reveal their inventions to the public.

    Who can apply for a patent?

    Only an inventor can apply for a patent in the United States.  The inventor does not need to be a U.S. citizen to file a patent application.  A company cannot file a patent application in its own name, but can own the rights in a patent application or issued patent.

    What can be patented?

    An inventor may obtain a utility patent for a new and useful:
    • Process
    • Machine
    • Article of manufacture
    • Composition of matter
    • Or new and useful improvement of any of the above
    In addition to utility patents, design patents protect the ornamental design of an article of manufacture and plant patents protect certain plant varieties.

    What cannot be patented?

    • Laws of nature;
    • Physical phenomena;
    • Abstract ideas;
    • Literary, dramatic, musical, and artistic works (however these can be Copyright protected;.
    • Inventions that are not useful; and
    • Inventions that are offensive to public morality

    How long does it take for a patent application to be processed?

    Currently, patent application are taking over 24 months to get through the patent office on average.

    How long does patent protection last?

    Utility and Plant Patents: For applications filed on or after June 8, 1995, utility and plant patents are in force from the issue date and usually extend until 20 years from the filing date as long as the proper maintenance fees are paid.  However, for patents in force, and applications pending, as of June 7, 1995, the patent remains in force from the date of issuance until either 20 years from the filing date or 17 years from the issue date, whichever is longer, as long as the proper maintenance fees are paid.
    Design Patents: Design patents last 14 years from the issue date.

    How can I protect my invention outside of the United States?

    U.S. Patents essentially limit protection to the United States.  However, the Patent Cooperation Treaty (PCT) is an international agreement for filing patent applications having effect in many different countries. Although the PCT system does not lead to “an international patent”, the system simplifies the process of filing patent applications, delays the expenses associated with applying for patent protection in foreign countries, and allows the inventor more time to assess the commercial viability of his/her invention.  Under the PCT, an inventor files a single international patent application in one language with one patent office to simultaneously seek protection for an invention in the PCT member countries.  After filing a PCT application, an applicant can then use the PCT system to pursue patent protection in specific countries.

    Karish & Bjorgum attorneys have years of experience filing and obtaining patents for our clients and we can help you.

  • What is a trademark?

    What is a trademark?

    A trademark is a word, name, symbol, or device, alone or in combination that is used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods.

    What is a service mark?

    A service mark is any word, name, symbol, device, alone or in combination that is used, or intended to be used, in commerce, to identify and distinguish the services of one provider from services provided by others, and to indicate the source of the services.

    Do I have to register my trademark or service mark?

    No, but federal registration has several advantages.

    What are the benefits of federal trademark registration?

    1.    Constructive notice nationwide of the trademark owner’s claim;
    2.    Evidence of ownership of the trademark;
    3.     The federal courts may be used to protect the trademark;
    4.    A U.S. registration can be used as a basis for obtaining registration in foreign countries;
    5.    Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods; and
    6.    The exclusive right to use the mark on or in connection with the goods or services set forth in the registration.

    Do I have to be a U.S. Citizen to obtain a federal registration?

    No, but an applicant’s citizenship must be set forth in the application.

    When is it proper to use the federal registration symbol “®”?

    The federal registration symbol may be used ONLY once the mark is actually registered in the U.S. Patent and Trademark Office. The federal registration symbol should only be used on goods or services that are the subject of the registration.

    Is a federal registration valid outside the United States?

    No. However, if you own a trademark application pending before the USPTO, or a registration issued by the USPTO, then you may seek registration in other countries through the Madrid Protocol by filing an “international application”. Also, some countries recognize a United States registration as a basis for filing an application to register a mark in those countries under international treaties.

    Can the USPTO refuse to register a mark?

    Yes. The USPTO will refuse to register matter if it does not function as a trademark. Not all words, names, symbols or devices function as trademarks. For example, matter which is merely the generic name of the goods on which it is used cannot be registered.
    Additionally, federal codes recite several reasons for refusing registration, including:
    1.  the proposed mark consists of or comprises immoral, deceptive, or scandalous matter;
    2.  the proposed mark may disparage or falsely suggest a connection with persons (living or dead), institutions, beliefs, or national symbols, or bring them into contempt or disrepute;
    3.  the proposed mark consists of or comprises the flag or coat of arms, or other insignia of the United States, or of any State or municipality, or of any foreign nation;
    4.  the proposed mark consists of or comprises a name, portrait or signature identifying a particular living individual, except by that individual’s written consent; or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow;
    5.  the proposed mark so resembles a mark already registered in the Patent and Trademark Office (PTO) that use of the mark on applicant’s goods or services are likely to cause confusion, mistake, or deception;
    6.  the proposed mark is merely descriptive or deceptively misdescriptive of applicant’s goods or services;
    7.  the proposed mark is primarily geographically descriptive or deceptively geographically misdescriptive of applicant’s goods or services;
    8.  the proposed mark is primarily merely a surname; and
    9.  matter that, as a whole, is functional.

    How long does a trademark registration last?

    Trademark registrations can be renewed indefinitely, but a trademark holder has to file certain documents to maintain the trademark.

    Can the ownership of a trademark be assigned or transferred from one person to another?

    Yes. A registered mark, or a mark for which an application to register has been filed is assignable. Written assignments may be recorded in the U.S. Patent and Trademark Office for a fee.

    What is a certification mark?

    A certification mark is any word, name, symbol, device, alone or in combination that is used, or intended to be used, in commerce with the owner’s permission by someone other than its owner, to certify regional or other geographic origin, material, mode of manufacture, quality, accuracy, or other characteristics of someone’s goods or services, or that the work or labor on the goods or services was performed by members of a union or other organization.

     

    What is a collective mark?

    A collective mark is a trademark or service mark used, or intended to be used, in commerce, by the members of a cooperative, an association, or other collective group or organization, including a mark which indicates membership in a union, an association, or other organization.

    Karish & Bjorgum attorneys have years of experience filing trademark applications and working with the USPTO to obtain trademarks for our clients and we can help you.

  • Karish & Bjorgum Substitutes In, Obtains Victory In Trademark Infringement Trial

    Karish & Bjorgum Substitutes In, Obtains Victory In Trademark Infringement Trial

    Los Angeles, CA — On behalf of firm client Anhing Corporation, Karish & Bjorgum has obtained a jury verdict finding that Anhing’s former supplier engaged in willful trademark infringement of Anhing’s federally registered MY-THO trademark. Karish & Bjorgum was brought in just a few weeks before the federal trial date.

    Anhing imports over 3,000 different food products from Asia, including many of its own brands.  It has been using the MY-THO trademark since 1980 on its rice noodle and rice paper products.  MY-THO was one of the first food brands created by Anhing founder Henry Ly after his 1980 arrival in Los Angeles following escape from Communist Vietnam.  Anhing alleged that Defendant Thuan Phong Company began producing infringing products around 2010, after serving for years as a manufacturer of a different Anhing branded rice product.

    The federal jury rejected Thuan Phong’s contention that, because its products are made in the Vietnamese city of “MỸ THO,” it was engaged in a fair use of the MY-THO registered mark. The jury further found that Anhing has protectable trade dress in its product packaging and rejected Thuan Phong’s counterclaim of false advertising.

    Even though the firm was a late arrival, Karish & Bjorgum quickly got up to speed, preparing and successfully arguing a last-minute motion for summary judgment and attending depositions of numerous newly identified witnesses.  The firm’s trial team consisted of founding partners Eric Bjorgum and Marc Karish, assisted by co-counsel Jeffrey Kobulnick of Ezra Brutzkus Gubner LLP.

    The result further confirms Karish & Bjorgum’s core belief that expertise in intellectual property prosecution is an invaluable tool for successful litigation.

    Anhing will soon be filing its post-trial motions for requesting a permanent injunction and attorneys’ fees.

  • KB Partner Speaks at Art Law Conferences

    KB Partner Speaks at Art Law Conferences

    The global emergence of street art has given rise to novel legal issues, and Karish & Bjorgum partner Eric Bjorgum has been selected to speak at several conferences on these topics. Most recently, he spoke at the 2016 LA Art Show “Dialogs LA” panel entitled “Mural Renaissance in Downtown Los Angeles: Challenges of Expression and Legacy.”  Also on the panel were famed public artists Kent Twitchell and Mear One.  In November, Bjorgum spoke at Thomas Jefferson School of Law’s conference “The Art of Fashion: Law, Business and the Protection of Art & Fashion.”   Also attending the conference, which was organized by Professor K.J. Greene, were Fordham’s Professor Susan Scafidi, a leader in the emerging field of fashion law, and artist Isaias Crow.  Finally, in February Bjorgum spoke at Fordham University’s Urban Law Symposium “Urban Space, and The Future of Artistic Expression,” a day-long conference touching on such broad topics of the Occupy Wall Street movement and busking in New York’s subways.

  • Dan Kimbell Elected to Board of Huntington Medical Research Institutes

    Dan Kimbell Elected to Board of Huntington Medical Research Institutes

    Dan Kimbell was elected to serve on the Huntington Medical Research Institutes (HMRI) Board of Directors at the January 2016 board meeting.  The HMRI Board of Directors members volunteer their time, energy and resources to supporting HMRI’s scientific mission of multidisciplinary, patient-focused research.  HMRI is dedicated to enhancing knowledge of diseases in order to improve health and save lives.  For six decades, it has been making biomedical discoveries and developments that have set new precedents in medical knowledge across the nation and around the world.  HMRI is a vital biomedical research organization with more than 47,000 square feet of research facilities and in 2017 will open a new 100,000 square foot research facility in Pasadena.  Among other things, as a member of the board, Dan will assist with the further developing HRMI technology and assisting with intellectual property law issues.

  • Disclaimer Requirements: The Problem With Adjacent Descriptive Words

    Disclaimer Requirements: The Problem With Adjacent Descriptive Words

    Many trademarks consist of two, three, or more words, with some words being “descriptive.”  In these cases, the Trademark Office will require that such descriptive word(s) be “disclaimed” to make it clear that that trademark registrant does not have exclusive rights to such descriptive words apart from the trademark as a whole.

    As an example, the owner of the three word trademark BONKA BIRD TOYS, for retail store services for pet toy, etc., had to disclaim “BIRD TOYS.”  Likewise, the owner of the trademark STARBIRD PARROT TOYS, for pet toys, had to disclaim “PARROT TOYS”.  This is not surprising as both BIRD TOYS and PARROT TOYS are clearly descriptive.  Thus, if a third party filed for the marks BRIGHTEYE BIRD TOYS or LADDYBUCK’s PARROT TOYS, the owners of the BONKA BIRD TOYS and STARBIRD PARROT TOYS trademarks would not be in a strong position to oppose such new trademarks.

    But what happens when a certain phrase consisting of two or more descriptive words, which hasn’t been used together before in the marketplace, is included in a trademark?

    As a case in point, consider the trademark BALLISTIC COGNITIVE PREWORKOUT, for nutritional supplements.  “PREWORKOUT” is a well-recognized type of nutritional supplement to be taken before a workout, and “COGNITIVE” describes an intended feature of the nutritional supplement- to help with improved cognition and focus during a workout.  Yet, the phrase COGNITIVE PREWORKOUT is otherwise not a known term for these types of nutritional supplements.

    Under the trademark rules of practice embodied in the Trademark Manual of Examining Procedure (TMEP) Section 1213.08(a)(i), the Trademark Office will nonetheless require a disclaimer of the entire phrase “COGNITIVE PREWORKOUT” in the mark BALLISTIC COGNITIVE PREWORKOUT because both words “COGNITIVE” and “PREWORKOUT” are descriptive and they are presented side-by-side.

    TMEP 1213.08(a)(i)  Standardized Printing Format for Disclaimer

    Since November 9, 1982, disclaimers for marks published for opposition and those registered on the Supplemental Register are printed in a standardized form in the Official Gazette, regardless of the text submitted.  Disclaimers are in the standardized format in certificates of registration on the Supplemental Register issued as of that date.  Disclaimers are in the standardized format in certificates of registration on the Principal Register issued as of February 1, 1983.  The disclaimed matter is taken from the disclaimer of record and inserted into the standardized disclaimer format for printing and Trademark database purposes.  The standardized disclaimer text is as follows:

    No claim is made to the exclusive right to use “____________” apart from the mark as shown.

    See 1022 OG 44 (Sept. 28, 1982).  See also In re Owatonna Tool Co., 231 USPQ 493, 495 (Comm’r Pats. 1983) (“[T]he use of the standardized form is solely for the purpose of printing and data base purposes, not for the limitation of registrant’s rights.”).

    For the record only, examining attorneys will accept disclaimers with additional statements pertaining to reservation of common-law rights, although §6 of the Trademark Act of 1946 states that no disclaimer shall prejudice or affect the applicant’s or registrant’s rights then existing or thereafter arising in the disclaimed matter.  Disclaimers with these additional statements can be entered by examiner’s amendment.  The examining attorney must inform the applicant or attorney who authorizes the amendment that the disclaimer will be printed in the standardized format.

    What if the trademark was COGNITIVE BALLISTIC PREWORKOUT instead of BALLISTIC COGNITIVE PREWORKOUT?  It turns out that in that case, since the two descriptive words are separated by the non-descriptive word BALLISTIC, under TMEP 1213.08(a)(i), each of the “descriptive” words COGNITIVE and PREWORKOUT could be disclaimed separately.

    Where non-adjacent components of a mark, or adjacent components that do not form a grammatically or otherwise unitary expression must be disclaimed, the following format is suggested:

    No claim is made to the exclusive right to use “________” and “________” apart from the mark as shown.

    While the “and” connector is preferred, the USPTO will also accept a statement that “no claim is made to the exclusive right to use “________” or “________” apart from the mark as shown.”

    So, the pointer for trademark applicants is that when considering possible trademarks, it is best to separate possibly descriptive words with non-descriptive words to avoid having to disclaim two (or more) word combinations.  If all things are otherwise equal, you are better off choosing COGNITIVE BALLISTIC PREWORKOUT instead of BALLISTIC COGNITIVE PREWORKOUT.