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Decisions in Brief

Decisions in Brief

John C. Gatz

©2013. Published in Landslide, Vol. 6, No. 1, September/October 2013, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

COPYRIGHTS

Digital Media Resale Site Infringes Record Company’s Copyrights

Capitol Records, LLC v. ReDigi, Inc., 106 U.S.P.Q.2d 1449 (S.D.N.Y. 2013). ReDigi operates a website that allows users to sell previously purchased digital downloads of music and buy similar files from other users. ReDigi provides software that creates a list of the music files on a user’s computer that are eligible to resell. ReDigi limited eligible files to songs purchased on iTunes or from ReDigi. Once a user decided to sell a song, the ReDigi software copied the song onto a ReDigi server and informed the user to delete the file. If the user did not delete the file, ReDigi would suspend that user’s account. When a song was sold through ReDigi, a portion of the sale price was credited to the seller, and ReDigi retained 60 percent of the sale price. Capitol sued ReDigi for copyright infringement. Capitol and ReDigi moved for summary judgment regarding copyright infringement.

The district court granted Capitol’s motion for summary judgment of copyright infringement and ruled that a digital music file may not be lawfully resold through ReDigi. The court first considered whether Capitol could state a claim for copyright infringement, and determined that ReDigi infringed Capitol’s reproduction rights and distribution rights under 17 U.S.C. § 106. The court determined that when a digital music file is transferred from the original owner to ReDigi’s servers, a new material object embodying the underlying copyrighted song is created, and this new material object violates Capitol’s reproduction rights. Additionally, the court found that sales of songs by ReDigi violated Capitol’s distribution rights. Next, the court rejected the fair use and first sale affirmative defenses raised by ReDigi. Therefore, ReDigi offered no valid affirmative defense for the violation of Capitol’s reproduction rights. The court further found that the first sale doctrine did not provide a defense to ReDigi’s distribution of copyrighted songs, because the first sale defense is limited to material items (e.g., records) that the copyright owner put into commerce. ReDigi was distributing reproductions of the works, not the material item Capitol sold. The district court determined that ReDigi was liable for direct infringement, contributory infringement, and vicarious infringement of Capitol’s copyrights.

Porno Troll Punished

Ingenuity 13, LLC v. John Doe, 2013 WL 1898633 (C.D. Cal. 2013). The plaintiffs and related entities were formed by three senior attorneys for the purpose of litigating infringement lawsuits against illegal downloaders of pornographic movies. Through the monitoring of BitTorrent download activity, the plaintiffs obtained IP addresses of the computers downloading the movies, and then filed suit in federal court to subpoena ISPs for the identities of the downloaders. When unable to settle with a defendant, the plaintiffs filed complaints using boilerplate language based on a modicum of evidence. The senior attorneys hired willing attorneys to prosecute the litigations within narrow directives, and were involved in providing disinformation about the cases, securing early discovery requests based on misrepresentations, and dismissing the cases when they were not profitable. They also fraudulently signed the copyright assignment for at least one of the works.

The district court ordered the senior attorneys, their hired attorneys, and related companies to appear. Based on the bad faith and willful disobedience of the district court’s order vacating early discovery, the district court exercised its inherent authority to sanction the plaintiffs and their lawyers for improper conduct, including a doubling of attorneys’ fees. Rule 11 did not allow for monetary sanctions because the underlying case had already been dismissed by the plaintiffs. Several of the involved attorneys were reported to their respective state and federal bars, as well as the Criminal Investigation Division of the IRS.

Transmissions to Subscribers Are Not Public Performances

WNET v. Aereo Inc., 712 F.3d 676, 106 U.S.P.Q.2d 1341 (2d Cir. 2013). Aereo offers a service that allows users to view video broadcasts on Internet-connected devices. Aereo’s system uses remotely located antennas to receive over-air signals, records videos on remote hard drives, and sends videos to subscribers’ devices. Aereo was sued for copyright infringement by major television networks, which moved for a preliminary injunction. Aereo argued that its business model is noninfringing based on the Second Circuit’s 2008 Cablevision case. The district court determined that the networks were not entitled to a preliminary injunction. The Second Circuit affirmed the district court’s decision to deny a preliminary injunction. The Second Circuit determined that whether or not Aereo’s system infringed the plaintiffs’ copyrights depended on whether Aereo’s retransmissions of the video to its subscribers via the Internet could be considered public performances. Noting, among other facts, that the potential audience of each Aereo transmission is the single user who requested that a program be recorded, the court declined to deem Aereo’s transmissions “public performances.”

PATENTS

Attorney Fees

Checkpoint Sys., Inc. v. All-Tag Sec. S.A., 711 F.3d 1341, 106 U.S.P.Q.2d 1234 (Fed. Cir. 2013). The Federal Circuit reversed the district court’s holding that the case was exceptional under § 285 and, thus, reversed the award of the defendant’s attorney’s fees, costs, and interest. The award of attorney’s fees was based on the patentee’s presentation of expert testimony analyzing the defendant’s earlier tags made in Switzerland, but not the accused tags made in Belgium. The district court stated that because the plaintiff never looked at the accused product in relation to its patent, this alone warrants an exceptional case finding. The Federal Circuit disagreed based on a number of factors, including the lack of evidence showing that the defendant’s Belgium-based tags were different than the Switzerland-based tags.

Claim Construction

Uship Intellectual Properties LLC v. United States, 714 F.3d 1311, 106 U.S.P.Q.2d 1598 (Fed. Cir. 2013). The Federal Circuit affirmed the entry of summary judgment of noninfringement by the Court of Federal Claims (CFC). The patentee traversed a restriction requirement and made arguments that the claims were drawn to a single invention because the method claims use an automated shipping machine as set forth in the preamble. The Federal Circuit found these statements gave rise to prosecution disclaimer, despite the statement not attempting to overcome a claim rejection. The Federal Circuit also agreed with the CFC’s claim construction and therefore affirmed the entry of summary judgment.

Claim Construction/ Validity/Damages

Power Integrations Inc. v. Fairchild Semiconductor Int’l Inc., 711 F.3d 1348, 106 U.S.P.Q.2d 1361 (Fed. Cir. 2013). The Federal Circuit made a variety of rulings on invalidity, claim construction, and damages on an appeal following two jury trials, a bench trial, and post-trial proceedings. For a key claim term, the federal court relied heavily on statements in the specification in affirming the district court’s claim construction. The Federal Circuit also affirmed a jury and district court’s nonobviousness finding by finding substantial evidence of secondary considerations. The Federal Circuit found that a damages reduction was correct because the patent owner cannot collect damages for infringing activity outside the United States.

Collateral Estoppel

Aspex Eyewear Inc. v. Zenni Optical LLC, 713 F.3d 1377, 106 U.S.P.Q.2d 1488 (Fed. Cir. 2013). The Federal Circuit affirmed the district court’s finding that collateral estoppel barred the present suit. The asserted claims in the present suit were not asserted in a prior litigation. The same term present in every claim, however, was previously found to be dispositive of noninfringement in the prior litigation.

Cross-Appeals

Lazare Kaplan Int’l Inc. v. Photoscribe Techs. Inc., 714 F.3d 1289, 106 U.S.P.Q.2d 1433 (Fed. Cir. 2013). The Federal Circuit reversed the district court’s ruling under Rule 60(b) and vacated the invalidity ruling. The district court found the patent to be valid under a certain claim construction. During appeal, the defendant did not appeal the validity ruling, so the Federal Circuit held that the defendant was not allowed to appeal the validity ruling after a new claim construction was determined.

Design Patents/ Written Description

In re Owens, 710 F.3d 1362, 106 U.S.P.Q.2d 1248 (Fed. Cir. 2013). The Federal Circuit affirmed the Board’s rejection of Owens’s design application for lack of written description under § 112, ¶1. In his continuation application, Owens introduced a broken line in the drawing to show the claimed portion of his bottle design, which created a new trapezoidal-shaped surface that was considered new matter. The Board and the Federal Circuit agreed and, as such, the continuation application was not entitled to the earlier application’s filing date. The Federal Circuit explained that an applicant may introduce “unclaimed boundary” lines in continuation applications for design patents to indicate that the applicant has disclaimed the portion beyond the boundary while claiming the area within it. Where permissible, unclaimed boundary lines allow an applicant to adjust a patent’s coverage and encompass embodiments that differ slightly but insignificantly from an originally-filed design. However, like all amendments made during prosecution, such lines must comply with the written description requirement to receive the benefit of priority date of a parent application under § 120.

Discovery/Inter Partes Reexamination

Abbott Labs. v. Cordis Corp., 710 F.3d 1318, 106 U.S.P.Q.2d 1227 (Fed. Cir. 2013). The Federal Circuit affirmed the district court’s decision granting Abbott’s motion to quash two subpoenas duces tecum issued pursuant to 35 U.S.C. § 24. The Federal Circuit concluded that § 24 only empowers a district court to issue a subpoena for use in a “contested” case, and that contested cases are limited to those in which the USPTO’s regulations authorize the parties to take depositions. Because USPTO does not provide for depositions in inter partes reexamination proceedings, such proceedings are not contested cases within the meaning of § 24. Thus, subpoenas under § 24 are not available.

Indefiniteness

Biosig Insts., Inc. v. Nautilus, Inc., 715 F.3d 891, 106 U.S.P.Q2d 1554 (Fed. Cir. 2013). The Federal Circuit reversed the district court’s summary judgment that the asserted claims were invalid for indefiniteness based on the claim term “spaced relationship.” The patent contains the claim term “spaced relationship” to describe the spacing between the common and live electrodes. A claim term is indefinite only if it is not amenable to construction or is insolubly ambiguous. The Federal Circuit concluded, in view of the specification and prosecution history, that the claims provide a sufficient parameter that one skilled in the art could understand the bounds of “spaced relationship.”

Indirect Infringement

Aristocrat Techs. Australia PTY Ltd. v. IGT, 709 F.3d 1348, 106 U.S.P.Q.2d 1100 (Fed. Cir. 2013). The Federal Circuit affirmed in part, vacated in part, and remanded in part the district court’s summary judgment finding of noninfringement. The Federal Circuit upheld the district court’s claim construction and the summary judgment of noninfringement with respect to direct infringement. The district court also found no induced or indirect infringement based on the lack of proof of a single direct infringer. However, based on the en banc decision in the Akamai case, the Federal Circuit vacated and remanded the district court’s ruling on indirect infringement.

Injunction

Versata Software Inc. v. SAP America, Inc., ___ F.3d ___, 106 U.S.P.Q.2d 1649 (Fed. Cir. 2013). The Federal Circuit affirmed the jury’s infringement decision and damages awards, but vacated part of the trial court’s permanent injunction and remanded for further proceedings. The trial court erred by placing emphasis on SAP’s product as a whole. The Federal Circuit found that the enjoined capability represented only a fraction of the features contained in the infringing products. SAP should be able to provide maintenance or additional seats for prior customers of its infringing products, provided the maintenance or the additional seat does not involve, or allow access to, the enjoined capability. Accordingly, the Federal Circuit vacated the permanent injunction language and remanded to the trial court.

Obviousness

Allergan, Inc. v. Sandoz Inc., ___ F.3d ___, 106 U.S.P.Q.2d 1574 (Fed. Cir. 2013). The Federal Circuit reversed the district court’s finding that the asserted patent claims were not invalid for obviousness. Allergan’s patent relates to an eye-drop combination for treating glaucoma comprising a well-known alpha2-agonist (.2 percent brimonidine) and a well-known beta-blocker (.5 percent timolol), both of which are also used to treat glaucoma. Sandoz argued that the claimed combination was obvious in view of the DeSantis reference, which teaches fixed combinations of alpha2-agonist and beta-blockers for treating glaucoma. While DeSantis didn’t expressly state that brimonidine is one of the alpha2-agonists that can be used in the combination, it did incorporate by reference an article that taught so. Thus, DeSantis provided an express motivation to combine. The district court, however, incorrectly focused on the FDA’s decision of not considering improving patient compliance as a factor in its approval decision, which by extension negated any motivation to combine. The Federal Circuit clarified that there is no requirement in patent law that the person of ordinary skill be motivated to develop the claimed invention based on a rationale that forms the basis for FDA approval.

Obviousness-Type Double Patenting

In re Hubbell, 709 F.3d 1140, 106 U.S.P.Q.2d 1032 (Fed. Cir. 2013). The Federal Circuit affirmed the Board’s decision finding all pending claims in the inventors’ pending patent application invalid for obviousness-type double patenting. The examiner rejected the application for obviousness-type double patenting over several patents, including the ’685 patent. The application and the ’685 patent have two inventors in common, but they do not have identical inventive entities and have neither common owners nor common assignees. The Federal Circuit held that obviousness-type double patenting can apply where an application and a conflicting patent have one or more inventors in common even though the inventive entities are not identical and the applications were never commonly owned. The Federal Circuit noted that its finding was supported by the important policy of preventing harassment of an alleged infringer by multiple assignees asserting essentially the same patented invention. Generally, there is no statutory basis for filing a terminal disclaimer to obviate the rejection when the application and conflicting patent are not commonly owned. A statutory exception to this rule exists where the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement. Here, however, the application and the ’685 patent are not commonly owned and there is no joint research agreement between the assignees.

Patent Exhaustion

Bowman v. Monsanto Co., 133 S. Ct. 1761, 106 U.S.P.Q.2d 1593 (2013). The Supreme Court affirmed the Federal Circuit’s affirmation of the district court’s grant of summary judgment of infringement. The Supreme Court held that patent exhaustion does not permit a farmer to reproduce patented seeds through planting and harvesting without the patent holder’s permission. The patent exhaustion doctrine restricts the patentee’s rights only as to the particular article sold, but leaves untouched the patentee’s ability to prevent a buyer from making new copies of the patented item. Because Bowman was therefore asking for an exception to the patent exhaustion doctrine, the Supreme Court denied the exception request, and affirmed the summary judgment grant.

Patent Marking

Frolow v. Wilson Sporting Goods Co., 710 F.3d 1303, 106 U.S.P.Q.2d 1089 (Fed. Cir. 2013). The Federal Circuit reversed and remanded in part the district court’s final judgment in favor of the defendant. The Federal Circuit stated that the defendant’s marking of certain products with the plaintiff’s patent number did not estop the defendant from claiming that the products did not infringe the patent. The marking could be used as a fact in determining infringement, but was not in and of itself dispositive. Here, the marking was enough to reverse the summary judgment finding of noninfringement because it raised issues of fact.

Pleadings

K-Tech Telecomm. Inc. v. Time Warner Cable Inc., 714 F.3d 1277, 106 U.S.P.Q.2d 1462 (Fed. Cir. 2013). The Federal Circuit reversed and remanded the district court’s dismissal of the complaints on failure to state a claim. The Federal Circuit found that the district court applied the wrong standard in requiring that a plaintiff preemptively identify and rebut potential noninfringing alternatives to practicing the patent claims. The plaintiff adhered to a form that was found to be sufficient and that did not require such facts in the pleading.

Prior Invention

Amkor Tech. Inc. v. ITC, 692 F.3d 1250, 106 U.S.P.Q.2d 1565 (Fed. Cir. 2012). The Federal Circuit reversed the ITC’s determination that the patent is invalid for prior invention under § 102(g)(2). Amkor’s patent relates to near chip-scale packages and was asserted against Carsem’s encapsulated IC devices. Carsem argued that the Amkor patent was invalid in view of the prior ASAT invention, and the Commission agreed. Amkor argued on appeal that the ASAT invention was not prior art under § 102(g)(2). Amkor argued that, in the case of a foreign invention, a full disclosure of the invention was needed in writing to satisfy the “made in this country” language under § 102(g)(2). The Federal Circuit disagreed. Writings can satisfy the full disclosure requirement, but it’s not a per se rule. The Federal Circuit, however, ultimately concluded that Carsem did not prove prior invention by clear and convincing evidence.

Prosecution History Disclaimer

Biogen Idec Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090, 106 U.S.P.Q.2d 1397 (Fed. Cir. 2013). The Federal Circuit affirmed the district court’s construction of the claim term “anti-CD20 antibody,” which narrowed the term based on prosecution history disclaimer. The Federal Circuit agreed that statements in the prosecution history were sufficient to overcome the heavy presumption that the term carries its full ordinary and customary meaning. During prosecution, the examiner rejected all pending claims because the specification did not enable a person skilled in the art to practice the full scope of the claims. According to the examiner, the specification only enabled three types of anti-CD20 antibodies: Rituxan®, rituximab, and 2B8-MX-DTPA. In response, rather than challenging the examiner’s understanding, the applicants argued that the specification was enabling for anti-CD20 antibodies with similar affinity and specificity as Rituxan. The applicants conceded that other “antibodies directed to the same antigen [i.e., CD20] might have different affinities and functional characteristics,” and limited their claims to antibodies similar to Rituxan nonetheless. Thus, the Federal Circuit found it clear and unmistakable that the applicants had limited their invention to what the examiner believed they enabled: antibodies that have a similar specificity and affinity for the specific epitope to which Rituxan binds. Thus, the district court properly limited the scope of the term “anti-CD20 antibody” based on prosecution history disclaimer.

Validity

Bayer Healthcare Pharms. Inc. v. Watson Pharms. Inc., 713 F.3d 1369, 106 U.S.P.Q.2d 1411 (Fed. Cir. 2013). In reversing the district court’s grant of summary judgment that the asserted claims were not invalid, the Federal Circuit held that the asserted claims were invalid as obvious based on a combination of multiple prior art references. The Federal Circuit concluded that the various prior art references disclosed every limitation of the asserted claims and provided an express motivation to combine.

Validity/Jury Instructions

SynQor Inc. v. Artesyn Tech. Inc., 709 F.3d 1365, 106 U.S.P.Q.2d 1052 (Fed. Cir. 2013). The Federal Circuit affirmed the district court’s denial of the defendants’ motion for JMOL that the asserted claims were invalid as anticipated because even if the asserted art disclosed each claimed element, it did not disclose those elements arranged in the claim. The Federal Circuit also affirmed the district court’s denial of the defendants’ motion for JMOL that the asserted claims were invalid as obvious. The Federal Circuit also rejected the defendants’ arguments that the jury instructions on induced and contributory infringement clearly misled the jury. The Federal Circuit noted that while the instruction on inducement in isolation may appear inaccurate because it allowed a finding of inducement without actual knowledge of the patent, the instructions were proper when viewed in the context of the entire record. The Federal Circuit further held that the circumstantial evidence presented at trial—including the defendants’ knowledge of a parent patent from which the patents claimed priority, testimony that the defendants monitored the plaintiff’s patents, and evidence that the defendants possessed datasheets on the plaintiff’s products—was sufficient for the actual knowledge requirement. Regarding damages, the Federal Circuit concluded that there was substantial evidence to support the plaintiff’s price erosion damages theory and, thus, affirmed the district court’s grant of supplemental and enhanced damages.

TRADE SECRETS

Misappropriation

Holton v. Physician Oncology Serv., LP, 2013 WL 1859294 (Ga. May 6, 2013). The purpose of an interlocutory injunction is to maintain the status quo pending a final adjudication on the merits of the case. There was no evidence of actual trade secret misappropriation. The Georgia Supreme Court rejected the inevitable disclosure doctrine as an independent claim and upheld contractual post-employment restriction.

Kendall Holdings, Ltd. v. Eden Cryogenics, LLC, 2013 U.S. App. LEXIS 7274 (6th Cir. 2013). No amount of reasonable diligence would enable a plaintiff to discover injury before it occurred. The statute of limitations for a trade secret misappropriation claim cannot begin running until at least the earliest possible point at which misappropriation could have taken place.

Phillip M. Adams & Assoc., LLC v. Dell Computer Corp., 2013 U.S. App. LEXIS 5294 (Fed. Cir. 2013). The trade secret statute of limitations was triggered by an e-mail from the plaintiff’s lawyer alleging “potential theft” of trade secrets in a software program on March 4, 2004. The “use” of the misappropriated software program was not required; the March 4 e-mail demonstrated constructive knowledge of trade secret misappropriation.

Temporary Restraining Order

V’Guara Inc. v. Steve Dec, 2013 U.S. Dist. LEXIS 21635 (Nev. 2013). This case is directed to trade secrets relating to the production and bottling of Guarana Vodka. A former employee allegedly approached another bottling company to sell the Guarana Vodka trade secrets. An ex parte motion for a temporary restraining order was granted.

TRADEMARKS

Failure of Specimen to Match Description of Goods

In re Gulf Coast Nutritionals Inc., 106 U.S.P.Q.2d 1243 (T.T.A.B. 2013). The applicant Gulf Coast appealed the examiner’s refusal to register its mark, PLAQUE-ZAPPER, for “pet products, namely, edible pet treats, pet food and pet beverages.” The basis for final refusal was that the specimen submitted did not show use in connection with the listed goods. The TTAB affirmed. The applicant did not contend that its specimen, a box containing the applicant’s goods, showed use of the mark on pet food or pet beverages. The only remaining issue was whether the specimen showed use of the mark on pet treats. The applicant’s proposed definition of treat was “entertainment, food, drink, etc. given by way of compliment or as an expression of friendly regard.” The TTAB found that, even under this strained definition, the specimen reflected use of the mark PLAQUE-ZAPPER as a dental healthcare product, not a pet treat. Furthermore, a prospective purchaser would conclude that the product was a healthcare product and not a pet treat.

Functionality/Flavor and Scent Marks

In re Pohl-Boskamp GmbH & Co., 106 U.S.P.Q.2d 1042 (T.T.A.B. 2013). Pohl-Boskamp appealed the refusal of registration of its sensory marks for peppermint flavor and peppermint scent. The TTAB affirmed the refusal of the flavor mark on the ground that the mark comprised functional matter and affirmed the refusal of both the flavor and scent marks on the ground that the marks failed to function as trademarks. The flavor and scent trademark applications were filed in connection with “medicines, namely, pharmaceutical formulations of nitroglycerin.” The TTAB determined that even though peppermint oil was an inactive ingredient in the medicine, it could improve the effectiveness of the nitroglycerin spray (based on evidence cited by the examiner). This was sufficient evidence to support a prima facie case that the peppermint flavor was functional, and declarations provided by Pohl-Boskamp were insufficient to rebut this evidence. The TTAB reasoned that if Pohl-Boskamp had the exclusive right to offer nitroglycerin spray that tasted of peppermint oil, it would put competitors at a disadvantage.

With regard to the flavor and scent marks, Pohl-Boskamp claimed that its marks had acquired distinctiveness via its substantially exclusive use of the marks in commerce since 1989. However, at least one other user of peppermint flavor with nitroglycerin products was known in the United States. Even though this period of use was substantial, the TTAB determined this factor was undercut by the lack of exclusivity. Moreover, the TTAB also determined that the testimonials provided by Pohl-Boskamp’s customers, as well as its advertising materials, were insufficient to overcome the heavy burden of demonstrating that the public had come to perceive either the peppermint flavor or scent as a source indicator. Thus, Pohl-Boskamp’s sensory marks failed to function as trademarks for its goods.

Goods in Trade/Use in Commerce

In re Thomas White Int’l Ltd., 106 U.S.P.Q.2d 1158 (T.T.A.B. 2013). Thomas White appealed the refusal of registration of its mark, EMPOWERING THE INVESTOR, to the TTAB. The TTAB affirmed the refusal on the grounds that the mark was not used in connection with goods in trade, and Thomas White had failed to submit an acceptable specimen showing use of the mark in commerce. The trademark application for the EMPOWERING THE INVESTOR mark was filed in connection with “electronic publications, namely, reports featuring investment management and investment research information, and financial research and equity research information recorded on computer media.” Thomas White submitted an electronic publication (described as an Annual Report) from its website. The TTAB determined that the report specimen showed use of the mark only on an item incidental to conducting Thomas White’s business; that the report provided advertising for the services, rather than being a product in itself; that the report was not sold separately from the services; and that the report was part and parcel of Thomas White’s investment services. Such a specimen did not constitute a “good in trade,” but rather was inextricably tied to and associated with Thomas White’s services, and had no independent value apart from those services. The TTAB affirmed the refusal to register.

Refusal of Mark as Deceptive Matter

In re White Jasmine LLC, 106 U.S.P.Q.2d 1385 (T.T.A.B. 2013). The applicant White Jasmine LLC appealed the refusal for trademark registration of its mark, WHITE JASMINE, and design for “tea beverages, black tea, tea flavorings, spice blends, and spices.” The mark was finally refused on grounds that the term “White” in the mark was deceptive under 15 U.S.C. § 1052(a) and that the term “White Jasmine” must be disclaimed as being either deceptively misdescriptive and without acquired distinctiveness, or generic. The TTAB affirmed.

The applicant acknowledged that its goods contained neither white tea nor white jasmine, and claimed that the term “White Jasmine” had acquired distinctiveness. In refusing the mark, the examiner submitted evidence that the term “White Jasmine” refers to a type of tea made of white tea scented or flavored with jasmine. The TTAB found that the WHITE JASMINE mark comprised deceptive matter based on three factors. First, the term “White” was misdescriptive of a significant aspect of the goods that the goods could plausibly possess but in fact do not. Namely, consumers would expect, upon encountering WHITE JASMINE on the applicant’s goods, that the goods would consist in significant part of white tea, which they did not. Second, the TTAB found that prospective purchasers were likely to believe that “White” actually describes the tea of the applicant’s goods. Third, the misdescription was likely to affect a significant portion of the relevant consumer’s decision to purchase the applicant’s goods. Specifically, the TTAB found that consumers generally perceive white tea as having desirable health benefits, which would likely induce them to buy or drink the tea. The TTAB did not find the applicant’s evidence of acquired distinctiveness to be persuasive. As such, the TTAB found that WHITE JASMINE was deceptively misdescriptive and affirmed the disclaimer requirement on that basis.

John C. Gatz

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, Hofer, Gilson & Lione; Mark R.  Anderson, Ulmer & Berne 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.