Protected or Unprotected: The Supreme Court Hears Iancu v. Brunetti

On April 15, 2019, the Supreme Court will hear arguments on whether dirty words and vulgar terms may be registrable as trademarks – and if so, what is the test? Section 2(a) of the Trademark Act currently provides that the Trademark Office may refuse registration of a mark that “[c]onsists of or comprises immoral… or scandalous matter.” Erik Brunetti, the owner of the FUCT brand of clothing, filed applications to register his mark. He almost got one registered – it was approved, but the approval by the Trademark Office was withdrawn after the Matal v. Tam decision. The issues now before the Court are whether (1) the statutory prohibition against registration of a “immoral” or “scandalous” marks is facially invalid; and (2) the statute as applied to the registration of “immoral” or “scandalous” marks is constitutionally vague under the First and Fifth Amendments.

The Supreme Court, in Matal v. Tam, 137 S. Ct. 1744, 198 L. Ed. 2d 366 (2017), held that the particular language in Section 2(a) refusing registration of a trademark on grounds that the mark may “disparage or … bring them into contempt or disrepute” was facially invalid under the First Amendment as viewpoint discrimination. Tam was a plurality opinion, which is subject to the narrowest of interpretations. Marks v. United States, 430 U.S. 188 (1977). While all members of the Court held the disparagement clause of Section 2(a) to be facially invalid, the Court was divided over the level of scrutiny generally to be applied to free speech challenges to the Trademark Act. As Justice Kennedy stated in Tam, “We leave open the question whether this is the appropriate framework for analyzing free speech challenges to provisions of the Lanham Act.” 137 S. Ct. at 1768 (Kennedy, J.). No one addressed “immoral” or “scandalous” terms. Continue Reading

The Federal Circuit Opens the Door Wider for the Subject Matter Eligibility of Methods of Treatment, Compositions and Methods of Manufacturing

“We live in a natural world, and all inventions are constrained by the laws of nature . . . we must be careful not to overly abstract claims when performing the Alice analysis.”[1] These are the promising words from the Federal Circuit in its recent decision in Natural Alternatives v. Creative Compounds, in which the court held that dietary supplements, methods of treatment using the same and methods of manufacturing the same are directed to patent-eligible subject matter.

Natural Alternatives owns a number of patents that relate to the use of beta-alanine in a dietary supplement designed to increase the anaerobic working capacity of muscles and other tissues. Beta-alanine is a naturally occurring amino acid that, together with histidine and their methylated analogues, forms certain dipeptides that are present in the muscles of humans and other vertebrates.[2] The patents at issue claim methods of treatment, dietary supplements and methods of manufacturing the dietary supplements containing beta-alanine. On a Rule 12(c) motion (judgment on the pleadings), the district court held that the claims at issue are directed to patent-ineligible subject matter under Section 101. The Federal Circuit reversed and remanded. This decision is favorable for patent owners in the life science field. Continue Reading

Patent and Trademark Fees in Venezuela

On Feb. 1, 2019, the Venezuelan Ministry of National Commerce sent a notification that patent and trademark fees shall be paid in the Venezuelan cryptocurrency “PETRO.” HOWEVER, the United States government, by Executive Order 13827 (March 19, 2018), expressly prohibits such transactions by U.S. persons, including individuals and companies, relating to any digital currency, digital coin or digital token issued by, for or on behalf of the government of Venezuela on or after Jan. 9, 2018. Accordingly, at this time we cannot pay for renewal or registration of your trademarks or patents in Venezuela. We do not know if or when this may be resolved. If you have something coming up for renewal in Venezuela, it may not be possible to pay the fees. Stay tuned.

Mission Products v. Tempnology: Is Bankruptcy the End for Trademark Licenses?

dictionary macro with focus on BankruptcyOral argument before the Supreme Court was held on February 20 in the much-watched and even more intensely discussed trademark dispute Mission Product Holdings, Inc. v. Tempnology, LLC.[i] The case presents the difficult and multifaceted question: Does bankruptcy law insulate the right of a trademark licensee to continue using the licensed mark despite the bankrupt trademark licensor’s decision to “reject” the remaining term of the trademark license?

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Federal Circuit holds that claims directed to diagnosing neurotransmission or developmental disorders are invalid for failing to recite patent eligible subject matter

In Athena Diagnostics, Inc. v. Mayo Collaborative Servs., LLC,[1] the Federal Circuit affirmed the district court’s ruling that claims covering methods for diagnosing neurological disorders by detecting autoantibodies are directed to a natural law together with conventional steps, and are therefore invalid under 35 U.S.C. § 101. Although the claims at issue were said to be directed to patent ineligible subject matter, the court offered further guidance for applicants in the diagnostic space. Continue Reading

Supreme Court Unshrouds the ‘On Sale’ Bar as Applied to Secret Sales

This week, the Supreme Court issued a decision holding that a secret sale qualifies as prior art. At issue was whether the America Invents Act (AIA) changed the “on sale” bar to patentability to exempt secret sales as prior art.[1] The case, Helsinn Healthcare v. Teva Pharmaceuticals USA, arose out of agreements entered into by Helsinn and MGI Pharma, to which Helsinn granted the right to sell a treatment used to reduce nausea caused by chemotherapy. The agreements included a provision requiring MGI Pharma to keep confidential any proprietary information received under the agreements. Approximately two years after execution of the agreement, Helsinn filed four provisional patent applications covering the treatment.

Helsinn asserted its patents against Teva, which sought to market a generic version of the treatment. Teva raised a defense contending that Helsinn’s patents were invalid under the “on sale” provision of the AIA. The District Court sided with Helsinn and held that the “on sale” provision did not apply because the public disclosure of the agreements did not disclose the specific dose of the treatment. On appeal, the Federal Circuit reversed and held that the sale was publicly disclosed, regardless of whether the details of the invention were publicly disclosed in the agreements.

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The ‘Integrated Into a Practical Application’ Test of the 2019 Revised Patent Subject Matter Eligibility Guidance

On Jan. 4, 2019, the USPTO announced revised guidance relevant to Section 101 rejections (“2019 Revised Patent Subject Matter Eligibility Guidance”). The 2019 Revised Patent Subject Matter Eligibility Guidance explains that a claim that recites a judicial exception is not “directed to” the judicial exception if the judicial exception is “integrated into a practical application” of the judicial exception. The procedure, referred to as “revised Step 2A,” changes how examiners should apply Step 2A of the Alice/Mayo test, which asks whether the claim in question is “directed to” a judicial exception. This article considers the effect of the new integrated into a practical application test and offers practical tips for applicants.

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The Federal Circuit Weighs In on Evidentiary Considerations for Famous Marks and Analyzes Third-Party Usage

The Court of Appeals for the Federal Circuit recently held that the Trademark Trial and Appeal Board (TTAB) erred in concluding that there is no likelihood of confusion between Omaha Steaks International’s registered trademarks and Greater Omaha Packing Company’s (Greater Omaha) GREATER OMAHA PROVIDING THE HIGHEST QUALITY BEEF trademark. Most significantly, the Federal Circuit held that the TTAB erred in analyzing the fame of the registered trademarks and third-party usage, in connection with the likelihood of confusion factors enumerated in In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (CCPA 1973) (the DuPont Factors). The TTAB’s prior ruling was vacated in Omaha Steaks International, Inc. v. Greater Omaha Packing Co., Inc., 908 F.3d 1315 (Fed Cir. 2018), and the case was remanded for further proceedings.

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PTAB Denies Institution Despite Petitioner Demonstrating Reasonable Likelihood of Prevailing With Respect to at Least One Claim

In SAS Institute v. Iancu, 138 S. Ct. 1348, 1351 (2018), the Supreme Court held that when the Patent Trial and Appeal Board (the Board) institutes an inter partes review, it must decide the patentability of all the claims the petitioner challenged.  The Court found that 35 U.S.C. §314(a)’s requirement that the Board find “a reasonable likelihood” that the petitioner will prevail on “at least 1 of the claims challenged in the petition” suggests a regime where “a reasonable prospect of success on a single claim justifies review of them all.”  Id.  The  policy argument that partial institution is efficient because it permits the Board to focus on the most promising challenges and avoid spending time and resources on others was said to be a question for Congress, “not this Court.”  Id. at 1352.

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Beware of Fraudulent Requests to USPTO to Change Official Trademark Registration Records

We have been alerted by the United States Patent and Trademark Office (USPTO) of unauthorized attempts by unknown parties to amend our clients’ trademark registration records.  Filing Correspondents and Attorneys of Record must remain vigilant for notices from the USPTO and respond to them swiftly to verify whether the requested change was authorized.  We have been in contact with the USPTO and it assures us this situation is getting its highest attention.

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