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Overcoming Obviousness Rejections: Prior Art Teaching Away From Combination

When the USPTO rejects patent claims based on alleged obviousness, it often combines two or more prior art references to make the rejection. This combination may be challenged if one of the prior art references teaches away from the proposed combination.

For an example of this principle, consider the case of Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1328 (Fed. Cir. 2009). There, Depuy Spine sued Medtronic Sofamor Danek for infringement of U.S. Patent No. 5,207,678 (“the ‘678 patent”). The ‘678 patent is directed to a pedicle screw used in spinal surgeries. A jury determined that Medtronic infringed the patent and awarded $149.1 million in lost profits damages for the sale of pedicle screws.

As a defense, Medtronic argued that the asserted claims of the ‘678 patent were invalid as obvious over the combination of two references U.S. Patent No. 5,474,555 (“Puno”) and U.S. Patent No. 2,346,346 (“Anderson”). But, the court found that Puno taught away from the proposed combination and therefore the challenged claim was not obvious over the combination of references.

The court noted, “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” The court further said, “An inference of nonobviousness is especially strong where the prior art’s teachings undermine the very reason being proffered as to why a person of ordinary skill would have combined the known elements.”

Puno disclosed a polyaxial pedicle screw assembly that had all of the parts of the relevant claim except a “compression member” for pressing the screw head 30 against the receiver member 23. But Puno described that its design achieved a “shock absorber” effect allowing for some motion between the anchor seat 23 and the vertebrae (see fig. 7 below). The lack of a compression member allowed the shock absorber effect. Puno described that the shock absorber effect “prevent[s] direct transfer of load from the rod to the bone-screw interface prior to achieving bony fusion, thereby decreasing the chance of failure of the screw or the bone-screw interface.” 

Therefore, Puno taught away from the use of a compression member, which would have increased rigidity, decreased the shock absorber effect, and possibly increased the chance of failure of the screw or the bone-screw interface according to Puno. The court concluded, due to the teaching away, a person of ordinary skill would have been deterred from combining Puno and Anderson in the manner that Medtronic proposed. As a result, the challenged claim of the ‘678 patent was not invalid as obvious and the infringement judgement was upheld. 

When receiving an obviousness rejection, the cited references relied on in the rejection should be studied to determine whether they teach away from the combination. If there is such as teaching away, then a response may be filed with the USPTO arguing against the obviousness rejection on that basis.

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Is The Invention Obvious?

In order to obtain a patent on an invention, the invention must not be obvious in view of the prior art. This requirement is provided in 35 USC 103, which states:

A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.

Obviousness determinations require a multifaceted consideration of the invention and the prior art.

The framework for obviousness determinations is provided by the Supreme Court in Graham v. John Deere Co., 383 U.S. 1 (1966). When considering obviousness one must (1) determine the scope and content of the prior art, (2) ascertain differences between the prior art and the claims at issue (the claimed invention), and (3) resolved the level of ordinary skill in the pertinent art. Obviousness or nonobviousness of the invention is determined against this framework.

Further, the USPTO fact finder must provide a rationale of why the invention is obvious. The Supreme Court in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415-421 (2007) made it easier for the USPTO to reject inventions as obvious. Prior to KSR, one could argue that an obviousness rejection was inproper if there was not teaching, suggestion, or motiviation to combine the prior art references. But, the court said “The obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents.” This opened the door to the use of additional rationales and evidence to support an obviousness rejection. And, this made life harder for some patent applicants.

After KSR, the USPTO reviewed several court cases and attempted to distill possible non-limiting example rationales that could support an obviousness determination. Therefore, even if there was no teaching, motivation, or suggestion, the patent examiner might be able to rely on the following other rationales:

  1. Combining prior art elements according to known methods to yield predictable results;
  2. Simple substitution of one known element for another to obtain predictable results;
  3. Use of known technique to improve similar devices, methods, or products in the same way;
  4. Applying a known technique to a known device, method, or product ready for improvement to yield predictable results;
  5. Choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success; or
  6. Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art. [MPEP 2143]

These rationales all rely on the predictability of the results of combining references. If the proposed combination would not have been recognized by one skilled in the art to produce predictable results, then these rationales should not apply.

Further, if one takes the example rationales of MPEP 2143 and considers them broadly it is possible that one could conclude that many patentable inventions are actually unpatentably obvious. However, you can’t take the rationales at face value because there are a host of rebuttal circumstances or circumstances where some of rationales don’t apply or would be applied only narrowly. In other words, don’t over generalize the MPEP 2143 rationales and conclude your invention is obvious.

For example, the following circumstances may prevent the combination of references in an obviousness rejection:

  1. one of the references teaches away from the combination of the other references,
  2. the proposed modification or combination will render the reference being modified unsatisfactory for its intended purpose,
  3. the proposed modification would change the principle operation of the prior art invention being modified, or
  4. the invention proceeds contrary to accepted wisdom in the art.

[See In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983), MPEP 2145(X)(D); In re Gordon, 733 F.2d 900 (Fed. Cir. 1984); MPEP 2143(V); In re Ratti, 270 F.2d 810, 813 (CCPA 1959); MPEP 2143(VI); In re Hedges, 783 F.2d 1038 (Fed. Cir. 1986); MPEP 2145(X)(D)(3).]

But these are just a few examples.

Further, the USPTO’s rationale for combining prior art references in an obviousness rejection must have an adequate evidentiary basis and there must be a connection between the rationale and the motivation to combine references in the obviousness rejection. In re NuVasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016); MPEP 2143. If the USPTO fails to meet these requirements the obviousness rejection can be improper.

In addition, so-called “secondary considerations” can be important to show nonobviousness. Secondary considerations may include: (1) commercial success of the claimed invention, (2) a long felt but unsolved need, or (3) failure of others.

As you can see there are several factors and elements to consider when attempting to establish obviousness or rebut it. And, the USPTO, district courts, and appeal courts, often disagree about whether a particular invention is obvious. For example, in Novartis AG v. Noven Pharmaceuticals Inc., 853 F. 3d 1289 (Fed. Cir. 2017), the PTAB of the USPTO found the challenged claims of U.S. Patent Nos. 6,316,023 and 6,335,031 were invalid as obvious. But, based on the same evidence, a prior District court found the claims of same patents were not obvious. The different results for the same patents on the same evidence were due in part to the different standards used by the PTAB and the district court. However, these varying results say something about the difficulty in applying and predicting whether an invention is obvious.

Nevertheless, obviousness of an invention can be assessed before a patent application is filed, usually after a patent novelty search is performed. And there are several possible angles for overcoming obviousness rejections at the USPTO.

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How Long Does It Take to Get a US Trademark Registration

After a trademark application is filed, it will be placed in a queue to be examined by a trademark examining attorney at the USPTO. The current USPTO records show that it takes an average of 2.7 months between the time of filing and the time of first action on the application. The USPTO targets between 2.5 and 3.5 months for a first action. In other words, it will take about 2 or 3 months for the office to substantively consider your application.

Further, USPTO records also show the total pendency average to be 9.5 months. Total pendancy is measured from filing to abandonment, allowance, or registration. Currently, the USPTO targets total pendency to be at 12 months or less.

If your application receives an office action with a rejection or objection, it may take longer. The USPTO usually provides six months to respond to an office action. If the applicant takes the full six months to respond, then the application pendency will correspondingly be extended six months.

If your application is an intent to use application, the allowance (“notice of allowance”) is not the end of the process. You must file a statement of use before a registration is issued. You generally have six months to file a statement of use from the notice of allowance. Even if you file a statement of use right away, the USPTO estimates that it will take 3.5 months from the filing of a statement of use until you receive the registration.

Therefore, if you file a statement of use right away after notice of allowance the total pendancy from filing to registration for an intent to use application is 13 month on average. The total pendancy to registration of a use-based application is 9.5 months on average.

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The Problem with A Provisional Patent Application and How to Avoid It

USPatent5899283

 

The problem with a provisional application is that it enables applicants to file patent applications that do not adequately describe the invention.

The USPTO does not examine or look at the content of the provisional application. So as long as you send a properly completed provisional coversheet, a document that purports to describe your invention, and pay the filing fee, the USPTO will probably not object to it. Whether your application described the invention in great detail or whether it is a “back of the napkin” submission, the USPTO will probably treat it the same. You will receive an official filing receipt and think you are protected.

But the difference between an adequate description and a back-of-the-napkin description may be the the difference between having a chance to obtain a valid patent and having no chance. It is the content of the application that matters regardless of whether you have a official filing receipt. And the USPTO will probably not tell you that you have not adequately described your invention when filing a provisional application. Instead, there is a fair chance that you will not find that out until it is too late to fix.

Example

For an example, let’s look at the case of New Railhead Mfg., LLC v. Vermeer Mfg. Co., 298 F. 3d 1290 (Fed. Cir. 2002). This is not a case of a back-of-the-napkin type provisional submission, but is it a case where the provisional application failed to adequately describe the invention claimed in the patent. As a result, New Railhead’s patent was invalid. Therefore, it is helpful in illustrating the potential problem with provisional patent applications.

New Railhead Manufacturing sued Vermeer Manufacturing Company for infringing US Patent 5,899,283 (the ‘283 patent) on a drill bit for horizontal drilling in rock. The application that became the ‘283 patent claimed priority to a provisional application.

Here is a copy of Railhead’s provisional patent application. What you’ll notice is that it is missing some sections you would normally see in a non-provisional application, such as the brief description of the drawings, the summary of the invention, and claims. Also, if you compare the provisional application to the issued ‘283 patent, you’ll notice that the drawings of the provisional are not labeled with numbers to the extent that they are in the patent.

So the provisional lacked some of the sections and formalities that you would find in a non provisional and that you see in the issued ‘283 patent. But regardless of formalities, the question to consider is whether the provisional disclosed the invention claimed in the ‘283 patent.

Claim 1 of the ‘283 patent provides “the unitary bit body being angled with respect to the sonde housing.” The problem was the provisional application did not expressly describe the bit body as being angled with respect to the sonde housing. The court concluded this even though the provisional provided a “high included angle offsets for directional steering,” and enhanced performance that results from “multiplying the fracturing effect through leverage on the main drilling points.”

The court said “The passing references to a ‘high angle of attack’ and ‘high included angle offsets’ in the provisional, divorced from any discussion whatsoever of the bit-housing combination, do not convey to one of ordinary skill that [the inventor] was in possession of the bit-housing angle that is a limitation of the invention claimed in the ‘283 patent.”

Written Description Requirement

Railhead argued that one of ordinary skill would readily understand the angled bit body with respect to the sonde housing based on the totality of the provisional application. But this argument didn’t fly.

This is were a lot of inventors and engineers get tripped up. The court said, “It is not a question of whether one skilled in the art might be able to construct the patentee’s device from the teachings of the disclosure [but] whether the application necessarily discloses that particular device.” The written description requirement is stricter than what one skilled in the art would know. Therefore inventors and engineers may tend to leave out details that one skilled in the art would know, where it would be better to error on the side of caution and include those details.

When a patent attorney drafts an application the attorney often notices what appear to be gaps. When those gaps are brought to the attention of the inventor, it is not uncommon for the inventor to view the purported gap as something one skilled in the art would know. Nevertheless, to avoid a problem with the written description requirement, those gaps are often filled.

As If The Provisional Had Never Been Filed

Railhead admitted that it sold the patented drill bit more than one year before the filing date of the non-provisional application. The sale of a product more than one year before the filing of an application is prior art to that application. Therefore Railhead needed the benefit of the provisional application to avoid the patent being invalid over its own sale of the product. When Railhead could not rely on the provisional application filing date, the patent was found invalid. The end result was as if Railhead had never filed a provisional application at all.

Solution 

The problem with a provisional application is that it enables applicants to file patent applications that do not adequately describe the invention. But, that problem can be solved by drafting a provisional application with substantially the same level of detail as you would draft a non-provisional application. When doing so there is nothing wrong with filing a provisional and it can protect the invention in the same manner as a non-provisional patent application. The bottom line is that the content of the application matters. And whether its a provisional or a non-provisional, the content of the application must adequately describe the invention.

Bearing or Avoiding Risks

One problem that individuals, startups, and small businesses face is they need to publicize the invention to obtain feedback to know whether it will be a commercial success. But patent law encourages you to file a patent application before you make your invention public. Do you spend money on having a patent application filed before you have commercial feedback on your invention? The answer with the safest patent position is yes. But the business ideal is to know the commercial prospects before investing substantial sums in the invention and its protection.

The provisional patent application is intended to address that problem by reducing the cost and reducing certain formalities required to file a provisional patent application. Therefore you can get something on file before going public. However, the patent application must still adequately describe the invention. And those cost and formality reducing features of the provisional application increase the risks that the provisional will not support claims in a later non-provisional application, as explained above.

There may be situations where the client has to decide how safe it/he/she wants to be from a patent prospective. There might be scenarios were lack of time or lack of money results in the client deciding to take on more risk. Maybe you didn’t think of filing a patent application until just prior to a public showing, a launch, or sales presentation to a customer. Maybe you don’t have the funds to pay a patent attorney to prepare a full patent application at the present time. Maybe you do not sufficiently know whether this invention commercially justifies the expense of preparing a full patent application.

In business, each owner and decision maker must decide what risks they are going to avoid and which they are willing to bear at any particular time. An attorney prepared patent application is ideal. And if you can’t or don’t want to hire an attorney to draft a full patent application at earliest time, then you are probably going to end up taking some risks.

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Patent Drawings: How To Show Color Without Using Color

The patent rules provide that black and white line drawings are normally required for patent drawings. 37 CFR 1.84(a)(1). There is a rule for filing drawings in color, but it requires filing a petition to allow color drawings and paying a fee (for a utility patent application). MPEP 608.02(VIII). Instead of going that route, you can use certain back and white lining patterns to show color according a USPTO key, which is shown below.

 

USPTO_Line_For_Color

 

This key is provided from MPEP 608.02(IX). Providing the lining pattern on a surface or portion of an element of your drawings will indicate that surface or portion has the corresponding color. You will also want to provide a text description of the drawings indicating that the drawing is lined for color, for example, “portions of the widget 8 of Figure 1 are lined for the color blue.” Or you can be more specific, particularly if multiple colors are lined in the same drawing, such as “the front surface portion 10 is lined for the color blue and the back surface portion 12 is lined for the color orange.”

The lining key is useful for showing color. But if it is important to show a particular shade of a color, then the linking key will probably not work. In that case, you will likely need to follow the rules for filing actual color drawings, petitioning, and paying the fee (for a utility patent application).

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Patent Damages: Compensatory Damages From Sale of a Business with Infringing Products

Lost profits and royalties are not the only way to measure patent damages. In Minco Inc. v. Combustion Eng’g, Inc., 95 F.3d 1109, 1120 (Fed. Cir. 1996), the Federal Circuit recognized that a patent owner might have been entitled to damages resulting from a third parties’ purchase of the infringer’s business, if it had proven that the infringing products were an important factor in the sale.

Patent owner Minco sought damages arising from defendant infringer CE’s sale of its fused silica business to a third party. Minco sought as damages the difference between the sale price of CE’s Business and an expert valuation of CE’s business without the infringing kilns. Minco argued that if CE had not infringed, the third party would have purchased Minco’s business instead of CE’s.

The court recognized that in theory Minco might have been entitled to some recovery from CE’s sale of its business because it included infringing kilns. But, the court determined that Minco did not show that infringing kilns were an important factor in the sale. After the third party acquired CE’s business, the third party switched to its own patented furnace, which undermined Minco’s claim that kilns drove the sale.

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Patent Damages: Reasonable Royalty

A reasonable royalty for the infringer’s use of the invention is one way to measure damages for patent infringement (others include lost profits and established royalties).

A reasonable royalty is a amount determined by a court to result from a hypothetical negotiation between the patent owner and the infringer. The hypothetical negotiation attempts to determine the royalty that the reasonable parties would have agreed to had they successfully negotiated an agreement just before infringement began. Wordtech Sys. v. Integrated Networks Sols., Inc., 609 F.3d 1308, 1319 (Fed. Cir. 2010).  This necessarily involves a degree of approximation and uncertainty.

Courts often consider the Georgia-Pacific factors in determining a reasonable royalty. Those factors are:

1. The royalties received by the patentee for the licensing of the patent in suit, proving or tending to prove an established royalty.

2. The rates paid by the licensee for the use of other patents comparable to the patent in suit.

3. The nature and scope of the license, as exclusive or non-exclusive; or as restricted or non-restricted in terms of territory or with respect to whom the manufactured product may be sold.

4. The licensor’s established policy and marketing program to maintain his patent monopoly by not licensing others to use the invention or by granting licenses under special conditions designed to preserve that monopoly.

5. The commercial relationship between the licensor and licensee, such as, whether they are competitors in the same territory in the same line of business; or whether they are inventor and promotor.

6. The effect of selling the patented specialty in promoting sales of other products of the licensee; the existing value of the invention to the licensor as a generator of sales of his non-patented items; and the extent of such derivative or convoyed sales.

7. The duration of the patent and the term of the license.

8. The established profitability of the product made under the patent; its commercial success; and its current popularity.

9. The utility and advantages of the patent property over the old modes or devices, if any, that had been used for working out similar results.

10. The nature of the patented invention; the character of the commercial embodiment of it as owned and produced by the licensor; and the benefits to those who have used the invention.

11. The extent to which the infringer has made use of the invention; and any evidence probative of the value of that use.

12. The portion of the profit or of the selling price that may be customary in the particular business or in comparable businesses to allow for the use of the invention or analogous inventions.

13. The portion of the realizable profit that should be credited to the invention as distinguished from non-patented elements, the manufacturing process, business risks, or significant features or improvements added by the infringer.

14. The opinion testimony of qualified experts.

15. The amount that a licensor (such as the patentee) and a licensee (such as the infringer) would have agreed upon (at the time the infringement began) if both had been reasonably and voluntarily trying to reach an agreement; that is, the amount which a prudent licensee — who desired, as a business proposition, to obtain a license to manufacture and sell a particular article embodying the patented invention — would have been willing to pay as a royalty and yet be able to make a reasonable profit and which amount would have been acceptable by a prudent patentee who was willing to grant a license.

[Ga.-Pacific Corp. v. United States Plywood Corp., 318 F. Supp. 1116, 1120 (S.D.N.Y. 1970)].

While the Federal Circuit has approved use of the Georgia-Pacific factors, it has also said that they are a comprehensive list but unprioritized and often overlapping. ResQNet.com, Inc. v. Lansa, Inc, 594 F.3d 860, 869 (Fed. Cir. 2010). The factors are also not exclusive in that other factors could be considered.

The Georgia-Pacific factors can be grouped in two categories according to Chisum on Patents. 1-20 Chisum on Patents § 20.07 (2017). The first group is directed to general and specific market conditions in the industry. The second group sets a range of feasible rates “since a willing patent owner would demand a greater than minimum rate for a profitable invention and a willing user would concede no more than the expected amount of profit.” Chisum says that “The first group of factors points to the rate that the parties would have adopted within that range.”

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Patent Damages: Established Royalty

An established royalty is one way to measure damages for patent infringement (others include lost profits and reasonable royalties).

When the patent owner has licensed its patent for comparable acts to those engaged in by the infringer, those prior licenses may define an established royalty rate. The federal circuit has said “When the patentee has consistently licensed others to engage in conduct comparable to the defendant’s at a uniform royalty, that royalty is taken as established and indicates the terms upon which the patentee would have licensed the defendant’s use of the invention.” Monsanto Co. v. McFarling, 488 F.3d 973, 979 (Fed. Cir. 2007).

For prior negotiated royalties to provide an established royalties they need to be: (1) paid or secured before the present infringement, (2)  paid by a sufficient number of persons/entities as to  indicate a general acquiescence in the  reasonableness of the royalty, (3) uniform at the places where the licenses where issued, (4) not paid under threat of suit, and (5) for similar rights or activities as those at issue in the present infringement. Rude v. Westcott, 130 U.S. 152 (1889).

Therefore, in many cases it will be hard to show there is an established royalty unless the patent owner is engaged in a campaign of licensing outside of litigation. Established royalties are different from reasonable royalties, which I will discuss in a later post.

 

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Patent Damages: Lost Profits

A patent infringer is liable to a patent owner for damages adequate to compensate the patent owner for infringement, but no less than a reasonable royalty for the use made of the invention by the infringer. 35 USC 284.

Traditionally, there are three ways of measuring compensatory damages for patent infringement: (1) lost profits, (2) established royalty, or (3) a reasonable royalty. Today I’m going to discuss lost profit damages.

Lost Profits

In order to recover lost profits, the patent owner must “show ‘causation in fact,’ establishing that ‘but for’ the infringement, he would have made additional profits.” Wechsler v. Macke Int’l Trade, Inc., 486 F.3d 1286, 1293 (Fed. Cir. 2007). The “but for” causation asks, if the infringement had not occurred, would the patent owner made the alleged lost profits? If the patent owner is not selling a product, then usually there is no lost profits, except if the patent owner has the ability to manufacture and market the product, but for some legitimate reason is not. Id. 

Courts have allowed patent owners to present “market reconstruction theories showing all of the ways in which they would have been better off in the ‘but for world,’ [a world without the infringement] and accordingly to recover lost profits in a wide variety of forms.” Grain Processing Corp. v. Am. Maize-Products Co., 185 F.3d 1341, 1350 (Fed. Cir. 1999)

Lost profits can arise from a showing that but for the infringement the patent owner would have (1) made greater sales, (2) charged higher prices, or (3) incurred lower expenses.

Courts sometimes use the Punduit test to determine whether the patent owner proved causation for lost profit damages. The Punduit test requires the patent owner to establish: (1) demand for the patented product; (2) absence of acceptable non-infringing substitutes; (3) manufacturing and marketing capability to exploit the demand; and (4) the amount of the profit it would have made. Rite-Hite Corp. v. Kelley Co., 56 F.3d 1538, 1545 (Fed. Cir. 1995) (citing Panduit Corp. v. Stahlin Bros. Fibre Works, 575 F.2d 1152, 1156 (6th Cir. 1978)). 

If there are only two suppliers for the product at issue in the relevant market, the patent owner and the accused infringer, the first two Punduit test factors collapse into one in the two-supplier test. Under the two-supplier test a patent owner must show: (1) the relevant market contains only two suppliers, (2) its own manufacturing and marketing capability to make the sales that were diverted to the infringer, and (3) the amount of profit it would have made from these diverted sales. Micro Chem., Inc. v. Lextron, Inc., 318 F.3d 1119, 1124 (Fed. Cir. 2003). 

Lost Sales or Diverted Sales

When lost sales are the basis for lost profits, the interaction of the patent owner and the infringer in the market is important. “If the patentee and infringer do not sell their products in the same market segment, “but for” causation cannot be demonstrated.” Crystal Semiconductor Corp. v. Tritech Microelectronics Int’l, Inc., 246 F.3d 1336, 1360 (Fed. Cir. 2001)

Reduction in Prices or “Price Erosion”

A reduction of prices by the patent owner caused by the infringing competition is a proper ground for lost profit damages. The patent owner must show that “but for” infringement, it would have sold its product at a higher price. Id.

In a later post I will discuss royalties damages for patent infringement.

Update: A post on established royalties for patent infringement.

Update: A post on reasonable royalties for patent infringement.

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Amazing Woman: Is It Descriptive or Is It a Trademark?

Cathedral Art Metal Co, Inc. sued Nicole Brayden Gifts, LLC for trademark infringement arising from Brayden’s use of the term “Amazing Woman.” The Complaint alleges Brayden’s use of the term on a plate shown below is infringing.

AmazingWoman

Before getting to Brayden’s plate, let’s count the ways that Cathedral’s use of “Amazing Woman” on this plate (left) is not a trademark use.

First, “Amazing Woman” is not provided in a different font type, font size, color, or otherwise distinguished from the surrounding text. Second, it is used descriptively in the phrase “Recipe For An Amazing Woman.” Third, the poem that follows the heading purports to be exactly as the title directs, a “Recipe For An Amazing Woman.” Here’s what the poem on the plate says:

Start with faith and honesty

Mix in pure humility

Add strength of character that rises above the stress of life’s surprises

Fold in personality

Toss with generosity

Pour in love from a heart that’s true

Yield: one terrific, and amazing YOU!

Ask yourself, does “amazing woman” on this plate standout as a trademark? No. A reasonable consumer encountering that plate would not think that “amazing woman” is used to indicate a source of goods. Everything on that plate signals that “amazing woman” is used descriptively to describe how to purportedly “yield” an amazing woman.

The threshold issue for asserting trademark infringement is that the plaintiff has trademark rights. How do you obtain trademark rights? By using the mark as a trademark (or filing an intent to use trademark application and then using the mark as a trademark).

Maybe Cathedral uses Amazing Woman elsewhere in a trademark manner, such as in its catalog, but it does not on this plate.

Ironically, Brayden’s plate provides Amazing Woman in an enlarged and different font from the surrounding text, which is more indicative of a trademark use. But other factors point to a descriptive use such “Recipe for an Amazing Woman” and the poem purports to “yield” an amazing woman:

Start with a strong Woman; not the ordinary kind.

Add in love, compassion caring and consideration combined.

Sprinkle in generosity and kindness and friendship that’s pure and true.

Mix together with a blessing to yield one amazing woman. You!

Cathedral also claims trade dress infringement. The complaint describes the trade dress as including “a stylized presentation of the mark AMAZING WOMAN disclosed against a background of soothing distinctive colors, initially featuring a soft green-and-blue color scheme.” But the plates do not look that similar even setting aside the issue of whether Cathedral has acquired distinctiveness in the alleged trade dress.

Here are some more allegedly infringing products:

AmazingWoman2

Each one of those uses of “Amazing Woman” begins with “You are an” or “Recipe for an” indicating a descriptive use of the words.

Cathedral moved for a temporary restraining order, which, unsurprisingly, was denied. Cathedral has a uphill fight here.

If you want to develop trademark rights in a mark, do not use your mark descriptively. Further, present your trademark in a manner that makes it look like a trademark, e.g. in some way that is distinguished from the surrounding text.

Citation: Cathedral Art Metal Co., Inc. v. Divinity Boutique, LLC, No. 1-18-cv-00141 (N.D.GA 2018).