Prosecution Lunch October 2010

Trademark Bullies? USPTO is requesting feedback from U.S. trademark owners, practitioners, and others regarding their experiences with litigation tactics, especially those involving an attempt to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner. –Accepts anecdotal evidence –Eliciting suggestions to address any allegedly problematic litigation tactics.

Credit Card Processing = Contributory Liability? Gucci successfully litigated against TheBagAddiction.com, which admitted that they sold counterfeit Gucci products Gucci sued credit card processing services who knowingly enabled these sales by marketing to high risk accounts such as replica merchants Factual allegations sufficient to support intentional inducement or sufficient control theories (sought out by marketing and could have prevented transactions) Motion to dismiss for failure to state a claim DENIED. Gucci America Inc. v. Frontline Processing Corp., No. 09 Civ. 6925(HB), 2010 WL (S.D.N.Y. June 23, 2010),

Cant Sell A Copyright License Vernor purchased copies of Autodesks AUTOCAD from a licensee and then resold them on eBay Autodesk sent C&D letter, Vernor filed DJ for non- infringement - District Ct. granted Vernor SJ based on 1 st sale doctrine Ninth Circuit reversed and vacated: –Autodesk distributes Release 14 pursuant to a limited license agreement in which it reserves title to the software copies and imposes significant use and transfer restrictions on its customers. –Because Vernor did not purchase the Release 14 copies from an owner, he may not invoke the first sale doctrine Vernor v. Autodesk Inc., 96 USPQ2d 1201 (9th Cir. 2010)

Is Beverly Stayart Famous? Beverly Stayart searched her name in Yahoo, found links to pharmaceuticals & pornography. Believes she is the only Beverly Stayart Bev claims to be a sophisticated, well- educated, and highly intelligent professional women. –She has an MBA from U.Chicago, –is passionate about the environment, particularly the plight of wild horses, wolves and baby seals. –She has written two poems about baby seals that appear on a Danish website

Is Beverly Famous? Bev sued Yahoo and others under Lanham Act demanding that shameful search results be removed D.Ct. dismissed for lack of standing 7 th Cir. Affirmed: –Standing requires a commercial interest, 43(a) usually asserted against competitors –Bevs humanitarian efforts, advocacy, boycotting and scholarly posts Stayart v. Yahoo!, Inc. et al, No (7 th Cir. Sept. 30, 2010)

Trade (Un)Dress In re Chippendales USA, Inc. (FC 2010) 1979: intro of Cuffs & Collar costumes 2003: Reg. No. 2,694,613, based on acquired distinctiveness (no inherent distinctiveness) 2008: Section 8/15, mark is incontestable

Trade (Un)Dress New application in 2005: inherently distinctive TTAB refuses registration –Test: Seabrook Foods (CCPA 1977) –Factors: 1) common shape/design; 2) unique, unusual in particular field; 3) mere refinement of well-known ornamentation for class FC affirmed –Packaging, not product design; Samara Bros. N/A –Cuffs & Collar costume mere refine- ment of Playboy Bunny costume