• INTELLECTUAL PROPERTY LAWS

United States Court of Appeals, Third Circuit

Pernod Ricard Usa, Llc, Vs. Bacardi U.S.A., Inc. (Decided in 04.08.2011)

Trade Mark - Suit for False advertising - Section 43(a) (1) (B) of the Lanham Act, 15 U.S.C. § 1125(a) (1) (B) - Appellant (Pernod) has filed the present appeal against the decision of the United States District Court, in which the Court held that the label of "Havana Club" brand rum, a rum sold in the United States by Bacardi U.S.A., Inc. (Bacardi), was not a false advertisement of the rum's geographic origin under Section 43(a) (1) (B) of the Lanham Act, 15 U.S.C. § 1125(a) (1) (B) - Hence this appeal - Whether District Court Court erroneously failed to consider the survey evidence presented before him

Held, to establish a false advertising claim under the Lanham Act, a Plaintiff must prove that the Defendant has made false or misleading statements as to his own product or there is actual deception or at least a tendency to deceive a substantial portion of the intended audience or the deception is material in that it is likely to influence purchasing decisions or there is a likelihood of injury to the Plaintiff in terms of declining sales, loss of good will, etc. Here, in the present case, there is a factually accurate, unambiguous statement of the geographic origin of Havana Club rum. The label clearly states on the front that the liquor is "Puerto Rican Rum" and, on the back, that it is "distilled and crafted in Puerto Rico." No reasonable consumer could be misled by those statements, and the rest of the label does not put those statements in doubt. Under such circumstances, District Court can properly disregard survey evidence as immaterial, because, by definition, § 43(a)(1) does not forbid language that reasonable people would having acknowledge was not false or misleading. As the phrase "Havana Club" was not a misleading statement of geographic origin under § 43(a)(1)(B) of the Lanham Act when considered in the context of Bacardi's rum label, the District Court was not required to consider Pernod's survey evidence. The judgment of the District Court is affirmed.

United States Court of Appeals, Federal Circuit

In Re: Ntp, Inc. (Decided in 01.08.2011)

Patent - Rejection of grant of Patent - Appellant (NTP) has filed an appeal against the decision of the Board of Patent Appeals and Interferences wherein Board affirmed the decision of the U.S. Patent and Trade Mark Office's (PTO) rejecting of all 764 claims of U.S. Patent No. 6,317,592 ('592 patent) during reexamination hence this appeal

Held, During reexamination, the Board affirmed the examiner's determination concerning the priority date of the 592 patent. It was held that the Board's construction of "destination processor" was correct and was supported by the written description, while NTP's was not. Unless determining the appropriate priority date during reexamination was prohibited-either outright or in this particular case-the claims of the '592 patent were anticipated by Lazaridis. Appellant arguing that § 301 prohibit the examiner from making a priority determination during reexamination. When a patentee argues that its claims are entitled to the priority date of an earlier filed application, the examiner must undertake a priority analysis to determine if the patentee meets the requirements of § 120. There is no statutory limitation during a reexamination proceeding prohibiting the examiner from conducting a priority analysis. Otherwise, the examiner would be stripped of a critical legal tool needed in performing a proper reexamination. Nothing in §§ 301 et seq. prohibits an examiner from determining whether or not a priority date was properly claimed during the original examination of the application. There was no evidence that the examiner actually considered whether the claims of the '592 patent satisfy the requirements of § 112. In this case, the examiner's lack of consideration of § 112 was even clearer than in Swanson. The examiner issued no rejection based on § 112, nor did the examiner make an affirmative statement that the claims of the '592 patent satisfied § 112, as the examiner did in Patlex. This Court hold that the Board's claim for construction of destination processor was correct and that priority can be considered and determined during reexamination proceedings. Such a determination was proper because the examiner did not consider priority during the original prosecution. Therefore, the '592 patent was not entitled to claim the priority date of the Parent Application. As a result, Lazaridis was prior art under § 102(e). As Appellant does not dispute that the claims of the '592 patent are anticipated by Lazaridis under § 102, this court affirms the Board's decision invalidating all claims of the '592 patent as anticipated by Lazaridis. Hence the decision of the Board is affirmed