Trademark and Copyright Updates

July 2015

USPTO• TMEP Update July 2015• TBMP Update July 2015• Final rule relating to Changes in Requirements

for Collective and Certification Marks• Effective June 1, 2015, the daily limit per

credit card account was lowered to $24,999.99.

• New Exam Guide on Repeating Pattern Marks

Local Copyright Plaintiff• Richard Bell has sued 100’s of people for © infringement for photo of Indy• Generally demands ~$3,000• Sued someone who hadn’t used photo – J.

Pratt ordered fees to defendant of $34,000:• “The Court is persuaded by Mr. Lantz’s

argument that the motivation of Mr. Bell in filing this action appears to be an attempt to extract quick, small settlements from many defendants instead of using the judicial process to protect his copyright against legitimate infringing actors,”

Distributor Owns TM, not MFG• presumption that, between a mfg. and an exclusive

distributor, the mfg owns mark, but rebuttable:(1) which party created and first affixed the mark to

the product; (2) which party's name appeared with the

trademark on packaging and promotional materials; (3) which party maintained the quality and

uniformity of the product, including technological changes;

(4) which party does the consuming public believe stands behind the product, e.g., to whom customers direct complaints and turn to for correction of defective products;

(5) which party paid for advertising; and (6) what a party represents to others about the

source or origin of the product.• UVeritech, Inc. v. Amax Lighting, Inc., Cancellation No.

92057088 (June 29, 2015) [precedential].

Don’t Count on Vacating• In 2013 TTAB issued a ruling dismissing

opposition to HOUNDSTOOTH MAFIA• Appealed to Dt. Ct. Settled by assignment• Consent Judgement 1) allow to register and 2) for

the TTAB to vacate decision• TTAB REFUSES TO VACATE

– D.Ct. can adjudge registerability and can authorize “necessary actions”, but vacating not necessary – b/c of assignment, TTAB could allow registration without vacating decision

– No finding that decision was wrong• The Board of Trustees of The University of Alabama and Paul W.

Bryant, Jr. v. William Pitts, Jr. and Christopher Blackburn, Opposition No. 91187103 (June 23, 2015) [precedential].

Where’s Waldo? (TRULICITY)

Where’s Waldo? (TRULICITY)• EA refused specimen:

– the word TRULICITY is in the same size and style of font as the surrounding wording

– is not "set out from the surrounding text." – have to search even to find the mark.

• TTAB Reversed: "a trademark ... need not be displayed in any particular size or degree of prominence." Question is, will it be understood as indicating the origin of the goods – yes, especially b/c coined term.

• In re Eli Lilly and Company, Serial No. 85183667 (June 18, 2015) [not precedential].