Feb 12, 2020

Patagonia Sues Apparel Company Over Pro-Oil and Gas Industry “Petrogonia” Line


Patagonia Inc., an outdoor apparel company known for its commitment to conservation efforts, filed suit on Monday against a Colorado-based retailer for trademark and copyright infringement claims over its pro-oil and gas industry “Petrogonia” apparel. Patagonia alleges that OC Media LLC is selling apparel with a logo that closely mimics Patagonia’s mountain silhouette logo.  OC Media has replaced the mountain silhouette imagery with oil field imagery: specifically, machinery associated with oil wells.  The word “Petrogonia” also appears on the clothing in a font nearly identical to Patagonia’s word trademark. According to the complaint, which was filed in California federal court,… Read more

Jan 29, 2020

Can the State of Georgia Own a Copyright in its Official Code?


The Official Code of Georgia Annotated (the “OCGA”) is made up of not only the statutory laws, but also various annotations, including history lines, repeal lines, commentaries, case notations, law review article excerpts, Attorney General opinion summaries, editor’s notes, and other references (the “Annotations”).  The State of Georgia (the “State”) contends that it owns the copyright in the Annotations, while a non-profit entity contends that because the Annotations are part of the Official Georgia code, the Annotations cannot be the subject of a valid copyright and are in the public domain.  The Supreme Court will decide this issue later this… Read more

Nov 7, 2019

Six SGR Intellectual Property Attorneys Appointed to INTA Committees for the 2020-2021 Term


Smith, Gambrell & Russell is proud to announce attorneys appointed to INTA Committees for the 2020–2021 term. The International Trademark Association appoints committee volunteers to carry out trademark-related initiatives and programs. Committee members fulfill their responsibilities by promptly and thoughtfully completing their committee’s mission statement. Smith, Gambrell & Russell’s appointments follow: Jim Bikoff was selected to be a member of the Data Protection Committee. The INTA Data Protection Committee develops and advocates the Association’s policy regarding the impact of data protection law on trademark rights. The committee monitors data protection cases, legislation and regulation in various jurisdictions, completes analyses and proposes… Read more

Oct 29, 2019

How to Overcome the Genericness Hurdle at the U.S. Trademark Trial and Appeal Board

Photo of a Lightbulb with a question mark

The Following Article is reprinted, with permission, from INTA Bulletin, Vol. 74, No.8 From 2013 through 2017, the U.S. Trademark Trial and Appeal Board (TTAB) issued 10 opinions in which it ruled on claims whose marks were generic for their goods or services. Of these opinions, nine resulted in a finding that the mark was unregistrable. A closer look at those opinions reveals what owners and practitioners should know when faced with the chance to argue genericness before the TTAB. Under U.S. trademark law, a mark is generic if its primary significance to the relevant public is the goods or… Read more

Oct 21, 2019

On Second Thought, Don’t Say My Name – Registering Surnames in the United States


The Following Article is reprinted, with permission, from INTA Bulletin, Vol. 74, No.16 The Lanham Act prohibits registration on the Principal Register of marks that are primarily merely a surname. For many small businesses, this prohibition proves problematic because owners tend to want to include their own names in the business name to let customers know that they stand behind the quality of their goods or services. The United States Patent and Trademark Office applies a five-part test to determine whether registration should be denied on this basis. Its recent decisions, however, establish that some of these factors are weighted… Read more

Oct 17, 2019

Do “Expenses” Include the PTO’s Attorney’s Fees in a New Civil Action Filed to Challenge the PTO’s REfusal of an Application

Judge Gavel with Money

On October 7, 2019, the Supreme Court heard oral arguments in Peter v. Nantkwest, Inc., Case No. 18-801.  This case addresses the question of whether an applicant must pay the attorney’s fees incurred by the Patent and Trademark Office (“PTO”) in defending against a civil action to challenge the PTO’s refusal of an application to register a patent or trademark – whether the applicant prevails in the action or not.  The Fourth Circuit and the Federal Circuit decided this issue differently, thus creating a Circuit split that the Supreme Court needed to resolve. When an application for a trademark or… Read more

Sep 26, 2019

Can Unasserted Claims of Ameranth Patent be Invalidated Under Section 101?


The Federal Circuit recently heard oral argument in Ameranth, Inc. v. Domino’s Pizza, LLC, Nos. 2019-1141, -1144, in which the Court grappled with the issue of determining whether unasserted claims of a patent can be invalidated under Section 101. In 2011, Ameranth filed patent infringement actions against several defendants, including Domino’s, alleging infringement of two patents.  In an amended complaint filed in 2013, Ameranth accused Domino’s of infringing thirteen claims – specifically, claims 1, 3, 6-9, 11-13, and 15-18 – of a third patent, U.S. Patent No. 8,146,077 (“the ’077 Patent”), which was directed to a system for generating and… Read more

Sep 12, 2019

Trademark Decisions at the ITC May Have Preclusive Effect at the District Court

Picture of Segway

On May 18, 2016, Segway filed a Complaint with the International Trade Commission (ITC) alleging violations of 19 U.S.C. § 1337 based on the infringement of six patents and two trademarks. On March 21, 2017, Swagway, one of the Respondents, moved for partial termination of the investigation regarding the trademark infringement allegations by asking for a consent order stipulation to be entered where Swagway stipulated that it would not sell or import SWAGWAY-branded personal transporter products as well as all components thereof, packaging and manuals therefor. Before the Administrative Law Judge (“ALJ”) ruled on Swagway’s motion for consent order, the… Read more

Sep 4, 2019

SGR IP Attorneys Continue Service as Adjunct Professors at Various Law Schools


SGR Partners Greg Kirsch and Matt Warenzak are continuing their service as adjunct professors of patent and intellectual property (IP) law, at various law schools. Kirsch will be teaching an intensive class on “Intellectual Property Protection for Computer Software”, at Washington University School of Law in St. Louis, during this coming weekend of September 6-8, 2019.  The class, which Kirsch has been teaching each Fall since 2011, focuses on how the various types of IP regimes (patents, copyrights, trade secrets, and trademarks) can be used to protect different aspects of computer software technology, the procedures used to protect such IP,… Read more

Aug 29, 2019

No Place To Hide – The Effect of a Data Breach on Brand Value

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This Blog is Co-Authored by James Bikoff, Smith, Gambrell & Russell, LLP; Nicole DelleDonne, Brandsight, Inc.; and Susan Natland, Knobbe Martens Almost every week, a brand owner discloses that a data breach has occurred. As trademark professionals and ambassadors of our organization’s and client’s brands, the effect of a data breach goes far beyond the concrete costs and resources in dealing with the breach. Studies have shown and common sense supports that a data breach can cause substantial damage to brand value due to harm to the goodwill in a brand and loss of consumer trust. Thus, data breaches are not… Read more