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|GRR Attorneys Secure Preliminary Injunction For
Richard S. Schurin
and Yuval H. Marcus
successfully represented E.
Gluck Corporation, the well-known watchmaker of many brands
including ARMITRON and NOW, in its efforts to preliminarily
enjoin an unauthorized user of its registered NOW trademark.
On November 3, 2008, Judge Victor Marerro of the United
States District Court for the Southern District of New York
granted E. Gluck Corporation's motion to preliminarily
enjoin the defendant from using the terms NOW and THE NOW
WATCH in association with the sale of watches. A copy
of the decision can be found here
|GRR Attorney Presentations
On March 26, 2009, Jeffrey M. Kaden
and Diana Muller
will speak on the topic
"Intellectual Property and Its Application to the Real
Estate Industry" as part of a CLE program presented by the
Intelletcual Property Committee and Real Property Section of
the Westchester County Bar Association. The program
will be held at 1133 Westchester Avenue in White Plains from
6-8 p.m. Register here
program was presented on February 10 as a CLE at the
Manhattan offices of the law firm of Golenbock Eiseman Assor
Bell & Peskoe LLP, and a video recording of the presentation
can be found here
On March 26, 2009, Yuval H. Marcus
will be a panelist at the
Search Engine Strategies 2009 Conference and Expo at the
Hilton New York hotel in Manhattan speaking on intellectual
property issues that arise in the context of search engine
optimization services. Additional details will be
May 18, 2009, Amy B. Goldsmith
and Jeffrey M. Kaden
will speak at the Surtex
Licensing Show, to be held at the Jacob K. Javits Center.
The topics they will cover include basic intellectual
property rights (patents, copyrights and trademarks) and the
mechanics of licensing from the perspectives of both the
owner/ licensor and the licensee/manufacturer. More
information is available here
, and registration information can be
On February 13, 2009, Jeffrey M. Kaden
and Maris Kessel gave a
presentation on the general topic of patents to the LIBRA
(Long Island Business Resource Association) networking
group. Jeffrey Kaden is one of the founders of LIBRA,
which meets monthly on Long Island. More information on
LIBRA can be found here
On December 2, 2008, Yuval H. Marcus
gave a CLE presentation on
the topic of the Copyright Fair Use Doctrine as one of four
panelists for a CLE program entitled "What's Old is New
Again -- The Re-Emergence of Copyright Law in
Business" for the Westchester/Southern Connecticut Chapter
of the Association of Corporate Counsel (WESFACCA).
|Fraud in the Trademark Office -- Avoiding
Cancellation of Trademark Registrations
|The Trademark Office has routinely invalidated
trademark registrations based on findings of fraud.
Applying a strict liability standard that does not require proof
of scienter or intent to defraud, the TTAB has cancelled
trademark registrations where the applicant knew or should have
known that certain statements made in trademark applications or
in renewal declarations were not accurate. The TTAB's fraud
standard is now on appeal. Until the appeal is decided,
however, the TTAB's standard for fraud remains the law in
opposition and cancellation proceedings.
The following are a few strategies to minimize the
risk of cancellation of trademark registrations based on fraud:
1. Prior to filing a use-based trademark application,
confirm that the mark is in fact in use with each and every good
or service listed in the application. To the extent that
some goods/services are not in use, it may be preferable to file
the application as an intent-to-use application for all of the
goods/services or file two applications, one based on use, and
the other, based on an intent-to-use.
Similarly, for intent-to-use applications, before filing an
application, confirm that there is a bona fide
intention to use the mark for all of the goods/services listed
in the application. Further, prior to filing a Statement
of Use it is important to verify that all of the goods/services
listed in the Notice of Allowance are in use. If not, do
not file a Statement of Use for all of the goods/services listed
or the registration that issues will be subject to cancellation
based on fraud.
3. Review the entire trademark
portfolio to assess whether any published applications or issued
registrations are vulnerable. If so, file new
applications. For applications not yet published, file
amendments to delete the goods/services that are not in use.
4. Before asserting trademark registrations in an
opposition or cancellation proceeding, review the file history
for each registration and confirm that no false statements were
made during the application process or when renewals were filed.
In particular, for registrations that contain more than one type
of good or service, confirm that the mark was in use for all
listed goods and services at each time that a declaration was
For further information, contact Yuval H. Marcus.
|Liability for Hyperlinking Depends on Context
in Which Link Appears
Jones Day v.
Blockshopper LLC, 08 CV 4572 (N.D. Ill. Nov. 13,
A ruling from a federal court in Illinois indicates that
whether hyperlinking to another website will give rise to
liability depends on the context in which the link appears.
The case was brought by Jones Day, a law firm, against
Blockshopper, operator of a website reporting on
residential real estate transactions in Chicago. On at
least two occasions, articles reporting on real estate
transactions of Jones Day associates appeared on the
Blockshopper website. The articles displayed
photographs of the associates and linked to Jones Day's
website without authorization. Jones Day filed a
lawsuit asserting various claims, including claims for false
designation of origin and trademark infringement.
Blockshopper moved to dismiss the complaint. The court
denied the motion as to Blockshopper. In doing so, the
court explained that Jones Day's allegations that
Blockshopper's activities were likely to confuse customers
as to whether Jones Day was associated with or endorsed
Blockshopper's website, if proven, could give rise to
liability; as a result, the court permitted Jones Day's
lawsuit to proceed. According to an article on
Slate.com, available here
, the parties recently settled the case.
For further information, contact Marc P. Misthal
|The Federal Circuit Applies New Standard For Design
Goddess, Inc. v. Swisa, Inc., 2006-1562 (Fed. Cir. Sept.
Egyptian Goddess brought an action against Swisa for
infringement of its design patent which covered a
rectangular, hollow nail buffer, featuring buffer surfaces
on three of four sides. Swisa's buffer, also rectangular
and hollow, featured buffer surfaces on all four sides.
In affirming the district court's grant of summary judgment
of non-infringement to Swisa, the Court of Appeals held that
the only test for determining whether there is infringement
of a design patent is the "ordinary observer" test.
The Court abandoned the "point of novelty" test as a second
independent test that must be met before finding
infringement of a design patent, finding that it is
inconsistent with the "ordinary observer" test and not
mandated by precedent. Now, the sole test of design
patent infringement is whether an ordinary observer familiar
with the prior art would believe the design claimed in the
patent and the design of the accused product are the same.
Using this test, the Court of Appeals affirmed the finding
of non-infringement, noting that it reached the same
conclusion as the district court, and for many of the same
For further information, contact Steven Stern
|Monster Cable Products, Inc. Sues Monster Mini
Golf, LLC and Case Quickly Becomes A Monster Headache
This past fall, Monster Cable Products, Inc. got more
than it bargained for when it sued Monster Mini Golf,
LLC, a franchisor of miniature golf businesses.
Initially, Monster Cable claimed that it needed to stop
Monster Mini Golf from using the name MONSTER in order to
protect its own famous MONSTER trademark. Monster Mini
Golf took their case to the public via the Internet and
other media, creating enormous public relations problems for
Monster Cable. According to Monster Mini Golf, the
dispute was a classic case of the big "monster" company
beating up on a little guy.
After taking a beating
in the PR war, Monster Cable agreed to both drop its lawsuit
and pay Monster Mini Golf's legal bills. In a message
on its website, Monster Cable tried its best to end the case
gracefully, announcing to the public that "[t]he sentiment
of our customers wins over our rights to protect the brand."
This case once again proves that even if you think you are
big tough monster, you better be careful who you try to push
For further information, contact Richard S. Schurin
|Court Enjoins Man from Using 25 Foot Missile
With "VIVA VIAGRA" Printed On Side
Arye Sachs of West Babylon, New York is the proprietor of
a business that sells outdoor advertising on decommissioned
military equipment such as fighter jets and missiles.
Mr. Sachs apparently thought that it would be funny to use
his pickup truck to tow a 25 foot decommissioned U. S.
Air Force Missile with the words VIVA VIAGRA printed on it
around Manhattan to promote his business. Mr. Sachs
towed his missile through the Midtown tunnel, and made
various stops throughout Manhattan, including at the
headquarters of Pfizer.
Pfizer, owner of the
VIAGRA trademark, did not see the humor in Mr. Sach's
activities. Pfizer sued Mr. Sachs for trademark
infringement, and the Court granted Pfizer a preliminary
injunction prohibiting Mr. Sachs from, among other things,
using or displaying the marks VIAGRA or VIVA VIAGRA on
"replica or actual missiles or aircraft." Pfizer now
has a motion for summary judgment pending.
aside the legality of using a registered trademark such as
VIAGRA in such a stunt, how was Mr. Sachs able to tow a
missile around Manhattan and through the Midtown tunnel
without the police or Homeland Security stopping him?
For further information, contact Richard S. Schurin
Intellectual Property News Editorial Board: Richard S. Schurin
), Marc P. Misthal
), Steven Stern
) and Yuval H. Marcus
) of Gottlieb, Rackman &
Suggestions, questions and
comments should be directed to the Editorial Board by email
or telephone (212) 684-3900.
For over thirty-five
years, Gottlieb, Rackman & Reisman, P.C. has provided legal
advice and guidance on all aspects of patent, trademark,
copyright, and unfair competition law, tailoring its counsel
to the specific needs of its clients. GRR is happy to
be of assistance to you.
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