Patent Innovation Act of 2013 Has Passed

Here is some great insight into some potential issues with the recently passed Innovation Act of 2013. http://www.todaysengineer.org/2013/Dec/HR-3309.asp

Super Soaker Settlement $73 Million

The power of creating an incredible invention and having good counsel can be seen in a recent arbitration settlement in which the inventor of the Super Soaker, Lonnie Johnson Ph.D, was awarded $72.9 million in royalties against Hasbro. Although Johnson has over 80 patents, many of which we are sure relate to the Super Soaker or variations of it, Johnson was able to obtain this mammoth settlement based on a breach of contract of a more ambiguous nature rather than on any specific intellectual property. Namely, in a 1996 agreement, Hasbro agreed to pay Johnson royalties of 2 percent for “three-dimensional products” based on the appearance of the toy and 1 percent for “two-dimensional visual representations.” Negotiating such broad terms in his agreement opened the doors for Hasbro’s breach which ultimately led to this incredible settlement.

Just to put things in perspective, Johnson founded his company and licensed the Super Soaker for the first time in 1989, which generated more than $200 million in retail sales in the following two years.

USPTO Remains Open During Government Shutdown

While many government agencies have been forced to close shop as a result of the quibbling between the members of congress, there has been one bright bastion of hope for American efficiency; the United States Patent and Trademark Office. Without sounding like I’ve been paid by them, the USPTO appears to be the exemplary son of Uncle Sam compared to its inept siblings. Why? Because it remains open during the shut down, able to stand on its own feet. See their official comment here: http://www.uspto.gov/news/2013ops.jsp

USPTO shutdown

Don’t get me wrong, as an IP firm with a high volume of patent and trademark filings, we have to deal with the USPTO everyday and they are often a pain in the a**. I especially can’t stand their hold music, they haven’t changed it in years… I digress. But from the stand point of operations, I give credit where credit is due.

They estimate that they can keep operations afloat for about 4 weeks, and after that if their reserve funds run out they would still keep a “small staff” going to accept new work. So what’s their secret? Fees. A lot of them. The USPTO is able to exist on their own private budget resulting from the fees collected for a variety of patent and trademark related filings. And these fees are quite expensive. But interestingly back in April of this year when the American Invents Act was put into effect, there was a lot of downward adjustments to those fees. Namely, a “micro entity” category was created for small inventors which reduced fees 50% for many types, but not all, filings. Now if we only had a “micro entity” health care equivalent… Bottom-line, although not perfect, the USPTO has structured their fees well and is profitable, plus they have a healthy philosophy on the significance of IP filings, “[o]ur economy depends upon the work of the employees of the PTO to protect new ideas and investments in innovation and creativity,” says Colleen M. Kelley, President of the National Treasury Employees Union, which represents USPTO employees. “A dramatic increase in the already existing backlog at PTO would harm American investors and entrepreneurs responsible for much of the job growth in our country.”

- See more at: http://www.trademarklawyerusa.com/wordpress/uspto-remains-open-during-government-shutdown/#sthash.yAQJGkQu.dpuf

Trademark Lawyers, Why You Should Hire One

Here is a great posting by the United States Patent and Trademark Office regarding why you should hire a trademark lawyer to file your trademark application:

http://www.uspto.gov/trademarks/basics/private_attorney.jsp

Filing a Trademark without a Lawyer

Great post by Cherly Hodgson about why it is dangerous to file trademarks without the advice of an experienced trademark lawyer.

Supreme Court's Opinion of Gene Patentability

Supreme Court has held that isolated human genes are not patentable. See below for more.

http://online.wsj.com/article/SB10001424127887324049504578543250466974398.html?mod=djemalertNEWS

Louboutin and Yves Saint Laurent's Trademark Update

The sage continues, but this time the brawl between the two high-end fashion titans takes place in the United States Patent and Trademark Office. Back in September of 2012, the Second Circuit issued an important fact specific ruling in regards to Christian Louboutin‘s trademark covering the red sole of their shoe in that protection will remain only when the red outsole is contrasted with the “upper” of the shoe. The opinion stems from the affirmation of the district court’s denial of Louboutin’s motion for preliminary injunction against Yves Saint Laurent (YSL). The Second Circuit specifically found that “it is the contrast between the sole and upper that causes the sole to ‘pop’, and to distinguish [Louboutin as] its creator.” So what follows is that Louboutin may have limited or no rights in the red sole by itself or when the sole and upper do not contrast.

Now Louboutin’s trademark U.S. Reg. 3,361,597 for the trade dress below is in a tug-of -war between the parties as to what the modified description of the mark should be following the Court’s Mandate to the USPTO to clarify the description consistent with the Court’s decision.



Following the Second Circuit’s ruling, the USPTO proposed the following “…The mark consists of a lacquered red outsole on footwear that contrasts with the color of the adjoining remaining portion of the shoe (known as the ‘upper’).” Louboutin shot back with what YSL argues is a dramatically “broaden scope of Louboutin’s rights.” Namely, Louboutin requests that the “mark consists of a lacquered red outsole on footwear that contrasts with the color of any visible portion of the shoe.” YSL’s main contention is with Louboutin’s deletion of the term “upper” which is replaced by “any visible portion of the shoe”. Slight difference? Maybe, but trademark law is all about the nuances, and this nuance YSL argues, will have a serious anti-competitive effect. The parties have been duking out this point during the beginning of February with no end in site as of yet.

Michael N. Cohen Super Lawyer

Cohen IP Law Group, P.C. is once again pleased to announce the nomination of Michael N. Cohen for inclusion in the 2013 Southern California Rising Stars Super Lawyers® publication.

Super Lawyers® is a listing of outstanding lawyers from more than 70 practice areas who have attained a high-degree of professional achievement. The selection process is multi-phased and includes independent research, confirmation that nominees are properly licensed, in good standing with the state licensing agency, and, when possible, that they have no history of disciplinary action that would warrant removal from the list. In addition to a general survey, an attorney-led research team reviews the credentials of potential candidates and assigns points based on a set of defined evaluation criteria, and those with the highest point totals are named to the Rising Stars list. No more than 2.5 percent are named to the Rising Stars list.

Super Lawyers was first published in 1991 by Law & Politics and was acquired by Thomson Reuters, Legal in February 2010. Thomson Reuters is a leading source of intelligent information for businesses and professionals.