Thursday, April 23, 2015

No Registration for Highly Descriptive -- Generic -- Trademarks

The Trademark Trial and Appeal Board (TTAB) confirmed again two days ago what we should all know, that generic trademarks will not be allowed to register. In In re Meridian Rack & Pinion dba, the applicant sought registration of "" for an online auto parts retail store service. The TTAB refused to allow registration. The opinion points out that marks that are so descriptive as to be generic cannot register as trademarks. 

Generic marks, observed TTAB, are "common names that the relevant purchasing public understands primarily as describing the genus of particular goods or services." The important issue turns on whether the consuming public views the applied-for trademark as constituting the "central focus" or "key aspect" of the service set out in the application.

The TTAB "has often held that a term that names the 'central focus' or 'key aspect' of a service as generic for the service itself."

The TTAB opinion finds as generic for the service of operating an online retail store where consumers can buy auto parts. The opinion gives other examples of applied-for trademarks that were previously rejected for genericness, either because the mark describes the genus of the entirety of the goods or services, or describes the genus of the key element of the goods or services:

  • BUNDT for a cake mix
  • ATTIC for a sprinkler system used in attics
  • CHOCOLATE FUDGE for a diet soda flavored drink
  • HOTELS.COM for an online hotel reservation system
  • TIRES TIRES TIRES for retail tire stores
  • CANDY BOUQUET for candy gift packages
  • RUSSIANART for the sale of Russian artwork
  • MATTRESS.COM for online retail sales of mattresses
  • LAWYERS.COM for online information about law and lawyers
  • ADVERTISING.COM for online advertising services

Tuesday, April 21, 2015

Skyrocketing Patent Filings in the Eastern District of Texas

One would think that the propensity of the Federal Circuit in mandating transfer of patent cases out of the Eastern District of Texas (Tyler, Texarkana, Sherman, Marshall, Lufkin and Beamont, Texas) would cause a slow down in new patent case filings in that district. Indeed, out of apparent exasperation with what it describes as an "unrestrained and improper" use of mandamus by the Federal Circuit, EON Corp. IP Holdings, a patent troll, filed a petition for writ of certiorari to the Supreme Court seeking review of perceived mandamus abuse. That petition was denied yesterday.

But EON has it all wrong. Whether or not the Federal Circuit is overly aggressive in compelling the transfer of patent cases out of the Eastern District of Texas, the fact remains that this one judicial district is the recipient of more new patent case initiations than any other individual federal district in the country.

The administrative arm of the U.S. Courts published recently its annual statistics for the period ending September 2014. Regarding patent cases, the numbers show that there has been a skyrocketing increase in new patent cases filed in the Eastern District of Texas during 2014, which continues an ongoing trend. Here are the numbers:

Eastern District of Texas - New Patent Case Filings By Year
(period ending September 30)

2011     2012     2013     2014

738       1061     1386     1620

A line chart is revealing:

There has been over a 119% increase in new patent case filings in the Eastern District of Texas during the past four reporting years. No other judicial district has received this much new business from patent plaintiffs. Indeed, out of 5,686 new patent cases filed nationwide in 2014, this one district received 28% of these new filings. 

So, whether or not EON is unhappy, it appears that plenty of other plaintiffs are satisfied with the Eastern District of Texas.

Monday, April 20, 2015

THE SLANTS: No Registration for a Disparaging Trademark

The Slants found no respect at the federal trademark office, and now they have no respect from the Federal Circuit Court of Appeals.

The Asian American rock music group The Slants has sought to obtain a U.S. trademark registration for THE SLANTS for some time. But the group was turned down initially by the federal trademark examiner under a Section 2(a) finding of disparagement.

The federal trademark law prohibits registering a mark that "consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute."

The trademark examiner determined that the mark would be disparaging to people of Asian descent. The group appealed to the Trademark Trial and Appeal Board (the Board), which upheld the examiner's rejection, stating that "it is abundantly clear from the record not only that THE SLANTS ... would have the 'likely meaning' of people of Asian descent but also that such meaning has been so perceived and has prompted significant responses by prospective attendees or hosts of the band's performances."

I wrote about the question of registering THE SLANTS as a potential disparaging trademark in my January 7, 2015 blog post.

The band appealed the Board's refusal to register to the Federal Circuit, and today the appellate court affirmed the refusal. In a unanimous opinion, the Federal Circuit panel had little problem addressing the band's contentions under established trademark law. The band argued that the mark, THE SLANTS, is not disparaging. But the Federal Circuit agreed with the Board's finding that one meaning of the term "slants" refers to people of Asian descent, and that this meaning may be disparaging to a substantial composite of these people.

The band raised several constitutional issues, all of which were rejected by the Federal Circuit. The band argued that the refusal to register violated its First Amendment free speech rights in that the refusal suppresses the band's expression. The court, however, pointed out long standing case authority that a refusal to register is not a prohibition of use, and that the band can continue to use the mark and exercise its expression without a registration.

The band next argued that the standard to determine whether a mark is scandalous or disparaging is vague. But the Federal Circuit, while acknowledging that it may be "inherently difficult in fashioning a single objective measure like a substantial composite of the general public from the myriad of subjective viewpoints," nonetheless determined that the standard was not unconstitutionally vague.

The band argued that it was deprived of due process, arguing that the trademark office applies the disparagement standard arbitrarily and without clear guidelines in that the PTO has registered other marks that contain slurs against homosexuals, such as DYKES ON BIKES. But the Federal Circuit pointed out correctly that the band had a full opportunity to prosecute its trademark application and to appeal the refusal to register, so its procedural due process rights were not denied.

Lastly, the Federal Circuit addressed the band's contention that the rejection of its trademark application violated its equal protection rights. Here, the band argued that the trademark examiner rejected its application based on the race of the band members. The court, however, determined that the refusal to register was not based on the band's ethnicity but on the disparaging use of the term. The court observed that the use of the same term in the same manner by an all white band would receive similar treatment.

Friday, March 13, 2015

Pi Day

Image result for pi

March 14th is PI day. As in π. As in the ratio of the circumference of a circle to its diameter. As in  22÷7. As in 3.14.15...

In the 13th century, the infinite number pi was calculated by the mathematician Ludolph van Ceulen to 35 digits. Here is a website that expresses pi to a million digits. Computers have determined pi to a trillion digits, apparently (but who knows for certain!). 

And special pi occurs at the time 9:26:53 (both a.m. and p.m.) on March 14th, when we'll pass through time reflected in the first ten digits of pi: 3.141592653 ... These calendar and time numbers will not be repeated for 100 years. So enjoy tomorrow at 26 minutes and 53 seconds past 9 a.m. and 9 p.m.

How many digits of pi did you memorize in school? How many do you still remember? 

Tuesday, March 3, 2015

A Valid Service Mark Requires Actual Service

The Federal Circuit determined for the first time that the validity of a registration for a service mark requires both that the applicant publicly offer the service and actually render the service at least as of the date of the application. Offering services under a service mark without actually rendering the service will not support registration.

In Couture v. Playdom, Inc. decided yesterday, the applicant filed a use-based application for the service mark PLAYDOM, and submitted as a specimen his webpage that provided:
Welcome to We are proud to offer writing and production services for motion pictures film, television, and new media. Please feel free to contact us if you are interested:
The website included this disclaimer: Website Under Construction.

The applicant did not actually render any offered services until well after the application was filed. The registration eventually issued. Thereafter, a competing service provider sought to register the same service mark PLAYDOM for the same writing and production services. The competing service provider filed a petition to cancel the registered PLAYDOM mark, arguing that the applicant had not done anything other than advertise and offer his service at the time the application was filed. The cancellation was allowed by the TTAB and, following appeal to the Federal Circuit, the TTAB's cancellation was affirmed.

The Federal Circuit observed that it had not previously addressed whether the mere offering of a service, without actual rendering of the service by the application filing date, is sufficient to constitute "use in commerce under Lanham Act §45." But the Court now confirms that use in commerce of a service mark requires both that the mark be publicly "used or displayed in the sale or advertising of services" and that the services must actually be provided. The bad news is that the first applicant lost his registration because he had not provide the service by the application filing date. The double bad news is that he lost his registration to a direct competitor.

Triskadekaphobia All Over Again

Those sufferers of triskadekaphobia will experience a double dose of Friday the 13th this month, and a triple dose this year. There is a Friday falling on March 13, as there was a Friday falling on February 13. And there will be another Friday falling on the 13th during November this year.

Image result for 13

The last time Friday the 13th fell on two consecutive months was six years ago in 2009. Prior to that, it occurred in 1998. This double whammy can only occur in a February - March combination, and only during certain non-leap years. No more than three can occur during any one year. For more information on how Pope Gregory XIII's calendar causes this interesting phenomenon, click here.

Wednesday, February 18, 2015

Intel Is The Top Contributor To The Linux Kernel

The Linux Foundation reports today that Intel is now the top contributor to the Linux kernel. To place this in a bit of perspective, the foundation reports that "Since 2005, some 11,800 individual developers from nearly 1,200 different companies have contributed to the kernel." The foundation further reports that since 2011 Linux open source software has been deployed in more computer systems than Windows software. More information concerning Linus Torvalds is available on my prior post, here.

Presently, the top contributors to the present kernel release are:

Red Hat
Texas Instruments
Vision Engraving Systems
Renesas Electronics
Free Electrons
FOSS Outreach Program for Women
Huawei Technologies

Tuesday, February 17, 2015

U.S. Design Patent Protection under the Hague Agreement

It has become a little bit easier to protect U.S. design. Plus, sometimes good things occur on Friday the Thirteenth!

This past Friday, February 13, 2015, the U.S. deposited with WIPO (the World Intellectual Property Organization) in Geneva its instruments of ratification to the Hague Agreement. As a result, the U.S. will become a full member of the Hague Union in 90 days, as of May 13, 2015. The Hague Union will grow to 62 countries and territories by this May 13th.

Once the Hague Agreement goes into force, U.S. design patent applicants (and non-U.S. applicants who seek design protection in the U.S.) will obtain two significant advantages. First, applicants can file a single design patent application with the PTO or with WIPO and thereby seek extended design protection with all other Hague Union members. Second, U.S. design patent protection will have a 15 year term from the date of grant for applications filed on or after May 13, 2015. 

Presently, and prior to May 13, 2015, it is not possible for a U.S. design patent applicant to obtain design protection outside of the U.S. without separately filing in all relevant jurisdictions. And presently, the term of a U.S. design patent is 14 years from date of grant.

The PTO has not yet issued rules of practice under the Hague Agreement, but final rules are expected from the PTO by May 13, 2015.

More information concerning the U.S. accession to the Hague Agreement is available here form the PTO.