Is There a Market for the Invention?

“[T]he lesson Edison drew from the experience was that invention should not be pursued as an exercise in technical cleverness, but should be shaped by commercial needs.”

Thomas Edison is an inventor famous for his long running electric light invention among many others. Edison accumulated over 1000 patents in his life time. His life and work is covered in Randall Stross’ book The Wizard of Menlo Park: How Tomas Alva Edison Invented the Modern World.

Early in his career, while working as a telegraph operator, Edition invented on the side. According to Stross, “Edison filed patent applications as fast as the ideas arrived.” The first patent application that Edison filed was for a legislative chamber vote recorder (U.S. Patent No. 90,646). The vote recorder could shorten the time it took to tabulate votes by hours.

The invention provided buttons at each member’s desk and the chamber’s speaker could see running totals for “aye” and “nay” on twin dials.

However, there was no interest in the Capital for the invention. Stross describes a Capital insider’s reaction to the invention as “undisguised horror.” Stross continues: “The minority faction would not embrace an expedited voting process because it eliminated the opportunity to lobby for votes, nor would the majority want a change, either.”

Stross concludes, “The vote recorder was a bust, and the lesson Edison drew from the experience was that invention should not be pursued as an exercise in technical cleverness, but should be shaped by commercial needs.”

Register the Mark You Will Actually Use, Not Unused Similar Variations

Trademark rights are connected with actual use of a mark. Sometimes that use starts before an federal trademark is filed and sometimes it starts after a federal (intent to use) trademark application is filed. But speculating in trademark applications on marks that you don’t intend to actually use is useless.

This brings me a federal trademark application filed on the following mark:

double doink doubledoink DOUBLE DOINK DOUBLEDOINK Doubledoink Double Doink

That whole thing is the mark of the application.

The applicant included many variations of capitalization and spacing of the two words Double Doink. Let’s break down the mark:

  1. double doink
  2. doubledoink
  3. DOUBLE DOINK
  4. DOUBLEDOINK
  5. Doubledoink
  6. Double Doink

The applicant has six variations of Double Doink in the mark. But you don’t need to, and shouldn’t do this to protect the mark “Double Doink.”

Maybe the applicant here really is going to use all six variations, together, and in that order, as his mark. But that seems very unlikely.

You should pick the way that mark will be used, use it consistently in that way, and apply to register in that way. Then let trademark law do the rest. Trademark law often protects against not only identical copying of a mark, but also against confusingly similar marks.  Is “Doubledoink” confusingly similar to “Double Doink” for the same goods/services? Probably.

In many cases, a trademark registration on Double Doink would likely protect the owner from others using the mark with minor different capitalization or spacing–e.g. similar variations of the mark–in connection with the same goods/services. For example, the USPTO found CROSS-OVER to be in conflict with a registered mark CROSSOVER. The hyphen made no difference.

There are exceptions to every rule, but like minor punctuation differences, minor spacing and capitalization differences alone often do not distinguish marks because marks are compared in at least following ways: (1) appearance, (2) sound, and (3) connotation. A similarity in any one of those aspects could be enough to find that the marks are similar. Many times you can’t hear spacing and capitalization differences when a mark is spoken, e.g. its sound. Further, the spacing and capitalization may not sufficiently distinguish the marks visually. Is “Doubledoink” that much different visually from “Double Doink”? No.

Pick a way to present and use your mark. Use it and apply to register it in that way. And let trademark law do the work of stopping the use of similar variations of your mark.

Thanks to Erik Pelton for pointing out this application.

Difficulty of Name Changes: Country Moves to Change Name to End 27 Year Dispute with Greece

It is not uncommon for trademark disputes to resolve with one party agreeing to stop using the mark that is in dispute. If the mark is the party’s name, then a name change is required.

Name changes are usually not easy. Consider the need to change items having the mark, including advertisements, signs, letterhead, business cards, brochures, packaging, marked products, and a website. Further, a name change may mean a loss of customer recognition of the brand and the need to educate customers on the new name.

As a result, it is no surprise that a party is usually not happy about being required to change its name. So too when a country is pressured to change its name.

NPR reports that the parliament of the country of Macedonia (Republic of Macedonia) approved changing the country’s name to North Macedonia to appease Greece. NPR reports on why Greece objected to Macedonia’s name:

Greece already contained a region called Macedonia, which incorporates most of the territories of the eponymous ancient kingdom that was led centuries ago by Alexander the Great. Both Greece and its northern neighbor consider Alexander, and the name, integral parts of their identity…

Previous Greek governments have also claimed the tiny Republic of Macedonia might use the name to make territorial claims on its province.

As a result of this name dispute, Greece has blocked Macedonia’s entry into both NATO and the European Union. Greece and Macedonia have been in a dispute over the name since 1991 when the Republic of Macedonia broke away from Yugoslavia.

Opponents of the name change strongly condemned the vote in parliament using words such as “traitors” and “treason,” according to NPR.

Name changes are often hard. However, apparently the benefits of a possible path to NATO and EU membership outweigh the resistance to a name change in the Republic of Macedonia. Similarly in trademark disputes, when a name change is agreed, the business usually sees the benefits arising from a change outweighing the costs.

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.