Legal News

In an exhausting exhaustive 61-page opinion, the TTAB dismissed this Section 2(d) opposition to registration of the mark ARMBRUSTER STAGEWAY for "vehicles, namely, customized limousines," finding that opposer had abandoned its pleaded mark ARMBRUSTER/STAGEWAY for limousines, prior to applicant's constructive first use date (December 4, 2012. The Board found opposer's testimony and evidence to be riddled with inconsistencies and contradictions as to whether it stopped using the mark, and totally lacking as to its intent to resume use. Executive Coach Builders, Inc. v. SPV Coach Company, Inc., Opposition No. 91212312 (June 21, 2017) [precedential] (Opinion by Judge Hightower).Under Section 45 [...]

By Dennis Crouch In re Celgard (Supreme Court 2017) [2017-6-19 Celgard Cert Petition] In what looks like a well-postured case, Celgard LLC has asked the Supreme Court to consider several questions stemming from the Patent Trial & Appeal Board (PTAB) decision that the claims of the company's U.S. Patent No. 6,432,586 are invalid as obvious. The patent claims a particular microporous membrane separator that adds a ceramic layer to effectively limit the growth of lithium dendrites – the major cause of lithium battery failures and overheating. The approach created by Celgard has been widely copied (and further adapted) in the [...]

In two recent genericness cases, the Board affirmed a refusal to register BAGCORP and sustained a petition for cancellation of a registration for PATINA, both on the ground of genericness. Can you guess what the goods were in each case?In re BAG Corp, LLC d/b/a BAGCORP, Serial No. 86438780 (June 21, 2017) [not precedential) (Opinion by Judge Adlin). This applicant sought to register BAGCORP for "flexible intermediate sacks or bags for storage and transportation of materials in bulk." [Did you guess that?] There was no dispute that the genus of the goods was as described in the identification of goods. [...]

The USPTO refused registration of GOLDENBERRY, finding the applied-for mark to be merely descriptive of "fresh fruits." Applicant appealed, arguing that its fruit is yellow, not golden, and is properly called “Gooseberry” or “Cape Gooseberry.” How do you think this came out? In re Volcano Produce, Inc., Serial No. 86321169 (June 20, 2017) [not precedential] (Opinion by Judge Quinn).Examining Attorney Michael J. Striker maintained that GOLDENBERRY merely describes Applicant's fruit: a berry that is golden in color. He pointed to use of the term by the media and by others in the fruit industry, as well as to [...]

Filed: June 22, 2017 as 2:2017at00640 Cause Of Action: Declaratory Judgement [...]

The Board dismissed this opposition to registration of VAGISAN for various feminine hygiene products, finding no likelihood of confusion with the registered mark VAGISIL for overlapping products. The Board, relying on proof of applicant's capacity to produce its products, also dismissed opposer's claim that applicant lacked a bona fide intent to use the mark when it filed the opposed application. Combe Incorporated v. Dr. August Wolff GmbH & Co. KG Arzneimittel, Opposition No. 91209708 (June 19, 2017) [not precedential] (Opinion by Judge Bergsman). Fame: Opposer asserted that VAGISIL is a famous mark but its proofs fell short. It proved use [...]

Guest post by Ian McCarthy and Karen Ruckman, both from the Beedie School of Business, Simon Fraser University. This is based on the research article: Why do some patents get licensed while others do not? If the deluge of reality television shows about the subject is any indicator, the public has an ongoing fascination with both inventors and their innovations. Entrepreneurship programs like Shark Tank or Dragons' Den offer some entertaining glimpses into how venture capitalists decide upon the kind of people and ideas they want to invest it. But do these insights extend to the licensing of patents? Not exactly. But [...]

In case you haven't heard, the Supreme Court ruled yesterday that the disparagement provision of Section 2(a) of the Trademark Act is facially unconstitutional because it violates the Free Speech clause of the First Amendment. "It offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend." Matal v. Tam, No. 15-1293 (June 19, 2017).The Slants album coverSimon Tam's application to register the mark THE SLANTS for a musical band was refused registration under Section 2(a), which in pertinent part bars the registration of marks that may "disparage ... or bring [...]

The Supreme Court has affirmed that Trademark law's restriction on registration of disparaging marks violates the free speech provision of the US Constitution. Read it: 15-1293_1o13 Although the court's logic is largely incomprehensible, the result is simple: the PTO will begin allowing registration of disparaging marks and will not cancel Registered marks because they are disparaging. Although not at issue here, disparaging marks will likely be somewhat more difficult to enforce based upon the greater expressive content of the speech. [...]

The Board affirmed refusals to register PHARMACANN and PHARMACANNIS for "Retail store services featuring medical marijuana" and for "Dispensing of pharmaceuticals featuring medical marijuana" on the ground that applicant lacked a bona fide intent to use the marks in commerce because the recited services are prohibited by a federal statute and cannot be in lawful use. Although Congress has forbidden the Department of Justice from expending any funds to prevent any state that has legalized medical marijuana from implementing its own laws, that prohibition is temporary and the law could be changed at any time. In [...]

The Board affirmed a Section 2(e)(4) refusal of WEISS WATCH COMPANY for watches, clocks, and related goods [WATCH COMPANY disclaimed], finding the applied-for mark to be primarily merely a surname. Applicant argued that WEISS has non-surname significance because "weiss" means "white" in German, and thus the doctrine of foreign equivalents immunizes WEISS from the surname bar. Nein, said the Board. In re Weiss Watch Company, Inc., Serial No. 86782562 (June 13, 2017) [not precedential] (Opinion by Judge Kuhlke).WEISS is the surname of applicant's founder and head watchmaker, Cameron Weiss. The surname WEISS ranks number 531 on the list of [...]

Guest post by Josh Landau, Patent Counsel for CCIA It seems like a truly simple question to answer: where is an act of infringement committed? And it's one that became more important after TC Heartland's decision that venue is proper “in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business.” There's been a lot of discussion, here and elsewhere, of what “regular and established place of business” means, but less focus on where acts of infringement occur. Fortunately, there is one place where the [...]

Filed: June 16, 2017 as 2:2017cv01249 Plaintiff: Wesley Corporation [...]

Guest post by Matthew Fagan, Principal at KDP where he handles patent matters. Much of the post-Helsinn analysis has focused on its impact on pharma where substantial strategic pre-filing activity is the norm. I asked Mr. Fagan to come at the problem from the computer and software perspective. – DC = = = = When the Federal Circuit decided Helsinn v. Teva last month, the patent world expected to the Court to resolve an issue simmering since 2011: namely, do purely private, secret sales toll the on-sale bar of post-AIA §102? The court declined to provide an answer, [...]

The Board affirmed a Section 2(e)(1) refusal of LITTLE MERMAID, finding the mark merely descriptive of "dolls." Drawing a distinction between character names in the public domain and those derived from works in which the applicant owns intellectual property rights, the Board concluded that consumers will not perceive LITTLE MERMAID as a source identifier but instead will "understand the mark to describe the public domain character in the Hans Christian Andersen fairy tale, as well as a young or little mermaid." In re United Trademark Holdings, Inc., Serial No. 86836082 (June 13, 2017) [precedential] (Opinion by Judge Bergsman)."The Little Mermaid" [...]

John Duffy: The Supreme Court Reverses Another Federal Circuit Patent Case Gene Quinn: Industry Reaction To SCOTUS Decision In Sandoz v. Amgen Richard Lloyd: The Oil States IPR Case Could Be One Of Those Rare Instances Where SCOTUS Sides With The CAFC Scott Graham: Lawmakers Plot Next Steps On Patent Reform Joseph Herndon: Credit Acceptance v. Westlake Services Get a Job doing Patent Law Thermo Fisher Scientific Van Pelt, Yi & James Klarquist Sparkman Armstrong Teasdale Schwegman Lundberg & Woessner [...]

The Board granted a petition for cancellation of a registration for the mark MIROSA for "beer, ale, lager, stout, porter, shandy," finding a likelihood of confusion with the registered mark MIRASSOU for wine. Noting Professor McCarthy's observation that only the CAFC uses the term "fame" instead of "strength" for the 5th du Pont factor (See the CAFC's the recent INSIGNIA decision [TTABlogged here]), the Board found MIRASSOU to be a very well-known mark of considerable strength. E. & J. Gallo Winery v. Wade, Cancellation No. 92063116 (June 7, 2017) [not precedential] (Opinion by Judge Quinn).The Goods: The Board observed that [...]

Guest blog by Commissioner for Trademarks Mary Denison In late May, I attended the TM5 mid-term meeting in Barcelona hosted by the European Union Intellectual Property Office (EUIPO). The TM5 is a strategic cooperation group of the five largest trademark offices in the world including the USPTO, EUIPO, China (SAIC), Japan (JPO), and Korea (KIPO). I gave a blog update last year on the TM5 meeting we hosted at the USPTO, and I'm happy to report we have continued making headway this year towards global trademark harmonization. TM5 Leadership The TM5 seeks to facilitate and [...]

The Board accepted a concurrent use agreement allowing Applicant Bras for the Cause Iowa, Inc. to receive a registration of its mark BRAS FOR THE CAUSE for "Charitable fundraising services for screening, diagnosis, and eradication of breast and cervical cancer," limited to the area comprising the United States except the states of California, Colorado, Florida, Oregon, Pennsylvania, Washington, and Wyoming. Bras for the Cause Iowa, Inc. v. Soroptimist International of Glendale, CA , Concurrent Use No. 94002700 (June 9, 2017) [not precedential].In December 2016, Iowa filed a motion to dismiss this proceeding in light of a settlement agreement reached by [...]

Question: Whether inter partes review, an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents, violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury. The deciSion here is very big news for the IPR system because it has the potential of bringing down the entire AIA trial regime. The conventional wisdom with Supreme Court cases is that they usually reverse the path set by the Federal Circuit. Here, that results may well be a holding that PTO cancellation of issued patents is a constitutional violation. [...]