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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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 degrees of freedom. The ‘525 patent repeatedly referenced (over twenty times) the input member as a single input member. It also disparaged the prior art devices having multiple input members.

The court concluded that the ‘525 patent did not disclose multiple input members, but rather only a single input member. Therefore, the ‘700 patent failed to meet the written description requirement for multiple inputs to obtain the benefit of the filing date of the ‘525 patent.

Intervening prior art existed between the filing of the ‘525 patent and the filing of the ‘700 patent. Therefore, without the benefit of the earlier filing date of the ‘525 patent, the claims of the ‘700 patent were invalid and Nintendo avoided infringement.

Given the repeated use of “single input member” and the disparagement of multiple input members, it appears that the original ‘525 patent was intended to be limited to only a single input member. That is, it was not a drafting error that a variation of the invention with multiple input members was omitted.

Nevertheless, this case demonstrates why when drafting a patent application, it is important to account for multiple variations of the invention. You should think about what components can be multiplied and describe those in a manner that can account for such versions of the invention. The use of exclusively restrictive language like “single” or “only one” may confine a patent resulting on your invention.

The written description requirement is separate, and arguably more stringent, than the enablement requirement. Further, the courts have been strict in asserting that it is not enough to assert that claimed variation is obvious in light of what was disclosed. Rather, to be safe, the variations should be clearly explained in the description.

Citation: Anascape, Ltd. v. Nintendo of Am., Inc., 601 F.3d 1333 (Fed. Cir. 2010)

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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 the master key to open the lock during luggage screening.

In the case of Travel Sentry Inc. v. Tropp, No. 2016-2386 (Fed Cir. 2017), Travel Sentry provided on behalf of itself or through licensees the locks according to step (a). But the TSA performs step (b). The question is whether the TSA’s acts of opening the locks with a master key are attributable to Travel Sentry, such that Travel Sentry is liable for infringement. The court found that a reasonable jury could  answer that question in the affirmative.

I suspect that there was probably prior art showing locks having to means of opening so that Tropp needed the claimed method to include the step of opening the locks during luggage screening to have a novel method over the prior art and obtain the patent.

Travel Sentry entered into a memorandum of understanding with the TSA which provides that the TSA “will make good faith efforts to distribute the passkeys and information provided by Travel Sentry on the use of the passkeys, and to use the passkeys to open checked baggages secured with Travel Sentry certified locks…”

The court found that a common thread in its case law on whether steps actually performed by a third party can be attributable to the defendant was whether there exists “evidence that a third party hoping to obtain access to certain benefits can only do so if it performs certain steps identified by the defendant, and does so under the terms prescribed by the defendant.”

The court found that a reasonable jury could find that TSA receives a benefit from being able to identify Travel Sentry-marked luggage and, where necessary, open that luggage using passkeys that Travel Sentry provided.

Ideally, patent claims are drafted such that one party will perform all the steps. When that is not the case, however, the Travel Sensory case clarifies and likely expands the circumstances where it is possible to show that the acts of another are attributable to the defendant so that the defendant can be charged with all steps of the claimed method.

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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 each other a happy new year. So, the use of HAPPY NEW YEAR in connection with wine is not likely to be understood as indicating a source of wine, i.e. functioning as a trademark.

The case would probably be even stronger if the goods were Champagne rather than wine. Not surprisingly, December is the month with the largest sales of champagne, according to the Guild of Sommeliers. So there is likely a strong connection between the HAPPY NEW YEAR sentiment and Champagne.

When choosing a trademark, make sure that the mark is not in wide and common use as a sentiment with respect to the intended goods or services. Otherwise it may not function as a trademark.

However, if HAPPY NEW YEAR was used on goods having no prior connection to new years celebrations, it could function as a trademark. Mattel applied to register HAPPY NEW YEAR for dolls, doll clothing, and doll accessories. And the USPTO granted the registration.

Here’s the HAPPY NEW YEAR Barbie doll:

HappyNewYearBarbie

 

Of course, Mattel’s trademark registration does not stop anyone from wishing others a Happy New Year. This is a common misunderstanding of trademark law. Mattel’s rights are confined to the use of the phrase as a trademark in connection with dolls.

Happy New Year everyone.

 

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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 section and description modification step” LegalZoom routes customers to allegedly non-lawyer “Trademark Document Specialists.”

In the process of using LegalZoom to apply for two trademarks, the plaintiffs allege that LegalZoom provided legal advice by selecting a classification and modifying the goods and services description for a trademark application from the template thereby applying specific law to facts.

Why the Description (Identification) of Goods/Services is Important

Crafting a description of goods/services is an important step that can impact the scope of rights that exist under a trademark registration. This is because trademark rights are normally measured in relation to the goods/services on which the mark is used.

Drafting a description of goods/services is where many pro se applicants run into trouble. Sometimes drafting the description of goods can be relatively straight forward. But many times it is not.

Previously, I explained why the description of goods/service is important:

The description is important because it is what the USPTO will use to compare to other trademark registrations or trademark applications to determine whether there is a conflict. The comparisons occur in two types of situations.

The first comparison situation occurs when the USPTO reviews your application. There, the USPTO compares your mark to previously filed applications and registrations that are live. If the description is too broad, then the USPTO might find a conflict between your mark and a previous application or registration, which would not have occurred if your identification was not over broad…

The second comparison situation occurs when the USPTO is examining later filed trademark applications. If your description is too narrow then the USTPO might allow a later filed trademark application to be registered. But if your application had a proper description the USPTO would have blocked a later confusingly similar mark from being registered. Therefore, a description that is too narrow will not properly operate to block later filed trademark applications that would otherwise be in conflict. As a result, a narrow identification of goods and services will necessarily narrow the blocking effect of your application and narrow your trademark rights.

In addition, the description will be used by a court to determine the scope of rights that you have under trademark registration in a trademark lawsuit.

For a description to be crafted and used without any attorney involvement is problematic given the importance of the description.

Not surprisingly, according to the Complaint, Raj claims ethics attorneys advised him that he cannot have descriptions of goods/services prepared and used in trademark applications without attorney review, otherwise he would risk violating the unauthorized practice of law rules.

At the complaint stage, we don’t know LegalZoom’s process exactly. Nevertheless, preparing a description (identification) of goods/services for a trademark application is an important step that impacts the scope of the applicant’s trademark rights.

Citation: LegalForce RAPC Worldwide v. LegalZoom.com, Inc., no. 5:17-cv-7194 (N.D.Cal. 2017) [Complaint, Exhibits to Complaint].

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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 lead to a lot of problems and possibly tens of thousands of dollars in attorney fees to get your domain name back, as the following case appears to demonstrate.

We Merely Permitted You to Use Your Domain Name for 20 Years as a “Courtesy” 

The First Liberty National Bank of Liberty Texas sued its technology service provider Memran Inc. (d/b/a Computer Solutions) and the service provider’s founder alleging that after First Liberty informed Memran that First Liberty was going to use another company for its technology needs and stop using Memran, Memran allegedly: “claimed for the first time to own the [First Liberty’s] FLNB.com domain name.” Memran also allegedly “claimed that it had merely ‘permitted’ First Liberty to use the domain name for nearly 20 years as a mere ‘courtesy’ to First Liberty, because it ‘[was] a Computer Solutions client.’ ”

We Own It and Will Shut It Down, But Want to Negotiate Getting it Back?

Then Memran allegedly “wrote that it ‘will no longer permit First Liberty’ to use the FLNB.com domain name after the parties’ business relationship concludes on February 1, 2018.” Memran then allegedly “immediately proceeded to say that it was ‘open to negotiations regarding transferring [the] flnb.com domain name” to First Liberty.'”

While this allegation does not directly say “buy/sell” its arguably implied that some compensation was sought. What compensation is sought? Maybe: I own it, but I’ll sell it to you for a fee (probably a large fee). Or maybe: we will transfer it to you if you continue to use us for your technology needs.

The complaint alleges that “At some point in late 1996 or early 1997, First Liberty instructed Computer Solutions, in its role as the bank’s information-technology provider, to register the internet domain name FLNB.com for First Liberty’s future use.” The complaint further alleges that:

“In its role as First Liberty’s information-technology provider, Computer Solutions listed its principal Meche as the registrant of the FLNB.com domain name. First Liberty allowed this because it trusted Computer Solutions and Meche to act in the bank’s best interest as the bank’s trusted information technology provider.”

Register It In Your Name

This was the first mistake. Its my opinion that you should not allow your technology provider to register your domain name in the technology provider’s name. True, maybe many/most times it will not be an issue because you have a good level of trust with the technology provider. However, you never know when things are going to go south.

If needed, have your technology provider come to your office and walk you through the steps of registering the domain name in your name. Make sure you are listed as the owner. Make sure you or a very trusted employee of your company is named as the contact. Further, make sure that if you are not the contact, that the contact email address is one where if email is sent to it, you are copied so you can be aware if someone tries to change ownership of the domain covertly.

Domain names probably have a higher chance of being registered in someone else’s name because many times, if the name is available, they can be obtain for a small fee on the order of tens of dollars. Transactions that involve low dollar amounts tend not to undergo a lot scrutiny. I don’t know the original cost of registering FLNB.com, but its likely that it was for a nominal amount. If First Liberty had spent 100K+ on the domain name FLNB.com, I suspect it would have been registered in First Liberty’s own name, in the same way real property (land and buildings) would be, because such transactions get more scrutiny and more process.

Yet, even if registering a domain name costs tens of dollars, you need to have it registered in your name. Having it registered in someone else’s name leaves you exposed to potential disputes about ownership later. 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?

Litigating a Cybersquatting Claim Is Expensive and Stressful; Making Sure the Domain Is in Your Name Is Cheap

From the Complaint it appears that First Liberty has a good chance of recovering the domain based on a claim of cybersquatting. But it had to file a complaint and an emergency motion for a temporary restraining order against the defendants over the holidays. It’s probably going to need a hearing on that motion plus more legal proceedings if the defendants fight back. First Liberty could be in for $10,000 in attorneys fees or more to get the domain back. Not cheap and very stressful over the holidays. What is cheap is making sure the domain is registered in your own name before there’s a problem, preferably at the beginning.

If its not currently registered in your name, have it transferred to you before there’s a problem.

While the domain name should be registered in your name, that does not mean that you can’t have a technology service provider do the work of developing and maintaining a website at the domain. You can have contractors build and maintenance a building without the contractor owning and controlling the land and building. We are talking about ownership and control here, not access.

The alleged facts naturally favor First Liberty at the complaint stage. Memran has not answered or responded yet to these allegations. So we don’t have Memran’s side of the story. Nevertheless, the allegations demonstrate the need of owning a domain name in your own name.

Case citation: The First Liberty National Bank, N.A., v. Memran, Inc., No. 1:17-cv-534 (E.D. Tx. Dec. 27, 2017)

The image at the beginning of this post is of First Liberty’s FLNB trademark in stylized form, which it has allegedly used since 1972. Trademark rights are the foundation of a cybersquatting claim.

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Incontestable Status of Mark Found Generic Does Not Prevent Exceptional Case Attorney Fees

REACTIVEGeoDynamics sued DynaEnergetics for trademark  infringement of GeoDynamics’ REACTIVE trademark. GeoDynamics owned U.S. Trademark Registration No. 3,496,381 for the REACTIVE mark. After a bench trial the court found that REACTIVE was generic for the goods of fracturing charges for use in oil and gas wells and ordered the registration cancelled.

The defendant moved for fees and the court agreed that GeoDynamic’s trademark case was exceptional based on the weakness of its case. GeoDynamic asserted that the case was not exceptional because, among other reasons, the REACTIVE mark had achieved incontestability status at the USPTO. The court rejected that view. The incontestability status was not a bar to finding the case was exceptional.

Incontestability is somewhat misleading because “incontestability” is only achieved with respect to some grounds on which the registration can be attacked. 15 U.S.C. §1065. But a registration can always be attacked based on the allegation that the mark is generic. 15 U.S.C. §1065(4); 15 U.S.C. §1064(3).

The court found that GeoDynamics trademark case was exceptional because (1) its witnesses admitted the phrases “reactive liner charge” and “reactive charge” was generic for goods in question (2) GeoDynamics did not provide a meaningful analysis of the likelihood of confusion factors, and (3) Geo Dynamics did not provide any evidence that the defendant used the mark since the lawsuit was filed in 2015. On the last point the court said, “Without such evidence of continued use [after the suit was filed], it was unreasonable for GeoDynamics to pursue its trademark claim solely for an injunction with such an objectively weak infringement position.”

Citation: GeoDynamics Inc., v. DynaEnergetics US, Inc., No. 2:15-CV-01546 (E.D. TX Dec. 21, 2017).

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Multi-Color Design Trademarks and Trade Dress

SATA_Italco_PaintSATA GmbH sued Discount Auto Body and Paint Supply LLC for infringing its product design trademarks in the alleged sale of paint spray guns. SATA GmbH & Co. KG v. Discount Auto Body and Paint Supply LLC, No. 2-17-cv-03101 (D.N.V. 2017).

This case demonstrates that it is possible not only to obtain trademark protection in a product design comprising a single color applied to an area of the product, but also on any color applied to an area of a product. In other words, the use of any color on an area of a product can itself act as a trademark, indicating a source of goods and/or services.

One of the trademark SATA asserted was U.S. Trademark Registration No. 2,770,801 for a design mark of “a green band of color extended around the circumference of a paint spray gun air cap ring, the green band being narrower than the air cap ring…The drawing is lined for the color green.” The drawing of the mark is:

US_TM_Reg_2770801

SATA also asserted U.S. Trademark Registration No. 2,793,583 for to a design mark of “a band of [any] color extended around the circumference of a paint spray gun air cap ring, the color band being narrower than the air cap ring and of a color that contrasts with the air cap ring.” The drawing of the mark is:

US_TM_Reg_2793583

Therefore, the first trademark registration is directed to a green ring on a paint spray gun. But the second trademark is directed to a ring of any color, as long as that color contrasts with the air cap ring.

Below is a photo of the green ring deployed on SATA’s actual product.

GreenCapRing

The principle of allowing the registration of multi-color design marks appears to be first addressed in a 1972 case where Data Packaging Corp. applied to register a design applied to a computer tape reels. In re Data Packaging Corp., 453 F.2d 1300, 1302 (CCPA 1972). The claimed design was to “a narrow annular band mounted on the front reel flange, adjacent to and concentric with the hub of the reel, in a color which contrasts with the reel flange.” The USPTO refused registration asserting that the law prohibited the registration of a mark which provided for the use of any color as its distinguishing feature.

The court of appeals rejected that view and reversed the USPTO. The court concluded that “there is no reason why an applicant should not be able to obtain a single registration of a design mark covering all the different colors in which it may appear, that is to say, not limited to a particular color.”

The SATA case is only at the complaint stage so we don’t have any rulings with respect to SATA’s marks. Nevertheless, the plead registrations demonstrate a multi-color design trademark registration.

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How to Find Cases Interpreting the Illinois Trademark Registration and Protection Act

The Illinois Trademark Registration and Protection Act (“Illinois Trademark Act”) provides a system for registering and enforcing trademarks in Illinois.  765 ILCS 1036/1 et seq. However, in many instances there may not be any relevant cases interpreting the provisions of the Illinois Trademark Act. Section 90 of the Act may solve this problem by providing that cases interpreting the federal Lanham Act are persuasive authority for interpreting similar provisions of the Illinois Trademark Act. 765 ILCS 1036/90.

In particular, section 90 states:

…The intent of this Act is to provide a system of State trademark registration and protection substantially consistent with the federal system of trademark registration and protection under the Trademark Act of 1946, as amended. To that end, the construction given the federal Act shall be examined as persuasive authority for interpreting and construing this Act.

Since there are many more cases interpreting the federal Lanham Act, section 90 provides those cases will likely be useful in understanding the meaning of parallel provisions of the Illinois Trademark Act.

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Reversing Order of Words of a Mark and Consistent Use of a Mark

CAGE_PHConventus Orthopaedics applied to register two marks CAGE PH and PH CAGE for surgical implants. The Examining attorney refused registration on the basis that each mark was descriptive. The Examining attorney argued that PH was descriptive for proximal humerus (bone). The TTAB reversed finding that there was not enough evidence to show that PH was descriptive.

What’s interesting about this case is that the applicant applied to register CAGE PH (No. 86534128) and its reversed/transposed order PH CAGE (No. 86534174). This is unusual. Normally you want to use a mark consistently in order to properly build trademark rights. Inconsistent use of a mark can negatively impact your trademark rights.

Further, the TTAB has said that reversing or transposing the elements/words of a mark does not avoid a conflict when the overall commercial impression of the marks are not changed. For example see In re Wine Soc’y of Am. Inc., 12 USPQ2d 1139 (TTAB 1989) (THE WINE SOCIETY OF AMERICA and AMERICAN WINE SOCIETY); In re Nationwide Indus., Inc., 6 USPQ2d 1882 (TTAB 1988) (RUST BUSTER and BUST RUST); and In re Gen. Tire & Rubber Co., 213 USPQ 870 (TTAB 1982) (SPRINT STEEL RADIAL and RADIAL SPRINT).

Maybe Conventus was worried that its mark(s) were not that strong. But even if there might be some legal reason to use a mark and its transposed variation on the same goods, there may be marketing reasons not to.

On Conventus website the general product page lists CAGE PH but then when you click to drill down to the specific detail page for this product, that page lists the product as PH CAGE.

Would it be odd to encounter Coca-Cola sometimes and Cola-Coca others? Or would you order a Big Mac sometimes and order a Mac Big others for the same product?

Normally, you pick a strong trademark, register it, and allow trademark law to block similar marks used on similar goods/services, without having to use those variation of similar marks yourself on the same goods/services.

Citation: In re Conventus Orthopaedics, Inc., Nos. 86534128, 86534174 (TTAB 2017).

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Patent Drafting: Enabling Skilled Person to Make and Use the Invention

USPatent5231253_Fig3Automotive Technologies International (ATI) sued numerous vehicle and parts manufacturers including BMW and Delphi Automotive Systems for infringing US patent 5,231,253 on side impact crash sensors for deploying an air bag. The court of appeals determined that the patent was invalid for failing to enable the claimed invention in Auto. Techs. Int’l, Inc. v. BMW of N. Am., Inc., 501 F.3d 1274 (Fed. Cir. 2007).

The law requires that your patent application describe your invention to such a level of detail so as to enable one who’s skilled in the art to  make and use the invention, without undue experimentation. This is known as the enablement requirement. The relevant statute states that every patent must describe “the manner and process of making and using [the invention], in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the [invention].” 35 USC 112.

This is part of the patent bargain. You tell the world how to make and use the invention and the government grants you a limited monopoly.

It is not uncommon for an inventor to leave out details of the invention that he/she thinks are well known in the art. But you want to draft a application that is well within the knowledge of one skilled in the art area and no where near the boundary of what one skilled in the art knows. Therefore, you often want to explain concepts and details that one skilled in the art already knows. When in doubt, provide more detail.

This is true because when an inventor chooses to rely upon general knowledge in the art to render his/her disclosure enabling, the inventor bears the risk on this issue of whether those of ordinary skill in that can be expected to possess or know where to obtain this knowledge. In re Howarth, 654 F.2d 103 (CCAP 1981).  “To avoid the risk, [he/she] need only set forth the information in his specification…” And you should want to avoid this risk, as the ATI case demonstrates.

In the ATI case, the patent disclosed two impact crash sensors, one was a mechanical sensor and the other was an electronic sensor. The patent described the mechanical sensor at length (figure 1). But it only provided one short paragraph and one “conceptual” drawing (figure 11) about the electronic sensor. The court found the thin disclosure of an electronic sensor was not sufficient to inform one skilled in the art how to make the invention with the electronic sensor. Since the claims were broad enough to cover both mechanical and the non-enabled electronic sensors, all of the patent claims were found invalid.

USPatent5231253_Fig1

USPatent5231253_Fig11

The description of the electronic sensor in the patent failed to disclose a structure or circuitry  for the sensor. The court found that ATI could not rely on prior art knowledge of front electronic impact sensors because ATI stated that the novel aspect of the invention was the side impact sensor. The court said, “given that the novel aspect of the invention is a side impact sensor[], it is insufficient to merely state that known technologies case be used to create an electronic sensor. Moreover, there were no electronic sensors in existence to detect side impact crashes at the time the application was filed.

Also, the court stated electronic sensors are of the same class of technology as mechanical ones: “Electronic side impact sensors are not just another known species of genus consisting of sensors, but are a distinctly different sensor compared with the well-enabled mechanical side impact sensor [described]…”

As the ATI case demonstrates, it is best not to get close to the line between what is and is not enough detail to enable a person skilled in the art to make and use your invention. Instead you should spend the time to provide the level of detail, with respect to each variation of the invention, so there can be no question. And that often involves describing details known to one skilled in the art.