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McNees 2020 in Review – Trademarks, Copyrights and Patents

January 8, 2021
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2020 has been an unforgettable year. Not even a global pandemic could stop courts of all levels from issuing important decisions regarding intellectual property. While many of us are anxious to leave 2020 behind, let’s take a look back on some of the top intellectual property law cases from 2020 and look ahead to what we can anticipate in 2021.

Trademark Law

Booking Opens the Door to (some) Protection for Generic Domain Marks

In U.S. Patent and Trademark Office v. Booking.com B.V. (140 S. Ct. 2298 (2020)) the U.S. Supreme Court affirmed the US Court of Appeals for the Fourth Circuit’s affirmance of a district court decision reversing the United States Patent and Trademark Office (USPTO) refusal to register the term “Booking.com” on grounds that it is a generic term. The Supreme Court held:

  • A term styled “generic.com” is a generic name for a class of goods or services only if the term has that meaning to consumers; and
  • “Booking.com” is not a generic term because, as shown in record, consumers do not perceive the term to mean a class of online hotel-reservation services.

Booking.com filed applications for the marks shown below for use with a variety of services which essentially all amounted to hotel room reservation services:

 

 

U.S. Serial No. 79122365 and U.S. Serial No. 79122366

The Trademark Office initially refused registration on the grounds the marks are merely descriptive of Booking.com’s services. When Booking.com claimed, in the alternative, that its marks had acquired secondary meaning, the Examining Attorney issued new refusals on grounds that the marks are “generic” as applied to the services. The TTAB affirmed the refusal, but the District Court and Fourth Circuit disagreed finding that the mark had acquired distinctiveness. The Supreme Court agreed dispelling the USPTO’s per se rule that combining a generic term with a generic top level domain (.com) must yield a generic (unprotectable) term and rejecting a long list of policy concerns advised by the USPTO.

Does this mean that every “generic.com” domain owner can register its domain? Not exactly. Several months after the decision, the USPTO released Examination Guide 3-20 to clarify the procedure for examining trademark applications to register terms with generic top-level domains. The Examination Guide indicates that “generic.com” style terms are likely to be deemed highly descriptive, and applicants must clear a high bar in proving acquired distinctiveness under Section 2(f). The USPTO also references the Supreme Court’s caution that consumer surveys used to show acquired distinctiveness must be properly designed and interpreted to ensure that they are an accurate and reliable representation of consumer perception of a proposed mark. Finally, both the Supreme Court in Booking.com and the USPTO in the Examination Guide recognize that “generic.com” style marks that achieve registration may have a narrow scope of protection and Examining Attorneys will take that into account when issuing 2(d) refusals.

While Booking.com opened the door slightly, it is clear that the path to registration of a “generic.com” trademark is narrow, and the protection afforded a mark that achieves registration is limited.

A Snap Decision

In Romag Fasteners Inc. v. Fossil Inc. et al., the U.S. Supreme Court unanimously held that trademark infringers can be forced to hand over their profits to the trademark owner even if they are not “willful infringers.” Romag Fasteners and Fossil signed an agreement to use Romag’s trademark-protected metal fasteners in Fossil’s leather goods. Romag later discovered that factories in China manufacturing Fossil’s goods were using counterfeit Romag fasteners. Romag sued Fossil for trademark infringement. Although Romag won on the infringement claim, the Second Circuit refused to issue a $6.8 million award of Fossil’s profits because Romag could not prove Fossil infringed the trademarks willfully.

The Supreme Court ruled that trademark infringers can be forced to hand over their profits to a trademark owner even if they have not violated the law willfully. The justices unanimously sided with Romag Fasteners over when courts should order such awards of profits, one of the few forms of monetary damages available under trademark law. While some lower courts held that these damages could only be awarded when someone willfully infringes a trademark, the justices held that the Lanham Act contained no such restriction. The Court held that a plaintiff in a trademark infringement suit is not required to show that a defendant willfully infringed the plaintiff’s trademark as a precondition to a profits award.

However, the Court did not rule out willfulness as a factor to consider when weighing an award of profits. Justice Gorsuch stated that a trademark defendant’s mental state is a “highly important consideration” in determining whether an award of profits is appropriate. The Court disagreed; however, the willfulness is an “inflexible precondition” to an award of profits as damages. This case settled a circuit split regarding the required mental state for an award of profits.

A Lasting Engagement:  Tiffany & Co. v. Costco Wholesale Corp

In November 2012, a customer alerted Tiffany & Co. that Costco was selling diamond engagement rings that the customer believed were being advertised as Tiffany & Co. rings. After further investigation, Costco admitted to selling rings with identifying signs using phrases such as “Tiffany setting,” “Tiffany set,” or “Tiffany style,” and in some instances using only the word “Tiffany” for identifying the setting style of the ring. In February 2013, Tiffany filed suit against Costco claiming trademark infringement, dilution, counterfeiting, unfair competition, false and deceptive business practices, and false advertising in connection with Costco’s signs that included the word “Tiffany” without being accompanied by the words “setting,” “style,” or “set.” In response, Costco asserted that its use of the word “Tiffany” was not infringement. Additionally, Costco raised a fair use defense under the Lanham Act and filed a counterclaim seeking to modify or partially cancel any federal trademark registrations that might prevent retailers from using the word “Tiffany” to indicate that a ring has a Tiffany setting.

In September 2015, the district court granted Tiffany’s summary judgment motion and concluded that Costco failed to raise a genuine issue of material fact as to any of the relevant factors to the infringement analysis, that Costco’s fair use defense failed as a matter of law, and Costco’s infringement constituted counterfeiting. In August 2017, the district court entered a final judgment and awarded damages in an amount of over $21 million to Tiffany. In September 2017, Costco appealed to the Second Circuit.

In August, the Second Circuit reversed, finding that the district court erred in finding Costco liable for trademark infringement and counterfeiting. The Second Circuit held that the district court granted Tiffany’s motion for summary judgment in error, which in turn deprived Costco of the opportunity to present its case. The Second Circuit found that a jury could reasonably conclude that consumers of diamond engagement rings would know or would learn that the term “Tiffany” describes a style of setting not unique to rings manufactured by Tiffany and could recognize that Costco used the term only in that descriptive sense. The Second Circuit further reasoned that consumer may also be able to recognize that Costco’s rings were not manufactured by Tiffany, based on factors such as the price and place of purchase of the rings.

The Second Circuit’s ruling reminds us of how difficult it can be to receive summary judgment in trademark infringement cases. It also serves as a reminder that established, well-known brands are not immune to others using their trademarks in a descriptive way. This ruling by the Second Circuit sets the stage for a new trial this year.

Bad Spaniels Tennessee Whiskers:  VIP Products LLC v. Jack Daniel’s Properties Inc.

VIP Products designs, markets, and sells rubber dog toys that resemble the bottles of various, well-known beverages featuring dog-related puns. In July 2013, VIP introduced the “Bad Spaniels” squeaker toy. The toy resembles the shape of a Jack Daniel’s whiskey bottle and has an image of a spaniel over the words “Bad Spaniels.” The Jack Daniel’s label reads “Old No. 7 Brand Tennessee Sour Mash Whiskey,” while the label on the Bad Spaniels toy has the phrase “the Old No. 2, on your Tennessee Carpet.” The Bad Spaniels toy also includes a tag that states, “product is not affiliated with Jack Daniel Distillery.”

After the toy was released, Jack Daniel’s demanded that VIP Products cease all further sales of the toy. In response, VIP Products filed suit in district court seeking a declaration of non-infringement, non-dilution, and that Jack Daniel’s was not entitled to trademark protection for its trade dress and bottle design. Jack Daniel’s counterclaimed, alleging trademark infringement, trade dress infringement, and trademark dilution by tarnishment. The district court ruled in favor of Jack Daniel’s, finding trademark infringement and dilution and enjoined further sales of the Bad Spaniels toy. VIP Products appealed the decision to the Ninth Circuit, arguing that the Jack Daniel’s bottle was aesthetically functional and lacked distinctiveness and thus, Jack Daniels’ trademark rights in the bottle should be cancelled. Additionally, VIP Products argued that its use of the marks belonging to Jack Daniel’s constituted nominative fair use. Finally, VIP Products argued that the Bad Spaniels toy was an expressive work, protected by the First Amendment.

The Ninth Circuit rejected VIP Products’ arguments that Jack Daniels’ trademark rights should be canceled and that VIP Products’ use of the marks constituted fair use. However, the Ninth Circuit vacated the district court’s rulings of trademark infringement, finding VIP Products’ use of the mark as an expressive work under the First Amendment. The Ninth Circuit found that VIP Products’ use of the mark conveyed a humorous message that was protected as an expressive work under the First Amendment. Because the Bad Spaniels toy is an expressive work, the Ninth Circuit vacated the district court’s findings of trademark infringement and dilution by tarnishment. Additionally, the Ninth Circuit vacated the permanent injunction against VIP Products.

In September 2020, Jack Daniel’s appealed to the Supreme Court. In a petition for certiorari, Jack Daniel’s asked the Court to overturn the Ninth Circuit’s ruling, arguing that the ruling will make it easier for infringers to evade the Lanham Act by citing humor or satire as an expressive work.

Several other brands have filed amicus briefs with the Supreme Court in this case. If the ruling stands, brands can presumably use the trademark or trade dress of another brand if that use is considered humorous or satirical. This decreases the strength of the trademarks and trade dress of brands like Jack Daniel’s. It will also be difficult to claim infringement if a brand like VIP Products uses the trademark or trade dress of another in a satirical or humorous way. This will be a case to watch in 2021.

The Busy, Fizzy World of Hard Seltzers:  Future Proof Brands LLC v. Molson Coors Beverage Co. 

Future Proof Brands LLC, a company based out of Austin, Texas, sued Molson Coors Beverage Co., seeking to enjoin Molson Coors from using the name Vizzy for a line of hard seltzer based on Future Proof’s prior use of the name Brizzy for hard seltzer. Future Proof launched its Brizzy hard seltzers in September 2019 before Molson Coors announced it would launch Vizzy hard seltzers in March 2020. In February 2020, Future Proof sought a preliminary injunction barring Molson Coors from selling or marketing its seltzer or trying to register the mark Vizzy as a trademark.

The district court denied the injunction, finding that Future Proof failed to show that it would eventually prove that Molson Coors has infringed its trademark. The district court also found that the mark Brizzy was descriptive and was not entitled to strong trademark protection. In December 2020, the Fifth Circuit affirmed the district court’s ruling.

Although the Fifth Circuit disagreed that the Brizzy mark was descriptive, it found that Future Proof’s brand name Brizzy was a “comparatively weak” trademark as it was a suggestive mark that played on the seltzer’s fizzy quality. Future Proof also indicated instances of actual confusion, including an instance where a wholesaler had mixed up Brizzy hard seltzer and Vizzy hard seltzer. However, the Fifth Circuit did not find this evidence convincing enough to overturn the decision. The Fifth Circuit found that Future Proof did not provide any evidence as to actual confusion that swayed consumers to purchase Vizzy hard seltzer when they believed they were purchasing Brizzy hard seltzer. The Fifth Circuit reasoned that a “fleeting mix-up of names” was not sufficient to establish actual confusion.

This case demonstrates the risk of adopting descriptive or suggestive trademarks. Even if a mark is considered suggestive, it still is not subject to much protection. This case highlights the importance of choosing a unique trademark that will be subject to strong protection. Even though Future Proof had priority of use over Molson Coors, Molson Coors could continue using a similar trademark for identical goods.

How the Cookie Crumbles:  Ezaki Gliko Kabushiki Kaisha et al. v. Lotte International America Co. et al.

In October 2020, the Third Circuit ruled that a Japanese snack maker could not sue rivals for selling products that look like its Pocky cookie sticks because the food design was ineligible for trademark protection. Ezkai Gliko Co. Ltd. claimed that the shape of its Pocky product, a thin cookie stick dipped in chocolate, should be protected trade dress. Ezkai Gliko sued its competitor, Lotte Confectionary, claiming that Lotte’s Pepero product, a similar cookie stick dipped in chocolate, infringed the trade dress of Ezkai Gliko’s Pocky product. The Third Circuit rejected these claims.

The Third Circuit held that the shape of the Pocky product could not be claimed as protected trade dress because it served a functional purpose to the treat. The Third Circuit found that the shape of the Pocky product stemmed from a utilitarian advantage, not from an attempt to serve as a distinctive trademark. The Third Circuit reasoned that trade dress is limited to features of a product that identify that product’s source, not features that are functional. Additionally, the Third Circuit found that the claimed features of the Pocky product are not arbitrary or ornamental features that serve only to identify Ezkai Gliko as the source of the product. Although Ezkai Gliko created the Pocky product, the Third Circuit found that it could not use trade dress to keep competitors from copying the product design.

This case affirmed the traditional rules regarding trade dress and the Court refused to protect functional or useful elements of the product.

CBDenied

In In re:  Stanley Brothers Social Enterprises LLC, The Trademark Trial and Appeal Board (the “TTAB”) ruled that the Colorado based CBD company, Stanley Brothers Social Enterprises LLC, could not register a trademark covering hemp oil extracts because the product violates federal food safety laws. Stanley Brothers sells cannabidiol, or CBD, products under the brand name Charlotte’s Web. The brand Charlotte’s Web was the basis of the trademark application for the mark CW.

The TTAB decided that Stanley Brothers could not lawfully use the trademark CW in commerce because the sale of products incorporating hemp oil is illegal under the Food, Drug, and Cosmetic Act (the “FDCA”). The FDCA bans the sale of food products that have drugs added to them. The TTAB affirmed the U.S. Patent and Trademark Office examiner who refused Stanley Brothers’ trademark application, stating that hemp oil is a food product to which CBD has been added.

Traditionally, trademarks involving cannabis have been refused on the same grounds, mainly, that the trademarks cannot be lawfully used in commerce. However, the TTAB has customarily cited the Controlled Substances Act as a basis for refusal when dealing with cannabis products. In this case, the TTAB cited only the FDCA as a basis for refusal for the trademarks covering products that include CBD. This is likely due to the fact that non-psychoactive cannabinoid CBD was removed from the list of controlled substances enumerated in the Controlled Substances Act in 2018.

This ruling is the latest hurdle for the cannabis industry when it comes to registering federal trademarks for products containing CBD.

Copyright Law
Led Zeppelin Climbs the Stairway to Heaven

Rock n Roll legends Led Zeppelin prevailed in this long running case about, arguably, the most iconic rock song in history, “Stairway to Heaven.” The Ninth Circuit Court of Appeals, sitting en banc, agreed with Led Zeppelin that the intro to Stairway to Heaven did not infringe the instrumental song “Taurus” by the band Spirit. Skidmore v. Led Zeppelin, 952 F.3d 1051 (9th Cir. 2020). The plaintiff in this case is the trustee of the Randy Craig Wolfe Trust, Randy Wolfe and his band Spirit performed Taurus in the 1960’s. Led Zeppelin released Stairway to Heaven in 1971 with song credits to Zeppelin’s Jimmy Page and Robert Plant.

Skidmore initiated the copyright infringement lawsuit in 2014 in the US District Court for the Central District of California. The jury returned a verdict for Led Zeppelin, finding that while Led Zeppelin had access to Taurus, the two songs were not substantially similar. Following Skidmore’s appeal, a panel of the Ninth Circuit vacated the judgment in 2018 and remanded the case for a new trial. The Ninth Circuit subsequently granted a re-hearing en banc and sided with Led Zeppelin.

The basis for Skidmore’s appeal was District Court’s grant of Led Zeppelin’s motion in limine to exclude playing of the sound recording of Taurus as proof of substantial similarity between Taurus and Stairway to Heaven. Thus, the jury never heard the sound recording of Taurus and could not compare it to the sound recording of Stairway to Heaven. Also, plaintiffs attacked the District Court decision not to instruct the jury to apply the “inverse ratio rule” which the Ninth Circuit had applied in prior cases, but which is a minority view among circuit courts. This rule provides that a lower level of proof is needed to show substantial similarity when a higher level of access to the infringed work has been shown.

The District Court rejected the application of the inverse ratio rule because it:

  • Is not a part of the Copyright Act.
  • Creates uncertainty for both parties and the courts, noting that the Ninth Circuit’s own cases have had inconsistent or confusing applications of the rule.
  • Is illogical, to lower the plaintiff’s bar for proving substantial similarity just because the plaintiff had complete access to the infringed work, which would be the case for any popular music.

Regarding excluding the sound recording of Taurus from evidence, the Circuit Court held that the 1909 Copyright Act did not protect sound recordings and the protection of the work was limited specifically to content of the deposit submitted for the registration. Therefore, it was not improper for the District Court to prevent the jury from hearing the sound recording of Taurus. Before February 15, 1972, federal copyright law did not protect sound recordings, but common law, or in some cases statutes enacted in certain states, generally did. In 1971, Congress amended the copyright law to provide federal copyright protection for sound recordings fixed and first published with a statutory copyright notice on or after February 15, 1972. All sound recordings created after January 1, 1978, are automatically protected by copyright.

Finally, the court found that, to the extent there was similarity between the works, that similarity extended to unprotectable music building blocks and any copying of the selection and arrangement of those elements did not infringe.

Critics of the decision argue that by limiting the protection and evidentiary use of sound recordings to the four corners of the deposit for pre-1972 works, and by not considering the selection and arrangement of basic music building blocks, music artists of these older works will be less able to protect their works from exploitation.

Who gets to tell the story? Apparently, anyone.

In September 2020, the Ninth Circuit ruled that the Broadway play “Jersey Boys” did not infringe copyrights when it used material from an autobiography of band member Tommy DeVito. While there clearly were similarities between the book and “Jersey Boys,” the court ruled that those facts were nearly entirely from real-life events and, thus, cannot be exclusively protected via copyright law.

The Ninth Circuit wrote, “It is … a feature of copyright law, not a bug or anomaly, that an author who deals in fact rather than fiction receives incomplete copyright protection for the results of his labor.” This decision provides some clarity to filmmakers and creators seeking to utilize real-life events and people in their works.

Public domain historical facts have a long legal history, but there has been confusion on more recent real-life events. The Ninth Circuit’s opinion was illuminating for creators on how liberally they can utilize the events and anecdotes of other people. It also provides a cautionary note to authors on the level of protections one enjoys in autobiographical works.

Jazz does not reign supreme.

In February 2020, the Second Circuit rejected a lawsuit against the musical artist Drake over a snippet of spoken-word jazz featured in his 2013 song “Pound Cake.” This decision showcases a rare application of fair use to music sampling.

The Second Circuit held Drake did not infringe the copyright holders’ rights by using a 35-second clip of a song called “Jimmy Smith Rap” into the 2013 hit, saying it was a “transformative” new use of the old material.

The Second Circuit focused its reasoning on the substance of the track’s messages and not merely the similarity in the sounds of the tracks. The panel’s analysis stated, “The message of the ‘Jimmy Smith Rap’ is one about the supremacy of jazz to the derogation of other types of music, which — unlike jazz — will not last.” The Second Circuit further reasoned, “On the other hand, ‘Pound Cake’ sends a counter message — that it is not jazz music that reigns supreme, but rather all ‘real music,’ regardless of genre.”

A fair use holding is unusual in a case dealing primarily with music sampling. The vast majority of outright samples by mainstream artists in today’s music industry are “cleared” as a matter of course, and the litigation over those that are not has focused on other issues. Most of the litigation concerning uncleared samples involves independent artists.

Copyright holders give S.D.N.Y. a “Like” for closing Instagram copyright loophole.

In June 2020, a Southern District of New York (“S.D.N.Y.”) judge allowed a copyright lawsuit against Newsweek to proceed over the site’s use of “embedded” Instagram posts, the most significant of one of several recent decisions that have made such posts legally dubious. Newsweek argued Instagram’s embed tool gave it an automatic license to repost a photographer’s copyrighted image, thus, allowing Newsweek to effectively bypass any copyright protections if the news site used the Instagram embed feature. The S.D.N.Y. disagreed and held that the Instagram user policy Newsweek was relying on would likely need to be interpreted more narrowly.

Later that month, in a case against Mashable, a different S.D.N.Y. judge reached a similar conclusion. The court said it wasn’t clear that Instagram’s vague user policy gave Mashable the necessary “explicit consent” to embed a photographer’s post.

These recent decisions, taken together with a 2017 decision holding that embedded links might violate a copyright holder’s “display right,” represent a significant change for media companies that have utilized such techniques regularly.

In response to the S.D.N.Y. judges’ rulings, Instagram clarified that its policies do not grant a blanket license to media companies or content aggregators to embed public third-party content, which effectively affirms that these series of cases interpreted Instagram’s policy intent correctly and that content creators using Instagram control the use of their work by third parties.

Patent Law
The Supreme Court Speaks to Silence the Courts:  Thryv, Inc. v. Click-To-Call Techs., LP

As the Supreme Court’s sole patent-related decision of 2020, it is incumbent to address its decision in Thryv. This is likely also the only reason to address this decision. Inter partes patent review is an administrative process in which a party asks the Patent Office to cancel a granted patent. Loved by people at risk of suit for patent infringement and despised by those seeking to sue for patent infringement, discussion of inter partes review typically generates more heat than light, but not so here. Thryv boldly generates neither heat nor light. The statute creating inter partes review declares that the determination by the Patent Office as to whether or not to institute inter partes review is final and non-appealable, but also proscribes that inter partes review cannot be instituted on a request filed more than one year after the petitioner is served with a complaint alleging patent infringement. Click-to-Call sued Thryv for patent infringement…in 2001, a suit which was voluntarily dismissed without prejudice. In 2013, Thryv sought inter partes review, which was instituted by the Patent Trial and Appeal Board. Click-to-Call protested that Thryv was too late, because the 2001 suit started the clock on the time bar. The Federal Circuit agreed with Click-to-Call that the inter partes review was time-barred, but the Supreme Court rejected the propriety of the Federal Circuit taking up the case. The Supreme Court held that the Patent Trial and Appeal Board’s consideration of the time bar was part of its decision to institute inter partes review and was therefore explicitly non-appealable.

No, Eastern District of Texas, You’re Still Not Special:  In re Google, LLC

No matter how many times the Eastern District of Texas is slapped down by the Federal Circuit, it just cannot resist trying to devour every patent case that crosses its docket, regardless of how tenuous a connection the case bears to the district. Super Interconnect Technologies LLC (“SIT”) sued Google for patent infringement in the Eastern District of Texas, even though the Supreme Court had already held in TC Heartland LLC v. Kraft Foods Group Brands LLC that a domestic corporation only resides in its State of incorporation for purposes of the patent venue statute, and the Federal Circuit had held in In re Cray that a regular and established place of business under the patent venue statute must be a physical place in the district, regular and established, and the place of the defendant. Clearly not satisfying the residence test, SIT argued that the presence of several Google Global Cache servers in the Eastern District of Texas were enough to represent a regular and established place of business. However, the servers in question were not hosted within datacenters owned by Google. Rather, Google merely contracted with internet service providers to host Google’s servers in their own datacenters. Rejecting SIT’s theory of venue, the Federal Circuit held that a regular and established place of business requires the regular, physical presence of an employee or other agent conducting the defendant’s business at the alleged place of business. Google, however, did not have a single employee in the Eastern District of Texas, and regardless of whether the internet service providers hosting Google’s servers could be considered agents, they were not, within the meaning of the venue statute, conducting Google’s business, the Federal Circuit further held. And so, once again, the Federal Circuit ordered the Eastern District of Texas to send the case to a district court having proper venue.

No Good Deed Goes Unpunished – For Now:   Glaxosmithkline LLC v. Teva Pharmaceuticals USA, Inc.

The Federal Circuit reinstated a $235 million verdict against Teva Pharmaceuticals (“Teva”) for inducing patent infringement despite the patent for the generic drug being sold by Teva having already expired. At issue was a second patent covering the usage of the drug specifically for congestive heart failure (a use not protected in the original expired patent). Teva did not include treatment for congestive heart failure on its label until 2011, when the FDA required it to do so to match Glaxosmithkline’s own approved label. In a divided opinion, however, the Federal Circuit held that, because Teva had correctly indicated that its generic drug had an AB rating and was therefore therapeutically interchangeable with Glaxosmithkline’s non-generic drug, it would have led doctors to prescribe Teva’s generic drug for treatment of congestive heart failure, even when that specific use was off-label. The dissenting judge castigated the majority opinion, accusing it of undermining Congress’s design for efficient generic drug approval. Although this decision stands for now, Teva has petitioned of en banc review by a larger panel of the Federal Circuit and will doubtless appeal to the Supreme Court if unsuccessful.

Nothing Says 2020 Like Bedazzled Pepper Spray Canisters:  Super-Sparkly Safety Stuff, LLC v. Skyline USA, Inc.

Because…well…2020, a case came before the Federal Circuit regarding whether summary judgment against design patent infringement of a pepper spray canister decorated with rhinestones was proper where the purportedly infringing cannister had rhinestones on the vertical portion of the pepper spray cannister but lacked rhinestones on the bottom surface of the cannister as claimed in the design patent. Holding that the lack of rhinestones on the bottom surface of the pepper spray cannister would preclude confusion of a hypothetical ordinary observer between the bedazzled pepper spray cannisters, the Federal Circuit approved summary judgment of non-infringement, particularly because the additional information sought by the plaintiff during discovery was not relevant to meeting the ordinary observer test. As such, we may rest assured that as 2021 begins, our access to bedazzled pepper spray cannisters will not be restricted, bringing us all a safe, affordable, and fabulous new year.


© 2021 McNees Wallace & Nurick LLC
McNees Intellectual Property Update is presented with the understanding that the publisher does not render specific legal, accounting or other professional service to the reader. Due to the rapidly changing nature of the law, information contained in this publication may become outdated. Anyone using this material must always research original sources of authority and update this information to ensure accuracy and applicability to specific legal matters. In no event will the authors, the reviewers or the publisher be liable for any damage, whether direct, indirect or consequential, claimed to result from the use of this material.

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