Review Submissions

A principal aim of IPLAC is to aid in the development and administration of the patent, trademark, copyright, trade secret, and associated fields of law and the manner by which they are applied by the courts and by the United States Patent and Trademark Office. IPLAC represents both patent holders and other innovators in roughly equal measure. In litigation, IPLAC's members are split roughly equally between plaintiffs and defendants. IPLAC attempts to act as a guide to the practical effects of interpretation of intellectual property laws by various courts and by the United States Patent and Trademark Office.

Quoting Chief Judge Rader in the ABA Landslide interview in the March/April 2011 issue:

The best amicus briefs try to help us see the implications of our cases long term, how this would affect a particular segment of the IP community or a particular part of the marketplace, how it would inhibit investment, and whether it would spur investment and cause more dedication to proper IP principles. That's the kind of thinking we need. We need something that looks long term and tries to predict with statistics and insights into how the court's cases would have some impact downstream in the marketplace....

[W]e recognize and must recognize that our cases have an impact beyond just the parties before us and again that's where the amicus process can inform us and help us to give a better decision. We can resolve the case before us in a responsible manner according to the law and at the same time ameliorate any unintended consequences if we understand them in advance. We can write the case in a way that narrowly decides the issue before the parties without having any impact beyond that case, or we can resolve it in a way that gives guidance for future cases and makes the law more predictable and more amenable to facilitate business decisions. But we need information before we can do that well.

IPLAC is dedicated to maintaining a high standard of professional ethics in the practice of patent, trademark, copyright, trade secret, and associated fields of law.

B&B Hardware, Inc. v. Hargis Indus., No. 13-352, Supreme Court

Issue
Seventh Amendment right to a jury in TTAB cases.

Date of Amicus Brief
September 10, 2014

IPLAC Amicus Position
IPLAC does not support either party on the merits of the case, but takes the position that fact-finding by the TTAB that would bind parties against jury trials over wholly common-law rights would implicate the Seventh Amendment and that binding parties in such litigations to TTAB decisions would violate the Seventh Amendment, unless the right to trial by jury were to be waived.

Date Court Decided
March 24, 2015

Holding
The Seventh Amendment does not strip competent tribunals of the power to issue judgments with preclusive effect. So, a finding by the TTAB can preclude re-litigation in federal courts.

B&B Hardware, Inc. v. Hargis Indus., 135 S. Ct. 1293 (2015).

Shammas v. Hirshfeld, No. 15-563, Supreme Court

Issue
Proper meaning of the term “expenses” as used in 15 U.S.C. § 1071

Date of Amicus Brief
November 30, 2015

IPLAC Amicus Position
IPLAC supports the petition for writ of certiorari and believes the Court should reject any definition of “expenses” that includes government attorney and paralegal salaries and other attorney fees.

Date Court Decided
March 7, 2016

Holding
Cert denied.

Romag Fasteners, Inc. v. Fossil, Inc. et al., No. 18-1233, Supreme Court

Issue
Whether, under section 35 of the Lanham Act, 15 U.S.C. § 1117(a), willful infringement is a prerequisite for an award of an infringer’s profits for a violation of section 43(a), id., § 1125(a).
Date of Amicus Brief: September 20, 2019
IPLAC Amicus Position: (1) § 1117(a), through its grammatical structure, history, and context in conjunction with the dilution statute, does not require a plaintiff to show willful conduct; and (2) the principles of equity and foundational purposes of § 1117(a) and the Lanham Act disfavor any interpretation that would require a plaintiff to show willful conduct in order to be awarded an infringer’s profits.

Date Court Decided
April 23, 2020

Holding
Willfulness is not required for an award of profits for trademark infringement. The Court agreed with IPLACs amicus arguments that the construction of the statute does not require willfulness, the principles of equity disfavor requiring willfulness, and the history of the Lanham Act does not support a willfulness requirement.

U.S. Patent and Trademark Office et al. v. Booking.com B.V., No. 19-46, Supreme Court

Issue
Under the Lanham Act, 15 U.S.C. 1051 et seq., generic terms may not be registered as trademarks. The question presented is as follows: Whether the addition by an online business of a generic top-level domain (".com") to an otherwise generic term can create a protectable trademark.

Date of Amicus Brief
February 19, 2020

IPLAC Amicus Position
The Supreme Court should affirm the Fourth Circuit’s decision and find that the test for determining whether a proposed trademark or service mark, including a domain name, is generic and can never be protected as a source identifier for particular goods or services is the fact-specific “primary significance” test set forth in 15 U.S.C. § 1064(3), which can involve source-identifying evidence such as consumer surveys. The USPTO’s concerns regarding monopoly power are misplaced. First, a domain name such as BOOKING.COM does not provide monopoly power, but rather is simply a unique online address for a user to locate information (e.g., regarding a particular company’s goods or services) on the Internet. Second, courts have addressed monopoly concerns regarding descriptive marks for decades by granting them a narrower scope of protection than stronger marks, such as fanciful, arbitrary or suggestive marks.

Holding 
Pending