Can trademarked goods be bought, altered, and then resold under the same trademark? According to the U.S. Supreme Court’s decision in Champion Spark Plug Co. v. Sanders, the answer is yes, with important conditions.

The Court held that genuine trademarked goods may be repaired or reconditioned and resold without removing the original trademark, provided there is full and clear disclosure. Specifically, the goods must be plainly marked as “Repaired” or “Used,” containers and advertising must clearly communicate that the products are second-hand or reconditioned, and the reseller must be identified as the party that performed the repairs or alterations.

While trademark owners can, and should, vigorously protect their registered marks, Champion Spark Plug remains a key case for resellers to keep in their back pocket, affirming that truthful, non-deceptive resale of altered goods is permissible under trademark law.

Jason Sanders, the founder of Sanders IP, is the grandson of C.C. “Sparkplug” Sanders who was the petitioner in this classic trademark case.

The recent global fashion trend surrounding Labubus (a plush, cartoon-styled animal that is used as an accessory) highlights how rapidly evolving styles are exposing gaps in traditional IP protection. Trademark infringement typically follows a predictable sequence: identifying the infringing product, sending cease-and-desist letters, initiating USPTO proceedings, or pursuing litigation. Each of these steps takes time.

But in the era of fast fashion and viral micro-trends, speed is everything. By the time a brand uncovers infringement, the copycat has often sold through its inventory and moved on to the next trend. This makes it increasingly difficult for brands to protect their products from trademark misuse or outright copying.

As viral trends continue to accelerate, the trademark system will face growing pressure to adapt. How IP law evolves to safeguard fast-moving, high-visibility products will be an important development to watch—especially as these cases rise in frequency and commercial impact.

Eminem has initiated legal proceedings against a mom-and-pop shop in Australia for their use of their mark SWIM SHADY for beach umbrellas. Eminem, also known by his alter ego “Slim Shady,” has a well-established reputation for aggressively enforcing his trademark and copyright rights. Though trademark policing is necessary, this dispute raises a key question: Is Eminem overreaching by targeting a small family business selling goods unrelated to his brand, or is he simply safeguarding the integrity of his mark?

Could a reputation for overzealous enforcement damage his public image, or will it ultimately strengthen the distinctiveness of his SLIM SHADY brand? Given that the small business owners have chosen to defend their right to use SWIM SHADY, the outcome of this case will be one to watch.

More here.

Trader Joe’s trademark claims against it’s union were dismissed in its entirety. The judge didn’t take too kindly to the Trader Joe’s complaint finding “it is simply not plausible to imagine a reasonable consumer” would mistakenly believe they were buying Trader Joe’s products when shopping on the unions webpage. We disagree. Reading between the lines, it appears the judge is more worried about protecting unions than protecting trademark rights. It’ll be interesting to see what happens on appeal. Stay tuned.

Jason Sanders was quoted in this article in the Wall Street Journal about the Utah Cookie Wars and discussing two of his passions: cookies and IP law. Sanders IP Law has been assisting Dirty Dough in the Utah Cookie War saga. You can read more here and here.

It's been a tough go recently for Samsung in the patent space.  Here are some losses in the first half of 2018:

• Papst Licensing v. Samsung - November 2018 - USA - $5.9 Million for infringing patents covering data transfers that occur in smartphones and tablets.

• Apple v. Samsung - May 2018 - USA - $528 Million for infringing Apple's smartphones.  This case has been well covered.

• KAIST IP v. Samsung - June 2018 - USA - $400 Million for infringing a Korean University's FinFet patents. A FinFet is a small transistor commonly used in smart phones.

• Rembrandt v. Samsung - March 2018 - USA - $11.1 Million awarded to Rembrandt. 

• Huawei v. Samsung - January 2018 - China - Injunction from selling products in China for infringing a 4G standard essential patent.  A California court has gotten involved, stating that Huawei can't block Samsung's production in China.  It will be interesting to see how the Californian court order plays out in China.  There are related cases in various jurisdictions with the same or similar patents.  This one probably won't die anytime soon. 

There are many other pending patent cases that may conclude soon and the results could be added to this list. If we have missed any, let us know in the comments. 

It looks like a design application can satisfy both enablement and definiteness with a single drawing.  I know, you were on the edge of your seat about this one.  Yet, it is a significant case for what is sufficient for a design application.  in In Re Maatita, The Federal Circuit found: "[T]he fact that shoe bottoms can have three-dimensional aspects does not change the fact that their ornamental design is capable of being disclosed and judged from a two-dimensional plan- or planar-view perspective – and that Maatita’s two-dimensional drawing clearly demonstrates the perspective from which the shoe bottom should be viewed." Some interesting commentary can be found here.

In In re Facebook (Fed. Cir. 2018), the Examiner rejected the claims as anticipated.  These claims require "image elements to be contiguous" based on a rule during a reshuffle event.  The prior art (Perrodin), on the other hand, does not require contiguity "in all cases."  In other words, a reshuffle might happen to result in contiguity but may not.  The Examiner and the PTAB both felt this was sufficient for anticipation (obviousness was not at issue here, but likely will be the next round!).  The Federal Circuit reversed: "Because Perrodin’s algorithm did not require contiguity in response to resizing or rearranging in all cases, but rather left open the possibility that cells would be left unfilled, Perrodin could not have disclosed the 'rule requiring the image elements to be contiguous'" as recited in the claims.  If the claims require an element, the prior art must also in order to anticipate.

While written largely from a small inventor perspective, this Forbes article, by Mr. Keys, asks an interesting and relevant question: Does your patent attorney have your best interest in mind? This is a relevant ask for inventors, startups, universities, and large companies. It shouldn’t come as a surprise that attorneys often have their own financial interests in mind. This can be especially true at a firm where billable hours and collections determine an attorney’s status (and salary) at the firm. Patent attorneys are incentivized to encourage more filings, more written responses, and more foreign filings. Often their incentives are aligned with the client’s. As a young associate, I recall a partner telling me to turn a single invention disclosure into seven provisional patent applications (the client later fired him). But this is not always the case. The Entrepreneur and Inc.com have some good advice on how to know if your patent attorney is “killer” or not.

Interestingly, Mr. Keys article contradicts some of his comments in his other writings. For instance, in this article he talks about not taking business advice from your patent attorney. Nevertheless, even this article has some good advice. Although, you should always take business advice from this patent attorney - he is honestly brilliant!

According to this article, an inventor protested an administrative proceeding at the US Patent Office by burning a patent on the steps of the US Patent and Trademark Office.  I'm not sure this is the best way to win an administrative proceeding, but it does get you some press.  Possibly more interesting is the push to change some of the provisions of the America Invents Act passed in 2011.  

Good news for innovators.  According to Bloomberg Law, the cost of a patent litigation has dropped sharply.  Enforcing a patent has become so burdensome that many patent holders do not enforce their property rights.  In addition, patent trolls leverage the fear of high litigation costs to force settlements or license fees.  Lowering the costs of enforcement helps innovators protect their rights and lessens the punch from trolls.  Hopefully this trend continues.  

For years the US Patent and Trademark Office would not register a trademark found to be disparaging.  This has resulted in the cancellation or lack of registration of many marks.  Famously the Washington Redskins' trademark was canceled for being disparaging.  It's been debatable whether this restriction violates the First Amendment.  In addition, many have wondered how does one determine whether something is offensive and whether this should be handled by a government agency.  Surely, the line of what is socially offensive has moved a lot over the years.  Morally, the restriction has been justified by not sanctioning offensive speech with the right to restrict others with a bundle of trademark rights.  The Supreme Court has now settled this debate finding that disparaging trademarks can now be registered. The New York Times has a good report of the case.  The Court felt the disparagement was too broad: “It is not an anti-discrimination clause; it is a happy-talk clause."  In addition, some justices found the clause permitted viewpoint discrimination: “To permit viewpoint discrimination in this context is to permit Government censorship.”  Following this case, a series of registrants are attempting to register marks that previously would have been rejected (see here, here, and here). This case is an interesting confluence of IP, constitutional law, and morality that can be debated for some time.   

The Patent Troll debate is interesting.  Whether a patent assertion is viewed as a "shakedown" or a simple property right enforcement probably depends on which side of the action you sit.  This article in the Boston Globe brings out some good points and shows much of the vitriol surrounding this debate.  Regardless of where one sits on the debate, it's fun watching from the outside.  

This is an interesting read by Popular Mechanics.  A bit on the negative side since most industries that produce consumer products have been able to proceed despite extensive IP in the area.  The smart phone is a good example.  There have been many battles, but consumers are still getting the products.  In addition, this is not new.  There are war stories about the sewing machine patents in the 19th century.  Stay tuned!

http://www.popularmechanics.com/cars/hybrid-electric/news/a27480/patent-wars-self-driving-car/