Tag Archives: Trademark Law

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

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

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

Trademark Use on Twitter and Facebook

The use of a third party’s trademark on social networking sites such as Twitter and Facebook has recently been a topic of interest for trademark owners.

Twitter
On September 15, 2009, ONEOK, Inc., a publicly traded Fortune 500 company in the energy industry, filed suit against Twitter, Inc. for trademark infringement and contributory infringement of ONEOK’s registered trademarks in the District Court for the Northern District of Oklahoma.

ONEOK is the owner of U.S. Trademark Registration Number 2,985,073 for the word mark “ONEOK” and a Diamond design. ONEOK is also the owner of U.S. Trademark Registration Number 3,655,886 for a Diamond design. In the Complaint, ONEOK alleges the following:
1. Twitter has assigned the user name “ONEOK” to a party other than ONEOK, Inc.;
2. The current ONEOK Twitter account holder has generated Tweets on at least two occasions containing information regarding ONEOK, Inc., the ONEOK trademark name and the Diamond design;
3. The Tweets have the appearance of being an official statement issued by ONEOK and have been passed off to unsuspecting recipients as official statements by ONEOK on Twitter;
4. Twitter has provided the means by which the Twitter account holder generated the postings; and
5. Twitter has refused to transfer control of the ONEOK Twitter account to ONEOK, Inc.

ONEOK claims that if the situation is allowed to persist, it will cause irreparable damage to ONEOK’s reputation in the investor community and in the energy industry.

Twitter’s current Terms of Use do not provide a means for submitting a notice of trademark infringement. The Terms only provide a means for submitting a notice of copyright infringement.

Facebook
On June 13, 2009, Facebook allowed users to personalize a Facebook URL by selecting a unique “username” (www.facebook.com/username) which could include a trademark, brand name, or personal name. Companies could protect their registered trademark from a potential infringer registering their trademark as a username by filing out a “Preventing the Registration of a Username” form. The trademark owner was required to provide their trademark and registration number on the form.

Facebook’s current Terms of Use provide a means for submitting a notice of copyright infringement and non-copyright intellectual property infringement. Facebook allows users to provide a “Notice of Intellectual Property Infringement” by filling out an “automated IP infringement form” online if the user believes their non-copyright intellectual property rights are being infringed.

- Katie Cooper

Ride The Ducks Tour Company Files Trademark Infringement Suit

Clipart Illustration of Two Yellow Geese Talking And Facing EachRide The Ducks is an amphibious tour operator with duck boat tours in Branson, Philadelphia, San Francisco, Seattle, Stone Mountain Park, GA and Newport, KY.  On May 19, 2009, Ride The Ducks filed suit against Bay Quackers in federal court in the Northern District of California alleging infringement of a sound mark.

Bay Quackers is a San Francisco amphibious tour operator.  During tours, guests “quack” like a duck using a kazoo.  The suit alleges that Bay Quackers’ kazoos emit a quacking sound that is identical to a registered sound mark of Ride The Ducks, U.S. registration number 2484276, which “consists of a quacking noise made by tour guides and tour participants by use of duck call devices throughout various portions of the tours.” 

A sound mark, which is a type of trademark, identifies and distinguishes a product or service through audio means. Examples of sound marks include: (1) a series of tones or musical notes, with or without words; and (2) wording accompanied by music.  TMEP § 1202.15.  An individual or company may try to protect their sound mark by filing an application for registration with the United States Patent and Trademark Office electronically.   

Ride The Ducks has sought a preliminary injunction against Bay Quackers to stop using the kazoos and to have its inventory of the kazoos destroyed.      

Just Ducky Tours is a popular attraction in Pittsburgh that is similar to Ride The Ducks and Bay Quackers.  Just Ducky Tours offers an amphibious tour that travels on land and in one of Pittsburgh’s three rivers during the months of April through October and on weekends in November. 

- Katie Cooper

Federal Circuit raises bar for Fraud on Trademark Office

dreamstime_7137244In numerous recent cases the Trademark Trial and Appeal Board has seemed to be lowering the standard for what it considered Fraud against the Trademark Office. The Court of Appeals for the Federal Circuit has reversed that trend with its August 31, 2009 decision in Bose Corp. v. Hexawave, Inc., Fed. Cir., No. 2008-1448, 8/31/009.

The dispute arose over the “WAVE” trademark registration for radios, clock radios, audio tape recorders and players, portable radio and cassette recording combinations, compact stereo systems and portable compact disc players. Bose opposed the registration of “HEXAWAVE” in connection with compound semi-conductor devices consisting of an integrated circuit; microwave monolithic integrated circuit; modules, namely power modules for wireless communication; transistor; tuner; mixer; amplifier; downconverter; transceiver; transmitter; receiver; detectors, namely radio frequency detectors; radio frequency switch; [and] antenna by Hexawave, Inc. Hexawave, Inc. filed a counterclaim and asked for cancellation of Bose registrations.

The fraud alleged by Hexawave, Inc. was due to the fact that Bose had filed a combined section 8 & 9 Renewal that stated that the mark was still in use with audio tape recorders and players when Bose had stopped manufacturing audio tape recorders and players and the general counsel knew that when he signed the renewal. The general counsel testified that he thought the mark was still in use because the audio tape recorders and players were still being repaired by Bose and transported to customers.

The Trademark Trial and Appeal Board (“TTAB”) held that repairing and shipping to customers was not sufficient use to maintain the registration and that the general counsel’s belief was unreasonable. The TTAB also found that the statement in the Renewal was material and therefore Bose committed Fraud on the Trademark Office and ordered cancellation of the Bose WAVE registration.

The TTAB held, “[a] trademark applicant commits fraud in procuring a registration when it makes material representations of fact in its declaration which it knows or should know to be false or misleading.”

The Federal Circuit reversed the decision:

By equating “should have known” of the falsity with a subjective intent, the Board erroneously lowered the fraud standard to a simple negligence standard. See Ileto v. Glock, Inc., 565 F.3d 1126, 1155 (9th Cir. 2009) (“Knowing conduct thus stands in contrast to negligent conduct, which typically requires only that the defendant knew or should have known each of the facts that made his act or omission unlawful. . . .”); see also Davis v. Monroe County Bd. of Educ., 526 U.S. 629, 642 (1999) (explaining that in Gebser v. Lago Vista Independent School District, 524 U.S. 274 (1998), the Court “declined the invitation to impose liability under what amounted to a negligence standard—holding the district liable for its failure to react to teacher-student harassment of which it knew or should have known. Rather, [the Court] concluded that the district could be liable for damages only where the district itself intentionally acted in clear violation of Title IX by remaining deliberately indifferent to acts of teacher-student harassment of which it had actual knowledge.”).

We have previously stated that “[m]ere negligence is not sufficient to infer fraud or dishonesty.” Symbol Techs., Inc. v. Opticon, Inc., 935 F.2d 1569, 1582 (Fed. Cir. 1991). We even held that “a finding that particular conduct amounts to ‘gross negligence’ does not of itself justify an inference of intent to deceive.” Kingsdown Med. Consultants, Ltd. v. Hollister Inc., 863 F.2d 867, 876 (Fed. Cir. 1988) (en banc). The principle that the standard for finding intent to deceive is stricter than the standard for negligence or gross negligence, even though announced in patent inequitable conduct cases, applies with equal force to trademark fraud cases. After all, an allegation of fraud in a trademark case, as in any other case, should not be taken lightly. San Juan Prods., 849 F.2d at 474 (quoting Anheuser-Busch, Inc. v. Bavarian Brewing Co., 264 F.2d 88, 92 (6th Cir. 1959)). Thus, we hold that a trademark is obtained fraudulently under the Lanham Act only if the applicant or registrant knowingly makes a false, material representation with the intent to deceive the PTO.

Subjective intent to deceive, however difficult it may be to prove, is an indispensable element in the analysis. Of course, “because direct evidence of deceptive intent is rarely available, such intent can be inferred from indirect and circumstantial evidence. But such evidence must still be clear and convincing, and inferences drawn from lesser evidence cannot satisfy the deceptive intent requirement.” Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1366 (Fed. Cir. 2008). When drawing an inference of intent, “the involved conduct, viewed in light of all the evidence . . . must indicate sufficient culpability to require a finding of intent to deceive.” Kingsdown, 863 F.2d at 876.

By equating “should have known” of the falsity with a subjective intent, the Board erroneously lowered the fraud standard to a simple negligence standard. See Ileto v. Glock, Inc., 565 F.3d 1126, 1155 (9th Cir. 2009) (“Knowing conduct thus stands in contrast to negligent conduct, which typically requires only that the defendant knew or should have known each of the facts that made his act or omission unlawful. . . .”); see also Davis v. Monroe County Bd. of Educ., 526 U.S. 629, 642 (1999) (explaining that in Gebser v. Lago Vista Independent School District, 524 U.S. 274 (1998), the Court “declined the invitation to impose liability under what amounted to a negligence standard—holding the district liable for its failure to react to teacher-student harassment of which it knew or should have known. Rather, [the Court] concluded that the district could be liable for damages only where the district itself intentionally acted in clear violation of Title IX by remaining deliberately indifferent to acts of teacher-student harassment of which it had actual knowledge.”).

We have previously stated that “[m]ere negligence is not sufficient to infer fraud or dishonesty.” Symbol Techs., Inc. v. Opticon, Inc., 935 F.2d 1569, 1582 (Fed. Cir. 1991). We even held that “a finding that particular conduct amounts to ‘gross negligence’ does not of itself justify an inference of intent to deceive.” Kingsdown Med. Consultants, Ltd. v. Hollister Inc., 863 F.2d 867, 876 (Fed. Cir. 1988) (en banc). The principle that the standard for finding intent to deceive is stricter than the standard for negligence or gross negligence, even though announced in patent inequitable conduct cases, applies with equal force to trademark fraud cases. After all, an allegation of fraud in a trademark case, as in any other case, should not be taken lightly. San Juan Prods., 849 F.2d at 474 (quoting Anheuser-Busch, Inc. v. Bavarian Brewing Co., 264 F.2d 88, 92 (6th Cir. 1959)). Thus, we hold that a trademark is obtained fraudulently under the Lanham Act only if the applicant or registrant knowingly makes a false, material representation with the intent to deceive the PTO.

Subjective intent to deceive, however difficult it may be to prove, is an indispensable element in the analysis. Of course, “because direct evidence of deceptive intent is rarely available, such intent can be inferred from indirect and circumstantial evidence. But such evidence must still be clear and convincing, and inferences drawn from lesser evidence cannot satisfy the deceptive intent requirement.” Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1366 (Fed. Cir. 2008). When drawing an inference of intent, “the involved conduct, viewed in light of all the evidence . . . must indicate sufficient culpability to require a finding of intent to deceive.” Kingsdown, 863 F.2d at 876.

This decision raises the bar for Fraud on the Trademark Office to where it was before the TTAB started lowering it.

- John C. Thomas III

Disclaimer Requirement for Multi-Class Trademark Applications

dreamstime_7466002

Recently when working on a Trademark Application for a Pittsburgh-based company, the United States Patent and Trademark Office Examining Attorney rejected the Application and required a disclaimer of the word “ENERGY” as it related to International Class 032 for beverages on the basis that the word “ENERGY” is descriptive for beverages.

There were multiple classes in the Application. If you use the United States Patent and Trademark Office Response to Office Action Form Disclaimer field, the word “ENERGY” would be disclaimed for the entire Application. However, the word “ENERGY” was not descriptive as to a majority of the other classes. You can have a disclaimer that applies to only certain classes or goods.

When faced with the situation where the descriptive part of the mark is limited to only certain goods or services, it is best not to use the general Disclaimer provided by the USPTO Response to Office Action Form. Instead, use the Miscellaneous Statement section of the USPTO Response to Office Action Form to write your own disclaimer statement limiting the disclaimer to only the goods or services considered to be descriptive.

- John C. Thomas III

Trademark Date of First Use with More Than One Item of Goods or Services Specified in One Class

When a trademark application contains more than one item of goods or services in one class, the date of first use anywhere and date of first use in commerce do not have to pertain to every item in the class. TMEP § 903.09. However, the Trademark Office will presume that the date of first use applies to all the goods or services, unless the applicant states otherwise. Id. Where the date of first use does not pertain to all items in a class, the applicant should specify the particular items to which the date does pertain. Id.

In a Trademark Electronic Application System (“TEAS”) Plus application or a regular TEAS application in which the applicant enters the goods/services using the Trademark Office’s online Acceptable Identification of Goods and Services Manual, different dates of use can be provided for any particular item. Federal Register Vol. 73, No. 222. If the applicant uses the free-text entry approach to identify the goods/services in a regular TEAS application, the online instructions tell the applicant to indicate in parentheses the item to which the dates apply. Id. The applicant can also use the Miscellaneous Statement field of the Additional Statement section of the application form to enter information. Id.

- Katie Cooper