Right of Manufacturer to Sell Wrongfully Refused Goods

Not infrequently, a manufacturer of patented or trademarked goods finds the buyer unwilling or unable to pay for the goods. The manufacturer would like to mitigate damages by selling the specially ordered goods, but it is concerned with patent or trademark infringement. A recent Federal Circuit case (Duncan McCoy v. Mitsuboshi Cutlery) held that the manufacturer can sell the goods, without liability for patent or trademark infringement. This assumes that the refusal of goods by the buyer had nothing to do with the quality of the goods, but was clearly a breach of the purchase contract.To avoid any controversy, it is recommended that a sales contract for specially manufactured goods explicitly allow the manufacturer to resell the goods as ordered (including trademarks), if the purchaser does not pay for them.

The European Trademark

It is now possible to apply to register a mark throughout Europe by filing an application with the European Trademark Office in Spain. This has significant potential cost advantages. Instead of filing multiple applications throughout the Common Market, a single application or registration can cover the entire Common Market. Thus there will be significant savings in attorney fees, government fees, and renewal fees.However, there is a risk associated with this approach. If the mark is not available in any one country, the application will be rejected in its totality. It will then be necessary to file on a country-by-country basis. The total cost will be greater, and there is loss of time.We recommend to our clients that the European Trademark Office can be a good deal, but it should be preceded with a search to make sure the mark is available in all the countries of interest.

Patent and Trademark Office Customer Satisfaction Report

The Patent and Trademark Office conducted a survey to determine customer satisfaction based on criteria established by focus groups. It was determined that trademark customers are more satisfied than patent customers, and both branches of the PTO are rated as providing service that is between average and above average. The areas of the most dissatisfaction appear to be in price and in timeliness of responses.

Reserve Internet Names

Fights are developing over Internet domain names. Enterprising individuals are reserving famous names, and then holding up the owner of the famous name for rights to use of the name on the Internet. That happened to MCI.

Other situations involve companies with legitimate claims for the same domain name. For example, Delta would be an excellent domain name for the Delta Faucet Company and for Delta. The first to reserve the name is the first to get it.

EXECUTIVE REPORT

ON

INTELLECTUAL PROPERTY®

IN THIS ISSUE……

Bringing New Product Ideas Into Production

Henry Keck and Warren Haussler explain how to transform an idea into a successful product.

The Parallels Between Trade Dress and Design Patent Protection

Erin McKeown Joyce discusses the overlapping protection provided by trade dress law and design patent law.

Copyright Protection For User Interfaces

Michael Zarrabian highlights the general trend of restricting protection afforded computer interfaces by copyright laws.

New Matter

The "Executive Report on Intellectual Property®¨ is an informational newsletter. The articles and statements contained in this and all other issues are not intended to be comprehensive or academic. The suggestions and recommendations are very general in scope. Our readership is encouraged to consult with a legal professional for advice on how to handle any particular situation.

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