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In yesterday’s edition, the Chicago Tribune published a commentary on the Patent Reform Act of 2007 by Cummins-Allison Corp.’s Chairman William J. Jones — Cummins-Allison is based in Mt. Prospect, Illinois and develops and distributes coin and currency handling/counting machines. Jones has strong feelings about the Act and offers some unique opinions. First, he is against “harmonizing” US law with international patent laws, arguing that the European and Japanese systems are “parochial.” He also makes the, in my experience unfair although widely held, argument that the Chinese system “specializes in intellectual property theft.” I believe if you look at recent Chinese cases or the experts on Chinese IP law — like the excellent IP Dragon — you will see that China has become increasingly willing to protect the intellectual property of foreign entities, as long as the entities have invested in the necessary Chinese patents, trademarks, etc.
Jones notes that at the recent Congressional hearings, no manufacturing firms testified, despite some interesting statistics:
U.S. manufacturers undertake 60 to 70 percent of the nation’s research and development and hold 60 percent of its patents.
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. . . . Roughly one-third of all patent applications are made by independent inventors, small manufacturers, universities and non-profit research groups. Their efforts are crucial for leading-edge scientific advances, and their views should be heard.
Jones is against the proposed post-grant review process because he believes it will diminish the value of patents by making their strength very uncertain. He also suggests that instead of giving an “overburdened” PTO broad, new rule-making powers, Congress should fully fund the PTO so that it can hire and retain a high quality staff of sufficient size to expedite the prosecution of patent applications. Finally, Jones points to what he believes is the diverse opposition to the Act, which he argues warrants taking the time for additional, robust debate.
Jones has some very strong views, not all of which I agree with. But I do not see how additional debate and discussion could harm the Act at this point. There are some strong dissenting voices, the Federal Circuit’s Judge Michel for example.
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Continue Reading A Dissenting Voice on Patent Reform

The Chicago Tribune ran a story on the front page of Wednesday’s Business section about the use of trademarks in keyword internet advertising: Trademark Battlefield. The story discussed various efforts to stop internet search engines (like those offered by Google, Yahoo and Microsoft) from selling trademarked terms as search keywords. For example, the story suggested that State Farm, an insurance company, may have purchased the name of its chief competitor, Allstate, from Google. As a result, if you google “Allstate” Allstate’s websites will come up first in the search results, but in the upper right corner of the search results page, you will see a State Farm add.
The story also discussed comments from a Google trademark lawyer, Rose Hagan, during a standing-room-only panel at the International Trademark Association’s (“INTA”) meeting on Monday, which was held in Chicago. Hagan said that Google sells advertising space, not trademarks. The story also notes that Utah has passed a law which prohibited the use of a competitor’s trademarks as advertising keywords. For more on the Utah law, check out Eric Goldman’s Technology & Marketing Law Blog. The Utah law and the various lawsuits against Google, Yahoo and Microsoft on this issue are all evidence that this is a very unsettled area of trademark law. A Yahoo attorney, Laura Hauck Covington, explained that “[w]e’re all trying to find the right, reasonable balance for the owners of trademarks, consumers and advertisers.”
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Continue Reading Keyword Advertising Discussed at INTA

Chicago Tribune Co. v. Fox News Network LLC, No. 07 C 0865, 2007 WL 1052508 (N.D. Ill. Apr. 4, 2007) (Bucklo, J.).*

Judge Bucklo denied plaintiff Chicago Tribune’s ("Tribune") motion for a preliminary injunction.  The Tribune sought an injunction which would have required defendant Fox News Networks ("Fox") to change the name of its "Redeye" late-night television news program based upon alleged infringement of the Tribune’s Redeye mark related to its Redeye newspaper.  The Court held that the Tribune had only shown a "possibility" that it would prevail on the merits.  The Court found that the Tribune’s Redeye mark was at least suggestive and, therefore a strong mark.  And the Court held that while the marks did not visually resemble each other, the Tribune proved a likelihood that the marks were aurally identical.  But the evidence did not favor the Tribune on either of the other two "most important" factors in deciding likelihood of confusion:  defendant’s intent and actual confusion.  No evidence showed that Fox "passed off" its program as coming from the Tribune, so the issue of Fox’s intent favored Fox.  As to actual confusion, the Tribune put forth a witness that testified that he suffered "momentary actual confusion" when he first learned of Fox’s Redeye program, but that it was cleared up almost immediately by someone he was talking with about the program.  Additionally, the witness did not have cable television, so could not watch the show.  While initial confusion can be sufficient to show actual confusion, the Court disregarded the witnesses testimony because he admitted that he was a consumer of neither the Tribune’s nor Fox’s products.  Continue Reading Redeye Preliminary Injunction Denied Despite Aurally Identical Marks