Weekly IP Takeaways

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.

1. In a trademark dispute relating to one of the early L.A. “hair metal” bands, Ratt, Judge Dean Pregerson in the Central District of California entered a default judgment against a partnership associated with original Ratt member, Bobby Blotzer. The default judgment included a prohibition on the partnership using the Ratt trademarks, as well as a monetary judgment against the partnership of over $2 million. After some touring in or about 2012-2014, Ratt at least temporarily ceased performing, and Blotzer began touring under a name that used, without permission and in association with the partnership, one or more marks that infringed Ratt’s trademarks. Ratt sued, and after several years of litigation, this default judgment against the partnership was the result. If the partnership is insolvent, it is a bit sad to see Ratt go “Round and Round” in years of litigation with no monetary return. But, Ratt had to “Lay it Down” and protect its trademarks. Hopefully, the partnership will not come “Back for More.”

2. In a recent decision out of the District of Massachusetts, the Court denied a Rule 12(b)(6) motion filed by shoe company Steve Madden against the design patent infringement claims of Converse. Converse owned a design patent for each of two shoe designs that it contended had been infringed by Steve Madden. Steve Madden moved to dismiss on one of the design patents, arguing that its design, portions of the sole in particular, were plainly dissimilar to the design patent asserted against that shoe design. The Court disagreed, denying the motion to dismiss, finding that the overall designs were not plainly dissimilar, and that identify of the designs was not required for a design patent infringement claim. The takeaway here is that while design patent infringement requires a substantial similarity between the patented and accused designs, identity is not required.

3. In a recent Final Written Decision from the PTAB in an inter partes review seeking to invalidate a General Motors design patent on a fender design, the Patent Trial and Appeal Board (PTAB) upheld the design patent’s validity by noting that the ordinary observer would not perceive the asserted prior art to be sufficiently similar to support invalidity based on anticipation or obviousness. This is not the only dispute between the petitioner (LKQ) and General Motors, as previously discussed here (Takeaway No. 2). The takeaway here is that invalidating design patents is challenging in that near identical prior art is required.