Prosecution Group Luncheon

July 2012

Trademarks

Failure To Function, the next rejection?

MONTICELLO YELLOW

In re Thomas Jefferson Foundation, Inc., Serial No. 77967242 (June 29, 2012) [not precedential].

Hand Sanitizer Dispenser

In re 3M Company, Serial Nos. 77701886 and 77701928 (May 10, 2012) [not precedential], reconsideration denied, June 21, 2012.

Paint the University w/o a License

• First Amendment interests in artist's depiction of state university's football uniforms in paintings, prints, and calendars outweigh any purported trademark rights in uniforms;

• public interest in free expression must be weighed against public interest in avoiding consumer confusion,

• content is artistically relevant … depiction of uniforms is needed for realistic portrayal of scenes from university's football history

• University of Alabama Board of Trustees v. New Life Art Inc., 11th Cir., 6/11/12

Are Hookahs Really Useful?

• Shape of water container as base of hookah is useful article ineligible for copyright protection, even if shape is not critical to function,– container's shape and container itself are "one

and the same," – it does not matter that container would still be

functional if it had different shape, – artistic aspects of shape cannot be physically or

conceptually separable from container's utilitarian elements

• Inhale Inc. v. Starbuzz Tobacco Inc., C.D. Cal., 6/18/12

Buy a Chinese iPad for $60 Million?

• Apple Inc. is paying $60 million to Proview International Holdings Ltd. to settle a dispute over the use of the "iPad" trademark in China.

• Proview registered an iPad trademark for a desktop computer in 2001. In 2009, a company set up by Apple bought the rights to it from Proview for around $55,000, but Proview later claimed that deal was only with a Taiwan-based affiliate and did not cover mainland China.

• Apple had $8 billion in Chinese sales Q1 2012