Author Archives: Darren Geliebter

L&G Partner Mathew Lombard’s Trade Secrets Presentation at PTMG

L&G partner, Mathew Lombard, spoke last month at the Pharmaceutical Trade Marks Group (“PTMG”) last month on the topic of protection of trade and business secrets. Although I was not able to attend the meeting this year, by all accounts, … Continue reading

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Defendant’s belief re: patent validity not a defense to inducement

In Commil Usa, LLC v. Cisco Systems, Inc. (Supreme Court 2015), the Supreme Court held that, because induced infringement and validity are separate issues and have separate defenses under the Act, belief regarding validity cannot negate Section 271(b)’s scienter requirement … Continue reading

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B&B Hardware: TTAB decisions to have preclusive effect in trademark litigation (sometimes)

In B&B Hardware Inc. v. Hargis Industries, Inc. (Supreme Court 2015), the Supreme Court held that Trademark Trial and Appeal Board (TTAB) decisions regarding likelihood of confusion have preclusive effect in subsequent district court infringement actions “[s]o long as the … Continue reading

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The Concurrent Use of Trademarks in Different Geographic Locations

Generally, trademark owners have exclusive rights to use their mark to label or identify their goods and/or services. However, trademarks may overlap under either of the following circumstances: 1.    In different industries; or 2.    In different geographical locations. The most … Continue reading

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Madrid Protocol Tip: Calculating Office Action Deadlines

Don’t get tripped up when calculating the deadline within which to respond to an Office action issued in connection a Section 66(a) application at the U.S. Patent & Trademark Office. A response to an Office action issued by the USPTO … Continue reading

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International Patent Filing & Protection Strategies: Initial Considerations

Public Disclosure-­ The Novelty Requirement Most countries are “first to file” countries-­ in other words, you have to file a patent application to establish rights. The U.S. has historically been a “first to invent” system;; but as of March 16, … Continue reading

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