August 10, 2009

INHALE FILED PATENT AND TRADE DRESS LITIGATION AGAINST CALIFORNIA COMPANY FOR CONFUSINGLY SIMILAR PRODUCT DESIGN.

Inhale, Inc., a California corporation, has filed trade dress infringement litigation, at the United States District Court Central District of California, against Zico USA, Inc., a California corporation. Plaintiff has used its product design for over 4 years. Plaintiff was awarded with a US Patent for its product design.

The Complaint alleges that the Defendant's product design is confusingly similar to Plaintiff's patented design. In addition to permanent injunction, Plaintiff seeks monetary damages for the alleged patent infringement, trade dress infringement, dilution, and unfair competition. The case is titled, Inhale, Inc. v. Zico USA, Inc., CV09-4998 SJO FMOx (C.D. Cal. 2009).

The "ordinary observer" test is used for determining design patent infringement. This test was established by Gorman Co. v. White, 81 U.S. 511. Under this test, "If, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblence is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other."

In an action for infringement of unregistered trade dress under section 43 of the Lanham Act, a product's design is distinctive and therefore protectible only upon showing of secondary meaning. A product design may achieve secondary meaning if it is unusual and memorable when compared to other simiilar designs. In essence, the product desing should be striking or unusual in appearance and apt to be impressed upon the minds of consumers.

 

 

July 10, 2009

EXECUTIVE DEVELOPMENT ARCHITECTS FILED FOR SUMMARY JUDGMENT AGAINST A PETITION FOR PARTIAL CANCELLATION OF THE IGNITING BUSINESS TRADEMARK .

A Petition for Partial Cancellation was filed, at the United States Trademark Trial and Appeal Board, against the IGNITING BUSINESS trademark registered by Executive Development Architects LLC. Registrant reacted to the petition by filing a Motion for Summary Judgment.

Petitioner's Response to the Motion for Summary Judgment alleges that the identification of services in the trademark registration is overly broad and not reflective of marketplace reality. Petitioner also alleges that Registrant abandoned the trademark by not using it in connection witht he services identified in the registration. The case is referenced with Cancellation No. 92050685.

A trademark application and registration must specify the particular goods or services on or in connection with which the applicant uses, or has bona fide intention to use, the mark in commerce. To 'specify' means to name in an explicit manner. The identification of goods or services must be specific, definite, clear, accurate, and concise. Where the applicant has identified its goods or services very broadly but does not use the mark on a substantial number of related goods encompassed by the identification language, the Office may require further specificity.

Section 18 of the Lanham Act was recently amended to give the Trademark Trial and Appeal Board authority to limit, or otherwise modify, the goods or services identified in a registration or application. This amendment permits the Board to base determinations of likelihood of confusion on marketplace realities rather than on hypothetical facts. For example, certain product identifications, although accurate and acceptable for purposes of registration, may appear on paper to give rise to likelihood of confusion, but would not give rise to confusion in the marketplace due to distinctions between the actual products and their channels of trade.

The Trademark Act provides for the cancellation of registration if the registered mark has been abandoned. Under Section 45 of the Trademark Act, a trademark is considered abandoned when its use has been discontinued with intent not to resume such use in connection with the identified goods or services.

 

 

 

June 10, 2009

INVENTOR OVERCOMES USPTO REJECTION THAT INVENTION IS OBVIOUS AND NOT PATENTABLE.

California dentist and inventor filed a patent application with the United States Patent and Trademark Office for a dental instrument that discharges paste to polish teeth. The patent application was rejected by the Patent Office as being a design that is obvious to a person having ordinary skill in the art.

In response to the rejection, an Amendment to the application was filed that overcame the rejection and led to the issuance of US Patent No. 7,510,396.

A patent may not be obtained though the invention is not identical to a prior invention, if the differences between the invention sought to be patented and the prior invention are such that the invention as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.

 

 

 

April 10, 2009

INHALE FILED TRADEMARK LITIGATION AGAINST IRISH COMPANY FOR THE USE OF THE I-INHALE TRADEMARK.

Inhale, Inc., a California corporation, has filed trademark infringement litigation, at the United Stated District Court Central District of California, against Oglesby & Butler, an Irish company. Plaintiff has used the INHALE trademark for smokers' articles for over 10 years. Plaintiff has registered the INHALE trademark with the U.S. Patent & Trademark Office.

The Complaint alleges that the I-INHALE trademark when used in connection with smokers' articles is confusingly similar to the INHALE trademark. In addition to permanent injunction, Plaintiff seeks monetary damages for the alleged trademark infringement, unfair competition, and cyberpiracy. The case is titled Inhale, Inc. v. Oglesby & Butler et al., CV09-0307 JVS MLGx (C.D. Cal. 2009).

The I-INHALE mark is similar to the INHALE mark in sound, appearance, connotation, and overall commercial impression. Under a Trademark Act Section 2(d) analysis, the marks are compared in their entireties. Nevertheless, one feature of a mark may be recognized as more significant in creating a commercial impression. Greater weight is given to that dominant feature in determining whether there is a likelihood of confusion. Therefore, INHALE is the dominant feature of the marks which creates the commercial impression of a single source of ownership that a likelihood of confusion would result among purchasers.

When a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser's memory and to be used in calling for the goods and/or services. Therefore, the word portion is normally accorded greater weight in determining likelihood of confusion.