Weekly IP Takeaways

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

1. The U.S. Supreme Court denied certiorari in a case brought by a European licensee of an U.S. trademark owner against a company, Boldface Licensing & Branding, Inc. (“Boldface”), for which the Kardashian sisters were celebrity endorsers. The mark was KROMA. More specifically, the license granted was for use of the mark in Europe. The U.S. trademark owner originally succeeded in obtaining a preliminary injunction against Boldface, and the product was subsequently rebranded. Then, the European licensee, Kroma EU, filed its own lawsuit for trademark infringement against Boldface and the Kardashians in the Middle District of Florida. That court dismissed the action for lack of standing to sue, which was affirmed by the Eleventh Circuit Court of Appeals. The Eleventh Circuit found that, under the license, Kroma EU lacked sufficient rights in the U.S. mark to sue under U.S. law. The opinion is here. Kroma EU then petitioned the U.S Supreme Court for review, which as denied. As such, the Eleventh Circuit’s holding stands.

2. The United States Patent and Trademark Office (USPTO) recently issued further updates to its Section 101 subject matter eligibility guidelines. Section 101 determines the subject matter that is within the scope of what may be patented. The purpose of the updated guidance was to clarify how patent examiners in the USPTO will examine applications that raise Section 101 issues, which is also helpful to applicants. The one ongoing concern with the USPTO’s Section 101 guidance is that it does not follow the same eligibility standard as that used by the courts. As such, one may be able to secure a patent under the broader eligibility rules in the USPTO, but not necessarily be able to enforce it because of the Supreme Court’s Alice decision, and the cases applying Alice as decided by the Federal Circuit Court of Appeals and other federal district courts, which take a narrower view of eligibility.

3. Outdoor clothing company, Patagonia, sued Anheuser-Busch in the Central District of California for trademark infringement, trademark dilution, and related causes of action over Busch’s PATAGONIA beer. Busch moved to dismiss certain claims, including the trademark dilution claim, which requires a showing of “fame” in order to be able to support a trademark dilution claim. The Court denied the motion to dismiss the dilution claim, finding that Patagonia sufficiently alleged fame and that its mark was distinctive so as to support its dilution claim. Thus, while it is not easy to allege the type of fame needed to support a dilution claim, it can be done. This case may provide a roadmap for success at least at the pleading stage.