22
Jan/20

INTA Amicus Brief in LTTB v. Redbubble re Aesthetic Functionality (Lettuce Turnip The Beet)




9
Jan/20

Spot The Shopped Specimen Before You’re Booted From Amazon


Home It v. Wupin Wen, et. al., 19-cv-7070 (MK) (EDNY December 26, 2019)

Plaintiff Home It alleges it has made common law use of the mark SAGANIZER for various home organizing products since 2015. It has not filed a trademark application. Defendant WuPin Wen of Guangdong, filed a U.S. application for SAGANIZER for various housewares in August 2016. Its specimen looks like this:

I’m going to zoom in on the mark affixed to the goods:

OK, I’m going to make two assertions, and it’s up to you to draw conclusions. The first: PTO believes that there is a problem with fraudulent specimens. Second: we’re looking at lettering affixed to a round metal object. The surface is curved – the lettering is razor straight. Plaintiff doesn’t mince words: it recognizes its product in the photo and says this photo is ‘shopped.

So there are problems with defendant’s registration.

It gets worse for plaintiff. Around December 13, plaintiff learns that the registrant approached Amazon, and proffered its registration for SAGANIZER, booting Home It off Amazon.

Plaintiff then applies for a TRO, citing, for example, its ruined Christimas season. As an aside, plaintiff seems to run afoul of the Court by not precisely following instructions as to service on opposing parties [practice pointer – don’t run afoul of courts’ instructions]. At the hearing, plaintiff notes testimony before Congress that there is a pattern of Chinese companies filing trademarks and booting the ‘real’ trademark owners off of Amazon. Coverage here.

Held: TRO denied for failure to show irreparable harm (brief discussion of irreparable harm case-law in the decision pages 4 to 6).

N.B. In a separate filing, a defendant was enjoined from additional contact with third-parties asserting infringement.

BTW, the moral of this, and of every story, is to file for trademark protection early and often.



8
Jan/20

INTA Amicus Brief in Ohio State University v RedBubble Inc. (Interpretation of Use in Commerce by ‘Intermediary’)


INTA Position: The Court should remand the case to the district court for fact finding on whether the defendant is advertising, distributing, and/or offering goods that are potentially infringing or counterfeit and clarify the use in commerce, pursuant to 15 U.S.C. § 1114, includes more than the act of selling goods.