Pattishall IP Blog

October 18, 2010

Trademark Owners Must Exercise Sufficient Control over the Quality of Licensed Merchandise or Risk Losing Rights in Their Valuable Brands

Filed under: Licensing — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 4:39 pm

by Phillip Barengolts, Trademark Attorney

Merchandise and character licensing is big business, generating billions of dollars in revenue for the most valuable brands.[1] Under U.S. law, the licensor of a brand must maintain real control over the quality of the products licensed for sale under the brand.  Without such control, the brand owner could lose its rights forever.  Many business people, however, treat brand licensing like patent licensing – prepare the written agreement, get it signed, and enjoy the royalties.  Such was the case in Eva’s Bridal Ltd. v. Halanick Enterprises, Inc., 1:07-cv-01668 (N.D. Ill. Aug. 4, 2010) – a dispute between a licensor and its licensee.

Disputes over the use of a brand between a licensor and licensee are the most frequent context for claims of abandonment through uncontrolled licensing of a mark (often referred to as “naked licensing” or “licensing in gross”).  Here, the licensee counterclaimed that the licensor/brand owner abandoned its trademark for a bridal shop through naked licensing of the trademark to the licensee. (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…)

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…)

November 20, 2009

Pattishall Client Wins Summary Judgment Defending Against Trademark Infringement Claim

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

November 9, 2009.  Pattishall client Church & Dwight Co., Inc., maker of the famous ARM & HAMMER brand products, was awarded summary judgment in defending against claims of trademark infringement and fraud on the Patent and Trademark Office.  Pattishall attorneys Raymond Geraldson, Jr., Bradley Cohn, Andrew Downer, and Scott Lonardo represented Church & Dwight in the case, which was litigated in the U.S. District Court for the Northern District of Illinois.

The plaintiff, World Wide Sales, Inc., alleged that Church & Dwight’s use of the trademark FRIDGE FRESH for a refrigerator air filter infringed Plaintiff’s trademark “Forever Fresh For The Fridge” for its refrigerator deodorizer.  World Wide also alleged that Church & Dwight committed fraud on the Patent and Trademark Office because Church & Dwight did not disclose World Wide’s federal registration to the U.S. Patent and Trademark Office when Church & Dwight applied for and ultimately registered its FRIDGE FRESH trademark. (more…)

February 11, 2009

$2 Million Award for Pattishall Client

Filed under: Litigation, Pattishall — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 5:35 pm

Judge Elaine Bucklo of the United States District Court for the Northern District of Illinois awarded over $2 million to Paxar Corproation, f/k/a Monarch Marking Systems and now a wholly-owned subsidiary of Avery Dennison Corp., in a lawsuit handled by Chicago trademark attorneys Brett August and Andrew Downer. The award in this trademark infringment and unfair competition case was for damages, costs and attorneys fees under a 1995 settlement agreement that was filed with the court as a consent judgment against Kap Graphics and Larry Fern. The settlement called for payments over 13 years and had a powerful liquidated-damages provision. Although initially expressing doubts about jurisdiction and the liquidated damages provision, today Judge Bucklo entered an order that states in part:

This Court has concluded that it does have jurisdiction to enforce the settlement because it was incorporated into a consent judgment. [Cites omitted.] Although harsh, the parties agreed that in the event of any default, Kap Graphics would be liable not only for the amount in default, but for $2,000,000.00 in liquidated damages, as well as attorney’s fees and costs.

The case is Monarch Marking Systems v. Kap Graphics Inc., et al., 1:93-cv-5082.


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