Blog

By James Juo. Typically, the mere misspelling of a word as a phonetic equivalent is not sufficient to change a merely descriptive term into an inherently distinctive trademark. In re Carlson, 91 USPQ2d 1198, 1200–1201 (TTAB 2009) (finding “URBANHOUZING” to be a phonetic spelling of “urban” and “h...

By James Juo. The United States Department of Justice (“DOJ”) announced on September 15, 2021 that Viktors Suhorukovs, a citizen of Latvia, has been sentenced to more than four years in federal prison and ordered to pay over $4.5 million in restitution after pleading guilty to mail fraud in a mul...

By James Juo. What's in a name? Well, a “trade name” is not the same thing as a “trademark.” It's the difference between your company name and your brand. To take one example, Doctor's Associates Inc. was the name of the company that later branded its sandwich shops as SUBWAY. From a legal perspe...

By James Juo. One way to settle a trademark opposition is by agreeing to abandon the application in dispute. In Rwachsberg Holdings Inc. and Apollo Health and Beauty Care Inc. v. Grüne Erde Beteiligungs GmbH, Opposition No. 91253866 (TTAB Sept. 8, 2021), Rwachsberg Holdings and Apollo Health and ...

By James Juo. In analyzing specific personal jurisdiction, courts look to whether there are sufficient minimum contacts, and whether the exercise of jurisdiction is reasonable. The minimum contacts inquiry with regard to specific jurisdiction is essentially a two-part test: (1) whether the defend...

By James Juo. In the U.S. District Court for the District of Colorado, filing a motion for protective order against specific discovery under Fed. R. Civ. P. 26(c) will automatically stay that specific discovery unless otherwise ordered. D.C.Colo.LCivR 30.2(a). But this does not apply to a motion ...

By James Juo. There is a strong federal policy favoring arbitration agreements which is reflected in the Federal Arbitration Act (FAA) and the case law, see, e.g., AT&T Mobility LLC v. Concepcion, 563 U.S. 333, 346 (2011). Also, 35 U.S.C. § 294 states that a contract involving a patent may requir...

By James Juo. One of the benefits of having strong trademark rights in your logo is that “[a] strong mark … casts a long shadow which competitors must avoid.” Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 353 (Fed. Cir. 1992). Trademarks that are similar may be likely to ca...

By James Juo. The Federal Circuit held that the Trademark Trial and Appeal Board (“TTAB”) is constitutional because the Director of the U.S. Patent and Trademark Office (“USPTO”), a Presidential appointee, had the authority to review decisions of the TTAB under the trademark statutes in Piano Fac...

By James Juo. An intent-to-use (“ITU”) trademark application may be filed by “a person who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce” later. 15 U.S.C. § 1051. Food and other ingestible products that contain cannabidiol (“C...

By James Juo. Damages for patent infringement may be limited to the period after the alleged infringer is notified of the infringement and continues to infringe thereafter, unless the patentee marks any “patented article” that it sells or licenses with the patent number. 35 U.S.C. § 287. Filing a...

By James Juo. Instead of actual damages and profits, a copyright owner may elect to recover statutory damages, which a court may award in the range between $750 and $30,000. 17 U.S.C. § 504(c)(1). For willful infringement, statutory damages may be increased up to $150,000. The court has broad dis...

By James Juo. In Commscope Techs. LLC v. Dali Wireless Inc., Nos. 2020-1817, 2020-1818 (Fed. Cir. Aug. 24, 2021), the Federal Circuit noted the need for consistent infringement and validity positions. CommScope and Dali are competitors in the wireless communications infrastructure market. Dali ac...

By James Juo. The Federal Circuit in Campbell Soup Co. v. Gamon Plus, Inc., Nos. 20-2344 and 21-1019 (Fed. Cir. Aug. 19, 2021), reversed the Patent Trial and Appeal Board in two inter partes reviews regarding U.S. Design Pat. Nos. D612,646 and D621,645 (the `646 Patent, and `645 Patent, respectiv...

By James Juo. The Tenth Circuit has held that the Lanham Act extends to extraterritorial conduct involving foreign defendants making foreign sales in Hetronic International, Inc. v. Hetronic German Gmbh, Nos. 20-6057 & 20-6100 (10th Cir. Aug. 24, 2021). Plaintiff, a US company that manufactures a...

The District of Colorado in All Plastic Inc. v. SamDan LLC et al., No. 1:20-cv-01318, has denied a motion to amend a complaint to accuse additional products (namely, certain cannabis containers that were commercially released after the filing of the lawsuit) of patent infringement because, under ...

by James Juo. After your trademark application is filed with the U.S. Patent and Trademark Office (“USPTO”), you may receive a notice in the mail (which may look like an invoice) asking for a hefty “publication fee” or “private listing” for your trademark. The notice may have official sounding na...

If someone has violated your intellectual property rights, it's only natural that you'd want to get your attorneys' fees back when the case is finalized. Depending on the jurisdiction, the circumstances of the case and the type of intellectual property at stake, this may be possible. As always, t...

Ideally, every contract would be fair and unambiguous with the bargain fulfilled. Unfortunately, things happen—fairly or unfairly—which may result in a breach of contract. What is a Breach of Contract? A “breach of contract” is one or more parties failing to perform according to the agreed-upon t...

By James Juo. A lawsuit challenging the enforceable scope of the CANNA trademark could not be maintained for lack of personal jurisdiction. Growcentia, a company located in Fort Collins, Colorado, produces a fungicide it sells as CANNCONTROL under the under its MAMMOTH brand name for cannabis gro...

By James Juo. The Federal Circuit's decision in Andra Grp., LP v. Victoria's Secret Stores, LLC, No. 2020-2009 (Fed. Cir. Aug. 3, 2021), which affirmed a dismissal for improper venue, illustrates how properly maintained corporate structure can allow a parent company to avoid becoming a co-defenda...

by James Juo. In Omni MedSci, Inc. v. Apple Inc., Nos. 2020-1715, 2020-1716 (Fed. Cir. Aug. 2, 2021), the Federal Circuit held that the specific “shall be” language of an employment agreement did not effectuate a present automatic assignment of patent rights. Dr. Mohammed Islam is a professor at ...

By James Juo. In Bot M8 LLC v. Sony Corp. of Am., No. 20-2218 (Fed. Cir. July 13, 2021), the Federal Circuit revisited once more the pleading standards for patent infringement, and held that a plaintiff is not required to plead infringement on an element-by-element basis. Citing In re Bill of Lad...

By James Juo. Under Federal Rules of Civil Procedure 68, a defendant may serve “an offer to allow judgment on specified terms, with the costs then accrued.” If rejected, and the plaintiff recovers less than the amount of the rejected offer of judgment, then Rule 68 shifts the post-offer costs ont...

By James Juo. Bimbo Bakeries USA, owner of Sara Lee's North American Fresh Bakery business, has been using ARTESANO as a trademark for pre-packaged sliced bread since August 31, 2015. In 2017, its parent, Grupo Bimbo SAB de CV, filed a U.S. trademark application to register the ARTESANO mark with...