Trademark Prosecution Luncheon

March 2014

Are You A Canadian John Doe?• February 2014, Federal Court of Canada ordered

an ISP to release the names and addresses of 2000 subscribers alleged to have downloaded a copyrighted movie using peer to peer networks and BitTorrent.

• encourages lower Courts to impose strict safeguards to prevent coercive settlement tactics.

• First Canadian decision to order large scale production of customer information from a third party ISP in order to identify potential defendants in an action for illegal downloading

• Voltage Pictures LLC v John Doe and Jane Doe

A TM Action May Have An Equal And Opposite Cancellation Reaction

• 9th CA: No independent cause of action for cancellation of a trademark registration:– Section 37 of the Lanham Act gives a district

court power to order cancellation of a trademark registration "in any action involving a registered mark."

• Cancellation may be sought in federal court only "if there is already an ongoing action that involves a registered mark."

• Air Aromatics, LLC v. Victoria's Secret Stores Brand Management, Inc., Appeal No. 12-55276 (9th Cir. February 28, 2014).

You Can’t Phone-In Your Specimen

• TTAB aff’d refusal to register the mark TSUBAKI: THE CHOICE FOR CHAIN for "industrial machine parts" - Applicant failed to provide an acceptable specimen of use.

• Tsubaki submitted six catalogs in which potential purchasers were invited to call the company phone number to obtain information and place an order.

• That was not sufficient to qualify as acceptable specimens of trademark use.

• In re U.S. Tsubaki, Inc., Serial No. 85267349 (March 7, 2014) [precedential].

You Write it – You’re Stuck With It• Clark’s appealed the denial of a PI to enforce a non-

compete against former employee. Smith worked for Clark’s for ~14 years before joining Ferguson.

• The trial court found the covenant to be overly broad and restrictive: – it prevents Smith from working directly or indirectly in

any capacity for any other entity that seeks to solicit or provide services to any entity that was a customer of Clark’s during the 14 years Smith worked there.

• Court declined to use the “blue pencil doctrine” – Clark’s had a fair opportunity to draft a reasonable and enforceable covenant yet failed to do so.

• Clark's Sales and Service, Inc v. John D. Smith and Ferguson Enterprises, Inc., 49A02-1306-PL-552