Federal Circuit Clarifies Secondary Meaning And Infringement Tests For Trade Dress
On October 30, 2018, the Court of Appeals for the Federal Circuit issued an opinion vacating an earlier decision from the International Trade Commission (“ITC”) regarding a shoe company’s (the “Company”) trademark in its All Star shoes trade dress. Converse, Inc. v. Int’l Trade Comm’n, —F.3d—, (Fed. Cir. October 20, 2018). The Court held that the presumption of secondary meaning that applies to registered marks does not apply before the registration. The Court also clarified the considerations to be assessed in determining whether a mark has acquired secondary meaning.
ITC Administrative Law Judge Rules That Staff Participation Can Avoid Estoppel Effect Of Respondent’s Earlier IPR
On Tuesday, October 2, 2018, the International Trade Commission (ITC) issued the public version of an initial determination issued by Administrative Law Judge (ALJ) Clark S. Cheney. In re Certain Magnetic Tape Cartridges and Components Thereof, Investigation No. 337-TA-1058,—Fed. Reg.— (October 2, 2018). The ALJ applied prior art to find asserted patent claims invalid, even though the respondents may have been estopped by statute from relying on that prior art.
ITC ALJ Permits Evidence Of Post-Complaint Domestic Industry
On April 5, 2018, the United States International Trade Commission (ITC) published the public version of an earlier order by an ITC administrative law judge (ALJ) denying a motion in limine seeking to exclude evidence of the development of a domestic industry after the filing of the complaint. In re Certain Digital Cameras, Software, and Components Thereof, Inv. No. 337-TA-1059, Order No. 52. The ALJ ruled that, while the filing date “may be the bench mark,” there is “no rigid rule that the Commission must consider only at [sic] the investments in a domestic industry at the time of the filing of the complaint.”