Navigating fashion law, Bank of China dodging discovery, and more in the March 2016 issue of IP Buzz

3 min

Navigating Fashion Law: Protecting Client Brands and Following Industry Trends

Author: Marcella Ballard

As brands have increased their media presence over time, consumers have become more brand-conscious and more aware of purchasing "name" brand merchandise. The Internet and social media have created a new world for advertising and distribution. Such developments have led to the emergence of new legal intricacies that have helped develop "fashion law" into its own niche practice area. Click here to continuing reading.

Online Enforcement Update: Bank of China Continuing to Dodge Discovery Despite Contempt Finding and Daily Fines

Authors: Marcella Ballard and Samantha Rothaus

Judge Richard Sullivan of the U.S. District Court for the Southern District of New York is continuing to press the Bank of China to comply with third party discovery related to the accounts of online sellers in an alleged counterfeiting scheme brought by several luxury apparel brands in the pending case Gucci America, Inc. et al. v. Li et al. This is a promising development for trademark holders who have historically struggled to enforce their rights against counterfeiters who hide their ill-gotten assets in foreign banks, particularly in China. Click here to learn more about the continuing difficulties of holding foreign entities accountable under U.S. law.

PTAB Continues to Evolve the Section 325(d)-fense

Author: Megan Woodworth

In two separate decisions in the past month, the PTAB denied institution of an Inter Partes Review (IPR) Petition based on 35 U.S.C. § 325(d). The permissive language in the statute gives PTAB panels discretion to deny petitions on the basis that the grounds for challenging patentability were previously before the Office. Recent decisions suggest that a Petitioner is best-served by being upfront with the Board about any overlap with previous issues considered by the Patent Office in its Petition. Click here to continuing reading.

Inter Partes Review Additional Discovery: When, What, and How Much

Authors: Aubrey Haddach and Ralph A. Dengler

In light of legislative history and statutory deadlines, the Board is conservative in authorizing additional discovery in IPR proceedings and applies an "interests of justice" standard when deciding such motions. Click here to learn more about the five factors the Board uses to determine if additional discovery in an IPR is "necessary in the interest of justice" as outlined in the Garmin case.

Supreme Court Declines Review in Amazon Search Results Trademark Case

Authors: Marcella Ballard and Gianna E. Cricco-Lizza

On February 29, 2016, the Supreme Court declined to review a Ninth Circuit decision holding that there was no likelihood of confusion, and therefore no trademark infringement, where offered consumers searching for products under a federally registered trademark results for other watches. Click here to read more about the underlying decision and repercussions for trademark law.