TIPLJ: Volume 1


Issue 1 – Winter 1992


Ferrari—Can Dilution Be The Standard For Likelihood Of Confusion?

Citation1 Tex. Intell. Prop. L.J. 1 (1992)

Author: William D. Raman

About: Mr. Raman is an attorney at Arnold, White & Durkee.

Abstract: In September of 1991, the Court of Appeals for the Sixth Circuit affirmed a district court decision that granted trademark/trade dress protection for the shape of an article (an automobile) under Section 43(a) of the Lanham Act. The majority, in affirming the district court’s finding of likelihood of confusion, looked to the public as the relevant universe. The dissent voiced the opinion that the very action taken by the Supreme Court in Sears, Compco, and Bonito Boats inherently rejected the distinction of the cases urged by the majority. Ferrari, if consistently followed, represents a departure from the traditional treatment of likelihood of confusion under the Lanham Act.

Under the analysis of Ferrari, the owner of a trade dress having secondary meaning is entitled to permanent protection against copying of that trade dress without regard to consumer (purchaser) confusion. The Supreme Court in Sears and Compco, when confronted by the conflict between state law and patent law, stated that the balance may be achieved by permitting copying, but also allowing adequate labeling regarding the true source of the respective products. The dissent in Ferrari suggests that this same approach must be taken under § 43(a).

The anomaly arises from the fact that if the shape of the article does, indeed, effectively function as a trademark, then possibly any use of that “trademark” may suggest some kind of connection between the copier and the trade dress owner. In a case like Ferrari, the resulting labeling requirements may have the net effect of a permanent injunction.

Highlights of Selected Recommendations of the Advisory Commission on Patent Law Reform

Citation1 Tex. Intell. Prop. L.J. 11 (1992)

Author: Edward G. Fiorito

About: Mr. Fiorito is an attorney at Dresser Industries, Inc.

Abstract: Global harmonization of patent laws has produced an interest in examining the United States patent system to see if it is serving the country well in its present form. In August 1990, the Secretary of Commerce formed an Advisory Commission to advise the Secretary of Commerce on the state and the need for any reform of the patent system.

The Advisory Commission has taken up a number of issues relating to harmonization, including first-to-file, which have been the subject of negotiations in either the WIPO or GATT. The Advisory Commission expressed concern about the problems of modern civil litigation and the cost of enforcing patent rights.

This summary incorporates some of the Recommendations of the Advisory Commission and notes the Recommendations that have not been incorporated. Most of the incorporated Recommendations are followed by comments directed to patent practitioners designed to provide a quick overview of the impact on their practice and their clients in the event the Recommendations are implemented.

Recent Federal Circuit Decisions on Patent Law

Citation: 1 Tex. Intell. Prop. L.J. 31 (1992)

Author: Sydney M. Leach

About: Mr. Leach is an attorney at Honigman, Miller, Schwartz & Cohn.

Abstract: Two recent decisions of the Federal Circuit are interesting because the dissenting opinions reveal deep division in the court; Atlantic Thermoplastics Co. v. Faytex Corp. and Morton Int’l, Inc. v. Cardinal Chem. Co. These cases represent developing areas of the law that will invariably be addressed again in the near future.

In the Atlantic Thermoplastics case, the court found a new exception to the controlling nature of a prior precedent. “A decision that fails to consider Supreme Court precedent does not control.” This decision drew dissent from the denial of rehearing en banc.

The court followed the rule of Vieau v. Japan, Inc. in the case of Morton Int’l. The court vacated a holding of invalidity after affirming the district court’s finding of non-infringement. Judge Nies’ dissent called for an overruling of the Vieau case.

Recent Developments in Trademark Law

Citation1 Tex. Intell. Prop. L.J. 35 (1992)

Author: Paul C. Van Slyke

About: Mr. Van Slyke is an attorney at Pravel, Gambrell, Hewitt, Kimball & Krieger.

Abstract: This review will cover noteworthy decisions made by the courts and the Trademark Trial and Appeal Board and reported in the U.S.P.Q. Volumes 22, 23, and 24, through October 19, 1992. The significant Supreme Court case of Two Pesos, Inc. v. Taco Cabana, Inc. will not be reviewed, since it has received widespread commentary in other journals.

International Protection of Intellectual Property

Citation1 Tex. Intell. Prop. L.J. 41 (1992)

Author: Marshall J. Welch

About: Marshall J. Welch received his B.S. with Special Honors (Chemistry) from The University of Texas at Austin in 1988. He received his and J.D. and M.B.A. (Information Systems) from The University of Texas at Austin School of Law in 1994.

Abstract: The protection of United States interests in intellectual property abroad represents a critical issue in the future of the nation’s economy. The United States has long been a leader in the production of new technology. Unfortunately, this type of export is particularly susceptible to misappropriation due to the ease of piracy.

The intangible nature of new technology causes difficulties for which our laws and those of the international trade community are not yet equipped. Computer software fits only contrivedly into existing property protection schemes. Moreover, the ease with which such intangibles can be pilfered further frustrates the problem.

Many nations are reluctant to implement changes on the ground that enhanced protection for foreign intellectual property represents draconian economic policy. Despite other nations’ objections, multilateral trade negotiations and bilateral negotiations represent the most practical and effective means for the United States to compel these changes.

Issue 2 – Spring 1993


On Law & Love—The Twin Pillars of Freedom

Citation1 Tex. Intell. Prop. L.J. 59 (1993)

Author: Dean Howard T. Markey

About: Mr. Markey is Dean of John Marshall Law School and former Chief Judge of the Court of Appeals for the Federal Circuit and the Court of Customs and Patent Appeals.

Abstract: By definition, every society must have order. That order, which is the very meaning of society, can come from only two possible places. Either from above or from below. Order must either be imposed from above by a dictatorial government in a totalitarian society, or be created by people in a free society who order their own lives in accord with some generally agreed upon broad sets of values.

One short, clear statement sums up the proposition: No society can be both free and dishonest.

Unless the law rests on accepted moral and ethical values, its only claim to legitimacy is physical force—cruel, unmitigated, unlimited, murdering, force. And, as we have recently seen in Moscow and Eastern Europe, that law will be ignored when the policeman isn’t looking.

In this experiment in liberty we call America, we are attempting to build, for the first time in history, a free society that includes people with different religions and with no religion. With different cultural backgrounds and with different initial languages. There have been slippages, but I believe we still retain basic core norms of moral and ethical values that transcend differing views on religion, culture, and politics.


Best Mode Disclosure: Does the Information Improve the Operation or Effectiveness of the Claimed Invention?

Citation1 Tex. Intell. Prop. L.J. 63 (1993)

Author: Gordon T. Arnold

About: Mr. Arnold is an attorey at Jenkens & Gilchrist, P.C.

Abstract: In the past few years, the Federal Circuit has taken the opportunity to extensively analyze the best mode requirement in a number of cases. The cases have had a variety of fact patterns, making for a rich, if somewhat confusing, body of case law interpreting the statute. The district courts are now beginning to wrestle with the Federal Circuit’s pronouncements, showing that the notions many patent lawyers had, for many years, about what disclosure was required in a patent application are no longer correct.

This paper is an updated and much shortened version of a paper delivered at the State Bar Of Texas Professional Development Program in March of 1992, analyzing the current treatment of the best mode issue.


Valmont Industries, Inc. v. Reinke Manufacturing Co. The Section 112(6) Corollary to Malta: Tightened Equivalents

Citation1 Tex. Intell. Prop. L.J. 81 (1993)

Author: Bill Martin

About: Mr. Martin is an attorney at Dell Computer Corp.

Abstract: Many in the patent bar are upset about the decision in Valmont. We should remember, however, that the Court of Appeals for the Federal Circuit has already set incredibly high barriers for defendants to leap in pursuit of proof of invalidity and inequitable conduct. We all know that the standards erected in these two areas are unreasonably high, considering frequency with which the best prior art is not examined during the patent application process, which is attributable, in part, to the inadequate time allowed the examiner for searching prior art under the incentive system currently in use in the Patent and Trademark Office. If the patent bar must now accept a balancing infringement—side burden of proof enhancement with respect to Section 112(6) equivalence and doctrine of equivalents, then surely we can admit, however ruefully, that “what goes around comes around.” Those of us who consider themselves sportsmanlike will welcome the opportunity to engage in an equal contest before the jury, without retaining the unfair advantage that, some would say, has heretofore been given to the patent owner.


Aukerman and Equitable Defenses: Evolution or Revolution?

Citation1 Tex. Intell. Prop. L.J. 87 (1993)

Author: Jerry R. Selinger

About: Mr. Selinger is an attorney with Vinson & Elkins.

Abstract: In A. C. Aukerman Co. v. R. L. Chaides Construction Co., the Federal Circuit considered laches and estoppel. Both were confirmed as affirmative defenses in patent litigation. The appellate court, however, tweaked the long-established laches presumption that arises after six years of delay. This Article compares what Aukerman said about the way it changed laches to how subsequent panel opinions have applied it. Aukerman reconsidered long-settled law. How much it has changed that law—as subsequently construed—remains an open issue.


The Impact of Rule 76a: Trade Secrets Crash and Burn in Texas

Citation1 Tex. Intell. Prop. L.J. 95 (1993)

Author: Jennifer S. Sickler and Michael F. Heim

About: Ms. Sickler and Mr. Heim are, respectively, attorneys at Jenkens & Gilchrist and Conley, Rose & Tayon.

Abstract: Rule 76a poses a threat to trade secrets that are produced during discovery. To protect their property interests, trade secret owners should initially attempt to minimize the number of unfiled discovery materials that fall within the definition of court records provided in Rule 76a. This can be accomplished by obtaining a suitable protective order exempting trade secret discovery materials from court records and placing the burden on the other party to show that the unfiled discovery materials are court records pursuant to Ford Motor Co. v. Benson. If the other party successfully argues that the discovery materials have a probable adverse effect on the public health and safety, and thus constitute court records, a motion to seal under Rule 76a must be filed. To obtain an order sealing court records, the procedural hurdles of Rule 76a must be complied with and the requisite showing of Rule 76a(1) must be made.


Recent Developments in the Right of Publicity

Citation1 Tex. Intell. Prop. L.J. 109 (1993)

Author: Jeffrey W. Tayon

About: Jeffrey W. Tayon is a director of Conley, Rose & Tayon, a professional corporation located in the Texas Commerce Tower, 600 Travis Street, Suite 1850, Houston, Texas 77002. Mr. Tayon is a former Patent Examiner in the medical arts (1978–80) and a former law clerk and technical advisor (1980–82) to the Honorable Judge Jack R. Miller, who is now a Senior Judge at the U.S. Court of Appeals for the Federal Circuit.

Abstract: This review will cover two recent cases noteworthy for the celebrities involved and the legal principles announced.


Recent Developments in Trademark Law

Citation1 Tex. Intell. Prop. L.J. 113 (1993)

Author: Jeffrey W. Tayon

About: Jeffrey W. Tayon is a director of Conley, Rose & Tayon, a professional corporation located in the Texas Commerce Tower, 600 Travis Street, Suite 1850, Houston, Texas 77002. Mr. Tayon is a former Patent Examiner in the medical arts (1978–80) and a former law clerk and technical advisor (1980–82) to the Honorable Judge Jack R. Miller, who is now a Senior Judge at the U.S. Court of Appeals for the Federal Circuit.

Abstract: This review covers noteworthy decisions made by the courts and the Trademark Trial and Appeal Board and reported in the U.S.P.Q.2d, Volumes 24, No. 4 (October 26, 1992) through Volume 25 No. 7 (February 15, 1993).


Recent Developments in Copyright Law

Citation1 Tex. Intell. Prop. L.J. 121 (1993)

Author: Kevin J. Meek and David N. Fogg

About: Mr. Fogg is an attorney at Baker & Botts, L.L.P. in Dallas, TX.

Abstract: Since June of 1992, the federal courts have handed down several important decisions affecting the law of copyrights. More particularly, the decisions relate to the protectability of computer software, the fair use of a copyrighted work, the level of creativity required for copyright protection, and infringement under the Semiconductor Chip Protection Act.

The trend in the case law is to substantially narrow the scope of protection afforded both the literal and non-literal elements of a computer program. The courts have limited the protective confines of the fair use defense, especially with respect to parodies and copies of entire articles from journals. The infringement provision of the Semiconductor Chip Protection Act has been interpreted to provide the broad protection afforded by the “substantial similarity” test borrowed from copyright law.