Since launching almost ten years ago, we’ve focused on helping and guiding marketing/branding professionals, as we seek to facilitate their graceful collaborations with trademark professionals.

Our approach has strived to deliver valuable information, without the typical jargon and legalese.

It seriously borders the obvious to say that folks who connect with us here know the importance and value of brands and trademarks, and probably know far less about patents and patentese.

Could novelty be shown, sharing this with patent folks wanting more comfort with trademarks?

In a month, on September 28, at 10:15 AM, I’ll be sharing some of this knowledge at the Midwest IP Institute, in Minneapolis, with a brand new session specifically designed for in-house patent and intellectual property counsel, especially those who may believe that patents are more important than trademarks, called: Trademark Survival Guidance for In-House Patent and IP Counsel.

I’m not saying that one is more important than the other. Nor are there any equivalents here.

What I am saying is that over the last quarter century intellectual property expertise has become far more subspecialized. I’ve witnessed this development first hand over the course of my career. Yet, not all companies have dedicated in-house trademark counsel, so in-house patent counsel often is expected to have at least a working knowledge of the ever-changing trademark landscape.

I’ll be leading a discussion with a very talented group of patent and intellectual property counsel:

  • Paul Sherburne, Associate General Counsel and Intellectual Property Attorney, Graco Inc.
  • Greg Smock, Patent Counsel, Teleflex Incorporated
  • Kirsten Stone, Assistant General Counsel – Chief Intellectual Property Counsel, H.B. Fuller Co.

If you have a strong patent background and want more trademark footing, this session is for you.

If you know patents inside-out, but search for more comfort in trademark matters, this is for you.

If your knowledge of the patent landscape is vast, but you seek to be much better than simply dangerous, when it comes to navigating thorny trademark issues, you won’t want to miss this.

Why? Because we will help you improve your handling and supervision of trademark matters.

In fact, you will learn and apply valuable trademark knowledge to your day-to-day work, and take away the top six trademark tips that will improve and strengthen your trademark advice to business leaders and marketing professionals. Are we speaking your language yet?

If you’re wanting to learn how to translate patentese into valuable trademark skills, here you go.

By the way, I’ll be expanding my patent knowledge and learning more patentese later today (and more than I knew yesterday) at the USPTO China Intellectual Property Road Show at the University of Iowa College of Law, hosted by Dean Kevin Washburn and Professor Jason Rantanen.

Credit: Federal Circuit (what it looks like to argue there)

One week ago, the Federal Circuit Court of Appeals issued its decision in Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals, Inc., 18-1638 (Fed. Cir. July 20, 2018)–by all accounts, one of this decade’s most important decisions concerning the America Invents Act and the patent system. The primary issue in the case was whether the Saint Regis Mohawk Tribe (or any tribe, for that matter) is immune from the USPTO’s inter partes review (“IPR”) proceeding, which can result in cancellation of a patent. Allergan, a pharmaceutical company, had transferred title to certain patents to the Tribe after its competitor, Mylan, had instituted an IPR of the patents. The Tribe claimed that the USPTO could not review the patents due to sovereign immunity.

The Federal Circuit held that tribal sovereign immunity does not apply to IPR proceedings. It cited the Supreme Court’s recent Oil States decision (I wrote about the case earlier this year), which explained that IPRs arise “between the Government and persons subject to its authority in connection with the performance of the constitutional functions of the executive or legislative departments.” Thus, IPR is “simply a reconsideration of” the original patent grant by the federal Government. Although initiated by a private party, the Director of the USPTO must decide to institute the proceedings, and the USPTO acts “as the United States in its role as a superior sovereign to reconsider a prior administrative grant and protect the public interest in keeping patent monopolies ‘within their legitimate scope.'” The federal Government being supreme, tribes cannot invoke sovereign immunity.

The Federal Circuit’s final reference to protecting the public interest resonated with me, as well as Judge Dyk’s concurring opinion, which provided insightful context about the importance of reviewing patents post-grant. Certainly no one expects that the USPTO will perfectly examine every patent application and grant patents without error, but striving to achieve perfection is vital–even if impossible under current circumstances. As Judge Dyk illuminated:

[T]he USPTO–then and now–is an agency with finite resources that sometimes issues patents in error. Currently, for instance, the USPTO receives over 600,000 applications a year. Patent examiners receive roughly 22 hours to review each application, an amount of time that 70% of examiners report as insufficient.  And the USPTO struggles to attract and retain examiners with the technical competence required to understand the inventions being reviewed and to perform sufficiently thorough prior art searches.

The USPTO “is under pressure to make speedy determinations on whether or not to grant patents.” As such, “pre-grant patent examination was–and still is–an imperfect way to separate the good patents from the bad. Resource constraints in the initial examination period inevitably result in erroneously granted patents.” A glut of bad patents–or the perception thereof–negatively affects the public’s view of the patent system’s fairness and credibility. Thus, Congress created IPRs to combat pre-grant examination constraints, creating a streamlined procedure to challenge patents, in the hopes of restoring trust in the patent system. As an initial matter, I’m not sure attempting to solve the effect of the USPTO’s constraints was better than solving its cause.

In a recent article, I wrote about similar concerns as those expressed by Judge Dyk:

The USPTO, as the agency tasked with examining patent applications, is the first line of defense against patent fraud. But some point to the USPTO’s examination policies as potentially inviting fraud. By way of background, the USPTO’s patent examiners (those who review applications) are evaluated on a quota system, which encourages them to examine as many applications as possible. Some commentators have questioned whether this policy has turned the USPTO into a rubber-stamp institution. In the meantime, the number of patent applications and grants since 2000 has almost tripled. This has led to an even greater need for the USPTO to quickly accept or reject patents so as not to fall behind. The cycle is further incentivized by the increasing economic and financial value of patents. And it is also enabled by the difficulty, high cost, and/or impossibility of investigating every representation made by patent applicants. The USPTO simply does not have the wherewithal to investigate every claim of inventorship, utility, novelty, and other issues related to patentability. Thus, along with the important interests at stake, the complexities of patent law and the USPTO’s current weaknesses combine to create a situation in which fraud is less likely to be identified and thwarted.

In the context of the Mohawk Tribe appeal, the overwhelming public interests in reviewing potentially-invalid patents were brought to bear against the amorphous concept of sovereign immunity. It was absolutely necessary that tribes be subject to IPRs, lest private parties be enabled to take advantage of the USPTO’s constraints and “rent” the protection of sovereign immunity. Indeed, in a recent article, another commentator argued that the Federal Circuit’s decision had an “inescapable wisdom” because, had the result been any different, “every holder of questionable U.S. patents would have been rushing to one Native American tribe or another seeking deals to shelter possibly bogus rights.”

Going further, though, one can imagine more than just deals between tribes and private parties, but also the emergence of an entirely new form of patent assertion entity, patent troll (which some, but not all, criticize), and perhaps even a hybrid form of “patent privateer.” A tribe could, itself, become a mass aggegator of patents with a huge advantage: that the avenues for challenging its patents are more limited than a traditional patent holder. And one can imagine patent alliances renting tribal sovereign immunity for large market players. Any of these could exacerbate the David-and-Goliath scenario some defendants find themselves in after being sued for infringement. But, if the Federal Circuit’s decision holds–and I predict it will, especially in view of Oil States–such possible negative effects will not come to pass. However, as Judge Dyk implied (and it bears repeating), the patent system is imperfect and still has a way to go.

— Jessica Gutierrez Alm, Attorney

trolls

We’ve spent time discussing the patent troll phenomenon in the past.  Patent trolls are less pejoratively referred to as non-practicing entities, because they do not make or use the inventions covered by their patents.  Instead, these non-practicing entities operate by purchasing patents on various technologies, accusing companies of infringing those patents, and demanding the companies pay licensing fees.  Faced with the threat of patent litigation, many companies—both large and small—will choose to simply pay the troll’s demand.  The infringement allegations might be thin, and the asserted patent might be invalid.  But the potential cost of litigation gives the patent troll great leverage over the companies they target.  Paying the demanded licensing fee is far more cost-effective than defending an infringement suit.

One company, however, is taking a different approach to what it views as a patent troll.  Cloudflare is an Internet security company and content delivery network.  Cloudflare is facing a patent infringement suit filed by patent owner, Blackbird Technologies.  The Complaint alleges Cloudflare is infringing the ‘335 patent, related to incorporating third-party data into existing Internet connections.  Cloudflare has vowed to fight the litigation, arguing both non-infringement and invalidity of the ‘335 patent.  To help in its efforts, Cloudflare is taking the creative approach of crowdsourcing its defense.   In a recent blog post, Cloudflare’s CEO offered up $20,000, to be divided among individuals who submit relevant prior art to invalidate the ‘335 patent.  In addition, and in an apparent effort to stop Blackbird from asserting any other patents against anyone, Cloudflare is offering another $30,000 for prior art submissions that invalidate Blackbird’s other 37 patents and patent applications.

Blackbird Technologies is . . . a law firm?  Blackbird’s website seems to offer legal services with “top law firm experience.”  But Blackbird is the plaintiff in the suit against Cloudflare.  Based on an assignment recorded with the U.S. Patent and Trademark Office, Blackbird purchased the ‘335 patent from the inventor in October 2016 for $1, and shortly thereafter initiated an infringement action against Cloudflare.  Blackbird is not merely representing a client, but instead appears to be stepping into the client’s shoes by purchasing the asserted patent and bringing suit as the plaintiff.

A little research reveals that this is a regular practice for Blackbird.  Blackbird owns at least 38 patents and published patent applications covering a broad range of technical fields.  Since September 2014, the firm has been named as the plaintiff in 109 federal patent infringement cases (107 in the District of Delaware, and 2 in the Central District of California).  The defendants in many of these cases were large corporations—Amazon, Wal-Mart, Petco, Uber, Lululemon, Target, and Netflix.

So, is Blackbird a patent troll?  Blackbird says its business model helps individual inventors and small companies by providing them with a low-cost solution to monetize their patents.  Blackbird also states that it is different from other companies labeled non-practicing entities, because Blackbird is “ready to litigate cases,” and is not merely looking “to settle cases quickly.”  Though it appears that most, if not all, of Blackbird’s suits have settled.

Cloudflare, however, views Blackbird as a pure patent troll, which led to Cloudflare’s crowdsourced effort to invalidate any and all of Blackbird’s patents.  Cloudflare’s CEO even went as far as a recent scathing blog post about the suit, accusing Blackbird of violating legal ethics rules.

Usually, infringement allegations asserted by non-practicing entities are quietly settled (see Blackbird’s 108 other cases filed since 2014).  Cloudflare’s approach to the infringement claims will be expensive, but also public.  Cloudflare’s response seems to include rallying its supporters and customers in publicly calling out Blackbird.  Cloudflare even invites supporters to “tell Blackbird Technologies what you think of their business practices” on Twitter.  It’s clear Blackbird has struck a nerve with this defendant.

– Jason Voiovich, Chief Customer Officer, Logic PD

It’s not a new reality show. Let’s take that off the table straight away. That said, one could be forgiven this year (of all years) for imagining a scenario in which retired basketball great Kobe Bryant teamed up with not-so-retired real estate sort-of great Donald Trump to launch original programming on a new Netflix platform. Heck, I’d watch it.

But alas, it is not meant to be.

Black Mamba, Make America Great Again, and Netflix Fast are all trademarks, recently (and not so recently) filed by their respective owners, staking a claim to a piece of intellectual real estate. But I’ll bet you figured that part out already. What may not be so obvious is when they were filed. It’s the when that gives us a tiny open window into the future plans of these organizations. In other words, these trademarks are an example of potential competitive intelligence. But only if we use them.

Let’s have a brief look at each one.

BLACK MAMBA

In April of this year, Kobe Bryant made important news.

Kobe Bryant’s final game with the LA Lakers saw him torch the Utah Jazz with 60 individual points. It was a fitting end to a dominant career that included five NBA Championships, two Olympic Gold Medals, 18 All Star Selections, one NBA MVP award and nearly 34,000 points scored.

That wasn’t the important news.

Bryant’s retirement was no surprise. Although he could be dominant at times, at 37, he could no longer put the LA Lakers in a position to contend for a playoff spot through sheer force of will.

The big news for Bryant was the registration of the “Black Mamba” trademark in May – a nickname he has used for several years, including in some Nike advertisements. But Black Mamba had never been trademarked. Barring opposition, Bryant will own a distinctive piece of intellectual real estate for use in a variety of applications including shoes and apparel. Effectively exploiting this trademark, much in the same way Michael Jordan does with Nike and the “Air Jordan” trademark, not only secures Bryant’s future, but also changes the fashion apparel landscape.

I wonder how many other apparel manufacturers were monitoring the US Patent and Trademark Office for new submissions and found this one? Could it give them advance notice on an intent to market goods and services? Might they try to oppose it? Might they counter Bryant’s now-obvious strategy with deals of their own to preempt him in the market?

Adidas/Reebok, Under Armour and the like are pretty sharp. I’m guessing they’re on top of it.

Here’s my question: Are you aware of your competitors next major brand campaign?

MAKE AMERICA GREAT AGAIN

As if this political campaign weren’t interesting enough, The Donald has managed to show he’s crazy like a fox. Well before the trademark “Make America Great Again” made its appearance on baseball caps in this presidential election cycle, Donald Trump laid claim to the abandoned Reagan-era phrase.

How long before?

Here’s where it gets really interesting. Trump filed for registration on November 19, 2012, not two weeks after Barack Obama defeated Mitt Romney, winning a second term in the White House. (Trump later updated the filing to include apparel and other uses in 2015).

Curious timing? I don’t think so. It seems very clear to me that Donald Trump had been planting the seeds of a political campaign well in advance of anyone actively paying attention. How different might the political landscape look today if the RNC had paid attention to Trump’s USPTO filings? Would the DNC have begun to assemble a counter-strategy? Could Trump have been blocked?

Perhaps not, but the reality is, they probably weren’t looking at all.

My question again: Have your competitors given you a glimpse into their future, and what are you doing about it?

NETFLIX FAST

There are lots of Internet Service Provider (ISP) speed test sites. (My personal favorite is Speedtest.net by Ookla. I use it when I want to more effectively complain about slow CenturyLink service at home.) On the surface, Netflix starting a speed test service of their own seems iterative and silly.

But it’s not.

You may not realize it, but Netflix (and streaming services like it, but especially Netflix) is one of the biggest bandwidth hogs on the internet. You had better believe the major ISPs realize it. The whole “net neutrality” argument last year was prompted, in part, on the disproportionate toll streaming video services take on connectivity infrastructure.

The fervor may have died down in the public sphere, but the filing of the Netflix Fast trademark is a signal that the company is planning a more active role in the creation of the public narrative. One of the key parts of that narrative is access to their own data on network choke points. They will be able to use that data to effectively partner with local providers to enhance service. Or they might be able to counter the narrative that Netflix is clogging the pipe. Or both.

Are the ISPs and Telcos watching this announcement? Are they thinking ahead? Are they coming up with their own list of possible scenarios? Perhaps.

My question again: Which one of your competitors has telegraphed their public affairs strategy with a trademark filing?

YOU SHOULD BE DOING THIS

I’m admittedly using some big name examples here, so it’s easy to make the case that competitors have the resources and scale to sense and detect these types of threats. But that shouldn’t let us off the hook. In my experience, even small to mid-sized companies can take advantage of low-cost and no-cost competitive intelligence techniques to dramatically improve their early warning systems. The same logic applies to patent scanning, although I find that innovation-driven organizations keep pretty good tabs on the weekly Official Gazette for Patents published by the USPTO.

But in some ways, I think trademark scanning is even more immediately valuable. First, trademarks can be put into the field much faster than patents in the form of marketing and advertising campaigns. That means you have a much shorter window of time to react and adapt. Second, while many organizations may file dozens of patents looking to cover their bases in a number of areas (and possibly monetize their portfolio at some later point), the same really isn’t true for trademarks. You get ‘em to use ‘em. In other words, when you see a trademark filing, odds are that your competitor will be taking advantage of it soon. Finally, while patents are the primary domain of technology-driven organizations, trademarks are useful to every type of organization. You could argue to me that your service organization doesn’t need to monitor the patent gazette, but you can’t argue trademarks won’t impact you.

Bottom line: Using trademarks for competitive intelligence is easy and cheap. You should be doing it.

For years, Samsung and Apple have battled over intellectual property rights associated with each party’s smart phones. Apple sued Samsung in 2011 and the jury found that Samsung had infringed Apple’s trade dress, design patents, and utility patents. On May 15, 2015, the Federal Circuit upheld the findings regarding infringement of design and utility patents, but found that Apple’s claimed trade dress was functional and vacated the damages award associated with the trade dress claims. Earlier this week, Samsung filed its request for Supreme Court review of the ruling. Although Samsung won an important battle for itself and all of Apple’s competitors, a recent filing by Samsung with the U.S. Patent and Trademark Office suggests that the smart phone trade dress battle may not be over.

On December 7, Samsung filed an application to register claimed trade dress for the product configuration of a smart phone. Samsung submitted the following drawing of the mark:

Samsung - Trade Dress DrawingThe drawing appears to show the Samsung Galaxy S6 Edge, shown below:

Samsung Phone

Samsung’s application contains a number of features that overlap with Apple’s claimed trade dress. So why file the application at all? Well, the latest rumors suggest that Apple may be introducing a curved display for its iPhone 7, similar to the Samsung Edge feature. Apple also recently received patent registration for technology that would enable its products to employ a curved screen. Assuming that the parties’ technology does not infringe the other’s patent rights, it could be possible for Samsung to prevent Apple from selling a curved display if Samsung can prove that it has protectible rights in a curved display trade dress.

Currently, Samsung’s application does not claim any rights in a curved display, but instead describes the mark as “a three-dimensional configuration of a smartphone.” However, an application for trade dress must specifically identify the aspects that are claimed as a feature of the mark and, just as importantly, the aspects that are not claimed as a feature of the mark. For example, when Apple sued Samsung for trade dress infringement, Apple claimed rights in the following configuration: (1) rectangular product with rounded corners; (2) flat clear surface display; (3) black borders around the surface display; and (4) when in use, an unchanging bottom dock of square icons, with a matrix of changing square icons above it. Likewise, Samsung will be required to specifically identify these features in its application.

However, this isn’t the only hurdle that Samsung will face. In order to be protectible, trade dress must be both distinctive and non-functional. Trademark rights can normally be established where the claimed mark is either inherently distinctive or has acquired distinctiveness. But the Supreme Court’s decision in Wal-Mart v. Samara Bros. Inc. clarified that product configuration marks can never be inherently distinctive. Instead, there must be proof that the claimed mark has acquired distinctiveness. Normally this is done through a claim of a period of use of five years or more. However, Samsung’s claimed first use date for this design is Feb. 3, 2015, about four and a half years short. Acquired distinctiveness can also be proven through significant sales, advertising, and publicity. However, with less than a year of use, Samsung may have difficulty proving that this particular design has acquired distinctiveness among consumers.

Samsung’s burden doesn’t get any easier with regard to proving that the claimed mark is non-functional, either. Samsung succeeded in proving that Apple’s trade dress (referenced above) was functional. Specifically, the Federal Circuit found that these features provide utilitarian advantages, making the product more usable, providing user friendly features, quick access to programs, greater pocketability, and better durability. Most of these features, if not all of them, appear to be present in Samsung’s current application.

Of course, the primary difference is the curved display. Although I don’t own a Galaxy S6 Edge, I presume the feature is popular because it increases the screen size, allows users to view notifications even if the phone is face down, and provides increased functionality for applications. Samsung also appears to be digging itself a pretty big hole with quotes like the following on its own website:

The device’s unique curved Edge screen provides quick access to frequently used apps, alerts and device functionality all with the swipe of a thumb, even when the cover is closed.

Right now, Samsung’s odds of obtaining a registration for the claimed trade dress seem low. Maybe Samsung plans to disclaim a number of these functional features, possibly increasing its odds; we’ll have a better idea once Samsung defines its claimed mark. However, in light of Samsung’s past statements (and success) in the Apple litigation and its promotion of the “edge” feature, this application may be dead on arrival, regardless of any future amendments.

When the iPhone 6s was announced, the 3D touch was a heavily touted feature.  The touch screen can now sense how hard you’re pushing. Functionally, it’s a great improvement that gives users new ways to interact with programs. But a new trademark application filed by Apple on August 18, 2015 suggests that this may not be the only 3d feature in store for the iPhone.

The application seems basic at first glance. For many years, Apple has applied to register its app icons as trademarks. Nearly all of them, and each iteration of each icon. It seems a bit overzealous, especially because the icons are revised frequently. Below is just a small sample.

Apple - sample icon registrationsAnd yes, that is a click wheel iPod in the lower left-hand corner. I don’t even know if those are sold anymore, but I’m pretty certain that icon hasn’t been in any of last three iterations of Apple iOS.  That technology may already be obsolete, and the registration hasn’t even reached the point where a renewal needs to be filed! (Although, if you’re looking for some excitement, the renewal period opens on Dec. 7, 2015. It’s a one year renewal window with a six month grace period, so this will get really interesting around May of 2017).

Needless to say, applications to register new icons don’t raise any eyebrows. They usually come in multiple chunks for all of the new sleek, redefined versions of the mainstay apple icons (phone, mail, weather, maps). But Apple’s new application doesn’t follow that trend. And the image identified in this new application is different from any of the others before:

Apple 3d app iconApple describes the mark as:

three, three-dimensional squares with rounded edges, stacked at an angle with the bottom square in dark green, the middle square in light green, and the top square in white. The top square contains three rows of three hearts, eight of which are gray and one of which has a linear gradient color of red to pink.

The image appears to be an icon rising out of an iPhone display screen. The mark description confirms that this is the intent. Of course, filing a trademark application doesn’t mean that a 3d screen is possible. But a patent application? That would help. And yes, Apple applied for a patent on 3d display technology in 2010. The patent was approved in late 2014. Apple also has a pending application for a patent on an “eye-tracking” feature for a 3d display.

Of course,  just because there is a registered patent for the technology, doesn’t meant that the technology exists, or that it works, or that it works well enough to be commercially successful, or that it works well enough to be commercially successful and isn’t so expensive that nobody can even buy it. But filing a trademark application is a new step with a limited time frame to complete. So maybe a consumer oriented 3d feature isn’t too far down the road after all.  I think I’ll pass on 6c and wait for the iPhone 7, just in case.

In the wake of Jon Stewart and Stephen Colbert leaving their respective shows on Comedy Central for newer pastures, John Oliver has emerged as a new beacon of political humor and satire.  If you haven’t watched his show, and especially if you considered the former two as having an obvious political slant, you should check out Last Week Tonight on HBO.  His shots get fired everywhere.

On this week’s, John Oliver took a shot at the patent system, particularly patent trolls:

I don’t know who looks worse out of Oliver’s segment – trolls or trial lawyers.  Or maybe Mark Cuban since he never seems to ask about patents.  Until this segment, I didn’t take note of how often Shark Tank uses the lack of a patent as a reason for rejecting a business idea, but I digress.

As Oliver’s comments make clear, there certainly is room for improvement to correct the litigation flaws created by so-called “patent trolls” – a hotly discussed topic lately in many business, law offices, blogs, and legislatures.

Much of the discussion of the “patent troll” surrounds how exactly a “patent troll” is defined.  Some refer to patent trolls as “non-practicing entities,” and others to “patent assertion entities.”  These sound in the media like lazy, menacing, evil, money-grubbing corporate shells waiting for their crossing fee from under the bridge – and surely there are some of those.  But that “patent troll” definition can also appear as an independent inventor who doesn’t make, use, or sell his invention.  Maybe that inventor’s idea was stolen by another company that now makes, uses, or sells it.  Before filing a lawsuit, he may set up a corporate entity to hold the asset to help protect him from personal liability or fund the litigation.  Patent litigation is expensive and shouldn’t that right be afforded to everyone?  Otherwise wouldn’t the Apples and the Samsungs be the only ones skating in the rocket docket of Marshall, TX?  We need to think very carefully about how we define “patent troll” before we try to make it unjustly hard for so-called trolls to litigate.

The major “troll” examples identified in Oliver’s segment – a patent that underlies the technology in every Android app and patents for copying – are technology that has become so woven in the fabric of our everyday lives that targeting people for making, using and selling a patented invention seems to the general public as utterly ludicrous.  And I don’t blame them.  In the trademark realm, we don’t allow the enforcement of trademark rights where the mark has become generic and therefore lacking in its ability to identify source.  Aside from defenses of laches or prosecution history estoppel, patent law doesn’t have a similar provision that protects such generally known ways of doing something from being asserted against others for making, using or selling the patented product.  But does it need something like the concept of genericide?

One way of resolving the issue may be to take from the model of trademark law – the Declaration of Use filed at the 6th anniversary of registration and then with the renewal every 10 years after the registration date.   This Declaration of Use requires a statement that use is continuing and providing a specimen showing use (and of course, a fee).  Patent law has maintenance payments that are required only for utility patents at 3.5 years, 7.5 years, and 11.5 years from grant of the patent.  But aside from payment of the fee, nothing else is required.  Maybe instead of a declaration of use, it may need a declaration of relevancy – and maybe that relevancy term is dependent upon the industry.

The patent law currently provides a 20-year term of an exclusive right to make, use, or sell the patented invention, in exchange for an enabling public disclosure of the invention to the public.  The whole purpose behind the system is for the public to gain possession of an inventive idea and replicate it or re-purpose it.  But 20 years in some industries, like the rapidly advancing software industry, may be too long of a term of protection.  Maybe we need shorter terms for software patents, much like we have a shortened term for design patents (14 years from issuance).

We must think very carefully about how we define “patent troll” and how we treat them.  We also need to find a delicate balance in avoiding seemingly frivolous lawsuits and protecting inventors’ rights.

How might Oliver treat the similar subject of trademark bullying?

 –Susan Perera, Attorney

If you have a pup accustomed to gourmet dog treats from the Mall of America you might have an unhappy canine on your hands.  Megamall kiosk owner, Chewzy Dogs, has filed suit after its franchisor and maker of its dog treats abruptly ended its agreement to supply Chewzy Dogs with its trade secret recipe treats.  While Chewzy Dogs alleges its franchisor had agreed to transfer the secret recipe to Chewzy Dogs in exchange for early termination of the agreement, the franchisor has failed to deliver. (For more discussion of this case see Jim Hammerand, who first reported on it over at the Minneapolis/St. Paul Business Journal – thanks Jim!)

This story highlights one method of protecting valuable IP assets – through trade secrets.  A method that may be growing after last week’s changes to the U.S. patent laws.

This is because businesses often have the option of protecting their IP assets in multiple ways.  For example, an invention can be protected as a trade secret or through the use of a patent.  (Ok, so a dog treat recipe might not be patentable… but lets overlook that for the moment).  While a patent’s protection is limited to 20 years from the date of filing the patent, a trade secret (that remains secret) can be protected and profited from indefinitely.  Thus, the license of a trade secret could elicit royalty payments for a longer period of time than a patent.

Interestingly, the recently passed America Invents Act is changing U.S. law to further support the use of trade secrets. Under the current law a party that chose to protect an invention through a trade secret (rather than through a patent) could later be precluded from using the invention if a third party independently developed the same technology and patented it. The justification for this legal outcome was that it incentivized the disclosure of inventions through the patent system, and eventually put the invention into the public domain when the patent expired. Under the new law, trade secret owners are given a “prior use defense” and will not be precluded from using their trade secret if it is developed by a third party.

Does this change substantially impact the cost-benefit analysis of the patent system?  Only time will tell if this change in the law will impact our inventors’ decisions to patent inventions.

As the court ruled, and repeatedly reminded: "Toilet paper. This case is about toilet paper."

Just last week the United States Court of Appeals for the Seventh Circuit enjoyed applying only a modicum of potty humor while deciding Georgia Pacific Consumer Products LP v. Kimberly-Clark Corporation, a case involving alleged non-traditional trademark rights in Georgia-Pacific’s Quilted Diamond Design embossed on the surface of toilet paper (shown above):

  • "Georgia-Pacific unrolled this suit against Kimberly-Clark, alleging unfair competition and trademark infringement under the Lanham Act, for Kimberly-Clark’s introduction of its redesigned toilet paper."
  • "We review the district judge’s grant of summary judgment de novo, viewing all facts in favor of the nonmoving party. . . . Therefore, despite the fact that the judge dutifully plied her opinion, we now wipe the slate clean and address Georgia-Pacific’s claims."

Actually, I think the court could have enjoyed itself even more with this case, since most agree double ply humor is far superior than single ply, especially when it’s on a roll.

Returning to the substance in hand, the Seventh Circuit Court of Appeals agreed with the district court that Georgia-Pacific’s Quilted Diamond Design, found on the surface of Quilted Northern brand toilet paper — and made recognizable from the television commercials with cartoon quilters — "is functional and therefore cannot be protected as a registered trademark."

It is unfortunate for Georgia-Pacific that it was unable to capture both patent protection for a limited term and trademark protection for eternity. They are not necessarily mutually exclusive intellectual property rights, but as this decision painfully demonstrates, if planning, coordination, and great care is not exercised, any hope of eternal trademark protection will be wiped away.

As you may recall, I’ve emphasized the importance of legal and marketing types working together in graceful collaboration to stand a reasonable chance of avoiding the many pitfalls in creating valid and protectable traditional and non-traditional trademark rights (Furminator, Smash Burger, and Bawls Guarana).

But, this decision, rejecting trademark protection for the above-depicted federally-registered design trademarks, highlights the importance of not only having talented legal and marketing types working together for common intellectual property goals, but also, the equally strong need for very close collaboration between patent counsel and trademark counsel.

Continue Reading Quilted Toilet Paper Design Flushed As Functional

   

We’ve spent some time here discussing the world-famous Coca-Cola brand. Most recently, David Mitchell wrote about the incredible consistency of the Coca-Cola brand over the past 125 years. A while back Dave Taylor wrote a nice Ode to the Brand of Brands, the King of Cola: Coke.

And, let’s not forget my humble suggestion that a roadside sign promoting Coca-Cola at a drive-in restaurant that actually sells Pepsi instead of Coke, might be a good example of an appropriate application of the initial interest confusion test.

But, what about Coca-Cola’s frequent reference to "taste infringement" — some cleverly novel and suggestive legalese apparently coined by the Coca-Cola brand a few years back with its launch of Coke Zero?

Putting aside Brent’s fair question of whether the ads are a good idea, some of my favorite ads have been the Coke Zero viral ads, where a variety of lawyers are punk’d on hidden cameras, led to believe they are being interviewed by Coca-Cola representatives to take legal action for "taste infringement" — against the Coca-Cola team down the hall, the rival team of co-workers behind the Coke Zero launch. This one is my favorite, with lines such as these:

"Are you aware that Coke Zero tastes a lot like Coca-Cola?"

"There might be some taste infringement issues."

"I think it’s basic taste infringement, I’d like to stick with that phrase."

"Basically, a patent/copyright, a little too closely."

The ads are silly and I suspect most viewers appreciate the ridiculousness of Coca-Cola suing itself, but I’m not so sure people understand "taste infringement" to be a ridiculous or faux-legal claim — especially in this environment of increased focus and attention on the expansiveness of intellectual property rights. So, perhaps you heard it here first, there is no such legal claim.

In The Great Chocolate War, as reported by Jason Voiovich, the legal claim that Hershey’s — owner of the coveted Reese’s brand — brought against Dove’s competing peanut butter and chocolate candy, was based on trade dress. Notably, there was no asserted claim of "taste infringement". No one owns the combined taste of peanut butter and chocolate, thank goodness.

That’s not to say, however, that there aren’t intellectual property rights impacting the human sense of taste. For example, with respect to trademarks, we’ve written before about the possibility of taste being the subject of a non-traditional trademark, but to the best of my knowledge, none has been acknowledged or even identified to date. If you have information to the contrary, please share your insights here.

Of course, there is a reason for the lack of or scarcity of taste trademarks. Any product intended for human consumption is unlikely a candidate for taste trademark protection given the functionality doctrine. So, Coca-Cola can’t stop another from selling a beverage that has the same taste as Coca-Cola, just because it tastes the same, unless of course, the maker of the competitive beverage hired away key Coke employees who unlawfully revealed the closely guarded secret formula. That is how trade secret litigation happens, not "taste infringement" litigation.

Continue Reading Taste Infringement?