Insights on Patent

Businesses must constantly adapt to technological advancements in order to remain competitive in a fast-paced digital economy. Consider, for example, the music or computer industry—a company founded in 1980 will be offering very different products and services today than it did at its inception.

Jawbone and Fitbit, both billion-dollar leaders in the “wearable” technology category of fitness bands, are warming up for what may become a test of legal endurance.

Thirty-nine Arent Fox LLP attorneys have been rated as leaders in their profession by The Best Lawyers in America 2016.

Arent Fox LLP Intellectual Property partner Steven I. Weisburd, acting as co-counsel to Olympus America Inc. and Olympus Medical Systems Corp., won invalidity rulings against two patents owned by Perfect Surgical Techniques, Inc.

The 2015 edition of Legal 500 US has rated 50 Arent Fox LLP attorneys as national leaders in their field. In addition, 15 of the firm’s practice areas were ranked among the best in the country.

Intellectual Property partner Pamela M. Deese was featured on the cover of Ladybrille as its Woman of the Month for May following a decision that Arent Fox recently secured of more than $69 million for SD-3C LLC.

In an unpublished opinion filed on May 8, 2015, the US Court of Appeals for the Eleventh Circuit sent trade secret owners a strong reminder of the important role written confidentiality agreements play in protecting valuable intellectual property.

Starting May 13, 2015, applicants in the US who file a single industrial design application at the United States Patent and Trademark Office in English have the opportunity to obtain protection for up to 100 different industrial designs across 44 countries and intergovernmental organizations.

Intellectual Property partner Pamela Deese was featured by Inside Counsel for her work on a team from Arent Fox that recently secured a summary judgment of more than $69 million for SD-3C LLC.

California has a strong public policy favoring trial by jury, and since California Supreme Court’s decision in Grafton Partners, L.P. v. Superior Court, 116 P. 3d 479 (2005), contractual pre-dispute jury trial waivers have been held invalid in cases unless otherwise expressly authorized by statute.

On April 16, 2015, the Virginia Supreme Court threw out a contempt citation against social media company Yelp, Inc. (Yelp) in a closely watched case involving anonymous free speech rights on the internet.

In a recent non-precedential decision, the Trademark Trial and Appeal Board ruled that the fast food chain Del Taco, Inc. (Del Taco) no longer enjoys trademark rights in the NAUGLES brand associated with Naugles, Inc., a California-based fast food chain that Del Taco acquired in the late-1980s.

In a precedential ruling, TTAB held that SMART BALANCE for frozen foods was not likely to be confused with SMART ONES for frozen foods in light of the weakness of the common term “SMART,” the differences in the marks, the 17-year peaceful co-existence of the parties’ marks, and more.

Arent Fox secured a summary judgment of more than $69 million for SD-3C, LLC

On March 24, 2015, the Supreme Court issued its much anticipated second trademark decision of the term, holding that US Trademark Trial and Appeal Board (TTAB) decisions concerning likelihood of confusion generally have preclusive effects in federal court.

In the non-precedential ruling, the Trademark Trial and Appeal Board (TTAB or Board) found that the marks “MASQUERADE” and “MASCARADE” are likely to be confused for different alcoholic beverages. In re 8 Vini, Inc., Serial No. 85857391 (January 16, 2015) [not precedential].

The alleged descendants of Aunt Jemima (a.k.a. Anna Short Harrington) do not have a valid claim to the great syrup fortune of Pepsi and Quaker Oats, according to a recent ruling by the US District Court for the Northern District of Illinois.

In a recent decision, the Federal Circuit clarified the “use in commerce” requirement for trademark applications filed in connection with the provision of a service.

Bankruptcy & Financial Restructuring, Intellectual Property, International Arbitration & Dispute Resolution, and International Trade practices recognized.

There was good news for those companies that have products with unique designs at the US Patent and Trademark Office (PTO). The PTO found that the design of a monster truck could be protected and registered as trade dress for the “services” offered by the owner.

Steven I. Weisburd and Richard LaCava have joined the firm as partners in the New York office.

In a succinct eight-page opinion, the Supreme Court ruled unanimously last week that trademark “tacking” is a question of fact that should generally be decided by juries.

On January 16, 2015, Sens. Jerry Moran (R-KS) and Mark Warner (D-VA) introduced S. 181 (The Startup Act), which is meant to promote new business formation, especially in the information technology industry.

In a precedential ruling, the Trademark Trial and Appeal Board of the US Patent & Trademark Office (USPTO) sustained an opposition by McDonald’s to the mark MCSWEET for pickled gourmet vegetables on the grounds that it infringed on and diluted McDonald’s famous family of “MC” for formative marks.

Arent Fox Intellectual Property partner Alec P. Rosenberg was quoted by Law360 in an article previewing the most closely watched copyright and trademark cases in 2015.