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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Tagline Not In Trademark Application Cannot Distinguish Prior Mark

P.T. Arista Latindo (“Arista”) sought to register the trademark SENSI for diapers, among other things. The USPTO refused the registration in connection with diapers on the basis of two prior registrations for the mark SENSI-CARE (Tm Reg. Nos. 2618533, 3640455) for skin care products for treating and preventing diaper rash.

Arista argued that there was no likelihood of confusion between its mark and the SENSI-CARE marks because Arista uses a tagline “Sensible way of living” on its website. It argued that customers would assume its SENI mark means “sensible,” considering its tagline, whereas consumers would see SENI in the prior SENI-CARE marks as referring to “sensitive.”

The problem is that Airsta’s tagline was not in its trademark application. On appeal, the court said that the USPTO “must only compare the mark in the prior registration with the mark in the [present] application.” In re P.T. Arista Latindo, No. 2017-1292 (Fed. Cir. 2017). The court also said  “trade dress may not be used to prove that the commercial impressions are different, since trade dress may be changed at any time.”

The content of a trademark application is what is considered by the USPTO when deciding whether to register the mark. This is one reason it is important to do a trademark search prior to filing an application. A trademark search may help inform whether you should include a tagline, other words or characters, or graphical elements in your applied-for mark to increase the chance of distinguishing an already registered mark. Taglines, words, characters, or other elements that are not included in your application when it is filed probably will be of no help in distinguishing prior marks, as was the case for Arista.

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Applying Computer and Internet Technology to Replace Older Electronics is Commonplace, Fed. Cir. Says

US20060218618A1_Fig 1Joseph Lorkovic filed a patent application directed to a home entertainment content delivery system for interactive content dissemination over the internet. The USPTO rejected Lorkovic’s claims as obvious based on a combination of U.S. Patent 5,918,012 (“Astiz”) in view of U.S. Publication 2005/0229233 (“Zimmerman”). Lorkovic claimed Astiz and Zimmerman could not be combined because the web browsing functionality in Astiz was not compatible with the analog based Zimmerman device.

The appeals court rejected this argument in In Re Lorkovic, No. 2017-1678 (Fed. Cir. 2017). The court stated, “We have previously observed that ‘applying computer and internet technology to replace older electronics has been commonplace in recent years’ and found obviousness in reliance on that observation.” citing W. Union Co. v. MoneyGram Payment Sys., Inc., 626 F.3d 1361, 1370 (Fed. Cir. 2010).

Obviousness determinations are hard to predict. However, when considering the patentability of an invention, it is important not to think too narrowly about whether prior art devices would be compatible or physically combine-able. But rather consider what would one skilled in the art would understand from the prior art device or disclosure in light of current state of the art at the time of application filing.

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How to Destroy Your Trade Dress 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 (a.k.a. trade dress) 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 more likely that consumers generally see design features as functional and not a source indicating. Functional features are protected by patents not trademarks. How can we determine if something is functional rather than source indicating? Well, it is easy to assert that a product design feature is functional if the trademark owner admits that it is functional in its advertising and in its utility patent. That’s what happened to ITW.

Here’s a portion of the present law on functionality. The registration of a product design may be denied or cancelled if it “comprises any matter that, as a whole, is functional.” 15 U.S.C. § 1052(e)(5). A product design or product feature is functional if it is (1) “essential to the use or purpose of the article,” or if it (2) “affects the cost or quality of the article.” TrafFix Devices Inc. v. Mktg. Displays Inc., 532 U.S. 23 (2001). Two factors relevant to whether a design is functional are “(1) the existence of a utility patent disclosing the utilitarian advantages of the design; and (2) advertising materials in which the originator of the design touts the design’s utilitarian advantages…”

In the Poly-America case, ITW’s predecessor admitted that the colored strip was functional in its utility patent, US Patent. No. 3054434. The patent stated, “In order to facilitate identification of the flanges as means to assist in the separation of the strips 9′, 9′ when they are engaged together, the flanges may be colored differently than the strips themselves.”

Further, ITW’s predecessor admitted that the color strip was functional it its advertising of the product. The advertising stated, the “color flange immediately identifies the point of opening” and “also serves a practical purpose. It immediately identifies the point of opening.”

The Board relied on these admissions to conclude that the registrations should be canceled as the colored strip is functional.

When seeking or holding trade dress protection in a product design, advertising and utility patent efforts must be closely monitored and coordinated so that you don’t destroy such trade dress protection by admitting that the relevant product design features are functional.

 

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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 brothers took many cautious steps in preparation for their first flight experiences.

The brothers realized that their home town of Dayton, Ohio was not ideal for flight experiments. Instead, they sought a location with consistent winds and soft sand to test their machine.

Wilbur first inquired with Octave Chanute, an engineer, for advice on where to conduct flying experiments. But the locations in California and Florida that Octave knew of were “deficient in sand hills” for soft landings. Instead, Octave suggested the coasts of South Carolina or Georgia might be better.

Wilbur Wright inquired with the United States Weather Bureau about the prevailing winds around the country. The Bureau responded with records of monthly wind velocities of more than one hundred weather stations around the country. A spot called Kitty Hawk on the Outer Banks of North Carolina stood out.

But Wilber would not rely on the weather data alone, he wanted confirmation from someone there at Kitty Hawk. Wilbur wrote to the head of the Weather Bureau at Kitty Hawk. A reply confirmed that there was “a stretch of sandy land one mile by five with a bare hill in center 80 feet high, not a tree or bush anywhere to break the evenness of the wind” and the “winds were always steady, generally from 10 to 20 miles velocity per hour.”

Having settled on a suitable location, the brothers would not start out with a powered plane, but an unpowered version. They could use the wind at the sand hill to test the equilibrium and control of the plane before adding engine power. Wilbur said:

“I have my machine nearly finished. It is not to have a motor and is not expected to fly in any true sense of the word. My idea is merely to experiment and practice with a view to solving the problem of equilibrium. I have plans which I hope to find much in advance of the methods tried by previous experimenters. When once a machine is under proper control under all conditions, the motor problem will be quickly solved. A failure of a motor will then mean simply a slow descent and safe landing instead of a disastrous fall.”

McCullough recounts that Wilbur stressed to his father that Wilbur “did not intend to raise many feet from the ground, and on the chance that he were ‘upset,’ there was nothing but soft sand on which to land.” Wilbur further said “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.”

Wilbur even went so far as to assure his father that he was taking “every precaution” about his drinking water in the Outer Banks.

Read more about the ups and downs of the Wright Brothers’ work in McCullough’s book, which is a worthy read.

 

 

 

 

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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 infringement occurs, the owner will not only need to file an application, but will need to wait for the Register of Copyrights to act on the application before the owner can sue for copyright infringement under the registration approach. The Copyright Office’s website currently provides that it could take 6 to 8 months for the office to act on a new electronically filed copyright application. That’s a long time to wait to file suit in the face of ongoing copyright infringement.

Therefore, unregistered copyright plaintiffs clearly prefer the “application approach,” which allows a copyright owner to file suit a soon as they file an application to register the copyright.

The statute at issue, 17 USC 411(a), provides, in part, “[N]o civil action for infringement of the copyright in any United States work shall be instituted until … registration of the copyright claim has been made in accordance with this title.”

As explained in the Fourth Estate case, the Fifth and Ninth Circuit follow the application approach. The Eighth Circuit likely also follows the application approach. The Tenth, and now, the Eleventh Circuits follow the registration approach. The First and Second Circuits acknowledge the split on the issue but have not adopted either approach.

The caselaw of the Seventh Circuit includes conflicting dicta on which approach it follows, or whether the question is decided, Gaiman v. McFarlane, 360 F.3d 644, 655 (7th Cir. 2004) (“[A]n application to register must be filed, and either granted or refused, before suit can be brought.”), Chi. Bd. of Educ. v. Substance, Inc., 354 F.3d 624, 631 (7th Cir. 2003) (“[A]n application for registration must be filed before the copyright can be sued upon.”), Ngwenya v. Indianapolis Pub. Sch., 564 F.3d 804, 806 (7th Cir. 2009).

As recently as 2016, the District Court for the Western District of Wisconsin noted that district courts within the Seventh Circuit (which covers Illinois, Wisconsin, and Indiana [PDF Map]) are also split, some following the registration approach and some following the application approach. See Robbins v. Svehla, 2016 U.S. Dist. LEXIS 162064, 4-5 (W.D. Wis. Nov. 22, 2016).

Even if the copyright owner is located in a circuit that follows the application approach, a circumstance could arise where the owner needs to file suit in a circuit that follows the registration approach. Therefore, the safest approach is to file an application to register a copyright early before infringement occurs, so that the copyright right can be enforced when the need/desire arises.

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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 increase the number of patent suits filed there and to reduce the number of patent cases filed in the Eastern District of Texas, which has been a popular patent plaintiffs’ venue.

In addition to the place where the defendant resides, Section 1400(b) also provides that venue is proper where the defendant has committed acts of infringement and has a regular and established place of business. Therefore this second clause of section 1400(b) will likely now get more action. And, courts will have occasion to define the boundaries of what is a “regular and established place of business,” which was not a widely relied upon clause previously.

IPWatchdog and IAM have additional coverage on this ruling.

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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 when it is used as an adjective, e.g. “the Google search engine.” However, the Ninth Circuit held that verb use alone does not automatically constitute a generic use. Trademark lawyers often counsel their clients to use a trademark as an adjective and not as a noun or verb to avoid the possibility that the mark could be come generic.

Here, though, the court says that more beyond verb use is needed to know whether a mark is generic for a type of good or service. Instead, to know if the public uses the mark as a generic name of a type of good or service, we need some information about what the consumer is thinking when they use the mark as a verb. Did the consumer mean the google search engine or any internet search engine when using google as a verb? The court found that there was insufficient evidence of what the customer/public was thinking when they used the term google as a verb.

The court also found that a claim that a mark is generic must be made in relation to a good or service, not an act. Therefore the proper question was whether Google was generic for internet search engines. The question was not whether google was generic for the act of internet searching, as the plaintiffs asserted.

While this case shows that use of a trademark as a verb is not conclusive evidence that a mark is generic, it is best to use and encourage others to use, as Google does, a trademark as an adjective, and not as a verb or a noun.

 

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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 ________ (“Application”), and in any reissue of any Letters Patent that may be granted upon the Application are hereby assigned by Assignor to [Recipient/Assignee] [an individual / a Corporation/LLC organized under the laws of [State]] having an address at _____________ (“Assignee”).” Notice that this clause transfers ownership of the invention and the patent application for that invention.

2. Geographic Scope

A provision defining the geographic scope of the assignment is desirable. Often an assignment is intended to apply worldwide to allow the receiving party (i.e. the Assignee) to file patent application on the invention in any foreign country. Therefore, an assignment might provide, “The assigned rights include all worldwide rights to file any international patent applications, foreign patent applications, foreign design patent applications, utility model application, or similar industrial property rights for the Invention…”

3. Continuations and Divisionals

Patent applications occasionally include and claim more than one invention. The Patent Office may issue a restriction requirement, where the applicant must elect among the multiple inventions in the application. The unelected inventions can be pursued in a separately filed divisional application. The divisional application can be thought of a “child” application of the original “parent” application.

A continuation patent application and a continuation-in-part patent application are other types of “child” patent applications that the patent owner might want to file and therefore will want to right to file. It is desirable for the assignment to expressly authorize the Assignee (receiver) to file divisional, continuation, and continuation-in-part patent applications based on the original application.

4. Obligation to Assist and Execute

In the U.S. an inventor signed declaration is usually filed with a patent application. There are provisions for accounting for situations were an inventor declaration cannot be obtained. However, generally, you want to have in inventor declaration filed in or with your patent application. Therefore, it is desirable to including in an assignment a written obligation for the inventor to execute all documents that the Assignee (recipient) desires in connection with the the patent application and any continuation, divisional, or other patent application concerning the invention.

Further, if the resulting patent is involved in a lawsuit, the patent owner will want the inventor to assist the patent owner in asserting or defending the patent. Therefore, the assignment should include a clause requiring the inventor to execute documents requested by the patent owner in connection with any lawsuit, reexamination, reissue, inter partes reexam, or other proceeding related to the patent. It would further be desirable for the assignment to require the inventor to assist and cooperate, beyond executing documents, with the patent owner in any such lawsuit or proceeding. For example, the patent owner may need the Inventor to testify about the invention.

Notary

The signatures of an assignment of a patent or patent application should notarized. 35 USC 261 provides a presumption that when signatures are notarized the assignment “shall be prima facie evidence of the execution of the an assignment, grant, or conveyance of a patent or application for patent.” In other words, it will be harder for someone to challenge the validity of the signatures. Therefore the assignment will be stronger.

Recording at USPTO

An assignment should be recorded at the USPTO to gain the benefit of 35 USC 261, which provides, “An interest that constitutes an assignment, grant, or conveyance shall be void as against any subsequent purchaser or mortgagee for 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.” This statute protect you when you record the assignment against problems if the inventor or prior patent owner sells the same invention to another party later.

 

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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 for different keywords. Broadening the search can include searching other technical areas. In evaluating the patentability of an invention the patent office sometimes looks to references that are not in the same technical area as the invention but that are directed to the same type of problem that the current inventor faced in developing his/her invention. Therefore you might ask what other technical areas might address the problem or problem(s) you sought to overcome by your invention.

While relevant or similar results exist for almost every invention, those results do not necessarily block an invention from patenting. Interpreting the results is what patent attorneys do to advise their clients on the chances of obtaining a patent.

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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 4 years, between 7 1/2 years and 8 years, and between 11 1/2 years and 12 years, respectively.

If you fail to pay the maintenance fee by the end of the surcharge period, the patent will be expired. To revive the patent you must file a petition. The petition is currently called “Petitions to Accept Unintentionally Delayed Payment of a Maintenance Fee in an Expired Patent.” An important requirement for revival is that the delay in payment was unintentional.

The relatively straight forward case of an unintentional delay is when you forgot to pay the fee. One definition of forget includes “to omit or neglect unintentionally.” 

The USPTO form for this type of petition include the required unintentional statement: “The delay in payment of the maintenance fee for this patent was unintentional.” Currently, the USPTO usually accepts that statement without requiring more information about why the delay was unintentional. The is because the patent owner has a duty to make truthful statements. Untruthful statements might result in the patent being unenforceable.

If the entire delay in making payment is unintentional, a petition to revive the patent can be filed together with the maintenance fee and the petition fee.