KB-IP Law Firm

Category: Intellectual Property

  • KB Client Barry Marder and Seinfeld

    KB Client Barry Marder and Seinfeld

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    Congratulations to our client Barry Marder on the collaboration with his friend and co-writer Jerry Seinfeld announced today for Netflix.  It will be a feature-length film entitled Unfrosted about the origins of Pop-Tarts.  Jerry and Barry will be writing with Spike Feresten.  All three wrote on Seinfeld’s Bee Movie film.   Seinfeld famously contributed forewords to the Ted L. Nancy “Letters from a Nut” series of books.  Mr. Nancy is a discrete gentleperson residing in or around Glendale, California, and is often associated with Barry.

    https://deadline.com/2021/06/jerry-seinfeld-netflix-movie-deal-unfrosted-creation-of-pop-tart-directing-starring-cowriter-1234780032/

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  • Flavor Flav and Chuck D Reunite in Public Enemy

    Flavor Flav and Chuck D Reunite in Public Enemy

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    Congratulations to Karish & Bjorgum client Flavor Flav for reuniting with Chuck D in Public Enemy.  It was the sort of long and twisted tale one might expect in a dispute involving two groundbreaking artists, but the result will be worth the wait.

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    LA Times Article

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  • 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.

  • 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.