Mechanical and Materials

Since President Obama entered the White House in 2009, his administration has undertaken a number of steps toward stricter policing of international trade secret misappropriation. Those efforts reached a turning point early this year with the release of the “Administration Strategy on Mitigating the Theft of U.S. Trade Secrets.” At the same time, however, news reports have suggested that the Chinese government has facilitated – and even been responsible for – the misappropriation of U.S. trade secrets. As a result, the Obama Administration has ramped up efforts to protect trade secrets against Chinese misappropriation.

On February 14, 2013, Tiffany filed a lawsuit against Costco Wholesale Corporation (“Costco”), alleging that Costco was engaging in the sale of counterfeit TIFFANY diamond engagement rings. Tiffany’s complaint against Costco alleged violations of federal and New York law, including counterfeiting, trademark infringement, dilution, unfair competition, injury to business reputation, false and deceptive business practices, and false advertising. In its defense and in support of its counterclaims, Costco mainly argued that “[t]he word Tiffany is a generic term for ring settings comprising multiple slender prongs extending upward from a base to hold a single gemstone.”  This article reviews the relative strengths/weaknesses of the main arguments presented by the parties and provides an assessment of which party is more likely to prevail based on the strength of these arguments.

The United States Patent and Trademark Office (“USPTO”) published its final rules in the April 3, 2013 Federal Register in preparation for adopting the new USPTO Rules of Professional Conduct (“USPTO Rules”). This is significant for any patent practitioner that has a USPTO registration number. Patent attorneys will no longer need to go back and forth between the old Model Code, as previously adopted by the Office, and the newer Model Rules, used by almost every jurisdiction in the U.S. However, Patent agents not accustomed to the ABA Model Rules will need to familiarize themselves with a completely new set of ethical obligations. We will highlight these changes in a future edition of snippets.

A number of comments were submitted when the USPTO first proposed these rules. One of the more contentious provisions involved the rules impacting the disclosure of confidential information, especially when that information belongs to a different client. The USPTO addressed these comments, and provided a potential solution should that ethical quandary occur. However, it did not change the proposed rules in response to these comments. This article provides an overview of these new rules, and describes the potential ethical quandary related to the disclosure of confidential information, and the USPTO’s response.