Intellectual Property Archives

Feb 22, 2018

Western Brand Owners Hit by Russian Constitutional Court Ruling in Parallel Import Case

On February 13, 2018, the Constitutional Court of the Russian Federation issued a decision in favor of a Russian parallel importer, holding that the destruction of original medical devices imported without the trademark owner’s consent was an excessive remedy under the facts of the case, and authorizing the lower courts to consider the bad faith of a trademark holder in refusing to supply branded products in Russia at a reasonable price when considering the availability and scope of relief in a parallel import case. The parallel importer, in this case, PAG LLC, had a government contract to supply heat-sensitive paper… Read more

Feb 15, 2018

Russian Roadmap for Competition in Healthcare Targets Innovative Drug Developers and Pharmaceutical Patents

On January 12, 2018, the Russian Federation published an ambitious Roadmap For Development of Competition in Healthcare, including the latest shot across the bow of innovative drug developers, who are bracing for the possible loss of antitrust immunity, the establishment of procedures for compulsory licensing of pharmaceutical patents, the loss of exclusivity to data in applications for registration of pharmaceuticals, and other measures. Legislative initiatives to limit the scope of patent protection for pharmaceutical products are driven by the Federal Antimonopoly Service (FAS) but opposed by the Ministry of Health and the Russian patent and trademark office (“Rospatent”). At least… Read more

Jan 25, 2018

U.S. District Court Orders USPTO to Register BOOKING.COM as a Protected Trademark

Person using laptop to visit Booking.com

In 2012, Booking.com B.V. (“Booking.com”) filed four trademark applications for the mark Booking.com for services in class 39 – travel agency services – and class 43 – making hotel reservations. The USPTO initially rejected all four applications on the ground that BOOKING.COM is generic as applied to the relevant services and, in the alternative, that the mark is merely descriptive and that Plaintiff had failed to establish acquired distinctiveness. The Trademark Trial and Appeal Board (TTAB) then affirmed the four refusals of registration for the same reasons. Booking.com filed this civil action challenging the denial by TTAB. In determining whether… Read more

Jan 18, 2018

Finding of Likelihood of Confusion Despite Consent Agreement

Trademark Confusion Between Beer Manufacturers

On October 30, 2017 the Trademark Trial and Appeal Board (TTAB) affirmed the refusal of registration of the 8-BIT ALEWORKS mark on the ground of a likelihood of confusion with the 8 BIT BREWING COMPANY registered marks and composite mark (shown below) under Section 2(d) of the Lanham Act, 15 USC Section 1052(d). The applicant’s mark was for “beer” while the registrant’s marks were for “Beer, ale, lager, stout and porter; Malt liquor; Pale beer”. The TTAB analyzed the marks under the factors in In re EI du Pont de Nemours & Co, 476 F2d 1357 (CCPA 1973). The application… Read more

Jan 10, 2018

For 2017, The Supreme Court Flips the Two Busiest Patent Venues

For years, the U.S. District Courts for the Eastern District of Texas and the District of Delaware have seen the most patent infringement cases filed by far over the several other courts spread throughout the United States. Texas led Delaware for years, based in part on a perceived bias in favor of plaintiffs, particularly small ones – including those disparagingly referred to as “trolls” – when going against large, multi-national defendants. It was also generally accepted as true that the judges in Texas were reluctant to grant motions to transfer. This led to tensions, which boiled over into angry resentment… Read more

Jan 4, 2018

TTAB Decision is Found to Have Preclusive Effect in the Southern District of New York

The United States District Court for the Southern District of New York held that Defendant Peju Province Winery L.P. (“Peju”) is precluded from litigating the likelihood of confusion issue that was decided by the Trademark Trial and Appeal Board (TTAB) in 2004. Plaintiff Cesari S.R.L. (“Cesari”) is an Italian winery that produces wine with the mark LIANO, which was registered on January 7, 2003, which an alleged first use of January 26, 1989. On February 10, 2003, Peju filed an intent-to-use application to register LIANA for wine. Cesari opposed the registration of Peju’s mark based on a likelihood of confusion…. Read more

Dec 14, 2017

Kirsch and Warenzak Continue Teaching As Adjunct Law Professors

SGR attorneys have a long-standing tradition of teaching at colleges and universities across the country, and SGR’s intellectual property (IP) attorneys are no exception. SGR IP partner Gregory J. Kirsch has served as an adjunct professor of IP law at Emory University School of Law for over 20 years, most recently co-teaching a Patent Practice and Procedure class for the last 16 years. Kirsch will next teach this class at Emory Law during the Spring of 2018. The class is tailored to second and third-year law students who are interested in pursuing a career in patent law and teaches them… Read more

Dec 7, 2017

Dr. Sarah Sharman Joins SGR IP Dept. as Patent Science Advisor

SGR is pleased to announce that Dr. Sarah Sharman recently joined the firm’s Intellectual Property (IP) Department as a Science Advisor. Working with the firm’s patent attorneys, Dr. Sharman will assist the firm’s clients with respect to patent application preparation and filing, and other patent-related matters. Dr. Sharman is a recent graduate of Augusta University, where she received her Ph.D. in biochemistry and molecular biology. While pursuing her degree, her research focused on increasing cGMP signaling in the colon mucosa through the use of PDE-5 inhibitors and GC-C agonists as a prevention and treatment strategy for various gastrointestinal (GI) diseases. … Read more

Nov 25, 2017

SGR Partner Scott Woldow Hosts USPTO Dialogue with INTA: “View from the Outside”

SGR Partner Scott Woldow was recently featured in the International Trademark Association’s monthly bulletin regarding a Panel Discussion Scott gave to the Trademark Examination Division. The topic he spoke on was called “A View from the Outside”. Former Trademark Examiners discussed the differences between being an Examiner with the USPTO and being a trademark attorney in outside practice.

Nov 6, 2017

U.S. News – Best Lawyers Recognizes SGR’s IP Practices Among Best in the US, Both Nationally and Regionally

Various intellectual property (IP) practice groups of Smith, Gambrell & Russell, LLP (SGR) have once again been named among the best IP practices at law firms in the United States for 2018, both nationally and regionally, by U.S. News – Best Lawyers®. Specifically, SGR’s Patent Law, Trademark Law, Biotechnology Law, and IP Litigation practices were ranked among the top tiers on the national level, while SGR’s IP Litigation, Patent Law, and Trademark Law practices were ranked in the top tier for Atlanta, and SGR’s Biotechnology Law practice was ranked among the top tiers for Washington, DC. The rankings are based on a rigorous evaluation process that… Read more