Volume 10 | Number 2

You may download and read the Full Edition, or click on a citation below for the individual articles. Journal content dating from 2005 is available on the Lexis-Nexis database. Content dating from 2006 is available on the HeinOnline database. Journal content, starting with Volume 8, is now available on the Westlaw database. (subscriptions required).

Rita S. Heimes
10 Wake Forest Intell. Prop. L.J. 98

Since the agrichemical industry entered the business of creating genetically engineered (“GE”) seeds, farming in America has never been the same. Patents on these GE seeds have been reinforced with so-called “license” agreements that accompany their sale to farmers. Failure to abide the terms of these agreements can land a farmer in federal district court defending a patent infringement lawsuit. Several states have passed legislation relating to the terms of these contracts (known in the industry as “Technology Use Agreements” or colloquially as “bag-tag” agreements). This article explores whether state laws relating to these bag-tag agreements are enforceable, or whether the agreements are, as the industry claims, non-exclusive patent licenses governed by federal patent law. In order to resolve that question, one must first determine whether the transfer of the seeds to the farmer exhausts the patent-holder’s rights in the technology accompanying the seeds. Generally, when someone purchases a patented good she is free to use it, take it apart and rebuild it, and even re-sell it to another without infringing the patent through the “first sale” or exhaustion doctrine. The seed industry, however, characterizes the transfer of patented seeds to the farmer not as a sale, but rather as a license to use the patented genes embodied in the seeds. Are the recently-passed state laws – designed to protect farmers and their private property interests from these potentially over-reaching licenses – preempted by federal patent law? This article explores these timely and important issues.

Tsai-fang Chen
10 Wake Forest Intell. Prop. L.J. 153

Issues of venue and forum shopping have always been present in patent litigation, but they recently have attracted the attention not only of practitioners and litigants, but lawmakers as well. This article first examines the perceived problems associated with the current venue rules and suggests that forum shopping is just a symptom of the underlying disparity in the speed, quality, and certainty of the various district courts in resolving patent disputes. Restrictive venue statues are not capable of solving these underlying problems. This article further analyzes the proposed bills in the 111th Congress, and argues that these bills will not solve the perceived problems, but instead increase the burden imposed on the federal judicial system. Finally, this article provides a new proposal with an emphasis on limiting the application of venue transfer rules, which would increase certainty and fairness in venue selection and improve the overall efficiency of the resolution of patent cases.

Josuha R. Ernst and Daniel C. Lumm
10 Wake Forest Intell. Prop. L.J. 177

The Trademark Trial and Appeals Board (“TTAB”) has experienced an uptick in challenges to the federal registration of trademarks as disparaging to discernable groups of individuals brought before it in recent years. Under § 2(a) of the Lanham Act, disparaging marks cannot be placed on the Principle Register. While the TTAB has developed its disparaging mark jurisprudence with respect to individuals as a distinct bar to registration over the last twenty years; the Federal Courts’ have only considered the TTAB’s treatment of these allegedly disparaging mark once during the same span of time. The TTAB’s decisions regarding allegedly disparaging trademarks subsequent to the Federal Courts’ approval of the basic two-prong test for finding a trademark disparaging have uncovered the flaws with the TTAB’s approach to these marks. These flaws create insurmountable hurdles for petitioners seeking to cancel a disparaging mark. Ideally a Federal Court will address these hurdles in the inevitable appeal of the TTAB’s decision in Blackhorse v. Pro-Football, Inc. This article seeks to identify these hurdles to resolving whether or not a trademark is in fact disparaging in degradation of the Lanham Act and proposes pragmatic means for minimizing these hurdles.

Katherine Beckman and Christa Pletcher
10 Wake Forest Intell. Prop. L.J. 215

The concept of trademark regulation is fairly new when one considers the length of time trademark protection has been available. Primarily, trademark law was a common law creature, and the rights given were territorial. There was a noted expansion in trademark regulation with the formation of the World Trade Organization and the Agreement on Trade Related Aspects of Intellectual Property Rights (“TRIPS”). TRIPS serves, among other things, as a guideline for trademark use and recognition by the members of the WTO, representing more than 97% of total world trade. To date, this is the most comprehensive and sweeping regulation of trademarks, reaching all corners of the globe. However, there remains a need for expanding this existing regulation.

To understand the argument for extending global trademark regulation, one must initially understand the purpose of trademarks. According to the Lanham Act, the purpose of a trademark is “to identify and distinguish… goods…from those manufactured or sold by others and to indicate the source of the goods.” TRIPS identifies a trademark as “capable of distinguishing the goods or services of one undertaking from those of other undertakings.” The common factor between these definitions is that trademarks are meant to distinguish one’s goods from another’s goods. This appears to be a universally accepted purpose of trademarks that initiates little, if any, argument. However with the globalization of travel, a new purpose presents itself: distinguishing one’s goods from one’s goods. This article explores this argumentative and new approach to the idea of trademark regulation.