• 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).

    Respondent Booking.com B.V. (“Booking.com”) applied for trademark registration of numerous marks containing Booking.com. The applications were refused registration based on the ground that BOOKING.COM is generic and, in the alternative, that it is merely descriptive and has not shown acquired distinctiveness. The decision was appealed to the Trademark Trial and Appeal Board (TTAB), which affirmed the refusal to register.

    Booking.com then appealed this case to the U.S. District Court for the Eastern District of Virginia, where Booking.com entered additional evidence in the form of a consumer survey that revealed that the majority of respondents viewed BOOKING.COM as a brand name. The District Court held that the mark is descriptive and eligible for protection among a showing of secondary meaning.

    Petitioner U.S. Patent and Trademark Office (USPTO) appealed the District Court decision to the U.S. Court of Appeals for the Fourth Circuit. The Fourth Circuit noted that while adding “.com” to a generic term would not always make a mark descriptive, in this case, BOOKING.COM was found to be not generic since the evidence showed that the mark’s primary significance to the public as a whole is the source, and not the product.

    This case was then further appealed to the Supreme Court, and by a vote of 8 to 1, the Court, affirming the decision of the Fourth Circuit, found that a “‘generic.com’ [term] is a generic name for a class of goods or services only if the term has that meaning to consumers.” To be generic, BOOKING.COM would have to signify to consumers the class of online hotel-reservation services. Since consumers do not understand these services to be a “Booking.com,” the term is not generic.

    In addressing the USPTO’s arguments, the Court rejected the USPTO’s argument for a nearly per se rule that a generic term with a generic top-level domain (such as “.com”) is always generic absent exceptional circumstances. The Court found that since only one entity can occupy a particular domain name at a time, the addition of “.com” to a generic term is not equivalent to the addition of “Company,” which is contrary to the USPTO’s argument. Instead, a domain name can be source-identifying since a consumer may understand a domain name to refer to a particular website. The USPTO’s other concerns that allowing BOOKING.COM to be protected would hinder competitors were also dismissed, with the Court noting that any concerns would be the same for any other descriptive mark and trademark law already addresses these types of concerns by limiting the scope of these marks. A descriptive mark is a weaker mark so there is a lower likelihood for consumer confusion since “consumers are less likely to think that other uses of the common element emanate from the mark’s owner.”

     While the Court declined to adopt a per se rule that the addition of “.com” to a generic term is always generic, it does not mean that such a term is automatically nongeneric either. Instead, as a result of this case, the USPTO would need to view each mark on a case-by-case basis to determine what the term means to consumers to determine whether it is generic.

  • 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.

  • December 19, 2019
    On September 26, 2019, in Inter Partes Review Campbell Soup Co. v. Gamon Plus, Inc., 2018-2029, 2018-2030, a majority of the Federal Circuit panel held that U.S. design patent no. D512,646 was obvious in view of a combination of two prior art design patents. As is well established, a prior art reference may be used...
Patent Office Trials Blog
  • 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.

     

     

  • March 13, 2020
    Yoshi Kishimoto published a new book on February 14, 2020 entitled “ Intellectual Property Strategies for Global Company” published by Maruzen Publishing Co., Ltd. (https://www.maruzen-publishing.co.jp/item/?book_no=303658).  The book discuses four main topics: first, intellectual property strategies for improving global industrial competitiveness; second, export control system vital to achieving proactive risk management for global company; third, intellectual property due diligence for global company; and fourth, strategies and practical tips to deal with patent infringement lawsuit in the most litigious nation in the world in both aspects of defense and enforcement of patents.  For more information, please contact Sughrue Mion Japan Office at sughruej@sughrue.com
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  • 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
  • 10/25/2019

     

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