New Rules for Trademark Trial and Appeal Board Practice

The Rules of Practice for the Trademark Trial and Appeal Board (TTAB) are changing effective January 14, 2017. The new rules will be applicable to all proceedings, including those filed before January 14, 2017 and pending on that date.  The new rules will apply to inter partes proceedings (oppositions, cancellations, concurrent use) and ex parte appeal proceedings.

More information about the new rules can be found on the TTAB website at this link:

https://www.uspto.gov/trademarks-application-process/trademark-trial-and-appeal-board-ttab?utm_campaign=subscriptioncenter&utm_content=&utm_medium=email&utm_name=&utm_source=govdelivery&utm_term=

FDA Regulation of Electronic Cigarettes

Here’s an excellent post by our Of Counsel Ashley Franco:

As new technologies appear, so do laws that regulate them. Changes in technology usually outpace laws put in place to regulate them; as a result, there is usually a gap between the time the technology emerges and time a law is enacted to regulate it. Until recently, the increasingly popular e-cigarette went without regulation. On May 5, 2016, the U.S. Food and Drug Administration finalized a rule extending its authority to include e-cigarettes as part of the tobacco products it can regulate. The new rule, effective August 8, 2016, imposes disclosure requirements to companies selling and/or manufacturing the e-cigarettes and/or any of its affiliated products.

One major implication of the new rule is that e-cigarette manufacturers will have to undergo a premarket review in which they must disclose the ingredients in the e-liquids used in the e-cigarette. The FDA stated the new requirements are in the interest of the consumers who should have the opportunity to evaluate the potential risks associated with consuming the e-cigarette liquids, which usually contain nicotine derived from tobacco.

It comes as no surprise that the FDA has decided to regulate e-cigarettes, since there are obvious health risks associated with consuming tobacco products. Since the e-cigarette’s introduction, it has gone under the radar with little to no regulation. You will most likely find individuals smoking e-cigarettes in the non-smoking sections of restaurants and bars. It has become a way for smokers to get their nicotine fix in areas where the common cigarette is banned by regulation. That seems to be heading to an end with the new regulation because under the new rule the FDA will be able to evaluate the dangers of the e-cigarette.

Under the new rule’s premarket review requirement, the FDA will be able to evaluate the dangers of the e-cigarette. For example, tobacco smokers are prohibited from smoking regular cigarettes in certain areas because of the known health risks associated with second hand smoke. The effects of e-cigarette second hand smoke is not certain as of yet, but will be investigated as part of the new rule and will most likely have an affect on where e-cigarette smokers can enjoy their e-cigarettes.

Who should worry about the outcomes of the new rule? Small businesses should certainly start looking into the impact this new rule will have on them. The new disclosure requirements will most likely have a negative effect on small businesses that may not be able to cover the costs of the additional disclosure requirements. The premarket review requirement imposes a great costs to all businesses that sell and/or manufacturer e-cigarettes and affiliated products.

If you manufacture e-cigarettes the rule requires you to:

  1.  Submit an application and obtain FDA authorization to market the e-cigarette
  2. Register establishment(s) an submit the product listing to FDA by December 31, 2016
  3. Submit a list of the ingredients associated with your e-cigarette and affiliated products
  4. Submit information on the harmful and potentially harmful constituents (HPHCs)
  5. Submit tobacco health documents
  6. Manufacture your tobacco product with the required warning statement on packaging and advertisements
  7. Market your tobacco product in compliance with the other applicable statutory requirements, rules and regulations.

If you sell e-cigarettes or their component parts that are made or derived from tobacco you are also subject to certain FDA requirements.

Complying with the law may be a long and complex process. We recommend you consult with a lawyer to help you understand and comply with the FDA regulations and policies.

For a copy of the Final Rule see https://www.federalregister.gov/articles/2016/05/10/2016-10685/deeming-tobacco-products-to-be-subject-to-the-federal-food-drug-and-cosmetic-act-as-amended-by-the#h-9

Controversial Copyright Bill Advances in California

The California Assembly recently passed a measure that would allow the state government to obtain copyrights for materials that it creates. Critics, such as the Electronic Frontier Foundation, claim that this measure could suppress the dissemination of government funded works. The measure, AB 2880, was passed by a vote of 76-3. Peter Scheer, Executive Director of the First Amendment Coalition, says that the assembly is stepping into a hornet’s nest, noting that the federal government itself does not claim copyright protection in its public works. Jim Ewert, General Counsel for the California Newspaper Publishers Association, says that his concern is the potential for an agency to use copyright as a means to limit the public’s ability to use records that a state or local agency has created. The California Chamber of Commerce has also come out against the proposed legislation.

Important Copyright Tips For Businesses

Copyrights are very powerful rights but often are not fully understood or protected by business owners.  Here are some important tips about copyrights with which all businesses should be familiar:

  1. Register: Businesses should identify and register their copyrights within 90 days of the publication of the copyrighted work.
  2. Notice:  Even though not required, we strongly recommend that businesses place an appropriate copyright notice on all copyrighted works to discourage infringement and cut off the “innocent infringer” defense.
  3. Rights: All businesses must make sure that they have the right (documented in writing) to use any copyrighted materials created by others.  Copyright issues sometimes can be hard to spot so we strongly recommend that businesses retain an experienced intellectual property attorney to conduct a periodic intellectual property audit.
  4. Agreements: All businesses must make sure they have appropriate written agreements in place with employees and other creative personnel regarding ownership and use of copyrighted materials (including, most particularly, materials created by employees and contractors) as well as agreements establishing the right to use copyrighted materials owned by others.
  5. Insurance: Businesses involved in any way in areas that involve the creation and use of copyrighted materials should explore obtaining insurance for infringement claims.  Please note that most commercial general liability policies do not cover intellectual property claims – the purchase of separate coverage usually is required.
  6. Infringement: Businesses should take seriously any infringement of its copyrighted materials as well as claims of infringement asserted by third parties.  In both situations, the business should promptly consult with an experienced copyright lawyer to determine an appropriate and cost-effective course of action.

Supreme Court to Hear Fight Over Cheerleader Uniforms

On September 30, 2015, we posted about a recent case that addressed whether decorative aspects of cheerleader uniforms could be the subject of copyright protection.  Our September 30 post can be found here: https://affinitylaw.wordpress.com/2015/09/30/three-cheers-for-the-wood-flooring-recent-cases-confirm-copyright-protection-for-cheerleader-uniforms-and-wood-flooring-pattern/

The United States Supreme Court recently decided to review the case.  More information can be found in this recent article in The Hollywood Reporter: http://www.hollywoodreporter.com/thr-esq/supreme-court-hear-fight-cheerleader-889321

As the article notes, while the case nominally is about cheerleader uniforms, the Supreme Court’s decision could have far-reaching implications  for Hollywood and could set  boundaries on the copyright protection afforded to costumes.  Stay tuned to this space for updates.

A Brief History Of Copyright Litigation About Popular Songs

Many of our readers may have read with interest the recent media about the copyright litigation concerning Led Zeppelin’s iconic “Stairway to Heaven” where the owners of the rights to a song entitled “Taurus” put out by the 60s band Spirit have sued Led Zeppelin for copyright infringement by the song “Stairway to Heaven.”  This is just the latest in a long line of lawsuits involving alleged infringement and plagiarism of the rights to popular songs.  Accusations of musical plagiarism are a recurring phenomenon, but only rarely end up being heard in formal legal proceedings. Many readers will remember the 2015 case where a jury awarded damages of $7.2 million against Robin Thicke and Pharrel Williams for infringing the copyright in Marvin Gaye’s “Got to Give It Up.”  These artists settled out of court because their songs too closely resembled songs by other artists:

 The Doors’ “Hello I Love You” (1968) – The Kinks’ “All Day and All of the Night” (1965).

Led Zeppelin’s “Whole Lotta Love” (1969) – Willie Dixon’s “You Need Love” (1962).

George Harrison’s “My Sweet Lord” (1970) – The Chiffons’ “He’s So Fine” (1962).

Rod Stewart’s “Da Ya Think I’m Sexy?” (1978) – Jorge Ben’s “Taj Mahal” (1972).

Steely Dan’s “Gaucho” (1980) – Keith Jarrett’s “Long As You Know You’re Living Yours” (1974).

Ray Parker Jr.’s “Ghostbusters” (1984) – Huey Lewis & The News’ “I Want a New Drug” (1984).

Hootie & The Blowfish’s “Tangled Up in Blue” (1995) – Bob Dylan’s “Tangled Up in Blue” (1975).

Janet Jackson’s “Got ‘Til It’s Gone” (1997) – Des’ree’s “Feels So High” (1991).

The Verve’s “Bittersweet Symphony” (1998) – The Rolling Stones’ “The Last Time” (1965).

Avril Lavigne’s “Girlfriend” (2007) – The Rubinoos’ “I Wanna Be Your Boyfriend” (1979).

Here are some sound-alike songs where copying has been rumored but have not resulted in formal legal cases:

Led Zeppelin’s “Since I’ve Been Loving You” (1970) – Moby Grape’s “Never” (1968)

Steely Dan’s “Rikki Don’t Lose That Number” (1974) – Horace Silver’s “Song for My Father” (1964)

Steve Miller Band’s “Rock n’ Me” (1976) – Free’s “Alright Now” (1970)

The Eagles’ “Hotel California” (1976) – Jethro Tull’s “We Used to Know” (1969)

Robbie Dupree’s “Steal Away” (1980) – The Doobie Brothers’ “What a Fool Believes” (1979)

Belinda Carlisle’s “Heaven Is a Place on Earth” (1987) – Bon Jovi’s “You Give Love a Bad Name” (1986)

R.E.M.’s “Hope” (1998) – Leonard Cohen’s “Suzanne” (1968)

Red Hot Chili Peppers’ “Dani California” (2006) – Tom Petty “Mary Jane’s Last Dance” (1993)

Bruce Springsteen’s “Radio Nowhere” (2007) – Tommy Tutone’s “867-5309/Jenny” (1982)

Prince’s “Guitar” (2007) – U2’s “I Will Follow” (1980)

 

Given the enduring popularity of “Stairway to Heaven,” the potential infringement damages could be massive – it will be interesting to see if Led Zeppelin chooses to litigate or settle out of court.  Stay tuned.

 

 

Launching A Website Or Commencing Advertising By Itself Is Not Sufficient Use In Commerce Of A Service Mark

Trademark owners often mistakenly assume that they merely have to put up a website or commence advertising to gain trademark rights in a service mark used on the website or in the advertising.  By its March 2015 decision in Couture v. Playdom, Inc., the Federal Circuit Court of Appeals confirmed that such activity, without actually providing the services offering on the website or in the advertising, does not constitute sufficient trademark use.

In Couturethe Federal Circuit tackled the question of “whether the offering of a service, without the actual provision of a service, is sufficient to constitute use in commerce under Lanham Act§ 45, 15 U.S.C. § 1127.”  Section 45 provides that a service mark is used in commerce “when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State” (emphasis added). Citing decisions in the Second, Fourth and Eighth Circuits, the Federal Circuit held that Section 45 requires the actual rendering of services for there to be use in commerce.

The Couture decision highlights what can happen when a trademark owner does not do sufficient strategic planning.  The trademark owner in Couture filed its application in May 2008 and registration was granted in January 2009.  The trademark owner’s application was under Section 1(a) of the Trademark Act (i.e. based on actual use) even though the trademark owner had only placed the service mark at issue on a website that was “under construction” at the time of the application and registration.  The trademark owner did not actually begin rendering services until March 2010.  Under such circumstances, the trademark owner could have better protected his trademark rights by filing an application under Section 1(b) of the Trademark Act based on an “intent to use.”

 

 

Once A Cheat, Always A Cheat?

Here’s an interesting post written by our associate attorney Ashley Franco about the recent Volkswagen scandal:

In 1973 Volkswagen (VW) settled with the Justice Department for $120,000 for cheating on its emissions test.  Now more than forty years later, Volkswagen has again been caught cheating on its emissions test.  Apparently VW installed software in its diesel vehicles which was specifically designed to pass emissions tests without actually being in compliance.

So what exactly is the harm done by Volkswagen?  The Environmental Protection Agency states that the cheating software allows specific VW models to pass emissions test while actually emitting more than 40 times the legal limit.  This means that the VW vehicles with the cheating software emit 40 times more that the amount of harmful fumes allowed.  VW has admitted to creating the software specifically to lower the emissions reported by its vehicles during inspections.  Cheating on its emissions tests has already resulted in a dramatic plunge in VW’s stock price.  VW also lost its CEO and is facing billions of dollars in fines.

What everyone should learn from VW’s mistake is that when dealing with state and federal laws, you don’t want to swindle your way into compliance.  It is important to consult with a lawyer to make sure that your business practices are in conformity with applicable laws and regulations.  Even if you are not intentionally breaking the law, you may still be inadvertently in violation of a law and/or regulation, thereby  putting you at risk of civil and criminal liability.

In VW’s case, under the Clean Air Act (the federal law designed to control air pollution), each violation may result in up to a $37,500 fine.  VW is suspected of having more than 400,000 violations. A $37,500 fine multiplied by 400,000 violations results in over $15 billion in potential fines being faced by VW simply by cheating on its emissions tests.

This isn’t the first time a car company has been fined by US regulators. Last year General Motors (GM) was facing civil and criminal penalties for installing faulty ignition switches in over 2.6 million vehicles.  However, GM reached a $900 million settlement with US officials.  The main difference between GM’s liability and VW’s potential liability is that VW’s cheating devices did not cause any deaths, whereas GM’s faulty ignition switches did.  That doesn’t mean that there won’t be suits filed.  A recent survey by Big Law Business of the nation’s court dockets identified that twenty federal lawsuits have already been filed against VW based on the diesel scandal.   As of the date of this posting there have not been any settlements by VW so it is still too early to predict how the VW scandal will resolve.  However, companies certainly can learn from the VW scandal that it simply does not pay to cheat on compliance with federal and state laws and regulations.

While The Scope Of Copyright Protection Is Broad, Two Recent Cases Involving Yoga Positions And Recipes Show That There Are Limits

In a recent post in this space, we commented on several cases that illustrated that the scope of copyright protection is extremely broad (see here: https://affinitylaw.wordpress.com/2015/09/30/three-cheers-for-the-wood-flooring-recent-cases-confirm-copyright-protection-for-cheerleader-uniforms-and-wood-flooring-pattern).  Two recent cases show that while copyright protection is broad, there still are limits:

Bikram’s Yoga College of India, L.P. v. Evolution Yoga, LLC:  In this well-publicized case, the issue was whether a sequence of 26 yoga positions and two breathing exercises practiced in a specific order, called the “Sequence” and developed by Bikram Choudhury (a seminal figure in making yoga so popular in the United States and throughout the world and the creator of Bikram Yoga, sometimes called “hot yoga”), could qualify for copyright protection.  In 1979, Choudhury published the book “Bikram’s Beginning Yoga Class” that includes descriptions and photographs of the Sequence in practice. In 2002, Choudhury also registered a copyright on the “compilation of exercises” contained in his book.  In 2009, the defendants founded their own yoga studio and offered “hot yoga” classes that included the Sequence.  Choudhury sued for copyright infringement claiming that the defendants infringed on his copyrighted works by offering yoga classes featuring the Sequence.

On October 8, 2015, the Ninth Circuit Court of Appeals held that the Sequence falls squarely within the exclusion detailed in Section 102(b) of the Copyright Act, which excludes from copyright protection “any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated or embedded in such work.”  The Ninth Circuit found the Sequence was a process for obtaining physical and emotional fitness and was, therefore, not copyrightable.

Tomaydo-Tomahhdo, LLC v. Vozary:  The issue in the Tomaydo-Tomahhdo case was whether a book of recipes could qualify for copyright protection.  The plaintiff was a restaurateur who created and ran a successful restaurant and delivery catering business.  In 2012, the plaintiff assembled a book of recipes that had been developed for the restaurant.  The defendant was a former partner in the plaintiff’s business.  He copied the plaintiff’s recipes and used them in a competing catering business, and the plaintiff sued him for copyright infringement.

On October 20, 2015, the Sixth Circuit Court of Appeals held there was no copyright infringement because neither the recipes themselves nor the book which compiled the recipes were entitled to copyright protection.  In so holding, the Sixth Circuit explained that the recipes themselves are not covered by copyright because they are simply listings of facts (i.e. the ingredients) and functional instructions how to assemble the ingredients.  Likewise, the Sixth Circuit held that the recipe book did not have any originality (such as original commentary, pictures, etc. by the author) that qualified for copyright protection separate from the recipes themselves.

In both the Bikram Yoga case and the Tomaydo-Tomahhdo case, the parties claiming copyright protection may have been able to take steps to protect their intellectual property other than merely claiming copyrights in the materials addressed by those cases.  As always, we highly recommend that businesses consult with experienced intellectual property counsel to assess what IP protection may be available to the business.

 

 

 

 

Make Sure There Is Evidence Of A Bona Fide Intent To Use Before Filing That Intent-To-Use Application!

In the recent case of MZ Berger & Co. v. Swatch AG, the US Court of Appeals for the Federal Circuit affirmed a decision by Trademark Trial and Appeal Board (TTAB) to sustain an opposition to MZ Berger’s intent-to-use application for the trademark “iWatch.”  By way of background, an intent-to-use application allows an applicant to essentially reserve a trademark so long as it has a “bona fide intent to use” the trademark in the future.  The issue that has arisen in numerous cases over the years is what exactly is required to establish the requisite bona fide intent to use.

In the MZ Berger case, the evidence showed that MZ Berger only had an “aspiration” to reserve trademark rights in the iWatch name in case in decided to develop an associated watch.  MZ Berger had never sold watches before, and there was no evidence that MZ Berger had ever taken any steps towards developing a watch product.  The Federal Circuit therefore concluded that there was no evidence of a bona fide intent-to-use the iWatch mark.

The take-away from the MZ Berger case is that a mere subjective intent to use a trademark in the future is not a sufficient basis to establish a bona fide intent to use.  Instead, if an intent-to-use application is challenged, the applicant must be able to produce objective evidence showing that concrete steps had been taken as of the date the application was filed to start commercializing the product or service to be marketed and sold using the proposed mark.

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