Amazon Marketplace Problems and the Case For Registering a Seller Name as a Trademark with the USPTO

Verge reports on the problems sellers encounter from false claims and sabotage efforts of other sellers on Amazon’s marketplace.

The Verge article is titled Prime and Punishment: Dirty Dealing in the $175 Billion Amazon Marketplace. It reports that one seller registered a trademark for his watch brand but not the name of his Amazon seller account. Another person then applied and received a trademark registration from the USPTO over the Amazon seller’s account name, registered it with Amazon, and then used the registration to convince Amazon to kick the legitimate seller off and take over his name on Amazon. The article describes it this way:

Over the following days, Harris came to realize that someone had been targeting him for almost a year, preparing an intricate trap. While he had trademarked his watch and registered his brand, Dead End Survival, with Amazon, Harris hadn’t trademarked the name of his Amazon seller account, SharpSurvival. So the interloper did just that, submitting to the patent office as evidence that he owned the goods a photo taken from Harris’ Amazon listings, including one of Harris’ own hands lighting a fire using the clasp of his survival watch. The hijacker then took that trademark to Amazon and registered it, giving him the power to kick Harris off his own listings and commandeer his name.

…Then came the retaliation: tired of Harris’s futile attacks, the imposter booted Harris off his listings entirely, reporting him to Amazon for infringing on his own brand.

Therefore, registering with the USPTO, your amazon account name as a trademark, is a step to try prevent this type of terrible problem from occurring.

Explaining Technical Details of an Invention in an Understandable Manner

In a patent dispute, one challenge can be explaining technical features of an invention or product in an easily understandable manner. Analogies are helpful on this score.

In the patent infringement case of Sprint v. Time Warner Cable, Time Warner tried to distinguish its IP-based technology from ATM technology described in the patents at issue. Time Warner’s expert described the two technologies this way:  ATM is “like being on a train track where you have to follow the tracks,” but IP is like “driving a car from Point A to [Point] B, where you’re free to take different roads.”

Assuming this is an accurate analogy, the reference to railways and roads allows the reader to readily understand the emphasized difference between the technologies.

Case Citation: Sprint Communications Company LP v. Time Warner Cable, Inc., No. 2017-2247 (Fed. Cir. Nov. 30, 2018).

Describing Features of the Invention Both Broadly and in Detail

Drafting a patent application often involves  describing the invention both broadly and in detail. But how can something be described both broadly and specifically?A decision in a case between Sprint and Time Warner Cable illustrates one way.

In that case, Time Warner argued that the patents asserted by Sprint did not comply with the written description requirement. It argued that the claims were broader than what was described in the patent description. Time Warner argued that the patent description was limited to ATM networks. The appeals court disagreed.

The patent description at issue in the case included reference to “[b]roadband systems, such as Asynchronous Transfer Mode (ATM).” The court said that this wording “strongly suggests that the patents are not limited to ATM technology.”

In the Sprint case, Time Warner accused technology did not use ATM technology but instead used IP technology. If the patents did not describe broadly “broadband systems” it is less likely that the claims would have been useful to cover Time Warner’s IP-based system.

The form of the phrasing is “[broad or general descriptor], such as [detailed or specific descriptors].” This form can allow claims to the broad element while also specifying specific details in the patent application. Multiple detailed elements can be listed. For example, “a wireless protocol, such as WiFi, CDMA, 3G, 4G, LTE…” or another example, “a fastener, such as a screw, bolt, nail, rivet, hook and loop fastener….”

By describing an invention feature broadly first and then providing detailed examples of the broad element in an exemplary way, the invention feature is described both broadly and in detail. Describing the invention feature broadly provides the opportunity for broad patent coverage. Providing detailed examples supports the broad description and provides a fall-back position if some portion of the broad subject matter is already in the prior art.

Case Citation: Sprint Communications Company LP v. Time Warner Cable, Inc., No. 2017-2247 (Fed. Cir. Nov. 30, 2018).

Weak Marks Leave Only Stylistic Elements Protected: DIY Auto Edition

It is usually not good when the trademark office considers the whole text of your mark to be generic, as the registration for DIY AUTO REPAIR SHOPS demonstrates below. When you want to use a generic element in your mark to describe the goods or services offered, it is usually better to combine that with a unique text element so you have something protectable, to which your reputation can attach.

DIY AUTO, LLC applied to register the DIY AUTO and design, shown below, for the services of providing a website featuring information about automotive maintenance and repair service.

The Examining Attorney refused registration based on DIY AUTO REPAIR SHOPS and design, shown below, registered for the services of a do-it-yourself vehicle repair shop.

 

The Trademark Trial and Appeals Board reversed the refusal and allowed the application on DIY AUTO to register. The board said that “we find that the purchasing public, who are interested in repairing their own vehicles, will understand the terms DIY, DIY AUTO, and DIY AUTO REPAIR in the generic sense, rather than as indicating a particular source of do-it-yourself auto repair services.”

Here, given DIY AUTO and DIY AUTO REPAIR are generic, all that is left for the trademark registrations to protect is the stylistic (logo) presentation–i.e. the blue and white badge-like logo of the first mark and the orange and blue badge-like logo of the second mark–but not the text alone. That’s not a lot of protection considering consumers can use or encounter the mark audibly or orally. Indeed, words are often used by customers to refer to or request goods/services. See e.g. TMEP 1207.01(c)(iii).

The terms DIY AUTO are telling customers what they get in connection with auto repair and auto repair information, but the mark owners are not staking out any substantial ground that can distinguish one source of goods/services from another, apart from the graphics. Each of these marks are or will be registered, but the scope of protection is narrow.

It would be better if these parties attached DIY AUTO to a protectable text mark, e.g. ACME DIY AUTO. That way each could build brand recognition in the protectable text (ACME) and also inform customers what they get (DIY AUTO).

Five Years: Most Relevant Time Period for Considering Third Party Trademark Use, Federal Circuit Says

Converse filed a complaint at the International Trade Commission (ITC) seeking an order blocking the importation of several shoes that Converse alleged to infringe Converse’s trade dress rights in three design elements on the mid-sole of Converse’s All Star shoes.

Converse asserted trade dress rights in the “design of the two stripes on the midsole of the shoe, the design of the toe cap, the design of the multi-layered toe bumper featuring diamonds and line patterns, and the relative position of these elements to each other.”

Here, the design elements of the shoe are product design trade dress, for which the owner must show that these design elements have acquired distinctiveness in the relevant market place. If the owner fails to show acquired distinctiveness, then it does not have trademark rights to enforce.

Third party use of a mark is relevant to whether a trademark has acquired distinctiveness in the relevant market place. If many third parties use a mark, then it is less likely that this mark will be recognized in the marketplace as associated with one source of goods or services.

The defendants in the ITC proceeding asserted that the design elements had not acquired distinctiveness. They relied, in part, on evidence of third party designs. Some of those third party design usages were old.

The Federal Circuit said that the ITC erred by too heavily relying on prior uses long predating the first infringing uses and the date of registration in Converse, Inc. v. ITC, No. 2016-2467 (Fed. Cir. 2018). The court relied on Section 2(f) of the Lanham Act to find that the five year period prior to the relevant date was the most relevant time frame to consider third party use.

Generally a trademark owner must show acquired distinctiveness prior to the date when the first alleged infringement occurred by the other party. Therefore, the first use by the the other party is generally the relevant date (or the date of  registration, if a trademark registration is at issue).

The court said that “Consumers are more likely to remember and be impacted in their perceptions by third-party uses within five year and less likely with respect to older uses.” It continued that “uses older than five years should only be considered relevant if there is evidence that such uses were likely to have impacted consumers’ perceptions of the mark as of the relevant date.”

Likely Phonic Similarity Dooms Registration Attempt: MIKA Blocks MYCAH

Devon Goocher applied to register MYCAH for music concerts, among other services. The USPTO refused registration based on a registration on MIKA for live performances by a musical entertainer in In re GoocherSer. No. 87214736 (TTAB Setp. 20, 2018)

Two marks may be found similar if there are sufficient similarities in the sound or appearance or connotation of the marks. Here the similarity in sound was enough to find the marks were similar.

The Trademark Trial and Appeals Board noted that:

…it is very likely that consumers will pronounce Applicant’s mark MYCAH in the identical way that they would pronounce Registrant’s mark MIKA, that is bi-syllabically with the first syllable being pronounced the same as the word “my,” as the vowels “I” and “Y” are often interchanged in, for example, common names such as Sidney and Sydney. In the second syllable, both the “C” and “K” can be pronounced with a hard “k” sound as in the words “cat” and “Kentucky,” with the “A” and “AH” having the same neutral sound.

Goocher tried to argue the marks were pronounced differently “in reality.”  However, the Board noted that “there is no ‘correct’ or certain pronunciation of a mark because it is impossible to predict how the public will pronounce a particular mark….”

Card Games Using a Standard Deck Face a Tough Road at the Patent Office

Ray and Amanda Smith applied for a patent on a method of playing a wagering card game. The title of their patent application was “Blackjack Variation.” The court of appeals noted that the Smiths’ claim were directed to rules for playing a wagering game using conventional shuffling and dealing of a standard deck of cards. As such, the court of appeals found the Smiths’ claims were not patent eligible in In Re Smith, No. 2015-1664 (Fed. Cir. 2016).

The court found that the Smiths’ claim were similar to other fundamental economic practices previously found abstract. The court agreed with the reasoning of the patent office that “[a] wagering game is, effectively, a method of exchanging and resolving financial obligations based on the probabilities created during the distribution of cards.”

The court also found that the claims did not contain an inventive concept sufficient to transform the abstract idea into a patent-eligible subject matter. The shuffling and dealing of physical playing cards from a standard card deck were purely conventional activities, according to the court.

However, the court noted that some inventions in the gaming arts could be patent-eligible. The court said “claims directed to conducting a game using a new or original deck of cards potentially” could be patent eligible.

Tabbed-Spreadsheet Claims Found Patent-Eligible

Data Engine Technologies (DET) sued Google claiming that it infringed several claims of U.S. Patents 5,590,259, 5,784,545, 6,282,551 directed to tabbed-spreadsheets, among others. The patents claim system and methods for making complex electronic spreadsheets more accessible by providing familiar, user-friendly interface objects–specifically notebook tabs–to navigate through spreadsheets.

Google asserted that the claims of these patents were directed to abstract ideas and did not provide an inventive concept. The Federal Circuit disagreed finding claims directed to the tabbed spreadsheet were patent eligible in Data Engine Technologies LLC v. Google LLC, No. 2017-1135 (Fed. Cir. 2018).

Figure 4D of the ‘259 patent shows tabs at the bottom of each sheet.

Figure 2D provides an enlarged view of the tabs.

The court notes that while these tabbed spreadsheet interfaces are common now, “Quattro Pro, the first commercial embodiment of the claimed invention, was highly acclaimed as having revolutionized three-dimensional electronic spreadsheets.” The court goes on to review articles from PC World and Info World touting the advantages of the tabs in improve navigation of three-dimensional sheets.

The Court found that the claims were directed to a specific method for navigating through three-dimensional electronic spreadsheets. And provided a solution to the then-existing technological problems in computers and prior art electronic spreadsheets. The claimed invention solved a known technological problem in a particular way.

Ultimately the court rejected Google’s assertion that the claims were directed to the abstract idea of indexing information because the claims were directed to “an improved user interface for computer devices” and “a particular manner of summarizing and presenting information in electronic devices.”

Uber CEO Acknowledges that Uber is a Verb

In a September 10, 2018 post on Uber’s website, Uber’s CEO is quoted saying “Very few brands become verbs; for Uber to have achieved this shows how we’ve captured imaginations and become an important part of our customers’ lives….”

Many companies go out of their way to discourage the use of their trademark as a verb or a noun. For example, the owners of the VELCRO brand produced a humorous music video instructing the public not to use VELCRO as a noun or verb. Why?

They did this to prevent the loss of trademark rights in the VELCRO trademark due to what is called genericide. Genericide occurs when the public appropriates a trademark and uses it as a generic name for a type of good or service regardless of the source. If this happens, as it did for ASPIRIN, the trademark owner can loose its rights in the mark. Therefore, usually companies avoid, and instruct others to avoid, using their trademarks as nouns or verbs.

However, in a recent case where the plaintiff unsuccessfully attacked Google’s trademark as generic, the Ninth Circuit Court of Appeals said that verb use of a trademark alone does not automatically constitute a generic use. 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.

Here, does the consumer mean the Uber ride service or any ride service when using Uber as a verb? The latter case is where the problem lies for trademark owners.

Therefore, the acknowledgement by Uber’s CEO that Uber is a verb is not the end all regarding Uber’s trademark rights. Yet, it is something that a challenger could point to in attempting to attack the validity of Uber’s trademark.

Avoid Using Trademarks Descriptively: Corn Thins and Rice Thins Found Merely Descriptive

Real Foods Pty Ltd. applied to register the mark “Corn Thins” for the goods of “crispbread slices predominantly of corn, namely popped corn cakes.” It also applied to register the mark “Rice Thins” for the goods of “crispbread slices primarily made of rice, namely rice cakes.” Frito-Lay successfully opposed the registration of marks on the basis that the marks are merely descriptive of the goods and have not acquired distinctiveness in Real Foods Pty Ltd. v. Frito-Lay North America, Inc. Nos. 2017-1959, 2017-2009 (Fed. Cir. 2018).

A mark is merely descriptive if it immediately conveys information concerning a feature, quality, or characteristic of the goods or services for which registration is sought. The Trademark Trial and Appeals Board (TTAB) and the Federal circuit agreed that a consumer would immediately understand, when encountering the proposed marks, that a feature or characteristic of the goods is that they are thin in cross section and made primarily of corn or rice, respectively.

Merely descriptive marks are initially weak and require acquired distinctiveness (a.k.a. secondary meaning) to be registered. Acquired distinctiveness occurs when the primary significance of a mark, in the minds of the relevant public, is to identify the source of the product rather than the product itself.

One fact that the TTAB and the Federal Circuit noted is that Real Foods advertising materials use the word “thin” to describe their products. According to the Federal Circuit opinion, the advertising included the statements that “They are delicious thin corn cakes, with ‘All Natural” flavoring” and “Corn & Rice Thins are THIN.”

While the outcome might not have changed in this case, a trademark owner should take steps to avoid using its mark descriptively in a sentence to describe an attribute of the product. It appears, in the opposition, the Real foods avoided using the term “thin” to describe its products and instead used “slim” or “slimmer.” But such use of slim or slimmer did not change Real Food’s prior descriptive use of thin in advertising, which was used as evidence against it.

Ultimately, the TTAB and the Federal Circuit agreed that Corn Thins and Rice Thins should not be registered because they were merely descriptive of the corresponding goods.