Trademarks, Territoriality, and Migration

Trademarks, Territoriality, and Migration

Meenaxi Enterprise, Inc. v. Coca-Cola Company, 21-2209 (Fed. Cir. 2022)

Although goods are often shipped globally, many companies manufacture and sell region-specific products.  That divide allows the company to cater to local market preferences and regulations and also avoid potential arbitrage.

In the 1970’s Coca-Cola withdrew its flagship sugary cola from the Indian market at a time of heavy regulation of foreign companies. A local company then started Thums Up and it quickly became popular across the country.  Although similar to Coca-Cola, Thums Up is ‘spicier’ and you can almost taste the cardamom and cinnamon.  In the 1990s, the Indian market opened again to foreign competition. Coca-Cola purchased rights to Thums Up along with Limca lemon-lime and others and continues to sell those products in India (as well as other countries).  Coca-Cola holds the trademark rights in India, but not in the USA.  Apparently Coca-Cola abandoned its US version of the THUMS UP application back in 1987 and its US LIMCA mark expired in 1996.

About 5 million Indians and Indian-Americans live in the USA, and some of those people want to purchase Thums Up and Limca. 

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Protective Orders and Joint Defense Agreements

Protective Orders and Joint Defense Agreements

by Dennis Crouch

Static Media LLC v. Leader Accessories LLC and Jen-Feng (Jeff) Lee (Fed. Cir. 2022)

Back in 2018, Static Media sued Leader Accessories in W.D. Wisconsin for infringing its U.S. Design Patent D771,400, covering an ornamental design for a stadium seat.  The case ended with a summary judgment of non-infringement. The district court found a large number of similar prior art designs and thus narrowly construed the potential infringement window.  The district court then walked-through a number of differences that would preclude a finding of substantial similarity, including the quilted vertical columns,; difference in the lower portion of the back (straight vs sloping at the edges); narrower seat cushion; distinctive storage panel with two pockets; etc.

Parallel Cases and a JDA: While the Leader case was ongoing, Static Media also threatened and then sued OJ Commerce for infringing the same patent.  The two defendants – Leader and OJ – entered into a Joint Defense Agreement (JDA) for the purpose of creating a common defense in both cases with Jeff Lee representing Leader and Sam Hecht representing OJ.

The Wisconsin case was subject to a confidentiality agreement/order. 

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He, She, or They in US Patent Law

He, She, or They in US Patent Law

by Dennis Crouch

The United States Constitution was ratified in 1789.  The following year, Congress passed the first patent act that was then signed-into law by President George Washington.

When the Patent Act of 1790 refers to inventors, it lists gender inclusive forms of “he, she, or they:”

[The inventor(s) must] set[] forth, that he, she, or they, hath or have invented or discovered any useful art, manufacture, engine, machine, or device, or any improvement therein…

Patent Act of 1790. Three years later, Congress substantially rewrote the statute and, at that time changed the pronouns.  The new law eliminated the female pronoun “she.”

[The inventor(s)] shall allege that he or they have invented any new and useful art, machine, manufacture or composition of matter, or any new and useful improvement on any art, machine, manufacture or composition of matter …

Patent Act of 1793. See, Kara W. Swanson, Making Patents: Patent Administration, 1790-1860, 71 Case W. Res. L. Rev. 777, 818 n84 (2020) (noting the change).  Thus far, I have not been able to identify any explanation or justification for this particular change in the gender language. 

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