NEWS
Lawyers: Supreme Court ruling in B&B could shift more resources to TTAB cases Te dispute centres on two companies that
A US Supreme Court decision on likelihood of confusion rulings in trademark cases could see parties put more resources into disputes at the Trademark Trial and Appeal Board (TTAB), lawyers have claimed. In a reversal of an appeal court’s decision,
the Supreme Court ruled on March 24 in B&B Hardware v Hargis Industries that decisions by the TTAB on likelihood of confusion should preclude any identical issues from being re-litigated in a district court. Te TTAB is a body at the US Patent and
Trademark Office (USPTO) that hears cases related to
trademarks, including oppositions
to applications filed by other parties and to applications rejected by examiners. Speaking to WIPR, Marc Rachman, partner at
law firm Davis & Gilbert in New York, said that as a result of the decision it is likely parties will put more resources towards TTAB opposition proceedings if they know the outcome could preclude litigation.
make sealing fasteners. B&B Hardware owns a trademark for the word ‘Sealtight’, while Hargis Industries used and sought to register the term ‘Sealtite’.
B&B filed an opposition to the application at
the TTAB and argued that it was too similar to its mark.
Te TTAB agreed and denied Hargis the
registration because there would be a likelihood of confusion. But, in a separate infringement action at the US District Court for the Eastern District of Arkansas, B&B said Hargis was unable to contest the likelihood of confusion between the two marks because of the TTAB’s decision. Te district court and the US Court of Appeals
for the Eighth Circuit disagreed with B&B, but both rulings were then overturned by the Supreme Court’s decision. Evan Gourvitz, counsel at law firm Ropes &
Happy Birthday copyright case reaches court
A US court has heard arguments in a case that will decide whether the copyright protecting the song Happy Birthday to You is valid. In arguments heard at the US District Court for
the Central District of California, documentary maker Good Morning to You Productions and music publisher Warner/Chappell Music faced off over the rights to the song. Happy Birthday to You is one of the most
recognised songs in the world. Te case should decide whether Warner/
Chappell’s copyright for the song is valid (allowing the company to continue licensing it) or whether it should be in the public domain. In a lawsuit filed in 2013, Good Morning to
You claimed that Warner/Chappell had collected millions of dollars in licensing fees for the song even though its origins are disputed. Te lawsuit was filed aſter Good Morning to You had to pay Warner/Chappell $1,500 to play
the song in a documentary it had made earlier that year that covered the history of the song. According to Good Morning to You’s complaint,
the melody from Happy Birthday to You was originally used in a song called Good Morning to All. Te rights to that song were assigned to music publisher Clayton Summy, the company added. Summy published a version of Good Morning
to All in 1893, the documentary maker argued. Te song was revised three years later, in 1896, but the company claimed the two copyrights protecting the two versions expired in 1921 and 1924 respectively. Further rights protecting Good Morning to
All, dated to 1899 and 1907, were not renewed by Summy and expired in 1927 and 1935, the plaintiff had said. Warner/Chappell did not respond to a request
to comment. Good Morning to You Productions could not be reached for comment.
Gray, said that following the ruling, parties may decide either to litigate their TTAB actions “more vigorously” or skip them entirely in favour of federal court litigation. He added: “As for the TTAB, it may decide to
better harmonise its analysis with that used by the federal courts by (for example) giving greater weight to how the marks it considers are actually used in the marketplace.” Ron Coleman, partner at
law firm Goetz
Fitzpatrick, said there will now be a lot more de novo reviews of TTAB decisions, with “full evidentiary submissions and all the expense that entails”. “Te only
alternative appears to be
an
amendment of the Lanham Act. Tat probably should be considered in order to establish streamlined, economical USPTO proceedings, which is something the Supreme Court has determined is not a part of the act now but which probably everyone agrees should be,” he added.
Stephen Hawking applies to trademark name
Professor Stephen Hawking, the renowned physicist and inspiration for Oscar-winning film Te Teory of Everything, has applied to trademark his name. Hawking applied for the trademark at the
UK Intellectual Property Office (IPO). His application covers goods and services including: computer games, powered wheelchairs, greetings cards, and charitable purposes. A spokesman for the University of
Cambridge, where Hawking is director of research at the centre for theoretical cosmology, told Te Sunday Times newspaper he made the move so he could “protect his name and the success it has brought”. Hawking, who wrote the best-selling book
A Brief History of Time, is also known for his long-term battle with motor neurone disease, sometimes referred to as amyotrophic lateral sclerosis. His life inspired the creation of the 2014 film Te Teory of Everything, which charted his career, his battle with his condition, and his relationship with first wife Jane. Hawking has become a famous face and
name over the years. He has appeared in TV shows such as Te Big Bang Teory and has been characterised in Te Simpsons.
www.worldipreview.com World Intellectual Property Review May/June 2015 9
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