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Beyond IP Law

A look at what's going on in the world of intellectual property.

A Clean Sweep for F. Hoffmann-La Roche Domains

Posted in Domain Name, Intellectual Property

Healthcare giant, F. Hoffmann-La Roche (Roche) filed for and was awarded the transfer of 74 domain names that had been registered by multiple individuals. Roche had filed with the World Intellectual Property Organization (WIPO), for the cancellation and transfer of domains that included Roche’s pharmaceutical product names Accutane, Bactrim and Xenical. The domains were allegedly held by members of a criminal network and a known cybersquatter.

The most interesting aspect of this case is that Roche was able to combine several different respondents under a single complaint. The domains were in the name of more than half a dozen different individuals allegedly located in Russia and China. The WIPO terms allow for the Consolidation of Proceedings where either the domains are owned by the same individual or entity, or that the complainant can demonstrate that the disputed names or websites that the domains resolve to are subject to common control and that the panel determines that consolidation would be procedurally efficient, fair and equitable to all parties. Respondents failed to file any response.

The second issue that the WIPO panel faced was the determination of which language should be used. The panel determined that English should be the language of the proceeding based upon the determination that the Respondents were part of a criminal enterprise in an earlier domain dispute which was conducted in English without any objections, the domain names incorporate only English words and phrases, showing that the Respondents should be capable of communicating in English, several of the domains had identical contact information which was subject to English registration agreements, the fact that the proxy server for the domains was located in China does not necessarily mean that the registrants were located in China, and that to conduct separate parallel proceedings in Chinese would serve to add costs and delays to the process. Finally, all communications regarding the complaint were sent to the parties in both English and Chinese.

The panel confirmed that the domains were identical or confusingly similar to Roche’s trademarks, that the respondents had no right or legitimate interest in the trademarks and that the domains were registered and used in bad faith. The link to the WIPO decision can be found here.


Living Next Door to Alice

Posted in Intellectual Property, Patent

Those who practice patent law in the computer arts before the USPTO are well aware of dealing with 35 U.S.C. § 101 rejections of claims due to alleged lack of patentable subject matter when claiming so-called “abstract ideas.” Such recent rejections have been euphemistically referred to as “Alice” rejections due to the Supreme Court case Alice Corp. v. CLS Bank International, 573 U.S. __, 134 S. Ct. 2347 (2014). As to what constitutes an actual abstract idea, one could go round and round about legal definitions. This very round and round is playing out at various levels in various federal courts of law.

In a new recent round, DataTern, Inc. v. MicroStrategy, Inc., is a patent infringement lawsuit on remand from the Federal Circuit, where the District Court has now denied a motion for summary judgment based upon the patent being asserted as directed to merely an abstract idea. Specifically, “[t]he Federal Circuit has described the [patent-in-suit] as . . . ‘directed to interfacing an object-oriented software application to access data stored in a relational database. . . creating ‘interface objects’ that act as intermediaries between the object oriented application and the relational database.’ . . . [W]hen read as a whole, the patent here does not recite a computer as a post-solution limitation or a specific application of a more generic abstract idea. Rather, the [patent] is directed at solving a problem that specifically arises in the realm of computing; indeed, object-oriented programs exist only in the realm of computers, and relational databases are utilized primarily, if not exclusively, on computers.”

A take-away here then is that patent claims directed to solving a specific problem are seen more and more as patent-eligible subject matter capable of escaping the gravity of the black hole known as Alice.

Concerned (or not) that the same three-judge panel makes the IPR institution decision and conducts the trial? The USPTO wants to hear from you.

Posted in Intellectual Property, Patent

On Tuesday, August 25, the United States Patent and Trademark Office (USPTO) opened for public comment a proposed pilot program for inter-partes review proceedings (IPRs), one of the patent post-grant review proceedings made available under the Leahy-Smith America Invents Act. IPR proceedings have two phases: the institution phase and the trial phase. Currently, during the institution phase, a panel of three Administrative Patent Judges (APJs) reviews the IPR petition and decides whether some or all of the patent claims challenged in the petition should proceed to the trial phase. The trial phase is then conducted by the same three-APJ panel.

The USPTO’s proposed pilot program will change the composition of the institution and trial-phase panels. First, it will limit the institution phase to a single APJ. Then, after the institution decision has been made, the trial-phase panel will be comprised of the institution-phase APJ and two other APJs who were not involved in the institution decision. The USPTO cites increased efficiency as the main goal of the pilot program. But presumably the USPTO also hopes the new program will alleviate concerns about actual or perceived bias during the IPR process.

The USPTO will be soliciting public comments on the proposed pilot program through October 26.

The Dot-com Era Is Over, Welcome to .Anything

Posted in Domain Name, Intellectual Property, Trademark

For both new and existing businesses, new generic top-level domains (gTLDs) offer increased flexibility and opportunities for an expanded online presence. A gTLD is the part of a web address that comes after the “dot” (“.”). Historically, gTLDs were limited to only a few, such as “.com,” “.org” or “.net.” However, in 2012, the Internet Corporation for Assigned Names and Numbers (ICANN) began accepting applications for new gTLDs, and the first new gTLDs went live in 2013. Some of the new gTLDs are company and brand names such as .Abbot or .Amex, while others are descriptive, for example, .book, .clothing, .flowers and .pharmacy. A list of the new gTLDs and their release dates can be found here. The trademark issues arising out of the new gTLDs are many — here we explore their impact on trademark applications both for new applicants and existing trademark holders.

Generally, the new gTLDs will have little impact on the trademark application process aside from choices for trademarks that might also double as domain names. That is, the process to register yourname.shopping will be the same as the process that has applied to registering yourname.com. In both instances, the mark must be distinctive and in use. In addition, unregisterable matter, such as descriptive or generic terms and non-source-identifying gTLDs may need to be disclaimed. In our example, “.com” and “.shopping” are both technically unregisterable matter. With that said, in many instances the U.S. Patent and Trademark Office (USPTO) has allowed such marks to register, without any disclaimer of the “.com” or “.shopping” portion of the mark. Thus, applications for marks that include a non-source-identifying gTLD are likely to receive the same treatment by the USPTO as marks did before the introduction of the new gTLDs.

If a gTLD has source-indicating significance (.yourbrand), it may be registrable as a trademark. However, not every gTLD will qualify as a trademark. If the proposed mark is perceived merely as part of a website address, it will not be registrable. In addition to the requirement that the trademark is source-identifying, the applicant of such a mark will have to show that (1) he/she has registered the gTLD with ICANN, and (2) the services provided will primarily be for the benefit of others. As of now, there are few businesses or individuals that have taken advantage of this new trademark opportunity. But as these new gTLDs are launched and their presence becomes increasingly important, we may see an increasing number of trademarks composed solely of new gTLDs.

Do-It-Yourself Trademarks — Part II

Posted in Intellectual Property, Trademark

In a recent blog post, we talked about how it is possible in the U.S. to file a trademark application on your own, and why it may not be such a good idea. Besides having a working knowledge of classes of goods and services, dates of first use and the need for searching, there is another good reason why you may want to not file yourself: The Dreaded Third-Party Service Offerings.

These third-party communications look, feel and smell like genuine invoices, asking the U.S. applicant to pay upwards of $2,000 per “recordation of trademark.” They come from official-sounding organizations such as “International Patent and Trademark Organization (IPTO)” or “World Patent & Trademark Services (WPTS).” Furthermore, they don’t look to be service offerings — the letters appear to be an invoice for work already completed. The letters may even look as if they come from the U.S. Patent and Trademark Office (USPTO) or a foreign trademark office. Regardless of source, they look official and are a genuine scam.

Recently, a mark we are responsible for went to registration. The address for service in the registration was to our attention. On a single day, we received four different letters (in separate envelopes) from four apparently different organizations. Each one resembled an invoice and was for a different amount of money (the least of which was $2,400 U.S.).  If the applicant decided that they should pay all of these, their modest U.S. application fee could quickly turn into a $10,275 fee.

When reviewing these solicitations, you will see that the terms and conditions of the “agreement” appear on the back of the invoice in the very lightest of colors and the smallest of fonts in which they disclaim any association with a government agency. The USPTO has issued warnings on its website and in the communications to applicants upon the electronic filing of the applications. See: http://www.uspto.gov/trademarks-getting-started/non-uspto-solicitations and each new application receives the following paragraph as part of the USPTO standard response:

WARNING ABOUT UNSOLICITED COMMUNICATIONS: You may receive trademark-related communications from private companies not associated with the USPTO. These communications frequently display customer-specific information, including your USPTO serial number or registration number and owner name, and request fees for trademark-related services, such as monitoring, listings in international publications, and document filing. None of the companies offering these services are affiliated with the USPTO or any other federal agency. All official correspondence will be from the “United States Patent and Trademark Office” in Alexandria, VA, and if by e-mail, specifically from the domain “@uspto.gov.” Please consult the “Warning” page on the Trademarks section of the USPTO’s website for further information about unsolicited communications and to view representative examples of them. For general information on filing and maintenance requirements for trademark applications and registrations, including fees required by law, please consult www.uspto.gov, contact the TrademarkAssistanceCenter@uspto.gov or telephone 1-800-786-9199.

Forewarned is forearmed! If you didn’t ask for a filing to be done, be cautious about these types of communications.


A Flurry of PTAB Activity

Posted in Intellectual Property, Patent

Since the passing of the America Invents Act, a number of already issued patents have come under new scrutiny through various post-grant procedures. One of the more prominent post-grant procedures is the Inter Partes Review (IPR) available to any party wishing to challenge the validity of any issued patent after nine months beyond issuance. Another post-grant procedure is to challenge the issued patent’s validity as being directed to a Covered Business Method (CBM). Upon seeking an IPR or a CBM review, a panel of three judges from the Patent Trial and Appeal Board (PTAB) reviews the issued patent as if it were still pending given new evidence submitted by a petitioner for review. The petitioner and the patent owner are afforded opportunities to argue their respective positions and the PTAB may then find various claims as valid or invalid going forward.

However, once the PTAB issues a ruling, it has proven very difficult to overturn this ruling on appeal at the Court of Appeals for the Federal Circuit (CAFC). The CAFC has given great deference to the PTAB in determining validity or invalidity. Therefore, it has proven nearly impossible, so far, to win an appeal of a PTAB ruling. Two recent examples continue this trend.

In VERSATA DEVELOPMENT GROUP, INC. v. SAP AMERICA, INC., SAP AG, the CAFC affirmed that the PTAB correctly invalidated U.S. Patent No. 6,553,350 that was directed to a computer-based method for software customizing pricing based on factors such as the particular customer, product and size of the order. What was striking about the decision was that Versata had argued that the CBM review was only available to “banking” related patents. But the CAFC rejected this notion and affirmed invalidly on CBM grounds wherein CBM review may apply to any patent having anything related to money.

In the case of IN RE CUOZZO SPEED TECH, the CAFC reviewed the PTAB’s very first IPR decision. Here, the CAFC held that the CAFC lacks jurisdiction to review the PTAB’s decision to institute IPR; that the PTAB has statutory rulemaking authority in determining that patent claims subject to an IPR should be given their “broadest reasonable interpretation,” and that the PTAB properly denied Cuozzo’s motion to narrow its claims in order to avoid the prior art.


IKEA Wins in pimpmyikea.com and Thirty Other Domain Name Challenges

Posted in Domain Name, Intellectual Property

Ikea Systems BV of the Netherlands filed with the World Intellectual Property Organization (WIPO) for the transfer of multiple domain names registered by Michael Herman, an individual located in North Carolina. These domains included names such as custom4ikea.com, ikeaaftermarketparts.com, ideaikea.com, pimpmyikea.com, ikeaaftermarket.com, etc. A full list of domains and the Administrative Panel Decision can be found here. Mr. Herman allegedly was using the domains to steer traffic to a website featuring adult content including pornographic pictures, videos and toys.

Mr. Herman did not respond to the complaint filed by Ikea.

The sole panelist writing the Administrative Panel Decision determined that Ikea was, indeed, a famous mark. Therefore, “well known marks with inherent distinctiveness have the right to prevent any use in relation to any goods and services under trade mark law.” In addition, the panelist found that the marks were identical or confusing similarity in that many of the additional terms (idea, aftermarketparts, custom4, etc.) appear to be pertinent to Ikea’s business. (Author’s note: It would be difficult to imagine Ikea using a domain such as pimpmyikea.com notwithstanding.) The panelist found that Mr. Herman did not have any rights or legitimate interests in the Ikea name and that Ikea had not granted consent to use the domains. Finally, the decision confirmed that the domain names were registered and used in bad faith “by using the domain name [the Respondent] has intentionally attempted to attract, for commercial gain, Internet Users to [its] website or other on line location, by creating a likelihood of confusion with the Complainant’s mark as the source, affiliation or endorsement of [its]website or location or a product or service on [its] website or location.”

Should You File Trademark Applications on Your Own?

Posted in Intellectual Property, Trademark

A recent article published by World Trademark Review talked about the pros and cons of individuals filing their own trademark applications without the benefit of experienced trademark counsel. First and foremost, individuals may file for their trademarks on their own, and non-lawyers within corporations can file for trademark applications for their company, without using an attorney. Individuals who are not attorneys may not file trademark applications on behalf of other individuals or corporations. Unlike with non-lawyer “Patent Agents,” who may be members of the Patent Bar without having a law degree, the U.S. does not allow for the concept of a “Trademark Agent.”

The real question is “should you file an application without the benefit of counsel?” Of course, the legal opinion on this is “it depends.” First, you must know the rules regarding filing (complete application, proper identification of goods and services, understanding the “intent-to-use” versus the “use-based” application, what is the date of first use, etc.). If the filer is only going to be filing for a finite set of goods, and those goods are identified in the USPTO Manual of Acceptable Goods and Services, and there is little likelihood of expanding the offerings beyond those finite goods, then the answer is “maybe.” If the filer has already conducted at least a screening search, preferably beyond the USPTO website, including both a BING and a Google search, then the answer is a less-qualified “maybe.”

Mr. LeHocky, the “Trademark King” profiled in the linked article, provides an excellent example of where qualified counsel can save a filer time and money.  Mr. LeHocky must have spent in excess of $40,000 in Trademark Office filing fees, alone (the USPTO does not give volume discounts!).  An experienced lawyer would have advised him not to bother filing to register all these marks with “.com” following the name (Disney.com, BMW.com, etc.), as the Trademark Office generally does not allow for trademark registrations that include the .com.  Not to mention that Disney, BMW, et al. just might oppose the trademark filings, in the very unlikely event that the Trademark Office allowed the applications to go to publication.  Famous people and big companies have people that look out after their brands and publicity rights.  Furthermore, Mr. LeHocky’s description of the “use” he intends to make of the marks is problematic.  He described intended use with the statement “selling or leasing to anyone in the world for a legal business activity.”  This creates even more issues for Mr. LeHocky, as U.S. trademark practice tends to frown upon the banking and selling of trademarks without a legitimate intent to use the mark.


Posted in Uncategorized

            It’s a marathon – not a sprint.  Entrepreneurs working on starting-up hear this mantra all the time.  What does it really mean?  The mantra speaks to the strategy most marathoners take on race day:  start slow, come up to a sustainable pace, and finish strong.  However, it does not speak to all the preparation that must be done before race day.    This post is the first of two in which I will discuss what it means to start-up like a marathoner.

Find Your Race

            Before a marathoner starts training, she determines the race she wants to run, pays all race fees, and puts the date on her calendar.   She needs to know what her goals look like before she starts training.  Similarly, before starting-up, an entrepreneur must know, at a minimum: the product/services she will be selling, what the market looks like, what her competition looks like,  what her business entity will look like, and what her budget will look like.  This is the easiest step – committing to the race.

Developing a Training Plan

            The next step can be a bit overwhelming – developing a training plan.  The marathoner will schedule her life for 16 weeks before the race date.  She will commit to a training plan that includes an assessment of her current conditioning, goals for race day, and a day to day training plan.  At the end of this process she will know how long she will run each day, how fast she will want to run each day, and what she needs to do to make herself faster.  Having a training plan “in her head” will never work.  It is too easy to lose focus of long term goals when she becomes mired down in the day to day business of training.  She will let her friends and family know of training and race plans and ask for their support.  She cannot be successful unless her family and friends buy into her singular focus over the next 16 weeks.

            Similarly, the entrepreneur must develop a business plan determining what her end game (race day) will look like and what she needs to do to get there successfully.  The entrepreneur needs to commit to a business plan that includes, at a minimum: a business summary, a marketing plan, and a management description (i.e. LLC, Partnership, Corporation, etc.).       The entrepreneur will need support from her friends and family.  A spouse may need to commit to paying the household bills for a couple of years before the start-up turns a profit.  The entrepreneur’s friends may be her first marketing team- telling their contacts of the start-up’s services/products, helping find investors, or investing themselves.  There is a reason that a start-up’s first round of funding is called the “friends and family round.”


            The day that training starts, the marathoner is excited.  She is up early for her training runs: 4:00 am on most weekdays and 6:00 am each Saturday.  She looks forward to building strength on cross training days.  On good training days she will be convinced that she could qualify for the Boston Marathon; on bad trading days she will curse herself for even starting the endeavor.  Eventually, training gains will become more difficult to come by and they will not be as big as they were early on in training.  The marathoner keeps going because she has a goal.  She knows that if she does not keep to her training plan, she will fail.  However, this does not mean that the training plan is inflexible.  It would be unproductive to train when she is feeling overly fatigued.  Most importantly, the marathoner will cherish each and every rest day.  These are days when no training happens; the marathoner gets to sleep in and spend time reading or watching television.  Without these rest days the marathoner’s training may be for nothing in the end.  Without rest, the marathoner is more likely to get injured during training or  peak before the race.

            In the same way, the entrepreneur is excited when she finally starts working on building her start-up.  She is up early most morning and works late most nights.  However, the entrepreneur will hit some road blocks.  Her first round of funding may flop.  Shee may have production/development issues.  Eventually, starting-up may not be fun or exciting.  On some days the entrepreneur will feel like she will be the next Steve Jobs; on other days she will feel like she will end up in bankruptcy court. However, like the marathoner, the entrepreneur must keep working toward her goals and maintain her focus.  Her business plan must be flexible enough to deal with these issues.  And, most importantly, the entrepreneur must be careful to take some rest days; days to read a book, watch television, or exercise.  The entrepreneur will simply burn out without these rest days.

Race Day

            Finally, it’s race day!  Remember the mantra. The marathoner will start out slow for the first few miles, pick up speed as the race goes on into a steady pace and if all systems are go, sprint the last few miles. If the marathoner goes out too fast, she will not finish the race strong.  Others will pass her during those first few miles and it will take all of her will to stay on plan.  Finishing the race strong and feeling good is the marathoner’s end game.

            Race day will look different for each start-up.  For some entrepreneurs, race day may be getting 5,000 units of product to its point of sale.  For another start-up, licensing software to a new client will be key.  Whatever race day looks like for the entrepreneur, her goal is to get there and finish strong.  Now she can look back and say that she did it.

            So as you see, starting-up is like running a marathon.  But it’s more than what happens on race day.   And you may ask how I know this?  I “wrote” this blog post while running on one of my long training days which consisted of 3.25 hours of running followed by an hour on my bike.  My next marathon is in June.

An Entrepreneur’s Guide to Success

Posted in Uncategorized

My parents and I immigrated to the United States when I was 5 years old.  My mother would tell me that “the United States is the only place left in the world where a pauper, with enough hard work and ingenuity, could turn into a prince.”  Among the many adventures my parents took me on, one was in the world of start-ups.  My father, a Ph.D Geologist, and my mother, a Ph.D Nuclear Engineer, decided that they were going to open a dry cleaning business.  They developed a chemical combination that would remove stains and “browning” from any material.  Even though they had a great idea, the business eventually failed. With that, my lifelong interest in entrepreneurs and start-ups began.

Today, almost on a daily basis, I speak to entrepreneurs, advising them on how to best commercialize their intellectual property.   And I work with many folks here at Lane Powell who are very good at advising start-ups on how, when, and where to look for and invite in investors.   There are times that I send a client away to do more work before moving forward with his case;   the most common reason being that the entrepreneur does not have a clear vision of where he is going and how much money he needs to get there.  I am always looking for checklist and books to hand these entrepreneurs.  The other day, while browsing, I found a book that will be added to my must-read list for entrepreneurs:  “Start on Purpose: Everything You Need to Know and Do Startup” by author Susan Scherter.  Ms. Scherter has an MBA with a background in finance and regularly provides guidance to entrepreneurs providing direction on how to start-up.

Ms. Scherter’s book provides detailed checklists of everything an entrepreneur needs to think of  prior to starting up.   Each checklist is accompanied by detailed reasoning  of why an entrepreneur should be thinking about particular  issues.  These lists are very thoughtfully put together.  The intellectual property section is right on point.    I would have wanted Ms. Schreter to address the difference between do-it-yourself legal services such as LegalZoom™ and retaining a law firm.   Entrepreneur’s often ask about this issue — a neutral perspective would be helpful.  Ms. Schreter’s book is one that an entrepreneur will go back to over and over again.

As always, I read the acknowledgements because I think it reveals interesting insight about the Author.  I was excited to see that Ms. Schreter works closely with SCORE, a group of retired CEO and other business professionals who give their time to help entrepreneurs;  I often refer clients to this program, and am pleased to say that they often refer clients to me.  Also, Ms. Schrether works with the Small Business Administration (“SBA”); another important group we have in common.  I often participate in SBA workshops.   Then I saw that Ms. Shrether acknowledged my good friend and colleague Steve Winters, an extra-cool, intellectual property lawyer here at Lane Powell.   Steve helped Ms. Shreter edit the intellectual property section of the book.  All green lights for Ms. Schreter.

Thank you Ms. Schreter, for crafting the go-to book that all entrepreneurs needed.  And I am sure if my parents had this book and started on purpose, their business would have most likely succeeded.

Oh, and what ever happened to my parents?  They spent the rest of their lives in very successful science careers (the business world was not for them).  My mother, after retiring from her first career, went back to teach science and math at a high school where most kids are considered ‘at risk.’  My father retired and became active in politics.