News

BREAKING NEWS:

SUPREME COURT RESOLVES SPLIT BETWEEN FEDERAL COURTS ON BURDEN OF PROOF IN TRADEMARK INFRINGEMENT ACTIONS WHEN AFFIRMATIVE DEFENSE OF FAIR USE IS RAISED

On December 8, 2004, the United States Supreme Court issued an opinion in the matter of K.P. Permanent Make-Up v. Lasting Impression, unanimously holding that in cases of alleged trademark infringement, an alleged infringer bears no burden of demonstrating the absence of likelihood of consumer confusion in order to prevail on the affirmative defense of fair use under Section 33 of the Trademark (Lanham) Act, 15 U.S.C. §1115(b)(4). The decision resolved a split amongst the federal courts of appeal on the burden of proof carried by defendants asserting the fair use defense. In reaching that conclusion, the Court also expressly held that some degree of consumer confusion must be compatible with fair use, particularly when a descriptive term is at issue. However, the Court further explained that its holding did not foreclose the relevance of an inquiry into the extent of any likely consumer confusion in assessing whether a defendant's use is objectively fair. Thus, while the split in the circuits has been resolved, the factual scenarios under which the fair use defense may trump a trademark infringement claim must be assessed on a case-by-case basis. Read More...

IP Spotlight

		Paul Ragusa
		Paul Ragusa is a partner in Baker Botts' New York Office. He has more than a decade of experience in intellectual property law, primarily in the areas of patent and software-related copyright litigation, licensing, and patent portfolio management. Paul's technical experience spans a variety of high technology fields, including audiovisual compression and transmission, robotic vision, semiconductor device fabrication, digital signal processing, optical devices, materials science, software, and Internet applications. He was part of the team that drafted the patent licensing agreements directed to the MPEG-2 digital video compression standard. Most recently, Paul litigated a group of cases against several of the largest semiconductor manufacturing companies in the world, which resulted in a string of multi-million dollar settlements. His diversified practice includes the representation of academic institutions such as Columbia University and The State University of New York at Stony Brook, large corporations, and small clients, where he has assisted in the development, management, and licensing of worldwide patent portfolios. Mr. Ragusa is a member of the board of editors for Patent Strategy & Management, and serves as a co-editor for the Baker Botts IP Report. He is heavily involved in the analysis of intellectual property-related topics concerning the practical implications of important court decisions. Paul has a Bachelor of Science degree in physics from the State University of New York at Binghamton, and a Juris Doctor from the George Washington University Law School. He is admitted to practice in the courts of the State of New York and throughout the Federal Courts in New York. as well as in the United States Circuit Court of Appeals for the Federal Circuit. He is also a registered patent attorney with the United States Patent and Trademark Office.

Articles

Be Careful What You Link For

Greg Poehler

Providing a link to another's website is an extremely common practice among website owners. The practice of linking is so widespread that few companies even consider requesting permission from the owner of a site to which a link is provided. After all, there is seemingly little reason for a site owner to object to such unsolicited advertising and the resultant increased traffic to its site. Nevertheless, there have been cases worldwide in which “linkers” have been found legally liable under various causes of action. For this reason, website owners are cautioned to think before they link. Read More...

Responding To "Unpatentable Subject Matter" Rejections Of Algorithm Patent Claims Citing Ex Parte Bowman

Travis Thomas

After years of official hostility toward attempts to gain patents for business method and software algorithms, it seemed by the late 1990s that the United States Patent Office and the American courts had fully embraced the patentability of such claims following the widely-publicized decisions of the U.S. Court of Appeals for the Federal Circuit in State Street Bank & Trust Co. v. Signature Financial Group , 149 F.3d 1368 (Fed. Cir. Jul. 23, 1998) AT&T Corp. v. Excel Communications, Inc. , 172 F.3d 1352 (Fed. Cir. 1999). Read More...