Plot thickens in dispute between HBO and University of Utah

As I mentioned the other day here, the University of Utah has taken issue with the use by HBO of the University’s logo in an episode of the show “Big Love.”

The use at issue involves a scene in which the University’s logo is shown on a fictional report by one of the University’s research laboratories which reportedly authenticates an historical letter from former Church of Jesus Christ of Latter-day Saints President Wilford Woodruff that legitimizes the practice of polygamy.

The Univesity asserts producers used the logo without permission and demands that HBO delete the shot in all future airings of the episode and on the upcoming DVD release.  HBO has taken the position that “nothing in the program vioalates anyone’s rights, and HBO will respond in due course.”

Trader Joe’s v. Trader John’s

According to Forbes.com, Trader Joe’s has sued a renovated grocery store re-opening under the name of Trader John’s.

Perfecting Security Interests in Intellectual Property

From the New Hampshire Business Review:

“In short, in order to perfect a security interest in a domain name, trademark or unregistered copyright, a state UCC-1 filing should be sufficient. For a registered copyright, the security interest should be filed with the U.S. Copyright Office. For a security interest in a patent, the security interest should be filed as a state UCC-1 filing and as a filing with the PTO.”

US Chamber of Commerce Makes Recommendations for USPTO Reform

The Chamber’s recommendations address the need to:

• Improve the quality of US patents;
• Provide adequate resources to do the job;
• Reform the patent examiner production system;
• Improve the timeliness of administrative actions;
• Strengthen the PTO’s relationship with the user community;
• Enhance organizational management;
• Appoint a well-qualified undersecretary and director;
• Permit applicants to defer patent examination;
• Rethink the current fee schedule; and
• Enhance efficiency of the examination process by reforming examiner and applicant incentives.

Stanford University v. Stanford Financial Group v. Stanfordfinancial.net

According to Caribbean Net News, Stanford Financial Group presently is in the midst of two trademark disputes, one as a defendant and the other as plaintiff.

Filing Application for Copyright Registration Does Not Create Presumption Work is Copyrightable

CHM Industries Inc. v. Structural and Steel Products, Inc. (N.D. Tex., No. 4:08-CV-454-Y, 10/24/2008).  The mere filing of a copyright registration application, as opposed to having an actual certificate of registration, does not trigger the presumption that a plaintiff in a copyright action holds a valid copyright interest in the work at issue.  In denying the plaintiff’s motion for a preliminary injunction, the court held that the plaintiff had not demonstrated a likelihood of success on the merits of its copyright claim.

Registration for Bose WAVE Mark Canceled for Fraud

Bose Corp. v. Hexawave, Inc., 88 USPQ2d 1332 (TTAB 2007) - Although unrelated to the issue of likelihood of confusion based on other Bose registrations for which the TTAB ruled in favor of Bose, US Trademark Registration No. 1,633,789 for the mark WAVE used in connection with radios, clock radios, audio tape recorders and players, etc., was canceled for fraud.  Bose had stopped making and selling audio tape recorders and players in 1997, but it renewed its registration for the mark in 2001 and continued to list those goods in the identification of goods.  Transporting previously purchased recorders and players which Bose had repaired was not considered use in commerce.

Congress considering expanded protection for fashion designs

Pending bill would provide three years of copyright protection on designs of clothing and accessories.

Google keyword case

Judge dismisses suit against Google over trademarked terms in ads.

Santa Cruz v. Huntington Beach: which is the real “Surf City USA”

Ongoing trademark dispute over the mark SURF CITY USA.  Huntington Beach Conference and Visitors Bureau has four federal registrations (3,088,921; 3,088,922; 3,091,711; and 3,140,625) all of which are registered on the Supplemental Register.

I did not know until recently that one of the purposes of the Supplemental Register is to provide United States Registration of a distinctive package in order that the registrant might use such U.S. registration to obtain registration and protection in foreign countries—notably the Latin American countries.  Thus, the configuration of containers and packages may be registered on the Supplemental Register, as may the configuration of a part of, or the overall shape of, a product which serves as its own trademark.

Some differences between supplemental registration and principal registration include:

1.  principal registration is prima facie evidence of registrant’s exclusive right to use the mark, supplemental registration has no such evidentiary effect;

2.  principal registration is constructive notice of claim of ownership so as to eliminate good faith defense, supplemental registration has no such effect;

3.  principal registration can become incontestable after five years of regsitration, whereas supplemental registration cannot; and

4.  registration on the supplemental register cannot be used as a basis to stop importation into the US of goods with infringing marks.