Posts in IP News

The U.S. patent system is the primary contributor for the U.S. economy. Since the foundering of the nation, the patent system has fostered an innovation culture that is directly responsible for making inventions that are more than all inventions accumulated in all major civilized regions in several thousands of years. However, the U.S. has inherent disadvantages in the political system and court systems… After the irreparable damages of public trust in the patent system, overhauling the patent system is no longer a feasible option. To continue existing as a powerful nation in the world, the U.S. must put its population back to the inventing business and create a renewed innovation culture, which could reach the entire population. It cannot count on the “miserable system” known in Thomas Edison’s time. Due to intensified competition and critical roles of technologies in competition, America must do far more than what is necessary to turn the dead patent system back to the same “miserable system”. One more thing that the Congress should do is to revive all invalidated patents under the AIA.

“Wrongdoing should be punished more severely so that IP infringers will pay a heavy price,” Xi said. At a time when President Xi is actively moving China’s IP policy to a place where infringers are met with harsher penalties, U.S. leadership in Congress, especially in the House of Representatives, seems to be opening their arms yet again to the efficient infringer lobby. Congressman Bob Goodlatte (R-VA), chairman of the House Judiciary Committee, and Congressman Darrell Issa (R-CA), chairman of the House IP subcommittee, support legislation and poor narratives that continue attempts to further gut the U.S. patent system, allowing infringers a free holiday and the ability to infringe without consequence or penalty.

In traditional music recording, artists have had to choose to license their music through major music industry organizations like ASCAP and BMI. In the age of streaming music through Spotify, Pandora and other services what is the purpose of these organizations? The licensing groups have served as clearinghouses for smaller players in the music industry who cannot feasibly deal with multitudes of licensees on their own. But with Taylor Swift and other “major” artists choosing to deal—or not deal—with the streaming services that opens the question about blanket music performance licenses.

The goal in a patent application is to provide a full, clear, and exact description of the invention in a way that particularly points out and distinctly identifies what the inventor believes he or she has invented and wants the patent to cover. Unfortunately, while articulating an invention many inventors fall victim to a host of common mistakes. Saying that…

When we apply for a patent, we are sharing our secret, our discovery, with the world. In exchange for sharing our secret we are promised 20 years of exclusive rights, a promise signed and sealed by the Director of the United States Patent and Trademark Office. But with the PTAB, it means nothing. No guarantee. No warranty. Arguably a fraud. It will be revoked – by the same agency that issued it – at least 90 percent of the time.

Two recent cases, The Medicines Co. v. Mylan, Inc and Skedco, Inc. v. Strategic Operations, Inc., illustrate that the patentee’s specification is key to determining whether an alleged infringer has practiced an alternative embodiment or a non-infringing invention… The specifications at issue in Skedco and Medicines took different approaches to the phrasing of example components, and thus led to different results against infringers. The CAFC in Skedco used several example embodiments in the specification to find infringement by a competitor who practiced the invention differently, yet consistent with the available examples. In contrast, the CAFC in Medicines found no infringement by a competitor who practiced a similar process due to a lack of examples and permissive language in the Specification. Through these cases, the CAFC provides two practices for broadening the possible construction of a patent’s claims.

The Ninth Circuit clarified the requirements for pleading and establishing a trademark infringement claim under a reverse confusion theory in Marketquest Group v. BIC, Case No. 15-55755 (9th Cir. July 7, 2017). The court relieved plaintiffs from having to specifically plead reverse confusion if it is compatible with the theory of infringement alleged in the complaint, and supported a more malleable standard for proving intent in reverse confusion cases. The court also held that good faith is an element—not just a factor—of a fair use defense, and that the fair use defense may only be raised after a likelihood of confusion is established. Marketquest further reinforces courts’ reluctance to decide trademark cases on summary judgment, and makes it more difficult for defendants to dispose of reverse confusion claims through pretrial motions. 

As Stone Creek deepens the divide among circuits, the issue of whether willfulness is required for disgorgement of a defendant’s profits in trademark cases is ripe for Supreme Court review… The Stone Creek decision solidifies the Ninth Circuit’s position that willfulness is required for a recovery of profits in trademark cases. This approach is consistent with equitable principles because disgorgement is generally used to deter culpable behavior and deterrence would not be necessary, and would not work, for an innocent infringer. Depending on the facts of a case, trademark law provides sufficient remedies to prevent a likelihood of confusion and compensate a plaintiff for its losses—beyond a defendant’s profits—like an injunction, actual damages and/or corrective advertising. An award of profits can be reserved for willful infringers, without depriving a plaintiff of remedies for non-willful infringement.

At an initial examination proceeding, JPO examiner refused the trademark with respect to all goods in class 9 on the grounds that consumers can easily perceive or conceive the late Whitney Houston, an American famous singer from the applied mark “WHITNEY HOUSTON” written in a common font design. Besides, in a business to deal with music recordings, the title of a song or an album as well as name of performer or player are routinely indicated on goods or packages to show contents of it. Therefore, relevant consumers and traders at a sight of the applied mark used on designated goods in class 9 are just likely to conceive the goods contains music or performance by the late Whitney Houston. If so, IR no. 1204044 is subject to refusal based on Article 3(1)(iii) of the Trademark Law. Furthermore, when the applied mark is used on music recordings unrelated to Whitney Houston, consumers will surely be in trouble since they expect the goods contains song or performance of the late Whitney Houston. If so, it should be refused for registration based on Article 4(1)(xvi) due to misconception of quality of goods.

Many states have statutes that make counterfeiting a state crime, but often only if the trademark is registered in that state. According to Lo Cicero, state registrations give local prosecutors and law enforcement officers jurisdiction – and they may be more able and willing to tackle local counterfeiters than are busy federal prosecutors. Thus, where budgets will allow and brand owners have significant counterfeit concerns obtaining state trademark registrations in at least several states, including California and New York, could be a worthwhile investment.

All too often I’m reminded that today’s American patent system is more droit du USPTO than it is the system for the innovative masses as envisioned by Thomas Jefferson and other of our Founding Fathers. It costs thousands of dollars to obtain a patent. It costs millions to defend that patent against an infringer. Yet insidious narratives on “patent trolls” continue to echo in the rank and file at Congress as if infringement suits brought by tech licensing companies is somehow a new phenomenon and not a system which turned Thomas Alva Edison and Alexander Graham Bell into storied heroes of American innovation. Today’s Standard Oils, the Alphabets and Apples of the world, have mounted an impressive smear campaign that has whipped up a debate which is completely out of proportion with the real problem at hand. For every MPHJ Technologies, there are a thousand Smartflashes, companies who had good ideas stolen and have a rightful case of infringement to take to district court. For every Jay Mac Rust, there are countless Josh Malones: good, decent, forthright individuals who believed in a good idea, took a leap of faith, and are worse off for it. They are worse off for having invested in the patent system in the first place even as their invention is proven valuable by the activities of infringers.

At this year’s IDEA World, TRX’s booth is very close to Aktiv Solutions, a distributor of fitness equipment. The two are only separated by one booth in between them run by the mind-body fitness firm Merrithew. Among the products distributed by Aktiv include a functional training ecosystem created by Gym Rax, a developer of modular storage and suspension solutions for fitness facilities. And Gym Rax recently filed a lawsuit alleging that TRX is committing trademark infringement. On June 12th of this year, Gym Rax International filed a complaint for federal trademark infringement against Fitness Anywhere LLC, doing business as TRX, in the Central District of California.

Lawyers often wonder how to enhance their marketability and in the process, generate more revenue or improve their image.   After all, success at a firm is about “revenue generation.”  Success in a corporation or in the government also depends on your credibility and your ability to be a “go-to” person within the company or government agency.   To be a successful lawyer, you need to have a brand.  I explain below 6 easy ways to make your mark… Law firms are fighting for a smaller pool of work and as a result, are required to compete for that work at more competitive rates. If you want to get the work and charge higher rates, there must be a reason for the client to hire you. In other words, it’s your brand that counts.

Chicago-based chewing gum company Wm. Wrigley Jr. Company filed a trademark infringement suit against e-cigarette seller Chi-Town Vapers LLC of Bensenville, IL. The suit targets Chi-Town for marketing certain e-cigarette materials which bear a striking resemblance to chewing gum products manufactured by Wrigley. The case is filed in the U.S. District Court for the Northern District of Illinois (N.D. Ill.).

Attorney Flynt Strean, a veteran intellectual property attorney, has joined Womble Carlyle as a Partner in its Charlotte office. Flynt’s IP practice includes, IP portfolio management; U.S. and foreign patent application preparation and prosecution; Patent noninfringement and invalidity investigations; and IP due diligence. Flynt’s clients include companies in the radio frequency identification (RFID) device, mechanical and electromechanical component, waterproof fabric laminate, agricultural device and healthcare management system industries.