David Lilenfeld Blog The intellectual property blog of David Lilenfeld

17Jan/166054

B&B Hardware Trademark Case Gives TTAB a Boost

B&B Hardware Inc. v. Hargis Industries Inc. come from the District Court for the Eastern District of Arkansas and then the Eight Circuit Court of Appeals. Justice Alito wrote the opinion for the Supreme Court of the United States.

B&B Hardware (“B&B”) sells a fastener for the aerospace industry, called SEALTIGHT, which was federally registered in 1993. The opposing party, Hargis Industries (“Hargis”) sells self-drilling screws under the mark SEALTITE in the construction industry. B&B took action.

 

The Trademark Trial and Appeal Board (“TTAB”) found a likelihood of confusion between the trademarks. On appeal, the district court chose not to give deference to the TTAB ruling because TTAB is not an Article III court, which helped Hargis prevail at in the district court.

The U.S. Court of Appeals for the Eighth Circuit agreed that the district court was not required to give deference to TTAB’s decision.

The question presented to the Supreme Court was whether a finding of a likelihood of confusion by the Trademark Trial and Appeal Board preclude re-litigation in federal court?

In a 7-2 decision, the Supreme Court held that re-litigation is frequently precluded and, on appeal, deference should ordinarily be given to TTAB’s ruling. The Court reasoned that when parties have had adequate opportunity to litigate an issue and an administrative agency properly resolves the issue, re-litigation is precluded unless Congress has indicated otherwise. The Court next determined that nothing in federal trademark law prohibited issue preclusion. The Court also held that TTAB’s ruling satisfied the ordinary elements for claim preclusion: (1) likelihood-of-confusion standards for registration and infringement are the same; (2) no reason to doubt the quality, extensiveness, or fairness of the agency’s procedures, and (3) parties are likely to treat both contested registration and infringement seriously.

So, convincing TTAB you are right, could be a great first step. “Filing an opposition or cancelation proceeding with TTAB is typically quicker and less expensive than filing a district court lawsuit,” said David Lilenfeld of Lilenfeld PC, an intellectual property attorney in Atlanta, Georgia. “Now that preclusive effect is confirmed, trademark owners have another compelling reason to file with TTAB.”

16Jan/16585

Social Media Pitfalls — David Lilenfeld’s Perspective

David M. Lilenfeld talks about the legal pitfalls of social media -- and gives tips for avoiding them.

16Jan/16407

David Lilenfeld — Equity Crowdfunding Leader

In this article, David M. Lilenfeld comments about being one of the first equity crowdfunding portals in Georgia.

16Jan/16501

David Lilenfeld Comments on New Crowdfunding Rules

David Lilenfeld comments on new crowdfunding rules released by the Securities and Exchange Commission.

16Jan/16621

David M. Lilenfeld Interviewed About Crowdfunding

Here is an article and video showing David Lilenfeld talking about the importance of crowdfunding for the State of Georgia.

16Jan/16633

Story About David Lilenfeld Discussing Crowdfunding — Hunter College

Here is an article about David Lilenfeld and a speech he gave about the future of crowdfunding.  The article appeared on the website of Hunter College.

16Jan/162807

Presumption of Irreparable Harm Disappears – discussion led by David Lilenfeld

In its 2006 decision eBay Inc. v. MercExchange, L.L.C. (547 U.S. 388), the United States rejected a long-standing general rule in patent infringement cases.  That general rule had trial courts favoring granting permanent injunctions (i.e., orders requiring a party to refrain from certain activities) against alleged patent infringers.  This favor developed because irreparable harm -- a requirement in most other types of cases in which a permanent injunction is sought -- was presumed to exist in if the court (or jury) found patent infringement.  The new rule, according to this case, has trial courts applying the traditional, four-factor permanent injunction used in most case to patent infringement cases. In other words, irreparable harm is no longer presumed; rather, it has to be proven.

David Lilenfeld, founder of Lilenfeld PC, moderated a panel discussion in which the participants discussed how the MercExchange case has changed the way permanent injunctions are sought and the frequency with which they are granted.  The panel also features Ronald T. Coleman Jr., of Parker Hudson Rainer & Dobbs; Ann G. Fort, of Sutherland; and Frank G. Smith III, of Alston & Bird.

16Jan/1614421

Interview About Trademark and Copyright Rights, David M. Lilenfeld

Here Diane Bogino of Georgia Business Network Directory interviews Atlanta-based intellectual property lawyer David Lilenfeld, founder of Lilenfeld PC.

25Apr/12731

Why Big Companies are Hiring Small Law Firms – David M. Lilenfeld, Lilenfeld PC

More and more, legal departments are moving their work from large, big-name law firms to small, boutique firms like Lilenfeld PC.  While the recession prompted much of this movement, I am now observing that this is a lasting practice for efficiency-minded in-house counsel.

Boutique law firms such as ours are flourishing because clients are turning to different law firms for different tasks.  This practice allows legal departments to match specific tasks to the right lawyers. For example, a new client came to us recently specifically because most of the litigation we handle involves trademark infringement claims.

Legal departments are recognizing the benefits of splitting work between firms with different focuses and using small, boutique firms that offer the right fit for each individual matter.  In-house attorneys also acknowledge that the work produced by small firms is as good as (or better than) what they receive from large, big-name law firms.  Small firms like ours also have far fewer conflicts, can make decisions regarding representation in hours instead of days and are equipped to provide personalized service.

Technology has also made small firms more competitive with large ones.  Software, for example, speeds up document production and review, while, cloud computing makes sharing documents, invoices and case developments fast and efficient.

Lilenfeld PC focuses entirely on intellectual property, and its highest hourly billing rate is $325, a rate 40 to 50 percent lower than that of large-firm counterparts.  Our clients receive the same level of expertise as clients of large firms but at a lower price.  Since we have less overhead, we have lower rates, which helps our clients manage budgets and increases the volume of business we receive.

Consider talking with us about your intellectual property needs.

15Aug/11639

If meaning is clear despite typo, patent claim still enforceable

Fed Cir.’s reverses  N.D.Ga. grant of summary judgment to defendant in patent infringement case, ruling the trial court had authority to correct an obvious drafting error in a claim.  Here is the opinion.


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