Gibbons Law Alert

Recent Damages Award for Wrongful Seizure Under the Lanham Act

Posted in Trademark Counterfeiting / Trademarks

On February 19, 2015

Judge Preska of the United States District Court for the Southern District of New York recently awarded attorneys’ fees, damages, and prejudgment interest on damages, but not fees to defendants, in a trademark counterfeiting case. In Prince of Peace Enterprises, Inc. v. Top Quality Food Market, LLC, Judge Preska adopted in part a report and recommendation of Magistrate Judge Maas, ending an eight-year litigation surrounding ex parte seizures of herbal supplements which took place in 2007.

In Trademark Infringement Matters, Think Twice Before Waiting. Laches May Run from the Date of the Product Announcement, Before the Initial Sales

by Paolo A. Strino

Posted in Trademarks

On February 18, 2015

Fitbit and Fitbug are makers of activity trackers, which are wearable tracking devices that connect to the internet and provide users with feedback about their fitness, quality of sleep, and other personal metrics. Fitbug’s U.S. trademark rights to FITBUG date back to 2004, when the British device maker filed an intent to use application with the United States Patent and Trademark Office, which registered in 2009. Fitbug began selling its products in United States commerce since at least as early as 2005. Fitbit, on the other hand, filed a trademark application for FITBIT in August 2008 and announced its product launch the following month. However, Fitbit did not begin shipping its products using the trademark FITBIT until September 2009.

David E. De Lorenzi – Gibbons IP Department Chair – Named Among Top 25 IP Attorneys Nationwide by General Counsel & Other In-House Counsel

by Gibbons P.C.

Posted in Intellectual Property

On February 12, 2015

David E. De Lorenzi, Chair of the Intellectual Property Department at Gibbons P.C., has been named among only 25 intellectual property attorneys nationwide by the BTI Consulting Group in its 2015 BTI Client Service All-Stars Report. The newly released report is the comprehensive result of interviews with more than 300 senior legal officers and other executives overseeing the provision of legal services at companies with revenues of $1 billion or more.

Florida is the Latest State to Allow Attorneys to Advise Clients About the Removal of Social Media Posts and Pictures

by Gibbons P.C.

Posted in E-Discovery: Legal Decisions and Court Rules / Litigation Preparedness and Strategies

On February 10, 2015

On January 23, 2015, the Professional Ethics Committee of the Florida Bar issued an advisory opinion holding that before litigation commences, and absent any other preservation obligation, an attorney may advise a client to: (1) remove information from social media pages and (2) change privacy settings from public to private, as long as the client retains a record of any deleted information or data. In so holding, the Florida ethics committee joined panels from New York, Pennsylvania, and North Carolina that have issued similar guidance.

Depending on the Circumstances, Claim Construction May Be Subject to Clear Error Review on Appeal

by Christopher H. Strate

Posted in Patent

On February 10, 2015

Traditionally, claim construction, which can be an important phase in patent litigation for setting the metes and bounds of a patent, has been viewed as a pure question of law and subject to de novo review by the Federal Circuit on appeal. This was considered problematic by some because the district court’s findings on claim construction, which the parties had been relying on throughout the litigation, were not given any deference on appeal.

Federal Circuit Issues Its First AIA Appeal Ruling

by Robert E. Rudnick and Charles H. Chevalier

Posted in Patent / USPTO

On February 9, 2015

On Tuesday, the Federal Circuit issued its first ruling on an appealed Patent Trial and Appeal Board (“PTAB”) decision of an inter partes review (“IPR”). Cuozzo Speed Technologies (“Cuozzo”) owns U.S. Patent No. 6,778,074 (the “’074 patent”) entitled “Speed Limit Indicator and Method for Displaying Speed and the Relevant Speed Limit.” Garmin International, Inc. and Garmin USA, Inc. (collectively, “Garmin”) petitioned the United States Patent and Trademark Office (“USPTO”) for IPR of claims 10, 14, and 17 of the ’074 patent. The PTAB found the claims to be invalid as obvious.

Governor Cuomo Proposes Major Changes to State Brownfield Cleanup Program

by David J. Freeman

Posted in Development/Redevelopment

On February 3, 2015

In his budget proposal unveiled on January 21, Governor Andrew Cuomo included recommendations that would significantly change the New York State Brownfield Cleanup Program. Among the revisions he has recommended to the Legislature are the following: The deadline for sites to obtain their Certificates of Completion (COCs) in order to be eligible for tax credits under the Program would be extended until December 31, 2025. However, sites currently in the Program will need to obtain their COCs by December 31, 2017 to qualify for the existing level of tax credits. For sites admitted to the Program after April 2015, tangible property (development) credits would be available only for sites in environmental zones, sites where the projected cost of cleanup exceeds the value of the property as clean, or sites containing affordable housing. For sites meeting these criteria, tax credits would potentially be increased from current levels. However, sites not meeting these criteria would be ineligible for any type of development-related tax credit.

Two Failures to Preserve, Two Starkly Different Results in New York

by Paul E. Asfendis

Posted in E-Discovery: Legal Decisions and Court Rules

On February 2, 2015

Two recent spoliation decisions, both out of the same New York Court and issued within a week of each other, demonstrate the potential for starkly different sanctions results depending on the level of culpability of the spoliator. AJ Holdings Group, LLC, v. IP Holdings, LLC, Index No. 600530/2009 (Sup. Ct. N.Y. County, September 19, 2014) and L&L Painting Co., Inc. v. Odyssey Contracting Corp., 2014 N.Y. Misc. LEXIS 4300 (Sup. Ct. N.Y. County, September 25, 2014) are both breach of contract actions in which plaintiffs were accused of spoliating evidence.

USPTO Releases Examples of Patent Eligible Claims Relating to Abstract Ideas

by Gibbons P.C.

Posted in Patent / USPTO

On February 2, 2015

We previously reported on the United States Patent and Trademark Office’s issuance of new interim examination guidance in December for evaluating subject matter eligibility under 35 U.S.C. § 101. At the time, the USPTO included examples of allowable claims for nature-based products in light of previous Supreme Court rulings in Mayo and Myriad. On Tuesday, January 27, the USPTO followed up by releasing claim examples relating to abstract ideas in response to the Supreme Court’s decision earlier this year in Alice.

Bill to Expand Data Breach Notification Requirements Passes New Jersey Assembly

by Gibbons P.C.

Posted in E-Discovery: Legal Decisions and Court Rules / General Litigation / Privacy and Data Security

On January 28, 2015

On December 15, 2014, the New Jersey Assembly voted 75-to-0 to advance a bill that would expand the existing data breach notification requirements for companies doing business in the state. The bill, A3146, would broaden the type of information that, if compromised, would trigger a company’s obligation to notify customers of the breach. The proposal now heads to the Senate, where a similar bill, S2188, has been pending in the Commerce Committee since June.