In This Issue:
NYIPLA Files Amicus Brief with the Supreme Court in Support of Neither Party in Return Mail, Inc. v. U.S. Postal Service
By: charles macedo, david goldberg, jung hahm, peter thurlow,
robert isackson, & Robert rando
On Monday, December 17, 2018, the New York Intellectual Property Association (“NYIPLA”) filed an amicus brief in support of neither party in Return Mail, Inc. v. United States Postal Service, No. 17-1594 (U.S.). See the NYIPLA’s website at https://www.nyipla.org/images/nyipla/Amicus/
ReturnMailv.USPS.pdf for the full Brief of New York Intellectual Property Law Association as Amicus Curiae in Support of Neither Party, Return Mail, Inc. v. United States Postal Service, No. 17-1594 (Dec. 17, 2018).
In the proceedings below, the Patent Trial and Appeal Board (“PTAB”) issued a final written decision in a Covered Business Method patent review (“CBM”) proceeding brought by the U.S. Postal Service (“USPS”) as petitioner, invalidating certain claims of a patent owned (and asserted in the U.S. Court of Federal Claims) by Return Mail, Inc. USPS is a “government entity” as recognized in United States Postal Serv. v. Flamingo Indus. (USA) Ltd., 540 U.S. 736, 748 (2004). The U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) affirmed the PTAB’s holding that USPS has standing to file a petition to institute a CBM proceeding.
The U.S. Supreme Court granted Return Mail’s petition for a writ of certiorari on the question of whether the government is a “person” who may petition to institute review proceedings under the AIA.
While the NYIPLA took no position as to the ultimate merits of Petitioner Return Mail’s underlying position, i.e., whether the government is a “person” who may petition to institute a CBM proceeding under AIA § 18(a)(1)(B), the NYIPLA argued that it strongly believes that the Court should carefully consider the potential implications of interpreting “person” in Title 35 of the U.S. Code (“Patent Act”) and the AIA as including or excluding the government generally, and then issue only a narrow holding on the scope of “person” under AIA § 18(a)(1)(B) and, if at all, under 35 U.S.C. §§ 311(a) and 321(a).
Under AIA § 18(a)(1)(B):
A person may not file a petition for a transitional proceeding with respect to a covered business method patent unless the person or the person’s real party in interest or privy has been sued for infringement of the patent or has been charged with infringement under that patent.
In its brief, the NYIPLA argued as follows:
I. While the general rule is that “person” should be interpreted to exclude a sovereign, that rule is flexible and must be adjusted to the circumstances of the particular statute. United States v. Cooper Corp., 312 U.S. 600, 604-05 (1941). In the context of Title 35 of the U.S. Code (“Patent Act”), the use of the term “person” is inconsistent and consequently the term must be defined in the context of the particular section in which it is used. Specifically, in some instances, “person” means a human being (and not even an entity), specifying who can be the U.S. Patent and Trademark Office (“PTO”) Director or a PTAB Administrative Patent Judge. See 35 U.S.C. §§ 3(a) and 6(a). In other instances, it expressly includes governmental entities. See 35 U.S.C. § 296(a). In still different instances, if “person” excluded government entities, it would lead to absurd results. See 35 U.S.C. § 102. Thus, reliance upon the general definitions included in 1 U.S.C. § 1 (and § 8) to 35 U.S.C. in toto, or to the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”) in particular, is inappropriate in light of how the definition of “person,” vis-a-vis governmental entities, functions within the context of the Patent Act. Likewise, resort to other statutes (e.g., the Sherman Act and the Clayton Act as discussed in Cooper) to interpret “person” as used in the Patent Act or AIA is not helpful.
II. When the particular AIA statute is considered as to who may bring an inter partes review (“IPR”), post-grant review (“PGR”), or CBM, the enabling provisions for IPRs and PGRs have the same language, whereas different and more limiting language is used for CBMs. This allows for the possibility that “person” could be construed to have different meanings for CBMs in contrast to IPRs and PGRs. Thus, the NYIPLA respectfully urges that, despite the broad wording of the question presented, the holding in this case be expressly limited to CBMs (leaving the question for IPRs and PGRs open for decision on another day in a factually more appropriate vehicle) and specifically articulate that the Court is limiting its decision to construing “person” for purposes of Section 18 of the AIA.
III. Arguably, the Court has construed the AIA as including “any person” (see, e.g., Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC, 138 S. Ct. 1365, 1371 (2018)) in recognizing that these standing requirements came out of the prior inter partes reexamination statute and the ex parte reexamination statute. Prior to Congress’ enactment of the AIA, the PTO's practice, as reflected in the Manual of Patent Examining Procedure (“MPEP”), was that “persons” who could bring ex parte and inter partes reexaminations included governmental entities. Indeed, Respondent USPS previously had been allowed to bring such a proceeding on this very patent, prior to enactment of the AIA and the filing of the CBM at issue in this case.
IV. The internal inconsistency of the use of “person” throughout the Patent Act, this Court’s interpretation of the AIA, and pre-existing PTO practices with respect to which “persons” could bring reexaminations prior to the AIA are all factors that the Court should consider in determining “whether the government is a ‘person’ who may petition to institute review proceedings with respect to the applicable provisions of the AIA.” Although the NYIPLA takes no position on the merits of this dispute, it respectfully submits that the Court should construe the meaning of “person” in the AIA based on the context of each specific provision in which it is used, and consonant with the noted internal inconsistency within the Patent Act, and avoid any broad pronouncement on the meaning of “person” as generally used in the Patent Act, or otherwise. Accordingly, the NYIPLA respectfully suggests that the Court limit its holding to Section 18(a) of the AIA regarding CBM proceedings, and avoid addressing the broader question of what “person” means outside that context.
The legislative context relating to creation of post-issuance patent review proceedings and the PTO’s longstanding interpretation of “person” to include the governmental entities for purposes of ex parte and inter partes reexaminations together support the interpretation that the government is a “person” who may petition to institute IPR and PGR proceedings under the Patent Act. However, the context of CBM proceedings is not the same and may lead to a different conclusion.
Thus, in view of the foregoing, the NYIPLA respectfully submits that the Court carefully consider the potential implications of interpreting “person” in Title 35 of the U.S. Code and the AIA as including or excluding the government generally, and then issue only a narrow holding on the scope of “person,” under AIA § 18(a)(1)(B) and, if at all, under 35 U.S.C. §§ 311(a) and 321(a).
NYIPLA Files an Amicus Brief with the Supreme Court in Support of Neither Party in Return Mail, Inc. v. U.S. Postal Service
Notable Trademark Decisions
IP Media Links
97th Annual Dinner in Honor of the Federal Judiciary
NYIPLA Event Programming
Moving Up and Moving On
Welcome New Members
The American patent system has had many ups and downs over the course of the two centuries of its existence. The swings have been particularly notable during the last sixty years.
As recently as 1949, the patent system was in shambles. At that time, Justice Jackson wrote in a dissenting opinion that “the only valid patent is one which this Court has not yet gotten its hands upon.” It is little wonder, since the “flash-of-genius” patentability standard was so high that patent applicants were hard-pressed to conceive of it, much less meet it. Needless to say, the fruits of ordinary inventive labor were not to be rewarded by a patent grant that would stand up to the test.
The system was improved with the enactment of the Patent Act of 1952 by virtue of the replacement of the “flash of genius” test with a requirement that the invention be non-obvious to one of ordinary skill in the relevant art. This requirement was master-minded and drafted by Past President Giles S. Rich [1950-51]. He later went on to become the longest-lived, active federal judge in the history of our nation, still active on the bench at age 95.
The system was further improved with the creation of the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) in 1982. Judge Rich sat on the bench of that Court from its inception until his passing in 1999.
With the benefit of twenty-twenty hindsight vision, we can say that the period from 1982 until 2005 was a “golden age” for the American patent system, largely due to the stability and predictability that the system provided regarding validity and enforceability of patents under guidance provided by the Federal Circuit. That golden age is unlikely to return any time soon.
Judicial, legislative, and administrative changes served to cut the golden age short. The Supreme Court of the United States (“SCOTUS”) became active in overturning decisions by the Federal Circuit time-and-time again, beginning in 2006, each time decrying the Federal Circuit’s “bright-line” rules. Of course, it was those very bright-line rules that lent a modicum of predictability and stability to the patent system during the golden age.
Enactment of the America Invents Act (“AIA”) of 2011 and the Defend Trade Secrets Act (“DTSA”) of 2016 drove nails into the coffin that by then had encased the American patent system.
A further nail was driven into the coffin by SCOTUS in 2018 by virtue of its ruling in the Oil States case supporting the constitutionality of a provision of the AIA on the dubious basis that the patent right is not a private right, but rather a public franchise right.
To the contrary, any patent lawyer worth his or her salt knows that a patent secures a private right that affords a public benefit in regard to information in a patent application that would be otherwise inaccessible to the public.
Needless to say, today the American patent system is in shambles to at least to the degree it was in 1949, if not more so. The U.S. Chamber of Commerce recognized the nature of the mess in its reports on global competitiveness for 2017 and 2018. Judge Rich must be rolling over in his grave. Perhaps the living memory of Judge Rich’s positive contributions will spur NYIPLA members to honor his memory by helping to fix the system before it is too late to do so.
(1) Mr. Carlson is NYIPLA past president and current historian. He directs the IP law concentration at Quinnipiac University School of Law in North Haven, CT. The views expressed herein are those of the author and do not reflect the views of NYIPLA or Quinnipiac University School of Law.
By : Dale carlson
AS TIME GOES BY - THE RISE AND FALL OF THE AMERICAN PATENT SYSTEM
Notable Trademark Decisions
By: Scott Greenberg, Michael kraich, and frank misiti
Federal Circuit: All DuPont Factors For Which Evidence Is Presented Must Be Considered
Guild Mortgage Co. (Appellant) applied to register the design mark “GUILD MORTGAGE COMPANY” (the Mark) as a service mark on the principal register in International Class 36 for mortgage banking services, namely, origination, acquisition, servicing, securitization and brokerage of mortgage loans. U.S. Trademark Application Serial No. 86,709,944 (filed July 30, 2015; reproduced below).
The Examining Attorney refused registration due to a likelihood of confusion between the Mark and the mark “GUILD INVESTMENT MANAGEMENT” registered in International Class 36 for “investment advisory services.” The Trademark Trial and Appeal Board (the Board) affirmed the refusal and Appellant appealed. The Federal Circuit vacated the Board’s affirmance, stating that the Board “failed to consider relevant evidence and argument directed to DuPont factor 8. In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160 (Fed. Cir. 2019) (hereinafter “In re Guild”).
Under Section 2(d) of the Lanham Act, the United States Patent and Trademark Office (USPTO) may refuse registration of a mark if registration is likely to cause confusion, mistake, or deception in view of an earlier registered or used mark. 15 U.S.C. § 1052(d). Reiterating the factors outlined by In re E.I. DuPont DeNemours & Co., 476 F.2d 1357 (C.C.P.A. 1973) (hereinafter “DuPont”), the Federal Circuit noted that consideration must be made of all evidence presented “whether or not confusion appears likely.” In re Guild citing DuPont, 912 F.3d at 1379. While, upon review of the Examining Attorney’s refusal, the Board noted that they “consider[ed] the DuPont factors for which there were arguments and evidence,” the Federal Circuit noted that this proclamation “to dismiss [Appellant’s] evidence out of hand swe[pt] too broadly.” Id. at 1380.
On appeal, the USPTO argued that statements made by Appellant regarding certain DuPont factors were uncorroborated and were of “little evidentiary value.” In re Guild, 912 F.3d at 1380; citation omitted. The Federal Circuit agreed with regard to the seventh DuPont factor, but noted that the eighth factor (the length of time during and conditions under which there has been concurrent use without evidence of actual confusion) was not properly addressed. By failing to consider that the two marks (the Mark and “GUILD INVESTMENT MANAGEMENT”) were used for a “particularly long period of time — over 40 years,” as well as the close proximity of such use, the Board erred in failing to consider this factor.
Based on the Board’s failure to substantively address the evidence presented under the eighth DuPont factor, Federal Circuit remanded the case to the Board for additional consideration.
In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160 (Fed. Cir. 2019) [precedential]. [MK]
#MAGICNUMBER108 Held To Be Unregistrable Informational Matter That Fails To Function As A Mark for Applicant’s Clothing Products
Grant DePorter (“DePorter”) applied to register #MAGICNUMBER108 as a trademark in connection with clothing products. Registration was refused on the ground that the applied-for term is informational matter that fails to function as a mark for the goods. DePorter appealed the refusal to the TTAB, and the Board affirmed in a precedential decision. In re DePorter, 129 USPQ2d 1298 (TTAB January 29, 2019).
The Board noted that terms or expressions that merely convey an informational message without indicating a single source or origin for the goods are not registrable. The issue is determined based on the likely perception of the term by the relevant public, not the applicant’s intention. The more commonly a term is used, the less likely it is to be perceived as a trademark identifying one source of goods or services. Id. at 1299.
In the present case, the Board noted that the Examining Attorney introduced into the record voluminous evidence showing that many third parties, as well as DePorter and companies associated with DePorter, have used #MAGICNUMBER108, in the hashtag format where the words are preceded by a hash mark, as a part of messages posted on social media sites including Twitter and Instagram during and after Major League Baseball’s 2016 World Series, expressing support for the Chicago Cubs to win the World Series for the first time in 108 years. One cited example of a third-party use on Twitter is “It is celebration time in chi-town. #cubsworldserieschamps #magicnumber108." One example of a tweet by a DePorter-associated entity, i.e. Harry Caray’s restaurant, of which DePorter is an executive officer, is “HOLY COW! So many happy and excited fans in Harry's bar tonight! #GoCubsGo #FlytheW #MagicNumber108." Id. at 1299 - 1301.
The Examining Attorney agreed with DePorter that the term “magicnumber108” was first used by or in relation to DePorter (who is shown by the record to be perhaps “the world’s leading expert in Cubs numerology”, id. at 1301, n.8). Nevertheless, the Board agreed with the Examining Attorney that the evidence shows widespread use of the proposed mark in a non-trademark manner to consistently convey information about the Cubs’ World Series bid after a 108-year drought. Id. at 1302 – 1303.
DePorter argued that a hashtag phrase, which is a term preceded by a hash mark that is used within a social media message to identify a keyword or topic of interest and facilitate searching (id. at 1302), can also be used to promote product awareness and thereby function as a trademark. While the Board did not disagree with the general principle, it held that the evidence of record in this case did not support such a conclusion, because none of the third-party tweets or even those of DePorter’s affiliated companies contained any reference to or depiction of DePorter’s clothing products. Id. at 1303 – 1304. The Board also rejected DePorter’s argument that the third-party tweets were not probative of a non-trademark function because the applied-for term was arbitrary and fanciful with respect to DePorter’s clothing goods. The Board held that, even if the applied-for term is arbitrary and fanciful for the goods, the public may still perceive it as a non-trademark informational phrase where the term has been shown to be widely used in an informational sense, as in the present case. Id. at 1303.
The Board concluded that, in view of the widespread use of “magicnumber108” in connection with the Cubs’ pursuit of the 2016 World Series championship, including non-product-promoting use of the identical phrase #MAGICNUMBER108 as a social media hashtag by both third parties and DePorter, the proposed mark would not be perceived as identifying a particular source of clothing products. Id. at 1304 – 1305. The Board thus affirmed the Examining Attorney’s refusal. In re DePorter, 129 USPQ2d 1298 (TTAB January 29, 2019) [precedential]. [SG]
TTAB Sustains Tivo’s Dilution Claim Against Lighting Trademarks TIVOTAPE and TIVOBAR
Tivoli, LLC (“Tivoli”) applied to register the marks TIVOTAPE for electric lighting fixtures and TIVOBAR for lighting fixtures and other LED-based light products. TiVo Brands LLC (“Tivo”) opposed registration at the TTAB, claiming that Tivoli’s marks were likely to cause dilution-by-blurring with Tivo’s registered “TIVO” and “TIVO”-formative marks, under Sections 13(a) and 43(c)(1) of the Lanham Act (15 U.S.C. §§ 1063(a) and 1125(c)(1)). In a precedential decision, the Board sustained Tivo’s opposition based on Tivo’s dilution claim with regard to its “TIVO” mark for its DVR products, and for that reason concluded that it was not necessary to consider the merits of TIvo’s additional dilution claims or its claim of likelihood of confusion under Section 2(d) (15 U.S.C. § 1052(d)). TiVo Brands LLC v. Tivoli, LLC, 129 USPQ2d 1097 (TTAB Dec. 31, 2018).
The Board noted that, in order to succeed in its dilution claim, Tivo essentially needed to prove that (1) Tivo owns a famous, distinctive mark, (2) Tivo’s mark became famous before Tivoli’s claimed first use of its marks (May 30, 2010 for TIVOTAPE and 2015 for TIVOBAR), and (3) Tivoli’s marks are likely to cause dilution by blurring. Id. at 1103.
Fame and Distinctiveness -- For a dilution claim, the required level of fame means that, when the general public encounter’s the plaintiff’s mark in almost any context, it associates the term, at least initially, with the mark’s owner. The existence of such fame is assessed by considering such factors as extent and duration of advertising and publicity of the mark, amount and volume of sales of goods or services under the mark, the extent of actual recognition of the mark, and whether the mark is registered. In the present case, in addition to noting that Tivo’s mark is registered, the Board considered Tivo’s evidence of sales and advertising/promotion and held this evidence to be, respectively, neutral and only somewhat favoring a finding of fame. However, the Board held that Tivo’s evidence of the extent of actual recognition of the mark “tips the balance” in favor of finding sufficient fame. Id. at 1104. The Board referred to Tivo’s extensive evidence of references to its TIVO mark for its DVR products in the news and entertainment media, and by various politicians and celebrities, from January 2000 to the present, id. at 1105 – 1112, and held that “TIVO” had become a household term by Tivoli’s earliest first-use date of 2010 for the subject marks TIVOTAPE and TIVOBAR. Id. at 1113.
Additionally, in an issue of first impression, the Board agreed with Tivoli that Tivo must also show that its mark was still famous at the time of trial and throughout trial. The Board noted that the statute, at §43(c)(2)(A) (15 U.S.C. § 1125(c)(2)(A)), is worded in the present tense, i.e. “is widely recognized by the general consuming public in the United States” (emphasis supplied). The Board concluded that the TIVO mark, in addition to being famous by 2010, was also famous now, based on Tivo’s evidence of continuing sales, advertising and media mentions. Id. at 1113 – 1114. As to distinctiveness, the Board held that the TIVO mark is, at minimum, inherently distinctive, and possibly even fanciful. Id. at 1114.
Likelihood of Dilution By Blurring – The Board held that, in the present case, the most important factors to be considered on the issue of likelihood of dilution by blurring are (1) the degree of similarity between the marks, (2) the extent to which the owner of the famous mark engages in substantially exclusive use of that mark, and (3) the degree of recognition of the famous mark. As to similarity, the Board noted that, although it is not determining likelihood of confusion, it applies the same test for determining the similarity or dissimilarity of marks in the dilution context as it uses in the likelihood of confusion analysis, i.e. the similarity or dissimilarity of the marks in their entireties as to sound, connotation and commercial impression. Id. at 1115. Applying this test, the Board held that the similarities of Tivoli’s marks are likely to “trigger consumers to conjure up” the famous TIVO mark, because consumers are likely to regard the first, distinctive term “TIVO” in Tivoli’s marks as dominating the commercial impression made by those marks, and are less likely to focus on the descriptive suffixes “TAPE” and “BAR”. Id. at 1116.
Regarding the exclusivity of Tivo’s use of the “TIVO” mark, the Board held that Tivo proved its substantially exclusive use the mark with respect to both competitive and non-competitive goods and services. There was no evidence of anyone else using the same mark “TIVO”. The active third-party registrations relied upon by Tivoli were mostly also for the mark “TIVOLI”, while others combined “TIVO” with suffixes that were held by the Board to completely change the overall commercial impression of the mark, e.g. “TIVORBEX”. Id. at 1116 – 1117.
Finally, as to the famous mark’s degree of recognition, which requires a determination of the level of fame on a “sliding-scale” basis, the Board inferred from the time-frame of the bulk of Tivo’s evidence that the fame of the “TIVO” DVR mark “has somewhat weakened over time”. Nevertheless, the Board held that there is a sufficient ongoing public association of the TIVO mark with opposer Tivo to conclude that the public, at the present time, at least initially associates the term “TIVO” with Tivo in almost any context, including outside the context of Tivo’s own goods and services. Id. at 1117. The Board therefore sustained Tivo’s dilution claim. TiVo Brands LLC v. Tivoli, LLC, 129 USPQ2d 1097 (TTAB Dec. 31, 2018) [precedential]. [SG]
TTAB Holds That Cancellation Petitioner Contracted Away Its Standing To Challenge Registration
Australian Therapeutic Supplies Pty. Ltd (“Australian Therapeutic”) filed a petition to cancel Naked TM, LLC’s (“Naked TM”) federal registration for NAKED in connection with condoms. Australian Therapeutic alleged prior use of NAKED and NAKED CONDOMS in connection with the sale of condoms and sought to cancel Naked TM’s mark on the grounds of fraud, likelihood of confusion, false suggestion of a connection, and that Naked TM did not possess a bona fide intent to use the NAKED mark when it filed its application for a registration. Naked TM denied the allegations and asserted several affirmative defenses. Australian Therapeutic Supplies Pty., Ltd. v. Naked TM, LLC, 129 U.S.P.Q.2d 1027 (Dec. 21, 2018).
Naked TM filed a motion for summary judgment on its affirmative defenses of estoppel, latches, acquiescence, and unclean hands. Australian Therapeutic cross-moved for summary judgment. In a March 3, 2016 Order, the Trademark Trial and Appeal Board (“Board”) held the following:
there are genuine disputes of material fact with respect to whether Australian Therapeutic possesses standing to move for cancellation;
there are genuine disputes of material fact with respect to the affirmative defense of contractual estoppel;
if Australian Therapeutic can establish standing and priority, then confusion is likely and inevitable; and
Naked TM’s affirmative defense of laches, acquiescence, equitable estoppel, and unclean hands are inapplicable because confusion is inevitable.
In denying summary judgment, the Board stated that the case will go forward on Australian Therapeutic’s claim of standing, claim of priority, and its claim of false suggestion of a connection under Trademark Act Section 2(a).
Going forward, in its decision dated December 21, 2018, the Board determined that Australian Therapeutic did not have standing to bring this cancellation proceeding. In order to establish standing, Australian Therapeutic was required to prove it had both a real interest in the proceeding as well as a reasonable basis for its belief of damage. The Board determined that Australian Therapeutic did not have standing because it had contracted away its standing.
While the Board determined that no written formal agreement between the parties existed, the communications between the parties showed an agreement because the parties recognized there was a trademark issue and they communicated and exchanged offers to resolve it. In sum, the agreement was that: (1) Australian Therapeutic would not use or register any mark containing the word NAKED in the United States; and (2) Naked TM would not use or register any mark containing the word NUDE in the United States. However, despite this agreement, Australian Therapeutic continued to use the mark NAKED in selling its condoms from Australia through the internet into the United States.
The Board determined that the only reasonable interpretation of the agreement was that Australian Therapeutic would not use the NAKED mark in connection with condoms in the United States via internet sales. Naked TM was reasonable to believe that Australian Therapeutic abandoned any rights it held in the NAKED mark for condoms and that Naked TM could use and register the mark in the United States. Thus, the Board concluded that Australian Therapeutic failed to prove it had standing to cancel the registration because it did not have a real interest in this proceeding or a reasonable basis for its belief in damages since it contracted away any right to use and register the mark. Australian Therapeutic Supplies Pty., Ltd. v. Naked TM, LLC, 129 U.S.P.Q.2d 1027 (Dec. 21, 2018) [precedential]. [FM]
TTAB Finds That Product Design for Applicant’s Concession Trailers Lacks Sufficient Distinctiveness To Be Registrable
The Trademark Trial and Appeal Board upheld an Examining Attorney’s refusal to register a mark under Trademark Act Sections 1, 2 and 45, and 15 U.S.C. §§ 1051-52 and 1127 on the grounds that the applied for mark consists of non-distinctive product design that does not function as a trademark and has not acquired distinctiveness. In re SnoWizard, Inc., 129 U.S.P.Q.2d 1001 (Dec. 21, 2018).
SnoWizard, Inc. (“SnoWizard”) sought registration on the Principal Register under Section 2(f) of the Trademark Act in connection with a trailer used for selling snowballs, a frozen ice treat. The mark consisted of a three-dimensional configuration of a snow-capped roof with the word SNOBALLS and a snowball and associated beverage container positioned on top of a concession trailer.
The Board held that by seeking registration under Section 2(f), SnoWizard conceded that its asserted mark is not inherently distinctive. However, SnoWizard argued that its applied-for mark constituted product packaging, not product design, and that a showing of acquired distinctiveness is not required. The Board rejected SnoWizard’s claim because the mark was composed of physical aspects of the concession trailers, which included the configuration of the roof, the concession trailers, and the word SNOBALLS. The Board concluded that such items are integral parts of the configuration of the concession trailer and are part of the product’s design and not its packaging.
Next, the Board addressed whether the mark had acquired distinctiveness of product design. SnoWizard was required to make a showing that the relevant consumers perceived the design of a snow-capped roof featuring the word SNOBALL and the design of a snowball and associated beverage container, all positioned at the top of the trailer, as a trademark for such trailers. The Board determined that SnoWizard was unable to meet such burden. SnoWizard submitted evidence that it sold its identified goods for nine years and in an approximate amount of $35,000 per year.
The Board determined that the use of the mark extending over nine years is simply insufficient, by itself, to establish acquired distinctiveness. Additionally, SnoWizard did not present any evidence of “look for” advertising, i.e., advertising that directs the potential consumer in no uncertain terms to look for certain features to know that it is from that source. The advertising submitted by SnoWizard consisted of screenshots of its website that shows concession trailers that contain only some of the elements contained in the applied-for mark.
The Board also noted that SnoWizard failed to provide any other kind of evidence of distinctiveness, namely: (1) advertising figures for its goods; (2) the number of customers for its goods; (3) evidence regarding exclusivity; (4) the unit amount of trailers sold; (5) evidence demonstrating an association of the applied-for product design or trade dress with actual purchasers; (6) evidence that others have intentionally copied the product design; and (7) unsolicited media coverage of the product design.
The Board stated that there was plenty of evidence of other trailers that contained similar designs which shows that consumers are accustomed to seeing decorative roofs with snow cones, ice cream, and similar food designs on concession trailers presented in a non-source identifying manner. Thus, the Board concluded that SnoWizard failed to establish acquired distinctiveness of the proposed mark. In re SnoWizard, Inc., 129 U.S.P.Q.2d 1001 (Dec. 21, 2018) [precedential]. [FM]
Concurrent Use Requires Lawful Use In Commerce, And The Mark Must Not Be Likely To Cause Confusion
Scott Stawski (“Applicant”) filed an application to register the standard-character marks “PROSPER ESTATE” and “PROSPER RIDGE” (“the marks”) on the Principal Register for wines in International Class 33. U.S. Trademark Application Serial Nos. 86,038,734 and 86,038,728 (filed August 15, 2013). The Examining Attorney refused registration of the marks under Section 2(d) of the Trademark act as likely to cause confusion in view of an existing registration by a prior Registrant (“Registrant”) of a standard-character mark “PROSPER” (“the existing mark”) on the Principal Register for wine in International Class 33. 15 U.S.C. § 1052(d); U.S. Trademark Registration No. 4,336,033 (issued May 14, 2013). Applicant amended the applications for the marks, seeking concurrent use registrations with the existing mark, and the Board instituted a concurrent use proceeding after the applications published, un-opposed. The Board ultimately found that Applicant was not entitled to concurrent registration, and refused registration of the marks. Scott Stawski, Concurrent Use No. 94002621 (TTAB Dec. 21, 2018) (hereinafter “Stawski”).
The Board first noted that concurrent federal registration of marks for use in different geographic areas is permissible so long as such use does not cause a likelihood of consumer confusion. Enterprise Rent-A-Car Co. v. Advantage Rent-A-Car, Inc., 330 F.3d 1333 (Fed. Cir. 2003), reh'g en banc denied, (July 9, 2003) and cert. denied, 124 S. Ct. 958 (U.S. 2003). Concurrent use, however, requires that an applicant demonstrate that they have made lawful use of the mark, in commerce, prior to the filing date of the defendant’s application for registration. See Stawski at 5. Applicant argued that first use of the marks was “on or about October 2007 with the selection of Prosper Estate Vineyards as the company’s business name and Prosper Estate and Prosper Ridge as the company’s brands,” and that “Applicant’s websites under the Applicant’s marks went live on June 24, 2009. Id. Additionally, Applicant provided evidence that an estimate was received for wine labels in July 2008, and stated that free samples of wine were distributed under the marks in the fall of 2010 through 2012. A Certification of Label Approval was issued by the U.S. Department of the Treasury Alcohol and Tobacco Tax and Trade Bureau in 2017 for Prosper Estate labeled wine, and another in 2018 for Prosper Ridge labeled wine. Id. at 7.
The Board noted that a right of ownership to a mark arises from prior use, not from adoption of the mark alone. Stawski at 8 citing Comput. Food Stores Inc. v. Corner Store Franchises, Inc., 176 USPQ 535, 538 (TTAB 1973). Accordingly, Applicant was deemed to have “failed to carry his burden of proving by a preponderance of the evidence use in commerce prior to February 29 2012,” the date on which Registrant applied for the existing mark. Id. at 10.
Additionally, the Board noted that Applicant did not have approval to sell wine pursuant to the Federal Alcohol Administration Act. Id. at 12 citing 27 U.S.C. § 201 et seq., See Sa[tinine Societa v.] P.A.B Produits,209 USPQ (BNA) 958, 964 (TTAB 1981) (“[T]here has been a per se violation . . . when a regulatory statute requires that a party's labels must be registered with or approved by the regulatory agency charged with administering the statute before his goods may lawfully enter the stream of commerce, and the party has failed to obtain such registration or approval.”) The Board noted that “Applicant has maintained that he lawfully ordered personalized labels to place on the front of wine bottles provided by Brutocao Cellars . . . . [b]ut he also likens his labels to private labels, such as those that restaurants use to place their brands on wine supplied by others.” Stawski at 13. However, while private labels may be used in commerce while bearing brand names, the Board pointed out that personalized labels (for personal use such as weddings and anniversaries) are not to be used in commerce. Id. Having determined that Applicant did not have approval to sell wine prior to the date the application for registration was filed by Registrant, the Board held that Applicant failed to meet the requirements for concurrent registration.
Finally, the Board considered whether it would be likely that confusion, mistake, or deception would result from the continued use by more than one person of the marks. Where the parties’ goods are identical, “less similarity between their marks is needed to find a likelihood of confusion.” Stawski citing In re Viterra, Inc., 671 F.3d 1358 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342 (Fed. Cir. 2010). Noting that the marks wholly encompass the registered mark, and that the additional words added only nondistinctive geographic elements, the Board found the first DuPont factor weighed in favor of finding a likelihood of confusion. The Board also held that the fifth DuPont factor was neutral, and that the third DuPont factor weighed in favor of finding a likelihood of confusion.
Based on the Applicant’s failure to demonstrate lawful use in commerce, and the Board’s finding that no likelihood of confusion exists between the marks and the registered mark, the Board found that Applicant was not entitled to concurrent registration.
Scott Stawski, Concurrent Use No. 94002621 (TTAB Dec. 21, 2018) [precedential]. [MK]
Spring 2019 IP Media Links
By: Jayson Cohen
The Supreme Court’s decision in Iancu v. Brunetti was widely reported in the mainstream media, including June 24, 2019 articles by Adam Liptak for The New York Times and by Jessica Gresko for The Washington Post. Brunetti had mounted a facial challenge to the Lanham Act’s long-standing prohibition on registering an immoral or scandalous trademark with the United States Patent and Trademark Office. The Court struck down the provision as viewpoint discrimination that violates the First Amendment, clearing the way for Brunetti to register trademarks for his clothing brand name FUCT. Gresko reported that the “United States Patent and Trademark Office [had] ultimately refused about 150 trademark applications a year as a result of the provision” between 2005 and 2015 but that the majority opinion by Justice Kagan found the statute “‘substantially overbroad.” Liptak also reported on Justice Alito’s concurrence, as well as the (partial) dissents that would have construed the scandalous trademark portion of the statute narrowly to preserve it. Liptak quoted Justice Alito’s opinion stating that “‘Viewpoint discrimination is poison to a free society.’” He also quoted Justice Sotomayor’s opinion in which she would have construed “scandalous” trademarks under the statute, 15 U.S.C. §1052(a), to include only modes of expression that were obscene, vulgar, or profane, a limitation she found would have saved the statute from violating the First Amendment.
(LINK 1) (LINK 2) (LINK 3)
The continuing dispute over CRISPR patent rights has gained renewed attention. In a June 27, 2019 article in The Los Angeles Times entitled “Reopening conflict between UC and Broad Institute, patent office takes new look at CRISPR history,” Michael Hiltzik reported on the recently declared Patent Office interference in the battle over CRISPR patent rights. Following the issuance of CRISPR patents to the University of California starting in February, Hiltzik wrote that the Office “declared an interference between 10 patent applications from UC and 13 patents issued to the Broad, as well as one pending patent application by the Broad.” The article hones in on the fight over who invented the use of CRISPR in eukaryotic cells as well as statements by both sides that they see this interference as a positive development. Hiltzik states that the interference “might be a minor legal sideshow if not for the billions of dollars that could be reaped by patent holders licensing CRISPR for use in agriculture, chemistry and medicine.” He concludes his article by discussing the possibility of a “cooperative arrangement,” reporting that “confusion over CRISPR rights” that may persist over time “helps explain the desire in the biotech field for the two institutions to reach a deal with one another.” (LINK)
On February 24, 2019, Claudio Cabrera and Julia Jacobs published an article in the New York Times entitled “Seven Black Inventors Whose Patents Helped Shape American Life.” The article stressed the obstacles overcome by black inventors facing discrimination to secure their patents, focusing on seven such inventors. One inventor, Garrett Morgan, invented an early gas mask that was used to rescue men from an underground natural gas explosion in 1916. Another inventor, Lonnie Johnson, an aerospace engineer, invented “one of the world’s most popular toys,” the “Super Soaker,” when he discovered how to use a “large air pump to create a more powerful stream.” According to the article, the patent was eventually assigned to Hasbro, and sales of the Super Soaker ultimately reached in the hundreds of millions of dollars. A third inventor, Dr. Patricia Bath, was a respected ophthalmologist and professor at U.C.L.A., who discovered “how to remove cataracts using a laser, making the surgery less invasive and more efficient.” Her 1988 patent led to the Laserphaco probe. Dr. Bath passed away on May 30, 2019. Her New York Times obituary stressed her decades of advocacy aimed at breaking down barriers to science and math education, professional success, and respect for women and people of color.
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Standing: Colman Ragan, Hon. Leonard Stark, Heather Schneider, Robert Isackson, David Leichtman
Sitting: Hon. Sharon Prost, Hon. Kathleen O'Malley, Peter Thurlow, Jon Meacham, Kathleen McCarthy, Hon. Ruben Castillo
The New York Intellectual Property Law Association held its 97th Annual Dinner in Honor of the Federal Judiciary on March 22, 2019 at the New York Hilton Midtown Hotel. President Peter Thurlow welcomed the honored guests, members of the NYIPLA, and their guests. The Association’s Seventeenth Annual Outstanding Public Service Award was presented to the Honorable Kathleen M. O'Malley, Circuit Judge for the United States Court of Appeals for the Federal Circuit. The Keynote address was given by Jon Meacham, award-winning journalist, Presidential Historian and Pulitzer Prize-Winning Author. A musical performance was given by students from the Celia Cruz High School of Music.
97th Annual Dinner in Honor of the Federal Judiciary
From Associate to Founder: Leveraging your Firm Experience to Work for a Start-Up
By: Young lawyers committee
"Day of the Dinner" Luncheon CLE: Developments in the Courts and Congress and the Implications for Patent Policy and Innovation
By: Programs committee
On April 16, 2019, the Young Lawyers Committee in conjunction with the Cardozo Start-UP Law Society hosted a first-of-its-kind panel event, “From Associate To Founder: Leveraging Your Firm Experience To Work For A Start-Up” at Cardozo Law School. The panelists—all of whom left the confines of Big Law to found a company—related their personal “high and low” experiences of founding a startup through the lens of their legal education, law firm experience and professional network. Speakers included Aaron Wright of Cardozo Law School, Alma Asay of Integreon, Inc., Nehal Madhani of Alt Legal, Michael Sander of Docket Alarm, and Richard Zemsky of Neurovation Labs.
On March 22, 2019, the NYIPLA presented a luncheon and panel discussion, “Current State of Innovation within the US Legal System – Views on Evolving Protection for IP Rights in the US from the USPTO & the Courts” at the New York Hilton Midtown Hotel. Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the USPTO, provided remarks that touched on Section 101 and the innovation ecosystem in the United States.
A panel discussion followed Director Iancu’s remarks. The program also featured a lively discussion moderated by Immediate Past President, Annemarie Hassett with a distinguished panel of judges with some of the busiest patent dockets and Direct Iancu. The judges included Judge Raymond T. Chen (United States Court of Appeals for the Federal Circuit), Chief Judge Ruben Castillo (United States District Court for the Northern District of Illinois), and Judge Richard Andrews (United States District Court for the District of Delaware).
The panel discussed the evolving protection for intellectual property rights. The panelists covered various topics relating to IP rights and protections before the Courts and the USPTO, including patent eligibility, validity, and venue. The Judges discussed the current state of the patent litigation landscape and provided their unique insights from their perspective from the bench. In addition, the panelists engaged in a lively discussion regarding the current state of patent policy and its impact on innovation and patent law.
On May 1, 2019, the Trademark Law & Practice Committee held an in-person meeting at the offices of Pryor Cashman LLP followed by a CLE presentation entitled “Trademark Update: A Discussion with a USPTO Policy Maker and a TTAB Decision Maker." Dyan Finguerra-DuCharme, Board Liaison of the Trademark Law & Practice Committee moderated the discussion with panelists Honorable Cindy B. Greenbaum, Administrative Trademark Judge for the Trademark Trial and Appeal Board, United States Patent and Trademark Office and Matthew G. Galan, Attorney Advisor for the Office of the Deputy Commissioner for Trademark Examination Policy, United States Patent and Trademark Office. The panel covered a wide variety of topics including insights on recent issues arising from fraudulent conduct emanating from China and the ways in which the USPTO is responding to these activities; proposed changes to the TTAB standard protective order; and the TTAB's pilot program for expediting cancellation cases asserting of nonuse or abandonment of a registered mark.
Finding Our Lost Marie Curies: Gender Diversity in Innovation
By: Scott greenberg, michael cannata, and frank misiti
In February of this year, the USPTO Office of the Chief Economist issued a report entitled “Progress and Potential: A Profile of Women Inventors on U.S. Patents.” The report provides context and history relating to women inventors and details a study showing that “[e]ven today, women comprise a small minority of patent inventors” suggesting “their innovative potential is underutilized.” As International Women’s Day on March 8 approached, Laura Sheridan, Senior Patent Counsel at Google and NYIPLA Corporate Committee Co-chair, proposed to the officers that the NYIPLA address the issues raised in the USPTO report in some fashion.
The NYIPLA reached out to the USPTO and, with the assistance of Elizabeth Dougherty, USPTO Atlantic Outreach Liaison, quickly pulled together a roundtable meeting, entitled "Finding Our Lost Marie Curies: Gender Diversity in Innovation," during which Director Andrei Iancu, moderator Laura Sheridan, and invited guests came together to discuss this important topic. Colleen Chien, Columbia Law School, Visiting Professor of Law, was also instrumental in coordinating the event and providing the venue, such that the roundtable meeting took place on April 24 at Columbia University School of Law followed by a Reception sponsored by the law school’s Center for Gender and Sexuality Law, and a fireside chat with Director Iancu and Columbia students. Approximately 30 NYIPLA members took part in the discussions which resulted in a list of possible barriers to gender diversity in innovation as well as a list of possible solutions to help address those barriers. Background reading as well as the lists generated by the discussion are available on the NYIPLA website on the events page. The NYIPLA is exploring further ways to work with the USPTO and others on this topic and welcomes all ideas and suggestions, which can be forwarded to the administrative team (email@example.com) for further distribution among NYIPLA leadership.
Trademark Update: A Discussion with a USPTO Policy Maker and a TTAB Decision Maker
By: trademark law & practice committee
wanda french-brown, Benjamin hsing, & irene Hudson
MOVING UP & MOVING ON
Formerly of Sidley Austin LLP, has joined
Formerly of Simpson Thacher & Bartlett LLP, has joined Dechert LLP as a Partner.
Formerly of BakerHostetler, have joined McGuireWoods LLP as Partners.
Formerly of Morrsion & Foerster LLP, has joined Perkins Coie LLP as a Partner.
Last First Membership Firm/Company/Law School State
Apgat Gregory Active 3+ Mayer Brown New York
Augelli John Active 3- Cadwalader, Wickersham & Taft New York
Aziz Melissa Student Fordham University School of Law New York
Babcock Ryan Active 3- Mayer Brown New York
Banerjee Shilpi Corporate Memorial Sloan Kettering Cancer Center New York
Berman Brian Active 3+ IPwe New York
Blanton Jessica Student Harvard Law School Massachusetts
Brown Elizabeth Student Rutgers University Law School New Jersey
Camiel Adam Associate Haug Partners Massachusetts
Cha Sunha Student Benjamin N. Cardozo School of Law New York
Chislet Robert Student Fordham University School of Law New York
Costa Joao Student Loyola Law School California
Denis Robert Student Brooklyn Law School New York
Dorfman Jeffrey Active 3+ DOAR, Inc. New York
Escabi Crystal Student New York Law School New York
Famularo Anthony Active 3+ Rosenbaum Famularo New York
Faro Emily Student Benjamin N. Cardozo School of Law New York
Fessak Andrew Active 3- Cadwalader, Wickersham & Taft New York
Garcia Andrew Student Brooklyn Law School New York
Giglio Eric Student New York Law School New York
Gigliotti Lisa Corporate L'Oreal USA, Inc. New York
Gordon Stuart Active 3+ Rivkin Radler New York
Hanif Nabeela Student Benjamin N. Cardozo School of Law New York
Hutchins Terrell Student St. John's University School of Law New York
Kelley Nathan Associate Perkins Coie District of Columbia
Khoury Lana Active 3- Mayer Brown New York
Klarberg Ryan Active 3+ Pryor Cashman New York
Kleysteuber William Active 3+ Sullivan & Cromwell New York
Knowles Jonathan Student Columbia Law School New York
Kolibachuk Julia Active 3+ King & Spalding New York
Levy Richard Active 3+ Pryor Cashman New York
Lieberman Evan Active 3+ DOAR, Inc. New York
Ligr Martin Active 3+ Paul Hastings LLP New York
Lin Siyao Student University of Richmond School of Law Virginia
Makover Matthew Active 3+ Willkie Farr & Gallagher New York
Marsillo William Active 3+ Boies Schiller & Flexner New York
Matthew Thomas Active 3+ Perkins Coie New York
McCraw Barry Active 3+ Mayer Brown New York
McKenna Christopher Student Maurice A. Deane School of Law New York
Last First Membership Firm/Company/Law School State
Mercado Zachary Student Benjamin N. Cardozo School of Law New York
Minkoff Elana Active 3- Greenberg Traurig New York
Montgomery Josh Student Cornell Law School New York
Owens Eric Student Emory University School of Law Georgia
Rose Brad Active 3+ Pryor Cashman New York
Sachdev Neeti Active 3+ Ruskin Moscou Faltischek New York
Sawaya C. Laure Active 3+ Pryor Cashman New York
Shotlander David Active 3+ Haug Partners New York
Spero Matthew Active 3+ Rivkin Radler New York
Tang Xiyin Active 3+ Mayer Brown New York
Vayra Fabricio Associate Perkins Coie District of Columbia
Weisenfeld Joshua Student Benjamin N. Cardozo School of Law New York
WELCOME NEW MEMBERS
NYIPLA Publications Committee Editorial Team
TaeRa Franklin and Jessica Sblendorio
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