How to Destroy Your Trademark Rights in a Product Design

Illinois Tool Works (ITW) was the owner of three product design trademark registrations used in connection with resealable plastic bags. ITW licensed these trademarks to third parties, including S.C. Johnson. S.C. Johnson appears to use these designs in its ZIPLOC branded bags. The product design trademarks are directed to a colored stripe extending across the top of a bag. Tm Reg. Nos. 0946120, 1055114, 1294243. An example figure from the Registration No. 0946120 follows.

946120

Poly-America, L.P. petitioned the USPTO to cancel these trademark registrations. [Poly-America, L.P. v. Illinois Tool Works, No. 92056833 (TTAB 2017)]. Poly-America asserted that the mark of each was ineligible for registration because the color stripe was functional.

Obtaining trademark protection over a product design or a portion of a product design is not easy. This is because it is …

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The Wright Brothers on Taking Risks

“The man who wishes to keep at the problem long enough to really learn anything positively must not take dangerous risks. Carelessness and overconfidence are usually more dangerous than deliberately accepted risks,” said Wilbur Wright.

WrightBrothersThe process of inventing the airplane and testing it carried risks. However, as David McCullough writes in his book The Wright Brothers, “caution and close attention to all advanced preparations were to be the rule for the brothers.”

He continued, “They would take risks when necessary, but they were not daredevils out to perform stunts and they never would be.” In addition to the brothers’ study of flight attempts of others and the manner that birds fly, the bothers took many cautious steps in preparation for their first flight experiences.

The brothers realized that …

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Register Copyright Early to Ensure Right to Timely Enforce: 11th Circuit Requires Copyright Registration Before Infringement Suit Is Filed

The Copyright Act requires the “registration” of a copyright with the Register of Copyrights before a copyright infringement suit can be filed. 17 USC 411(a). Despite the presence of the word “registration” in the statute, courts are divided on whether registration occurs when an owner (1) files an application to register the copyright or (2) only when the Register of Copyrights registers the copyright. The 11th Circuit followed the “registration approach” and held a registration occurs when the Register of Copyrights registers the copyright claim, in the case of Fourth Estate Pub. Ben. Corp. v. Wall-Street.com, LLC, 2017 U.S. App. LEXIS 8766, No. 16-13726 (11th Cir. May 18, 2017).

This matters, under the registration approach, because if a copyright owner does not have a registration at the time …

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US Supreme Court Restricts where Patent Suits Can be Filed

The U.S. Supreme Court interpreted the patent venue statute, 28 USC 1400(b), narrowly to restrict the places were patent suits may be filed in the case of TC Heartland LLC v. Kraft Foods Group Brands, LLC, No. 16-341 (May 22, 2017).

Previously, the Federal Circuitdetermined that section 1400(b) incorporated the broader definition of “residence” contained in 28 USC 1391(c). That broader definition provided that a defendant corporation resides in any judicial district in which the defendant is subject to the court’s personal jurisdiction. The Supreme Court determined that the resident definition section does not apply to section 1400(b) and that a defendant resides, for the purposes of section 1400(b), only in the state where it is incorporated.

Since many corporations are incorporated in Delaware, this ruling is expected to …

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Google’s Trademark Survives Genericide Attack Despite Use as a Verb

Google’s trademark was attacked by two individuals who claimed that the GOOGLE trademark was generic for the act of internet searching in the case of Elliott v. Google, Inc., No 15-15809 (9th Cir. 2017). The owner of a valid trademark can become the “victim of genericide,” which occurs when the public appropriates a trademark and uses it as a generic name for a type of goods or services regardless of the source. If this happens, as it did for ASPIRIN and THERMOS, the trademark owner can loose its rights in the mark.

Here, the plaintiffs claimed that the public’s use of google as a verb, e.g. “I googled it,” showed that the trademark was generic. The plaintiff’s claimed that a word can only be used in a trademark sense …

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Selling or Transferring Ownership a Patent Application or Patent

Selling or transferring ownership of a U.S. patent or patent application must be carried out by a written document called an assignment. See 35 USC 261. Below I review four common provisions of a patent/patent application assignment and then I explain the benefits of having an assignment notarized and recorded at the USPTO.

1. Transfer of Ownership

The ownership transfer clause effects the transfer of the invention and the patent application. One example ownership transfer clause is: “In consideration of good and valuable consideration, the receipt of which is hereby acknowledge, the entire right, title, and interest in the invention by [Inventor(s) Name] (“Assignor”) of the [Title of Invention] (“Invention”) and in the application for Letters Patent of the United States therefor, identified by serial number ________ and filing date …

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I Searched and There is Nothing Like My Invention at the Patent Office

Occasionally, I will hear someone say that he/she searched for their invention at the patent office, but there is nothing like it. But, more searching is likely needed. It is almost never the case that there is nothing similar to a new invention. New inventions are built on the backs of prior products, inventions, and/or knowledge.

Usually the problem is either that the person (a) has not searched in the right place or (b) is too narrowly viewing what is similar. When someone hires a patent search to be performed, the search almost always finds something related to the invention.

If a search is coming up with no results, then the patent search must be broadened. The search can be broadened by looking in different classifications or by searching …

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Forgot to Pay the Patent Maintenance Fee: Options to Revive a Patent

After a US utility patent is granted, maintenance fees must be paid at certain intervals. This post will discuss some of the rule that currently apply to maintenance fees.

Patent maintenance fees must be paid at 3 1/2, 7 1/2, and 11 1/2 years after the patent issues. The fees can be paid in the 6 month window before the deadline, that is between 3 years and 3 1/2 years, between 7 years and 7 1/2 years, and between 11 years and 11 1/2 years, respectively. See MPEP 2506.

If you don’t pay the maintenance fee by the deadline, you can pay it in the 6 month period (“the surcharge period”) after the deadline by paying an additional surcharge fee. Therefore, the surcharge periods are between 3 1/2 years and …

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Components of a Trademark Cease and Desist Letter

At its most basic, a trademark cease and desist letter explains the what and why of the wrongful conduct and requests that it stop. Below provides a more detailed explanation of some components that may go into a cease and desist letter, depending on the circumstances.

1.  Who is this?

Simply explain who you are. For example, “I’m the president of Acme, Inc.”

2. Tell them what you want

Provide a brief one or two sentence summary of the issue and what you want. For example, “I am writing regarding Beta Inc.’s use of the word “BOSSES” in connection with the sale of widgets. As this use infringes Acme’s trademark rights, Acme demands that you immediately stop all use of BOSSES in connection with the sale of widgets.”

3. Explain

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What is a Divisional Patent Application?

A U.S. divisional patent application application can be thought of as a “child” application of an earlier filed “parent” application. The filing of a divisional application often occurs when the parent application contains more than one invention.

If the parent application claims more than one invention, the USPTO may issue a restriction requirement. The restriction requirement requires the applicant to elect among the designated inventions in the application. The election of one of the designated inventions may mean the others will not be considered. Therefore the applicant has the option to file one or more divisional patent applications directed at those other un-elected inventions. The patent office wants to make sure that patent applicants are not trying to claim multiple inventions in one application because they generate fees, at least …

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