A trademark should be used as a trademark. But, sometimes a trademark, or a portion of the trademark, is used descriptively and not as a trademark. And that can be a problem.
What does it mean to use a trademark, or portions of it, descriptively? Let’s look at the trademark application for PRECISION CONVERTING.
His Company Inc. (“HCI”) applied to register PRECISION CONVERTING for “custom fabrication of parts and components to the order and specification of others…”
HCI previously held a registration on this mark for 10 years, but the registration was canceled based on an inadvertent failure to file a required renewal.
Nevertheless, the Examining Attorney refused to register the mark in the new application asserting that it was generic or highly descriptive without secondary meaning. The Trademark Trial and Appeals Board agreed. And one piece of evidence that the Board relied on was that HCI used “precision” and “convert” descriptively on its own website. The board said:
“….according to the specimen (portions of Applicant’s website), Applicant is a “3M Preferred Converter” that provides “converting and fabrication services.” … The website/specimen also states that “[c]ustom precision fabricated components are [Applicant’s] expertise,” and that Applicant offers “a wide range of material converting capabilities including custom and precision de-cutting, laminating, slitting, assembly and prototyping.”
The Board included an excerpt from the HCI’s website, a portion shown here:
HCI submitted a declaration claiming use for 37 years and a retail value of sales under the mark between 2016-2019 in excess of $60 million. The Board found this was not enough to overcome the highly descriptive nature of its mark, even if the mark was not generic. The Board said regarding the sales figures:
“[HCI’s witness] does not account for two important facts apparent from the record: (1) while Applicant uses “Precision Converting” as a trade name, it also uses the terms “precision” and “converting” descriptively or generically, as shown, for example, in its specimen; and (2) Applicant’s “Precision Converting” trade name is typically, or at least often, displayed in close proximity to Applicant’s name and house mark HISCO. Thus, it is not clear whether sales made “under” the trade name “PRECISION CONVERTING” reflect consumers’ perception of that name as a source identifier as opposed to a mere description of Applicant’s services, especially where so many of Applicant’s competitors use “precision converting” only as a generic term.”
Therefore, HCI’s descriptive use of portions of its mark on its website muddied the water on the inferences that could be drawn from its sales. As a result, the $60 million in sales did not necessarily evidence a customer’s recognition of PRECISION CONVERTING as a trademark (source identifier) in the marketplace.
HCI’s own website was not the only evidence the Board relied on to refuse registration. Third party competitors’ use of the terms played an important role. However, HCI’s own descriptive website use did not help.
Descriptive uses of a trademark can weaken it and can make the trademark vulnerable to an attack that the trademark is really not a trademark.
A nondisclosure agreement (NDA) is used to impose confidentiality obligations on one or more parties. A NDA is often used when an inventor or owner desires to disclose details about an invention to another party, such as to obtain engineering or design assistance or to explore a possible business opportunity.
But how is confidential information referenced before an NDA is signed? First, let’s look at a case.
Chris Pritchard alleged that he sought to contract with an engineering firm in order to manufacture his dash cam with AI capabilities.
He reached out to Aaron Thompson at Harman Connected Services. Pritchard and Thompson had a phone call where Thompson allegedly told Prichard that “the correct way to go about sharing information and getting started on a future collaborative effort, would be to work up a Non-Disclosure Agreement (NDA).” Thompson allegedly offered to draft the agreement but allegedly told Pritchard that “the proper wording for the NDA would need to include word specific content related to the product.” Based on the alleged representation, Pritchard allegedly shared “very specific proprietary design, technical and AI operations of the product not revealed in [Pritchard’s] patent(s) so that the NDA . . . would encompass all the necessary details for protection of all parties involved.”
Later communication broke off between Pritchard and Thompson. Then Pritchard visited Harman’s website and allegedly discovered “an exact replica of [Pritchard’s] product” that was “complete with literally every item discussed on the phone calls in December 2021, and mimicked every AI operation listed in the patent pending page on the USPTO website.”
Pritchard sued Thompson and Harman for a number of claims including breach of contract.
Pritchard alleged in his amended complaint that an “oral contract was entered on December 3, 2021, at 1:59 p.m., when Plaintiff and Mr. Thompson engaged in a confidential call upon which Plaintiff sought the correct way to go about sharing information and getting started on a possible, future, collaborative effort regarding Plaintiff’s invention.”
The magistrate judge found that this allegation was not sufficient to plausibly establish the existence of a contract. The judge said, “There are no facts that detail an offer, acceptance, and consideration, nor is it clear what was promised by each party under the terms of this alleged oral contract.” The judge recommended that breach of contract claim be dismissed.
It is not necessary to disclose the invention or the confidential information, and it is not disclosed, to prepare a NDA. How the subject matter of the NDA is described will depend on the circumstances, but without disclosing the confidential information. For example, the NDA may identify the general subject matter at a high level such that no confidential information is disclosed.
If the NDA itself discloses confidential information or if the confidential information is disclosed to be included in the NDA, but the NDA never materializes or the other side refuses to agree to it, then the information will be disclosed to the other party without first obtaining a written commitment of confidentiality, which the NDA is supposed to provide. Perhaps one could rely on an “oral agreement” or another cause of action, but that’s risky, and it is a recipe for expensive disputes about what was allegedly agreed, and it might not work out, as occurred in Pritchard’s amended complaint.
One purpose of an NDA is to define the terms and confidentiality obligations of the parties clearly agreed in writing before a disclosure of confidential information between the parties–avoiding the possibility there is no confidentially obligation or nondisclosure agreement at all.
Should your customer be able to sign up on behalf of an unnamed third party? Should they be able to assign their rights under the agreement to another party? Should they be able to use fake names and addresses? Should they be able to reverse engineer the software or service? Often the answer to these questions is no. And the applicable agreement should make that clear.
Let’s see what happens when one company allegedly gains access to a competitor’s software by signing up under a fictitious user and company name.
CCC Intelligent Solutions Inc. and Tractable Inc provide customers with estimates of the cost to repair damaged automobiles using software with purportedly confidential algorithms.
According to CCC’s lawsuit against Tractable, Tractable had one of its employees obtain a license to use CCC’s software. The employee used a false name, physical address, and email address to sign up purporting to represent “JA Appraisal.” The employee described JA Appraisal, as a small, independent appraiser. CCC issued the requested license.
CCC’s license forbids assignment of the license without CCC’s consent and represents that JA Appraisal is not a front for anyone else. In particular, it provides, “CUSTOMER [JA Appraisal] represents that it is acting on its own behalf and is not acting as an agent for or on behalf of any third party, and further agrees that it may not assign its rights or obligations under this Agreement without the prior written consent of CCC.” Further the license forbids disassembly of the software or its incorporation into another product.
Tractable’s employee gave Tractable CCC’s software package. Tractable disassembled the software and incorporated some of its algorithms and features into Tractable’s product.
CCC filed suit against Tractable alleging the forgoing, and Tractable responded by requesting an order to refer the dispute to arbitration, noting a clause in the agreement between CCC and JA Appraisal.
How could Tractable claim to enforce a term of the license that it was not a named party to? Tractable asserted that (1) “JA Appraisal” is just a name that Tractable uses for itself, so it was a party to the agreement, and (2) if using a pseudonym and describing the business as “independent” is fraud, the arbitrator can consider that defense.
Yet, JA Appraisal was not an assumed name or otherwise publicly used or known to the public as a name that Tractable did business. The court said:
“Asked at oral argument whether CCC could have discovered that Tractable uses the name ‘JA Appraisal,’ counsel for Tractable acknowledged that this was not possible. As Tractable’s own little secret, it does not affect anyone else. Contractual meaning reflects words and signs exchanged between the negotiators, not unilateral and confidential beliefs… In other words, meaning is produced by an objective process. Signing a contract with your fingers crossed behind your back does not add to your rights or subtract from anyone else’s.”
CCC relied on section 163 of the Second Restatement of Contracts, which provides: “If a misrepresentation as to the character or essential terms of a proposed contract induces conduct that appears to be a manifestation of assent by one who neither knows nor has reasonable opportunity to know of the character or essential terms of the proposed contract, his conduct is not effective as a manifestation of assent.
Tractable relied on the exception in comment a to section 163, which provides, “The mere fact that a party is deceived as to the identity of the other party, as when a buyer of goods obtains credit by impersonating a person of means, does not bring the case within the present Section, unless it affects the very nature of the contract.”
The court said: “The problem for Tractable is not that CCC failed to know ‘the full truth about its trading partner’—the issue that Restatement §163 Comment a covers—but that CCC did not know that Tractable would claim to be its trading partner.”
The general rule of section 163 applied, not the exception of comment a. Therefore, Tractable was not a party to the agreement and could not demand arbitration. The language of CCC’s license prohibiting agency and assignment was helpful in achieving the result.
In order for a patent assignee to recover damages for infringement occurring before the assignee obtained ownership of the patent, the assignment must expressly so state. The Supreme Court said “it is a great mistake to suppose that the assignment of a patent carries with it a transfer of the right to damages for an infringement committed before such assignment.” Moore v. Marsh, 74 U.S. (7 Wall.) 515, 522 (1868).
This is illustrated in the case of Messagephone, Inc. v. Svi Sys., Nos. 99-1471, 99-1478, 2000 U.S. App. LEXIS 19976 (Fed. Cir. 2000). Messagephone sued Svi Systems and Holiday Inn Express alleging infringement of U.S. Patent Nos. 5,323,448 and 5,475,740. These patents were directed to a system that enables hotel guests to order certain amenities, such as movies, in their hotel rooms without incurring charges on their hotel bill.
When the patents where granted in 1994 and 1995, they were assigned to Spectradyne, Inc. On November 7, 1996, Spectradyne assigned title in the patents to Messagephone. This assignment granted Messagephone the “entire right, title, and interest” in the patents. But the assignment was silent regarding Messagephone’s right to sue for infringement that occurred before that date. The Court found that since the assignment did not expressly grant Messagephone’s right to sue for infringement occurring before the date of the assignment, Messagephone could not do so.
The court said, “As a general rule, only a party that possessed legal title to a patent at the time the infringement occurred can bring suit to recover damages for such infringement.” It continued, “A narrow exception to the foregoing rule is that a party may sue for infringement transpiring before it acquired legal title if a written assignment expressly grants the party a right to do so; that right, however, must be articulated explicitly in the assignment and will not be inferred by the court.”
Messagephone tried to fix this, after the lawsuit was filed, by executing a nunc pro tunc (retroactive) assignment of the right to sue for past infringement. But the court said executing it after the lawsuit was filed was too late.
The lack of express language assigning the right to sue for past infringement and damages cost Messagephone one or two years worth of damages, which could be substantial.
If the assignee desires to pursue claims for past infringement occurring before the date of the patent assignment, the patent assignment should include expressly the right to sue and recover for past infringements and damages.
An agreement to assign is not the same as a present assignment of a patent or patentable invention and does not have the same effect. An agreement to assign often requires the execution of an additional assignment to transfer legal title, whereas a present assignment does not. It is possible to assign rights to future patentable inventions with the proper language.
In many cases, one will want to avoid executing a further assignment to gain legal title, and prefers the assignment to occur on the execution of one document. Why? Because what if the inventor / intended-assignor is later unavailable or uncooperative? The situation is then more complicated, expensive, and time consuming. In some cases, litigation may be necessary to force the inventor/assignor to execute an assignment or to otherwise vest an intended-assignee with legal title.
While the applicable state law usually determines the interpretation of an agreement regarding patent ownership, Federal Circuit law determines whether an agreement effects a present assignment of a patent. Board of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Sys., 583 F.3d 832 (Fed. Cir. 2009). The following cases demonstrate the difference between the language of: “shall be …exclusive property of”, “agrees to assign,” “will assign,” and “hereby assigns.”
“Shall Be and Remain Exclusive Property Of“
Two inventors were named on US Patent 6,075,451: Mayer Micheal Lebowitz and James Seivert. Without an agreement or rule of law otherwise, the co-inventors are presumptive joint legal owners of the patent. 35 USC 116, 262.
After the inventors died, Tobi Gellman as trustee of the Mayer Micheal Lebowitz Trust sued Telular Corporation among others for infringing the patent in the case of Gellman v. Telular Corp. 449 Fed. Appx. 941 (Fed. Cir. 2011). Gellman claimed the Trust was the sole owner of the patent. The defendant(s) claimed the case had to be dismissed because the Trust was not the full owner of the patent.
Gellman claimed that Mr. Seivert was an employee of Mr. Lebowitz at Cellular Alarm and that the terms of his employment included full transfer of rights to any resulting inventions. However, the evidence of this comprised an unsigned agreement titled “agreement for consulting services.” That agreement provided as follows:
“[A]ny and all ideas, discoveries, inventions, [etc.] . . . developed, prepared, conceived, made, discovered or suggested by [Mr. Seivert] when performing services pursuant to this Agreement . . . shall be and remain the exclusive property of Cellular Alarm. [Mr. Seivert] agrees to execute any and all assignments or other transfer documents which are necessary, in the sole opinion of Cellular Alarm, to vest in Cellular Alarm all right, title, and interest in such Work Products.” (emphasis added).
The court found that even if the agreement had been signed, the language of the agreement did not effect a present transfer of ownership. The language of “shall be and remain the exclusive property” is not the same as “hereby assigned.”
Gellman argued the “remain” language indicated the invention had been fully conveyed previously. However the court found that Mr. Seivert’s contributions to the inventions remained only in equitable status until such time as Mr. Seivert “execute[d] any and all assignment or other transfer documents which are necessary . . . to vest in Cellular Alarm all right, title and interest in such inventions.” The agreement at most created an equitable obligation of Mr. Seivert to assign to Cellular Alarm. That equitable title could be converted to legal title (legal ownership) if and when Mr. Seivert actually assigned or, if necessary, through a law suit to force Mr. Seivert to execute an assignment. This did not happen. And the case was dismissed because the Trust did not have full legal title to the patent.
“Hereby Assign” v. “Agree to Assign”
It is possible for an employee to assign any and all of his or her rights to future patentable inventions. But the assignment must expressly undertake the assigning act at the time of the agreement, and not leave it to some future date.
Before visiting Catus Holodniy signed a Copyright and Patent Agreement (“CPA”) with Standford. The CPA provided, “I agree to assign or confirm in writing to Stanford and/or Sponsors that right, title and interest in . . . such inventions as required Contracts or Grants.”
Later, when visting Catus, Holodniy signed a visitor confidentiality agreement (“VBA”) which provided, “I will assign and do hereby assign to CETUS, my right, title, and interest in each of the ideas, inventions and improvements.”
Standford secured patents naming Holodniy as an inventor. Standford sued Cetus’s successor, Roche, for infringement. Roche defended on the ground that it owned the interest of Holodniy in the patent based on the assignment provision of the VBA.
The court found that the “agree to assign” language of the first CPA to Standford was not a present assignment. Instead, it was only a mere promise to assign rights in the future. It was not an immediate transfer of expectant ownership interests. Standford might have an equitable claim against Holodniy, but Standford did not immediately gain legal title to Holodniy’s inventions as a result of the CPA.
In contrast, the court found that the “do hereby assign” language of the VBA to Cetus effected a present assignment of Holodniy’s future inventions to Cetus.
Therefore, at the time of the lawsuit for infringement, Roche–Cetus’s successor– had Holodniy’s rights in the patents and Standford did not. This demonstrates a big difference between “agrees to assign” and “do hereby assign”. The former requires additional step(s), such as the signing of another assignment document, to carryout the transfer of title/ownership, whereas the latter does not require any further step to transfer legal title in the invention.
Other cases where the language did not provide a present assignment are:
Advanced Video Techs. LLC v. HTC Corp., 879 F.3d 1314, 1317-18 (Fed. Cir. 2018) (“will assign to the Company” does not create an immediate assignment);
IpVenture, Inc. v. ProStar Computer, Inc., 503 F.3d 1324, 1327 (Fed. Cir. 2007) (employment agreement providing that the employee “agree[s] to assign” was not a present assignment); and,
Arachnid, Inc. v. Merit Indus., 939 F.2d 1574, 1580-81 (Fed. Cir. 1991) (“will be assigned” does not constitute a “present assignment of an existing invention” or “a present assignment of an expectant interest”).
Other cases where the Federal Circuit found the language of “does hereby assign” or “hereby grant” sufficient to effect an automatic transfer of later arising patent rights, include:
DDB Techs., L.L.C. v. MLB Advanced Media, L.P., 517 F.3d 1284, 1290 (Fed. Cir. 2008) ( “does hereby grant and assign”);
Speedplay, Inc. v. Bebop, Inc., 211 F.3d 1245, 1253 (Fed. Cir. 2000) (“hereby conveys, transfers and assigns”);
The hereby assign language effects a present assignment, according to the Federal Circuit, and should better avoid the need of executing further documents to transfer legal title to a patent or patentable invention. Even though an additional assignment or assignment conformation is often executed when a patent application is filed, including the present assignment language in an earlier employment or consulting agreement is a prudent step in case the inventor / intended-assignor is later unavailable or uncooperative.
The First Amendment can be a defense to a trademark infringement claim when the accused work is an artistic work. There, in many cases, trademark rights must yield to the public interest in free expression protected by the First Amendment.
This is demonstrated in the case of MGFB Properties Inc. V. 495 Productions Holdings LLC, No. 21-13458 (11th Cir. 2022). In that case MGFB and its related entities sued 495 Productions and Viacom alleging that the title of the MTV Floribama Shore reality TV show infringed its FLORI-BAMA trademark.
The Plaintiffs operate the Flora-bama Lounge, Package and Oyster Bar on the Florida-Alabama boarder, and have done so since 1964. MGFB owns federal trademark registration no. 4,272,440, for FLORA-BAMA for bar and restaurant services as well as several entertainment services including hosting social entertainment events, live musical performances, and competitions for fish throwing.
The defendants produced and aired a reality TV show titled MTV Floribama Shore. It was modeled on its prior reality show, Jersey Shore. With the MTV Floribama Shore show, the defendants wanted to highlight “young [S]outhern folks” who go to “shore houses” or “spend summers” on the Gulf of Mexico, extending from the Florida panhandle into Alabama and Mississippi.
1. The First Amendment Roger’s Test Applied
The Second Circuit’s Rogers test balances the trademark owner’s rights against the rights under the First Amendment in connection with artistic works. Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). It provides that the title of an artistic work does not violate the trademark act, “[(1)] unless the title has no artistic relevance to the underlying work whatsoever, or, [(2)] if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work.”
In the MGFB case, the court applied the Roger’s test finding that MTV’s use of Floribama was artistically relevant to the show. The court said:
“‘Floribama’ describes the subculture profiled in the series and the geographic area exemplified by the subculture. To break it down even further, the former part of ‘Floribama,’ i.e., ‘Flori,’ refers to Florida and the beach culture the series sought to capture, while the latter part, i.e., ‘bama,’ refers to Alabama and the Southern culture the series sought to capture. … ‘Floribama’ gave viewers ‘a very distinct sense of what part of the country and subculture the series was about.”
On the second part of the Rogers test, the court found that title of MTV’s show was not explicitly misleading. The court said that the relevant question under this part is “whether (1) the secondary user overtly ‘marketed’ the protected work as ‘endorsed’ or ‘sponsored’ by the primary user or (2) ‘otherwise explicitly stated’ that the protected work was ‘affiliated’ with the primary user. ” And the court found no evidence of this. On the contrary, Viacom “chose a title that includes its own house mark (MTV) and the name of one of its iconic franchises (Shore).”
Therefore, Defendants’ use of Floribama in its television series title—MTV Floribama Shore—did not infringe the FLORA-BAMA trademark .
2. Some Confusion Is Allowed When First Amendment Applies
The court found MTV’s show title did not infringe even though MGFB presented some evidence that the title of the show caused confusion. MGFB conducted a survey that found that 34% of those surveyed had heard of the term “Flora-bama,” and half of that 34% identifying it as the Lounge. However, this was irrelevant because the evidence must relate to the nature of the defendant’s behavior under part 2 of the Rogers test, not the impact of the defendant’s use. Further, MGFB “submitted emails, letters, and declarations from their bartenders and regular musical acts stating that there have been multiple instances of confusion between the series and the Lounge.” Yet, this did not lead to a different result.
The way that a design is presented in a design patent is critical. Design patent drawings are often line drawings. But photographs are also allowed. And some patents use computer generated images.
Yet, while photographs and computer generated images may provide more details than line drawings, they are likely to be more limiting. The more details in the design drawings the more possible differences a competitor could develop. Details in a design patent are a double edged sword, more details provide increased options for distinguishing prior art, but may result in more narrow protection as shown in the case below.
Think Green Ltd. sued Medela AG asserting that Medela’s breast pump infringed its design patent US D808,006 (the ‘006 Patent). Below is figure 9 (first/left) from the ‘006 patent and Medela’s pump (second/right).
Medela’s pump is transparent. The images of the ‘006 patent are computer generated images. Think Green argued that the ‘006 patent covered transparent objects. The court disagrees.
According to MPEP rules, surface shading lines are used to “indicate “character and contour,” including “to distinguish between any open and solid areas of the article.” On the other hand, the court notes that other “courts have held that when a patent fails to specify a limitation, in other words, when it is blank and does not include surface shading, the patentee is entitled to the broadest reasonable construction.” For example, in an older case from the 6th Circuit, that court found a blank surface without oblique lines could claim a transparent, translucent, or opaque surface, or both. Transmatic, Inc. v. Gulton Indus., Inc., 601 F.2d 904, 912-13 (6th Cir. 1979).
The court in the Think Green case concluded “an inventor intending to claim a generically opaque surface, and not any particular material type, would use a line drawing with a blank surface, free of anything but contour lines, thereby claiming both an opaque and transparent surface.” Therefore, the court found the ‘006 Patent computer generated images “must be interpreted to claim an opaque object to the exclusion of translucent or transparent objects.”
The court then found that Medela’s pump was not substantially the same as the design of the ‘006 Patent and did not infringe. The court said:
“Even if Medela’s product were exactly the same as Think Green’s design in all other aspects, the Court finds that an ordinary observer would not find the translucent object to be substantially the same as the opaque object. Opaque and translucent objects are categorically different such that they are “plainly dissimilar” and could not be confused by an ordinary observer. … Indeed, whether an object is opaque or translucent is one of the most obvious and prominent characteristics of any object.” Think Green Ltd. v. Medela AG, No. 21 C 5445, 2022 U.S. Dist. LEXIS 184040 (N.D. Ill. Oct. 7, 2022)
Now, compare the drawings of the ‘006 patent to the following drawings from two patents owned by Lego A/S.
The first drawing (left) from US Patent D951366 (‘366 patent) shows a toy building element presented in a traditional black and white line drawing. The second drawing (right) from US Patent D951365 (‘365 patent) is a photograph, showing the toy building element is transparent or at least translucent.
The ‘365 patent clearly covers a transparent or translucent toy building element, but probably does not cover an opaque product under the reasoning in the Think Green case.
But does the ‘366 patent cover transparent or translucent products? The reasoning in the Transmatic, Inc. and Think Green cases indicates it does.
Yet, the MPEP provides that “oblique line shading must be used to show transparent, translucent and highly polished or reflective surfaces, such as a mirror.” MPEP 1503.02(II).
What is oblique line shading? The following is an example of oblique line shading for black and white line drawings showing transparent surfaces, from the USPTO Design Patent Application Guide:
Does the failure to use oblique line shading in line drawings limit the claimed design to opaque surfaces? A number of district courts have said no and followed Transmatic.
One court said: “the relevant section [1503.02(II)] of the MPEP only specifies that an inventor wishing to limit a particular surface to a transparent, translucent, or reflective material must indicate the surface through the use of oblique lines. It does not state that failure to include oblique lines necessarily excludes the use of a transparent surface.” Apple, Inc. v. Samsung Elecs. Co., No. 11-CV-01846-LHK, 2012 U.S. Dist. LEXIS 105125, at *24-25 (N.D. Cal. July 27, 2012). Other district courts have agreed in Water Tech., LLC v. Kokido Dev. Ltd., No. 4:17-cv-01906-AGF, 2019 U.S. Dist. LEXIS 42420, at *42-44 (E.D. Mo. Mar. 15, 2019) and Lifted Ltd., Ltd. Liab. Co. v. Novelty Inc., Civil Action No. 16-cv-03135-PAB-GPG, 2020 U.S. Dist. LEXIS 92102, at *19-20 (D. Colo. May 27, 2020).
The drawings of design patent D556396 in the Water Tech case that were construed to encompass both opaque and transparent surfaces includes:
Why would Lego file for the ‘356 patent with photos of the transparent product if the line drawing version in the ‘366 patent is sufficient to cover transparent and opaque surfaces according to the cases above? There are at least a few reasons. First, if the prior art invalidates the broader line drawing version of the ‘366 patent, possibly the ‘365 patent would survive on the basis of the specifically claimed transparency (there is some uncertainty on this issue as well but see In re Haruna, 249 F.3d 1327 (Fed. Cir. 2001)). Second, it appears the Federal Circuit has not ruled directly on whether line drawings cover transparent and opaque surfaces. Therefore, if the Federal Circuit would decide line drawings do not cover transparent surfaces or the law would otherwise change in this direction, Lego would be covered by the patent specifically showing transparency. Third, possibly it makes it easier marginally to succeed on a patent infringement case because the transparency in the design patent drawings makes them look more like the accused transparent product. In theory this last aspect should not matter if a judge instructs that the design patent covers transparent and opaque surfaces. Yet, it nevertheless may be marginally easier.
Appropriate line drawings provide a better chance of covering transparent surfaces as compared to photos or computer images of products with opaque surfaces. Yet, if transparent surfaces are important to the design, they can be specifically indicated in the drawings by the use of oblique line shading and accompanying text description or a photo showing a transparent product such as in Lego’s ‘365 patent above.
Sharidan Stiles was selling her Stiles Razor, a disposable razor with a narrow blade, through Walmart. But the sales of her product were allegedly not meeting Walmart’s expectations. Walmart stopped selling Stiles Razor and began selling another narrow blade razor, the “Micro Razor,” provided by American International Industries. Silts sued Walmart and American for design patent infringement, among other claims.
The commonalities of a narrowed and angled head, a elongated handle, and a gripping surface, are factored out as functional. That leaves the ornamental aspects, about which the court says differ on the whole:
“First, the grip: in the American design, the grip is much wider than the handle, but in only one dimension, and the bulge has a diamond-like shape. In the Stiles design, by contrast, the grip is a cylinder with a constant radius, as described above. The American grip is also contoured and textured, whereas the Stiles grip is angular and smooth. Second, the end of the handle: the American design is rounded; the Stiles design is flat. Overall, these and other features give the American razor a flowing, contoured look and the Stiles Razor an angular, minimalistic look.”
Therefore, the court found that the Micro Razor did not infringe the patent.
Usually, if you are ordered not to use a mark more than a certain number of times on a webpage, you’d be conservative and count uses of the mark that are visible on the webpage and the uses that are not visible but are in the HTML source code. Do you want to argue whether use of the mark in the HTML source code is not a use of the mark on the webpage because it’s not visible?
Seems better to avoid testing this distinction and prompting your opponent to move for sanctions. It is arguable that use of a mark in a HTML source keyword meta tag should not be infringement, since search engines probably ignoreit and customers can’t normally see it, but sometimes a court saysit is.
Enterprise Warehousing Solutions, Inc. (EWS), a test prep company, proceeded to test this distinction, whether intentionally or not.
Data Management Association International (“DAMA-I”), an exam and certification provider, sued EWS for trademark infringement. One of the certifications DAMA-I provides is the Certified Data Management Professional (“CDMP”) certification. To obtain the certification, a person must pass the Data Management Fundamentals Exam.
DAMA-I alleged that EWS was inappropriately using DAMA-I’s trademarks on EWS’s website and social media accounts when promoting its test prep course. The court entered a preliminary injunction against EWS. However, the court recognized the need, under nominative fair use, for EWS to use certain DAMA-I marks in a limited matter to describe EWS’s exam preparation course. Therefore the injunction allowed EWS to use certain of DAMA-I’s mark up to five times on any web page.
DAMA-I found that EWS was using DAMA-I marks in EWS’s website source code, which was not visible on the rendered web pages. By counting the use of the marks in the source code, DAMA-I assert EWS exceeded the prohibition on using DAMA-I’s marks more than five time on any web page.
But earlier in briefing on the preliminary injunction motion the parties did not address use of marks in HTML source code or metatags. Instead they focused on the content on EWS’s web pages. The court found that “Nowhere in the preliminary injunction order did the Court mention marks invisible to the consumer.” So the court found that the use of marks in HTML source code (which was not visible when the webpage was normally displayed) fell outside of the scope of the preliminary injunction.
This could have gone the other way. So, check for any source code use of third marks that are not visible on the rendered webpage. And the conservative route is to remove those uses.
When a trademark application is refused registration based on a likelihood of confusion with a prior registration, the examining attorney of the USPTO must support that refusal with evidence. If it is not, the refusal can be reversed by the Trademark Trial and Appeals Board (Board) as demonstrated in the following case.
Genebook LLC applied to register EPIGENE for the goods of “electronic database in the field of genes recorded on computer media.” The application was refused based on two prior registrations for the same mark EPIGENE. The goods listed in the prior registrations for EPIGENE where (1) Diagnostic preparations for medical purposes, and (2) Apparatus for medical diagnostic testing in the fields of cancer or other tissue-based diagnostic testing, cytology and cell-based testing.
The examining attorney needed to support the refusal with evidence that the goods in the registrations and the goods in Genebook’s application were related in some manner and/or that the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they emanate from the same source. But the Board found the evidence was lacking and reversed the refusal.
1. Similarity of the Goods
The examining attorney cited website evidence from numerous DNA testing companies to try to show that the goods where related. However, the Board said there was “no evidence in the record that any of these companies offer an ‘electronic database in the field of genes recorded on computer media’ with search and retrieval capability to their customers.” The DNA testing companies offered printed reports . Yet, the Board said, “While these printed reports ‘may’ be created via access to an electronic database, we have no basis for finding that these reports are themselves ‘databases’ as that term is defined and understood in this field.” Further, the sellers of genetic testing equipment did not offer gene databases or information from gene databases in connection with their products.
Therefore, there was a gap in evidence between the goods of the prior registrations and the applicant’s goods.
Further, the examining attorney can show the goods are related by showing they “have complementary uses, that they are often used together or that they are otherwise bought by the same purchasers for the same or related purposes, such that confusion would be likely if the goods were marketed under the same mark.” Yet, the Board found that there was little evidence of this.
2. Channels of Trade
The Board acknowledged the principle that “In the absence of meaningful limitations in either the application or the cited registrations, [we] properly presume that the [respective] goods travel through all usual channels of trade and are offered to all normal potential purchasers.” However the Board found that this presumption is “not a substitute for proof, which is absent here.”
As a result of the lack of evidence showing similarity of the goods or overlapping channels of trade, the Board reversed the refusal and allowed the application to proceed toward registration.
Identifying a lack of evidence supporting a trademark registration refusal is one possible path to overcoming a refusal and achieving registration.