by Scott Hervey
After four years, the quest to obtain federal trademark protection for the mark MATTRESS.COM by owner 1800Mattress.com IP, LLC, formerly Dial-A-Mattress Operating Corp, has been put to bed. The United States Court of Appeals for the Federal Circuit has finally held that the mark is generic and not entitled to registration.Continue Reading Federal Circuit Puts Generic 1800Mattress Trademark to Bed
by Jeff Pietsch
Earlier this year, the Tenth Circuit court upheld a preliminary injunction granted in favor of an electronics equipment manufacturer against a reseller of its goods in a trademark infringement action. In Beltronics v. Midwest Inventory Distribution, the reseller (Midwest) argued that it was able to resell the manufacturer’s goods based on the first sale doctrine. The court, however, disagreed with this assessment and ruled that the resellers violated the manufacturer’s trademark rights because Midwest’s sales caused consumer confusion.Continue Reading When Product Resales are not Protected under the First Sale Doctrine
Several weeks ago, on November 9, 2009, the United States Supreme Court heard oral argument in a key patent case. The case is Bilski v. Kappos (the USPTO). The issue before the Court was whether the Court should reverse the Federal Circuit’s “machine-or-transformation” test for the patentability of process inventions. The Supreme Court’s decision will determine the extent to which processes (or methods), particularly business methods, are patentable.Continue Reading Supreme Court Hears Oral Argument in Key Patent Case
A central issue in all trade secret litigation is the adequacy of plaintiff’s pre-discovery disclosure of the alleged trade secrets. The Fourth District Court of Appeal has contributed to the growing body of case law interpreting the adequacy of the initial trade secret disclosure required by California Code of Civil Procedure section 2019.210. (Perlan Therapeutics v. Superior Court of San Diego County (November 4, 2009), 178 Cal.App.4th 1333.) Section 2019.210 provides that a plaintiff suing for misappropriation of trade secrets must identify the alleged trade secrets with “reasonable particularity” before commencing discovery. The Perlan decision joins two other recent decisions evaluating the particularity required in the plaintiff’s trade secret disclosure. (See Brescia v. Angelin (2009) 172 Cal.App.4th 133 and Advanced Modular Sputtering, Inc. v. Superior Court (2005) 132 Cal.App.4th 826.) The Perlan court analyzes the Brescia and Advanced Modular decisions in addressing critical procedural and substantive questions.Continue Reading More Guidance On Pre-Discovery Trade Secret Disclosures
Most people are familiar with the concept of trademarks in the form of logos or words. But intellectual property can also be embodied in sounds not represented by words and drawings, but rather musical notes and/or auditory tones. While sound marks are not nearly as common as word marks, many sound marks are immediately recognizable, including Southwest Airline’s “Ding!,” MGM’s roaring lion, AOL’s “You’ve got mail,” the Pillsbury Doughboy’s giggle, NBC’s chimes, Nokia’s default cell phone ringtone, and the Harlem Globetrotter’s theme song. However, the legal requirements to register such sound marks are different than word marks, and much less well-defined by the courts.Continue Reading Sound Marks — Registration Basics
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