Cantor Colburn Ideas in Intellectual Property Law February March 2009


Here’s a brief glance at what you’ll find in the February March 2009 issue Cantor Colburn newsletter Ideas in Intellectual Property Law:

Don’t get burned

Patent’s inequitable conduct defense requires intent and materiality

For acts by patent applicants or attorneys to rise to the level of inequitable conduct, those actions must amount to more than minor missteps or minimal culpability. According to the Federal Circuit Court of Appeals, to defend a case based on an applicant’s inequitable conduct, it’s not enough for the defendant to establish the patentee’s intent to deceive or the materiality of the conduct. This article explains that the defendant must show both — and even that may not ensure a finding of inequitable conduct.

Citation: Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 88 U.S.P.Q.2d 1001 (Fed. Cir. 2008).

Proving secondary meaning for trademarks

Sales and marketing data often help show that a mark has acquired secondary meaning in trademark cases. Secondary meaning occurs when a descriptive mark acquires distinctiveness, that is, proof that it has become distinctive as applied to the mark owner’s goods or services in commerce. This article looks at how this data works when the mark in question is a component of a larger mark.

Citation: E.T. Browne Drug Co. v. Cococare Products, Inc., 538 F.3d 185, 87 U.S.P.Q.2d 1655 (3d Cir. 2008).

How the first sale doctrine affects foreign-made infringing copies

As Costco recently learned the hard way, birthplace matters when it comes to copyright infringement claims in the United States. This article reviews copyright law’s first sale doctrine, which offers no protection from infringement claims to copies made outside of the country.

Citation: Omega S.A. v. Costco Wholesale, --- F.3d ----, 2008 WL 4058640 (9th Cir. 2008); Quality King Distributors, Inc. v. L’anza Research Int’l, Inc., 523 U.S. 135 (1998).

Notice of patent infringement trips up defendant

A patent infrin

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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