Has Christian Louboutin Committed Trademark Shoe-icide?

By Rob Lower With a trademark this fragile, Christian Louboutin shouldn’t throw stones in a glass house. Last year, Louboutin sued another high-end shoemaker, Yves Saint Laurent S.A.S., alleging YSL’s shoes infringe Louboutin’s federally registered trademark for red shoe soles. On top of losing in Southern District of New York late last year (appeal pending), Louboutin is now defending counterclaims by YSL seeking cancellation of the red sole mark along with damages. So can you actually get a trademark on a color? Yes, says the Supreme Court, along with a list of caveats below. First, here’s the shoes: Left — Louboutin’s Rolando Right — YSL’s Palais 105 (one of YSL’s four allegedly infringing monochrome shoes) While this looks like a home run for Louboutin at first blush, his registered mark looks quite a bit different: As implied by the registration, Louboutin’s red soles are unique only when the rest of the shoe is not red. Additionally, Louboutin’s optimistic claim to all-red

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Federal Circuit Rules that the Invention of a Method of Making Chemical Compounds May Be Sufficient Contribution to Qualify for Joint Inventorship of the Compounds

By Charles Pierce In Falana v. Kent State Univ., 101 USPQ2d 1414 (Fed. Cir. 2012), the Federal Circuit affirmed the district court’s order that Dr. Olusegun Falana (Falana) be added as an inventor to U.S. Patent No. 6,830,789 (the ‘789 patent), and did not address the district court’s award of attorney’s fees to Falana. Kent Displays, Inc., a private spinoff of Kent State University (collectively, KDI) was attempting to develop proprietary chiral additives with high, temperature independent helical twisting power (HTP) for use in liquid crystal displays.  They hired Dr. Alexander Seed (Seed), who in turn hired Falana.  While working for KDI, Falana developed a synthesis protocol for making naphthyl substituted TADDOLs.  He used his synthesis protocol to create such a TADDOL, which was designated Compound 7.  Compound 7 was found to be significantly temperature independent, and represented significant progress for the project.  Falana left KDI soon after this development.

Fortune Apple falls on the head of Proview— Proview Shenzhen sees a new way to get out of its debt

By Evelyn Li Apple’s successful marketing on its product “iPad” may be facing a big loss in China when a court in China rejected its claim on ownership of the iPad trademark in the country. The court ruled for its rival Proview Technology (Shenzhen) Company Ltd. (Proview Shenzhen), a struggling company that registered trademarks for the name IPAD in mainland China long before Apple conceived its smash hit tablet computer. Following the court’s decision, Proview Shenzhen has sought to halt sales of Apple’s iPad in two Chinese cities. A court in Shanghai refused its request on preliminary injunction on “all sales of ‘iPad’ by Apple Computer Trading (Shanghai) Company Ltd.” due to “the uncertainty of the decision which will be made by the High People’s Court of Guangdong on trademark ownership over ‘iPad’.” Although Apple was able to stop the preliminary injunction, the appeal to the High People’s Court of Guangdong does not look optimistic. One big problem for Apple

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Study Indicates that the Renewable Energy Market in the U.S. is One of the Most Attractive in the World

By Margaret M. Welsh According to Ernst and Young’s Renewable Energy Attractiveness Index, the United States has one of the most attractive renewable energy markets in the world.  In February 2012, Ernst and Young released its quarterly report and listed the renewable energy market in the United States second only to China.  The Report tracks the attractiveness of forty countries and ranks countries based on the development of their renewable energy infrastructure and their suitability for individual technologies. China maintained the number one position; however, the Report indicates that China’s renewable energy market growth could slow down because of a reduction in solar cell company investments by foreign countries.  The Report also predicts a decrease in renewable energy markets for more developed countries, including countries in Europe.  This is spurred by Europe’s financial uncertainty. The United States remains at the top of the renewable energy market attractiveness list.  Yet, the Report based its ranking on the assumption that the wind

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Getting to “Use”

By Dan McPheeters and Michael Stein   In our earlier post, we discussed the ambiguities surrounding the determination of whether or not a mark had been used in commerce sufficiently for federal trademark protection to accrue. The case-law revealed strong support for an “analogous use” doctrine that falls somewhere below actual sales, though how much lower is ambiguous and will certainly require litigation to confirm. If only there existed some resource, something up to date and freely accessible to all, where one could turn for help navigating these deep and existential questions… The analogous use doctrine vests rights in a mark when the marketing and promotion of the product or service with which the mark is associated rise to the level of communicating a bona fide intention for “continuous commercial utilization” of the product. Examples cited approvingly by Courts range from Marvel Comics’ distribution of 430,000 fliers with the title of a new comic book to the creation of a

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The Bipartisan Dash to Extend the Renewable Energy Production Tax Credit

By Margaret M. Welsh As many are aware, the wind energy production tax credit which is set to expire at the end of this year was not extended in the payroll tax legislation as many renewable enthusiasts had hoped.  The renewable energy production tax credit was originally enacted by the Energy Policy Act of 1992 and has been extended over the years.  The production tax credit generally provides a per-kilowatt hour tax credit for electricity generated by qualified energy resources.  Qualified energy resources now include wind, closed-loop biomass, open-loop biomass, geothermal, landfill gas, municipal solid waste, some hydroelectric, and larger-scale marine and hydrokinetic power. The credit for all the qualified energy sources listed above expires in 2013, except for wind energy which expires at the end of this year.  Currently, the wind energy production tax credit provides a 2.2 cents/kilowatt-hour tax credit for electricity generated from utility-scale wind turbines.  This credit has been instrumental in lowering the cost of electricity

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By Margaret M. …

By Margaret M. Welsh   As many are aware, the wind energy production tax credit which is set to expire at the end of this year was not extended in the payroll tax legislation as many renewable enthusiasts had hoped.  The renewable energy production tax credit was originally enacted by the Energy Policy Act of 1992 and has been extended over the years.  The production tax credit generally provides a per-kilowatt hour tax credit for electricity generated by qualified energy resources.  Qualified energy resources now include wind, closed-loop biomass, open-loop biomass, geothermal, landfill gas, municipal solid waste, some hydroelectric, and larger-scale marine and hydrokinetic power.    The credit for all the qualified energy sources listed above expires in 2013, except for wind energy which expires at the end of this year.  Currently, the wind energy production tax credit provides a 2.2 cents/kilowatt-hour tax credit for electricity generated from utility-scale wind turbines.  This credit has been instrumental in lowering the cost

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eBay Reseller of OEM Software Denied First Sale Defense

By Zi Wang In Adobe Sys. v. Hoops Enter. LLC (N.D. Cal. 2012), the court rejected the first sale defense asserted by an eBay reseller of original equipment manufacturer (OEM) copies of software, drawing a distinction between licenses and sales of copyrighted works. Adobe sued the defendants for copyright infringement, alleging that the defendants sold OEM copies of Adobe software through the use of eBay and other websites.  The defendants countersued Adobe for a declaratory judgment of copyright misuse.  In particular, the defendants contended that Adobe’s assertion of copyright protection contravened the first sale doctrine, as codified in 17 U.S.C. § 109.  The defendants also asserted the first sale doctrine as an affirmative defense. The defendants obtained OEM copies of Adobe software that had been unbundled from the hardware with which they were originally packaged, such as Dell and Hewlett-Packard computers.  The defendants then re-bundled the software with items such as a piece of photo paper, a blank DVD, or

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Difference in Prior Art Requirements in Obviousness and Anticipation; Broad Genus Disclosures in Prior Art

By Charles Pierce   In ClearValue, Inc. v. Pearl River Polymers, Inc., the Federal Circuit ruled that Claim 1 of U.S. Patent No. 6,120,690 (the ‘690 patent) was invalid because it was anticipated by a broad genus disclosure in U.S. Patent No. 4,800,039 (Hassick). ClearValue accused Pear River of indirectly infringing the ‘690 patent by selling high molecular weight DADMAC polymers to customers who would then use the DADMAC polymers and aluminum polymers to clarify water.  Claim 1 of the ‘690 patent reads: A process for clarification of water of raw alkalinity less than or equal to 50 ppm by chemical treatment, said process comprising: adding to the water and, prior to or after adding to the water, blending at least one aluminum polymer with a high molecular weight quaternized ammonium polymer in an amount sufficient to form a flocculated suspension in the water and to remove turbidity from the water, said high molecular weight quaternized ammonium polymer comprising at

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Uses Wild

By Dan McPheeters and Michael Stein Trademarks have been an interesting topic of late, particularly with the drama surrounding Apple’s voyage into China. One interesting question that has not received much coverage of late is when exactly a mark qualifies for federal protection. This post and its follow-ups will explore one method of applying for trademark protection that is particularly ambiguous. Among the five bases for filing a trademark application, one popular method is a “use” application, which is allowed under 37 C.F.R. § 2.34(1).  The core element to filing such an application is the requirement that product is “in use in commerce” under 15 U.S.C. § 1127. 37 C.F.R. § 2.34(1). The phrase “use in commerce” is defined in 15 U.S.C. § 1127 as: the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For purposes of this Act, a mark shall be deemed to

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