Dallas Bar Association
HEADNOTES October 2013 Volume 38 Number 10
Focus Intellectual Property Law
Anderson Tobin PLLC & Gruber Hurst Johansen Hail Shank LLP Support Access to Justice Campaign By Alicia Hernandez
The law firms of Anderson Tobin PLLC and Gruber Hurst Johansen Hail Shank LLP have each stepped up and donated $15,000 to the 2014 Equal Access to Justice Campaign benefitting the Dallas Volunteer Attorney Program. “It is a pleasure to support the Equal Access to Justice Campaign” said partner Michael K. Hurst. “We stand behind access to justice for all and DVAP and its pro bono lawyers are committed to helping people understand and protect their legal rights.” Gruber Hurst Johansen Hail Shank lawyers are a part of that effort. In addition to financially supporting DVAP, Gruber Hurst lawyers volunteer with the program, and their litigation expertise makes them a perfect match to help DVAP clients in need. Anderson Tobin PLLC, a business litigation and transactional firm of eight lawyers, is likewise committed to defending their clients with skill and passion. “Our passion for the law isn’t limited to our paying clients. We feel the entire legal system and legal profession benefits from having a strong pro bono program in our community,” said R. Scott Anderson, a name partner at Anderson Tobin. The power that lawyers have to impact our world is significant. “Extending some legal advice at a legal clinic can have a tremendous influence on someone’s life even if it is to impart some bad news such as ‘you don’t have a case and let me tell you why,’ said Sally Crawford, DBA President. “That small bit of advice can help people accept what has happened and move on with their lives.” But the giving of legal aid does not stop there. Attorneys with the program also help keep problems from becoming even worse. “Writing a letter on behalf of a pro bono client can have a tremendous impact,” said Shonn Brown, Co-Chair of the 2014 Equal Access to Justice Campaign and a partner at
Focus
Scott Anderson and Aaron Tobin of Anderson Tobin PLLC.
Gruber Hurst. “Suddenly the opposing party who has been ignoring your client is ready to talk after getting a letter from a lawyer and the situation can be resolved before it worsens.” Many of the cases are much more heart wrenching such as Joseph’s case. Joseph’s home was stolen from him by a fraudulent lender. Under the guise of getting him a home improvement loan to help him make his home wheelchair accessible, a fraudulent lender tricked Joseph into selling his home and unknowingly entering into a lease to rent and live in it. Years went by, and Joseph struggled to pay his pricey “home loan” until he received an eviction notice. Joseph was shocked and confused as to why he would be evicted from a house he owned. Only then, did he uncover what had happened to him. He sought DVAP’s assistance and volunteer attorneys Courtney Gilbert, Jon Shepherd, Rick Robinette and Cedric Allen of Alston & Bird immediately accepted Joseph’s case and put their litigation skills to work. Through their efforts in litigating and negotiating with opposing counsel, the volunteer attorneys restored the client’s right to live in his childhood home, payment free, for the rest of his life, as well as
The partners of Gruber Hurst Johansen Hail Shank LLP.
the return of rents previously paid and assistance with yearly maintenance costs. “Joseph’s case demonstrates the great power and influence that lawyers and their legal talents can have on the people in our community. The Equal Access to Justice Campaign is about providing financial support for DVAP, and that financial support directly benefits people like Joseph,” said Aaron Tobin, partner at Anderson Tobin and Co-Chair of the 2014 Campaign. “But for these fine pro bono lawyers, Joseph would have lost everything.” For more information on the Campaign or the Dallas Volunteer Attorney Program, please contact Alicia Hernandez at 214220-7499 or ahernandez@dallasbar.org. Recognition levels and donor benefits are available. In addition, all individual donors at the $1,000 level and above and all firm and corporate donors at the $5,000 level and above will be recognized in an ad in the Dallas Morning News on December 15, 2013 and in Texas Lawyer in January or February 2014. *Note – The client’s name has been changed HN to protect his confidentiality. Alicia Hernandez is the director of the Dallas Volunteer Attorney Program and the DBA director of community services. She can be reached at ahernandez@dallasbar.org.
Intellectual Property
Refurbishers Beware: Using a Manufacturer’s Trademarks By Julia Chester
The owner of a trademark or service mark controls the nature and quality of the goods and services provided under the mark. The Lanham Act, 15 U.S.C. §1051, et seq. governs the rights of trademark owners and provides remedies for infringement for both registered and non-registered marks. Under the Act, no person may use a mark or symbol that so resembles the trademark of another so as to cause likelihood of confusion between the source or origin of products or services provided
under the mark. Refurbished goods that are not under the trademark owner’s control and that are sold bearing the owner’s mark often leads to litigation over trademark infringement. A line of cases starting with the Supreme Court’s decision in Champion Spark Plug Co. v. Sanders, 331 U.S. 125 (1947), hold that a merchant can sell refurbished products bearing the manufacturer’s mark, even of inferior quality, as long as the public is adequately informed of the nature of the product. What emerges from Champion and later cases is that the
Inside 3
Kim Askew Selected for Professionalism Award
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Early Damages Assessment in Patent Cases
11 The Uniform Trade Secrets Act Comes to Texas 13 Is This Something That I Can Patent?
controlling factor in determining refurbishment cases is the likelihood of confusion, not the quality of the product. Under Champion, the inferiority of second hand products is immaterial as long as the product is clearly marked with words like “repaired,” or “used,” and the packaging bears a disclaimer. In that case, the defendant removed burned and pitted portions of spark plugs, welded new metal onto the plugs, wore away porcelain insulation through sandblasting and cleaned and painted the spark plug. The Supreme
Court held that Champion only was entitled to full disclosure because the disclosure distanced Champion from the inferiority of the product, thus lessening the likelihood of confusion. Sixty-six years later, Nitro Leisure Products, LLC v. Acushnet Co., 341 F.3d 1356 (Fed. Cir. 2003), followed Champion in a case involving refurbishment of golf balls. Acushnet, a golf ball manufacturer, asserted trademark infringement in refurbished golf balls bearing the TITLEIST trademark. continued on page 16
DBA MEMBER REMINDER: Your 2014 DBA DUES STATEMENT will be mailed to your office or home in mid-October! 2014 DBA DUES must be paid by December 31, 2013 to continue receiving ALL your member benefits. Thank you for your support of the Dallas Bar Association!