Is Your Trademark Registration Stuck in the Past? A USPTO Pilot Program May Allow You to Modernize It

On Sept. 1, 2015, the United States Patent and Trademark Office (USPTO) rolled out a new pilot program that may help trademark registrants breathe new life into older registrations. 

Normally, once a trademark has been registered for particular goods/services, it is not possible to later amend those goods/services beyond the scope of the current identification.  But technology evolves, and goods or services may be phased out in favor of modern counterparts.  In the past, a registrant for a mark applied to outdated goods/services had to file a new application, thus giving up an earlier date of use.

Under the new pilot program, a registrant may petition the Director of the USPTO to amend the respective goods/services beyond the scope of the current identification.  But, the petitioner must show that it no longer uses the respective mark with any of the original goods/services and that the newly recited goods/services are the result of newly evolved technology in the manner or medium by which products and services are offered for sale or provided to customers.  The registrant must delete the old, original goods/services in favor of the newly evolved goods/services.

This pilot program is not available to those whose applications are still pending.  Also, it is not available to those who continue to use the subject mark with some or all of the original goods/services; registrants who use the mark on “old” and “new” goods/services must file a new application for the “new” goods/services.

The petition itself has certain specific filing requirements, including a request for amendment, fees, specimens, and dates of first use of the mark with respect to the amended goods/services.  The petition must be filed through the Trademark Electronic Application System (TEAS).  The procedural details can be found on the USPTO web site, and registrants unfamiliar with practice before the USPTO are recommended to rely on the services of an experienced trademark attorney.

In announcing this pilot program, the USPTO has suggested it is proceeding with caution to avoid causing harm to other users of a relevant mark.  Before an amendment under the program is approved, an examining attorney must perform a new search for conflicting uses.  Petitioners must agree to not file an affidavit or declaration of incontestability under §15 of the Trademark Act as to the amended goods/services for a period of five years from the amendment.  Also, once an amendment has been approved, it will be published by the USPTO and third parties who believe they may be harmed by the amendment will have a thirty day period in which to comment.

The USPTO has provided on its web site a number of example amendments that would be acceptable under this pilot program, as well as some that would not be allowed.  Key points to keep in mind are that the original goods/services are no longer in use due to the evolution of technology and that the new goods/services must pertain to the same subject matter as the original. 

As an interesting example, the USPTO points out that “streaming of audio material in the nature of music” in International Class 38 would not be an acceptable replacement for “phonograph records featuring music” in International Class 9.  The proposed use is to identify a telecommunications-provider service as opposed to identifying the source of content.  “Providing on-line music, not downloadable” in International Class 41 would be an acceptable amendment in this case.

In an era of rapid technological evolution, the USPTO’s pilot program offers trademark registrants a useful tool for preserving valuable rights.

Is Patentability Smothered by the “All Encompassing” Prior Art Reference?

Patent owners may welcome the Allergan, Inc. v. Sandoz, Inc. decision earlier this month when the Federal Circuit affirmed the validity of five patents relating to the pharmaceutical formulation Lumingan ® .01%. The Federal Circuit also affirmed that Hi-Tech Pharmacol Co., Inc. infringed at least some of those patents with their proposed generic solution.

Lumingan ® .01% is a bimatoprost ophthalmic solution used for the reduction of high eye pressure, also called intraocular pressure, in people with open angle glaucoma or ocular hypertension.

Others may find that the Federal Circuit has set the validity bar too high, however…

In the Allergan case, among their arguments, Appellants argued that the patents were obviously over prior art which teaches a compositional range which encompasses the narrower range recited in the patents.

The appeals court cited Galderma stating “where there is a range disclosed in the prior art, and the claimed invention falls within that range, a relevant inquiry is whether there would have been a motivation to select the claimed composition from the prior art ranges.” Galderma Laboratories, L.P. v. Tolmar, 737 F.3d 731, 37-38 (Fed. Cir. 2013). The appeals court reasoned “[i]n those circumstances, ‘the burden of production falls upon the patentee to come forward with evidence that (1) the prior art taught away from the claimed invention; (2) there were new and unexpected results relative to the prior art; or (3) there were other pertinent considerations.” Id. at 738. Ultimately, the appeals court concluded that there was no error in the district court’s finding that Allergan had produced ample evidence of teaching away and unexpected results, and that such evidence fully supported the district court’s conclusion of nonobviousness.

Notably, the cited prior art includes in their range of possible compositions, some compositions which are ineffectual and/or dangerous. Thus, some commentators have opined that the Federal Circuit may have set the bar too high for the proving of non-obviousness. In other words, what happens if prior art teaches a wide encompassing range of compositions which include effectual and/or safe compositions … Can the patent applicant or owner still show that an invention including a narrower range encompassed by the prior art range is not obvious and therefore patentable?

Practitioners may wish to look to the Allergan case for help. The appeals court stated “It may also be true here that ‘the disclosed range[s are] so broad as to encompass a very large number of possible distinctions’, In re Peterson, 315 F.3 1325, 1330 n.1 (Fed. Cir. 2003), such that they do not teach any specific amounts or combinations and that the burden of producing evidence of teaching away, unexpected results, and other pertinent second considerations did not shift to Allergan.” Ultimately, the appeals court did not decide this issue given the ample evidence produced by Allergan, but their dicta leaves the door open to those faced with challenges based upon the wide “all encompassing” prior art reference. Such patent applicants or owners may argue that they do not have to assume the burden of proof when the cited prior art encompasses such a very large number of combinations that the prior art effectively fails to teach anything specific.

Closing the U.S. Border Gates Against Infringing Imports

Could infringing imports be jeopardizing your intellectual property rights without your knowledge? U.S. Customs and Border Protection (CBP) may be a valuable resource to protect your registered U.S. trademarks and copyrights, trade name, and U.S. patents at the border gates.

These benefits and protections to IP owners do not automatically follow issuance of a U.S. patent, trademark registration, or copyright registration, however. IP owners must take affirmative steps.

CBP is the primary federal agency responsible for securing America’s borders. With more than 60,000 employees, CBP monitors U.S. borders at and between 328 ports of entry, including more than 95,000 miles of shoreline, 1,900 miles of border with Mexico, and 5,000 miles of border with Canada. On a typical day, CBP welcomes nearly 1 million visitors, screens more than 67,000 cargo containers, arrests more than 1,100 individuals, and seizes nearly 6 tons of illicit drugs. CBP is also armed with the legal authority to detain, seize, examine, and forfeit or destroy infringing goods, and can make infringement determinations, subject to appellate review by U.S. federal courts. CPB is not required to establish personal jurisdiction over the importing party or prove intent to infringe to take enforcement action.

In fiscal year 2014, CBP processed 31.6 million trade entries, and seized approximately $1.2 billion worth of goods believed to infringe U.S. IP rights. The commodities that CBP seized in connection with more than 23,000 seizures included apparel and accessories, consumer electronics, pharmaceuticals and personal care products, footwear, watches, jewelry, optical media, computers and accessories, labels, tags, toys, and other goods. CBP analyzed samples and found intellectual property rights violations in commercial products that included integrated circuits, networking devices, gaming devices, and cell phones. Approximately 63% of the seized goods originated in China.

In comparison, CBP processed more than $2.3 trillion in trade in fiscal year 2013, including nearly 25 million cargo containers. CBP conducted more than 24,000 seizures of goods that violated intellectual property rights, with a total retail value of $1.7 billion, representing a 38 percent increase in value from fiscal year 2012.

To take advantage of CBP’s formidable IP enforcement resources and intercept foreign pirated, counterfeit, or gray market goods at the border, intellectual property owners may record U.S. trademark and copyright registrations and trade names with CBP. Owners of U.S. trademark registrations may also apply for “Lever rule” protection to prevent parallel imports of gray market goods, which are branded goods that are purchased outside the U.S. and imported for sale into the U.S. without authorization from the U.S. trademark owner. Patent owners cannot presently record U.S. patents with CBP, but may be entitled to exclusion of infringing imports into the U.S. under Section 337 of the Tariff Act of 1930.

Trademarks

A trademark owner who has registered a trademark with the United States Patent and Trademark Office (USPTO) may apply to record the trademark registration with CBP, and may also apply for “Lever rule” protection against parallel imports or gray market goods. CBP primarily focuses its border trademark enforcement efforts on marks that have been recorded with CBP.

Trade Names

A trade name is the name under which a company does business. Trade names are not registered with the USPTO, but may be recorded with CBP if they have been used to identify a trade or manufacturer for at least six months. Notice of tentative recordation of a trade name is published in the Federal Register and the Customs Bulletin and Decisions (Customs Bulletin) to provide notice to the public and give interested parties an opportunity to oppose the recordation.

Copyrights

CBP’s border enforcement of copyrights is primarily concentrated on works of authorship covered under copyrights that are registered with the U.S. Copyright Office (USCO) and have been recorded with the agency.

Patents

Although a patent that is issued by the USPTO may not be recorded with CBP, the agency enforces exclusion orders issued by the U.S. International Trade Commission (ITC) pursuant to Section 337 of the Tariff Act of 1930 (19 U.S.C. § 1337), which provides relief to U.S. industries that have established the existence of unfair trade practices in importing. ITC exclusion orders are issued for findings of patent infringement, among other things. CBP has authority to exclude importation of articles that infringe a patent pursuant to an exclusion order issued by the ITC.

To harness the powers of CBP to close the border gates on infringing imports, consult with an experienced intellectual property attorney.

U.S. Supreme Court No Help to Google in API Copying Case

Back in October 2014, the U.S. Supreme Court was asked to take up the appeal for Oracle v. Google (Oracle America, Inc. v. Google Inc.). This case offered the Supreme Court a chance to weigh in on the IP protections afforded software. After receiving the requested input from the Solicitor General, the Supreme Court opted to follow the Solicitor General’s suggestion and denied the writ of certiorari. This leaves standing the Federal Circuit Court’s decision that the “declaring code and the structure, sequence, and organization of the 37 Java API packages” were entitled to copyright protection.

The Solicitor General’s recommendation was premised on several factors included a rejection of a distinction between declaring code and implementing code and an assertion that many of the anti-copyright arguments presented would be better handled as a matter of fair use.

Many of the arguments presented in support of the notion that APIs should not be covered by copyright included an implicit distinction between declaring code and other elements of the software. The Solicitor General’s brief did away with this idea by using a statutory interpretation of ‘computer program’ to include both declaring code and implementing code. The brief goes as far as to state: “Nothing about the declaring code at issue here materially distinguishes it from other computer code”.

The argument for denying copyright for declaring code asserted that declaring code was a functional aspect of the program designed to perform a process and that copyright protections could not extend to cover such aspects. By doing away with the distinction between declaring code and other parts of the program, the Solicitor General’s brief relies on the express intent of the statute to provide copyright protection for computer programs despite their functional aspects. This bolsters the proposition that APIs are copyright eligible as they are simply another piece of the program. Thus, even though the declaring code may have functional aspects it is still entitled to copyright protection like any other computer program or portion thereof.

The Solicitor General’s brief provides some guidance as to further consideration of APIs. The brief notes that arguments directed to interoperability should be directed to a fair use defense rather than attempting to carve an exclusion from copyright protection. However, the discussion notes that in this case the copying was not done so that the Android platform was interoperable with the Java platform or programs. Instead, the copying was done “so that programmers familiar with the Java platform would be able to switch over to the Android platform without having to learn entirely new commands for invoking commonly used methods” which would appear to undermine any fair use claim based on interoperability.

The Supreme Court in refusing the appeal has provided the opportunity for a more suitable case to come before it which may allow the Court to better address the underlying distinctions between copyright and patent protections available to software. While some would have preferred a clear signal from the Court at this time, the lessons learned from the Solicitor General’s brief may provide a potential roadmap as to how to avoid some of the pitfalls from Oracle v. Google. Although Google still has the chance to argue their fair use defenses in the lower courts this case will likely be focused on copyright issues from here on out.

What do you mean I can't display the picture I bought? Photographs and Copyrights

So you have a photograph which you purchased some years ago of a beautiful early morning harbor view.  This photo would be perfect as a wall display in your commercial real estate office on the waterfront.  You have an enlargement made of the photograph and hang it in your office for all to see.

Not long after the picture is put on display, you receive an email from an attorney representing the photographer who asserts that you have no right to publicly display the photograph or to make an enlarged version of it, and asks that you immediately take down the photograph and destroy it. 

Is such a demand legitimate?    Yes it is.              

The photograph you purchased is subject to copyright protection which has a variety of associated rights.   Your purchase of the photograph provides ownership of the physical copy but not the associated copyright.  The purchase of the photograph does not give you any rights of copyright unless specifically conveyed in a written agreement between you and the copyright owner, in this case the photographer. 

As the owner of the photograph, you may display the photograph for your own pleasure, such as display in your home or private office.  But public display of the photograph is a right of copyright reserved to the copyright owner unless separately contracted for.

What to do now?  Work out a settlement with the photographer which may entail paying some amount for the right to commercially display the photograph.  Or comply with the demand to take down the photograph and destroy the copy.

Photographs, works of art and other copyrightable works are protected by copyright from the moment they are created.  The photographer has the exclusive right to reproduce his or her photograph and to control use of the photograph.  Without permission from the photographer (or other copyright owner), you cannot copy (in hard copy or electronic form), sell, distribute, publicly display or create derivative works of the photograph.

If you are contracting with a photographer to create photos for you, you should be mindful of the rights of copyright you wish to acquire in addition to a physical copy of the photograph.  You may wish to acquire all rights of copyright or just some.  It is often easier to negotiate a transfer of copyright interest at the time of engaging the photographer when he or she is more likely to be eager for the business, rather than later when circumstances may make the transfer of copyright less appealing.

The situation is similar for other works of art.  Laws in other countries are generally similar but of course individual country laws must be reviewed in specific situations.

If you acquire a photograph from a stock photo organization, the rights for use of that photograph are usually specified in the terms of sale or license.

There can be many nuances to transactions involving photographs and other artistic or visual works, and therefore prior consultation with an experienced IP attorney would be prudent.

The Adoption of a Competitor's Trademarks as Search Terms In Google AdWords May Not Be Such a Great Idea

Google AdWords and similar services display highly prioritized links as search results when someone enters a predetermined search term into a search engine.  It wasn’t long after such services became available that companies realized that by using trademarks and product names of a competitor as search terms with such services, a company could greatly increase the likelihood that a party performing an online search for the competitor’s products or services could be diverted to the website for the potential economic benefit of one other than the trademark owner.   The practice of using a competitor’s trademarks and product names in this manner comes with some risk.

Typically, trademark infringement results when the use of a mark by one company in conjunction with its own products or services is reasonably likely to result in confusion in the marketplace with the use of a similar mark by another having superior trademark rights.  The question of whether there is a likelihood of confusion has typically been viewed as of the time of the acquisition of a product or service.  However, under a legal doctrine known as “initial interest confusion” courts have found parties liable for trademark infringement in circumstances where a potential consumer was initially confused as to the source of origin of the product or service, but where no confusion existed as of the time of the ultimate acquisition of the product or service.

In view of the adoption of the initial interest confusion doctrine by some courts, there is a risk that the use of the trademarks or product names of a competitor as search terms to increase the potential economic benefit of another could result in a cause of action for trademark infringement. For this reason, such practices are generally not recommended.

GOOGLE and ADWORDS are trademarks of Google Inc.

IP Owners Beware! A Con Artist May Be Behind that Official-Looking Letter

The World Wide Web promised an infrastructure for the free flow of information.  For Intellectual Property (IP) owners, this meant free, instant access to patent and trademark administrative details and status.  Unfortunately, the same types of people who call at inconvenient hours, professing to be from the “Revenue Service,” and demanding payment of a (fictitious) delinquent debt are using the same Web resources to target patent and trademark owners.  Despite efforts aimed at raising awareness in the IP community, scammers continue to produce sophisticated, official-looking communications that sometimes succeed in trapping the unwary.

Trademark owners have been the targets of several types of fraudulent schemes.  Here are some of the more common ones:

“Greetings from [a foreign country].  We have been asked by company ABC to register the mark XYZ as their brand name and their domain name.  But, we noticed XYZ is similar to your brand name. Let us know if you gave them permission.” 

Company ABC is most likely fictitious.  If you write back saying you did not give ABC permission to pursue these registrations, you will be given the opportunity to pursue domain name and trademark applications in that country.  Even if legitimate filings result, you may be paying excessive fees.

“Greetings from the United States Trademark Registration Office (USTRO).  Upon payment of this invoice for $395, we will register your trademark XYZ with the U.S. Customs and Border Patrol.  In addition, we will monitor your mark with our proprietary search engine and alert you to possible third party infringement.  We look forward to your prompt payment.”

“USTRO” sounds a lot like “USPTO,’ the acronym for the United States Patent and Trademark Office.  While the USPTO is a U.S. government agency, the USTRO is a private firm in Los Angeles offering expensive and possibly unnecessary registration services.  Variations of this scam have come from sources such as the “United State Trademark Agency” or the “Trademark Monitoring Service” with offers to monitor the progress of your trademark application for you or to provide trademark renewal reminder services, neither of which have much value and would be duplicative of the efforts of your trademark counsel.

“You are cordially invited to have us list your trademark in the TM REGISTER / The International Trade Marks and Service Marks Catalog.”

This is an invitation to extract a hefty sum from your bank account in exchange for the opportunity to include your trademark in a publication that no one looks at and that has no value.

On the patent side, there have been similar efforts:

“The international patent application cited above has been Published in the WIPO Gazette.  This form is an offer to register your international patent application in our internet database and access to all database services.”

This offer appears in the form of a very official-looking invoice from “World Patent & Trademark Services,” or “World Patent & Trademark Organization,” or “World Intelligent Property Office,” etc.  The latter is particularly devious because of its similarity to the legitimate “World Intellectual Property Office” (WIPO).  When you file an international patent application, it does get published in the WIPO Gazette, so that part of their letter is true.  In fact, that’s where they got the administrative details of your international patent application that may be printed in their letter, perhaps along with the abstract or a representative figure from your application.  It may even have a fancy seal embossed into it.  Those who are taken in by this “offer” may have their international patent application included in a database that no one looks at, in exchange for hundreds or even thousands of dollars.

We’ve seen fewer attempts to take advantage of U.S. patent applicants with similar offers, but vigilance is always called for. 

The bottom line: if you’re in doubt, contact your IP attorney with any suspicious correspondence - he or she will be able to quickly assess its validity and help you avoid such costly and valueless schemes.