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Results for "Trademark appeal"
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Absent Expressed Rationale of Obviousness, Federal Circuit Calls for Do-Over

by | Jan 19, 2023 |

The US Court of Appeals for the Federal Circuit reversed a ruling by the Patent Trial & Appeal Board (Board) where, on appeal, the US Patent & Trademark Office’s (PTO) rationale for sustaining the Board’s obviousness rejection did not reflect “the reasoning or findings the Board actually invoked.” In Re Google, LLC, Case No. 22-1012 (Fed. Cir. Jan. 9, 2023) (Moore, C.J., Lourie, Prost, JJ.)

Google’s patent application covers a method of filtering search results to display age-appropriate results using a “content rating score” in combination with a predetermined threshold value to determine which results will be presented. The application discloses several ways that the threshold value can be calculated, including using the length of the search query as a proxy for the age of the user, with longer queries being associated with older users and leading to a lower threshold score (allowing more mature content to be shown).

The application received a final rejection from the examiner, who asserted that the claims would have been obvious under 35 U.S.C. § 103 based on two prior art references, Parthasarathy and Rose. Parthasarathy disclosed a method to determine a content score to use for ranking results, while Rose disclosed a method to assign result importance based on query length. The examiner argued that it would be obvious to combine Rose and Parthasarathy to achieve the claimed method that recited a “predetermined threshold value” based on the number of words in a query. The examiner acknowledged that Parthasarathy did not disclose a threshold based on a number of words but found that Rose did, citing Rose’s modified relevance-ranking algorithm. He reasoned that it would have been obvious to combine Rose and Parthasarathy to achieve the claimed threshold because “analyzing a query for determining the query length and using the query length as a threshold is very well known in the art and doing so would further provide for assigning weight to a long or a short query for retrieving documents.” Google appealed the examiner’s decision to the Board, which affirmed the examiner’s rejection and adopted the examiner’s findings. Google appealed to the Federal Circuit.

On appeal, the PTO argued that because there were only two ways a person of ordinary skill in the art could modify Parthasarathy’s threshold to incorporate Rose, either of the modifications would have been obvious. However, the Federal Circuit found that this argument was not supported by the Board’s decision. The Court explained that while the Board did conclude that modifying Parthasarathy’s threshold to take into account the length of the query would have been obvious, the Board did not provide any detail as to how that would be achieved. In the absence of specific fact-based findings by the Board, the Court explained that it could not adopt the PTO’s argument, which rested on facts not found in the Board’s decision. A ruling relying on these facts would have resulted in a violation of basic administrative law principles since a court may only uphold an agency action on [...]

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Contingent Statement Doesn’t Unequivocally Abandon Defense of Challenged Claims

by | Jan 12, 2023 |

The Director of the US Patent & Trademark Office (PTO) initiated a sua sponte review of the Patent Trial & Appeal Board’s (Board) adverse judgments in multiple related inter partes review (IPR) proceedings. The PTO Director ultimately ordered that the judgments be vacated and remanded for further consideration. Apple Inc. v. Zipit Wireless, Inc., IPR2021-01124; -01125; -01126; -01129 (Dec. 21, 2022) (Vidal, Dir.)

Apple filed six petitions for IPR, all of which were instituted and assigned to the same panel of Administrative Patent Judges. After institution, Zipit filed responses to two of the IPRs, but not the other four companion IPRs. The Board held a hearing in the two IPRs for which Zipit filed responses. At the end of the hearing, Zipit’s counsel was asked with reference to the four companion IPRs whether Zipit was “not contesting if a final written decision or adverse judgment was entered with respect to those IPRs.” The counsel responded, “correct . . . if the board determines that [Apple has] met their burden of proof with respect to those claims Zipit hasn’t filed any opposition.” Based on this exchange, the Board determined that Zipit abandoned the contests and entered adverse judgments.

The PTO Director initiated review under the interim process for Director review §§ 13, 22, which allows sua sponte Director review, explaining that notice would be given to parties of the proceedings if such a review was initiated. Upon review, the PTO Director did not consider the counsel’s statements to be an “unequivocal abandonment of the contest of these proceedings.” In an IPR, a petitioner has the “burden of proving a proposition of unpatentability by a preponderance of the evidence” and the “burden from the onset to show with particularity why the patent it challenges is unpatentable.” The PTO Director’s interpretation of Zipit’s statements was that “non-opposition was contingent on the Board determining that [Apple] met its burden of proving by a preponderance of the evidence that the challenged claims are unpatentable.”

The PTO Director thus vacated the Board’s adverse judgments and remanded the proceedings to the panel to issue either an order clarifying whether Zipit indeed abandoned the contest or a final written decision addressing the patentability of the challenged claims.



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Full Speed Ahead: District Court Entitled to Explore Litigation Funding Arrangements

by | Dec 15, 2022 |

The US Court of Appeals for the Federal Circuit denied a patent owner’s mandamus petition, clearing the way for a district court to probe who is funding the patent owner’s infringement litigation. In re Nimitz Techs. LLC, Case No. 23-103 (Fed. Cir. Dec. 8, 2022) (Lourie, Reyna, Taranto, JJ.) (per curiam) (nonprecedential).

Nimitz filed a complaint for patent infringement against Buzzfeed in the US District Court for the District of Delaware. The case was assigned to Chief Judge Connelly. Judge Connelly has two standing orders that require parties to disclose third-party litigation funders and the name of every individual and corporation with a direct or indirect ownership interest in the party. Nimitz filed a disclosure statement identifying Mark Hall as the sole owner and LLC member of Nimitz, and a statement representing that Nimitz has not entered any arrangement with third-party funders.

The district court later became aware that an entity called IP Edge was arranging assignments of patents to various LLCs that were plaintiffs in other actions before the district court. Based on the review of the documents in the other cases, it appeared to the district court that Hall had a connection with IP Edge. The district court ordered Hall and Nimitz’s counsel to appear at a hearing. During the hearing, the district court explored the relationship between Nimitz and an entity called Mavexar. After the hearing, the district court ordered production of communications between Hall, Mavexar and IP Edge, and communication and documents relating to the formation of Nimitz, Nimitz’s assets, Nimitz’s potential scope of liability resulting from the acquisition of the patent, the settlement or potential settlement of the cases and the prior evidentiary hearing. The district court also ordered production of monthly bank statements from Nimitz. Nimitz appealed to the Federal Circuit by filing a petition for writ of mandamus seeking an order vacating the district court’s order.

The Federal Circuit initially stayed the district court’s order pending the Court’s decision. While the mandamus petition was pending, the district court issued a memorandum explaining that the records sought in its prior order were relevant to addressing several concerns, including the following:

  • Compliance with the Rules of Professional Conduct
  • Compliance with the district court’s orders
  • Determining whether real parties in interest other than Nimitz, such as Mavexar and IP Edge, were hidden from the Court and the defendants
  • Determining whether those real parties in interest perpetrated a fraud on the district court by fraudulently conveying to a shell LLC the patent-in-suit and filing a fictitious patent assignment with the US Patent & Trademark Office designed to shield those parties from the potential liability they would otherwise face in asserting the patent in litigation.

Nimitz had argued that the district court’s order was improper because it would require disclosure of highly confidential litigation materials, including material protected by the attorney-client privilege and work-product immunity. In its decision on mandamus, the Federal Circuit rejected that argument, finding that the district court order made clear that Nimitz [...]

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No Mulligans Here: PTO Rewinds Reexamination Based on Estoppel

by | Dec 8, 2022 |

The US Patent & Trademark Office (PTO) terminated a pending ex parte reexamination after finding that the challenger was estopped because the prior art references could have been raised in a prior inter partes review (IPR). In re Tyler, Reexam. No. 90/014,950 (PTO Nov. 15, 2022).

In 2017, GITS Manufacturing filed two IPR petitions against a patent owned by G.W. Lisk after Lisk asserted the patent against GITS in district court. In 2018, the Patent Trial & Appeal Board issued final written decisions in each IPR, finding some claims unpatentable and maintaining the patentability of other claims. The Federal Circuit affirmed both IPR decisions in 2021.

In February 2022, the PTO initiated an ex parte reexamination of one of the patents based on a request filed by GITS. The reexamination proposed multiple grounds of unpatentability based on four prior art references that were not involved in the IPRs. GITS included a lengthy discussion and an expert declaration describing the prior art searches GITS performed in support of the certification that it was not estopped under 35 U.S.C. § 315(e)(l) from asserting the grounds in the reexamination. Lisk filed a petition to vacate the reexamination proceeding, alleging that GITS was estopped because the reexamination references reasonably could have been raised in the previous IPRs. Lisk’s petition was supported by its own expert declaration describing prior art searches that a skilled searcher would have conducted.

A party is estopped under § 315(e)(1) from requesting a reexamination proceeding based on grounds that the party “raised or reasonably could have raised” during an IPR. The legislative history of § 315(e) defines “reasonably could have raised” as “prior art which a skilled searcher conducting a diligent search reasonably could have been expected to discover.” The PTO cited legislative history stating that “reasonably could have raised” does not require a “scorched-earth search,” leaving open the possibility that a diligent search may not discover a particular reference. But the PTO also distinguished the search an examiner or lawyer may conduct from the more robust search that a skilled searcher is assumed to conduct prior to filing a petition for a IPR proceeding.

The PTO evaluated each of the four references in GITS’s reexamination grounds based on the criteria described above. Two of the references were patent documents available in commercial databases that a skilled searcher could be expected to find. The third reference was a “seminal textbook” that GITS itself stated was used in the field to train those of skill in the art. The textbook reference was also found through standard citation searching of the patent at issue. The fourth reference was provided by a publisher that GITS stated “was an established publisher that was well known to those interested in the field,” and which maintained an online searchable database of its publications. The PTO determined that the fourth reference would have been found by a reasonably diligent search, despite the fact that a subscription fee was required to search the database.

The PTO also weighed [...]

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First Amendment Punches Out Alleged Lanham Act Violation

by | Nov 29, 2022 |

Addressing the balance between trademark rights under the Lanham Act and the First Amendment right to protected expression, the US Court of Appeals for the Ninth Circuit affirmed a district court judgment finding that the defendant’s use of the term “Punchbowl” was not a Lanham Act violation because it was expressive and not misleading as to its source. Punchbowl, Inc. v. AJ Press, LLC, Case No. 21-55881 (9th Cir. Nov. 14, 2022) (Ownes, Bress, Fitzwater, JJ.)

Punchbowl is an online communications company that provides “online events and celebration invitations and greeting cards” as part of its subscription-based service. Punchbowl has used the mark Punchbowl® since 2006 and the mark was registered with the US Patent & Trademark Office in 2013. Punchbowl describes itself as “The Gold Standard in Online Invitations & Greeting Cards,” and uses the logo of a punch bowl ladle:

Punchbowl filed suit claiming that AJ Press infringed on Punchbowl’s mark through its subscription-based online news publication Punchbowl News. Punchbowl News covers “insider” political topics and reports on events in Washington, DC, and derives its name from the use of the term “punchbowl” by the Secret Service to refer to the US Capitol building. As such, the Punchbowl News logo comprises of an overturned image of the US Capitol filled with purple punch and the slogan “Power. People. Politics.”

AJ Press argued that its use of the term “Punchbowl” was protected under the First Amendment and did not violate the Lanham Act. The district court granted summary judgment to AJ Press, concluding that its use of the name “Punchbowl” did not give rise to liability because it constituted protected expression and was not explicitly misleading as to its source. Punchbowl appealed.

Traditionally, the likelihood of confusion test is used for claims brought under the Lanham Act. When artistic expression is at issue, however, that test fails to account for the full weight of the public’s interest in free expression. If the product involved is an expressive work, courts generally apply a gateway test, grounded in background First Amendment concerns, to determine whether the Lanham Act applies. One approach was set forth in the Second Circuit’s 1989 decision in Rogers v. Grimaldi to determine whether First Amendment concerns were strong enough to outweigh the need to protect a mark. The Rogers test requires the defendant to first “make a threshold legal showing that its allegedly infringing use is part of an expressive work protected by the First Amendment.” Once this threshold is satisfied, the Lanham Act will not apply unless the plaintiff can establish that “the defendant’s use of the mark (1) is not artistically relevant to the work or (2) explicitly misleads consumers as to the source or the content of the work.”

The Ninth [...]

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Supreme Court to Consider First Amendment Protection for Parody Dog Toy

by | Nov 29, 2022 | ,

The Supreme Court of the United States has agreed to consider the scope of protection afforded by the First Amendment to commercial parody products that feature the unauthorized use of another party’s trademark(s). Jack Daniel’s Properties, Inc. v. VIP Products LLC, Case No. 22-148 (Supr. Ct. Nov. 21, 2022) (certiorari granted). The questions presented are as follows:

  1. Whether humorous use of another’s trademark as one’s own on a commercial product is subject to the Lanham Act’s traditional likelihood-of-confusion analysis, or instead receives heightened First Amendment protection from trademark-infringement claims.
  2. Whether humorous use of another’s mark as one’s own on a commercial product is “noncommercial” under 15 U.S.C. § 1125(c)(3)(C), thus barring as a matter of law a claim of dilution by tarnishment under the Trademark Dilution Revision Act.

This is the second time Jack Daniel’s has filed a petition for certiorari in connection with this case. The Supreme Court first considered the matter in January 2021, following the US Court of Appeals for the Ninth Circuit’s decision to vacate and remand the district court’s finding of trademark infringement, reverse the judgment on dilution and uphold the validity of Jack Daniel’s trademark and trade dress rights.

The case then returned to the district court, which granted summary judgment to VIP Products. The Ninth Circuit affirmed and then Jack Daniel’s filed its second petition for certiorari.

The Supreme Court will seek to settle the long-standing split amongst the US Courts of Appeal regarding the proper analysis for parody in trademark infringement and dilution claims and the scope of protection afforded to it via the First Amendment.



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Not So Clean: Federal Circuit Upholds Trade Dress Preliminary Injunction, Finds Defenses Improperly Plead

by | Nov 17, 2022 |

The US Court of Appeals for the Federal Circuit upheld a “narrow” preliminary injunction in a trade dress case, finding that the opponent of a registered configuration mark failed to prove its lack of secondary meaning and functionality defenses. SoClean, Inc. v. Sunset Healthcare Solutions, Inc., Case No. 21-2311 (Fed. Cir. Nov. 9, 2022) (Newman, Lourie, Prost, JJ.)

SoClean manufactures Continuous Positive Airway Pressure (CPAP) machines. SoClean sued Sunset—a former distributor of SoClean products—for patent infringement and later added trademark infringement claims. At issue in this appeal was a single SoClean mark “for the configuration of replacement filters for its sanitizing devices.”

SoClean requested a preliminary injunction to stop Sunset from making or selling allegedly infringing CPAP filters. The district court granted the injunction but narrowly tailored the injunction to only enjoin Sunset from selling its filter cartridges without Sunset’s own brand name attached to the filter drawing so that customers would not falsely believe they were buying SoClean products. Sunset appealed.

While a party seeking preliminary injunction must prove all four eBay elements, this appeal focused on just one: “likelihood of success on the merits.” Sunset argued that the district court abused its discretion in finding that SoClean would likely defeat Sunset’s lack of secondary meaning defense and its functionality defense.

After noting that the parties agreed that SoClean’s trade dress was protectable only upon a showing that it had obtained secondary meaning, the Federal Circuit divided the secondary meaning issue into two subparts:

  1. Whether the district court should have questioned the validity of SoClean’s registration in light of Sunset’s evidence
  2. Whether the district court held Sunset to an improperly high standard of proof.

As to the first issue, the Court noted that federal registration is prima facie evidence of a mark’s validity. When, as here, the challenged mark was registered fewer than five years prior, the burden shifts from plaintiff to defendant, such that the defendant must rebut the presumption of validity. Sunset acknowledged that it had this burden, but its arguments to the district court focused only on the US Patent & Trademark Office’s decision to grant SoClean’s registration. The Court rebuffed that argument, noting that “scrutinizing the application process and deciding whether the trademark examiner was correct to issue the registration in the first place is the opposite” of the statutory presumption of validity.

Next, the Federal Circuit addressed Sunset’s standard of proof argument. The Court acknowledged that the district court misstated the law by suggesting that there was a “vigorous evidentiary requirement” on the challenging party, instead of simply a “preponderance of the evidence.” However, the Court also noted that the district court considered Sunset’s lack of secondary meaning evidence to be “equivocal, at best,” which “plainly fails to satisfy a preponderance-of-the-evidence standard.” Therefore, the Court judged the error to be harmless.

The Federal Circuit thus affirmed the finding that SoClean would likely defeat Sunset’s secondary meaning challenges.

The Federal Circuit next [...]

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Another Kind of Term Limit: Delay Resulting from After-Allowance Amendments Deducted from PTA

by | Nov 17, 2022 |

The US Court of Appeals for the Federal Circuit affirmed the US Patent & Trademark Office’s (PTO) decision on a patent term adjustment (PTA), finding that it was appropriate to deduct days from a patent term when the applicant files an amendment after notice of allowance and could have completed prosecution earlier by withdrawing the amendment or abstaining from filing it in first instance. Eurica Califorrniaa v. Vidal, Case No. 22-1640 (Fed. Cir. Nov. 7, 2022) (Lourie, Dyk, Hughes, JJ.) (per curiam) (non-precedential).

Eurica Califorrniaa is the sole inventor of a patent application entitled “nondestructive means of ectopic pregnancy management,” which was filed on March 15, 2014. Near the close of an extended patent prosecution, the examiner identified minor additional changes to the claim language of the patent application that would place it in position for allowance. The examiner unilaterally made the amendments and provided Califorrniaa a notice of allowance. In response, Califorrniaa requested an interview with the examiner and provided a list of further proposed amendments that included changes to the examiner’s amended claim limitations as well as substantive changes unrelated to the Examiner’s Amendments. Following the interview, Califorrniaa formally submitted his proposed amendments for the examiner’s consideration. As a result, the PTO deducted 51 days from the adjusted patent term of the patent to account for the time it took the examiner to consider and accept Califorrniaa’s post-allowance amendments. Califorrniaa appealed the PTO’s calculations, first to the district court (which affirmed the PTO) and then to the Federal Circuit.

The PTO may extend the nominal 20-years-from-filing patent terms to account for each day of delay attributable to the PTO, minus the number of days of delay attributable to an applicant’s failure to engage in reasonable efforts to conclude prosecution. Congress has granted the PTO authority to define when this “reasonable efforts” standard is not met, and the PTO has created regulations to address the issue. In 2019, the Federal Circuit issued its decision in Supernus v. Iancu, finding that the PTO failed to properly consider whether the applicant reasonably engaged in efforts to conclude prosecution. In response, the PTO adjusted its regulations to distinguish between post-allowance amendments expressly requested by the PTO and those voluntarily made by the applicant, and to change the relevant timeframe for the calculation of a reduction in PTA. The PTO’s regulations state, in part, that an applicant’s decision to amend their patent application after the examiner has issued a notice of allowance is not a reasonable effort to conclude prosecution.

Unlike its ruling in Supernus, where no identifiable effort to conclude prosecution existed, here the Federal Circuit agreed with the PTO’s finding that Califorrniaa could have, at any time, withdrawn his post-allowance amendments and accepted the examiner’s amendments to conclude prosecution. As such, an “identifiable effort” existed by which Califorrniaa could have avoided additional delay and concluded prosecution. Therefore, the Court affirmed the 51-day deduction of the patent term.

The Federal Circuit also found that the PTO’s post-Supernus updates to [...]

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Up in Smoke: TTAB Dismisses E-Cigarette Opposition, Provides Guidance for Effective Evidence and Testimony

by | Nov 10, 2022 |

In a precedential opinion, the Trademark Trial & Appeal Board (Board) dismissed an opposition filed against an application for registration of a logo mark containing the word “SMOKES,” finding no likelihood of confusion with the opposer’s registered mark SMOK. The Board cited the dissimilarity of the marks and the weakness of the common mark element SMOK, as well as a lack of evidence that the parties’ trade channels overlapped. Shenzhen IVPS Technology Co. Ltd. v. Fancy Pants Products, LLC, Opp. No. 91263919 (Oct. 31, 2022) (precedential) (Goodman, Pologeorgis, English, ATJ). The decision was rendered without a brief, testimony or evidence filed by the trademark applicant.

Fancy Pants Products filed an application to register a logo mark (depicted above) that included the stylized word “SMOKES.” The application record disclaimed “smokes,” meaning that Fancy Pants conceded that the word “smokes” was not inherently distinctive for its applied-for goods: “[c]igarettes containing tobacco substitutes … with a delta-9 THC concentration of not more than 0.3% on a dry weight basis,” i.e., a description for hemp-derived products eligible for federal registration in accordance with the 2018 Farm Bill. Shenzhen IVPS Technology opposed registration of Fancy Pants’ mark on the ground of likelihood of confusion with Shenzhen’s alleged rights in the trademark SMOK. In support of the opposition, Shenzhen pleaded ownership of 11 registered SMOK and SMOK-variant marks for electronic cigarettes, parts and components (among other goods) and related retail services.

Fancy Pants did not take testimony or introduce any evidence during its testimony period, nor did it file a brief. The Board noted, however, that Fancy Pants was not required to make these submissions because Shenzhen bore the burden of proving its entitlement to a statutory cause of action and its trademark “likelihood of confusion” claim by a preponderance of the evidence.

The Board first looked at what trademark rights Shenzhen could properly rely on in the opposition proceeding in view of the rights pleaded. As a result of Shenzhen’s errors in the presentation of its trademark registrations into the record with respect to verifying the current status and title of the registrations, the Board found that 10 of Shenzhen’s 11 pleaded trademark registrations were not properly made of record. Nevertheless, Shenzhen was allowed to rely on common law rights for these 10 SMOK-variant trademarks since Fancy Pants failed to object to Shenzhen’s evidence of common law use.

Having determined the scope of the trademark rights at issue, the Board turned to the issue of priority in Shenzhen’s alleged trademarks. Priority over Fancy Pants’ mark was not at issue with respect to Shenzhen’s one properly pleaded §2(f) trademark registration for the SMOK mark that was made of record (and the goods and services covered thereby). As to Shenzhen’s common law rights in its alleged family of the other 10 SMOK-variant marks, the Board explained that Shenzhen first had to establish that it even owned a “family” of marks—i.e., marks that share a “recognizable common [...]

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Supreme Court to Consider Whether Lanham Act Reaches Foreign Defendants’ Extraterritorial Conduct

by | Nov 10, 2022 | ,

The Supreme Court of the United States agreed to review the geographic scope of the Lanham Act and the extent to which trademark owners can use US trademarks to police foreign sales. Abitron Austria GmbH et al. v. Hetronic International Inc., Case No. 21-1043 (Supr. Ct. Nov. 4, 2022) (certiorari granted). The question presented is as follows:

Whether the court of appeals erred in applying the Lanham Act extraterritorially to petitioners’ foreign sales, including purely foreign sales that never reached the United States or confused U.S. consumers.

In the underlying case, the US Court of Appeals for the Tenth Circuit upheld a damages award for Hetronic International based on its conclusion that the Lanham Act can affect conduct that substantially affects US commerce, such as the products Hetronic Germany and others sold to European customers.

The US Solicitor General suggested that the case is “a suitable vehicle” to clarify the Lanham Act’s geographic scope, noting that the Lanham Act provides a remedy for a foreign defendant’s use of a US trademark abroad only if that use is likely to cause confusion within the United States.



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