April 24, 2015

USPTO Offers New Tool to Receive Email Alerts when Patent Applications Publish

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Washington, D.C. - The U.S. Patent and Trademark Office ("USPTO") recently announced the release of the Patent Application Alert Service. This system provides customized email alerts to the public for free when patent applications of interest are published. Additionally, the system offers direct access to the published applications that meet users' search criteria.
After receipt of these customized email alerts, the public may identify prior art for "pre-issuance" submission into these applications. The pre-issuance submission process was established under the America Invents Act and, to date, the Office has received more than 2,600 submissions across all technologies. More information on the pre-issuance submission program and how members of the public can participate can be found here.
The idea for the patent application alert service came from a public roundtable held at the USPTO in April 2014 where the USPTO solicited input regarding the use of crowdsourcing and pre-issuance submissions to identify relevant prior art. The USPTO expects that this new service may be used to enhance the quality of examination and issued patents.

April 23, 2015

USPTO Announces Patents for Humanity Winners

Washington, D.C. - The U.S. Commerce Department's United States Patent and Trademark Office ("USPTO") recently announced the latest winners of the Patents for Humanity program. The Patents for Humanity program was launched by the USPTO in February 2012 as part of an Obama administration initiative promoting game-changing innovations to solve long-standing development challenges.

"As innovation and economic progress have made the world increasingly connected, more and more industries are realizing that their technologies can improve lives everywhere," said Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office Michelle K. Lee. "The experiences of businesses across industries have shown that helping the less fortunate can go hand in hand with developing commercial markets, and that humanitarian entrepreneurship provides new opportunities for those with vision to pursue them."

The Patents for Humanity Award is the top award for applicants best representing the Patents for Humanity principles. Award recipients will receive public recognition at an award ceremony sponsored by the USPTO. They will also receive a certificate to accelerate certain matters before the USPTO: a patent application, ex parte reexam, or an ex parte appeal to the Patent Trial and Appeal Board. Inter partes matters and other post-grant proceedings may not currently be accelerated. Honorable mentions will receive accelerated examination of one patent application and a featured write-up on the USPTO website. A portion of honorable mentions may be awarded for the best up-and-coming technologies.

Entrants competed in five categories: medicine, nutrition, sanitation, household energy and living standards. Applications to the pilot were accepted through October 31, 2014.

Following is a list of the 2015 Patents for Humanity winners:

Sanofi
Artemisinin is an important antimalarial drug derived from the sweet wormwood plant in Asia and Africa. Growing cycles, crop yields, and weather cause supply volatility of artemisinin, making it difficult to obtain at times. To address this problem, a public-private partnership to create synthetic artemisinin was formed in 2004 by PATH, the University of California Berkeley (a 2013 Patents for Humanity award winner), and Amyris, Inc., with support from the Bill & Melinda Gates Foundation. In 2007, Sanofi joined the project as the manufacturing partner for their chemical expertise and industrial capacity, taking this project from laboratory experiments to factory production. Sanofi is now supplying large quantities of artemisinin anti-malarial compounds on a no-profit-no-loss basis for use in developing countries.

Novartis
Tuberculosis kills more adults worldwide than any infectious disease except HIV/AIDS. One of the biggest challenges facing tuberculosis researchers has been how to combat multidrug-resistant tuberculosis, which is caused by an organism that is resistant to the most potent tuberculosis drugs. Novartis has discovered a class of compounds called indolcarboxamides that are active against drug-sensitive and multidrug-resistant strains of tuberculosis. In an arrangement requiring no upfront or milestone payments, Novartis has provided their entire tuberculosis R&D program, including these compounds, to the TB Alliance, a non-profit product-development partnership that seeks to find new and improved tuberculosis treatment regimens. The agreement allows the TB Alliance to develop these compounds further into potential tuberculosis treatments and potentially conduct clinical trials. Early toxicology, safety, and therapeutic studies have been promising.

American Standard Brands
American Standard's "SaTo" (Safe Toilet) Technology was created for people worldwide who do not have access to safe, basic sanitation. The SaTo Technology includes specially designed latrine pans and collectors with a counterweighted trapdoor-like flapper that can be flushed by pouring a small amount of water onto it. Upon closure, the flapper door creates an air-tight seal that reduces odors and prevents insects from entering and exiting the pit, eliminating a primary route of disease transmission. American Standard has partnered with BRAC, UNICEF, Save the Children, and other non-governmental organizations to distribute SaTo pans and collectors throughout the developing world. Over 700,000 SaTo pans have been distributed in Bangladesh, Uganda, Haiti, Malawi, and the Philippines.

SunPower Corp.
Nearly 18 percent of the world's population is energy impoverished. Traditional forms of lighting are combustion-based (firewood, charcoal, kerosene and dung), contributing to an estimated 3.5 million deaths a year from health impacts and house fires. For these communities, SunPower has outfitted a standard shipping container with solar panels on top and equipment inside to power hundreds of safe, rechargeable lanterns. Locals rent these lanterns for a small fee which is then reinvested to expand and improve the program. SunPower donates the container and supplies to partner organizations, along with ongoing technical support.

Nutriset
According to UNICEF, as many as 67 million children suffer from acute malnutrition every year. Children suffering from prolonged malnutrition often develop digestive problems that interfere with eating more food, causing further health problems and death. Nutriset developed nutritional products made from peanuts and other ingredients that helps malnourished children quickly and safely regain weight and digestive function. In addition to delivering their Plumpy'Nut branded products throughout the world with partners like UNICEF and USAID, Nutriset also offers open licensing to producers in the developing world so communities can work toward self-sufficiency. Their PlumpyField® network assembles entrepreneurs in participating countries to manufacture the Plumpy range of products for local needs.

Golden Rice
Despite current interventions, vitamin A deficiency is the leading killer of children globally (2 - 3 million annually) and also is the leading cause of childhood blindness (500,000 cases annually). Most cases occur in Asia where the staple food white rice, eaten by 3.5 billion people daily, lacks vitamin A sources typically found in animal products and leafy vegetables. These deaths and blindness are preventable. Golden Rice was genetically enhanced to provide a source of vitamin A for people subsisting mainly on rice, making it one of the first biofortified foods. Professors Potrykus and Beyer invented the technology after a decade of research, and have worked with Dr. Dubock since 2000 to donate it to the resource poor in developing countries. Local Golden Rice varieties are currently being developed by public sector institutions in Bangladesh, China, India, Indonesia, the Philippines, and Vietnam. Through licenses with national governments, farmers are free to plant, grow, harvest, locally sell, and replant seed - there are no licenses for farmers and no fees for use.

Global Research Innovation & Technology ("GRIT")
An estimated 65 million people in the developing world require wheelchairs. However, conventional wheelchairs don't function well on the rough and uneven terrain commonly found in developing regions. GRIT was created by engineering graduates of the Massachusetts Institute of Technology ("MIT") to increase mobility for the disabled around the world. Their three-wheel Leveraged Freedom Chair uses a push-lever drivetrain to help people move over broken pavement, dirt roads, fields, hills, rocky terrain and more. It's built from standard bicycle parts to enable local repairs with available materials. After graduating, the MIT students founded GRIT to bring the product to market, and MIT assisted by transferring the patent rights to GRIT for further development. The chair has been distributed in partnership with the World Bank, Red Cross, and others in India, Brazil, Guatemala, Guinea, Kenya, Haiti, Easter Island, Nepal, and Tanzania. A new version of the Leveraged Freedom Chair, known simply as the Freedom Chair, is now available in the United States for recreational use, helping Americans move beyond the pavement.

For more information on Patents for Humanity, including expanded descriptions of the winning patents and selection criteria, visit www.uspto.gov/patents/init_events/patents_for_humanity.jsp.

April 22, 2015

Indiana Intellectual Property Litigation: G & G Files Another Illegal Interception Lawsuit

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Indianapolis, Indiana - An intellectual property attorney for G & G Closed Circuit Events, LLC ("G & G") of Campbell, California initiated a lawsuit in the Southern District of Indiana alleging that Elsa Valdez and Tikal #2, Inc., both of Indianapolis, Indiana, illegally intercepted and broadcast the Saul Alvarez v. Austin Trout fight program (the "Program").

G & G states that it holds exclusive nationwide rights to the commercial, closed-circuit distribution of the Program. It has sued Elsa Valdez and Tikal #2, both individually and doing business as Sabor Latino Bar a/k/a Johnny's Park Inn Restaurant & Bar, under the Communications Act of 1934 and the Cable & Television Consumer Protection and Competition Act of 1992.

As in another recent lawsuit brought by G & G alleging interception, Defendants have been accused of violating 47 U.S.C. § 605 and 47 U.S.C. § 553 by displaying the Program on Saturday, April 20, 2013 without an appropriate license. Regarding the claim under 47 U.S.C. §605, G & G's Indiana federal complaint alleges that with "full knowledge that the Program was not to be intercepted...[and] exhibited" without authorization, "each and every one of the above named Defendants . . . did unlawfully ... exhibit the Program" for the purpose of commercial advantage and/or private financial gain. A count of conversion is also included. The complaint asserts that Defendants' acts were "willful, malicious, egregious, and intentionally designed to harm Plaintiff."

In the complaint, the intellectual property lawyer for G & G listed the following counts and requests for redress:

• Count I: Violation of Title 47 U.S.C. § 605. For this count, G & G states that it is entitled to (a) statutory damages for each willful violation in an amount of $100,000, and (b) the recovery of all costs, including reasonable attorneys' fees. Later in the complaint, the intellectual property attorney for G & G requests statutory damages of $110,000.
• Count II: Violation of Title 47 U.S.C. § 553. For this count, G & G asks the court for (a) statutory damages of $60,000 for each willful violation; (b) the recovery of all costs; and (c) and in the discretion of the court, reasonable attorneys' fees.

• Count III: Conversion. For this count, the court is asked to order both compensatory and punitive damages from Defendants as the result of the Defendants' allegedly egregious conduct, theft, and conversion of the program and deliberate injury to Plaintiff. G & G also seeks costs and attorneys' fees under this count.

Continue reading "Indiana Intellectual Property Litigation: G & G Files Another Illegal Interception Lawsuit" »

April 20, 2015

Indiana Intellectual Property Litigation: G & G Sues for Illegal Interception of Championship Fight

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Indianapolis, Indiana - An intellectual property attorney for G & G Closed Circuit Events, LLC ("G & G") of Campbell, California filed an intellectual property lawsuit in the Southern District of Indiana alleging that Zeferino Alvarez and Sabor Bohemio, LLC, both d/b/a El Bohemio Bar of Indianapolis, Indiana illegally intercepted and broadcast the Saul Alvarez v. Austin Trout fight program (the "Program").

G & G states that it holds exclusive nationwide rights to the commercial, closed-circuit distribution of the Program. It has sued Zeferino Alvarez and Sabor Bohemio, LLC, both individually and doing business as El Bohemio Bar under the Communications Act of 1934 and The Cable & Television Consumer Protection and Competition Act of 1992.

Specifically, Defendants have been accused of violating 47 U.S.C. § 605 and 47 U.S.C. § 553 by displaying the Program at issue on Saturday, April 20, 2013 without an appropriate license. Regarding the claim under 47 U.S.C. §605, the Complaint alleges that with "full knowledge that the Program was not to be intercepted...[and] exhibited" without authorization, "each and every one of the above named Defendants . . . did unlawfully ... exhibit the Program" for the purpose of commercial advantage and/or private financial gain. A count of conversion is also included. The complaint asserts that Defendants' acts were "willful, malicious, egregious, and intentionally designed to harm Plaintiff."

In the complaint, the intellectual property lawyer for G & G listed the following counts and requests for redress:

• Count I: Violation of Title 47 U.S.C. § 605. For this count, G & G requests (a) statutory damages for each willful violation in an amount to $100,000.00, and (b) the recovery of all costs, including reasonable attorneys' fees.

• Count II: Violation of Title 47 U.S.C. § 553. For this count, G & G asks the court for (a) statutory damages of $60,000 for each willful violation; (b) the recovery of all costs; and (c) and in the discretion of the court, reasonable attorneys' fees.

• Count III: Conversion. For this count, the court is asked to order both compensatory and punitive damages from Defendants as the result of the Defendants' allegedly egregious conduct, theft, and conversion of the program and deliberate injury to G&G.

Continue reading "Indiana Intellectual Property Litigation: G & G Sues for Illegal Interception of Championship Fight" »

April 16, 2015

Indiana Trade Secret Law: Think Tank's Information Was Not a Trade Secret as a Matter of Law

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Indianapolis, Indiana - The Court of Appeals of Indiana affirmed the directed verdict of Special Judge William E. Alexa of Porter Superior Court. Writing for the Indiana appellate court, Judge John Baker concluded that the trial court had not erred in ruling that Defendants' information was insufficiently private to constitute trade secrets.

Appellant-Plaintiff Think Tank Software Development Corporation, d/b/a Think Tank Networking Technologies Group and Think Tank Information Systems ("Think Tank") is engaged in computer-related business activities, including systems and network engineering, problem solving, systems design, implementation, sales, client training, and computer maintenance. During 2001 and 2002, multiple employees left Think Tank and joined its competitor, Chester, Inc.

In 2002, Think Tank sued Chester as well as former Think Tank employees Mike Heinhold, John Mario, Joel Parker, Thomas Guelinas, Jon Meyer, Daniel Curry, Eric M. Wojciechoswki, Michael Gee, Philip Ryan Turner and Carl Zuhl alleging: 1) breach of the covenant not to compete, 2) breach of the confidentiality clause, 3) breach of the agreement not to solicit its employees for other work, 3) tortious interference with contracts, 4) misappropriation of trade secrets, 5) tortious interference with business relationships, 6) unjust enrichment, and 7) defamation. Think Tank also included a claim for unfair competition against Chester.

After much litigation, including two prior appeals to the Indiana Court of Appeals, this Indiana trade secret lawsuit was again heard by the trial court on the remaining claims: misappropriation of trade secrets, tortious interference with contracts, and breach of the covenant not to compete and confidentiality provisions.

The most interesting of the claims in this lawsuit is Think Tank's assertion of misappropriation of trade secrets. Defendants moved for a directed verdict on that count, as well as all other claims against them. The trial court granted the directed verdict on Think Tank's claim for misappropriation of trade secrets, reasoning that, "[it] is a question of law for the Court relative to what is and what is not a trade secret. Plaintiff has failed to show that the information obtained was ever, in law, a trade secret."

Shortly after this ruling, Think Tank sought review a third time from the Indiana Court of Appeals. It claimed that its trade secrets included: 1) the nature and design of its technical solutions; 2) the design of its customers' computer systems; 3) pricing; and 4) customer identities. Think Tank further argued that the trial court could not determine as a matter of law whether information was a trade secret under Indiana Code section 24-2-3-2, which defines a trade secret as:

information, including a formula, pattern, compilation, program, device, method, technique, or process, that:

(1) derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use; and

(2) is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.

The Indiana appellate court declined to address Think Tank's argument whether a trial court could determine as a matter of law whether information was a trade secret under Indiana law. However, it concluded that Think Tank had failed in its burden to avoid the directed verdict: "as a matter of law, Think Tank failed to produce enough evidence to allow a reasonable fact finder to determine that the proffered information was trade secrets." Specifically, it found that Think Tank failed to show that any of the information alleged to be trade secrets was not generally known to or ascertainable by the public.

The appellate court agreed with the Indiana trial court that: 1) the computer certifications and intellectual capital that Think Tank possessed was readily available information; 2) knowledge of customers' computer systems and current or future needs was readily ascertainable, as such information belonged to the customers in question; and 3) pricing information did not constitute a trade secret, as it too was readily available from the customers. Thus, the information was not a trade secret.

The Indiana appellate court continued that Think Tank appeared not to be trying to protect its trade secrets, but instead to prevent competition. Such a goal, the court said, might be effectuated by a non-competition agreement. However, the use of Indiana legislation designed to protect trade secrets could not properly be stretched to hinder the use of information that appeared to be generally known or readily obtained from another source.

Continue reading "Indiana Trade Secret Law: Think Tank's Information Was Not a Trade Secret as a Matter of Law" »

April 15, 2015

Patent Law: EFF Busts Podcasting Patent, Invalidating Key Claims at Patent Office

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San Francisco, California - The U.S. Patent and Trademark Office ("USPTO") invalidated key claims in the so-called "podcasting patent" last week after a petition for review from the Electronic Frontier Foundation ("EFF"). This decision significantly curtails the ability of a patent troll to threaten podcasters big and small.

"We're grateful for all the support of our challenge to this patent. Today is a big victory for the podcasting community" said EFF Staff Attorney Daniel Nazer, who also holds the Mark Cuban Chair to Eliminate Stupid Patents. "We're glad the Patent Office recognized what we all knew: 'podcasting' had been around for many years and this company does not own it."

The "podcasting patent" became big news in 2013, when a company called Personal Audio, LLC, began demanding licensing fees from podcasters including comedian Adam Carolla and three major television networks. Personal Audio doesn't do podcasting itself, but instead used its patent to claim infringement and collect payouts from actual creators.

In petitions filed with Patent Office, EFF showed that Personal Audio did not invent anything new before it filed its patent application, and, in fact, other people were podcasting for years previously. Earlier examples of podcasting include Internet pioneer Carl Malamud's "Geek of the Week" online radio show and online broadcasts by CNN and the Canadian Broadcasting Corporation (CBC).

"We have a lot to celebrate here," said EFF Staff Attorney Vera Ranieri. "But unfortunately, our work to protect podcasting is not done. Personal Audio continues to seek patents related to podcasting. We will continue to fight for podcasters, and we hope the Patent Office does not give them any more weapons to shake down small podcasters."

EFF partnered with attorneys working pro bono and the Cyberlaw Clinic at Harvard's Berkman Center for Internet and Society to craft the petition for review with the USPTO.

This edited article was provided by the Electronic Frontier Foundation, a nonprofit group which advocates for innovators and users of technology. The article has been licensed under the Creative Commons Attribution License.

This should not be taken as legal advice specific to any individual network operator. If you want such advice, please consult a copyright attorney.

Continue reading "Patent Law: EFF Busts Podcasting Patent, Invalidating Key Claims at Patent Office" »

April 13, 2015

Indiana Copyright Litigation: Court Grants Plaintiff's Motion to Dismiss Copyright Lawsuit

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Indianapolis, Indiana - Indiana copyright attorneys for Redwall Live Corporation ("Redwall") of Indianapolis, Indiana asked the Southern District of Indiana to dismiss Redwall's own copyright litigation. Redwall's complaint alleged that ESG Security, Inc. ("ESG"), also of Indianapolis, Indiana, infringed the logo that Redwall had designed for ESG. That logo has been registered by the U.S. Copyright Office. The court dismissed the complaint in its entirety. Redwall will be permitted to refile the non-copyright counts in Indiana state court but the copyright count was dismissed with prejudice.

Redwall is a consulting and design-services firm engaged in the business of strategic branding and advertising. Its services include developing a clear message and a unique visual image as well as developing brand value for its clients.

In its 2013 complaint against ESG, Redwall stated that it had been hired by ESG to reinvent ESG's brand. As part of this project, it created a new logo design for ESG, which was copyrighted under Registration No. VA 1-874-872. Redwall asserted that ESG had failed to pay Redwall in full for the work done and that ESG nonetheless had continued to use Redwall's copyrighted logo on a variety of items. Indiana copyright lawyers for Redwall sued for copyright infringement under federal law, as well as breach of contract and unjust enrichment under Indiana state law.

Redwall later decided that pursuing the copyright portion of the claim was not worth the expense. As the Judge Sarah Evans Barker put it, they concluded that "the game is not worth the candle." Copyright attorneys for Redwall asked the court to dismiss the copyright complaint without prejudice. Attorneys for ESG asked the court instead to dismiss Redwall's copyright claim with prejudice.

In evaluating Redwall's motion to dismiss, the court cited its discretion to attach conditions to the dismissal of a lawsuit - "the quid for the quo of allowing the plaintiff to dismiss his suit without being prevented by the doctrine of res judicata from bringing the same suit again." The court noted that Redwall seemed to have added a less-than-robust copyright claim as leverage to obtain its true goal of payment under its contract with ESG. Judge Barker concluded that to allow Redwall to withdraw that copyright claim without any res judicata consequences would reward that gamesmanship. The court determined that, as a proper exercise of its discretion, it would dismiss Redwall's copyright claim with prejudice but permit Redwall's remaining state-law claims to be refiled in state court.

Practice Tip: Filing a copyright lawsuit can be perilous, as the plaintiff may later be unable to dismiss that litigation without incurring liability for the defendant's attorney fees. As the Seventh Circuit held in Riviera Distribs., Inc. v. Jones, a voluntary dismissal of a copyright claim by the plaintiff - if that claim is dismissed with prejudice - is sufficient to trigger the duty of the plaintiff to pay the attorney's fees incurred defending against the allegations of copyright infringement: "[Defendant] Midwest obtained a favorable judgment. That this came about when [Plaintiff] Riviera threw in the towel does not make Midwest less the victor than it would have been had the judge granted summary judgment or a jury returned a verdict in its favor. Riviera sued; Midwest won; no more is required." Similarly here, ESG qualifies as a "prevailing party" under the Copyright Act and is thus presumptively entitled to attorneys' fees for the litigation of that claim under 17 U.S.C. § 505.

Continue reading "Indiana Copyright Litigation: Court Grants Plaintiff's Motion to Dismiss Copyright Lawsuit" »

April 10, 2015

Indiana Trade Secret Litigation: College Retailers Sue for Full Access to Purdue-Amazon Agreement

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Tippecanoe County, Indiana -An Indiana trade secret attorney for the National Association of College Stores Inc. ("NACS"), an Ohio-based organization, sued Purdue University of West Lafayette, Indiana in Tippecanoe Superior Court seeking full disclosure of an agreement between Purdue and Amazon.com Inc.

Earlier this year, Amazon opened its first brick-and-mortar store on the campus of Purdue University. This store, which allows merchandise to be both picked up and dropped off, was promoted as a way to save Purdue students money. Initial estimates suggest that the Purdue-Amazon partnership has resulted in savings of more than 40% for students.

In response to this addition to Purdue's campus, NACS requested a copy of the agreement between Amazon and Purdue under Indiana's Access to Public Records Act ("APRA"), codified as Ind. Code § 5-14-3-1 et. seq. Purdue released only a redacted copy, stating that Amazon considered the omitted material to be protectable as trade secrets, which are defined under APRA as:

information, including a formula, pattern, compilation, program, device, method, technique, or process, that:

(1) derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use; and

(2) is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.

In an advisory opinion later released by the State of Indiana, Public Access Counselor Luke Britt elaborated that APRA not only permits the withholding of this trade-secret information, but requires it to prevent competitive injury to Amazon. Moreover, he stated, APRA allows a public agency to withhold the entirety of a document that contains trade secrets, although Purdue acted reasonably by merely redacting the protectable information. In the advisory opinion, Britt indicated that the information deemed to be a trade secret would not be disclosed pursuant to a public records request unless compelled to do so by a court of law.

This Indiana trade secret litigation has been assigned to Judge Steven Meyer.

April 9, 2015

Indiana Trademark Lawsuit: Bekins Sues Licensee of "Bekins" Trademark

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Indianapolis, Indiana - An Indiana trademark lawyer for Wheaton Van Lines, Inc. and Bekins Van Lines, Inc., both of Indianapolis, Indiana (collectively, "Bekins"), filed a trademark-infringement lawsuit in the Southern District of Indiana alleging that Faulk-Collier Moving & Storage, LLC and David Vaughn, both of Louisiana, infringed the trademark BEKINS®, which has been registered by the U.S. Trademark Office as Trademark Registration No. 2427605.

Faulk-Collier, a moving-and-storage company in business since 1932, has been sued by Bekins for both trademark infringement and breach of contract. Bekins, which was founded in 1891, contends that it has made extensive use of the Bekins trademark, which it asserts has become both incontestable and famous. Bekins' uses, it states, include inclusion in all of Bekins' advertising materials, as well as being emblazoned on the side of all of the trucks, vans and trailers operating under Bekins' authority for over ten years. Bekins has also sued Vaughn for more than $73,000, alleging that he personally guaranteed payment to Bekins.

In its Indiana trademark complaint, Bekins states that, in February 2014, it entered into an agreement with Faulk-Collier under which Faulk-Collier would serve as an interstate household agent for Bekins. Bekins further claims that, due to uncured breaches of that agreement by Faulk-Collier, Bekins terminated the arrangement in October 2014. After terminating the agreement, Bekins advised Defendants that they must cease all use of logos and trademarks owned by Bekins, including the removal of the Bekins trademark from all advertising, trucks, equipment, websites, and similar.

Nonetheless, contends Bekins, Faulk-Collier has continued to advertise moving services under the name "Bekins." The accused uses include advertising on social media as well as operating numerous pieces of equipment in interstate commerce which bear one or more trademarks owned by Bekins. Bekins states that these uses by Faulk-Collier are unauthorized.

This federal lawsuit followed. In its complaint, filed by an Indiana trademark attorney, Bekins asserts the following:

• Count I - Breach of Contract
• Count II - Account Stated
• Count III - Federal Trademark Infringement

• Count IV - Federal and State Unfair Competition/Trademark Dilution

Bekins asks the court to enter preliminary and permanent injunctions; award Bekins monetary damages, statutory and otherwise, and punitive damages; and order Defendants to pay Bekins' attorneys' fees and costs.

Continue reading "Indiana Trademark Lawsuit: Bekins Sues Licensee of "Bekins" Trademark" »

April 8, 2015

USPTO Appoints New Deputy Commissioner for Trademark Operations

Washington, D.C. - The U.S. Department of Commerce's United States Patent and Trademark Office ("USPTO") announced last week the appointment of Meryl Hershkowitz as Deputy Commissioner for Trademark Operations. In her new position, Hershkowitz will oversee the examination and processing of applications throughout trademark operations.

"Meryl Hershkowitz is a talented, committed professional who is going to excel in her position as Deputy Commissioner for Trademark Operations," said Under Secretary of Commerce for Intellectual Property and Director of the USPTO Michelle K. Lee. "Her extensive background at the USPTO gives her a unique expertise from which I believe her whole team will benefit."

"Meryl has done a stellar job here at the USPTO in a variety of roles over the years," said Commissioner of Trademarks Mary Boney Denison. "She has an impressive track record of success in Trademark Operations. She has much to offer the agency and its customers in her new role."

Hershkowitz has been one of two group directors for trademark operations of the USPTO for the last seven years. As group director, she led a staff of 10 law offices comprised of more than 200 trademark examining attorneys.

She has been actively involved in the management and coordination of the award-winning Trademark Work at Home Program and was the first Trademark managing attorney to lead a law office of all work at home examining attorneys, piloting the concept of hoteling at the USPTO. She first joined the USPTO as a trademark examining attorney in 1990, became a senior trademark attorney in 1996, a managing attorney in 1998, and joined the Senior Executive Service as a Group Director in 2006.

April 6, 2015

157 Trademark Registrations Issued to Indiana Companies in March 2015

The U.S. Trademark Office issued the following 157 trademark registrations to persons and businesses in Indiana in March 2015 based on applications filed by Indiana trademark attorneys:

Registration No.  Word Mark Click To View
4708210 BRING ON THE LIGHT Live
4708079 INDIANA GRAND RACING · CASINO Live
4708012 KST Live
4707919 THUMBSUCKERZ Live
4707916 INTELLIVIEW Live
4707767 ELEMENT THREE Live
4707669 BLOM Live

Continue reading "157 Trademark Registrations Issued to Indiana Companies in March 2015" »

April 3, 2015

Copyright Law: Report on Technological Upgrades to Registration and Recordation Released

The Register of Copyrights has released a report from the Special Projects Team responsible for studying technology issues and business improvements related to the Copyright Office's services. The report was delivered to the Register by the Copyright Office Chief Information Officer Doug Ament, who chaired the multi-year analysis. The effort was one of 10 areas of focus publicly announced by the Office in Priorities and Special Projects of the United States Copyright Office: 2011-2013.

The Office's technology infrastructure impacts all of the Office's key services and is the single greatest factor in its ability to administer copyright registration, recordation services, and statutory licenses effectively. The report thus provides a number of recommendations that, if adopted, could significantly improve the Office's operations and interactions with the public.


April 2, 2015

Patent Office Issues 181 Patents To Indiana Citizens in March 2015

The U.S. Patent Office issued the following 181 patent registrations to persons and businesses in Indiana in March 2015, based on applications filed by Indiana patent attorneys:

PAT. NO. Title
D725,756 Shower wall 
D725,754 Tub 
D725,741 Handheld shower 
D725,581 Vehicle console portion 
D725,411 Furniture piece 
D725,409 Bedrail apron 
8996878 Controlling an analysis system of biological samples 
8996258 Vehicle safety system having methods and apparatus configurable for various vehicle geometries 
8994932 Multimodal platform for nonlinear optical microscopy and microspectroscopy 
8994396 Variation-tolerant self-repairing displays 

Continue reading "Patent Office Issues 181 Patents To Indiana Citizens in March 2015" »

March 30, 2015

U.S. Commerce Secretary Penny Pritzker Announces Russell Slifer as Deputy Director of the U.S. Patent and Trademark Office

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On Wednesday, U.S. Secretary of Commerce Penny Pritzker announced the appointment of Russell Slifer as the next Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the U.S. Patent and Trademark Office ("USPTO"). Slifer left his role as the Director of the USPTO's Rocky Mountain Regional Office in Denver. He began his new duties at USPTO headquarters in Alexandria, VA, on the day of the announcement.

While Director of the USPTO's Denver office, which opened on June 30, 2014, Slifer served as the agency's primary liaison with the innovation community in the Rocky Mountain Region. He was actively engaged in education and outreach initiatives, empowering the USPTO to develop programs, policies, and procedures to meet the needs of the Rocky Mountain West innovation community.

"Russell has an impressive track record of success across several disciplines and will be a tremendous asset to the USPTO," said Secretary Pritzker. "His leadership will be instrumental in the USPTO's efforts to foster economic growth and promote American innovation by reducing the patent application backlog and enhancing patent and trademark quality. I look forward to working with Russell in his new role, along with Director Lee and the rest of the USPTO team."

Slifer has practiced intellectual property law for the last 20 years. Prior to serving as Regional Director for the USPTO's Rocky Mountain Regional Office, he spent eight years as Chief Patent Counsel for Micron Technology in Boise, Idaho. He also was a design engineer for Honeywell and spent more than nine years in private practice in Minnesota helping a wide variety of clients, including individual inventors, universities, and Fortune 100 companies, build patent portfolios to protect their innovations.

"Russ has proven tremendously successful at launching the USPTO's Rocky Mountain regional operations and building a solid foundation from which that office is primed to continue serving the unique needs of the regional innovation community," said Under Secretary for Commerce for Intellectual Property and Director of the USPTO Michelle K. Lee. "And I look forward to working more directly with Russ now at headquarters to improve operations across the USPTO and make the agency more responsive to the needs of the American innovators."

"It has been my privilege to serve as the Director of the Rocky Mountain Regional Office and I look forward to bringing that area's unique perspective to the USPTO," said Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Russell Slifer.

Serving alongside Under Secretary for Intellectual Property and USPTO Director Michelle K. Lee, Slifer will take charge of an office that encourages innovation and technological advancement, and helps businesses protect their investments, promote their goods and safeguard against deception in the marketplace.

The USPTO plans to name an interim director soon, and will work swiftly to appoint a new director for the Denver office to continue the strong education and outreach initiatives and public engagement programs tailored to the Rocky Mountain West's unique ecosystem of industries and stakeholders.

March 27, 2015

Indiana Trade Secret Litigation: Precision Drone Sues Channel Masters for Misappropriating Trade Secrets

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Indianapolis, Indiana - Indiana intellectual property lawyers for Precision Drone, LLC of Hamilton County, Indiana ("Precision") commenced trade secret litigation in Hamilton County Superior Court alleging that Channel Masters, LLC of Wisconsin ("Channel") breached its contract with Precision by improperly misappropriating and revealing trade secrets belonging to Precision.

Precision designs, engineers, manufactures and sells drones for use by farmers to monitor crops. It also develops and sells related software. Defendant Channel connects companies offering products to dealers of those products.

According to the complaint, in September 2014, Precision engaged Channel to sell the PaceSetter™ Drone to dealers of such products. To assist in Channel's sales efforts, Precision provided Channel with equipment and training, some of which Precision contends is protected by Indiana trade secret law. As part of the sales agreement that the parties entered into, Precision states that Channel was prohibited from disclosing any of Precision's confidential information without written authorization. The agreement also prohibited Channel from adversely interfering with Precision's customers and prospective customers.

Plaintiff Precision alleges that, while Channel was working for Precision, it was also promoting and selling crop-imaging drones offered by AgriImage, a company that competes with Precision. Plaintiff also contends that Channel used Plaintiff's images and training manual to demonstrate the competing AgriImage drones.

Precision claims copyright protection for the website that it uses to promote and advertise its products, as well as contending that at least one of its images was improperly displayed at a trade show by Channel, but the complaint listed no overt assertion of copyright infringement. The complaint, filed by Indiana intellectual property attorneys for Precision, instead alleges the following:

• Count I: Breach of Contract

• Count II: Misappropriation of Trade Secrets

Precision seeks judgment in its favor including damages, attorneys' fees and costs.

Indiana copyright lawyers for Channel have removed the case to the Southern District of Indiana, arguing that such a removal is proper based both on federal question jurisdiction and diversity of citizenship.


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