Friday, May 5, 2017

Back To Matters Merck, A Moment: Nice Summary of The US Vs. German Merck Name Flap...

This is more than just a usual status update, on the KGaA v. US Merck-related Lanham Act litigation. But it is that, as well. [Backgrounder, by yours truly, here.]

On Monday, the 8th, both the companies party to this dispute will be in federal court in Newark, to handle pre-trial and discovery motions. One of the remaining disputes to be addressed is whether the German Merck must identify all its websites and domain names that might lead to confusion among US resident consumers, about the identity of the the owner of the website (and the trademark "Merck"), via the use of the Merck name -- when viewed by consumers, from a US located computer or phone.

Of course, it is beyond dispute (in this lawsuit at least) that the German company has the right to use the name "Merck" anywhere but inside the US and Canada -- and the US Merck must use "MSD" in all those other jurisdictions, under a now nearly 75 year old agreement.

Below is a nice thumbnail of what this argument is all about, from the overnight letters filed in the US District courthouse in New Jersey (and a link to the full 11 page PDF of that letter, from the highly-regarded IP law firm, McCarter & English -- when I was a much younger lawyer, a partner there taught me much, about the then just blossoming idea of robust encryption, in e-mail messaging):

. . . .This case is about Defendant’s use of the “Merck” name to promote itself and its products in the U.S., in violation of Plaintiffs’ trademark rights and the parties’ agreement. Plaintiffs have propounded two interrogatories asking Defendant to create a list of website addresses where it has used the term “Merck” in a way that was accessible in the U.S. Some of Defendant’s websites fitting this description have a web address that ends with a “top-level domain” associated with a place outside the U.S., such as “.au” for Australia.

Defendant refuses to identify such websites—despite that they are accessible in the U.S.—based on nothing more than Defendant’s assertion that those sites do not “target” American consumers.

The two discovery requests directly at issue in this dispute are Plaintiffs’ Interrogatory Nos. 1 and 3. In Interrogatory No. 1, Plaintiffs’ requested, among other things, a list of webpages where Defendant has used the term “Merck” and that have at any point been accessible to users with a U.S. IP address. . . .

Now you know. I expect that this will all get sorted out at Monday's hearing, in Newark. [Also teed up, for Monday afternoon -- albeit in Richmond, Virginia -- is the oral argument live-streaming, in the Fourth Circuit -- on Muslim Ban 2.0. We will have more on that, over the weekend -- to be certain.]

And. . . as we close shop, and fall silent here, for a bit -- just to mirror the events unfolding above the rings of Saturn -- we will contemplate Lord Byron. . . and do so, deeply. Smile. . . have a wonderful weekend, one and all. I'm out.


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