Pattishall IP Blog

March 31, 2017

2017 “Women of Influence” Awards

Filed under: Pattishall — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 11:21 am


Ashly Boesche
was recognized as a Chicago Nominee for the 2017 “Women of Influence” Awards, an inaugural award presented by the Coalition of Women’s Initiatives in Law and Best Lawyers. Ashly is among a select few identified by her colleagues as an exceptional practitioner of law. The 2017 Women of Influence feature appears in Best Lawyers’ Spring 2017 Business Edition. Click here for more info.

 

 

 

These materials have been prepared by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP for general informational purposes only.
They are not legal advice. They are not intended to create, and their receipt by you does not create, an attorney-client relationship.

August 15, 2016

2016 INTA/Pattishall Medal For Teaching Excellence: Annette Kur

Filed under: Pattishall, Trademark (General) — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 10:08 am

rws_high_resby Robert W. Sacoff, Partner

As a student at Northwestern University School of Law, I had the good fortune to take Beverly Pattishall’s course on “Trademarks, Trade Identity and Unfair Competition.” This year, I chaired the INTA Pattishall Medal Committee. Here’s a little background on Mr. Pattishall, the Medal and the 2016 recipient, Dr. Annette Kur.

Mr. Pattishall (1916-2002) was born in Atlanta, Georgia, educated at Northwestern and the University of Virginia, and rose to the rank of Lieutenant-Commander in the U.S. Navy, commanding combat ships in World War II. After the war he returned to Chicago and began his distinguished legal career, focusing on trademark and unfair competition cases, and also devoted his energies to teaching the subject in law school courses. He unveiled this fascinating and important field of law to me and many others, at a time when it was not widely taught in depth in law schools. An active trial lawyer, he brought his classes to life with case experiences and litigation tips from the trenches.

To honor his educational contributions, the Pattishall, McAuliffe firm created the Pattishall Medal for Teaching Excellence in 1997, in conjunction with INTA’s Brand Names Education Foundation. This quadrennial Medal is awarded to top educators in the field, who have been nominated by their peers and students based on their:

  • Professional and academic recognition
  • Peer and student evaluation
  • Innovation in methodology and commitment to education in the field of trademarks and trade identity

Past recipients of the Medal are:

  • 1997 Arthur J. Greenbaum
  • 2000 J. Thomas McCarthy
  • 2004 Roger Schecter
  • 2008 Graeme Dinwoodie
  • 2012 David Vaver

(more…)

April 12, 2016

Pattishall Prevails for Bayer in Landmark Unfair Competition Case

Filed under: Litigation, Pattishall — Tags: , , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 1:47 pm

Phil Barengolts and Bradley Cohn prevailed in the U.S. Court of Appeals for the Fourth Circuit for Bayer Consumer Care AG and Bayer Healthcare LLC in Belmora LLC v. Bayer Consumer Care AG and Bayer Healthcare LLC, No. 15-1335 (4th Cir. March 23, 2016). The Court held that ownership of a U.S. trademark is not a prerequisite for asserting unfair competition and related claims under Section 43(a) of the Lanham Act, or to cancel a trademark registration for misrepresentation under Section 14(3). This is an important clarification of U.S. unfair competition law.

Bayer Consumer Care sells naproxen sodium pain reliever in Mexico under the trademark FLANAX, which is well known in that country. Bayer does not sell FLANAX in the United States, instead selling ALEVE. Bayer sued a U.S. company, Belmora LLC, for using the FLANAX mark in the U.S. to falsely suggest to U.S. consumers–in particular, Mexican-Americans–that Belmora’s FLANAX pain reliever was the same as Bayer’s Mexican FLANAX pain reliever. Bayer sued for unfair competition and false advertising, and petitioned to cancel Belmora’s trademark registration for FLANAX because of Belmora’s misrepresentation.

On March 23, the Fourth Circuit held Bayer was entitled to sue Belmora, reversing the trial court ruling that Bayer could not proceed with its claims because it does not own the FLANAX mark in the U.S. The Fourth Circuit found that “the plain language of § 43(a) does not require that a plaintiff possess or have used a trademark in U.S. commerce as an element of the cause of action.” Based on that finding, and relying on the Supreme Court’s 2014 landmark decision in Lexmark v. Static Control, the Fourth Circuit held Bayer’s claims fell within the Lanham Act’s zone of interest and that Bayer had alleged injuries that were proximately caused by Belmora’s actions.

Many courts previously assumed a party must own a U.S. trademark to bring Section 43(a) claims. However, the Fourth Circuit held that assumption is wrong. A defendant who passes off its products as the plaintiff’s is liable under Section 43(a), regardless of whether the plaintiff actually owns a U.S. trademark. For instance, as the Fourth Circuit explained, a plaintiff can sue a defendant who uses a generic (and hence unprotectable) word to falsely associate its products with the plaintiff’s. Or, as in the present case, a plaintiff can sue a defendant who uses the plaintiff’s non-U.S. trademark to create a false association in the United States.

The Fourth Circuit noted that in a situation where merely “a few isolated consumers . . . confuse a mark with one seen abroad,” the owner of the non-U.S. trademark will “face difficulty” in establishing a Section 43(a) claim. But “the story is different when a defendant, as alleged here, has — as a cornerstone of its business — intentionally passed off its goods in the United States as the same product commercially available in foreign markets in order to influence purchases by American consumers.” In such a situation, the owner of the non-U.S. trademark has viable Section 43(a) claims.

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October 10, 2012

Pattishall Client Prevails On Counterfeiting and Infringement Claims Over Marks for Vehicle Braking Systems; Court Awards Over $13 Million in Damages, Attorneys’ Fees, Costs and Sanctions

Pattishall client Robert Bosch LLC (“Bosch”) was awarded judgment of over $13 Million by default on its claims of counterfeiting, infringement, unfair competition, and false advertising after nearly three years of litigation and “extensive and cumbersome discovery” in Robert Bosch LLC v. A.B.S. Power Brake, Inc., Case No. 09-14468 (E.D. Mich. August 2, 2012).  Pattishall attorneys Belinda Scrimenti, Bradley Cohn, Thad Chaloemtiarana, and Jeffrey Wakolbinger represented Bosch in this litigation in the United States District Court for the Eastern District of Michigan before the Honorable Patrick J. Duggan.

Specifically, Judge Duggan:

  • awarded Bosch $12,875,997.96; consisting of $3,931,220 in defendant’s profits (which the court trebled to $11,793,660), $993,309.00 in reasonable attorneys’ fees, and $89,028.96 in costs;
  • awarded Bosch $142,082.52 as a judgment for previously entered sanctions;
  • enjoined defendants from future use of Bosch’s HYDRO-BOOST and HYDRO-MAX marks in connection with hydraulic vehicle braking systems or remanufactured, reconditioned or rebuilt Bosch products; and
  • ordered the defendants to destroy all infringing products and promotional materials.

The Court’s opinion highlighted the difficulty of assessing actual damages given the actions of the defendants in discovery and found the Pattishall team’s method for estimating damages to be reasonable.  Relying on survey evidence of law firms nationwide, Judge Duggan also found Pattishall’s Chicago-based attorneys’ fees request reasonable and consistent with rates of comparably-situated firms in Detroit with large intellectual property practices under the traditional lodestar analysis.

The defendants’ alleged violations covered a range of activities, including manufacturing of counterfeit products sold under Bosch’s trademarks, use of identical and similar infringing marks on generic products, sale of refurbished Bosch products that failed to meet genuine Bosch specifications, and false advertising of refurbished hydraulic brake products as new, genuine Bosch products.

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September 29, 2011

On behalf of the ABA Section of Intellectual Property Law, Pattishall Attorneys Thad Chaloemtiarana and Phillip Barengolts Met With a Delegation from the People’s Republic of China to Discuss U.S. Trademark Law

Filed under: International, Pattishall — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 3:24 pm

Categories: Pattishall, International
Tags: ABA, Chinese Trademark Law, Thad Chaloemtiarana, Phillip Barengolts

By Phillip Barengolts, Trademark Attorney

On September 2, 2011, the Legislative Affairs Office of the State Council of the People’s Republic of China (PRC) issued the most recent version of proposed amendments to the Chinese Trademark Law.[1]  A delegation from the PRC is meeting this week with several U.S. intellectual property law groups to discuss aspects of U.S. trademark law as part of their efforts to gather comments on the new Chinese trademark law and to better understand the U.S. approach to trademark enforcement and protection.

On September 26, 2011, Pattishall attorneys Thad Chaloemtiarana[2] and Phillip Barengolts,[3] Bruce Longbottom, Associate General Counsel – Trademarks, Copyrights & Information Technology, Eli Lilly and Company, and Jonathan Hudis[4] of Oblon Spivak McClelland Maier and Neustadt, LLP, met with the PRC delegation on behalf of the American Bar Association Section of Intellectual Property Law.  On behalf of the PRC delegation, from the Economic Law Department, Commission of Legislative Affairs, Standing Committee of the National People’s Congress were:

  • Yang Yong Ming, Director;
  • Wang Qing, Deputy Director – General;
  • Chen Yanguye;
  • Li Jiangua, Researcher; and
  • Wang Xiang.

Also in attendance was Zhou Yan, Deputy Division Director, Law Department, State Administration for Industry and Commerce.  Attending on behalf of the International Trade Administration of the U.S. Department of Commerce were Nicole Melcher, the Director of the Office of China and Mongolia, and Ning Lu, International Trade Specialist for the Office of China and Mongolia.

During the four hour discussion, the PRC delegation and ABA IPL Section representatives discussed a wide variety of U.S. trademark issues, including:

  • conflicts between registered and unregistered marks;
  • damages for trademark infringement and counterfeiting;
  • dilution; and
  • “landlord” or contributory liability for trademark infringement.

The discussion included a detailed review of the separation between common law trademark rights developed through use and the federal registration system administered by the United States Patent and Trademark Office, and their impact on enforcement of trademark rights; the trademark rights enforcement implications of recently enacted dilution legislation in the U.S.; and the implications of recent decisions concerning potential liability under trademark law for Internet companies that host third-party content that contains infringing material or offers infringing or counterfeit products for sale.

 *          *          *

Phillip Barengolts is a partner with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.  Mr. Barengolts’ practice focuses on litigation, transactions, and counseling in domestic and international trademark, trade dress, Internet, and copyright law.  He teaches trademark and copyright litigation at John Marshall Law School, and co-authored Trademark and Copyright Litigation, recently published by Oxford University Press.


[footnotes]

[1] The full text of the proposed revised Chinese Trademark Law is available for comment here (but only if you read Mandarin – no official translation was available as of the date of this blog post): http://www.gov.cn/gzdt/2011-09/02/content_1939013.htm.  The comment period ends on October 8, 2011.

[2] Thad currently is the Vice Chair of the Trademark Division of the ABA Section of Intellectual Property Law.

[3] Phil currently is the Chair of the Defining Counterfeiting Sub-Committee of the Trademark Legislation Committee of the ABA Section of Intellectual Property Law.

[4] Jonathan currently is the Chair of the Trademark Division of the ABA Section of Intellectual Property Law.

October 27, 2010

USPTO Registers Unique “Non-Traditional” Service Mark: A 109-Word Narrative Story — Registration of The Peabody Hotels’ “Legend of the Ducks” Follows Earlier Motion Mark Registration of its Iconic Duck March

Filed under: Pattishall, TM Registration — Tags: , , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 4:13 pm

Categories: Pattishall Involvement, Trademark (General)
Tags: Andrew N. Downer, Belinda J. Scrimenti, Non-Traditional Marks, Trademark Prosecution, TTAB, USPTO

By Belinda J. Scrimenti, Trademark Attorney

The famous Peabody Hotels in Memphis, Orlando and Little Rock are known for their iconic March of The Peabody Ducks, in which trained mallard ducks, guided by the “Duckmaster,” delight audiences twice-daily.  A red carpet is rolled out, and the ducks leave their rooftop “penthouse,” proceed down an elevator, and march across the red carpet, up steps and into the beautiful fountains in The Peabody Hotels’ lobbies.  The ducks spend their days leisurely swimming in the fountain, and at day’s end perform the March in reverse and retire for the night.  The Ducks have appeared on numerous television broadcasts, including Oprah and numerous travel programs, and received enormous print publicity.

Knowing that the Duck March had become synonymous with The Peabody Hotels, the Hotels’ owner recognized the importance of protecting the valuable intellectual property of both the Duck March and “The Legend of the Ducks” – the 109-word story about how decades ago the Ducks came to march daily to The Peabody fountain. (more…)

June 16, 2010

Google’s Alleged Licensing of Domain Names as Part of its AdSense Program may Subject it to Liability under the Anticybersquatting Consumer Protection Act

Filed under: Cybersquatting, Internet, Pattishall — Tags: , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 2:29 pm

by Phillip Barengolts, Trademark Attorney

In a case that tests the limits of contributory liability under the Anticybersquatting Consumer Protection Act (ACPA), Judge Blanche Manning of the Northern District of Illinois denied defendant Google’s motion for summary judgment on the plaintiffs’ cybersquatting claim that Google should be held liable for servicing the parking pages of registrants’ allegedly cybersquatting domain names.[1] Vulcan Golf, LLC v. Google, Inc., No. 1:07‑cv-03371, slip op. (N.D. Ill. June 9, 2010) (Memorandum and Order).  Specifically, the court held that, where Google’s agreement with a third party contains a license permitting Google to use a parked domain name for purposes of placing Google’s advertising (sponsored links) on the web site displayed when an Internet user enters the domain name, Google may be held liable under plain language the ACPA as an “authorized licensee” of the registrant if the underlying domain name violates the ACPA.  Vulcan Golf, slip op. at 8.  See 15 U.S.C. § 1125(d)(1)(D). (more…)

April 13, 2010

Pattishall Attorneys Win Summary Judgment for The John W. Carson Foundation, Defeating Application for HERE’S JOHNNY as Trademark for Portable Toilets

Filed under: Pattishall, Right of Publicity — Tags: , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 5:16 pm

by David Beeman, Attorney

In a precedential decision, the Trademark Trial and Appeal Board (“TTAB”) awarded summary judgment to Johnny Carson’s The John W. Carson Foundation in its opposition to Toilets.com’s application to register HERE’S JOHNNY as a trademark for portable toilets in the Patent and Trademark Office (“PTO”).  The John W. Carson Foundation v. Toilets.com, Inc., Opposition No. 91181092 (T.T.A.B. Mar. 25, 2009).[1] Pattishall attorneys Robert Newbury, Jonathan S. Jennings, Phillip Barengolts and David Beeman represented The John W. Carson Foundation in the action. (more…)

April 9, 2010

Supreme Court Justice John Paul Stevens to Retire: An Important Contributor to Copyright, Trademark, and First Amendment Law Steps Aside

Filed under: Copyright, First Amendment, Pattishall — Tags: , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 10:41 pm

by Uli Widmaier, Trademark Attorney

Earlier today, Associate Justice John Paul Stevens informed the President of his intention to resign from the U.S. Supreme Court at the end of the current term.  It is with utmost respect and admiration that we consider his contributions to the development of intellectual property and Internet law.

A close personal friend of former Pattishall McAuliffe managing partner, Beverly Pattishall (1916-2002), Justice Stevens has written some of the most influential decisions in these areas.  Undoubtedly, the most famous of these is his majority opinion in Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417 (1984), which defined the law of contributory copyright infringement for decades to come.  Universal challenged Sony’s sale of home videotape recorders on the ground that purchasers could use the devices to infringe content providers’ copyrights by copying television programs.  The facts of the case ensured that the decision would guide the interplay of technology and copyright law through the tumultuous growth of the Internet.  Sony was a complex and hotly contested case, decided 5-4 with a powerful and lengthy dissent by Justice Blackmun.  Nevertheless, its holding can be distilled into a simple but immensely influential formula: selling a technology that may enable third parties to infringe existing copyrights does not give rise to liability for contributory copyright infringement if the technology is “capable of commercially significant noninfringing uses.”  Id. at 442 (emphasis added).  Speaking through Justice Stevens, the Supreme Court found that Sony’s Betamax videotape technology indeed was capable of such uses; therefore Sony’s sale of Betamax equipment did not constitute contributory copyright infringement.  Id. at 456. (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…)

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