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Book Review Monday: Trademark Surveys

Stephen Jenei — Tue, 20 Dec 2011 14:43:06 +0000

“There are three kinds of lies: lies, damned lies, and statistics.” ~British Prime Minister Benjamin Disraeli

Surveys are everywhere and poll results are available for every imaginable topic. In the U.S., there were concerns about the admissibility of surveys for hearsay reasons but legislative amendment (Rule 702 of the 1975 Federal Rules of Evidence) eliminated objections, making surveys a legally acceptable form of evidence. In fact, the submissions of survey evidence in trademark cases have become commonplace, and judges and juries afford great weight in these types of cases to survey results.

In “Trademark Surveys: A Litigator’s Guide,” authors James Berger and Mark Halligan provide a legal guidebook on developing and critiquing trademark surveys. In addition to describing the process and different types of surveys that may be employed, the authors offer strategic insight into how best to use these surveys to save time and money.

In addition to describing the process and different types of surveys that may be employed, the authors provide strategic insight into how best to use these surveys to save time and money. The last chapter offers practical considerations when requesting the services of a survey expert, and the appendices provide a series of sample survey protocols.

Explains how to develop and critique trademark surveys
Provides strategic insights into the best way to use the surveys to the benefit of a client’s case
Provides practical considerations when requesting the services of a survey expert
Contains a series of helpful survey protocols in the appendices of the book

In trademark cases, a plaintiff alleging infringement and unfair competition must provide evidence of the infringement, including the likelihood of consumer confusion. Confusion is a mixed matter of law and fact and can be established using some guiding principles. These principles or factors are commonly known as the Sleekcraft factors. These are:

Strength of the mark;
Proximity of the goods;
Similarity of the marks;
Evidence of actual confusion;
Marketing channels used;
Degree of care used by the consumer when purchasing;
Defendants intent in the selection of the mark; and
Likelihood of product line expansion.

A survey for litigation is a market research survey that, when properly conducted, is intellectually and methodologically closer to a controlled scientific experiment than to most forms of traditional market research. Survey evidence is useful to measure the impact of a mark or competing marks in the marketplace. For a survey to be admissible and persuasive at trial, it must be done correctly.

Consumer surveys that provide evidence of confusion are common in trademark litigation, yet the frequency of their application does not mean the method is accepted without challenge. First, it should be noted that every survey actually consists of a sampling plan, a set of questions (the survey instrument), and a method of administering the questions. Each aspect, the sample, the instrument, and the implementation, must be designed according to scientific and accepted research practice.

Surveys for litigation are used in matters involving trademarks, trade dress, false advertising and unfair competition, and have numerous purposes. They can be used to determine the likelihood of confusion between marks, that a mark has acquired secondary meaning, or whether a word, color or shape has trademark or generic significance. Additionally, survey evidence may show that a mark is famous or that use of an infringing mark is causing dilution.

The challenges in designing surveys includes 1) locating the correct population; 2) determining the appropriate form of survey administration; 3) determining how to use technical language; 4) setting up the research to accurately reflect the market conditions; and 5) evaluating the appropriateness of trademark survey questions. Generally, the survey should be designed such that all potential sources of bias are minimized and the questions address the specific issue required for the litigation.

If you want to conduct trademark surveys — or defend against them — it’s a must-read! You may also want to take a look at “Linguistic Battles in Trademark Disputes“ by Roger W. Shuy.

“Trademark Surveys: A Litigator’s Guide,” by Berger and Halligan, Oxford University Press Inc, 304 pp, is available from Amazon.

About the Authors

James T. Berger is the founder of Market Strategies, a Chicago consulting firm that specializes in market surveys. He has testified or served as an expert witness in more than a dozen trials and has been deposed nearly 50 times. He has written more than a dozen articles on the subject of trademark surveys. He combines the real-world, practical orientation of a professional business person with the theoretical knowledge of the academician.

R. Mark Halligan is a partner at Nixon Peabody, where he has developed an extensive practice as an intellectual property litigator in both federal and state courts in all aspects of intellectual property law. In addition to writing many articles over his 30-year career, Mr. Halligan is a frequent lecturer on intellectual property issues and serves on the adjunct faculty of John Marshall Law School in Chicago.

Book Review Monday: Biotechnology and the Patent System (In Hindsight)

Stephen Jenei — Mon, 21 Nov 2011 21:03:08 +0000

“The U.S. patent system has shown a remarkable ability for identifying flaws and implementing self-correcting, substantive policy changes within existing authority.” ~Barfield and Calfee

On September 16, 2011, President Obama signed the Patent Reform Act of 2011 into law (“America Invents Act”). It is the first major reform of the patent system in decades. The new law provides for a conversion to a first-inventor-to-file system and an introduction of enhanced post-grant review procedures conducted in the USPTO. The Act also addresses pre-issuance submissions by third parties, supplemental examination, reissue, elimination of the best mode defense, special post-grant review for business method patents and USPTO authority to prioritize examination.

In this week’s Book Review, we look at “Biotechnology and the Patent System: Balancing Innovation and Property Rights” by Claude Barfield and John Calfee (AEI Press, 132 pp). This book, published in 2007, analyzes the role of intellectual property protection in biotechnology and how patent law encourages research and venture capital investment. The authors then evaluate whether the current system could potentially impede genomic research and the development of new treatment and diagnostic tools. Then, they set out a series of recommendations and cautionary notes.

Given the passage of the America Invents Act, I wondered how the book held up. While Calfee passed away earlier this year, Barfield pondered the same thing in an article this fall. The authors suggested three criteria by which to judge the legislative proposals:

First, do no harm. We were quite aware of the unintended consequences of earlier legislative and administrative “reforms”—for instance, the creation of a separate court for patent litigation (Court of Appeals for the Federal Circuit), which in its early years tilted the system heavily in favor of patent holders. We also argued that the U.S. patent system had shown a remarkable ability for identifying flaws and implementing self-correcting, substantive policy changes within existing authority.

Our second, and most important, suggestion was to increase information flow through “bounded adversarial proceedings.” “Bounded” because we were very aware of the potential for increased costs and protracted delays in any new institutional proceedings.

Third, we acknowledged long-standing substantive and interest group clashes over key elements of the existing patent system.

So, how’d they do? Barfield thinks not too bad:

Reviewing the new legislation, it becomes clear that Congress demonstrated remarkable restraint—it did not push the envelope in areas where the system is self-correcting. For instance, the courts have tightened patent eligibility requirements by overturning patents that are “obvious” and lack inventiveness. Similarly, they have made it more difficult to obtain huge damages when a claim is only against a single patent in a multi-patent product.

With regard to greater information flow and a “bounded adversarial process,” the new law establishes a limited post-grant administrative review process that will be much less costly and time-consuming than litigation. Henceforth, during a short window after a patent has been granted, any outside party may challenge the initial determination of the Patent Office before a newly created review board. The act also provides for a more restricted reexamination procedure (a so-called “second window”) that can be requested after the conclusion of the first appeal.

On consensus-based reforms, the legislation moves forward with several important changes. It switches the United States from a first-to-invent system to a first-to-file system, which brings the country into line with most of the rest of the world. More important, this change will eliminate inconclusive and expensive proceedings to discern just when the “Eureka moment” occurred.

Agree or not, it would be good to see an updated version of the book in light of the law changes.

“Biotechnology and the Patent System: Balancing Innovation and Property Rights” is available from Amazon.

About the Authors

Economist John E. Calfee (1941-2011) studied the pharmaceutical industry and the Food and Drug Administration (FDA), along with the economics of tobacco, tort liability, and patents. He previously worked at the Federal Trade Commission’s Bureau of Economics. He had also taught marketing and consumer behavior at the business schools of the University of Maryland at College Park and Boston University.

Claude Barfield, a former consultant to the office of the U.S. Trade Representative, is a resident scholar at the American Enterprise Institute and researches international trade policy (including trade policy in China and East Asia), the World Trade Organization (WTO), intellectual property, and science and technology policy.

Book Review Monday: An Associate’s Guide to the Practice of Copyright Law

Stephen Jenei — Mon, 07 Nov 2011 19:53:06 +0000

James Madison submitted to the framers of the Constitution a provision “to secure to literary authors their copyrights for a limited time.” ~August 18, 1787

The various forms of intellectual property (patents, copyrights, trademarks, etc.) all have roots in European laws developed over centuries. The precursor of modern copyright law first appeared in Britain in the fifteenth century in response to Gutenberg’s printing press (a form of mass copying).

The first copyright law was a censorship law, which established a guild of private-sector censors, the London Company of Stationers. The Stationers were granted a monopoly over all printing, old works as well as new, in return for keeping a eye on what was printed.

Hence, copyright laws are often not the most straight-forward topics to discuss. They have their own sets of unique and arcane rules to remember, each with their own pitfalls and traps for the unwary. Therefore, it is foolhardy to practice in such minutia-filled legal practices without being well-versed in the particulars.

And so it is that the book “An Associate’s Guide to the Practice of Copyright Law” by Meaghan Hemmings Kent and Joshua J. Kaufman covers the task of getting associates — or anyone new to the field — up to speed and what to look for and where to find the answers.

An Associate’s Guide provides readers with guidance on conducting legal tasks and research. The authors give practice-oriented advice on topics such as what questions to ask a client, what research to conduct, what elements must be met for various causes of action, the potential repercussions for various actions and the proper alternatives to be considered.

This is a great desk handbook for anyone working with clients who are in an industry that produces copyrightable materials. While it starts off with basics, it quickly plunges neck-deep in ares like copyright transfers, the Digital Millennium Copyright Act (DMCA), cease and desist letters as well as a detailed coverage of the steps in copyright litigation from steps to take prior to filing a claim to initial motions to counterclaims to post-trial motions. The section includes detailed discussions of remedies, depositions and the use of experts.

The book is well laid out and contains handy call-outs of practice tips all along the way. The book is structured so that it can be read by skipping around to the sections of interest and contains a very thorough review of the topics while pointing the way to more in-depth sources where needed.

Practice Tip

Discuss the declaratory judgment standard with your client before sending a cease and desist letter. You do not want to have to explain after the fact how you got her sued in a faraway state because of your letter.

The book also includes some sample documents and pleadings, references to secondary sources and key cases in copyright law. A CD-ROM containing some forms in electronic format, is included. (*Why don’t all books don’t come with such supplementary material??) The dozen or so forms won’t replace the standard forms books but is a nice addition for the selected forms included such as samples of a cease and desist letter, complaint and interrogatories.

We highly recommend this desk reference to practitioners at any stage who are not familiar with all the nuances of copyright laws. The practice tips are invaluable.

“An Associate’s Guide to the Practice of Copyright Law“ 344 pages (Oxford University Press, USA; 2009) is available from Amazon.

About the Authors

Meaghan Hemmings Kent is a senior associate at Venable, LLP, where she focuses her practice on intellectual property litigation, including patent, trademark and copyright claims. She also has experience in trademark prosecution before the USPTO, and proceedings before the Trademark Trial and Appeal Board.

Joshua Kaufman is a partner at Venable, LLP, where he is the head of the firm’s Copyright and Licensing group. He counsels and litigates in the fields of copyright, e-commerce, licensing, art, intellectual property, software, on-line issues, trademark, entertainment, media and literary law.

Book Review Monday: Patent Litigation in China

Stephen Jenei — Mon, 17 Oct 2011 17:46:54 +0000

“The major issue in patent litigation in the People’s Republic of China is obtaining evidence to prove infringement.” ~ Douglas Clark

As China’s economy has risen to be one of the largest in the world, disputes involving intellectual property rights will become more frequent as well as increasingly critical for business survival.

“Patent Litigation in China” by Douglas Clark (Oxford University Press 2011; 320 pp.), provides U.S. and other non-Chinese practitioners with an overview of the patent litigation system in China and enable those contemplating or involved in patent litigation in China to better comprehend the risks and challenges they face, as well as to ensure better decision-making by those responsible for bringing or defending patent actions.

The People’s Republic of China (PRC or China) has a dual administrative and judicial system for enforcing patents. Patent enforcement actions may be brought in either administrative bodies or to the courts. The State Intellectual Property Office (SIPO) and the Patent Review and Adjudication Board (PRAB or Patent Re-examination Board) is the key administrative body handling patent related matters.

Under the administrative system, patent enforcement actions are brought to local branches of the SIPO where the infringement is occurring although the General Administration of Customs also can take action to seize imports or exports of products that infringe a patent. Meanwhile, the courts may handle all infringement cases directly but have no power to act on validity cases other than on appeal.

The book covers the grounds for invalidating patents, evidence gathering, litigation strategy and procedure, as well as defenses and remedies. Additional topics include design patents and preliminary and interlocutory issues.

This is an extremely useful guide for attorneys who want to proactively address the considerable challenges and risks associated with pursuing patent litigation in China. The coverage of the topic is both thorough and informative.

About the Author

Douglas Clark is an intellectual property lawyer who has practiced in China for more than 15 years. Until the end of 2010 he was a partner with the international law firm of Hogan Lovells and head of the firm’s mainland China intellectual property practice as well as co-head of its worldwide patents group. Since 2011 he has worked as a sole practitioner.

“Patent Litigation in China” by Douglas Clark (Oxford University Press 2011; 320 pp.) can be ordered from Amazon.

Book Review Monday: Development and Health in Poor Countries

Stephen Jenei — Mon, 03 Oct 2011 19:03:48 +0000

“Inevitably, the right to health comes into contradiction with patents on pharmaceutical products, which block the passage of a new medicine to the status of generic medicine.”

“Development and Health In Poor Countries, The Role of International Organizations and of Switzerland,” by Bastien Briand et al. (Centrale Sanitaire Suisse Romande 2010; 224 pp.), presents the mandates and activities of international organizations concerned with intellectual property and underlines the dangers of bilateral ad hoc relations negotiated among countries (or among groups of countries).

A first part explores the internal debates and contradictions in each organization without omitting the tensions which arise among them as well as the relative weight of pressure groups. The second part examines the same topics and attempts to identify the role of Switzerland and of various parties involved.

The TRIPS Agreement foresees limits to the patenting right. Excluded from patentability are (i) diagnostic, therapeutic and surgical methods for the treatment of persons or animals and as well (ii) plants and animals other than microorganisms (virus, bacteria) and essentially biological processes for plants or animals production (i.e. organisms which are not obtained by genetic engineering) other than non-biological and microbiological processes. According to the European patent Convention (EPC) and the Swiss federal patents law (in Article 2) “essentially biological processes” are not patentable either but the definition of this expression is quite vague. For example the European Patent Office (EPO) granted a patent to a firm from the United Kingdom which was applying for a selection method not involving genetic manipulations and enabling an increase in the content of anticarcinogenic glucosinolate in broccoli plants. The patent includes selection processes as well as the broccoli seeds and edible broccoli plants obtained.

This book asks the essential question of what are the possible consequences of adopting patents for for plant and animal varieties obtained through biotech processes on farmers autonomy and rights? Who is the owner of genetic resources elaborated and selected by indigenous rural communities? How to differentiate knowledge acquired in a laboratory from public knowledge (traditional, local, regional)? How to make the difference between a traditional use (for example the empirical use of certain plants with a presumed therapeutic effect) often without a scientific basis and a knowledge based on rigorous research work?

It is therefore a reasonable question as to how to guarantee a application of WTO law, in a manner consistent with WTO members’ human rights obligation in health. The major tenets of these arguments are that there is the existence of a legal right to access to medicine, although not explicitly mentioned in any agreement. Further, that the adoption of patent legislation under TRIPS leads to higher drug prices, rendering certain drugs unavailable to portions of the population. And finally, that this price effect can infringe the right of access to medicine, even though the prices are set by private individuals.

This has become a major issue as developing countries try to use of international law to gain access to life saving medicines in light of the price of AIDS medicine, as well as medicines for bird flu and for anthrax. This is certainly a topic worthy of further discussion.

“Development and Health In Poor Countries, The Role of International Organizations and of Switzerland,”can be ordered from info(at)css-romande.ch. It is also available as a free download (PDF) at http://www.css-romande.ch