IP Law Roundup: Google Adwords Redux, Louis Vuitton & UPENN & Hyundai, USPTO Pilot Program, Malpractice Claims…

We’ve been itching to put together a new roundup of Intellectual Property Law advisories — a number of interesting updates have passed through JD Supra over the last few days and we’ve wanted to capture them for you.

But before we get on with it, let’s all say out loud together (speak up in the back, please!): “Don’t be messing with the Louis Vuitton mark.”

There. And now, for your interest:

Are Google AdWord Trademark Claims Back? Rosetta Stone Case May Open the Door (Looper Read):

“The ruling is bad for Google, but not necessarily the end of a war.  The court of appeals simply sent the case back to the trial court allowing Rosetta Stone to prove its case — a still difficult hurdle.  As I mentioned before, most plaintiffs aren’t Rosetta Stone.  While Google will have to spend much more in legal fees to fight this and the likely copycat lawsuits, Rosetta Stone clearly invested a lot of money as well…” Read on>>

What Is Trademark Parody, Really? Louis Vuitton Puts UPENN in the Fashion Spotlight for a Perfect Case Study (Wahab & Medenica):

“In the weeks leading up to the symposium, PIPG posted flyers throughout the law school, advertising the event. The flyers featured the signature Louis Vuitton print, but altered the famous logo. Instead of the famous “LV,” the new logo featured a “TM.” Underneath this altered print, the flyers contained the information regarding the date, times, feature speakers, and topics for the symposium…” Read on>>

Not So Clever After All: Humorous Commercial on “Luxury” Lands Hyundai in Hot Water (Foley Hoag):

“[Louis Vuitton] sued Hyundai in the Southern District of New York, and, in a recent summary judgment ruling by the district court, won a complete victory. Not only did the court grant summary judgment in LV’s favor on its claim for dilution by blurring and deny Hyundai’s motion on LV’s infringement claim, but it found as a matter of law that Hyundai had diluted LV’s mark willfully — thereby exposing Hyundai to all the damages available under 15 U.S.C. § 1117(a), including the possibility of multiple damages and/or a deterrence-based award…” Read on>>

The Batching Games: ICANN’s Plan to Process New gTLD Applications (Mintz Levin):

“If the batching process is activated, applicants will be notified that they are required to select a future time target for the processing of their application.  On the date and time selected, the applicant must return to the online system and click ‘submit’ as close as possible to the selected time as possible.  How close the applicant comes to the their target time will determine the applicant’s batch placement.  ICANN refers to this as ‘a game of digital archery.’  What fun!  All this for $185,000 filing fee…” Read on>>

USPTO to Assess After Final Consideration Pilot Program (McDonnell Boehnen Hulbert & Berghoff):

“The U.S. Patent and Trademark Office announced that it will be implementing a new After Final Consideration Pilot (AFCP) program, which will allow applicants and examiners to work together in after final situations to move applications toward allowance.  In particular, the AFCP program provides examiners with a limited amount of non-production time to consider responses filed following a final rejection.  For utility, plant, and reissue applications, the limited amount of non-production time will be three hours (design applications will be afforded one hour)…” Read on>>

Federal Courts Have Jurisdiction Over Malpractice Claims That Relate to Patent Law (Patton Boggs):

“In Byrne v. Wood, Herron & Evans, LLP, No. 2011-1012, Stephen Byrne sued his former attorneys in Kentucky state court for legal malpractice based on defendants’ representation of Byrne in prosecuting a patent for a lawn care device. Byrne alleged that the defendants negligently failed to secure broader patent protection for his invention from the U.S. Patent and Trademark Office (PTO), and, as a result, Byrne lost a patent infringement suit against Black & Decker Corporation. Even though Byrne’s claim was a purely state law claim, the defendants removed the case to federal District Court. The defendants claimed that federal jurisdiction existed because Byrne’s malpractice claim required resolution of an issue of patent law. The District Court denied Byrne’s motion to remand the case back to state court, agreeing with the defendants that federal jurisdiction did exist…” Read on>>

Minnesota’s Legislative Answer to “Trademark Bullying”? (Winthrop & Weinstine):

“Minnesota State Representative Joyce Peppin, is convinced that “trademark bullying” is a problem and that it requires a brand new law in Minnesota to properly deal with it. Representative Peppin apparently is a law student at William Mitchell College of Law, and she has teamed up with other students and William Mitchell law faculty to write and introduce into the Minnesota State House, a bill entitled the ‘Small Business Trademark Protection Act’ …” Read on>>

Fruit of the Patented Tree? (Howard Ullman):

“In the patent world, we have patents on seeds, which are ‘self-replicating,’ and the question whether the next generation seeds from the plants that grow from those seeds are within the scope of the patent.  The Federal Circuit has so far sided with patentees on this question, but the Supreme Court may be preparing to consider the issue, as reported in Patently-O…” Read on>>

Additional IP Law Updates? You know where to find them.