No Bull: Acquired Distinctiveness Is Not a Given

The Trademark Trial & Appeal Board recently issued a nonprecedential decision that serves as a good reminder that distinctiveness is not automatically acquired simply by long-standing use. Klickitat Valley Chianina, LLC, Serial No. 76715490 (March 16, 2017). Nor are declarations attesting to exclusive use for five-plus years automatically sufficient to pass a trademark application through to registration under §2(f) of the Lanham Act. Where a mark is particularly descriptive, it is advisable to rustle up greater evidence when making a §2(f) claim rather than relying on a simple declaration by the applicant. Otherwise, the application may be on a path straight to the slaughterhouse.

The Klickitat decision involved an application for CERTIFIED CHIANINA BEEF, filed by Washington-state cattle ranch Klickitat Valley Chianina, LLC. Application s/n 76715490. Registration was refused on descriptiveness grounds, with the Examiner, and later the Board, observing that Chianina cattle are a breed of cow originating in Italy and known for high-quality beef. *4. Thus, “the term CERTIFIED CHIANINA BEEF merely describes beef certified as coming from Chianina cattle.” Id. Merely descriptive marks are, of course, refused registration under § 2(e) of the Lanham Act. Importantly, though, while a mark may not be distinctive when first adopted, marks in many cases may be registrable under §2(f) of the Lanham Act on the basis of their having acquired distinctiveness.  Continue Reading

UK High Court Issues Important Ruling on Licensing of Standard Essential Patents

On April 5, 2017, the High Court of Justice in the UK ruled that if a patent holder claims that a patent is essential under the ETSI IPR Policy, it must license that patent to third parties on fair, reasonable, and non-discriminatory (FRAND) terms, and the licensee must accept the FRAND terms or face the threat of an injunction barring product sales for items taking advantage of such technology. [2017] EWHC 711 (Pat).

In Unwired Planet v. Huawei Technologies, a dispute arose during a nontechnical trial regarding several standards essential patents (SEPs) owned by NPE Unwired, whose robust global patent portfolio includes numerous SEPs declared essential to various telecom standards (including 2G, GSM, 3G, UTMS and 4G LTE). In March 2014, Unwired sued Huawei, Samsung and Google for infringement of six of its UK patents. During the course of the litigation, Unwired offered to license its entire global portfolio (both SEPs and non-SEPs) to the defendants. The defendants refused this offer and argued that they did not infringe and that the SEPss were both invalid and nonessential. Unwired then made another offer to license its SEPss, but the defendants argued that this offer was not FRAND. Google and Samsung eventually settled, leaving Huawei to litigate the dispute to trial. Continue Reading

Court Dismisses Suit Against Coach and Its Counsel for Wrongful Seizure of Website Due to Lack of Personal Jurisdiction


A recent decision from the United States District Court for the Southern District of Ohio held that Coach and its Illinois-based counsel could not be sued for collateral harm caused in a trademark dispute that played out in a federal case in Illinois. See Order, Brenda Buschle v. Coach, Inc. et al., Civil Action No. 1:16-cv-00471-MRB (S.D. Ohio Mar. 28, 2017). In doing so, the court held that it lacked personal jurisdiction over both Coach and its counsel even though Coach mistakenly seized a website of an Ohio business it wrongly believed was selling counterfeit goods from China.

In April 2016, plaintiff Brenda Buschle sued Coach and its counsel, alleging that it wrongfully seized her online discount retail store and informed consumers (wrongly) that she sold counterfeit Coach bags. In April 2015, in the U.S. District Court for the Northern District of Illinois, Coach sued Buschle and more than 500 other defendants for trademark infringement resulting from their selling of counterfeit Coach bags. Shortly thereafter, Coach obtained a temporary restraining order to enjoin further sales from what it believed were unlawful websites operated from China. It shut down Buschle’s website for approximately 36 hours. Coach posted a message on Buschle’s website informing consumers that the website had been shut down pursuant to a federal court order. The message directed consumers to purchase authentic products from the website and seek a refund of purchases through payment providers.  Continue Reading

Proof of Life: USPTO Ushers in New Audit Power for Proof-of-Use

Effective earlier this year, recently amended 37 C.F.R. §§ 2.161(h) and 7.37(h) empower the USPTO to require a registrant to submit additional documentation as “reasonably necessary” to prove use of the mark in connection with each and every good or service identified in the registration.  This is to ensure that the register “accurately reflects marks that are in use in commerce in the United States for all the goods/services identified in the registrations, unless excusable nonuse is claimed in whole or in part.”  (Emphasis added.)

Because the USPTO only requires submission of a specimen of use for a single good or service per class, a registrant filing a Section 8 or Section 71 declaration typically submits one specimen per class, but then declares under penalty of perjury that it has continued to use its mark on all of the covered goods or services. Continue Reading

SCOTUS Declares That Time Has Expired for Laches Defense in Patent Cases

On March 21, the Supreme Court of the United States held in Hygiene Products Aktiebolag v. First Quality Baby Products that laches is not a defense to a damages claim when the Patent Act’s six-year statute of limitations has yet to expire. This decision aligns with the Court’s ruling in Petrella v. Metro-Goldwyn-Mayer Inc., 572 U.S. ___ (2014), in which the Court determined that laches cannot be invoked as a defense to bar relief in copyright disputes so long as the claim is filed within the Copyright Act’s three-year statute of limitations.

SCA Hygiene Products Aktiebolag and SCA Personal Care Inc. (SCA) first notified First Quality Baby Products LLC (First Quality) in 2003 that its adult diapers infringed SCA’s patented technology. After several years of invalidity proceedings, in 2010 SCA sued Quality First in the United States Court for the Western District of Kentucky. First Quality prevailed on summary judgment on the basis of laches and equitable estoppel, and SCA appealed to the Federal Circuit. While SCA’s appeal was pending, the Supreme Court issued the Petrella decision. However, based on precedent set before the enactment of the Patent Act, the Federal Circuit ruled that laches could still be asserted for claims involving patents when the statute of limitations had yet to expire under 35 U.S.C. § 286. Continue Reading

Availability of Reissue After an Invalidity Determination

A recent law review article discusses reissue as a potential cure for patentees who have had their claims invalidated by a court or the Patent Trial and Appeals Board (PTAB).[1]

Under 35 U.S.C. § 251, reissue is available when “any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent.”

The idea is that drafting overbroad claims may be “error” that can be afforded relief in the form of reissue under § 251 even after the patent has been held invalid. The author of the article points out that (1) nothing in § 251 suggests reissue should be unavailable following a court or PTAB decision invalidating patent claims, (2) no current law expressly forecloses the option of reissue after invalidation, and (3) some favorable – though very dated – case law remains in effect supporting reissue after invalidation. Continue Reading

Federal Circuit Appears to Narrow the Exceptions to 35 U.S.C. § 101

Unquestionably, the narrower a patent’s claims, the more likely they are to pass muster under 35 U.S.C. § 101. But if you have an invention with broad applicability, how broadly can you claim it without running into eligibility problems? The answer, both literally and figuratively: the sky’s the limit.

In Thales Visionix Inc. v. United States, Appeal No. 2015-5150 (Fed. Cir. Mar. 8, 2017), the Federal Circuit, in an opinion authored by Circuit Judge Moore joined by Circuit Judges Wallach and Stoll, held patent-eligible a claim to a one-step method to “determining” the orientation of an object relative to a moving reference frame: Continue Reading

New TTAB Rules of Practice

On Jan. 14, 2017, the Trademark Trial and Appeal Board (TTAB) Rules of Practice were amended in what the United States Patent and Trademark Office described as an effort “to benefit the public by providing for more efficiency and clarity in inter partes and ex parte proceedings.” The first such amendment in roughly nine years, the new rules reflect further alignment with the Federal Rules of Civil Procedure and, more importantly, an embrace of modern technology. Below is a summary of these changes, which apply to cases pending before the TTAB as of Jan. 14 or commencing thereafter.

Electronic Filing

While this is not a drastic change from modern practice, all filings must now be made electronically through the Electronic System for Trademark Trials and Appeals (ESTTA). As discussed below, this solidification of current practice impacts service and the timing of discovery responses. Continue Reading

The Federal Circuit Considers a New Issue on Appeal, Lectures the PTO on its Burden to Establish Obviousness, and Reveals an Internal Split on What to do When the PTO Fails to Carry That Burden

The Federal Circuit in Icon Health & Fitness, Inc. v. Strava, Inc., Appeal No. 2016-1475 (Feb. 27, 2017), made several interesting points and revealed a disagreement among four of its judges about the proper disposition when the PTO fails to carry its burden in “examination appeals.” More specifically, the court explained when an appellant might successfully raise an issue it did not raise in the lower tribunal. It also addressed the burden on the PTO to defend its rejections at the Federal Circuit. Finally, the opinion reflects a disagreement about whether the court should give the PTO a second bite at the apple when it fails to carry that burden.  Continue Reading

Requirements of § 121’s Safe Harbor: Ensuring That Divisional Applications Will Be Protected Against OTDP Rejections

In a recent decision, the Patent Trial and Appeal Board (PTAB) narrowly construed the so-called safe harbor provision of 35 U.S.C. § 121, affirming the examiner’s rejection of a patent application under the doctrine of “obviousness-type double patenting” (OTDP). Ex parte Sauerberg, Appeal 2015-007064 2017 WL 150016 *1 (PTAB Jan. 10, 2017).

The safe harbor protects later-filed divisional applications from rejection or invalidation under the doctrine of obviousness-type double patenting (OTDP). It ensures that

[a] patent issuing on an application with respect to which a requirement for restriction under this section has been made, or on an application filed as a result of such a requirement, shall not be used as a reference either in the Patent and Trademark Office or in the courts against a divisional application or against the original application or any patent issued on either of them, if the divisional application is filed before the issuance of the patent on the other application. Continue Reading