The Five (or More) Forums for Your Trademark Dispute, and How to Choose the Right One (Hint: Don t Choose the ITC)
|
|
- James Tucker
- 5 years ago
- Views:
Transcription
1 The Five (or More) Forums for Your Trademark Dispute, and How to Choose the Right One (Hint: Don t Choose the ITC) Travis R. Wimberly Senior Associate June 27, 2018 AustinIPLA
2 Overview of Options Federal Court State Court Trademark Trial & Appeal Board (TTAB) 2
3 Overview of Options Uniform Domain Name Dispute Resolution Policy (UDRP) or Uniform Rapid Suspension (URS) International Trade Commission (ITC) Or More 3
4 Your only options for Monetary relief Declaratory relief Injunction against domestic use of a mark* Judge with full sanctioning and contempt powers Jury trial 4
5 Claims & Elements Lanham Act and every state provide claims for TM infringement Usually identical elements: Protectable mark Likelihood of consumer confusion Most Ps assert both Lanham Act and state claims, even if redundant Leverage and optics 5
6 Jurisdiction Federal registration not required to sue under the Lanham Act 15 U.S.C. 1114(1): infringement of registered mark 15 U.S.C. 1125(a): infringement of unregistered mark 15 U.S.C. 1125(c): dilution of registered or unregistered mark State registration often required for state statutory claims, but not state common law claims E.g., Tex. Bus. & Com. Code ( Infringement of Registered Mark ) 6
7 Jurisdiction Subject-matter jurisdiction in TM lawsuits Ripeness: how far along is the threat? Standing: trademark owner or (sometimes) exclusive licensee Interstate commerce hook for federal court (very low bar) Personal jurisdiction and venue No TM-specific statutes Minimum contacts, long-arm statutes, and 28 U.S.C
8 Jurisdiction Fed & state courts have concurrent jurisdiction over Lanham Act claims Lanham Act claims OK in state court (but subject to removal) Contra Patent Act, Copyright Act Why concurrent? Historical development of TM law Strong SCOTUS presumption 28 U.S.C. 1338(a): No State court shall have jurisdiction over any claim for relief arising under any Act of Congress relating to patents, plant variety protection, or copyrights. 8
9 Jurisdiction In many TM cases, P can strategically plead to get its choice of forum Federal: Find IC hook and plead 1125(a) or 1125(c) State: Join in-state D; allege state TM claims only; say nothing about the Lanham Act ( master of the complaint rule) Certain cases where P has no choice Why is state court an afterthought in most TM cases? 9
10 Benefits (vs. TTAB, UDRP/URS, and ITC) Monetary, declaratory, and injunctive relief available One stop shop Vs. TTAB: Courts have similar authority over federal TM regs, see 15 U.S.C Vs. UDRP/URS: Courts have in rem jurisdiction over domain names with U.S. connection, see 15 U.S.C. 1125(d) (ACPA) Vs. ITC: Same authority (and then some) over domestic use and importation 10
11 Benefits (vs. TTAB, UDRP/URS, and ITC) Full sanctioning and contempt power Less potential for delay, gamesmanship, etc. Recovery of costs and attorney fees under 15 U.S.C. 1117(a) or state law Geographical forum shopping for better precedent Circuit splits on some major TM issues 11
12 Drawbacks (vs. TTAB, UDRP/URS, and ITC) Costs Obligations and stress for client Length of proceeding (vs. UDRP and ITC, at least) Must meet Article III (or analogous state law) reqs Must establish personal jurisdiction, service, and venue 12
13 Drawbacks (vs. TTAB, UDRP/URS, and ITC) More vulnerable to counterclaims Vulnerable to fee motion under 1117(a) (or possibly state law) if you lose Optics and PR considerations 13
14 A question rarely asked. 14
15 Benefits (vs. state court) Counsel s experience and comfort Judges more experienced in TM law Relatively standardized pro hac admission Fewer major logistical eccentricities (e.g., Travis County rotating docket) 15
16 Benefits (vs. state court) More robust TM case law Better procedural rules (though somewhat subjective) Better e-docketing and e-filing, especially vs. small states Greater likelihood of a written opinion on the merits 16
17 Benefits (vs. federal court) No need for IC or diversity Faster path to a TRO (even in removable cases) Fast track discovery in many states (incl. TX) No Rule 12b6 equivalent in some states Texas pre-2013 Texas post-2013 Tex. R. Civ. P. 91a (still not a 12b6; mandatory fee award to winning party) 17
18 Benefits (vs. federal court) Jury pool Not all states allow fee awards Texas does for state-registered marks only, see Tex. Bus. & Com. Code (d)(2) & (c)(2) State courts can cancel federal TM registrations, see 15 U.S.C ( the court... ) Other situational benefits? 18
19 Federal court is preferable to state court in most trademark cases but at least ask yourself the question and talk to your client about it. 19
20 Basics Hears disputes over right to register (shared jurisdiction w/ courts) Cannot hear disputes over right to use 20
21 Basics Three types of inter partes cases: 1) Opposition 2) Cancelation 3) Concurrent use 21
22 Your only option for Standalone claims for opposition or cancelation Opposition in dispute that involves no issued registration 22
23 15 U.S.C 1119 Power of court over registration In any action involving a registered mark the court may determine the right to registration, order the cancelation of registrations, in whole or in part, restore canceled registrations, and otherwise rectify the register with respect to the registrations of any party to the action. Decrees and orders shall be certified by the court to the Director, who shall make appropriate entry upon the records of the Patent and Trademark Office, and shall be controlled thereby. 23
24 Your only option for Standalone claims for opposition or cancelation Opposition in a Declaratory judgment loophole? dispute that doesn t involve any alreadyissued registration 24
25 Benefits (vs. court) TM specialist judges and interlocutory attorneys Wealth of binding precedent on nearly every TM issue Often cheaper than court (though not always) Lower jurisdictional hurdles Standing = any person who believes that he will be damaged, 15 U.S.C No Article III, personal jurisdiction, or venue concerns 25
26 Benefits (vs. court) Stronger case law on discovery proportionality Two options for appeal Federal Circuit, 15 U.S.C. 1071(a) District Court, 15 U.S.C. 1071(b) Potential for three bites at the apple instead of two Rules and deadlines often more lax than in court 26
27 Drawbacks (vs. court).rules and deadlines often more lax than in court. Limited relief (right to register only) Limited sanctioning power; no contempt power Sometimes inattentive or disinterested opposing counsel & parties 27
28 Drawbacks (vs. court) No live testimony, no jury Often no faster than court Harder to get live deposition of foreign party Written Qs by default, unless Board order for good cause Difficult to keep TTAB proceeding active if related suit gets filed in court TTAB usually orders a stay; courts usually don t 28
29 Basics Administrative complaint filed against domain-name cybersquatter Multiple providers available (e.g., WIPO and FORUM) 29
30 Elements & Burdens UDRP (preponderance of the evidence) 1) Domain name is identical or confusingly similar to a mark in which the complainant has rights 2) Registrant does not have any rights or legitimate interest in the domain name 3) Domain name was registered and is being used in bad faith URS (clear and convincing evidence) All of the above, plus one of the following: (a) mark is registered (b) mark has been validated through a court proceeding (c) a statute or treaty, in effect when the complaint was filed, specifically protects the mark 30
31 VS. Hundreds of gtlds (.com,.org,.net, etc.) and over 75 cctlds (.us,.eu,.mx, etc.) Newer gtlds only (.xyz,. ,.xxx, etc.), and a few cctlds Available relief: cancelation or transfer of domain name Available relief: suspension of domain name for remainder of current registration period, plus one extra year Complaint length limit: 5,000 words optional (WIPO), 15 pages (FORUM) Complaint length limit: 500 words Deficiencies in complaint can sometimes be corrected No opportunity to correct deficient complaint Filing fee: $1,300 and up (FORUM); $1,500 and up (WIPO) Filing fee: $375 for up to 14 domain names Avg. decision: 2 months Avg. decision: 17 days 31
32 Benefits (vs. court) Shorter, streamlined proceeding Conducted by No discovery, testimony, hearings, or motions Lower cost No jurisdictional, service, or venue hurdles 32
33 Benefits (vs. court) Available in cases where registrant, registrar, and gtld/cctld are all based outside U.S. No limitations or laches defenses Domain name automatically locked until proceeding over Contra status quo TRO/PI in court 33
34 Drawbacks (vs. court) Very limited relief transfer, cancelation, or suspension only Possibility of repeat infringement Strict elements with no wiggle room Forces some slam-dunk cybersquatting cases to court No authority to determine complex disputes or issues (e.g., priority, geographical rights, fair use) 34
35 Drawbacks (vs. court) Fewer mechanisms for consistent, predictable results No stare decisis No appeal to unifying body Complications w/ EU s GDPR and blacked-out WHOIS data Possibility of attacking an authorized domain name No reverse WHOIS to consolidate complaint 35
36 Basics 19 U.S.C Unfair practices in import trade Agency investigation that looks a lot like litigation Importation into U.S. required Domestic industry required 36
37 Basics Complainant can assert registered or unregistered marks ITC applies usual TM concepts (e.g., priority, likelihood of confusion, secondary meaning, functionality, etc.) 37
38 Basics Relief available: (1) General exclusion order (2) Limited exclusion order (3) Cease-and-desist order 38
39 Benefits (vs. court) Generally fast resolution Earliest practicable time, 19 U.S.C. 1337(b)(1) Avg. decision time: 16 months No jurisdiction, service, or venue hurdles In rem jurisdiction; commission handles service of complaint One proceeding against multiple importers, regardless of location 39
40 Drawbacks (vs. court) Prospective relief only no money damages (Very) aggressive discovery schedule and briefing deadlines Vulnerable to counterclaims Immediate removal to federal court Original claims remain in ITC possibility of parallel proceedings 40
41 Now Playing 41
42 Lou Pirkey s Twelve Reasons to Avoid the ITC 42
43 1. No home court advantage (unless you re in DC) 2. No jury 3. ITC and respondent can both argue points against you 4. Must prove importation and domestic industry 5. If you lose, subject to claim and issue preclusion 6. No money damages 43
44 7. All of the above can make settlement more difficult 8. Settlement must be approved by ITC and is presumptively public record 9. Despite aggressive discovery schedule, final decision can still take months 10. ITC may have to go to a judge to actually enforce its own orders (see C.F.R.) 11. Penalty for non-compliance is a civil fine paid to the government, not the complainant 12. No vacations 44
45 Lou s final word: You re usually better off in district court. 45
46 State agencies (cancelation of state regs) Foreign courts* and agencies Criminal counterfeiting action under 18 U.S.C Binding arbitration Any others? 46
DOMESTIC OPTIONS FOR PROTECTING YOUR TRADEMARKS IN A GLOBAL ECONOMY
Protecting Your Trademarks In a Global Economy October, 2008 DOMESTIC OPTIONS FOR PROTECTING YOUR TRADEMARKS IN A GLOBAL ECONOMY TRADEMARK LITIGATION VERSES CLAIMS UNDER SECTION 337 OF THE ITC by J. Daniel
More informationTHE LAW OF DOMAIN NAMES & TRADE-MARKS ON THE INTERNET Sheldon Burshtein
THE LAW OF DOMAIN NAMES & TRADE-MARKS ON THE INTERNET Sheldon Burshtein TABLE OF CONTENTS CHAPTER 1: SECTION 1.1 1.1(a) 1.1(b) 1.1(c) SECTION 1.2 SECTION 1.3 CHAPTER 2: SECTION 2.1 2.1(a) 2.1(b) 2.1(c)
More informationWorkshop on the Current State of the UDRP
Workshop on the Current State of the UDRP Overview & Analysis of the Preliminary Issue Report 22 June 2011 Moderators: Mary Wong Jonathan Cohen 2 Background & Current Approach Issue Report Requested by
More informationDominion Registries - Sunrise Dispute Resolution Policy
Dominion Registries - Sunrise Dispute Resolution Policy This Sunrise Dispute Resolution Policy (the SDRP ) is incorporated by reference into the Dominion Registries Registration Policy. This SDRP is effective
More informationThe Uniform Rapid Suspension Policy and Rules Summary
The Uniform Rapid Suspension Policy and Rules Summary The Uniform Rapid Suspension System ( URS ) is one of several new Rights Protection Mechanisms ( RPMs ) being implemented alongside the new gtld Program.
More informationTRADEMARK POST-DELEGATION DISPUTE RESOLUTION PROCEDURE (TRADEMARK PDDRP) 4 JUNE 2012
TRADEMARK POST-DELEGATION DISPUTE RESOLUTION PROCEDURE (TRADEMARK PDDRP) 4 JUNE 2012 1. Parties to the Dispute The parties to the dispute will be the trademark holder and the gtld registry operator. ICANN
More informationTHE ITC S GROWING ROLE IN PATENT ADJUDICATION. The View from the Bar
THE ITC S GROWING ROLE IN PATENT ADJUDICATION The View from the Bar Section 337 Has Become A More Important Patent Enforcement Tool Section 337 investigations Continue To Grow In Number And Complexity
More informationUNIFORM RAPID SUSPENSION SYSTEM ( URS ) 11 JANUARY 2012
UNIFORM RAPID SUSPENSION SYSTEM ( URS ) 11 JANUARY 2012 DRAFT PROCEDURE 1. Complaint 1.1 Filing the Complaint a) Proceedings are initiated by electronically filing with a URS Provider a Complaint outlining
More informationDetailed Table of Contents
Detailed Table of Contents Board of Editors... v v Foreword... vii vii Preface... ix ix Author Biographies... xi xi Summary Table of Contents... xix xix Chapter 1: PART I: INTRODUCTION The Origins of Trademark
More informationREGISTRATION ELIGIBILITY DISPUTE RESOLUTION POLICY
REGISTRATION ELIGIBILITY DISPUTE RESOLUTION POLICY 1.0 Title: Registration Eligibility Dispute Resolution Policy Version Control: 1.0 Date of Implementation: 2016-01-20 2.0 Summary This Registration Eligibility
More informationSunrise Dispute Resolution Policy VERSION 1.0
Sunrise Dispute Resolution Policy VERSION 1.0 This Sunrise Dispute Resolution Policy (the SDRP ) is incorporated by reference into the Registration Agreement. This SDRP is effective as of 12 th August
More informationSunrise Dispute Resolution Policy
Sunrise Dispute Resolution Policy This Sunrise Dispute Resolution Policy (the SDRP ) is incorporated by reference into the Registration Agreement for the Amazon Registry Services, Inc. top-level domain.bot
More informationFor GNSO Consideration: Uniform Rapid Suspension System (URS) October 2009
For GNSO Consideration: Uniform Rapid Suspension System (URS) October 2009 Contents Introduction....... 1 Part I Draft Uniform Rapid Suspension System ( URS ) Procedure.....4 Part II Draft Applicant Guidebook
More information[.onl] Sunrise Dispute Resolution Policy
[.onl] Sunrise Dispute Resolution Policy This Sunrise Dispute Resolution Policy (the SDRP ) is incorporated by reference into the Registration Agreement. This SDRP is effective as of January 2, 2014. An
More informationIssues in Trademark Case Management
Issues in Trademark Case Management Kate Fritz David Bernstein Peter Harvey Annette Hurst What makes trademark cases different? Emotional subject matter issues of identity Sense of urgency market realities
More informationCase 4:15-cv Y Document 1 Filed 03/15/15 Page 1 of 8 PageID 1 UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF TEXAS FORT WORTH DIVISION
Case 4:15-cv-00191-Y Document 1 Filed 03/15/15 Page 1 of 8 PageID 1 UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF TEXAS FORT WORTH DIVISION LONE STAR WEAPONS ACADEMY L.L.C., dba SHEEP DOG MARKET Plaintiff,
More informationSunrise Dispute Resolution Policy
This Sunrise Dispute Resolution Policy (the SDRP ) is incorporated by reference into the Domain Name Registration Agreement. This SDRP is effective as of 11 March 2014. An SDRP Complaint may be filed against
More information.XN--MGBCA7DZDO SUNRISE DISPUTE RESOLUTION POLICY
.XN--MGBCA7DZDO SUNRISE DISPUTE RESOLUTION POLICY This Sunrise Dispute Resolution Policy (the SDRP ) is incorporated by reference into the Registration Agreement. This SDRP is effective as of 29 July 2014.
More informationthe domain name is not identical to the mark on which the registrant based its Sunrise registration; (2)
SDRP Sunrise Dispute Resolution Policy This policy is to be read together with the General Terms & Conditions and words and phrases used in this policy have the same meaning attributed to them in the General
More information26 th Annual Intellectual Property Law Conference
American Bar Association Intellectual Property Law Section 26 th Annual Intellectual Property Law Conference The New gtlds: Dispute Resolution Procedures During Evaluation, Trademark Post Delegation Dispute
More informationTRADEMARK CLEARINGHOUSE
The following chart sets out the differences between the recommendations in the IRT Final Report (http://www.icann.org/en/topics/newgtlds/irt final report trademark protection 29may09 en.pdf) and the versions
More informationIN THE UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF TEXAS DALLAS DIVISION
Microsoft Corporation v. Dauben Inc Doc. 12 IN THE UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF TEXAS DALLAS DIVISION MICROSOFT CORPORATION, v. Plaintiff, DAUBEN, INC. d/b/a TEXAS INTERNATIONAL PROPERTY
More informationUsing the ITC as a Trademark Enforcement Tool
April 12, 2016 Webinar Using the ITC as a Trademark Enforcement Tool Sheryl Koval Garko Principal, Boston Monty Fusco Of Counsel, Washington, DC Overview CLE Contact: MCLETeam@fr.com Materials available
More informationResponding to a Cease and Desist Letter for Trademark Infringement, Unfair Competition, or Claim of Dilution
Responding to a Cease and Desist Letter for Trademark Infringement, Unfair Competition, or Claim of Dilution Janice Housey Symbus Law Group, LLC, Washington, D.C., United States Summary and Outline A substantive
More informationUNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF WASHINGTON AT TACOMA
Case :-cv-0-rbl Document Filed // Page of 0 0 COMPLAINT [Case No. :-cv-0] UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF WASHINGTON AT TACOMA STANLEY PACE, an individual, v. Plaintiff, JORAN
More informationIN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF OREGON. Plaintiff, OPINION AND ORDER
Calista Enterprises Ltd. et al v. Tenza Trading Ltd Doc. 37 IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF OREGON CALISTA ENTERPRISES LTD., Case No. 3:13-cv-01045-SI v. Plaintiff, OPINION AND
More informationUPC FUTURE OF PATENT LITIGATION IN EUROPE. Alexander Haertel
UPC FUTURE OF PATENT LITIGATION IN EUROPE Alexander Haertel MAIN TOPICS What will happen? - The Unified Patent Court (UPC) will change the landscape of patent litigation in Europe - It is a front-loaded
More information.HEALTH STARTUP PLAN Version 1.0
.HEALTH STARTUP PLAN Version 1.0 I. OVERVIEW: Pursuant to the Trademark Clearinghouse Rights Protection Mechanism Requirements found at https://www.icann.org/resources/pages/tmch-requirements-2014-01-09-en
More informationDamages and Remedies in Civil IP Cases An U.S. Perspective
Damages and Remedies in Civil IP Cases An U.S. Perspective Elaine B. Gin Attorney - Advisor Office of Intellectual Property Policy and Enforcement US Patent & Trademark Office Every right has a remedy
More informationTrademark Litigation A Global Guide. Greece. Ballas, Pelecanos & Associates LPC George Ballas, Nicholas Gregoriades and Maria Spanos
Trademark Litigation 2017 A Global Guide Greece Ballas, Pelecanos & Associates LPC George Ballas, Nicholas Gregoriades and Maria Spanos Ballas, Pelecanos & Associates L.P.C. is a long-established Athens
More informationWORKSHOP 1: IP INFRINGEMENT AND INTERNATIONAL FORUM SHOPPING
43 rd World Intellectual Property Congress Seoul, Korea WORKSHOP 1: IP INFRINGEMENT AND INTERNATIONAL FORUM SHOPPING October 21, 2012 John Kim* Admitted to practice in Maryland, the District of Columbia,
More informationNovember 30, Re: Verizon Comments on Hague Convention on Jurisdiction
Legal Department Sarah B. Deutsch Vice President and Associate General Counsel 1320 North Court House Road Arlington, VA 22201 Phone: 703-974-9450 Fax: 703-974-0783 Sarah.B.Deutsch@verizon.com November
More information2012 Winston & Strawn LLP
2012 Winston & Strawn LLP How the America Invents Act s Post-Issuance Proceedings Influence Litigation Strategy Brought to you by Winston & Strawn s Intellectual Property practice group 2012 Winston &
More informationITC Remedial Orders in the. Real World. more effective way to enforce those rights than by turning to the United States International
By John C. Evans, Ph.D., and Ric Macchiaroli ITC Remedial Orders in the Real World In 2007 alone, the total value of goods imported into the United States was nearly $2 trillion. Where imported goods infringe
More informationJohn Fargo, Director Intellectual Property Staff, Civil Division Department of Justice.
DOJ Role in Affirmative Suits John Fargo, Director Intellectual Property Staff, Civil Division Department of Justice May 6, 2009 john.fargo@usdoj.gov DOJ Role in Affirmative Suits Tech transfer involves
More informationTRADEMARK OPPOSITIONS IN THE UNITED STATES OF AMERICA
TRADEMARK OPPOSITIONS IN THE UNITED STATES OF AMERICA Curtis Krechevsky, Esq., Partner and Chair of Trademark & Copyright Department, Cantor Colburn LLP, US 1 I. Introduction to U.S. Trademark Oppositions
More informationREGISTRY RESTRICTIONS DISPUTE RESOLUTION PROCEDURE (RRDRP) 1 REVISED - NOVEMBER 2010
REGISTRY RESTRICTIONS DISPUTE RESOLUTION PROCEDURE (RRDRP) 1 REVISED - NOVEMBER 2010 1. Parties to the Dispute The parties to the dispute will be the harmed organization or individual and the gtld registry
More informationCase 3:06-cv JSW Document 174 Filed 10/31/2007 Page 1 of 6
Case :0-cv-00-JSW Document Filed 0//0 Page of VICTORIA K. HALL (SBN 00 LAW OFFICE OF VICTORIA K. HALL Bethesda Metro Suite 00 Bethesda MD Victoria@vkhall-law.com Telephone: 0-0- Facsimile: 0-- Attorney
More informationApril 30, Dear Acting Under Secretary Rea:
The Honorable Teresa S. Rea Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the United States Patent and Trademark Office Mail Stop OPEA P.O. Box 1450 Alexandria, VA
More informationIN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF TEXAS DALLAS DIVISION : : : : : : : : : :
IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF TEXAS DALLAS DIVISION WHEEL PROS, LLC, v. Plaintiff, WHEELS OUTLET, INC., ABDUL NAIM, AND DOES 1-25, Defendants. Case No. Electronically
More informationContributing firm Granrut Avocats
France Contributing firm Granrut Avocats Authors Richard Milchior and Séverine Charbonnel 1. Legal framework National French trademark law is governed by statute, as France is a civil law country. The
More informationIN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF ARIZONA
Case 2:12-cv-01156-GMS Document 1 Filed 05/30/12 Page 1 of 14 Loren I. Thorson (AZ 018933) STEGALL, KATZ & WHITAKER, P.C. 531 East Thomas Road, Suite 102 Phoenix, Arizona 85012 602.241.9221 voice 602.285.1486
More information... Revision,
Revision Table of Contents Table of Contents K Table of Contents Abbreviations... XXIII Introduction... XXVII Part 1: Protection of Intellectual Property Rights Chapter 1: Patents and Utility Models...
More informationIn the United States District Court for the District of Arizona. No. Complaint NATURE OF THE ACTION
Case :-cv-000-mhb Document Filed 0// Page of SHORALL McGOLDRICK BRINKMANN east missouri avenue phoenix, az 0-0.0.00 0.0. (fax) michaelmorgan@smbattorneys.com Michael D. Morgan, #0 Attorneys for Kyle Burns
More informationEFFECTIVELY RECOVERING ATTORNEY S FEES
EFFECTIVELY RECOVERING ATTORNEY S FEES So what I m going to do today is go through some of the procedural pitfalls in recovering fees and give you some practice tips that you can use whether you are seeking
More informationCase: 1:13-cv Document #: 1 Filed: 07/09/13 Page 1 of 7 PageID #:1 UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF ILLINOIS
Case: 1:13-cv-04902 Document #: 1 Filed: 07/09/13 Page 1 of 7 PageID #:1 UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF ILLINOIS True Value Company, vs. Plaintiff, COMPLAINT JURY TRIAL DEMANDED Andrew
More informationImproving the Accuracy of the Trademark Register: Request for Comments on Possible
This document is scheduled to be published in the Federal Register on 05/16/2017 and available online at https://federalregister.gov/d/2017-09856, and on FDsys.gov DEPARTMENT OF COMMERCE United States
More informationREGISTRY RESTRICTIONS DISPUTE RESOLUTION PROCEDURE (RRDRP) 1 19 SEPTEMBER 2011
REGISTRY RESTRICTIONS DISPUTE RESOLUTION PROCEDURE (RRDRP) 1 19 SEPTEMBER 2011 1. Parties to the Dispute The parties to the dispute will be the harmed established institution and the gtld registry operator.
More informationUNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA SOUTHERN DIVISION ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) )
Case :-cv-00-cjc-kes Document Filed 0/0/ Page of Page ID #:0 0 UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA SOUTHERN DIVISION 0 VIRTUALPOINT, INC., v. Plaintiff, POARCH BAND OF CREEK INDIANS,
More informationCase3:12-cv VC Document28 Filed07/01/14 Page1 of 11
Case:-cv-0-VC Document Filed0/0/ Page of 0 JAMES C. OTTESON, State Bar No. jim@agilityiplaw.com THOMAS T. CARMACK, State Bar No. tom@agilityiplaw.com AGILITY IP LAW, LLP Commonwealth Drive Menlo Park,
More informationPOST GRANT REVIEW PROCEEDINGS IN THE PTO STEPHEN G. KUNIN PARTNER
POST GRANT REVIEW PROCEEDINGS IN THE PTO STEPHEN G. KUNIN PARTNER PATENT TRIAL AND APPEAL BOARD (PTAB) COMPOSITION DIRECTOR DEPUTY DIRECTOR COMMISSIONER FOR PATENTS COMMISSIONER FOR TRADEMARKS APJ 2 PATENT
More informationUNDERSTANDING TRADEMARK LAW Third Edition
UNDERSTANDING TRADEMARK LAW Third Edition (2016 Pub.3162) UNDERSTANDING TRADEMARK LAW Third Edition Mary LaFrance IGT Professor of Intellectual Property Law William S. Boyd School of Law University of
More informationPatent Litigation in Taiwan: overview
Patent Litigation in Taiwan: overview Resource type: Country Q&A Status: Law stated as at 01-Jan-2016 Jurisdiction: Taiwan A Q&A guide to patent litigation in Taiwan. The Q&A gives a high level overview
More informationPost-Grant Patent Practice: Review & Reexamination Course Syllabus
Post-Grant Patent Practice: Review & Reexamination Course Syllabus I. CHALLENGING PATENT VALIDITY AT THE PTO VIA POST-GRANT REVIEW, INTER PARTES REVIEW, BUSINESS METHOD PATENT REVIEW, AND REEXAMINATION
More informationNorthern Ill.'s New Local Patent Rules
Portfolio Media, Inc. 648 Broadway, Suite 200 New York, NY 10012 www.law360.com Phone: +1 212 537 6331 Fax: +1 212 537 6371 customerservice@portfoliomedia.com Northern Ill.'s New Local Patent Rules Law360,
More informationDrafting New York Civil-Litigation Documents: Part VI The Answer
Fordham University School of Law From the SelectedWorks of Hon. Gerald Lebovits March, 2011 Drafting New York Civil-Litigation Documents: Part VI The Answer Gerald Lebovits Available at: https://works.bepress.com/gerald_lebovits/194/
More information) ) ) ) ) ) ) ) ) ) ) ) ) )
Szegedy v. Montag Divulgacao Ltda Doc. 1 1 1 1 OWEN SEITEL (SBN 1 ELIZABETH J. REST (SBN IDELL & SEITEL LLP California Street, Suite 00 San Francisco, CA Telephone: (1-00 Facsimile: (1 - Email: oseitel@idellseitel.com;
More informationWIPO ASIAN REGIONAL SYMPOSIUM ON THE IMPORTANCE OF THE INTELLECTUAL PROPERTY SYSTEM FOR HIGH-TECH INDUSTRIES
ORIGINAL: English DATE: July 2002 E MINISTRY OF SCIENCE AND TECHNOLOGY STATE INTELLECTUAL PROPERTY OFFICE (SIPO) WORLD INTELLECTUAL PROPERTY ORGANIZATION JAPAN PATENT OFFICE WIPO ASIAN REGIONAL SYMPOSIUM
More information1. Cybersquatting in the cctlds: A Case study of Canada
1. Cybersquatting in the cctlds: A Case study of Canada As in the.com.au domain, the Canadian.ca domain until very recently had very restrictive rules as to who could register.ca domain names. As a result,
More information. 淡马锡 REGISTRATION POLICIES
. 淡马锡 REGISTRATION POLICIES CHAPTER 1. Definitions, scope of application and eligibility Article 1. Definitions Throughout this Policy, the following capitalized terms have the following meaning: Accredited
More informationSupported by. A global guide for practitioners
Supported by Yearbook 2009/2010 A global guide for practitioners France Contributing firm Granrut Avocats Authors Richard Milchior Partner Estelle Benattar Associate 95 France Granrut Avocats 1. Legal
More information2018 Tenth Annual AIPLA Trademark Boot Camp. AIPLA Quarles & Brady LLP USPTO
2018 Tenth Annual AIPLA Trademark Boot Camp AIPLA Quarles & Brady LLP USPTO Board Practice Tips & Pitfalls Jonathan Hudis Quarles & Brady LLP (Moderator) George C. Pologeorgis Administrative Trademark
More informationDear ICANN, Best regards, ADR.EU, Czech Arbitration Court
Dear ICANN, ADR.EU center of the Czech Arbitration Court has prepared a proposal for a new process within UDRP. Please find attached proposed amendments of our UDRP Supplemental Rules which we submit for
More informationLife in the Fast Lane: Intellectual Property Litigation at the ITC. July 11, 2017
Life in the Fast Lane: Intellectual Property Litigation at the ITC July 11, 2017 Panel Daniel L. Girdwood Director & Senior Counsel for Samsung Electronics America Inc., Washington, DC Former ITC staff
More informationADDITIONAL DEVELOPMENTS TRADEMARK
ADDITIONAL DEVELOPMENTS TRADEMARK GOOGLE INC. V. AMERICAN BLIND & WALLPAPER FACTORY, INC. 2007 WL 1159950 (N.D. Cal. April 17, 2007) BOSTON DUCK TOURS, LP V. SUPER DUCK TOURS, LLC 527 F.Supp.2d 205 (D.
More informationIPRs and CBMs : The Good, the Bad, and the Unknown. Seattle Intellectual Property Inn of Court A Presentation by Group 6 April 17, 2014
IPRs and CBMs : The Good, the Bad, and the Unknown Seattle Intellectual Property Inn of Court A Presentation by Group 6 April 17, 2014 The Governing Statutes 35 U.S.C. 311(a) In General. Subject to the
More informationIDEAS ON INTELLECTUAL PROPERTY LAW
IDEAS ON INTELLECTUAL PROPERTY LAW october/november 2011 You invent it, you own it Supreme Court addresses federally funded inventions Playing the Internet domain name game Are you hiding something? Failure
More informationUNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA ) ) ) ) ) ) ) ) ) ) ) ) )
Case :0-cv-0-CBM-PLA Document Filed // Page of Page ID #: 0 HAAS AUTOMATION INC., V. UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA PLAINTIFF, BRIAN DENNY, ET AL., DEFENDANTS. No. 0-CV- CBM(PLA
More informationOver the past two years, we have. A case study in declarations of non-infringement NON- INFRINGEMENT DECLARATIONS
NON- INFRINGEMENT A case study in declarations of non-infringement Fabio Giacopello and Eric Su of HFG recount a recent case that tested non-infringement declarations before the courts, and offer advice
More informationCase 3:14-cv AA Document 1 Filed 06/02/14 Page 1 of 14 Page ID#: 1
Case 3:14-cv-00886-AA Document 1 Filed 06/02/14 Page 1 of 14 Page ID#: 1 Kevin M. Hayes, OSB #012801 Email: kevin.hayes@klarquist.com KLARQUIST SPARKMAN, LLP 121 S.W. Salmon Street, Suite 1600 Portland,
More informationCzech Law on Unfair Competition & Trade Marks ADR proceedings Regarding Domain-squatting. by Vlastislav Kusák
Czech Law on Unfair Competition & Trade Marks ADR proceedings Regarding Domain-squatting by Vlastislav Kusák I. Czech Law on Unfair Competition II. Trade Marks and Unfair Competition III. Domain Squatting
More informationT he landscape for patent disputes is changing rapidly.
BNA s Patent, Trademark & Copyright Journal Reproduced with permission from BNA s Patent, Trademark & Copyright Journal, 84 PTCJ 828, 09/14/2012. Copyright 2012 by The Bureau of National Affairs, Inc.
More informationResolution Through the Courts TEI Audits & Appeals Seminar
Resolution Through the Courts TEI Audits & Appeals Seminar May 3, 2018 Carley Roberts Partner Tim Gustafson Counsel 2018 (US) LLP All Rights Reserved. This communication is for general informational purposes
More informationUnit 3 Dispute Resolution ARE 306. I. Litigation in an Adversary System
Unit 3 Dispute Resolution ARE 306 I. Litigation in an Adversary System In an adversarial system, two parties present conflicting positions to a judge and, often, a jury. The plaintiff (called the petitioner
More informationPresented by Karl Fink, Nikki Little, and Tim Maloney. AIPLA Corporate Practice Committee Breakfast Meeting May 18, 2016
Presented by Karl Fink, Nikki Little, and Tim Maloney AIPLA Corporate Practice Committee Breakfast Meeting May 18, 2016 2016 Fitch, Even, Tabin & Flannery LLP Overview Introduction to Proceedings Challenger
More informationOverview on Damages Available in Copyright and Trademark Disputes in the U.S. by Ralph H. Cathcart 1 COPYRIGHT DAMAGES
Overview on Damages Available in Copyright and Trademark Disputes in the U.S. by Ralph H. Cathcart 1 I. Injunction COPYRIGHT DAMAGES Remedies available for copyright infringement under 17 U.S.C. 502, et.
More informationURS DETERMINATION (URS Procedure 9, URS Rules 13)
URS DISPUTE NO. D5C230DE Determination DEFAULT I. PARTIES URS DETERMINATION (URS Procedure 9, URS Rules 13) Complainant: Sks365 Malta Ltd., MT Complainant's authorized representative(s): Fabio Maggesi,
More informationIP Enforcement: Domestic and Foreign Litigants in the ITC and U.S. District Courts
1 PATENT LITIGATION IN CHINA [Vol. 10 IP Enforcement: Domestic and Foreign Litigants in the ITC and U.S. District Courts Matthew N. Bathon 1 I. Introduction 1 II. Differences between the ITC and District
More informationLIMITED JURISDICTION
Superior Court of California, County of Contra Costa LIMITED JURISDICTION Civil Actions PACKET What you will find in this packet: Notice To Plaintiffs (CV-659a-INFO) Notice To Defendants (CV-659b-INFO)
More information106TH CONGRESS Report HOUSE OF REPRESENTATIVES INTELLECTUAL PROPERTY AND COMMUNICATIONS OMNIBUS REFORM ACT OF 1999
106TH CONGRESS Report HOUSE OF REPRESENTATIVES 1st Session 106-464 INTELLECTUAL PROPERTY AND COMMUNICATIONS OMNIBUS REFORM ACT OF 1999 TITLE III--TRADEMARK CYBERPIRACY PREVENTION SEC. 3001. SHORT TITLE;
More informationCase 5:14-cv HE Document 1 Filed 10/20/14 Page 1 of 8 IN THE UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF OKLAHOMA
Case 5:14-cv-01147-HE Document 1 Filed 10/20/14 Page 1 of 8 IN THE UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF OKLAHOMA 1 BOARD OF REGENTS FOR THE OKLAHOMA AGRICULTURAL AND MECHANICAL COLLEGES
More informationKIRKLAND & ELLIS LLP
Sponsored by Statistical data supplied by KIRKLAND & ELLIS LLP United States Intellectual property litigation and the ITC This article first appeared in IP Value 2004, Building and enforcing intellectual
More informationFinal Issue Report on IGO-INGO Access to the UDRP & URS Date: 25 May 2014
FINAL ISSUE REPORT ON AMENDING THE UNIFORM DISPUTE RESOLUTION POLICY AND THE UNIFORM RAPID SUSPENSION PROCEDURE FOR ACCESS BY PROTECTED INTERNATIONAL GOVERNMENTAL ORGANIZATIONS AND INTERNATIONAL NON- GOVERNMENTAL
More informationSeptember 7, by David E. Rogers I. Introduction.
Trademark Rights Based on Common Law or Federal September 7, 2017 David E. Rogers I. Introduction. This article analyzes trademark [1] rights depending on: (1) whether a user [2] is relying on common-law
More informationBackground on ICANN s Role Concerning the UDRP & Courts. Tim Cole Chief Registrar Liaison ICANN
Background on ICANN s Role Concerning the UDRP & Courts Tim Cole Chief Registrar Liaison ICANN Brief History of ICANN Created in 1998 as a global multi-stakeholder organization responsible for the technical
More informationCase 2:08-cv JAM-DAD Document 220 Filed 07/25/12 Page 1 of 21
Case :0-cv-0-JAM-DAD Document Filed 0// Page of MARKET STREET, TH FLOOR SAN FRANCISCO,CALIFORNIA 0-0 () -000 0 PAULA M. YOST (State Bar No. ) paula.yost@snrdenton.com IAN R. BARKER (State Bar No. 0) ian.barker@snrdenton.com
More informationCourthouse News Service
Case 1:09-cv-05139 Document 1 Filed 08/21/2009 Page 1 of 17 IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF ILLINOIS EASTERN DIVISION PLENTYOFFISH MEDIA, INC., v. Plaintiff, PLENTYMORE,
More informationThe American Court System BASIC JUDICIAL REQUIREMENTS. Jurisdiction
The American Court System BASIC JUDICIAL REQUIREMENTS Before a lawsuit can be brought before a court, certain requirements must first be met. These include: Jurisdicti on Venue Standing to Sue Jurisdiction
More information.NIKE DOMAIN NAME REGISTRATION POLICIES
.NIKE DOMAIN NAME REGISTRATION POLICIES Page 1 of 15 TABLE OF CONTENTS CHAPTER 1. Definitions, scope of application and eligibility...3 Article 1. Definitions... 3 Article 2. Scope of application... 6
More informationCase 1:16-cv FAM Document 50 Entered on FLSD Docket 01/13/2017 Page 1 of 7
Case 1:16-cv-20683-FAM Document 50 Entered on FLSD Docket 01/13/2017 Page 1 of 7 IN THE UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF FLORIDA MIAMI DIVISION HERON DEVELOPMENT CORPORATION, a
More informationThis proceeding has been fully briefed by the parties and a final disposition on
THIS ORDER IS A PRECEDENT OF THE TTAB UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22313-1451 General Contact Number: 571-272-8500 GCP Mailed:
More information1:13-cv TLL-CEB Doc # 1 Filed 07/28/13 Pg 1 of 6 Pg ID 1 UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF MICHIGAN NORTHERN DIVISION
1:13-cv-13231-TLL-CEB Doc # 1 Filed 07/28/13 Pg 1 of 6 Pg ID 1 UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF MICHIGAN NORTHERN DIVISION OUTSIDE LEGAL COUNSEL PLC, Plaintiff, v. DANIEL J. RUBIN
More informationAppendix I UDRP. Uniform Domain Name Dispute Resolution Policy. (As Approved by ICANN on October 24, 1999)
Appendix I UDRP Uniform Domain Name Dispute Resolution Policy (As Approved by ICANN on October 24, 1999) 1. Purpose. This Uniform Domain Name Dispute Resolution Policy (the "Policy") has been adopted by
More informationTrademarks and the USMCA: Action or Inaction on Trade-Related Trademark Issues?
Trademarks and the USMCA: Action or Inaction on Trade-Related Trademark Issues? October 11, 2018 By Cynthia Rowden and Scott MacKendrick After much drama and tension, negotiations to replace the North
More informationThe Uniform Domain Name Dispute
FOREWORD The Uniform Domain Name Dispute Resolution Policy (the UDRP) was devised to achieve several objectives. First and foremost, the objective was to provide a dispute resolution process as an alternative
More informationCase 2:17-cv EJF Document 2 Filed 10/02/17 Page 1 of 8 UNITED STATES DISTRICT COURT FOR THE DISTRICT OF UTAH CENTRAL DIVISION
Case 2:17-cv-01100-EJF Document 2 Filed 10/02/17 Page 1 of 8 UNITED STATES DISTRICT COURT FOR THE DISTRICT OF UTAH CENTRAL DIVISION Trent Baker Baker & Associates PLLC 358 S 700 E B154 Salt Lake City,
More information.VIG DOMAIN NAME REGISTRATION POLICIES Page 1 of 18 TABLE OF CONTENTS CHAPTER 1. Definitions, scope of application and eligibility... 3 Article 1. Definitions... 3 Article 2. Scope of application... 7
More informationIntellectual Property Rights in the Sultanate of Oman
[Type a quote from the document or the summary of an interesting point. You can position the text box anywhere in the document. Use the Text Box Tools tab to change the formatting of the pull quote text
More informationA Guide to Residential Real Property Arbitration
A Guide to Residential Real Property Arbitration For Use in the State of Minnesota This pamphlet is provided solely for the purpose of helping potential parties to arbitration better understand the process
More informationa) to take account of the policy rules that apply to.au domain names, that do not apply to gtld domain names; and
auda PUBLISHED POLICY Policy Title:.au DISPUTE RESOLUTION POLICY (audrp) Policy No: 2010-05 Publication Date: 13/08/2010 Status: Current 1. BACKGROUND 1.1 This document sets out the.au Dispute Resolution
More information