Archive for November, 2006

Shire Sues Andrx

Saturday, November 25th, 2006

Shire Laboratories, Inc. filed suit against Andrx Pharmaceuticals LLC and Andrx Corp., for patent infringement.The suit, filed in the U.S. District Court for the District of New Jersey and the Southern District of Florida, alleges Andrx infringed upon two patents. The suit was filed in response to an Andrx new drug application for several generic versions of Adderall, a drug used to treat attention deficit hyper activity disorder (ADHD).  The complaints also name Watson Pharmaceuticals Inc., which acquired Andrx.

Shire said the application stated Andrx’s plan to market the generic drugs before its patents related to Adderall expire in 2018

Washington Takes On China

Saturday, November 25th, 2006

Well, not Washington D.C., but the Washington Apple Commission (“WAC”).

The WAC has taken the Chinese Trademark Review and Adjudication Board to court after its application to register its trademark was rejected. The application was rejected because the trademark contains the word “Washington,” the capital of the United States.  Under Chinese trademark law, well-known foreign geographical names may not be used as trademarks, but exceptions can be made for geographical names that have other meanings.

The Trademark Review and Adjudication Board, which is responsible for handling trademark disputes, claimed Washington is better known in China as the capital of the U.S. than as a person’s name, and so cannot be considered an exception.

WAC said its trademark, which has already been registered in the United States, is known the world over and that it has no intention of monopolizing the geographical name. It contends that the trademark will not have a negative impact on competition.

Google Adds Functionality

Saturday, November 25th, 2006

to Google Book Search.

It seems that Google is adding additional functionality to its book search feature.

Lessons To Be Learned

Saturday, November 25th, 2006

Back when I was still in my in-house job, I was often asked to review internal “pep-rally” style programs. Often these programs included the playing of popular or well-known music. That part was easy. We could check and see if a song was covered in our annual license with a music rights company (such as ASCAP).

However, equally often, they wanted to create what they called a “parody”. They wanted to take the music from a well-known song and change the words to make it relevant to their internal team’s meeting. I almost always advised against it. They would swear that the risk is low. It is only an internal program. They’re not using it in advertising, etc. I would still always advise against it. Usually, however, they would move forward with the program.

Well, to those who resented getting “legal” involved and those who think that there is no chance of the program getting out to the public, here’s a lesson for you.

Essentially, Bank of America employees took U2′s “One” music and rewrote the lyrics to tout the merger/take over of MBNA by/with Bank of America. You can see a video of the performance at http://www.stereogum.com/archives/003926.html (as well as a transcript of the re-written lyrics).

Univeral’s Music division has a real problem with this. You can also read the C&D letter from Universal at http://www.stereogum.com/archives/003926.html – in the comments section.

So, those those in-house employees who believe that their internal programs will never escape, think about this story. Although, in my opinion, Universal or U2 would likely not receive much in the way of actual damages, consider the embarrassment to you and the company for which you work.

What Constitutes Actual Use in Commerce?

Saturday, November 25th, 2006

Kentucky Fried Chicken, better known as KFC, working on the assumption that extraterrestrials get hungry too, has announced the launch of the Colonel Sanders logo that is large enough to be seen from space. Taking no chances that the logo might be missed, the world’s largest advertisement is situated right in the middle of the infamous Area 51, specifically in The World’s Only Extraterrestrial Highway otherwise known as the UFO Capital of the World.
The unveiling of the 26,670 square metre (87,000-square foot) depiction of the beloved face of Colonel Sanders, KFC is now the world’s first brand visible from outer space. According to a press realease by KFC, “the new logo depicts Colonel Sanders with his signature string tie, but replaces his classic white, button-down suit with a red apron.”  Graham Allan, President of KFC International added, “KFC is boldly going where no brand has gone before!”.
Could this be the first trademark to be registered at the moon’s trademark office?

Always a New Business Opportunity

Saturday, November 25th, 2006

Consumer brand companies have long wished they could find a way to eavesdrop (legally) on customer conversations. Marketers can easily read Internet blogs, chat rooms and social networking sites, but what people say over coffee or across their cubicle remains largely unknown.

Well, now they can…sort of.  A new word-of-mouth research firm, the Keller Fay Group, is attempting to demystify chatter in the offline world. Since April, the firm has interviewed 100 different people a day, including the South Dakota graduate student. In return, the participants receive points that can be redeemed at places like stores and restaurants.

And that’s not all. 

BoldMouth has joined with a software company, BuzzLogic, to create a product available in January that will help companies monitor what people say about them on Internet sites. Tracking consumer chatter, though, does not always provide companies with solutions, said Heather Dougherty, senior retail analyst for Nielsen/NetRatings.

Be careful with whom you speak.

A Dating Lesson

Friday, November 24th, 2006

This is funny.

Fruit of the Loom Loses TM Battle

Friday, November 24th, 2006

After a six (6) year court battle, Fruit of the Loom has lost its battle with independent filmmaker Michelle Messina in Canada.  Underwear brand Fruit of the Loom had objected to Messina’s sex education film’s title – “Fruitful Sex”.

The animated film which lasts only 156 seconds is about a banana and an orange having sex. 

Fruit of the Loom argued promotional T-shirts bearing the title of the movie could be confused with Fruit of the Loom brand T-shirts.  The battle began when Messina filed for trademark registration of Fruitful Sex.

Warned that the case would be long and expensive, Ms. Messina chose to represent herself and spent countless hours at the law library researching her defence.

“I did have one trademark lawyer, but he had one typo and I just thought, ‘You know what, I’ve got to have someone who’s totally on the ball and no one is going to care about it as much as I would,’” she said.

The frame-by-frame film, in which a banana and an orange are married before a crowd of kiwis, cherries and a rhubarb — the priest — and then go on to multiply, debuted in 1998 at the Toronto Worldwide Short Film Festival.

More success followed, with the film being shown at other North American festivals and a $100,000 purchase offer, which Ms. Messina was forced to refuse because of Fruit of the Loom’s opposition launched in 2000, she said.

Novo Nordisk Sues PTO Commissioner

Sunday, November 19th, 2006

Danish pharmaceutical company Novo Nordisk AS is suing the U.S. Patent & Trademark Office Commissioner Jon Dudas (in his official capacity) claiming that the Patent Office has misinterpreted data, evidence and legislation.

The USPTO has twice rejected applications from Novo Nordisk for patents relating to its AERx inhaled insulin delivery system, claiming the product does not contribute anything new.

“It’s a peripheral patent in relation to AERx, but we think we have some genuine inventions here,” said Kjellberg, head of Novo Nordisk’s patent division.

Wal-Mart Faces Challenges to EDLP

Thursday, November 16th, 2006

According to this article, Wal-Mart is seeking to register the mark EDLP in connection with online and retail department store services in Class 35, and a lot of people are not happy about it.  SuperValu, Inc. has already opposed the application, as has Wakefern Food Corp. and Associate Wholesale Grocers, Inc.  Likewise, the following have collectively obtained several extensions of time to oppose Wal-Mart’s application:  Lowe’s Home Centers, Inc., Publix Asset Management Company, Giant Food Stores, LLC
Haggen, Inc., Wegmans Food Markets, Inc., Publix Super Markets, Inc., Wakefern Food Corp., Mr. Wendell P.Russell Jr., Food Lion, LLC, BASHAS’ INC., Lowe’s HIW, Inc., Schnuck Markets, Inc., Meijer, Inc., National Association of Convenience Stores, Unified Western Grocers, Inc., Associated Grocers, Inc. and HEB GROCERY COMPANY, LP.

The opposers claim that EDLP is a commonly understood and used term in the retail industry for “every day low prices,” another trademark of Wal-Mart.  SuperValu includes as exhibits to its opposition numerous dictionary definitions for “EDLP” as well as industry articles that use “EDLP” as an acronym for “every day low prices.”

However, what I also find interesting relates to my earlier post here which discusses the viability of fraud claims at the USPTO.  In its opposition, SuperValu claims that since Wal-Mart was aware of the commonly understood meaning of “EDLP,” it committed fraud when it filed its application and declared, that “to the best of Applicant’s belief  no other person, firm, corporation or association has the right to use said mark in commerce.”

Though this does not relate to fraud concerning the goods which a Statement of Use was filed, it does relate to the concept of fraud on the USPTO.  It also relates to some points made in the INTA Bulletin on which my earlier post was based and it addresses some of the comments posted by Ron Coleman to my post.

I am curious to see how this turns out.

On a tanget, a review of the file wrapper suggests that the Examining Attorney did not make any inquiries into the meaning of the mark.  This surprises me in light of the marks on which I have worked for which the Examining Attorney has inquired whether the mark has any meaning in a foreign language or in the relevant trade or industry.  The Examining Attorney, in his Office Action, did not even ask whether the mark stood for something.  It seems that this was a pretty big oversight on his part.

As I said above, I am interested to see how the fraud claim is handled by the TTAB. I hope it makes it through a decision.