ROBERT M. ISACKSON
As I write this, we remain in the scourge of the COVID-19 pandemic, although this morning’s news optimistically suggested that the debate should soon turn to “determining how will we define when the pandemic is over?” Even after eighteen months of living in a remote/virtual world, NYIPLA will not let the pandemic get in our way and will actively produce events and programs for our respective association members and contacts.
For example, NYIPLA has now launched and is in the midst of our Intellectual Property Transactions Boot Camp. This program is geared towards junior and mid-level associates, and designed to impart some practical skills from experienced private practice and in-house attorneys. It’s a new concept and addition to our stable of continuing legal education programming offered throughout the year. The Boot Camp also is limited to a cohort of attendees who will, over five two-hour sessions, learn how to identify and navigate key issues in various types of agreements that touch upon patents, data-tech software agreements, license agreements for copyright and trademarks, mergers and acquisitions and due diligence; (see the full program and speaker list here). It’s an interactive and hands on, with frequent mock negotiations. It’s an impressive faculty of fifteen that has been assembled, and NYIPLA is particularly grateful to have the support of in-house counsel from IBM, Canon USA, Daxor Corporation, Eli Lilly & Co., Siemens Healthcare, ViacomCBS, Neilsen, Gilead Sciences, Kite Pharmaceuticals, and U.S. Bank, as well as our outside counsel members who have graciously likewise volunteered. This team of volunteers will not just share but impart their expertise and insight to the next generation of IP transaction attorneys. It’s a sample of the creativity of the NYIPLA member team and of the benefits we provide. As a spoiler alert, in the works is a boot camp for IP Litigation, and maybe more after that.
Later this Fall, we will as usual be putting on a full schedule of CLE events, with the heralded annual “one-day” patent CLE again occurring as a virtual event over four days in November. Our members in the Women in IP, Corporate, PTAB, Litigation, Patent Law, Legislative Action, Amicus Briefs and Trade Secrets Committees are all working hard to put together informative, interesting and timely panels.
Moreover, the Women in IP Law Committee will be facilitating a mentoring program for all members. This opportunity provides meaningful connections among members and an avenue for participants to expand their networks. The Women in IP Law Committee will match participants based on responses to their survey, and ask that each pair connect on their own schedules. The Committee will periodically send prompts/talking points to facilitate further in-depth conversations.
We are also ecstatic to reintroduce the Law Firm Management Committee for active members. It will contribute aspects of law firm management, particularly as they pertain to law firms and practice groups practicing intellectual property.
Our PTAB committee is continuing its monthly CLE/meeting program, and continues to attract PTAB judge attendance and input. With new legislation being proposed for altering the post patent grant review procedures and the America Invents Act, we can expect some lively discussion at these meetings as PTAB related events unfold.
Included in the mix for later this fall is another President’s Forum, which will focus on Privacy issues as they relate to IP matters. In part, we will leverage the work NYIPLA has been doing in support of the Daniel Anderl Judicial Security and Privacy Act. Read NYIPLA's letter in support here. As you may know, the Act came about because of the tragic murder of the New Jersey District Judge Esther Salas’s son Daniel by a disgruntled attorney who was after Judge Salas. It is geared to provide all federal judges with an option to have their Personally Identifiable Information (“PII”) taken down from internet and social media postings. Our Privacy Committee is currently developing a White Paper to support enactment of the legislation, and our Legislative Action Committee has been working New Jersey Senator Menendez, one of the Bill’s co-sponsors, to assist in moving the Bill forward. The PII definition proposed for the Anderl Bill, if it makes its way into a federal statute as we expect, will have some interesting implications for IP issues (as well as Privacy). We intend to explore this intersection with some recognized authorities at our next forum. Details to be announced.
In addition, we hope to schedule some enlightening fireside chats with federal judges, PTO judges, and in-house general counsel to find out what keeps them awake at night.
And, we will again be supporting the New York Intellectual Property Law Education Foundation and its annual Diversity Scholarship Event. The virtual wine tasting event last year was fabulous, so the challenge will be - how will NYIPLEF top that this year? Look for details in your inbox.
Since we’ve all been cooped up at home working remotely for so long, NYIPLA is going to expand our virtual horizons, literally, and work with the San Francisco Intellectual Property Law Association on some joint programming activities. It’s an experiment, the contours and specifics of which have yet to be defined.But we are excited about the cross-fertilization opportunities for our respective association members and contacts, and look to undertake some interesting bi-coastal activities.
As for resuming the in-person activities that has been the mainstay of NYIPLA meetings, social events, and CLE presentations, we continue to watch the state and local health guidelines, and what our members’ firms and companies are doing. We know that the federal courts are having more in court hearings and jury trials, and we hope to follow suit with in-person events and formal openings in the upcoming months. Accordingly, for now, we will continue with our committee meeting and our CLE and most other events happening virtually. We will make decisions about in-person events opportunistically, as long as state and local authorities permit and subject to their requirements.
For now, we are looking toward an in-person Judges’ Dinner, but no promises. There are a number of factors that still have to turn in our favor for that to happen. In the meanwhile, we remain ongoing. Until the next Report.
NYIPLA President's Corner
In This Issue:
NYIPLA Spotlight: Q&A with Steven Purdy and Michele Antis Co-Chairs of Corporate Committee
Q & A with New Board
"Cleveland Indians" to "Cleveland Guardians" - for Better or for Worse?
By: Vrudhi Rajesh Raimugia and Steven W Schlesinger
End of an Era of "No Consequences" for "Made in USA" Fraudsters, as New FTC Labeling Rule Comes into Effect
By: Pallavi Mathur and Suzanne M. Hengl
Notable Trademark Decisions, September 2021
By: Scott Greenberg and Anna Antonova
Moving Up and Moving On
Welcome New Members
What is one issue that the Corporate Committee is focusing on this year?
The Corporate Committee's focus continues to be providing practical content to its members for use in their roles as in-house legal advisors. We try to vary that content from month to month, but one new topic at this year's meetings relates to selecting, and maintaining accountability with, outside counsel. We believe our members' diverse experiences on this and other topics provide for great discussions and sharing of impactful information. This year we are also focusing on growing our committee - we would love to see more in-house counsel getting involved in NYIPLA!
Why did you pursue a career in intellectual property law?
Steven: For the same reason I went to law school after studying engineering in undergrad: to be able to have a career in which I can help solve problems related to diverse topics, particularly innovative technologies. I didn't want to find myself in a career, whether as an engineer or lawyer, that presented no new challenges, and the evolving landscape of IP law really addressed the desire to be able to experience something totally new on a regular basis at work.
Michele: I was attracted to the opportunity to meld my undergraduate engineering studies and IT management consulting experience with practicing law. I was excited by the prospect of a career that afforded a dynamic blend of technology, law, and business.
Do you work with a particular type of intellectual property in your practice?
Steven: At the start of my career, I was almost exclusively focused on patent litigation. Today, though, my job involves all forms of IP and stretches to many other areas of law, as well.
Michele: Over the course of my career, I have been engaged in many areas of IP law - litigation, transactions, strategic counseling, opinions, open source, industry standards, patent pools. In my current role, as lead counsel for global applications, I am more of a tech generalist - my job involves IP, technology, data, and corporate law. In terms of types of IP, my practice has been focused primarily on patents and copyrights.
What do you see as a current challenge facing intellectual property attorneys?
Steven: I believe the uncertainty caused by ambiguous court decisions is a challenged for IP attorneys to turn into practical advice for clients. Overall, though, I believe the devaluation of IP rights in the United States may ultimately affect the value of advice from IP attorneys to clients, as many companies forgo patent protection in the U.S. due to this continued uncertainty.
Michele: I echo Steven in the threat devaluation of IP rights in the US may present to the value of guidance from IP attorneys.
Are there any recent or foreseen changes (in the law or market) that will have an impact on your practice?
Steven: Non-US patentees are overtaking US-based patentees in a trend that is likely irreversible. As IP systems in Europe and Asia become more robust, I expect global IP disputes to be settled more often based on IP rights and litigation in other geographies than in the U.S. When that tipping point occurs, however, is still somewhat uncertain, but we need to be cognizant of and prepared for that shift when it does come so as to be prepared to serve our clients' long-term business strategies.
Michele: Not really given the nature of my current practice.
What is one thing you love to do other than work?
Steven: Travel, especially abroad, and the pandemic has really made me appreciate the experiences I've already had even more. I can't wait to get back on a long haul flight with my family to an extended vacation abroad in a country whose language I will certainly garble. In the meantime, I've been working on my photography skills to better document our trips.
Michele: Spend time outdoors by or on the water - whether walking/hiking, kayaking, singing along or impromptu dancing to a band. Pre-pandemic my immediate answer would have been travel or live music, but things have certainly changed for the moment.
What advice would you give to someone considering a career in intellectual property law?
Steven: Do it. It's fun and rewarding. Don't lose sight of the practical impact of your work, whether on inventors, corporate strategy, or technology shifts. It's easy to get bogged down in your specific role in the process, but the impact is far broader and you should always attempt to understand and appreciate the overall objectives of your clients as you provide advice (i.e., a "success" comes in many different flavors).
Michele: Go for it! IP law is a fun, interesting, challenging, and impactful profession. It is unique in how many different and exciting avenues it presents - areas of practice, firm vs. in-house, variety of clients spanning diverse industries, etc. And you can shape and adjust the specifics as you progress in your career. Regardless of the path you choose, you are bound to enjoy the creativity and innovation which are so present in the field!
Q&A with Steven Purdy and Michele Antis Co-Chairs of NYIPLA’s Corporate Committee
2021 - 2022 New Board Member:
Q&A with David Goldberg
How long have you been a member of the NYIPLA?
I joined the NYIPLA in 2012.
Why did you first join the Association?
I joined the NYIPLA because my firm, Amster, Rothstein & Ebenstein, has a strong commitment to the Association and a strong culture of mentoring, and partners Tony Lo Cicero (ex-President and current Co-Chair of the LAC) and Charley Macedo (ex-Board Member and current Co-Chair of the PTAB Committee) encouraged me to get involved. Their support and the firm’s commitment to pro-bono work are what have made my long-term involvement with the NYIPLA possible.
Has your membership in the Association benefited your practice and, if so, how?
My membership in the Association has helped me develop my skills, learn about legal developments that would not otherwise have been on my radar, and build relationships with attorneys practicing in other firms. As a result, I have become a better, more informed, and more collegial lawyer. My firm has understood this from the beginning, which is why they encourage their associates to become active members of the Association.
With which committees have you been involved during your membership?
I have been a member of the Amicus Briefs Committee, the Trademark Law and Practice Committee, and the Nominating Committee.
How did you end up on the Board?
I was Co-Chair of the Amicus Briefs Committee for two terms, and the Amicus Briefs Committee Board Liaison moved into an Officer position, so I may have been an obvious candidate to be the next Board Liaison for the Amicus Briefs Committee.
Why did you want to be on the Board?
I really love the NYIPLA and think it does valuable work. And although I think the Association has a bright future, we currently face a number of challenges due to the COVID-19 pandemic. I very much want to put my shoulder to the wheel to help ensure the Association continues to thrive despite these challenges.
What is your role on the Board?
I am the Board Liaison for the Amicus Briefs Committee.
Are you active in any other bar associations and, if so, which ones and in what capacity?
I am also active in the International Trademark Association and the New York City and State Bar Associations.
How does your involvement with the NYIPLA compare with your involvement in the other bar associations?
I am a much more involved member of the NYIPLA than of the other professional associations that I belong to. Among the great strengths of our association is the fact that our members are encouraged to step up to the plate and start batting runners in. Our smaller size, relaxed bureaucracy, and collegial membership mean that we really are an association where members are free to participate at whatever level feels comfortable. If, during busy times, you can only participate in monthly committee meetings and CLE presentations, for educational and social purposes, that is fine. But when you have more time and get excited by an issue, there is room for any member to make a proposal for an amicus brief, panel presentation, lobbying initiative, or social get together, and then take the lead in realizing that vision. This level of support, energy, and involvement is something that makes the NYIPLA unique.
What are your goals for your time on the Board, that is, what do you hope to accomplish?
Of course I want to make sure the Amicus Briefs Committee continues to actively voice our concerns and opinions on key IP legal issues before the courts. However, as we are all aware, the Association now faces serious challenges as a result of the COVID-19 pandemic. Building our membership back up to pre-pandemic levels is a key goal to ensuring our future remains bright, and, although all members have a part to play in encouraging friends and colleagues (some of whom may even be ex-members) to get involved, getting back to in-person events as soon as is safely possible will greatly help us to achieve this goal. I was very impressed and inspired by Colman Regan’s ability to put together a successful virtual Judge’s Dinner last year, which I think was a pivotal moment in turning the tide, and hope that, under Rob Isackson’s leadership this year, we will once again be able to hold the Judge’s Dinner in-person.
Over the longer term, what do you see as the future of the Association?
The Association’s members are highly intelligent, motivated, and committed to the Association’s success. Although we are currently navigating through ‘interesting times,’ because of our member’s determination and our unique historical role, the NYIPLA has a very bright future.
Is there anything else that you wish to share or comment upon?
About 10 years ago, I took a rafting trip down the American River in California. It was faced-paced, dangerous, thrilling, scary, and something we got though by working together. I think about that a lot these days!
After the National Football League’s (“NFL”) Washington Redskins announced their decision to change their name, the Cleveland Indians Baseball Company LLC (“Cleveland Indians”) took a similar route by changing the name of their baseball team from the “Cleveland Indians” to the “Cleveland Guardians” on July 23, 2021. This change has recently undergone public scrutiny, not only for its political nature, but also for its intellectual property implications. The new name adopted by the Cleveland Indians is identical to that of a roller derby team in Cleveland owned by Guardians Roller Derby (doing business as the Cleveland Guardians). The Guardians Roller Derby team may not be as famous or reputed as the Cleveland Indians, but the Guardians Roller Derby adopted the name “Cleveland Guardians” in 2013, well before the Cleveland Indians. Notwithstanding the trademark applications and registration status of the marks of both the teams, per common law, the Guardians Roller Derby would have superior rights based on prior use and honesty in adoption. Accordingly, the Cleveland Indians may not be eligible to claim either name, at least as common law rights are concerned.
One may rightly assume that the Cleveland Indians exerted great effort in the process of selection, finalization, and adoption of their renowned baseball team’s new name after more than a hundred years of existence. The Major League Baseball league’s (“MLB”) website also claimed that when selecting a new name, the Cleveland Indians had undergone an intense process involving around 140 hours of interviews with fans, community leaders and front office personnel; surveyed more than 40,000 fans; and had 4,000 fans sign up to participate in research via a “team name” website. Presumably, the Cleveland Indians would have sought at least some legal assistance before finalizing and announcing their new name. Even a preliminary search on the Trademark Electronic Search System (“TESS”) of the United States Patent and Trademark Office (“USPTO”) and a basic google search would have shown a mark in existence that is engaged in similar sports-related activities. However, due to reasons best known to the Cleveland Indians and their attorneys, they decided to proceed with the “Cleveland Guardians” name. Perhaps, the Cleveland Indians did not consider the Guardians Roller Derby popular enough to acquire trademark rights in their existing mark, or they assumed no threat from the Guardians Roller Derby’s mark.
2. Trademark Applications filed with the USPTO
As of now, if one searches the words “Cleveland Guardians” in the TESS, one would find five marks with the name “Cleveland Guardians,” wherein two marks are filed by Cleveland Indians, one mark by Guardians Roller Derby, and two marks by Bryant Street Sports LLC (either directly or through its managing partner). Apart from that, the Cleveland Indians have also filed for other marks consisting of “Cleveland” and “Guardians.”
A. Guardians Roller Derby
The Guardians Roller Derby filed two trademark applications with the USPTO on July 27, 2021 (U.S. Serial No. 90850953 & 90850972), under § 1(a) based on use in commerce. In the application, the Guardians Roller Derby has claimed rights as early as 2013 concerning Class 16 goods (including bumper stickers) and 2014 in relation to Class 25 goods (including Jerseys, tank tops, shorts, socks, t-shirts; clothing; footwear; headwear). As the Guardians Roller Derby has filed specimen of use supporting the use in commerce claimed, they are likely to attain federal rights in the trademark with effect from the user date claimed, provided the USPTO approves the publication of the mark and no third party files oppositions or cancellations later on.
B. Cleveland Indians Baseball Company LLC
The Cleveland Indians recently filed eight trademark applications regarding their name and logo change, including two applications for the mark “Cleveland Guardians” (U.S. Serial No. 90844546 & 90844557), one application for the mark “Cleveland” (U.S. Serial No. 90844550), three applications for the mark “Guardians” (U.S. Serial No. 90844551, 90844544 & 90844548), one application for the stylized letter “G” (U.S. Serial No. 90844542), and one application for the stylized letter “C” (U.S. Serial No. 90844543), with the intent to secure their federal trademark rights with the USPTO in July 2021. What is strange about these two applications, is that all of these are foreign trademark applications filed in accordance with the provisions of § 44(d) of the Lanham Act with the base application filed in Mauritius. The priority dates claimed in these applications are as early as April 7, 2021, in some of the above mentioned applications. One could predict that the strategy of the Cleveland Indians would have been to secure a name with an earlier date to establish trademark rights effectively from the priority date, without capturing much public attention on the name change before their scheduled announcement. However, such a move might not have been as beneficial to their trademark rights in the United States because of their non-use in the jurisdiction before the announcement of the change in name on July 23, 2021. Additionally, the trademark application has been filed under § 1(b) on the basis of the applicant’s bona fide intention to use the mark in commerce for the identified goods or services (as opposed to § 1(a) based on use in commerce, which affords stronger protection of a mark). Evidently, and solely on the basis of trademark applications of the two parties, the Guardians Roller Derby’s mark would have superior trademark rights under the statute.
C. Bryant Street Sports LLC
Apart from the two major parties in the course of seeking federal registration at the USPTO for the name “Cleveland Guardians,” there is one entity that attempted to take advantage of the fame and reputation of both sports teams. Bryant Street Sports LLC, a Delaware-based business, directly or through its managing partner, filed two trademark applications on July 14, 2020 and December 15, 2020 (U.S. Serial No. 90052176 & 90383728), wherein the first application was opposed by Cleveland Indians. Later on, both the marks were abandoned by Bryant Street Sports LLC, effectively invalidating them. Interestingly, Bryant Street Sports LLC applied for the mark in 2020, much before Cleveland Indians adopted their mark. The opposition was filed in April 2021 (after the date of priority foreign applications filed in Mauritius) on the basis of the marks “Cleveland,” “Cleveland Indians,” “Cleveland Indians Charities,” “Cleveland Blues,” “Cleveland Naps” and “Cleveland Bronchos” in the name of Cleveland Indians but not the “Cleveland Guardians” mark.
These steps showcase the proactive approach of the Cleveland Indians’ intellectual property law team. Accordingly, it seems unlikely that the Cleveland Indians would have no knowledge of the existence of the Guardians Roller Derby existing in Cleveland for more than seven years since 2013 (as claimed in their § 1(a) filings). Perhaps, the Cleveland Indians do not consider the Guardians Roller Derby a threat to their mark or do not opine that they would be able to compete with the Cleveland Indians during their course of business. A possible defense that the Cleveland Indians could raise against the likelihood of confusion claim would be that both the teams are engaged in different sports, namely baseball and roller derby and that there is no likelihood of confusion. However, the Trademark Manual of Examining Procedure, July 2021 published by the USPTO suggests that “In a §2(d) determination, the goods and/or services do not have to be identical or even competitive in order to find that there is a likelihood of confusion. In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010); In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1368 (TTAB 2009). The issue is not whether the goods and/or services will be confused with each other, but rather whether the public will be confused as to their source. See Recot Inc. v. M.C. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000).” Eventually, both the teams may end up in similar ancillary business activities for the promotion of their sports teams including merchandise activities, media, advertising, etc., competing with each other in the same market.
3. Similar concepts of the logos
Although this may not be a major issue currently, the fact that both Cleveland Indians and Guardians Roller Derby have applied for logo marks, containing similar designs that include helmets and wings inspired by the Statue of the Guardians of Traffic, there could be a question of a possible association of marks of both the teams by the relevant public. Even though the logos are quite different as a whole, they contain similar concepts in addition to a multitude of factors leaning towards the association of the two marks, and there may be an even stronger scope of confusion and deception if merchandise by both the teams would be sold in the same retail outlet in the same jurisdiction. The logos of both the teams are displayed below for reference:
4. Domain name
The domain name https://www.clevelandguardians.com/ has been registered by the Guardians Roller Derby since the year 2014. Presumptively, the Cleveland Indians would have come across the website in their process of scavenging for a suitable new name for their baseball team. On discovering the existence of the same, the Cleveland Indians would have two options: (1) to buy the domain name https://www.clevelandguardians.com/ from the Guardians Roller Derby (if they agree to sell it in the first place) or (2) to buy a domain name that is not deceptively similar to the Cleveland Guardians. Currently, it does not seem that the Guardians Roller Derby would readily sell their domain name, ruling out the first option. Further, the second option would not be practically feasible. It would mean that the Cleveland Indians would have to purchase a domain name that is substantially different from their newly adopted name, thereby failing to establish brand recognition of their mark on the internet. If the Cleveland Indians risk using a domain name similar to that of the Guardians Roller Derby, the Guardians Roller Derby might file a complaint through the route of the Uniform Domain Name Dispute Resolution Policy (UDRP) or The Anticybersquatting Consumer Protection Act (ACPA).
5. Use in commerce and Territoriality
If we consider no federal claims made by the Cleveland Indians and the Guardians Roller Derby, the parties would still have common law rights in the territory where the mark has been used. Purely from the use in commerce and territoriality standpoint, the Guardians Roller Derby has superior rights in the territory of Cleveland. Further, if the federal trademark applications are opposed by either party in the future, it seems that the Guardians Roller Derby would have a better footing on account of their application being a § 1(a) filing based on use in commerce as opposed to that of the Cleveland Indians with a § 1(b) filing based on intent to use in commerce.
6. Likelihood of confusion & reverse confusion
Considering the eight-factor test used to evaluate the likelihood of confusion in the sixth circuit, namely: (1) strength of the plaintiff’s mark; (2) relatedness of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) likely degree of purchaser care; (7) defendant’s intent in selecting the marks; and (8) likelihood of expansion of the product lines, it could be observed that there are great chances of the likelihood of confusion of the source of the products sold by either of the parties. These factors may weigh in favor of the Guardians Roller Derby should they pursue a claim of passing off or infringement against the Guardian Indians.
Alternatively, if the Guardians Roller Derby team takes no step to enforce their trademark rights against the Cleveland Indians and instead allow them to establish their mark in the market, the Cleveland Indians might end up penetrating the market, becoming more popular than the Guardians Roller Derby’s superior mark, leading to a possibility of reverse confusion.
Considering the above factors, it would be difficult to predict whether either party would take any step to enforce their rights. As the marks of both the parties are yet to be examined by the USPTO, the easiest and most obvious action by either party would be to file third party opposition in case the mark is accepted and published by the USPTO under the provisions of § 1063 of the Lanham Act, or submit for consideration for inclusion in the record of an application evidence relevant to grounds for refusal of registration at the examination stage per the latest provisions of Trademark Modernization Act § 223. Because both the marks are in the public eye and under scrutiny by various stakeholders, including sports fans, media personnel, and even lawyers, any failure to take necessary steps within a reasonable amount of time would presumably result in submission by both parties. Intellectual property and sports enthusiasts would have to wait and watch to find out the fate of both the marks.
“Cleveland Indians” to “Cleveland Guardians” - for Better or for Worse
By: Vrudhi Rajesh Raimugia and Steven W Schlesinger
https://twitter.com/Indians/status/1418565355472101378 (last visited on September 11, 2021).
https://www.mlb.com/indians/fans/cleteamname (last visited on September 11, 2021).
USPTO, TSDR Case Viewer (“TSDR”), Case ID 90850953, Status, USPTO.GOV, http://tsdr.uspto.gov (last visited on September 11, 2021).
USPTO, TSDR Case Viewer (“TSDR”), Case ID 90850972, Status, USPTO.GOV, http://tsdr.uspto.gov (last visited on September 11, 2021).
USPTO, TSDR Case Viewer (“TSDR”), Case ID 90844546, Status, USPTO.GOV, http://tsdr.uspto.gov (last visited on September 11, 2021).
USPTO, TSDR Case Viewer (“TSDR”), Case ID 90844557, Status, USPTO.GOV, http://tsdr.uspto.gov (last visited on September 11, 2021).
USPTO, TSDR Case Viewer (“TSDR”), Case ID 90844550, Status, USPTO.GOV, http://tsdr.uspto.gov (last visited on September 11, 2021).
USPTO, TSDR Case Viewer (“TSDR”), Case ID 90844551, Status, USPTO.GOV, http://tsdr.uspto.gov (last visited on September 11, 2021).
USPTO, TSDR Case Viewer (“TSDR”), Case ID 90844544, Status, USPTO.GOV, http://tsdr.uspto.gov (last visited on September 11, 2021).
USPTO, TSDR Case Viewer (“TSDR”), Case ID 90844548, Status, USPTO.GOV, http://tsdr.uspto.gov (last visited on September 11, 2021).
USPTO, TSDR Case Viewer (“TSDR”), Case ID 90844542, Status, USPTO.GOV, http://tsdr.uspto.gov (last visited on September 11, 2021).
USPTO, TSDR Case Viewer (“TSDR”), Case ID 90844543, Status, USPTO.GOV, http://tsdr.uspto.gov (last visited on September 11, 2021).
15 U.S.C.A. § 1126.
USPTO, TSDR Case Viewer (“TSDR”), Case ID 90052176, Status, USPTO.GOV, http://tsdr.uspto.gov (last visited on September 11, 2021).
USPTO, TSDR Case Viewer (“TSDR”), Case ID 90383728, Status, USPTO.GOV, http://tsdr.uspto.gov (last visited on September 11, 2021).
1207.01(a)(i) Goods or Services Need Not Be Identical, TMEP2021JULY 1207.01(a)(i).
https://www.godaddy.com/whois/results.aspx?checkAvail=1&domain=https%3A%2F%2Fwww.clevelandguardians.com%2F (last visited on September 11, 2021).
Frisch’s Restaurants, Inc. v. Elby’s Big Boy of Steubenville, Inc., 670 F.2d 642, 648 (6th Cir. 1982).
15 U.S.C.A. § 1063.
§ 8:60. Trademark Modernization Act of 2020 or TM Act of 2020, 8 Callmann on Unfair Comp., Tr. & Mono. Appendix 8 § 8:60 (4th Ed.).
End of an Era of “No Consequences” for “Made in USA” Fraudsters, as New FTC Labelling Rule Comes into Effect
By: Pallavi Mathur and Suzanne M. Hengl
In a win for consumers and small businesses, a new labelling rule enables the Federal Trade Commission (“FTC”) to seek – for the first time – civil penalties for false, unqualified claims on labels stating that a product originated in the United States. The Made in USA “MUSA” Labeling Rule went into effect on August 13, 2021 and codifies the FTC’s long-standing “all or virtually all standard” for products with labels indicating, without qualification, that a particular good or part was made in the United States. By formally codifying the MUSA Rule, the FTC may now pursue a broader set of remedies than in years past, including the ability to seek redress, damages, and civil penalties of up to $43,280 per violation. The Rule aims to shelter consumers from misleading labeling practices and sanction fraudulent imitators to the benefit of small businesses relying on the MUSA label. The MUSA Rule’s adoption signals a “long overdue” shift to the labelling regulatory landscape, shaped by decades of weak enforcement practices, in which, as former FTC Commissioner Rohit Chopra notes, “violators faced essentially no consequences whatsoever.” This shift fits squarely into the Biden Administration’s reinvigoration of the FTC’s rulemaking authority to promote competition in the American economy. Notably, this enhancement in the FTC’s enforcement authority does not translate to increased obligations for manufacturers and sellers.
Key Provisions of the Made in USA Labeling Rule
Under the Made in USA Labeling Rule, and in line with the FTC’s long-standing guidance, marketers are prohibited from including unqualified MUSA claims on labels unless:
Final assembly or processing of the product occurs in the United States;
All significant processing for the product occurs in the United States; and
All or virtually all of the product's ingredients or components are made and sourced in the United States.
Manufacturers and sellers should note that the MUSA Rule applies only to unqualified “Made in USA” labeling claims, express or implied. A label claiming that a product is “60% U.S. content” or “assembled in USA from Italian Leather and Mexican Frame” is considered a qualified labeling claim and is thus not controlled by the provisions of the MUSA Rule.
And for the purposes of the Rule, “label” encompasses both physical and digital labels, including, for example, labels delivered in both print and electronic forms affixed to promotional materials or mail order catalogs. An entity that does not comply with these provisions risks facing the newly-authorized enforcement powers of the FTC – namely, the Commission’s ability to levy a fine up to $43,280 per violation, and seek redress and damages.
The Commission also took care to note that the new Rule does not supersede, alter, or affectany other federal statute or regulation relating to country-of-origin labels. This followed considerable interest from farmers, ranchers, and others in the meat and agricultural industry during the rulemaking process, who submitted comments arguing in favor of stricter standards. Immediately following the final vote on the MUSA Rule, Secretary Tom Vilsack of the U.S. Department of Agriculture announced the initiation of a “top-to-bottom review of the ‘Product of USA’ label that will, among other things, help us to determine what that label means to consumers.”
The Move Away from Decades of Lax MUSA Claim Enforcement by the FTC
Though the adoption of the MUSA Rule is relatively recent, the publication of its core provisions, including the “all or virtually all standard,” occurred in 1997, when the FTC released its informal 1997 Enforcement Policy Statement on U.S. Origin Claims. So why, then, the protracted delay in authorizing the FTC’s power to seek civil remedies for violations? As former Commissioner Chopra notes, “[f]or decades, there has been a bipartisan consensus among Commissioners that Made in USA fraud should not be penalized.” In fact, in 1994, Congress enacted legislation authorizing the FTC to seek penalties and other remedies for MUSA fraud, but only after formally codifying a rule. The FTC neither proposed nor enacted such a formally-codified rule.As a result, the past quarter century included a “highly permissive” MUSA fraud policy, “where violators faced essentially no consequences whatsoever,” even in cases of blatant MUSA abuse.
In recent years, this highly permissive fraud policy began to change course, even before the adoption of the MUSA Rule. Though the FTC was previously unauthorized to levy civil penalties on violators directly through a formally-codified rule, the Commission, under Chopra’s leadership, relied on its general authority established by Section 5 of the FTC Act to bring a few high-profile enforcement actions against MUSA violators. For example, on December 22, 2020, the FTC announced its securing of the highest monetary judgment in history for a MUSA case. Under the terms of the settlement, Chemence, Inc., a superglue manufacturer, was ordered to pay $1.2 million to the FTC for including unqualified “Made in USA” claims on pre-labeled glues, despite foreign materials accounting for over 80% of the materials costs and over 50% of the overall manufacturing costs. Nevertheless, former Commissioner Chopra made clear the need for imposing civil penalties for first-time offenses through the codification of a formal MUSA Rule in order to ensure that the FTC “deter wrongful conduct in the first instance.”
FTC Chair Lina Khan, nominated by President Biden and sworn in on June 15, 2021, joined former Commissioner Chopra in voting for the adoption of the MUSA Rule. FTC Chair Khan, who previously served as a legal advisor to Chopra, is expected to continue to advance aggressive FTC enforcement policies to promote economic competition and increased consumer protection.
Key Takeaways for Businesses
The FTC’s new Made in USA Labeling Rule imposes no additional obligations on market participants, given that it codifies the Commission’s long-standing enforcement policy with respect to U.S.-origin claims. Further, the MUSA Rule does not supersede any other federal statute or regulation relating to country-of-origin labels, such as “Product of USA” labels regulated by the U.S. Department of Agriculture.Even with the apparent lack of increased obligations and expansive labeling regulation changes, businesses should recognize that it is now more critical than ever that U.S.-origin marketing claims comply with the MUSA Rule – or risk facing the newly-authorized enforcement powers of the FTC, and a hefty fine up to $43,280 per violation.
Market participants with unqualified “Made in USA” labeling claims should verify the following to ensure their compliance with the MUSA Rule: 1) final assembly or processing of the product occurs in the United States; 2) all significant processing for the product occurs in the United States; and 3) all or virtually all of the product's ingredients or components are made and sourced in the United States.
FTC Issues Rule to Deter Rampant Made in USA Fraud, FTC (July 1, 2021), https://www.ftc.gov/news-events/press-releases/2021/07/ftc-issues-rule-deter-rampant-made-usa-fraud.
Made in USA Labeling Rule, 16 C.F.R. § 323.2.
FTC Issues Rule to Deter Rampant Made in USA Fraud, supra note 1.
Id; Statement of Commissioner Rohit Chopra Joined by Chair Lina Khan and Commissioner Rebecca Kelly Slaughter Regarding the Adoption of the Final Made in USA Rule, FTC 1, 1 (July 1, 2021). https://www.ftc.gov/system/files/documents/public_statements/1591518/final_chopra_statement_regarding_the_adoption_of_the_final
Rohit Chopra served as FTC Commissioner from May 2018 to October 2021 and oversaw the proposal and adoption of the MUSA Rule. After stepping down as FTC Commissioner, Chopra assumed the role of Director of the Consumer Financial Protection Bureau. See Rohit Chopra, Former Commissioner: Biography, FTC, https://www.ftc.gov/about-ftc/biographies/rohit-chopra;see alsoRohit Chopra, Director, CFPB, https://www.consumerfinance.gov/about-us/the-bureau/about-director/.
Statement of Commissioner Rohit Chopra Joined by Chair Lina Khan and Commissioner Rebecca Kelly Slaughter Regarding the Adoption of the Final Made in USA Rule, supra note 4, at 1.
Exec. Order on Promoting Competition in the American Economy No. 14036 (July 9, 2021), https://www.whitehouse.gov/briefing-room/presidential-actions/2021/07/09/executive-order-on-promoting-competition-in-the-american-
Statement of Commissioner Rohit Chopra Joined by Chair Lina Khan and Commissioner Rebecca Kelly Slaughter Regarding the Adoption of the Final Made in USA Rule, supra note 4, at 1.
“Made in USA” and Other U.S. Origin Claims, 62 Fed. Reg. 63756 (Dec. 2, 1997).
Made in USA Labeling Rule, 16 C.F.R. § 323.2.
Made in USA Labeling Rule, 16 C.F.R. § 323.1.
Complying with the Made in USA Standard, FTC 1, 9 (Dec. 1998).
Made in USA Labeling Rule, 86 Fed. Reg. 37022 (July 14, 2021).
FTC Issues Rule to Deter Rampant Made in USA Fraud, supra note 1.
Made in USA Labeling Rule, 16 C.F.R. § 323.5..
Statement of Commissioner Rohit Chopra Joined by Chair Lina Khan and Commissioner Rebecca Kelly Slaughter Regarding the Adoption of the Final Made in USA Rule, supra note 4, at 2.
USDA Announces Efforts to Promote Transparency in Product of the USA Labeling, USDA (July 1, 2021), https://www.usda.gov/media/press-releases/2021/07/01/usda-announces-efforts-promote-transparency-product-usa-labeling.
Under the “all or virtually all” standard, a product must be all or virtually all made in the United States in order to substantiate an unqualified MUSA claim.See“Enforcement Policy Statement on U.S. Origin Claims, FTC (Dec. 1, 1997), https://www.ftc.gov/public-statements/1997/12/enforcement-policy-statement-us-origin-claims;see also“Made in USA” and Other U.S. Origin Claims, supra note 9.
Statement of Commissioner Rohit Chopra Joined by Chair Lina Khan and Commissioner Rebecca Kelly Slaughter Regarding the Adoption of the Final Made in USA Rule, supra note 4, at 1.
Under Section 5 of the FTC Act, the FTC may “prosecute any inquiry necessary to its duties in any part of the United States.”A Brief Overview of the Federal Trade Commission's Investigative, Law Enforcement, and Rulemaking Authority, FTC (last modified May 2021), https://www.ftc.gov/about-ftc/what-we-do/enforcement-authority.See also FTC Act § 3, 15 U.S.C. § 43.
FTC Order Stops the Manufacturer of Superglues, and Company President, from Again Marketing Products with Misleading ‘Made in USA’ Claims, FTC (Dec. 22, 2020), https://www.ftc.gov/news-events/press-releases/2020/12/ftc-order-stops-manufacturer-superglues-company-president-again.
Rohit Chopra,Activating Civil Penalties for Made in USA Fraud, FTC 1, 1 (April 17, 2019), https://www.ftc.gov/system/files/documents/public_statements/1514808/chopra_-_activating_civil_penalties_for_made_in_usa_fraud
Lina M. Khan, Chair, FTC, https://www.ftc.gov/about-ftc/biographies/lina-m-khan; Statement of Commissioner Rohit Chopra Joined by Chair Lina Khan and Commissioner Rebecca Kelly Slaughter Regarding the Adoption of the Final Made in USA Rule, supra note 4, at 1.
Lina M. Khan, Chair, FTC, supra note 26.
Made in USA Labeling Rule, 16 C.F.R. § 323.2.
Notable Trademark Decisions, September 2021
By: Scott Greenberg and Anna Antonova
TTAB Upholds Fraud Clam Based On Intentional Misrepresentation of Ownership
In 2005, William Shen applied for a US trademark registration for the mark FUJIIRYOKI in connection with massage chairs. The registration issued in 2007, and soon after issuance Shen assigned the registration to American Crocodile International Group, Inc. (“ACIGI”), a US company of which Shen was CEO. The FUJIIRYOKI-branded chairs were manufactured in Japan by the Petitioner, a Japanese company named Fuji Medical Instruments Mfg. Co., Ltd. (“Fuji Medical”), which had been selling the FUJIIRYOKI chairs in the US since 1987. ACIGI had become one of the US distributors of the chairs in 2003, and the exclusive US distributor in 2005. When Fuji Medical petitioned to cancel the registration in 2015, more than five years after issuance of the registration, the potential ground for cancellation that the registration was void ab initio because the registrant was not the owner of the mark would have been time-barred. However, Fuji Medical asserted the claim of fraud, which can be brought at any time during the life of a registration. In a precedential decision, the Trademark Trial and Appeal Board granted cancellation, holding that Shen, the original registrant, had made knowingly false and material representations of fact in the application with intent to deceive the USPTO, specifically, the representations that Shen was the owner of the mark and that no other entity had the right to use the mark in commerce. Fuji Medical Instruments Mfg. Co., Ltd. v. American Crocodile International Group, Inc., 2021 U.S.P.Q.2d 831 (TTAB July 28, 2021).
Entitlement To a Statutory Cause of Action
The Board held that Fuji Medical sufficiently established its entitlement to bring a statutory cause of action (formerly known in Board jurisprudence as “standing”) by proving that (a) it was the manufacturer of the FUJIIRYOKI-branded massage chairs and shipped its chairs to ACIGI for sale in the US, and (b) it had filed its own US application to register the mark (which was suspended pending the outcome of the cancellation proceeding). Id. at *11.
Requirements for Proving A Fraud Claim
The Board noted that fraud in procuring or maintaining a trademark registration occurs when an applicant for registration, or a registrant in a post-registration setting, knowingly makes a false, material representation of fact in connection with an application to register or a post registration document, with the intent of obtaining or maintaining a registration to which it is otherwise not entitled. Id. at *15 (citing, inter alia,In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938, 1939-40 (Fed. Cir. 2009). A party alleging fraud in the procurement or maintenance of a registration bears the heavy burden of proving fraud with clear and convincing evidence. Indeed, "the very nature of the charge of fraud requires that it be proven 'to the hilt' with clear and convincing evidence. There is no room for speculation, inference or surmise and, obviously, any doubt must be resolved against the charging party." Id. at *16 (quoting Smith Int'l v. Olin Corp., 209 USPQ1033, 1044 (TTAB 1981)).
The Board further noted that it will not find fraud if the evidence shows that a false representation was made with a reasonable and honest belief that it was true, rather than an intent to mislead the USPTO into issuing a registration to which the applicant was not otherwise entitled. Therefore, intent to deceive is an indispensable element of the analysis in a fraud case. Id.
Registrant’s False and Material Representations
The Board held that the statements in the declaration supporting the application that the Applicant William Shen was the owner of the mark and that he was not aware of anyone else who has a right to use the mark in commerce were false and material. They were material because only the owner of a mark is entitled to apply to register the mark. They were false because (a) there is a rebuttable presumption that a foreign manufacturer and not its US distributor is the owner of a mark used on the goods (even in the case of an exclusive US distributor such as Shen’s company ACIGI), and (b) in this case ACIGI has not presented evidence of any factors that would overcome the presumption that the manufacturer Fuji Medical, and not Shen or his company ACIGI, was the owner of the mark. Id. at *23-25. In particular, the Board found that:
[Fuji Medical] created the FUJIIRYOKI mark and applied it to the goods, as well as to documentation, packaging and promotional materials sold with the goods. [Fuji Medical] manufactured the goods and created new models as needed. In advertising, [Fuji Medical] was routinely represented to consumers as the source of the goods. Indeed, advertising for the goods often touted [Fuji Medical’s] history, dating back to the invention of the first massage chair in 1954. Id. at *20.
Moreover, the Board held that the applicant Shen committed an additional false and material representation in the application because the specimen of use, a display banner associated with the goods, stated that ACIGI was the “manufacturer” of the chairs as well as their exclusive distributor.This misrepresentation was material because, had the Examiner known that neither Shen nor his company ACIGI were the manufacturer of the goods, then, pursuant to Section 1201.06(a) of the Trademark Manual of Examining Procedure, the Examiner would have been required to refuse registration due to the applicant’s lack of ownership of the mark.Such refusal could only have been avoided by submission of a document establishing the foreign manufacturer’s consent to US registration by the US distributor and/or the manufacturer’s acknowledgement that the US distributor owns the US rights in the mark, neither of which was submitted by Shen in the application. Id. at *24 and *26-27.
Registrant’s Intent To Deceive
The Board noted that, in order to succeed on a claim of fraudulent registration, the challenging party must prove by clear and convincing evidence that the applicant made false statements with the intent to deceive the USPTO. Moreover, “because direct evidence of deceptive intent is rarely available, such intent can be inferred from indirect and circumstantial evidence. But such evidence must still be clear and convincing, and inferences drawn from lesser evidence cannot satisfy the deceptive intent requirement.” Id. at *27-28 (quoting Bose, 91 USPQ2d at 1941).
In the present case, the Board held that the evidence of record, both direct and circumstantial, established clearly and convincingly that Shen knowingly made the false statements in his application with intent to deceive, and that Shen’s testimony denying any intentional deception was not credible due to Shen’scontradictions, inconsistencies, and indefiniteness. Id. at *31-32.
The knowing and intentional false statements essentially consisted of the statements in the declaration supporting the application that Shen believed himself to be the owner of the mark and that to the best of his knowledge no other entity had the right to use the mark in commerce.The fact that the declaration was signed by Shen’s attorney did not relieve Shen of his duty to tell the truth and Shen, as applicant, was to be held accountable for any false statements made in the declaration. Id. at *32.
The evidence of Shen’s awareness that he was not the owner of the mark in the US included three emails exchanged between ACIGI and Fuji Medical prior to filing the application.The first email, sent by ACIGI’s attorney at Shen’s request on April 15, 2005, requested Fuji Medical’s permission for ACIGI to use the FUJIIRYOKI mark in promotion of the massage chairs in the US. The Board held that this request for permission to use the mark constituted an admission that neither Shen nor ACIGI was the owner of the mark. Id. at *33.
The second email was sent by Fuji Medical to Shen on April 21, 2005 instructing Shen and ACIGI to stop using the designation “FUJIIRYOKI USA” on the ACIGI website. The Board found that this contradicted any ownership claim by Shen or ACIGI with regard to FUJIIRYOKI. Id. at *34.
In the third email, dated September 8, 2005, Shen asked Fuji Medical for permission to place the FUJIIRYOKI mark on gifts and t-shirts to be distributed at the 2006 Consumer Electronics Show. The Board found this request to be an admission that neither Shen nor ACIGI owned the mark in the US, and contradictory of Shen’s claim in the application, filed less than two months later, that he believed himself to be the owner of the mark. Id. at *35.
In addition to the three emails, the Board found Shen’s failure to notify Fuji Medical when he was filing the application or when the registration issued constituted “concealment” which further evidenced that Shen intentionally misrepresented his ownership of the mark to the USPTO and was not acting from an honest misunderstanding or mere inadvertence. Id. at *36.
Regarding the Board’s finding that Shen’s testimony in the proceeding was not credible due to contradictions, inconsistencies, and indefiniteness, the specific examples noted by the Board included the following:
When asked who owns ACIGI, of which he is CEO, Shen was “evasive. He alternately implied that his wife owned ACIGI, they shared it 50/50 because they were married, and, finally, he simply wasn't very sure who owned ACIGI.” Id. at *29.
Shen’s testimony declaration in the cancellation proceeding included the following statement regarding an agreement signed by ACIGI and Fuji Medical in November 2009, two years after the registration issued:
[T]he parties entered into a written agreement wherein the parties agreed ACIGI would retain ownership of the trademark FUJIIRYOKI for massage chairs. The November 21, 2009 agreement in paragraph 5 states, "Fuji Medical Instrument Mfg. Ltd. agrees ACIGI to own the 'Fujiiryoki' trademark", and which confirms in writing the validity of the mark and ACIGI's ownership of the FUJIIRYOKI mark for massage chairs in the US.
The Board noted that Shen’s above-quoted statement conspicuously omits that paragraph 5 was amended prior to signature by adding the wording "in the U.S.A. for the time being", which the Board found to indicate that the agreement was “a temporary business arrangement by the parties to avoid further conflict over ownership.” The Board therefore found that Shen’s statement was a “gross misstatement” of the 2009 agreement. The Board further noted the inconsistency of Shen’s explanation for this misstatement. Shen claimed he did not understand the meaning of "for the time being" because his "level of English is limited[.]" However, he later testified that he "read[s] English very well." Id. at *30.
The Board further found that Shen “put forth multiple unsupported theories explaining why he was entitled to register the FUJIIRYOKI mark. For example, Shen said he was given written permission to register the mark, but was unable to produce any written evidence; he said he was given verbal permission to register the mark, but was contradicted by two of [Fuji Medical’s] witnesses; and he said [Fuji Medical] had abandoned the mark, even though [ACIGI] was actively selling[Fuji Medical’s] goods on [Fuji Medical’s] behalf at the time Shen filed the FUJIIRYOKI trademark application.” Id. at *31.
The Board therefore granted the petition to cancel on the ground of fraud. Fuji Medical Instruments Mfg. Co., Ltd. v. American Crocodile International Group, Inc., 2021 U.S.P.Q.2d 831 (TTAB July 28, 2021) (precedential). [SG]
Neither Res Judicata Nor Collateral Estoppel Precludes a Party from Asserting in a Subsequent TTAB Proceeding an Alternative Ground for Cancellation Which Was not a Basis for the Board’s Prior Decision
The Board’s decision in Valvoline Licensing & Intellectual Property LLC v. Sunpoint International Group USA Corp.addresses the preclusive effect of an earlier TTAB judgment on a subsequent dispute involving the same parties and trademarks.
Sunpoint International Group (Sunpoint) had a registration for the standard character mark MAXVOLINE for “automobile lubricants.” Opposer Valvoline Licensing & Intellectual Propety LLC (Valvoline) owns the marks VALVOLINE, MAX LIFE, and MAXLIFE, for “automotive maintenance services, lubricants for automobiles, antifreeze, transmission fluids, and other automotive products.”Valvoline Licensing & Intellectual Property LLC v. Sunpoint International Group USA Corp., 2021 U.S.P.Q.2d 785, *2-3 (TTAB 2021).
In an earlier proceeding, Valvoline and its predecessor-in-interest sought to cancel Sunpoint’s registrations for MAXVOLINE on various grounds, including nonuse and likelihood of confusion.Id.at *4-5. In that proceeding, the Board granted Valvoline’s petition to cancel Sunpoint’s registration because Sunpoint failed to use its marks at the time it filed its statement of use. Id.at *5. Thus, it issued a decision on the merits solely on the claim of nonuse.
Although the Board addressed Valvoline’s likelihood of confusion claim in the cancellation proceeding, it explicitly stated that judgement is not entered on that ground.Id.However, the Board noted that Valvoline “had not carried [its] burden to establish by a preponderance of the evidence that Applicant’s MAXVOLINE marks are likely to cause consumer confusion with [Sunpoint’s] marks VALVOLINE and MAX LIFE.” Id.
Sunpoint then applied to register the mark again, and Valvoline opposed registration, this time, on the sole ground of likelihood of confusion based on Valvoline’s prior use and registration of the marks VALVOLINE, MAX LIFE, and MAXLIFE. Id. at *2-3. Notably, Valvoline relied on the same registrations in this opposition as it did in the prior cancellation.Id.at *12-13. It argued that Sunpoint’s mark MAXVOLINE is a term formed by conjoining a portion of Valvoline’s MAX LIFE and VALVOLINE marks and is confusingly similar to Valvoline’s marks.” Id. at *3.
Cross Motions for Summary Judgment on Res Judicata and Collateral Estoppel
Sunpoint argued that Valvoline’s likelihood of confusion claim in the current opposition proceeding is barred by res judicata and collateral estoppel, based on the prior cancellation proceeding. At issue was whether a party can appeal an outcome of an earlier proceeding if it prevailed in that earlier proceeding but on a different ground.
If a party cannot appeal the outcome of an earlier proceeding, then the second action is not barred under either claim or issue preclusion. Id. at *7. The issue in this opposition proceeding was whether Valvoline could have appealed the first judgment in the cancellation. The Board noted that “a prevailing party may not appeal from a favorable judgment simply to obtain review of findings it deems erroneous.” Id. 15 U.S.C. § 1071(a)(1) states that the rule applies to trademark inter partes proceedings, but a right to appeal is granted only to parties “dissatisfied with the decision” of the Board. Id. at *8. Thus, the general rule is that a plaintiff who obtained all of its requested relief lacks standing to appeal. Id.
Valvoline asserted various claims in the first proceeding, but its ultimate desired outcome was cancellation of Sunpoint’s MAXVOLINE mark. The Board granted Valvoline the full relief it sought, but solely on the ground of nonuse. Id. The determination that Valvoline did not carry its burden of establishing likelihood of confusion did not change the final judgment—to cancel the registration. Id. at *8-9. Because Valvoline prevailed, it could not have appealed in its own right to assert the likelihood of confusion claim. Id. at *9. Had Sunpoint appealed the judgment against it, Valvoline would have been able to assert likelihood of confusion as an alternative ground for affirmance of the judgment. Id.
Because Valvoline could not have appealed the prior judgment, the second action is not barred under either res judicata or collateral estoppel.Id.Therefore, Valvoline is not precluded as a matter of law from raising likelihood of confusion as a ground against registration of Sunpoint’s current application for MAXVOLINE. Id.
Opposer’s Motion for Leave to Amend Notice of Opposition
Valvoline additionally moved to amend its notice of opposition to plead prior use and registration of the mark MAXLIFE TECHNOLOGY, issued prior to the filing of the current opposition, as an additional basis for its Section 2(d) claim. Id. at *10. Valvoline claims that its own conjoint use of VALVOLINE with MAX LIFE has evolved to increasingly include conjoining use of VALVOLINE with the phrase “With MAXLIFE TECHNOLOGY.” Id.
Sunpoint argued that the “protective part of the mark” is MAXLIFE, and that was asserted in the prior proceeding. Id. Sunpoint contends that the principle of judicial estoppel should apply because Valvoline argues in its motion to dismiss Sunpoint’s counterclaim that this proceeding arose from same transaction or occurrence as the prior proceeding. Id. at *11. According to Sunpoint, granting Valvoline’s motion would permit it to take an inconsistent position, given that the Board accepted Valvoline’s position by dismissing Sunpoint’s counterclaim, and that would provide an unfair benefit to Valvoline and create unfair detriment to Sunpoint. Id.
The Board stated that it “liberally grants leave to amend pleadings at any stage of a proceeding when justice so requires, unless . . . the proposed amendment would violate settled law or be prejudicial to the rights of the adverse party.” Id.; Trademark Rule 2.107(a); 37 C.F.R. § 2.107(a); Fed. R. Civ. P. 15. The Board even permits a plaintiff to amend its complaint to plead an additional claim.Valvoline, 2021 U.S.P.Q.2d at *11; TBMP § 507.02. The Board listed a number of factors it considers in making the decision on whether to grant leave to amend, including undue delay, prejudice to the non-moving party, bad faith or a dilatory motive, futility of the amendment, and whether the party has previously amended its pleadings.Valvoline, 2021 U.S.P.Q.2d at *11. Here, the registration Valvoline seeks to add issued prior to its filing of its notice of opposition to this proceeding.Id.at *12. Another factor that resonated with the Board was that the proceeding is “in its infancy” and discovery has not opened.Id.In view of the early stages of the proceeding, Valvoline did not unduly delay in filing the motion for leave to amend its pleading to add the new registration. Id. Moreover, Sunpoint has not shown it would suffer any cognizable prejudice if Valvoline were permitted to amend it pleading. Id.
Counterclaim of Genericness
The Board notes that Sunpoint incorrectly presumed that it dismissed Sunpoint’s counterclaim in the current opposition because it determined that the current proceeding and the prior proceeding arose from the same transaction or occurrence.Id.However, the Board clarified that it dismissed Sunpoint’s counterclaim against Valvoline’s pleaded registrations for MAXLIFE or MAX LIFE marks because the claim that Valvoline’s MAXLIFE and MAX LIFE marks are generic and ought to be cancelled was a compulsory counterclaim Sunpoint should have asserted in the first proceeding. Id. at *13. The counterclaim was dismissed because Sunpoint failed to plead this compulsory counterclaim against the same pleaded registrations. However, Valvoline’s registration for the mark MAXLIFE TECHNOLOGY was not pleaded in the prior proceeding and, therefore, not barred by Sunpoint’s failure to assert a compulsory counterclaim. Id.
The Board concluded that Valvoline has sufficiently pleaded the claim of likelihood of confusion based on its conjoint use of its pleaded marks. Id. at *14. Whether Valvoline can prove its claim is a matter to be determined at trial or on a motion for summary judgment. Id. The Board granted Valvoline’s motion for leave to amend its notice of opposition.
Accelerated Case Resolution
Another notable feature of this decision is the Board’s advocacy of Accelerated Cased Resolution (ACR). Even though claim preclusion or collateral estoppel did not apply in this proceeding, the parties engaged in discovery and submitted evidence in the prior proceeding that pertained to many of the issues likely to be relevant in this proceeding. Id. at *15. Accordingly, the Board strongly encouraged the parties to engage in ACR and to agree to streamlined discovery and trial evidence in this proceeding by stipulating that evidence from the cancellation proceeding may be used as evidence in this proceeding. Id.; TBMP § 705.
ACR is an alternative to traditional inter partes TTAB proceedings in which the parties can use simplified methods of introducing evidence and in a shorter time period that generally permitted. Valvoline, 2021 U.S.P.Q.2d at *15; TBMP §§ 528.05(a)(2) & 705. The form of ACR may vary, but the Board offered some examples of what that that may look like. For example, the parties could:
Stipulate to the Trial Record in whole or in part;
Provide a joint statement of undisputed facts to narrow the issues before the Board;
Stipulate to limit the Board’s determination under Section 2(d) to certain DuPont factors;
Stipulate to facts, supported by the record, that support the opposer’s entitlement to a statutory cause of action;
Stipulate to opposer’s priority; or
Stipulate to the admissibility of certain testimony and evidence from the prior cancellation proceeding or the admissibility of additional evidence.Id.at *15-16.
Valvoline Licensing & Intellectual Property LLC v. Sunpoint International Group USA Corp., 2021 U.S.P.Q.2d 785 (TTAB 2021).[AA]
A Trademark with International Reputation Extending into the United States May Support a Misrepresentation of Source Claim Even Without Direct Actual Use in the United States by the Owner
On the basis of foreign registrations and foreign use in commerce, The Coca-Cola Company (Coca-Cola) successfully obtained cancellation of the marks THUMS UP and LIMCA for beverages on the ground that the applicant, Meenaxi Enterprise, Inc. (Meenaxi), misrepresented the source of the goods under these marks. Coca-Cola Co. v. Meenaxi Enter., Inc., 2021 U.S.P.Q.2d 709, 2021 TTAB LEXIS 213 (T.T.A.B. June 28, 2021).
To assert a cause of cause of action for cancellation, Coca-Cola established that it owns fifteen Indian trademark registrations for the mark THUMS UP for a variety of goods and fourteen Indian trademark registrations for the mark LIMCA. 2021 TTAB LEXIS 213, at *33, *36.It also has registrations for these marks in several other countries. Id. at *33, *36.In India, THUMS UP has been used since 1977 on a cola product and has achieved significant commercial success—THUMS UP’s market share in India was 85% in 1993 when Coca-Cola purchased the brand from its predecessor-in-interest. Id. at *31. The LIMCA brand of lemon-lime soft drinks was introduced in India in 1971 by Coca-Cola’s predecessor-in-interest and has since been India’s No. 1 drink in its category. Id. at *35. Coca-Cola made substantial advertising investment to develop the brands. Id. at *31-32, *35-36. A testament to their success, the High Court of Delhi at New Delhi, in separate opinions, had found both THUMS UP and LIMCA to be “well known” trademarks in India. Id. at *32, *36.
Coca-Cola’s THUMS UP and LIMCA marks have achieved international renown, including renown among much of the substantial (and growing) Indian-American population in the United States.Id.at *34, *37. All of Meenaxi’s witnesses acknowledged their familiarity with THUMS UP from their time in India.Id.at *34, *38-41. Two of Meenaxi’s three witnesses acknowledged their familiarity with LIMCA from their time in India. Id. at *37, *45-47.
Coca-Cola asserted Meenaxi registered Coca-Cola’s internationally famous THUMS UP and LIMCA marks in the United States in “a blatant attempt to deceive United States consumers into believing that its soda products are the U.S. versions of the THUMS UP and LIMCA products sold by [Coca-Cola] in India.” Id. at *2. Accordingly, it sought cancellation of Meenaxi’s U.S. registrations on the basis of misrepresentation of the source of the goods on which the marks are used. Id. at *2; Trademark Act § 14(3), 15 U.S.C. § 1064(3).
Before addressing the misrepresentation of source claim, the Board considered Meenaxi’s laches defense and evidentiary objections and established that Coca-Cola’s interests are within the zone-of-interest that gives rise to the statutory cause of action.
Meenaxi raised the defense of laches, arguing that Coca-Cola did not oppose U.S. registration of the disputed marks in 2013 when the registrations first issued.Coca-Cola, 2021 U.S.P.Q.2d at *4-5. At the time, Coca-Cola opposed three other applications Meenaxi filed for THUMS UP-variant marks. Id. Meenaxi interpreted Coca Cola’s failure to act on the registrations in this case while it opposed three others to mean that Coca-Cola was concerned only with the logos, not the word marks. Id. Meenaxi argued that it suffered prejudice as a result of this inaction because it continued to invest in, develop, and make commercial use of the marks for three-and-a-half years. Id. at *4-5.
To prevail on the laches defense, the party raising the defense is required to establish that there was undue or unreasonable delay by the other party in asserting its rights, and prejudice to the party raising the defense resulted from the delay. Id. at *5 (citing Bridgestone/Firestone Rsch., Inc. v. Auto. Club De L’Ouest de la France, 245 F.3d 1359 (Fed. Cir. 2001)). The party raising the affirmative defense of laches bears the burden of proof. Id. (citing Ava Ruha Corp. v. Mother’s Nutritional Ctr., 113 U.S.P.Q.2d 1575, 1580 (T.T.A.B. 2015)). Here, Meenaxi needed to show that Coca-Cola’s three-and-a-half year delay in asserting its rights was unreasonable, and that this delay resulted in prejudice to Meenaxi.
The Board opined that, in prior cases, periods both shorter and longer than the three-and-a-half year delay at issue here were found to be unreasonable.Id.at *5-6 (citing Ava Ruha, 113 U.S.P.Q.2d at 1581; Teledyne Techs., Inc. v. W. Skyways, Inc., 78 U.S.P.Q.2d 1203, 1211 (T.T.A.B. 2006), aff’d, 208 F. App’x 886 (Fed. Cir. 2006); Trans Union Corp. v. Trans Leasing Int’l, Inc., 200 U.S.P.Q. 748, 756 (T.T.A.B. 1978)). The Board did not decide whether the delay in this case was unreasonable because, in any event, Meenaxi could not establish prejudice from the delay, even if unreasonable. Id. at *6. Meenaxi cited no evidence in support of its assertion that it suffered prejudice or demonstrating that it even relied on Coca-Cola’s earlier inaction in continuing its investment and development of the marks.Id.at *8-9. The Board stated that the “mere assertion that Respondent continued its use of the marks, even if true, does not suffice to show prejudice” without more evidence. Id. at *6 (citing Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1371 (Fed. Cir. 2018) (“Attorney argument is no substitute for evidence.”);In re Simulations Pubs., Inc., 521 F.2d 797 , 798 (C.C.P.A. 1975) (“Statements in a brief cannot take the place of evidence.”)). As a result, the defense of laches failed. Id. at *9.
Evidence & Objections
Meenaxi raised numerous evidentiary objections. Among other objections, Meenaxi objected to the introduction of Coca-Cola’s “second Exhibit 13” of its Revised Notice of Reliance. Id. at *12-13. Coca-Cola had previously introduced the original Exhibit 13, which documented third-party imports of Coca-Cola’s goods into the United States. Id. at *13. Meenaxi prevailed on its motion to strike the original exhibit because the documentation came from a fee-based, subscriber-only website (ImportScan), and subscriber-only website evidence is “not eligible for introduction under a notice of reliance.” Id. (citing Weyerhaeuser Co. v. Katz, 24 U.S.P.Q.2d 1230, 1232 (T.T.A.B. 1992)).
The Board permitted Coca-Cola to cure the defect in the original Exhibit 13 and provide materials that complied with the rules, namely, materials that are available to the public. Coca-Cola, 2021 TTAB LEXIS 213, at *13. Coca-Cola offered “second Exhibit 13” as providing “the same kind of information—online documents regarding third-party imports of [Coca-Cola’s] goods into the United States.” Id. However, the Board rejected the replacement exhibit because the records in the “second Exhibit 13” did not evidence the “identical set of importation transactions” that were included in the original Exhibit 13. Id. Because this exhibit consisted of different materials and information from what the first Exhibit contained, it was deemed to be outside the scope of what Coca-Cola was permitted to submit to cure the defect in the original exhibit. Id. at *13-14.
Meenaxi also objected to the introduction of Coca-Cola’s documents described as advertising or promotional materials, arguing that the documents lacked evidence of viewership and did not support Coca-Cola’s claim of priority. Id. at *15. The Board overruled these objections because they did not go to the admissibility of the evidence but rather to its probative value. Id. The concerns raised in the objections were to be taken into account in assessing the proper evidentiary weight of the evidence. Id.
Meenaxi additionally objected to the introduction into evidence of Internet Archive Wayback Machine screen captures, raising numerous grounds, including that the captures cannot be relied on to prove the truth of any matter asserted in them; that some of the captures are “suspect” because the retail website appears the same despite the passage of years between the captures; that there is no proof that any THUMS UP and LIMCA products shown are Meenaxi’s; that some of the capture dates are subsequent to Meenaxi’s use and registration dates; and that screen captures do not show retail sales in the United States. Id. at *16.
The Board overruled these objections and admitted the evidence, explaining that “Wayback Machine archival captures, like other Internet webpages displaying a URL and date, generally are admissible under notice of reliance as self-authenticating materials.” Id.(citing Trademark Rule 2.122(e)(2), 37 C.F.R. § 2.122(e)(2). Without accompanying testimony, such Wayback Machine evidence generally is admissible “only for what it shows on its face” and cannot be used to demonstrate priority without corroborating testimony. Id. at *13 (citing WeaponX Performance Prods Ltd. v. Weapon X Motorsports, Inc., 126 U.S.P.Q.2d 1034, 1038 (T.T.A.B. 2018)).
Statutory Entitlement to Petition to Cancel
Meenaxi additionally argued that Coca-Cola’s claim was not within the zone of interest protected by the statute because Coca-Cola was not selling goods in the United States under the THUMS UP and LIMCA marks. Id. at *21.The Board rejected that argument because “[d]emonstrating a real interest in cancelling [sic] the registration of a mark satisfies the zone-of-interests requirement, and demonstrating a reasonable belief in damage by the registration of a mark suffices to show damage proximately caused by such registration.” Id. at *22 (citing Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 1304 (Fed. Cir. 2020), cert. denied, 2021 U.S. LEXIS 2603 (U.S. May 24, 2021)).
The Board determined that Coca-Cola’s interest in canceling the registration was within the zone of interest that supported the statutory right of action. Id. at *29. Coca-Cola established it owned registrations for the marks in question in India and other countries for the same goods and “commands a substantial market share.” Id. at *22. Authentic THUMS UP and LIMCA-branded products are imported and resold in Indian grocery stores around the world, including in the United States. Id. at *23. The THUMS UP cola is also imported into the United States and is served at the World of Coca-Cola locations in Atlanta and Orlando. Id. at *26. Moreover, Coca-Cola planned to market THUMS UP and LIMCA more widely in the United States. Id. at *23, *29. Specifically, Coca-Cola furnished plans to sell authentic THUMS UP and LIMCA products in the United States through e-commerce and through its on-premise foods service partners. Id. at *29. The reputation of the THUMS UP and LIMCA marks is known to a significant population of Indian-American consumers. Id. at *23. If Meenaxi uses these marks to misrepresent to U.S. consumers the source of Meenaxi’s product as Coca-Cola’s Indian products, Coca-Cola loses the ability to control its reputation and suffers damage. Id. at *24-25 (citing Bayer Consumer Care AG v. Belmora LLC, 110 U.S.P.Q.2d 1623, 1632 (T.T.A.B. 2014), aff’d, 338 F. Supp. 3d 477 (E.D. Va. 2018), aff’d in relevant part, vacated and remanded on other grounds, 987 F.3d 284 (4th Cir. 2021); Steele v. Bulova Watch Co., 344 U.S. 280 (1952)).
Further, Coca-Cola’s awareness of market trends involving the popularity of ethnic foods among all types of consumers, and the interest of Indian-American consumers in obtaining products from India through Indian grocers in the United States are additional commercial interests that placed the claim within the zone of interest, according to the Board. Id. at *27. Additionally, the Board cited the growth of the Indian-American population and considered the harm from upset expectations of consumers familiar with Coca-Cola’s goods if they encounter Meenaxi’s goods under the same marks. Id. at *28-29.
Ultimately, the Board concluded that Coca-Cola had a misrepresentation of source claim within the zone of interest protected by the statute. Id. at *29.
Misrepresentation of Source
Finally, the Board reached the principal issue of this dispute. A trademark registration is subject to cancellation if the mark “is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used.” Trademark Act § 14(3), 15 U.S.C. § 1064(3). However, mere willful use of a confusingly similar mark is insufficient; the misrepresentation of source must involve a respondent “deliberately passing off its goods as those of another.” Coca-Cola, 2021 TTAB LEXIS 213, at *30. “The respondent’s use must be a ‘blatant misuse of the mark . . . in a matter calculated to trade on the goodwill and reputation of petitioner.’” Id. (quoting Otto Int’l Inc. v. Otto Kern GmbH, 83 U.S.P.Q.2d 1861, 1863 (T.T.A.B. 2007)). The Board found such blatant misuse by Meenaxi. Id.
The Board noted several facts that made it unlikely that Meenaxi came up with the mark independently, as it claimed. Specifically, Meenaxi adopted the THUMS UP mark for the same product (a cola beverage) with the same misspelling of “thumbs” found in Coca-Cola’s. Id. at *38. Meenaxi also adopted trade dress, a tagline, and logos that were identical or “strikingly similar” to those of Coca-Cola. Id. at *48-49, *55. Meenaxi’s logo design for its LIMCA product was also clearly copied from Coca-Cola’s. Id. at *54-55. The Board found a pattern of copying that extended beyond the two marks at issue in this proceeding—Meenaxi similarly copied four other trademarks owned by other parties in India. Id. at *54.
Meenaxi claimed that it came up with the marks independently, however the record was clear that its executives were familiar with Coca-Cola’s THUMS UP and LIMCA beverages through their reputation in India before selecting the marks for its own goods. Id. at *38-49. Meenaxi admitted that its executives were aware that the marks were used in India, and had even tasted the beverages, but argued that they were only aware of use by an Indian company, not by Coca-Cola, in the 1970s. Id. at *38-40, *46-47. Meenaxi further asserted that it believed that Coca-Cola entered the Indian soda market and purchased THUMS UP in the early 1990s for the sole purpose of abandoning the mark and removing a competitor to the Coca-Cola brand in India. Id. at *40-41. Meenaxi testified that its search of the USPTO database yielded a U.S. application for the THUMS UP mark owned by Coke’s predecessor-in-interest that was abandoned in 1987 and a U.S. registration for LIMCA for soft drinks that expired in 1996. Id. at *40-41, *47.
The Board concluded that, although misrepresentation of source does not rest on mere willful use of a similar mark, Meenaxi’s activity “went beyond mere selection of familiar famous marks from India.” Id. at *41. The logos it developed “strongly resemble” those used by Coca-Cola and its predecessor-in-interest. Id. Ultimately, Meenaxi conceded that the THUMS UP logos were “copied, in whole or in part, from logos of others.” Id. at *41-42.
The Board was not persuaded by Meenaxi’s explanation that its label designer copied the other brands’ logos without Meenaxi’s knowledge. Id. at *43-44. The “rogue” copying by its graphic designer explanation didn’t mitigate the fact that Meenaxi was aware of the resemblance of its logos to those used by Coca-Cola on its foreign cola products. Id. at *43, *55. The Board concluded that Meenaxi’s adoption of logos “essentially identical” to both the older and updated versions of Coca-Cola’s logo reflected an “effort to dupe consumers in the United States who were familiar with [Coca-Cola’s] THUMS UP cola from India into believing that [Meenaxi’s] THUMS UP cola was the same drink.” Id. at *43-44.
In addition to adopting essentially identical logos, Meenaxi adopted the same tagline, “Taste the Thunder,” that Coca-Cola and its predecessor-in-interest had used in India since 1988. Id. at *44. Meenaxi even attempted to register the composite mark THUMS UP TASTE THE THUNDER with the USPTO. Id. at *45.Coca-Cola opposed that application and Meenaxi withdrew it and discontinued use of the copied logo. Id.
The Board found implausible Meenaxi’s assertion that its VP came up with the tagline “Taste the Thunder” independently without awareness of Coca-Cola’s use of the tagline with the THUMS UP mark and concluded that such a mere coincidence is just not credible. Id. at *44.
Informing the Board’s decision was the fact that Meenaxi has demonstrated a “larger pattern of adopting marks challenged by others as confusingly similar.” Id. at *49. The record contains four instances of third parties alleging Meenaxi adopted their marks for its own use: RASNA, REAL NAMKEEN, BOURNVITA, and NUTRELA. Id. In several instances, Meenaxi’s marks included color, stylization, and design elements that were essentially identical or very similar to the other marks. Id. at *53-54.Given the number of applications that Meenaxi filed seeking registration of third-party marks, the Board found it highly unlikely that the adoption was an “unintended coincidence.” Id. at *53. Rather, it concluded that “evidence strongly suggests that [Meenaxi] sought these registrations . . . in an effort to trade off of the goodwill of the prior registrants.” Id. (quoting L’Oreal S.A. v. Marcon, 102 U.S.P.Q.2d 1434, 1442 (T.T.A.B. 2012) (internal quotation marks omitted)). It further commented that “[i]mplausible explanations of coincidence support . . . a finding that [Meenaxi] intended to pass off its goods as [Coca-Cola’s].” Id. at *30.
Meenaxi’s reliance on the “allegedly unauthorized misdeeds” of the label designer was “utterly unpersuasive.” Id. at *54. The Board concluded that when Meenaxi adopted the marks at issue, it was well aware of Coca-Cola’s THUMS UP cola and LIMCA lemon-lime soft drinks in India, and the proffered explanation regarding the selection of the marks and development of the accompanying logos and tagline was “simply not credible.” Id. These copied marks, logos, and tagline—which “effectively speak for themselves”—were “part and parcel of its effort to ‘deceive the public by its labeling and packaging practices’ in a manner indicative of misrepresentation of source.” Id. at *55-56 (quoting McDonnell Douglas Corp. v. Nat’l Data Corp., 228 U.S.P.Q. 45, 47 (T.T.A.B. 1985)).
The Board’s conclusion was bolstered by the fact that Meenaxi’s distribution channels focused on Indian groceries in the United States, specifically targeting the Indian-American consumers likely to be familiar with Coca-Cola’s THUMS UP and LIMCA beverages.Id.at *56.
The Coca-Cola Co. v. Meenaxi Enterprise, Inc., 2021 U.S.P.Q.2d 709 (T.T.A.B. 2021). [AA]
Domain Name Holder Who Prevailed in A UDRP Proceeding Was No Longer Entitled To Maintain A Cancellation Proceeding
The General Conference Corporation of Seventh-Day Adventists (“GCC”) is a corporation established to own the assets, including trademarks, of the Seventh-day Adventist Church (the “Church”), which is a worldwide Protestant Christian religious denomination. GCC owns two US trademark/service mark registrations for the mark ADVENTIST, Registration No. 1218657 (the “'657 Registration”) for educational instruction services in International Class 41 and religious observances and missionary services in International Class 42; and Registration No. 1176153 (the “'153 Registration”) for religious publications in International Class 16, employee health care and benefit programs and medical insurance programs in International Class 36, film production and distribution services in International Class 41, and health care services in International Class 42. GCC asserts that the name “Adventist” has been in use since 1863 to identify members and believers belonging to the Church.
Philanthropist.com, Inc. (“Philanthropist”) is in the business of registering and seeking to sell domain names as its primary source of revenue.As of February 2020, Philanthropist owned over 9,000 registrations, of which between 5,500 – 6,000 were available for re-sale. Philanthropist acquired the domain name Adventist.com and offered it for sale to interested buyers for $120,000.On November 10, 2016, GCC sent Philanthropist a cease and desist letter advising of GCC's rights in the ADVENTIST mark and demanding transfer of the domain name to GCC. After receiving GCC's letter, Philanthropist raised the sale price to $1.2 million. When Philanthropist refused to willingly transfer the domain name without compensation, in December 2016 GCC filed a Uniform Domain Name Resolution Procedure (UDRP) seeking transfer of the domain name to GCC.
While the UDRP was still pending, Philanthropist commenced the subject cancellation proceeding before the TTAB on January 13, 2017, seeking to cancel, on the ground of genericness, the ‘657 Registration in its entirety and the ‘153 registration with respect to Classes 16, 41 and 42, but not Class 36.On January 23, 2017, the UDRP was decided in Philanthropist’s favor, permitting it to retain the Adventist.com domain name, and GCC did not appeal from that decision. Thereafter, following trial, the TTAB dismissed the cancellation proceeding. In a precedential decision, the Board held that, to the extent Philanthropist's belief in damage may have existed at the time it commenced the cancellation proceeding in January 2017, a reasonable belief in damage had not been maintained, and consequently Philanthropist had failed to establish its entitlement to maintain the asserted statutory cause of action as of the time of trial. Philanthropist.com, Inc. v. The General Conference Corporation of Seventh-Day Adventists, 2021 U.S.P.Q.2d 643 (TTAB 2021).
The Board noted that entitlement to a statutory cause of action (formerly known in TTAB jurisprudence as standing) is a threshold issue that must be proven by the plaintiff in every inter partescase. A cancellation petitioner must maintain its entitlement to the statutory cause of action throughout the proceeding and affirmatively prove its existence at the time of trial by introducing evidence to support the allegations in its pleading that relate to such entitlement as an element of its case-in-chief. Id. at *11.As to what must be proven in order to establish entitlement to a statutory cause of action for cancellation under Section 14 of the Trademark Act (15 U.S.C. § 1064), the Board noted that a plaintiff must demonstrate “an interest falling within the zone of interests protected by the statute and … proximate causation.” Id. (citing Corcamore, LLC v. SFM, LLC, 978 F.3d 1298 , 2020 USPQ2d 11277, at *4 (Fed. Cir.), cert. denied, ___ S. Ct. ___ (2020). “Stated another way, a plaintiff is entitled to a statutory cause of action by demonstrating a real interest in the proceeding and a reasonable belief of damage.” Id. (citing Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370 , 2020 USPQ2d 10837, at *3 (Fed. Cir. 2020)).
In the present case, the Board held that, as of the time of trial,
Philanthropist’s interests, which do not have anything to do with trademark concerns (whether its own trademark concerns or concerns about how others' trademark rights might endanger its business model), are outside the zone of interests reflected in Trademark Act Section 14. Further, it cannot reasonably be assumed Congress intended to authorize a party in Philanthropist's circumstances to bring and maintain these cancellation proceedings. We further find that Petitioner's claim of proximate causation (its belief in damage) has no reasonable basis in fact. To the extent Petitioner's belief in damage may have existed at the time Petitioner brought these proceedings in January 2017, clearly it has not been maintained. Id. at *16.
In support of this conclusion, the Board noted the following facts:
GCC’s UDRP complaint was rejected, thus allowing Philanthropist to retain the domain name. GCC did not appeal that decision, and to date has not taken or threatened any further action against Philanthropist or the adventist.com domain name.
In 2016 and 2017, Philanthropist spurned two inquiries from potential purchasers of the adventist.com domain name. Since June 2018, no one has contacted Philanthropist expressing any desire to purchase the domain name. Nor has anyone told Philanthropist that GCC's trademark registrations have dampened interest in acquiring the domain name.
Philanthropist has never published content on the Internet at any website resolving to the domain name. All Philanthropist has ever done with the adventist.com domain name is to hold it for future sale at an inflated price (a practice known as “warehousing”), or to redirect Internet users to the TTABVUE docket page for the subject cancellation proceeding.
Id. at *13-14.
In addition, the Board observed that Philanthropist only sought to cancel GCC’s '153 Registration for “ADVENTIST” in Classes 16, 41 and 42, but not with respect to the Class 36 portion of that registration.Therefore, even if Philanthropist obtained all of the relief that it was seeking in the cancellation proceeding, it “still ostensibly would remain under an alleged ‘legal threat’ from [GCC] due to [GCC’s] continued ownership of a federal registration for the ADVENTIST mark … .” Id. at *15.
For all of the above reasons, the Board denied the petitions for cancellation. Philanthropist.com, Inc. v. The General Conference Corporation of Seventh-Day Adventists, 2021 U.S.P.Q.2d 643 (TTAB 2021) (precedential). [SG]
BY: DALE CARLSON*
Let's begin with a pre-pandemic view about distance learning. Back in 2012, Harvard and M.I.T. announced that they were teaming up to offer "free" online courses through a partnership known as edX, making no-credit online classes available to many thousands of students from around the globe who might not otherwise have access to this educational opportunity.(1) This was big news at the time; indeed, news that continues to play in educational circles today.
Virtually buried in history's dust bin were earlier versions of multi-university broad-band educational efforts that failed prior to the Great Recession resulting from the global banking crisis. One called Fathom, involving Columbia, the University of Chicago and others, began in 2001 and failed by 2003. Another called AllLearn, involving Yale, Princeton and Stanford, failed by 2006.(2)
The dilemma facing elite universities considering trying to become a latter-day Phoenix University, while risking dilution of their prestige brand, is succinctly summarized in a 2009 article in the Chronicle of Higher Education entitled "Open Courses: Free, but Oh So Costly - Online Students Want Credit; Colleges Want a Working Business Model".(3) Students certainly do want credit, but most of all they want the credentials it may take to gain entry to their first job out of school. So far, the free online, open course concept appears to fall short in terms of providing desired credentials.
You may wonder how these developments in higher education might affect the business model of the NYIPLA, if at all. Obviously, an important mission of our Association is to provide for continuing legal education in the IP arena for all of our members, including the law students and newer practitioners among us. In order to accomplish this goal, the Association has a well-honed outreach program whereby the NYIPLA's committees engage with law schools to put on programs of interest to the students.
One of these NYIPLA programs involved an IP careers panel discussion held at Quinnipiac Law on April 13, 2015. Foremost in the students' minds was how to connect with potential employers in the then-current challenging job market.
Foremost in the panelists' minds was the desire to explain to the students that they need to personally connect with the potential employers in real time, rather than merely by means of an online application. Each panelist painted a unique picture as to how he or she landed their first job, and how they developed mentorships and business relationships within the IP profession. Each panelist gave tribute to the NYIPLA as a spring-board for their professional growth.
Our Association's leadership is to be commended for its current outreach efforts, not only in Connecticut and New Jersey, but also in places like Buffalo and Troy in upstate New York.
Perhaps Vermont, also within the NYIPLA's geographic jurisdiction, will be the site of future program, ideally during ski season. Rest assured, the students and practitioners in those localities appreciate the personal attention and the effort it takes put on a program at their home turf.
Now let's consider the 2021 pandemic world we are stuck in. Almost as an understatement, remote learning has rapidly become the name of the game. With technologies like Zoom, presumably we can learn from anywhere at any time. As these technologies improve, perceived differences between "on ground" and "virtual" settings will likely diminish.
That said, I hope to see all of you again "live" soon. For now, "reel" gatherings will likely continue to be the order of the day.
* Mr. Carlson is an NYIPLA past president and current historian. His email is email@example.com.
"Harvard and M.I.T. Team Up to Offer Free Online Courses", N.Y. Times, May 2, 2012, available at http://www.nytimes.com/2012/05/03/education/harvard-and-mit-team-up-to-offer-free-online-courses.html?_r=0
"Open Courses: Free, but Oh, So Costly", The Chronicle of Higher Education, October 11, 2009.
"As Time Goes By - Reel or Real? - Redux'
MINUTES OF JUNE 8, 2021
MEETING OF THE BOARD OF DIRECTORS OF THE
NEW YORK INTELLECTUAL PROPERTY LAW ASSOCIATION
The Board meeting was held via video conference. President Rob Isackson called the meeting to order at approximately 4:00 p.m. In attendance were:
Rob Isackson, President, presiding
Gene Lee (joined at 4:10 pm)
Paul Bondor (drop at 5:15 pm)
Feikje van Rein attended from the Association’s executive office. Christine Lauture attended as Associate Advisory Council members. Khalil Nobles and Eric Greenwald from the AAC were unable to attend. President Rob Isackson was unable to participate and left the meeting early due to technical issues.
The meeting was called to order by Heather Schneider on behalf of President Rob Isackson, and the attendees introduced themselves. Board members were reminded to sign annual disclosure statement. Motion to waive reading of minutes was approved. A motion to approve minutes, subject to correction of the board liaison designations by Feikje and Cheryl, was passed.
Financial Report. Scott and Abigail presented the comparative financials report. Unsurprisingly, it is lower than usual but it is more revenue than we expected at this time last year. Membership remains an important focus.
New Members. There were 8 new members, 6 law students and 2 practitioners. Motions to waive reading of the names and admit new members were approved. The board members discussed ideas to increase membership such as popular platforms that allow increased visibility, planning for more in-person events, including hosting membership tables at law schools. The board discussed ways to personalize the recruitment process as well as streamline registration especially for groups.
Amicus Briefs Committee.
David Goldberg reported that cert was granted in Unicolors, Inc. v. H&M, which is a copyright case, involving copyright registration irregularities in the 9thcircuit. The S. Ct. has limited the issue to whether Section 411 plain text requires intent to defraud rather than mere knowledge of potential inaccuracies when submitted information is believed to be accurate. The Copyright Committee is still reviewing but so far there seems to be interest in submitting a brief in this case.
A petition for cert was filed in Biogen MA v. EMD Serono, which is a patent case involving novelty claims and whether courts can disregard an express claim term which would invalidate the patent in light of prior art treatments that used the naturally occurring version. There was strong interest in weighing in favor for cert among certain members. At the broader committee discussion, it was determined that it made more sense to wait and see if cert is granted before deciding whether to weigh in.
Mitsubishi vs Sandoz is unlikely to meet the threshold for a quorum. There were a number of individuals conflicted out even at the committee level. Feikje confirmed that there were 9 conflicts from the board so far.
With the term ending the ABC expects to hear updates on the cases where briefs were submitted.
Legislative Action Committee. Colman Ragan reported that Chris Israel is staying on top of Shop SAFE, INFORM Consumers, and CASE act. On the Judicial Security Act, Chris will reach out to Sen. Menendez & Sen. Booker to see if we can get more attention. In pharmaceuticals, Sen. Cornyn’s bill, product hopping legislation, might have real legs and the LAC will dust off any relevant whitepapers. Sen. Leahy attached a couple of points to the bill such as ex parte inequitable conduct hearing and unenforceability of patents if assignments are inaccurate.
Judge’s Dinner. Colman reported that the Judge’s Dinner made decent money given the circumstances. It was certainly successful in that it kept the Judge’s Dinner going.
Diversity Event: Cheryl discussed NYIPLA hosting a diversity event as a follow up to the statement issued in April. The board members discussed the value of engaging minority bar associations with NYIPLA facilitating. The vision for the event is to showcase successful minority attorneys and give a voice to younger minority counsel who are still navigating their pathways to success.The board members discussed potentially featuring speakers, judges, and potentially evolving the program into a President’s Forum. The board discussed symbolic actions that could help underscore NYIPLA’s commitment to supporting diversity in the IP and legal profession.
Programs: June 15that 12:30 pm SolarWinds Privacy panel Diana Santos reported that there is a great panel put together and with the latest news, there will be robust conversation.
Half Day Trademark CLE is now set up as a series of events. So far, there is 1 event with a fixed July 13thdate. This CLE series will cover annual trademark cases, may include a judge from the USPTO along with the annual update, a panel on Google vs Oracle, and likely touch on CASE act as well as Shop SAFE and INFORM Consumers act.
IP Transactions Bootcamp, as Heather reported, is a bit easier to set up and can launch in the fall. The intended format is 10 CLE credits with 5 sessions total. The plan is to have 1 IP litigation bootcamp and 1 for transactions. John Moehringer is taking the lead on coordinating.
Meeting was adjourned at 5:25 pm.
The Board meeting was held via video conference. President Rob Isackson called the meeting to order at approximately 4:07 p.m. In attendance were:
Rob Isackson, President, presiding
Diana Santos (joined around 4:30 pm)
Gene Lee (joined at 4:47 pm)
Khalil Nobles (joined around 4:35 pm)
Feikje van Rein attended from the Association’s executive office. Eric Greenwald and Khalil Nobles attended as Associate Advisory Council members. Paul Bondor, Abby Struthers and Christine Lauture from the AAC were unable to attend.
The meeting was called to order by President Rob Isackson, Motion to waive reading of minutes was approved. A motion to approve minutes was passed.
Financial Report. None this month due to annual audit.
New Members. There were 11 new members: 7 practitioners and 4 students. Motions to waive reading of the names and admit new members were approved. Feikje provided a membership renewal update. 206 people have not renewed. Board members divvied up the responsibilities for following up with outreach.
Amicus Briefs Committee.
David Goldberg reported that the Supreme Court sided with NYIPLA’s position in Minerva, a case about assignor estoppel where the NYIPLA submitted a brief in support of neither party and took the position that the doctrine should be applied in line with its roots in equity. The committee is working with the Trademark Committee to determine whether to recommend filing a brief in both the Ezaki v. Lottecase, involving trade dress of a cookie stick and functionality as well as the Select Comfort v. Baxtercase, currently in the 8th Circuit, involving initial interest confusion which typically now occurs in web-browsing contexts.The committee has been working on a brief in support of neither party for Unicolors, Inc. v. H&M, which is a copyright case, involving copyright registration irregularities in the 9th circuit. The brief will argue that it is important for the Supreme Court to set a uniform standard. Pending cases where brief have been filed: 1)American Axle,case involving 101 patent eligibility, the NYIPLA filed in support of the Petition for Cert and the Solicitor General was invited to file a brief on May 3, 2021, which indicates S. Ct. is considering granting cert; 2) In Ericsson v. Samsung,a patent case involving FRAND licensing obligations where NYIPLA filed in support of Ericsson, the parties reached a confidential settlement so it is now a dead issue. Due to conflicts, the committee is not considering Mitsubishibut it is monitoring 6 other cases which are also included in the ABC board report.
Legislative Action Committee. Colman Ragan reported that the draft letter in support of the Judicial Security and Privacy Act is pending official bill number but ready for comments. The goal is to time the release of the letter to coincide with reintroduction of the bill. ACG has indicated that the new USPTO Director being considered is Marcus Delgado, who appears to have more of a tech background. He left Kilpatrick Stockton in 1999 and has been in-house since then, having worked at AT&T until 2003 and Cox Communications from 2003 to date. Colman reported that last Friday, an executive order was passed involving evergreen product issues and patent thicketing, which stated that the FTC has rulemaking authority to ban settlements. Based on a recent hearing, there are positions taken that may not be pro-IP rights. Colman noted that the fact sheet on Drug Pricing, Pay for Delay & Support for Generic & Biosimilars drugs will be updated and circulated. Colman also reported that the USPTO is looking to collect case law and analysis for a patent eligibility study. The NYIPLA has done this exercise many times and takes the position that focusing on case law after 1952, when 101 eligibility was introduced.The USPTO is looking for a complete history and the committee will dust off materials previously prepared and draft a statement for NYIPLA to issue. The deadline is September 7, 2021 so at the next LAC meeting, a representative from each Patent-related committee will be invited to join the 101 working group.
In-Person Events, Board Meetings, Etc.Next, the board discussed in-person events. It was proposed that NYIPLA wait until end of September to see where things stand rather than book spaces and have issues with deposits later on. Since the Fall CLE program is in November, it is likely there would be time in September. The board discussed a potential hybrid fall meeting with the committee chairs and explored venue options such as the Princeton Club or Union League. Typically, hosting the board meeting at the Union League in September costs $3k so if the meeting will be hybrid, having phone conference dial-in rather than video would lower costs. Members discussed whether it made financial sense and decided that a survey would be sent out around August, at which point, ideally, there would be more information available.
Trademark Committee Scott Greenberg reported that the committee drafted comments to the proposed TMA rules. Most of the rules track the statute, which does not leave much leeway so the focus was on areas where the NYIPLA’s position differs and the USPTO has room to make adjustments. The comments are due by July 19, 2021. Scott will clarify the language and recirculate for board approval.
100thJudge’s Dinner March 25, 2022 Rob Isackson reported that the Hilton is not yet opened for business but the hotel next door is open. The plan is for the dinner to be in-person and the Conrad Hotel is booked for rooms for the judges. Compared with 2300 for the 2019 dinner, the expectation is min. 1000 people would sufficiently accommodate. Unfortunately, there would be no access to Trianon room and suites on the 4th fl. for hospitality but there should be enough space to handle anticipated crowds. The start time would need to be pushed back by 30 min to 6 pm because some suites are not available until after. There is not yet an agreement on cancellation policy but we will make sure to have that in place to address concerns. The concerns are the many variables involved, including crowds, authorization for non-essential travel, etc.
Day of Dinner CLE: decided to cancel because attendance was low last time and it ended up costing more than it was worth.
VIP Judge’s Reception: considering as an option to help increase judicial attendance.
Proposed new table pricing: Charge by table instead of by seats and have 3 different levels (Silver, Gold, Platinum) with pricing based on proximity to the front and being seated with distinguished guests. Also considering including some memberships with the table package as well.
Centennial: Rob proposed the idea of holding a Centennial celebration as a different or separate event from the Judge’s Dinner. The idea would be to focus on making it a celebration, such as a gala event, without hospitality suites. Since the anniversary straddles 2022, this would ensure that both events are celebrated.
Associate Advisory Council: Diana Santos reported that the AAC members had their first meeting. The members discussed ways to increase membership engagement and provide networking opportunities. One area that came up was exploring and adopting new ways of communicating, engaging & networking with members. The council discussed communication tools, such as Slack, which is popular at tech and startup companies. The board discussed and passed a motion for the AAC to work on developing a Slack channel and terms & guidelines for the channel. Feikje noted that for Zoom events, a networking component can be added and the board agreed it made sense for certain events since in-person events typically include time for networking.
Previous & Upcoming Programs
July 6thPTAB & Young Lawyers Key Milestones in IPR (Rob Rando)
July 13thTTAB Update Scott Greenberg reported that so far, the Half-Day Trademark CLE events have a decent number of registrations. This session went well, with 36 people registered. There were more attendees last year but it was offered for free. The series incurred no expenses and includes a Fashion Law committee panel. The last session features a judge and Feikje will add a networking component at the end of the Zoom.
Fall IP Transactions Bootcamp: Heather Schneider reported that the committee decided it should start in October instead of September, when everyone will be figuring out logistics.
New Business Jenny Lee, Connor Writing Competition board liaison, discussed the feasibility of raising prize values to increase participation with the board. Since the organization is still recovering from the pandemic losses, the members agreed to revisit. In the meantime, the members discussed holding fundraisers or other ways to generate money.
Meeting was adjourned at approximately 5:55 pm.
MINUTES OF JULY 13, 2021
MEETING OF THE BOARD OF DIRECTORS OF THE
NEW YORK INTELLECTUAL PROPERTY LAW ASSOCIATION
The Board meeting was held via video conference. President Rob Isackson called the meeting to order at approximately 4:05 p.m. In attendance were:
Rob Isackson, President, presiding
Jonathan Berschadsky left at 5:45 pm
Cheryl Wang joined around 4:30 pm
Colman Ragan left at 4:50 pm
Diana Santos joined around 5:25 pm
Feikje van Rein attended from the Association’s executive office. Eric Greenwald attended as Associate Advisory Council members. Paul Bondor, John Mancini, Gene Lee, as well as Khalil Nobles and Christine Lauture from the AAC were unable to attend.
The meeting was called to order by President Rob Isackson, Motion to waive reading of minutes was approved. A motion to approve minutes was passed.
Financial Report. Treasurer Scott Greenberg reported on the financials. The revenue is lower than previous years due to less members and no-in person events. The expenses are lower as well however still resulting in a loss for the association.
New Members. There were 5 new members: 2 practitioners and 3 students. Motions to waive reading of the names and admit new members were approved.
Judge’s Dinner. The board members discussed the event format and explored a hybrid model. The board members discussed checking if other organizations and companies have restrictions on attending an in-person event by surveying members of the Corporate Committee. Due to the uncertainty and lack of information around the Delta variant, this will be tabled for the next board meeting.
Amicus Briefs Committee.
David Goldberg reported that the committee is working on finalizing the brief in support of neither party for Unicolors, Inc. v. H&M,which is a copyright case involving registration irregularities in the 9th Circuit. NYIPLA’s position is that an intent to defraud is not required. He expects to be able to circulate for board review by Friday. The committee is monitoring a number of other cases, including GSK v. Teva, the Amgencase,Warhol v. Goldsmith copyright case involving fair use, the FTC v. Impax Labs anti-trust case, Biogen method of treatment patent case and a Section 112 case where the issue is whether it is enough to knock out a patent if only one of the claims is validated. The committee is monitoring the Sulzer Mixpac trade dress case but unlikely to get involved.
Legislative Action Committee. Rob Isackson provided the report as Colman Ragan had to leave the call. He reported that the draft comments for the Section 101 Patent Eligibility report requested by Congress have been circulated. The board members generally agreed that it was important to submit responses and discussed the appropriate positions to take. The proposed solution offered at the end was discussed and the members agreed that it made sense to flesh that out more before reviewing again. Rob will start the editing process.
SFIPLA Proposal. Rob Isackson reported that a board member of SFIPLA reached out to propose that the organizations collaborate, co-promote and co-sponsor activities. It was generally agreed that collaborating should be incremental, starting with CLEs and specific events where format lends itself.The board members discussed the benefits of such collaboration, such as expanding our speaker pool, potentially increase membership, expand PTO involvement and increase exposure to judges. Next, the Programs Committee will connect and explore options.
New Membership Category. The board discussed the idea of creating a new membership category to cover government/academia-related membership. There have been professors and PTO judges that have asked about membership. In the past, NYIPLA has extended a corporate rate membership. Currently, there are two individuals who would fall under the proposed category. The board discussed the various professors and judges who are active proponents of the organization and the value of designating a specific membership to encourage engagement in the overall IP community. To ensure the category would be accessible to law clerks and others in academia/government, the rate of $100 was proposed. A motion to create the new category and set the membership fee at $100 was approved.
The board discussed boosting corporate membership and noted that the Corporate Committee appreciates access to PTO, politics e.g., through president’s forums, education and networking opportunities. The committee identified major industries with local presence where there are no NYIPLA members, e.g., banking, finance, entertainment and publishing. The board discussed putting together a new membership committee or task force to focus on strategy to increase membership. Jenny Lee raised the point that the board had been considering new social media platforms such as Clubhouse and Slack in order to increase membership engagement and provide an added resource/forum for committee members. Eric Greenwald reported on his research into Slack. The board discussed the potential benefits of using Clubhouse as an advertising medium and as a resource for corporate members. A group of board volunteers will explore further.
Jonathan Berschadsky provided an update for Dave Bomzer on the Fall IP Transactions Bootcamp. Dave has organized weekly calls and ensured that all the agendas are ready. There are finalized speakers for certain sessions, along with prepared presentations and workshops.
Request for Life Membership
The Board approved a request from Ira Levy for Life Membership
A motion was made to grant life membership for one of our longstanding members who has recently encountered a health issue. All board members approved the motion.At 5:45 pm, a motion was made to adjourn the meeting to begin the committee reports, which was approved.
Amicus Briefs – David Goldberg, Corporate – Colman Ragan, Copyrights – Scott Greenberg, Conner Writing – Jenny Lee, Fashion Law – Cheryl Wang, Privacy, Big Data & Cybersecurity – Diana Santos, IOTY – Paul Bondor, IP Transactions – Jonathan Berschadsky, LAC – Colman Ragan/ Robert Isackson, Media – Gene Lee, Patent Law – Jonathan Berschadsky, Patent Litigation – Marc Pensabene, Presidents Forum – Robert Isackson, Programs – Heather Schneider, PTAB – Robert Rando, Publications – Jenny Lee, Strategic Plan – Robert Isackson, Trademark – Scott Greenberg, Trade Secret – John Mancini, Women – Abigail Langsam, Young Lawyers – Marc Pensabene, Centennial – Robert Rando
MINUTES OF SEPTEMBER 14, 2021
MEETING OF THE BOARD OF DIRECTORS OF THE
NEW YORK INTELLECTUAL PROPERTY LAW ASSOCIATION
NYIPLA PTAB & Young Attorney Committee on Review of PTAB Final Decisions
By: PTAB and Young Attorney Committees
On Tuesday, August 3, 2021, the PTAB and Young Attorney Committee hosted the Review of PTAB Final Decisions event. In this interactive presentation, the PTAB Committee and Young Lawyers Committee are thrilled to be joined by a group of distinguished members of the USPTO to share insights on the new Director Review process after Arthrex. PTAB Committee co-chair Charley Macedo, coordinator Chris Lisiewski, and other members of the PTAB Committee along with Young Lawyers Committee co-chair Jenna Deneault will then explain motion for reconsideration options, appeal options, and key milestones with appeal process along with the types of arguments that can be heard/not heard after the Supreme Court's recent decision in Arthrex.
Insights on Oral Hearings Before the PTAB
By: PTAB Committee
On Tuesday, September 7, 2021, the PTAB Committee hosted the Insights on Oral Hearing Before the PTAB event. In this interactive presentation, a distinguished group of USPTO officials, including Lead Judge Jessica Kaiser and Chief Clerk Erica Swift, will share insights on oral hearings before the PTAB with particular emphasis on new features available to the public, such as virtual hearings (rather than telephonic) for ex parte appeals.
PTAB Committee to Examine Open and Unresolved Issues After the Arthrex Decision
By: PTAB Committee
In this interactive presentation, PTAB Committee co-chair Charley Macedo, co-chair Ken Adamo, and other members of the PTAB Committee will discuss and explain open and unresolved appellate issues that still exist after the Supreme Court's June 21, 2021 decision in U.S. v. Arthrex Inc. Specifically, in its decision, the Supreme Court held that APJs are principal officers. However, the Supreme Court did not agree with the Federal Circuit's remedy and determined that final written decisions of APJs must be subject to review by the Director of the USPTO.
IP Transactions Bootcamp
By: David Bomzer
From October 7th to November 4th, 2021, NYIPLA launched the IP Transactions Bootcamp. It was geared towards junior and mid-level associates. Attendees learned practical skills from experienced attorneys and in-house counsel. Attendees also learned how to identify and navigate key issues in various types of agreements that touch upon IP, and engage in frequent mock negotiations. Attendees developed a close set of peers in this unique, hands-on training, and participated in classes that were interactive and include arguments, and similar activities, as well as professional development skills.
Last First Firm/Company/Law School State Membership
Akhavan Sahar Leichtman Law PLLC New York Student
Alrehaili Rahaf Indiana University Maurer School of Law Indiana Student
Angulo Maaike Fordham University School of Law New York Student
Asante Inez Rutgers Law School New Jersey Student
Beal Matthew Nelson Mullins Riley & Scarborough LLP New York Active 3+
Bourgeois Maya University of Iowa College of Law Iowa Student
Brennan Mary Kate Finnegan, Henderson, Farabow, Garrett & Dunner, LLP New York Active 3+
Brown Melissa Leichtman Law PLLC New York Active 3+
Fan Patrick Benjamin N. Cardozo School of Law New York Student
Harrow Danielle St. John's University School of Law New York Student
Hooks Ariel Benjamin N. Cardozo School of Law New York Student
Katti Pranav Leichtman Law PLLC New York Active 3-
Kim Lauren Fordham University School of Law New York Student
Leal Alan Seton Hall University School of Law New Jersey Student
Lesser Louis King & Spalding LLP California Associate
Ley Camille Benjamin N. Cardozo School of Law New York Student
Mell Vadim Benjamin N. Cardozo School of Law New York Student
Olsson Skalin Filippa Benjamin N. Cardozo School of Law New York Student
Park Seoryung University of Connecticut School of Law Connecticut Student
Peachman Scott Paul Hastings LLP New York Active 3+
Rappazzo Micah Stroock & Stroock & Lavan LLP New York Active 3+
Rodriguez Fernanda Washington University in St. Louis School of Law New York Student
Ruiz Juan Benjamin N. Cardozo School of Law New York Student
Singer Ryan Stroock & Stroock & Lavan LLP New York Active 3-
Stewart Robert Seton Hall University School of Law New York Student
Tozier Brianna Quinnipiac University School of Law Connecticut Student
Turko Jessica Foley Hoag LLP New York Active 3+
White Pamela Fordham University School of Law New York Student
Yeh Jack Benjamin N. Cardozo School of Law New York Student
WELCOME NEW MEMBERS
Robert Maldonado, Tonia Sayour, and Norman Zivin, formerly of Cooper & Dunham LLP, have joined Wolf, Greenfield & Sacks, P.C. as Counsel.
Steven Rizzi and Ramy Emad Hanna, formerly of King & Spalding LLP, have joined McKool Smith PC as Principals.
Martin Gusy, formerly of K&L Gates LLP, has joined Bracewell LLP as a Partner.
Wendy Stein, formerly of Gibbons PC, has joined Chiesa Shahinian & Giantomasi PC as a Member.
Keith Sharkin, formerly of Powley & Gibson PC, has joined Gordon Rees Scully Mansukhani, LLP as a Partner.
Aliya Nelson, Robert Rando, Jerry Juste, and Katie Heron, formerly of Taylor English Duma LLP, have joined Greenspoon Marder LLP, with Nelson and Rando joining as Partners, Juste joining as Of Counsel, and Heron joining as an Associate. Robert Rando is First Vice President of the NYIPLA.
Paul Squire, formerly of Kaufman Borgeest & Ryan LLP, has joined Polsinelli PC as a Shareholder.
Sapna Palla, formerly of Wiggin and Dana LLP, has joined Allen & Overy LLP, as a Partner.
P. Anthony Sammi, formerly of Skadden Arps Slate Meagher & Flom LLP, has joined Latham & Watkins LLP as a Partner.
Randy Friedberg, formerly of White and Williams LLP, has joined Stradley Ronon Stevens and Young LLP as a Partner.
Gary Gershik, Darren Haber, Christopher Dunham, and John White, formerly of Cooper & Dunham LLP, have joined Amster Rothstein & Ebenstein LLP, with Gershik and Haber joining as Partners and Dunham and White joining as Of Counsel.
Moving Up & Moving On
November 9 - 18, 2021
Fall Patent CLE Series
NYIPLA Publications Committee Editorial Team
Kyle Koemm and Margaret Welsh
Giselle Ayala Mateus
John Kenneth Felter
NYIPLA Executive Office
229 Seventh Street, Suite 202. Garden City, NY 11530