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IP Bulletin, September 2010

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Guidance on Proving Trademark Fame and Likelihood of Trademark Dilution
In the case National Pork Bd. v. Supreme Lobster and Seafood Co., the pork industry successfully prevented an applicant from registering the mark “THE OTHER RED MEAT” for fresh and frozen salmon on the basis that granting this mark registration would dilute the fame of its own mark “THE OTHER WHITE MEAT.” This Trademark Trial and Appeal Board decision provides very useful guidance for the owners of famous marks in terms of how to use survey evidence to prove the fame of their marks and likelihood of dilution.

For further analysis of this decision and how it may be helpful in protecting famous trademarks, click here.

Supreme Court Justice Kagan’s Intellectual Property Record
On August 7, 2010, Elena Kagan officially assumed office as an Associate Justice of the Supreme Court of the United States. Justice Elena Kagan begins her tenure as a U.S. Supreme Court Justice with experience in Intellectual Property (“IP”) issues. This experience stems largely from her time as Solicitor General of the United States, where she was involved with a variety of patent, trademark, and copyright cases. While it is uncertain how many IP-related cases Justice Kagan will hear while seated on the Supreme Court and how she will decide such cases, it should be beneficial to the IP community to have a Justice familiar with IP cases and IP issues.

For further discussion, click here.

Copyright Protection for Fashion Designs
Not every copyright issue nowadays arises from the Internet. The Innovative Design Protection and Piracy Prevention Act sponsored by New York Senator Charles Schumer is intended to provide three years of copyright protection for fashion designs. The proposed law would protect original designers only against “substantially identical” copies. The standard for copyright infringement otherwise is “substantially similar.” “Identical” will be a higher bar for a plaintiff designer to clear. But let’s face it: the purpose of the proposed legislation is to deter knocking-off in the first place, rather than to provide an effective remedy for completed copying.

For more discussion about how this proposed legislation may affect fashion designs, click here.

BPAI Ex Parte Quist Decision
On June 2, 2010, the Board of Patent Appeals and Interferences (BPAI) at the United States Patent and Trademark Office issued Ex Parte Quist, a decision on a request for rehearing regarding the panel’s affirmation of a non-final §103 rejection on April 30, 2008. There were three items at issue: (1) Whether the Board misapprehend the subject matter sought to be patented, (2) If the Board misconstrued the evidence submitted in the declaration found in the Evidence Appendix, and (3) Whether the panel properly evaluated the evidence supporting the prima facie case with any rebuttal argument and/or evidence in reaching the final conclusion of obviousness and affirming the obviousness rejection.

For a more detailed discussion of this case and the BPAI’s decision, click here.
Nutter's IP Bulletin is a bi-monthly publication of the Intellectual Property Practice at Nutter McClennen & Fish LLP in Boston. Assistance in the preparation of this issue was provided by Michael P. Visconti. For further information, please contact your Nutter attorney at 617-439-2000.

Recognized as a “Go-To” patent firm by IP Law & Business and Corporate Counsel, Nutter is dedicated to making its clients’ strategic goals a reality and to maximizing the protection and value of their intellectual property. The firm has a long track record as the trusted IP advisor to innovative public and private companies, medical institutions and research universities, investors, entrepreneurs and inventors.

This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising.

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