Pattishall IP Blog

December 10, 2010

The Seventh Circuit Clarifies what Constitutes an “Exceptional Case” under the Lanham Act and Calls for Uniformity among the Circuits

Filed under: Litigation — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 11:10 am

Categories: Trademark (General)
Tags:  Trademark Infringement, Attorney’s Fees, 7th Circuit, Ashly A. Iacullo

by Ashly Iacullo, Trademark Attorney

The Lanham Act allows prevailing parties to recover an award of attorneys’ fees in “exceptional cases.”[1] Cases have been held “exceptional”, for example, where the suit was frivolous, or the infringement in bad faith, or there was misconduct during litigation.

Since its addition to the Lanham Act in 1975, the circuit courts have grappled with what constitutes an “exceptional” case and, accordingly, have set different standards.  In some jurisdictions, the standards for recovery by the plaintiff differ from the standards for recovery by the defendant. (more…)

December 8, 2010

Ninth Circuit Finds that Trademark Owner Did Not Exercise Adequate Quality Control Under an Implied License

Filed under: Licensing — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 2:46 pm

Categories:  Trademark (General)
Tags:  Licensing, 9th Circuit, Ashly A. Iacullo

by Ashly Iacullo, Trademark Attorney

We previously highlighted the importance of quality control in trademark licensing.[1] In most cases, an express, written trademark license governs the trademark owner’s duty to exercise quality control and also provides the method and manner in which the goods sold under the licensed trademark will be inspected.  But what happens when no such express license exists?

The Ninth Circuit recently addressed this issue in FreecycleSunnyvale v. The FreeCycle Network, No. 4:06-cv-00324 (9th Cir. Nov. 24, 2010).[2] Even where an express license does not exist, a trademark owner still has an obligation to control the use of its marks.  Although the absence of a written agreement itself is not fatal, a trademark owner must establish firm standards for use of its trademarks and ensure that those standards are maintained.

In the spring of 2003, TFN popularized the concept of “freecycling,” or donating unwanted items to others rather than disposing of them.  This practice is primarily conducted through online groups including Yahoo!, Google and other similar forums.  TFN had been using the trademarks FREECYCLE, THE FREECYCLE NETWORK and a logo (“FREECYCLE Marks”)[3] and licensed them to others. (more…)

March 11, 2010

E-Discovery Guidelines and the Seventh Circuit’s Pilot Program

Filed under: E-Discovery — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 9:49 pm

by Ashly Iacullo and Ian J. Block, Trademark Attorneys

Overbroad discovery requests and acrimony between parties add to litigation costs on both sides of a lawsuit.  In an age in which litigants literally are able to produce terabytes of material—which can take thousands of man-hours to digest and analyze—e-discovery’s rising prevalence in federal litigation amplifies the potential cost of discovery even further.  And, as demonstrated in Judge Shira Scheindlin’s scathing opinion against litigants’ e-discovery methods in Pension Committee of University of Montreal Pension Plan v. Banc of America Securities, LLC,[1] courts expect litigants to preserve their electronically stored information (“ESI”) and are willing to impose harsh penalties for a party’s failure to meet its duties.  Given this landscape, Chief Judge James F. Holderman of the United States District Court for the Northern District of Illinois directed the Seventh Circuit Electronic Discovery Committee to develop and implement principles to facilitate more focused and less costly discovery of ESI.  In September 2009, the Committee released its Principles Relating to the Discovery of Electronically Stored Information (“Principles”).[2] (more…)

February 18, 2010

Federal Judges’ Practice Tips for Young Lawyers

Filed under: Pattishall — Tags: , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 3:33 pm

by Ashly Iacullo, Trademark Attorney

Appearing before a federal judge can be a nerve-wracking experience for a young attorney.  Fortunately, several judges of the United States District Court for the Northern District of Illinois, Eastern Division took the time to offer their advice about how young attorneys should conduct themselves and prepare for various proceedings in the courtroom.  On February 3, 2010, the Intellectual Property Committee of the Young Lawyers Section of Chicago Bar Association hosted its Third Annual Judges Panel.  This year’s distinguished panel consisted of Chief Judge James F. Holderman, Judge John W. Darrah, Judge Rebecca R. Pallmeyer, and Magistrate Judge Morton Denlow.  In addition to discussing substantive points on intellectual property law, the judges offered helpful tips for practicing lawyers.  They emphasized the importance of preparation and professionalism. (more…)

January 28, 2009

Pattishall Lawyers win Victory for American College of Trial Lawyers

Filed under: Cybersquatting, Pattishall, UDRP — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 6:14 pm

David Hilliard and Ashly Iacullo prevailed in a proceeding, winning the domain names and on behalf of the American College of Trial Lawyers. The WIPO panelist found that the domain names were confusingly similar to the College’s federally registered marks AMERICAN COLLEGE OF TRIAL LAWYERS and that the respondent failed to show any legitimate rights in the names.

After the ICANN Complaint was filed with WIPO in November, the respondent filed a declaratory judgment action in the state court of Alabama and also registered the domain name . The College successfully removed the action from state court to the United States District Court for the Middle District of Alabama and counterclaimed under the Anti-Cybersquatting Act, adding the recently registered domain name and seeking statutory damages. This is just one of many trademark disputes between the American College of Trial Lawyers and the respondent and his related-organization. Cases are pending before the United States District Court for the Middle District of Alabama and the United States Trademark Trial and Appeal Board.

Visit www.pattishall.com for more information.

Theme: Silver is the New Black. Blog at WordPress.com.

Follow

Get every new post delivered to your Inbox.

Join 64 other followers