We’ve also posted the following articles in the
past week (log in via subscription or free trial):
CAFC rules PTAB’s CBM definition too broad in
Schecter warns against upsetting balance between trade secrets
USPTO could change direction under Trump administration
Halo webinar reveals how courts are using their discretion over
Texas jury awards $20m patent damages against Medtronic
Puma loses Chilean Supreme Court trade mark case
WIPO study shows growth of women inventors
Interview: Mary Boney Denison, USPTO commissioner for trade
Philips to pay Masimo $300m patent settlement
TTAB reversed over "use" of a mark
The Federal Circuit has reversed a Trademark Trial and
Appeal Board decision in Adidas v Christian Faith Fellowship
reports TTABlog. The appeals court ruled that the sale of
two hats at the Church’s bookstore to an out of
state purchaser constituted use in commerce of the
applicant’s mark ADD A ZERO.
As John Welch (right) on the
TTABlog explained: "In this case, the question was whether the
Church made a sale of goods bearing the mark, in commerce
regulable by Congress, before it applied to register its marks.
The TTAB's interpretation of the Lanham Act and the 'legal
tests it applies in measuring registrability’ are
subject to de novo review by the CAFC."
The Board had granted adidas’s petition for
cancellation of two registrations for the mark ADD A ZERO for
"clothing, namely shirts and caps", finding that these sales
were de minimis and insufficient to show use that affects
interstate. The Lanham Act provides for the owner of a trade
mark used in commerce being able to request registration of its
mark, with commerce defined as
"all commerce which may lawfully be regulated by
As the number of comments on the TTABlog article shows, this
ruling is of great interest.
Welch asked: "After this decision, is there any
'use’ of a trade mark or services mark that does
not satisfy the 'use in commerce’ requirement? Is
the old 'interstate/intrastate’ dichotomy dead, as
far as 'use’ goes? In other words, for application
purposes are 'first use’ and 'first use in
commerce’ now the same thing?"
Knobbe Martens noted: "While this ruling helps to settle
the question of how much 'actual use in commerce’
is needed to register a trade mark, the question remains as to
how much use is required to avoid abandoning a trade mark,
which was one of the other arguments that Adidas raised in the
cancellation. Adidas also argued that the
Church’s marks’ fail to function as
Maple Leafs and Snoop Dogg face off
In other trade mark news, the Toronto Maple Leafs and Snoop
Dogg are battling over a trade mark application for the
rapper’s Leafs by Snoop medical marijuana company,
reports The Fashion Law blog.
The ice hockey team’s
parent has filed an opposition with the Trademark Trial and
Appeal Board, arguing it has used the mark LEAFS for nearly 90
years. "The LEAFS mark reflects a highly unusual and
distinctive spelling, since the plural of the English language
work 'leaf’ is usually presented as
'leaves’," says the opposition.
The Fashion Law quoted a joint statement from the
NHL/MLSE/Snoop’s representatives: "We have been
actively discussing a possible resolution of this matter, and
those discussions are ongoing. Facing a non-extendable deadline
to file a trade mark opposition, the Maple Leafs made this
submission in order to maintain the status quo. The parties
have requested a suspension of the opposition proceeding to
allow their discussions to continue."
The Fashion Law also brings news of
another trade mark opposition: Instagram is trying to stop
Microsoft from registering the ACTIONGRAM mark.
We might overcome
A lawsuit challenging the validity in the song "We Shall
Overcome" – which was embraced by the civil rights
movement – has overcome one hurdle to trial. This week
Judge Denise Cote in the Southern District of New York declined
to dismiss the suit,
reports The New York Times.
Cote declared the plaintiffs had "plausibly alleged" that
the first verse lacked originality, as well as noting the
song’s registered authors may not have made
crucial changes to the lyrics such as changing "will" to
"shall" in the title of the song. She said the "issues of
originality and authorship will require discovery and a more
The lawsuit was filed in April on behalf of a non-profit
group We Shall Overcome Foundation. The producers of the 2013
movie Lee Daniels’ The Butler" later joined the
suit. The defendants are The Richmond Organization and Ludlow
Music. Folk singer Peter Seeger recorded a version of the song
CAFC judges urge en banc rehearing in PTAB case
The Federal Circuit this week issued an important reversal
of the Patent Trial and Appeal Board’s definition
of covered business method,
in Unwired Planet v Google.
However, it also issued an interesting PTAB ruling last week
when it reconsidered its earlier decision in Click-To-Call
Techs v Oracle in light of the Supreme Court’s
Cuozzo decision. The Federal Circuit found it could not reverse
its earlier ruling that issues under the one-year time bar
(Section 315(b)) could not be appealed because it was bound by
its own precedent.
as the Patents Post-Grant blog reports, concurring opinions
by Judges O’Malley and Taranto (right) both called
for the Federal Circuit to sit en banc to review the
court’s reasoning in Achates Reference Publishing
v Apple in light of Cuozzo. The court in Click-To-Call believed
it was bound by Achates, which established that a party cannot
challenge the PTAB’s decision to institute an IPR
proceedings under the one-year time bar because it is barred
under Section 314(d).
Taranto wrote: "314(d). . .refers to a 'determination . .
.whether to institute an IPR under this
section’ (emphasis added). As a textual
matter, those words clearly encompass the 'reasonable
likelihood’ determination specified in §
314(a), but they leave unclear to what extent they reach
determinations of compliance with other statutory provisions
bearing on institution … The
'jurisdiction’ label, while a troublesome one in
many contexts, here relates to an Administrative Procedure Act
principle that the Court in Cuozzo invoked in stating that, at
least sometimes and maybe generally, § 314(d) does not bar
review to determine if agency action is 'in excess of statutory
Patent references rising
The number of references cited per patent continues to rise,
but the pace has slowed,
reports the Patently-O blog. The average patent issued in
2016 had more than 50 cited references.
"In my view – this
is great, although it would certainly help if the examiner
was given some clue as to why the reference
is deemed relevant or what portion of the reference is
relevant," said Dennis Crouch on the blog. The average patent
cites 26 more references per patent on average than 10 years
ago, although examiners only cite 1.5 more per patent.
Couch said the increase in references is good because IT
systems can easily handle searching through large numbers of
references and the more important patents have more references
and a better starting point. "If these are well used by the
examiner then we also get better examination and a
stronger patent system in the end," he said.
The Patently-O blog also published data this week on
patent claim counts.
Acacia subsidiaries Saint Lawrence Communications LLC and Saint
Lawrence Communications GmbH have
entered into patent license agreements with HTC
estate of Prince is in a court battle with Tidal over the
streaming right’s to the artist’s
copyright suit over a fan fiction Star Trek film that was said
to be "going away" back in June? It’s not
according to Law360’s Bill Donahue.
Briefs in brief
what she described as "Tamicus" news, Rebecca
Tushnet’s 43(B)log reports that IP professors have
an amicus brief in Lee v Tam.
an amicus brief in support of Belmora's FLANAX petition for
writ of certiorari that notes the split in the circuits.