US Appeals Court reminder: threats of litigation made during TTAB settlement discussions may support jurisdiction for declaratory judgment

The Court of Appeals for the Ninth Circuit held that jurisdictionwas proper in a declaratory judgment action brought to establishtrade mark non-infringement, when the plaintiff had a reasonableapprehension of litigation based on threatening statements madeduring the course of discussions to settle disputes pendingbefore the Trademark Trial and Appeal Board (TTAB) that wereotherwise subject to Federal Rule of Evidence 408, which typicallymakes statements made during settlement inadmissible for establishingliability but not for other purposes.     

Evaluating the Role of Brown v. Board of Education in School Equalization, Desegregation, and the Income of African Americans

The public profile of the Brown v. Board of Education decisiontends to overshadow the well-established fact that racial disparitiesin school resources in the South began narrowing 20 years beforethe Brown decision and that school desegregation did not beginon a large scale in the Deep South until ten years after theBrown decision. We instead view Brown as a highly visible markerof public policy’s mid-century reversal on matters ofrace. When we examine the labor market outcomes of male workersin 1990, we find that southern-born blacks who would have finishedtheir schooling just before effective desegregation occurredin the South fared poorly compared to southern-born blacks whofollowed behind them in school by just a few years, relativeto northern-born blacks in same age cohorts.     

Diversity and Discontent: The Relationship Between School Desegregation and Perceptions of Racial Justice

A number of recent studies have explored the consequences ofinterracial peer effects on the academic and social performanceof minority students. This article contributes to that discussion,focusing, however, on perceptions rather than behaviors. Theanalysis suggests that exposure to white peers is associatedwith declining perceptions of racial justice among black andLatino high school students. While cautioning against causalinterpretations of this finding, the article suggests that theintegrationist aims of Brown v. Board of Education will notbe satisfied without more thoughtful and vigorous desegregationefforts.     

NEXT STEPS IN THE EVOLUTION OF ANTITRUST LAW: WHAT TO EXPECT FROM THE ROBERTS COURT

Under the leadership of Chief Justice John G. Roberts, Jr.,the Supreme Court has demonstrated a willingness to cast asidethe Court's prior antitrust decisions. The qualified per serule applicable to tying surely will not survive much longer,but what else might be in store is more speculative. This essayidentifies four decisions relating to competitor collaborationin which the Court's prior application of the per se rule doesnot comport with its modern decisions. In two of the cases,the conduct likely would be found lawful today; while in theother two, the conduct most likely still would be condemnedbut only after an abbreviated application of the rule of reason.This essay also identifies three legal doctrines ready for retirement.They are the absolute requirement of market delineation as apredicate for merger analysis, the outmoded approach to marketdelineation of Brown Shoe, and the unhelpful formulation ofthe monopolization offense in Grinnell.     

Gardner on the Philosophy of Criminal Law

Offences and Defences is an outstanding collection of elevenof John Gardner's previously published papers in the philosophyof criminal law. I briefly examine his views on five centralissues: his claims about basic responsibility and whether itshould be construed as relational; his positions on agent neutrality;his arguments about whether moral and criminal wrongs are typicallystrict; his thoughts about the structure of defences, and, finally,what his account of rape reveals about the content of the harmprinciple.     

竞争法体系下商标立法模式探讨

从宏观视阈看,商标法属于竞争法的体系范畴,与反不正当竞争法一样都体现了政府对微观经济的干预。法律保护民事主体的合法民事权益,商标权益在内容上涵盖商标专用权与商标利益,从维护我国注册制的权威以及有利于制度的可操作性而言,对于权利和利益在法律保护的路径上应有所区别。将商标权益区分为商标专用权与商标利益分别由《商标法》和《反不正当竞争法》保护,使《商标法》作为民法的特别法,与其他民事法律,包括《民法通则》、《侵权责任法》等形成较强的逻辑自洽性,同时,也使商标法作为反不正当竞争法的特别法,与反不正当竞争法在制止利用商标而进行的不正当竞争方面彼此分工,有效协调。     

Freedom of Speech in Union Representation Elections: Employer Campaigning and Employee Response

In 1977 the National Labor Relations Board announced that it would no longer probe the truth or falsity of statements made in the course of representation campaigns. This decision, Shopping Kart Ford Market, overruled longstanding Board policy and was itself overruled the following year. Now, in August of 1982, the Board has again made a commitment to nonprobing and has reinstated the Shopping Kart standard (Midland National Life Insurance Co.,___ N.L.R.B.____, 110 L.R.R.M. 1489 (1982)). Such seesawing of Board positions suggests the difficulty of attempting to protect freedom of speech while simultaneously supporting other national labor policy goals, including employee freedom of choice and the integrity of representation elections. Critical to determining the appropriate standard for campaign speech is an understanding of how employees respond to misrepresentations or coercion in an employer's campaign rhetoric. This paper investigates the relationship between employer campaigning and employee response. Both employer and labor organization will have incentives to prevent coercive or misrepresentative speech at certain levels of violation severity. But in an intermediate range of speech in which that is not the case, the Board has a unique role to play in protecting the rights of individual employees and the public interest in the integrity of elections.     

把握公平与效率的双重价值取向——论我国商标权取得制度的完善

商标权取得制度是商标法的核心,也是解决商标争议的根本依据。我国商标法较多地借鉴了大陆法系国家的商标法,并且具有浓厚的商标行政管理法特色,在商标权取得制度上偏重于商标注册和管理的效率性,较少体现公平,客观上使得商标抢注成风、不公平竞争泛滥、问题商标成灾,最终导致了整体效率的丧失。美国兰哈姆法坚持公平优先,兼顾效率,使两者有机结合、相辅相成,其商标权取得制度建立在使用主义的基础上,并科学地引入了在先申请主义的内容,使其制度设计不断优化,为我国商标法的修改和完善提供了可资借鉴的范本。     

US Patent and Trademark Office refuses registration of flavour trade mark

In a case of first impression, the Trademark Trial and AppealBoard of the US Patent and Trademark Office has held that theflavour orange is not registrable for use with quick-dissolvingantidepressant tablets and pills.     

The USPTO economics research agenda

This article outlines the creation of the Chief Economist’s Office at the US Patent and Trademark Office in March, 2010, and the publication of the Office’s first economics research agenda. In describing the elements of the research agenda—the role of intellectual property (IP) in economic growth, performance, and employment; IP and technology standards; the economics of trademarks; the economics of United States Patent and Trademark Office initiatives; and IP and the markets for technology—we both review the state of knowledge and outline ongoing initiatives and future possibilities. The article also suggests opportunities for ongoing public–private research collaboration on these issues, particularly between government and academic researchers.     

重构我国商标注册实质条件

商标注册的实质条件是商标法最重要的制度之一.我国商标注册实质条件的相关规定存在严重缺陷:过于分散,缺乏体系性;条款众多,缺乏逻辑性;用语不精炼,缺乏准确性;不同条款之间存在内在的矛盾,缺乏合理性等.然而,商标法修订草案未采取措施弥补这些缺陷.《商标法》第三次修改应正视这些问题,重构我国商标注册的实质条件.     

新《商标法》第四条的适用研究

2019年11月1日实施的新《商标法》第4条第1款新增规定:"不以使用为目的的恶意商标注册申请,应当予以驳回"。第4条修改的立法意图主要在于规制商标的恶意申请注册行为,而非仅仅适用于商标囤积行为。否则,该规范的立法价值将大打折扣,无法充分实现该法第4条规定的立法目标。新《商标法》第4条适用的难点在于"恶意"和"不以使用为目的"两个要件的认定及两者之间的关系。"恶意"是指申请人或者代理机构违反真实使用意图,明知或应知其申请商标的行为会造成在先权利人损害而希望或放任损害发生的主观状态。"不以使用为目的"是指商标申请人以攫取不当得利,或者以商标作为竞争工具或掠夺侵占公共资源为目的的行为,其共性均为申请商标不是为了使用。对该法第4条新增规定的适用,"不以使用为目的"是作为"恶意"的定语或者修饰语,两者并非同等要件,无需同时满足;申请人具有"恶意"才是商标申请予以驳回的主要条件。恶意即为违背诚实信用原则,构成商标禁止注册的绝对事由。第4条的修改也吻合了我国新《商标法》为根治商标恶意注册,实现规制关口前移的制度设计安排。     

中国经济体制转型与《商标法》的第三次修改

我国《商标法》的第三次修改工作已全面展开。这次修改以中国经济从高度集中的计划经济体制向社会主义市场经济体制的转型为时代大背景,因此,我们应站在战略全局的高度,大刀阔斧、锐意改革。具体而言,应当涤除计划经济的理念和制度,删除《商标法》中"加强商标管理"的立法宗旨,将《商标法》调整对象从"注册商标法律关系"回归到"商标法律关系",重构《商标法》中的商标利益平衡机制,从而推动我国《商标法》的现代化进程。     

Lewin on Trusts

Lewin on Trusts has long been an important resource for lawyersengaged in advising or litigating about trusts. Having beenresurrected in 2000 after a gap of 36 years by John Mowbrayand his team with the 17th edition, it now emerges in its 18thedition this year in a yet more comprehensive and expanded form.As anyone who has written any part of any legal text will readilybe able to discern, a very great deal of time and attentionhas clearly been devoted to it by its authors for which manyof us with less energy and application can only be grateful. As the authors’ preface to the new edition makes clear,they have not merely brought the new edition up to date withlegal developments over the last 8 years, substantial work thougheven that has     

Dilution in the US, Europe, and beyond: international obligations and basic definitions

Legal context. The efficacy of trade mark dilution as a causeof action has been cast into doubt by the Supreme Court's actualdilution standard. However, Congress is currently consideringthe Trademark Dilution Revision Act 2005, removing the actualdilution standard and resolving other difficulties under thepresent Lanham Act 43(c). This should breathe new life intoblurring and tarnishment. It should also be recalled that theEU already has strong laws against dilution and unfair advantage. Key points. This article identifies international dilution obligationsin order to determine (in Part II) whether the US and EU arecompliant. It identifies problems under the present US dilutionlaw and the solutions offered by the Revision Act. It comparesthe US proposals with EU dilution protection to determiningwhat the two jurisdictions have to learn from each other. Thistheme will be continued in the next part of this article, whichfocuses specifically on blurring/detriment to distinctive character. Practical significance. The introduction of new US legislationwill make successful dilution claims easier and will increasethe frequency of actions under 43(c). It is vital that trademark lawyers are familiar with the changes. At the same time,it should be remembered that many of the same outcomes can beachieved under the current European legislative provisions.To the extent that the jurisdictions do not live up to theirinternational dilution obligations, there is scope for proprietorsto lobby for even stronger protection.     

BioChem Pharma wins patent dispute over 3TC

In December 2000, the US Board of Patent Appeals and Interferences, a branch of the US Patent and Trademark Office (USPTO), upheld BioChem Pharma's claim to hold the patent on 3TC.     

A clash of appeals over patentability

In Duns Licensing, the Technical Board of Appeal (TBA) of theEPO has delivered an opinion that expressly criticizes the decisionof the Court of Appeal for England and Wales in Macrossan/Aerotel[2007] RPC 7.     

对中外专利商标司法救济模式的调查分析和比较研究(下)

基于对我国的行政行为效力理论、诉讼机制、法院组织机构以及内部审理组织设置等因素的现状的分析,目前契合于我国制度背景的司法救济模式只能是在坚持固有的案件性质和法院审理组织之间一一对应的前提下,由行政审判庭审理专利复审委和商标评审委为被告的行政案件。     

Jerome Gilson

Distinguished US lawyer Jerome Gilson has practised trade markand unfair competition law for more than 40 years. He is bestknown in the US and internationally as the original author ofTrademark Protection and Practice (LexisNexis/Matthew Bender),which was renamed Gilson on Trademarks in 2007. How did you first become interested in IP? Five years into general practice, I sent a Time article about