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Tag Archives: TTAB

SoCal IP Institute :: October 6, 2014 :: Inequitable Conduct and Acquired Distinctiveness in the TTAB

Our weekly SoCal IP Institute meeting on Monday, October 6, 2014 will be a discussion of a recent inequitable conduct case and a TTAB decision on acquired distinctiveness of trade dress. Brief synopses of the cases appear below.

American CalCar, Inc. v. Honda, No. 2013-1061 (Fed. Cir. Sept. 26, 2014) (available here).  Calcar appealed from a decision of the Southern District of California that the asserted three patents, related to in-car navigation systems, were unenforceable for inequitable conduct before the U.S. Patent and Trademark Office.  In short, the inventor, who also prepared the patent applications, failed to disclose that he had seen and photographed a Honda-created navigation system before filing.  Honda alleged that the details that he had seen in the Honda system were exactly those details that he eventually claimed in the asserted patents.  The case proceeded to trial.  After trial, the court found the two otherwise-valid patents unenforceable for inequitable conduct.

During the appeal process, the Therasense case was decided, altering the standard for finding equitable conduct.  The case was remanded for additional briefing on “materiality” and the district court still found that “but for” the withholding of the information, the patent would not have issued and that the inventor had specific intent to deceive the Patent Office.  This case is somewhat strange because the district court found that a particular limitation related to the interface was not disclosed in the Honda prior-art system, but still found the “but for” causation.  That is, the prior art did not expressly disclose one of the limitations, but was still sufficient for a finding of materiality because what it did disclose would “perform the same function” as the claim limitation that was not otherwise shown. As to intent, the inventor disclosed the existence of the earlier system, but did not disclose his photographs and other notes regarding the system.  Thus, he acted with the specific intent required and the district court’s decision finding all three of the asserted patents unenforceable for his inequitable conduct was affirmed.

In re Koninklijke Philips Electronics N.V., Ser. No. 85092079 (Sept. 26, 2014) (available here). Philips sought to register the “base assembly” of its electric toothbrushes on the Principal Register as trade dress.  It has a series of indentations around the base of the head of the toothbrush.  After a refusal to register, the TTAB affirmed finding that 10 years of continuous use, without “look-for” advertising, and in spite of voluminous sales was insufficient to demonstrate that the product had obtained “acquired distinctiveness” such that the consuming public associated the base assembly with the Philips brand.  The examining attorney’s refusal to register was affirmed.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, October 6, 2014 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

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SoCal IP Institute :: October 14, 2013 :: Species Election and Confusing First Impressions

Our weekly SoCal IP Institute meeting on Monday, October 14, 2013 will be a discussion led by Guy Cumberbatch of our Santa Barbara Office regarding the effects of species restrictions on patent claim scope, a series of TTAB decisions testing whether you can spot likelihood of confusion, and an examiner’s response to a patent claiming godly powers. A brief synopsis of the patent case appears below.

Plantronics, Inc. v. Aliph, Inc. (Fed. Cir. 2013) (available here). Plantronics sued Aliph for infringement of U.S. Patent No. 5,712,453, entitled “Concha Headset Stabilizer.  The district court granted Defendant’s motion on claim construction, partly based on a species election during prosecution of Plantronics patent.  The Federal Circuit reversed on that issue because the election did not clearly disavow certain structures.

We will also discuss four recent Section 2(d) likelihood of confusion cases in front of the TTAB.  Can you predict the outcome just by looking at the marks and the identified goods/services, without more? Two of the four refusals were reversed–which are they?

Finally, we will briefly discuss an examiner’s response to a patent application claiming “godly powers.”

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, October 14, 2013 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

SoCal IP Institute :: August 19, 2013 ::

Our weekly SoCal IP Institute meeting on Monday, August 19, 2013 will be a discussion of a recent 9th Circuit decision regarding player likenesses in games and a non-precedential case at the TTAB involving the Morehouse defense. Brief synopses of the cases appear below.

Seltzer v. Green Day, Inc., Case No. 11-56573 (9th Cir. August 7, 2013) (available here).  Plaintiff Derek Seltzer sued the band Green Day for using a backdrop having one of Seltzer’s drawings in one of Green Day’s videos. On summary judgment, the district court held that Green Day’s use fair use. The district court then awarded attorney’s fees in favor of Green Day. On appeal, the Federal Circuit affirmed the district court’s finding that the use was fair use, but vacated the award of attorney’s fees.

Monolithic Power Systems v. O2 Micro, Case No. 2012-1221 (Fed. Cir. August 13, 2013) (available here). The parties here are competitors in the integrated circuit industry and have been involved in litigation for over a decade. The district court held the case exceptional and awarded over $9M in attorney’s fees. The Federal Circuit affirmed the district court’s decision.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, August 19, 2013 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

SoCal IP Institute :: August 12, 2013 :: Use of Player Likeness in Games and the Morehouse Defense

Our weekly SoCal IP Institute meeting on Monday, August 12, 2013 will be a discussion of a recent 9th Circuit decision regarding player likenesses in games and a non-precedential case at the TTAB involving the Morehouse defense. Brief synopses of the cases appear below.

Keller v. EA, Inc., Case No. 10-15387 (9th Cir. July 31, 2013) (available here).  The district court concluded that the game developer, Electronic Arts (“EA”), had no First Amendment defense against the right-of-publicity claims of the football player, Samuel Keller. The 9th Circuit affirmed. Under the “transformative use” test developed by the California Supreme Court, EA’s use did not qualify for First Amendment protection as a matter of law because it literally recreates Keller in the very setting in which he has achieved renown. The other First Amendment defenses asserted by EA did not defeat Keller’s claims either.

Citadel Federal Credit Union v. KCG IP Holdings LLC, Canc. No. 92/055,228 (T.T.A.B. July 10, 2013) (available here). Citadel filed a petition for cancellation of KCG’s mark on grounds of priority and likelihood of confusion.  KCG IP received numerous extensions of time to answer and, eventually, filed an answer and a motion for summary judgment. KCG asserted the so-called Morehouse defense and argued that the marks were essentially the same and cover essentially the same goods and services.  Citadel countered that KCG applied a more lenient likelihood of confusion test, rather than the required “essentially the same” test.  Because the marks were not “essentially the same” with Citadel’s mark including a crenelated design.  The Board ruled that the Morehouse defense was unavailable to KCG and denied the motion for summary judgment.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, August 12, 2013 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

SoCal IP Institute :: August 5, 2013 :: Use of Player Likeness in Games and the Morehouse Defense

Our weekly SoCal IP Institute meeting on Monday, August 5, 2013 will be a discussion of a recent 9th Circuit decision regarding player likenesses in games and a non-precedential case at the TTAB involving the Morehouse defense. Brief synopses of the cases appear below.

Brown v. EA, Inc., Case No. 09-56675 (9th Cir. July 31, 2013) (available here).  The 9th Circuit affirmed the district court’s dismissal of retired professional football player Jim’s Brown’s action alleging that Electronic Arts, Inc., violated § 43 of the Lanham Act through the use of his likeness in its Madden NFL series of video games.

The 9th Circuit held that because the video games were expressive works, the district court correctly applied the Rogers test for balancing between trademark and similar rights, on the one hand, and First Amendment rights, on the other. The panel held that neither the “likelihood of confusion” test nor the “alternative means” test was the appropriate framework. Applying the Rogers test, the panel concluded that Brown’s likeness was artistically relevant to the games and that there were no alleged facts to support the claim that Electronic Arts explicitly misled consumers as to Brown’s involvement with the games. Accordingly, the public interest in free expression outweighed the public interest in avoiding consumer confusion.

Citadel Federal Credit Union v. KCG IP Holdings LLC, Canc. No. 92/055,228 (T.T.A.B. July 10, 2013) (available here). Citadel filed a petition for cancellation of KCG’s mark on grounds of priority and likelihood of confusion.  KCG IP received numerous extensions of time to answer and, eventually, filed an answer and a motion for summary judgment. KCG asserted the so-called Morehouse defense and argued that the marks were essentially the same and cover essentially the same goods and services.  Citadel countered that KCG applied a more lenient likelihood of confusion test, rather than the required “essentially the same” test.  Because the marks were not “essentially the same” with Citadel’s mark including a crenelated design.  The Board ruled that the Morehouse defense was unavailable to KCG and denied the motion for summary judgment.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, August 5, 2013 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

SoCal IP Institute :: June 10, 2013 :: President Obama’s Executive Initiatives and

Our weekly SoCal IP Institute meeting on Monday, June 10, 2013 will be a discussion of President Obama’s recent executive actions related to high-tech patent issues.

For Monday’s discussion, we will be discussing, “Fact Sheet: White House Task Force on High-Tech Patent Issues.” In addition, we will be discussing Judge Rader’s editorial in the New York Times, titled “Make Patent Trolls Pay in Court.”

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, June 10, 2013 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

SoCal IP Institute :: April 8, 2013 :: Trademark Concurrent Use and Design Patents

Our weekly SoCal IP Institute meeting on Monday, April 8, 2013 will be a discussion of one Federal Circuit case regarding design patents and a TTAB concurrent use proceeding decision. Brief synopses of the cases appear below.

In re Owens, Case No. 2010-1426 (Fed. Cir. March 26, 2013) (available here).

The Federal Circuit affirmed the BPAI’s rejection of design patent Application No. 29/253,172 for failure to comply with 35 U.S.C. § 112, ¶ 1. The ‘172 application was a continuation of a prior patented bottle, U.S. Design Pat. No. D531,515. The Federal Circuit affirmed the BPAI’s rejection, where: 1) the Board’s finding that nothing in the parent application’s disclosure suggested anything uniquely patentable about the top portion of the bottle’s front panel is supported by substantial evidence because the parent disclosure does not distinguish the now-claimed top trapezoidal portion of the panel from the rest of the pentagon in any way; and 2) unclaimed boundary lines typically should satisfy the written description requirement only if they make explicit a boundary that already exists, but was unclaimed, in the original disclosure.

America’s Best Franchising, Inc. v. Roger Abbott (TTAB March 20, 2013) (available here).

In this concurrent use proceeding, the Board awarded the applicant America’s Best Franchising (ABF) concurrent use registrations for three marks in the entire United States except for the state of Arizona. Applicant ABF is the junior user and ABF conceded that Abbott uses his mark in the state of Arizona. The Board held that even though Abbott was the first user, his “inaction over a considerable period of time, abandoned [his] right to expand use of the mark… outside of the trading area, and that by virtue of such abandonment, [Abbott’s] prior use of the mark cannot serve to preclude [ABF], a[n] innocent user.”

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, April 8, 2013 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

SoCal IP Institute :: March 11, 2013 :: Indirect infringement and Equitable Estoppel

Our weekly SoCal IP Institute meeting on Monday, March 11, 2013 will be a discussion of two patent cases from the Federal Circuit.  Brief synopses of the cases appear below.

Radio Systems Corp v. Lalor, Case No. 2012-1233 (Fed. Cir. March 6, 2013) (available here).

The Federal Circuit affirmed in part the district court’s decision that the plaintiffs did not infringe two of defendant’s patents. The patents were on improvements to electronic animal collars. The court held that district court decision is: 1) affirmed in part as to the judgment of non-infringement for GS-011, FieldPro, and SD-1825 collars, where the district court correctly construed the claim terms “electrode base” and “inside surface,” and correctly applied its constructions to these accused collars, 2) affirmed in part, where the district court did not abuse its discretion in concluding that equitable estoppel applied to defendant’s ‘014 patent infringement allegations on the UltraSmart collar against both plaintiff Innotek and its successor-in-interest, plaintiff Radio Systems; but 3) reversed in part and remanded, as to the ‘082 patent, where the district court abused its discretion by granting summary judgment of non-infringement for the UltraSmart collar on the basis of equitable estoppel.

Move, Inc. v. Real Estate Alliance Ltd., Case No. 12-1342 (Fed. Cir. March 4, 2013) (available here).

Summary judgment that plaintiff did not infringe claim 1 of defendant’s ‘989 patent related to methods for locating available real estate properties using a zoom-enabled map on a computer, is vacated and remanded for a determination whether plaintiff is liable for indirect infringement, where the district court: 1) did not err by finding no genuine issue of material fact that plaintiff is not liable for direct infringement of claim 1 of the ’989 patent; but, 2) legally erred by not analyzing inducement under 35 U.S.C. 271(b); and 3) failed to conduct an indirect infringement analysis and did not determine whether a genuine issue of material fact existed as to the performance of all the claim steps, whether by one entity or several.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, March 11, 2013 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Attalla by 9 am Monday morning.

SoCal IP Institute :: June 11, 2012 :: Trademark Dilution and Irreparable Harm for Preliminary Injunction

We will be discussing one Trademark Trial and Appeal Board case and one Federal Circuit case during our weekly SoCal IP Institute meeting on Monday, June 11, 2012. Brief synopses are presented below.

Research in Motion Ltd. v. Defining Presence Marketing Group, Inc. & Axel Ltd. Co., Opposition Nos. 91178668, 91179490, 91181076 (T.T.A.B. Feb. 27, 2012) (attached).

In an opposition case before the Trademark Trial and Appeal Board (TTAB), Research in Motion (RIM) opposed intent-to-use applications to register the mark CRACKBERRY for clothing items and marketing, computer and communications services. RIM previously registered the mark BLACKBERRY for “handheld devices including smart phones and related goods and services as well as promotional and collateral goods.”  RIM argued that the mark CRACKBERRY was likely to cause confusion with BLACKBERRY and dilute the distinctiveness of their famous trademark.

The defendants argued that their mark was a parody of BLACKBERRY.  However, the Board stated that the parody defense is available only if the parody is not used to designate the source of the applicant’s goods or services.

Before applying the du Pont factors, the TTAB found that BLACKBERRY was a famous mark. The Board noted that RIM had sold billions of dollars worth of BLACKBERRY products to millions of consumers and spent tens of millions of dollars advertising and promoting the mark. The Board also noted that the media has extensively covered the BLACKBERRY brand and that BLACKBERRY consistently appears on the lists of the most famous and valuable trademarks in the world.

Given the similarities in sight and sound of the marks and the fact that the public began using the nickname “Crackberry” to refer to “addictive” BLACKBERRY devices before the defendants applied to register the CRACKBERRY mark, the TTAB found that the du Pont factors pointed to a likelihood of confusion.

Turning to the issue of dilution under Section 43(c) of the Lanham Act, the TTAB found that the BLACKBERRY trademark was sufficiently famous to meet the higher standard for fame required in the dilution context.  The TTAB found that the CRACKBERRY mark was likely to dilute, by blurring, the distinctiveness of the trademark BLACKBERRY.   The Board noted that there is “a high degree of similarity” between the marks.

Apple, Inc. v. Samsung Electronics Co., Ltd., Case No. 2012-1105 (Fed. Cir. May 14, 2012) (attached).

In the Northern District of California, Apple filed a motion for preliminary injuction based on infringement of three of their design patents and a utility patent.  Apple argued that Samsung’s Galaxy S 4G and Infuse 4G smartphones infringed two of their design patents and that Samsung’s Galaxy Tab 10.1 tablet infringed another design patent.  Apple also argued that all three of Samsung’s devices infringed their utility patent toward the iPad and iPhone “bounce” feature.  The district court denied the motion stating that Samsung had raised substantial questions regarding the validity of two of Apple’s design patents and that the other Apple patents were likely valid and infringed, but Apple had failed to provide sufficient evidence on the issue of irreparable harm.

On appeal, the Federal Circuit affirmed the denial of preliminary injunctive relief with respect to two of the design patents and the utility patent, stating that the district court had not abused its discretion in finding no likelihood of irreparable harm.  Apple argued that the district court erred in requiring Apple to demonstrate a nexus between the claimed infringement and the alleged harm.  The Federal Circuit disagreed, stating that a likelihood of irreparable harm cannot be shown if sales would be lost regardless of the infringing conduct.  Apple also argued that the district court had erred in rejecting Apple’s dilution theory of irreparable harm.  The Federal Circuit noted that “[t]he district court’s opinion thus makes clear that it did not categorically reject Apple’s ‘design erosion’ and ‘brand dilution’ theories, but instead rejected those theories for lack of evidence.”

The Federal Circuit did, however, vacate the denial of preliminary injunctive relief with respect to the D’889 patent.  The district court had found that the D’889 patent was likely obvious, using a 1994 tablet design (the “Fidler tablet”) as the primary reference.  For design patents, any finding of obviousness must be supported by a primary reference having basically the same appearance as the claimed design.  The Federal Circuit disagreed with the district court, holding that the Fidler tablet was not a proper primary reference.  The Federal Circuit stated that there are substantial differences in the overall visual appearance of the design patent and the Fidler reference.   The Federal Circuit remanded this portion of the case for further proceedings to analyze the balance of harms and the public interest in deciding whether preliminary injunction is appropriate for the D’889 patent.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, June 11, 2012 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Attalla by 9 am Monday morning.

SoCal IP Institute :: April 16, 2012 :: Summary Judgment of Copyright Claims and Functionality in Trademarks

We will be discussing one Ninth Circuit case and one Federal Circuit case during our weekly SoCal IP Institute meeting on Monday, April 16, 2012. Brief synopses are presented below.

L.A. Printex Indus., Inc. v. Aeropostale, Inc., Case No. 10-56187 (9th Cir. Apr. 9, 2012) (attached).  A designer at LA Printex created a design including flowers that it labeled “C30020.”  LA registered the C30020 design in a collection with four other designs.  LA Printext subsequently saw a very similar design in products sold by Aeropostale.  The two designs appear below:

The C30023 was registered as a collection of unpublished works.  However, two of the designs had been previously published.  After the suit began, this issue was corrected by LA Printex at the Copyright Office by a supplemental registration.  There were cross motions for summary judgment.  The defendants’ motion was granted on the basis that there was no genuine issue of material fact that the defendants had access to the C30020 design or substantial similarity.  Defendants then moved for and received attorneys fees.  LA Printex appealed.

LA Printex argued that the district court’s determination that there was no “access” to the design was faulty.  In particular, they asserted that the court’s relianceonly upon a declaration by an LA Printex employee.  However, the 9th Circuit found substantial additional invoices showing more than 50,000 yards of C30020 fabric sold from 2002-2008 in the trial record.  The question then was whether this was “widely distributed” as claimed by LA Printex, thereby demonstrating a genuine issue of material fact as to Aeropostale’s access to the pattern.  The court described the various levels of access required to show “wide dissimination” under copyright “access” jurisprudence in different contexts.  Based upon the sales, mostly to local Los Angeles fabric converters and the invoices, the 9th Circuit reasoned that a reasonable jury could find widespread dissemination of the C30020 design.  Thus, there was at least a genuine issue of material fact as to Aeropsotale’s access.

The 9th Circuit then took up the district court’s determination that the works were not substantially similar.  Though there were differences between the designs and elements of the design were not protectable by Copyright, the 9th Circuit pointed out that questions of substantial similarity should rarely be decided at the summary judgment phase.  Based upon an extrinsic (objective) evaluation of the designs and an intrinsic (subjective) evaluation, the 9th Circuit found that the question should at least be put to a jury.

Finally, Aeropostale argued that the registration was faulty and invalid. Therefore, they argued, they were entitled to summary judgment on this alternative ground.  The 9th Circuit reasoned that the original registration included an error that was subsequently corrected.  The inclusion of an error regarding two other designs does not render the C30020 registration invalid or bar LA Printex’s suit.  The summary judgment was reversed, the attorney’s fee award vacated and the case remanded for further proceedings.

In re Becton, Dickinson and Co., Case No. 2011-1111 (Fed. Cir. April 12, 2012) (attached).  Becton, Dickinson and Company (“BD”) appealed from the final decision of the Trademark Trial and Appeal Board (“TTAB”) affirming a refusal to register BD’s design of a closure cap for blood collection tubes as a trademark on the ground that the design is functional. BD also appealed the Board’s determination that the mark has not acquired distinctiveness. The Federal Circuit did not reach the issue of acquired distinctiveness. The Court held that the mark was not registerable because the mark as a whole was functional.  The cap is depicted below:

Judge Linn dissented, faulting the majority for deciding the case “piecemeal” rather than reviewing the proposed mark as a whole.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, April 16, 2012 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Elisha Manzur by 9 am Monday morning.