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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Designating Different Trademark Classes Does Not Avoid a Conflict Between Marks

REALORANGEAnn Peterson applied to register the word-and-design mark REAL ORANGE for Christian ministry services in class 45.

The reThink Group, Inc opposed the registration based on its prior registration for the word-and-design mark of ORANGE for electronic downloadable publications and prerecorded media, print material, and educational services related to church ministry, among other services in class 9, 16, and 41. 

One factor in determining whether there is a conflict between two marks is whether the goods/services provided under the respective marks are similar.

ORANGEPeterson argued her services were different from the goods and services of reThink’s mark because they were in different International Classes: class 45 in Peterson’s case and Classes 9, 16, and 41 in reThink’s case. Each trademark applicant must (1) provide a description of goods and/or services, which are provided under the mark and (2) designate the international class(es) which the goods/services fall into.

But the Board rejected Peterson’s argument. The Board noted that 15 USC 1112 provides “The Director may establish a classification of goods and services, for the convenience of the Patent and Trademark Office administration, but not to limit or extend the applicant’s or registrant’s rights.” The Board also noted that the Federal Circuit has stated that “classification is wholly irrelevant to the issue of registrability under section 1052(d), which makes no reference to classification.

Therefore, you cannot avoid a conflict with another registered mark solely on the argument that the goods/services of the registered mark are registered in different international trademark class(es) from the goods/services of your mark.

Case citation: The reThink Group, Inc. v. Ann Peterson, Op. No. 91227798 (TTAB 2017).

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Lack of Capitalization of “internet protocol” in Claim Contributes to Invalidity Over Prior Art

US07269247_Fig1The importance of the wording of a patent claim is paramount. And, even the capitalization of the words of the claims can matter as shown in the case of AIP Acquisition LLC v. Cisco Systems, Inc., No. 2016-2371 (Fed. Cir. 2017).

Cisco Systems challenged the validity of U.S. Patent No. 7,269,247, owned by AIP Acquisition. The patent is directed to systems and methods for interconnecting otherwise incompatible telephone networks using the Internet, for example, for the purpose of placing a phone call through various networks including the “Internet or other data networks.”

A disputed portion of claim 1 provided “the second format being internet protocol” and a disputed portion of claim 16 provided “wherein said second format is Internet protocol.”

In order to distinguish the prior art and save the validity of the claims, AIP argued that “internet protocol” and “Internet protocol” of claims 1 and 16 meant only “Internet Protocol of TCP/IP.”

But the Court said the patent applicant/owner:

“…could have claimed a specific protocol, such as the IP of TCP/IP, perhaps by capitalizing the ‘i’ in ‘internet’ and the ‘p’ in ‘protocol’ in both claims or, more definitively, by reciting the ‘Internet Protocol of TCP/IP.’ It did not, however, and the use of lowercase letters suggests that ‘I/internet protocol’ is not confined to any particular protocol.”

The court concluded that the prior art invalidated the challenged claims given the broader scope of the term “internet protocol.”

The lack of capitalization was not the only thing that the court relied on to conclude the term should be given a broader interpretation. However, this case demonstrates that beyond the words themselves, even the capitalization of words in the claim can have an impact on the way the words are interpreted as well as the ultimate scope and validity of the claims.

This is not to say that the use of lowercase “internet protocol” was necessarily an oversight by the patent drafter. It could be that at the time the application was written and prosecuted the patent applicant wanted a broad interpretation. But later when it became apparent that the claims was or might not be valid with the broad interpretation, the patent owner changed positions on the meaning of the claim.

On the other hand, it could also be that all along the patent owner intended the claim words to mean the narrower “Internet Protocol of TCP/IP” but the language chosen did not achieve that intent.

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Can Benefit to Provisional Patent Application be Restored When the One Year Deadline to File a Nonprovisional is Missed?

A provisional patent application is not examined by USPTO and will not result in a patent. In order to gain the benefit of the provisional application, a non-provisional application must be filed within one year of the filing date of the provisional application and must claim priority to the provisional application. But what if you fail to file the non provisional application within one year of the provisional filing date? Is all benefit of the provisional application lost? Maybe not.

The law provides a two month window after the one year deadline where the benefit of the provisional application can be restored. 35 USC 119(e), 37 CFR 1.78(b), MPEP 211.01(a)(II). But there are important limitations on the option to restore the benefit of the provisional application.

The first limitation is that the delay in filing the nonprovisional application beyond the one year deadline must be unintentional. Therefore if you intended not to file by the one year deadline but then later changed your mind, the delay was probably not unintentional.

The second limitation is that you must file a petition requesting that the benefit of the provision application be restored and pay a big fee.

Currently the fee for this petition is $850 for micro entities and small entities. The petition fee is in addition to the other USPTO filing fees. Generally the USPTO filing fees for a non-provisional application are about $400 for micro entities and $740 for small entities.

Therefore, filing within the two month window where the benefit can be restored effectively more than triples the total USPTO fees to file the application for a micro entity and more than doubles the total fees to file for a small entity.

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Mark Twain on New Ideas and the Need for Novelty Searches

“Then it occurred to me that as I was not well acquainted with the history of the drama [and] it might be well for me to make sure that this idea of mine was really new before I went further.” -Mark Twain

MarkTwainVol2In the Autobiography of Mark Twain, Volume 2: The Complete and Authoritative Edition, Twain recounts the time when he came up with an idea for what he thought was a new play.

He said, “One day a splendid inspiration burst in my head and scattered my brains all over the farm…” He continued, “That wonderful inspiration of mine was what seemed to me to be the most novel and striking basic idea for a play that had ever been imagined.”

He then says that “I was going to write that play at once, and astonish the world with it; and I did, indeed, begin upon the work immediately.”

But then he realized that he should investigate whether, in fact, this idea for the play was new. He said, “Then it occurred to me that as I was not well acquainted with the history of the drama [and] it might be well for me to make sure that this idea of mine was really new before I went further.”

Twain wrote Hammond Trumbull, a person knowledgable in plays, to ask whether Trumbull had ever heard of Twain’s idea used on stage.

The response came back from Trumbull and:

It covered several great pages of foolscap written in Trumbull’s small and beautiful hand, and the pages consisted merely of a list of titles of plays in which that new idea of mine had been used, in about sixty-seven countries. I do not remember how many thousand plays were mentioned in the list. I only remember that he hadn’t written down all the titles, but had only furnished enough for a sample. And I also remember that the earliest play in the invoice was a Chinese one and was upwards of twenty-five hundred years ago.

Turns out the idea was old and well known.

Whether the idea is for a play, for a new invention, or other creative work, you may want to search to see whether the idea is, in fact, new.

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Limits on Use of Crowded Market Evidence to Show Weak Trademark Rights

AMIGOSDurrset Amigos Ltd (Durrset) filed a petition to cancel Amigo Meat Distributors’ (AMD) trademark registration on the mark AMIGOS FOODS for the services of wholesale meat products distributorship.

As a basis to cancel, Durrset asserted its common law mark AMIGOS FOODS and its registration for AMIGOS in a stylized form for “prepared tortillas, taco sauce, picante sauce (hot sauce) and taco shells” and for the services of “manufacturing and packaging food to the order and specification of others.”

The TTAB (Board) found that the parties’ marks and the parties’ goods were similar in Durrset Amigos, Ltd. v. Amigos Meat Distributors, L.P., No. 92060896 (TTAB 2017). AMD tried to save its registration by asserting that Durrset’s AMIGOS FOODS mark was extremely weak due to third party uses of AMIGOS marks in the “general area of food products.” But the TTAB found AMD’s evidence of third party use failed to demonstrate that Durrset’s mark was weak.

I’ve written previously about how third party use of similar marks can weaken rights in a trademark. The weaker a party’s rights in its mark are, the closer a defendant can come without causing confusion. The idea is that in a crowded market, if customers see many similar marks used on similar goods then customers will be conditioned to look closer to any differences in the marks, so confusion is less likely. But there are important limitations on this approach, as the AMIGOS case demonstrates.

1. Third party use should be for the same or similar services

AMD introduced 45 third party registrations and applications for marks that include AMIGO or AMGIOS for goods or services that AMD alleged were “somewhat related to food, such as food products, food distribution services, and restaurants.” AMD also introduced Internet search result showing over 90 restaurants with a name that includes the term AMIGOS.

The Board said, “the evidence falls short of showing extensive or voluminous registrations or use of AMIGOS marks coexisting for the same or similar services as those involved herein.” The board found that the third party use of the mark on food goods and restaurant services were of little relevance considering the services at issue in the cancelation proceeding.

The Board said that of all of the proposed third party uses, only two of the registrations covering retail grocery store services “are even arguably related to” AMD’s or Durrset’s services. And, only one third party use was in connection with the manufacture and packaging of food products.

In short, although AMD introduced a lot of third party use, most of it was irrelevant because it was not directed to services that were the same or similar as those at issue in the case.

2. When marks are identical, third party uses may be less effective

The Board distinguished two prior cases cited by AMD to support its argument that Durrset’s rights were weak. The Board said that parties’ marks in those cases were not identical, whereas in the present case, AMD’s and Durrset’s marks were identical, e.g. AMIGOS FOODS.

Therefore, when the parties marks are identical, it may be more difficult to rely on third party use to show weak or narrow rights and avoid confusion.

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$200M in Annual Sales Under Highly Descriptive Mark Insufficient to Establish Trademark Rights

When you have a highly descriptive mark, even hundreds of millions of dollars in annual sales under the mark may not be enough to establish trademark rights.

magnestiaMagnesita Refractories Company (MRC) applied to register the mark MAGNESITA in two trademark applications for refractory products in class 19 and for online services related to using refractory products in class 37.

The USPTO found that the mark was generic for refractory products in class 19, and the appeals court agreed in In re Magnesita Refractories Company, 2016-2345 (Fed. Cir. 2017).

The court also found that MRC failed to show that the mark acquired distinctiveness in connection with the class 37 services. A mark has acquired distinctiveness when “the primary significance of the term in the minds of the consuming public is not the product but the producer.” Stated another way, the mark needs to act as a source identifier and not be merely understood by the purchasing public as descriptive of the goods/services on which the mark is used.

The court noted that “If a term is highly descriptive, the applicant faces an elevated burden to show acquired distinctiveness.”

MRC submitted evidence showing that MRC (1) sold $100 million in refractory products under the MAGNESITA mark during half the 2010 year and (2) sold $200 million or more annually in refractory products under the MAGNESITA mark from 2011 to 2014. The USPTO TTAB recognized that these sales figures were substantial. Nevertheless, they were not sufficient to establish acquired distinctiveness.

MRC also submitted a declaration attesting to exclusive and continuous use of the mark since 2008. This too what not sufficient to establish rights in the mark.

The court found that MRC should have submitted evidence demonstrating how the public perceived MAGNESITA as source indicating. Such evidence is usually in the form of a trademark survey and/or direct testimony of customers. But surveys are expensive to conduct, which is probably why MRC didn’t conduct one. Also, regarding direct testimony, companies are sometimes reluctant to bother their customers with requests for testimony and other help in legal proceedings.

Nevertheless, when you have a highly descriptive mark, even hundreds of millions of dollars in annual sales under the mark may not be enough to establish trademark rights. You will probably need to pay to have a trademark survey conducted. And, even that’s no guarantee. What if the results of the survey show that your mark is not recognized as source identifying by the relevant group of consumers?

Choosing a highly descriptive mark can be expensive, both in obtaining trademark protection and in defending the mark against attacks of others. Therefore, if you have the opportunity, you should consider choosing a stronger mark at the outset.

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Opportunities for Entrepreneurs and Employees

“[C]omputers are complements for humans, not substitutes. The most valuable businesses of coming decades will be built by entrepreneurs who seek to empower people rather than try to make them obsolete.” -Peter Thiel.

ZeroToOneIn the mid-2000’s, one of PayPal’s biggest problems was that it was loosing $10 million to credit card fraud every month. Since it was processing hundreds of transactions per minute, it was impossible to manually review each one.

At first PayPal tried to create a fully automated system to detect fraud in realtime and cancel the fraudulent transactions. But the fraudsters quickly learned which transactions got canceled and changed their tactics to avoid the fraud system.

PayPal solved the fraud problem by taking a hybrid approach where the computer would flag suspicious transactions and human operators would make the final call whether the transaction was legitimate. After implementing the hybrid approach PayPal turned a profit for the first time.

In Zero to One: Notes on Startups, or How to Build the Future, Peter Thiel challenges the proposition that computers and machines will take all the jobs. “Computers are complements for humans, not substitutes. The most valuable businesses of coming decades will be built by entrepreneurs who seek to empower people rather than try to make them obsolete.”

Thiel provides another example involving LinkedIn. He says, “Recruiting is part detective work and part sales: you have to scrutinize applicants’ history, assess their motives and compatibility, and persuade the most promising ones to join you. Effectively replacing all those functions with a computer would be impossible.” Yet LinkedIn aimed to change the way recruiters did their job, rather than replace them. Today, more than 97% of recruiters use LinkedIn.

Thiel notes that in 2012, one super computer was able to identify a cat with 75% accuracy after scanning 10 million thumbnails of YouTube videos. He says “That seems impressive–until you remember that an average four-year-old can do it flawlessly.” He concludes that humans and computers are not more or less powerful than each other, but rather they are categorically different. Whether this remains to be true far in the future, it appears true at this time.

Thiel says that “the future valuable companies in the future won’t ask what problems can be solved with computers alone. Instead, they’ll ask: how can computers help humans solve hard problems?”

AverageIsOverTyler Cowen makes a similar argument in Average Is Over: Powering America Beyond the Age of the Great Stagnation. Cowen cites a military general who remarked that “Our number one manning problem in the air force is manning our unmanned platforms.” According to the Air Force, it takes 168 workers to keep an unmanned Predator drone in the air for 24 hours.

Cowen says that “As intelligent-analysis machines become more powerful and more commonplace, the most obvious and direct beneficiaries will be the humans who are adept at working with computers and with related devices for communications and information processing.” He continues, “If a laborer can augment the value of a major tech improvement by even a small bit, she will likely earn well.”

However, STEM is not the whole story. Cowen asks “Does anyone envy the job prospects of a typical newly minted astronomy PhD?” Citing the fact that Mark Zuckerberg was a psychology major, Cowen says, “The ability to mix technical knowledge with solving real-world problems is the key, not sheer number-crunching or programming for its own sake.”

Apart from certain STEM fields, Cowen also sees marketing and management as important to the future economy.

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How to Position a Trademark Application to Avoid Conflict with a Similar Mark

US_TM_Reg4137026Nikon Corporation filed a trademark application to register the mark MMD for the goods of (1) laser scanners for industrial inspection and for geometrical measurement, and not for use with land surveying equipment, and (2) software for collection and interpretation of data in the operation of laser scanners, not for use with land surveying equipment. The USPTO trademark examining attorney refused registration based on prior registration no. 4137026 of the mark MMD (and dog design, shown to the right of this paragraph) for land surveying equipment.

The Trademark Trial and Appeals (Board) found that the marks were similar because while the prior registration contained a graphical dog, words “are normally accorded greater weight because the words are likely to make an impression upon purchasers.”

The Board also found the goods of both marks were related because evidence showed that non-land surveying laser scanners are sold by the same entities that provide land surveying instruments.

However, the Board found that Nikon’s laser scanners for industrial inspection and the registrant’s surveying equipment move in different channels of trade.

The Board also found that laser scanners and surveying instruments are purchased by customers that exercise a high degree of care in purchasing. Where customers take great care in purchasing, confusion is less likely.

The Board concluded that the goods will not be encountered by the same consumers under circumstances likely to give rise to the mistaken belief that the products emanate from the same source. Therefore, the Board reversed the Examiner’s refusal and allowed Nikon’s application for the MMD mark to proceed to registration.

By amending the description to exclude land surveying equipment, Nikon was able to convince the Board that the goods were sold in different channels of trade despite the fact the goods were related. If Nikon did not add the exclusion of land surveying equipment to the description, it would have lost this appeal. Sometimes narrowing the description of good/services is an important step to avoid a conflict with a nearly identical mark.

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Don’t Admit that A Human Can Manually Perform the Claimed Process to Help Avoid Abstractness

US7757298_Fig1Intellectual Ventures I sued Erie Indemnity Company for infringing U.S. Patent No. 7,757,298 (the ‘298 patent). The ‘298 patent is directed to a method and apparatus for identifying and characterizing errant electronic files. It seeks to improve the prior art by providing a method and apparatus to detect “undesirable files” (such as copyrighted music files) “stored on computer storage devices” “according to pre-set criteria.”

Claim 1 provided three section criteria, “any one of which may be used to identify errant files, with selection based on: (1) size, i.e., ‘whether an aggregate size of plural identically-sized files exceeds a predetermined threshold,’ … (2) content, i.e., ‘whether content . . . matches a [certain] file type,’… and (3) naming convention, i.e., ‘whether the file comprises data beyond an end of data marker.'”

The court found that the claims of the ‘298 patent were invalid as being directed to an abstract idea under 35 USC 101. Intellectual Ventures I LLC v. Erie Indemnity Company, No. 2017-1147 (Fed. Cir. 2017).

One factor the court considers in determining whether a claim is directed to an abstract idea is whether the claim “could be performed in the human mind or by a human using a pen and paper.” Here, the ‘298 patent described that a human could manually perform the first two selection criteria claimed for identifying errant files. The court used this admission in concluding that the claim was abstract.

It would have been better if the ‘298 patent did not describe that any of the selection criteria could be performed manually by a human. Generally it is good to describe alternative versions and ways of implementing your invention in the patent application. This can help broaden the scope of protection offered under the patent claims.

However, when the invention is computer implemented, describing that any of the steps could be done manually or have in the past been done manually by a person, could be used against you in a patent eligibility challenge,

 

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Teaching Away Requires Clear Discouragement to Counter Obviousness

US6673532_Fig1Presense Persuasion Sensing petitioned the USPTO to reexamine (invalidate) certain claims of U.S. Patent 6,673,532 (the ‘532 patent) directed to methods of measuring parameters in a cell culture. The USPTO rejected the challenged claims of the ‘532 patent as obvious in view of a combination of two references, which I will refer to as “Bamboo” and “Weigl.”

University of Maryland Biotechnology Institute (Maryland), which owns the ‘532 patent, argued that Bamboo and Weigl should not be combined because Weigl teaches away from the claimed invention. Maryland  alleged that Weigl taught away because “(1) Weigl’s carbon dioxide sensor is unstable; (2) each of Weigl’s flow-through units has only one sensor, not multiple sensors; (3) Weigl’s various outlets are inconsistent with the claimed invention’s ‘continuous volume’ limitation; and (4) Weigl’s device is “invasive” because it requires extra-vessel sensors.”

The court rejected these arguments on appeal. University of Maryland Biotechnology Institute v. Presens Precision Sensing GMBH, Nos. 2016-2745, 2017-1075 (Fed. Cir. 2017). The court found that Maryland’s teaching away arguments focused too narrowly on Weigl’s physical arrangement.

The court said, the “mere disclosure of alternative designs does not teach away.” Instead, “teaching away requires ‘clear discouragement’ from implementing the technical feature.” And the court found no clear discouragement.

When a reference teaches away from the proposed combination, such a teaching would discourage one skilled in the art from making the combination.

Therefore, teaching away is a good argument for defending against an obviousness claim. However, usually the teaching away needs to be quite explicit in the reference for the argument to have traction.