Weekly IP Takeaways

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

1.    A former employee that used compiled customer list, pricing, and other information for directly competing business found to be trade secret misappropriation, and sufficiently harmful to support a TRO and preliminary injunction under California and federal law.  The opinion is here – https://scholar.google.com/scholar_case?case=5261898732697505166&q=sun+distributing+corbett&hl=en&as_sdt=2006&as_ylo=2018.

2.    Important insurance coverage decision in the trade dress context by the Second Circuit Court of Appeals that a duty to defend can be triggered by “offer for sale” language in the complaint (counterclaim here), coupled with a discovery request for advertising materials, where the product design trade dress is depicted in the offer for sale (which was deemed to be advertising).  Court noted that an “offer for sale” includes advertising.  While this was construed under New York insurance law, courts in states with similarly liberal rules on insurance coverage may be persuaded by this ruling.  The opinion is here – https://scholar.google.com/scholar_case?case=14362772979700570967&q=high+point+design+lm+insurance&hl=en&as_sdt=2006&as_ylo=2018.

3.    U.S. Patent and Trademark Office (USPTO) allows trademark for Bubba Foods, LLC’s irregularly-shaped burger patty product design.  Product design/configuration, in order to serve as a trademark and be registratable, must be non-functional and possess secondary meaning (i.e., that there is an association of the product design with a single source of the product).    Non-functionality can be supported by showing that there are many possible designs for the same product, which is, at least in part, what Bubba Foods did here.  To demonstrate secondary meaning, Bubba Foods showed long-term use, extensive sales, advertising, promotion, and consumer recognition of the design with Bubba’s.  Product design trade dress is not easy to prove, and the facts lined up well for Bubba’s here.  TM Application Serial No. 87/815,098.

4.    Litigation funding has become popular in the past several years.  This occurs where a third party enters into an agreement with the real party in interest to fund some or all of the litigation in exchange for some return on investment, as negotiated.  Recently, the Northern District of California issued an order denying discovery into the identity of the litigation funding entity, communications between the funding entity and the party to the case, and the agreement related thereto.  This is consistent with previous jurisprudence on this issue.  The key factor in determining whether or not litigation funding information is discoverable is its relevance.  If it is not relevant to the claims or defenses in the case, it will most likely not be discoverable.  The opinion is here – https://scholar.google.com/scholar_case?case=13979246520825243977&q=MLC+micron&hl=en&as_sdt=2006&as_ylo=2019.