Right to Repair vs. IP Law

By: Karsyn Koon

A current debate occurring in the House of Representatives’ Subcommittee on Courts, Intellectual Property and the Internet is over the controversial right-to-repair. In other words, this controversial legal idea describes the right for consumers to have access to the information necessary to repair the products patented by other corporations. Congress heard from several witnesses in mid-July on the issue. One of the major arguments raised were concerns over “harm and cost to consumers as a result of technological protection measures (TPMs) and increased use of IP tools such as design patents to thwart competition for after-market parts.” (McDermott, 2023). Congressman Darrell Issa (R-CA) even suggested a “standard essential copyright” that would require organizations to publicize the information needed for repairs to consumers. He is also the individual who introduced The SMART Act back in March, which suggested limiting U.S. design patent law from 14 years to 2.5 in relation to car manufacturers. His bill garnered bipartisan support.

There are two main topics being discussed:

• Potential harm to consumers
• Whether or not the right to repair exists (aka the IP claims of companies)

Proponents of the so-called right-to-repair argue that consumers are being limited from fixing their own property by the intellectual property claims of larger organizations. Some claim that the information for repairs is being hoarded by the companies that make the products in order to drive up costs. The subcommittee heard from the CEO of iFixit, Kyle Wiens. He discussed the potential damage being dealt to consumers by the aforementioned practices of restricting information and stated that the impact will spread to entire economic sectors. Mr. Wiens gave the example of his friend who needed to repair his John Deere tractor but was unable to do so himself. The part he needed to fix the machine is not publicly available, thus requiring the need of expensive and burdensome third parties to complete repairs. He went on to explain similar issues with Apple computers, and how the corporation took down all online user manuals to prevent consumers from being able to repair their own products. Proponents of the right to repair also addressed security concerns by pointing out preexisting issues in authorized manufactures and deciding that consumer rights were more important.

However, some people do not agree that the right-to-repair exists at all. Legal Fellow at the Hudson Institute, Devlin Hartline, argued that IP rights “ultimately protect the public good.” (McDermott, 2023). According to Hartline, “[t]he right-to-repair movement isn’t based on a preexisting right; it’s instead asking lawmakers to create a new right at the expense of the existing rights of IP owners.” It would basically entail creating new legislation and new definitions of intellectual property.

• Creating new legislation is within the power of the legislature, but he is arguing that court precedent argues against the existence of this right, and therefore it should not be codified by Congress.

He also denies that the exercise of control over repair information is an anti-competitive practice, but rather a sound economic policy. “IP owners are merely exercising their IP rights.” (McDermott, 2023). Additionally, the subcommittee acknowledged that some organizations are signing memorandums of understanding in regard to this supposed right. Others say that is still not good enough.

The hearing concluded with Representative Issa challenging those who oppose the right-to-repair on what the concept of copyright even is. He argued that copyright is not the right to exclude, and therefore information on repairing products should be produced in the public domain. It will be interesting to see where this debate leads, and if the right-to-repair will be codified in the future.

Sources:

Lowery, L. (2023, July 20). Congressional Committee holds R2r hearing, ASA testifies federal law unnecessary. Repairer Driven News. https://www.repairerdrivennews.com/2023/07/20/145072/

McDermott, E. (2023, July 18). House IP Subcommittee Mulls Copyright and design patent revisions amid right-to-repair debate. IPWatchdog.com | Patents & Intellectual Property Law. https://ipwatchdog.com/2023/07/18/house-ip-subcommittee-mulls-copyright-design-patent-revisions-amid-right-repair-debate/id=163727/

Shh… It’s a (Trade) Secret

An Overview of Trade Secrets

By: Karsyn Koon

Definition:

• According to the World Intellectual Property Organization (WIPO), trade secrets “are intellectual property (IP) rights on confidential information which may be sold or licensed.”
  • While some of the information that falls under this term is patentable or subject to copyright law, it is sometimes more valuable for people to keep this information secret, thus arguably still protected in some fashion.
  • Misappropriation: “acquiring a trade secret by “improper means” or from someone who has acquired it through “improper means.”’ (ULC, 1979).
    • “Improper means” – any unlawful manner of obtaining information, such as theft, bribery, or espionage.
    • Includes the sharing or disclosure of trade secrets in an illegal manner by the owner of the information.
• Trade Secret Qualifiers:
  • It is commercially valuable.
  • It is only known to a limited number of individuals.
  • It is subject to reasonable steps by the rightful owner of the information to keep it secret.
    • This includes actions such as binding contracts or confidentiality agreements.
• “The unauthorized acquisition, use or disclosure of such secret information in a manner contrary to honest commercial practices by others is regarded as an unfair practice and a violation of the trade secret protection.” (WIPO, 2023).
• Types of Trade Secrets:
  • Technical information
  • Commercial information
  • Combination of elements
    • Examples: financial information, formulas, recipes, source codes, and methods of doing business.
• The protection of trade secrets is derived from preexisting legislation against unfair competition and/or specific provisions or case law centered around confidential information.
  • Usually judged on a case-by-case basis to determine if infringement has occurred.
  • A trade secret owner cannot stop others from using that information if they discover such information on their own.
    • Trade secrets are not public information, and therefore are not subject to “defensive protection.” (“[L]egal methods of avoiding its misappropriation by IP holders or applicants.” [Curci, 2010]).
• Common Methods of Protection for Trade Secrets:
  • Non-disclosure agreements (NDAs)
  • Non-compete agreements (NCAs)
  • IT security
  • Limited accessibility of certain documents

Differences Between Federal and State Levels:

• States:
  • Most states have adopted the Uniform Trade Secrets Act (UTSA) that provides guidelines for legal issues centered around trade secret protection. Introduced by the Uniform Law Commission, this act has been enacted in all states in some manner except for North Carolina and New York and aims to create uniformity in response to misappropriation of trade secrets.
    • Injured parties will have access to injunctive relief and damages.
    • “Willful and malicious misappropriation” = exemplary damages.
  • Meant to clear the ambiguity around existing law in different states concerning trade secrets.
• Federal:
  • Defend Trade Secrets Act of 2016 (130 Stat. 376): created another option for civil action for trade secret misappropriation.
    • “A trade secret owner may file a civil action in a U.S. district court seeking relief for trade secret misappropriation related to a product or service in interstate or foreign commerce. The bill establishes remedies including injunctive relief, compensatory damages, and attorney’s fees.” (114th U.S. Congress, 2016).
  • Similar to the UTSA, but on the federal level and with broader definitions and restrictions.

Benefits:

• Trade secrets can be more valuable than trademarks or patents depending on the content information as well as what sort of monopoly the owner would like to have over their secret.
  • Patents and copyrights have a limited monopoly – owners only have rights to the information in certain conditions for a certain length of time.
  • Trade secrets will remain within the control of the owner without governmental limits.

Consequences:

• Owners of trade secrets cannot prevent or prohibit others from developing or finding the same information on their own, nor can they protect themselves from others simply using the information. They are private matters and therefore without “defensive” protection.
  • “For example, if a specific process of producing Compound X has been protected by a trade secret, someone else can obtain a patent… on the same invention, if the inventor arrived at that invention independently.” (WIPO, 2023).

Sources:

https://www.uniformlaws.org/committees/community-home?CommunityKey=3a2538fb-e030-4e2d-a9e2-90373dc05792#:~:text=Description&text=The%20Uniform%20Trade%20Secrets%20Act,or%20krobinson%40uniformlaws.org.

https://www.law.cornell.edu/wex/trade_secret

https://www.winston.com/en/legal-glossary/trade-secret.html

https://www.wipo.int/tradesecrets/en/

https://www.congress.gov/bill/114th-congress/senate-bill/1890#:~:text=A%20trade%20secret%20owner%20may,compensatory%20damages%2C%20and%20attorney’s%20fees.

https://www.cambridge.org/core/books/abs/protection-of-biodiversity-and-traditional-knowledge-in-international-law-of-intellectual-property/defensive-protection-of-traditional-knowledge-in-international-patent-law/C3294EA414AA4E90E8C90328C38700A2

Can I Say, “Taco Tuesday” Now?

By: Karsyn Koon

Did you know that, up until July 18th, 2023, the phrase “Taco Tuesday” was registered as a trademark? I sure didn’t. But when LeBron James tried to trademark the same two words in 2019, he was denied on the grounds that someone already owned the mark (at least in all states except New Jersey). That ‘someone’ is a small taco chain restaurant named Taco John’s. The chain has actually held the trademark since 1989. But recently, the larger chain Taco Bell filed a petition with the USPTO to have the mark canceled. Taco John’s recognizes the popularity of the phrase and has decided to make it a common good rather than spend money to fight the petition. Taco John’s CEO Jim Creel spoke out about the matter: “[w]e’ve always prided ourselves on being the home of Taco Tuesday, but paying millions of dollars to lawyers to defend our mark just doesn’t feel like the right thing to do,” and followed this up with a statement claiming that they are “lovers, not fighters.”

The much larger company Taco Bell responded to the news via Twitter: “best taco tuesday ever… for now.” Taco Bell’s name is often brought into the conversation due to the organization’s popularity and their advertisements using LeBron James and his fight for the phrase. Taco John’s articulated its desire for Taco Bell “to match its $100-per-restaurant donation to the nonprofit Children of Restaurant Employees, or CORE.” (Archie, 2023). Perhaps organizations in the taco industry may be joining forces to both promote the ever-popular phrase and employee protection!

Source:

Archie, A. (2023, July 19). Taco John’s has given up its “Taco tuesday” trademark after a battle with Taco Bell. NPR. https://www.npr.org/taco-tuesday-trademark-taco-johns-taco-bell

Brittain, B. (2023, July 18). Taco Bell wins “Taco Tuesday” trademark dispute with rival chain. Reuters. https://www.reuters.com/business/retail-consumer/taco-bell-wins-taco-tuesday-trademark-dispute-with-rival-chain-2023-07-18/

Patents: What You Need to Know

By Karsyn Koon

What is a patent? What are the benefits to filing?

A U.S. patent gives an inventor the right to “exclude others from making, using, offering for sale, or selling” an invention or “importing” the invention into the U.S. A plant patent provides additional rights on the “parts” of plants (e.g., a plant patent on an apple variety would include rights on the apples from the plant variety). What is granted is not the right to make, use, offer for sale, sell or import the invention, but the right to stop others from doing so. If someone infringes on your patent, you may initiate legal action. U.S. patents are effective only within the U.S. and its territories and possessions.

• Validation: Utility and plant patents are valid for up to 20 years from the date of the first non-provisional application for the patent was filed  
• What can be patented: 
  • Look at each type of patent definition  
  • All inventions must meet four conditions: 
    • Able to be used (the invention must work and cannot just be a theory)
    • A clear description of how to make and use the invention
    • New, or “novel” (something not done before)
    • “Not obvious,” as related to a change to something(s) already invented 
  • Patent law defines the limits of what can be patented:
    • For example, laws of nature, physical phenomena, and abstract ideas cannot be patented, nor can only an idea or suggestion
    • Other restrictions include the patenting of inventions exclusively related to nuclear material or atomic energy in an atomic weapon (see MPEP 2104.01)
    • However, the subject matter that can be protected by patents is vast and varied
    • For example, even some methods of doing business may be patented if there is a technological innovation involved 
  • What cannot be patented: what is not eligible for protection
    • Laws of nature, abstract ideas, naturally occurring phenomena, so-called naked business methods (i.e., not tethered to any kind of machine or apparatus), inventions only capable of an illegal purpose, atomic weapons, tax strategies, and human organisms (which the statute does not define but likely relates to embryos and fetuses)
    • Notwithstanding, for the most part, chances are that whatever you have invented can be characterized so that eligibility will not be a significant impediment to exclusive rights. 
• Who can apply: 
  • You (the inventor) or your legal representative may apply for a patent 
  • Exceptions to the strict USPTO rules: 
    • If the inventor has died, is legally incapacitated, refuses to apply, or cannot be found. The applicant must have a personal connection to the inventor, such as being listed in their estate
    • Two or more people inventing something together may apply for a patent as joint inventors; A person (e.g., a company) to whom an inventor has assigned an invention, or to whom the inventor is obligated (e.g., contractually required) to assign an invention 
  • Who cannot apply: 
    • If you only contribute money but are not the inventor or co-inventor, you cannot be named as an inventor or co-inventor in the patent application
    • If you are not the inventor, and the inventor(s) did not assign the invention to you or does not have an obligation to assign the invention to you, you may not apply for a patent
    • USPTO employees cannot apply for or own a patent unless they inherit it 
• Foreign applicants: 
  • You may apply for a U.S. patent whether you’re a U.S. citizen or not. No U.S. patent can be issued if, before you apply in the United States, the invention was patented abroad by you or your legal representative and if the foreign application was filed more than 12 months before the U.S. filing. Six months are allowed in the case of designs. Foreign inventors should pay attention to other special requirements
    • Only applies to the U.S. 
• Foreign patents and treaties: 
  • Applicants wishing patent protection in other countries must apply for a patent in each of the other countries or patent offices 
    • Most patent laws vary by country or territory, and it is up to the applicant to handle the differences  
  • Paris Convention for the Protection of Intellectual Property:
    • A treaty relating to patents (adhered to by 176 countries at last count, including the United States) that provides that each country guarantees to citizens of the other countries the same patent and trademark rights given to its own citizens 
    • Also provides for the right of priority with patents, trademarks, and industrial designs (design patents) 
      • This right means that based on a regular first application filed in one member country, you may (within a certain time period) apply for protection in all other member countries 
      • These later applications will then be regarded as if filed on the same day as the first application
      • Thus, these later applicants will have priority over applications for the same invention that may have been filed by others during the same time period
      • Lasts for 12 months  
  • Patent Cooperation Treaty
    • Presently adhered to by more than 150 countries, including the United States
    • It facilitates the filing of patent applications on the same invention in member countries by providing, among other things, centralized filing procedures and a standardized application format
    • Lasts 30 months from earliest claim for priority 
  • The Hague Agreement 
    • An international registration system offering the possibility of protection for up to 100 industrial designs in designated member countries and intergovernmental organizations (called Contracting Parties)
    • It involves filing a single international application in a single language, either directly with the International Bureau of the World Intellectual Property Organization (WIPO) or indirectly through the office of your Contracting Party 

Rights: 

• “It is important to note, however, that patents do not protect ideas, but rather protect inventions that exhibit subject matter deemed allowable. In other words, any exclusive rights you obtain can only protect something that is considered patent eligible 
  • Generally speaking, in the United States the view of what is eligible for protection has historically been quite broad. Machines, compounds and processes are all eligible, for example.” 
• The U.S. Constitution:
  • Patent rights were primarily advocated for by James Madison – argued that there would be issues or a lack of motivation for innovation without strong rights/legal protection 
  • Power of protection given to Congress by Article I, Section 8, Clause 8; “To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries;”
  • The Intellectual Property Clause is a qualified grant of power, which does limit Congressional discretion in at least some ways
    • For example, Congress may not simply create an exclusive right with a term of unlimited duration given that the express language of the Constitution says the rights may only be given for “limited times.”
  • “Exclusive rights are provided for a limited time as an incentive to inventors, entrepreneurs and corporations to engage in research and development, to spend the time, energy and capital resources necessary to create useful inventions; which will hopefully have a positive effect on society through the introduction of new products and processes of manufacture into the economy, including lifesaving treatments and cures.  See Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 480 (1974).” (Quinn, 2016). 
  • “The applicant, patentee, or his assigns or legal representatives may in like manner grant and convey an exclusive right under his application for patent, or patents, to the whole or any specified part of the United States.” (USPTO, n/a). 
    • “Gives the patent owner the right to exclude others from making, using, offering for sale, selling, or importing into the United States the invention claimed in the patent. 35 U.S.C. 154(a)(1). Ownership of the patent does not furnish the owner with the right to make, use, offer for sale, sell, or import the claimed invention because there may be other legal considerations precluding same.”
    • Basically, gives ownership of the idea to the inventor for a limited time under a limited scope, as well as protection against certain definitions of infringement 

Types of Patents: 

• Utility patents
  • Also known as nonprovisional applications: 
    • This may be issued as a patent if all patentability requirements are met. A nonprovisional utility application includes: 
      • A specification (description and claims)
      • Drawings (when necessary)
      • An oath or declaration
      • Filing, search, and examination fees 
      • All application documents must be in English, or a translation into English will be required, along with a fee set in 37 CFR 1.17(i). 
  • Utility patents may be granted to anyone who invents or discovers a new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvements of these.
  • The elements of a nonprovisional utility application: 
    • Application transmittal form 
    • Fee transmittal form 
    • Application data sheet
    • Specification
    • Drawings
    • Executed oath or declaration  
• Design patents  
  • Also known as provisional applications:
    • This quick, inexpensive way for you to establish a U.S. filing date for your invention can be claimed in a later-filed nonprovisional application. A provisional application is automatically abandoned 12 months after its filing date and is not examined.
    • If you decide to initially file a provisional application, you must file a corresponding nonprovisional application during the 12-month pendency period of the provisional in order to benefit from the earlier provisional filing. Provisionals have fewer requirements than non-provisionals — for example, claims and an oath/declaration are not required.
  • Patent laws provide for the granting of design patents to anyone who has invented a new, original ornamental design for an article of manufacture. The ornamental characteristics must be embodied in or applied to such an article. The subject matter may relate to the configuration or shape of an article, surface ornamentation applied to it, or the combination of both. A surface ornamentation design is inseparable from the article to which it is applied and cannot exist alone. It must be a definite pattern applied to an article of manufacture. The design patent protects only the appearance of an article, not its functional features. The proceedings relating to the granting of design patents are similar to those for other patents, with a few differences.
  • The elements of the design application: 
    • Design application transmittal form 
    • Fee transmittal form 
    • Application data sheet (see § 1.76)
    • Specification 
    • Drawings or photographs 
    • The inventor’s oath or declaration 
• Plant patents
  • The law also provides for the granting of a patent to anyone inventing or discovering and asexually reproducing any distinct and new variety of plant. This includes cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber-propagated plant or a plant found in an uncultivated state.
  • Also known as provisional applications.

Resources: 

https://www.uspto.gov/patents/basics/essentials

https://www.uspto.gov/patents/basics/apply

What is a patent and where do patent rights come from?

https://www.bitlaw.com/source/cases/patent/index.html

https://www.bitlaw.com/patent/rights.html

Bad Spaniels vs. Jack Daniel’s: Is It Parody?

By Karsyn Koon

Facts: 

• Jack Daniel’s is a popular alcohol brand that is primarily known for its unique whiskey. Jack Daniel’s Properties owns a number of trademarks in relation to this specific product, such as the shape of the bottle and the graphics on its front. The protection of these trademarks was brought into question when VIP Products created its own product called “Bad Spaniels,” a dog toy meant to mimic the whiskey merchandise. When the former company demanded that VIP Products stop selling the toy, VIP Products filed a suit “seeking a declaratory judgment that Bad Spaniels neither infringed nor diluted Jack Daniel’s trademarks. Jack Daniel’s counterclaimed for infringement and dilution.” (Jack Daniel’s Properties, INC. v. VIP Products LLC, 2023). VIP Products rejected any accusations of infringement and justified their actions using the Rogers Test laid out by case precedent. The Rogers Test was created from Rogers vs. Grimaldi (1989) and determines whether the use of a third-party mark in one’s own work violates the Lanham Act. VIP goes on to defend itself against claims of dilution by pointing out its product is a parody of Jack Daniel’s whiskey and therefore ought to be protected under statute 15 U.S.C. §1125(c)(3)(A)(ii). The case went before the U.S. Supreme Court solely in relation to the infringement aspect of the issue and whether or not the Rogers Test is appropriately applicable here.  

Procedural Posture: 

• District court: decided in favor of Jack Daniel’s 
• The Court of Appeals: reversed under the decision that the Rogers test does apply, remanded the case to the District Court  
• District Court: granted summary judgement to VIP on infringement only 
• The Court of Appeals: affirmed 

Issue: 

• Whether the Rogers test applies in this case of infringement, in which another entity’s trademarks are used as one’s own trademarks. 

Holding: 

• “When an alleged infringer uses a trademark as a designation of source for the infringer’s own goods, the Rogers test does not apply.” (Jack Daniel’s Properties, Inc. v. VIP Products LLC, 2023) 

Rationale: 

• SCOTUS contends that the purpose of the Rogers test was “for titles of “artistic works” based on its view that such titles have an “expressive element” implicating “First Amendment values” and carry only a “slight risk” of confusing consumers about the “source or content” of the underlying work.” 875 F. 2d, at 998–1000. The test has been further defined by lower courts as a case “in which a trademark is used not to designate a work’s source, but solely to perform some other expressive function” and used Mattel, Inc. v. MCA Records, Inc., 296 F. 3d 894, 901 as an example. In this case, the relevant court determined that the use of “Barbie Girl” in the song was “not [as] a source identifier.” Based on these lines of thought, the Supreme Court defines the Rogers test as “a cabined doctrine: It has not insulated from ordinary trademark scrutiny the use of trademarks as trademarks.” (Jack Daniel’s Properties, INC. v. VIP Products LLC, 2023). SCOTUS then used that definition to determine that the test in question does not apply in cases in which one entity uses another’s trademark as their own due to the high likelihood of consumer confusion. The Supreme Court also rejected any arguments that the First Amendment required cases like these to be heard because marks cannot be used as source identifiers. The idea that parody is exempt from the requirements of the Rogers test is not the opinion of the superior court and goes against the express purpose of Congress’ limit on the “fair-use exclusion for parody.” (Jack Daniel’s Properties, INC. v. VIP Products LLC, 2023). The court then remanded any decision on the issue of consumer confusion in relation to standard trademark analysis to the lower courts. 

Sources: https://www.supremecourt.gov/docket/docketfiles/html/public/22-148.html  

Golde, K. (2023, February 26). Jack Daniel’s Properties, Inc. v. VIP Products LLC. SCOTUSblog. https://www.scotusblog.com/case-files/cases/jack-daniels-properties-inc-v-vip-products-llc-2/  

Jack Daniel’s Properties, Inc. v. VIP Products LLC, 599 U. S. ____ (2023). 

“Trump too Small” – New SCOTUS Trademark Case

By Karsyn Koon (June 12, 2023)

Facts: The United States Supreme Court has recently granted certiorari to hear a case regarding U.S. trademark law. The dispute is between individual Steve Elster (a California attorney) and the United States Patent and Trademark Office (USPTO). Elster wishes to trademark the phrase “Trump too small” to put the slogan on t-shirts and hats as a method of pushing his political commentary. He says the phrase comes from a presidential primary debate in late February of 2016 in which Florida GOP Senator Marco Rubio mocked then-presidential candidate Donald Trump for his “small hands.” Rubio’s comments quickly became one of the highlights of the event. Elster justifies his efforts, claiming his goal is to “convey that some features of President Trump and his policies are diminutive.” His application to the USPTO was initially denied due to the use of the word ‘Trump,’ namely because the public may construe it as a reference to former U.S. President Donald Trump. The organization cited “Section 2(c) of the Lanham Act, that prohibits the registration of a trademark that uses the name of another living person without that individual’s permission.” (Howe, 2023). Therefore, the slogan requires Trump’s permission to be used. Elster appealed to the USPTO’s Trademark Trial and Appeal Board (TTAB). His registration was denied once again.

Appellate Court Decision: In the case of in re Elster (26 F.4th 1328 (Fed. Cir. 2022)), the U.S. Court of Appeals for the Federal Circuit reversed the decision, citing a potential violation of Elster’s First Amendment rights from the trademark denial. As stated by the Federal Circuit in Mills v. Alabama and N.Y. Times Co. v. Sullivan, a major purpose of the First Amendment is to protect speech and discussion on government affairs and/or public questions. The Federal Circuit also derived their logic from “the right to criticize public men” is “[o]ne of the prerogatives of American citizenship,” as found in Baumgartner v. United States (322 U.S. 665, 673–74 (1944)). Additionally, the Federal Circuit rebuked the TTAB’s argument that the Lanham Act 60 Stat. 427 (codified at 15 U.S.C. § 1051) provisions are comparable to the restrictions placed on the First Amendment in a limited public forum, such as the inability to yell “fire” in a crowded theater. The opinion noted that there is no larger interest of public safety or government interest in this case, therefore the argument is null and void. In short, the specific right being challenged in this case is the freedom of speech concerning government topics and public affairs. The Federal Circuit claims that the central issue is “whether section 2(c) can legally disadvantage the speech at issue…” (In re Elster, 2022). They determined that yes, the section does lend a legal disadvantage to the speech at issue and therefore violates the Constitution.

Issues for the US Supreme Court: This will be an interesting case for SCOTUS, as the Court decides on the merits between the Lanham Act and other trademark legislation versus the rights outlined in the First Amendment. Will Elster be allowed to use Trump’s name in his trademark? US Supreme Court granted cert to the case after hearing the argument from the Federal Circuit that the USPTO decision to deny Elster trademark registration was based on unconstitutional legislation (Section 2(c) of the Lanham Act). Previous court cases on similar matters include Matal v. Tam and Iancu v. Brunetti, both of which ruled provisions of the Lanham Act unconstitutional. The court must ascertain as to whether or not the rule laid out by Section 2 (c) of the Lanham Act restricting the use of individual names in trademarks is an infringement upon the First Amendment. It is important to note that this case focuses on public figures, or rather individuals who are widely known and recognized by society. The USPTO argues that it is not a violation of the Constitution, but rather a protection in and of itself by “protecting the named individual’s rights of privacy and publicity and protecting consumers against source deception” (USPTO, 2022). Elster argues that strict scrutiny should apply to this case, and that the provisions highlighted in the Lanham Act do not express a government interest and therefore do not outweigh the First Amendment.

The Main Issue: “[t]he question here is whether the government has an interest in limiting speech on privacy or publicity grounds if that speech involves criticism of government officials— speech that is otherwise at the heart of the First Amendment,” (In re Elster, 2022).

This case may serve to limit legislation such as the Lanham Act as it applies to individual constitutional rights. The case will be heard by the Supreme Court next term.

Sources:

de Vogue, A. (2023, June 5). Supreme Court Agrees to Hear Trademark Dispute Over “Trump too Small” Slogan. WENY News. https://www.weny.com/story/49033489/supreme-court-agrees-to-hear-trademark-dispute-over-trump-too-small-slogan\

Howe, A. (2023, June 5). Justices Take Up “Trump Too Small” Trademark Case. SCOTUSblog. https://www.scotusblog.com/2023/06/justices-take-up-trump-too-small-trademark-case/

In re Elster (26 F.4th 1328 February 24, 2022).

NEW USPTO TRADEMARK PROCEDURES FOR RESPONDING TO OFFICE ACTIONS

By Enrique Tarazona

On November 17, 2021, the USPTO published in the Federal Register a final rule amending the Rules of Practice in Trademark Cases to implement the provisions of the TMA, this is 86 FR 64300. 

As part of that final rule, the USPTO amended 37 CFR 2.62 to:
        – establish a three-month period for responses to Office actions on applications under sections 1 and/or 44 of the Trademark Act (Act), 
        – and provide the option of requesting a single three-month extension of the time period, subject to the payment of a fee. 

            The new USPTO fee is $125, regardless of entity size. 

The three-month response period and extension provisions for Office actions issued in connection with applications became effective December 3, 2022. Thus, Office actions received on or after this date are subject to the new rules.

The three-month response period and extension also applied to Office actions issued in connection with post-registration maintenance and renewal filings. The deadline for responses to Office actions issued in connection with applications under section 66(a) of the Act was not changed in that final rule and remains six months.
            The three-month response period and extension provisions for Office actions issued with respect to post-registration maintenance filings will be effective October 7, 2023.

            Previously, applicants could wait the entirety of a six-month response period in which to decide whether to file and actually file a response.  Now, the applicant must at least make a decision as to whether to file a request for a three-month extension of time, resulting in additional USPTO fees.

            So if you are a trademark applicant, you should be more proactive in reviewing Office actions if you want to avoid additional fees.

Tim Dodd -The Everyday Astronaut

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Intent to Induce Infringement may be Based on Objectively Noninfringing Conduct in Federal Circuit Ruling

by Chris Kang

On October 23, 2020, the Federal Circuit held that liability for induced infringement may be established through the subjective belief that conduct is infringing where it is objectively reasonable that the conduct is noninfringing.

In 2010, TecSec sued Adobe and several other defendants for direct and induced infringement of its patents.[1] The district court entered a judgment of noninfringement for Adobe because TecSec could not show that Adobe or its users infringed its patents under the adopted claim construction.[2] The Federal Circuit later reversed the district court’s construction and remanded for further proceedings with the new construction.[3] On remand, Adobe filed a motion in limine asking the court to “preclude argument, evidence, or testimony on Adobe’s intent to induce or willfully infringe between March 3, 2011 and October 18, 2013.”[4] The district court granted Adobe’s motion, reasoning that the March 3, 2011 claim construction and noninfringement stipulation made it legally impossible for Adobe to have had the requisite intent to induce third-party infringement and allowing either party to present evidence for the inducement argument would cause the opposing parties undue prejudice while confusing the jury.[5] Subsequently, TecSec appealed the district court’s exclusion of inducement evidence.

The Federal Circuit reversed the district court’s decision, finding that the knowledge requirement of induced infringement can be met through the subjective belief that objectively noninfringing conduct is infringing.[6] The Court rejected the district court’s conclusion that Adobe “lacked the requisite intent to induce infringement,” and determined that an objectively reasonable belief does not answer a contrary subjective belief as a matter of law.[7]

The Federal Circuit found that the limited scope of Adobe’s motion in limine precluded TecSec from presenting all relevant material evidence, and thus prevented the district court from properly resolving the issue as a matter of law.[8] Furthermore, the Federal Circuit determined that the district court failed to explain why admitting the inducement evidence would be too prejudicial against TecSec given that TecSec reiterated its intent to pursue the inducement case regardless if the evidence was admitted.[9]

The Federal Circuit reversed and remanded for further proceedings on TecSec’s post-March 3, 2011 inducement claim.[10]

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[1] TecSec, Inc. v. Adobe Inc., 978 F.3d 1278 (Fed. Cir. 2020).

[2] Id.

[3] Id.

[4] Id.

[5] Id.

[6] Id.

[7] Id.

[8] Id.

[9] Id.

[10] Id.

The USPTO Releases New Guidance on Generic.com Terms Following USPTO v. Booking.com

by Chris Kang

The USPTO published new guidelines on October 28, 2020 for analyzing the genericness of “generic.com” terms following the US Supreme Court’s precedential decision in USPTO v. Booking.com B.V.[1]

On June 30, 2020, the Supreme Court ruled that “Booking.com” was not a generic term and was eligible for trademark registration, rejecting the per se rule that a generic term combined with a generic top-level domain, such as “.com” or “.org,” is generic.[2] However, the Supreme Court also declined to “embrace a rule automatically classifying [generic.com terms] as nongeneric.”[3]

Under the new guidance, the USPTO advises examining attorneys to continue addressing generic.com terms under the standard genericness framework, on a case-by-case basis.[4] If the examining attorney presents evidence showing that the relevant consumer would perceive the generic.com term as the name of a class as opposed to a distinguishable member of the class, then the term may be established generic.[5] A few examples that an examining attorney might look to include dictionary usage, industry standards, and the applicant’s own use of the generic.com term.[6]

The refusal process remains the same for a generic.com term, in which the examining attorney must not initially issue a refusal for registration on the Principal Register on a genericness basis, but on a distinctiveness basis along with an advisory on whether the mark may serve as a source indicator.[7] If the examining attorney finds that the term is capable of serving as a source indicator, then he or she may advise that the applicant may amend the application to the Supplemental Register.[8] Otherwise, the examining attorney must include an advisory recommending the applicant against making a claim of acquired distinctiveness or amendment to the Supplemental Register.[9] Contrarily, registration on the Supplemental Register for a generic.com term may be initially refused if the examining attorney finds sufficient evidence that the term is generic.[10] Moreover, a genericness refusal on either register is proper if the applicant has made a claim for acquired distinctiveness and there is strong evidence of genericness.[11]

An applicant seeking registration under a claim of acquired distinctiveness must provide sufficient evidence showing that the generic.com term has obtained secondary meaning in relation to the goods or services.[12] A generic.com term would unlikely be inherently distinctive given that it typically consists of descriptive terms, and thus the applicant must prove that the mark has acquired distinctiveness.[13] Furthermore, neither prior registration nor evidence of an applicant’s five years of exclusive and continuous would likely establish acquired distinctiveness on its own, and thus the applicant must present other evidence to show that the mark may serve as a source indicator.[14] Acceptable evidence for a generic.com term remains consistent with proof of distinctiveness for other trademarks or service marks and may include, inter alia, consumer surveys; consumer declarations; evidence, such as declarations or depositions, showing duration, extent, and nature of the proposed mark’s use in commerce; advertising expenditures; letters or statements from the trade or public.[15] When submitting consumer surveys, the guidance highlights the importance of ensuring that a survey is designed to accurately and reliably represent consumer perception of a proposed mark.[16]

Regarding generic.com terms combined with other matter, generic.com terms that are incapable of serving as a source indicator and can be separated from the other matter must be disclaimed consistent with the current disclaimer policy.[17]

Additionally, the examining attorney may refuse registration where the specimen of use for a generic.com term fails to serve as a source indicator for the named goods or services if the term is solely being used as a website address.[18]

While the Supreme Court has determined that generic.com terms are no longer automatically considered generic, potential marks for generic.com terms “may be subject to a narrower scope of trademark protection” when it consists of generic or descriptive components that may be used in other marks.[19] When examining proposed marks, examining attorneys must determine whether a prior registration for a generic.com term is differentiable from the proposed mark.[20] Each proposed mark must be considered on a case-by-case basis and must nonetheless show that the mark is neither generic nor descriptive pursuant to the Trademark Act.[21]

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[1] United States Patent and Trademark Office, Examination Guide 3-20 (2020).

[2] United States Patent & Trademark Office v. Booking.com B. V., 140 S. Ct. 2298 (2020).

[3] Id. at 2307.

[4] United States Patent and Trademark Office, Examination Guide 3-20 (2020).

[5] Id.

[6] Id.

[7] Id.

[8] Id.

[9] Id.

[10] Id.

[11] Id.

[12] Id.

[13] Id.

[14] Id.;37 CFR § 2.41(d).

[15] United States Patent and Trademark Office, Examination Guide 3-20 (2020).

[16] Id

[17] Id.

[18] Id.; TMEP § 1202.19(e).

[19] United States Patent and Trademark Office, Examination Guide 3-20 (2020).

[20] Id.

[21] Id.