Intellectual Property Review—Updates and
Transcription
Intellectual Property Review—Updates and
Intellectual Property Review—Updates and Changes from 2012 Cosponsored by the Intellectual Property Section Friday, February 15, 2013 9 a.m.–1:30 p.m. Oregon State Bar Center Tigard, Oregon 4.25 General CLE credits Intellectual Property Review—Updates and Changes from 2012 Section Planners Devon Zastrow Newman, Schwabe Williamson & Wyatt PC, Portland Thomas J. Romano, Kolisch Hartwell PC, Portland OREGON STATE BAR Intellectual Property Section EXECUTIVE COMMITTEE Devon Zastrow Newman, Chair Timothy S. DeJong, Chair-Elect Karen Wetherell Davis, Past Chair Anne E. Koch, Treasurer Thomas L. Evans, Secretary David Stanley Aman Allen Field Ian D. Gates Kevin M. Hayes Lydia Pallas Loren Robert Lyman Parna A. Mehrbani Elizabeth Tedesco Milesnick David C. Ripma Thomas J. Romano John D. Russell Thomas E. Vesbit The materials and forms in this manual are published by the Oregon State Bar exclusively for the use of attorneys. Neither the Oregon State Bar nor the contributors make either express or implied warranties in regard to the use of the materials and/or forms. Each attorney must depend on his or her own knowledge of the law and expertise in the use or modification of these materials. Copyright © 2013 OREGON STATE BAR 16037 SW Upper Boones Ferry Road P.O. Box 231935 Tigard, OR 97281-1935 Intellectual Property Review—Updates and Changes from 2012 ii Table of Contents 1.Developments in Copyright Law 2012—Presentation Slides . . . . . . . . . . . . . . . . . . 1–i —Alicia M. Bell, Miller Nash LLP, Portland, Oregon — Elizabeth Tedesco Milesnick, Miller Nash LLP, Portland, Oregon 2A. Patent Litigation in 2012—Presentation Slides . . . . . . . . . . . . . . . . . . . . . . . . . 2A–i —Dave Bourgeau, Kolisch Hartwell PC, Portland, Oregon 2B.America Invents Act (AIA) Implementation in 2012—Presentation Slides . . . . . . . . . 2B–i — Peter David G. Sabido, Kolisch Hartwell PC, Portland, Oregon 3. Trademark Law Review—2012 Cases and Trends . . . . . . . . . . . . . . . . . . . . . . . . 3–i —Matthew R. Wilmot, Schwabe Williamson & Wyatt PC, Portland, Oregon 4. State of USPTO Operations—Presentation Slides . . . . . . . . . . . . . . . . . . . . . . . . 4–i —Mary Boney Denison, Deputy Commissioner for Trademark Operations, U.S. Patent and Trademark Office, Alexandria, Virginia Intellectual Property Review—Updates and Changes from 2012 iii Intellectual Property Review—Updates and Changes from 2012 iv Schedule 8:00Registration 9:00 Copyright Law Review F Fair use in the educational context (Cambridge University Press v. Becker and The Authors Guild v. Hathitrust) F Restoring copyright protection for foreign works (Golan v. Holder) F The first sale doctrine and foreign-made goods (Kirtsaeng v. John Wiley & Sons) F Work for hire in the Ninth Circuit (U.S. Auto Parts Network Inc. v. Parts Geek LLC) F Recent copyright decisions in mobile gaming Alicia M. Bell, Miller Nash LLP, Portland Elizabeth Tedesco Milesnick, Miller Nash LLP, Portland 10:00 Patent Law Review F Important updates on implementation of the America Invents Act (AIA) F Subject matter eligibility (Mayo v. Prometheus) F Inducement (Akamai Tech. v. Limelight Networks) F Software patentability (CLS Bank v. Alice Corp.) F Hindsight bias (Mintz v. Dietz & Watson) F Nonobviousness (Alcon Research and Transocean) Dave Bourgeau, Kolisch Hartwell PC, Portland Peter David G. Sabido, Kolisch Hartwell PC, Portland 11:00Break 11:15 Trademark Law Review—2012 Cases and Trends F Federal cases F Trademark Trial and Appeal Board (TTAB) F Practical impact of new generic top level domains (gTLDs) F Potential legislation affecting brand owners (Nike, Inc. v. Already, Inc. dba Yums) F Prosecution trends Matthew R. Wilmot, Schwabe Williamson & Wyatt PC, Portland 12:15 Lunch Presentation: “Recent Developments at the USPTO” Guest Speaker: Mary Boney Denison, Deputy Commissioner for Trademark Operations, U.S. Patent and Trademark Office, Alexandria, VA 1:30Adjourn Intellectual Property Review—Updates and Changes from 2012 v Intellectual Property Review—Updates and Changes from 2012 vi Faculty Alicia M. Bell, Miller Nash LLP, Portland. Ms. Bell is a member of Miller Nash’s business group and focuses her practice on intellectual property, business owner exit planning, and general business and corporate transactions. Her intellectual property experience includes enforcement of clients’ intellectual property rights and registering, maintaining, and licensing copyrights and trademarks. In addition, she has helped clients develop website policies and investigate and handle online infringement issues, including domain name disputes and Digital Millennium Copyright Act compliance. Ms. Bell also works in the areas of corporate governance, business transactions, and contract preparation and review. She helps clients develop internal policies consistent with the clients’ governing documents and state and federal law. Her experience also includes mergers, acquisitions, and drafting and reviewing service and employment agreements. Dave Bourgeau, Kolisch Hartwell PC, Portland. Mr. Bourgeau’s practice includes all aspects of intellectual property law, including patent, trademark, copyright, and trade secret matters. He also works on litigation issues. Mr. Bourgeau has a strong technical background in industrial and nuclear engineering and extensive practical experience in manufacturing and business—prior to graduating from law school, he worked as a nuclear power–trained officer in the U.S. Navy, where he was in charge of reactor controls and electrical systems, and as an engineer and manager in the automotive, shipping, and food industries, focusing mainly on manufacturing systems and equipment, software application development, process design, complex planning, and business intelligence. Mr. Bourgeau is a member of the Multnomah Bar Association and the American Bar Association. Mary Boney Denison, Deputy Commissioner for Trademark Operations, U.S. Patent and Trademark Office, Alexandria, VA. Ms. Denison has held her current position since 2011; she is responsible for management of trademark examination, trademark budget, and outreach, coordinating policies and activities of the Trademark Organization in support of trademark policy, process, and examination; providing strategic direction, program management, and administrative oversight to meet performance goals; and project management for the integration of technology and business processes to support electronic systems and processing. Previously she was in private practice in Washington, DC, and New York City. From 2008 through 2011, Ms. Denison served as a member of the nine-person U.S. Trademark Public Advisory Committee. She is past chair of the International Trademark Association. She is admitted to practice in New York and Washington, DC. She is a regular speaker and author on intellectual property topics and has been interviewed on National Public Radio and CNN. Elizabeth Tedesco Milesnick, Miller Nash LLP, Portland. Ms. Milesnick is an attorney with broad experience in intellectual property matters, particularly patent and trademark litigation. She is also experienced in trademark practice before the Trade Trial and Appeal Board (TTAB), in various aspects of patent, trademark, and copyright licensing, and in matters related to trade secret misappropriation and unfair competition. Ms. Milesnick also practices general commercial litigation and admiralty law. In 2008, Ms. Milesnick was appointed as an Adjunct Instructor at the University of Oregon School of Law to teach Patent Law and Policy. Her three-credit class discusses developments in patent law, including patentable subject matter, requirements for patentability and infringement, the process of enforcing and obtaining a patent, and contemporary controversies in patent law. Intellectual Property Review—Updates and Changes from 2012 vii Faculty (Continued) Peter David G. Sabido, Kolisch Hartwell PC, Portland. Mr. Sabido’s practice includes obtaining, licensing, and enforcing patent, trademark, copyright, and trade secret rights for his clients. His practice also includes analyzing and opining on the patentability and right-to-manufacture of inventions, the validity and infringement of patents, and the usability and registrability of trademarks and service marks. Prior to his legal career, Mr. Sabido was a senior engineer at Intel Corporation and before that a consultant for Arthur D. Little, Inc., where he performed safety reviews of various chemical, petroleum, and municipal facilities. Mr. Sabido is a member of the Oregon Minority Lawyers Association and the Oregon Asian Pacific American Bar Association. Mr. Sabido is admitted to practice in Oregon and California and before the U.S. Patent and Trademark Office. He is also a Registered Professional Engineer in California and a Certified Safety Professional (Retired). He is a regular speaker and author on technology and intellectual property topics. Matthew R. Wilmot, Schwabe Williamson & Wyatt PC, Portland. Mr. Wilmot is an intellectual property attorney specializing in trademark, trade dress, unfair competition, trade secret, copyright, domain name issues, and litigation of complex intellectual property matters. His practice focuses on searching and clearing trademarks, prosecuting domestic and international trademark applications, development and maintenance of trademark portfolios, intellectual property licensing and agreements, copyright and trademark counseling, and enforcement of intellectual property rights. Mr. Wilmot has successfully represented clients in intellectual property litigation matters in both state and federal courts, as well as before the Trademark Trial and Appeal Board. Mr. Wilmot is a member of the Oregon State Bar Intellectual Property and Business Litigation sections, the Multnomah Bar Association, the International Trademark Association, and the Oregon Business Association Good Government Committee. He is admitted to practice in Oregon and California. Intellectual Property Review—Updates and Changes from 2012 viii Chapter 1 Developments in Copyright Law 2012—Presentation Slides Alicia M. Bell Miller Nash LLP Portland, Oregon Elizabeth Tedesco Milesnick Miller Nash LLP Portland, Oregon Chapter 1—Developments in Copyright Law 2012—Presentation Slides Intellectual Property Review—Updates and Changes from 2012 1–ii Chapter 1—Developments in Copyright Law 2012—Presentation Slides Developments in Copyright Law 2012 Alicia Bell Elizabeth Milesnick Fair Use of Digitized Books in the Educational Context • Two cases –Cambridge University Press v. Becker (N.D. Ga.) –The Author’s Guild v. HathiTrust (S.D. New York) Intellectual Property Review—Updates and Changes from 2012 1–1 Chapter 1—Developments in Copyright Law 2012—Presentation Slides Cambridge University Press v. Becker Background • Publishers sued for University’s use of digital excerpts • University system posted a new copyright policy with “fair use” checklist after suit was filed • Question: Whether the new copyright policy caused infringement • Answer: Only in 5 out of 75 cases Cambridge University Press v. Becker Fair Use Analysis • 1 – Purpose and character of use – Obvious statutory exception (§107) – Defendants win • 2 – Nature of the copyrighted works – Informational – Defendants win Intellectual Property Review—Updates and Changes from 2012 1–2 Chapter 1—Developments in Copyright Law 2012—Presentation Slides Cambridge University Press v. Becker Fair Use Analysis • 3 – Amount and substantiality of the use (new formula) – – – – Books with fewer than 10 chapters – 10% or less Books with 10 or more chapters – 1 chapter or equivalent Limited access Narrowly tailored to demonstrated, legitimate purpose • Winner depends on whether each excerpt is below threshold Cambridge University Press v. Becker Fair Use Analysis • 4 – Effect on Potential Market for/Value of Work – Copyrighted works are books, not chapters – Question is market substitution – Limited access • Winner depends on whether licensed excerpts are available Intellectual Property Review—Updates and Changes from 2012 1–3 Chapter 1—Developments in Copyright Law 2012—Presentation Slides Cambridge University Press v. Becker Fair Use Analysis • Additional factors considered – “Limited unpaid copying of excerpts will not deter academic authors from creating new academic works” – “The slight limitation of income from licenses caused by fair use will not diminish plaintiff’s ability to publish scholarly works and will promote the spread of knowledge” Cambridge University Press v. Becker Lessons Learned • New bright line rule for fair use (in limited context) • Publishers should license digital excerpts • Schools should have a copyright policy in place Intellectual Property Review—Updates and Changes from 2012 1–4 Chapter 1—Developments in Copyright Law 2012—Presentation Slides The Authors Guild, Inc. v. HathiTrust Background • Spin-off of Google Books litigation • U. of Michigan entered agreement with Google to digitize library (10 million books) The Authors Guild, Inc. v. HathiTrust Fair Use Analysis • 1 – Purpose and Character of Use – Full-text searches, preservation, access for the print-disabled – “Transformative” use – different purposes from original, which cannot be fulfilled by purchasing another copy of the original – Defendants win Intellectual Property Review—Updates and Changes from 2012 1–5 Chapter 1—Developments in Copyright Law 2012—Presentation Slides The Authors Guild, Inc. v. HathiTrust Fair Use Analysis • 2 – Nature of Copyrighted Works – 76% of the works were fictional – Not dispositive when the use is transformative • 3 – Amount of Works Copied – Entire copies are necessary for the fair use The Authors Guild, Inc. v. HathiTrust Fair Use Analysis • 4 – Impact on Market for/ Value of Works – Not market substitution because of transformative purpose – Future potential licensing opportunities are not sufficient to show actual harm – Transformative use does not cause loss of license fees Intellectual Property Review—Updates and Changes from 2012 1–6 Chapter 1—Developments in Copyright Law 2012—Presentation Slides The Authors Guild, Inc. v. HathiTrust • The Chafee Amendment (§ 121) – “authorized entities” may reproduce or distribute copies of certain types of works in specialized formats for disabled persons – authorized entity = primary mission to provide specialized services for the disabled – The Court holds that U. of Michigan is an “authorized entity” Restoring Copyright Protection for Foreign Works • Foreign works excluded before 1891 • Then only for foreign authors whose countries reciprocated, and works printed in the U.S. • Joined Berne Convention in 1989 but took “minimalist approach” • In 1994, Uruguay talks produced WTO and TRIPS, requiring implementation of Berne • § 514 of URAA protects foreign authors in U.S. Intellectual Property Review—Updates and Changes from 2012 1–7 Chapter 1—Developments in Copyright Law 2012—Presentation Slides Section 514 of URAA • Extends copyright to works protected in country of origin, but in U.S. public domain because… – Lack of copyright relations with author’s country, – Sound recording fixed before 1972, or – No compliance with notice or registration formalities. • Gives remainder of U.S. copyright term • One-year grace period for users in U.S. • “Reliance parties” may use until notified Golan v. Holder (2012) • Plaintiff orchestra conductors, musicians, and publishers argue that URAA is unconstitutional – Exceeds authority under Copyright Clause, which allows only “limited time” – Contravenes constitutional mandate to “promote the “Progress of Science” – Violates First Amendment freedom of expression Intellectual Property Review—Updates and Changes from 2012 1–8 Chapter 1—Developments in Copyright Law 2012—Presentation Slides Golan v. Holder (2012) Responding to Copyright Clause arguments • “Congress shall have the Power… [t]o promote the Progress of Science by securing for limited Times to Authors… the exclusive Right to their Writings.” • Per Eldred v. Ashcroft, a “limited time” does not mean a “fixed” or “inalterable” period. • Rejects “zero”-term argument. Period of exclusivity must begin before it can end. • Constitution does not require each discrete provision to promote creation of new works; empowers Congress to look at the big picture. Golan v. Holder (2012) Responding to First Amendment arguments • “[S]ome restriction is the inherent and intended effect of every grant of copyright.” • The idea/expression dichotomy and fair use defense are “built-in First Amendment accommodations.” • Speech is not foreclosed; available in the marketplace. No call for heightened review. “Congress determined that U.S. interests were best served by our full participation in the dominant system of international copyright protection.” Intellectual Property Review—Updates and Changes from 2012 1–9 Chapter 1—Developments in Copyright Law 2012—Presentation Slides The First Sale Doctrine and Foreign-Made Goods • First sale doctrine (§ 109(a)): “[T]he owner of a particular copy… lawfully made under this title… is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy.” • Importation (§ 602(a)(1)): “Importation into the U.S., without the authority of the [copyright owner], of copies that have been acquired outside the U.S. is an infringement of the owner’s exclusive right to distribute copies.” • Per Quality King, U.S.-manufactured copies subject to first sale doctrine. What about foreign-made copies? Wiley & Sons v. Kirtsaeng (2nd Cir. 2011) • Publisher Wiley & Sons has whollyowned subsidiary manufacturing books for sale in foreign countries. • Kirtsaeng’s friends and family send books printed by Wiley Asia, and Kirtsaeng sells on eBay in U.S., making $ 1.2M. • Wiley & Sons argues activity is infringing importation; Kirtsaeng asserts first use doctrine as defense. Intellectual Property Review—Updates and Changes from 2012 1–10 Chapter 1—Developments in Copyright Law 2012—Presentation Slides Wiley & Sons v. Kirtsaeng (2nd Cir. 2011) • Ambiguous whether § 109’s “lawfully made under this title” is “lawfully made in U.S.” or encompasses any work subject to protection under © title, including foreign works. – In 9th Circuit Omega, held § 109 does not apply to foreignmade items. USSC equally divided, with Kagan recused. • § 602 intends to give © owners control over imports, but allowing § 109 defense would limit provision to pirated copies and copies not yet sold. • “Close call,” but Congress can correct court’s judgment. Wiley & Sons v. Kirtsaeng (2nd Cir. 2011) • Dissent: “The lawfulness of the manufacture of a particular copy should be judged by U.S. copyright law. A U.S. copyright owner may make her own copies or authorize another to do so. Regardless of the place of manufacture, a copy authorized by the U.S. rightsholder is lawful under U.S. copyright law.” • Argued at Supreme Court 10/29/12. Justices reportedly skeptical of publisher’s position. Intellectual Property Review—Updates and Changes from 2012 1–11 Chapter 1—Developments in Copyright Law 2012—Presentation Slides “Work for Hire” Test in 9th Circuit U.S. Auto Parts Network v. Parts Geek • Software developer licensed e-commerce software to startup auto parts company. • Later hired by company as “director of eServices” and made “modifications and enhancements” to software program. • After developer resigns, does company own any part of the software program? • Involves “work made for hire” test and question of derivative work. U.S. Auto Parts Network v. Parts Geek (9th Cir. 2012) • § 101: Work made for hire is “a work prepared by an employee within the scope of his or her employment.” • Adopted Restatement three-prong test for “within the scope of employment”: a) Kind of work employee is employed to perform; b) Occurs substantially within the authorized time and space limits; and c) Is actuated, at least in part, by a purpose to serve the employer. Intellectual Property Review—Updates and Changes from 2012 1–12 Chapter 1—Developments in Copyright Law 2012—Presentation Slides U.S. Auto Parts Network v. Parts Geek (9th Cir. 2012) • Derivative work meets originality requirement if: 1) Original aspects of the derivative work are more than trivial; and 2) Original aspects must reflect the degree to which it relies on preexisting material and must not affect the scope of copyright protection in preexisting material. • The additional software feature was a derivative work that developer was employed to create. Authored by employer. Copyright Trends in Mobile Gaming “How similar is too similar?” • Protection for games has traditionally been limited by the idea v. expression dichotomy • Recent decisions indicate a broader scope of protection for games Intellectual Property Review—Updates and Changes from 2012 1–13 Chapter 1—Developments in Copyright Law 2012—Presentation Slides Tetris Holding v. Xio Interactive (D.N.J May, 2012) Mino (iPhone app) Tetris (NES version) Tetris Holding v. Xio Interactive Background • Xio admits Mino is its version of Tetris • License request was refused • Xio argues that Tetris is essentially unprotectable because all expression is related to functionality/rules Intellectual Property Review—Updates and Changes from 2012 1–14 Chapter 1—Developments in Copyright Law 2012—Presentation Slides Tetris Holding v. Xio Interactive • “Merger doctrine” – when idea and expression are inseparable • Court determines there are endless ways to express the idea of Tetris (according to Xio’s expert) • Court lists protectable elements in Tetris and finds Mino “akin to literal copying” Spry Fox, LLC v. LOLApps, Inc. (W.D. Wash. 2012) Triple Town (Spry Fox) Yeti Town (LOLApps) Intellectual Property Review—Updates and Changes from 2012 1–15 Chapter 1—Developments in Copyright Law 2012—Presentation Slides Spry Fox, LLC v. LOLApps, Inc. Background • Spry Fox approached LOLApps to port its Triple Town to iOS • 5 months later, LOLApps announced Yeti Town Spry Fox, LLC v. LOLApps, Inc. • Scenes a faire: Use of points/coins, display of game tips in margins, in-game marketplace • Functional: 6x6 grid, pricing structure, limits on in-game purchases • Thin protection for language in dialogue boxes and game rules Intellectual Property Review—Updates and Changes from 2012 1–16 Chapter 1—Developments in Copyright Law 2012—Presentation Slides Spry Fox, LLC v. LOLApps, Inc. • Extrinsic test – objective similarities between both ideas and expression • Intrinsic test – Overall concept and feel through eyes of an ordinary observer • Plausible that Spry Fox could pass extrinsic and intrinsic tests for substantial similarity, survives motion to dismiss Electronic Arts v. Zynga • New complaint filed August, 2012 in N.D. Cal. • Sims Social (E.A) v. The Ville (Zynga) • Real-life simulation games where the characters’ appearance is player choice Intellectual Property Review—Updates and Changes from 2012 1–17 Chapter 1—Developments in Copyright Law 2012—Presentation Slides Electronic Arts v. Zynga Contact Us Alicia Bell [email protected] Elizabeth Milesnick [email protected] Miller Nash Portland 3400 U.S. Bancorp Tower 111 S.W. Fifth Avenue Portland, OR 97204 T: 503.224.5858 F: 503.224.0155 Intellectual Property Review—Updates and Changes from 2012 1–18 Chapter 1—Developments in Copyright Law 2012—Presentation Slides Intellectual Property Review—Updates and Changes from 2012 1–19 Chapter 1—Developments in Copyright Law 2012—Presentation Slides Intellectual Property Review—Updates and Changes from 2012 1–20 Chapter 2A Patent Litigation in 2012—Presentation Slides Dave Bourgeau Kolisch Hartwell PC Portland, Oregon Chapter 2A—Patent Litigation in 2012—Presentation Slides Intellectual Property Review—Updates and Changes from 2012 2A–ii Chapter 2A—Patent Litigation in 2012—Presentation Slides Patent Litigation in 2012 Dave Bourgeau Intellectual Property Attorney Kolisch Hartwell, P.C. [email protected] February 15, 2013 © Kolisch Hartwell 2013 All Rights Reserved, Page 1 Overview • Subject Matter Eligibility - Mayo v. Prometheus • Inducement - Akamai v. Limelight • Software Patentability - CLS Bank v. Alice Corp. • Hindsight Bias - Mintz v. Dietz • Strategy - Apple v. Samsung © Kolisch Hartwell 2013 All Rights Reserved, Page 2 Intellectual Property Review—Updates and Changes from 2012 2A–1 Chapter 2A—Patent Litigation in 2012—Presentation Slides Mayo v. Prometheus (132 S.Ct. 1289) • Issue: • Claimed: • § 101 Patent Eligibility for claims involving “laws of nature” Process of administering drug (thiopurine), determining resulting metabolite levels in patient, adjusting dose based on levels Posture: Dist. Ct. – SJ for Mayo: Unpatentable law of nature CAFC – Reversed: Patentable under Machine or Transformation S.Ct. – Reconsider under Bilski CAFC – Still Patentable since Machine/Transformation Test is a good clue © Kolisch Hartwell 2013 All Rights Reserved, Page 3 Mayo v. Prometheus (cont.) • Sample Claim: A method of optimizing therapeutic efficacy for treatment of an immunemediated gastrointestinal disorder, comprising: (a) administering a drug providing 6-TG to a subject having said immunemediated gastrointestinal disorder; and (b) determining the level of 6-TG in said subject having said immunemediated gastrointestinal disorder, wherein the level of 6-TG less than about 230 [units] indicates a need to increase the amount of said drug subsequently administered to said subject and wherein the level of 6-TG greater than about 400 [units] indicates a need to decrease the amount of said drug subsequently administered to said subject. © Kolisch Hartwell 2013 All Rights Reserved, Page 4 Intellectual Property Review—Updates and Changes from 2012 2A–2 Chapter 2A—Patent Litigation in 2012—Presentation Slides Mayo v. Prometheus (cont.) • The Discovery Embodied in the Patent: • The Court’s Two Main Points: • Those in the field knew there was a correlation, but did not know the precise correlation between metabolite levels and likely harm or ineffectiveness. “The steps . . . (apart from the natural laws themselves) involve wellunderstood, routine, conventional activity previously engaged in by researchers in the field.” “[U]pholding the patents would risk disproportionately tying up the use of the underlying natural laws, inhibiting their use in the making of future discoveries.” Unanimous Holding: Unpatentable under § 101 © Kolisch Hartwell 2013 All Rights Reserved, Page 5 Mayo v. Prometheus (cont.) • • • Metabolism of compounds = purely natural process Relationship of metabolites to effectiveness of drug “exists in principle apart from any human action.” Simply describing the relationship is not patentable © Kolisch Hartwell 2013 All Rights Reserved, Page 6 Intellectual Property Review—Updates and Changes from 2012 2A–3 Chapter 2A—Patent Litigation in 2012—Presentation Slides Mayo v. Prometheus (cont.) • Court’s Analogies: • Like telling linear accelerator operators to determine how much energy an amount of mass has produced by using E = mc2 Like telling boat builders to refer to the Archimedes Principle to determine if an object will float Machine or Transformation Test Could satisfy the claim without any transformation Does not trump the “law of nature” exclusion © Kolisch Hartwell 2013 All Rights Reserved, Page 7 Mayo v. Prometheus (cont.) • Court’s Claim Analysis: Administering Step – simply refers to an existing audience (doctors treating certain patients with certain already-known drugs) Determining Step – simply refers to determining level of relevant metabolites in the blood by whatever process is desired (well-known methods already exist) Wherein Clauses – recite the natural laws Taken together – still nothing new; simply an instruction to apply applicable laws © Kolisch Hartwell 2013 All Rights Reserved, Page 8 Intellectual Property Review—Updates and Changes from 2012 2A–4 Chapter 2A—Patent Litigation in 2012—Presentation Slides Mayo v. Prometheus (cont.) • “[T]he claims inform a relevant audience about certain laws of nature; any additional steps consist of well understood, routine, conventional activity already engaged in by the scientific community; and those steps, when viewed as a whole, add nothing significant beyond the sum of their parts taken separately.” (132 S.Ct. 1289 at 1298) © Kolisch Hartwell 2013 All Rights Reserved, Page 9 Akamai Tech. v. Limelight Networks (692 F.3d 1301) • • • Issue: Induced infringement of a method claim where no one party performs all steps En Banc rehearing of 2010 case; Combined with McKesson v. Epic Systems Two Patents: one on efficient delivery of web content, and one on electronic communication between doctors and patients. © Kolisch Hartwell 2013 All Rights Reserved, Page 10 Intellectual Property Review—Updates and Changes from 2012 2A–5 Chapter 2A—Patent Litigation in 2012—Presentation Slides Akamai v. Limelight (cont.) • Dist. Courts held that neither defendant was liable for infringement • Limelight – Limelight performed all but one step, which was performed by customers Epic – patients and doctors performed the steps Principles Relied On (still individually valid): Liability for induced infringement requires proof of direct infringement Liability for direct infringement requires that a single party commit all necessary acts required to infringe © Kolisch Hartwell 2013 All Rights Reserved, Page 11 Akamai v. Limelight (cont.) • BUT! • • “Requiring proof that there has been direct infringement is not the same as requiring proof that a single party would be liable as a direct infringer.” Court explicitly overruled BMC Resources v. Paymentech (Fed. Cir. 2007) “To be clear, we hold that all the steps of a claimed method must be performed in order to find induced infringement, but that it is not necessary to prove that all the steps were committed by a single entity.” © Kolisch Hartwell 2013 All Rights Reserved, Page 12 Intellectual Property Review—Updates and Changes from 2012 2A–6 Chapter 2A—Patent Litigation in 2012—Presentation Slides Akamai v. Limelight (cont.) • Policy and Doctrinal Support: Direct infringement is a strict liability tort Indirect infringement is not: requires the inducer to act knowing that the intended acts constitute patent infringement (i.e., specific intent) Does not run same risk of extending liability to persons who are unaware of a patent or of others performing other steps Inducing others to collectively infringe has same impact on the patentee as inducing one other to infringe © Kolisch Hartwell 2013 All Rights Reserved, Page 13 Akamai v. Limelight (cont.) Elements • If inducer does not perform any steps: • [1] Knowledge of patent [2] Induced performance of the steps of the method claimed in the patent [3] The steps were in fact performed. If inducer performs one or more steps itself: [1] Knowledge of patent [2] Performed one or more steps of the claimed method [3] Induced performance of remaining steps [4] Remaining steps in fact performed © Kolisch Hartwell 2013 All Rights Reserved, Page 14 Intellectual Property Review—Updates and Changes from 2012 2A–7 Chapter 2A—Patent Litigation in 2012—Presentation Slides CLS Bank v. Alice Corp. (685 F.3d 1341) • • • • Issue: Patent eligibility of software claims Claimed: Method of processing financial transactions (stock or currency trades) Note: claims are recited variously as method, system, and computer program product Posture: Dist. Ct. said ineligible under § 101; CAFC held claims patentable; Rehearing en banc has been granted; briefing in progress © Kolisch Hartwell 2013 All Rights Reserved, Page 15 CLS Bank v. Alice Corp. (685 F.3d 1341) • CAFC Analysis (now vacated pending rehearing) • Turns on “abstract idea” exception The disqualifying characteristic of abstractness must exhibit itself manifestly Court must be “wholly convinced” that the subject matter of the claim is abstract Dissent Prometheus says to be patent eligible a claim must include an inventive concept © Kolisch Hartwell 2013 All Rights Reserved, Page 16 Intellectual Property Review—Updates and Changes from 2012 2A–8 Chapter 2A—Patent Litigation in 2012—Presentation Slides CLS Bank v. Alice Corp. • Questions to be briefed: What test should the court adopt to determine whether a computer-implemented invention is a patent ineligible "abstract idea"; and when, if ever, does the presence of a computer in a claim lend patent eligibility to an otherwise patent-ineligible idea? In assessing patent eligibility under 35 U.S.C. § 101 of a computer-implemented invention, should it matter whether the invention is claimed as a method, system, or storage medium; and should such claims at times be considered equivalent for § 101 purposes? © Kolisch Hartwell 2013 All Rights Reserved, Page 17 Mintz v. Dietz & Watson (679 F.3d 1372) • • Issue: CAFC reiterates strong stance against hindsight bias Claim: • A stockinette integrated into a netting to encase meat products and produce a checkerboard pattern on the meat’s surface (without undesired sticking to the surface) Term at issue: “longitudinal and lateral strands … intersecting in locking engagement with one another” © Kolisch Hartwell 2013 All Rights Reserved, Page 18 Intellectual Property Review—Updates and Changes from 2012 2A–9 Chapter 2A—Patent Litigation in 2012—Presentation Slides Mintz v. Dietz & Watson • Dist. Court found this netting/stockinette to be obvious • Relevant art = Knitting Question: Whether obvious to fix each point of intersection of each strand to form a checkerboard pattern. Conclusion: “common sense” CAFC: common sense = knowledge so basic it certainly lies w/in skill of PHOSITA © Kolisch Hartwell 2013 All Rights Reserved, Page 19 Mintz v. Dietz & Watson • CAFC said this was “a form of prohibited reliance on hindsight” • Relevant art = the “meat encasement art” Mere recitation of “common sense” without explanation is insufficient The Dist. Ct. erroneously used the invention to define the problem the invention solved Real question: Is there clear and convincing evidence that a PHOSITA of meat encasement at the time of the invention would have recognized the adherence problem and found it obvious to produce the claimed structure to solve that problem? Note: CAFC does not cite KSR in this opinion © Kolisch Hartwell 2013 All Rights Reserved, Page 20 Intellectual Property Review—Updates and Changes from 2012 2A–10 Chapter 2A—Patent Litigation in 2012—Presentation Slides Mintz v. Dietz & Watson • • Reiterated importance of Objective Guideposts as “powerful tools” for avoiding hindsight bias Dist. Court should ALWAYS consider evidence presented on: Unexpected results Expert skepticism Copying Commercial success Praise by others Failure by others Long-felt need © Kolisch Hartwell 2013 All Rights Reserved, Page 21 Apple v. Samsung • • • • Apple awarded $1B in damages Mix of utility and design patents found to be infringed, as well as trade dress of the iPhone Including design patents and trade dress claims allowed Apple to tell a “copycat” story, including purely visual impact Seems to indicate that clients should pursue IP protection for their products including more than just utility patents whenever possible © Kolisch Hartwell 2013 All Rights Reserved, Page 22 Intellectual Property Review—Updates and Changes from 2012 2A–11 Chapter 2A—Patent Litigation in 2012—Presentation Slides Apple v. Samsung © Kolisch Hartwell 2013 All Rights Reserved, Page 23 Dave Bourgeau Intellectual Property Attorney Kolisch Hartwell, P.C. 520 SW Yamhill Street, Suite 200 Portland, Oregon 97204 (503) 224–6655 [email protected] © Kolisch Hartwell 2013 All Rights Reserved, Page 24 Intellectual Property Review—Updates and Changes from 2012 2A–12 Chapter 2A—Patent Litigation in 2012—Presentation Slides Intellectual Property Review—Updates and Changes from 2012 2A–13 Chapter 2A—Patent Litigation in 2012—Presentation Slides Intellectual Property Review—Updates and Changes from 2012 2A–14 Chapter 2B America Invents Act (AIA) Implementation in 2012—Presentation Slides Peter David G. Sabido Kolisch Hartwell PC Portland, Oregon Chapter 2B—America Invents Act (AIA) Implementation in 2012—Presentation Slides Intellectual Property Review—Updates and Changes from 2012 2B–ii Chapter 2B—America Invents Act (AIA) Implementation in 2012—Presentation Slides America Invents Act (AIA) Implementation in 2012 Peter D. Sabido Intellectual Property Attorney Kolisch Hartwell, P.C. [email protected] February 15, 2013 © Kolisch Hartwell 2013 All Rights Reserved, Page 1 Overview • Inventor’s Oath or Declaration • Citation of Written Statements in Patent File • Inter Partes Review • Post-Grant Review • Third Party Submission of Prior Art • Supplemental Examination • Transitional Program for Covered Business Method Patents • Priority Examination for Important Technologies © Kolisch Hartwell 2013 All Rights Reserved, Page 2 Intellectual Property Review—Updates and Changes from 2012 2B–1 Chapter 2B—America Invents Act (AIA) Implementation in 2012—Presentation Slides Inventor’s Oath or Declaration (§ 4) • Assignee can be the applicant • Assignments can be used • • Must include required oath or declaration statements Postponement of filing of oath or declaration • Still need inventor’s oath or declaration Until application is otherwise in condition for allowance Substitute statement in lieu of oath or declaration Defective oath or declaration is curable Patent not invalid or unenforceable if cured © Kolisch Hartwell 2013 All Rights Reserved, Page 3 Citation of Written Statements in Patent File (§ 6) • • For issued patents Any person may file a written submission with: • Statements must identify: • Prior art consisting of patents or printed publications Statements of patent owner filed by the patent owner in a proceeding regarding claim scope Forum and proceeding in which patent owner filed statement Specific papers submitted that contain the statements How each statement is a statement regarding claim scope Explanation required Pertinence and manner of applying to at least one claim © Kolisch Hartwell 2013 All Rights Reserved, Page 4 Intellectual Property Review—Updates and Changes from 2012 2B–2 Chapter 2B—America Invents Act (AIA) Implementation in 2012—Presentation Slides Post Grant Review (§ 6) • May be filed starting September 16, 2012 • Various statutory ground(s) based on: • Only business method patents and patents involved in interferences Can file for any patent as of March 16, 2013 Patents and printed publications Other factual evidence and expert opinions Must be filed: Before filing a civil action challenging validity of patent Within nine months of the patent grant © Kolisch Hartwell 2013 All Rights Reserved, Page 5 Post Grant Review (§ 6) [contd.] • Granted if: • Subsequent civil action challenging validity of patent automatically stayed until: • “More likely than not” that at least one of challenged claims is unpatentable Raises a “novel or unsettled legal question” that is important to other patents or patent applications Patent owner moves court to lift stay Patent owner files action or counterclaims for infringement Petitioner moves court to dismiss action No stay of motion for preliminary injunction Infringement action filed within 3 months of patent grant date © Kolisch Hartwell 2013 All Rights Reserved, Page 6 Intellectual Property Review—Updates and Changes from 2012 2B–3 Chapter 2B—America Invents Act (AIA) Implementation in 2012—Presentation Slides Post Grant Review (§ 6) [contd.] • Estoppel with respect to any ground raised or reasonably could have raised: • • No estoppel if settled before decision on merits Patent owner may file motion to amend patent: • USPTO proceeding Civil action ITC proceeding Can cancel, amend, or substitute claims Cannot enlarge scope or add new matter Petitioner may appeal written final decision to the Federal Circuit © Kolisch Hartwell 2013 All Rights Reserved, Page 7 Inter Partes Review (§ 6) • • • • Replaces existing Inter Partes Reexamination Procedure Available for all patents 35 U.S.C. § 102 or § 103 grounds based on patents and printed publications Must be filed: • Before filing a civil action challenging validity of patent Within one year of being served with infringement complaint After later of nine months after grant date or termination of postgrant review Granted with “reasonable likelihood” that the third party will prevail © Kolisch Hartwell 2013 All Rights Reserved, Page 8 Intellectual Property Review—Updates and Changes from 2012 2B–4 Chapter 2B—America Invents Act (AIA) Implementation in 2012—Presentation Slides Inter Partes Review (§ 6) [contd.] • • • • Same automatic stay as post grant review Same estoppel as post grant review Patent owner may file motion to amend patent Petitioner may appeal written final decision to the Federal Circuit © Kolisch Hartwell 2013 All Rights Reserved, Page 9 Third Party Submission of Prior Art (§ 8) • • Filed for pending patent applications Documents: • • Explanation of relevancy Must be filed prior to earlier of: • Patents Published patent applications Other printed publications Notice of allowance Later of six months after publication date or the date of a first Office action on the merits No service requirement © Kolisch Hartwell 2013 All Rights Reserved, Page 10 Intellectual Property Review—Updates and Changes from 2012 2B–5 Chapter 2B—America Invents Act (AIA) Implementation in 2012—Presentation Slides Supplemental Examination (§ 12) • • • For patent owner after patent has issued Filed at any time during enforceability period of patent Any information in writing “believed to be relevant to the patent” • • Limit of twelve items per request Ex parte reexamination ordered if “substantial new question of patentability” Proceed under ex parte reexamination procedures Except for patent owner statement © Kolisch Hartwell 2013 All Rights Reserved, Page 11 Supplemental Examination (§ 12) [contd.] • Effect • Patent not unenforceable on basis of conduct relating to information if information was considered, reconsidered, or corrected during supplemental examination Exceptions Prior allegations in civil action or FDCA notice Defense in patent enforcement actions o Unless supplemental examination (and any reexamination ordered) concluded before action brought © Kolisch Hartwell 2013 All Rights Reserved, Page 12 Intellectual Property Review—Updates and Changes from 2012 2B–6 Chapter 2B—America Invents Act (AIA) Implementation in 2012—Presentation Slides Covered Business Method Patents (§ 18) Specific post-grant reviewing proceeding Covered business method patents: • • Method or apparatus that performs data processing or other operations used in practice, administration, or management of a financial product or service Does not include patents for “technological inventions” May be requested only if sued for patent infringement Various statutory grounds based on published and nonpublished evidence Estoppel only in other USPTO proceedings Program expires on September 16, 2020 • • • • © Kolisch Hartwell 2013 All Rights Reserved, Page 13 Priority Exam for Important Technologies (§ 25) • • Prioritization of examination of applications for products, processes, or technologies that are important to the national economy or national competitiveness As of February 5, 2013, the USPTO has not released any information regarding implementation © Kolisch Hartwell 2013 All Rights Reserved, Page 14 Intellectual Property Review—Updates and Changes from 2012 2B–7 Chapter 2B—America Invents Act (AIA) Implementation in 2012—Presentation Slides Peter D. Sabido Intellectual Property Attorney Kolisch Hartwell, P.C. 520 SW Yamhill Street, Suite 200 Portland, Oregon 97204 (503) 224–6655 [email protected] © Kolisch Hartwell 2013 All Rights Reserved, Page 15 Intellectual Property Review—Updates and Changes from 2012 2B–8 Chapter 2B—America Invents Act (AIA) Implementation in 2012—Presentation Slides Intellectual Property Review—Updates and Changes from 2012 2B–9 Chapter 2B—America Invents Act (AIA) Implementation in 2012—Presentation Slides Intellectual Property Review—Updates and Changes from 2012 2B–10 Chapter 3 Trademark Law Review—2012 Cases and Trends Matthew R. Wilmot Schwabe Williamson & Wyatt PC Portland, Oregon Contents I. Trademarks Generally . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3–1 A. What Is a Trademark? . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3–1 B. Classes of Trademarks . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3–1 C. Use vs. Registration . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3–1 D. Claim for Infringement . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3–2 II. Significant/Interesting Federal Cases from 2012 . . . . . . . . . . . . . . . . . . . . . . . . . . 3–2 A. Color Marks . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3–2 B. Key Word Advertising . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3–3 Relevance of Nonconsumer Confusion to Likelihood of Confusion Analysis . . . . . 3–4 C. D.Damages . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3–4 E.Licensing . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3–6 F. Nike, Inc. v. Already, Inc. dba YUMS . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3–6 III. Significant/Interesting Trademark Trial and Appeal Board Cases from 2012 . . . . . . . . . . 3–7 Bona Fide Intent to Use . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3–7 A. B.Fraud . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3–8 Registration of Official Insignia . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3–9 C. D.Dilution . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .3–10 IV. Issues and Trends from 2012 and Looking Forward . . . . . . . . . . . . . . . . . . . . . . . .3–11 Practical Impact of New gTLDs . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .3–11 A. B. Legislation Affecting Brand Owners . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3–12 Presentation Slides . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3–15 Chapter 3—Trademark Law Review—2012 Cases and Trends Intellectual Property Review—Updates and Changes from 2012 3–ii Chapter 3—Trademark Law Review—2012 Cases and Trends I. Trademarks Generally A.What Is a Trademark? A trademark is a word, name, symbol, design, or similar indicator of source used in connection with goods or services to indicate the source of the goods or services and to distinguish the goods and services of third parties. 1. You can trademark a sound, a smell, or even a color. 2. Product packaging and product designs can constitute protectable trade dress in certain circumstances. B. Classes of Trademarks The class of the mark dictates the protection afforded it. 1.Generic. A category of or type of product or service. Never protectable as a trademark. 2.Descriptive. A mark that immediately conveys to the consumer some idea as to the nature, qualities, features, or characteristics of the goods or services sold under the mark. Enforcement requires a showing of secondary meaning. A mark has achieved secondary meaning when a significant portion of consumers associate the mark with a single, anonymous source. Factors considered by courts in determining whether secondary meaning has been achieved include: (a) the nature and extent of advertising; (b) length of use; (c) unsolicited media coverage; (d) sales under the mark; and (e) direct evidence such as consumer declarations or consumer surveys. 3.Suggestive. A mark that hints or suggests at the nature, qualities, features, or characteristics of the goods or services sold under the mark. a. Fine line between descriptive and suggestive marks—if the connection between the goods/services and the mark is not immediate, then mark is suggestive rather than descriptive. b. Suggestive marks are considered inherently distinctive, but the breadth of protection afforded suggestive marks is lower than that afforded to arbitrary or fanciful marks. 4.Arbitrary. A term that has meaning in one context but not in the context in which it is being used. 5.Fanciful. A coined or made-up word or symbol. C. Use vs. Registration 1. Trademark rights are created through use in commerce and not through registration. However, there are limitations associated with common law (i.e., unregistered) marks. a. Limited to the geographic territory in which the mark is used. b. A party asserting common law rights bears the evidentiary burden of proving that the party has rights in the mark and that the mark is valid. 2. Registration enhances the rights provided by common law. In particular, owners of federally registered trademarks receive the benefit of: a. Presumptions of validity, ownership, and exclusivity of use across the United States; b. Protection against registration of confusingly similar marks; c. Use of the ® symbol; and d. Eligibility for incontestability after five years of uncontested registration. Intellectual Property Review—Updates and Changes from 2012 3–1 Chapter 3—Trademark Law Review—2012 Cases and Trends D. Claim for Infringement Plaintiff must show the following. 1. That the plaintiff has rights in the mark. a. The plaintiff has rights in a mark where the mark is shown to be distinctive (either inherent or acquired) and that, as between the plaintiff and the defendant, the plaintiff has shown that it has priority. b. § 1115(a). A federal registration provides prima facie proof of rights in the mark. See 15 U.S.C. That the defendant is using the mark as a trademark. 2. 3. A likelihood of confusion among consumers as to source, association, affiliation, sponsorship, and/or connection. Likelihood of confusion factors (not exhaustive): a. Similarity in sound, sight, commercial impression; b. Relatedness of the goods/services; c. Strength of the marks; d. Channels of trade; e. Sophistication of potential purchasers; and f. Evidence of actual confusion. II. Significant/Interesting Federal Cases from 2012 A. Color Marks Christian Louboutin S.A. v. Yves Saint Laurent America, Inc., 696 F.3d 206 (2d Cir. 2012) 1.Holding. The color red for the outsole of women’s shoes was protectable as trademark, but only in connection with the use of a lacquered red outsole that contrasts with the adjoining portion of the shoe. However, the Second Circuit did not find infringement, as the shoe sold by defendant monochromatic, it did not infringe the trademark rights held by the plaintiff. 2. Summary and Analysis. Plaintiff fashion designer appealed the district court’s denial of a preliminary injunction against a defendant competitor for alleged infringement of the plaintiff’s alleged trademark consisting of a red, lacquered outsole on a high-fashion woman’s shoe. The district court denied the preliminary injunction, holding that the plaintiff had failed to show a likelihood of success on the merits on the basis that a single color can never serve as a trademark in the fashion industry because a single color is inherently “functional.” The Second Circuit reversed, relying primarily on the Supreme Court’s decision in Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995), and further holding that there is no per se rule against the protection of single color marks whether in the fashion industry or otherwise. Citing Qualitex, the Second Circuit rejected the proposition that a single color cannot function as a trademark in the fashion industry, and instead held that the aesthetic functionality doctrine, as applied on a case-by-case basis, fairly balances concerns regarding competition and intellectual property rights. Under Qualitex, a particular feature or design is not aesthetically functional unless it provides a non-reputation–related competitive advantage. Accordingly, a single color mark can be protected as a trademark so long as the color is nonfunctional when used in connection with the product at issue and has also acquired secondary meaning. Notwithstanding the Second Circuit’s recognition that a single color can function as a trademark in the fashion industry, the court did not reach the issue of whether plaintiff’s red sole mark was aesthetically functional. Instead, the court concluded that the secondary meaning evidence submitted Intellectual Property Review—Updates and Changes from 2012 3–2 Chapter 3—Trademark Law Review—2012 Cases and Trends by plaintiff supported a finding of secondary meaning only where the red outsole contrasts with the adjoining portion of the shoe. Because the alleged infringing shoe was monochromatic, the defendant’s shoe was not an infringement of plaintiff’s trademark rights. 3. Practical Implications F No per se rule in fashion industry against enforceability of single color marks. F required. Color marks protectable, but a showing of secondary meaning will almost always be F Remains to be seen how this impacts the Ninth Circuit’s position on aesthetic functionality. The Ninth Circuit very narrowly construed the aesthetic functionality doctrine in Au-Tomotive Gold, Inc. v. Volkswagen of America, Inc., 457 F.3d 1062 (9th Cir. 2006), as having very limited application. A recent Ninth Circuit opinion appeared to interpret the aesthetic functionality doctrine more broadly (see Fleischer Studios, Inc. v. A.V.E.L.A., Inc., 636 F.3d 1115 (9th Cir. 2011)), but the Ninth Circuit later withdrew the opinion and substituted a new opinion without the aesthetic functionality analysis. See Fleischer Studios, Inc. v. A.V.E.L.A., Inc., 654 F.3d 958 (9th Cir. 2011). B.Key Word Advertising Rosetta Stone, Ltd. v. Google, Inc., 676 F.3d 144 (4th Cir. 2012) 1.Holding. Summary judgment was inappropriate on plaintiff’s claims for trademark infringement, contributory infringement, and dilution, as a reasonable trier of fact could conclude that Google’s sale of key words to third-party advertisers is likely to cause confusion among consumers as to source, sponsorship and affiliation. 2. Summary and Analysis. Rosetta Stone sued Google for trademark infringement and dilution based on Google’s sale of Rosetta Stone’s marks as keywords. The district court entered summary judgment against Rosetta Stone’s trademark claims. On appeal, the Fourth Circuit reversed. On the direct infringement claim, the Fourth Circuit focused on evidence that had been discounted by the district court. For example, the court concluded that the deposition testimony of five consumers who mistakenly purchased a counterfeit Rosetta Stone software product—evidence that the district court deemed de minimis—supported an inference of actual confusion. Similarly, the court pointed to a change in Google’s AdWords policy that expanded its AdWords program and lead to increased revenue as evidence from which a trier of fact could infer an intent to cause confusion. Lastly, an internal Google study and a consumer survey performed by Rosetta Stone further showed significant consumer confusion as a result of Google’s sale of Rosetta Stone’s marks as key words. Taken together, this evidence at a minimum showed uncertainty among consumers as to sponsorship, approval, or authorization of the third-party sponsored link by Rosetta Stone. The Fourth Circuit likewise reversed summary judgment on Rosetta Stone’s contributory infringement claim. While generalized knowledge of infringement would not be sufficient to support a claim for contributory infringement, Google had knowledge of “identified individuals” who were using sponsored links to infringe Rosetta Stone’s marks, as Rosetta Stone had provided Google with a spreadsheet of approximately 200 instances of sponsored links advertising counterfeit Rosetta Stone products. Lastly, with respect to dilution, the Fourth Circuit reversed, disagreeing with the position taken by the district court that Rosetta Stone’s marks could not have been diluted because their public recognition increased greatly during the relevant time period. The Fourth Circuit rejected such a blanket rule as being contrary failing to the multi-factor analysis contemplated in the Lanham Act. This case has since been settled. Intellectual Property Review—Updates and Changes from 2012 3–3 Chapter 3—Trademark Law Review—2012 Cases and Trends 3. Practical Implications FCompare Rosetta Stone to Ninth Circuit’s opinion in Network Automation, Inc. v. Advanced System Concepts, Inc., 638 F.3d 1137 (9th Cir. 2011), which tends to favor the advertiser. Could this indicate a circuit split? F Will likely revive interest on the part of plaintiffs in suing Google and other search engines over key word programs. F Confusion evidence is imperative in key word advertising cases. Must show, by way of actual confusion, a consumer survey, or other evidence supporting actual confusion, that some level of actual confusion exists in the marketplace. C. Relevance of Nonconsumer Confusion to Likelihood of Confusion Analysis Rearden LLC v. Rearden Commerce Inc., 683 F.3d 1190 (9th Cir. 2012) 1.Holding. While consumer confusion is most relevant to determining whether confusion between marks is likely, nonconsumer confusion can also be relevant to the likelihood of confusion analysis in appropriate circumstances. 2. Summary and Analysis. In Rearden, the mark at issue was not being used in connection with traditional consumer goods/services, as the plaintiffs—who were affiliated entities—were all in the business of providing technology incubator and artistic production services almost exclusively to companies under common ownership with the plaintiffs. The district court granted summary judgment in favor of the defendant on plaintiffs’ trademark infringement claim, holding that no reasonable finder of fact could conclude that confusion was likely between the marks. The Ninth Circuit reversed, holding that there were sufficient disputes of material fact such that summary judgment was not unwarranted. In particular, the Ninth Circuit agreed with defendant that the district court had erred in failing to take into account evidence of relevant nonconsumer confusion in its analysis. According to the Ninth Circuit, nonconsumer confusion may be relevant to the likelihood of confusion analysis where there is confusion among: (a) potential customers; (b) nonconsumers whose confusion could create an inference that consumers are likely to be confused; and (3) nonconsumers whose confusion could influence consumers. For example, a trade publication that noted confusion among conference attendees and another trade publication that placed excerpts of an interview with plaintiffs’ founder and a picture of the founder in a featured article on the defendant was an example of confusion among nonconsumers whose confusion could influence consumers. This nonconsumer confusion was sufficient to create a dispute of material fact. 3. Practical Implications. Don’t forget about nonconsumer confusion in cases where, based on the nature of the goods or services at issue, consumer confusion is difficult to show. D.Damages 1. Skydive Arizona, Inc. v. Quattrocchi, 673 F.3d 1105 (9th Cir. 2012) a.Holding. The Ninth Circuit affirmed the jury’s award of damages despite plaintiff not providing a specific mathematic formula to calculate damages. However, the district court’s award of enhanced damages was improper because such enhanced damages were intended to punish the defendant as opposed to fairly compensating the plaintiff for the plaintiff’s infringing conduct. b. Summary and Analysis. In Skydive Arizona, plaintiff owned and operated one of the largest skydiving centers in the world. Following the entry of partial summary judgment and a trial, a jury awarded damages in favor of the plaintiff, including an award of $2.5 million in actual damages for trademark infringement. The trial court then doubled the amount awarded plaintiff as actual damages. Intellectual Property Review—Updates and Changes from 2012 3–4 Chapter 3—Trademark Law Review—2012 Cases and Trends On appeal, the Ninth Circuit, among other things, upheld the jury’s award of actual damages but reversed the district court’s award of enhanced damages. Under 15 U.S.C. § 1117(a) of the Lanham Act, the court may award, in its discretion, “(1) defendant’s profits, (2) any damages sustained by the plaintiff, and (3) the costs of the action.” The actual damages awarded by the jury were largely attributable to the harm to plaintiff’s goodwill as a result of the defendant’s intentional infringement. In order to calculate damage to goodwill, the Ninth Circuit recognized that a jury may rightfully look to the plaintiff’s expenditures in building its reputation in order to estimate the harm to its reputation after the defendant’s bad acts. Further, the Ninth Circuit reiterated that to support a jury’s actual damages award, there need only be substantial evidence to permit the jury to draw reasonable inferences and make a reasonable assessment of the damages—in other words, even a “crude” measure of damages is acceptable to the extent based on reasonable inferences. In the current case, the jury’s award was based on “an array of customer evidence and three different financial record exhibits,” including evidence that plaintiff had spent hundreds of thousands in building its reputation. Together, this evidence was sufficient to support the damages award. However, the Ninth Circuit reversed the court’s doubling of the jury’s actual damages award as being improperly focused on punishing the defendant as opposed to compensating the plaintiff. Under Section 1117(a), a court may enhance any amounts found as actual damages but “not exceeding three times such amount” awarded. The express language of the statute further provides that any such enhancement “shall constitute compensation and not a penalty,” which has been construed to expressly forbid an award of damages to punish an infringer. In the current case, the district court’s focus on the “purposefully deceitful” nature of the defendant’s conduct suggested that the enhancement was punitive as opposed to compensatory. c. Practical Implications F Actual damages can include damages to the plaintiff’s goodwill. Courts will not require a precise methodology to measure the extent of the damage so long as reasonable inferences can be drawn from evidence submitted by the plaintiff. F While a trial court has discretion to enhance the damages awarded a trademark plaintiff, any such enhancement must be intended to fairly compensate as opposed to punish. Thus, any request for enhanced damages should be made from the perspective of compensation only. 2. Louis Vuitton Malletier S.A. v. Ly USA, Inc. et al., 676 F.3d 83 (2d Cir. 2012) a.Holding. District court did not err in permitting plaintiff to recover both statutory damages for counterfeiting under 15 U.S.C. § 1117(c) and attorney fees as an exceptional case under 15 U.S.C. § 1117(a). b. Summary and Analysis. In Ly USA, plaintiff fashion designer sued a counterfeiter and its directors under the Lanham Act. During the discovery of the civil case, the directors were arrested on criminal charges and law enforcement confiscated computers, documents, and merchandise. Defendants then argued during the damages phase that the records could not produce sales records because they were seized during the criminal investigation. Without these records, plaintiff could not prove actual damages and as such, plaintiff asked for the maximum statutory damages under 15 U.S.C. § 1117(c) as well as attorney fees under 15 U.S.C. § 1117(a). The defendants appealed the district court’s award of both statutory damages and attorney fees, and the Second Circuit affirmed. Under the Lanham Act, a plaintiff seeking damages for trademark counterfeiting and infringement can seek either actual damages under Section1117(a) or statutory damages under Section 1117(c). However, while Section 1117(a) provides for an award of attorney fees in exceptional cases, Section 1117(c) does not itself provide an express right to attorney fees. Intellectual Property Review—Updates and Changes from 2012 3–5 Chapter 3—Trademark Law Review—2012 Cases and Trends The Second Circuit concluded that the omission of an express right to attorney fees in Section 1117(c) did not mean that a plaintiff proceeding under Section 1117(c) could not claim attorneys’ fees under Section 1117(a). Further, in light of the intent of Section 1117(c) as a remedial measure in counterfeiting cases when actual damages under Section 1117(a) cannot be proven, denying an award of attorneys’ fees would be inconsistent with the intent of Section 1117(c). c. Practical Implications. Creates circuit split with Ninth Circuit. The Ninth Circuit has expressly held in K&N Engineering v. Bulat, 510 F.3d 1079 (9th Cir. 2007), that a plaintiff cannot recover both statutory damages under Section 1117(c) and attorney fees under Section 1117(a). E.Licensing Sunbeam Products, Inc. v. Chicago American Manufacturing, LLC, 686 F.3d 372 (7th Cir. 2012) 1.Holding. A trademark licensee can continue to use a licensed mark notwithstanding the licensee’s rejection of the license agreement in bankruptcy. 2. Summary and Analysis. Prior to becoming the subject of an involuntary bankruptcy proceeding, a third party licensed certain patents and trademarks to the defendant. After the third party commenced bankruptcy, the trustee for the third party sold the third party’s assets to plaintiff, including the licensed patents and trademarks, and rejected the license agreement with the defendant. The defendant continued selling products under the licensed marks despite the rejection, and plaintiff sued the defendant for trademark infringement. On appeal, the Seventh Circuit held that a licensee can continue to use a licensed mark notwithstanding the rejection of the license agreement in bankruptcy. The Seventh Circuit’s analysis focused 11 U.S.C. §§ 365(n) and 365(g) of the Bankruptcy Code. Under Section 365(n), a licensee of “intellectual property” can elect to retain the right to use the licensed intellectual property after rejection of the license agreement so long as the licensee continues to perform its obligations under the license (i.e., pay royalties). However, the definition of “intellectual property” included as part of the Bankruptcy Code does not include “trademarks.” Prior bankruptcy decisions had determined that the omission of “trademarks” from Section 365(n) resulted in trademarks being treated under Lubrizol Enterprises, Inc. v. Richmond Finishers, Inc., 756 F.2d 1043 (4th Cir. 1985), which held that a licensee could not seek to retain its contract rights in licensed intellectual property when the underlying license is rejected in bankruptcy by the licensor. In fact, Section 365(n) had been specifically adopted by Congress to prevent the harsh result in Lubrizol. According to the Seventh Circuit, the omission of trademarks from the definition of Section 365(n) resulted in Section 365(n) having no application to trademarks one way or the other and that Lubrizol was not controlling. Under the Seventh Circuit’s analysis, the rejection constitutes a breach of the license by the licensee under Section 365(g) of the Bankruptcy Code only and does not constitute a termination. As the breach does not constitute a termination of the license, the licensee was free to continue using the licensed trademarks. 3. Practical Implications F Creates uncertainty as to the relationship between Section 365(g) and 365(n) of the Bankruptcy Code as to the process for preserving intellectual property rights in bankruptcy. F Creates a circuit split between Fourth Circuit and Seventh Circuit. F. Nike, Inc. v. Already, Inc. dba YUMS Nike, Inc. v. Already, Inc. dba YUMS, 568 U.S. ___ (2013) 1.Holding. Plaintiff trademark owner’s dismissal of its infringement claims coupled with the grant of a broad and irrevocable covenant not to sue defendant competitor rendered defendant’s invalidity counterclaims moot. Intellectual Property Review—Updates and Changes from 2012 3–6 Chapter 3—Trademark Law Review—2012 Cases and Trends 2.Summary. Nike filed a trademark infringement suit in federal court against Already alleging that Already’s “Sugars” and “Soulja Boys” shoes infringed and diluted Nike’s trademark rights in its “Air Force 1” product configuration trade dress. Already filed a counterclaim alleging that the “Air Force 1” product configuration was invalid. Eight months after filing its complaint, Nike issued a covenant not to sue in favor of Already, in which it agreed not to assert any claim or demand against Already or any affiliated entity, distributor, employer, or customer of Already based on Already’s existing shoe designs or any future designs that constituted a “colorable imitation” of Already’s current products. Nike then moved to dismiss its infringement claim and Already’s counterclaim on the ground that no case or controversy still existed in light of Nike’s covenant not to sue. Already opposed the dismissal of its counterclaim, arguing that a case or controversy existed due to the very existence of Nike’s trademark registration. The trial court dismissed Already’s counterclaim, and the dismissal was affirmed by the Second Circuit. The Supreme Court granted certiorari and likewise affirmed. The Supreme Court held that the “voluntary cessation” doctrine applies when determining whether counterclaim for declaratory relief is moot. Under the voluntary cessation doctrine, Nike bore the “formidable” burden of showing that another trademark infringement claim against Already was not reasonably likely to occur. The Supreme Court held that Nike met its burden, determining that Nike’s covenant not to sue was sufficiently broad to render Already’s counterclaim moot in that it was unconditional and irrevocable and applied to past and current shoe designs and future designs that were “colorable imitations.” Furthermore, the covenant not to sue extended not only to Already, but also to its distributors and customers. Lastly, the covenant not to sue prohibited Nike from both filing suit and making any claims or demands of infringement. Already’s argument that dismissing the case would allow Nike to enforce invalid marks against competitors by issuing covenants not to sue was unavailing, as the Supreme Court concluded that Nike was incentivized not to do this because allowing others to use its marks could lessen the strength of Nike’s marks. 3. Practical Implications F Look for unilateral covenants to become an important tool for trademark owners in developing and implementing enforcement strategies, especially where there is a risk that the infringing party is likely to seek declaratory relief concerning the validity of the asserted mark. F In cases where the alleged infringer has a strong case as to the invalidity of the asserted mark, look for alleged infringers to claim an intent to infringe after being confronted with a covenant not to sue. III. Significant/Interesting Trademark Trial and Appeal Board Cases from 2012 A. Bona Fide Intent to Use L’Oreal S.A. v. Marcon, 102 U.S.P.Q.2d 1434 (T.T.A.B. 2012) 1.Holding. The TTAB sustained the opposition, holding that the applied for mark was likely to be confused with the opposer’s marks, where the opposer’s marks were “strong” marks and where the applicant acted in bad faith and lacked a bona fide intent to use the mark in commerce at the time the application was filed. 2. Summary and Analysis. Marcon, who had a history of filing intent-to-use applications for well-known marks in connection with disparate goods, attempted to register the mark L’OREAL PARIS for “aloe vera drinks.” L’Oreal filed an opposition based on its federal registrations for the marks L’OREAL and L’OREAL PARIS. The TTAB sustained the opposition. Intellectual Property Review—Updates and Changes from 2012 3–7 Chapter 3—Trademark Law Review—2012 Cases and Trends The TTAB concluded that the applied-for mark was likely to be confused with L’Oreal’s federally registered L’OREAL-formative marks. In particular, the TTAB relied on the strength of L’Oreal’s marks, which the TTAB deemed famous for cosmetics and personal care products—L’Oreal produced evidence showing billions of dollars in sales under the marks, significant market share, immense advertising expenditures, significant media coverage, impressive brand awareness, and a consistent ranking by Business Week as one of world’s top 100 brands. That the goods were not competitive or closely related did not dissuade the TTAB, as the TTAB noted that when the marks at issue are identical, a lesser degree of relatedness between the goods is necessary to support finding of likelihood of confusion. The TTAB further looked with favor on evidence submitted by L’Oreal that tended to show that cosmetics and beverages might be related or that beverages were within the natural zone of L’Oreal’s expansion, including evidence of numerous third-party registrations and Internet search results showing companies that sell both cosmetics and beverages, an article discussing a trend of skin care lines improving looks with dietary supplements, and testimony that L’Oreal is an innovator and that customers expect new and different products from it. The TTAB further found bad faith on the part of Marcon, noting that Marcon had a history and pattern of filing intent-to-use applications for a disparate range of products for which he had no industry-relevant experience, and the marks applied for were identical to those owned by well-known brands. Lastly, the TTAB concluded that Marcon’s intent-to-use application was improper as Marcon did not have a bona fide intent to use the mark in commerce in connection with the identified goods. Whether an applicant has a bona fide intent to use a mark in commerce is based on objective factors. In the current case, Marcon had no documents showing a bona fide intent to use the L’OREAL PARIS mark and admitted no industry experience, business plan, potential partners/investors, logos or packaging, and no other activities aimed at establishing the mark. 3. Practical Implications F Whether an applicant has a bona fide intent to use the mark is an objective consideration. F Look for a lack of documentation on the part of the applicant to prepare to use the mark as a way of establishing lack of a bona fide intent to use the mark in commerce. F A pattern of filing intent-to-use applications for disparate goods under famous marks of others may also support a claim that the applicant lacks a bona fide intent to use applied for mark in commerce. B.Fraud 1. Shutemdown Sports, Inc. v. Lacy, 102 U.S.P.Q.2d 1036 (T.T.A.B. 2012) a.Holding. The TTAB sustained the petition to cancel, finding that the registrant had abandoned his rights in the mark through nonuse, but declined to reach petitioner’s fraud claim. b. Summary and Analysis. Petitioner petitioned to cancel registrant’s registration for the mark SHUT IT DOWN, alleging both abandonment and fraud based on allegations that at the time the registrant applied for the SHUT IT DOWN mark, the registrant had not used the mark on any of the identified goods and that any subsequent use of the mark had been abandoned. The TTAB cancelled the mark for abandonment, avoiding ruling on petitioner’s fraud claim. Registrant had applied for the mark on an in-use basis, but during discovery petitioner had conceded that he had only offered for sale 4 of the 113 products listed in his registration and that, further, no one had purchased goods sold under the mark in the past 5 years. Having admitted that he had never used the mark with 109 of the 113 identified goods and that he had no intention of doing so, registrant failed to rebut the statutory presumption of abandonment that arises following three years of nonuse. As to the remaining 4 items registrant claimed to have sold under the mark, registrant’s Intellectual Property Review—Updates and Changes from 2012 3–8 Chapter 3—Trademark Law Review—2012 Cases and Trends lack of sales coupled with a lack of documentation with respect to future use created a prima facie case of abandonment, and the burden then shifted to registrant to rebut the presumption. Having failed to produce any evidence to corroborate his current or future use of the mark other than a selfserving interrogatory response, the TTAB concluded that the registrant had abandoned his rights in the mark. Having granted the petition based on abandonment, the TTAB found it unnecessary to reach petitioner’s fraud claim. c. Practical Implications F Self-serving evidence of use by way of declaration or interrogatory response should be supported by documentary evidence supporting such use. F Fraud is not a favored basis for cancellation based on recent TTAB decisions. Shutemdown Sports suggests that the TTAB will avoid considering fraud claims when possible. 2. Reliance Standard Life Ins. Co. v. American National Ins. Co., 2012 TTAB LEXIS 168 (April 30, 2012) (nonprecedential) a.Holding. TTAB rejected applicant’s counterclaim alleging fraud on the USPTO, concluding that the applicant had failed to prove fraud by clear and convincing evidence where the applicant had failed to demonstrate that the opposer had intentionally deceived the examining attorney during the prosecution of the asserted mark. b. Summary and Analysis. The TTAB denied applicant’s counterclaim for fraud predicated on material false statements made to USPTO during the prosecution of the application for the registration on which the opposition was based, as the TTAB had doubt as to whether the opposer intended to deceive the USPTO through its false statements. Although the TTAB dismissed opposer’s Section 2(d) likelihood of confusion challenge to the registration of applicant’s mark BENCHMADE RELIANCE, the TTAB concluded that the applicant was nevertheless entitled to a decision on its counterclaim for fraud, as the opposer’s registration remained a potential threat to applicant outside of the current proceeding. The basis for applicant’s fraud claim was that during the prosecution of opposer’s application, the opposer, through its attorney, had told a “half truth” in order to overcome a Section 2(d) refusal, stating that its annuity services sold under the mark were offered to employers, while failing to add that it also sold annuities to individuals through agents and brokers. Although the TTAB deemed the false statements material in that they formed the basis of opposer’s argument that confusion was unlikely due to the differences between the parties’ channels of trade and target consumers, the TTAB had doubt as to whether opposer had intended to deceive the USPTO or that the opposer had willfully withheld facts that would have resulted in the disallowance of registration. Accordingly, the applicant had failed to prove fraud by clear and convincing evidence. c. Practical Implications. Again, proving fraud is difficult under the TTAB’s clear and convincing evidence standard. Even false statements, without an intent to deceive, will likely not result in a fraud finding. C. Registration of Official Insignia In re the Government of the District of Columbia, 101 U.S.P.Q.2d 1588 (T.T.A.B. 2012) 1.Holding. Applicant was not entitled to registration for its official seal under Section 2(b) of the Lanham Act. 2. Summary and Analysis. Applicant sought to register the official seal of the District of Columbia for various goods, including, clocks, cufflinks, memo pads, pens and pencils, cups and mugs, and clothing items. The TTAB refused registration of the official seal as a trademark pursuant to Intellectual Property Review—Updates and Changes from 2012 3–9 Chapter 3—Trademark Law Review—2012 Cases and Trends Section 2(b) of the Lanham Act, which prevents registration of, among other things, official government insignia. Section 2(b) of the Lanham Act prohibits registration of any mark that “consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof.” The applicant argued that Section 2(b) should be interpreted as not applying where a governmental entity seeks to register its own insignia. In response, the TTAB held that Section 2(b) is “plain and clear on its face” and that such an exception is absent from the statute. Further, the TTAB noted that while Sections 2(c) and 2(d) of the Lanham include express statutory exceptions, Section 2(b) does not. The TTAB found the applicant’s arguments regarding congressional intent to be unavailing. While it was true that Section 2(b) was originally enacted with the intent of implementing the Paris Convention (whose aim it was to prohibit third parties from registering government indicia), the exception allowing registration of official insignia when authorized by the relevant government body was not present in the Paris Convention when the Paris Convention was adopted by Congress. Furthermore, while the applicant argued that the intent of Section 2 of the Lanham Act was to prevent consumer confusion, the TTAB stated that Section 2 of the Lanham Act addresses more than simply confusion by also addressing the registration of immoral and scandalous marks. 3. Practical Implications F Also see In re City of Houston, 101 U.S.P.Q.2d 1534 (T.T.A.B. 2012), which held similarly. F A potential end run around this is to create a mark similar to the governmental body’s official seal to use as a trademark. D.Dilution Research in Motion Limited v. Defining Presence Marketing Group, Inc. et al., 102 U.S.P.Q.2d 1187 (T.T.A.B. 2012) 1.Holding. The TTAB sustained the opposition, in part, on grounds that the applied for mark diluted by blurring opposer’s famous BLACKBERRY-formative marks. 2. Summary and Analysis. Applicant operated the website CrackBerry.com, which provided news, information, forums, and apps for users of mobile devices. In December 2006, Applicant began filing applications to register the mark CRACKBERRY in connection with online computer services and various clothing items. These applications were opposed by opposer, in part, on the grounds that registration of CRACKBERRY would dilute opposer’s BLACKBERRY-formative marks. In a rare case, the TTAB sustained an opposition on dilution grounds, rejecting applicant’s parody defense. The TTAB noted that the primary consideration in the dilution context is whether the applicant’s mark is famous—the TTAB has traditionally held opposers to a very high standard in determining whether a mark is sufficiently famous for dilution purposes, refusing to find TORO as being famous for lawnmowers or COACH as being famous for leather products. However, applicant’s “billions of dollars” in sales, “tens of millions of dollars” in advertising and promotion, “intense media attention” made of record, and the mark’s ranking in industry publications ranking the most powerful brands was enough to convince the TTAB of the BLACKBERRY’s fame. The TTAB further found a likelihood of dilution by blurring based on public association of the term CRACKBERRY with opposer’s BLACKBERRY products prior to applicant’s adoption of the mark. In sustaining the opposition, the TTAB rejected the applicant’s parody defense. First, it was not the applicant who had first coined the term CRACKBERRY, but rather the mark was first adopted by the public generally. Second, the services offered by applicant under the mark were closely related to Intellectual Property Review—Updates and Changes from 2012 3–10 Chapter 3—Trademark Law Review—2012 Cases and Trends opposer’s services offered under its BLACKBERRY-formative marks. Applicant’s parody defense was therefore inapplicable. 3. Practical Implications F The TTAB does not often sustain oppositions on dilution grounds, so this case is a good road map for alleging and proving dilution as a grounds to oppose the registration of a mark. F The TTAB also relied on the strength of applicant’s BLACKBERRY-formative marks in sustaining the opposition on likelihood of confusion grounds. IV. Issues and Trends from 2012 and Looking Forward A. Practical Impact of New gTLDs In June 2011, the Internet Corporation for Assigned Names and Numbers (“ICANN”) formally approved the expansion of the number of generic top-level domains (“gTLDs”) in the domain name system. Trademark owners were thus faced with the decision of whether to apply to operate their own top-level domain and also how to protect their brands defensively against top-level domains that might infringe their marks or allow a competitor to claim broad rights in a particular market. Although much hyped, the new gTLDs and the decisions confronted by brand owners in connection therewith have not had a substantial impact on most brand owners. First and foremost, the cost associated with obtaining and operating new gTLD are substantial—a $185,000 evaluation fee to ICANN, plus additional fees associated with dealing with third-party objections, auctions that may occur should multiple applicants apply to operate the same registry, and the people and hardware costs of owning and operating a registry. Many experts have estimated have estimated that the total fees and costs associated with the application and evaluation process, together with operation costs and legal fees, could run as high as $2 million over a one- to two-year period. In short, applying to operate a new gTLD has proven to be a viable option only for those companies or organizations having sufficient resources to justify such a significant investment. As of June 13, 2012, ICANN received 1,930 applications for new gTLDs, including 84 community-based applications, 66 applications for geographic names, and 116 internationalized domain names. The costs associated with applying for and operating a new gTLD has likewise had a deterrent effect on cybersquatters and other third parties who may seek to improperly apply for and operate a gTLD, thus reducing the need for the defensive actions referenced above. That being said, third parties are able to file formal objections against newly applied-for gTLDs. The period for filing formal objections began on June 13, 2012, and has been extended to March 13, 2013. Once the objection filing period closes, objections can still be made but will instead be resolved through a separate dispute resolution process that will take approximately five months. Any third party with legitimate grounds to file a formal objection can do so with the selected dispute resolution service provider (and not ICANN) on any one of four objection grounds listed below. 1. String Confusion. This means that the applied-for gTLD is confusingly similar to an existing top level domain or to another applied-for gTLD string. 2. Legal Rights. This means that the applied-for gTLD string violates the legal rights (i.e., trademark rights or other proprietary rights) of the objecting party. 3. Limited Public Interest. This means that the applied-for gTLD strongly contradicts generally accepted legal norms of morality and public order pursuant to principles of international law. 4.Community. This means that there is substantial opposition to the gTLD application from a significant portion of the community that the gTLD is targeting. Intellectual Property Review—Updates and Changes from 2012 3–11 Chapter 3—Trademark Law Review—2012 Cases and Trends In terms of responding to an objection, ICANN will post a public notice and will then notify the dispute resolution service provider to commence objection proceedings. Once the applicant has received notice from the dispute resolution service provider that an objection has been placed, the applicant will have 30 calendar days to respond. B. Legislation Affecting Brand Owners 1. Changes to the Federal Dilution Statute. In 1996, Congress enacted the Federal Trademark Dilution Act (“FTDA”), creating a federal cause of action for the dilution of famous marks where the marks at issue were used in connection with unrelated goods and regardless of any likelihood of consumer confusion. Among the benefits of the FTDA was the inclusion of language making a federal trademark registration a complete bar to a state-law based dilution claim. In 2006, Congress revised the FTDA with the enactment of the Trademark Dilution Revision Act (“TDRA”), which more clearly specified the requirements and limitations of a federal dilution claim. However, it soon became apparent that there was an error in the TDRA, as a slight revision by the Senate resulted in the text of the TDRA being changed such that a federal registration was a bar to both state and federal dilution actions. This error resulted in the TTAB recently granting a respondent’s motion to dismiss a petitioner’s federal dilution claim in a cancellation action, with the TTAB relying on the respondent’s federal registration. See Academy of Motion Picture Arts & Sciences v. Alliance of Professionals & Consultants, Inc., 104 U.S.P.Q.2d 1234 (TTAB 2012). In October 2012, President Obama signed into law a bill that amends the TDRA to correct the error and restore the statute’s intended meaning. 2. Legislation to Protect Fashion Designs. Under the current law, fashion designs are not protected by copyright as “useful articles” and are only protected as trade dress to the extent such designs have acquired secondary meaning. In September 2012, the Innovative Design Protection Act (“IDPA”), Senate Bill 3523, passed out of committee to be voted on by the full Senate. The IDPA would provide intellectual property protection to “fashion designs” defined as “the appearance as a whole of an article of apparel, including its ornamentation.” Under the bill, the design must include “original elements of the article of apparel or the original arrangement or placement of original or non-original elements as incorporated in the overall appearance of the article of apparel” and must be the “result of a designer’s own creative endeavor.” Lastly, the design must also provide a “unique, distinguishable, non-trivial and non-utilitarian variation over prior designs for similar types of articles.” There is no requirement under the bill to register a fashion design, and protection under the bill would begin on the date the design is first made public; however, the bill requires that a claimant demonstrate that the design was publicized in such a way that it is reasonable to infer that the defendant knew of its existence. The protection afforded “fashion designs” would extend for a nonrenewable three-year term. An “infringing article” must be “substantially identical in overall visual appearance to and as to the original elements of a protected design.” “Substantially identical” is defined as “an article of apparel that is so similar in appearance” that it is “likely to be mistaken for the protected design, and contains only those differences in construction or design which are merely trivial.” A claimant must first provide 21 days’ written notice to the alleged infringer prior to commencing suit, and damages and profits would only accrue after suit has been filed. While the IDPA is a proposed amendment to the Copyright Act, the rights afforded are similar to trademark rights in that registration is not required and the test for infringement is confusion-based— i.e., the infringing design must be likely to be “mistaken” for the protected design. The IDPA bears watching in 2013 and will likely be taken up by the new Congress. 3. Stop Online Privacy Act and the PROTECT IP Act. The Stop Online Privacy Act (“SOPA”), H.R. 3261, and the PROTECT IP Act (“PIPA”), Senate Bill 968, were proposed bills that Intellectual Property Review—Updates and Changes from 2012 3–12 Chapter 3—Trademark Law Review—2012 Cases and Trends aimed to crack down on intellectual property infringement on the Internet. PIPA is the House version of the bill, while SOPA is the Senate version. While the bills are primarily aimed at combating online copyright infringement, the intent of the bills is to restrict access to websites selling counterfeit products into the U.S. market. Both SOPA and PIPA provide a private right of action for IP owners against websites dedicated to infringing activities, in addition to court orders against third parties providing services to those sites. SOPA and PIPA encountered significant public protest and were as a result derailed during the 112th Congress. Look for Congress to potentially take up new versions of SOPA and/or PIPA during the 113th Congress and/ or potentially look into other means of addressing online counterfeiting. Intellectual Property Review—Updates and Changes from 2012 3–13 Chapter 3—Trademark Law Review—2012 Cases and Trends Intellectual Property Review—Updates and Changes from 2012 3–14 Chapter 3—Trademark Law Review—2012 Cases and Trends Trademark Law Review – 2012 Cases and Trends By Matthew Wilmot Schwabe, Williamson & Wyatt, P.C. Schwabe, Williamson & Wyatt | Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington, DC Overview 1. Trademarks Generally 2. Significant/Interesting Federal Cases from 2012 3. Significant/Interesting TTAB Cases from 2012 4. Issues and Trends from 2012 and Looking Forward Schwabe, Williamson & Wyatt | Portland, OR | Bend, OR | Salem, OR Intellectual Property Review—Updates and Changes from 2012 | Seattle, WA | Vancouver, WA | Washington, DC 3–15 Chapter 3—Trademark Law Review—2012 Cases and Trends Trademarks Generally • What is a Trademark? – A word, name, symbol, etc. associated with goods to indicate source of the goods and to distinguish from other goods. – Does not prevent others from making the same goods. • Protections Afforded to Trademarks – Protection Depends on the Mark (generic; descriptive; suggestive; arbitrary; fanciful) • Registration – Not required, but recommended. • Term – Rights extend indefinitely so long as mark is in use. • Test for Infringement – Likelihood of Confusion. Schwabe, Williamson & Wyatt | Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington, DC Significant/Interesting Federal Cases from 2012 1. Christian Louboutin S.A. v. Yves Saint Laurent America, Inc., 696 F.3d 206 (2d Cir. 2012). • Trade dress case involving use of the color red on the outsoles of women’s shoes. Trial court held that single color could not function as a trademark in the fashion industry. Second Circuit reversed, rejecting blanket rule that a single color could not function as a trademark in the fashion industry, and instead holding that: (i) the Supreme Court’s analysis in Qualitex should apply; and (ii) that aesthetic functionality properly balances intellectual property rights and public interest in competition. Second Circuit did not reach the issue of aesthetic functionality in this case, instead holding that plaintiff had shown secondary meaning only where red sole contrasts with the rest of the shoe. Defendant’s shoe was monochromatic and as a result there was no infringement. • • • • Schwabe, Williamson & Wyatt | Portland, OR | Bend, OR | Salem, OR Intellectual Property Review—Updates and Changes from 2012 | Seattle, WA | Vancouver, WA | Washington, DC 3–16 Chapter 3—Trademark Law Review—2012 Cases and Trends Significant/Interesting Federal Cases from 2012 1. Christian Louboutin S.A. v. Yves Saint Laurent America, Inc., 696 F.3d 206 (2d Cir. 2012) (cont’d). • Practical implications: – No per se rule in fashion industry against enforceability of single color marks. – Color marks protectable, but a showing of secondary meaning will be required. Schwabe, Williamson & Wyatt | Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington, DC Significant/Interesting Federal Cases from 2012 2. Rosetta Stone, Ltd. v. Google, Inc., 676 F.3d 144 (4th Cir. 2012). • Key word advertising case where district court granted summary judgment in favor of Google and its AdWords program. • Fourth Circuit reversed, finding sufficient evidence to create a material question of fact on plaintiff’s direct infringement claim, including, deposition testimony, a consumer survey, and an internal Google study, all of which showed some actual confusion. • Fourth Circuit further reversed as to the contributory infringement claim, finding that Google had knowledge of “identified individuals” who were using plaintiff’s marks as key words to sell counterfeit products. • Fourth Circuit reversed plaintiff’s dilution claim, despite plaintiff’s argument that plaintiff’s mark could not have been diluted because the marks increased in public recognition during relevant time period. Schwabe, Williamson & Wyatt | Portland, OR | Bend, OR | Salem, OR Intellectual Property Review—Updates and Changes from 2012 | Seattle, WA | Vancouver, WA | Washington, DC 3–17 Chapter 3—Trademark Law Review—2012 Cases and Trends Significant/Interesting Federal Cases from 2012 2. Rosetta Stone, Ltd. v. Google, Inc., 676 F.3d 144 (4th Cir. 2012) (cont’d). • Practical Implications: – Compare Rosetta Stone to Ninth Circuit’s opinion in Network Automation, Inc. v. Advanced System Concepts, Inc., 638 F.3d 1137 (9th Cir. 2011), which tends to favor the advertiser. Could this indicate a circuit split? – Will likely revive interest on the part of plaintiffs in suing Google and other search engines over key word programs. – Confusion evidence is imperative in key word advertising cases. Must show, by way of actual confusion, a consumer survey or other evidence supporting actual confusion, that some level of actual confusion exists in the marketplace. Schwabe, Williamson & Wyatt | Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington, DC Significant/Interesting Federal Cases from 2012 3. Rearden LLC v. Rearden Commerce Inc., 683 F.3d 1190 (9th Cir. 2012). • Trademark case involving non-traditional consumer services. • District court granted summary judgment in favor of defendant, holding that no reasonable finder of fact could conclude that confusion between the marks was likely. • Ninth Circuit reversed, in part, by finding that the district court failed to take into account evidence of non-consumer confusion. • Non-consumer confusion may be relevant where there is confusion among: (1) potential customers; (2) non-consumers whose confusion could create an inference that consumers are likely to be confused; and (3) non-consumers whose confusion could influence consumers. Schwabe, Williamson & Wyatt | Portland, OR | Bend, OR | Salem, OR Intellectual Property Review—Updates and Changes from 2012 | Seattle, WA | Vancouver, WA | Washington, DC 3–18 Chapter 3—Trademark Law Review—2012 Cases and Trends Significant/Interesting Federal Cases from 2012 3. Rearden LLC v. Rearden Commerce Inc., 683 F.3d 1190 (9th Cir. 2012) (cont’d). • Practical Implications: – Don’t forget about non-consumer confusion in cases where, based on the nature of the goods or services at issue, consumer confusion is difficult to show. Schwabe, Williamson & Wyatt | Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington, DC Significant/Interesting Federal Cases from 2012 4. Skydive Arizona, Inc. v. Quattrocchi, 673 F.3d 1105 (9th Cir. 2012). • Ninth Circuit affirmed the jury’s award of actual damages, but rejected enhanced damages award. • Plaintiff was awarded $2.5 million in actual damages under 15 U.S.C. § 1117(a), largely attributable to alleged harm to plaintiff’s goodwill as a result of defendant’s intentional infringement. • Plaintiff did not provide a mathematical formula for calculating damages to its goodwill, instead pointing to its advertising expenditures in building up its reputation originally. Ninth Circuit held that only a “crude” measure of damages based on reasonable inferences can support an award of actual damages. • However, Ninth Circuit reversed enhanced damages award where district court had doubled jury’s actual damages award pursuant to Section 1117(a). Enhanced damages under the Lanham Act must be compensatory and not punitive. Schwabe, Williamson & Wyatt | Portland, OR | Bend, OR | Salem, OR Intellectual Property Review—Updates and Changes from 2012 | Seattle, WA | Vancouver, WA | Washington, DC 3–19 Chapter 3—Trademark Law Review—2012 Cases and Trends Significant/Interesting Federal Cases from 2012 4. Skydive Arizona, Inc. v. Quattrocchi, 673 F.3d 1105 (9th Cir. 2012) (cont’d). • Practical Implications: – Courts will not require a precise methodology to measure the extent of the damage so long as reasonable inferences can be drawn from evidence submitted by the plaintiff. – Any request for enhanced damages should be made from the perspective of compensation only. Schwabe, Williamson & Wyatt | Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington, DC Significant/Interesting Federal Cases from 2012 5. Louis Vuitton Malletier S.A. V. Ly USA, Inc. et al., 676 F.3d 83 (2d Cir. 2012). • Plaintiff fashion designer sued a counterfeiter and its directors under the Lanham Act. • Without access to certain records that had been seized by law enforcement, plaintiff could not prove actual damages, and as such, plaintiff asked for the maximum statutory damages under 15 U.S.C. § 1117(c) as well as attorneys’ fees under 15 U.S.C. § 1117(a). Defendants appealed. • The Second Circuit concluded that the omission of an express right to attorneys’ fees in Section 1117(c) did not mean that a plaintiff proceeding under Section 1117(c) could not claim attorneys’ fees under Section 1117(a). • In light of the intent of Section 1117(c) as a remedial measure in counterfeiting cases when actual damages under Section 1117(a) cannot be proven, denying an award of attorneys’ fees would be inconsistent with the intent of Section 1117(c). Schwabe, Williamson & Wyatt | Portland, OR | Bend, OR | Salem, OR Intellectual Property Review—Updates and Changes from 2012 | Seattle, WA | Vancouver, WA | Washington, DC 3–20 Chapter 3—Trademark Law Review—2012 Cases and Trends Significant/Interesting Federal Cases from 2012 5. Louis Vuitton Malletier S.A. V. Ly USA, Inc. et al., 676 F.3d 83 (2d Cir. 2012) (cont’d). • Practical Implications: – Creates circuit split with Ninth Circuit. The Ninth Circuit has expressly held in K&N Engineering v. Bulat, 510 F.3d 1079 (9th Cir. 2007) that a plaintiff cannot recover both statutory damages under Section 1117(c) and attorneys’ fees under Section 1117(a). Schwabe, Williamson & Wyatt | Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington, DC Significant/Interesting Federal Cases from 2012 6. Sunbeam Products, Inc. v. Chicago American Manufacturing, LLC, 686 F.3d 372 (7th Cir. 2012). • Defendant licensee continued selling products under the licensed marks despite the rejection of license by bankruptcy trustee and then current owner of the marks sued the defendant for trademark infringement. • The Seventh Circuit’s analysis focused on 11 U.S.C. §§ 365(n) and 365(g) of the Bankruptcy Code. • Under the Seventh Circuit’s analysis, the rejection constitutes a breach of the license by the licensee under Section 365(g) of the Bankruptcy Code only and does not constitute a termination. As the breach does not constitute a termination of the license, the licensee was free to continue using the licensed trademarks. Schwabe, Williamson & Wyatt | Portland, OR | Bend, OR | Salem, OR Intellectual Property Review—Updates and Changes from 2012 | Seattle, WA | Vancouver, WA | Washington, DC 3–21 Chapter 3—Trademark Law Review—2012 Cases and Trends Significant/Interesting Federal Cases from 2012 6. Sunbeam Products, Inc. v. Chicago American Manufacturing, LLC, 686 F.3d 372 (7th Cir. 2012) (cont’d). • Practical Implications: – Creates uncertainty as to the relationship between Section 365(g) and 365(n) of the Bankruptcy Code as to the process for preserving intellectual property rights in bankruptcy. – Creates a circuit split between Fourth Circuit and Seventh Circuit. See e.g. Lubrizol Enterprises, Inc. v. Richmond Finishers, Inc., 756 F.2d 1043 (4th Cir. 1985), (holding that a licensee could not seek to retain its contract rights in licensed intellectual property when the underlying license is rejected in bankruptcy by the licensor). Schwabe, Williamson & Wyatt | Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington, DC Significant/Interesting Federal Cases from 2012 7. Nike, Inc. v. Already, Inc. dba YUMS, 568 U.S. ___ (2013). • • • • Nike filed suit in federal court against Already alleging infringement and dilution of Nike’s product configuration trade dress and in response, Already filed a counterclaim alleging invalidity. Nike thereafter issued a broad covenant not sue in favor of Already and moved to dismiss its complaint and the counterclaim. Trial court dismissed the counterclaim and the Second Circuit affirmed. Under the voluntary cessation doctrine, Nike bore the “formidable” burden of showing that another trademark infringement claim against Already was not reasonably likely to occur. Supreme Court held that Nike’s covenant not to sue was sufficiently broad to render Already’s counterclaim moot in that it was unconditional and irrevocable and applied to past and current shoe designs and future designs that were “colorable imitations.” Schwabe, Williamson & Wyatt | Portland, OR | Bend, OR | Salem, OR Intellectual Property Review—Updates and Changes from 2012 | Seattle, WA | Vancouver, WA | Washington, DC 3–22 Chapter 3—Trademark Law Review—2012 Cases and Trends Significant/Interesting Federal Cases from 2012 7. Nike, Inc. v. Already, Inc. dba YUMS, 568 U.S. ___ (2013) (cont’d). • Practical Implications: – Look for unilateral covenants to become an important tool for trademark owners in developing and implementing enforcement strategies, especially where there is a risk that the infringing party is likely to seek declaratory relief concerning the validity of the asserted mark. – In cases where the alleged infringer has a strong case as to the invalidity of the asserted mark, look for alleged infringers to claim an intent to infringe after being confronted with a covenant not to sue. Schwabe, Williamson & Wyatt | Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington, DC Significant/Interesting TTAB Cases from 2012 1. L’Oreal S.A. v. Marcon, 102 U.S.P.Q.2d 1434 (T.T.A.B. 2012). • Applicant with history of filing intent-to-use applications for wellknown marks attempted to register L’OREAL PARIS for “aloe vera drinks.” • TTAB concluded that infringement was likely, relying primarily on strength of opposer’s L’OREAL-formative marks. • While goods at issue were not competitive or closely related, opposer submitted evidence tending to show that cosmetics and beverages might be related or that beverages were within L’Oreal’s natural zone of expansion. • TTAB further found lack of bona fide intent-to-use. Applicant had unfavorable history and no documents showing a bona fide intent-to-use. Schwabe, Williamson & Wyatt | Portland, OR | Bend, OR | Salem, OR Intellectual Property Review—Updates and Changes from 2012 | Seattle, WA | Vancouver, WA | Washington, DC 3–23 Chapter 3—Trademark Law Review—2012 Cases and Trends Significant/Interesting TTAB Cases from 2012 1. L’Oreal S.A. v. Marcon, 102 U.S.P.Q.2d 1434 (T.T.A.B. 2012) (cont’d). • Practical Implications: – Look for a lack of documentation on the part of the applicant to prepare to use the mark as a way of establishing lack of a bona fide intent to use the mark in commerce. – A pattern of filing intent-to-use applications for disparate goods under famous marks of others may also support a claim that the applicant lacks a bona fide intent to use applied for mark in commerce. Schwabe, Williamson & Wyatt | Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington, DC Significant/Interesting TTAB Cases from 2012 1. Shutemdown Sports, Inc. v. Lacy, 102 U.S.P.Q.2d 1036 (T.T.A.B. 2012). • Petitioner petitioned to cancel registrant’s registration for the mark SHUT IT DOWN, alleging both abandonment and fraud. • Registrant had applied for the mark on an in-use basis, but had only offered for sale 4 of the 113 products listed in his registration, and that further, no one had purchased goods sold under the mark in the past 5 years. • Because registrant failed to produce any evidence to corroborate his current or future use of the mark other then a self serving interrogatory, the TTAB concluded that the registrant had abandoned his rights in the mark. • Having granted the petition based on abandonment, the TTAB found it unnecessary to reach petitioner’s fraud claim. Schwabe, Williamson & Wyatt | Portland, OR | Bend, OR | Salem, OR Intellectual Property Review—Updates and Changes from 2012 | Seattle, WA | Vancouver, WA | Washington, DC 3–24 Chapter 3—Trademark Law Review—2012 Cases and Trends Significant/Interesting TTAB Cases from 2012 1. Shutemdown Sports, Inc. v. Lacy, 102 U.S.P.Q.2d 1036 (T.T.A.B. 2012) (cont’d). • Practical Implications: – Self-serving evidence of use by way of declaration or interrogatory response should be supported by documentary evidence supporting such use. – Fraud is not a favored basis for cancellation based on recent TTAB decisions. Shutemdown Sports suggests that the TTAB will avoid considering fraud claims when possible. Schwabe, Williamson & Wyatt | Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington, DC Significant/Interesting TTAB Cases from 2012 2. Reliance Standard Life Ins. Co. v. American National Ins. Co., 2012 TTAB LEXIS 168 (April 30, 2012) (non-precedential). • The TTAB denied applicant’s counterclaim for fraud predicated on material false statements made to USPTO based on lack of intent to deceive. • During the prosecution of opposer’s application, the opposer, through its attorney, had told a “half truth” in order to overcome a Section 2(d) refusal, stating that its annuity services sold under the mark were offered to employers, while failing to add that it also sold annuities to individuals. • Although false statements were material, the TTAB had doubt as to whether opposer had intended to deceive the USPTO or that the opposer had willfully withheld facts that would have resulted in the disallowance of registration. Schwabe, Williamson & Wyatt | Portland, OR | Bend, OR | Salem, OR Intellectual Property Review—Updates and Changes from 2012 | Seattle, WA | Vancouver, WA | Washington, DC 3–25 Chapter 3—Trademark Law Review—2012 Cases and Trends Significant/Interesting TTAB Cases from 2012 2. Reliance Standard Life Ins. Co. v. American National Ins. Co., 2012 TTAB LEXIS 168 (April 30, 2012) (non-precedential) (cont’d). • Practical Implications: – Proving fraud is difficult under the TTAB’s clear and convincing evidence standard. Even false statements, without an intent to deceive, will likely not result in a fraud finding. Schwabe, Williamson & Wyatt | Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington, DC Significant/Interesting TTAB Cases from 2012 3. In re the Government of the District of Columbia, 101 U.S.P.Q.2d 1588 (T.T.A.B. 2012). • Applicant sought to register the official seal of the District of Columbia for various goods. • The TTAB refused registration of the official seal as a trademark pursuant to Section 2(b) of the Lanham Act, which prevents registration of, among other things, official government insignia. • Section 2(b) bars registration of all official government insignia, regardless of whether the governmental entity seeks to register the insignia itself. Schwabe, Williamson & Wyatt | Portland, OR | Bend, OR | Salem, OR Intellectual Property Review—Updates and Changes from 2012 | Seattle, WA | Vancouver, WA | Washington, DC 3–26 Chapter 3—Trademark Law Review—2012 Cases and Trends Significant/Interesting TTAB Cases from 2012 3. In re the Government of the District of Columbia, 101 U.S.P.Q.2d 1588 (T.T.A.B. 2012) (cont’d). • Practical Implications: – Also see In re City of Houston, 101 U.S.P.Q.2d 1534 (T.T.A.B. 2012), which held similarly. – A potential end run around this is to create a mark similar to the governmental body’s official seal to use as a trademark. Schwabe, Williamson & Wyatt | Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington, DC Significant/Interesting TTAB Cases from 2012 4. Research in Motion Limited v. Defining Presence Marketing Group, Inc. et al., 102 U.S.P.Q.2d 1187 (T.T.A.B. 2012). • Applicant began filing applications to register the mark CRACKBERRY in connection with online computer services and various clothing items. Opposer opposed on dilution grounds. • Opposer successfully demonstrated that its BLACKBERRY mark was famous, overcoming TTAB’s traditional high standard. • The TTAB rejected the applicant’s parody defense (i) it was not the applicant who had first coined the term CRACKBERRY; (ii) the services offered by applicant under the mark were closely related to opposer’s services Applicant’s parody defense was therefore inapplicable. Schwabe, Williamson & Wyatt | Portland, OR | Bend, OR | Salem, OR Intellectual Property Review—Updates and Changes from 2012 | Seattle, WA | Vancouver, WA | Washington, DC 3–27 Chapter 3—Trademark Law Review—2012 Cases and Trends Significant/Interesting TTAB Cases from 2012 4. Research in Motion Limited v. Defining Presence Marketing Group, Inc. et al., 102 U.S.P.Q.2d 1187 (T.T.A.B. 2012) (cont’d). • Practical Implications: – The TTAB does not often sustain oppositions on dilution grounds, so this case is a good road map for alleging and proving dilution as a grounds to oppose the registration of a mark. – The TTAB also relied on the strength of applicant’s BLACKBERRY-formative marks in sustaining the opposition on likelihood of confusion grounds. Schwabe, Williamson & Wyatt | Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington, DC Issues and Trends from 2012 and Looking Forward 1. • • • Practical Impacts of New gTLDS. In June 2011, the Internet Corporation for Assigned Names and Numbers (“ICANN”) formally approved the expansion of the number of generic top-level domains (“gTLDs”). Although much hyped, the new gTLDs have not had a substantial impact on most brand owners due largely to cost. The cost associated with obtaining and operating new gTLD are substantial – a $185,000 evaluation fee to ICANN, plus additional fees associated with dealing with third party objections, auctions that may occur should multiple applicants apply to operate the same registry, and the people and hardware costs of owning and operating a registry. Schwabe, Williamson & Wyatt | Portland, OR | Bend, OR | Salem, OR Intellectual Property Review—Updates and Changes from 2012 | Seattle, WA | Vancouver, WA | Washington, DC 3–28 Chapter 3—Trademark Law Review—2012 Cases and Trends Issues and Trends from 2012 and Looking Forward 1. • • • Practical Impacts of New gTLDS (cont’d). As of June 13, 2012, ICANN received 1,930 applications, including 84 community-based applications, 66 applications for geographic names, and 116 internationalized domain names. The period for filing formal objections began on June 13, 2012, and has been extended to March 13, 2013. Once the objection filing period closes, objections can still be made, but will instead be resolved through a separate dispute resolution process that will take approximately five (5) months. Any third party with legitimate grounds to file a formal objection can do so on any one of the following grounds: (1) string confusion; (2) legal rights; (3) limited public interest; community. Schwabe, Williamson & Wyatt | Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington, DC Issues and Trends from 2012 and Looking Forward 2. Changes to the Federal Dilution Statue. • In 2006, Congress revised the FTDA with the enactment of the Trademark Dilution Revision Act (“TDRA”), which more clearly specified the requirements and limitations of a federal dilution claim. • However, there was an error in the TDRA, as a slight revision by the Senate resulted in the text of the TDRA being changed such that a federal registration was a bar to both state and federal dilution actions. This error resulted in the TTAB recently granting a respondent’s motion to dismiss a petitioner’s federal dilution claim in a cancellation action, with the TTAB relying on the respondent’s federal registration. See Academy of Motion Picture Arts & Sciences v. Alliance of Professionals & Consultants, Inc., 104 U.S.P.Q.2d 1234 (TTAB 2012). • In October 2012, President Obama signed into law a bill that amends the TDRA to correct the error and restore the statute’s intended meaning. The amendment is not retroactive. Schwabe, Williamson & Wyatt | Portland, OR | Bend, OR | Salem, OR Intellectual Property Review—Updates and Changes from 2012 | Seattle, WA | Vancouver, WA | Washington, DC 3–29 Chapter 3—Trademark Law Review—2012 Cases and Trends Issues and Trends from 2012 and Looking Forward 3. Potential Legislations to Protect Fashion Designs • In 2013, Congress is likely to consider Senate Bill 3523, or what is being called the Innovative Design Protection Act (“IDPA”). While the IDPA would be an amendment to the federal Copyright Act, the rights afforded under the act would be similar to trade dress rights. Fashion designs protectable under the IDPA would, for a three year non-renewable period and without the need to register the design, be protected against “substantially identical” designs. “Substantially identical” is defined as “an article of apparel which is so similar in appearance” that it is “likely to be mistaken for the protected design, and contains only those differences in construction or design which are merely trivial.” • • • Schwabe, Williamson & Wyatt | Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington, DC Issues and Trends from 2012 and Looking Forward 4. Update on Stop Online Privacy Act and the PROTECT IP Act. • The Stop Online Privacy Act (“SOPA”), H.R. 3261, and the PROTECT IP Act (“PIPA”), Senate Bill 968, were proposed bills that aimed to crack down on intellectual property infringement on the Internet. PIPA is the House version of the bill, while SOPA is the Senate version. • While the bills are primarily aimed at combating online copyright infringement, the intent of the bills is to restrict access to websites selling counterfeit products into the U.S. market. • Both SOPA and PIPA provide a private right of action for IP owners against websites dedicated to infringing activities, in addition to court orders against third parties providing services to those sites. • SOPA and PIPA encountered significant public protest and were as a result derailed during the 112th Congress. Look for Congress to potentially take up new versions of SOPA and/or PIPA during the 113th Congress and/or potentially look into other means of addressing online counterfeiting. Schwabe, Williamson & Wyatt | Portland, OR | Bend, OR | Salem, OR Intellectual Property Review—Updates and Changes from 2012 | Seattle, WA | Vancouver, WA | Washington, DC 3–30 Chapter 3—Trademark Law Review—2012 Cases and Trends DISCLAIMER The information included in this document is intended for informational purposes only and is not intended to serve as legal advice regarding specific matters nor should it be construed as a legal opinion. Neither this presentation or this document establish an attorney-client relationship between you and Schwabe, Williamson & Wyatt. The information included in this document should not be used to replace the advice of a licensed attorney. Schwabe, Williamson & Wyatt | Portland, OR | Bend, OR | Salem, OR Intellectual Property Review—Updates and Changes from 2012 | Seattle, WA | Vancouver, WA | Washington, DC 3–31 Chapter 3—Trademark Law Review—2012 Cases and Trends Intellectual Property Review—Updates and Changes from 2012 3–32 Chapter 4 State of USPTO Operations—Presentation Slides Mary Boney Denison Deputy Commissioner for Trademark Operations U.S. Patent and Trademark Office Alexandria, Virginia Chapter 4—State of USPTO Operations—Presentation Slides Intellectual Property Review—Updates and Changes from 2012 4–ii Chapter 4—State of USPTO Operations—Presentation Slides State of USPTO Operations Mary Boney Denison Deputy Commissioner for Trademark Operations February 15, 2013 1 Trademark Staffing • 670 total Trademark employees • 384 examining attorneys • Almost 90% of examining attorneys telework full time in 28 different states • Hired 34 examining attorneys in FY12. Expect to have 29 new lawyers starting work in the next several months. 2 Intellectual Property Review—Updates and Changes from 2012 4–1 Chapter 4—State of USPTO Operations—Presentation Slides Trademark Performance: Application Filings 450,000 • FY 2011: 398,667 classes 400,000 350,000 300,000 250,000 • FY 2012: 415,026 classes 200,000 150,000 100,000 50,000 FY 2013 FY 2012 FY 2011 FY 2010 FY 2009 FY 2008 FY 2007 FY 2006 FY 2005 FY 2004 FY 2003 FY 2002 0 • FY 2013: 433,000 classes projected 2/4/2013 3 Trademark Workflow New application submitted via TEAS, paper or an extension of protection under Madrid Protocol Office Action OR Approval for Publication (1)Examination Pre Examination processing Publish for Opposition Support Unit (2) ID/Class & (3) Managing/Sr Attorney Reviews Law Offices/Examinatio n Review Notice of Allowance OR Registration Intent to Use Unit for SOU or divisional Law Office Review Sec 8/71 Continuing Use Statement (Post Reg.) Intellectual Property Review—Updates and Changes from 2012 4–2 Chapter 4—State of USPTO Operations—Presentation Slides Performance Results • E-Government • Pendency • Quality 5 Trademark Performance: E-Government 6 Intellectual Property Review—Updates and Changes from 2012 4–3 Chapter 4—State of USPTO Operations—Presentation Slides Trademark Performance: Pendency FY 2013 Trademark Performance Measures FIRST ACTION PENDENCY First action pendency from date of filing to first office action in months. DISPOSAL PENDENCY Disposal pendency from date of filing to issuance of a notice of allowance, registration, or abandonment – including suspended and inter partes proceedings. DISPOSAL PENDENCY Disposal pendency from date of filing to issuance of a notice of allowance, registration, or abandonment – excluding suspended and inter partes proceedings. FY 2013 Targets FY 2013 1stQ Results 2.5 – 3.5 3.3 14.5 11.8 12.0 10.3 7 Trademark Performance: Quality FY 2013 Trademark Performance Measures FIRST ACTION COMPLIANCE In-process review evaluation of the statutory bases for which the Office raises issues and or refuses marks for registration based on the first office action. FY 2013 Targets FY 2013 Q1 Results 95.5% 95.0% 97.0% 95.4% 23.0% 31.5% FINAL ACTION COMPLIANCE In-process review evaluation of the statutory bases for which the Office raises issues and or refuses marks for registration based on the examiner’s approval or denial of the application. EXCEPTIONAL OFFICE ACTION Measure indicating the comprehensive quality of the first Office action search, evidence, writing and decision making. 8 Intellectual Property Review—Updates and Changes from 2012 4–4 Chapter 4—State of USPTO Operations—Presentation Slides Exceptional Office Actions Criteria: o Correctness in decision making o Quality of the search o Quality and relevance of evidence attached o Clarity of the written Office Action 9 Current Initiatives • • • • • Enhance Electronic OG Post Registration Pilot ID/Class Improvements Stakeholder Outreach TM5 10 Intellectual Property Review—Updates and Changes from 2012 4–5 Chapter 4—State of USPTO Operations—Presentation Slides Enhanced Electronic OG • Last issue of paper version of the Official Gazette was published Christmas Day. • New direct page link to OG in Notice of Publication • New electronic format to be more searchable and accessible in the future. 11 Post-Registration Specimen Pilot • Began Summer 2012 • Permits requirements for additional . information and specimens • Limited program (approx. 500 Section 8/71 filings) to assess accuracy of post-registration use allegations • Information gathering tool; next steps will be determined after evaluation 12 Intellectual Property Review—Updates and Changes from 2012 4–6 Chapter 4—State of USPTO Operations—Presentation Slides ID/Class Improvements • Working with user groups (INTA, IPO) to update and improve entries in ID Manual • Adding “id checker” function to TEAS forms • Complete redesign of ID manual planned for the future 13 ID Checker Intellectual Property Review—Updates and Changes from 2012 4–7 Chapter 4—State of USPTO Operations—Presentation Slides ID CONTACTS: • Customer Service 571-272-8950 (ask for ID/Class staff attorney on duty) • [email protected] • Administrator Jennifer Chicoski [email protected] Stakeholder Outreach Program • INTA/USPTO Roundtables throughout US • Give trademark professionals a chance to interact on current topics of interest, exchange practice tips, and raise important issues with USPTO Leadership 16 Intellectual Property Review—Updates and Changes from 2012 4–8 Chapter 4—State of USPTO Operations—Presentation Slides INTA/USPTO Roundtable Locations in 2012 • • • • • • • • • • Past Locations: New York, NY Washington, DC Wilmington, DE Boston, MA Raleigh, NC Chicago, IL Seattle, WA Charlotte, NC Detroit, MI 17 Expanded Trademark Trilateral (TM5) • The USPTO, EU Trademark Office, Japanese Patent Office, Chinese Trademark Office and Korean Intellectual Property Office met in Barcelona on October 30-31, 2012 • User group session • Focus on collaboration and harmonization projects to benefit users in all Partner countries 18 Intellectual Property Review—Updates and Changes from 2012 4–9 Chapter 4—State of USPTO Operations—Presentation Slides USG Role in gTLDs • Led by National Telecommunications Information Administration (NTIA) which is also part of the Department of Commerce • USPTO participates in ICANN’s Government Advisory Council (GAC) • USPTO works with U.S. brand owners to ensure protection • Two 2012 meetings held by NTIA and USPTO for brand owners 19 Generic Top Level Domain Names (gTLDs) • January 12, 2012 Application window opened • June 13, 2012 (1) “Reveal Date” showed 1,930 applications filed (116 IDNs and the rest in Latin characters) (2) Opened Application Comment Period which ended September 26. Over 11,000 comments received. • Initial Evaluation of Applications began in July 2012 • Clarifying questions pilot began in August to make clear what evaluators needed in order for applicant to achieve passing score. 20 Intellectual Property Review—Updates and Changes from 2012 4–10 Chapter 4—State of USPTO Operations—Presentation Slides gTLD Status • Prioritization Draw on 12/17/12. Priority List on ICANN’s webpage. • Awaiting evaluation results of first priority applicants. • Formal Objection Period to applications scheduled to end March 13, 2013. • TM Clearinghouse • Launch unlikely before late 2013. 21 Brand Owner gTLD Considerations 1. Policing and mark monitoring services 2. Review of gTLD applications 3. Consider filing a public objection with ICANN (standing not required) 4. Consider filing objections at WIPO 5. Considering filing applications for 2d level domains 6. Consider registration of marks with Trademark Clearinghouse and USPTO 22 Intellectual Property Review—Updates and Changes from 2012 4–11 Chapter 4—State of USPTO Operations—Presentation Slides TTAB Position in .music • In In re the Dot Communications Network LLC, the TTAB affirmed the examiner’s refusal to register five applications for .music in standard characters for a variety of computer related services as “merely descriptive”. • Eight companies filed gTLD applications for .music including Google and Amazon, but not the trademark applicant. 23 USPTO Policy 1. “DOT” = “.” 2. • Potential refusals include: (a) failure to function (for cases with or without a specimen) (b) merely descriptive (c) misdescriptiveness/deceptiveness • • 24 Intellectual Property Review—Updates and Changes from 2012 4–12 Chapter 4—State of USPTO Operations—Presentation Slides Recent Improvements • Electronic Filing • TMNG (IT Project) • TMEP/Exam Guide Comments 25 Electronic Filing Recent changes and upgrades: • Multimedia files may be attached in new applications • Multiple email addresses in TEAS forms • Saved portable forms now retain attachments Please email [email protected] for concerns regarding electronic filing. 26 Intellectual Property Review—Updates and Changes from 2012 4–13 Chapter 4—State of USPTO Operations—Presentation Slides Trademarks Next Generation (TMNG) • Improving and modernizing our systems • Trademark Status and Document Retrieval (TSDR) 2.0: – Assignments information – Links to specific case data/documents – 3rd party applications on our links will still work • Projects to improve infrastructure and enhance systems 27 TMEP/Exam Guide Comments • New policy collaboration tool for suggestions and/or changes to Trademark Manual of Examining Procedure (TMEP) and new Examination Guides. http://uspto-tmep.ideascale.com/ • Allows public to participate in online discussion and contribute ideas 28 Intellectual Property Review—Updates and Changes from 2012 4–14 Chapter 4—State of USPTO Operations—Presentation Slides Educating the Public • • • • • New Public Outreach Trademark Videos TM Expo 3rd Party Communications Law School Certification Pilot 29 New Educational Outreach Program • Launched new educational outreach program in February 2012 directed at small businesses, entrepreneurs, and students around the country • Speaking to a variety of lay audiences to discuss the importance of TM protection (e.g. business schools and business associations) • Rewrote Basic Facts Booklet 30 Intellectual Property Review—Updates and Changes from 2012 4–15 Chapter 4—State of USPTO Operations—Presentation Slides Educating the Public: TMIN Videos Introduction to the USPTO and Trademark Basics Before You File Searching Applicant Information Drawing Issues Goods and Services Filing Basis Information Specimen After You File Post-Registration Issues Counterfeiting 31 Educating the Public: TM Expo Annual TM Expo: October 18-19 (tentative) 32 Intellectual Property Review—Updates and Changes from 2012 4–16 Chapter 4—State of USPTO Operations—Presentation Slides Third Party Solicitations • Complaints & Confusion! • Warning notice on website regarding third party solicitations that are misleading http://www.uspto.gov/trademarks/solicitation_warnings.jsp • Warning notice sent with TM application filing receipts and registration certificates 33 Law School Certification Pilot • Pilot program allows law students to prosecute trademark applications before the agency under the guidance of a law school faculty clinic supervisor • 24 schools now participating 34 Intellectual Property Review—Updates and Changes from 2012 4–17 Chapter 4—State of USPTO Operations—Presentation Slides USPTO Communications Please use [email protected] – for miscellaneous suggestions and/or comments. We want to hear from you! 35 Thank You! • Any questions? Mary Boney Denison Deputy Commissioner for Trademark Operations [email protected] 36 Intellectual Property Review—Updates and Changes from 2012 4–18 Chapter 4—State of USPTO Operations—Presentation Slides Intellectual Property Review—Updates and Changes from 2012 4–19 Chapter 4—State of USPTO Operations—Presentation Slides Intellectual Property Review—Updates and Changes from 2012 4–20