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.

Protecting Descriptive Marks: Principal Register and Supplemental Register

The USPTO maintains two registers of trademarks. The main register is the principal register while the other is the supplemental register. Most trademark applications seek registration on the principal register. Registration on the principal register provides the trademark owner with more rights and benefits than the supplemental register.

Principal Register

The advantages of owning a registration on the Principal Register, include that the registration on the Principal Register:

  • Provides exclusive nationwide right to use the mark in commerce on or in connection with the goods/services listed in the registration where there was no prior use by others (15 U.S.C. §§ 1057(b), 1115(a));
  • Is constructive notice to the public of the registrant’s claim of ownership of the mark (15 U.S.C. §1072);
  • Provides a legal presumption of the registrant’s ownership of the mark (15 U.S.C. §1057(b)),
  • Operates to provide a constructive use of the mark as of the filing date of the application that results in the registration (15 U.S.C.  §1057(c));
  • Enables the owner the ability obtain the assistance of the US Customs and Boarder Protection to prevent importation of infringing foreign goods (15 U.S.C. §1124);
  • Enables the option for registrant’s exclusive right to use a mark in commerce on or in connection with the goods or services covered by the registration to become “incontestable,” subject to certain exceptions (15 U.S.C. §§1065, 1115(b) );
  • Provides a basis for using a simplified process under the Madrid Protocol to a obtain trademark registrations in foreign countries. (15 U.S.C. §1141b).
  • Operates as a defense to state or common law claims of trademark dilution. (15 U.S.C. § 1125(c)(6)).

The Supreme Court said “Federal registration …. confers important legal rights and benefits on trademark owners who register their marks.” The Federal Circuit Court of Appeals said, “These benefits [of a federal trademark registration]—unavailable in the absence of federal registration—are numerous, and include both substantive and procedural rights.” So if you are serious about protecting your mark, you want to register it on the principal register.

Supplemental Register

However, when a trademark does not qualify for registration on the principal register, the supplemental register is a fall-back option. A trademark may not qualify for registration on the principal register if it is merely descriptive in relation to the goods/services and has not acquired distinctiveness, i.e. recognition in the relevant marketplace as a trademark. A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the corresponding goods or services.

Therefore, an applicant may seek registration on the supplemental register when its mark is merely descriptive and has not acquired recognition in the marketplace as a trademark. Further, an applicant might seek registration on the supplemental register if the mark has been refused on the principal register as merely descriptive and the applicant does not want to undertake the effort to attempt to prove to the USPTO that the mark has acquired recognition in the marketplace as a trademark.

The advantages of owning a registration on the Supplemental Register, include that the registration:

  1. Allows the registrant to use the registration symbol ®;
  2. May block the registration of a confusingly similar mark by a third party; and,
  3. Provides a basis for using a simplified process under the Madrid Protocol to a obtain trademark registrations in foreign countries.

The time period that a trademark has been use is one factor in determining whether a mark has acquired distinctiveness (and is thus register-able on the principal register). 15 U.S.C. §1052(f),  provides that “proof of substantially exclusive and continuous use” of a designation “as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made” may be accepted as prima facie evidence that the mark has acquired distinctiveness. The USPTO is not required to accept 5 years of use as establishing acquired distinctiveness, but they can and often do.

Therefore, one strategy to protect a merely descriptive mark is to seek registration on the supplemental register. Then after a period of time, such as 5 years, the applicant can seek registration on the principal register and rely on section 1502(f) for establishing acquired distinctiveness. Before seeking registration on the principal register, the registration on the supplemental register has the chance of blocking others from registering the same or confusingly similar mark. It may also have the effect of deterring others from using the same or a confusingly similar mark.

Yet, reliance on 1502(f) this might not work if third parties start using the mark for the same goods in the marketplace before 5 years of use. Then the applicant might not be able to say that its use was “substantially exclusive.” Nevertheless, the applicant could still attempt to prove acquired distinctiveness through other evidence.

Choosing a descriptive mark tends to put the applicant at a disadvantage in terms of trademark strength, at least initially. However, overtime if competitors do not use the mark, the mark might acquire trademark protection if the appropriate steps are taken. Seeking registration on the supplemental register is one step that may help in the process.

Invention Not Described Adequately: A Provisional Patent Application Problem

USPatent_9068339_42It is not surprising that the content of a patent application is important. Sometimes the description of something as simple as a washer is important to obtaining a valid patent.

If the description of the invention in a patent application is comprehensive and multifaceted, you will have the option of pursuing and possibly obtaining broad and varied claims directed at protecting the invention. However, if the description of the invention is thin or narrow, it could be that you can’t get any valid claims–any protection–on your invention.

This is one of the problems with back-of-the napkin or otherwise thin provisional patent applications. Even when the application has more to it than a back-of-the napkin level of detail, an application can run into problems that result in no patent protection, as was the case in D Three Enterprises, LLC v. Sunmodo Corporation, Nos. 2017-1909, 2017-1910 (Fed. Cir. 2018).

Descriptions of Washers and Brackets

D Three Enterprises sued Rillito for infringing three patents directed to roof mount sealing assemblies that are used to mount items, such as solar panels, to roofs. The patents claimed priority through a chain of patent applications back to a provisional patent application filed in 2009.

Some of the asserted claims of the patents did not require a soft washer. There were various versions of roof mount assemblies shown in the provisional application, but  only one version was washerless. However, the description of the washerless version used a W pronged attachment bracket.

The relevant asserted claims were not limited to a W pronged attachment bracket but recited a more generic bracket. Therefore, because the asserted washerless claims were not limited to the W prong style attachment brackets, those claims were broader than the disclosure in the provisional patent application. As such, the claims did not meet the written description requirement as applied to the provisional application.

As the claims were broader, the court found that they were not entitled to the benefit of the provisional application filing date in 2009. Instead the claims were provided the later filing dates in 2013 and 2014 of the non-provisional applications that resulted in the patents.

But there was intervening prior art that invalidated the asserted claims if the claims did not have the benefit of the 2009 provisional filing date. The court found the asserted claims of the patents were invalid based on the prior art that arose between 2009 and 2013.

Alternative Descriptions

The outcome in this case might be different if the 2009 provisional provided that any of the embodiment shown herein may be provided with or without a washer. Further, the outcome might be different if the provisional stated that a generic bracket could be used with the washerless version of the invention.

Claims in a Provisional Application

D Three’s provisional application (61/150,301) did not include any claims. While the law does not require a provisional application to have claims, one or more claims reciting a washerless version with a generic bracket could have been included in the provisional. Such claims might have provided the written support for the later claims in the resulting patent and changed the result. Just because the USPTO does not require claims in a provisional, doesn’t prevent you from including them.

Application Content Matters

D Three’s provisional application showed a number of different embodiments (variations) of the invention. D Three’s provisional application was not a back-of-the-napkin submission. It had 12 pages of description and 21 pages of drawings. If an application with that much detail can run into problems, so too can applications with less.

It is important that a patent application describe an invention both broadly and in detail regarding the various embodiments (variations) of the invention. This is designed to provide a broad foundation for future patent claims and for a better chance at obtaining broad and valid patent protection.

Fighting Obviousness Rejections: Unexpected Results

When an invention possesses or provides unexpected results, this is often sufficient to show the invention is not obvious.

The case of Allergan, Inc. v. Sandoz Inc., 796 F.3d 1293 (Fed. Cir. 2015) demonstrates this principle. Allergen sued Sandoz among others alleging infringement of five patents directed a drug and treatment for glaucoma. The defendants asserted that the patents were invalid. Each of the asserted claims required a composition comprising 0.01% bimatoprost and 200 ppm benzalkonium chloride (BAK)

Prior treatments for glaucoma included using .03% bimatoprost and 50 ppm BAK. Prior art U.S. Patent 5,688,819 (Woodward) reference disclosed a composition comprising 0.001% to 1% bimatoprost and 0 to 1000 ppm of preservative, including BAK.

Therefore Woodward disclosed a range that covered the claimed composition. When that occurs the question is whether there would have been a motivation to select the claimed composition from the prior art ranges.

The court found that the prior art taught that BAK should be minimized in ophthalmic formations to avoid safety problems.  BAK was known to cause increased IOP, hyperemia, dry eye, and damage to corneal cells, and to exacerbate other eye disorders. Therefore the prior art taught away from increasing BAK from 50 ppm to 200 pmm.

Further, the prior art taught that 200 ppm BAK would either have no impact on permeability of bimatoprost or decrease it. But Allergan’s inventors surprisingly determined that the opposite was true, 200 ppm BAK enhanced the permeability of the bimatoprost. The court concluded that his unexpected difference in kind supported nonobviousness of the claimed invention.

Moreover, the court found that the prior art taught that reducing bimatoprost from 0.03% to 0.01% resulted in reduced efficiency, but did not reduce red eye (hyperemia). However, the claimed, which comprises 0.01% bimatoprost and 200 ppm BAK, formulation unexpectedly maintained the IOP-lowering efficacy of Lumigan 0.03% (Allergen’s prior product), while exhibiting reduced incidence and severity of hyperemia (red eye), even though the prior art taught that BAK could cause hyperemia at high concentrations.

The court concluded that the results of the claimed formulation constituted an unexpected difference in kind, that is, “the difference between an effective and safe drug and one with significant side effects that caused many patients to discontinue treatment.” These unexpected results supported the conclusion that the challenged patent claims were not obvious in view of the prior art.

Therefore, when facing an obviousness rejection or challenge, look to see if you can show that the invention possesses or provides unexpected results in the art.

The five patents asserted in this case are: U.S. Patents 7,851,504, 8,278,353, 8,299,118, 8,309,605, and 8,338,479.

Fighting Obviousness Rejections: Lack of a Valid Rationale to Combine References

The USPTO must provide a reasoned explanation why the person of ordinary skill in the art would combine the prior art references to conclude that an invention is obvious. If the USPTO fails to do this, the obviousness rejection is not valid.

The case of In re NuVasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016) demonstrates this principle. Medtronic, Inc. petitioned the USPTO to invalid claims of NuVasive’s Patent No. 8,361,156 (the ‘156 patent). The ‘156 patent was directed to a spinal fusion implant.

Medtronic asserted that the challenged claims of the ‘156 patent were obvious in view of four references: a Synthes Vertebral Spacer-PR brochure (SVS-PR Vrochure), a Telamon Verte-Stack PEEK Vertebral Body Spacer brochure (“Telamon brochure”) a Telamon Posterior Impacted Fusion Devices guide (“Telamon guide”), and U.S. Patent Application Publication No. 2003/0028249 (“Baccelli”). The USPTO found the challenged claims were obvious over a combination of Baccelli and either the SVSPR brochure or the Telamon references.

But in reaching this conclusion the USPTO failed to explain the reason why a person skilled in the art would have been motivated to modify either the SVS-PR device or the Telamon implants, in light of Baccelli, to place radiopaque marketers “proximate to said medial plane,”  as the ’156 patent teaches. The court reversed the obviousness determination of the USPTO for failing to provide the necessary reasoned explanation.

The USPTO must articulate a reason why a person skilled in the art would combine the prior art references. That reason and other USPTO findings must have an adequate evidentiary basis. And the USPTO must provide a satisfactory explanation for its motivation reasoning that includes a rational connection to the evidence. Further merely conclusory statements are not sufficient.

If the USPTO fails to provide a reason to combine or if the reason to combine is not technically valid or is not rationally connected to the evidence, then the obviousness rejection is improper. Therefore, when receiving a obviousness rejection it is important to (1) determine whether the USPTO provided a reason to combine references and (2) whether that reason is valid and/or has support in the record.