Readers of this blog may recall that in the past year, I wrote extensively about the U.S. Supreme Court case of Oil States v. Greene’s Energy. But I paid little attention to another important case decided around the same time: SAS Institute v. Iancu. Oil States centered on whether the USPTO’s inter partes review (“IPR”) process (challenging a patent at the USPTO, rather than in court) was constitutional. SAS followed up with a seemingly less-pressing issue: whether, when the USPTO institutes an IPR to reconsider a patent by accepting an IPR petition, the USPTO must decide the patentability of all of the claims of the patent that the IPR petitioner challenged in the IPR petition. The Supreme Court ruled that IPR is constitutional in Oil States and that the USPTO must decide the patentability of all of the claims which were challenged in the accepted IPR petition in SAS.
Just this week, I was attending a “Supreme Court Preview” event hosted by the Eighth Circuit Bar Association. One of the topics was upcoming patent cases before the Supreme Court. I’ll admit; they’re not as juicy as last term (but perhaps only lawyers would have salivated over last year’s cases). However, one gave me a squirrelly thought: Return Mail v. United States Postal Service. The major issue in Return Mail is whether the federal government is a “person” who may petition to institute review proceedings before the USPTO.
Technically, Return Mail doesn’t involve IPR, but rather a different proceeding called covered business method (“CMB”) review. CMB review, as its name implies, is limited to review of business method patents–that is, patents that claim a method or apparatus for performing data processing or similar operations relating to the practice, administration, or management of a financial product or service. But CMB review is very similar to IPR; a person files a petition with the USPTO seeking review, and the USPTO decides whether to institute proceedings. For example, in the Return Mail case itself, Return Mail, Inc. sued the United States Postal Service (“USPS”) for infringement of a business method patent described as: encoding information about the name and address of intended recipients in the form of a barcode, returning undeliverable mail to a processing location, scanning the barcode, obtaining the corrected information, and then providing that information to the sender to choose whether to resend with correct addressee information. (Description in the Federal Circuit opinion.)
Does Return Mail’s patent seem a little…obvious? Sounds like USPS might have a good shot at challenging the patent via CMB review, right? That’s what the USPS thought, so it petitioned for CMB review of certain claims of the patent. There’s just one problem: current patent law says that only a “person” can institute CMB review, and that person must meet certain other requirements, which include being sued or charged with infringement. Is the USPS–an arm of the government–a person? Current patent law does not define the term. In a short opinion, the Federal Circuit held that the federal government is a “person” for the purposes of CMB review. There was a fiery dissent. The Supreme Court granted cert on this specific question.
And here is where the squirrely thought arises. Just like CMB review, IPR review starts with a petition by a “person.” But unlike CMB review, an IPR petitioner need not have been sued or charged with infringement. Indeed, an IPR can be instituted by any person “who is not the owner of a patent.” 35 U.S.C. § 311. The USPTO must review all claims challenged in a petition if the USPTO accepts the petition. But the USPTO might not want to do that in every case–as in SAS. If the government is a person, can it escape SAS‘s mandate by filing its own petition for IPR limited to the claims it actually thinks should be evaluated?
The process would go something like this: (1) the USPTO receives an IPR petition from a third party and reviews the petition, (2) the USPTO determines it would like to institute review on some of the claims of the patent challenged in the petition, but perhaps not the same claims as those listed in the petition, (3) the USPTO works in collaboration with another governmental agency (say, for example, the Attorney General or USPS), (4) the other governmental agency files a petition for IPR of the same patent, but on the claims and grounds desired by the USPTO, and (5) the USPTO accepts the governmental petition, achieving the goal of escaping SAS‘s mandate that it decide the patentability of claims listed in the third party petition that the USPTO thinks need not be considered. And voila! Return the earlier petition for IPR as uninstituted to sender.
Thus, affirming the Federal Circuit could provide the government an escape from SAS, so to speak. While reversal could preclude agencies like the USPS from seeking cost-effective review of patents with the USPTO. What do you think?
Trademark owners should beware of a scam involving the Amazon Brand Registry. There have been several reports of rogue users exploiting the Amazon Brand Registry through the unauthorized modification of trademark registration records at the U.S. Patent and Trademark Office (USPTO). These scammers are submitting fraudulent requests to change the email addresses for trademark registrants, and thereafter, updating the brand ownership records with the Amazon Brand Registry.
As we have previously discussed, trademark infringement and counterfeiting is an ongoing issue on Amazon. In recent years, Amazon vastly improved its brand protection capabilities with the Amazon Brand Registry. Enrollment in the Amazon Brand Registry, which requires a trademark registration, allows brand owners to control the detail pages for their product listings (which Amazon otherwise controls), and create customized “Store” pages to showcase their branded products. Enrollment also provides access to powerful tools for reporting intellectual property violations and removing infringing product listings.
Because Amazon relies on USPTO records to verify the owner of the trademarks that are registered in the Amazon Brand Registry, this scam can result in the true trademark owner losing control of their brand and store pages on Amazon, and hindering their ability to report intellectual property violations. Indeed, the scammer can take over the brand owner’s store pages and product listing details, and sell their own counterfeit products from such pages instead.
Unfortunately, until security measures are improved by the USPTO, this is a scam that is difficult to prevent. For example, the USPTO could require additional authentication before approving an address change request, such as sending a security code to the current address of record, but such an improvement has not yet been implemented. For now, the USPTO is monitoring every address change request while it “explores a long-term solution” to stop the fraud.
In the meantime, trademark owners should always ensure that email addresses are up-to-date in USPTO records, so that any notices regarding address changes are received. Furthermore, it may be worthwhile to do a spot check of registration records to see if any unauthorized changes have occurred. If you see any unauthorized changes, you should contact your attorney, inform the USPTO at firstname.lastname@example.org, file the appropriate forms to correct USPTO correspondence records, and then get in touch with the Amazon Brand Registry to correct any unauthorized changes.
The rest is history. Seth revealed himself a fan of the blog on our 4th birthday, what a surprise. He generously has engaged with us since then, weighing in on topics ranging from branding to trademark bullying to Velcro’s fear of trademark genericide, with so much more in between.
Recently, Seth generously agreed to answer the 12 questions below. What should we ask next?
Steve Baird Interviews Seth Godin:
Baird: As you know, Duets Blog was designed to facilitate a more graceful collaboration between lawyers and marketers. What do lawyers need to understand most about marketers, and vice versa?
Godin: Begin with: Lawyers ARE marketers. Of course you are. You are using ideas to change behavior. That’s what marketers do. You seek to tell a story that will motivate a client or a judge or an examiner to alter behavior. That’s what marketers do.
Too often, marketers with a capital M get in a negative loop, a race to the bottom. They believe that they are entitled to strip-mine attention, to shade the truth, to interrupt and to selfishly annoy.
That doesn’t work in the long run, and lawyers have a role to play in giving these Marketers some boundaries.
In my experience, some IP lawyers hide behind arcana, or strict rule-based approaches, or superstition in working with clients to get them to change.
(“All rights reserved” anyone?)
The alternative is to find the empathy to realize that your clients don’t know what you know, don’t believe what you believe and might not want what you want. Given that, how can you go to where they are and help them use your skills and insights to achieve their goals?
Baird: What change were you hoping to make by revealing yourself as a reader of DuetsBlog on our 4th Birthday, almost six years ago now? What keeps you coming back to engage with us? What would you most miss, if we were gone?
Godin: It’s one of my favorite blogs! I’ve been an amateur trademark and copyright person since our trademark lawyer got us into trouble with some nuns in 1983. Long story.
DuetsBlog is erudite, refreshing and more far ranging than most people realize.
Baird: How much does the “who would miss you if you were gone” question drive the extraordinary and prolific nature of your day-to-day work that advances the projects and causes you choose to pursue?
Godin: I view my platform as a privilege. I’ve had headstarts my whole life, and I have the attention and trust of a bunch of people.
I’d rather not waste it on trivia.
Baird: Virtually every set of corporate trademark use guidelines on the planet forbids the “verbing” of a trademark (to avoid the risk of genericide), what say you about this risk/instruction, from a marketing perspective, and is following it a good trade-off or a mistake?
Godin: I think aggressive trademark guidelines are a mistake for a few reasons:
1. Aloha Poke! It doesn’t pay to own a name if that name is going to be hated.
2. It can be expensive.
3. Your brand should be so lucky as to be Kleenex or Hoover. The thing is, your enemy is probably obscurity, not genericness.
4. When in doubt, the real win is this: Use trademark the way it was intended. As the origin of goods or services. If people have a good reason to want YOU, the one and only, the better one, then you’re going to have the trademark winds at your back. But if you’re hoping for a legal protection for your generic commodity product, it’s not really much help.
Baird: What brands are most remarkable to you, and why?
Godin: A brand is not a logo or a word. It’s a promise and an expectation. If Nike opened a hotel, we’d know what to expect. They have a brand. If Hyatt made sneakers, we’d have no clue. They have a trademark, but no brand. Switch the signs in front of another hotel and we’d never know.
So, the question is more like: what humans are doing important and useful work?
Baird: Thinking about your Make Better Tacos blog post, under what circumstances do you believe a trademark is important and a valuable asset worth protecting? Any examples to illustrate?
Godin: I think a good trademark is a symptom of a good brand, not the cause.
Baird: What brands have visual identities that can truly standalone without words, and why? And, in thinking about these brands, could it be that the use of non-verbal logos adversely impacts “word of mouth” and the spread of ideas about those brands, or not so much?
Godin: I love non-verbal logos. What an achievement. It’s confirmation that you’ve made something worth remembering, and that you’ve told your story in a way that people want to hear more about it.
I don’t think you need a fancy designer to do this. I think you need longevity, frequency and emotional import. Most people can identify the flag of the country they grew up in.
Baird: As an alumnus of your AltMBA program, which emphasizes the importance of “making a ruckus,” if you were a lawyer, how would you most likely seek to make a ruckus? From your perspective as a marketer, what change would most improve marketing of the legal profession?
Godin: Stop being a commodity! “You can choose anyone and we’re anyone” is not a strategy.
What is the thing you do that others actually CAN’T do? I know that most lawyers didn’t sign up to answer this question, but it’s the secret to your happiness.
Baird: In your 2016 interview on #AskGaryVee, Episode 185, Gary never gave you the chance to answer his question: Where did you learn empathy? Could you share your answer with our readers now? What about another admirable trait of yours, generosity: Was that learned in the same way?
Godin: Empathy means not only realizing, but EMBRACING the idea that other people don’t know what you know, don’t believe what you believe and don’t want what you want. And being okay with that.
I think we each can learn it in no time. What we have to do is choose to want it. Which means setting aside so much of our insistence on being right, at least in service of helping us engage with others.
Baird: “Footprints on the Moon: What Changemakers Know,” described a scene that could have been right out of a movie — a cold October night around the campfire with Neil Armstrong; what was your most significant take-away from that out-of-this-world experience?
Godin: If there are footprints on the moon, is the next little argument you’re planning to spend an hour on really the best you can do?
Baird: Thank you for the opportunity to read an advance copy of your brand new book THIS IS MARKETING. It’s fabulous and brilliant. If I may repeat two questions that you’re famous for asking, and now ask them about your brand new book, “Who’s it for?” and “What’s it for?”
Godin: Who’s it for: Anyone who wants to change things for the better and is willing to learn how to do that better.
What’s it for: To give you a handy way to teach those around you that it is, in fact, possible to do work you’re proud of.
I made it into book form so that my readers could use it to teach their peers.
Baird: What thoughts about marketing, brands, or life in general, most consistently bring a smile to your face?
Godin: That people in every line of work, even lawyers (!), care enough to challenge the status quo for non-selfish reasons. To make things better.
Seth, thank you for your very kind words in support of our effort to keep making a ruckus!
Dear readers, here is where you can pick up Seth’s new book launched today, it’s a must-read: This is Marketing — You Can’t Be Seen Until You Learn to See.
Seth’s fabulous and penetrating new book called This is Marketing, will be released tomorrow, no doubt another best-seller, a must-read for any lawyer who cares to make change for the better.
In the meantime, many thanks to Fred McGrath for his interest and generosity in sitting down with me to capture a conversation about DuetsBlog, editing our discussion in 3 videos, here’s the first:
An NFL team and an NBA team are duking it out over trademarks with the word “UPRISING” to be used with eSports.
What is eSports you may ask? It is professional competitive video gaming. Anyone with a teenager has probably heard of Fortnite. Fortnite is a world-wide phenomenon. Over three nights during TwitchCon (which is a Fortnite competition), Fortnite averaged around 65,000 viewers per day across Twitch, YouTube and Facebook. However, there are also numerous other video games such as Hearthstone, Tom Clancy’s Rainbow Six Siege, Star Craft II and Overwatch, among others. Indeed, Overwatch is related to the trademark dispute involving the owner of the New England Patriots.
The dispute involves the marks BOSTON UPRISING and NORTH UPRISING. Specifically, last month, the billionaire owner of the New England Patriots Robert Kraft’s company, Kraft Group, filed a Notice of Opposition against an application filed by the NBA’s Toronto Raptors for the mark NORTH UPRISING (stylized) in connection with clothing and other merchandise that is to be used with video games. The Kraft Group alleges that the stylized mark in the application is similar in stylization and font of its applied for stylized mark for BOSTON UPRISING.
The NFL team’s owner applied for the mark BOSTON UPRISING in connection with entertainment services including electronic and video games, and various clothing and other merchandise. This BOSTON UPRISING mark will be used with an eSports team that operates in a professional Esports league for the video game Overwatch.
The Kraft Group and related entities know how important trademarks are to their business. They own many trademarks related to the New England Patriots football team such as:
- NEW ENGLAND PATRIOTS® (U.S. Reg. No. 2,766,441)
- PATRIOTS (& Design) (U.S. Reg. No. 4,668,420)
- ROAD TO PERFECTION (U.S. Reg. No. 4,250,317)
- PASS IT ON (U.S. Reg. No. 3,349,437)
- TROPHY TOWN (U.S. Reg. No. 3,823,236)
- PATS (U.S. Reg. No. 3,144,361)
- BOSTON THREE PARTY (U.S. Reg. No. 3,773,822)
- KRAFT SPORTS PRODUCTIONS (U.S. Reg. No. 4,619,577)
- 3GAMES TO GLORY (U.S. Reg. No. 3,031,278)
- Design mark below (U.S. Reg. No. 2,755,546), among others
The New England Patriots team is savvy with its trademarks. You may recall that the team applied for, and obtained, a registration for the mark PERFECT SEASON even though the perfect season never materialized for the Patriots. To still obtain the registration, the Patriots licensed the use of the PERFECT SEASON mark to the Massachusetts Interscholastic Athletic Association, which produced a DVD of the 2015 state football championship game between two high school teams–Xaverian Brothers and Central Catholic. Xaverian prevailed and accomplished a perfect season, winning its 24th straight game (spanning two seasons) as previously discussed on DuetsBlog.
It will be interesting to see which team prevails for its UPRISING mark in the video gaming world.
–James Mahoney, Razor’s Edge Communications
Every now and then, I find pearls floating in the tide of print advertising. These two, for example.
First is the Kiton ad, one of a series the company is running. I liked the whole look and feel of it right away, but didn’t know anything about the company.
I like it even better after doing a little research and learning that Kiton prides itself on its fabrics and the quality of the clothing it creates using them.
These ads work on multiple levels. First, they stand out both for their striking simplicity and for the visual puzzle: why the red dot covering the head? (At least, it’s red to my color-challenged eye.)
Beyond that, the more you look at one of the ads, the more attention to detail you see. There’s deep creative thought behind these.
More important, the first ad you see imprints visual clues that unmistakably identify every subsequent ad you see as a Kiton. In the sea of luxury-good advertising, you too often have to glance at the company name to see whose ad it is.
As I’ve mentioned before, one of the big creative questions is, “How can we indelibly link the company or product name to the creative idea?” Kiton’s campaign achieves this, not least by linking the red-dot head with the red dot on the Kiton i.
Incidentally, the dot over the head probably has an additional benefit for Kiton. Rates and residuals for models vary depending on the image used. Because the Kiton models are unidentifiable, their rate is likely lower than if we could see their faces. Small change in the larger scheme of things, but a benefit for Kiton nevertheless.
The other pearl is this ad for the Omega Seamaster Diver 300M. In case it’s not clear, the tuxedoed Daniel Craig is up to his chin in water. It’s a great visual that pays off the promise that the watch “will take you from the bottom of the sea, to the center of attention, and the top of the world.” Form and function married with fashion illustrated by a brilliant concept.
A loyal reader brought to our attention the logo for a rather interesting chiropractic practice:
And, what are the odds a patient of Thorassic Park in Bradenton might need an adjustment after visiting Jurassic Park in Orlando? Might there be an opportunity for a shuttle service in between?
So, if you are the brand police for the Jurassic Park franchise, does the chiro-logo give you back pain? For the creatives in the crowd, does your spine tingle seeing this painstakingly cloned logo?
One of O’Leary’s most famous lines from Shark Tank seems to fit this very moment, as we mourn the loss of O’Leary’s Mr. Wonderful trademark application for roasted nuts, with a popular meme: