©2016. Published in Landslide, Vol. 8, No. , March/April 2016, 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.
March 01, 2016 Decisions in Brief
Decisions in Brief
John C. Gatz
COPYRIGHTS
Can We Finally Sing “Happy Birthday”?
Marya v. Warner/Chappell Music Inc., 116 U.S.P.Q.2d 1563 (C.D. Cal. 2015). Rupa Marya filed a class action suit to invalidate any alleged copyright that Warner/Chappell enforced for the song Happy Birthday To You. Marya moved for summary judgment that Warner/Chappell did not own a valid copyright to the lyrics, and the court granted the motion.
The district court looked at the complicated history of the song Happy Birthday, which is based on a song created by the Hill sisters entitled Good Morning. The Hill sisters assigned their rights to Good Morning to Summy in 1893, and that song and its lyrics appeared in a book published that same year. The copyright for the underlying melody of Good Morning expired in 1949. The full lyrics to Happy Birthday did not appear in a publication until 1911, however, the first mention of the song occurred in a book published in 1901. The 1911 book did not credit anyone with the lyrics to Happy Birthday, but did indicate that it is based on the song Good Morning. In 1934, the Hill sisters sued the producers of a play that featured the song Happy Birthday, but the suit appeared to be based on the underlying melody from Good Morning, not the lyrics to Happy Birthday. Summy registered the copyright for Happy Birthday in 1935, which is the registration that Warner/Chappell allege provides their copyrights to the lyrics of Happy Birthday. However, in 1942 an entity associated with the Hill sisters sued Summy, alleging that he had licensed the work to plays and movies without their permission.
The district court initially evaluated whether a valid copyright covered Happy Birthday, and determined that issues of fact exist as to whether: (1) the lyrics to Happy Birthday were ever properly registered; (2) who wrote the lyrics to Happy Birthday; (3) if a divestive publication of Happy Birthday occurred; or (4) if an abandonment of the copyright to the lyrics of Happy Birthday ever occurred. The district court determined that Summy never obtained any copyright to the lyrics of Happy Birthday, and therefore, Warner/Chappell has no valid copyright to the lyrics.
Google’s Snippets Survive
Authors Guild v. Google, Inc., 804 F.3d 202, 116 U.S.P.Q.2d 1423 (2nd Cir. 2015). The plaintiff-appellants, who are authors of published books under copyright, appealed from a lower court judgment in favor of the defendant, Google. The plaintiffs argued that Google’s Library and Google Books projects infringe their copyrights. Google makes and retains digital copies of books submitted to it by major libraries, allows the libraries that submitted books to download and retain digital copies, and allows the public to search the texts of the digitally copied books and see displayed snippets of text.
The Second Circuit held that Google’s making of a digital copy to provide a search function is a transformative use. The Second Circuit rejected various additional arguments from the plaintiffs, including that: (1) Google ultimately profits commercially even though Google provides public access to the search and snippet functions without charge and without advertising; (2) Google infringes the plaintiffs’ derivative rights through its search functions; (3) Google’s storage of digital copies exposes the plaintiffs to the risk that hackers will make their books freely (or cheaply) available on the Internet; and (4) Google’s distribution of digital copies to participant libraries subjects the plaintiffs to the risk of loss of copyright revenues through access allowed by libraries.
The Second Circuit noted that the licensing markets involve very different functions than those that Google provides, and that an author’s derivative rights do not include an exclusive right to supply information about their works. Google’s profit motivation also did not justify denial of fair use. The Second Circuit also felt that Google’s program does not expose the plaintiffs to an unreasonable risk of loss of copyright value through incursions of hackers. Finally, Google’s provision of digital copies to participating libraries, authorizing them to make non-infringing uses, is non-infringing, and the mere speculative possibility that the libraries might allow use of their copies in an infringing manner does not make Google a contributory infringer.
Argument that Statutory Damages Must be Related to Actual Loss Fails
Broadcast Music, Inc. v. Crocodile Rock Corp., 2015 WL 6602024 (3rd Cir 2015). BMI sued Crocodile Rock, a nightclub in Allentown, Pennsylvania, for staging unauthorized performances of songs licensed through BMI’s license administration system. BMI’s representative noted a total of five performances: one at a concert with $15,000 in ticket sales, and four at another concert where total ticket sales were $180. The district court granted BMI total statutory damages of $35,000 in a default judgment. Crocodile Rock appealed, reasoning that this amount was unfairly high in light of the low total ticket sales for the concerts. Crocodile Rock attempted to argue that statutory damages “must have some reasonable relation to the actual loss.” The Third Circuit disagreed.
PATENTS
Burden of Proof/Obviousness
Dome Patent LP v. Lee, 799 F.3d 1372, 116 U.S.P.Q.2d 1392 (Fed. Cir. 2015). The Federal Circuit affirmed the district court’s ruling on a case originally before the PTO that the correct standard of review was applied by the district court and further affirmed the obviousness determination as not clearly erroneous. Specifically, the district court requiring the PTO to show obviousness by a preponderance of the evidence in an ex parte reexamination was affirmed since the proceeding did not involve a defense to charges of infringement of an issued patent. It was further determined that where one reference mentions potential disadvantages, the motion-to-combine conclusion is not altered where other prior art references disclose how to offset the disadvantage.
Burden of Proof/Reexamination
Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 116 U.S.P.Q.2d 1045 (Fed. Cir. 2015). The Federal Circuit affirmed the PTAB’s decision in an inter partes review that the appellant failed to meet its burden of proof in showing that the claims were anticipated.
Burden of Proof/Obviousness
Dome Patent LP v. Lee, 799 F.3d 1372, 116 U.S.P.Q.2d 1392 (Fed. Cir. 2015). The Federal Circuit affirmed the district court’s ruling on a case originally before the PTO that the right standard of review was applied by the district court and further affirmed the obviousness determination as not clearly erroneous. Specifically, the district court requiring the PTO to show obviousness by a preponderance of the evidence in an ex parte reexamination was affirmed since the proceeding did not involve a defense to charges of infringement of an issued patent. It was further determined that where one reference mentions potential disadvantages, the motion-to-combine conclusion is not altered where other prior art references disclose how to offset the disadvantage. The commercial success was not particularly strong where the patentee’s expert testified that the commercial success was due partially to factors beyond the novel aspects of the claimed invention.
Claim Construction
Inline Plastics Corp. v. EasyPak, LLC, 799 F.3d 1364, 116 U.S.P.Q.2d 1418 (Fed. Cir. 2015). The Federal Circuit reversed the district court’s claim construction of the terms “frangible section” and “tamper evident bridge” finding that they were improperly narrowed to a specific embodiment despite a broader disclosure. The judgment of infringement was further vacated and the case remanded for determination of infringement based on the corrected claim construction.
Summit 6, LLC v. Samsung Elecs. Co., 802 F.3d 1283, 116 U.S.P.Q.2d 1637 (Fed. Cir. 2015). The Federal Circuit affirmed the district court’s findings that the patent was not invalid and was infringed. The Federal Circuit construed a term is not a step in the claimed method, citing that it is, instead, a phrase that characterizes the claimed pre-processing parameters.
Conception/Reduction to Practice
In re Steed, 802 F.3d 1311, 116 U.S.P.Q.2d 1760 (Fed. Cir. 2015). The Federal Circuit affirmed the PTAB’s decision rejecting certain claims as obvious. Substantial evidence supported the PTAB’s finding that possession of the invention, through conception or reduction to practice, was not established prior to the effective date of the prior art.
Damages
Carnegie Mellon Univ. v. Marvell Tech. Grp., Ltd., 116 U.S.P.Q.2d 1081 (Fed. Cir. 2015). The Federal Circuit affirmed-in-part, reversed-in-part, vacated-in-part and remanded-in-part the district court’s decision for a partial new trial. The Federal Circuit affirmed the judgment of infringement and validity, but reversed the grant of enhanced damages under the governing willfulness standard, which does not require that Marvell have had a reasonable defense in mind when it committed its past infringement. The Federal Circuit concluded that a partial new trial was needed to determine the location of the “sale” of Marvell’s infringing product made and delivered abroad but never imported into the United States.
Nordock, Inc. v. Sys. Inc., 803 F.3d 1344, 116 U.S.P.Q.2d 1650 (Fed. Cir. 2015). The Federal Circuit affirmed-in-part and vacated-in-part the district court’s findings and remanded for further proceedings. A design patentee can recover either (1) total profits from the infringer’s sales under § 289; (2) damages based on the patentee’s lost profits or a reasonable royalty under § 284; or (3) $250 in statutory damages under § 289, whichever is greater. The Federal Circuit found that an expert used improper methodology in determining the damages. Therefore, the Federal Circuit reversed and remanded the damages portion of the ruling. The Federal Circuit affirmed the decision that the patent was not invalid and infringed.
Direct and Indirect Infringement
JVC Kenwood Corp. v. Nero, Inc., 797 F.3d 1039, 116 U.S.P.Q.2d 1255 (Fed. Cir. 2015). The Federal Circuit affirmed the district court’s summary judgment of no contributory or induced infringement. The patentee, JVC, alleged that Nero indirectly infringed JVC’s DVD and Blu-ray disc patents by selling certain software to end-users of the discs, who allegedly directly infringed the patents by using the software. JVC, and all of its asserted patents, were included within the main industry licensing pools for both DVD and Blu-ray discs. The pools confer licenses to end-users of DVD and Blu-ray discs such that their use of the discs cannot constitute direct infringement of any of the licensed patents. Because the end-users could not commit any acts of direct infringement necessary to underlie JVC’s contributory and induced infringement claims, the district court correctly granted summary judgment of noninfringement.
Disclosure of Confidential Information
Hyatt v. USPTO, 797 F.3d 1374, 116 U.S.P.Q.2d 1331 (Fed. Cir. 2015). The Federal Circuit affirmed the district court’s dismissal of a claim that alleged that the PTO disclosed confidential information. The Federal Circuit reviewed § 122(a) to determine whether the Director’s “special circumstances” decision was reviewable. Upon deciding it was, the Federal Circuit determined that the Director did not abuse her discretion in finding that special circumstances justified the PTO’s disclosure of confidential information. The Federal Circuit cited the applications included more than 115,000 total claims between only 12 distinct specifications, each family of applications has an average of 9,583 pending claims and that the asserted priority relationships between Mr. Hyatt’s applications are complex, with numerous overlapping applications as being proof that the disclosure was allowed.
Divided Infringement
Akamai Techs., Inc. v. Limelight Networks, Inc., 797 F.3d 1020, 116 U.S.P.Q.2d 1344 (Fed. Cir. 2015). The Federal Circuit reversed the district court’s grant of judgment of noninfringement as a matter of law. The jury found that the alleged infringer is responsible for its customers’ performance of the tagging and serving method steps because the alleged infringer directs or controls its customers’ activities. Thus, the Federal Circuit upheld the jury’s findings and reversed the district court’s grant of judgment of noninfringement.
Inducing Infringement
Suprema, Inc. v. Int’l Trade Comm’n, 796 F.3d 1338, 116 U.S.P.Q.2d 1177 (Fed. Cir. 2015). In an en banc decision, the Federal Circuit upheld the International Trade Commission’s position that 19 U.S.C. § 1337 covers the “importation of goods that, after importation, are used by the importer to directly infringe at the inducement of the goods’ seller.” A Federal Circuit panel had previously disagreed with the ITC’s finding.
Inventorship
Shukh v. Seagate Tech., LLC, 803 F.3d 659, 116 U.S.PQ.2d 1248 (Fed. Cir. 2015). The Federal Circuit affirmed several district court rulings regarding inventorship, but vacated and remanded a summary judgment related to the alleged inventor’s reputational damage for not being recognized as an inventor of several patents. The Federal Circuit found that the district court improperly made factual findings in ruling against the alleged inventor on the reputational-damage motion.
Jurisdiction
Achates Reference Publ’g, Inc. v. Apple Inc., 803 F.3d 652, 116 U.S.P.Q.2d 1783 (Fed. Cir. 2015). The Federal Circuit dismissed the plaintiffs appeal for lack of jurisdiction because the PTAB’s determination to institute inter partes review was considered final and nonappealable under 35 U.SC. § 314(d).
Astornet Techs. Inc. v. BAE Sys., Inc., 802 F.3d 1271, 116 U.S.P.Q.2d 1523 (Fed. Cir. 2015). The Federal Circuit affirmed the district court’s dismissal of the case based only on 28 U.S.C. § 1498. Astornet asserted its patent against three corporations who had contracts with the Transportation Security Agency (TSA), an agency of the United States government. The district court dismissed the complaint, relying on several grounds, including that Astornet’s exclusive remedy for the alleged infringement was a suit against the United States in the Court of Federal Claims under § 1498.
Laches
SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC, 116 U.S.P.Q.2d 1541 (Fed. Cir. 2015). An en banc Federal Circuit affirmed summary judgment on the issue of laches but reversed and remanded the district court’s grant of summary judgment on equitable estoppel. The en banc Court addressed laches again (despite its previous en banc decision in A.C. Aukerman Co. v. R.L Chaides Construction Co.) in view of the Supreme Court’s 2014 opinion in Petrella v. Metro-Goldwyn-Mayer, which held that “laches was not a defense to legal relief in copyright law.” On the issue of laches, the Federal Circuit made two significant holdings: (1) “laches remains a defense to legal relief in a patent infringement suit”; and (2) laches bars legal relief, but, “absent extraordinary circumstances, laches does not preclude an ongoing royalty.” In reaching its first holding, the Court distinguished patent and copyright laws. In reaching its second holding, the Court emphasized the importance of retaining the long-standing distinction between equitable estoppel, which may bar all relief, and the doctrine of laches, which indicates only that the “patentee has abandoned its right to collect damages during the delay.”
Local Patent Rules
Keranos, LLC v. Silicon Storage Tech., Inc., 797 F.3d 1025, 116 U.S.P.Q.2d 1312 (Fed. Cir. 2015). The Federal Circuit vacated and remanded the district court’s denial of the plaintiff’s motions for leave to amend. In determining whether an exclusive licensee has standing to sue, the court determines if all substantial rights under the patent were assigned such that Keranos has standing to sue in its own name, or if UMC retained certain substantial rights such that Keranos should have joined UMC as a co-plaintiff. The Federal Circuit found that the patentee had transferred all substantial rights in the patents. The Federal Circuit next considered whether the district court abused its discretion in denying the plaintiff’s motion to amend its infringement contentions. The local rules require the plaintiff to include infringement contentions of each product of which it is aware as specifically as possible. However, the district court did not consider whether this information was available for each of the defendants and the “record indicates, however, that publicly available information might not have been available for the products of some appellees and, thus, Keranos could not have been more diligent with respect to those appellees.” The district court was instructed to consider the motion to amend on a party-by-party basis.
Means-Plus-Function
Media Rights Techs., Inc. v. Capital One Fin. Corp., 800 F.3d 1366, 116 U.S.P.Q.2d 1144 (Fed. Cir. 2015). The Federal Circuit affirmed the district court’s determination that the term “compliance mechanism,” which was a limitation in every single claim, was a means-plus-function term that lacked specific structure. The Federal Circuit found that the term was not used as a substitute for anything that might connote a definite structure. The disclosure also failed to provide sufficient structure for the term. Thus, the Federal Circuit found the term to be a means-plus-function limitation. The Federal Circuit failed to find any support in the specification that adequately disclosed the structure to perform the function. Therefore, the term was indefinite, which rendered all of the claims indefinite.
Obviousness
ABT Sys., LLC v. Emerson Elec. Co., 116 U.S.P.Q.2d 1322 (Fed. Cir. 2015). The Federal Circuit reversed the judgment finding no invalidity, vacated the judgment of infringement, and remanded the case to the district court for dismissal of the complaint. Obviousness is a determination of fact and law, and the Federal Circuit found the facts to be undisputed. The Federal Circuit then stated that it “is well settled that, even where references do not explicitly convey a motivation to combine, ‘any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.’” Because the four references disclosed all of the claimed elements, the patent was obviousness.
Obviousness/Amended Contentions
Shire LLC v. Amneal Pharm., LLC, 802 F.3d 1301, 116 U.S.P.Q.2d 1607 (Fed. Cir. 2015). The Federal Circuit affirmed the district court’s judgment of nonobviousness, affirmed the district court’s denial of the defendant’s motion to amend its invalidity contentions, and reversed and remanded the district court’s judgment that a non-ANDA defendant had induced infringement. The Federal Circuit affirmed the district court’s denial of the defendant’s motion to amend its invalidity contentions to include an on-sale bar argument more than one year after receiving the information necessary to make the argument.
Permanent Injunction
Apple Inc. v. Samsung Elecs. Co., 801 F.3d 1352, 116 U.S.P.Q.2d 1445 (Fed. Cir. 2015). The Federal Circuit vacated and remanded the district court’s denial of Apple’s request for permanent injunction. The Federal Circuit went through the five eBay factors as set forth by the Supreme Court. The Federal Circuit found that the district court erred in finding that Apple failed to demonstrate irreparable harm due to lost sale because it failed to show a causal nexus between the infringement and the lost sales. The Federal Circuit also reversed the district court’s finding that Apple’s remedies at law, such as monetary damages, were adequate to compensate for the irreparable harm. Because this finding was based on a legal error, this factor weighed in Apple’s favor. The Federal Circuit agreed with the district court that the remaining eBay factors supported the injunction. The Federal Circuit stated that “[i]f an injunction were not to issue in this case, such a decision would virtually foreclose the possibility of injunctive relief in any multifaceted, multifunction technology.”
Prior Adjudication
Power Integrations, Inc. v. Lee, 797 F.3d 1318, 116 U.S.P.Q.2d 1137 (Fed. Cir. 2015). The Federal Circuit vacated and remanded the PTAB’s decision that rejected four claims for anticipation. The Federal Circuit found that the PTAB fundamentally misconstrued Power Integrations’s principal claim construction, and failed to provide a full and reasoned explanation of its rejection. During reexamination, the PTAB failed to acknowledge the district court’s claim construction or to assess whether its interpretation of the term was consistent with the broadest reasonable construction of the term. Because the PTAB’s opinion provided the Federal Circuit with an inadequate predicate for which to review, the Federal Circuit vacated and remanded the decision.
Reexamination
R+L Carriers, Inc. v. Qualcomm Inc., 801 F.3d 1346, 116 U.S.P.Q.2d 1150 (Fed. Cir. 2015). The Federal Circuit affirmed the district court’s determination that amendments made during reexamination resulted in substantive change in scope of the asserted claims, though on slightly different grounds. The Federal Circuit found that R+L clearly understood that, during reexamination, it was limiting the scope of its claims in another way to get around the prior art. Thus, the amended claim was not substantially identical to the original claim, because the original claim encompassed scope that the amended claim did not.
Removal
Vermont v. MPHJ Tech. Invs., LLC, 803 F.3d 635, 116 U.S.P.Q.2d 1595 (Fed. Cir. 2015). The Federal Circuit affirmed the district court’s order remanding the case, for the second time, to Vermont state court to hear the plaintiff’s claims for the defendant’s alleged violations of the Vermont Consumer Protection Act (VCPA) due to unfair trade practices and deceptive trade practices.
Validity
Ivera Med. Corp. v. Hospira, Inc., 801 F.3d 1336, 116 U.S.P.Q.2d 1400 (Fed. Cir. 2015). The Federal Circuit reversed the district court’s summary judgment that claims for cleaning medical implements are invalid as obvious over a combination of prior art references. Ivera attempted to enter several declarations in a related inter partes reexamination, but these declaration were not considered by the examiner because the evidence was not presented earlier in the proceeding. These declarations were separately presented at the summary judgment stage before the district court and were not challenged. The Federal Circuit agreed that the declarations established a genuine dispute over whether, among other things, a person of ordinary skill in the art would have been motivated to add a vent to another reference’s disclosure of a disinfecting cap.
Validity/Infringement
Spectrum Pharm., Inc. v. Sandoz Inc., 802 F.3d 1326, 116 U.S.P.Q.2d 1717 (Fed. Cir. 2015). Without addressing claim construction, the Federal Circuit affirmed the district court’s decision holding that certain claims were invalid and other claims as not infringed. No clear error was found that the prior art as a whole was enabling and that there was no long-felt but unmet need. The alleged infringing product was found to be non-infringing because its vials of 175 mg or 250 mg of levoleucovorin did not meet the claim limitation of at least two doses of 2000 mg each, particularly in light of an explicit disclaimer of smaller dosage amounts during prosecution.
TRADE SECRETS
Amerigas Propane, L.P. v. Coffey, 2015 WL 6093207, 2015 NCBC LEXIS 98 (N.C. Super. 2015). The parties do not dispute that Coffey retained the names and addresses of AmeriGas’s customers in his memory after his termination. The North Carolina courts, however, have long held that the knowledge of a deliveryman, or other personal solicitor, of the names and addresses of his employer’s customers, gained during the performance of his duties, is not a trade secret. Accordingly, the court concluded that the names and addresses of AmeriGas’s customers do not constitute a protectable trade secret under the circumstances presented here.
Baker Hughes, Inc. v. S&S Chem., LLC, 2015 WL 6159422, 2015 U.S. Dist. LEXIS 142214 (W.D. Mich. 2015). There is no allegation that Stevens used theft, bribery, or misrepresentation to acquire or disclose trade secrets. Therefore, Stevens did not have, and could not breach, a duty to maintain the secrecy of Baker’s information. Thus, Stevens did not misappropriate any trade secret.
Fleetwood Packaging v. Hein, 2015 WL 6164957, 2015 U.S. Dist. LEXIS 142078 (N.D. Ill. 2015). Signode has sufficiently alleged product matrices to be trade secrets at the pleading stage. These documents contain information about a particular product, including vendors, costs, and relevant delivery information, for the purposes of setting prices. Product matrices are not provided to Signode’s customers. Signode has implemented procedures to maintain the secrecy of these reports, such as limited dissemination, a corporate policy to mark documents containing confidential information as “Confidential,” employee confidentiality agreements, and an annual requirement that employees certify that they have read and received Signode’s Principles of Conduct, which preclude the disclosure of Signode’s confidential information. Signode’s product matrices are stored in a database that is restricted to a limited group of employees within the company.
Katch, LLC v. Sweetser, 2015 WL 6942132, 2015 U.S. Dist. LEXIS 152665 (D. Minn. 2015). Even if Minnesota law governs Katch’s misappropriation of its trade secrets claim, Katch is unlikely to succeed on the merits. Trade secrets laws are meant to be a shield to preserve the trust in confidential relationships, “not a sword to be used by employers to retain employees by the threat of rendering them substantially unemployable in the field of their experience. “A claim of trade secret misappropriation should not act as an ex post facto covenant not to compete.”
Vesta Corp. v. AMDOCS Mgmt., 2015 WL 7720497, 2015 U.S. Dist. LEXIS 159883 (D. Or. 2015). Requiring a plaintiff to make pre-discovery disclosures of its alleged misappropriated trade secrets is supported by strong practical and policy reasons, including the goal of assisting a court in determining relevancy and the scope of discovery. The requirement also prevents a “fishing expedition” into a defendants’ trade secrets. Finally, the requirement prevents needless exposure of the defendant’s trade secrets, and allows well-investigated claims to proceed while discouraging meritless trade secret claims.
TRADEMARKS
Abandonment/Infringement
Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 U.S.P.Q.2d 1129 (Fed. Cir. 2015). The Federal Circuit affirmed the TTAB’s finding that New Millennium had not abandoned its KELME and paw print design mark by using a modified version of the mark. The Federal Circuit, however, reversed the TTAB’s decision that an application for a mark filed by Jack Wolfskin, also for a paw print design, was likely to cause confusion with New Millennium’s mark. New Millennium had opposed Jack Wolfskin’s application on the grounds that Jack Wolfskin’s paw print design would cause confusion with its mark for clothing products. Jack Wolfskin counterclaimed to cancel New Millennium’s mark on the basis of abandonment.
On the abandonment claim, the Federal Circuit determined that New Millennium’s modified mark included only minor stylistic alterations (including a new font of the KELME element and a new style of the paw print element) that created the same continuing commercial impression as its registered mark. The Federal Circuit determined that these minor changes and, thus, abandonment had not occurred.
The Federal Circuit disagreed with the TTAB’s conclusion that Jack Wolfskin’s mark was likely to cause confusion with New Millennium’s mark based on a lack of substantial evidence relating to: (1) the similarity of the marks and (2) the number and nature of similar marks in use. In evaluating the first factor, the Federal Circuit found that the TTAB failed to consider the marks as a whole by failing to discuss the impact of the KELME element and focusing primarily on the paw print element. The Federal Circuit noted that consumers were conditioned to look for differences in paw print designs and were unlikely to be confused by different, although similar looking, paw print designs, and remanded the case for further consideration.
Deceptively Misdescriptive
In re Hinton, 116 U.S.P.Q.2d 1051 (TTAB 2015). The TTAB affirmed the Examining Attorney’s refusal to register the mark THCTea (in standard characters) on the Principal Register for “tea-based beverages” on the ground that the mark was deceptively misdescriptive of a feature of the applied-for goods. The TTAB noted the two-part test for deceptive misdescriptiveness: (1) whether the matter sought to be registered misdescribes the goods or services; and (2) if so, whether consumers are likely to believe the misrepresentation. Regarding the first prong, the TTAB found that it is plausible for tea-based beverages to contain THC (tetrahydrocannabinol), the chief intoxicant in marijuana. Because the Applicant’s tea-based beverages did not contain THC as the term was defined in the dictionary evidence of record, the TTAB found that THCTea misdescribed the goods. The applicant argued that the “THC” part of his proposed mark was intended to stand for “Tea Honey Care” or “The Honey Care Tea,” but did not present any evidence that consumers would interpret THC as such. The TTAB noted that there was nothing in the application indicating that the applicant’s goods would not be offered in locations where marijuana products were legally sold. Thus, the TTAB found that, a reasonably prudent consumer would likely believe the Applicant’s THCTea tea-based beverages contained THC, even though they did not, and that this mistake would be highly relevant to a consumer’s purchasing decision.
Thus, the TTAB found that the applicant’s mark was deceptively misdescriptive and, as such, refused registration of the mark.
Descriptiveness
In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 116 U.S.P.Q.2d 1262 (Fed. Cir. 2015). The Federal Circuit affirmed the TTAB’s refusal to register the mark LOUISIANA FISH FRY BRING THE TASTE OF LOUISIANA HOME! and design on the ground that the phrase FISH FRY PRODUCTS is either generic or highly descriptive, and that the applicant had not disclaimed FISH FRY PRODUCTS or demonstrated that the phrase had acquired distinctiveness.
The applicant filed a use-based application to register the mark LOUISIANA FISH FRY BRING THE TASTE OF LOUISIANA HOME! for “Marinade; Sauce mixes, namely barbeque shrimp sauce mix; Remoulade dressing; Cocktail sauce, Seafood sauce; Tartar sauce; Gumbo file; and Cayenne pepper.” The examining attorney refused to register the mark without a disclaimer of FISH FRY PRODUCTS, finding that the term was generic or at least highly descriptive. In response, the applicant argued that a disclaimer was not necessary because the term was both not generic and had acquired distinctiveness. The TTAB affirmed.
The Federal Circuit did not reach the TTAB’s finding of genericness, holding that substantial evidence supported the TTAB’s determination that the applicant failed to show that FISH FRY PRODUCTS had acquired distinctiveness. The Federal Circuit noted that although Section 2(f) of the Lanham Act provides that the PTO may accept five years of “substantially exclusive and continuous” use as prima facie evidence of acquired distinctiveness, for a mark that is highly descriptive, such as FISH FRY PRODUCTS, the TTAB has discretion to refuse to do so. Additionally, the Federal Circuit noted that all of the applicant’s evidence of substantially exclusive and continuous use was of LOUISIANA FISH FRY PRODUCTS, and, thus, did not establish that FISH FRY PRODUCTS had acquired distinctiveness. Thus, the court affirmed the PTO’s decision to refuse to register the LOUISIANA FISH FRY BRING THE TASTE OF LOUISIANA HOME! and design mark absent a disclaimer of FISH FRY PRODUCTS.
Functionality/Product Configuration
In re Heatcon, Inc., 116 U.S.P.Q.2d 1366 (TTAB 2015). Heatcon appealed the refusal of registration of its application for a product configuration for “equipment for controlling and recording application of heat and pressure in process for fabricating bonded composite materials.” The mark/configuration consists of a three-dimensional configuration including a user interface component. After filing the application for registration on the Principal Register, Heatcon amended the application to seek registration on the Supplemental Register. The examining attorney refused registration on the basis that the mark was functional and failed to submit an amended drawing depicting all functional features of the interface in dotted lines.
The TTAB analyzed the factors to be considered in determining whether a mark is functional. In particular, the TTAB found that the existence of a third-party utility patent indicated the utilitarian advantages of how the features were arranged, as well as the importance and benefit of the arrangement (for example, to avoid cable entanglement). This factor provided strong evidence that the design was functional.
The TTAB also found that Heatcon’s own advertising materials, touting the “ergonomic design,” “convenient hook up” and “circuit breakers on the front panel,” directly addressed the arrangement of features and its utilitarian advantages. Moreover, third-party references to Heatcon’s configuration were also considered probative on this point. On the issue of the availability of functionally equivalent designs, the TTAB found that third-party examples did not strongly support Heatcon’s assertions of non-functionality. That fact that competitive examples existed did not alter the TTAB’s finding that the design was functional.
Overall, the TTAB determined that the arrangement of functional features was directed by utilitarian concerns so as to make operation of the device easier, safer, and more efficient. These findings supported the decision that the configuration as a whole was functional and thus not registrable.