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Beyond IP Law

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

Jagla Moderates INTA/OHIM Examiner Training Highlighting Business in Regulated Industries and the Regulatory Impact on Trademarks

Posted in Intellectual Property, Trademark

A diverse panel of International Trademark Association (INTA) members met with Office of Harmonization for the Internal Market (OHIM) officials, OHIM examiners and representatives from the national offices in Alicante, Spain, for the 2015 INTA/OHIM Industry Training Seminars organized by INTA’s Government Officials Education and Training Committee. The training took place on October 5 in OHIM’s offices. The theme of this year’s meeting was “Trademarks in Regulated Industries.” The overall premise of the morning session was to acknowledge that there are agencies other than trademark offices involved in the companies’ decisions regarding the selection and use of trademarks.

INTA/OHIM EventRepresenting the alcoholic beverage industry was Jose Ramon Fernandez, Director of European Corporate Affairs for Pernod Ricard. The banking industry was represented by Carrie Hefte, Senior Vice President for Wells Fargo & Company. The pharmaceutical industry was represented by Maria Fernandez-Marquez, Senior European Corporate Counsel for Pfizer GmbH. The tobacco industry was represented by Ronald van Tuijl, Director of Intellectual Property for JT International, SA. The panel was moderated by Frances Jagla of Lane Powell PC.

The morning session was opened by H.M. Bello, Director of the OHIM Academy, and Ronald van Tuijl, President-elect of INTA. The session was attended by Senior OHIM representatives, OHIM examiners, and examiners and representatives from multiple national offices. In addition, over 50 attendees participated via webinar. After introducing their respective companies and responding to specific OHIM questions ranging from the importance of 3D marks to acquired distinctiveness to an overall “how is the office doing,” the panelists described the regulatory realities for their industries. These regulatory discussions helped to provide the examiners with a framework to identify specific challenges to companies doing business in regulated industries. Included in the discussion was the impact of geographical indications in the alcoholic beverage industry; the advent of the e-cigarette and “vaping “ products, and their classification in the tobacco industry;  the  relevant public degree of attention to products in the banking industry; as well as “why are so many trademarks for pharmaceuticals unpronounceable and impossible?” (such characterization was vehemently disputed by Ms. Fernandez-Marquez).

After a networking lunch among the panelists, INTA representatives and Senior Examiners, the afternoon sessions involved breakouts for each industry. The sessions gave the panelists one-on-one time with OHIM to provide additional information regarding their industries, including the challenges faced at OHIM and the national offices. This also gave OHIM the opportunity to ask questions of the panelists and to help define where they can improve upon or add new services to an industry.

Fifty-eight Problems and Trademarks Are Just One: Beyoncé, Jay Z, Kanye, Pharrell and Rihanna Sue Fashion Retailer

Posted in Intellectual Property, Trademark

It’s become a hard-knock life for ElevenParis, a French fashion retailer with stores in the U.S. After selling t-shirts and other merchandise with these not-so-subtle designs:


and this label:


the kings and queens of rap and pop hustled together to bring 58(!) causes of action in a lawsuit filed in the Southern District of New York this week.

Among other claims, the complaint alleges violations of rights of publicity, unfair competition, and trademark infringement and dilution. The claims stem from the artists’ undeniable fame and federal trademark rights in marks such as BEYONCE’, KANYE WEST, CLOTHING BY KANYE WEST, PHARRELL WILLIAMS and RIHANNA. And it doesn’t help the defendants’ case that all of the pop plaintiffs own their own clothing lines, with most using the artists’ names as part of the brands.

The suit does not mince words and alleges that “Defendants are habitual, willful intellectual property infringers that, without authorization, usurp the trademarks, copyrights and other rights of A-list celebrities and world-recognized brands and deceive consumers into purchasing such products at the consumers’ expense and for defendants’ profit.” The allegations accuse defendants of continuing to sell unauthorized products “[e]ven after receiving warnings from Plaintiffs to cease and desist from selling the infringing products and to further cease and desist from using Plaintiffs’ names, images, likenesses and/or trademarks (or any marks colorably similar thereto).”  In addition, the plaintiffs claim that “Most egregiously, as of the date of the filing of this Complaint, Defendants’ ELEVENPARIS store located in New York City boldly offers for sale dozens of infringing merchandise including, but not limited to, the t-shirts and bags shown in the images above. The sale of this merchandise is in direct contravention of both a written agreement with at least one Plaintiff, as well as ongoing settlement discussions in which Defendants have represented and warranted that they are no longer selling infringing merchandise anywhere in the world.”

Sounds like the defendants are in for a fight from the divas who run this town.

Earning Trademarks With Every Coupon?: How Johnson & Johnson Secured the Mark EARNING TRUST WITH EVERY BOTTLE

Posted in Intellectual Property, Trademark

A recent ruling from the Trademark Trial and Appeal Board (“the Board”) found a coupon to be an acceptable specimen for the U.S. Trademark Office (“Office”) showing proper trademark use. Johnson & Johnson submitted the coupon to the Trademark Examiner in support of the mark EARNING TRUST WITH EVERY BOTTLE for their usual line of products: “Facial and skin cleansers; facial and body washes; soaps; shampoos; and body lotions.” The Trademark Examiner issued an Office action in which he found the coupon to be an unacceptable specimen and eventually made the refusal to register final. After remanding to the Examining Attorney after a Request for Reconsideration, the Board finally reversed the refusal and found the coupon to be an acceptable specimen showing use of the mark in commerce.

The decision tracks the language of Section 45 of the Trademark Act (“the Act”) which states that a mark is deemed to be used in commerce when “it is placed in any manner on goods or their containers or displays associated therewith or on the tags or labels affixed thereto.” The holding turned on whether the coupon could be considered a “display” within the meaning of the Act. Ultimately, because the coupon displayed Johnson & Johnson’s goods, showed the applied-for mark next to the goods, identified the retailer where the goods could be bought, and was dispensed to the customer in the very store where the goods were located, the Board found that the presentation of the coupon to the customer began the association of the mark with the goods.

So does this mean that every clipping from the Pennysaver is enough to earn trademark rights? Probably not. But with a well-known brand and a coupon that nails the specifics of mark identification, the decision could represent a foot in the door for more creative point of sale “displays.”

Are Transitory Signals Patent-eligible?

Posted in Intellectual Property, Patent

Computer software patents have been receiving significant upset overturn in validity since the well-known U.S. Supreme Court decision providing certain exceptions to patent eligible subject matter under 35 U.S.C. § 101,  Alice Corp. v. CLS Bank International came out Alice Corp. v. CLS Bank International, 573 U.S. __, 134 S. Ct. 2347 (2014). Since Alice, the Federal Circuit and other courts have been following the Alice decision and struck many presumably-valid U.S. patents as invalid without providing breakthroughs of how to overcome the 35 U.S.C. § 101 rejections to patent law practitioners.

On September 29, 2015, the Eastern District of Texas denied a summary judgment motion by Google Inc. and YouTube LLC to invalidate SimpleAir, Inc.’s two patents, Patent Nos. 8,572.279 and 8,601,154 by finding that the two patents are not directed toward an abstract idea (SimpleAir, Inc. v. Google Inc. et al.). The two patents cover systems and methods for transmitting data to remote computing devices through a “central broadcast server.” In this case, the District Court applied the two-prong Alice test including “ineligible concept” step and “inventive concept” step and found that the first “ineligible concept” test is satisfied. The Court stated that Google summarized the patents as “packaging and transmission information” and “do not explain how such a characterization, which ignores significant claim limitations, encompasses the invention claimed” by SimpleAir. Even though the Court did not disagree about the patents suggesting “implementation of the abstract idea of ‘packaging and transmitting information’” at some level, the Court’s role is not to “reach into a patent and extract an abstract idea,” rather to “examine” the patents and “determine whether they are directed to an abstract idea.” In this respect, the District Court has put forth a ruling that would appear to support the concept that transitory signals may, in fact, be patent eligible — an area long-held by Examiner to be off-limits.

Another interesting aspect of this decision is that the Court did find “a central broadcast server,” “a data channel,” and “transmitting information whether the user was online or not online to a data channel to an information source” are sufficient to show “significantly more than a patent on that abstract idea [of transitory signals]” to satisfy the Alice “inventive concept” step by heavily construing a “wherein-clause” in the claim language.  Further, the Court did not buy an argument by Google that “data-transmission steps can be carried out using standard prior art protocols, carriers, and networks’ and claimed invention [was] ‘well-understood, routine, and purely conventional’” as the Court is asked to determine “whether the function performed by the computer at each step of the process is ‘[p]urely conventional.”

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.