Insights
Publications

COVID-19 IP Lessons: Consider the Big Picture

April 9, 2020 Articles

In any crisis, there are always those that look to take advantage of the situation.  The coronavirus pandemic is no different. Here, we have highlighted a few of the most egregious fortune hunters, attempting to take advantage of COVID-19 to expand their own intellectual property rights, or to otherwise benefit themselves at others’ expense.

First, while its always important to monitor and enforce your IP rights, one company was recently reminded how important it is to consider the big picture, beyond your immediate legal claims. As many are aware, a critical shortage of reliable coronavirus tests in the U.S. and abroad has impaired efforts to track and slow the disease, in recent weeks. That didn’t stop one company from attempting to enjoin the development and distribution of COVID-19 testing equipment. 

In Labrador Diagnostics LLC v. BioFire Diagnostics, LLC and Biomerieux S.A., a non-practicing entity backed by well-known investment company Fortress Investment Group sued one of the companies making COVID-19 tests, alleging that such tests infringed its US Patents Nos. 8,283,155 and 10,533,994 (originally owned by embattled diagnostics company, Theranos, Inc.).  It sought an injunction from the U.S. District Court for the District of Delaware, to prevent the defendant from developing further tests. While it’s possible that Labrador could have succeeded on the merits of this suit, it faced significant public backlash as soon as the suit was filed, with one commentator calling it potentially “the most tone-deaf IP suit in history.”  While Labrador quickly issued a public statement and walked back some of its claims, that statement may not be adequate to remedy the reputational impact of its short-sighted action. Labrador and Fortress quickly offered royalty-free licenses for anyone developing COVID-19 tests, but Labrador maintained the lawsuit against BioFire under the theory that BioFire’s non-COVID-19 testing still infringed these patents. 

In the trademark realm, as of April 2, 2020, over 100 applications have already been filed anticipating use of “COVID” or “coronavirus” names – to date, these include such applications as COVID-19, COVID-19 INFECTED, COVID-19 TAKES DOWN COVFEFE, FXCK CORONAVIRUS, and CORONAVIRUS SURVIVOR EST. 2020.  Seeking trademark protection in this crisis scenario is not atypical but is a strange choice given that trademarks are awarded where they are used to identify and distinguish an applicant’s goods or services from those of others, or to indicate the source of the applicant’s good(s) or service(s), an inherently unlikely situation here where COVID and coronavirus have become pervasively used terms overnight. 

Applications were filed in a variety of classes for a variety of goods and services including fitness or social networking apps, wrist bands, hats, and various clothing items.  Nearly all of the pending applications were filed on a 1b intent to use basis, meaning the applicants cannot currently show actual use in commerce of these applied-for marks – no surprise there.  In order to maintain an application on a 1b intent to use basis, the applicant must have a bona fide intent to use the marks on the goods or services identified at the time the application was filed, and must submit a sworn statement attesting to that intent.  While these ITU marks could possibly survive the initial review phase to a notice of allowance, the applicants would then need to file statements of use (within at most 3 years, if they timely seek extensions every 6 months) in order to convert these applications from intent to use to actual use marks that can be registered.  And therein lies the greatest oddity of these applications.  Unlike domain names which can be quickly bought and sold, folks warehousing these terms and seeking to profit from trademark ownership have a long road ahead of them:  An ITU application cannot be sold off, so filers cannot profit on their reservation of these marks – if ever – until they show actual use to enable registration of the mark. 

Firm Highlights

Publication

Trade Secret Hygiene for Current Employees

Published on  ACCDocket.com . By Walt Norfleet, Smiths Group plc and Eugene Y. Mar, Farella Braun + Martel LLP In the first two parts of this series on best practices in protecting trade secrets, we...

Read More
News

Gov't Drops IP Theft Charges Against Ex-Jawbone Workers

Law360 reported that the U.S. Attorney’s Office for the Northern District of California in San Jose moved to dismiss all trade-secret-theft charges against the remaining four defendants in what was originally a six-defendant case...

Read More
Publication

Tips for Efficiently Managing New Trade Secret Risks Created by Shelter-In-Place Restrictions and Remote Working

On April 14, 2020, California Governor Gavin Newsom outlined the six “critical indicators” the state will monitor during the next phase of its COVID-19 response as it considers when to modify its statewide shelter-in-place...

Read More
Publication

Protecting Your Internal Intellectual Property Investigation: Privilege and Work Product Under California and Federal Law

As California begins preparing to ease shelter-in-place restrictions, the state’s technology industry is facing the most challenging economic circumstances in recent memory. The state’s technology companies may place new demands on in-house intellectual property...

Read More
News

Farella Braun + Martel Announces 2020 Partner Elevations

SAN FRANCISCO/ST. HELENA, Calif., January 21, 2020: Northern California legal powerhouse Farella Braun + Martel is pleased to announce the election of senior associates Evan Abrams, Lauren Galbraith, and Alex Reese to the partnership...

Read More
News

Sushila Chanana Named to 2020 Leadership Council on Legal Diversity Fellows Program

SAN FRANCISCO, February 13, 2020: Farella Braun + Martel is proud to announce that Sushila Chanana has been named a member of the 2020 class of Fellows participating in a landmark program created by...

Read More
News

Farella Braun + Martel Attorneys, Practices Recognized by Chambers USA 2020

SAN FRANCISCO, April 23, 2020: Farella Braun + Martel announces that Chambers USA has recognized 12 lawyers and five practice areas in the legal directory’s 2020 edition. Individual Rankings: Tyler Gerking – Insurance: Policyholders...

Read More
News

Daily Journal Names Farella Lawyers Among Top IP Lawyers in California

Farella Braun + Martel is proud to announce that partners Jeffrey M. Fisher and James L. Day were named to the 2020 list of “Top Intellectual Property Lawyers” in California by the Daily Journal...

Read More
Publication

Practices to Protect Trade Secrets in Failed Acquisitions and Customer Relationships

Published on  ACCDocket.com . By Walt Norfleet, Smiths Group plc and Eugene Y. Mar, Farella Braun + Martel LLP In part one of this three-part series on best practices for protecting trade secrets and guarding...

Read More
Publication

How Defense Strategies Can Go Awry When Pursuing Concurrent PTAB Relief in Financial Services Patent Litigation

United States Automobile Association (USAA), a financial services company that provides insurance, banking, investment, and retirement products and services for members of the military and their families, filed a surprising patent infringement complaint against Wells Fargo...

Read More