Intellectual Property Review—Updates and

Transcription

Intellectual Property
Review—Updates and
Changes from 2012
Cosponsored by the
Intellectual Property Section
Friday, February 15, 2013
9 a.m.–1:30 p.m.
Oregon State Bar Center
Tigard, Oregon
4.25 General CLE credits
Intellectual Property Review—Updates and Changes from 2012
Section Planners
Devon Zastrow Newman, Schwabe Williamson & Wyatt PC, Portland
Thomas J. Romano, Kolisch Hartwell PC, Portland
OREGON STATE BAR Intellectual Property Section EXECUTIVE COMMITTEE
Devon Zastrow Newman, Chair
Timothy S. DeJong, Chair-Elect
Karen Wetherell Davis, Past Chair
Anne E. Koch, Treasurer
Thomas L. Evans, Secretary
David Stanley Aman
Allen Field
Ian D. Gates
Kevin M. Hayes
Lydia Pallas Loren
Robert Lyman
Parna A. Mehrbani
Elizabeth Tedesco Milesnick
David C. Ripma
Thomas J. Romano
John D. Russell
Thomas E. Vesbit
The materials and forms in this manual are published by the Oregon State Bar exclusively for the use of attorneys. Neither
the Oregon State Bar nor the contributors make either express or implied warranties in regard to the use of the materials
and/or forms. Each attorney must depend on his or her own knowledge of the law and expertise in the use or modification
of these materials.
Copyright © 2013
OREGON STATE BAR
16037 SW Upper Boones Ferry Road
P.O. Box 231935
Tigard, OR 97281-1935
ii
Table of Contents
1.Developments in Copyright Law 2012—Presentation Slides . . . . . . . . . . . . . . . . . . 1–i
—Alicia M. Bell, Miller Nash LLP, Portland, Oregon
— Elizabeth Tedesco Milesnick, Miller Nash LLP, Portland, Oregon
2A.
Patent Litigation in 2012—Presentation Slides . . . . . . . . . . . . . . . . . . . . . . . . . 2A–i
—Dave Bourgeau, Kolisch Hartwell PC, Portland, Oregon
2B.America Invents Act (AIA) Implementation in 2012—Presentation Slides . . . . . . . . . 2B–i
— Peter David G. Sabido, Kolisch Hartwell PC, Portland, Oregon
3.
Trademark Law Review—2012 Cases and Trends . . . . . . . . . . . . . . . . . . . . . . . . 3–i
—Matthew R. Wilmot, Schwabe Williamson & Wyatt PC, Portland, Oregon
4.
State of USPTO Operations—Presentation Slides . . . . . . . . . . . . . . . . . . . . . . . . 4–i
—Mary Boney Denison, Deputy Commissioner for Trademark Operations, U.S. Patent and
Trademark Office, Alexandria, Virginia
iii
iv
Schedule
8:00Registration
9:00
Copyright Law Review
F Fair use in the educational context (Cambridge University Press v. Becker and The Authors Guild
v. Hathitrust)
F Restoring copyright protection for foreign works (Golan v. Holder)
F The first sale doctrine and foreign-made goods (Kirtsaeng v. John Wiley & Sons)
F Work for hire in the Ninth Circuit (U.S. Auto Parts Network Inc. v. Parts Geek LLC)
F Recent copyright decisions in mobile gaming
Alicia M. Bell, Miller Nash LLP, Portland
Elizabeth Tedesco Milesnick, Miller Nash LLP, Portland
10:00 Patent Law Review
F Important updates on implementation of the America Invents Act (AIA)
F Subject matter eligibility (Mayo v. Prometheus)
F Inducement (Akamai Tech. v. Limelight Networks)
F Software patentability (CLS Bank v. Alice Corp.)
F Hindsight bias (Mintz v. Dietz & Watson)
F Nonobviousness (Alcon Research and Transocean)
Dave Bourgeau, Kolisch Hartwell PC, Portland
Peter David G. Sabido, Kolisch Hartwell PC, Portland
11:00Break
11:15 Trademark Law Review—2012 Cases and Trends
F Federal cases
F Trademark Trial and Appeal Board (TTAB)
F Practical impact of new generic top level domains (gTLDs)
F Potential legislation affecting brand owners (Nike, Inc. v. Already, Inc. dba Yums)
F Prosecution trends
Matthew R. Wilmot, Schwabe Williamson & Wyatt PC, Portland
12:15 Lunch Presentation: “Recent Developments at the USPTO”
Guest Speaker: Mary Boney Denison, Deputy Commissioner for Trademark Operations, U.S. Patent
and Trademark Office, Alexandria, VA
1:30Adjourn
v
vi
Faculty
Alicia M. Bell, Miller Nash LLP, Portland. Ms. Bell is a member of Miller Nash’s business group and
focuses her practice on intellectual property, business owner exit planning, and general business and
corporate transactions. Her intellectual property experience includes enforcement of clients’ intellectual
property rights and registering, maintaining, and licensing copyrights and trademarks. In addition, she
has helped clients develop website policies and investigate and handle online infringement issues,
including domain name disputes and Digital Millennium Copyright Act compliance. Ms. Bell also
works in the areas of corporate governance, business transactions, and contract preparation and review.
She helps clients develop internal policies consistent with the clients’ governing documents and state
and federal law. Her experience also includes mergers, acquisitions, and drafting and reviewing service
and employment agreements.
Dave Bourgeau, Kolisch Hartwell PC, Portland. Mr. Bourgeau’s practice includes all aspects of intellectual
property law, including patent, trademark, copyright, and trade secret matters. He also works on
litigation issues. Mr. Bourgeau has a strong technical background in industrial and nuclear engineering
and extensive practical experience in manufacturing and business—prior to graduating from law
school, he worked as a nuclear power–trained officer in the U.S. Navy, where he was in charge of
reactor controls and electrical systems, and as an engineer and manager in the automotive, shipping,
and food industries, focusing mainly on manufacturing systems and equipment, software application
development, process design, complex planning, and business intelligence. Mr. Bourgeau is a member
of the Multnomah Bar Association and the American Bar Association.
Mary Boney Denison, Deputy Commissioner for Trademark Operations, U.S. Patent and Trademark Office,
Alexandria, VA. Ms. Denison has held her current position since 2011; she is responsible for management
of trademark examination, trademark budget, and outreach, coordinating policies and activities of the
Trademark Organization in support of trademark policy, process, and examination; providing strategic
direction, program management, and administrative oversight to meet performance goals; and project
management for the integration of technology and business processes to support electronic systems and
processing. Previously she was in private practice in Washington, DC, and New York City. From 2008
through 2011, Ms. Denison served as a member of the nine-person U.S. Trademark Public Advisory
Committee. She is past chair of the International Trademark Association. She is admitted to practice in
New York and Washington, DC. She is a regular speaker and author on intellectual property topics and
has been interviewed on National Public Radio and CNN.
Elizabeth Tedesco Milesnick, Miller Nash LLP, Portland. Ms. Milesnick is an attorney with broad
experience in intellectual property matters, particularly patent and trademark litigation. She is also
experienced in trademark practice before the Trade Trial and Appeal Board (TTAB), in various aspects
of patent, trademark, and copyright licensing, and in matters related to trade secret misappropriation
and unfair competition. Ms. Milesnick also practices general commercial litigation and admiralty law.
In 2008, Ms. Milesnick was appointed as an Adjunct Instructor at the University of Oregon School
of Law to teach Patent Law and Policy. Her three-credit class discusses developments in patent law,
including patentable subject matter, requirements for patentability and infringement, the process of
enforcing and obtaining a patent, and contemporary controversies in patent law.
vii
Faculty (Continued)
Peter David G. Sabido, Kolisch Hartwell PC, Portland. Mr. Sabido’s practice includes obtaining, licensing,
and enforcing patent, trademark, copyright, and trade secret rights for his clients. His practice also
includes analyzing and opining on the patentability and right-to-manufacture of inventions, the validity
and infringement of patents, and the usability and registrability of trademarks and service marks. Prior
to his legal career, Mr. Sabido was a senior engineer at Intel Corporation and before that a consultant for
Arthur D. Little, Inc., where he performed safety reviews of various chemical, petroleum, and municipal
facilities. Mr. Sabido is a member of the Oregon Minority Lawyers Association and the Oregon Asian
Pacific American Bar Association. Mr. Sabido is admitted to practice in Oregon and California and
before the U.S. Patent and Trademark Office. He is also a Registered Professional Engineer in California
and a Certified Safety Professional (Retired). He is a regular speaker and author on technology and
intellectual property topics.
Matthew R. Wilmot, Schwabe Williamson & Wyatt PC, Portland. Mr. Wilmot is an intellectual property
attorney specializing in trademark, trade dress, unfair competition, trade secret, copyright, domain
name issues, and litigation of complex intellectual property matters. His practice focuses on searching
and clearing trademarks, prosecuting domestic and international trademark applications, development
and maintenance of trademark portfolios, intellectual property licensing and agreements, copyright
and trademark counseling, and enforcement of intellectual property rights. Mr. Wilmot has successfully
represented clients in intellectual property litigation matters in both state and federal courts, as well
as before the Trademark Trial and Appeal Board. Mr. Wilmot is a member of the Oregon State Bar
Intellectual Property and Business Litigation sections, the Multnomah Bar Association, the International
Trademark Association, and the Oregon Business Association Good Government Committee. He is
admitted to practice in Oregon and California.
viii
Chapter 1
Developments in Copyright Law
2012—Presentation Slides
Alicia M. Bell
Miller Nash LLP
Portland, Oregon
Elizabeth Tedesco Milesnick
Miller Nash LLP
Portland, Oregon
Chapter 1—Developments in Copyright Law 2012—Presentation Slides
1–ii
Developments in Copyright Law
2012
Alicia Bell
Elizabeth Milesnick
Fair Use of Digitized Books in the
Educational Context
• Two cases
–Cambridge University Press v. Becker (N.D. Ga.)
–The Author’s Guild v. HathiTrust (S.D. New York)
1–1
Cambridge University Press v. Becker
Background
• Publishers sued for University’s use of digital excerpts
• University system posted a new copyright policy with
“fair use” checklist after suit was filed
• Question: Whether the new copyright policy caused
infringement
• Answer: Only in 5 out of 75 cases
Fair Use Analysis
• 1 – Purpose and character of use
– Obvious statutory exception (§107)
– Defendants win
• 2 – Nature of the copyrighted works
– Informational
– Defendants win
1–2
Fair Use Analysis
• 3 – Amount and substantiality of the use (new
formula)
–
–
–
–
Books with fewer than 10 chapters – 10% or less
Books with 10 or more chapters – 1 chapter or equivalent
Limited access
Narrowly tailored to demonstrated, legitimate purpose
• Winner depends on whether each excerpt is below
threshold
Fair Use Analysis
• 4 – Effect on Potential Market for/Value of Work
– Copyrighted works are books, not chapters
– Question is market substitution
– Limited access
• Winner depends on whether licensed excerpts are
available
1–3
Fair Use Analysis
• Additional factors considered
– “Limited unpaid copying of excerpts will not deter
academic authors from creating new academic
works”
– “The slight limitation of income from licenses
caused by fair use will not diminish plaintiff’s
ability to publish scholarly works and will promote
the spread of knowledge”
Lessons Learned
• New bright line rule for fair use (in
limited context)
• Publishers should license digital
excerpts
• Schools should have a copyright policy
in place
1–4
The Authors Guild, Inc. v. HathiTrust
Background
• Spin-off of Google Books litigation
• U. of Michigan entered agreement with
Google to digitize library (10 million
books)
Fair Use Analysis
• 1 – Purpose and Character of Use
– Full-text searches, preservation, access for the
print-disabled
– “Transformative” use – different purposes from
original, which cannot be fulfilled by purchasing
another copy of the original
– Defendants win
1–5
Fair Use Analysis
• 2 – Nature of Copyrighted Works
– 76% of the works were fictional
– Not dispositive when the use is transformative
• 3 – Amount of Works Copied
– Entire copies are necessary for the fair use
Fair Use Analysis
• 4 – Impact on Market for/ Value of Works
– Not market substitution because of transformative
purpose
– Future potential licensing opportunities are not
sufficient to show actual harm
– Transformative use does not cause loss of license
fees
1–6
• The Chafee Amendment (§ 121)
– “authorized entities” may reproduce or distribute
copies of certain types of works in specialized
formats for disabled persons
– authorized entity = primary mission to provide
specialized services for the disabled
– The Court holds that U. of Michigan is an
“authorized entity”
Restoring Copyright Protection
for Foreign Works
• Foreign works excluded before 1891
• Then only for foreign authors whose countries
reciprocated, and works printed in the U.S.
• Joined Berne Convention in 1989 but took
“minimalist approach”
• In 1994, Uruguay talks produced WTO and
TRIPS, requiring implementation of Berne
• § 514 of URAA protects foreign authors in U.S.
1–7
Section 514 of URAA
• Extends copyright to works protected in country
of origin, but in U.S. public domain because…
– Lack of copyright relations with author’s country,
– Sound recording fixed before 1972, or
– No compliance with notice or registration formalities.
• Gives remainder of U.S. copyright term
• One-year grace period for users in U.S.
• “Reliance parties” may use until notified
Golan v. Holder (2012)
• Plaintiff orchestra conductors, musicians, and
publishers argue that URAA is unconstitutional
– Exceeds authority under Copyright Clause,
which allows only “limited time”
– Contravenes constitutional mandate to
“promote the “Progress of Science”
– Violates First Amendment freedom of
expression
1–8
Responding to Copyright Clause arguments
• “Congress shall have the Power… [t]o promote the
Progress of Science by securing for limited Times to
Authors… the exclusive Right to their Writings.”
• Per Eldred v. Ashcroft, a “limited time” does not
mean a “fixed” or “inalterable” period.
• Rejects “zero”-term argument. Period of exclusivity
must begin before it can end.
• Constitution does not require each discrete provision
to promote creation of new works; empowers
Congress to look at the big picture.
Responding to First Amendment arguments
• “[S]ome restriction is the inherent and intended
effect of every grant of copyright.”
• The idea/expression dichotomy and fair use defense
are “built-in First Amendment accommodations.”
• Speech is not foreclosed; available in the
marketplace.
 No call for heightened review.
“Congress determined that U.S. interests were best
served by our full participation in the dominant system
of international copyright protection.”
1–9
The First Sale Doctrine and
Foreign-Made Goods
• First sale doctrine (§ 109(a)): “[T]he owner of a particular
copy… lawfully made under this title… is entitled,
without the authority of the copyright owner, to sell or
otherwise dispose of the possession of that copy.”
• Importation (§ 602(a)(1)): “Importation into the U.S.,
without the authority of the [copyright owner], of copies
that have been acquired outside the U.S. is an
infringement of the owner’s exclusive right to distribute
copies.”
• Per Quality King, U.S.-manufactured copies subject to
first sale doctrine. What about foreign-made copies?
Wiley & Sons v. Kirtsaeng
(2nd Cir. 2011)
• Publisher Wiley & Sons has whollyowned subsidiary manufacturing
books for sale in foreign countries.
• Kirtsaeng’s friends and family send
books printed by Wiley Asia, and
Kirtsaeng sells on eBay in U.S.,
making $ 1.2M.
• Wiley & Sons argues activity is
infringing importation; Kirtsaeng
asserts first use doctrine as defense.
1–10
(2nd Cir. 2011)
• Ambiguous whether § 109’s “lawfully made under this
title” is “lawfully made in U.S.” or encompasses any
work subject to protection under © title, including
foreign works.
– In 9th Circuit Omega, held § 109 does not apply to foreignmade items. USSC equally divided, with Kagan recused.
• § 602 intends to give © owners control over imports,
but allowing § 109 defense would limit provision to
pirated copies and copies not yet sold.
• “Close call,” but Congress can correct court’s judgment.
(2nd Cir. 2011)
• Dissent: “The lawfulness of the manufacture of a
particular copy should be judged by U.S.
copyright law. A U.S. copyright owner may make
her own copies or authorize another to do so.
Regardless of the place of manufacture, a copy
authorized by the U.S. rightsholder is lawful
under U.S. copyright law.”
• Argued at Supreme Court 10/29/12. Justices
reportedly skeptical of publisher’s position.
1–11
“Work for Hire” Test in 9th Circuit
U.S. Auto Parts Network v. Parts Geek
• Software developer licensed e-commerce software
to startup auto parts company.
• Later hired by company as “director of eServices”
and made “modifications and enhancements” to
software program.
• After developer resigns, does company own any part
of the software program?
• Involves “work made for hire” test and question of
derivative work.
(9th Cir. 2012)
• § 101: Work made for hire is “a work prepared by an
employee within the scope of his or her
employment.”
• Adopted Restatement three-prong test for “within
the scope of employment”:
a) Kind of work employee is employed to perform;
b) Occurs substantially within the authorized time and
space limits; and
c) Is actuated, at least in part, by a purpose to serve the
employer.
1–12
(9th Cir. 2012)
• Derivative work meets originality requirement if:
1) Original aspects of the derivative work are more
than trivial; and
2) Original aspects must reflect the degree to which it
relies on preexisting material and must not affect
the scope of copyright protection in preexisting
material.
•
The additional software feature was a derivative
work that developer was employed to create.
Authored by employer.
Copyright Trends in Mobile Gaming
“How similar is too similar?”
• Protection for games has traditionally
been limited by the idea v. expression
dichotomy
• Recent decisions indicate a broader
scope of protection for games
1–13
Tetris Holding v. Xio Interactive
(D.N.J May, 2012)
Mino (iPhone app)
Tetris (NES version)
Background
• Xio admits Mino is its version of Tetris
• License request was refused
• Xio argues that Tetris is essentially
unprotectable because all expression is
related to functionality/rules
1–14
• “Merger doctrine” – when idea and
expression are inseparable
• Court determines there are endless ways to
express the idea of Tetris (according to Xio’s
expert)
• Court lists protectable elements in Tetris and
finds Mino “akin to literal copying”
Spry Fox, LLC v. LOLApps, Inc.
(W.D. Wash. 2012)
Triple Town (Spry Fox) Yeti Town (LOLApps)
1–15
Background
• Spry Fox approached LOLApps to port
its Triple Town to iOS
• 5 months later, LOLApps announced
Yeti Town
• Scenes a faire: Use of points/coins, display
of game tips in margins, in-game
marketplace
• Functional: 6x6 grid, pricing structure, limits
on in-game purchases
• Thin protection for language in dialogue
boxes and game rules
1–16
• Extrinsic test – objective similarities
between both ideas and expression
• Intrinsic test – Overall concept and feel
through eyes of an ordinary observer
• Plausible that Spry Fox could pass extrinsic
and intrinsic tests for substantial similarity,
survives motion to dismiss
Electronic Arts v. Zynga
• New complaint filed August, 2012 in
N.D. Cal.
• Sims Social (E.A) v. The Ville (Zynga)
• Real-life simulation games where the
characters’ appearance is player choice
1–17
Electronic Arts v. Zynga
Contact Us
Alicia Bell
alicia.bell@millernash.com
Elizabeth Milesnick
elizabeth.milesnick@millernash.com
Miller Nash Portland
3400 U.S. Bancorp Tower
111 S.W. Fifth Avenue
Portland, OR 97204
T: 503.224.5858
F: 503.224.0155
1–18
1–19
1–20
Chapter 2A
Patent Litigation in 2012—Presentation Slides
Dave Bourgeau
Kolisch Hartwell PC
Portland, Oregon
Chapter 2A—Patent Litigation in 2012—Presentation Slides
2A–ii
Patent Litigation in 2012
Dave Bourgeau
Intellectual Property Attorney
Kolisch Hartwell, P.C.
bourgeau@khpatent.com
February 15, 2013
© Kolisch Hartwell 2013 All Rights Reserved, Page 1
Overview
•
Subject Matter Eligibility - Mayo v. Prometheus
•
Inducement - Akamai v. Limelight
•
Software Patentability - CLS Bank v. Alice
Corp.
•
Hindsight Bias - Mintz v. Dietz
•
Strategy - Apple v. Samsung
2A–1
Mayo v. Prometheus (132 S.Ct. 1289)
•
Issue:

•
Claimed:

•
§ 101 Patent Eligibility for claims involving “laws of nature”
Process of administering drug (thiopurine), determining resulting
metabolite levels in patient, adjusting dose based on levels
Posture:




Dist. Ct. – SJ for Mayo: Unpatentable law of nature
CAFC – Reversed: Patentable under Machine or Transformation
S.Ct. – Reconsider under Bilski
CAFC – Still Patentable since Machine/Transformation Test is a
good clue
Mayo v. Prometheus (cont.)
•
Sample Claim:
A method of optimizing therapeutic efficacy for treatment of an immunemediated gastrointestinal disorder, comprising:
(a) administering a drug providing 6-TG to a subject having said immunemediated gastrointestinal disorder; and
(b) determining the level of 6-TG in said subject having said immunemediated gastrointestinal disorder,
wherein the level of 6-TG less than about 230 [units] indicates a need to
increase the amount of said drug subsequently administered to said
subject and
wherein the level of 6-TG greater than about 400 [units] indicates a need to
decrease the amount of said drug subsequently administered to said
subject.
2A–2
•
The Discovery Embodied in the Patent:

•
The Court’s Two Main Points:


•
Those in the field knew there was a correlation, but did not know the
precise correlation between metabolite levels and likely harm or
ineffectiveness.
“The steps . . . (apart from the natural laws themselves) involve wellunderstood, routine, conventional activity previously engaged in by
researchers in the field.”
“[U]pholding the patents would risk disproportionately tying up the use of
the underlying natural laws, inhibiting their use in the making of future
discoveries.”
Unanimous Holding: Unpatentable under § 101
•
•
•
Metabolism of compounds = purely natural
process
Relationship of metabolites to effectiveness of
drug “exists in principle apart from any human
action.”
Simply describing the relationship is not
patentable
2A–3
•
Court’s Analogies:


•
Like telling linear accelerator operators to determine
how much energy an amount of mass has produced
by using E = mc2
Like telling boat builders to refer to the Archimedes
Principle to determine if an object will float
Machine or Transformation Test


Could satisfy the claim without any transformation
Does not trump the “law of nature” exclusion
•
Court’s Claim Analysis:




Administering Step – simply refers to an existing
audience (doctors treating certain patients with
certain already-known drugs)
Determining Step – simply refers to determining level
of relevant metabolites in the blood by whatever
process is desired (well-known methods already
exist)
Wherein Clauses – recite the natural laws
Taken together – still nothing new; simply an
instruction to apply applicable laws
2A–4
•
“[T]he claims inform a relevant audience about
certain laws of nature; any additional steps
consist of well understood, routine, conventional
activity already engaged in by the scientific
community; and those steps, when viewed as a
whole, add nothing significant beyond the sum
of their parts taken separately.” (132 S.Ct. 1289 at 1298)
Akamai Tech. v. Limelight Networks
(692 F.3d 1301)
•
•
•
Issue: Induced infringement of a method claim
where no one party performs all steps
En Banc rehearing of 2010 case; Combined with
McKesson v. Epic Systems
Two Patents: one on efficient delivery of web
content, and one on electronic communication
between doctors and patients.
2A–5
Akamai v. Limelight (cont.)
•
Dist. Courts held that neither defendant was
liable for infringement


•
Limelight – Limelight performed all but one step,
which was performed by customers
Epic – patients and doctors performed the steps
Principles Relied On (still individually valid):


Liability for induced infringement requires proof of
direct infringement
Liability for direct infringement requires that a single
party commit all necessary acts required to infringe
•
BUT!

•
•
“Requiring proof that there has been direct infringement is not
the same as requiring proof that a single party would be liable as
a direct infringer.”
Court explicitly overruled BMC Resources v.
Paymentech (Fed. Cir. 2007)
“To be clear, we hold that all the steps of a claimed
method must be performed in order to find induced
infringement, but that it is not necessary to prove that all
the steps were committed by a single entity.”
2A–6
•
Policy and Doctrinal Support:




Direct infringement is a strict liability tort
Indirect infringement is not: requires the inducer to act
knowing that the intended acts constitute patent
infringement (i.e., specific intent)
Does not run same risk of extending liability to
persons who are unaware of a patent or of others
performing other steps
Inducing others to collectively infringe has same
impact on the patentee as inducing one other to
infringe
Elements
• If inducer does not perform any steps:



•
[1] Knowledge of patent
[2] Induced performance of the steps of the method claimed in the
patent
[3] The steps were in fact performed.
If inducer performs one or more steps itself:




[1] Knowledge of patent
[2] Performed one or more steps of the claimed method
[3] Induced performance of remaining steps
[4] Remaining steps in fact performed
2A–7
CLS Bank v. Alice Corp. (685 F.3d 1341)
•
•
•
•
Issue: Patent eligibility of software claims
Claimed: Method of processing financial
transactions (stock or currency trades)
Note: claims are recited variously as method,
system, and computer program product
Posture: Dist. Ct. said ineligible under § 101;
CAFC held claims patentable; Rehearing en
banc has been granted; briefing in progress
CLS Bank v. Alice Corp. (685 F.3d 1341)
•
CAFC Analysis (now vacated pending
rehearing)



•
Turns on “abstract idea” exception
The disqualifying characteristic of abstractness must
exhibit itself manifestly
Court must be “wholly convinced” that the subject
matter of the claim is abstract
Dissent

Prometheus says to be patent eligible a claim must
include an inventive concept
2A–8
CLS Bank v. Alice Corp.
•
Questions to be briefed:


What test should the court adopt to determine
whether a computer-implemented invention is a
patent ineligible "abstract idea"; and when, if ever,
does the presence of a computer in a claim lend
patent eligibility to an otherwise patent-ineligible idea?
In assessing patent eligibility under 35 U.S.C. § 101
of a computer-implemented invention, should it matter
whether the invention is claimed as a method,
system, or storage medium; and should such claims
at times be considered equivalent for § 101
purposes?
Mintz v. Dietz & Watson (679 F.3d 1372)
•
•
Issue: CAFC reiterates strong stance against
hindsight bias
Claim:

•
A stockinette integrated into a netting to encase meat
products and produce a checkerboard pattern on the
meat’s surface (without undesired sticking to the
surface)
Term at issue: “longitudinal and lateral strands
… intersecting in locking engagement with one
another”
2A–9
Mintz v. Dietz & Watson
•
Dist. Court found this netting/stockinette to be
obvious



•
Relevant art = Knitting
Question: Whether obvious to fix each point of
intersection of each strand to form a checkerboard
pattern.
Conclusion: “common sense”
CAFC: common sense = knowledge so basic it
certainly lies w/in skill of PHOSITA
•
CAFC said this was “a form of prohibited
reliance on hindsight”




•
Relevant art = the “meat encasement art”
Mere recitation of “common sense” without explanation is
insufficient
The Dist. Ct. erroneously used the invention to define the
problem the invention solved
Real question: Is there clear and convincing evidence that a
PHOSITA of meat encasement at the time of the invention would
have recognized the adherence problem and found it obvious to
produce the claimed structure to solve that problem?
Note: CAFC does not cite KSR in this opinion
2A–10
•
•
Reiterated importance of Objective Guideposts
as “powerful tools” for avoiding hindsight bias
Dist. Court should ALWAYS consider evidence
presented on:







Unexpected results
Expert skepticism
Copying
Commercial success
Praise by others
Failure by others
Long-felt need
Apple v. Samsung
•
•
•
•
Apple awarded $1B in damages
Mix of utility and design patents found to be
infringed, as well as trade dress of the iPhone
Including design patents and trade dress claims
allowed Apple to tell a “copycat” story, including
purely visual impact
Seems to indicate that clients should pursue IP
protection for their products including more than
just utility patents whenever possible
2A–11
Apple v. Samsung
Dave Bourgeau
520 SW Yamhill Street, Suite 200
Portland, Oregon 97204
(503) 224–6655
bourgeau@khpatent.com
2A–12
2A–13
2A–14
Chapter 2B
America Invents Act (AIA) Implementation
in 2012—Presentation Slides
Peter David G. Sabido
Kolisch Hartwell PC
Portland, Oregon
Chapter 2B—America Invents Act (AIA) Implementation in 2012—Presentation Slides
2B–ii
America Invents Act (AIA)
Implementation in 2012
Peter D. Sabido
sabido@khpatent.com
February 15, 2013
Overview
•
Inventor’s Oath or Declaration
•
Citation of Written Statements in Patent File
•
Inter Partes Review
•
Post-Grant Review
•
Third Party Submission of Prior Art
•
Supplemental Examination
•
Transitional Program for Covered Business Method
Patents
•
Priority Examination for Important Technologies
2B–1
Inventor’s Oath or Declaration (§ 4)
•
Assignee can be the applicant

•
Assignments can be used

•
•
Must include required oath or declaration statements
Postponement of filing of oath or declaration

•
Still need inventor’s oath or declaration
Until application is otherwise in condition for allowance
Substitute statement in lieu of oath or declaration
Defective oath or declaration is curable

Patent not invalid or unenforceable if cured
Citation of Written Statements in Patent File (§ 6)
•
•
For issued patents
Any person may file a written submission with:


•
Statements must identify:



•
Prior art consisting of patents or printed publications
Statements of patent owner filed by the patent owner in a proceeding
regarding claim scope
Forum and proceeding in which patent owner filed statement
Specific papers submitted that contain the statements
How each statement is a statement regarding claim scope
Explanation required

Pertinence and manner of applying to at least one claim
2B–2
Post Grant Review (§ 6)
•
May be filed starting September 16, 2012


•
Various statutory ground(s) based on:


•
Only business method patents and patents involved in
interferences
Can file for any patent as of March 16, 2013
Patents and printed publications
Other factual evidence and expert opinions
Must be filed:


Before filing a civil action challenging validity of patent
Within nine months of the patent grant
Post Grant Review (§ 6) [contd.]
•
Granted if:


•
Subsequent civil action challenging validity of patent
automatically stayed until:



•
“More likely than not” that at least one of challenged claims is
unpatentable
Raises a “novel or unsettled legal question” that is important to
other patents or patent applications
Patent owner moves court to lift stay
Patent owner files action or counterclaims for infringement
Petitioner moves court to dismiss action
No stay of motion for preliminary injunction

Infringement action filed within 3 months of patent grant date
2B–3
Post Grant Review (§ 6) [contd.]
•
Estoppel with respect to any ground raised or reasonably
could have raised:



•
•
No estoppel if settled before decision on merits
Patent owner may file motion to amend patent:


•
USPTO proceeding
Civil action
ITC proceeding
Can cancel, amend, or substitute claims
Cannot enlarge scope or add new matter
Petitioner may appeal written final decision to the
Federal Circuit
Inter Partes Review (§ 6)
•
•
•
•
Replaces existing Inter Partes Reexamination Procedure
Available for all patents
35 U.S.C. § 102 or § 103 grounds based on patents and
printed publications
Must be filed:



•
Before filing a civil action challenging validity of patent
Within one year of being served with infringement complaint
After later of nine months after grant date or termination of postgrant review
Granted with “reasonable likelihood” that the third party
will prevail
2B–4
Inter Partes Review (§ 6) [contd.]
•
•
•
•
Same automatic stay as post grant review
Same estoppel as post grant review
Patent owner may file motion to amend patent
Petitioner may appeal written final decision to the
Federal Circuit
Third Party Submission of Prior Art (§ 8)
•
•
Filed for pending patent applications
Documents:



•
•
Explanation of relevancy
Must be filed prior to earlier of:


•
Patents
Published patent applications
Other printed publications
Notice of allowance
Later of six months after publication date or the date of a first
Office action on the merits
No service requirement
2B–5
Supplemental Examination (§ 12)
•
•
•
For patent owner after patent has issued
Filed at any time during enforceability period of patent
Any information in writing “believed to be relevant to the
patent”

•
•
Limit of twelve items per request
Ex parte reexamination ordered if “substantial new
question of patentability”
Proceed under ex parte reexamination procedures

Except for patent owner statement
Supplemental Examination (§ 12) [contd.]
•
Effect

•
Patent not unenforceable on basis of conduct relating to
information if information was considered, reconsidered, or
corrected during supplemental examination
Exceptions


Prior allegations in civil action or FDCA notice
Defense in patent enforcement actions
o
Unless supplemental examination (and any reexamination ordered)
concluded before action brought
2B–6
Covered Business Method Patents (§ 18)
Specific post-grant reviewing proceeding
Covered business method patents:
•
•


Method or apparatus that performs data processing or other
operations used in practice, administration, or management of a
financial product or service
Does not include patents for “technological inventions”
May be requested only if sued for patent infringement
Various statutory grounds based on published and nonpublished evidence
Estoppel only in other USPTO proceedings
Program expires on September 16, 2020
•
•
•
•
Priority Exam for Important Technologies (§ 25)
•
•
Prioritization of examination of applications for products,
processes, or technologies that are important to the
national economy or national competitiveness
As of February 5, 2013, the USPTO has not released
any information regarding implementation
2B–7
Peter D. Sabido
520 SW Yamhill Street, Suite 200
Portland, Oregon 97204
(503) 224–6655
sabido@khpatent.com
2B–8
2B–9
2B–10
Chapter 3
Trademark Law Review—2012 Cases and Trends
Matthew R. Wilmot
Schwabe Williamson & Wyatt PC
Portland, Oregon
Contents
I.
Trademarks Generally . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3–1
A.
What Is a Trademark? . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3–1
B.
Classes of Trademarks . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3–1
C.
Use vs. Registration . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3–1
D.
Claim for Infringement . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3–2
II.
Significant/Interesting Federal Cases from 2012 . . . . . . . . . . . . . . . . . . . . . . . . . . 3–2
A.
Color Marks . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3–2
B.
Key Word Advertising . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3–3
Relevance of Nonconsumer Confusion to Likelihood of Confusion Analysis . . . . . 3–4
C.
D.Damages . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3–4
E.Licensing . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3–6
F.
Nike, Inc. v. Already, Inc. dba YUMS . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3–6
III.
Significant/Interesting Trademark Trial and Appeal Board Cases from 2012 . . . . . . . . . . 3–7
Bona Fide Intent to Use . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3–7
A.
B.Fraud . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3–8
Registration of Official Insignia . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3–9
C.
D.Dilution . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .3–10
IV.
Issues and Trends from 2012 and Looking Forward . . . . . . . . . . . . . . . . . . . . . . . .3–11
Practical Impact of New gTLDs . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .3–11
A.
B.
Legislation Affecting Brand Owners . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3–12
Presentation Slides . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3–15
Chapter 3—Trademark Law Review—2012 Cases and Trends
3–ii
I. Trademarks Generally
A.What Is a Trademark?
A trademark is a word, name, symbol, design, or similar indicator of source used in connection
with goods or services to indicate the source of the goods or services and to distinguish the goods and
services of third parties.
1.
You can trademark a sound, a smell, or even a color.
2.
Product packaging and product designs can constitute protectable trade dress in certain
circumstances.
B.
Classes of Trademarks
The class of the mark dictates the protection afforded it.
1.Generic. A category of or type of product or service.
Never protectable as a trademark.
2.Descriptive. A mark that immediately conveys to the consumer some idea as to the
nature, qualities, features, or characteristics of the goods or services sold under the mark.
Enforcement requires a showing of secondary meaning. A mark has achieved secondary meaning
when a significant portion of consumers associate the mark with a single, anonymous source. Factors
considered by courts in determining whether secondary meaning has been achieved include: (a) the
nature and extent of advertising; (b) length of use; (c) unsolicited media coverage; (d) sales under the
mark; and (e) direct evidence such as consumer declarations or consumer surveys.
3.Suggestive. A mark that hints or suggests at the nature, qualities, features, or characteristics
of the goods or services sold under the mark.
a.
Fine line between descriptive and suggestive marks—if the connection between the
goods/services and the mark is not immediate, then mark is suggestive rather than descriptive.
b.
Suggestive marks are considered inherently distinctive, but the breadth of protection
afforded suggestive marks is lower than that afforded to arbitrary or fanciful marks.
4.Arbitrary. A term that has meaning in one context but not in the context in which it is
being used.
5.Fanciful. A coined or made-up word or symbol.
C.
Use vs. Registration
1.
Trademark rights are created through use in commerce and not through registration.
However, there are limitations associated with common law (i.e., unregistered) marks.
a.
Limited to the geographic territory in which the mark is used.
b.
A party asserting common law rights bears the evidentiary burden of proving that the
party has rights in the mark and that the mark is valid.
2.
Registration enhances the rights provided by common law. In particular, owners of
federally registered trademarks receive the benefit of:
a.
Presumptions of validity, ownership, and exclusivity of use across the United States;
b.
Protection against registration of confusingly similar marks;
c.
Use of the ® symbol; and
d.
Eligibility for incontestability after five years of uncontested registration.
3–1
D.
Claim for Infringement
Plaintiff must show the following.
1.
That the plaintiff has rights in the mark.
a.
The plaintiff has rights in a mark where the mark is shown to be distinctive (either inherent
or acquired) and that, as between the plaintiff and the defendant, the plaintiff has shown that it has
priority.
b.
§ 1115(a).
A federal registration provides prima facie proof of rights in the mark. See 15 U.S.C.
That the defendant is using the mark as a trademark.
2.
3.
A likelihood of confusion among consumers as to source, association, affiliation,
sponsorship, and/or connection. Likelihood of confusion factors (not exhaustive):
a.
Similarity in sound, sight, commercial impression;
b.
Relatedness of the goods/services;
c.
Strength of the marks;
d.
Channels of trade;
e.
Sophistication of potential purchasers; and
f.
Evidence of actual confusion.
II. Significant/Interesting Federal Cases from 2012
A.
Color Marks
Christian Louboutin S.A. v. Yves Saint Laurent America, Inc., 696 F.3d 206 (2d Cir. 2012)
1.Holding. The color red for the outsole of women’s shoes was protectable as trademark,
but only in connection with the use of a lacquered red outsole that contrasts with the adjoining portion
of the shoe. However, the Second Circuit did not find infringement, as the shoe sold by defendant
monochromatic, it did not infringe the trademark rights held by the plaintiff.
2.
Summary and Analysis. Plaintiff fashion designer appealed the district court’s denial
of a preliminary injunction against a defendant competitor for alleged infringement of the plaintiff’s
alleged trademark consisting of a red, lacquered outsole on a high-fashion woman’s shoe. The district
court denied the preliminary injunction, holding that the plaintiff had failed to show a likelihood of
success on the merits on the basis that a single color can never serve as a trademark in the fashion
industry because a single color is inherently “functional.”
The Second Circuit reversed, relying primarily on the Supreme Court’s decision in Qualitex Co.
v. Jacobson Products Co., 514 U.S. 159 (1995), and further holding that there is no per se rule against
the protection of single color marks whether in the fashion industry or otherwise. Citing Qualitex,
the Second Circuit rejected the proposition that a single color cannot function as a trademark in the
fashion industry, and instead held that the aesthetic functionality doctrine, as applied on a case-by-case
basis, fairly balances concerns regarding competition and intellectual property rights. Under Qualitex,
a particular feature or design is not aesthetically functional unless it provides a non-reputation–related
competitive advantage. Accordingly, a single color mark can be protected as a trademark so long as
the color is nonfunctional when used in connection with the product at issue and has also acquired
secondary meaning.
Notwithstanding the Second Circuit’s recognition that a single color can function as a trademark
in the fashion industry, the court did not reach the issue of whether plaintiff’s red sole mark was
aesthetically functional. Instead, the court concluded that the secondary meaning evidence submitted
3–2
by plaintiff supported a finding of secondary meaning only where the red outsole contrasts with the
adjoining portion of the shoe. Because the alleged infringing shoe was monochromatic, the defendant’s
shoe was not an infringement of plaintiff’s trademark rights.
3.
Practical Implications
F
No per se rule in fashion industry against enforceability of single color marks.
F
required.
Color marks protectable, but a showing of secondary meaning will almost always be
F
Remains to be seen how this impacts the Ninth Circuit’s position on aesthetic functionality.
The Ninth Circuit very narrowly construed the aesthetic functionality doctrine in Au-Tomotive Gold,
Inc. v. Volkswagen of America, Inc., 457 F.3d 1062 (9th Cir. 2006), as having very limited application. A
recent Ninth Circuit opinion appeared to interpret the aesthetic functionality doctrine more broadly
(see Fleischer Studios, Inc. v. A.V.E.L.A., Inc., 636 F.3d 1115 (9th Cir. 2011)), but the Ninth Circuit later
withdrew the opinion and substituted a new opinion without the aesthetic functionality analysis. See
Fleischer Studios, Inc. v. A.V.E.L.A., Inc., 654 F.3d 958 (9th Cir. 2011).
B.Key Word Advertising
Rosetta Stone, Ltd. v. Google, Inc., 676 F.3d 144 (4th Cir. 2012)
1.Holding. Summary judgment was inappropriate on plaintiff’s claims for trademark
infringement, contributory infringement, and dilution, as a reasonable trier of fact could conclude that
Google’s sale of key words to third-party advertisers is likely to cause confusion among consumers as
to source, sponsorship and affiliation.
2.
Summary and Analysis. Rosetta Stone sued Google for trademark infringement and
dilution based on Google’s sale of Rosetta Stone’s marks as keywords. The district court entered
summary judgment against Rosetta Stone’s trademark claims. On appeal, the Fourth Circuit reversed.
On the direct infringement claim, the Fourth Circuit focused on evidence that had been
discounted by the district court. For example, the court concluded that the deposition testimony of
five consumers who mistakenly purchased a counterfeit Rosetta Stone software product—evidence
that the district court deemed de minimis—supported an inference of actual confusion. Similarly, the
court pointed to a change in Google’s AdWords policy that expanded its AdWords program and lead
to increased revenue as evidence from which a trier of fact could infer an intent to cause confusion.
Lastly, an internal Google study and a consumer survey performed by Rosetta Stone further showed
significant consumer confusion as a result of Google’s sale of Rosetta Stone’s marks as key words.
Taken together, this evidence at a minimum showed uncertainty among consumers as to sponsorship,
approval, or authorization of the third-party sponsored link by Rosetta Stone.
The Fourth Circuit likewise reversed summary judgment on Rosetta Stone’s contributory
infringement claim. While generalized knowledge of infringement would not be sufficient to support
a claim for contributory infringement, Google had knowledge of “identified individuals” who were
using sponsored links to infringe Rosetta Stone’s marks, as Rosetta Stone had provided Google with
a spreadsheet of approximately 200 instances of sponsored links advertising counterfeit Rosetta Stone
products. Lastly, with respect to dilution, the Fourth Circuit reversed, disagreeing with the position
taken by the district court that Rosetta Stone’s marks could not have been diluted because their public
recognition increased greatly during the relevant time period. The Fourth Circuit rejected such a blanket
rule as being contrary failing to the multi-factor analysis contemplated in the Lanham Act.
This case has since been settled.
3–3
3.
FCompare Rosetta Stone to Ninth Circuit’s opinion in Network Automation, Inc. v. Advanced
System Concepts, Inc., 638 F.3d 1137 (9th Cir. 2011), which tends to favor the advertiser. Could this
indicate a circuit split?
F
Will likely revive interest on the part of plaintiffs in suing Google and other search engines
over key word programs.
F
Confusion evidence is imperative in key word advertising cases. Must show, by way of
actual confusion, a consumer survey, or other evidence supporting actual confusion, that some level of
actual confusion exists in the marketplace.
C.
Relevance of Nonconsumer Confusion to Likelihood of Confusion Analysis
Rearden LLC v. Rearden Commerce Inc., 683 F.3d 1190 (9th Cir. 2012)
1.Holding. While consumer confusion is most relevant to determining whether confusion
between marks is likely, nonconsumer confusion can also be relevant to the likelihood of confusion
analysis in appropriate circumstances.
2.
Summary and Analysis. In Rearden, the mark at issue was not being used in connection
with traditional consumer goods/services, as the plaintiffs—who were affiliated entities—were all in
the business of providing technology incubator and artistic production services almost exclusively to
companies under common ownership with the plaintiffs. The district court granted summary judgment
in favor of the defendant on plaintiffs’ trademark infringement claim, holding that no reasonable finder
of fact could conclude that confusion was likely between the marks.
The Ninth Circuit reversed, holding that there were sufficient disputes of material fact such that
summary judgment was not unwarranted. In particular, the Ninth Circuit agreed with defendant that
the district court had erred in failing to take into account evidence of relevant nonconsumer confusion
in its analysis. According to the Ninth Circuit, nonconsumer confusion may be relevant to the likelihood
of confusion analysis where there is confusion among: (a) potential customers; (b) nonconsumers whose
confusion could create an inference that consumers are likely to be confused; and (3) nonconsumers
whose confusion could influence consumers. For example, a trade publication that noted confusion
among conference attendees and another trade publication that placed excerpts of an interview with
plaintiffs’ founder and a picture of the founder in a featured article on the defendant was an example
of confusion among nonconsumers whose confusion could influence consumers. This nonconsumer
confusion was sufficient to create a dispute of material fact.
3.
Practical Implications. Don’t forget about nonconsumer confusion in cases where, based
on the nature of the goods or services at issue, consumer confusion is difficult to show.
D.Damages
1.
Skydive Arizona, Inc. v. Quattrocchi, 673 F.3d 1105 (9th Cir. 2012)
a.Holding. The Ninth Circuit affirmed the jury’s award of damages despite plaintiff not
providing a specific mathematic formula to calculate damages. However, the district court’s award
of enhanced damages was improper because such enhanced damages were intended to punish the
defendant as opposed to fairly compensating the plaintiff for the plaintiff’s infringing conduct.
b.
Summary and Analysis. In Skydive Arizona, plaintiff owned and operated one of the
largest skydiving centers in the world. Following the entry of partial summary judgment and a trial, a
jury awarded damages in favor of the plaintiff, including an award of $2.5 million in actual damages for
trademark infringement. The trial court then doubled the amount awarded plaintiff as actual damages.
3–4
On appeal, the Ninth Circuit, among other things, upheld the jury’s award of actual damages
but reversed the district court’s award of enhanced damages. Under 15 U.S.C. § 1117(a) of the Lanham
Act, the court may award, in its discretion, “(1) defendant’s profits, (2) any damages sustained by
the plaintiff, and (3) the costs of the action.” The actual damages awarded by the jury were largely
attributable to the harm to plaintiff’s goodwill as a result of the defendant’s intentional infringement.
In order to calculate damage to goodwill, the Ninth Circuit recognized that a jury may rightfully look to
the plaintiff’s expenditures in building its reputation in order to estimate the harm to its reputation after
the defendant’s bad acts. Further, the Ninth Circuit reiterated that to support a jury’s actual damages
award, there need only be substantial evidence to permit the jury to draw reasonable inferences and
make a reasonable assessment of the damages—in other words, even a “crude” measure of damages is
acceptable to the extent based on reasonable inferences. In the current case, the jury’s award was based
on “an array of customer evidence and three different financial record exhibits,” including evidence
that plaintiff had spent hundreds of thousands in building its reputation. Together, this evidence was
sufficient to support the damages award.
However, the Ninth Circuit reversed the court’s doubling of the jury’s actual damages award
as being improperly focused on punishing the defendant as opposed to compensating the plaintiff.
Under Section 1117(a), a court may enhance any amounts found as actual damages but “not exceeding
three times such amount” awarded. The express language of the statute further provides that any such
enhancement “shall constitute compensation and not a penalty,” which has been construed to expressly
forbid an award of damages to punish an infringer. In the current case, the district court’s focus on
the “purposefully deceitful” nature of the defendant’s conduct suggested that the enhancement was
punitive as opposed to compensatory.
c.
F
Actual damages can include damages to the plaintiff’s goodwill. Courts will not require
a precise methodology to measure the extent of the damage so long as reasonable inferences can be
drawn from evidence submitted by the plaintiff.
F
While a trial court has discretion to enhance the damages awarded a trademark plaintiff,
any such enhancement must be intended to fairly compensate as opposed to punish. Thus, any request
for enhanced damages should be made from the perspective of compensation only.
2.
Louis Vuitton Malletier S.A. v. Ly USA, Inc. et al., 676 F.3d 83 (2d Cir. 2012)
a.Holding. District court did not err in permitting plaintiff to recover both statutory
damages for counterfeiting under 15 U.S.C. § 1117(c) and attorney fees as an exceptional case under 15
U.S.C. § 1117(a).
b.
Summary and Analysis. In Ly USA, plaintiff fashion designer sued a counterfeiter and
its directors under the Lanham Act. During the discovery of the civil case, the directors were arrested
on criminal charges and law enforcement confiscated computers, documents, and merchandise.
Defendants then argued during the damages phase that the records could not produce sales records
because they were seized during the criminal investigation. Without these records, plaintiff could not
prove actual damages and as such, plaintiff asked for the maximum statutory damages under 15 U.S.C.
§ 1117(c) as well as attorney fees under 15 U.S.C. § 1117(a). The defendants appealed the district court’s
award of both statutory damages and attorney fees, and the Second Circuit affirmed.
Under the Lanham Act, a plaintiff seeking damages for trademark counterfeiting and
infringement can seek either actual damages under Section1117(a) or statutory damages under Section
1117(c). However, while Section 1117(a) provides for an award of attorney fees in exceptional cases,
Section 1117(c) does not itself provide an express right to attorney fees.
3–5
The Second Circuit concluded that the omission of an express right to attorney fees in Section
1117(c) did not mean that a plaintiff proceeding under Section 1117(c) could not claim attorneys’
fees under Section 1117(a). Further, in light of the intent of Section 1117(c) as a remedial measure in
counterfeiting cases when actual damages under Section 1117(a) cannot be proven, denying an award
of attorneys’ fees would be inconsistent with the intent of Section 1117(c).
c.
Practical Implications. Creates circuit split with Ninth Circuit. The Ninth Circuit has
expressly held in K&N Engineering v. Bulat, 510 F.3d 1079 (9th Cir. 2007), that a plaintiff cannot recover
both statutory damages under Section 1117(c) and attorney fees under Section 1117(a).
E.Licensing
Sunbeam Products, Inc. v. Chicago American Manufacturing, LLC, 686 F.3d 372 (7th Cir. 2012)
1.Holding. A trademark licensee can continue to use a licensed mark notwithstanding the
licensee’s rejection of the license agreement in bankruptcy.
2.
Summary and Analysis. Prior to becoming the subject of an involuntary bankruptcy
proceeding, a third party licensed certain patents and trademarks to the defendant. After the third
party commenced bankruptcy, the trustee for the third party sold the third party’s assets to plaintiff,
including the licensed patents and trademarks, and rejected the license agreement with the defendant.
The defendant continued selling products under the licensed marks despite the rejection, and plaintiff
sued the defendant for trademark infringement. On appeal, the Seventh Circuit held that a licensee can
continue to use a licensed mark notwithstanding the rejection of the license agreement in bankruptcy.
The Seventh Circuit’s analysis focused 11 U.S.C. §§ 365(n) and 365(g) of the Bankruptcy Code.
Under Section 365(n), a licensee of “intellectual property” can elect to retain the right to use the licensed
intellectual property after rejection of the license agreement so long as the licensee continues to perform
its obligations under the license (i.e., pay royalties). However, the definition of “intellectual property”
included as part of the Bankruptcy Code does not include “trademarks.” Prior bankruptcy decisions
had determined that the omission of “trademarks” from Section 365(n) resulted in trademarks being
treated under Lubrizol Enterprises, Inc. v. Richmond Finishers, Inc., 756 F.2d 1043 (4th Cir. 1985), which
held that a licensee could not seek to retain its contract rights in licensed intellectual property when the
underlying license is rejected in bankruptcy by the licensor. In fact, Section 365(n) had been specifically
adopted by Congress to prevent the harsh result in Lubrizol.
According to the Seventh Circuit, the omission of trademarks from the definition of Section
365(n) resulted in Section 365(n) having no application to trademarks one way or the other and that
Lubrizol was not controlling. Under the Seventh Circuit’s analysis, the rejection constitutes a breach of
the license by the licensee under Section 365(g) of the Bankruptcy Code only and does not constitute
a termination. As the breach does not constitute a termination of the license, the licensee was free to
continue using the licensed trademarks.
3.
F
Creates uncertainty as to the relationship between Section 365(g) and 365(n) of the
Bankruptcy Code as to the process for preserving intellectual property rights in bankruptcy.
F
Creates a circuit split between Fourth Circuit and Seventh Circuit.
F.
Nike, Inc. v. Already, Inc. dba YUMS
Nike, Inc. v. Already, Inc. dba YUMS, 568 U.S. ___ (2013)
1.Holding. Plaintiff trademark owner’s dismissal of its infringement claims coupled with
the grant of a broad and irrevocable covenant not to sue defendant competitor rendered defendant’s
invalidity counterclaims moot.
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2.Summary. Nike filed a trademark infringement suit in federal court against Already
alleging that Already’s “Sugars” and “Soulja Boys” shoes infringed and diluted Nike’s trademark
rights in its “Air Force 1” product configuration trade dress. Already filed a counterclaim alleging that
the “Air Force 1” product configuration was invalid.
Eight months after filing its complaint, Nike issued a covenant not to sue in favor of Already, in
which it agreed not to assert any claim or demand against Already or any affiliated entity, distributor,
employer, or customer of Already based on Already’s existing shoe designs or any future designs
that constituted a “colorable imitation” of Already’s current products. Nike then moved to dismiss its
infringement claim and Already’s counterclaim on the ground that no case or controversy still existed
in light of Nike’s covenant not to sue. Already opposed the dismissal of its counterclaim, arguing that
a case or controversy existed due to the very existence of Nike’s trademark registration. The trial court
dismissed Already’s counterclaim, and the dismissal was affirmed by the Second Circuit. The Supreme
Court granted certiorari and likewise affirmed.
The Supreme Court held that the “voluntary cessation” doctrine applies when determining
whether counterclaim for declaratory relief is moot. Under the voluntary cessation doctrine, Nike bore
the “formidable” burden of showing that another trademark infringement claim against Already was
not reasonably likely to occur. The Supreme Court held that Nike met its burden, determining that
Nike’s covenant not to sue was sufficiently broad to render Already’s counterclaim moot in that it was
unconditional and irrevocable and applied to past and current shoe designs and future designs that
were “colorable imitations.” Furthermore, the covenant not to sue extended not only to Already, but
also to its distributors and customers. Lastly, the covenant not to sue prohibited Nike from both filing
suit and making any claims or demands of infringement. Already’s argument that dismissing the case
would allow Nike to enforce invalid marks against competitors by issuing covenants not to sue was
unavailing, as the Supreme Court concluded that Nike was incentivized not to do this because allowing
others to use its marks could lessen the strength of Nike’s marks.
3.
F
Look for unilateral covenants to become an important tool for trademark owners in
developing and implementing enforcement strategies, especially where there is a risk that the infringing
party is likely to seek declaratory relief concerning the validity of the asserted mark.
F
In cases where the alleged infringer has a strong case as to the invalidity of the asserted
mark, look for alleged infringers to claim an intent to infringe after being confronted with a covenant
not to sue.
III. Significant/Interesting Trademark Trial
and Appeal Board Cases from 2012
A.
Bona Fide Intent to Use
L’Oreal S.A. v. Marcon, 102 U.S.P.Q.2d 1434 (T.T.A.B. 2012)
1.Holding. The TTAB sustained the opposition, holding that the applied for mark was
likely to be confused with the opposer’s marks, where the opposer’s marks were “strong” marks and
where the applicant acted in bad faith and lacked a bona fide intent to use the mark in commerce at the
time the application was filed.
2.
Summary and Analysis. Marcon, who had a history of filing intent-to-use applications
for well-known marks in connection with disparate goods, attempted to register the mark L’OREAL
PARIS for “aloe vera drinks.” L’Oreal filed an opposition based on its federal registrations for the marks
L’OREAL and L’OREAL PARIS. The TTAB sustained the opposition.
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The TTAB concluded that the applied-for mark was likely to be confused with L’Oreal’s federally
registered L’OREAL-formative marks. In particular, the TTAB relied on the strength of L’Oreal’s marks,
which the TTAB deemed famous for cosmetics and personal care products—L’Oreal produced evidence
showing billions of dollars in sales under the marks, significant market share, immense advertising
expenditures, significant media coverage, impressive brand awareness, and a consistent ranking by
Business Week as one of world’s top 100 brands. That the goods were not competitive or closely related
did not dissuade the TTAB, as the TTAB noted that when the marks at issue are identical, a lesser
degree of relatedness between the goods is necessary to support finding of likelihood of confusion.
The TTAB further looked with favor on evidence submitted by L’Oreal that tended to show that
cosmetics and beverages might be related or that beverages were within the natural zone of L’Oreal’s
expansion, including evidence of numerous third-party registrations and Internet search results
showing companies that sell both cosmetics and beverages, an article discussing a trend of skin care
lines improving looks with dietary supplements, and testimony that L’Oreal is an innovator and that
customers expect new and different products from it. The TTAB further found bad faith on the part of
Marcon, noting that Marcon had a history and pattern of filing intent-to-use applications for a disparate
range of products for which he had no industry-relevant experience, and the marks applied for were
identical to those owned by well-known brands.
Lastly, the TTAB concluded that Marcon’s intent-to-use application was improper as Marcon
did not have a bona fide intent to use the mark in commerce in connection with the identified goods.
Whether an applicant has a bona fide intent to use a mark in commerce is based on objective factors. In
the current case, Marcon had no documents showing a bona fide intent to use the L’OREAL PARIS mark
and admitted no industry experience, business plan, potential partners/investors, logos or packaging,
and no other activities aimed at establishing the mark.
3.
F
Whether an applicant has a bona fide intent to use the mark is an objective consideration.
F
Look for a lack of documentation on the part of the applicant to prepare to use the mark
as a way of establishing lack of a bona fide intent to use the mark in commerce.
F
A pattern of filing intent-to-use applications for disparate goods under famous marks of
others may also support a claim that the applicant lacks a bona fide intent to use applied for mark in
commerce.
B.Fraud
1.
Shutemdown Sports, Inc. v. Lacy, 102 U.S.P.Q.2d 1036 (T.T.A.B. 2012)
a.Holding. The TTAB sustained the petition to cancel, finding that the registrant had
abandoned his rights in the mark through nonuse, but declined to reach petitioner’s fraud claim.
b.
Summary and Analysis. Petitioner petitioned to cancel registrant’s registration for the
mark SHUT IT DOWN, alleging both abandonment and fraud based on allegations that at the time the
registrant applied for the SHUT IT DOWN mark, the registrant had not used the mark on any of the
identified goods and that any subsequent use of the mark had been abandoned. The TTAB cancelled
the mark for abandonment, avoiding ruling on petitioner’s fraud claim.
Registrant had applied for the mark on an in-use basis, but during discovery petitioner had
conceded that he had only offered for sale 4 of the 113 products listed in his registration and that,
further, no one had purchased goods sold under the mark in the past 5 years. Having admitted that he
had never used the mark with 109 of the 113 identified goods and that he had no intention of doing so,
registrant failed to rebut the statutory presumption of abandonment that arises following three years
of nonuse. As to the remaining 4 items registrant claimed to have sold under the mark, registrant’s
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lack of sales coupled with a lack of documentation with respect to future use created a prima facie
case of abandonment, and the burden then shifted to registrant to rebut the presumption. Having
failed to produce any evidence to corroborate his current or future use of the mark other than a selfserving interrogatory response, the TTAB concluded that the registrant had abandoned his rights in
the mark. Having granted the petition based on abandonment, the TTAB found it unnecessary to reach
petitioner’s fraud claim.
c.
F
Self-serving evidence of use by way of declaration or interrogatory response should be
supported by documentary evidence supporting such use.
F
Fraud is not a favored basis for cancellation based on recent TTAB decisions. Shutemdown
Sports suggests that the TTAB will avoid considering fraud claims when possible.
2.
Reliance Standard Life Ins. Co. v. American National Ins. Co., 2012 TTAB LEXIS 168
(April 30, 2012) (nonprecedential)
a.Holding. TTAB rejected applicant’s counterclaim alleging fraud on the USPTO, concluding
that the applicant had failed to prove fraud by clear and convincing evidence where the applicant had
failed to demonstrate that the opposer had intentionally deceived the examining attorney during the
prosecution of the asserted mark.
b.
Summary and Analysis. The TTAB denied applicant’s counterclaim for fraud predicated
on material false statements made to USPTO during the prosecution of the application for the registration
on which the opposition was based, as the TTAB had doubt as to whether the opposer intended to
deceive the USPTO through its false statements.
Although the TTAB dismissed opposer’s Section 2(d) likelihood of confusion challenge to the
registration of applicant’s mark BENCHMADE RELIANCE, the TTAB concluded that the applicant was
nevertheless entitled to a decision on its counterclaim for fraud, as the opposer’s registration remained
a potential threat to applicant outside of the current proceeding. The basis for applicant’s fraud claim
was that during the prosecution of opposer’s application, the opposer, through its attorney, had told a
“half truth” in order to overcome a Section 2(d) refusal, stating that its annuity services sold under the
mark were offered to employers, while failing to add that it also sold annuities to individuals through
agents and brokers.
Although the TTAB deemed the false statements material in that they formed the basis of
opposer’s argument that confusion was unlikely due to the differences between the parties’ channels
of trade and target consumers, the TTAB had doubt as to whether opposer had intended to deceive the
USPTO or that the opposer had willfully withheld facts that would have resulted in the disallowance
of registration. Accordingly, the applicant had failed to prove fraud by clear and convincing evidence.
c.
Practical Implications. Again, proving fraud is difficult under the TTAB’s clear and
convincing evidence standard. Even false statements, without an intent to deceive, will likely not result
in a fraud finding.
C.
Registration of Official Insignia
In re the Government of the District of Columbia, 101 U.S.P.Q.2d 1588 (T.T.A.B. 2012)
1.Holding. Applicant was not entitled to registration for its official seal under Section 2(b)
of the Lanham Act.
2.
Summary and Analysis. Applicant sought to register the official seal of the District of
Columbia for various goods, including, clocks, cufflinks, memo pads, pens and pencils, cups and
mugs, and clothing items. The TTAB refused registration of the official seal as a trademark pursuant to
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Section 2(b) of the Lanham Act, which prevents registration of, among other things, official government
insignia.
Section 2(b) of the Lanham Act prohibits registration of any mark that “consists of or comprises
the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any
foreign nation, or any simulation thereof.” The applicant argued that Section 2(b) should be interpreted
as not applying where a governmental entity seeks to register its own insignia. In response, the TTAB
held that Section 2(b) is “plain and clear on its face” and that such an exception is absent from the statute.
Further, the TTAB noted that while Sections 2(c) and 2(d) of the Lanham include express statutory
exceptions, Section 2(b) does not.
The TTAB found the applicant’s arguments regarding congressional intent to be unavailing.
While it was true that Section 2(b) was originally enacted with the intent of implementing the Paris
Convention (whose aim it was to prohibit third parties from registering government indicia), the
exception allowing registration of official insignia when authorized by the relevant government
body was not present in the Paris Convention when the Paris Convention was adopted by Congress.
Furthermore, while the applicant argued that the intent of Section 2 of the Lanham Act was to prevent
consumer confusion, the TTAB stated that Section 2 of the Lanham Act addresses more than simply
confusion by also addressing the registration of immoral and scandalous marks.
3.
F
Also see In re City of Houston, 101 U.S.P.Q.2d 1534 (T.T.A.B. 2012), which held similarly.
F
A potential end run around this is to create a mark similar to the governmental body’s
official seal to use as a trademark.
D.Dilution
Research in Motion Limited v. Defining Presence Marketing Group, Inc. et al., 102 U.S.P.Q.2d
1187 (T.T.A.B. 2012)
1.Holding. The TTAB sustained the opposition, in part, on grounds that the applied for
mark diluted by blurring opposer’s famous BLACKBERRY-formative marks.
2.
Summary and Analysis. Applicant operated the website CrackBerry.com, which provided
news, information, forums, and apps for users of mobile devices. In December 2006, Applicant began
filing applications to register the mark CRACKBERRY in connection with online computer services
and various clothing items. These applications were opposed by opposer, in part, on the grounds that
registration of CRACKBERRY would dilute opposer’s BLACKBERRY-formative marks. In a rare case,
the TTAB sustained an opposition on dilution grounds, rejecting applicant’s parody defense.
The TTAB noted that the primary consideration in the dilution context is whether the applicant’s
mark is famous—the TTAB has traditionally held opposers to a very high standard in determining
whether a mark is sufficiently famous for dilution purposes, refusing to find TORO as being famous
for lawnmowers or COACH as being famous for leather products. However, applicant’s “billions of
dollars” in sales, “tens of millions of dollars” in advertising and promotion, “intense media attention”
made of record, and the mark’s ranking in industry publications ranking the most powerful brands
was enough to convince the TTAB of the BLACKBERRY’s fame.
The TTAB further found a likelihood of dilution by blurring based on public association of
the term CRACKBERRY with opposer’s BLACKBERRY products prior to applicant’s adoption of the
mark. In sustaining the opposition, the TTAB rejected the applicant’s parody defense. First, it was not
the applicant who had first coined the term CRACKBERRY, but rather the mark was first adopted by
the public generally. Second, the services offered by applicant under the mark were closely related to
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opposer’s services offered under its BLACKBERRY-formative marks. Applicant’s parody defense was
therefore inapplicable.
3.
F
The TTAB does not often sustain oppositions on dilution grounds, so this case is a good
road map for alleging and proving dilution as a grounds to oppose the registration of a mark.
F
The TTAB also relied on the strength of applicant’s BLACKBERRY-formative marks in
sustaining the opposition on likelihood of confusion grounds.
IV. Issues and Trends from 2012 and Looking Forward
A.
Practical Impact of New gTLDs
In June 2011, the Internet Corporation for Assigned Names and Numbers (“ICANN”) formally
approved the expansion of the number of generic top-level domains (“gTLDs”) in the domain name
system. Trademark owners were thus faced with the decision of whether to apply to operate their
own top-level domain and also how to protect their brands defensively against top-level domains that
might infringe their marks or allow a competitor to claim broad rights in a particular market.
Although much hyped, the new gTLDs and the decisions confronted by brand owners in
connection therewith have not had a substantial impact on most brand owners. First and foremost, the
cost associated with obtaining and operating new gTLD are substantial—a $185,000 evaluation fee to
ICANN, plus additional fees associated with dealing with third-party objections, auctions that may
occur should multiple applicants apply to operate the same registry, and the people and hardware costs
of owning and operating a registry. Many experts have estimated have estimated that the total fees and
costs associated with the application and evaluation process, together with operation costs and legal
fees, could run as high as $2 million over a one- to two-year period.
In short, applying to operate a new gTLD has proven to be a viable option only for those
companies or organizations having sufficient resources to justify such a significant investment. As
of June 13, 2012, ICANN received 1,930 applications for new gTLDs, including 84 community-based
applications, 66 applications for geographic names, and 116 internationalized domain names.
The costs associated with applying for and operating a new gTLD has likewise had a deterrent
effect on cybersquatters and other third parties who may seek to improperly apply for and operate
a gTLD, thus reducing the need for the defensive actions referenced above. That being said, third
parties are able to file formal objections against newly applied-for gTLDs. The period for filing formal
objections began on June 13, 2012, and has been extended to March 13, 2013. Once the objection filing
period closes, objections can still be made but will instead be resolved through a separate dispute
resolution process that will take approximately five months. Any third party with legitimate grounds to
file a formal objection can do so with the selected dispute resolution service provider (and not ICANN)
on any one of four objection grounds listed below.
1.
String Confusion. This means that the applied-for gTLD is confusingly similar to an
existing top level domain or to another applied-for gTLD string.
2.
Legal Rights. This means that the applied-for gTLD string violates the legal rights (i.e.,
trademark rights or other proprietary rights) of the objecting party.
3.
Limited Public Interest. This means that the applied-for gTLD strongly contradicts
generally accepted legal norms of morality and public order pursuant to principles of international law.
4.Community. This means that there is substantial opposition to the gTLD application from
a significant portion of the community that the gTLD is targeting.
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In terms of responding to an objection, ICANN will post a public notice and will then notify
the dispute resolution service provider to commence objection proceedings. Once the applicant has
received notice from the dispute resolution service provider that an objection has been placed, the
applicant will have 30 calendar days to respond.
B.
Legislation Affecting Brand Owners
1.
Changes to the Federal Dilution Statute. In 1996, Congress enacted the Federal Trademark
Dilution Act (“FTDA”), creating a federal cause of action for the dilution of famous marks where the
marks at issue were used in connection with unrelated goods and regardless of any likelihood of
consumer confusion. Among the benefits of the FTDA was the inclusion of language making a federal
trademark registration a complete bar to a state-law based dilution claim.
In 2006, Congress revised the FTDA with the enactment of the Trademark Dilution Revision Act
(“TDRA”), which more clearly specified the requirements and limitations of a federal dilution claim.
However, it soon became apparent that there was an error in the TDRA, as a slight revision by the Senate
resulted in the text of the TDRA being changed such that a federal registration was a bar to both state
and federal dilution actions. This error resulted in the TTAB recently granting a respondent’s motion
to dismiss a petitioner’s federal dilution claim in a cancellation action, with the TTAB relying on the
respondent’s federal registration. See Academy of Motion Picture Arts & Sciences v. Alliance of Professionals
& Consultants, Inc., 104 U.S.P.Q.2d 1234 (TTAB 2012). In October 2012, President Obama signed into law
a bill that amends the TDRA to correct the error and restore the statute’s intended meaning.
2.
Legislation to Protect Fashion Designs. Under the current law, fashion designs are not
protected by copyright as “useful articles” and are only protected as trade dress to the extent such
designs have acquired secondary meaning. In September 2012, the Innovative Design Protection Act
(“IDPA”), Senate Bill 3523, passed out of committee to be voted on by the full Senate.
The IDPA would provide intellectual property protection to “fashion designs” defined as “the
appearance as a whole of an article of apparel, including its ornamentation.” Under the bill, the design
must include “original elements of the article of apparel or the original arrangement or placement of
original or non-original elements as incorporated in the overall appearance of the article of apparel”
and must be the “result of a designer’s own creative endeavor.” Lastly, the design must also provide a
“unique, distinguishable, non-trivial and non-utilitarian variation over prior designs for similar types
of articles.” There is no requirement under the bill to register a fashion design, and protection under the
bill would begin on the date the design is first made public; however, the bill requires that a claimant
demonstrate that the design was publicized in such a way that it is reasonable to infer that the defendant
knew of its existence.
The protection afforded “fashion designs” would extend for a nonrenewable three-year term.
An “infringing article” must be “substantially identical in overall visual appearance to and as to the
original elements of a protected design.” “Substantially identical” is defined as “an article of apparel
that is so similar in appearance” that it is “likely to be mistaken for the protected design, and contains
only those differences in construction or design which are merely trivial.” A claimant must first provide
21 days’ written notice to the alleged infringer prior to commencing suit, and damages and profits
would only accrue after suit has been filed.
While the IDPA is a proposed amendment to the Copyright Act, the rights afforded are similar to
trademark rights in that registration is not required and the test for infringement is confusion-based—
i.e., the infringing design must be likely to be “mistaken” for the protected design. The IDPA bears
watching in 2013 and will likely be taken up by the new Congress.
3.
Stop Online Privacy Act and the PROTECT IP Act. The Stop Online Privacy Act
(“SOPA”), H.R. 3261, and the PROTECT IP Act (“PIPA”), Senate Bill 968, were proposed bills that
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aimed to crack down on intellectual property infringement on the Internet. PIPA is the House version
of the bill, while SOPA is the Senate version.
While the bills are primarily aimed at combating online copyright infringement, the intent of the
bills is to restrict access to websites selling counterfeit products into the U.S. market. Both SOPA and
PIPA provide a private right of action for IP owners against websites dedicated to infringing activities,
in addition to court orders against third parties providing services to those sites. SOPA and PIPA
encountered significant public protest and were as a result derailed during the 112th Congress. Look
for Congress to potentially take up new versions of SOPA and/or PIPA during the 113th Congress and/
or potentially look into other means of addressing online counterfeiting.
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Trademark Law Review – 2012
Cases and Trends
By
Matthew Wilmot
Schwabe, Williamson & Wyatt, P.C.
Schwabe, Williamson & Wyatt |
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Overview
1.
Trademarks Generally
2.
Significant/Interesting Federal Cases from 2012
3.
Significant/Interesting TTAB Cases from 2012
4.
Issues and Trends from 2012 and Looking Forward
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Trademarks Generally
• What is a Trademark?
– A word, name, symbol, etc. associated with goods to
indicate source of the goods and to distinguish from
other goods.
– Does not prevent others from making the same goods.
• Protections Afforded to Trademarks
– Protection Depends on the Mark (generic; descriptive;
suggestive; arbitrary; fanciful)
• Registration
– Not required, but recommended.
• Term
– Rights extend indefinitely so long as mark is in use.
• Test for Infringement
– Likelihood of Confusion.
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1.
Christian Louboutin S.A. v. Yves Saint Laurent America, Inc., 696
F.3d 206 (2d Cir. 2012).
•
Trade dress case involving use of the color red on the outsoles of
women’s shoes.
Trial court held that single color could not function as a trademark in
the fashion industry.
Second Circuit reversed, rejecting blanket rule that a single color
could not function as a trademark in the fashion industry, and
instead holding that: (i) the Supreme Court’s analysis in Qualitex
should apply; and (ii) that aesthetic functionality properly balances
intellectual property rights and public interest in competition.
Second Circuit did not reach the issue of aesthetic functionality in
this case, instead holding that plaintiff had shown secondary
meaning only where red sole contrasts with the rest of the shoe.
Defendant’s shoe was monochromatic and as a result there was no
infringement.
•
•
•
•
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1. Christian Louboutin S.A. v. Yves Saint Laurent America, Inc.,
696 F.3d 206 (2d Cir. 2012) (cont’d).
• Practical implications:
– No per se rule in fashion industry against enforceability of single
color marks.
– Color marks protectable, but a showing of secondary meaning will
be required.
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2. Rosetta Stone, Ltd. v. Google, Inc., 676 F.3d 144 (4th Cir. 2012).
• Key word advertising case where district court granted summary
judgment in favor of Google and its AdWords program.
• Fourth Circuit reversed, finding sufficient evidence to create a
material question of fact on plaintiff’s direct infringement claim,
including, deposition testimony, a consumer survey, and an
internal Google study, all of which showed some actual confusion.
• Fourth Circuit further reversed as to the contributory infringement
claim, finding that Google had knowledge of “identified individuals”
who were using plaintiff’s marks as key words to sell counterfeit
products.
• Fourth Circuit reversed plaintiff’s dilution claim, despite plaintiff’s
argument that plaintiff’s mark could not have been diluted because
the marks increased in public recognition during relevant time
period.
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2. Rosetta Stone, Ltd. v. Google, Inc., 676 F.3d 144 (4th Cir. 2012)
(cont’d).
• Practical Implications:
– Compare Rosetta Stone to Ninth Circuit’s opinion in Network
Automation, Inc. v. Advanced System Concepts, Inc., 638
F.3d 1137 (9th Cir. 2011), which tends to favor the
advertiser. Could this indicate a circuit split?
– Will likely revive interest on the part of plaintiffs in suing
Google and other search engines over key word programs.
– Confusion evidence is imperative in key word advertising
cases. Must show, by way of actual confusion, a consumer
survey or other evidence supporting actual confusion, that
some level of actual confusion exists in the marketplace.
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3. Rearden LLC v. Rearden Commerce Inc., 683 F.3d 1190 (9th
Cir. 2012).
• Trademark case involving non-traditional consumer services.
• District court granted summary judgment in favor of
defendant, holding that no reasonable finder of fact could
conclude that confusion between the marks was likely.
• Ninth Circuit reversed, in part, by finding that the district court
failed to take into account evidence of non-consumer
confusion.
• Non-consumer confusion may be relevant where there is
confusion among: (1) potential customers; (2) non-consumers
whose confusion could create an inference that consumers
are likely to be confused; and (3) non-consumers whose
confusion could influence consumers.
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3. Rearden LLC v. Rearden Commerce Inc., 683 F.3d 1190 (9th
Cir. 2012) (cont’d).
– Don’t forget about non-consumer confusion in cases where,
based on the nature of the goods or services at issue,
consumer confusion is difficult to show.
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4. Skydive Arizona, Inc. v. Quattrocchi, 673 F.3d 1105 (9th Cir.
2012).
• Ninth Circuit affirmed the jury’s award of actual damages, but
rejected enhanced damages award.
• Plaintiff was awarded $2.5 million in actual damages under 15
U.S.C. § 1117(a), largely attributable to alleged harm to
plaintiff’s goodwill as a result of defendant’s intentional
infringement.
• Plaintiff did not provide a mathematical formula for calculating
damages to its goodwill, instead pointing to its advertising
expenditures in building up its reputation originally. Ninth Circuit
held that only a “crude” measure of damages based on
reasonable inferences can support an award of actual damages.
• However, Ninth Circuit reversed enhanced damages award
where district court had doubled jury’s actual damages award
pursuant to Section 1117(a). Enhanced damages under the
Lanham Act must be compensatory and not punitive.
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4. Skydive Arizona, Inc. v. Quattrocchi, 673 F.3d 1105 (9th Cir.
2012) (cont’d).
– Courts will not require a precise methodology to measure the
extent of the damage so long as reasonable inferences can
be drawn from evidence submitted by the plaintiff.
– Any request for enhanced damages should be made from
the perspective of compensation only.
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5. Louis Vuitton Malletier S.A. V. Ly USA, Inc. et al., 676 F.3d 83
(2d Cir. 2012).
• Plaintiff fashion designer sued a counterfeiter and its directors
under the Lanham Act.
• Without access to certain records that had been seized by law
enforcement, plaintiff could not prove actual damages, and as
such, plaintiff asked for the maximum statutory damages under
15 U.S.C. § 1117(c) as well as attorneys’ fees under 15 U.S.C.
§ 1117(a). Defendants appealed.
• The Second Circuit concluded that the omission of an express
right to attorneys’ fees in Section 1117(c) did not mean that a
plaintiff proceeding under Section 1117(c) could not claim
attorneys’ fees under Section 1117(a).
• In light of the intent of Section 1117(c) as a remedial measure
in counterfeiting cases when actual damages under Section
1117(a) cannot be proven, denying an award of attorneys’ fees
would be inconsistent with the intent of Section 1117(c).
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Bend, OR
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Salem, OR
|
Seattle, WA |
Vancouver, WA |
Washington, DC
3–20
5. Louis Vuitton Malletier S.A. V. Ly USA, Inc. et al., 676 F.3d 83
(2d Cir. 2012) (cont’d).
– Creates circuit split with Ninth Circuit. The Ninth Circuit has
expressly held in K&N Engineering v. Bulat, 510 F.3d 1079
(9th Cir. 2007) that a plaintiff cannot recover both statutory
damages under Section 1117(c) and attorneys’ fees under
Section 1117(a).
Portland, OR
|
Bend, OR
|
Salem, OR
|
Seattle, WA |
Vancouver, WA |
Washington, DC
6. Sunbeam Products, Inc. v. Chicago American Manufacturing,
LLC, 686 F.3d 372 (7th Cir. 2012).
• Defendant licensee continued selling products under the
licensed marks despite the rejection of license by bankruptcy
trustee and then current owner of the marks sued the defendant
for trademark infringement.
• The Seventh Circuit’s analysis focused on 11 U.S.C. §§ 365(n)
and 365(g) of the Bankruptcy Code.
• Under the Seventh Circuit’s analysis, the rejection constitutes a
breach of the license by the licensee under Section 365(g) of
the Bankruptcy Code only and does not constitute a termination.
As the breach does not constitute a termination of the license,
the licensee was free to continue using the licensed trademarks.
Portland, OR
|
Bend, OR
|
Salem, OR
|
Seattle, WA |
Vancouver, WA |
Washington, DC
3–21
6. Sunbeam Products, Inc. v. Chicago American Manufacturing,
LLC, 686 F.3d 372 (7th Cir. 2012) (cont’d).
– Creates uncertainty as to the relationship between Section
365(g) and 365(n) of the Bankruptcy Code as to the process
for preserving intellectual property rights in bankruptcy.
– Creates a circuit split between Fourth Circuit and Seventh
Circuit. See e.g. Lubrizol Enterprises, Inc. v. Richmond
Finishers, Inc., 756 F.2d 1043 (4th Cir. 1985), (holding that a
licensee could not seek to retain its contract rights in licensed
intellectual property when the underlying license is rejected in
bankruptcy by the licensor).
Portland, OR
|
Bend, OR
|
Salem, OR
|
Seattle, WA |
Vancouver, WA |
Washington, DC
7. Nike, Inc. v. Already, Inc. dba YUMS, 568 U.S. ___ (2013).
•
•
•
•
Nike filed suit in federal court against Already alleging infringement
and dilution of Nike’s product configuration trade dress and in
response, Already filed a counterclaim alleging invalidity.
Nike thereafter issued a broad covenant not sue in favor of Already
and moved to dismiss its complaint and the counterclaim. Trial
court dismissed the counterclaim and the Second Circuit affirmed.
Under the voluntary cessation doctrine, Nike bore the “formidable”
burden of showing that another trademark infringement claim
against Already was not reasonably likely to occur.
Supreme Court held that Nike’s covenant not to sue was sufficiently
broad to render Already’s counterclaim moot in that it was
unconditional and irrevocable and applied to past and current shoe
designs and future designs that were “colorable imitations.”
Portland, OR
|
Bend, OR
|
Salem, OR
|
Seattle, WA |
Vancouver, WA |
Washington, DC
3–22
7. Nike, Inc. v. Already, Inc. dba YUMS, 568 U.S. ___ (2013)
(cont’d).
– Look for unilateral covenants to become an important tool for
trademark owners in developing and implementing
enforcement strategies, especially where there is a risk that
the infringing party is likely to seek declaratory relief
concerning the validity of the asserted mark.
– In cases where the alleged infringer has a strong case as to
the invalidity of the asserted mark, look for alleged infringers
to claim an intent to infringe after being confronted with a
covenant not to sue.
Portland, OR
|
Bend, OR
|
Salem, OR
|
Seattle, WA |
Vancouver, WA |
Washington, DC
1. L’Oreal S.A. v. Marcon, 102 U.S.P.Q.2d 1434 (T.T.A.B. 2012).
• Applicant with history of filing intent-to-use applications for wellknown marks attempted to register L’OREAL PARIS for “aloe
vera drinks.”
• TTAB concluded that infringement was likely, relying primarily
on strength of opposer’s L’OREAL-formative marks.
• While goods at issue were not competitive or closely related,
opposer submitted evidence tending to show that cosmetics and
beverages might be related or that beverages were within
L’Oreal’s natural zone of expansion.
• TTAB further found lack of bona fide intent-to-use. Applicant
had unfavorable history and no documents showing a bona fide
intent-to-use.
Portland, OR
|
Bend, OR
|
Salem, OR
|
Seattle, WA |
Vancouver, WA |
Washington, DC
3–23
1. L’Oreal S.A. v. Marcon, 102 U.S.P.Q.2d 1434 (T.T.A.B. 2012)
(cont’d).
– Look for a lack of documentation on the part of the applicant
to prepare to use the mark as a way of establishing lack of a
bona fide intent to use the mark in commerce.
– A pattern of filing intent-to-use applications for disparate
goods under famous marks of others may also support a
claim that the applicant lacks a bona fide intent to use
applied for mark in commerce.
Portland, OR
|
Bend, OR
|
Salem, OR
|
Seattle, WA |
Vancouver, WA |
Washington, DC
1. Shutemdown Sports, Inc. v. Lacy, 102 U.S.P.Q.2d 1036
(T.T.A.B. 2012).
• Petitioner petitioned to cancel registrant’s registration for the
mark SHUT IT DOWN, alleging both abandonment and fraud.
• Registrant had applied for the mark on an in-use basis, but had
only offered for sale 4 of the 113 products listed in his
registration, and that further, no one had purchased goods sold
under the mark in the past 5 years.
• Because registrant failed to produce any evidence to
corroborate his current or future use of the mark other then a
self serving interrogatory, the TTAB concluded that the
registrant had abandoned his rights in the mark.
• Having granted the petition based on abandonment, the TTAB
found it unnecessary to reach petitioner’s fraud claim.
Portland, OR
|
Bend, OR
|
Salem, OR
|
Seattle, WA |
Vancouver, WA |
Washington, DC
3–24
1. Shutemdown Sports, Inc. v. Lacy, 102 U.S.P.Q.2d 1036
(T.T.A.B. 2012) (cont’d).
– Self-serving evidence of use by way of declaration or
interrogatory response should be supported by documentary
evidence supporting such use.
– Fraud is not a favored basis for cancellation based on recent
TTAB decisions. Shutemdown Sports suggests that the
TTAB will avoid considering fraud claims when possible.
Portland, OR
|
Bend, OR
|
Salem, OR
|
Seattle, WA |
Vancouver, WA |
Washington, DC
2. Reliance Standard Life Ins. Co. v. American National Ins. Co.,
2012 TTAB LEXIS 168 (April 30, 2012) (non-precedential).
• The TTAB denied applicant’s counterclaim for fraud predicated
on material false statements made to USPTO based on lack of
intent to deceive.
• During the prosecution of opposer’s application, the opposer,
through its attorney, had told a “half truth” in order to overcome
a Section 2(d) refusal, stating that its annuity services sold
under the mark were offered to employers, while failing to add
that it also sold annuities to individuals.
• Although false statements were material, the TTAB had doubt
as to whether opposer had intended to deceive the USPTO or
that the opposer had willfully withheld facts that would have
resulted in the disallowance of registration.
Portland, OR
|
Bend, OR
|
Salem, OR
|
Seattle, WA |
Vancouver, WA |
Washington, DC
3–25
2. Reliance Standard Life Ins. Co. v. American National Ins. Co.,
2012 TTAB LEXIS 168 (April 30, 2012) (non-precedential)
(cont’d).
– Proving fraud is difficult under the TTAB’s clear and
convincing evidence standard. Even false statements,
without an intent to deceive, will likely not result in a fraud
finding.
Portland, OR
|
Bend, OR
|
Salem, OR
|
Seattle, WA |
Vancouver, WA |
Washington, DC
3. In re the Government of the District of Columbia, 101
U.S.P.Q.2d 1588 (T.T.A.B. 2012).
• Applicant sought to register the official seal of the District of
Columbia for various goods.
• The TTAB refused registration of the official seal as a trademark
pursuant to Section 2(b) of the Lanham Act, which prevents
registration of, among other things, official government insignia.
• Section 2(b) bars registration of all official government insignia,
regardless of whether the governmental entity seeks to register
the insignia itself.
Portland, OR
|
Bend, OR
|
Salem, OR
|
Seattle, WA |
Vancouver, WA |
Washington, DC
3–26
3. In re the Government of the District of Columbia, 101
U.S.P.Q.2d 1588 (T.T.A.B. 2012) (cont’d).
– Also see In re City of Houston, 101 U.S.P.Q.2d 1534
(T.T.A.B. 2012), which held similarly.
– A potential end run around this is to create a mark similar to
the governmental body’s official seal to use as a trademark.
Portland, OR
|
Bend, OR
|
Salem, OR
|
Seattle, WA |
Vancouver, WA |
Washington, DC
4. Research in Motion Limited v. Defining Presence Marketing
Group, Inc. et al., 102 U.S.P.Q.2d 1187 (T.T.A.B. 2012).
• Applicant began filing applications to register the mark
CRACKBERRY in connection with online computer services and
various clothing items. Opposer opposed on dilution grounds.
• Opposer successfully demonstrated that its BLACKBERRY
mark was famous, overcoming TTAB’s traditional high standard.
• The TTAB rejected the applicant’s parody defense (i) it was not
the applicant who had first coined the term CRACKBERRY; (ii)
the services offered by applicant under the mark were closely
related to opposer’s services Applicant’s parody defense was
therefore inapplicable.
Portland, OR
|
Bend, OR
|
Salem, OR
|
Seattle, WA |
Vancouver, WA |
Washington, DC
3–27
4. Research in Motion Limited v. Defining Presence Marketing
Group, Inc. et al., 102 U.S.P.Q.2d 1187 (T.T.A.B. 2012) (cont’d).
– The TTAB does not often sustain oppositions on dilution
grounds, so this case is a good road map for alleging and
proving dilution as a grounds to oppose the registration of a
mark.
– The TTAB also relied on the strength of applicant’s
BLACKBERRY-formative marks in sustaining the opposition
on likelihood of confusion grounds.
Portland, OR
|
Bend, OR
|
Salem, OR
|
Seattle, WA |
Vancouver, WA |
Washington, DC
Issues and Trends from 2012 and Looking
Forward
1.
•
•
•
Practical Impacts of New gTLDS.
In June 2011, the Internet Corporation for Assigned Names
and Numbers (“ICANN”) formally approved the expansion of
the number of generic top-level domains (“gTLDs”).
Although much hyped, the new gTLDs have not had a
substantial impact on most brand owners due largely to cost.
The cost associated with obtaining and operating new gTLD
are substantial – a $185,000 evaluation fee to ICANN, plus
additional fees associated with dealing with third party
objections, auctions that may occur should multiple applicants
apply to operate the same registry, and the people and
hardware costs of owning and operating a registry.
Portland, OR
|
Bend, OR
|
Salem, OR
|
Seattle, WA |
Vancouver, WA |
Washington, DC
3–28
Forward
1.
•
•
•
Practical Impacts of New gTLDS (cont’d).
As of June 13, 2012, ICANN received 1,930 applications,
including 84 community-based applications, 66 applications
for geographic names, and 116 internationalized domain
names.
The period for filing formal objections began on June 13,
2012, and has been extended to March 13, 2013. Once the
objection filing period closes, objections can still be made, but
will instead be resolved through a separate dispute resolution
process that will take approximately five (5) months.
Any third party with legitimate grounds to file a formal
objection can do so on any one of the following grounds: (1)
string confusion; (2) legal rights; (3) limited public interest;
community.
Portland, OR
|
Bend, OR
|
Salem, OR
|
Seattle, WA |
Vancouver, WA |
Washington, DC
Forward
2.
Changes to the Federal Dilution Statue.
•
In 2006, Congress revised the FTDA with the enactment of the
Trademark Dilution Revision Act (“TDRA”), which more clearly
specified the requirements and limitations of a federal dilution claim.
•
However, there was an error in the TDRA, as a slight revision by the
Senate resulted in the text of the TDRA being changed such that a
federal registration was a bar to both state and federal dilution
actions. This error resulted in the TTAB recently granting a
respondent’s motion to dismiss a petitioner’s federal dilution claim in
a cancellation action, with the TTAB relying on the respondent’s
federal registration. See Academy of Motion Picture Arts & Sciences
v. Alliance of Professionals & Consultants, Inc., 104 U.S.P.Q.2d
1234 (TTAB 2012).
•
In October 2012, President Obama signed into law a bill that amends
the TDRA to correct the error and restore the statute’s intended
meaning. The amendment is not retroactive.
Portland, OR
|
Bend, OR
|
Salem, OR
|
Seattle, WA |
Vancouver, WA |
Washington, DC
3–29
Forward
3.
Potential Legislations to Protect Fashion Designs
•
In 2013, Congress is likely to consider Senate Bill 3523, or
what is being called the Innovative Design Protection Act
(“IDPA”).
While the IDPA would be an amendment to the federal
Copyright Act, the rights afforded under the act would be
similar to trade dress rights.
Fashion designs protectable under the IDPA would, for a
three year non-renewable period and without the need to
register the design, be protected against “substantially
identical” designs.
“Substantially identical” is defined as “an article of apparel
which is so similar in appearance” that it is “likely to be
mistaken for the protected design, and contains only those
differences in construction or design which are merely trivial.”
•
•
•
Portland, OR
|
Bend, OR
|
Salem, OR
|
Seattle, WA |
Vancouver, WA |
Washington, DC
Forward
4. Update on Stop Online Privacy Act and the PROTECT IP Act.
•
The Stop Online Privacy Act (“SOPA”), H.R. 3261, and the PROTECT
IP Act (“PIPA”), Senate Bill 968, were proposed bills that aimed to
crack down on intellectual property infringement on the Internet. PIPA
is the House version of the bill, while SOPA is the Senate version.
•
While the bills are primarily aimed at combating online copyright
infringement, the intent of the bills is to restrict access to websites
selling counterfeit products into the U.S. market.
•
Both SOPA and PIPA provide a private right of action for IP owners
against websites dedicated to infringing activities, in addition to court
orders against third parties providing services to those sites.
•
SOPA and PIPA encountered significant public protest and were as a
result derailed during the 112th Congress. Look for Congress to
potentially take up new versions of SOPA and/or PIPA during the 113th
Congress and/or potentially look into other means of addressing online
counterfeiting.
Portland, OR
|
Bend, OR
|
Salem, OR
|
Seattle, WA |
Vancouver, WA |
Washington, DC
3–30
DISCLAIMER
The information included in this document is intended for informational purposes
only and is not intended to serve as legal advice regarding specific matters nor
should it be construed as a legal opinion. Neither this presentation or this
document establish an attorney-client relationship between you and Schwabe,
Williamson & Wyatt. The information included in this document should not be
used to replace the advice of a licensed attorney.
Portland, OR
|
Bend, OR
|
Salem, OR
|
Seattle, WA |
Vancouver, WA |
Washington, DC
3–31
3–32
Chapter 4
State of USPTO Operations—Presentation Slides
Mary Boney Denison
Deputy Commissioner for Trademark Operations
U.S. Patent and Trademark Office
Alexandria, Virginia
Chapter 4—State of USPTO Operations—Presentation Slides
4–ii
State of USPTO
Operations
Mary Boney Denison
Deputy Commissioner for Trademark Operations
February 15, 2013
1
Trademark Staffing
• 670 total Trademark employees
• 384 examining attorneys
• Almost 90% of examining attorneys
telework full time in 28 different states
• Hired 34 examining attorneys in FY12.
Expect to have 29 new lawyers starting
work in the next several months.
2
4–1
Trademark Performance:
Application Filings
450,000
• FY 2011: 398,667
classes
400,000
350,000
300,000
250,000
• FY 2012: 415,026
classes
200,000
150,000
100,000
50,000
FY 2013
FY 2012
FY 2011
FY 2010
FY 2009
FY 2008
FY 2007
FY 2006
FY 2005
FY 2004
FY 2003
FY 2002
0
• FY 2013: 433,000
classes projected
2/4/2013
3
Trademark Workflow
New application
submitted via TEAS,
paper or an extension
of protection under
Madrid Protocol
Office
Action
OR
Approval for
Publication
(1)Examination
Pre
Examination
processing
Publish for
Opposition
Support Unit
(2) ID/Class &
(3) Managing/Sr
Attorney
Reviews
Law
Offices/Examinatio
n Review
Notice of
Allowance
OR
Registration
Intent to
Use Unit
for SOU
or
divisional
Law
Office
Review
Sec 8/71 Continuing Use
Statement (Post Reg.)
4–2
Performance Results
• E-Government
• Pendency
• Quality
5
E-Government
6
4–3
Pendency
FY 2013
Trademark Performance Measures
FIRST ACTION PENDENCY
First action pendency from date of filing to first office
action in months.
DISPOSAL PENDENCY
Disposal pendency from date of filing to issuance of a
notice of allowance, registration, or abandonment –
including suspended and inter partes proceedings.
DISPOSAL PENDENCY
Disposal pendency from date of filing to issuance of a
notice of allowance, registration, or abandonment –
excluding suspended and inter partes proceedings.
FY 2013
Targets
FY 2013
1stQ
Results
2.5 – 3.5
3.3
14.5
11.8
12.0
10.3
7
Quality
FY 2013
Trademark Performance Measures
FIRST ACTION COMPLIANCE
In-process review evaluation of the statutory bases for
which the Office raises issues and or refuses marks for
registration based on the first office action.
FY 2013
Targets
FY 2013
Q1 Results
95.5%
95.0%
97.0%
95.4%
23.0%
31.5%
FINAL ACTION COMPLIANCE
In-process review evaluation of the statutory bases for
which the Office raises issues and or refuses marks for
registration based on the examiner’s approval or denial of
the application.
EXCEPTIONAL OFFICE ACTION
Measure indicating the comprehensive quality of the first
Office action search, evidence, writing and decision
making.
8
4–4
Exceptional Office Actions
Criteria:
o Correctness in decision making
o Quality of the search
o Quality and relevance of evidence attached
o Clarity of the written Office Action
9
Current Initiatives
•
•
•
•
•
Enhance Electronic OG
Post Registration Pilot
ID/Class Improvements
Stakeholder Outreach
TM5
10
4–5
Enhanced Electronic OG
• Last issue of paper version of the
Official Gazette was published
Christmas Day.
• New direct page link to OG
in Notice of Publication
• New electronic format to be more
searchable and accessible
in the future.
11
Post-Registration Specimen Pilot
• Began Summer 2012
• Permits requirements
for additional
.
information and specimens
• Limited program (approx. 500 Section 8/71
filings) to assess accuracy of post-registration
use allegations
• Information gathering tool; next steps will be
determined after evaluation
12
4–6
ID/Class Improvements
• Working with user groups (INTA, IPO)
to update and improve entries in ID Manual
• Adding “id checker” function to TEAS forms
• Complete redesign of ID manual planned for
the future
13
ID Checker
4–7
ID CONTACTS:
• Customer Service 571-272-8950 (ask for
ID/Class staff attorney on duty)
• TMIDSUGGEST@uspto.gov
• Administrator Jennifer Chicoski
Jennifer.Chicoski@uspto.gov
Stakeholder Outreach Program
• INTA/USPTO Roundtables throughout
US
• Give trademark professionals a chance
to interact on current topics of interest,
exchange practice tips, and raise
important issues with USPTO
Leadership
16
4–8
INTA/USPTO Roundtable
Locations in 2012
•
•
•
•
•
•
•
•
•
•
Past Locations:
New York, NY
Washington, DC
Wilmington, DE
Boston, MA
Raleigh, NC
Chicago, IL
Seattle, WA
Charlotte, NC
Detroit, MI
17
Expanded Trademark Trilateral
(TM5)
• The USPTO, EU Trademark Office,
Japanese Patent Office, Chinese Trademark
Office and Korean Intellectual Property Office
met in Barcelona on October 30-31, 2012
• User group session
• Focus on collaboration and harmonization
projects to benefit users in all Partner
countries
18
4–9
USG Role in gTLDs
• Led by National Telecommunications
Information Administration (NTIA) which is
also part of the Department of Commerce
• USPTO participates in ICANN’s Government
Advisory Council (GAC)
• USPTO works with U.S. brand owners to
ensure protection
• Two 2012 meetings held by NTIA and
USPTO for brand owners
19
Generic Top Level Domain
Names (gTLDs)
• January 12, 2012 Application window opened
• June 13, 2012 (1) “Reveal Date” showed 1,930
applications filed (116 IDNs and the rest in Latin
characters) (2) Opened Application Comment Period
which ended September 26. Over 11,000 comments
received.
• Initial Evaluation of Applications began in July 2012
• Clarifying questions pilot began in August to make
clear what evaluators needed in order for applicant to
achieve passing score.
20
4–10
gTLD Status
• Prioritization Draw on 12/17/12. Priority List
on ICANN’s webpage.
• Awaiting evaluation results of first priority
applicants.
• Formal Objection Period to applications
scheduled to end March 13, 2013.
• TM Clearinghouse
• Launch unlikely before late 2013.
21
Brand Owner gTLD
Considerations
1. Policing and mark monitoring services
2. Review of gTLD applications
3. Consider filing a public objection with ICANN
(standing not required)
4. Consider filing objections at WIPO
5. Considering filing applications for 2d level
domains
6. Consider registration of marks with
Trademark Clearinghouse and USPTO
22
4–11
TTAB Position in .music
• In In re the Dot Communications Network
LLC, the TTAB affirmed the examiner’s
refusal to register five applications for .music
in standard characters for a variety of
computer related services as “merely
descriptive”.
• Eight companies filed gTLD applications for
.music including Google and Amazon, but not
the trademark applicant.
23
USPTO Policy
1.
“DOT” = “.”
2.
•
Potential refusals include:
(a) failure to function (for cases with or
without a specimen)
(b) merely descriptive
(c) misdescriptiveness/deceptiveness
•
•
24
4–12
Recent Improvements
• Electronic Filing
• TMNG (IT Project)
• TMEP/Exam Guide
Comments
25
Electronic Filing
Recent changes and upgrades:
• Multimedia files may be attached
in new applications
• Multiple email addresses in TEAS forms
• Saved portable forms now retain
attachments
Please email teas@uspto.gov for concerns
regarding electronic filing.
26
4–13
Trademarks Next Generation
(TMNG)
• Improving and modernizing our systems
• Trademark Status and Document Retrieval
(TSDR) 2.0:
– Assignments information
– Links to specific case data/documents
– 3rd party applications on our links will still
work
• Projects to improve infrastructure and
enhance systems
27
TMEP/Exam Guide Comments
• New policy collaboration tool for
suggestions and/or changes to
Trademark Manual of Examining
Procedure (TMEP) and new
Examination Guides.
http://uspto-tmep.ideascale.com/
• Allows public to participate in online
discussion and contribute ideas
28
4–14
Educating the Public
•
•
•
•
•
New Public Outreach
Trademark Videos
TM Expo
3rd Party Communications
Law School Certification Pilot
29
New Educational Outreach
Program
• Launched new educational outreach program
in February 2012 directed at small
businesses, entrepreneurs, and students
around the country
• Speaking to a variety of lay audiences
to discuss the importance of TM protection
(e.g. business schools and business
associations)
• Rewrote Basic Facts Booklet
30
4–15
Educating the Public: TMIN
Videos
 Introduction to the USPTO
and Trademark Basics
 Before You File
 Searching
 Applicant Information
 Drawing Issues
 Goods and Services
 Filing Basis Information
 Specimen
 After You File
 Post-Registration Issues
 Counterfeiting
31
Educating the Public: TM Expo
Annual TM Expo: October 18-19 (tentative)
32
4–16
Third Party Solicitations
• Complaints & Confusion!
• Warning notice on website regarding third
party solicitations that are misleading
http://www.uspto.gov/trademarks/solicitation_warnings.jsp
• Warning notice sent with TM application filing
receipts and registration certificates
33
Law School Certification Pilot
• Pilot program allows law students to
prosecute trademark applications before the
agency under the guidance of a law school
faculty clinic supervisor
• 24 schools now participating
34
4–17
USPTO Communications
Please use tmfeedback@uspto.gov –
for miscellaneous suggestions
and/or comments. We want to hear
from you!
35
Thank You!
• Any questions?
Mary Boney Denison
Deputy Commissioner for Trademark
Operations
mary.denison@uspto.gov
36
4–18
4–19
4–20

Intellectual Property Review—Updates and

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