Posts in IP News

Managing international trademark portfolios in the Age of Globalization

Managing international trademark portfolios in the age of globalization can be a fickle endeavor.  Ecommerce has blown the top off traditional thinking as it relates not only to advising your clients on what and where to file, but also how to strategically maintain those filings in the face of an increasingly crowded and adversarial global marketplace.  When a brand attempts to gain a foothold with an emerging clientele, fortune tends to favor the strategically bold.  For this reason, companies are often trying to establish their IP rights in countries where actual use or implementation may not be in the cards for years.  In the case of trademarks, the benefits are obvious: if/when a product is launched, a service begins, or a brand is introduced, a strong and enforceable portfolio is waiting to greet and protect it.  However, in jurisdictions around the world, such a strategy leaves open the possibility of an attack on these rights, most commonly in the form of a non-use cancellation action. 

Trademark Enforcement Campaign By Chicago Restaurant Aloha Poke Draws the Ire of Native Hawaiian Activists

In recent weeks, Chicago, IL-based Hawaiian cuisine chain Aloha Poke has become embroiled in a public relations nightmare over a trademark policing campaign which has created backlash over claims of cultural appropriation. According to reports, Aloha Poke has sent cease-and-desist letters to restaurants throughout the United States who have used the term “Aloha Poke” in their restaurant branding… Knobbe Martens Partner Catherine Holland, who specializes in trademark, unfair competition and copyright law, says that the kind of public backlash which has resulted in Native Hawaiian activists calling for boycotts of the Chicago-based Aloha Poke is not limited to the restaurant industry or even instances involving claims of cultural appropriation.

Canary in a Coal Mine: Sovereign Measures to Shield Patents from PTAB Raise Great Concerns

Congress must remove any meaningful advantage from sovereign ownership of patents by revising USPTO post-grant procedures so outcomes are more aligned with adjudication in the federal courts. Such patent reform would not only address the constitutional crisis presented by sovereign immunity being denied in actions adjudicated by the PTAB, but it would also trickle through and inure to the benefit of all patent owners, thereby increasing certainty and predictability within the system, eliminate gaming, and streamline adjudication by coordinating rules and laws so there is no substantive or procedural advantage to either challengers or patent owners in one forum over the other. 

Trademark Enforcement Implications of Europe’s General Data Protection Regulation (GDPR)

The WHOIS database provides technical information about the date of creation and expiration of a domain, as well as contact information for the registrant of a website, including name, physical address, email address, and phone numbers. GoDaddy and WHOIS.com appear to have selectively redacted the information only for registrants providing an EU contact address. However, given the difficultly of determining which domain owners are EU citizens, many registrars, such as Tucows, removed data for all domains regardless of where the registrant is located. In light of this WHOIS blackout, the GDPR has effectively made it easier for counterfeiters and infringers to evade detection.

CAFC vacates Summary Judgment entered against Intellectual Ventures

On Tuesday, September 4th, the Court of Appeals for the Federal Circuit issued a precedential decision in Intellectual Ventures I LLC v. T-Mobile USA, Inc., et. al., vacating and remanding a grant of summary judgment entered by the district court finding the defendants in the case didn’t infringe a patent asserted by Intellectual Ventures. The Federal Circuit panel of Chief Judge Sharon Prost and Circuit Judges Kimberly Moore and Jimmie Reyna found that the district court had erred in its claim construction leading up to the grant of summary judgment in the case.

Dissecting Dissents for Ex Parte Appeals

Dissent is not the highest form of judgment for judges on the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO).  As discussed in further detail below, our own analysis indicates that dissents for ex parte appeals are found in about .5% of decisions issued by the PTAB.  A PTAB judge deciding an ex parte appeal is more than ten times less likely to dissent than a Federal Circuit (CAFC) judge. Relying on internal USPTO policies and former PTAB judges’ personal experiences, a recent spate of commentary has provided different explanations regarding the rarity of dissents for ex parte appeals.  We were still left wondering why some judges go out of their way to write dissents.  In an effort to better understand this issue and what the dissents might reveal about the ex parte appeal process in general, we conducted a statistical analysis of dissents in recent ex parte appeal decisions.