• 9/1/2020

    On August 17, 2020, in Tiffany & Co. v. Costco Wholesale Corp., No. 17-2798 (2d Cir. 2020), the United States Court of Appeals for the Second Circuit vacated the district court’s decision and remanded the case for trial.

    This dispute began in November 2012 when Plaintiff Tiffany & Co. (“Tiffany”) was contacted by a customer who believed she saw Tiffany rings sold at a Costco in Huntingdon Beach, California. Tiffany investigated and contacted Defendant Costco Wholesale Corp. (“Costco”), which then removed references to Tiffany from its display cases. Tiffany then filed a complaint against Costco in the United States District Court for the Southern District of New York in February 2013. In response, Costco filed a counterclaim arguing that the term “Tiffany” is generic for a specific type of setting of engagement ring.

    The parties filed cross-motions for summary judgment. On September 8, 2015, the district court granted Tiffany’s motion for summary judgment, finding Costco liable for trademark infringement and counterfeiting under the Lanham Act and for unfair competition under New York law. The district court also rejected Costco’s fair use defense. After a trial on damages, the district court entered its final judgment and damages award of $21,010,438.35 to Tiffany on August 25, 2017.

    Costco appealed this decision to the Court of Appeals for the Second Circuit. In evaluating the trademark infringement claim, the Court found the district court erred in finding that no reasonable jury could find that Costco’s use of “Tiffany” was not likely to cause confusion with Tiffany’s trademark. To determine whether Costco’s use of “Tiffany” causes a likelihood of confusion with Tiffany’s trademark, the Court evaluated the factors listed in Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961). The Court emphasized that the district court’s conclusions as to each factor and the balancing of the factors are reviewed de novo.

    The Court held that the district court’s findings on the factors regarding actual confusion, good faith, and the consumer sophistication were in error. With respect to the actual confusion factor, Tiffany provided evidence of some customer confusion and results of an expert survey, while Costco argued that six (6) confused customers out of 3,349 is de minimis evidence of confusion and that the expert survey was flawed. The Court found that the district court erred in finding that Costco did not raise a factual issue and that Costco did present sufficient evidence where a reasonable jury could find that Tiffany did not meet its burden in showing actual confusion.

    In discussing the good faith factor, the Court emphasized that issues of good faith are usually inappropriate for determination on summary judgment and that an intent to copy does not automatically equal an intent to deceive. Therefore, the Court held the district court erred in finding Costco acted in bad faith and instead the evidence Costco provided could cause a reasonable jury to conclude that it did not have an intent to mislead its consumers.

    With respect to consumer sophistication, the Court found the parties have competing evidence regarding the relevant population of consumers. Since someone purchasing a diamond ring would likely be more careful, the Court found that a reasonable jury could credit Costco’s evidence more than Tiffany’s to find a consumer would be sophisticated enough to distinguish Costco’s rings from Tiffany’s.

    Therefore, since “Tiffany” is recognized as denoting a particular style of ring setting and that diamond ring purchasers are well educated and sophisticated consumers, the Court found there is a genuine question as to the likelihood of confusion and vacated the district court’s judgment on trademark infringement.

    The Second Circuit also found the district court erred in finding that no reasonable jury could find that Costco’s use of “Tiffany” was fair use. The Court held that Costco presented enough evidence that a reasonable jury may find that Costco did not use the term “Tiffany” as a trademark, that it used the term descriptively, and that it used it in good faith.
     
    Finally, since counterfeiting is an aggravated form of infringement and the Court vacated the district court’s judgment on infringement, the Court also vacated the judgment on counterfeiting.

    Since this Court found that the standard for summary judgment has not been met, this case continues to drag on as it goes back to the district court for trial.

  • 7/2/2020
    On June 30, 2020, the Supreme Court ruled that Booking.com is a protectable trademark. U.S. Patent and Trademark Office v. Booking.com B.V., No. 19-46 (June 30, 2020).
  • April 29, 2020

    In addition to the COVID-19-related extension that the USPTO announced on March 31, the USPTO further extended patent and trademark-related deadlines to June 1. Certain deadlines between March 27 and May 31 will be extended to June 1 if the applicant files a statement that the delay was due to COVID-19.

     

    https://content.govdelivery.com/accounts/USPTO/bulletins/288eb54

  • April 23, 2020

    The National Institutes of Health (NIH) has selected Sughrue Mion, PLLC, a preeminent full-service intellectual property law firm based in Washington, D.C., to provide patent legal services under a ten-year contract in the area of biotechnology. 

    The NIH, part of the U.S. Department of Health and Human Services, is the U.S. government’s research agency related to health and the largest biomedical research agency in the world, investing about $42 billion annually in medical research.  It is a global leader in medical/pharmaceutical research and innovation, with discoveries of new small and large molecules as well as biologics, processes and pathways, and new applications of existing medical knowledge.  NIH currently boasts an active patent prosecution docket of more than two thousand five hundred (2,500) cases, and many of the Institute’s patents are licensed to the private sector for the purpose of developing its innovations into products and services that enhance the public health.

     Sughrue Mion is one of only a handful of firms selected by the NIH to provide patent legal services in the area of biotechnology.  “We are honored and proud to be able to support the NIH’s mission over the next decade, and especially at this critical moment when the world is focused on developing safe and effective treatments and vaccines for COVID-19,” noted Dr. Alan Townsley, a Partner at Sughrue Mion and one of the leaders of Sughrue’s Biotechnology Department.   

     

    Founded in 1957, with offices in Washington D.C. and Tokyo, Sughrue has been one of the leading full service intellectual property firms in the U.S. for many decades, representing clients from all over the world, and in all aspects of intellectual property.

Patent Office Trials Blog
  • 7/21/2020
    The USPTO recently introduced a Fast-Track Appeals Pilot Program that provides expedited review in ex parte appeals. When the application receives an appeal number, the Appellant may file a petition and pay a $400 fee for an expedited review and decision on their appeal. The USPTO target is to reach a decision on the ex parte appeal within six months after the application has been accepted into the Pilot Program. Currently, the average appeal pendency is about 15 months. See Federal Register Notice: [PDF]
  • April 29, 2020

    In addition to the COVID-19-related extension that the USPTO announced on March 31, the USPTO further extended patent and trademark-related deadlines to June 1. Certain deadlines between March 27 and May 31 will be extended to June 1 if the applicant files a statement that the delay was due to COVID-19.

     

    https://content.govdelivery.com/accounts/USPTO/bulletins/288eb54

  • April 21, 2020

    The National Institutes of Health (NIH) has selected Sughrue Mion, PLLC, a preeminent full-service intellectual property law firm based in Washington, D.C., to provide patent legal services under a ten-year contract in the area of biotechnology. 

    The NIH, part of the U.S. Department of Health and Human Services, is the U.S. government’s research agency related to health and the largest biomedical research agency in the world, investing about $42 billion annually in medical research.  It is a global leader in medical/pharmaceutical research and innovation, with discoveries of new small and large molecules as well as biologics, processes and pathways, and new applications of existing medical knowledge.  NIH currently boasts an active patent prosecution docket of more than two thousand five hundred (2,500) cases, and many of the Institute’s patents are licensed to the private sector for the purpose of developing its innovations into products and services that enhance the public health.

    Sughrue Mion is one of only a handful of firms selected by the NIH to provide patent legal services in the area of biotechnology.  “We are honored and proud to be able to support the NIH’s mission over the next decade, and especially at this critical moment when the world is focused on developing safe and effective treatments and vaccines for COVID-19,” noted Dr. Alan Townsley, a Partner at Sughrue Mion and one of the leaders of Sughrue’s Biotechnology Department.   

    Founded in 1957, with offices in Washington D.C. and Tokyo, Sughrue has been one of the leading full service intellectual property firms in the U.S. for many decades, representing clients from all over the world, and in all aspects of intellectual property.
  • April 2, 2020

    USPTO announces extension of certain patent and trademark-related timing deadlines under the Coronavirus Aid, Relief, and Economic Security Act

     

    The USPTO is now allowing patent and trademark applicants to extend certain patent and trademark due dates by 30 days if the filing is accompanied by a statement that the delay was caused by the COVID-19 outbreak. Exemplary reasons for the delay include office closure, cash flow interruption, inaccessibility of the file, travel delay, and illness.

     

     

More News
  • 8/31/2020
  • 6/15/2020

    In Uniloc USA, Inc. v. LG Electronics USA, Inc., the Federal Circuit held that certain claims of U.S. Patent No. 6,993,049 (the “’049 Patent”) are patent eligible under 35 U.S.C. § 101 because the claims “are directed to a patent-eligible improvement to computer functionality, namely the reduction of latency experienced by parked secondary stations in communication systems.”  See Uniloc USA, Inc. v. LG Electronics USA, Inc. Case No. 2019-1835 (Fed. Cir. April 30, 2020) at page 7.

    The Federal Circuit noted that the ’049 Patent is directed to a communication system including a primary station (e.g., a base station) and a secondary station (e.g., a peripheral device) of a piconet (i.e., an ad hoc Bluetooth network).  See Id. at page 2.

    Regarding conventional systems, the Federal Circuit noted that the ’049 Patent mentions that “primary stations alternate between sending inquiry messages to identify new secondary stations and polling secondary stations already connected to the piconet, including parked devices, to determine whether they have information to transmit.”  See Id. at page 3.

    Regarding an underlying technical problem of the conventional systems, the Federal Circuit noted that the ’049 Patent mentions that “a secondary station could experience delays of tens of seconds both in initially joining a piconet and in transmitting data after entering park mode.”  See Id.

    Regarding a purported technical improvement to address the foregoing technical problem, the Federal Circuit noted that the ’049 Patent mentions a technique of “including a data field for polling as part of the inquiry message, thereby allowing primary stations to send inquiry messages and conduct polling simultaneously.”  See Id.

    Referring to FIG. 5 of the ’049 Patent shown below, the ’049 Patent mentions that a primary station may transmit a Bluetooth inquiry packet including a standard inquiry message field 502 and an extra data field 504 including polling information.  See ’049 Patent at col. 4, line 59 – col. 5, line 27.

    FIG. 5 of the ’049 Patent

    Referring to representative claim 2 of the ’049 Patent shown below, the Federal Circuit noted that claim 2 recites a primary station for use in a communication system “wherein means are provided for . . . adding to each inquiry message prior to transmission an additional data field for polling at least one secondary station.”  See Uniloc USA, Inc. v. LG Electronics USA, Inc. at page 7.

     

    Claim 2 of the ’049 Patent

    The Federal Circuit noted that “[t]he additional data field enables a primary station to simultaneously send inquiry messages and poll parked secondary stations [and that t]he claimed invention therefore eliminates or reduces the delay present in conventional systems where the primary station alternates between polling and sending inquiry messages.”  See Id.  

    Further, the Federal Circuit noted that “[t]he claimed invention therefore eliminates or reduces the delay present in conventional systems where the primary station alternates between polling and sending inquiry messages.”  See Id.

    LG argued that the claims of the ’049 Patent were analogous to abstract data manipulation claims previously held ineligible by the Court, and that the claims were not sufficiently directed to the purported technical improvement mentioned above because the claims recited “result-based functional language” and generic Bluetooth components.   See Id. at page 8.

    In response, the Federal Circuit noted that “[t]o the extent LG argues that the claims themselves must expressly mention the reduced latency achieved by the claimed system, LG is in error [because c]laims need not articulate the advantages of the claimed combinations to be eligible.”  See Id. at pages 9-10. 

    Further, the Federal Circuit concluded “that the claims at issue are not directed to the abstract idea of performing additional polling in wireless communication systems or performing additional polling using inquiry messages[, and instead] are directed to a specific asserted improvement to the functionality of the communication system itself.”  See Id. at page 10.

    Further still, the Federal Circuit noted that “[t]he claimed invention’s compatibility with conventional communication systems does not render it abstract[, nor] does the fact that the improvement is not defined by reference to ‘physical’ components.”  See Id.

    In conclusion, the Federal Circuit noted that “[t]he claims of the ’049 patent recite a specific improvement in the functionality of the communication system itself, namely the reduction of latency experienced by parked secondary stations. This is sufficient to pass muster under Alice step one.” See Id.

    From a patent drafting perspective, Uniloc emphasizes the importance of clearly articulating a technical problem associated with a conventional system, and clearly articulating how the disclosure provides a technical improvement that addresses the technical problem.  During prosecution, the articulations can provide the basis for arguments in favor of eligibility of the claims.

    Further, the Federal Circuit noted that “[t]he claimed invention therefore eliminates or reduces the delay present in conventional systems where the primary station alternates between polling and sending inquiry messages.”  See Id.

    LG argued that the claims of the ’049 Patent were analogous to abstract data manipulation claims previously held ineligible by the Court, and that the claims were not sufficiently directed to the purported technical improvement mentioned above because the claims recited “result-based functional language” and generic Bluetooth components.   See Id. at page 8.

    In response, the Federal Circuit noted that “[t]o the extent LG argues that the claims themselves must expressly mention the reduced latency achieved by the claimed system, LG is in error [because c]laims need not articulate the advantages of the claimed combinations to be eligible.”  See Id. at pages 9-10. 

    Further, the Federal Circuit concluded “that the claims at issue are not directed to the abstract idea of performing additional polling in wireless communication systems or performing additional polling using inquiry messages[, and instead] are directed to a specific asserted improvement to the functionality of the communication system itself.”  See Id. at page 10.

    Further still, the Federal Circuit noted that “[t]he claimed invention’s compatibility with conventional communication systems does not render it abstract[, nor] does the fact that the improvement is not defined by reference to ‘physical’ components.”  See Id.

    In conclusion, the Federal Circuit noted that “[t]he claims of the ’049 patent recite a specific improvement in the functionality of the communication system itself, namely the reduction of latency experienced by parked secondary stations. This is sufficient to pass muster under Alice step one.” See Id.

    From a patent drafting perspective, Uniloc emphasizes the importance of clearly articulating a technical problem associated with a conventional system, and clearly articulating how the disclosure provides a technical improvement that addresses the technical problem.  During prosecution, the articulations can provide the basis for arguments in favor of eligibility of the claims.

  • 4/23/2020

    On April 23, 2020, the Supreme Court ruled that willfulness is not required for there to be an award of a trademark infringer’s profits. Romag Fasteners Inc. v. Fossil Grp., Inc., No.18-1233 (April 23, 2020).

    Petitioner Romag Fasteners, Inc. (“Romag”) had a signed contract with Respondent Fossil, Inc. (“Fossil”) where Fossil is allowed to use Romag’s magnetic snap fasteners with the ROMAG trademark on Fossil’s handbags and other products. After discovering that factories Fossil was using in China were using counterfeit ROMAG fasteners, Romag sued Fossil for patent and trademark infringement. With respect to the trademark infringement, the jury found Fossil liable and awarded Fossil’s profits, but also found Fossil’s infringement was not willful. Therefore, since the jury found the infringement was not willful, the district court held that Romag was not entitled to the award of Fossil’s profits.

    Eventually this issue regarding whether willful infringement is a prerequisite for an award of an infringer’s profits under a violation of section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), reached the Supreme Court. Given that the circuits were split in how they handle this issue, the outcome of this case was closely watched. 

    In analyzing this issue, the Court focused on the language of the statute. First, the Court reviewed 15 U.S.C. § 1117(a), which states that defendants profits may be recovered where there is “a violation under section 1125(a) or (d) of this title or a willful violation under section 1125(c) of this title.” The Court read the statute to not require willfulness under § 1125(a) since there was no specific reference to willfulness as there was for a violation under § 1125(c). Then, the Court reviewed the Lanham Act more broadly and noted that the Lanham Act would specifically note if certain damages are awarded for intentional or willful violations, further supporting the position that if willfulness was a requirement for an award of profits for a violation under § 1125(a), it would have specifically stated so. As a result, while the Court acknowledges that willfulness is an important consideration in awarding profits, it declined to find that it is a requirement.

    Since willfulness is difficult to prove in trademark infringement cases, this decision will be beneficial to trademark owners receiving just compensation for damages caused by trademark infringers.

    Author: Darlene Tzou

  • 11/15/2019
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