When applying for trademark/service mark registration with the U.S. Patent and Trademark Office (USPTO), an examining attorney reviews the application to determine whether it complies with applicable statutes and rules. If there are any substantive, technical, or procedural deficiencies, the examining attorney will likely issue an Office Action letter explaining any of these refusals.  One of these refusals can be based on the proposed mark failing to function as a trademark because the proposed mark merely communicates information about the goods/services, uses widely used commonplace, social, political, or religious messages, or directly quotes passages or citations from religious texts. Some examples include: “I DC” for clothing items; “ONCE A MARINE, ALWAYS A MARINE” for various clothing items; “BRAND NAMES FOR LESS” for retail store services; and “PROUDLY MADE IN THE USA” for electric shavers.  

The U.S. Patent and Trademark Office (USPTO) recently issued a guide for aiding in the determination of whether a proposed mark functions as mark.  The guide creates categories for types of matter that may be considered merely informational, discusses when an examining attorney must refuse registration or require a disclaimer, provides applicant response options, and illustrates case law examples. For example, under applicant response options, should the applicant receive this type of refusal, the applicant must show that the public perception of the proposed mark is that of a source indicator.  Evidence of the applicant's use as a mark or exclusive use in the relevant marketplace for the goods/services under the mark can be supportive towards overcoming this refusal.

Friday, 28 July 2017 03:53

Continued Infringement Costs Apple

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In 2014, the Wisconsin Alumni Research Foundation (WARF) sued apple for infringement of U.S. Patent No 5,781,752 (the ‘752 Patent). In a related proceeding, the USPTO declined to institute an Inter Partes Review (IPR) brought by Apple to invalidate the ‘752 Patent. The ‘752 Patent is directed to computer architecture technology that can optimize processor performance. Specifically, a “predictor circuit” may anticipate user instructions based on previously stored data. WARF had alleged that its patented technology was being used on several products made by Apple, including the iPhone. In July of 2017, a U.S. District Judge in Wisconsin, William M. Conley, ordered Apple to pay over $506 million for infringement of several claims of the ‘752 Patent.

In October of 2015, following a two-week trial, a jury issued an award of over $234 million against Apple. Judge Conley’s order adds another $282 million in supplemental damages, ongoing royalties, interests, and costs. The order specified supplemental damages at the rate of $1.61 per infringing unit sold after October 26, 2015, and ongoing royalties at the rate of $2,74 per infringing unit thereafter and until December 26, 2016, the date expiration of the ‘752 Patent. The $282 million stem from Apple’s alleged continued infringement of the ‘752 Patent after the Jury's award in October of 2015.

 

In May of 2017, the U.S. Court of Appeals of the Federal Circuit in Helsinn Healthcare, S.A. v. Teva Pharmaceuticals USA, Inc., 855 F.3d 1356, clarified, to some extent, the scope of the on sale bar under the America Invents Act (AIA). The on sale bar invalidates a patent and is triggered if the invention is sold or otherwise offered for sale more than one year prior to the date of the filing of a patent application.

Helsinn owned four related patents (three pre-AIA and one post-AIA) covering a formulation of palonosetron, a drug for cancer patients that treats nausea. Approximately two years before filing a patent application at the USPTO, Helsinn entered into two different agreements for the purchase of the drug with MGI Pharma, Inc. The agreements did not specify whether the drug's dosage would be 25 mg or 75 mg. Further, the agreements were contingent upon obtaining FDA approval for the drug.

Subsequently, Teva filed an Abbreviated New Drug Application (ANDA) for a generic equivalent of palonosetron. Helsinn sued Teva for patent infringement under the Hatch-Waxman Act. The trial court found that under the AIA, a secret sale does not invalidate patent, and that the disclosure of the patent needs to be made public to trigger the on sale bar.  

On appeal, the Federal Circuit found that all four patents were invalid both under the pre-AIA and post-AIA versions of the one sale bar. The Federal Circuit held that a sale of the patented goods had occurred and that the fact the agreements were contingent upon obtaining FDA approval did not alter this result. Under Pfaff v. Wells Electronics, Inc., 525 US 55 (1988), the on sale bar is triggered if an invention is the subject of a “commercial sale” and is also “ready for patenting.” Traditionally, courts have looked to the UCC to determine if there has been a commercial sale.  With regard to the second prong of Pfaff, an invention is ready for patenting when there is actual reduction to practice or when there are appropriate disclosure for an ordinary person skilled in the art to practice the invention.

Following the Pfaff analysis, the Federal Circuit held that post-AIA, the details of an invention need not be revealed to the public to trigger the on sale bar. It is sufficient that there be a public sale. Here, the Federal Circuit also found that the present invention was ready for patenting notwithstanding the fact that further testing was being conducted. The Federal Circuit did not, however, address whether a private sale implicates the on sale bar under the AIA. This decision has significant repercussions because public transactions for the commercialization of an invention can trigger the on sale bar, even if the transaction itself does not disclose the details of the product or invention.  

   

On June 19, 2017, the Supreme Court issued a landmark opinion, holding that the First Amendment’s right to free speech extends to trademark protection of words and phrases that are purportedly offensive. 

For over half a century, trademark law prohibited registration of marks that were prejudicial to or could otherwise be deemed disparaging to certain groups or people.  Significantly, however, in Matal v. Tam, 137 S. Ct. 1744 (2017), an Asian-American band specifically chose the name “Slants,” believing “that by taking that slur as the name of their group, they [would] help to ‘reclaim’ the term and drain its denigrating force.”  Id. at 1751.  After the en banc Federal Circuit found that the disparagement clause under the Lanham Act was facially unconstitutional, the United States Patent and Trademark Office filed a petition for certiorari, which the Supreme Court granted in order to weigh in on the disparagement clause at issue, and whether the proposed trademark was official words endorsed by the government, or conversely, words of a private person. 

In its unanimous decision, the high court answered this question by declaring that “[t]rademarks are private, not government speech…[and] [t]he public expression of ideas may not be prohibited merely because the ideas are themselves offensive to some of their hearers.”  Id. at 1760 (internal citation omitted).  The Court also expressed concern with broadening the government speech doctrine, and in affirming the Federal Circuit’s judgment, held that that “if private speech could be passed off as government speech by simply affixing a government seal of approval, government could silence or muffle the expression of disfavored viewpoints.”  Id. at 1748.

Tam may very well have wide reaching effects.  While the Supreme Court made clear that a word or phrase in a trademark registration will not constitute government speech, the aftermath of this decision could give rise to various potentially “offensive” or “disparaging” trademark applications, which may ultimately rest with the consumer in determining whether to accept or reject the mark in its use in commerce. 

Because many issues can arise in applying for a trademark, Malloy and Malloy, P.L’s knowledgeable and experienced intellectual property attorneys are ready to advise and guide you along the way from an application through registration, and subsequent enforcement measures. 

Wednesday, 12 July 2017 22:09

Important Copyright Notice

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This is an important notice regarding the Digital Millennium Copyright Act (“DMCA”). The DMCA has "safe harbor" provisions that may shield online service providers from copyright infringement liability with respect to content that is posted or uploaded on a website by others. In order to seek to take advantage of this "safe harbor" protection, online service providers must designate an agent that will receive notifications of claimed copyright infringement with respect to user-generated content on their web sites. If you have designated an agent for this purpose in the past, please note that any designation that was made using the U.S. Copyright Office’s former registration system will automatically expire on January 1, 2018. Therefore, it is critical for online service providers to file a new designation before the end of 2017. Our firm handles these filings and has been appointed as the designated agent for DMCA take-down notifications for clients. For more information about the process, or to speak to one of our attorneys about having our firm designated as your agent for take-down notifications under the DMCA's "safe harbor” provisions, please contact our office at 305-858-8000.

On May 22, 2017, the United States Supreme Court in TC Heartland LLC v. Kraft Foods Group Brands LLC, 581 U.S. ___ (2017) narrowed the scope of where a corporate defendant “resides” for venue purposes under the patent venue statute (28 U.S.C. § 1400(b)).  Previously, patent plaintiffs could sue corporate defendants in any district court where the corporation was subject to personal jurisdiction, essentially where a defendant sold products.  However, and as a result of TC Heartland’s unanimous (8-0) decision reversing the Federal Circuit, 28 U.S.C. § 1400(b) remains the only applicable patent venue statute, and as applied to domestic corporations in patent cases, a “defendant resides only in the state of its incorporation.”

A number of results are likely in the wake of this dramatic shift in venue law.  First, TC Heartland presents a significant roadblock to patentees filing lawsuits in a particular forum – which critics label “forum shopping” -- simply because a corporate defendant placed a product into the stream of commerce.  The inevitable outcome will steer the filing of patent cases to Delaware, the state where many U.S. companies are incorporated.  Second, and where litigation is already pending, corporate defendants are likely to file motions to change venue (assuming the waivable defense of venue has been properly preserved). 

 Third, and as alternative to filing suit in the defendant’s state of incorporation, plaintiffs’ attorneys may file suit in a forum that instead satisfies the second prong of 28 U.S.C. § 1400(b), “where the defendant has committed acts of infringement and has a regular and established place of business.”  While the Federal Circuit has interpreted this phrase to mean doing business “through a permanent and continuous presence,” parties will surely battle over the confines of the pertinent statutory language, and litigate factors such as physical stores of the business, where key personnel are located, and the business’ online presence.  Fourth, situations may arise where there is no district court in which venue would be proper for all named defendants.  To avoid risking inconsistent rulings from litigating cases in separate districts, expect to see an increase in multi-jurisdiction litigation (“MDL”), which can serve as a useful vehicle in litigating overlapping issues in pretrial proceedings, with the individual cases referring back to the original court for trial.

 Many issues in the field of patent law will arise in the aftermath of TC Heartland.  Malloy and Malloy, P.L’s knowledgeable and experienced intellectual property lawyers are ready to advise you and guide your case as these issues come to the forefront. 

In the case of TC Heartland LLC v. Kraft Foods Group Brands LLC, the United States Supreme Court issued an opinion that is likely to limit the universe of available venues in which a patent holder can bring an action for infringement. Under the particular patent venue statute, the appropriate venue for patent infringement is anywhere infringement has occured, as long as the accused infringer has a regular and established place of business, or where the accused infringer "resides." In the context of a corporation, the definition of residing had been open to interpretation, but the TC Heartland opinion made explicit that residence under the patent venue statute refers only to the state of incorporation. 

Firm Attorneys Peter Matos, Meredith Mendez and Jonathan Woodard were successful in enforcing  the valuable intellectual property rights of well-known jeweler Merit Diamond Corporation related to its highly successful Sirena®  Collection in federal court in Miami, Florida.  Merit sued Defendants, Sears, Roebuck & Co., Sears Holdings Management Corporation, Sears Brands, LLC, Kmart Operations LLC, Kmart Corporation, iStar Jewelry LLC, Yelnats, Inc., and Stanley Creations, Inc. for copyright and trade dress infringement due to their sale and manufacture of infringing jewelry.  The Court entered a Judgment upon consent in favor of Merit requiring the Defendants to pay Merit Diamond the amount of $90,000 and permanently cease all manufacture, distribution, and sale of the infringing products. http://bit.ly/2qT9pwg

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