Leason Ellis LLP

The trademark and copyright laws are changing. To keep you up to date, Leason Ellis is sponsoring a program titled Recent Changes To The Trademark And Copyright Laws: What You Need To Know presented by the Association of Corporate Counsel. The program on the morning of Thursday, April 29, 2021, will feature discussions of the Trademark Modernization Act of 2020, the Copyright Alternative in Small Claims Enforcement Act of 2020 (CASE Act), and recent developments with Brexit. Moderated by Yuval Marcus, Lauren Emerson and Matthew Frisbee, the in-house panelists include speakers from Mastercard, PepsiCo and Xerox. See https://www.acc.com//recent-changes-trademark-and-copyrigh# for more details.

Working remotely is the new normal, but what does it take to continue to litigate in this digital world? On March 10, 2021, between 4 pm and 5 pm, Hoda Rifai-Bashjawish will speak by Zoom on best practices for remote proceedings at an event of the Hon. William C. Conner Inn of Court. Along with co-speaker Lauren Berry of Veritext, Hoda will address particular rules for remote depositions, set-up for exhibits, the concept of attorney-eyes-only documents, tips for depositions, and more. To register, please see https://www.connerinn.org/event-4192349.

The Intellectual Property Owners Association filed an amicus brief at the U.S. Supreme Court in Minerva Surgical, Inc. v. Hologic Inc. drafted by Leason Ellis attorneys Robert Isackson, Melvin Garner, Matthew Kaufman, Lauren Sabol, Henry Gabathuler and Hoda Rifai-Bashjawish. See https://ipo.org///Final-Brief_Minerva-v.-Hologic_FILED.pdf. IPO’s brief takes the position that: (1) the Supreme Court has endorsed the doctrine of assignor estoppel in patent cases but has provid...ed limited guidance regarding its application; (2) the Federal Circuit law of assignor estoppel follows and fairly implements the Supreme Court’s jurisprudence; (3) assignor estoppel is a doctrine of limited application and scope; (4) assignor estoppel should be implemented as a rebuttable presumption that can be overcome on the equities considering the totality of the circumstances; (5) privity and its equitable factual considerations are the backstop that avoid the parade of horribles raised by those who would abolish assignor estoppel; and (6) an equitable application of assignor estoppel is consistent with the Supreme Court’s abolishment of licensee estoppel. #PatentLaw See more

On February 25th, Marty Schwimmer participated on a panel entitled Challenging Offensive Marks, organized by the St. John’s Law School Intellectual Property Law Society. The panel discussed the legal treatment of marks deemed to be scandalous or immoral or disparaging, after the Supreme Court decisions in Matal v Tam (concerning the trademark THE SLANTS) and Iancu v Brunetti (concerning the trademark FUCT). The two decisions held that the Lanham Act’s prohibition of scandalous or immoral or disparaging was unconstitutional. The panel also discussed steps the owner of a controversial trademark might take if it wished to retire such a trademark (as the owners of the AUNT JEMIMA and UNCLE BEN’S trademarks have recently done) without abandoning its rights to a third party.

Peloton’s petition to cancel the registrations of the trademarks SPIN and SPINNING owned by Mad Dogg Athletics on the ground of genericness has received widespread media attention. An article on Bloomberg Law at blawgo.com/425BaUG, which put the cancellation actions in the context of other instances of genericide, quoted Peter Sloane, who said that [i]f from the outset Mad Dogg had use Spin, and come up with a generic term for either the bike or classes, it may have had a chance. He added that even after all that, and using best practices, it’s up to consumers to decide whether a term is generic or not. #trademarklaw

With New Year’s upon us, Leason Ellis wishes you health and happiness in the year to come!

On April 1, 2021, Robert Isackson will speak for PLI as part of its two-day Patent Law Institute 2021: Critical Issues & Best Practices program. Rob will present in a breakout session titled: Strategic & Transitional Drafting Patents to Survive Post-Grant Review and Litigation. Attendees can expect to learn valuable techniques for drafting patent applications, hear important prosecution tactics, and discover essential continuation strategies. See https://www.pli.edu/programs/patent-law-institute to learn more about the program. #patentlaw

On Thursday, January 7, 2021, Matt Frisbee will speak in a Strafford live video webinar, "Making Section 2(f) Claims: Demonstrating Acquired Distinctiveness" from 1:00 pm - 2:30 pm EST. The panel will guide trademark counsel in understanding how the courts and USPTO view the issue of acquired distinctiveness in support of a trademark application. They will outline approaches that work - - and those that don't work -- in demonstrating acquired distinctiveness. After the presentation, Matt and his co-panelist will engage in a live question and answer session with participants. For more information or to register, see https://www.straffordpub.com//making-section-2-f-claims-de. #trademarklaw

Mel Garner was interviewed by Law360 as part of a series of interviews with attorneys who have been on the front lines to make IP a more inclusive area of law. See https://bit.ly/36aFi8D (subscription only). When he applied for his first law job in the 1970s, Mel’s resume should have made him a shoo-in: a master's degree in electrical engineering, plus years of working as an engineer and drafting patent applications. But out of the 100 resumes he sent out, only one led to an offer. In a career spanning several decades, Mel became the first Black president of the American Intellectual Property Law Association in 2005, and the organization last month named him a "Titan of the IP Bar." In the interview, Mel discusses his personal experience and offers advice for expanding diversity within the IP profession.

The 2020 Annual Meeting of the American Intellectual Property Law Association took place online for the first time this year and two of our partners were featured speakers. On October 22nd, Lauren Emerson presented on a panel titled Trademark/Right of Publicity: The Collision Between the First Amendment and Trademark Law; The Evolving Circuit Split on the Use of Marks in Creative Works. On October 26th, Mel Garner participated on a panel called TITANS of the IP Bar. Lauren is Vice-Chair of the Copyright Committee of the AIPLA and Mel is a Past President of the Association. See https://www.aipla.org/am20 for further details.

An article in World Trademark Review online about abusive labor practices abroad featured quotes by Lauren Emerson, who remarked that a good policy for brand owners is to contract only with firms willing to affirmatively represent in writing that they do not engage in specific red flag practices that include taking possession of employees’ IDs or work permits, or requiring that employees live in employer-owned housing under onerous rules. Lauren concluded by stating that it’...s critical that a brand’s socially responsible messaging match its actual practices. Brands need to be prepared to hold business partners accountable when contract terms concerning forced labour are breached. Effective counsel can play an important role here, both in terms of crafting agreements with defensible expectations and reviewing advertising and social media content to ensure accuracy and consistency. See https://bit.ly/3hRmY8Z (subscription only). See more

When registration opens for the INTA 2020 Annual Meeting and Leadership Meeting, be sure to sign up for Table Topics, which are now no-cost add-ons. Our own Lauren Emerson will be moderating a Table Topic titled What Trademark Practitioners Should Know about Registering Copyrights in the U.S.: Lessons from Recent Copyright Review Board Decisions to be held on Monday, November 16th at 6:00 pm EST. Register early because space is limited to just ten participants.

Representing Plaintiffs Town & Country Linen Corp. and Town & Country Holdings, Inc. in a patent infringement, misappropriation and breach of contract suit regarding various consumer products Plaintiffs developed for Defendants, Leason Ellis secured the dismissal of six defenses and an inequitable conduct counterclaim at the pleading stage without leave to amend and the narrowing of four defenses in Plaintiffs’ favor. The Court also granted Leason Ellis’ request for Defendants to pay all attorneys’ fees and costs associated with reopening discovery on Defendants’ belatedly asserted breach of contract counterclaim. The case is styled Town & Country Linen Corp. et al. v. Ingenious Designs LLC et al., No. 18-cv-5075 (S.D.N.Y. June 25, 2020).

Leason Ellis is pleased to announce that Rob Isackson is now President-Elect of the New York Intellectual Property Law Association (NYIPLA), where he will begin a one-year term in May 2021. Rob, a partner at Leason Ellis, is a first-chair IP litigator, counselor, and advisor fluent in all aspects of intellectual property: patents, trade secrets, trademarks, copyrights, and designs. Rob’s IP practice includes appellate litigation as well as providing strategic counseling, adv...ice and opinions on the strength of IP rights, freedom to operate and litigation risks, patent and trademark prosecution, portfolio assessments, trade secret audits, negotiation and drafting of IP transactions and agreements, and M&A IP due diligence. Previously, Rob served NYIPLA as First and Second Vice President and was a member of the Board of Directors. He has also been Co-Chair of the Amicus Briefs Committee.

The IAM Patent 1000: The World’s Leading Patent Professionals once again named Leason Ellis as one of the leading patent prosecution firms in New York. The editors of IAM had incredibly nice things to say about our practice including the following: When it comes to quality and client service, Leason Ellis surpasses high expectations at every turn. The boutique has been surging on all fronts lately: as busy as ever on prosecution, it has been earning bigger, more sophisticat...ed co-counsel and lead litigation instructions and returning the compliment with some superb results. Eight of our attorneys were also singled out for recognition: Elizabeth Barnhard, Susie Cheng, Michael Davitz, Edward Ellis, Melvin Garner, Robert Isackson, David Leason, and Yuval Marcus. You can see the full review at https://www.iam-media.com//patent1000/rankings/united-stat. See more

An article posted by WTR titled Cost-cutting: how client relationships can survive the covid-19 crunch quotes Marty Schwimmer for his views on traversing the tightrope. See https://www.worldtrademarkreview.com//cost-cutting-how-cli (subscription). Among other things, Marty noted the increased need to bring cost effective advice to his clients during the crisis and work with them to evaluate whether particular actions are worth the expense. The article comes on the heels of a survey by WTR which highlighted the fact that, at a time of economic turmoil, brand protection is more important than ever.

On June 3, 2020, Joel Felber will be guest teaching in the Practicing Law Institute’s Patent Fundamental’s Bootcamp: An introduction to Patent Drafting, Prosecution, and Litigation. Normally taking place annually at PLIs headquarters in New York City, this year’s program is presented in an on-line platform, live on ZOOM, and continues to offer individualized feedback and mentoring in small online clinic groups for students to explore and discuss multifaceted strategies and best practices associated with patent prosecution. More details for this exciting program can be found at https://www.pli.edu/programs/patent-fundamentals-bootcamp.

On June 17, 2020, Lauren Emerson will speak on the topic of Trademark Prosecution in China: Key Considerations When Seeking Brand Protection during an hour and half online CLE program offered by Strafford Publications. The panel will guide counsel for companies with products in China to ensure IP protection through trademark registration. Along with her co-panelists Paul Jones and Yixian Chen of Jones & Co., Lauren will examine the considerations and procedures involved with securing trademark protection in China, such as actions against infringers. See https://bit.ly/3bKs6bm for more information and to register.

Law360 profiled David Leason yesterday in its column Law Firm Leaders. See https://www.law360.com//law-firm-leaders-leason-ellis-davi (subscription only). David is co-founder and managing partner of our firm, which was founded in 2008. In the interview, he chatted with Law360 about his decision to launch a boutique during a recession, how the firm has grown during the last 12 years, and his goals for the future. David explained that the firm has achieved its strong growth over the years in part because our attorneys love the practice of law and have a joy for exploring and pursuing the things that are important to them and to our clients.

On May 6, 2020, Susie Cheng and Jordan Garner presented in a webinar organized by the Westchester County Biosciences Accelerator (WCBA). Titled IP Due Diligence-Evaluating Intellectual Property for Fundraising Preparation, the webinar addressed issues such as how innovative enterprise gets the attention of investors from an IP perspective. Attendees included entrepreneurs from the WCBA Entrepreneurship Lab and the Accelerator for Biosciences in Connecticut. See https://www.wcbaccelerator.com for details about the WCBA.

On Monday, May 18, 2020, Rob Isackson will present on Blackbird Tech LLC v. Health in Motion LLC, 944 F.3d 910 (Fed. Cir. 2019), petition for certiorari pending, as part of a program on Ethics in IP for Joint Patent Practice Continuing Legal Education (JPPCLE). His presentation will look at the ethical implications arising out of the Court of Appeals for the Federal Circuit’s recent affirmance of an exceptional case under 35 U.S.C. 285 in Blackbird. More particularly, he will review plaintiff’s counsel’s conduct in a patent litigation that was collectively determined to have stood out from other patent cases under the totality of circumstances, under the New York State Unified Court Systems 1200.0 Rules of Professional Conduct. See https://www.jppcle.org/2020webinars.html to register.

The May 1st edition of the INTA Bulletin included an article about a meeting in March between Matthew Frisbee and two other INTA representatives, with several other high-ranking officials of the U.S. Patent and Trademark Office including Trademark Commissioner David Gooder. See https://www.inta.org//Trademark_Office_Practices_Committee. The purpose of the meeting was to discuss concerns over the USPTO’s new requirement that all trademark applications and registrations inclu...de an e-mail address for the trademark owner. The meeting was prompted by a concern that the owner e-mail addresses would be visible to the public on part of the USPTO’s online database, which would lead to fraudulent solicitations. Following a productive discussion, the USPTO announced in late April that the owner e-mail addresses will be masked in the online database, much to the relief of the trademark community. See more

Marty Schwimmer was a featured panelist in a webinar about the oral argument before the Supreme Court in U.S. Patent and Trademark Office v. Booking.com. B.V. held earlier in the day. The panel was presented by American University Washington College of Law as part of its Program on Information Justice and Intellectual Property (PIJIP). American University Washington College of Law regularly invites counsel of record and counsel for selected amici to offer post-argument reflections in intellectual property cases heard by the Supreme Court. Marty served on the brief for the International Trademark Association as Amicus Curiae in Support of Respondent Booking.com. You can find of a recording of the panel discussion online at https://www.wcl.american.edu//united-states-patent-and-tra.