.SUCKS’ Luck Sucks: Federal Circuit Affirms Refusal to Register .SUCKS for Failure to Function

On Feb. 2, 2022, the Federal Circuit decided In re Vox Populi Registry Ltd., an appeal from the Trademark Trial and Appeal Board’s (Board) affirmance of the refusal to register a stylized version of the term .SUCKS. Vox Populi operates the registry for the .SUCKS generic top-level domain, offering domain names ending in “dot sucks” particularly suited to operation of gripe sites, and it applied to register the term .SUCKS both in standard characters and in a pixelated, stylized version for “domain registry operator services related to the gTLD in the mark.” The examining attorney and the Board refused registration of both versions for failure to function as a mark.

The Federal Circuit found that substantial evidence supported the Board’s finding that consumers will perceive .SUCKS only as a non-source identifying part of a domain name and not as a service mark. Such evidence included examples from Vox Populi’s website, get.sucks, using .SUCKS to identify a product (domain names ending in .SUCKS) rather than a provider of services. Vox Populi’s evidence of advertising and promotional efforts and declarations from domain name registrar customers who testified that they perceive .SUCKS as a service mark were insufficient to overcome this evidence. Continue Reading

Monitoring IP Developments in 2022

In addition to another year of the pandemic, 2021 brought with it several key developments in the realm of intellectual property (IP) that BakerHostetler has covered in this blog series. We hope readers have found these posts informative and entertaining thus far. Looking forward to 2022, there are a number of issues already teed up that the IP bar will need to closely follow in the new year. To that end, below is a brief overview of a few known or emerging issues to keep an eye on.

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Actual Use, Not Preparations For Use, Of A Service Mark Is Necessary For The USPTO To Register It

If you desire to register a service mark asserting use that is preparatory for the rendering of your services, your application will fail in the U.S. Patent and Trademark Office (USPTO). Instead, the services must be actually rendered in connection with the mark for a registration to be granted.

In In re Alessandra Suuberg, SN 88234650 (TTAB December 10, 2021) [precedential] (Suuberg), the Trademark Trial and Appeal Board (TTAB) followed well-established Court of Appeals for the Federal Circuit (CAFC) precedent that the actual rendering of services is necessary for proof of use of a service mark.

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USPTO Implements Trademark Modernization Act

Earlier this month, certain regulations implementing the Trademark Modernization Act (TMA) went into effect. Per the final rule, the new tools are primarily to clear the “deadwood” – that is, unused registered trademarks – from the Registry and are now available for use. A summary of the changes follows: Continue Reading

USPTO Sanctions Chinese Law Firm for Fraud and Terminates More Than 15,000 US Trademark Applications

On Dec. 10, 2021, the U.S. Patent and Trademark Office (USPTO) issued a precedential Final Order for Sanctions against Chinese practitioner and law firm Yusha Zhang and Shenzhen Huanyee Intellectual Property Co., Ltd. for filing more than 15,000 applications and other submissions that were deemed fraudulent. The USPTO described the mass filings as “[a] scheme involving … egregious misconduct,” including unauthorized practice of U.S. law, providing false domicile addresses, impermissibly entering signatures of others and misusing uspto.gov accounts. Zhang had at least three different accounts, and multiple different people were using them.

The December Order followed a June 8, 2021 Show Cause Order and Response filed on July 6, 2021. Zhang and her firm claimed they were “unfamiliar with the filing requirements and did not fully understand the signature requirements under 37 C.F.R. § 2.193 until engaging counsel” and were now taking corrective action. The USPTO rejected this argument, as attorneys and pro se parties participating in the trademark registration process or board proceedings are presumed to be aware of the rules requiring foreign applicants to be represented by a U.S.-licensed attorney, and ignorance is no excuse. In addition to terminating the 15,000+ fraudulently filed applications, Zhang and her firm are precluded from future submissions to the USPTO.

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Reasonable Expectation of Success’ Analysis Must Be Tied to Claim Limitations

One common rationale used to support an obviousness argument is that the patented solution would have been “obvious to try.” The Supreme Court has stated that where “there are a finite number of identified, predictable solutions” for solving a problem and that “a person of ordinary skill has good reason to pursue the known options,” if that “leads to the anticipated success,” that “might show that it was obvious under § 103.”[1] In a recent opinion upon appeal from the Patent Trial and Appeal Board (Board), Teva Pharmaceuticals, LLC v. Corcept Therapeutics, Inc., No. 21-1360 (Fed. Cir. 2021), the Federal Circuit confirmed that specific limitations in claim language necessarily shape the application of the “reasonable expectation of success” obviousness analysis.

Corcept developed a mifepristone tablet for treating Cushing’s syndrome. The U.S. Food and Drug Administration (FDA) approved Corcept’s application with certain stipulations. First, the FDA required Corcept to conduct a clinical trial to determine the safety of its tablet when co-administered with ketoconazole (a strong CYP3A inhibitor) and provided Corcept with a memorandum describing that the effects of co-administering mifepristone with strong CYP3A inhibitors was “unknown” and “may present a safety risk.” Additionally, the FDA approved the prescribing information for the tablet on its label. In relevant part, the label limited the “mifepristone dose to 300 mg per day when used with strong CYP3A inhibitors.” Corcept conducted the requested clinical trial and, based on data collected during that trial, filed for and was granted its ’214 patent. The claims of the ’214 patent are directed to a method of treating Cushing’s syndrome by co-administering a specific dosage (600 mg) of mifepristone and a strong CYP3A inhibitor (e.g., ketoconazole) to a patient.

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Podcast: Navigating the Fine Line Between Obviousness and Obviousness-Type Double Patenting

Partner Stephanie Lodise, Ph.D., and Patent Agent Tracy Palovich, Ph.D., break down the differences between obviousness rejections and obviousness-type double patenting rejections. They then provide important prosecution strategies how to respond to each type of rejection so as to maximize patent protection

Questions & Comments: slodise@bakerlaw.com

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Federal Circuit Requires Definitive Written Description Support for Quantitative Values and Ranges

Under U.S. law, every patent claim must be supported by an adequate written description, which conveys to those skilled in the art the nature and breadth of the invention.[1] The Federal Circuit recently decided two cases that found that claiming both a quantitative value and a quantitative range requires particular clarity in the disclosure.

In Indivior v. Dr. Reddy’s Laboratories,[2] Indivior appealed an inter partes invalidation of claims reciting polymer percent weight ranges in orally dissolvable films. Indivior argued that disclosure of specific formulations with the lower quantity of a claimed range (48.2 wt %) and the upper quantity of a claimed range (58.6 wt %) was sufficient to encompass the claimed ranges (40 wt % – 60 wt % and 58.6 wt % – 60 wt %). The Court disagreed and found that disclosing examples having only the upper and lower limits of a range is not sufficient to claim an entire range, stating that “more clarity is required” for adequate written description support of the claimed range.[3] The Court further rejected Indivior’s argument that if one looks to the specification’s tables and creates a range from the polymer weight percentages in the examples, then one has obtained the range. The Court stated that this act would “amount to cobbling together numbers after the fact”[4] and that Indivior did not demonstrate that a person of skill in the art would have understood that the specification was disclosing a range of polymer weights. Thus, the Federal Circuit affirmed the PTAB’s holding that the claims were invalid as lacking adequate written description.

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Thinking of Registering a Service Mark That Primarily Benefits Your Company? Think Again

If you are contemplating registering a service mark that primarily benefits your company and not others, don’t bother; it will be refused registration. This issue was recently addressed by the Trademark Trial and Appeal Board (TTAB) in In re California Highway Patrol, SN 88796327 (TTAB Nov. 4, 2021) [not precedential] (CHiP).

In CHiP, the TTAB dealt with an appeal from a refusal to register “MADE FOR MORE” for services “including employment-recruiting services, personnel recruitment, employment recruiting and staffing services, and recruitment and placement of personnel in the field of law enforcement.” Id. at p. 8. The U.S. Patent and Trademark Office (USPTO) examining attorney refused registration, contending the mark was not used to render a service within the meaning of the Trademark Act, and asserted the mark was used by the California Highway Patrol (Applicant) to recruit its own personnel and thus was not registrable. Id. at p. 2. The TTAB affirmed the refusal to register, denying registration under sections 1, 2, 3 and 45 of the Trademark Act.

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Identifying Novelty in Patent Harvesting Meetings

I recently received a call from a friend who expressed that his company is struggling with helping inventors identify a point of novelty for their ideas in their invention disclosure forms (IDFs), and as a result, it has been difficult to decide whether or not to move forward with their invention ideas.

As my friend is well aware, pursuing patent protection for a company’s inventions developed in the course of product development projects may deliver significant value back to the company. For example, a strong patent portfolio may protect investment in research and development, increase market and/or company value, secure market position, generate licensing revenue, and serve as a strong bargaining chip in cross-licensing negotiations. For these reasons, many companies task individuals, such as my friend, with supporting business and engineering units to harvest invention disclosures.

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