The Power of a Standard Character Trademark Registration

Cheryl Bauman-Buffone applied to register the mark JUST SAY IT in the stylized form shown below.

Nike opposed the registration based on its JUST DO IT trademarks in Nike, Inc. v. Cheryl Bauman-Buffone, Op No. 91234556 (TTAB 2019).

When the Trademark Trial and Appeals Board considered the similarities between the marks, it said, “The stylization of Applicant’s mark is essentially irrelevant, because Opposer’s [Nike’s] mark is registered in standard characters and typed forms, and could be displayed in any font or size, including in a manner similar to Applicant’s display of JUST SAY IT.” (emphasis added).

A standard character mark usually provides the broadest protection over the underlying words/characters of the mark. This is so, because the registration is not limited to any particular font or stylization of the mark. My prior article on Words or a Logo or Both in a Trademark Application? provides more factors to consider when choosing what to include in a federal trademark application.

Ultimately, the Board refused the registration Bauman-Buffone’s mark. While the similarity of the marks was not the only factor that lead to the refusal to register, it was an important factor.

Registration or Refusal by Copyright Office Required to Sue for Copyright Infringement

On March 4, 2019, the U.S. Supreme Court decided that one portion of section 411(a) of the Copyright Act requires a copyright registration in order to file suit for copyright infringement and that a registration occurs when the Copyright Office registers a copyright. The court found that simply filing an application for copyright registration was not enough to meet the statutory requirement that a “registration . . . has been made” under 17 USC 411(a) prior to filing suit. Instead action by the Copyright Office on the application was necessary.

According the the Copyright Office, the average processing time for a copyright application is about six months. Therefore, this decision will delay the time until an owner of an unregistered copyright can file suit. Further, this decision may lead some plaintiffs to forgo ancillary copyright claims in suits where other claims predominate or are otherwise available.

Copyright owners should consider promptly registering their copyrights so they can take quick action to stop infringement when necessary and avoid a six month (or whatever is the then existing Copyright Office processing time) delay in filing suit while waiting for the Copyright Office to take action.

Section 411(a) also permits a lawsuit to be filed if the Copyright Office refuses registration. Therefore, some action by the Copyright Office on an application is usually necessary, subject to some exceptions, in order to file suit.

Case: Fourth Estate Public Benefit Corporation v. Wall-Street.com, No. 17-571 (2019).

Will They Steal My Invention?

“[He] requested that he and his team be allowed to spend some time alone with the prototype, during which he photographed it without permission.”

Inventors and businesses are often concerned that their invention or technology will be stolen or copied in the marketplace. However, keeping an invention secret is not always an option. If bringing the invention to market requires disclosing the invention to the public, then secrecy is not an option. But neither, in such case, is keeping it locked up in the lab or under the mattress–if commercial exploitation of the invention is desired.

There are at least two ways to protect yourself when interacting with another about the invention: (1) file a patent application on the invention beforehand, (2) enter into a favorable and strong nondisclosure agreement, or (3) both.

However, there are rarely guarantees. Even with a nondisclosure agreement agreement in place things can still go sideways, as allegedly happened to Mr. Hrabal when he interacted with Goodyear.

Mr. Hrabal’s complaint alleges the following in the case of Coda Development v. Goodyear Tire & Rubber Company, 2018-1028 (Fed. Cir. 2019). In 2008, Mr. Hrabal invented a self-inflating tire (SIT) technology. General Motors expressed an interest and wanted to involve Goodyear. Goodyear reached out to Coda Development, Mr. Hrabal’s company, requesting a meeting. Before the meeting the parties executed a nondisclosure agreement restricting use of information regarding the SIT Technology.

Then Coda and Goodyear met in 2009 for the first time and requested that Coda share information on the SIT technology. At a second meeting in 2009, Coda allowed Goodyear to examiner a functional prototype of the SIT technology. Also at this second meeting, Mr. Benedict of Goodyear, “requested that he and his team be allowed to spend some time alone with the prototype, during which he photographed it without permission.”

Following the second meeting in 2009, months passed without any communication from Goodyear. Mr. Benedict later in 2009 declined an invitation from Coda to restart communications over a dinner saying that a meeting “would be premature at this point.”

In December 2009, Goodyear applied, without Coda’s knowledge, for a patent titled “Self-Inflating Tire Assembly” naming Mr. Benedict as an inventor, which became U.S. Patent 8,042,586.

Coda assumed that Goodyear lost interest. But in 2012, Coda received an unsolicited email from a then ex-Goodyear employee that said “I am retired now from Goodyear and see in the news today that they have copied the SIT. Unfortunate. I though China companies were bad.”

Between 2012 and 2015 eleven other patents issued to Goodyear covering assemblies and methods for assembly of pumps and other devices used in self-inflating tires, which Coda claims cover confidential information Coda disclosed to Goodyear.

Goodyear denied Coda’s claims and denied that the Coda’s SIT technology was new. This case is only at the initial stage so the court has not made a final determination on these allegations.

What’s the take away here? Does one forego opportunities with other companies even while taking precautions and having a good nondisclosure in place? Probably no.

One should take reasonable steps to protect their interests. But, these allegations illiterate that things could still go badly. 

Could someone try to steal your invention? It’s possible. But that possibility probably should not stop you from trying to commercialize the invention after taking reasonable steps to protect yourself, particularly if the alternative of indefinite secrecy means that your invention might never get off the ground commercially.

Is There a Market for the Invention?

“[T]he lesson Edison drew from the experience was that invention should not be pursued as an exercise in technical cleverness, but should be shaped by commercial needs.”

Thomas Edison is an inventor famous for his long running electric light invention among many others. Edison accumulated over 1000 patents in his life time. His life and work is covered in Randall Stross’ book The Wizard of Menlo Park: How Tomas Alva Edison Invented the Modern World.

Early in his career, while working as a telegraph operator, Edition invented on the side. According to Stross, “Edison filed patent applications as fast as the ideas arrived.” The first patent application that Edison filed was for a legislative chamber vote recorder (U.S. Patent No. 90,646). The vote recorder could shorten the time it took to tabulate votes by hours.

The invention provided buttons at each member’s desk and the chamber’s speaker could see running totals for “aye” and “nay” on twin dials.

However, there was no interest in the Capital for the invention. Stross describes a Capital insider’s reaction to the invention as “undisguised horror.” Stross continues: “The minority faction would not embrace an expedited voting process because it eliminated the opportunity to lobby for votes, nor would the majority want a change, either.”

Stross concludes, “The vote recorder was a bust, and the lesson Edison drew from the experience was that invention should not be pursued as an exercise in technical cleverness, but should be shaped by commercial needs.”

Register the Mark You Will Actually Use, Not Unused Similar Variations

Trademark rights are connected with actual use of a mark. Sometimes that use starts before an federal trademark is filed and sometimes it starts after a federal (intent to use) trademark application is filed. But speculating in trademark applications on marks that you don’t intend to actually use is useless.

This brings me a federal trademark application filed on the following mark:

double doink doubledoink DOUBLE DOINK DOUBLEDOINK Doubledoink Double Doink

That whole thing is the mark of the application.

The applicant included many variations of capitalization and spacing of the two words Double Doink. Let’s break down the mark:

  1. double doink
  2. doubledoink
  3. DOUBLE DOINK
  4. DOUBLEDOINK
  5. Doubledoink
  6. Double Doink

The applicant has six variations of Double Doink in the mark. But you don’t need to, and shouldn’t do this to protect the mark “Double Doink.”

Maybe the applicant here really is going to use all six variations, together, and in that order, as his mark. But that seems very unlikely.

You should pick the way that mark will be used, use it consistently in that way, and apply to register in that way. Then let trademark law do the rest. Trademark law often protects against not only identical copying of a mark, but also against confusingly similar marks.  Is “Doubledoink” confusingly similar to “Double Doink” for the same goods/services? Probably.

In many cases, a trademark registration on Double Doink would likely protect the owner from others using the mark with minor different capitalization or spacing–e.g. similar variations of the mark–in connection with the same goods/services. For example, the USPTO found CROSS-OVER to be in conflict with a registered mark CROSSOVER. The hyphen made no difference.

There are exceptions to every rule, but like minor punctuation differences, minor spacing and capitalization differences alone often do not distinguish marks because marks are compared in at least following ways: (1) appearance, (2) sound, and (3) connotation. A similarity in any one of those aspects could be enough to find that the marks are similar. Many times you can’t hear spacing and capitalization differences when a mark is spoken, e.g. its sound. Further, the spacing and capitalization may not sufficiently distinguish the marks visually. Is “Doubledoink” that much different visually from “Double Doink”? No.

Pick a way to present and use your mark. Use it and apply to register it in that way. And let trademark law do the work of stopping the use of similar variations of your mark.

Thanks to Erik Pelton for pointing out this application.

Difficulty of Name Changes: Country Moves to Change Name to End 27 Year Dispute with Greece

It is not uncommon for trademark disputes to resolve with one party agreeing to stop using the mark that is in dispute. If the mark is the party’s name, then a name change is required.

Name changes are usually not easy. Consider the need to change items having the mark, including advertisements, signs, letterhead, business cards, brochures, packaging, marked products, and a website. Further, a name change may mean a loss of customer recognition of the brand and the need to educate customers on the new name.

As a result, it is no surprise that a party is usually not happy about being required to change its name. So too when a country is pressured to change its name.

NPR reports that the parliament of the country of Macedonia (Republic of Macedonia) approved changing the country’s name to North Macedonia to appease Greece. NPR reports on why Greece objected to Macedonia’s name:

Greece already contained a region called Macedonia, which incorporates most of the territories of the eponymous ancient kingdom that was led centuries ago by Alexander the Great. Both Greece and its northern neighbor consider Alexander, and the name, integral parts of their identity…

Previous Greek governments have also claimed the tiny Republic of Macedonia might use the name to make territorial claims on its province.

As a result of this name dispute, Greece has blocked Macedonia’s entry into both NATO and the European Union. Greece and Macedonia have been in a dispute over the name since 1991 when the Republic of Macedonia broke away from Yugoslavia.

Opponents of the name change strongly condemned the vote in parliament using words such as “traitors” and “treason,” according to NPR.

Name changes are often hard. However, apparently the benefits of a possible path to NATO and EU membership outweigh the resistance to a name change in the Republic of Macedonia. Similarly in trademark disputes, when a name change is agreed, the business usually sees the benefits arising from a change outweighing the costs.

Amazon Marketplace Problems and the Case For Registering a Seller Name as a Trademark with the USPTO

Verge reports on the problems sellers encounter from false claims and sabotage efforts of other sellers on Amazon’s marketplace.

The Verge article is titled Prime and Punishment: Dirty Dealing in the $175 Billion Amazon Marketplace. It reports that one seller registered a trademark for his watch brand but not the name of his Amazon seller account. Another person then applied and received a trademark registration from the USPTO over the Amazon seller’s account name, registered it with Amazon, and then used the registration to convince Amazon to kick the legitimate seller off and take over his name on Amazon. The article describes it this way:

Over the following days, Harris came to realize that someone had been targeting him for almost a year, preparing an intricate trap. While he had trademarked his watch and registered his brand, Dead End Survival, with Amazon, Harris hadn’t trademarked the name of his Amazon seller account, SharpSurvival. So the interloper did just that, submitting to the patent office as evidence that he owned the goods a photo taken from Harris’ Amazon listings, including one of Harris’ own hands lighting a fire using the clasp of his survival watch. The hijacker then took that trademark to Amazon and registered it, giving him the power to kick Harris off his own listings and commandeer his name.

…Then came the retaliation: tired of Harris’s futile attacks, the imposter booted Harris off his listings entirely, reporting him to Amazon for infringing on his own brand.

Therefore, registering with the USPTO, your amazon account name as a trademark, is a step to try prevent this type of terrible problem from occurring.

Explaining Technical Details of an Invention in an Understandable Manner

In a patent dispute, one challenge can be explaining technical features of an invention or product in an easily understandable manner. Analogies are helpful on this score.

In the patent infringement case of Sprint v. Time Warner Cable, Time Warner tried to distinguish its IP-based technology from ATM technology described in the patents at issue. Time Warner’s expert described the two technologies this way:  ATM is “like being on a train track where you have to follow the tracks,” but IP is like “driving a car from Point A to [Point] B, where you’re free to take different roads.”

Assuming this is an accurate analogy, the reference to railways and roads allows the reader to readily understand the emphasized difference between the technologies.

Case Citation: Sprint Communications Company LP v. Time Warner Cable, Inc., No. 2017-2247 (Fed. Cir. Nov. 30, 2018).

Describing Features of the Invention Both Broadly and in Detail

Drafting a patent application often involves  describing the invention both broadly and in detail. But how can something be described both broadly and specifically?A decision in a case between Sprint and Time Warner Cable illustrates one way.

In that case, Time Warner argued that the patents asserted by Sprint did not comply with the written description requirement. It argued that the claims were broader than what was described in the patent description. Time Warner argued that the patent description was limited to ATM networks. The appeals court disagreed.

The patent description at issue in the case included reference to “[b]roadband systems, such as Asynchronous Transfer Mode (ATM).” The court said that this wording “strongly suggests that the patents are not limited to ATM technology.”

In the Sprint case, Time Warner accused technology did not use ATM technology but instead used IP technology. If the patents did not describe broadly “broadband systems” it is less likely that the claims would have been useful to cover Time Warner’s IP-based system.

The form of the phrasing is “[broad or general descriptor], such as [detailed or specific descriptors].” This form can allow claims to the broad element while also specifying specific details in the patent application. Multiple detailed elements can be listed. For example, “a wireless protocol, such as WiFi, CDMA, 3G, 4G, LTE…” or another example, “a fastener, such as a screw, bolt, nail, rivet, hook and loop fastener….”

By describing an invention feature broadly first and then providing detailed examples of the broad element in an exemplary way, the invention feature is described both broadly and in detail. Describing the invention feature broadly provides the opportunity for broad patent coverage. Providing detailed examples supports the broad description and provides a fall-back position if some portion of the broad subject matter is already in the prior art.

Case Citation: Sprint Communications Company LP v. Time Warner Cable, Inc., No. 2017-2247 (Fed. Cir. Nov. 30, 2018).

Weak Marks Leave Only Stylistic Elements Protected: DIY Auto Edition

It is usually not good when the trademark office considers the whole text of your mark to be generic, as the registration for DIY AUTO REPAIR SHOPS demonstrates below. When you want to use a generic element in your mark to describe the goods or services offered, it is usually better to combine that with a unique text element so you have something protectable, to which your reputation can attach.

DIY AUTO, LLC applied to register the DIY AUTO and design, shown below, for the services of providing a website featuring information about automotive maintenance and repair service.

The Examining Attorney refused registration based on DIY AUTO REPAIR SHOPS and design, shown below, registered for the services of a do-it-yourself vehicle repair shop.

 

The Trademark Trial and Appeals Board reversed the refusal and allowed the application on DIY AUTO to register. The board said that “we find that the purchasing public, who are interested in repairing their own vehicles, will understand the terms DIY, DIY AUTO, and DIY AUTO REPAIR in the generic sense, rather than as indicating a particular source of do-it-yourself auto repair services.”

Here, given DIY AUTO and DIY AUTO REPAIR are generic, all that is left for the trademark registrations to protect is the stylistic (logo) presentation–i.e. the blue and white badge-like logo of the first mark and the orange and blue badge-like logo of the second mark–but not the text alone. That’s not a lot of protection considering consumers can use or encounter the mark audibly or orally. Indeed, words are often used by customers to refer to or request goods/services. See e.g. TMEP 1207.01(c)(iii).

The terms DIY AUTO are telling customers what they get in connection with auto repair and auto repair information, but the mark owners are not staking out any substantial ground that can distinguish one source of goods/services from another, apart from the graphics. Each of these marks are or will be registered, but the scope of protection is narrow.

It would be better if these parties attached DIY AUTO to a protectable text mark, e.g. ACME DIY AUTO. That way each could build brand recognition in the protectable text (ACME) and also inform customers what they get (DIY AUTO).