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Intellectual Property Law

Wednesday, June 28, 2017

Constitutionality of Trademark Law's Scandalous Provision Remains Questionable after Supreme Court Decision Invalidating Disparagement Provision

Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), bars registration of marks that consist of or comprise matter which may disparage persons, institutions, beliefs, or national symbols, or bring them into contempt or disrepute (“the disparagement provision”), and marks that consist of or comprise immoral or scandalous matter (“the scandalousness provision”).  These provisions were challenged in separate court actions as unconstitutional under the Free Speech Clause of the First Amendment.  See Matal v. Tam, No. 15-1293 (U.S. Supreme Court on petition for certiorari from in In re Tam, No. 14-1203 (Federal Circuit) (disparagement provision) and In re Brunetti, No. 15-1109 (Federal Circuit) (scandalousness provision).  In 2015, the Federal Circuit held that the disparagement provision constitutes viewpoint discrimination and is facially unconstitutional under the First Amendment’s Free Speech Clause.  In re Tam, 808 F.3d 1321, 1358, 117 USPQ2d 1001, 1025 (Fed. Cir. 2015) (en banc), as corrected (Feb. 11, 2016).  On June 19, 2017, the Supreme Court of the United States decided Matal v. Tam, 582 U.S. ___ (2017), which affirmed the judgment of the Federal Circuit.  Id.  The Federal Circuit has ordered the parties to submit supplemental briefing in Brunetti explaining how the constitutionality of the scandalousness provision should be resolved in light of the Supreme Court’s decision in Tam.

The United States Trademark Office ("USPTO") has been suspending action on pending applications involving marks subject to refusal under the disparagement and scandalousness provisions until the Tam and Brunetti litigations conclude.

Because the constitutionality of the scandalousness provision remains pending before the Federal Circuit in Brunetti, the USPTO will continue to suspend examination of an application based on the scandalousness provision of Section 2(a) until the Federal Circuit issues a decision in Brunetti, after which the USPTO will re-evaluate the need for further suspension.

6:11 am cdt 

Thursday, June 22, 2017

You can go disparage yourself (or others)!

The U.S. Supreme Court recently ruled that the Trademark Office's rejection of trademarks that "disparage" others violates the First Amendment.

The decision may pave the way for the Washington Redskins’ to keep the team’s controversial name.

The ruling came in a case that involved an Asian American rock group called the Slants, which tried to register the band’s name in 2011. The band was turned down by the U.S. Patent and Trademark Office because of a law against registering trademarks that are likely to disparage people or groups.

The Supreme Court ruled the “disparagement clause” of the federal trademark law was not constitutional, even though it was written evenhandedly, prohibiting trademarks that insult any group.

“This provision violates the Free Speech Clause of the First Amendment,” Justice Samuel A. Alito Jr. wrote in a section of the opinion supported by all participating justices. “It offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.”

6:53 am cdt 

Friday, March 20, 2015

WIEMELT KNECHTEL again ranked among the Top Trademark Firms in the U.S.
WIEMELT KNECHTEL was also ranked among the "TOP TRADEMARK FIRMS" in the U.S. in the May 2014, May 2013, May 2012, May 2011, May, 2010 and May 2009 issues of Intellectual Property Today, a monthly publication focused on legal issues in patent, trademark and copyright law.  WIEMELT KNECHTEL was also ranked among the "TOP PATENT FIRMS" in the U.S. in the March 2013, February 2012, and March 2010 issues of Intellectual Property Today.
10:38 am cdt 

Monday, May 12, 2014

Wiemelt Knechtel was again ranked among the "TOP TRADEMARK FIRMS" in the U.S.

 

Wiemelt Knechtel was again ranked among the "TOP TRADEMARK FIRMS" in the U.S. in the May 2014 issue of Intellectual Property Today, a monthly publication focused on legal issues in patent, trademark and copyright law.  Wiemelt Knechtel was also ranked among the "TOP PATENT FIRMS" in the U.S. in the March 2013, February 2012 and March 2010 issues of Intellectual Property Today.  Wiemelt Knechtel was also ranked among the "TOP TRADEMARK FIRMS" in the U.S. in the May 2013, May 2012, May 2011, May 2010 and May 2009 issues of Intellectual Property Today.

11:36 am cdt 

Wednesday, May 15, 2013

Wiemelt Knechtel ranked again among the "TOP TRADEMARK FIRMS" in the U.S. in the May, 2013 issue of Intellectual Property Today,

Wiemelt Knechtel was ranked among the "TOP TRADEMARK FIRMS" in the U.S. in the May 2013 issue of Intellectual Property Today, a monthly publication focused on legal issues in patent, trademark and copyright law.  Wiemelt Knechtel was also ranked among the "TOP PATENT FIRMS" in the U.S. in the March 2013, February 2012 and March 2010 issues of Intellectual Property Today.  Wiemelt Knechtel was also ranked among the "TOP TRADEMARK FIRMS" in the U.S. in the May 2012, May 2011, May 2010 and May 2009 issues of Intellectual Property Today.
11:40 am cdt 

Why You Should Hire a Trademark Lawyer

WHY SHOULD YOU CONSIDER USING THE SERVICES OF AN EXPERIENCED TRADEMARK ATTORNEY TO FILE TRADEMARK APPLICATIONS?

A recent study indicates that hiring an experienced trademark attorney statistically gives you a much greater chance of successfully registering your trademark or service mark.

In “Do Trademark Lawyers Matter?” University of North Carolina School of Law faculty members Jon McClanahan and Deborah Gerhardt studied applications filed from 1985 to 2010 to determine whether having a trademark attorney makes a difference in getting your application approved by the USPTO.  The study concluded that yes, in fact, it does.  “These data suggest that the presence of a lawyer made a meaningful difference,” the researchers wrote. 

 The study found that inexperienced, non-attorney applicants’ chances for registration would have increased by 50 percent if they had used an attorney to file their application.

10:24 am cdt 

Monday, March 11, 2013

2:02 pm cdt 

Wiemelt Knechtel ranked among the "TOP PATENT FIRMS" in the U.S.

Wiemelt Knechtel was ranked among the "TOP PATENT FIRMS" in the U.S. in the March, 2013 issue of Intellectual Property Today, a monthly publication focused on legal issues in patent, trademark and copyright law.  Wiemelt Knechtel was also ranked among the "TOP PATENT FIRMS" in the U.S. in the February, 2012, March, 2011, and March, 2010 issues of Intellectual Property Today.  Wiemelt Knechtel was also ranked among the "TOP TRADEMARK FIRMS" in the U.S. in the May, 2012, May, 2011, May 2010 and May, 2009 issues of Intellectual Property Today.
2:01 pm cdt 

Monday, February 18, 2013

Mark E. Wiemelt appears on WBBM Noon Business Hour to discuss Tiffany lawsuit against Costco

Mark E. Wiemelt, of WIEMELT KNECHTEL, appeared on the WBBM Noon Business Hour, on February 15, 2013, to discuss the Tiffany lawsuit against Costco for selling alleged counterfeit engagement rings under the Tiffany name.  Mr. Wiemelt and the WBBM Noon Business Hour hosts, Sherman Kaplan and Kris Kridel, discussed issues regarding detection of counterfeit products and enforcement of intellectual property rights, including trademarks and copyrights.
10:02 am cst 

Wednesday, December 19, 2012

Supreme Court to hear case involving reverse payment settlement in generic drug case

The Supreme Court has agreed to hear the case of Federal Trade Commission v. Watson Pharmaceuticals, et. al. (11th Cir.). This case involves the issue of “reverse payment” settlement agreements. In these types of agreements, a generic drug company agrees to drop its challenge to a brand drug company’s patent and refrain from entering the market for a specified period of time in exchange for a payment by the brand drug company to the generic drug company.

There is a split in several circuits with respect to the legality of reverse payment agreements. For example, the Third Circuit has found that “reverse payments” are prima facie evidence of an unreasonable restraint of trade, which may result in a violation of the antitrust laws. The Federal Circuit, however, has found that such agreements are valid if they do not extend beyond the exclusionary scope of the patent.

The Supreme Court decision is expected by the end of June 2013.  Until then, parties should continue to be cautious about entering into such agreements and should consider the circuit split when doing so.
11:20 am cst 

Friday, September 28, 2012

Inventions take more than Eureka moment

Mark E. Wiemelt, of WIEMELT KNECHTEL, was quoted in a September 26, 2012 Suburban Life article entitled Inventions take more than Eureka moment.  The article addressed the expense of defending patents during patent infringement lawsuits.
5:51 pm cdt 

Wednesday, July 25, 2012

Slep-Tone lawsuit in Chicago appears to be subject to a Motion to Dismiss and/or Sever


The recent lawsuit filed by Slep-Tone Entertainment Corporation against numerous karaoke DJs (“KJs”) and venues in Chicago for alleged infringement of its SOUND CHOICE trademark and related trade dress appears to be subject to a Moton to Dismiss and/or Sever for Improper Joinder.  (Case No. 12-5750 in the Northern District of Illinois.)

In addition, the Defendants may have insurance coverage for the lawsuits.  Of course, it may not always be in the Defendant's best interest to trigger insurance coverage. This decision should be made by counsel familiar with the merits of the intellectual property claims, as well as the insurance coverage issues.  Click here for an overview of FREE DEFENSE for IP infringement lawsuits.

If you have questions, please feel free to contact Attorney Mark Wiemelt at 312-372-7664 or by email at mark@wiemeltlaw.com.

1:32 pm cdt 

Tuesday, July 17, 2012

Supreme Court Decision Favors Generics

On April 17, 2012, the Supreme Court, in Caraco Pharmaceutical Laboratories, Ltd. v. Novo Nordisk A/S, confirmed that generic drug manufacturers can challenge brand-name use-code descriptions in patent litigation.

The Supreme Court interpreted a portion of the Hatch-Waxman Act dealing with section viii statements.  In particular, it addressed use codes and carve-out drug labeling and ruled that it does not make sense to allow patentees to block unpatented treatment methods by filing inaccurate use codes with the FDA.  "Congress meant (as it usually does) for the provision it enacted to fit within the statutory scheme—here, by facilitating the approval of non-infringing generic drugs under section viii.”

If you have questions, please feel free to contact Wiemelt Knechtel at 312-372-7664 or 602-910-4250 or by email at
mark@wiemeltlaw.com or rknechtel@wiemeltlaw.com.
11:06 am cdt 

Thursday, July 12, 2012

Seventh Circuit Ruling Favors Trademark Licensees

On July 9, 2012, the U.S. Court of Appeals for the Seventh Circuit issued its decision in Sunbeam Products, Inc. v. Chicago American Manufacturing, LLC, ruling in favor trademark licensees whose licenses are rejected in bankruptcy by trademark owners.  Under Sunbeam, rejection of a trademark license by a trustee does not terminate the license rights.
 
The full impact of the Seventh Circuit's Sunbeam decision is yet to be determined and many questions remain.  However, because the Seventh Circuit's opinion creates a split of authority with the Fourth Circuit's 1985 decision in Lubrizol Enterprises, Inc. v. Richmond Metal Finishers, Inc. it may lead to a Supreme Court review.  Significantly, the Seventh Circuit sided with scholarly criticism of the Lubrizol decision and soundly rejected same, and Sunbeam is the first court of appeals decision in 27 years to challenge Lubrizol's view of how rejection impacts an intellectual property license.  Accordingly, the Sunbeam decision has the potential to impact licensee rights in cases across the country.

If you have questions, please feel free to contact Wiemelt Knechtel at 312-372-7664 or 602-910-4250 or by email at
mark@wiemeltlaw.com or rknechtel@wiemeltlaw.com.

8:44 am cdt 

Monday, July 9, 2012

U.S. Patent Office Issues Prometheus Examination Guidelines

On July 3, 2012, the U.S. Patent Office issued its
2012 Interim Procedure for Subject Matter Eligibility Analysis 0f Process Claims Involving Laws of Nature.  The guidelines state that they are "for use by USPTO personnel in determining subject matter eligibility of process claims involving laws of nature under 35 U.S.C. § 101 in view of the decision by the United States Supreme Court in Mayo Collaborative Services v. Prometheus Laboratories, Inc.  If you have questions, contact Wiemelt Knechtel at 312-372-7664 or 602-910-4250 or by email at mark@wiemeltlaw.com or rknechtel@wiemeltlaw.com.
11:47 am cdt 

Tuesday, May 29, 2012

Wiemelt Knechtel again ranked among TOP TRADEMARK FIRMS in U.S.

Wiemelt Knechtel was ranked among the "TOP TRADEMARK FIRMS" in the U.S. in the May, 2012 issue of Intellectual Property Today, a monthly publication focused on legal issues in patent, trademark and copyright law.  Wiemelt Knechtel was also ranked among the "TOP PATENT FIRMS" in the U.S. in the February 2012 and March 2010 issues of Intellectual Property Today.  Wiemelt Knechtel was also ranked among the "TOP TRADEMARK FIRMS" in the U.S. in the May, 2011, May 2010 and May, 2009 issues of Intellectual Property Today.

11:07 am cdt 

Thursday, April 26, 2012

The United States Patent and Trademark Office is including a WARNING FROM THE USPTO CONCERNING UNOFFICIAL TRADEMARK SOLICITATIONS when issuing Certificiates of Registration for trademarks and service marks.  A copy of the Warning is reproduced below:

USPTOWarning.JPG
 
3:24 pm cdt 

Wednesday, March 21, 2012

In a unanimous decision, the United States Supreme Court yesterday issued its opinion in Mayo Collaborative Services v. Prometheus Laboratories. In an opinion authored by Justice Breyer, the Court found that the patent claims at issue were not patent eligible and reversed the Court of Appeals.  We first wrote about this case on December 13, 2011. Briefly, the case addresses whether there is a right to gain patent monopoly over a medical diagnostic technique, or more generally, whether a patentee can monopolize basic, natural biological relationships claimed as a diagnostic procedure.  (For a more detailed discussion of the background and pre-Supreme Court procedure, see our December 31, 2012 blog entry.)  The Court held no, there is no such right.

The decision, for this author,  really brought nothing new to light and was, for all practical purposes, a fact specific case that really shed no new light on the scope of the patent law and where natural phenomenon fit in it.  Instead of taking the opportunity to clarify the issue of patentability of inventions containing natural phenomenon, the Court merely rehashed prior cases and found that the patents at issue fit somewhere between Dia­mond v. Diehr (patent found claim eligible- “‘a process is not unpatentable simply because it contains a law of nature or a mathematical algorithm.’”) and Parker v. Flook (patent found claim ineligible- provid[ing] a[n unpatentable] formula for computing an updated alarm limit).  The Court found that the Prometheous patent were more similar to the Flook patent.

The Court also reiterated, as it had in remanding this case back to the Court of Appeals after hearing it the first time, that the Bilski, “machine or transformation” test was not an absolute but merely one marker of patentability. The Court then re-stated that is has repeatedly emphasized a concern that patent law not inhibit future discovery by improperly tying up the use of laws of nature and the like, and there is a danger that granting patents that tie up their use will inhibit fu­ture innovation, a danger that becomes acute when a patented pro­cess is no more than a general instruction to “apply the natural law,” or otherwise forecloses more future invention than the underlying discovery could reasonably justify.

Perhaps the most instructive sections of the opinion were when the Court: (1) appeared to say, indirectly, that Prometheous claimed to broadly: [“o]ne problem with [process] patents is that the more abstractly their claims are stated, the more difficult it is to determine precisely what they cover.” (quoting C. Bohannan & H. Hovenkamp, Creation without Restraint: Promoting Liberty and Rivalry in Innovation 112 (2012) and (2) admitted “Courts and judges are not institutionally well suited to making the kinds of judgments needed to distinguish among differ-ent laws of nature. And so the cases have endorsed a bright-line prohibition against patenting laws of nature, mathematical formulas and the like, which serves as a somewhat more easily administered proxy for the underlying “building-block” concern” (in other words, we can’t figure it out so this is what we came up with for the time being).

While the outcome of the case is sensible, the approach by the Court was not as strong as it could have been.  So, the long and short of it appear to be that: (1) when dealing with any invention that includes natural phenomenon (but don’t all inventions at some level) do not claim them too broadly and (2) be sure, when including natural phenomenon in a claim, to subordinate the natural phenomenon to a defined process.

Please contact Wiemelt Knechtel at 602-901-4250 or 312-372-7664 or by email at rknechtel@wiemeltlaw.com or mark@wiemeltlaw.com to discuss how we can help you protect your intellectual property. 
10:33 am cdt 

Monday, March 12, 2012

11:43 am cdt 

Choice of a New Generation
Mark E. Wiemelt, of WIEMELT KNECHTEL, was quoted in a March 12, 2012 Advertising Age feature article entitled Decades After Pepsi, MOM Is 'Choice of a New Generation'.  The article addressed potential trademark rights ownership, abandonment and residual goodwill issues in the context of MOM Brands' (Malt-O-Meal) use of Pepsi's iconic slogan "Choice of a New Generation."  Advertising Age is "is the leading global source of news, intelligence and conversation for marketing and media communities."    
11:42 am cdt 

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