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Year End 2023 IP Newsletter

Court schools trademark holder: Nearly identical trademark doesn’t infringe
Judicial findings regarding trademark infringement tend to turn largely on the similarity — or dissimilarity — of the two marks at issue. But significant similarity is no guarantee that a trademark holder will prevail in court. This article looks at a decision from the U.S. Court of Appeals for the Tenth Circuit that upheld a lower court’s noninfringement judgment in a dispute involving two almost identical education-related marks. A short sidebar covers why the court rejected a proposed presumption of confusion.
Source: M Welles & Assocs., Inc. v. Edwell, Inc., No. 22-1248 (10th Cir. May 31, 2023).

Court rejects overly broad reissue patent application
Regrets — we’ve all had a few. A patentee, for example, might regret not obtaining broader patent protection. A reissue patent could come to the rescue, but only if certain requirements are met. One patentee recently learned this lesson the hard way. This article summarizes the patentee’s attempt to broaden its patent through a patent reissue application.
Source: In re: Float’N’Grill LLC, No. 22-1438 (Fed. Cir. July 12, 2023).

Paying damages under both copyright and trademark laws
Two furniture makers landed in court after one copied the other’s designs. To the chagrin of the infringer, the copying provided the basis, not only for copyright infringement damages, but also for trade dress infringement damages that were six times as much. This article covers the reasons the court found to assess infringement damages based on both trademark and copyright laws.
Source: Jason Scott Collection, Inc. v. Trendily Furniture, LLC, No. 21-16978 (9th Cir. May 30, 2023).

Does commercial success affect an invention’s obviousness?
Federal patent law prohibits the patenting of inventions that are obvious. While prior art such as earlier patents are often cited as evidence of obviousness, so-called “secondary-consideration” evidence can sometimes support a finding of nonobviousness even in the face of prior art — but not always. This article reviews a recent ruling by the U.S. Court of Appeals for the Federal Circuit that illustrates the role of secondary considerations.
Source: Yita LLC v. MacNeil IP LLC, No. 22-1373 (Fed. Cir. June 6, 2023).

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