Legal News

Earlier
2017-12-comic-strip
Ji-Yong (David) Chung is a partner at Snyder, Clark, Lesch & Chung. David.Chung@snyderllp.com. [...]
Tue, Dec 12, 2017
Source: Patently-O
The Board affirmed a refusal to register the mark OLANA for jewelry and various clothing items on the ground that the drawing is not a "substantially exact representation of the mark" as it appears on the specimens of use. The word OLANA does not appear by itself on the specimens, but rather is preceded by HALAU HULA or HULA. In re Ai, Serial No. 86842205 (December 7, 2017) [not precedential] (Opinion by Judge Cheryl S. Goodman).Trademark Rule 2.51(a) requires that the drawing of the mark be a "substantially exact representation" of the mark as used on or with the goods. [...]
Tue, Dec 12, 2017
Source: The TTABlog
by Dennis Crouch Ariosa (Roche) v. Illumina (Fed. Cir. 2017) Interesting decision here on two different fronts: Reviewability of Ex Parte Reexamination Termination Decision; and Priority Prior Art Date for Patent Applications. The dispute focuses on Illumina's U.S. Patent No. 7,955,794 and arose after the inventors left Ariosa to form competitor Illumina. License Arbitration Clause Ineffective Because it Excluded Issues of Patent Scope Ex parte Reexamination Termination and Appeal: While the inter partes review (IPR) was ongoing Ariosa/Roche filed a set of three ex parte reexamination requests and the PTO determined that they collectively raised 18 substantial new questions of patentability. However, after siding with [...]
Mon, Dec 11, 2017
Source: Patently-O
The Board granted a petition for cancellation of a registration for the mark TAO VODKA for “alcoholic beverages except beer" [VODKA disclaimed] on two grounds: nonuse and likelihood of confusion with petitioner's registered and famous mark TAO for restaurant and nightclub services. Respondent's "eyebrow-raising activities" in choosing its mark after petitioner refused to purchase its vodka, including adoption of a font very similar to the font used by petitioner, factored into the Board's Section 2(d) ruling. Tao Licensing, LLC v. Bender Consulting Ltd. d/b/a Asian Pacific Beverages,Cancellation No. 92057132 (December 7, 2017) [precedential] (Opinion by Judge Cynthia C. Lynch).Nonuse: Under [...]
Mon, Dec 11, 2017
Source: The TTABlog
by Dennis Crouch Blaise Mouttet is seeking a patent on his “Crossbar Arithmetic and Summation Processor.” The invention is interesting because it is actually processor design. [17-2077.Opinion.12-6-2017] Back in 2012, the Federal Circuit affirmed the PTO obviousness rejection of his pending claims in a parent application. Following that negative outcome, Mouttet amended the pending CIP application to include the identical rejected claim. The examiner and PTAB rejected that claim – finding that it “need not readdress the patentability of claim 25” since the identical claim had already been conclusively found obvious based upon the same references. Mouttet then [...]
Fri, Dec 08, 2017
Source: Patently-O
by Dennis Crouch The Federal Circuit has denied the NobelBiz petition for en banc rehearing on questions of patent claim construction. Namely, the focus here is whether a district court is required to issue a claim construction beyond “plain and ordinary meaning” any time a litigant asserts a “dispute.” The majority approach means that in most cases the usual jury-question of infringement is now being fully resolved at the claim construction stage. Jury Instructions vs. Summary Judgment Tool: I see the dispute between the judges here as going to the fundamental purpose of claim construction. Is claim construction essentially [...]
Fri, Dec 08, 2017
Source: Patently-O
American Patent Law is Exceptional. System should be Reliable, Predictable and High Quality. PTO should be a “culture of excellence” Priorities: Bring stability and reliability to patent system. Evangelize the IP System and the excitement and benefits of invention; confidence in the IP system is necessary for investment in innovation. IPR System: The system needs to be balanced and returned to a higher level of predictability; one mechanism is to have the Director involved in decisions by the Board. Eligibility: Supreme Court jurisprudence is the “current law of the land” but has produced a level of uncertainty. Trade: Insist that trading partners have high level of IP rights [...]
Fri, Dec 08, 2017
Source: Patently-O
The USPTO refused registration of the mark CROME for various hair care products, finding the mark confusingly similar to the registered mark CHROME GIRL for, inter alia, hair care products [GIRL disclaimed]. Would you have appealed? In re Azam, Serial No. 85863664 (December 6, 2017) [not precedential] (Opinion by Judge Marc A. Bergsman).Because the goods in the application and cited registration are, in part, identical, the Board presumed that those goods travel in the same channels of trade to the same classes of consumers.As to the marks, the Board could not find, and applicant did not provide, any definition of [...]
Fri, Dec 08, 2017
Source: The TTABlog
In WesternGeco v. ION Geophysical, the Supreme Court is being asked to decide Whether the court of appeals erred in holding that lost profits arising from prohibited combinations occurring outside of the United States are categorically unavailable in cases where patent infringement is proven under 35 U.S.C. § 271(f). The case is at the petitions stage, and we have been awaiting the views of the US Government (via the Solicitor General). The SJ has now weighed-in arguing that: In the view of the United States, the petition for a writ of certiorari should be granted. The lawsuit is related to WesternGeco's patents on [...]
Thu, Dec 07, 2017
Source: Patently-O
by Dennis Crouch René Descartes may have been the first expressly identify the physical operation of our universe as “laws of nature” (although published in French) – spelling out specifically his three immutable laws of nature (later serving as Newton's foundation): Each thing, as far as is in its power, always remains in the same state; and that consequently, when it is once moved, it always continues to move” (Pr II 37); All movement is, of itself, along straight lines (Pr II 39); and A body, upon coming in contact with a stronger one, loses none of its motion; but that, upon coming in [...]
Thu, Dec 07, 2017
Source: Patently-O
The Board affirmed this Section 2(d) refusal to register CREPES BONAPARTE for "food truck services; mobile catering services" [CREPES disclaimed], finding it likely to cause confusion with the registered mark CAFÉ BONAPARTE & Design for "restaurant services" [CAFÉ disclaimed]. Applicant creatively argued that because the cited mark is primarily merely a surname, it is entitled to a limited scope of protection. The Board agreed to some extent, but not enough to overcome the refusal. In re Brats Berlin, Inc., Serial No. 87055289 (December 1, 2017) [not precedential] (Opinion by Judge Peter W. Cataldo].Applicant provided a printout of surnames from the [...]
Thu, Dec 07, 2017
Source: The TTABlog
IPR2016-01127 117 – Amicus Curiae Brief of The BSA _ The Software Alliance IPR2016-01127 118 – Amicus Curiae Brief of James R. Major IPR2016-01127 104 – Amicus Curiae Brief of the Oglala Siux Tribe IPR2016-01127 105 – Amicus Curiae Brief of the Public Knowledge and the Electronic Frontier Foundation IPR2016-01127 106 – Amicus Curiae Brief of Scholars IPR2016-01127 107 – Amicus Curiae Brief of Askeladden LLC IPR2016-01127 108 – Amicus Curiae Brief of Deva Holding A.S. IPR2016-01127 109 – Amicus Curiae Brief of the High Tech Inventors Alliance IPR2016-01127 110 – Amicus Curiae Brief of the Seneca Nation IPR2016-01127 111 – Amicus Curiae Brief of the NAIPEC IPR2016-01127 112 – [...]
Wed, Dec 06, 2017
Source: Patently-O
CRFD Research v. Matal (Fed. Cir. 2017) (Iron Dome)CRFD Research v. DISH Network (Fed. Cir. 2017)Hulu, Netflix, and Spotify v. CRFD Research (Fed. Cir. 2017) CRFD's U.S. Patent No. 7,191,233 has been challenged in four separate Inter Partes Review petitions – three of which were granted and reached final decision. Interestingly, the three decisions are somewhat different from one-another. Iron Dome – invalid: Claim 1 anticipated; Claims 4-6 and 8-11 obvious. DISH – invalid: Claims 1, 4, 23, and 25 anticipated; Claims claims 4 and 25 obvious. Hulu – valid: Claims 1–3, 23, and 24 not anticipated; Claims 1–6, 8–11, 13–15, 17–20, 23–25, [...]
Tue, Dec 05, 2017
Source: Patently-O
Third-party registration and use evidence led the Board to sustain this opposition to registration of the mark KU:L in stylized form, for "bicycles," finding it likely to cause confusion with the registered mark KÜHL in stylized form, for "rugged outdoor clothing, namely, jackets, shirts, pants, shorts, t-shirts, and hats." Alfwear Inc. v. Shuff, Opposition No. 91224467 (December 1, 2017) [not precedential] (Opinion by Judge Marc A. Bergsman).Fame: Opposer Alfwear claimed that its mark KÜHL is famous, but its proofs fell short. Although Alfwear has used its mark since 1993, had sales of $33 million in 2012, sold more than one [...]
Tue, Dec 05, 2017
Source: The TTABlog
from IPO: Tune in to the IP Chat Channel™ tomorrow, 6 December at 2:00p.m. ET, to earn CLE and hear a sophisticated discussion of Functional Claiming After Mastermine v. Microsoft, a recent Federal Circuit decision that reversed a lower court's finding of indefiniteness after finding the claims were not improperly simultaneously directed to both an apparatus and a method of using the apparatus. This decision could provide helpful guidance to patent prosecutors, but the situation is tangled because some experts worry that the Federal Circuit is disregarding the Supreme Court's finding in Nautilus (2014) that a patent is indefinite if it [...]
Tue, Dec 05, 2017
Source: Patently-O
The Trademark Trial and Appeal Board (TTAB) has scheduled four (4) oral hearings for the month of December 2017. The hearings will be held in the East Wing of the Madison Building, in Alexandria, Virginia. Briefs and other papers for these cases may be found at TTABVUE via the links provided. December 5, 2017 -10 AM: In re Pontet Allano Et Associes Selarl De Conseils En Propriete Industrielle , Serial No. 79165769 [Section 2(d) refusal to register the mark APOGÉE for "Perfumery; Perfumery products, namely, oils for perfumes and scents, perfumes; toilet water; eaux de parfum; [...]
Mon, Dec 04, 2017
Source: The TTABlog
In a brief 10-page opinion, the Board sustained an opposition to the mark PARATI for "alcoholic beverages, except beers; spirits," finding the mark likely to cause confusion with the registered mark PYRAT for "distilled spirits." The goods are in part identical, and presumably travel in the same, normal channels of trade to the same classes of consumers. The identifications of goods include inexpensive products bought with ordinary care. But what about the marks? Patron Spirits International AG v. Les Bienheureux, Opposition No. 91223657 (November 29, 2017) [not precedential] (Opinion by Judge Karen Kuhlke).Of course, when the goods are identical, a [...]
Fri, Dec 01, 2017
Source: The TTABlog
The USPTO refused to register the mark shown below left for "beer" on the ground of likelihood of confusion with the registered mark on the right, for "Brewed malt-based alcoholic beverage in the nature of a beer." On appeal, applicant argued that the buyers of craft beer are sophisticated, that its logo is dominated by its well-known house mark MAD TREE, and that BLACK FOREST is highly suggestive of a type of beer. How do you think this came out? In re MadTree Brewing, LLC, Serial No. 86608588 (November 28, 2018) [not precedential] (Opinion by Judge Karen Kuhlke).Because applicant's "beer" [...]
Thu, Nov 30, 2017
Source: The TTABlog
The USPTO refused registration of the mark BREATHLESS under Section 2(e)(1), finding the mark to be merely descriptive of "promoting public awareness of" and "providing medical information regarding" idiopathic fibrosis, its symptoms, its prevention and its treatment. On appeal, the examining attorney argued that the mark describes the main symptom of IPF: the shortness of breath. Applicant contended that the mark is merely suggestive, or is a double entendre because if refers to the "excitement and anticipation among IPF patients, their caregivers and loved ones about the progress being made in preventing and/or treating this serious condition." How do you [...]
Wed, Nov 29, 2017
Source: The TTABlog
In a nonprecedential ruling, the U.S. Court of Appeals for the Federal Circuit affirmed the TTAB's decision (here) upholding a refusal to register the term MAGNESITA for refractory bricks and related products, on the ground of genericness, and for providing information via a global computer network regarding refractory products, on the ground of mere descriptiveness. In re Magnesita Refractories Company, Appeal No. 2016-2345 (Fed. Cir. November 27, 2017) [not precedential].Genericness: The Board applied the doctrine of foreign equivalents, translating MAGNESITA as "magnesia" from the Italian and "magnesite" from the Spanish and Portuguese. Applicant did not challenge the applicability of the [...]
Tue, Nov 28, 2017
Source: The TTABlog