Overview
Letter from the Editor
Dear Friends and Colleagues,
Leason Ellis is entering a new and exciting era. As of January 1st, Yuval Marcus became the firm’s second Managing Partner in its 15-year history. As a special feature of this issue, Yuval shares his thoughts on the firm’s first 15 years and goals for the future.
Along with Firm News and In Case You Missed It, here is an overview of the practice group case discussions you will find.
Patent
Federal Circuit Narrowly Defines Scope of Comparison Prior Art for Evaluating Design Patent Infringement
By Henry A. Gabathuler
Trademark
Don’t Just Register & Forget It! Why Filing Declarations of Use Early Is Best Practice
By Kevin M. Wallace and Karin Segall
Get INFORM-ed: A Primer on the INFORM Consumers Act
By Emily A. Rice and Sara E. Gruber
Copyright
Against the Odds: Persistence Prompts Copyright Review Board to Reverse Refusal to Register
By Tatsuya Adachi and Henry A. Gabathuler
Litigation
Are You Bound by Terms Reached During Mediation?
By Stefanie M. Garibyan
If online marketplaces concern your practice or your business, please make a point to read the fantastic summary of the INFORM Consumers Act prepared by Emily Rice and Sara Gruber. They’ve proven to be a potent writing team and you won’t want to miss it.
As always, we hope you find value in The Newtonian. Please feel free to share it with others and to send your thoughts to us at inquiries@leasonellis.com.
Warmly,
Henry A. Gabathuler
Partner
Editor, The Newtonian
Federal Circuit Narrowly Defines Scope of Comparison Prior Art for Evaluating Design Patent Infringement
Originally Published in The Patent Lawyer Magazine Newsletter The Federal Circuit, in a case of first impression, recently defined the proper scope of “comparison prior art” in evaluating infringement of a design patent. Columbia Sportswear N. Am., Inc. v. Seirus Innovative Accessories, Inc. , 80 F.4th 1363 (Fed. Cir. 2023) (“Columbia II”). Acknowledging its precedent had not articulated a test, the Federal Circuit held that “to qualify as comparison prior art, the prior art design must be applied to the article of manufacture identified in the claim.” Id. at 1378. Notably, this decision narrows the scope to align with what…
Don’t Just Register & Forget It! Why Filing Declarations of Use Early Is Best Practice
After ten months of waiting for an examination and another 30 days for the opposition period to pass, you finally have your trademark registration! Now what? It’s easy to set aside that certificate of registration and pay it no mind. But five years later, you will be reminded that it’s time to file a Declaration of Use! What’s that? The U.S. Patent & Trademark Office (“USPTO”) requires owners of trademark registrations to confirm they are still using their trademarks for the registered goods and services. This Declaration must be filed between the fifth and sixth years after registration and can…
Get INFORM-ed: A Primer on the INFORM Consumers Act
In Issue #34 of The Newtonian , we wrote about recent trends in the social media marketplace involving the promotion of counterfeit goods and related best practices for brands and content creators. While enforcement mechanisms for counterfeit goods promoted and sold via the social media marketplace still lag, brands are not without recourse. On June 27, 2023, the INFORM Consumers Act (the “INFORM Act” or the “Act”) (15 U.S.C. § 45f), a bipartisan bill aimed to enhance “transparency [in] online transactions and to deter criminals from acquiring stolen, counterfeit, or unsafe items and selling them through [online] marketplaces” became effective.…
Against the Odds: Persistence Prompts Copyright Review Board to Reverse Refusal to Register
The U.S. Copyright Office Review Board recently granted artist Daniel John Van Such’s application to register the copyright in a three-dimensional sculptural work titled “Trinity Cross.” The decision resulted from Van Such’s second request to reconsider the Copyright Office’s initial refusal to register the work and is notable because reversals of refusals are relatively rare. Indeed, of the Review Board’s 33 published opinions from 2022, only four reversed a refusal to register a work. The decision’s focus on the sufficiency of creative authorship reflected in “Trinity Cross” suggests the Copyright Office initially determined the work failed to meet the U.S.…
Are You Bound by Terms Reached During Mediation?
At various inflection points in U.S. litigation, parties will often enter mediation — either by court order or party agreement. There are multiple mediation formats, but the goal is always the same: leave with terms each party can accept to resolve a dispute, in whole or in part. There are two potential outcomes of particular interest here. First, a mediator can be successful in finding common ground between the parties; in that case, the parties can build on that foundation by leaving the mediation with an agreed-upon term sheet. Second, when a mediator is unsuccessful at reaching an agreement during…
