Is that Patented Design Really New?

United General Supply sued Rural King alleging Rural King sold products infringing three design patents, one of which is D577,520 (the ‘520 patent) for a chair back.

D577520_fig9RuralKing

The claimed chair back has 5 slats, the center slat being wider than the lateral pairs. The claimed design also includes a longer upper horizontal bar and a shorter lower horizontal bar extending behind the slats. The remaining part of the chair shown in figure 9 is in broken lines and therefore not claimed. The accused Rural King product is shown in the color photo and looks pretty close to the claimed design.

One might ask, “is that patented design new?” or “Doesn’t this five slat design exist in the prior art?” And that’s what every defendant in a patent infringement asks and …

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Love Made sues Victoria’s Secret: Love Made Me Do It

Love Made, LLC sued Victoria’s Secret (VS) alleging the that VS’ use of LOVE MADE ME DO IT on a tote bag and on a neon sign infringed Love Made’s trademark and copyright.

LoveMadeMeDoIt_VSTote1LoveMadeMeDoIt_neon

Love Made owns a trademark registration on LOVE MADE ME DO IT for apparel, which claims a first use of the mark in commerce in April 2013. Love Made operates a website at love-made.com.

LOVE MADE ME DO IT was not coined my Love Made, it appears. Its the name of a 1978 (or 1983) song by Danniebelle Hal and a 2010 album by Swedish singer Elon Lanto. However, there’s no requirement that one coin a phrase in order to generate trademark rights in it.

Sometimes when a phrase in is wide use it fails to function …

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Trademark Registration Invalid for Lack of Use in Commerce Before Statement of Use Deadline

TAOIn 2010, Marcus Bender visited a TAO restaurant or nightclub in an attempt to sell Kia Vodka. After that attempt failed, Bender Consulting Ltd. (Bender), which Mr. Bender owned, filed an intent-to-use trademark application on TAO VODKA for alcoholic beverages other than beer, which later registered.

TAO Licensing, LLC, petitioned to cancel the TAO VODKA registration. TAO owns several restaurants and nightclubs named TAO in cities, such as New York, and Las Vegas. TAO alleged that the registration was not valid because Bender did not use the mark in commerce prior to the deadline to file a statement of use, among other reasons.

Bender asserted that its registration was valid based on one sample case of Vodka shipped to Mr. Bender from a Vietnamese distillery. Mr. Bender allegedly provided samples, at no …

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Patent Examiner Interviews

Most patent applications are rejected, at least in part, on the first review by a patent examiner. The rejection is issued in a writing called an Office Action. The applicant has the option to file a written response. But the applicant also has the option to hold an interview with the patent examiner. The interview can be in-person, by phone, or by video conference. The applicant need only provide a proposed amendment or an agenda of topics to discuss with the Examiner during the interview.

An oral discussion can often be a very effective and dynamic way to advance and defend an argument. Plato recognized this in the extreme when he determined that certain knowledge should not be written down (i.e. Plato’s unwritten doctrines). He explained in Phaedrus: “He …

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What is a Continuation Patent Application?

A continuation patent application can be thought of as a “child” application of an earlier filed “parent” application, in a way similar to a divisional application. The continuation application must be filed while the parent application is pending.

A continuation application is often filed to introduce into the application a new set of claims and to establish a right to further examination. Continuation application does what it’s name says, it “continues” the examination and prosecution of the application. It is one way to keep negotiating with the patent office (another way is to file a request for continued examination (RCE)).

Unlike a divisional, the new or amended claims in a continuation application are not necessarily directed an independent or distinct invention.

The Manual of Patent Examining Procedure provides that …

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Patent Drafting: The Written Description Requirement

US6906700_fig12Anascape sued Nintendo alleging that Nintendo’s game controller infringed U.S. Patent 6,906,700 (the ‘700 patent). Nintendo challenged the ‘700 patent asserting that it did not comply with the written description requirement of 35 USC 112.

The written description requirement provides the “that specification [of the patent/patent application] shall contain a written description of the invention, and of the manner and process of making and using it…”

The claims of the ‘700 patent were directed to a controller that received multiple inputs that were together operable in six degrees of freedom. But, the ‘700 patent was issued from a continuation application that claimed priority to a prior parent application (that became U.S. Patent 6,222,525 (the ’525 patent)). The ‘525 patent only disclosed a single input member (controller) capable of movement in six …

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Divided Infringement: When Acts of More Than One Party Are Necessary to Meet All Elements of the Claim

US7021537Divided infringement occurs when no one party actually performs all of the steps of a patent claim. For example, one party performs some of the steps and another party performs the remaining steps. One way to solve this problem is to draft patent claims such that one party will likely perform all of the claimed steps.

However sometimes its not easy to do so given the prior art. Take David Tropp’s patent no. 7,021,537 for example. That patent is directed to a method of improving airline luggage inspection through he use of dual access locks.  Claim 1 of the ‘537 patent provides the following general steps (a) providing locks to customers that have two means of opening: a combination lock portion and a master key lock portion, and (b) using …

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Happy New Year: It’s not a Trademark for Wine, But it is for Dolls

HappyNewYearLNJ Vineyards LLC applied to register HAPPY NEW YEAR as a trademark for wine. The USPTO Examining Attorney refused registration asserting that HAPPY NEW YEAR did not function as a trademark when used in connection with wine.

The Examining Attorney said:

“HAPPY NEW YEAR, is a common sentiment usually conveyed when wishing someone happiness in the new year…Further, such phrases are commonly associated with wine and wishing someone a happy new year. … Accordingly, the mark functions only as the sentiment it conveys, rather than as a trademark/source identifier for the wine.”

If you heard/saw “HAPPY NEW YEAR” in connection with wine, would you think its a brand or would you think it was the common sentiment wishing you a happy new year? People drink wine on new years eve and commonly wish …

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How Important is the Description of Goods or Services in a Trademark Application?

LegalForce-v-LegalZoom

Raj Abhyanker is the owner of the lawfirm LegalForce RAPC Worldwide and of Tradmarkia.com. Raj and his lawfirm sued LegalZoom, the USPTO, and the State Bars of California, Arizona, and Texas based on what Raj alleged is LegalZoom’s unauthorized practice of law in connection with trademark application filing.

Alleged Unauthorized Practice of Law

Raj alleged that LegalZoom engaged in the unauthorized practice of law in connection with LegalZoom’s trademark application filing service. Raj and his law firm used LegalZoom to apply for two trademarks in connection with two of the Plaintiff’s businesses.

According to the complaint, LegalZoom represents on its website that it does not practice law. However, the complaint alleges that LegalZoom collects a service fee for its “peace of mind” review service. The complaint alleges that during the “class …

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Why You Should Own and Control Your Domain Name

“Do you want to build your online brand on the sand of someone else’s domain registration or on a bedrock of a domain registered in your name?”

FLNBIf you buy a piece of land, a house, or a building, would you allow the title to that property to name your real estate agent or your maintenance contractor? No, you would not. When you are spending hundreds of thousands of dollars or more on something you make sure that you actually own it in your name.

The same should be true when you buy a domain name for your website, regardless of the price. You should own and register it in your name, and not your technology provider’s name or anyone else’s name. When this is not the case, it can …

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