Posts Tagged ‘Court’

The Duty of Disclosure When Filing A Patent Application

Friday, 20 January, 2012 22:24 Written by Mark Malek 1 Comment
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By: Mark R. Malek

When people think of most areas of law, they generally picture an adversarial process.  In other words, most areas of law involve two parties in a dispute of some sort and each party having their side of the story that they want a judge (and sometimes a jury) to proclaim as being the correct side of the story.  That is not the case in the field of patent prosecution.  Although it may sometimes feel as though the patent Applicant is on one side of the fence fighting with the patent Examiner, it truly is not an adversarial process.  Instead, it can be better described as a cooperative process wherein the patent Examiner is working with the patent Applicant in order to determine the correct level of protection to be granted from the federal government.

In order to achieve this goal, patent law requires that a patent Applicant disclose the best mode of carrying out the invention, and disclose any prior art that they know of.  Many people come to me and indicate that they do not want to disclose everything about their invention, at which point I have a very serious conversation with the Applicant wherein I indicate that they must disclose all that they know about their invention.  The issue that many of the clients have, and I understand where they are coming from, is that they want to maintain some of their invention as a trade secret.  In patent law, that just about equates to having your cake and eating it to.

During patent prosecution, there is a trade off.  Essentially, the federal government will agree to grant you a right to exclude others from making, using, selling or offering to sell you invention in exchange for you disclosing everything you know about your invention, and also working with the patent office to ensure that the patent Examiner has all the relevant information in order to make a decision as to whether or not your invention is patentable.  This includes informing the patent Examiner of any prior art that you may know of.  That is regardless of whether or not the patent Examiner would have found the prior art during the search that is conducted during prosecution.

This article very much so simplifies the process, as well as the duty to disclose prior art, but there is one thing that I want to leave you with.  That is – your attorney is your ally in this process.  Your patent attorney should walk you through the process and should instruct you to disclose any information that could be considered prior art.  The risk you run of not disclosing relevant information is, in the worst case, invalidity of your patent and, in extreme circumstances, the possibility that a court finds that you engaged in inequitable conduct before the patent office, exposing you to potential liability.  The moral of the story is that you should never think it is a good idea to keep something from your attorney regarding your invention.  I will post additional articles about the importance of your relationship with your attorney and how the attorney-client privilege should encourage you to let your attorney in on everything that you know about your invention.

Microsoft and Apple – The Gossip Girls of Tech Trademark

Sunday, 13 March, 2011 22:04 Written by Scott Nyman 2 Comments
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By Scott Nyman

Many tech companies view the rapid expansion of mobile computing as the next electronic frontier, and I don’t disagree. In attempts to carve out the largest slice of this growing market, the companies involved are battling the competition on every front possible. If you look through the backlogs of TacticalIP.com, you will find numerous articles about patent battles between the mobile phone companies. The interwoven who-is-suing-who web of mobile patent litigation keeps growing.

These companies aren’t shy to take their fighting to the trademark arena either. In what appears as imitating the maturity of high school girls, Microsoft and Apple have exchanged their share of low blows with one another over the “App Store” trademark.

The background for this story has previously been covered in the excellent article written by Aaron Thalwitzer, here. Since then, there has been a little more action. That, and I can’t resist a good mobile fight.

Microsoft challenged Apple’s “App Store” application for being generic, which may not be without merit. The “App Store” is a store for applications, or an application store, if you will. The word “applications” may commonly be abbreviated to “apps.” Combine those two concepts, and you have an “app store.” It sounds pretty similar to “grocery store” or “convenient store” to me.

Microsoft is arguing the proposed mark is generic, as opposed to being descriptive. This argument is likely being made instead of descriptiveness to avoid Apple presenting evidence that the term “App Store” has a secondary meaning. This theory of acquired distinctiveness may not be used to find trademark rights in a generic term.

Apple has responded by stating, in its brief filed with the USPTO, “Having itself faced a decades-long genericness challenge to its claimed WINDOWS mark, Microsoft should be well aware that the focus in evaluating genericness is on the mark as a whole and requires a fact-intensive assessment of the primary significance of the term to a substantial majority of the relevant public.” Apple continues, “Yet, Microsoft, missing the forest for the trees, does not base its motion on a comprehensive evaluation of how the relevant public understands the term APP STORE as a whole.”

Yes, I borrowed this picture from Aaron. Can you blame me?

In its response, Microsoft simply filed a motion to strike Apple’s responsive brief with the USPTO. In the motion, Microsoft argues, “Apple’s response brief is 31 pages, including the table of contents and table of authorities, and on information and belief, is printed in less than 11 point font.”

While this may seem like a petty issue, as other online news outlets and weblogs are playing it out to be, this argument is made in fairness. The rules of civil procedure are in place to ensure efficiency and fairness. You don’t have to be an attorney to know that the courts aren’t always as efficient as we would like them to be, but putting a limit on the verbosity of documents filed with the courts can go a long way to help. Also, by requiring each party to present concise arguments, neither side may have the benefit of hiding key facts or claims in a sea of unnecessary words.

A page limit doesn’t mean much when you are free to tweak the fonts and margins to suit your needs. Consider this practice as the opposite of that English paper you wrote in high school, wherein you used 12.5 point Courier New font with 1.29 inch margins.

So what comes next? Apple will most likely clean up their brief and file it again. And before you ask, you read the title of this article correctly. I did make a Gossip Girl reference. In my defense, dating doesn’t always result in getting to watch American Gladiators and Modern Marvels.

You can find copies of the motions in the article from Geekwire.com linked below:

http://www.geekwire.com/2011/microsoft-seeks-toss-apple-app-store-font-big

IHOP drops suit against International House of Prayer

Saturday, 08 January, 2011 19:02 Written by Mark Malek 2 Comments
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By: Mark R. Malek

Back in September, International House of Pancakes sued the International House of Prayer for trademark infringement and trademark dilution.  We first wrote about this story here.  Of course, we had some fun with the article, but at the same time, provided our analysis of why IHOP (Pancakes) may have had a point.  The LA Times reports that the pancake giant has now dismissed its suit against the religious group noting that the parties have agreed to resolve their dispute out of court.

Since the case was filed, I have observed a lot of chatter (yes I am referring to my fellow tweeps) about how bad the big corporation was for bringing suit against a church.  Dig a little deeper folks.  It is not as though this is a tiny community church of a few families in the middle of nowhere.  This was a very large organization that served the needs of many families.  Further, and according to the article in the LA Times, it is not as though they should have been surprised when the suit was filed.  The pancake giant, like many other trademark holders, sent warnings to the church group.  These warnings are generally in the form of a “cease and desist” notice.

I am one who appreciates a cease and desist notice and take them as an opportunity to remedy a situation prior to litigation.  At the end of the day, if both parties can check the ego at the door, and I mean both parties (even the trademark holder) then there is likely some sort of middle ground that can be reached.  That is not to say that all cases should settle.  In this particular case, the pancake giant really has no choice but to enforce their trademarks.  If they do not, then their trademarks become nearly valueless.  This case wound up in litigation because their notices (or attempts to resolve the matter) apparently went ignored.  What choice did they have?  It is overly-aggressive enforcement of trademarks that drives me nuts – see my series on Facebook here, here and here.

It is unclear what the terms of the settlement are, but I suspect that the settlement will include some sort of terminology that preserves IHOP’s (Pancakes) rights to enforce its trademarks, and some sort of recognition by IHOP (Prayer) of the validity, distinctiveness, etc. of the IHOP (Pancake) trademarks.  The moral of the story is that if you find yourself on any side of a trademark dispute, you really should attempt to engage in meaningful settlement negotiations prior to taking the dispute to the next level, i.e., costly litigation.  Any attorney that tells you otherwise is really just looking out for his/her own interest!

“I GOTTA FEELING” THE BLACK EYED PEAS MAY GET “BOOM BOOM POWED” FOR COPYRIGHT INFRINGEMENT

Friday, 05 November, 2010 17:19 Written by danieldavidson 1 Comment
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By Daniel Davidson

I would first like to apologize for the possibility of having a song be stuck in your head that may cause you to act irrationally. I know the feeling, it just happened to me while writing this article.  Speaking of feeling, I would like to bring it to your attention that the music industry moguls have finally caught on to exploiting artists’ product as they have ever so diligently pursued others for similar actions.  Take Jammie Thomas-Rasset for example.  This reversal of roles comes courtesy of the mainstream act The Black Eyed Peas and their record label and publishing companies, UMG Recordings and Interscope Records, for the songs “I Gotta Feeling” and “Boom Boom Pow,” which have allegedly infringed a few lesser known acts.

The two lesser known artists are Mr. Brian Pringle, Ms. Ebony Latrice Batts, aka Phoenix Phenom, and her producer co-songwritter Manfred Mohr.  Pringle is the talent behind the song “Take a Dive,” an instrumental song with a style that could be paralleled to a slow techno song or heck, The Black Eyed Peas song “I Gotta Feeling” with the vocals removed.  Pringle and his attorneys have filed suit in the Federal District Court of Orange County, California.  Pringle alleges copyright infringement for his song in which he holds a copyright registration from 1998.  He alleges that he had sent demos of his songs to Interscope and UMG over the course of about 10 years and received several written responses to his submissions acknowledging their receipt of the songs, but informing him that they had no desire to sign him to a record deal. Little did he know and as the District Court of Orange County has just been made aware of, the record companies purportedly had other ideas in mind.

Similarly, Phoenix Phenom and Mohr have filed a similar but unrelated case that was just re-filed in Los Angeles from a Chicago Court for the copyright infringement of their song “Boom Dynamite” by The Black Eyed Peas’ song “Boom Boom Pow.”  I took a listen to Phoenix Phenom’s song and the similarities are a little less obvious, but if I could have made it more than 6 seconds into the song, I may have been able to draw more similarities in the two.  No offense to those that enjoy this music, but it just does not tickle my fancy.  Hey, we may even see Phoenix Phenom be taken to court by a local high school cheerleading team. You never know.

In both cases, the complaints allege that The Black Eyed Peas’ versions of both songs are “substantially similar” to the music of the lesser known artists.  The “substantially similar” standard has been established by the courts and two substantial tests have been implemented by the courts to determine if in fact copyright infringement has occurred. One being the “fragmented literal similarity” and the other being the “comprehensive non-literal similarity.”

The damages the two Plaintiffs are asking for are actual damage and injunctive relief.  Actual damages would grant Mr. Pringle, Ms. Phenom, and Mr. Mohr all net profits from the songs along with any future royalties.  The injunctive relief would bar any further production or distribution of the songs and Pringle has even asked for a preliminary injunction to keep the Peas from performing “I Gotta Feeling” on their current world tour, which in no way would hurt my feelings.  Go ahead and entertain the two songs from the lesser known artists by clicking the links below and see if you can distinguish anything “substantially similar” in the two songs to The Black Eyed Peas’ songs.  For the sake of The Black Eyed Peas and their respective record labels, I hope they ate a spoonful of their namesake on the 1st day of January, 2010.

Brian Pringle:  http://www.youtube.com/watch?v=Z7drHJ71rIw

Phoenix Phenom:  http://www.youtube.com/watch?v=0O0q_xBu2IQ

California court denies connection between drugs and hip-hop… at least for trademarks

Thursday, 04 November, 2010 22:46 Written by Scott Nyman 1 Comment
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By Scott Nyman

In the early 1990′s, gangster rappers were all the rage. Rappers like Biggie Smalls, Snoop Doggy Dogg, and Tupac Shakur drew upon their lives in the streets for creativity. In these modern times, it seems much of that creativity has been lost. Rap has turned to into hip-hop, as rappers have turned into artists. In some instances, these modern artists borrow from others to find their own inspiration.

Recently, hip-hop artist Rick Ross has won the favor of California’s U.S. District Court, Southern District, for borrowing his stage name from former cocaine trafficker Ricky Ross. Born William Leonard Roberts II, defendant Rick Ross found himself in a legal battle against the former crime boss for infringing upon the allegedly trademarked name.

The United States Patent and Trademark Office defines a trademark to include any word, name, symbol, or device, or any combination thereof used or intended to be used in commerce to identify and distinguish the goods or services from a manufacturer. A trademark’s purpose is to associate a good or service with its source. In short, a trademark is a brand name.

The Court delivered its first blow against Ricky Ross in July, when they denied injunctive relief against the release of the album Teflon Don. Earlier this week, the District Court dismissed the entire suit, reasoning that the drug trafficker’s illegal activities made it impossible to determine if a valid trademark could exist for the name “Ricky Ross.”

The court said, “in support of his trademark claims, Plaintiff alleges that his name was well known in the drug trade and by law enforcement segments of urban crime, rap and black community because he did business as Rick Ross, until he was arrested, prosecuted and incarcerated in federal prison. Because this illegal activity cannot be used to establish a secondary meaning, such allegations do not provide for support for Plaintiff having a valid trademark for his name.”

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