Decisions in Brief

Vol. 6 No. 4

By

John C. Gatz is a member of the firm Nixon Peabody LLP in Chicago. Column contributors include the following writers. Copyrights: Zachary J. Smolinski, Panduit Corporation; Michael N. Spink, Brinks, Gilson, & Lione; Mark R. Anderson,  Akerman LLP. Patents: Cynthia K. Barnett, Johnson & Johnson;  Timothy M. Kowalski, Google Inc.; R. Trevor Carter and Daniel M. Lechleiter, Faegre Baker Daniels LLP; Robert W. (Bill) Mason, Kinetic Concepts, Inc. Trade Secrets: R. Mark Halligan, Nixon Peabody LLP. Trademarks: Janet M. Garetto and Elizabeth W. Baio, Nixon Peabody LLP; Amy L. Sierocki.

COPYRIGHTS

Criminal Copyright Violations

United States v. Liu, 731 F.3d 982, 108 U.S.P.Q.2d 1371 (9th Cir. 2013). Liu owned a CD and DVD replication company and was convicted of criminal copyright infringement under 17 U.S.C. § 506(a)(1)(A) and 18 U.S.C. § 2319(b)(1) for making and distributing illegal copies of a motion picture, a software program, and various musical works, and was also convicted under 18 U.S.C. § 2318(a) for trafficking in counterfeit labels for the software program. Liu appealed and the Ninth Circuit vacated the convictions.

Liu argued that the district court provided an improper jury instruction regarding the meaning of the willfulness element of criminal copyright infringement. The Ninth Circuit noted that ambiguity existed in what the government needs to show willful infringement, such that it could mean either that the act the defendant took was willful, or that the defendant intended to violate a known legal obligation. Looking to precedent, the Ninth Circuit determined that criminal copyright infringement requires the government to show that the defendant intended to violate someone’s copyright. The Ninth Circuit noted that 17 U.S.C. § 506(c) provides that “evidence of reproduction or distribution of a copyrighted work, by itself, shall not be sufficient to establish willful infringement.” Therefore, the Ninth Circuit found that the jury instruction was improper because it would allow Liu to be convicted without requiring the government to prove that Liu knew his actions violated someone’s copyright, and vacated the convictions for copyright infringement.

The Ninth Circuit performed a similar analysis with respect to the counterfeit label conviction and the meaning of the term “knowingly.” The Ninth Circuit found the government was required to prove that Liu knew the labels were counterfeit, not simply that he made and shipped the labels. Therefore, the Ninth Circuit found that the jury instruction was improper because it would allow Liu to be convicted without requiring the government to prove that Liu knew the labels were counterfeit, and vacated the conviction on this count.

Google Books Project Is Transformative

The Authors Guild, Inc. v. Google, Inc., 2013 U.S. Dist. LEXIS 162198, 108 U.S.P.Q.2d 1674 (S.D.N.Y. 2013). Google began the Google Books project in 2004 to digitally scan the collections of various libraries around the country. Google did not seek or obtain permission from the copyright holders to digitally copy or display verbatim the books or portions thereof. The digitization provides a new and efficient way for readers and researchers to find books, making them searchable by words and phrases, and has become an essential research tool for librarians and humanities scholars. When a user clicks on a Google search result they are directed to an “About the Book” page that offers links to sellers of the book and/or libraries having the book in their collections.

Upon motions for summary judgment, the district court held that Google’s use of the works was highly transformative and did not supersede or supplant the original books. While Google is a commercial enterprise, it does not directly sell the books it scanned or the snippets it displays. Moreover, while Google does scan the entire book and make it searchable, it limits the amount of text it displays in response to a search. Finally, inasmuch as Google Books stands to enhance the sales of books to the benefit of copyright holders, the district court balanced the factors to find that Google Books provides significant public benefits and is entitled to fair use protection.

Licenses to Use Mashups

Beastie Boys v. Monster Energy Co., 2013 U.S. Dist. LEXIS 157780 (S.D.N.Y. 2013). After holding a winter sports event in 2012, soft drink producer Monster Energy released a promotional video combining video from the event with a mashup of musical works by the Beastie Boys. The music mashup was created by Zach Sciacca, a DJ known as “Z-Trip,” in a 2009 collaboration with the Beastie Boys, but had not been licensed by the Beastie Boys for use by Monster. Following the release of the video, the Beastie Boys sued Monster for copyright infringement, and in turn Monster brought claims against Sciacca, arguing that Sciacca had granted Monster permission to use the mashup.

Monster argued that it had formed a contract with Sciacca, which granted Monster the right to use the mashup in the video. The district court determined that the evidence did not show a clear, unambiguous, and unequivocal acceptance of an offer, and further that it did not indicate that Sciacca had authority to grant any license in the mashup to Monster. The court granted Sciacca’s motion for summary judgment on the claims against him.

PATENTS

Claim Construction

01 Communique Lab., Inc. v. LogMeIn, Inc., 687 F.3d 1292, 108 U.S.P.Q.2d 1408 (Fed. Cir. 2012). The Federal Circuit vacated and remanded the district court’s finding on summary judgment of noninfringement. The Federal Circuit found that the district court erroneously construed a claim term. The Federal Circuit found that the patentee’s use of the term “a locater server computer” does not limit it to a single locater server computer. It is well-established that the use of “a” or “an” in a claim means one or more. Nothing in the specification or prosecution history limits this rule.

Bayer CropScience AG v. Dow AgroSciences LLC, 728 F.3d 1324, 108 U.S.P.Q.2d 1071 (Fed. Cir. 2013). The Federal Circuit affirmed the district court’s judgment of noninfringement. The Federal Circuit found that the patentee’s proposed claim construction attempted to broaden the term well beyond the accepted scientific meaning. The specification and prosecution history do not provide any indication that the patentee was broadening the term.

SkinMedica, Inc. v. Histogen, Inc., 727 F.3d 1187, 108 U.S.P.Q.2d 1001 (Fed. Cir. 2013). The Federal Circuit affirmed the district court’s summary judgment of noninfringement. The Federal Circuit found that the patentee limited the phrase “culturing . . . cells in three dimensions” to exclude culturing with beads in its application. The patentee acted as his own lexicographer. The incorporation by reference of a book that discloses culturing cells in three dimensions was not enough to show that the inventors meant for it to be included. Because the accused method uses beads, it cannot infringe.

Claim Construction/Infringement

Sunovion Pharms., Inc. v. Teva Pharms. USA, Inc., 731 F.3d 1271, 108 U.S.P.Q.2d 1486 (Fed. Cir. 2013). The Federal Circuit affirmed the district court’s claim construction of the term “essentially free,” but reversed the district court’s noninfringement judgment finding the patentee was entitled to a judgment of infringement as a matter of law under § 271(e)(2)(A). Sunovion’s patent is directed to pharmaceutical compositions of the active ingredient in the sleep medication commercially known as LUNESTA®. The asserted claims recite “essentially free of its levorotatory isomer.” Because the court found there was no plain meaning for this term, it focused on the prosecution history because it was undisputed that neither the claims nor the written description define the term “essentially free.” The court construed the term as containing less than 0.25 percent of the levorotatory isomer based on a declaration submitted by the co-inventor and through amendments and arguments made during prosecution. The Federal Circuit agreed with the district court’s construction.

Turning to the infringement analysis, the Federal Circuit reversed the district court’s noninfringement judgment because the defendant’s ANDA application requested approval for levorotatory isomer amounts from 0 percent to 0.6 percent, within the construed range. The ANDA application controls in a § 271(e)(2)(A) infringement analysis, and the district court improperly focused on the manufacturing guidelines.

Claim Construction/Obviousness

Rambus Inc. v. Rea, 731 F.3d 1248, 108 U.S.P.Q.2d 1400 (Fed. Cir. 2013). The Federal Circuit affirmed the Board’s claim construction, but vacated and remanded its holding on obviousness. The Federal Circuit stated any claim construction that excludes the preferred embodiment is rarely, if ever, correct and would require highly persuasive evidentiary support. Regarding nonobviousness, the Federal Circuit found that the Board erroneously placed the burden on the patentee to prove its claims were nonobvious. Furthermore, the Federal Circuit found that the Board exceeded its limited role to review the examiner’s decisions during prosecution. The Board relied on grounds different than the examiner’s to invalidate the claims.

Contempt

nCUBE Corp. v. SeaChange Int’l Inc., 732 F.3d 1346, 108 U.S.P.Q.2d 1568 (Fed. Cir. 2013). The Federal Circuit affirmed the district court’s determination that the seeking party failed to prove, by clear and convincing evidence, that there was not a colorable difference between the newly accused product and the infringing product. The Federal Circuit found that the district court did not abuse its discretion in denying the contempt motion.

Design Patents/Validity

High Point Design LLC v. Buyers Direct, Inc., 730 F.3d 1301, 108 U.S.P.Q.2d 1183 (Fed. Cir. 2013). The Federal Circuit reversed and remanded the district court’s ruling that the asserted designs were invalid and vacated the district court’s dismissal of the defendant’s trade dress counterclaims. The Federal Circuit determined that the district court improperly applied an “ordinary observer” test when adjudging obviousness, instead of the required “ordinary designer” test, and also erred by rejecting the patentee’s expert declaration regarding the validity of the claimed designs. The district court further erred by not: (1) providing a verbal description of the claimed designs prior to adjudging the validity of those designs, and (2) conducting a side-by-side comparison of the accused designs and the primary prior art reference. Finally, the district court erred by applying the wrong standard for determining whether the claimed designs were invalid as purely functional.

Domestic Industry

Microsoft Corp. v. Int’l Trade Comm’n, 731 F.3d 1354, 108 U.S.P.Q.2d 1443 (Fed. Cir. 2013). The Federal Circuit affirmed in part the ITC’s finding of no domestic industry with respect to two Microsoft patents. To establish a domestic industry, Microsoft needed to show its substantial domestic investment (e.g., in research and development) related to an actual article that practiced the patents. Microsoft only provided evidence that certain client applications for mobile devices were contained in example applications that Microsoft provided to third-party phone manufacturers. Microsoft failed to provide any evidence that such client applications are actually implemented on any third-party mobile device. Thus, Microsoft failed to show that there was a domestic industry product that actually practices the patent.

Induced Infringement

Commil USA, LLC v. Cisco Sys., Inc., 108 U.S.P.Q.2d 1653 (Fed. Cir. 2013) and Commil USA, LLC v. Cisco Sys., Inc., 108 U.S.P.Q.2d 1657 (Fed. Cir. 2013). In two separate orders, the Federal Circuit denied petitions for rehearing and rehearing en banc in a case in which the panel that heard the underlying appeal held, as a matter of first impression, that “evidence of an accused inducer’s good-faith belief of invalidity may negate the requisite intent for induced infringement.”

Inequitable Conduct

Intellect Wireless Inc. v. HTC Corp., 732 F.3d 1339, 108 U.S.P.Q.2d 1563 (Fed. Cir. 2013). The Federal Circuit affirmed the district court’s judgment that the patents were unenforceable due to inequitable conduct. The inventor’s declaration during prosecution was unmistakably false, which absent curing, established materiality. The Federal Circuit further found that the declaration contained fabricated examples of an actual reduction to practice in order to overcome a prior art reference, which raised a strong inference of intent to deceive. The inventor further engaged in a pattern of deceit that made the inference stronger. The pattern of deceit supported the district court’s finding that the inventor’s explanations for making false statements during prosecution were not credible.

Network Signatures, Inc. v. State Farm Mut. Auto. Ins. Co., 731 F.3d 1239, 108 U.S.P.Q.2d 1321 (Fed. Cir. 2013). The Federal Circuit reversed and remanded the district court’s grant of summary judgment that the patent was unenforceable for inequitable conduct. The patent attorney’s compliance with the standard USPTO procedure for delayed payment, using the USPTO form for delayed payment, did not provide clear and convincing evidence of withholding of material information with the intent to deceive the director.

Infringement

Broadcom Corp. v. Emulex Corp., 732 F.3d 1325, 108 U.S.P.Q.2d 1513 (Fed. Cir. 2013). The Federal Circuit affirmed the district court’s finding of infringement and the grant of permanent injunction. The district court found that Emulex’s expert conceded that the accused device sometimes, but not always, performed a critical step that was found to be infringing. The Federal Circuit agreed that an accused device that sometimes, but not always, embodies a claim nonetheless infringes. The objective indicia of nonobviousness supported the conclusion of nonobviousness. The Federal Circuit also found that the district court properly tailored the permanent injunction to meet unique market concerns with a well-crafted sunset period.

Invalidity

Ibormeith IP, LLC v. Mercedes-Benz USA, LLC, 732 F.3d 1376, 108 U.S.P.Q.2d 1643 (Fed. Cir. 2013). The Federal Circuit held that the patent specification failed to adequately disclose an algorithm for “computation means” limitations. The patent relates to monitoring conditions affecting a vehicle driver’s sleepiness and issuing a warning to the driver before the driver becomes unduly impaired. For the “computation means,” the specification listed a number of factors (e.g., circadian rhythm, steering direction changes, magnitude of corrective steering actions, etc.) that could be taken into account in determining whether to give a driver warning. The Federal Circuit reasoned that a description of an algorithm that places no limitations on how values are calculated, combined, or weighted was insufficient to make the bounds of the claim understandable.

Jurisdiction

Aevoe Corp. v. AE Tech Co., 727 F.3d 1375, 107 U.S.P.Q.2d 2141 (Fed. Cir. 2013). The Federal Circuit dismissed the appeal for lack of jurisdiction. The Federal Circuit found that the district court did not substantively modify the injunction, and the addition of other defendants only clarified and did not modify the original injunction because the defendants always fell within the restrictions of the original injunction.

Wawrzynski v. H.J. Heinz Co., 728 F.3d 1374, 108 U.S.P.Q.2d 1127 (Fed. Cir. 2013). The Federal Circuit transferred the case to the Third Circuit because the Federal Circuit determined it was not a patent case. Wawrzynski introduced Heinz to his new product idea for a condiment container, but a business relationship between the parties never materialized. Wawrzynski sued Heinz after its commercial introduction of a condiment container. Wawrzynski’s complaint included allegations of breach of an implied contract, and the general allegations of the complaint referenced a patent. Heinz’s counterclaim sought declarations that the referenced patent was invalid and not infringed. The Federal Circuit determined it did not have jurisdiction over this appeal because the post-AIA version of § 1295, which provides the Federal Circuit with appellate jurisdiction for cases involving compulsory patent-related counterclaims, is inapplicable because the instant suit predated this AIA provision’s effective date. Further, the Federal Circuit did not find jurisdiction under the pre-AIA version of § 1295, which confers it with appellate jurisdiction over an action containing well-pled complaints for patent infringement. The sparse background in Wawrzynski’s complaint discussing his patent did not rise to that level.

Obviousness

MeadWestVaco Corp. v. Rexam Beauty & Closures, Inc., 731 F.3d 1258, 108 U.S.P.Q.2d 1296 (Fed. Cir. 2013). The Federal Circuit: (1) vacated the district court’s grant of summary judgment of nonobviousness, (2) affirmed the district court’s claim constructions, (3) denied Rexam’s motion to exclude and findings of infringement, (4) found that indefiniteness was waived, and (5) remanded for further proceedings. The Federal Circuit found that the district court failed to analyze two claims differently from the asserted claims, as obviousness must be analyzed on a claim-by-claim basis. In addition, the district court resolved material issues of fact in favor of the moving party, which was inappropriate at the summary judgment stage.

Patent Exhaustion

Keurig, Inc. v. Sturm Foods, Inc., 732 F.3d 1370, 108 U.S.P.Q.2d 1648 (Fed. Cir. 2013). The Federal Circuit affirmed the district court’s ruling that Keurig’s patent rights were exhausted and, therefore, the defendant did not infringe the claims. The asserted claims relate to a method of brewing a beverage, and the accused products were the defendant’s cartridges that can be used in performing the claimed method. The court held that Keurig’s rights in the method claims were exhausted by Keurig’s authorized sale of its brewing devices, which are also covered by the patents and practice the method claims asserted against the defendant. The court concluded that Keurig was prohibited from making an authorized sale of its brewers and thereafter pursuing infringement claims for using the brewers in a manner that infringed the claimed methods, citing long-standing Supreme Court precedent set forth in Adams v. Burke, 84 U.S. 453, 455 (1873).

Procedure/Rule 36

TecSec, Inc. v. IBM Corp., 731 F.3d 1336, 108 U.S.P.Q.2d 1429 (Fed. Cir. 2013). The Federal Circuit concluded that the district court misconstrued various claim terms of TecSec’s patents notwithstanding the same claim terms and constructions were affirmed by the Federal Circuit in a prior appeal. In the prior appeal, the Federal Circuit affirmed the district court’s grant of summary judgment of noninfringement pursuant to Rule 36. After TecSec lost its case against IBM, and without offering any additional evidence against the other defendants in this appeal, TecSec stipulated to noninfringement and again appealed the same district court’s claim constructions to the Federal Circuit. The Federal Circuit’s Rule 36 judgment was based on two independent grounds but did not endorse or reject any specific part of the district court’s reasoning. Thus, the Federal Circuit’s Rule 36 judgment in the prior appeal was not binding precedent on either ground.

PTAB Appeals

In re Biedermann, 733 F.3d 329, 108 U.S.P.Q.2d 1623 (Fed. Cir. 2013). The Federal Circuit vacated and remanded the Board’s decision affirming the examiner’s obviousness rejection of various claims in Biedermann’s patent application. The main issue was whether the Board and the examiner properly relied on the same articulated reasoning and factual underpinnings in rejecting the claims or whether the Board made new findings and adopted different reasons to support a new ground of rejection. The Federal Circuit determined that the Board erred in affirming the examiner’s rejection because the examiner and the Board relied on different grounds, which formed the bases or underpinnings of different rejections.

Software Patent Eligibility

Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013). In the Federal Circuit’s first software patent eligibility opinion following CLS Bank, the court added to the confusing status surrounding software patentability. The claims are directed to a computer system for generating tasks in insurance claim processing. The method claim was determined to be patent ineligible by the district court for being an abstract idea of organizing data and this was not appealed. The majority held the system claim unpatentable because the system claim and method claim contained only minor differences in terminology but required performance of the same basic process. Additionally, the majority reasoned that even when the system claim was viewed in isolation, it was not enough to limit the abstract idea by applying it in a computer environment within the insurance industry.

Validity

Soverain Software LLC v. Newegg Inc., 728 F.3d 1332, 108 U.S.P.Q.2d 1158 (Fed. Cir. 2013). In this per curium decision, the Federal Circuit amended the district court’s prior judgment to include a dependent claim being invalid on the ground of obviousness for the same reasons as the claim from which it depended. At the district court, the validity of the dependent claim was not separately argued to the court and no evidence was offered that contradicted the defendant’s expert’s testimony that the additional limitation recited in the dependent claim was embodied in the prior art system. The Federal Circuit pointed to its precedent that when a dependent claim and its independent claim are not separately argued, absent some effort at distinction, the claims rise or fall together.

St. Jude Med., Inc. v. Access Closure, Inc., 729 F.3d 1369, 108 U.S.P.Q.2d 1285 (Fed. Cir. 2013). The Federal Circuit affirmed in part and reversed in part the district court’s decision. The Federal Circuit affirmed the district court’s refusal to grant ACI’s renewed motion for JMOL, finding ACI’s obviousness arguments without merit. Further, with respect to ACI’s appeal regarding district court’s application of the safe harbor provision of § 121 to the challenged patent, the Federal Circuit found that consonance was not maintained, inasmuch as the challenged patent and the sibling patent claimed some of the same inventions identified by the examiner. Because the challenged patent and the sibling patent did not maintain consonance, the claims of the challenged patent were invalid for double patenting.

Written Description

Trading Techs. Int’l, Inc. v. Open E Cry, LLC, 728 F.3d 1309, 107 U.S.P.Q.2d 2086 (Fed. Cir. 2013). The Federal Circuit reversed and remanded the district court’s entry of summary judgment that the asserted claims were invalid for failing to comply with the written description requirement and the district court’s finding that prosecution history estoppel barred Trading Techs. (TT) from asserting its patent. The district court premised its holdings on a prior Federal Circuit case, which considered two related patents from TT’s portfolio. The Federal Circuit found that its decision in the prior litigation did not address the current claim construction issue. Accordingly, the Federal Circuit reversed the summary judgment of invalidity and remanded for further proceedings under § 112. With respect to the other patent, which was a CIP, the Federal Circuit concluded that TT was entitled to summary judgment that the claims were not proven invalid by clear and convincing evidence for lack of adequate written description.

TRADE SECRETS

Misappropriation

Lumenate Techs., LP v. Integrated Data Storage, LLC, 2013 U.S. Dist. LEXIS 160414 (N.D. Ill. 2013). The motion to dismiss the trade secret’s misappropriation claim pled “on information and belief” was denied. Direct evidence is not required to prove misappropriation of a trade secret. Courts often consider a defendant’s suspicious downloading of company information before his departure and attempt to cover his tracks in determining whether the defendant misappropriated trade secrets.

Motion to Dismiss

Alpha Pro Tech, Inc. v. VWR Int’l LLC, 2013 U.S. Dist. LEXIS 167762 (E.D. Pa. 2013). The motion to dismiss the trade secret’s claims was filed because no discovery could establish that the information at issue could achieve trade secret status. The motion to dismiss was denied because what constitutes a trade secret under the Pennsylvania Uniform Trade Secrets Act is a question of fact not appropriate for resolution on a motion to dismiss.

American Registry LLC v. Hanaw, 2013 U.S. Dist. LEXIS 171899 (M.D. Fla. 2013). The motion to dismiss the trade secret’s claim was granted. A generic list of trade secrets does not adequately inform defendants what they supposedly misappropriated. Further, the misappropriation allegations are defective because the complaint lacked any factual allegations supporting the misappropriation claim.

TRADEMARKS

Genericness

Sheetz of Del., Inc. v. Doctor’s Assocs. Inc., 108 U.S.P.Q.2d 1341 (T.T.A.B. 2013). Sheetz opposed the registration of an application for the mark FOOTLONG, filed by Doctor’s Associates (DA), in connection with “sandwiches, excluding hot dogs” on the basis the mark was generic or was at least merely descriptive. The TTAB identified the genus of goods at issue to be sandwiches (excluding hot dogs) and the relevant public to be ordinary consumers who purchase and eat sandwiches.

Extensive evidence was considered by the TTAB regarding use of the term “footlong,” including declarations from third-party restaurant owners, printed publications and Internet postings, and survey evidence. The TTAB found that use of the term “footlong” was pervasive for the goods at issue (i.e., 12-inch sandwiches) and was not used as a source indicator. When viewing DA’s examples of use of the mark (including the use of FOOTLONG with SUBWAY® sandwiches), the TTAB found that even DA was not using the term “footlong” in a manner likely to be recognized as a trademark, but instead was using the term to denote a type of sandwich. The TTAB noted several problems with DA’s survey evidence and gave little weight to those results.

The TTAB found that the mark FOOTLONG was generic for the goods. In the alternative, the TTAB also found that DA had not shown that the mark had acquired distinctiveness under § 2(f) and noted that consumers were much more likely to view “footlong” as referring to sandwiches of a particular size, and not as a trademark. The opposition was thus sustained.

Likelihood of Confusion

Water-Pik, Inc. v. Med-Systems, Inc., 726 F.3d 1136, 107 U.S.P.Q.2d 2095 (10th Cir. 2013). Water-Pik filed a declaratory judgment against Med-Systems, arguing that its use of the “SinuSense” mark did not infringe Med-Systems’ “SinuCleanse” mark and did not constitute unfair competition or dilution. Med-Systems appealed from the district court’s grant of summary judgment in favor of Water-Pik. The Tenth Circuit affirmed.

Med-Systems, the earlier entrant into the market, sold its consumer products for rinsing sinus cavities under the federally registered trademark SinuCleanse and two similar marks. Water-Pik filed an intent-to-use application for the mark SINUSENSE for sinus-irrigation devices. Med-Systems opposed the mark, but the opposition was stayed pending the declaratory judgment action brought by Water-Pik. Med-Systems appealed the district court’s findings in favor of Water-Pik on its claims of trademark infringement and unfair competition.

The Tenth Circuit found that only the last of the six factors used to determine likelihood of confusion favored Med-Systems. First, the Tenth Circuit found Med-Systems’ survey evidence did not establish actual confusion, due at least in part to several serious methodological flaws in the survey. Second, the court held that the SinuCleanse mark was weak because the “Sinu” prefix was essentially generic and the mark as a whole was merely descriptive. Third, the court found that despite several visual similarities between the SinuCleanse and SinuSense marks, there were significant distinctions due to the italicizing of “Cleanse,” due to Water-Pik’s inclusion of its house mark on its products, and in the sounds and impressions of the marks, thereby favoring Water-Pik. The fourth factor, whether Water-Pik had an improper intent in adopting the SinuSense mark, was found to be neutral due to the weakness of the evidence. The fifth factor also favored Water-Pik since consumers were likely to exercise a high degree of care in purchasing the parties’ respective products. The final factor, the similarity of products and manner of marketing, was found to favor Med-Systems.

The court held that the lack of evidence of actual confusion, the weakness of the SinuCleanse mark, and the notable respects in which the SinuSense mark differs (particularly when considered with the Water-Pik house mark) supported the district court’s finding that Med-Systems failed to raise a genuine factual issue regarding likelihood of confusion. Accordingly, the Tenth Circuit affirmed the district court’s award of summary judgment in favor of Water-Pik.

Nonregistrable Subject Matter

In re City of Houston, 731 F.3d 1326, 108 U.S.P.Q.2d 1226 (Fed. Cir. 2013). There were two cases raising a question of whether a local government entity may obtain a federal registration for its official insignias that were combined from appeals from the TTAB. The city of Houston and the government of the District of Columbia separately appealed from final TTAB decisions concluding that § 2(b) of the Lanham Act prohibited them from registering their official seals on the Federal Register. Houston argued that because it was a government entity seeking to register its own seal, it was not an “applicant” falling within the prohibition of § 2(b). Specifically, Houston argued that § 2(b) suggested that Congress intended “applicant” to mean something other than a government entity seeking to register its own seal. The Federal Circuit disagreed, finding nothing in the plain language of § 2(b) that suggested that government entities should be exempted therefrom.

The District argued that the refusal to register its seal due to the prohibition set forth in § 2(b) was inconsistent with the treaty obligations of the United States negotiated in the Paris Convention of 1883. The District argued that, because § 2(b) was not clear on its face, the legislative history of the Lanham Act and the Paris Convention was a proper subject for judicial consideration. Again, the Federal Circuit maintained that § 2(b) was clear on its face. Furthermore, the District had no rights relating to its official insignia under the Paris Convention because the District was not a country of the Union.

The Federal Circuit thus affirmed the TTAB’s decisions refusing to register the government entities’ official seals.

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