Vol. 3 No. 1 September/October. 2010:
Of Lawyers, Hotels, and Mattresses

Of Lawyers, Hotels, and Mattresses:
The Federal Circuit's Ever-Expanding Genericness Test for [THING].COM Marks

By Thomas L. Casagrande

The Federal Circuit has grappled with the registrability of five [THING].COM trademarks: PATENTS.COM, STEELBUILDING.COM, LAWYERS.COM, HOTELS.COM, and MATTRESS.COM. The first two were rejected on descriptiveness grounds, but the latter three were recently rejected as generic. The author respectfully concludes that the Federal Circuit’s [THING].COM jurisprudence conflicts with precedent and is headed in the wrong direction.

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The following articles from Vol.3 No.1 September/October. 2010
are available to Section members.

Landslide | Teleconference Series

A series of teleconferences inspired by a current article from the Section's flagship magazine.

Read the article from Landslide's September/October issue "IP Audits: Exploring the Attics and Depths"

Listen to the Teleconference:
IP Audits: Exploring the Attics and Depths
Tuesday, Sept. 28 | 11:00 a.m. - 12:00 p.m. CT

Profiles in IP Law
An Interview with Copyright Register Marybeth Peters

By June M. Besek and Mary E. Rasenberger

In 1965, a young social studies teacher moved to Washington, D.C., in a spirit of adventure and public service. Marybeth Peters took a job with the Copyright Office and, in the ensuing years, worked her way up to its top position, the U.S. Register of Copyrights. Ms. Peters will retire at the end of this year. In this interview, she discusses her career, copyright law, and the future. read more...

The New Neutrality Debate: An IP Perspective
By Howard Walthall

 “Net neutrality” refers to the idea that Internet network operators should not be permitted to treat different portions of Internet traffic differently, i.e., to “discriminate” against types of traffic by filtering or blocking content deemed infringing or otherwise objectionable. Governmental efforts to regulate net neutrality are closely watched by powerful business interests and others concerned with public policy regarding copyright and the Internet. read more...

Bilski v. Kappos: Some Business Methods Still Patentable After All These Years
By Joseph J. Berghammer, Charles L. Miller, and Aseet Patel

Bilski v. Kappos did not set off the fireworks so many anticipated. Rather than issuing a categorical exclusion of business method patents or a new test for patent-eligible subject matter, the Supreme Court accepted the “machine-ortransformation” test as an “investigative tool” in determining patent eligibility. The authors explore the resulting legal landscape and provide practice tips for handling process patents in a post- Bilski era. read more...

IP Audits: Exploring the Attics and Depths
By Antoinette M. Tease

The goal of conducting an IP audit is to obtain a comprehensive view of a client’s business and to cover the areas most likely to involve some form of intellectual property. The deliverable: an IP audit report. The author outlines issues to be addressed regarding patents, copyright, trademarks, and trade secrets, as well as open source code and infringement. read more...

Negotiating Standards-Related Patent Licenses: How the Deal is Done, Part I
By Michele K. Herman

A party may obtain licenses to standards-essential patent claims in different ways, but the most favorable terms are reached when patentees and prospective licensees negotiate terms suited to their unique objectives and incorporate patent rights each needs to support its business model. With respect to RAND licenses, however, the author contends that attempting to define specific terms is neither necessary nor useful. read more...

Getting Out of the Hot Seat: Mediation and Other Early Termination Mechanisms for § 337 Cases at the ITC
By Juliana M. Cofrancesco

Rapid resolution of IP disputes in a § 337 cases is advisable. Early termination can result in win-win scenarios and limit litigation expenses, which are heavily front-loaded. One option may be the newly changed ITC mediation program. However, all ITC early-termination procedures have limitations; they may not accomplish parties’ ultimate objectives. When seeking early termination, it is also advisable to proceed with caution. read more...

Patent Reexamination: An Effective Litigation Alternative?
By Alan W. Kowalchyk and Joshua P. Graham

While the use of patent reexamination as a litigation alternative has been on the rise, the pros and cons of using it to challenge a patent must be carefully assessed in every case. Reexamination’s increasing popularity has created misconceptions about its practicality and advantages, and using it in the wrong circumstances can be counterproductive to successful case resolution. read more...

From the Editor-in-Chief
By L. Marisia Campbell

Recent Developments in IP Law
By John C. Gatz

From the Hill
by Hayden W. Gregory

Meeting of the Minds
By Arif A. Mahmood

By Marylee Jenkins

I2P Group News
By Samson Helfgott

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