Author: Eric Waltmire

Eric Waltmire is a registered patent attorney at the Erickson Law Group, PC. He can be contacted at blog@waltmire.com.
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Weighted Exercise Band Design Patent Infringement Complaint Dismissed for Failure to Identify Defendant’s Product

If a design patent infringement complaint does not even identify the defendant’s accused product, it will be dismissed if challenged. Identifying the defendant’s internet store is not enough. A design patent infringement complaint was dismissed and an injunction vacated regarding a weighted exercise band where the complaint merely provided a defendant’s internet store name and a link instead of the name or the picture of the actual product that was alleged to infringe US Design Patent D888,167. Without identifying the alleged infringing product, the complaint only had thread bare allegations that were insufficient to meet the plausibility requirement.

Case: Bala Bangles, Inc. v. P’ships, No. 1:23-cv-16721, 2025 U.S. Dist. LEXIS 190210, at *7 (N.D. Ill. Sep. 26, 2025).

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Trademarks Rights Cast a Shadow Over Use of Copyright Expired Content

If you reach out to Disney to see if it will object to your use of Steamboat Willie, you might get an unsatisfactory answer that includes reference to Disney’s claim to hold certain trademark rights. This happened to Morgan Global, who planned to broadcast an ad incorporating an adaption of the 1928 animated short film Steamboat Willie, the copyright to which has expired. Therefore, Morgan sued for declaratory judgement of noninfringement of Disney’s trademarks, and related claims, arising out of the planned use of the adaption of Steamboat Willie.

Even when a copyright is expired, this case illustrates that trademark rights may cast a shadow over use of copyright expired material.

Case: Morgan Global, PLLC v. Disney Enterprises, Inc., No. 6:25-cv-01795 (M.D. Fl. 2025)

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Plaintiff’s Claim for $500K in Statutory Trademark Damages Goes Down in Flames for Lack of Support

The court denied plaintiff’s, CELINE SA, request for damages against defaulting defendants stating the “Plaintiff’s requested relief here is entirely baseless” were the plaintiff sought $500,000 in statutory damages per defendant but did not provide any “meaningful description of the circumstances of infringement.” Further, “Plaintiff provides no information about the duration of Defendants’ infringing activity, Defendants’ profits made in connection with the infringing activity, Defendants’ estimated sales volume, Plaintiff’s lost revenue, or the value or reputation of the Celine Trademarks.”

Also, the court denied plaintiff’s motion for preliminary injunction, when plaintiff failed to update it with information received through expedited discovery. The court said “Plaintiff’s decision to seemingly force this case through the litigation process, in the hopes of receiving a handsome payout, is improper and the Court will not reward Plaintiff for these actions.”

Below is one of the trademarks asserted by the plaintiff for the goods of traveling bags, luggage, and more.

Some judges are taking a critical look at Schedule A cases and finding support for them lacking.

Case: Celine SA. v. P’ships & Unincorporated Ass’ns Identified in Schedule A, No. 1:25-cv-08829, 2025 U.S. Dist. LEXIS 174504, (N.D. Ill. Sep. 8, 2025)

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Defendants’ Profits of Less Than $700 Do Not Support Plaintiff’s Claim for $50,000 in Statutory Copyright Infringement Damages

Plaintiff flew too high with its $50,000 statutory damage claim for copyright infringement of its hummingbird feeder images. The court clipped damages to only $1000 per defaulting defendant. Plaintiff failed to explain why $50,000 was appropriate and reasonable in view of the four defendants’ respective profits of $253.77, $666.42, $91.44, and $226.24.

Case: HB Feeder, LLC v. P’ships Identified on Schedule A, No. 25 CV 01359, 2025 U.S. Dist. LEXIS 180111 (N.D. Ill. Sep. 15, 2025).

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Insufficient Explanation of Confusion and Plaintiff’s Products Dooms Schedule A Trademark Case

Plaintiff’s motorcycle championship trademark claims in a Schedule A case ran out of gas at default judgment because they lacked sufficient factual detail. The complaint alleged that the defendants’ use of plaintiff’s MOTOGP trademarks to sell counterfeit products caused confusion. But, the complaint failed to provide facts explaining how or why a consumer would be confused. Also, the court faulted the plaintiff for not providing a description of plaintiff’s genuine products. Therefore, the court denied default judgment and released defendants’ financial accounts.

Case: Dorna Sports v. Individuals…on Amended Schedule A, No. 24 CV 11676, 2025 U.S. Dist. LEXIS 177866, at *1 (N.D. Ill. Sep. 11, 2025).

*Note: The court used the words “ordinary observer” in stating “Plaintiff fails to provide any actual facts explaining how or why an ordinary observer would be deceived.” That’s a design patent claim reference. But it is consumer confusion that is considered in trademark cases.

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Shipping options to Illinois not enough alone to confer personal jurisdiction in Schedule A trademark case

Screenshots of purchase pages on Walmart’s e-commerce platform showing shipping options to Illinois were not enough to confer specific personal jurisdiction over defendants in a Schedule A trademark case. There was no evidence of an actual sale to Illinois residents, written confirmation of sales with an Illinois shipping address, or shipping confirmation to an Illinois address. Therefore, the case was dismissed for lack of jurisdiction.

The plaintiff claimed ownership of trademarks including LUCKY 13 used in connection with clothing and that the defendants were selling counterfeit LUCKY 13 products. But without evidence of sales to Illinois, its luck ran out when it sought default judgement against the defendants.

Case: Blue Sphere, Inc. v. Individuals, No. 25 CV 004715, 2025 U.S. Dist. LEXIS 176670 (N.D. Ill. Sep. 10, 2025).

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Claims Should Reflect the Described Computer Improvement to Avoid Patent-Eligibility Rejection

When an invention improves the functioning of a computer it has a better chance of avoiding a section 101 patent eligibility rejection. The USPTO will typically look to the description in the patent application for the details of the improvement. MPEP § 2106.05(a). Yet, not only should the description explain the details of the improvement, but the improvement should be reflected in the claims.

In a patent application by Oracle, the PTAB found the improvement was not reflected in the claims. The application involved techniques for processing graph queries, which may be used in connection with relational database systems.

However, the PTAB found that the claims did not require the improvement of amortizing the initiation of storage operations across entries or a lazy materialization buffer that was discussed in the specification. The PTAB stated, “The addition of an entry in the second data structure, without further limitation, only reflects an idea to specifically amortize retrievals that reduces storage access requests but not a particular solution or a particular way to specifically amortize retrievals that reduces storage access requests.”

Ensuring the described improvement is reflected in the claims will better position a patent application to avoid or overcome a patent eligibility rejection.

[Case: In re HAPRIAN, App. No. 17/162,564 (PTAB)].

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Similar Trademark Meaning Alone May Not Be Enough

The TTAB considers the appearance, sound, meaning, and commercial impression of two trademarks when considering whether there is a likelihood of confusion between them. Similarity in any one of appearance, sound, meaning, or commercial impression can result in a finding that the marks are similar. However, when the similarity is only present in the meaning, that might not be enough, depending on the circumstances to find that the marks are similar.

In the case involving the marks APPARITION and PHANTOM for wine, the TTAB found that while APPARITION and PHANTOM were synonyms with overlapping meanings at least in one sense of each term, this was not enough for the TTAB to find that the marks were similar. The marks lacked similarity in sound and appearance. Further, “Given that ‘phantom’ and ‘apparition’ each have additional meanings that differ from their shared meaning, the two terms could stimulate different mental reactions in the minds of the relevant consumers when the terms are applied to wine, thus engendering different commercial impressions overall,” the TTAB said.

While in some cases “similarity in connotation or commercial impression alone may be sufficient to find marks confusingly similar, despite differences in sound and appearance,” here that similarity was not enough and the TTAB dismissed the opposition.

Case: Bogle Vineyards v. Sixmilebridgevineyards, Op. No. 91276339, 2025 TTAB LEXIS 387 (TTAB).

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Specimen Showing Downloadable Software for a Trademark Application

The USPTO distinguishes between downloadable software and non-downloadable (e.g. web-based) software, placing them in different classes of goods/services. When claiming downloadable software in a trademark application, the USPTO looks for a specimen evidencing the software is downloadable. Typically that occurs via a specimen showing a “download” or similar link.

In a recent case, the TTAB of the USPTO rejected the applicant’s specimens, finding that the specimens did not demonstrate the software was downloadable. One of the annotated specimens (below) showed that the icon to launch the software opened a web browser. The TTAB said, “Showing that the software is accessible via a web browser may not necessarily preclude the fact that the software may be downloadable; however, only showing the software accessed via a web browser does not effectively show the downloadable nature of the software.”

[Case: In re Amada Am., 2025 TTAB LEXIS 364, Serial No. 88322796 (TTAB 2025)].

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Recording and Perfecting Security Interests in Patents

When securing a loan with a US patent as collateral, it is important to understand the locations for recording that security interest. There are at least two places for recording a security interest in a US patent: the office designated under the applicable provisions of the Uniform Commercial Code (UCC) and the US Patent and Trademark Office (USPTO).

UCC Filing

Patents have the attributes of personal property. 35 USC 261. The applicability of Article 9 of the UCC includes a transaction, regardless of its form, that creates a security interest in personal property. 810 ILCS 5/9-109; UCC 9-109. A security interest is an interest in personal property or fixtures which secures payment or performance of an obligation. 810 ILCS 5/1-201(35); UCC 1-201(35). Personal property includes general intangibles, which is a type of collateral that includes “various categories of intellectual property.” UCC 9-102(42), cmt. 5(d); 810 ILCS 5/9-102(42).

The law of the jurisdiction of the debtor’s location usually governs perfection of a security interest in collateral. UCC 9-301. Generally, to perfect a security interest in a patent against subsequent lien creditors, a financing statement is filed with the appropriate state office according to Article 9 of the UCC. See UCC 9-310; 9-501.

USPTO Recordation

35 USC 261 provides that “An interest that constitutes an assignment, grant or conveyance shall be void as against any subsequent purchaser or mortgagee for a valuable consideration, without notice, unless it is recorded in the Patent and Trademark Office within three months from its date or prior to the date of such subsequent purchase or mortgage.” A security interest in a patent is not explicitly listed here.

The Ninth Circuit Court of Appeals has found that “assignment, grant or conveyance” does not include a security interest and that 35 USC 261 does not preempt state law UCC requirements for perfecting a security interest. Moldo v. Matsco, Inc. (In re Cybernetic Servs.), 252 F.3d 1039, 1059 (B.A.P. 9th Cir. 1999). The court said “because § 261 provides that only an “assignment, grant or conveyance shall be void” as against subsequent purchasers and mortgagees, only transfers of ownership interests need to be recorded with the PTO.”

Yet, the USPTO will record agreements that convey a security interest. The USPTO says: “Such documents are recorded in the public interest in order to give third parties notification of equitable interests or other matters relevant to the ownership of a patent or application.” MPEP 313. However, the Ninth Circuit said “Because the Patent Office records security interests on a discretionary basis and such recording does not provide constructive notice, the Patent Act registration system is insufficient to provide the sole method of perfecting security interests in patents.”

Nevertheless, it is a good practice to record security agreements at the USPTO as it provides additional notice to any party, including potential lenders and purchasers, under taking due diligence at the USPTO.

Conclusion

The conservative course is to file a financing statement with the appropriate state office to protect against future lien creditors, but also to record the security interest at the USPTO to provide additional notice to parties searching there.