Welcome
The Intellectual Property Law Section of the New York State Bar
Association introduces members of our Association to the interesting and
growing areas of law which make up Intellectual Property Law, including
patents, trademarks, copyrights, trade secrets, licensing and Internet
intellectual property law issues. We provide educational programs, other
activities and invite the participation of attorneys, law students and
non-lawyer members of the business community. We invite our members to
take advantage of substantive legal research through our Law Watch
search results, to discuss issues and ideas in our discussion groups,
and to participate fully in the e-community of the site.
|
Comments
of NYSBA Intellectual Property Law Section to
TTAB Proposed Rules (PDF),
71 Fed. Reg. 10, p. 2498 (January 17, 2006)
This letter was submitted by NYSBA's Intellectual
Property Law Section, on behalf of its Trademark Law Committee and the
Section's Executive Committee, in response to the proposed rules of the
U.S. Patent and Trademark Office published at 71 Fed. Reg. 10, p. 2498
(January 17, 2006) affecting the practice before the Trademark Trial and
Appeal Board.
|
Recent IP Cases In the News
Second Circuit Holds No "Use" in 1-800 Contacts v.
WhenU CA2
Analysis by Martin H. Samson
Reversing the court below, the Second Circuit dismisses trademark
infringement claims brought by a website operator and mark holder
against a distributor of pop-up ads. Such claims
fail because "as a matter of law, [defendant] WhenU does not 'use'
[plaintiff] 1-800's trademarks within the meaning of the Lanham Act, 15
U.S.C. § 1127 when it (1) includes 1-800's website address in an
unpublished directory of terms that trigger delivery of WhenU's
contextually relevant advertising to [computer] users; or (2) causes
separate, branded pop-up ads to appear on a [computer] user's computer
screen either above, below, or along the bottom edge of the 1-800
website window."
The absence of such a use by WhenU of plaintiff's
trademarks is fatal to 1-800 Contacts' trademark infringement claims,
and mandates reversal of the District Court's grant of preliminary
injunctive relief. The District Court had enjoined WhenU from
including the domain name of plaintiff's website in its unpublished
directory, or causing pop-up ads to be displayed when that domain name
is entered into the URL bar of a web browser, or as a search
term.
In reaching this result, the Second Circuit agreed
with the decisions of two other district courts - the Eastern District
of Virginia in U-Haul Inc. v. WhenU.com Inc., 279 F. Supp. 2d 723
(E.D.Va. 2003) and the Eastern District of Michigan in Wells Fargo &
Co., et al. v. WhenU.com Inc., 293 F.Supp.2d 734 (E.D.Mich. 2003) - each
of which similarly held that WhenU's activities did not infringe the
respective plaintiffs' trademarks because they did not constitute the
requisite use of the plaintiffs' respective marks.
Thank You!
The Intellectual Property Law Section extends
its gratitude to the following for their significant sponsorship over
the past year:
• Arent Fox LLP
• Bond, Schoeneck & King, PLLC
• Day Pitney LLP
• DeVore & DeMarco LLP
• Dimock Stratton LLP
• Fulbright & Jaworski LLP
• Fross Zelnick Lehrman & Zissu, P.C.
• Goodwin Procter LLP
• Hiscock & Barclay LLP
• Holland & Knight LLP
• Jaeckle Fleischmann & Mugel, LLP
• Morrison & Foerster LLP
• Moses & Singer LLP
• Ogilvy Renault LLP
• O'Melveny & Myers LLP
• Ostrolenk, Faber, Gerb & Soffen LLP
• Sills Cummis & Gross, P.C.
• Weil, Gotshal & Manges LLP
• ASPCA
• Avon Products Incorporated
• Check Mark Network
• Corporation Service Company
• DOUGH • RAY • ME
• FTI®
• L'Oreal USA
• MarkMonitor
• MICROSOFT CORPORATION
• NORR STIEFENHOFER LUTZ
• Penguin Group
• Rouse & Co. International
• Thomson CompuMark
• 7 for All Mankind Jeans
|
|
Intellectual Property Law Home
