Hashtagging with caution, the equitable defense of laches, and more in this issue of IP Buzz

3 min

Venable's Trademark Group Recognized Among DC's Elite by WTR 1000 for Sixth Consecutive Year

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Hashtag with Caution - Or You May Get #Sued

Hashtags are more popular than ever on social media sites. They are used frequently on Instagram and Twitter as part of marketing campaigns and to facilitate searches. It is not uncommon for gamers and video game makers to use hashtags in their social media posts. For instance, #VR, #gamedev, and adding a # to a video game name to keep track of a post are all common usages. The popularity of hashtags begs the question – are hashtags protectable trademarks or part of the public domain?

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Perception Is Key: Federal Circuit Holding May Allow SaaS Trademark Registrants More Class Registration Options

On December 12, 2016, the Federal Circuit vacated and remanded a Trademark Trial and Appeal Board ruling concerning the registrability of software-as-a-service (SaaS) trademarks in In re JobDiva, Inc., No. 15-1960 (Fed. Cir. Dec. 12, 2016). As a result of this holding, a SaaS trademark registrant may be able to increase the scope of its federal protection by registering its mark in additional trademark classes without having to demonstrate evidence independent of its software services.

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U.S. Supreme Court Denies Certiorari on ITC Ban Based on Trade Secret Misappropriation

A Chinese tire manufacturer, Sino Legend, was found to have misappropriated trade secrets—in China—from another Chinese company. The U.S. International Trade Commission (ITC), in turn, banned Sino Legend's tires from the United States for 10 years. On January 9, 2017, the U.S. Supreme Court denied Sino Legend's Petition for a Writ of Certiorari on whether the ITC had jurisdiction over the misappropriation and use of trade secrets in China.

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IPR Estoppel Applies Only to Grounds Instituted

Inter Partes Review (IPR) is beneficial because an accused infringer can invalidate a patent (35 U.S.C. §§ 102-103) before the Patent Trial and Appeal Board (PTAB) on a lower evidentiary standard, shorter timeline, and reduced cost as compared to a district court litigation. To balance these gains, the accused infringer is supposed to be estopped under 35 U.S.C. § 315(e)(2) from asserting certain prior art in the district court litigation. Recent cases, however, have narrowly interpreted estoppel such that it applies only to prior art instituted by the PTAB and on which the PTAB issues its final written decision.

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The Equitable Defense of Laches: SCA Hygiene Products v. First Quality Baby Products

The equitable defense of laches has been a useful tool for defendants in intellectual property litigation for over a hundred years, but a recent case in the U.S. Supreme Court could potentially remove this defense in patent infringement cases.

In SCA Hygiene Products AB v. First Quality Baby Products LLC, the Supreme Court must decide whether the doctrine of laches bars patent infringement claims filed within the six-year statutory limitation period established under 35 U.S.C. § 286 of the Patent Act.

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Digital Entertainment World (DEW)

February 1-2, 2017 | Marina Del Rey Marriott, California

Venable is a DEW sponsor, and two partners will moderate a panel discussion. Be sure to attend Nicholas DePalma's panel, "How Augmented Reality & Geolocation Are Shaping the Future of Games," on February 2 from 3:30 p.m. to 4:00 p.m., and Tamany Bentz's panel directly afterward, on "Derivative Works and User-Generated Content."