Category Archives: Trademark

The USPTO’s 2010 Performance and Accountability Report

The USPTO recently released its Performance and Accountability Report for Fiscal Year 2010. The Report provides a summary of program and financial results to assess the USPTO’s performance. This article will summarize some of the statistics that were provided in the Report.

At the end of fiscal year 2010, the USPTO work force included 9,507 federal employees. Of those 9,507 employees, 6,225 were patent examiners and 378 were trademark examining attorneys.

The Report provided statistics on the target and actual number of months from fiscal year 2006 to fiscal year 2010 for (1) Patent Average First Action Pendency, which measured the average time in months from filing until an examiner’s initial determination on the patentability of an invention; and (2) Patent Average Total Pendency, which measured the average time in months from filing until the application is issued as a patent or abandoned by the applicant.
(1) Patent Average First Action Pendency (in months)
Fiscal Year – Target – Actual
2006 – 22.0 – 22.6
2007 – 23.7 – 25.3
2008 – 26.9 – 25.6
2009 – 27.5 – 25.8
2010 – 25.4 – 25.7

(2) Patent Average Total Pendency (in months)
Fiscal Year – Target – Actual
2006 – 31.3 – 31.1
2007 – 33.0 – 31.9
2008 – 34.7 – 32.2
2009 – 37.9 – 34.6
2010 – 34.8 – 35.3

The results from 2010 in the two categories above were slightly below target.

The Report also included statistics from fiscal year 2006 to fiscal year 2010 on the percentage of patent applications that were filed electronically. The number of patent applications filed electronically has continued to increase as follows:
Patent Applications Filed Electronically
Fiscal Year – Target – Actual
2006 – 10% – 14.2%
2007 – 40% – 49.3%
2008 – 69% – 71.7%
2009 – 80% – 82.4%
2010 – 90% – 89.5%

Similarly, the Report provided information on the target and actual number of months from fiscal year 2006 to fiscal year 2010 for: (1) Trademark Average First Action Pendency, which measured the number of months from the date of application filing to the first office action; and (2) Trademark Average Total Pendency, which measured the average number of months from date of filing to notice of abandonment (unless a notice of allowance was issued), notice of allowance, or registration for applications based on use in that month.
(1) Trademark Average First Action Pendency (in months)
Fiscal Year – Target – Actual
2006 – 5.3 – 4.8
2007 – 3.7 – 2.9
2008 – 2.5 to 3.5 – 3.0
2009 – 2.5 to 3.5 – 2.7
2010 – 2.5 to 3.5 – 3.0

(2) Trademark Average Total Pendency (in months)

Fiscal Year – Target – Actual
2006 – 16.3 – 15.5
2007 – 14.8 – 13.4
2008 – 14.3 – 11.8
2009 – 13.0 – 11.2
2010 – 13.0 – *

* The average total pendency including suspended and inter partes cases was 13 months. Excluding applications that were suspended or delayed for inter partes proceedings, the average total pendency was 10.5 months. The above 2010 trademark targets were met.

The number of trademark applications filed electronically has also continued to increase:

Trademark Applications Processed Electronically

Fiscal Year – Target – Actual
2008 – Baseline
2009 – 62% – 62.0%
2010 – 65% – 68.1%

The data in the Report will be finalized and reported in the USPTO’s 2011 Performance and Accountability Report.

- Katie Cooper

Trademark Infringement Suit Between Pennsylvania Companies

R.E. Whittaker Co., a Pennsylvania corporation based in New Castle, PA, filed a trademark infringement suit against Misco Products Corporation, a Pennsylvania corporation based in Reading, PA on July 9, 2010 in the United States District Court for the Western District of Pennsylvania.

Whittaker has been in the business of manufacturing and selling commercial carpet cleaning products for over twenty-five years. In 1992 Whittaker introduced a carpet cleaning product under the brand name Crystal Dry®. The Complaint alleges that Misco recently started promoting, advertising, and selling a carpet cleaning product identified by the mark “Crystal Clear.”

The causes of action in the Complaint are: trademark infringement under federal trademark law, false designation of origin and unfair competition, dilution of famous marks, and trademark infringement and unfair competition under Pennsylvania common law.

Trademark and Copyright Infringement Case Filed Against Pittsburgh Company

A California company and a Nevada limited liability company filed suit in the Western District Court against Pittsburgh company QuestMark LLC for trademark infringement, false designation of origin, false advertising, copyright infringement, misappropriation of trade secrets, breach of contract, and unfair competition.

The Amended Complaint filed February 11, 2010 alleges the following claims of trademark infringement under the Lanham Act:

1. Defendants’ use of the mark CREATING AN ACCOUNTABLE CULTURE constitutes infringement of Plaintiffs’ federally registered CREATING A CULTURE OF ACCOUNTABILITY;
2. Defendants’ use of the mark ACCOUNTABLE CULTURE constitutes infringement of Plaintiffs’ federally registered CULTURE OF ACCOUNTABILITY;
3. Defendants’ use of the mark KEYS TO ACCOUNTABILITY constitutes infringement of Plaintiffs’ federally registered STEPS TO ACCOUNTABILITY; and
4. Defendants’ use of the mark ACCOUNTABILITY WORKSHOP constitutes infringement of Plaintiffs’ federally registered ACCOUNTABILITY TRAINING.

The Amended Complaint also alleges copyright infringement of a customer proposal brochure and a document that lists training modules used by the California company in its leadership-training and management-consulting services. The document also outlines the key “take away” points from the various modules.

An Answer has not yet been filed.

Disclaimer of the word “CENTER”

If the mark you are trying to register contains the word “CENTER” be prepared for a descriptiveness rejection and a disclaimer requirement if the description of goods contains merchandise.  Some Examining Attorneys will make the rejection, others will not.  Searching the register it appears that some registrations have the disclaimer while others do not.   The basis for the descriptiveness rejection is that “the wording CENTER is defined as ‘a store or establishment devoted to a particular subject or hobby, carrying supplies, materials, tools, and books as well as offering guidance and advice.’”  Therefore, the word CENTER merely describes a feature of the applicant’s goods and services, namely, that they are provided or found in a particular store or establishment.  Applicant can argue the commercial impression of the mark as whole does not allow for the conclusion that CENTER is descriptive. 

 An old case that might be able to be used in support of the argument that “CENTER” is not always descriptive of merchandise is In re Tennis in the Round Inc., 199 U.S.P.Q. 496 (TTAB 1978).   In re Tennis found that the mark “TENNIS IN THE ROUND” is not descriptive of a tennis facility containing eleven tennis courts and the facility was a round shape.  

 John C. Thomas III

Smiley Face Cookie Trademark Infringement Suit

On December 31, 2009, Eat’n Park, a restaurant group with its principal place of business in Pittsburgh, filed suit against Crumb Corps, a Texas corporation, for trademark infringement, trademark dilution, and unfair competition.

The complaint alleges that Crumb Corps sells “Smiley Faces” cookies which have a design that is confusingly similar to the registered trademark of Eat’n Park and are directly competitive products to the Eat’n Park SMILEY face cookies. Crumb Corps’s cookies are available via retail stores, catalogs, and online. Eat’n Park alleges that Crumb Corp’s sale of cookies using its smiling face design and the SMILEY word mark constitutes unfair competition.

- Katie Cooper

Defendants in Burt Hill, Inc. Case File Countersuit

The defendants in the Burt Hill, Inc. v. Hassan et al (Case No. 2:2009cv01285) unfair competition, trademark infringement, and misappropriation of trade secrets case (in the U.S. District Court for the Western District of Pennsylvania) filed a countersuit in the Court of Common Pleas of Allegheny County, Pennsylvania.

The complaint alleges the following:
1. Breach of contract;
2. Violation of the Pennsylvania Wage Payment and Collection Law;
3. Wrongful termination;
4. Defamation;
5. Abuse of process;
6. Intentional infliction of emotional distress;
7. Breach of fiduciary duty of a director and officer.

- Katie Cooper

Changes to Trademark Rules of Practice

The October 26, 2009 Federal Register published a final rule effective December 28, 2009 that includes changes to Trademark Rules of Practice (37 CFR Part 2). The changes are in: (1) Requirements for Signature of Documents, (2) Recognition of Representatives, and (3) Establishing and Changing the Correspondence Address.

The purpose is to “codify and clarify current practice.” The Office “reworded and/or reorganized the rules for clarity, and added headings to facilitate navigation through the rules.”

The changes include:

1. Section 2.17(d) is amended to provide that the owner of an application or registration may appoint an attorney through the Trademark Electronic Application System (“TEAS”) for up to twenty applications or registrations per TEAS form that have the identical owner or attorney (consistent with TMEP § 602.01(a));

2. Section 2.17(g)(1) is added to provide that the Office considers a power of attorney to end with respect to a pending application when the mark is registered, when the ownership changes, or when the application is abandoned (consistent with TMEP § 601.01);

3. Section 2.18(b)(2) is added to provide that a request to change the correspondence address must be made in writing, signed by the applicant, registrant, or party to a proceeding, someone with legal authority to bind the applicant, registrant, or party, or a qualified practitioner, in accordance with § 2.193(e)(9) (consistent with TMEP §§ 603.02 and 603.02(a));

4. Section 2.19(a) is revised to clarify the requirements for revocation of a power of attorney; and

5. Section 2.19(b) is revised to set forth the requirements for filing a request to withdraw as attorney.

 

Pennsylvania Supreme Court Strikes Down Trademark Law as Overbroad

On October 5, 2009, in a 4-3 decision, the Pennsylvania Supreme Court held that the Trademark Counterfeiting Statute,18 Pa.C.S. § 4119, is unconstitutionally overbroad.

The Trademark Counterfeiting Statute provides:

(a) Offense defined.– Any person who knowingly manufactures, uses,
displays, advertises, distributes, offers for sale, sells or possesses with intent
to sell or distribute any items or services bearing or identified by a counterfeit
mark shall be guilty of the crime of trademark counterfeiting.

* * * * *
(i) Definitions.– As used in this section, the following words and phrases shall
have the meanings given to them in this subsection:

“Counterfeit mark.” Any of the following:
(1) Any unauthorized reproduction or copy of intellectual
property.

(2) Intellectual property affixed to any item knowingly sold,
offered for sale, manufactured or distributed or identifying
services offered or rendered, without the authority of the owner
of the intellectual property.

“Intellectual property.” Any trademark, service mark, trade name,
label, term, device, design or word adopted or used by a person to
identify that person’s goods or services.

18 Pa.C.S. § 4119.

A statute is unconstitutionally overbroad only if the statute criminalizes a substantial amount of constitutionally protected speech.

The Commonwealth argued that the Trademark Counterfeiting Statute is not unconstitutionally overbroad because it is limited to persons with the intent to sell or distribute items with counterfeit trademarks and thus does not reach a substantial amount of constitutionally protected speech. The Commonwealth also relied on a proposed amendment to the statute, statutes from sister states, and the mens rea in the Crimes Code.

The Supreme Court held that under the definition of “intellectual property” any use of a “term” or “word” that is “engaged by another person to identify that person’s goods or services is a ‘counterfeit mark’” which is unconstitutionally overbroad.

- Katie Cooper

Chevron Files Trademark Infringement Suits

texaco drawingFranchise arrangements often involve a variety of intellectual property rights. Disputes can arise when a franchisee’s license ends, but the franchisee continues to sell a product associated with the franchise or the franchisee continues to display the franchise’s signage.

On September 22, 2009, Chevron Intellectual Property LLC and Chevron U.S.A. Inc. (“Chevron”) filed two separate trademark infringement and unfair competition lawsuits in the United States District Court for the Western District of Pennsylvania against defendants who allegedly owned and operated automobile gasoline and service stations with infringing signage and materials (2:09-cv-01292-AJS and 2:09-cv-01293-TFM).

Chevron owns over twenty trademarks and service marks including trademarks for TEXACO, Star T Design, Service Station Canopy Design, Gasoline Pump Design, and a Building Design for automobile services. There are over 1,500 TEXACO-branded stations currently licensed to use such marks.

Chevron’s authorized TEXACO-branded stations sell TEXACO brand gasoline. Licensed TEXACO-branded service station facilities are authorized to use and prominently display exterior and interior signage that bear Chevron’s registered TEXACO and Star T Design trademarks. Buildings of licensed TEXACO-branded facilities also often have an exterior appearance consisting of: (1) a red and black building in combination with silver and dark gray, with the Star T Design mark; and (2) a rigid canopy over the gas pumps with a black background and a red border, including the TEXACO and Star T Design marks on the side of the canopy.

For a period of time from 2001 to 2006, Chevron licensed the use of the TEXACO marks through Shell Oil Company and other related companies. Chevron claims that the defendants once operated as a licensed TEXACO-branded service station and sold TEXACO brand gasoline and other products. By June 30, 2006 defendants were no longer selling or supplying TEXACO brand gasoline and were no longer authorized licensees of Chevron. At that time, defendants were obligated to remove the TEXACO marks from their facilities, but defendants still have not. Chevron alleges that while defendants’ facilities are presently not operational, defendants displayed and used the infringing signage after June 30, 2006 and defendants continue to display signage on the premises.

Defendants have not yet filed Answers.

- Katie Cooper

Pittsburgh Corporation Files Unfair Competition, Trademark Infringement, and Trade Secret Lawsuit

Burt Hill, Inc. is a Pennsylvania corporation with offices in Pittsburgh, Dubai and Abu Dhabi, United Arab Emirates. On September 21, 2009, Burt Hill filed suit against seven employees of Burt Hill for several causes of action including unfair competition, trademark infringement, and misappropriation of trade secrets. (Burt Hill, Inc. v. Hassan et al Case No. 2:2009cv01285.)

According to the Complaint, “Burt Hill provides architecture and engineering services, including interior design, landscape architecture, sustainable design, project management, and master planning services.”

Burt Hill owns U.S. Trademark Registration Number 3,201,245 for the mark BURT HILL, which registered on January 23, 2007. Burt Hill alleges that the mark is well-known in the architecture, engineering services, and construction industries and that Burt Hill has built significant goodwill through the use of its mark. The Complaint also alleges that Burt Hill has trade secrets and confidential and proprietary information regarding its business and customers that provide Burt Hill with a competitive advantage in its business.

In 2005, Burt Hill decided to expand by opening branch offices in Dubai and Abu Dhabi. Each of the defendants were entrusted employees of Burt Hill for several years in the Butler, Pennsylvania office. They were reassigned to the Dubai and Abu Dhabi offices where they held managerial positions.

From 2005 until 2009 the Dubai office grew very rapidly, which raised concerns for Burt Hill about the business practices of the Dubai office. Burt Hill alleges, “the business practices of the offices, especially the inefficient hiring and uncontrolled staff size, wasteful project and business management, high overhead, and large accounts receivable” were not consistent with Burt Hill’s standard business practice or corporate policies.

Burt Hill states that in March of 2009, the defendants made it known to Burt Hill that they wanted Burt Hill to give them the Dubai and Abu Dhabi offices, and if Burt Hill would not hand the offices over, they would take them themselves. Burt Hill alleges that the defendants “entered into a scheme … to divert Burt Hill’s projects, assets, and employees to a separate covert operation owned and controlled by defendants” and to do this, the defendants “used substantial resources of Burt Hill including its money, employees, trade secrets, intellectual property, and proprietary and confidential information.”

Defendants also “began marketing for BH Global rather than Burt Hill.” Defendants then “represented to current and prospective Burt Hill clients or marketing affiliates that BH Global was affiliated with Burt Hill.”

An Answer to the Complaint has not yet been filed. The Answer is due October 14, 2009.

- Katie Cooper