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JESUS JEANS v. JESUS SURFED: THIS TIME, IT’S BIBLICAL!

It appears Jesus Jeans SRL, the controversial Italian fashion company, has cast the first stone against Michael Julius Anton, the man behind the ‘Jesus Surfed’ fashion label, in its latest attempt to stop anyone from registering the name ‘Jesus’ as a trademark for clothing. It seems most have ‘turned the other cheek’ and backed down – but not Mr. Anton.

Mr. Anton filed a federal trademark application to register JESUS SURFED in May 2012 for shirts, t-shirts, hats and bandanas (Application No: 85/638044). Jesus Jeans then filed an Opposition to the application with the Trademark Trial and Appeal Board (TTAB) in February 2013 arguing that the JESUS SURFED mark would, if registered, cause confusion with its own registered mark, JESUS (Registration No: 3232057) which covers a variety of clothing items. Jesus Jeans argued its rights in the mark date back to 1999 and asserted that it had successfully opposed similar applications for ‘Jesus Couture’, ‘Jesus Image’, ‘Sweet Jesus’, ‘Jesus Loves Jeans’, ‘Jesus Chic’, ‘Jesus First’, and ‘Jesus Saves’, to name but a few. Continue reading

Off to the Races – The Race to the Patent Office, That Is.

This seemed like an appropriate topic to kick off Derby Week in advance of this Saturday’s big event!

On your mark, get set, go…it’s a “race to the patent office.” The American Invents Act (AIA), signed in September of 2011, historically changed the system for filing U.S. patents. On March 16, 2013, the U.S. system changed from a “First-to-Invent” system to a “First-Inventor-to-File” system. The change in law was an effort by Congress to harmonize the United States system with the rest of the countries of the world, which have similar “first-to-file” patent laws. All U.S. patent applications containing one or more claims filed on or after March 16, 2013 will be effected.

Under the new law, inventors may be penalized for waiting to long to file applications because they can no longer rely on antedating prior art references with an earlier filing date. In addition, Interference proceedings, which occurred when two inventors claimed ownership of this same idea, are now eliminated and replaced with derivation proceedings.

Patent applications are now subject to a much wider scope of prior art. For example, “public use” or “on sale” activities were previously only prior art when they occurred inside of the U.S. Now under the AIA, the geographic limitations have been removed. Thus, these activities occurring anywhere in the world may constitute prior art.

Despite this broadening of available prior art, the AIA does call for some exceptions. Notably, a one-year grace period for filing a patent application after a public disclosure still exists; as long as the public disclosure was made by the inventor or someone who obtained the disclosed subject matter (directly or indirectly) from the inventor.

In the lead, are inventors and entities that proactively take steps to file applications promptly.

See: http://www.forbes.com/sites/johnvillasenor/2013/03/11/march-16-2013-america-transitions-to-a-first-inventor-to-file-patent-system/

SEEING RED

The Second Circuit’s March 8, 2013 decision has swank shoe designer Christian Louboutin (and likely the rest of us) seeing RED.

Back in September, the Second Circuit “kicked” out the District Court’s ruling that a single color could never serve as a trademark in the fashion industry, holding that Louboutin’s red lacquered outsole has acquired limited “secondary meaning”, but still stopped the litigious Louboutin in his tracks, issuing a Mandate providing:

“Pursuant to 15 U.S.C. § 1119 the Director of the United States Patent and Trade [sic] Office shall make appropriate entry upon that Office’s records to reflect that U.S. Trademark Registration No. 3,361,597, held by Christian Louboutin and dated January 1, 2008, is limited to a red lacquered outsole on footwear that contrasts with the color of the adjoining (“upper”) portion of the shoe.”

See September 5, 2012 Opinion HERE

In accordance with the Second Circuit’s mandate, the USPTO proposed the following amended description of the mark for U.S. Trademark Reg. No. 3,361,597:

“The color(s) red is/are claimed as a feature of the mark. The mark consists of a lacquered red outsole on footwear that contrasts with the color of the adjoining remaining portion of the shoe (known as the ‘upper’). The dotted lined are not part of the mark but are intended only to show placement of the mark.”

Seeking to “heel his soles”, Christian Louboutin asked the USPTO to adopt alternative language, insisting that the Court of Appeals intended to only exclude red monochrome shoes. Mr. Louboutin proposed the following amendment:

“The color(s) red is/are claimed as a feature of the mark. The mark consists of a lacquered red outsole on footwear that contrasts with the color of any visible portions of the shoe. The dotted lined are not part of the mark but are intended only to show placement of the mark.”

The USPTO refused to “step on the court’s toes”, indicating that the USPTO does not have discretion to deviate from the terms of a court’s §1119 mandate.

Thereafter, Louboutin “tap, tap, tapped” his way back into court requesting that the Second Circuit modify its mandate. The court “booted” Louboutin’s request, citing authority which would require the court to recall the mandate only under “exceptional circumstances”. The court concluded that, “Louboutin has made no showing that any of the factors favor recall and modification of the mandate.”

See March 8, 2013 Opinion HERE

Redefines the term 'high heels' [009 of 365], a photo by KaiChanVong on Flickr,  used under a Creative Commons Attribution-ShareAlike license httpcreativecommons.orglicensesby-sa2.0

This doesn’t mean that the red sole is going to become “as common as an old shoe” but it does mean that we may see an influx of red-soled red shoes given that “use of red lacquer on the outsole of a red shoe of the same color is not a use” of Louboutin’s mark. It remains to be seen if Louboutin will take this “in stride” or attempt to broaden its rights to cover a red sole that contrasts with the color of “any visible portions of the shoe”.

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