Eiffel Tower Copyright?

Sharing a photo of the Eiffel Tower by night on social media, without paying for it, could get you into big trouble. Even if it’s just a holiday memento. Ooh la la…

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Apple’s GC Retires

apple-logo_318-40184Bruce Sewell, Apple’s’s general counsel since 2009, announced his retirement Friday after eight years as captain of Apple’s legal and security affairs.

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“Naked” Licenses

buying-nakedFailure to exert quality control, or otherwise properly supervise the nature and quality of a licensee’s use of your trademarks, results in what’s known as a “naked license” that can strip your company (or client) of its trademark rights.

Why is quality control by a licensor so important?

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CSL Returns…for BMW

bmw-logo-2000-2048x2048It appears that BMW has filed three applications filed by BMW for the trademark CSL in the United States. Filed on 19 April 2017, the marks are M2 CSL, M4 CSL, and M8 CSL.

CSL is an acronym for Coupe Sport Leightbau, or Coupe Sport Lightweight, and has not appeared on a BMW vehicle since 2004, when the M3 CSL spent a single year in production, and was limited to 1,400 units.

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Be Vigilant!

Protecting a brand is not easy; it requires diligence and strategy. Unlike owners of other forms of intellectual property, trademark holders have an affirmative duty to police their trademarks, and can lose trademark rights if they fail to do so.

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When Filing Maintenance Documents: Beware!

uspto_modern1613.17(a) Correcting Deficiencies in Affidavits or Declarations Timely Filed Within the Periods Set Forth in § 71(a) of the Act

If the affidavit or declaration is filed during the periods set forth in § 71(a) of the Act (i.e., during the sixth year after the date of registration in the United States, or within one year before the end of any ten-year period after the date of registration in the United States), deficiencies may be corrected, after notification from the Office, within the relevant period without paying a deficiency surcharge, or after the expiration of the relevant period with payment of the deficiency surcharge required by § 71(c) of the Act, 15 U.S.C. § 1141k(c).

Any deficiency must be cured before the end of the relevant filing period set forth in § 71 of the Act or within the set period for response to the Office action, whichever is later. 15 U.S.C. § 1141k(c). If no response is filed, or if the holder does not correct the deficient affidavit or declaration, within this time period, the registration will be cancelled, unless time remains in the grace period under §71(a)(3) of the Act, 15 U.S.C. §1141k(a)(3). If time remains in the grace period, the holder may file a complete new affidavit, with a new fee. See TMEP § 1613.16.

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USPTO Considers Submission Limits

The U.S. Patent & Trademark Office is considering setting file size/page limits for proof of use specimens.

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Sanofi, Boehringer to Swap Assets

Sanofi agreed to a €22.8 billion ($25.1 billion) asset swap with Germany’s Boehringer Ingelheim GmbH that purports to boost the French drugmaker’s business in selling over-the-counter drugs.

Sanofi will trade its animal-health business (Merial), valued at €11.4 billion, for Boehringer’s €6.7 billion consumer-health business. Closely-held BI will make a €4.7 billion cash payment to Sanofi.

The deal helps Sanofi CEO Olivier Brandicourt reshape Sanofi whose pharmaceuticals division has suffered declining sales of its best-selling insulin product. It also adds to the company’s growth in the consumer products space.

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Congresses Passes the Defend Trade Secrets Act

secretAfter being passed unanimously by the U.S. Senate, the House of Representatives voted 410-2 to approve the “Defend Trade Secrets Act” (“DTSA”). The legislation, which is supported by the Obama administration, would open the door for companies to sue in federal court for damages related to theft of trade secrets.

Historically, trade secret protection has been left to the states and state law. More than 40 years ago in Kewanee Oil v. Bicron, the Supreme Court observed that “Congress, by its silence over these many years, has seen the wisdom of allowing the States to enforce trade secret protection.” Congress appears to have changed its tune.

Modeled after the Uniform Trade Secrets Act, the DTSA creates an exclusively federal court claim for trade secret misappropriation. The DTSA does not replace or preempt state law or state trade secret claims. The Senate Report explains that the new federal remedies “are intended to coexist with, and not to preempt, influence, or modify applicable state law.”

Among other things, the DTSA provides for ex parte seizures of misappropriated trade secrets in “extraordinary circumstances where necessary to preserve evidence or prevent dissemination of a trade secret.”

The law will go into effect immediately once President Obama signs the bill into law.

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“Willfulness” Necessary for Disgorgement

5666cb118b1de98133c0ce954259e384On March 31, 2016, the Federal Circuit held that willfulness is a requirement in order to award a trademark plaintiff the infringer’s profits (disgorgement of profits).

The district court reduced Romag’s damages award, holding as a matter of law that Romag could not recover Fossil’s profits for trademark infringement because the jury found that the infringement was not willful.

The Federal Circuit affirmed.

Opinion may be found here.

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