What is trademark dilution?

Monday, 09 April, 2012 06:00 Written by Aaron Thalwitzer 0 Comments
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Does this dilute Starbucks' mark?

Trademark dilution gives the owner of a trademark standing to prevent others from using that mark in a way that would lessen the mark’s uniqueness. Usually this comes up when an unauthorized user puts the trademark on products generally unrelated to those of the trademark owner. For example, a famous trademark used by one person to refer to bottled water might be diluted if another company began using a similar mark to refer to pads of paper. Dilution is a specific type of trademark infringement that only applies to famous marks. Ordinary marks can be infringed only when there exists a likelihood of confusion as to the source of the product or service being identified by the allegedly infringing use. Non-famous marks are intrinsically unlikely to create confusion in unrelated markets. Famous marks, on the other hand, have a vast potential for confusion since it is inherently well-known by consumers. The idea is that consumers will assume that the diluting user has is affiliated with the owner of the mark, even if product or service is being sold in an entirely different market.

A diluted trademark loses its capacity to symbolize a single source. But, to qualify for dilution protection, a mark must be unusually strong. Many “brand names” would qualify, especially the ones with unique or made-up names like Coca-Cola or Motorola, as opposed to marks using existing words or surnames like Apple or Zenith.

Dilution protection was previously used to attack domain name infringement of trademarks, i.e. cybersquatting. However, the Trademark Dilution Revision Act of 2006 overturned the Supreme Court decision in Moseley v. V Secret Catalogue, Inc., 537 U.S. 418 (2003). Moseley required the plaintiff needed to prove actual dilution under the Federal Trademark Dilution Act (“FTDA”). The TDRA only requires the plaintiff to show the defendant’s mark is likely to cause dilution, but reduced the scope of marks falling under its protection by requiring that marks be nationally well known to qualify for protection.

In a well-known example, Wolfe’s Borough Coffee, Inc. sold its coffee under the marks “Charbucks Blend” and “Mr. Charbucks,” Starbucks Corporation sued for dilution, claiming that Wolfe’s blurred and tarnished their marks. The Second Circuit Court of Appeals decided that marks need not be “substantially similar” for dilution to occur when other factors supporting a finding of dilution, such as the distinctiveness of the famous mark and the degree of its recognition, were present. The court found that these other factors may be sufficient to support a dilution claim and remanded the case to the district court in order to determine whether dilution had in fact occurred.

The TDRA requires courts to consider the following factors when analyzing whether dilution by blurring has occurred:

  1. the degree of similarity between the mark and the famous mark,
  2. the degree of inherent or acquired distinctiveness of the famous mark,
  3. the extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark,
  4. the degree of recognition of the famous mark,
  5. whether the user of the non-famous mark intended to create an association with the famous mark, and
  6. any actual association between the non-famous mark and the famous mark.

15 U.S.C. §1125(c)(2)(B).

In another post, we will explore defenses to claims of dilution, in case you just can’t resist tempting fate when deciding on a mark for your product or service.

Attorney Aaron Thalwitzer practices civil litigation and intellectual property law in Melbourne, Brevard County, Florida.

Does My Patent Infringe On Another Patent?

Friday, 06 April, 2012 05:45 Written by Mark Malek 0 Comments
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By: Mark R. Malek

My last article discussed the possibility of obtaining a patent, but that the patent may still infringe on the claims of an existing patent.  Yes, this is a rare situation, but one that is possible nonetheless.

The scenario that was laid out in the last article indicated that you have invented a chair with five legs.  The clear advantage is that this chair is much more stable than the typical chair that you normally sit on with four legs.  You have now filed a patent application on your chair with five legs.  During the examination, the Examiner has cited a chair with four legs as prior art.  Although the Examiner allows your patent, the Examiner indicates in the “reasons for allowance” that none of the cited prior art discloses the advantageous fifth leg and, therefore, the claims in your patent application define over the cited prior art.

Fantastic – you now have a patent.  You now also start manufacturing and selling your chair with five legs.  All of a sudden, you one day receive a letter from the owner of the patent on the chair with four legs.  The patent owner is accusing you of infringing on the claims of the patent, and instructs you to cease & desist from further infringement.  The letter explains that your chair, although it has five legs, still infringes on the claims of the patent.  It goes on to specifically indicate that your chair has four legs, and other stuff, i.e., a fifth leg.

Now you must engage in an investigation to make sure that the claims of the letter are founded.  You probably go to your favorite website on intellectual property, Tactical IP, or even your other favorite website on intellectual property, LegalTeamUSA, you will read one of my articles about what it takes to infringe a patent.  In the above article, it was noted that in order to infringe a patent, you must meet the claim limitations of at least one of the claims.  In other words, your invention has to include all of the elements of at least one of the claims in the patent.  You quickly figure out that your chair with five legs does meet the claim limitations.  Now what?

Now you engage in some sort of settlement negotiation that will hopefully end in a mutually beneficial license for you to continue manufacturing and selling your very lucrative chair with five legs.  You also do some investigation into the success of the patent on the chair with four legs.  Perhaps there is a cross licensing opportunity here.  I will discuss cross licensing in another post.  In short, cross licensing is where you grant a license to the owner of the patent on the chair with four legs a license to your patent so that the four leg chair patent owner can make chairs with five legs, and the four leg chair patent owner grants you a license so that you can continue to manufacture and sell your five leg chair patent.  Much of this is also laid out in my article about the various ways to make money from your invention.

Now you are asking how this could have been avoided.  The answer is a clearance search – also known as a freedom to operate search.  These searches are quite thorough and quite expensive.  This is a really good article on patent searches on IPWatchdog.  I will go into more detail about clearance searches in another post.  Until then, happy inventing!

GINGRICH WITH THE UPPERHAND IN COPYRIGHT INFRINGEMENT CASE?

Thursday, 05 April, 2012 06:00 Written by danieldavidson 0 Comments
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By Daniel Davidson

On January 31, 2012, I reported that, like many others before him, Newt Gingrich was sued for copyright infringement by Frank Sullivan.  Sullivan is the co-author, and former member of Survivor, of the rock ballad, “Eye of the Tiger.”

Gingrich, sued for copyright infringement for his use of the rock song as entrance music at some of his presidential nomination rallies, has finally responded to the complaint filed by Rude Music, Inc.  As I predicted in my last post, a major defense to the allegations is that Newt’s campaign purchased an ASCAP license which would allow for him to use songs, such as “Eye of the Tiger,” that are affiliated with ASCAP.  Why would you need any other defense?  A license is a license.

Well, the response didn’t stop there.  They also included that Jim Peterik, the only other co-author of the song, has been very vocal in his opposition to the lawsuit.  Even quoting him as saying, “’Eye of the Tiger’ as a ‘motivational’ song which he felt was appropriate for use in motivating people into action like voting and to ‘shake ‘em out of their doldrums.’”

I had commented in my previous post that I was hoping to see this instance of copyright infringement go to the end so that it could answer the question of whether political candidates were covered under fair use when using songs at their campaign rallies.  John McCain and Charlie Crist settled their suits out of court, leaving the question unanswered, and it looks like the question will remain unanswered because, inevitably, the question going to be answered is whether there was a valid license to use the song.

To me it seems that this complaint was filed with the sole end game being to receive a monetary settlement.  With Sullivan jumping at the opportunity to follow the likes of Jackson Brown and David Byrne, he seems to have not done the homework.  If the ASCAP license exists, I could see the pages being turned on Sullivan, and him looking to settle this case.

Federal law allows for a prevailing party in a copyright case to collect attorney’s fees.  Therefore, if Rude Music goes down, they could be on the hook for Newt’s bill.  Although this is true, it is my understanding that judges are very hesitant in awarding attorney’s fees unless it can be shown that the lawsuit was frivolously filed.  In the case at hand, if Sullivan’s attorney’s fired off a cease and desist letter, and Newt’s attorney’s came back with a license, then the suit was filed anyways, there could be a better chance that Newt could collect his attorney’s fees and costs.

Patent Protection of Self-Replicating Tech: Will SCOTUS Weigh In?

Wednesday, 04 April, 2012 17:15 Written by Danie Roy 0 Comments
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Danie Roy

No, we aren’t talking about tribbles today. Today, we’re going to discuss soybeans. Okay, before I lose all the carnivores reading this, we’re actually talking about plants in general; the particular case we’re discussing (Bowman v Monsato) just happens to be about soybeans.

Tribbles are cuter than soybeans.

Before we start, let’s cover some plant patent basics. The USPTO website says that:

A plant patent is granted by the Government to an inventor (or the inventor’s heirs or assigns) who has invented or discovered and asexually reproduced a distinct and new variety of plant, other than a tuber propagated plant or a plant found in an uncultivated state. The grant, which lasts for 20 years from the date of filing the application, protects the inventor’s right to exclude others from asexually reproducing, selling, or using the plant so reproduced. This protection is limited to a plant in its ordinary meaning:

  • A living plant organism which expresses a set of characteristics determined by its single, genetic makeup or genotype, which can be duplicated through asexual reproduction, but which can not otherwise be “made” or “manufactured.”
  • Sports, mutants, hybrids, and transformed plants are comprehended; sports or mutants may be spontaneous or induced. Hybrids may be natural, from a planned breeding program, or somatic in source. While natural plant mutants might have naturally occurred, they must have been discovered in a cultivated area.
  • Algae and macro fungi are regarded as plants, but bacteria are not.

Now, for backstory: Monsato bioengineered a soybean plant that would be resistant to Monsato’s herbicide, Round Up. This soybean, colloquially described as “Round Up Ready,” was patented and sold to farmers, accompanied by a contract requiring farmers no not re-plant future generations of beans. The farmers could, however, sell those beans as food.

Bowman figured out that, if he bought the food beans and planted them, a funny thing happened: the beans produced the patented plants. He then saved the seeds from those harvests and continued planting. How, you ask? Surely they were mixed in with regular soybeans, you ask? Well, they were – but the Round Up Ready beans had become so popular that, in any given handful, a vast majority would be descendants of the patented plant. In fact, the beans are so popular that it’s difficult to buy any beans that AREN’T Round Up Ready. Even if regular beans were mixed in, those could be killed off by applying… Round Up.

Monsato figured out what was going on, and accused Bowman of, loosely defined, manufacturing plants that infringed on its patent. Bowman countered, claiming that he was not bound by a contract through Monsato, and the exhaustion doctrine should apply in this case.

The exhaustion doctrine in patent law is a bit like the first sale doctrine in copyrights: first unrestricted sale of an item exhausts the patentee’s rights to control over that item. In other words, by buying the beans from the food market (sale) without a contract from Monsato (unrestricted), Bowman believed he had a right to do with the beans as he pleased, including replanting indefinitely.

The Federal Circuit sided with Monsato, finding that Bowman infringed. The Supreme Court is requesting that the US Solicitor General weigh in before deciding whether to grant certiorari. This is a bit of a difficult situation, so getting a lot of opinions is, after all, a good idea.

On one extreme, advocated by Monsato, plants and other self-replicating patented technology should be exempt from the exhaustion doctrine. In this scenario, however, some poor kindergartener’s science project is going to be infringing.

On the other extreme, advocated by Bowman, Monsato might be entitled to all of ONE sale of ONE seed and theoretically no longer be in control of its invention at all. I think we can all agree that that’s not horribly fair to Monsato, either.

The problem with self-replicating technology is that it is self-replicating. You only need one to have as many as you want, and there’s really no way to lay down  a hard rule without someone feeling slighted, and not without good reason. We’ll just have to wait and see if SCOTUS picks this one up.

Does trademark classification matter?

Monday, 02 April, 2012 06:00 Written by Aaron Thalwitzer 0 Comments
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Q:  If someone registers a mark in one class, can I register that same mark in a different class, does it really matter?

Yes.  The same words can relate to completely different goods or services without a likelihood of confusion in the minds of consumers. The examples are legion: Apple computers and Apple records, Delta faucets and Delta Airlines, the San Francisco Giants and the NY Giants. Choosing a trademark used in one class for use in another may be legal, but it isn’t always a good idea. The holder of the existing trademark may not like someone moving in on what they perceive as their territory — try to find one that’s truly unique without being descriptive.

Besides, the USPTO rejects about half of the submissions they receive, and a different classification alone won’t win the day — simply put, you should try harder to find your own mark. Additionally, a product’s trademark naturally extends to related markets, so if you insist on using an existing mark, at least make sure your product is in no way related to the existing product.

It’s important to remember that the 45 trademark classes are an artificial and sometimes arbitrary structure created, in part, to make it easier for trademark registrars like the USPTO more efficiently do their jobs. Courts have determined that the structure cannot limit an applicant’s or registrant’s rights. See 15 U.S.C. §1112 (“The Director may establish a classification of goods and services, for convenience of Patent and Trademark Office administration, but not to limit or extend the applicant’s or registrant’s rights.”); In re Inca Textiles, LLC (Fed. Cir. 2009) (“The PTO correctly points out that likelihood of confusion to the consuming public is independent of the classification manual, and that classification schedules do not alter the scope of the registration.”); Jean Patou, Inc. v. Theon, Inc., 9 F. 3d 971, 975 (Fed. Cir. 1993)(“[C]lassification is wholly irrelevant to the issue of registrability under section 1052(d), which makes no reference to classification.”).

As with many things trademark, the key is whether the goods or services offered are “related” to goods or services already on the market. The classification scheme is important but secondary. If consumers would result in relevant consumers mistakenly believing that the goods originate from or are associated with the same source. The proper inquiry is not whether the goods could be confused, but whether the source of the goods is likely to be confused.

My Invention Has All The Elements Of A Patent…And Then Some

Friday, 30 March, 2012 13:12 Written by Mark Malek 1 Comment
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By: Mark R. Malek

This is yet another article in the series of “questions that Mark Malek gets all the time when playing attorney at Zies Widerman & Malek.”  Every now and again, I get the phone call from a very creative person who has really gone above and beyond what most inventors do initially.  This person has laid out their invention in great detail, then has taken the time to do a little bit of prior art searching and, the following is the best part in the world – has actually taken advantage of a quick, free consultation that most patent attorneys offer (at least the ones at our firm do) to determine if they can move forward.

The details of the call are quite interesting, generally.  Normally, the client has identified a piece of prior art, and has figured out that their invention has every element identified in the patent that they have located, but that their invention adds a little bit more to it.  Now what?  Recall my article a couple of weeks ago where I indicated that it is perfectly acceptable to design around a patent.  There is a discussion about the steps you need to take to design around a patent during our conversation.  The thing is, however, that you can’t design around a patent by simply adding to it.

For example, let’s say that there is a patent out there for a chair that has four legs, a seating surface, and a back.  Let’s now say that the invention in question is a chair that has five legs, a seating surface and a back.  Let’s also assume that there is no other prior art out there that is at all related to this technology.  As my movie-quoting partners would now say “and then the space ship lands.”  Yes – that is a quote from one of the best comedies of all time, “City Slickers.”  Back to the story, however, the question to be answered now shifts around where does the inventor on the phone stand?  Has this inventor come up with something patentable?  Does this new invention read on the patent for the chair with four legs that the inventor uncovered?  The answer to both is YES!

Big help I am, right.  Here is the thing about it.  The invention for the chair with five legs still incorporates all the limitations of the patent on the chair with four legs.  Therefore, one cannot make the chair with the five legs without infringing on the patent on the chair with four legs.  Here’s the real rub – the invention on the chair with five legs may still be patentable.  Put your self in the Examiner’s shoes for a second.  The Examiner may have on his/her desk a patent application for a chair that has five legs.  During the Examiner’s prior art search, the only thing that shows up is a patent for a chair that has four legs.  The Examiner cannot seem to find any related prior art that is related to any five-legged device.  Therefore, the Examiner may decide to allow the case.

The next two articles that I will put up are related to this situation.  The first will be an analysis of the situation where you have a patent, but you may still be infringing on another patent – does having a patent gives you the right to manufacture the device that is covered by the patent?  The next article that I will post is directed to options when your patentable invention infringes a patent.

 

TRAYVON MARTIN’S MOTHER FILES TRADEMARK APPLICATIONS

Tuesday, 27 March, 2012 16:41 Written by danieldavidson 0 Comments
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By Daniel Davidson

Last week, in the midst of an ugly tragedy of lost life (no matter which way it is sliced or the amount of publicity it receives) Trayvon Martin’s mother, Sabrina Fulton, filed trademarks for “I Am Trayvon” and “Justice for Trayvon.”  With the help of Orlando attorney, Kimra Major-Morris, both trademark applications were filed with the U.S. Patent and Trademark Office on an intent to use basis for:

Digital materials, namely, DVDs featuring Trayvon Martin; Digital media, namely, pre-recorded DVDs, downloadable audio and video recordings, and CDs featuring and promoting Trayvon Martin; Digital media, namely, pre-recorded video cassettes, digital video discs, digital versatile discs, downloadable audio and video recordings, DVDs, and high definition digital discs featuring Trayvon Martin; Digital media, namely, CDs and DVDs featuring Trayvon Martin; DVD cases; DVD sleeves; DVDs featuring Trayvon Martin; Pre-recorded CDs, video tapes, laser disks and DVDs featuring Trayvon Martin.

Trayvon Martin, a student and son from Sanford, Orlando, abruptly lost his life on the night of February 26, 2012.  Since then, marches of protest have taken place due to the non-arrest of the man accused of pulling the trigger that night.  The death of the teenager has captured national attention due to racial implications and the Florida “Stand Your ground” law which allows for citizens to use deadly force in “self-defense.”  It has even brought the likes of Reverend Al Sharpton and Jesse Jackson to the Florida area.

The trademark applications are fueling more debate in the already oversaturated debate in Trayvon’s death.  Many supporters of George Zimmerman (the shooter) are saying that the mother is simply trying to cash in on the highly publicized name.  As was the case during the “Occupy Wall Street” outcry, many people attempted to gain monetarily from the movement.  Filing trademark applications for “Occupy Wall Street,” selling shirts on the internet bearing the moniker, and even rapper Jay-Z started to sell a derivative of the catchphrase, “Occupy All Streets,” on t-shirts.

With that, it is hard to jump to conclusions on any motive other than the family is attempting to preserve their rights in a name.  I mean, heck, the family of Bob Marley is constantly battling in court to keep others from exploiting Marley’s name and likeness.  From the looks of the identifications they filed the applications in (DVDs, CDs, Digital Media, etc.) they are preserving rights in possible documentaries released concerning the Trayvon Martin matter.

Nonetheless, there is also a question of whether an individual’s name can be trademarked?  In some cases it can be.  The name Michael Jordan is trademarked.  It is even trademarked by someone other than the basketball icon.  How is it that his name is trademarked?  Well, an individual’s name can be trademarked with 1) the consent of the individual, and 2) the name has become distinctive of a good or service.  In this case, I think the mother and her attorney will have a hard time overcoming a rejection by the trademark examiner that the mark is merely a surname or that it has not acquired distinctiveness.

Pharmaceutically Speaking: Supreme Court Remands Myriad

Tuesday, 27 March, 2012 16:32 Written by Danie Roy 0 Comments
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Danie Roy

The Supreme Court vacated the previous decision in Myriad and remanded the case back to the Federal Circuit to be retried in light of the recent Prometheus decision.  I’d be lying if I said I was surprised. If you over simplify, and I mean REALLY over simplify, Myriad and Prometheus are cases about diagnostic tests. However, Prometheus was a simple observation patent, while Myriad is significantly more complex.

I can’t claim to know much about the patents other than they involve isolating DNA to determine ovarian and breast cancer risk. Reading through what I could understand, however, the patents are directed to something significantly more complex and involved than the Prometheus patents.

What this case will really come down to is likely whether or not the patents are mere observation. If they are, they will likely be struck down. In either scenario, we will likely see this case back in the Supreme Court in a few more years, and Myriad will still be profiting from their patents in the meantime.

How Do I Protect My Trademark?

Monday, 26 March, 2012 06:00 Written by Aaron Thalwitzer 0 Comments
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After you register your trademark (you do have it registered, right?), you must also maintain your mark. It’s not tough. A little dusting, some lemon oil, and you’re good to go. The key is to make sure your mark, though distinct and hopefully popular, does not become generic. A mark is generic when it no longer identifies the source or origin of a product or service. If Cheerios became a true stand-in for circle-shaped oat-based breakfast cereal (I hope there’s such a thing as dinner cereal!), it would be generic, and other manufacturers could use the term to describe their products.

Usually, “source identification” is lost through abandonment. The holder intentionally stops using the mark for some period without intent to resume use. There’s a trickier type of abandonment: unintentional abandonment, which occurs when an owner fails to properly use the mark or monitor its use by others. A mark which is “improperly used” is in danger of becoming generic. Therefore, always use your mark consistently and distinctively to avoid improper use and possible unintentional abandonment. You also have to police the use of your mark by taking action when a non-owner uses the mark, since that diminishes the mark’s ability to indicate its source. Don’t let others use your mark without a licensing agreement, and if someone else uses it, send them a cease and desist.

Infringers diminish your mark’s source identification powers by increasing the likelihood that consumers will be confused about the origin of goods or services. Again, cease and desist, and if that doesn’t work, prosecute the infringer or risk abandonment of your mark’s rights.

You can even hire a service that will, for a small fee, “watch” your trademark to help maintain your mark’s source identification.

 

If an unauthorized user will not or cannot afford to change marks after receiving your cease and desist letter, you basically have three options: (1) do nothing, (2) sue them, (3) offer to help them with the cost of a new mark. Given the potential cost of trademark litigation, if may be worth throwing a little money at a problem, to avoid paying for a drawn-out fight. If that is not a viable option, litigation may be your last, best hope for justice. You can sue for money damages and injunctive relief to prevent the unauthorized user from further using your mark, and to impound and destroy the infringing goods. If the user was intentional (e.g. fake Gucci purses) treble damages may be awarded. It’s no accident that litigation is the last option I’ve listed. Litigation should be avoided if possible, but is nothing to be afraid of. A good lawyer will give you an approximation of your costs and the likelihood of success. In the end, you will simply make an informed business decision on whether to enforce your mark.

What It Takes To Infringe a Patent

Friday, 23 March, 2012 05:00 Written by Mark Malek 0 Comments
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By: Mark R. Malek

My last article discussed the permissibility of designing around a patent. To summarize, in order to design around a patent, also known as reverse engineering a patent, the product/device/method, etc., in question must not include all of the elements of just one of the claims of the patent in question.  If your product includes three of the four elements that can be found in the claims, then you should be in the clear.

Naturally, the next question comes from the perspective of the patent holder.  At this point, the patent holder may have discovered your invention that has purportedly designed around the patent.  The only issue is that the patent holder does not necessarily believe that your invention does design around the patent.  More particularly, the patent holder thinks that your invention reads on at least one of the claims in the patent.  Time to conduct an investigation.

The investigation for the patent holder is very similar to the investigation that I discussed in my previous article about designing around a patent.  In other words, the patent holder’s first step should be to create a claims chart and analyze every element of each claim to make sure that the allegedly infringing device meets all the claim limitations.   Please don’t begin to think that I am insisting that the patent holder much go through the chore of doing a claims chart – it is just that I cannot think of a better way to ensure that the patent holder is sure that the device in question actually infringes.  When analyzing the limitations of the claim, the patent holder may try to broadly interpret certain portions of the claims, i.e., the patent holder may try to give some elements of the claims a broader interpretation than would be normally provided just by looking at the English language.  This could be possible depending on the way that these terms are defined in the specification.  For example, suppose that one of the elements of the claim is that a portion of the device must have a rounded shape, but in the specification, there is a specific note that although the device is depicted as having a rounded shape, the term “rounded shape” is intended to include shapes that have rounded corners.

Prosecution history estoppel, however, is something that could prevent broader interpretations of claims, but that is a topic for another article – actually, it is a topic that can fill up several articles.  For more information on prosecution history estoppel, check out this article by Gene Quinn on IPWatchdog, which includes a discussion on the doctrine of equivalents.  A more updated article on the doctrine of equivalents can be found here.

As you can see, the analysis for the patent holder is similar.  In short, if the allegedly infringing device does not include all of the elements of at least one of the claims, then the patent holder should not go running down the path of patent infringement yet.  In another article, I will start to discuss the various options available for the patent holder once it is determined that the device in question does infringe.  In that article, I will also discuss some strategies (all opinion) for patent holders that find a device that is pretty darn close to the claims of the patent.

 

Pharmaceutically Speaking: Supreme Court Rules Prometheus Labs Patents Invalid

Wednesday, 21 March, 2012 09:18 Written by Danie Roy 1 Comment
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Danie Roy

The Supreme Court finally ruled that the Prometheus Labs patents in Mayo v Prometheus are invalid.  I personally tip my hat to the court on this decision.  I’ve written about this case before, and I’ve done some general Pharamaceutically Speaking analysis on how 101 applies to pharma and personalized medicine. Because Prometheus was originally a 101 issue, we’ll start there.

As I said before in my Invention vs Observation article, some inventive step MUST be included. Simply observing a law of nature isn’t patentable. In this case, testing apparatus and SPECIFIC tests might be patentable. If, for example, you invent a blood draw vial that gives a test result on receiving at least X amount of blood, THAT is patentable. If you invent a diagnostic machine learning algorithm that can determine the presence of a disease (a very specific test, which a human could otherwise not reasonably perform), then of course that would be patentable. But, in such a case, that necessarily means that “if the blood level of the drug (or protein produced in response to it) is outside of the range Y to Z, then we need to adjust” is NOT patentable… that is an observation.

Hope you're not afraid of needles...

The court then went on to see if other parts of the methods were patentable. My 103 analysis kicks in here: testing blood levels for the efficacy of immunosuppressant therapy drugs has been around for a VERY LONG TIME (known since 1988 at the very latest).  The parts that weren’t simple observation really were well known in the art. I’m no pharmacist or doctor, but if you ask anyone with an autoimmune disorder how often they have to go get their blood levels checked for whatever immunosuppressant they are on, you’re going to get an answer in the range of every week to every few months.

Perhaps, if the process were more involved than checking the level of the drug itself, such as checking levels of proteins or metabolites that could be produced by the presence of the drug, as well as taking into account other factors that might influence those levels, you might have a patentable, inventive process. Simply administering a drug and seeing how much is maintained in the body, however, isn’t particularly inventive.

Don’t believe me?  Let’s go through Claim 1.

A method of optimizing therapeutic efficacy for treatment of an immune-mediated gastrointestinal disorder, comprising:

Okay, we’ve established this is for treatment of an immune disorder.

(a) administering a drug providing 6-thioguanine to a subject having said immune-mediated gastrointesti­nal disorder; and

Administer a drug.

(b) determining the level of 6-thioguanine in said subject having said immune-mediated gastrointesti­nal disorder,

Check to see how much of the drug is in the person’s system.

wherein the level of 6-thioguanine less than about 230 pmol per 8×108 red blood cells indicates a need to increase the amount of said drug subsequently admin­istered to said subject and

We’re clarifying that we are checking the blood for a specific minimum level of the drug.

wherein the level of 6-thioguanine greater than about 400 pmol per 8×108 red blood cells indicates a need to decrease the amount of said drug subsequently administered to said subject.

…and checking the blood for a specific maximum level of the drug.

That’s Claim 1. It’s…shockingly basic. And, while it can be considered personalized medicine, the field of personalized medicine shouldn’t be too horribly affected. After all, drugs and tools are still patentable… simple correlations, or correlation observations, on the other hand, are (and rightly should be) out of the question.

DR. DRE TO DIAMONDDRE, CEASE AND DESIST

Tuesday, 20 March, 2012 06:00 Written by danieldavidson 0 Comments
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By Daniel Davidson

Dr. Dre is not a new comer to fighting in courts for his intellectual property.  Around this time last year, a judge awarded Dre 100 percent of the online sales of his iconic compilation, The Chronic.  In a recent letter sent to up-and-coming music producer, DIAMONDDre, the Dr. tells him to lose the name.

DIAMONDDre was granted a Certificate of Registration from the U.S. Patent and Trademark Office on December 6, 2011 for his moniker.  Also a holder of a U.S. Trademark Registration, you guessed it, Andre Young, p/k/a Dr. Dre.  In fact, the two service marks are registered in International Class 41 for entertainment services (tisk, tisk Examining Attorney).

In the letter issued to DIAMONDre, Dr. Dre demands that DIAMONDDre cease and desist any further use of the name, or he will pursue his rights in a court of law.  Would Dr. Dre have a case?  I would think so.  I am even surprised that a likelihood of confusion refusal wasn’t issued by the Examining Attorney of DIAMONDDre’s trademark application.

Nonetheless, I am sure that Dr. Dre has given DIAMONDDre a deadline in which to agree to comply with the cease and desist letter.  Should DIAMONDDre not comply with Dr, Dre’s demands, within the allotted time frame, it will be interesting to see if Dr. Dre will fight to remain the only Dre in the music production business.  The value that Dr. Dre’s name has obtained is worth millions, and I would have to assume that it would be worth it to Dr. Dre to uphold his exclusive right to use the name Dr. Dre in connection with entertainment services.  Is “DIAMONDRE” exactly the same as “Dr. Dre?”  Of course not, but it us confusingly similar, the standard for confusion in trademark law.

Cheers.

Copyright vs. Trademark: What’s the Difference?

Monday, 19 March, 2012 06:00 Written by Aaron Thalwitzer 0 Comments
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I regularly get calls from clients who think they need a copyright when in fact they need a trademark (or even a patent!). The confusion is completely understandable, since other than intellectual property lawyers and those in related fields, our educational system simply doesn’t teach about intellectual property. In fact, my schooling on property didn’t go beyond “don’t take what’s not yours”. Let’s get the basics out of the way:

What’s a Copyright?

Copyright is protection for authors of “original works” including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished. Copyright owners have the exclusive right to reproduce the copyrighted work, to prepare derivative works, to distribute copies or phonorecords of the copyrighted work, to perform the copyrighted work publicly, or to display the copyrighted work publicly.

What’s a Trademark?

A trademark is a word, name, symbol or device used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others. Trademarks protect the name, not the good or service itself. You can sell all the cola you want, but you can’t sell it as Coca-Cola, even though your beverage may be chemically identical. Therein lies the potential value of a trademark: the price difference between Chek Cola and Coke.

Copyright vs. Trademark

Copyrights protect authorship in tangible forms of expression, including: two and three-dimensional art, images, songs, music and sound recordings, written works, plays and other performance arts, and videos of performance arts.

Trademarks protect words, phrases and logos used in federally regulated commerce to identify the source of goods and/or services.

Copyright protects the form of expression rather than the subject matter of the writing. For example, if you copyright a description of a widget, you could prevent others from copying your description. You would not, however, be able to prevent others from writing a new description or from making (or using) the widget.

Sometimes both copyright and trademark protection are useful. For example, a new slogan for your widget may also appear in print ads for the widget. You will likely want both copyright and trademark protection, since they offer different protections for different things. The ad’s text and graphics are covered by copyright, but the slogan may be protected by trademark law. Cover your bases by getting both — your copyright will not protect a bare slogan, or trade name.

Additionally, registering a trademark is entirely different from registering a copyright. Copyrights are cheaper and generally easier to register, as opposed to trademarks, which require a longer and more adversarial, as opposed to ministerial, process.

Of course, copyrights come with mandatory licensing and royalty payments. Trademarks do not.

Lastly, the tests for infringement are quite different for copyright and trademarks (that’s a whole ‘nother article right there!).

ST. PATRICK’S DAY PATENTS

Saturday, 17 March, 2012 10:42 Written by danieldavidson 0 Comments
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By Daniel Davidson

HAPPY ST. PATRICK’S DAY!!!  We here at Tactical IP are celebrating this year’s St. Patty’s Day in full force, and when I say “we” I can really only speak for myself.  The time is finally here.  The time I can actually be cool for having red hair, drinking a beer while writing this is not frowned upon, and wearing the same green shirt as you did last night is okay.  May the road rise to meet you, and may the wind be always at your back.  Here are some appropriate Irish day patents.

Patent No. 3,729,321 not only has the area code for Brevard County in it, but it also is titled “Preparation of Beer.”  Appropriate?  I think so.  Raise your glasses!

Next, we have a tool for a hell of a sport.  Why wouldn’t you need a shamrock bingo dobber?  Thank you Design Patent No. D 529,549 maker.  We can all have a little more style when we yell “BINOG!”

Well, I hear the Jameson bottle calling me so I’ll just give you one more.  May you have love that never ends, lots of money, and lots of friends.  Patent No. 2,369,721 helps me enjoy the nectar of the gods.  It’s a patent for a beer dispenser.

Everyone enjoy the best holiday in the world safely, and remember, if it wasn’t for the Irish, there would be no place to go (Tin Pan Alley, ‘If It Wasn’t For the Irish and the Jews‘).  CHEERS!

 

How To Design Around a Patent

Friday, 16 March, 2012 05:55 Written by Mark Malek 2 Comments
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By: Mark R. Malek

In this weeks episode of the question that I recently had to field at Zies Widerman & Malek is whether or not it is permissible to design around a patent.  The short answer is OF COURSE!  How else is there to be progress?  How else can inventions get improved?  This is the reason why people have come up with the better mouse trap, right – in other words, inventors have constantly improved that which came before them.  How else did we evolve from the original Apple computer to this tiny little MacBook Air that I am writing this article on while sitting inside of an airplane?

A simple “yes” to the question obviously is not enough.  How much is enough to design around a patent? How much do you have to change?  If I hear the “10% rule” one more time, I’m going to hunt down the crazy person that started it, and do some damage.  Where did that one come from?  I suspect it was on the “internet” and, therefore, it must be true.  There is no such thing as the 10% rule.  In case you are wondering, this is the rule that several clients have told me about and wanted to know how to calculate 10%.  The rule, apparently, is that all you have to do is change your invention by 10% in order to get around someone else’s patent.  I have also been informed that the same applies to copyright infringement.  Once and for all – THIS IS NOT TRUE.  Please do not expect an attorney to go to court with that argument.

When looking at a patent, go to the end.  You will notice a little section that is referred to as the claims.  The claims of a patent application can be described as the “property boundary” of the patent.  For a really good overview of patents, see Gene Quinn’s articles on IPWatchDog.com.  The claims are the way that the invention is defined in words.  The claims set forth the limitations of an invention, and defines the elements that make up the invention.  For example, suppose you have invented a widget.  The claims would indicate that the invention is a “widget that comprises elements A, B, C and D arranged in a particular way.”  Yes, this is an extraordinarily simplistic way of describing a claim, but it’ll make sense in a second.

If you ask your attorney to determine if your invention reads on the claims of a patent, or if you have successfully defined around the claims of the patent, your patent attorney should set up a claims chart.  The claims chart will likely break down the claims in a spreadsheet and try to analyze whether or not your invention includes each and every single element that is listed in the claim for the widget.  If your invention is a widget that also includes elements A, B, C and D, arranged in the same way as in the claims of the patent, then you have not designed around it.  Suppose, for example, you have replaced element C with element E?  Now you are probably onto something.  The analysis should not conclude there.  You should continue the analysis to make sure that element C cannot be read broadly enough to include element E.  This can usually be found in the specification, i.e., the rest of the patent.  If there is a sentence in there somewhere that reads something like “those skilled in the art will appreciate that element C is meant to include element E” then you probably have not done enough.

Obviously, I can write about this topic forever, but I promise to put up some follow up articles on designing around a patent – also known as reverse engineering.  In short, I hope that you take the following away from this article: It is permissible to design around a patent, but the process is not a simple one.  Be very careful in what you are doing and how you are defining your invention.

Copyright Troll Righthaven Ordered to Surrender Copyrights, No Tears Shed

Wednesday, 14 March, 2012 23:05 Written by Danie Roy 0 Comments
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Danie Roy

Although I’ve been declaring the end being near for the much-disliked copyright troll Righthaven, a judge’s order requiring the firm to surrender all of its copyrights might just be the final nail in the coffin. Maybe. Finally.

Since Righthaven’s business model consisted of “acquire copyright, threaten, profit,” the loss of its copyrights prevents the second and thirds steps.  Allowing the cases to go to litigation wasn’t part of the plan, and never ended well for Righthaven.  In fact, Righthaven’s court losses got them into this pickle.

See, going to litigation can be lucrative… hundreds of thousands to millions of dollars could be up for grabs.  But, it’s a bit like playing Russian Roulette… if you lose, you pay, whether you brought the complaint or were the accused.  Righthaven’s business model, didn’t bring in the BIG bucks, but it was steady and relatively reliable income.  Most people would rather throw money at a problem than face it in court, but once someone does fight back, the results are a bit like the scene in The Chronicles of Riddick where one Vin Diesel threatens to kill a bully with his teacup and follows through: the bully is left shocked, humiliated, and dead.  Sound familiar yet?

There are a few lessons to be learned here: the first is that Grandma’s fine China is a deadly weapon.  The second is that fighting the troll works if the law is on your side.

DIGITAL BREAKDOWN – MUSICIANS GET PAID FOR THEIR COPYRIGHTS

Tuesday, 13 March, 2012 06:00 Written by danieldavidson 0 Comments
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By Daniel Davidson

Earlier this year, I reported on an issue that had been popping up more and more in the intergalactic battle of musicians and the music moguls.  The issue was over the royalty payments that the musicians were receiving from digital download sales.  You can read the previous article here.  Judges have ruled, on more than one occasion, that a digital download is equal to a license, thus, entitling music artists to a higher royalty payout than a sale of music.  A sale of music would be through CDs or other tangible forms.

Most recently, with the courts leaning on their side, a class action suit which included acts such as The Allman Brothers and Cheap Trick, settled with record company, Sony BMG, for nearly $8 million.  The settlement looks to be a sigh of relief for Sony considering the class action originally was seeking $25 million in compensation, and the courts are increasingly siding with the artists.

Who will get their hands on the $8 million settlement?  Well, the three artists mentioned above, as well as acts that have at least 28,500 digital downloads.  Additionally, a substantially smaller portion of the settlement will be divided out to another thousand or so smaller artist.

Now, the settlement has been handed to the court for their consideration and approval.  If approved, Sony could dodge a hurdle of future legal battles that would presumably be filed by some artists that are included in the class action.  Have they side-stepped all future filings?  Most likely not, but I’m sure they could (at least I would hope) by correctly compensating their musicians for digital downloads from here on out.  Cheers.

Aspiring Patent Troll Yahoo Shakes Down Facebook

Monday, 12 March, 2012 06:00 Written by Aaron Thalwitzer 3 Comments
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On the eve of Facebook’s heralded IPO, Yahoo is trying to shake down Facebook, demanding payment for infringement of 10-20 of its patents. Yahoo and Facebook had been buddy-buddy until Yahoo made its move, but this will at least shake things up.

Yahoo, after all, is largely irrelevant to most internet users. Aside from sending email to people who haven’t yet switched to Gmail and the occasional news article, I have not used Yahoo in years. Yahoo knows that if it can’t do an about-face now, it is on the decline. It’s only a matter of time until it is absorbed by company for essentially the value of its intellectual property (i.e., RIM, Kodak, Nokia). Seeking to reap a bid-pay day, a la the pre-IPO settlement Yahoo made with Google, whereby Google gave Yahoo 2.7 million shares in a patent settlement before the search giant’s 2004 IPO. Investors do not want the uncertainty of litigation when they buy chunks of a $100 billion company. If the prospective suit has merit – and I have no idea whether it does – Facebook will probably settle. It can afford it, and historically it has been conservative with patents, knowing that it has a relatively weak inventory of its own.

Yahoo is not keeping this a secret. On the contrary, Yahoo has told the NY Times that the two companies met, and that Yahoo, “We must insist that Facebook either enter into a licensing agreement or we will be compelled to move forward unilaterally to protect our rights.”

Yahoo’s shareholders, who will probably get a short-term dividend, should be worried; Yahoo’s innovation ended about 10 years ago. Facebook is already ten times Yahoo’s size, and keeps innovating (for better or worse).

More analysis from a guy who called this a mile away: Techcrunch.

How to Rescue a Patent That Expired for Failure to Pay Maintenance Fees

Friday, 09 March, 2012 23:31 Written by Mark Malek 2 Comments
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By: Mark R. Malek

You may recall that my last article, was directed to the requirement to pay maintenance fees in order to keep your patent alive.  As was discussed in that article, maintenance fees must be paid at 3.5 years, 7.5 years and 11.5 years after the patent has issued.

When someone has not paid a maintenance fee on their issued patent, however, that patent will expire.  Unfortunately, this is a question that we get a lot at our firm.  The story is usually something along the lines of “so I was looking through some old files and noticed that there was a requirement to pay maintenance fees on my patent – what happens if I have not paid them?”  After I tell them that their patent has now expired, the immediate question I get back is “well how do I get it back?”

Well – it’s not cheap, but there is a provision to “revive” a patent that has gone abandoned for failure to pay a maintenance fee.  This can be found in chapter 2590 of the Manual of Patent Examining Procedures.

In short, there are two ways to revive a patent that has gone abandoned for failure to pay maintenance fees.  Both involve filing a petition.  The cheaper of the two petitions is a petition to revive an abandoned patent that has unavoidably gone abandoned, and the second is a petition to revive an abandoned patent that has unintentionally gone abandoned.  In order for the Patent Office to find that the patent has gone unavoidably gone abandoned takes an act of God…no, literally.  It is nearly impossible to get the Patent Office to agree that failure to pay the maintenance fee was unavoidable.  Not having the cash at the time the fee was due is not good enough.  There has to have been something that prevented you from getting the cash to the government such as, for example, a lunatic held you down and would not let you put your payment in the mail (and that this is all documented), or that you can prove that the payment was sent, and the postal service lost it on the way, or some other measure that is completely out of your control.

More than likely, however, you will need to file a petition to revive a patent application that has unintentionally gone abandoned.  The only requirement there is that you check the box on the form that reads, “the failure to pay the fee was unintentional.”  Translation is “my bad.”  If you file such a petition, along with the petition fee, and the maintenance fee, the patent will be revived.

If you have run into this situation, contact your patent attorney to see if you can have your patent revived.  If you have more questions, you can contact me here.

 

Pharmaceutically Speaking: USPTO vs FDA?

Wednesday, 07 March, 2012 06:00 Written by Danie Roy 0 Comments
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Danie Roy

Those of you familiar with the Pharmaceutically Speaking series know I’ve written a bit on generics, biologics, and biosimilars before. I’ve also touched a bit on how Patent does not equal FDA approval (and vice versa). Crash course version:

Generics are versions of drugs that have gone off-patent. That is, the patent protection has run out on them, and the active ingredients in the drugs are now free to use. Different inactive ingredients must be used, and your generic must be approved by the FDA to be within a comparable effectiveness range of the original. Biologics are pretty close to what they sound like: medicine produced biologically rather than chemically. Biosimilars are the generics of biologics.

Of course, biosimilars are a little more complex than that, for the same reason organisms are more complex than chemicals. For some more in-depth reading, the links above have a good bit of information buried in them. Right now, I’m going to explain why the US biosimilar approval process seems to be putting standards from the USPTO and FDA at odds.

See, with what we think of as generics, the chemically-based drugs, they’re pretty much interchangeable. Some people may react differently to inactive ingredients, but such cases are few and far between. Very little research is required to prove that Drug X will do the same thing as Drug Y because they both have Chemical Z. Drug X might just have Filler A while Drug Y might have Filler B. With biologics, the process is a little harder to prove.

As I’ve said before, biologics, by nature, are more complex than traditional drugs. They come from individual cell or protein lines, and the tiniest difference, even an imperceptible one, could be the difference between life and death. In order for a biologic to have an interchangeable biosimilar, significantly more testing has to be done to prove that switching back and forth between the drugs will have no effect. Add to this that biologics need time to build up in your system to truly work as intended, and the research gets expensive fast. Plus, the interchangeable guidelines as set by the FDA require sharing how all the biosimilars were made to the makers of the original biologics… which is bound to cause IP disputes. And, without the interchangeable label, you still need a separate prescription for the biosimilar.

Assuming that the kinks all get worked out and we do get interchangeable biosimilars, it could be a very long time before we see those drugs. And even then, we won’t be getting as a big a discount as hoped for… somewhere in the 10-20% range. Remember, keep your fingers crossed, but don’t hold your breath.

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THURSDAY, MAY 17, 2012

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