Prosecution Group Luncheon

June, 2011

Trademarks

Report to Congress on TM Litigation Tactics

• Engage the private sector about providing free or low-cost legal advice to small businesses via pro bono programs and IPR clinics;

• Engage the private sector about offering continuing legal education programs focused on trademark policing measures and tactics; and

• Enhance Federal agency educational outreach programs by identifying resources that enable small businesses to further their understanding of trademark rights, enforcement measures, and available resources for protecting and enforcing trademarks.

How to Collect $$

USPTO seeks comments on fee-processing methods:– 1. comments or suggestions regarding the current fee-

payment system and/or refund experiences?– 2. Which existing payment methods are the most and

least valuable?– 3. Are there methods that we do not currently offer that

would provide enhanced value and service?– 4. How might we improve the online payment system?

TM Timelines

USPTO TM Activities

• Disclaimer practice roundtable – June 21• Performance metrics “exceeding targets”• Trademark Dashboard available• Pilot study on proposed rules for

Examiners to request additional information regarding goods and services to ensure use

• New TM Deputy Commissioner Mary Denison– IP Atty in D.C., INTA Bd. Dirs., member TPAC

Private Emails

• an e-mail subscriber enjoys a reasonable expectation of privacy in e-mail messages that are stored, sent or received through an ISP

• the government must obtain a probable cause warrant before it can compel an ISP to turn over the contents of a subscriber's e-mails– E-mail is the "technological scion" of regular mail – "[g]iven the fundamental similarities between e-mail and

traditional forms of communication, it would defy common sense to afford e-mails lesser Fourth Amendment protection."

• United States v. Warshak, 631 F.3d 266 (6th Cir. 2010),

This is Not a Red Cross On A White

Background• the "Red Cross Statute," 18 U.S.C. Sec. 706. prohibits unauthorized use of “the

emblem of the Greek red cross on a white ground, or any sign or insignia made or colored in imitation thereof.”

• Examiner refused Kappa Alpha fraternity logo• Penal statute so strictly construed:

– We find that the mark clearly depicts a Greek red cross. However, we find that when the mark is viewed as a whole, the distinctive shield design upon which the Greek red cross appears cannot be said to be merely a “white ground” within the meaning of the statute. Also, we find that the presence of the prominent red letters “KA” on the shield further serves to to make the mark, when viewed in its entirety, more than merely “the emblem of the Greek red cross on a white ground.”

• In re Kappa Alpha Order, Serial Nos. 77463997 and 77464003 (June 3, 2011) [not precedential].

Game Boy: No Go FlashBoy

Nintendo opposes FlashBoy for hand-held video games

– “Game Boy” is famous for 2(d) analysis• “staggering” sales and advertising figures plus media

recognition• "[c]onsumers are likely to see the mark FLASH BOY, and

believe that it is a version of GAME BOY intended to be used on or in connection with flash memory. Alternatively, they may believe that FLASH BOY is a 'speedier' version of GAME BOY."

• Applicant admitted that he did not have a business plan or any other documentation reflecting plans to "advertise, manufacture or otherwise use the mark FLASHBOY in commerce on the goods for which applicant seeks registration." = No Bona Fide Intent

• Nintendo of America, Inc. v. Adar Golad, Opposition No. 91178130 (May 31, 2011) [not precedential].

Contributory Dilution???

• Coach sues flea market operator for allowing vendors who sell counterfeit products

• 12(b)(6): no such cause of action – DENIED– Very few cases, but at least two DCTs have allowed

claim to be alleged (neither successful)– “While there is no authority directly on point, there

would seem to be no logical reason why the doctrine of contributory infringement should not apply to a claim under the federal antidilution law.” J. Thomas McCarthy

Coach Inc. v. Gata Corp., 98 USPQ2d 1911 (D.N.H. 2011)