Filewrapper® | A patent, trademark, and copyright law blog by MVS - Trademarks

MVS Filewrapper® Blog: New and Useful - February 21, 2013

Thu, 21 Feb 2013 08:40:00-0500

· In U.S. Polo Assoc., Inc. v. PRL USA Holdings, Inc., the Second Circuit Court of Appeals found that the natural zone of expansion doctrine did not permit the United States Polo Association (“USPA”) to expand its offerings into a line of fragrances and affirmed the district court’s entry of a permanent injunction prohibiting such use. The USPA filed a declaratory judgment to approve use of its Double Horseman mark, accompanied by the words “U.S. POLO ASSN.,” “USPA,” and/or “1890,” in the sale of men’s fragrances. PRL counterclaimed, seeking entry of a permanent injunction precluding such use—which the district court granted. USPA’s argument was centered on the, so called, natural zone of expansion doctrine. USPA argued that its history of selling branded apparel provided it with the right to expand into related markets, i.e., apparel sales give rise to the right to expand into fragrances. The district court gave little weight to USPA’s survey and found that PRL’s survey gave strong evidence of a likelihood of confusion. The Second Circuit found that the district court’s holdings regarding the survey evidence did not abuse its discretion and that the previous litigation and USPA’s history did not support USPA’s argued natural right to expand.

· In Function Media, L.L.C. v. Google, Inc., the Federal Circuit Court of Appeals held that the denial of a pre-trial motion for summary judgment of non-infringement is not sufficient to show that the district court delegated claim construction to the jury. Function Media (“FM”) sued Google for infringement of three patents directed at “facilitate[ing] advertising on multiple advertising outlets such as newspapers and websites.” Slip op. at p. 2. The district court held that one patent was invalid for being indefinite “because the specification did not disclose sufficient structure for its sole independent claim’s means plus function term ‘means for transmitting.’” Id. at pp. 5–6 (citations omitted). A jury found the asserted claims in other two patents invalid and not infringed. FM moved for judgment as a matter of law (“JMOL”) that the claims were not invalid, which the district court granted with respect to four claims. This did not alter the jury verdict of non-infringement.

FM appealed on a number of grounds, including an assertion that the district court gave the claim interpretation to the jury. The argument was based on the fact that the district court denied Google’s motion for summary judgment of non-infringement. FM argued that the denial of summary judgment demonstrated that there were unresolved issues regarding claim scope, which were subsequently left to the jury rather than construed by the court. The Federal Circuit did not agree that the district court improperly gave the claim interpretation to the jury, the Federal Circuit stated, “We hold that the denial of a pre-trial motion for summary judgment of non-infringement does not, by itself, show that the district court delegated claim construction to the jury. This is especially true where, as here, the jury was instructed to apply the district court's claim constructions.” Id. at pp. 21–22.

· In Cephalon, Inc. v. Watson Pharma., Inc. , the Federal Circuit Court of Appeals reversed a district court’s holding of invalidity for lack of enablement stating, “Watson failed as a matter of law to show with clear and convincing evidence that Cephalon’s patents require undue experimentation to practice the invention.” Slip op. at p. 2. Throughout the discussion of enablement, the Federal Circuit highlighted that the burden is on Watson to show lack of enablement—undue experimentation—and to do so by clear and convincing evidence. The district court’s analysis was that, “the disclosures lacked teachings directed to formulating and co-administering two separate dosage forms . . . to achieve an effervescent reaction. The lack of disclosure of such methods of co-administration would, according to the court, necessitate undue experimentation to practice the invention.” Id. at p. 11 (citations omitted). Watson merely provided “[u] nsubstantiated statements indicating that experimentation would be ‘difficult’ and ‘complicated.’” Id. at pp. 15–16. The Federal Circuit found that these statements did not meet the standard of clear and convincing evidence to establish undue burden as opposed to reasonable experimentation. As such, the Federal Circuit reversed the district court’s holding of invalidity and remanded.

· The United States Patent and Trademark Office published the final rules and guidelines governing First-Inventor-to-File. (http://www.uspto.gov/news/pr/2013/13-10.jsp) There were two separate Federal Register publications and each is briefly discussed below. A more thorough discussion of each is forthcoming.

o Changes to Implement First Inventor to File Provisions of Leahy-Smith America Invents Act

This publication sets forth the changes that will be necessary to implement the First-Inventor-to-File standards. It addresses changes regarding each of the following:

§ The addition of definitions in the AIA to the rules of practice;

§ The submission of affidavits or declarations regarding: disclosures in priority disputes under the first-to-file standards and prior public disclosures;

§ Standards regarding a U.S. Patent or Published Applications having a prior art effect as of the filing date of a foreign priority application;

§ Elimination of the provisions regarding statutory invention registrations; and

§ Adoption of requirements for nonprovisional applications filed on or after March 16, 2013, that claim priority to or the benefit of the filing date of an application filed prior to March 16, 2013.

o Examination Guidelines for Implementing First Inventor to File Provisions of Leahy-Smith America Invents Act

This publication sets forth the changes the changes to the examination guidelines under the First-Inventor-to-File standard. The publication is also meant to clarify and respond to questions provided during the public comment period regarding whether there is a requirement that the mode of disclosure by an inventor or joint inventor be the same as the mode of disclosure of an intervening disclosure.

Supreme Court: NFL collective licensing of trademarks not immune from Section 1 antitrust scrutiny

Wed, 26 May 2010 15:52:00-0500

Monday the Supreme Court unanimously held the NFL's practice of collectively licensing the trademarks of all 32 individual teams is not immune from antitrust scrutiny under Section 1 of the Sherman Act. The NFL argued that because the marks are all licensed through a single entity, NFL Properties, there was no "contract, combination, . . . or conspiracy" under § 1, and therefore there could be no antitrust problem.

The Court disagreed. The Court first observed the question of whether there is a "single enterprise" is not dependent on the specific legal structure of the entities. As stated by the Court (internal citations omitted):

The relevant inquiry, therefore, is whether there is a "contract, combination . . . or conspiracy" amongst "separate economic actors pursuing separate economic interests," such that the agreement "deprives the marketplace of independent centers of decisionmaking," and therefore of "diversity of entrepreneurial interests," and thus of actual or potential competition.

Applying this framework, the Court held the existence of NFL Properties was not sufficient to prevent a "contract, combination . . . or conspiracy" and therefore avoid § 1 scrutiny. The teams are "sparately controlled, potential competitors with economic interests that are distinct from NFLP's financial well-being."

Despite holding the NFL's actions were subject to review under § 1, the Court did not pass on the merits, and noted some aspects of the NFL may provide a sufficient justification of its licensing practices under the Rule of Reason. Ultimately, it will be up to the district court to address the merits of the case and determine whether there is a § 1 violation.

Click below for more detail of American Needle, Inc. v. National Football League and links to media coverage of the case.

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Today's eCommerce lesson: There's no upside to using others' trademarks in your website meta tags

Tue, 22 Sep 2009 16:02:00-0500

Those who have a passing familiarity with website design are probably familiar with the concept of meta tags. Meta tags are pieces of data included in the HTML code of a webpage that provide information regarding the content of the page. You can view the code of a webpage you are visiting by clicking the "view" menu and, in IE, selecting "source," or in Firefox, selecting "page source."

Keyword meta tags have been used frequently in the practice of SEO, or search engine optimization. This essentially is an industry designed to get a webpage to show up higher in search results for various key terms and phrases in order to make it easier for the website to be found by customers. SEO practices frequently included loading the meta tags of a site with numerous keywords and phrases in an effort to improve a site's search performance for those terms.

Click below for a discussion of what happens when trademarks are used in connection with this practice, and why website owners would be best served avoiding such use.

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Second Circuit limits 1-800 Contacts; keyword advertising can be use in commerce

Tue, 14 Apr 2009 17:38:00-0500

In a recent decision, the Second Circuit reversed a district court's grant of a motion to dismiss in a trademark infringement case. The district court, relying on the Second Circuit's 2005 decision in 1-800 Contacts, Inc. v. WhenU.com, Inc., held Google's use of its Adwords and Keyword Suggestion Tool to cause advertising to appear when certain trademarked words and phrases are searched did not constitute a "use in commerce" as defined in § 1127 and required for a claim of trademark infringement under § 1114.

On appeal, the Second Circuit reversed, holding this practice did constitute a use in commerce. The court distinguished the 1-800 Contacts case, observing in that case, the advertisements were in response to visiting a website, not the entry of a trademark. Further, in that case, advertisers could not "purchase" a competitors keyword, so even if an advertiser wanted its ads to appear when a user visited a competitor's site, the defendant did not offer such a service.

In contrast, here Google not only keys the advertisements to the trademark itself (rather than as a result of visiting a website), but also permits anyone to pay to have its advertisements shown when a trademark is searched. The Keyword Suggestion Tool will also suggest that advertisers key their advertisments to trademarked terms. Based on these allegations (taken as true in the context of Google's motion to dismiss), the Second Circuit held there was a use in commerce, and reversed the district court's dismissal of the case.

More detail of Rescuecom Corp. v. Google Inc. after the jump.

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Ninth Circuit: Trademark claim against tribal corporation does not confer tribal court jurisdiction

Mon, 23 Mar 2009 08:58:00-0500

In a recent decision, the Ninth Circuit reversed a district court's grant of a motion to stay federal trademark claims against Indian tribal defendants pending a determination of jurisdiction by a tribal court. The trademark claims were for alleged passing off of cigarettes on the Internet, on the reservation of another tribe, and elsewhere. The district court ruled that there was at least a colorable claim to tribal jurisdiction under Supreme Court precedent and granted a stay of federal proceedings pending a determination of jurisdiction by the tribal court.

The Ninth Circuit reversed, holding there was not a colorable claim of jurisdiction in tribal court insofar as it implicated the plaintiff's federal trademark claim against the tribal defendants and its principals, members of the Yakama Tribe. Accordingly, allowing exhaustion of tribal remedies would serve no purpose other than delay. As a result, the court reversed the district court's decision and remanded for the case to proceed.

More on Philip Morris USA, Inc. v. King Mountain Tobacco Co. after the jump.

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Ninth Circuit: Copyright owner's ambiguous reservation of rights clarified with extrinsic evidence

Mon, 08 Dec 2008 15:51:00-0500

In a recent decision, the Ninth Circuit reversed a district court's grant of summary judgment that a copyright holder did not have standing to sue for copyright, trademark, unfair competition, and related declaratory judgment claims. The case involved the film Gone in 60 Seconds, produced and directed in 1974 by H.B. "Toby" Halicki, and remade in 2000. The key issue was the construction of a 1995 Agreement that provided an option to remake the movie, and assigned certain of Halicki's rights to Hollywood Pictures (a division of the Walt Disney Company and producer of the 2000 film), and more specifically what rights were reserved to Halicki's wife (who obtained Halicki's rights after his death). Based on the district court's construction of the agreement, the Plaintiffs did not have standing because they assigned all relevant rights in the Agreement, and specifically the rights to the remake of the famed Ford Mustang "Eleanor."

The Ninth Circuit reversed, holding the agreement between the parties lacked explicit details about what rights the plaintiff might have in a derivative work – namely a remake of Eleanor. However, the court found that the agreement was "reasonably susceptible to the interpretation" that the plaintiff had retained rights to the remake of Eleanor. When combined with other extrinsic evidence not considered by the district court, it was clear to the court that plaintiff owned the rights to remake Eleanor, and therefore reversed the district court's holding of no standing to bring the copyright claim.

The court also highlighted several errors by the district court regarding trademark standing. First, the district court held the plaintiff did not have standing to claim infringement of the "Eleanor" mark because she did not own a registration in the mark. This was the wrong legal standard, because a plaintiff may also have standing to claim infringement if they are the owner of an unregistered mark. The district court also held that the plaintiff did not have standing to sue on the "Gone in 60 Seconds" mark because her registrations were for toy cars and baseball caps, while the alleged infringement was for use of the mark on actual cars. The Ninth Circuit noted the district court confused the test for infringement with the test for standing: to establish standing under the Lanham Act, a plaintiff must only demonstrate that they are the owner of a mark for any class of products. Because the plaintiff owned a registration for the Gone in 60 Seconds mark (even for different goods), she had standing under the Lanham Act to bring an infringement claim against the defendant.

More on Halicki Films, LLC v. Sanderson Sales & Mktg. after the jump.

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Ninth Circuit: Trademark claim over use in video game stripped away by First Amendment

Fri, 07 Nov 2008 15:15:00-0500

In a decision Wednesday, the Ninth Circuit affirmed a district court's grant of summary judgment that the producer of Grand Theft Auto: San Andreas had a First Amendment defense against a claim of trademark infringement. The plaintiff owns a strip club known as the "Play Pen" on the eastern edge of downtown Los Angeles. Grand Theft Auto: San Andreas includes, in its fictional city "Los Santos," a virtual strip club "Pig Pen" in the neighborhood "East Los Santos." The Ninth Circuit, agreeing with the district court, held the First Amendment defeated the infringement claim. Specifically, the court held the game's producers' "modification of [the] trademark is not explicitly misleading and is thus protected by the First Amendment."

More detail of E.S.S. Entm't 2000, Inc. v. Rock Star Videos, Inc. after the jump.

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Eleventh Circuit: Website in Tennessee using Floridian's trademark sufficient for jurisdiction

Fri, 17 Oct 2008 10:48:00-0500

In a decision last week, the Eleventh Circuit reversed a district court's dismissal of a trademark infringement case for lack of personal jurisdiction. The district court held that the allegedly infringing conduct, operating a website, was insufficient to warrant jurisdiction in the plaintiff's home state of Florida.

Here, the plaintiff was an individual, and the trademark allegedly infringed was the plaintiff's name. The court applied the Calder effects test, and held it was reasonable for the defendant, in using the plaintiff's name, to expect to be haled into court in the plaintiff's home state. The court characterized the alleged trademark infringement in this case as intentional, in that the plaintiff was "individually targeted" to "misappropriate his name and reputation for commercial gain." As a result, the Calder test was met, and personal jurisdiction was proper in Florida.

More detail of Licciardello v. Lovelady following the jump.

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USPTO announces trademark consistency pilot program

Mon, 29 Sep 2008 16:01:00-0500

In a notice today, the USPTO announced a new trademark consistency initiative. Under the new initiative, applicants who believe a substantive or procedural issue has been addressed in a "significantly different manner" in two applications may raise the issue for consistency review. This is subject to four requirements:

the request is based on co-pending applications or an application and a registration owned by the same legal entity or a successor in interest (e.g., assignee);
the registration(s) involved was issued less than one year prior to the date of the request;
at least one of the applications in the request is in a pre-publication status at the time of the request; and
the allegedly inconsistent treatment has already occurred.

While applicants are "encouraged" to raise the inconsistency issue with the examining attorney, they may now raise the issue for consistency review by providing a brief description of the inconsistent action and identification of the relevant applications. The pilot program is scheduled to last for one year.

To read the full notice, click here.

Second Circuit: MLB collective trademark licensing does not violate Sherman Act

Fri, 26 Sep 2008 11:15:00-0500

In a recent decision, the Second Circuit affirmed a district court's summary judgment to the defendant in an antitrust case regarding trademark licensing. The case involved the collective licensing setup of Major League Baseball Properties ("MLBP"). The plaintiff was a licensee of MLBP. The court held the centralized licensing agent for all Major League Baseball teams did not violate § 1 of the Sherman Act.

The plaintiff argued the agreement should be either per se illegal or subject to "quick look" rule of reason analysis. The court rejected both of these contentions, instead applying traditional rule of reason analysis. The court's lengthy opinion held that MLBP does not depress any collectibles market or violate antitrust provisions through its centralized licensing structure and equal apportionment of licensing revenue to each baseball club.

More on Major League Baseball Props., Inc. v. Salvino, Inc. after the jump.

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Second Circuit: If you want a court to order the USPTO, ask in your pleadings, not after you win

Thu, 25 Sep 2008 15:18:00-0500

In a recent decision, the Second Circuit affirmed a district court's decision in a trademark case not to enter an order pursuant to 15 U.S.C. § 1119. § 1119 permits a court to enter an order regarding registrability and cancellation of marks at the USPTO. The prevailing defendant asked the district court to order the USPTO to dismiss a related cancellation proceeding. The party had not requested an order under § 1119 in its counterclaims, but instead sought it by way of a Rule 59(e) motion to amend the final judgment in the case. The district court denied the motion, concluding the defendant could simply raise the issue as a matter of issue preclusion.

The Second Circuit affirmed. The court held there was no abuse of discretion in denying the Rule 59(e) motion. Further, the court noted § 1119 is permissive, such that the court was not required to grant such relief.

More detail of Empresa Cubana del Tabaco v. Culbro Corp. after the jump.

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Seventh Circuit: Several likelihood of confusion factors favored plaintiff, no summary judgment

Mon, 22 Sep 2008 14:06:00-0500

The Seventh Circuit recently reversed a district court's summary judgment for the defendant in a trademark infringement case. The district court held no reasonable fact finder could find the marks likely to be confused.

On appeal, the Seventh Circuit reminded us that the test for likelihood of confusion is not simply whether consumers will confuse two marks, but whether upon viewing the junior mark a consumer will be likely to associate the product or service with the source of the products or services of the senior mark. In other words, the relevant query is whether consumers will believe that goods/services offered under the junior mark are sponsored, endorsed, or otherwise affiliated with the senior trademark owner. Applying this standard, the court held there was at least a genuine issue of fact regarding likelihood of confusion, and reversed the grant of summary judgment.

More detail of AutoZone, Inc. v. Strick after the jump.

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Seventh Circuit reverses trademark damages award in default judgment because wrong standard applied

Mon, 22 Sep 2008 10:02:00-0500

The Seventh Circuit recently reversed the amount of damages in a district court's entry of default judgment in a trademark infringement dispute. At issue was whether the Plaintiff was entitled to additional relief on the grounds that the district court applied the wrong standard to its claim for an accounting of profits. The district court found the plaintiff's damage request to be "clearly excessive" and that it could not "be ascertained with reasonable certainty."

The Seventh Circuit reversed, finding that the claim at issue was a request for an equitable accounting of profits. The proper standard for this type of damages claim placed the burden on the defendant to prove any reduction in damages, and the plaintiff's burden was only to show gross income on goods and services bearing the infringing mark. Because the district court applied the wrong standard, the court reversed and remanded for a redetermination of the proper award.

More on WMS Gaming Inc. v. WPC Gaming Prods. Ltd. after the jump.

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Tenth Circuit: District court's internally inconsistent findings lead to remand

Fri, 12 Sep 2008 13:34:00-0500

In a decision last week, the Tenth Circuit reversed a district court's ruling of no trademark infringement. The district court, applying the Tenth Circuit's six likelihood of confusion factors, initially stated that three factors favored the plaintiffs, two were neutral, and one favored the defendants, but in its conclusion, stated that only one factor favored the plaintiff, with the remainder of the factors neutral or favoring the defendants. The district court also noted it was "reluctant" to find infringement where the allegedly infringing mark incorporated one defendant's middle name.

The Tenth Circuit reversed, noting the inconsistency in the district court's findings and that such inconsistencies constitute clear error. The court further noted that while courts are "generally reluctant to enjoin an individual from using their own name," this reluctance does not extend to situations where there was "an attempt to deceive the public." Here, the district court specifically found the defendants chose their mark to advantage of the plaintiff's goodwill, and thus any reluctance to find infringement was inappropriate.

More on The John Allan Co. v. The Craig Allen Co. after the jump.

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First Circuit: Don't expect to win on appeal if you admit 7 of 8 likelihood of confusion factors

Tue, 02 Sep 2008 09:20:00-0500

In a decision Friday, the First Circuit affirmed a district court's summary judgment of trademark infringement and an associated award of the defendant's profits and attorney fees to the plaintiff. The defendant used the plaintiff's registered marks in both the metatags of its website as well as in white text on a white background in the body of the site in an effort to cause consumers searching for the plaintiff's marks on an internet search engine to be more likely to go to the defendant's website instead. Over the course of discovery, the defendant essentially admitted that seven of the eight Pignons factors weighed in favor of the plaintiff, and accordingly the district court granted summary judgment, awarding the plaintiff an equitable share of the defendant's profits and attorney fees.

The First Circuit affirmed, holding that even if the final factor, evidence of actual confusion, was neutral or favored the defendant, it was not error for the district court to grant summary judgment for the plaintiff given the admissions on the other seven factors. Further, the court held the award of profits was proper, as the plaintiff only had to prove the defendant's gross sales under 15 U.S.C. § 1117(a). Because the defendant did not offer evidence of its costs, the district court's award of profits was proper. Further, the award of attorney fees was not an abuse of discretion, given the defendant's admission that it intentionally used the plaintiff's marks in order to divert traffic to its website.

This is an instance where companies would do well to remember that while how search engines work is generally secret, it is widely believed that metatags have no effect on search engine ranking, although some search engines may use them for indexing purposes. However, if the point of their use is to increase the site's position in the search results (as it usually is, and was in this case), they are basically useless and, as shown here, a potential basis for liability.

More detail of Venture Tape Corp. v. McGills Glass Warehouse after the jump.

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