P&A $308 Million Analysis Accepted in Apple Case

We are pleased to announce that a jury accepted our damages analysis in a recent patent infringement case, Personalized Media Communications, LLC (PMC) v. Apple, Inc., that P&A Founder Mike Pellegrino testified in. Just three weeks before trial, Mr. Pellegrino replaced PMC’s damages expert. In preparation, the P&A team analyzed and incorporated nearly 1,000 pages of reports and deposition testimonies to issue a new supplemental report appropriate for trial.

At trial, Mr. Pellegrino provided expert witness testimony against the world’s largest company (Apple) and one of the world’s most prestigious law firms (Kirkland & Ellis), both heavily involved in patent litigation. Despite the defendant’s numerous attempts to thwart Mr. Pellegrino’s testimony and work product, P&A’s efforts survived motions to strike and exclude. The Court ruled that Mr. Pellegrino’s profit split method, as defined in Chapter 11 of Mr. Pellegrino’s BVR’s Guide to IP Valuation, was “sufficiently reasoned, reliable, relevant, and scientific.”

At P&A, we believe our objective approach, proven methods, peer-reviewed sources, and factual underpinnings are a few of the key elements that allow our work efforts to stand up in court. As such, we are honored that the jury in this case validated our analysis to the penny at $308,488,108 and ordered Apple to pay the damages via a running royalty for infringing patents related to digital rights management. To date, the jury verdict is the second highest in 2021.

5 Reasons for Trademark Denials During Pandemics

As promised in our last newsletter, we discuss in this article five reasons the USPTO denies trademarks related to pandemics. Pandemics create many emotions, drive, and perceived opportunities, causing people and organizations to apply for trademarks. However, many reasons exist as to why they do not work out. Click “Read More” to discover five reasons for denied trademarks.

The COVID-19 pandemic, along with other unprecedented events in 2020, affected people worldwide. As such, the USPTO experienced heightened trademark applications, especially regarding the pandemic. While many people envisioned monetary benefits with the potential approval of a granted trademark, the USPTO will likely deny or has already denied trademarks associated with the global pandemic. The following lists five common reasons the USPTO denies trademark applications regarding universal events, such as pandemics:

  • It is offensive: One of the reasons so many people rush to file for trademarks of a new term, even the name of a pandemic, is because there is much hype surrounding it. However, pandemics cause fear and an overall negative connotation. Nobody wants to be reminded of a terrible and fearful time, especially one that causes human loss. COVID has affected hundreds of thousands of people worldwide, causing death, hardship, and so much more. Therefore, it is likely that a trademark application pertaining to a pandemic will be denied based on ethical reasons.
  • It is not tied to a specific product or service: Trademarks are meant to help consumers differentiate products and cut down on search costs. As such, many of the trademarks applied for regarding the pandemic do not promote a specific product that helps consumers differentiate said product from others. Rather, people want to use words associated with the pandemic to place on items such as hats, cups, shirts, and the like. But, the words do not make the products a unique, distinctive brand because they are commonplace.
  • Misconception exists that the first to file “wins”: Many people rush to file a trademark associated with global events before they even know what they will use it for or without the intent to use it because they think that the first to file will win the trademark. However, in the United States, the first to use wins the trademark, as long as certain criteria is met. Therefore, without the intent to use or prove use, the USPTO will certainly deny the trademark application.
  • Pandemics do not last forever: As with everything in life, nothing lasts forever, including a pandemic. As such, the hype eventually dies down and the event becomes an afterthought before long. People move on to other events, concerns, and changes in life. Therefore, terms associated with big events such as a pandemic begin to wan and fewer people talk about them. People get bored eventually and the words don’t hold as much significance once the shock factor dies down and the fear subsides. Even if the USPTO were to approve a trademark, the pandemic could well be over. Many people who file for trademarks during a pandemic plan to use those terms for marketing purposes only during the pandemic. However, the purpose of a trademark is to stand the test of time, not just a certain timeframe. A trademark is distinctive.
  • The term is too common or generic: It is difficult to trademark words and phrases associated with a pandemic because trademarks are meant to differentiate products or services. It is especially difficult when such events are global affairs because everyone uses the terms, making it impossible to tie those terms to a specific product or service. Rather, people think about the actual pandemic from which those terms originated. As such, anytime people see, speak, or hear the terms, they think about the events behind them, not a product or service. Therefore, they become generic and commonplace terms, which cannot be trademarked.

The trademark process takes effort, time, and money. Essentially, it is risky to file for something that is likely not to grant. Pandemics involve negative connotations including death, fear, financial hardships, and even changes in livelihood. Therefore, on a social and moral level, applying for trademarks to capitalize on a deadly pandemic is likely a waste of time.

LES: A New Chapter in Indiana

We are proud to announce that our very own Associate Director of Pellegrino & Associates, Tejas Shah, has launched a Licensing Executives Society (LES) chapter in Indiana! This is great news for professionals interested in all aspects of licensing intellectual property. With more than 50 years of history, LES provides a host of valuable information necessary to promote IP commerce. As an independent, professional organization, LES offers an inviting platform with experience and opportunities to expand member knowledge of technology transfer and licensing. Click Read More to learn about the benefits LES provides and why an Indiana chapter is the perfect addition to this prestigious organization.

Indiana is home to a considerable number of IP-driven organizations, ripe with IP professionals. With these resources, an LES chapter enhances the success of organizations by serving as a platform for IP and licensing professionals to network and grow professional bonds between IP-driven organizations within the state. LES provides a host of benefits and opportunities including education, best practices, standards development, networking, participation, mentoring, and certification, among others. Strategic goals of LES include demonstrating thought leadership, delivering personalized value, and designing meetings for enhanced business value.

Types of organizations that make up LES membership include corporations, law firms, consultants/service providers, universities/government, entrepreneurs, and students. Globally, the LES membership directory boasts nearly 9,000 professionals.

For the recent addition of the Indiana LES chapter, we would like to introduce chapter leaders:

    • Tejas Shah, LES Indiana Chapter Chair, Associate Director, Pellegrino & Associates, LLC
    • John Routon, LES Indiana Chapter Director, Attorney, Barnes & Thornburg LLP
    • Scott Simmonds, LES Indiana Chapter Advisory Council, Partner, Barnes & Thornburg LLP
    • James McGee, LES Indiana Chapter Advisory Council, Senior Director, Corporate Business Development, Eli Lilly and Company
    • T. J. Cole, LES Indiana Chapter Advisory Council, Partner in the Litigation and Intellectual Property Group, Ice Miller LLP
    • Dennis Abbot, LES Indiana Chapter Advisory Council, Director of Global Business Development, Cook Biotech

As you can see, the LES Indiana chapter board offers expertise from a variety of backgrounds. The board welcomes everyone at meetings. For more information on LES, check out the website at https://www.lesusacanada.org/. For the LES Indiana chapter specifically, check out the following link: https://www.lesusacanada.org/group/IN. Be sure to catch the next meeting at Barnes & Thornburg on March 10 from 5:30 p.m. to 7 p.m. Location is 11 S. Meridian St., Indianapolis, IN 46204.

Olympic Mishap Affects Brand Image

The Olympics can bring much fame to athletes, especially to those who score medals. Ryan Lochte is such an athlete. He is one of the world’s most famous swimmers, earning 12 medals in the Olympics with six gold, three silver, and three bronze medals. His earnings make him one of the most decorated swimmers in Olympic history. All of this bodes well for brand image. However, Lochte’s actions while at the 2016 Olympics affect his brand image differently.

Brand image is all about perception. Consumers choose brands based on good experiences with products or people. If a brand touts that it is superior to other brands, and consumers find that this is true or believe it to be true, they continue to trust that particular brand. However, when a product fails, consumers begin to question its validity and seek another brand to take its place. This is why it is important for celebrities, such as Ryan Lochte, to maintain a good image.

At this year’s Olympic games, Lochte made up a story that made national news. Later, he confessed to embellishing the story. This leaves the public questioning his validity, making it harder for them to support him. Therefore, Lochte lost four major endorsements from Speedo, Ralph Lauren Corp., Syneron-Candela, and Airweave. Companies notoriously drop celebrities for bad behavior as they do not want to be associated with it or appear that they condone it. If they condone the bad behavior, then the public is likely to question the companies’ choice in a spokesperson, making it more likely that the public will choose other products in disagreement.

Therefore, Lochte’s actions affect his own brand image, making him less marketable. While he has earned many awards, people often remember other people more for their misdeeds because these come more shockingly. Thus, Lochte may be a decorated swimmer, but the shock value of his misdeed may harm his brand image for years to come. However, some celebrities overcome misdeeds (e.g., Tiger Woods, Michael Phelps, etc.) and eventually recover. Yet, this takes time. Ryan Lochte may have a bit of a break as he is slated to compete on “Dancing With the Stars.” This highly popular show will keep him in the limelight, for which he must be on his best behavior in order to redeem himself. Further, Pine Bros., a cough drop company, recently endorsed Lochte, claiming that the corporate world is too reactive and harsh.

Time will tell the damage to Lochte’s brand image. For now, he gets a few lucky breaks, but he doesn’t completely escape the havoc already done to his image. Perception is everything to a brand.