Tag 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

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

Michael Jackson’s Patented Move

Patent figure

The United States Patent and Trademark Office is hosting an exhibit displaying material from Michael Jackson’s Patent and Trademark Applications.

The exhibit will include Jackson’s U.S. Patent No. 5,255,452 for a “system for allowing a shoe wearer to lean forwardly beyond his center of gravity by virtue of wearing a specially designed pair of shoes which will engage with a hitch member movably projectable through a stage surface” which he used in his “Smooth Criminal” music video. Jackson is listed as a co-inventor on the Patent. The display also shows an original signature by Jackson on the Application.

Jackson also had various Trademarks Registrations including U.S. Registration No. 1,908,209 for the mark “MICHAEL JACKSON” for use on “sound recordings; namely, pre-recorded phonograph records, audio tapes, compact discs, videotapes, and motion picture films featuring music and entertainment.” In addition to Registrations there are several Trademark Applications which include Serial Nos. 77/480,301 and 77/480,413 for “THRILLER 25 THE WORLD’S BIGGEST SELLING ALBUM OF ALL TIME,” both of which are still pending.

The exhibit opened on July 15, 2009 and will run through Labor Day of this year. It is free and open to the public.

Jackson’s manager, Frank DiLeo, is from Pittsburgh, Pennsylvania (Point Breeze) and went to Central Catholic High School.

Eat’n Park Smiley Cookie Trademark Infringement Litigation

Eat’n Park, a restaurant company based east of Pittsburgh, Pennsylvania, filed a trademark infringement lawsuit in the United States District Court for Western Pennsylvania against Forget-Me-Knot Gifts alleging that Forget-Me-Knot sells a Smiley cookie that infringes Eat’n Park’s Smiley cookies.

Eat’n Park owns the trademark “Smiley” for “sugar cookie having raised design of a smiling face sold in restaurants for consumption on or off the premises.”  Eat’n Park has been selling its Smiley cookies under the trademark since 1987.

Using TEAS for Filing Declarations and Renewals for Certification Marks

The United States Patent and Trademark Office (“USPTO”) provides electronic forms for filing trademark documents. A certification mark is a special type of mark different from a typical trademark or service mark. 15 U.S.C § 1127 defines a certification mark as follows:

The term “certification mark” means any word, name, symbol, or device, or any combination thereof–

(1) used by a person other than its owner, or

(2) which its owner has a bona fide intention to permit a person other than the owner to use in commerce and files an application to register on the principal register established by this Act,

to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person’s goods or services or that the work or labor on the goods or services was performed by members of a union or other organization.

The Trademark Electronic Application System (“TEAS”) provides a special form when applying for a certification mark. This is important because the statements in the certification mark application are different because the applicant does not use the certification mark. A certification mark conveys a message that goods or services are checked/inspected/tested by a third party that is not the producer of the goods or services. The owner of a certification mark should not use the mark. In fact, the application indicates that “Applicant will not be engaged in the production or marketing of the goods or services to which the mark is applied.”

If an owner of a certification mark were to use a certification mark as a trademark or service mark in connection with the goods or services that are being certified it would invalidate the mark. “Trade or service marks and certification marks are different and distinct types of marks, which serve different purposes. A trademark or service mark is used by the owner of the mark on his or her goods or services, whereas a certification mark is used by persons other than the owner of the mark. A certification mark does not distinguish between producers, but represents a certification regarding some characteristic that is common to the goods or services of many persons. Using the same mark for two contradictory purposes would result in confusion and uncertainty about the meaning of the mark and would invalidate the mark for either purpose.” TMEP 1306.05(a).

Additionally,15 U.S.C. §1054 prohibits the registration of a certification mark “when used so as to represent falsely that the owner or a user thereof makes or sells the goods or performs the services on or in connection with which such mark is used;” and §14(5)(B) of the Act, 15 U.S.C. §1064(5)(B), provides for the cancellation of a registered certification mark where the registrant engages in the production or marketing of any goods or services to which the certification mark is applied. TMEP 1306.05(a).

Between the fifth and sixth year after registration of any mark the owner is required to file a Section 8 Declaration of Use to keep the mark registered. Often a Section 15 Declaration of Incontestability is often filed in combination with the Section 8 Declaration of Use.

Additionally, a Registration owner is required to file a Section 8 Declaration of Use and a Section 9 Renewal every ten years in order to keep the Registration.

The TEAS system provides electronic forms for filing Section 8 & 15 Declarations as well as Section 8 & 9 Renewal forms for trademarks and service marks. These forms indicate that the owner of the marks USE the marks. TEAS does not provide for special forms for Sections 8, 9, & 15 for certification marks.

Owners of Registrations for certification marks should be careful when filing these Declarations and Renewals because if those electronic forms are used they indicate that the owner of the Registration is using the mark.

The best course in filing these types of documents for a certification mark would be to create your own form or to consult with an attorney having experience with certification marks.