Trademark Presentation

I’ve been meaning to post the slides from my Trademark Law – 2015 Update CLE that I presented at the Orange County Bar Association’s Intellectual Property Committee meeting back in May.

So, here they are in PDF format: Trademarks – OCBA CLE 2015.

I went over the following topics:

1) A Trademark Trial and Appeal Board (“TTAB”) proceeding which sought to cancel the registration for Gerber Childrenswear’s “ONESIES” trademark.  Since giving the CLE, the TTAB proceeding has been terminated because the party seeking to cancel the ONESIES registration has withdrawn the petition for cancellation.  Given that the petitioner’s website still uses the “onesies” term/mark, I’m guessing that Gerber has given the petitioner a free license or some other incentive to abandon its efforts to cancel the registration.  Even though I’m a trademark attorney, as a new dad, I admit to using the term “onesie” in a generic sense.  All baby bodysuits are “onesies” to me even though I know it’s a registered trademark and should not be used generically.  I still think Gerber will lose this registration at some point.  It might be many years from now, but ONESIE’s days as a registered trademark seem limited to me.

2) The Supreme Court’s B&B Hardware case, which addressed issue preclusion – i.e. does a TTAB finding of likelihood of confusion preclude a subsequent district court from finding otherwise?  (Answer:  It depends.  If the issues raised in the TTAB proceeding are identical to the issues in the district court litigation such that traditional collateral estoppel rules are triggered, then the TTAB decision can preclude a contrary district court decision.)

3) The Supreme Court’s Hana Financial case, which addressed whether or not “tacking” is a question of fact for a jury or if it is a question of law for the court.  (Answer: it is a factual issue which “falls comfortably within the ken of a jury.”)

4) A federal case in Maryland involving campaign signs.  I’ve blogged about campaign signs and trademarks on several occasions (HERE, HERE), so this one interested me for that reason as well as for the case’s analysis of another Supreme Court case – the Lexmark case with addressed standing in false advertising claims.  In this case, the Hershey chocolate company was upset that Mr. Steve Hershey was using the Hershey’s familiar trade dress – brown background, similar block letter typeface, etc.


The court found that Mr. Hershey does not have a fair use or First Amendment right to use the Hershey’s trade dress. Given how many local campaign signs I see in Orlando which play on famous trademarks, this case should serve as a warning.

5) Finally, I covered the In re Tam case, which was a case where the Federal Circuit first affirmed a TTAB decision that denied a band’s trademark application for THE SLANTS as being disparaging to those of Asian descent.  The band is made up of members of Asian descent, and they challenged the denial.  Interestingly, after the Federal Circuit affirmed the refusal in a majority opinion, the opinion went on in a dissent to question the constitutionality of the Trademark Act’s bar to registration of “disparaging” marks.  Five days after that opinion was issued, the Federal Circuit vacated it and ordered that the case will be heard en banc with new briefing on the constitutionality issue.  Oral argument will be held on October 2, which is a couple of days before my firm will be at the Federal Circuit in D.C. to argue an appeal in a patent case.


Supreme Court opinion re. induced patent infringement

The opinion in Commil USA, LLC v. Cisco Systems, Inc. came out today.  The issue was whether or not a good faith belief as to the invalidity of a patent may serve as a defense to an induced infringement claim under 35 U.S.C. 271(b).  The Supreme Court said “no,” because, in part, that would undercut the presumption of validity that comes with an issued patent.  Other reasons were provided as well.

However, the more interesting issue in my view is the final section of the opinion, which seems to be a shot across the bow at “patent trolls” (or “non-practicing entities” (“NPEs”), depending on your sympathies).

The Court stated:

The Court is well aware that an “industry has developed in which firms use patents not as a basis for producing and selling goods but, instead, primarily for obtaining licensing fees.” eBay Inc. v. MercExchange, L. L. C., 547 U. S. 388, 396 (2006) (KENNEDY, J., concurring). Some companies may use patents as a sword to go after defendants for money, even when their claims are frivolous. This tactic is often pursued through demand letters, which “may be sent very broadly and without prior investigation, may assert vague claims of infringement, and may be designed to obtain payments that are based more on the costs of defending litigation than on the merit of the patent claims.” L. Greisman, Prepared Statement of the Federal Trade Commission on Discussion Draft of Patent Demand Letter Legislation before the Subcommittee on Commerce, Manufacturing, and Trade of the House Committee on Energy and Commerce 2 (2014). This behavior can impose a “harmful tax on innovation.” Ibid.


No issue of frivolity has been raised by the parties in this case, nor does it arise on the facts presented to this Court. Nonetheless, it is still necessary and proper to stress that district courts have the authority and responsibility to ensure frivolous cases are dissuaded. If frivolous cases are filed in federal court, it is within the power of the court to sanction attorneys for bringing such suits. Fed. Rule Civ. Proc. 11. It is also within the district court’s discretion to award attorney’s fees to prevailing parties in “exceptional cases.” 35 U. S. C. §285; see also Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U. S. ___, ___–___ (2014) (slip op., at 7–8). These safeguards, combined with the avenues that accused inducers have to obtain rulings on the validity of patents, militate in favor of maintaining the separation expressed throughout the Patent Act between infringement and validity. This dichotomy means that belief in invalidity is no defense to a claim of induced infringement. The judgment of the United States Court of Appeals for the Federal Circuit is vacated, and the case is remanded for further proceedings consistent with this opinion. It is so ordered.


The Court is seemingly reminding litigants, attorneys, and lower courts that the recent Octane Fitness case made it less burdensome to find that a patent case is “exceptional” for purposes of collecting attorney’s fees under 35 U.S.C. 285.  Lower courts now have lots of discretion to determine exceptionality, without the need to meet a specific standard of proof other than that the case “stands out” from others, and, under the “totality of the circumstances,” is an “exceptional” case.

Is the Supreme court suggesting that patent troll/NPE cases might be good candidates for “exceptional” cases in the future?

More commentary here:

Copyright Infringement – The “Activist” Defense?

Like many almost-40-year olds with a perpetual college-aged sense of humor, I enjoy Seth Rogen’s slacker/stoner humor.  When I found out that the stars of personal-favorite Pineapple Express were reuniting for The Interview, I was excited to go see it (or at least wait until it hit my local Redbox).  However, as we all know, North Korea (allegedly) hacked into Sony’s servers and released embarrassing and confidential documents, thus setting off an international debacle worthy of, well, another Rogen/Franco movie.  Depending on whom you believe, the hackers’ warnings initially caused Sony to drop the film’s release, only to have the President of the United States dictator-shame Sony into eventually allowing the movie to be release both on theater screens and via streaming services such as YouTube and Google Play.   The sequel has literally written itself.

Once the movie was available through my Roku, my wife and I rented it on December 27, 2014.  We didn’t care if the movie was good or not, we rented it as a statement.  It was our Amurrican duty.  Fortunately, we enjoyed the movie, and it was worth the 6 bucks to be able to tell our kids and grandkids that “we were there” and even took a picture:


Many others must have liked it (or at least bought into the civic-dutiness of it) as well, because by the end of December, the movie had reportedly brought in $15 million dollars from streaming alone.  That has prompted interesting case studies on how the (alleged) North Korean hack may have changed movie distribution forever.  See:

So that brings me to the point of this post.  I am being facetious regarding the movie’s value as a real statement on North Korea and dictators in general.  This is not a Michael Moore documentary.   It’s not Morgan Spurlock.  This isn’t going to be shown (or read) in classrooms like To Kill a Mockingbird.  It’s a Seth Rogen stoner flick cut from the Trey Parker/Matt Stone Team America:World Police cloth.  Does it have some message about a free press and the con of a dictatorship?  Yes.

But is it worthy of making 100,000 copies on DVD and USB drives to airdrop into North Korea?   No.  Yet that is what the Human Rights Foundation proposes to do.  This group has apparently been doing this for years with other literature and movies, including the aforementioned Team America, Titanic and Braveheart.  See:

It is not clear from that group’s webpage if the money is used to legally purchase the movies that are dropped (along with DVD players) into North Korea, but the AP article states that the group, which is based in the U.S., is putting The Interview on DVD and USB flash drives with Korean subtitles.

Here’s where the law-stuff comes in:  Human Rights Foundation is therefore making a derivative work of The Interview.  Unless Sony has authorized these 100,000 copies, they are likely infringing derivative works.  There is no “activist” or “humanitarian” defense, and while there could be some stretched fair use arguments, this just seems like basic copyright infringement.  Of course, every plaintiff must pick his/her/its battles.  While Sony would be foolish to publicly denounce this seemingly well-intended act, I would not be surprised if Human Rights Foundation is contacted before the Great Balloon Release gets underway.

But even if it were not copyright infringement, would the average isolated North Korean who is hit on the head with a descending DVD player and copy of The Interview really understand the context of Seth Rogen smuggling poison in his anus to eventually try and kill Kim Jong Un? Would they understand James Franco’s mild Stockholm Syndrome/he-really-gets-me bro-fest with the Supreme Leader?  I don’t know.  Perhaps if the movies contain some back-story and context, then movies like Team America and The Interview could serve some nation-(un)building purpose, and that sort of context and additional material could be just the thing to bolster a fair use argument.  However, on the surface, it appears that the Human Rights Foundation’s plan is just setting itself up for a giant copyright infringement case given its U.S. presence and stated intent to make 100,000 copies.  Should Sony be entitled to statutory damages, willful copyright infringement can subject the liable defendant to up to $150,000.  This is a per-work award, so we are not talking about 100,000 x $150,000, but it’s still a decent amount.  (Sony could also elect actual damages instead of statutory damages, but if Human Rights Foundation is only distributing the copies overseas into North Korea, I imagine that actual damages will be virtually $0.)

Ultimately, the Sony hack, the unorthodox release, and the subsequent dialog that has come about have given The Interview more stature than it would have otherwise achieved had it been simply released as any other Christmas-day film, and I look forward to seeing the ongoing ripple effects.

Taste Infringement?

I used to love the Coke Zero commercials that had the “regular Coke” workers complaining that the Coke Zero creators committed “taste infringement” due to the fact that Coke Zero tastes so much like regular Coke.  Well, as Eric Goldman writes, a pizza restaurant has tried to bring a “taste infringement” claim:



Don’t Forget Domain Names When Purchasing a Sports Team

This one is kind of funny.  The Orlando Predators, which is an Arena Football team, was recently sold.  Apparently the sale did not include the domain name “” because the Orlando Sentinel is reporting that the domain is now redirecting to…drumroll…:



Yep – the Florida Department of Law Enforcement’s website for “predators.”  Well-played former owner, well-played.

See article HERE.

As the article states, an ICANN UDRP proceeding has been initiated.  I didn’t see it on WIPO’s or NAF’s websites this morning, but I wonder if the UDRP proceeding will even be successful.  If the sale contracts did not include the domain name, the only way that a UDRP proceeding would result in transferring the domain is if the UDRP Panel determines that the current owner registered AND used the domain in bad faith.  My guess is that the domain was registered prior to the sale for the purpose of promoting the Orlando Predators football team.  No bad faith there.  And, while it was used to promote the team, there’s probably no bad faith there, either.

So, will the act of redirecting the domain name to a website that really does contain information about Orland0-area predators be considered bad faith?  The UDRP is not designed to handle trademark infringement, just cybersquatting.  So, to the extent that the prior owner did not sell the domain and was not engaged in bad faith when he registered and used it, then the UDRP may be powerless, and this will become either a trademark infringement lawsuit or a contractual issue depending on the sale documents.  For now, redirecting to the FDLE Sexual Predators site seems like a safe move.  (Of course, there’s an argument that the redirection to a sexual predator site “dilutes” the Predators brand via tarnishment theories, but I doubt the Orlando Predators brand has attained the level of fame necessary for a federal dilution claim.  Maybe a state dilution claim though.)

This could be a very interesting proceeding, presuming it isn’t worked out between the parties.

For now, go to for info on the football team (and not to create your own database of Orlando-area sexual predators).


SuperLawyers – 2014 Rising Stars

I’m proud to announce that for the third year in a row, I’ve been selected as a Rising Star:


Kevin W. Wimberly has been named to the Florida Rising Stars list as one of the top up-and-coming attorneys in Florida for 2014 in the field of Intellectual Property.  Each year, no more than 2.5 percent of the lawyers in the state receive this honor.  The selection for this respected list is made by the research team at Super Lawyers.

Super Lawyers, a Thomson Reuters business, is a rating service of outstanding lawyers from more than 70 practice areas who have attained a high degree of peer recognition and professional achievement.  The annual selections are made using a rigorous multi-phased process that includes a statewide survey of lawyers, and independent research evaluation of candidates, and peer reviews by practice area.

The Rising Stars lists are published nationwide in Super Lawyers magazine and in leading city and regional magazines across the country.


Congratulations are also in order for others in my firm:  Jim Beusse and Terry Sanks were named Super Lawyers in the 2014 Florida Edition of Super Lawyers Magazine in the field of Intellectual Property law, and Amber Davis was also listed as a Rising Star in the field of Intellectual Property law.

The Party Crashing Trademark Attorneys

As blogged HERE and HERE, Clown Shoes Beer changed the name of its Vampire Slayer beer due to a trademark dispute.  Rather than going gentle into the good beer-fueled night, Clown Shoes raged on and mocked the dispute by writing an article about the issue and why they handled it the way they did.  (The article is no longer on the Clown Shoes website, but an archive is HERE.) To recap, Clown Shoes handled the issue by changing the name of the beer to Undead Party Crasher (which is a sly comment on the fact that Clown Shoes’ original Vampire Slayer beer was supposed to be a celebration of Clown Shoes’ second anniversary).  Oh, and they also mocked my profession in a pretty hilarious way. So, my final update on this issue is simply this:  My local Total Wine has just about cleared its inventory of Vampire Slayer, and they have the new Undead Party Crasher in stock.  Of course, I bought a bunch for my colleagues. While I applaud the fun that Clown Shoes had with this issue, I have to disagree with Clown Shoes by answering the question “do we need the undead and trademark attorneys” with a resounding, “YES!” (as opposed to “No, Die Monsters, Die”)

“Die, monsters, die!”


Panorama shot. Oooooh. Fancy.