General Global Week in Review 25 Apr 11 from IP Think Tank

Here is Think IP Strategy’s weekly selection of top intellectual property news breaking in the blogosphere and internet.

Highlights this week included:

Judiciary Committee of the House of Representatives approves H.R. 1249 (Patent Docs) (Patently-O) (Patents Post-Grant) (Inventive Step) (IP Whiteboard) (IPEG) (Patents Post Grant Blog)

Kappos and his $100 million (10%) budget cut (Patently-O) (Director’s Forum) (Patents Post-Grant) (IP Spotlight) (America-Israel Patent Law) (IAM)

CAFC decision in In re Tanaka: Patentee may add narrower claims in reissue, at least for now: (Reexamination Alert) (Orange Book Blog) (Patently-O) (America-Israel Patent Law) (Patents Post-Grant) (IPBiz) (Patent Law Practice Center)

Please join the discussion by adding your comments on any of these stories, and please do let us know if you think we’ve missed something important, or if there is a source you think should be monitored.


Global – General

Fail to recognize IP (no. 4 in our list of IP mistakes) (IP Think Tank)

World Intellectual Property Day – 26 April 2011 – Designing the Future (WIPO)

Monopoly lawyers shouldn’t write monopoly laws (TorrentFreak)

Industry lobbyist is ‘journalist’ for Managing IP (IP Watch)

Intangible assets: how a smartly made small move can set much bigger things in motion… (Business IP and Intangible Assets Report and Blog)

Databases galore: Patent and trademark due diligence made easy (SOLO Independent IP Practitioners)

Intangible asset management: converging business, legal, accounting, marketing, and risk management (Business IP and Intangible Assets Report and Blog)

No toast yet to WTO consensus on wines and spirits geographical indications (IP Watch)

Global – Trade Marks / Brands

Meet the world’s leading private practice trademark practitioners (IAM)

Global – Patents

Article One 2011 update – Patent research progress (Patent Quality Matters)

Top 5 living patent holders (Patent Quality Matters)

It’s time for your R & D team to stop inventing and start innovating (IP Asset Maximizer Blog)

Global – Copyright

Protecting the public domain: WIPO releases study on copyright and the public domain (IP Osgoode)


Give me a head with hair… trade mark dispute: International Hair Cosmetics Group Pty UK v International Hair Cosmetics Limited  (IP Whiteboard)

New efficiencies from national business names register (but no relief for trade mark owners) (IP Whiteboard)

International patent application and prior art search: Australia (Patent Quality Matters)


GI turns gold in Brazil (IP tango)


TMOB: Use of repetition cannot defeat descriptiveness claim: PEAMEAL BACON BACON (

FCC: LIFTMASTER and LYNXMASTER confusingly similar for garage door openers: Chamberlain Group v Links Industries (


How bright is Bright Sword? (IP Dragon)

Intellectual Property Bank in Taiwan and China (but very different) (IP Dragon)

On counterfeit liquor and wine (IP Dragon)

The lay-out of the Magic Kingdom in Shanghai wrapped up in a trade secret (IP Dragon)

Tsingtao Beer China’s well known trademark (IP Dragon)

China: Do just one thing. Trademarks. (China Law Blog)

Feeding the Meme: Yet again, China’s indigenous innovation policy (China Hearsay)

Evidence collection and alternatives to ‘discovery’ in PRC litigation (China Law Insight) (China Law Blog)

Chinese minister gets it all wrong about patents and innovation (IAM)


Number of patent filings in Europe growing (Patent Docs)

Details on the proposed unified European patent (Foreign Filing Blog)

OHIM BoA: Use of financial services sector mark in City of London of ‘more than local significance’: Case R 355/2009-2 Fortress Investment Group LLC and Fortress Investment Group (UK) Ltd v Fortress Participations BV (IPKat)

Opportunities for business-savvy attorneys and, perhaps, for NPEs with a new EU patent (IAM)

15 April European Union proposal: 3 to 5 year delay in negotiations on a copyright treaty for blind persons (KEI)


Germany: ‘… a ratio of about 50 to 50’ for refusal of registration of ‘Energy Drinks’ (Class 46)

Hong Kong

Mickey Mouse went to the Ladies’ Market in Hong Kong without Disney knowing it (IP Dragon)

Why could Polo Ralph Lauren/Burberry clone get trademark in Hong Kong? (IP Dragon)


Breaking news: Darjeeling still lounges in Kolkata, says HC (Spicy IP)

Multiple litigations regarding ‘Thank You’ movie – over use of song and title (Spicy IP)

Copyright compulsory licensing disputes: Copyright Board lacks jurisdiction (Spicy IP)

Patent Office enables online file inspections (Spicy IP)


IP enforcement (IP Komodo Dragon)

Inter-Continental Hotels and apartments of the same name (IP Komodo Dragon)


Is night-time electric illumination for a water fountain copyright protectable? (The IP Factor)


Don’t just trust us: trademarks in Korea (Korean Law Blog)


Piracy affects economy in Mexico (IP tango)


District Court of The Hague lacks jurisdiction as Samsonite based in Luxembourg and not bound by contractual choice of forum: Lankhorst Pure Composites v. Samsonite Europe (EPLAW)

New Zealand

Designs amendment regulations now promulgated (Class 99)


Voivodeship Administrative Court in Warsaw rules that the mark 60 R-156991 is not sufficiently distinctive in standard business transactions (Class 46)

L’OREAL not confusingly similar to O’LEARY? Oh really? (Class 46)

South Africa

OCIPE – more than a rebrand but doubts remain (Afro-IP)

South East Asia

Patents and South East Asia (IP Komodo Dragon)


TIPO to reduce design patent annuities (NAIP Patent Blog)

United Kingdom

UK IPO launches beta version of IPSUM, online patent file system (IPKat)

EWCA (Civ): Bestnet bested over bug-net boosted from the fence: Vestergaard Frandsen & Ors v Bestnet Europe & Ors (IPKat)

PCC 25: Will High Court litigation threat make Cautious’ tentacles wobble? (PatLit)

ACID petition re design infringement damages – Punitive damages: you can’t have them because you’ve already got them …perhaps (Class 99)

United States

US General

Ed DuMont’s “controversial” Federal Circuit nomination continues to languish after one year (Patently-O)

US Patent Reform

Boundy issues call to arms on America Invents Act (Patent Docs)

Judiciary Committee of the House of Representatives approves H.R. 1249 (Patent Docs) (Patently-O) (Patents Post-Grant) (Inventive Step) (IP Whiteboard) (IPEG) (Patents Post Grant Blog)

(Lack of) grace period in America Invents Act (Inventive Step)

Reaction to Manager’s Amendment to H.R. 1249 (Patent Docs) (Patent Docs)

House Judiciary Chairman releases Manager’s Amendment to H.R. 1249 (Patent Docs)

USPTO proposes overhaul to patent reexamination proceedings (Patents Post-Grant)

US Patents

Kappos and his $100 million (10%) budget cut (Patently-O) (Director’s Forum) (Patents Post-Grant) (IP Spotlight) (America-Israel Patent Law) (IAM)

The FTC recommendations to the ITC: Unsound, Unmeasured, and Unauthoritative (Patently-O)

See-through queues for the patent office? (Patenthink)

USPTO automates process for certain petitions (Patent Docs)

FY2011 PTO numbers: PTO explanation (Inventive Step)

March dashboard overview (Director’s Forum)

How much does the ‘clear and convincing’ standard matter? Study suggests ‘not much (Peter Zura’s 271 Patent Blog)

Green sunset?: A UPSTO green patent fast track update (Green Patent Blog)

Concentration of patent cases in the Eastern District of Texas (Patently-O)

Surviving patent reexamination (Patents Post-Grant)

The more the merrier: The Journal joins the Times in complaining about patents (Patent Docs)

US Patents – Decisions

CAFC decision in In re Tanaka: Patentee may add narrower claims in reissue, at least for now: (Reexamination Alert) (Orange Book Blog) (Patently-O) (America-Israel Patent Law) (Patents Post-Grant) (IPBiz) (Patent Law Practice Center)

CAFC: Joint infringement: When multiple actors work in concert: McKesson Technologies v Epic Systems (Patently-O) (Patent Law Practice Center)

CAFC affirms rejection of means plus function claims in patent reexamination: Ex parte Lund (Patents Post Grant Blog)

District Court Delaware: Cordis Stent infringes Boston Scientific patent: Boston Scientific v Cordis (Patent Docs)

District Court N D Illinois: Three-month delay is prejudicial after fact discovery closes: Civix-DDI v (Chicago Intellectual Property Law Blog)

District Court E D Pennsylvania: Twombly and Iqbal do not apply to affirmative defences: Tyco Fire Products v Victaulic Company (Docket Report)

District Court N D Illinois: No inequitable conduct where ‘withheld’ reference was previously disclosed: Avery Dennison v Continental Datalabel (Chicago Intellectual Property Law Blog)

District Court N D California: Marking article made using patented method with method patent’s number does not constitute false marking: San Francisco Technology Inc v Elkay Plastics Company, Inc (Docket Report)

District Court N D Illinois: False statements in pro hac vice application warrant monetary sanction and notification of State Bar: The Irrevocable Trust of Anthony J. Antonious v. Tour Edge Golf Manufacturing, Inc. (Docket Report)

US 7,910,531 overcomes KSR obviousness by asserting unpredictable outcome via allusion to Popular Science [!] (IPBiz)

US Patents – Lawsuits and strategic steps

Despatch Industries – In PV furnace case green patent litigation moves upstream (Green Patent Blog)

Heathcote Holdings Corp – False marking Plaintiff’s chosen form not given deference: Heathcote Holdings Corp., Inc. v. Leapfrog Enters., Inc (Chicago IP Litigation Blog)

Invacare – ALJ Charneski Grants Motion To Terminate Investigation In Certain Adjustable-Height Beds (337-TA-734) (ITC 337 Law Blog)

Ocean Innovations – Repeated discovery violations warrants terminating sanctions: Ocean Innovations, Inc., et. al. v. Quarterberth, Inc., et. al. (Docket Report)

US Copyright

White House rejects administrative appeal on FOIA request for CRS study of ACTA (KEI)

US Congress not bound by ACTA, according to White House answers to Senate Finance on ACTA and TPP negotiations (KEI)

How the Bratz verdict may impact you (PlagiarismToday)

US Copyright – Lawsuits and strategic steps

Talking Heads – Bryne settles with crist over Talking Heads song use (IPKat)

Coach – Jo-Ann Fabrics sued for infringing fabric by Coach (IPKat)

US Trade Marks – Decisions

TTAB reverses refusal of RALPH LAUREN STIRRUP COLLECTION for watches concluding no likelihood of confusion with STIRRUP for jewellery (TTABlog)

Despite fame of BEAUTYREST mark, TTAB dismisses opposition to BEST REST for mattresses (TTABlog)

TTAB finds WAGGIN’ STRIPS confusingly similar to BEGGIN’ STRIPS for pet treats, but no dilution or lack of bona fide intent: Societe Produits de Nestle S.A. v. Midwestern Pet Foods, Inc . (TTABlog)

Finding TOVARICH confusingly similar to TVARSCKI for Vodka, TTAB Grants 2(d) petition for cancellation: Luxco, Inc. v. Tovaritch & Spirits International SARL (TTABlog)

Test your TTAB Judge-ability: are ROOTER, MD and ROOTER-MAN & Design confusingly similar for plumbing services?  A Corp. dba Rooter Man v. Pete Wood Plumbing and Heating Co. (TTABlog)

US Trade Marks – Lawsuits and strategic steps

Christian Louboutin – Shoe spat sparks discussion about color trademarks: Christian Louboutin v Yves Saint Laurent (Seattle Trademark Lawyer) (IP Whiteboard)

Moroccanoil – Panel on multidistrict litigation denies motion to centralize counterfeiting cases: In re Moroccanoil Trademark Litigation (Seattle Trademark Lawyer)

Volcom – Clothing designer company Volcom files trademark infringement suit against Jay Z over Roc Nation logo (Trademark Blog of the Trademark Lawyer’s Mind)

Yankees – Yankees sues over ownership of logo (Property, intangible) (IPBiz)

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