Decisions in Brief

Decisions in Brief

John C. Gatz

©2017. Published in Landslide, Vol. 9, No. 5, May/June 2017, 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

Video Censoring Service Courts Copyright Trouble

Disney Enterprises Inc. v. VidAngel Inc., 121 U.S.P.Q.2d 1212 (C.D. Cal. 2016). Plaintiffs Disney and other film studios alleged that their copyrights were infringed by the defendant VidAngel, who provides the streaming of filtered versions of movies and television shows having objectionable content removed. The service starts by a customer purchasing the physical DVD from VidAngel, then selecting from a list of potentially objectionable content to be filtered, and then streaming the filtered content instantly. To provide this service, VidAngel decrypts the content, tags it for the potentially objectionable materials, and stores the files in the cloud for streaming. Customers may sell the DVD back to VidAngel the next day for $1 less than the purchase price.

The district court preliminarily enjoined VidAngel’s video editing and streaming services, finding that the plaintiffs had demonstrated a likelihood of success on their copyright infringement claims. The district court first noted that multiple courts, the Librarian of Congress, and the Register of Copyrights have all declined to adopt an exemption under the DCMA for space-shifting. The district court also rejected VidAngel’s argument that its actions were permissible under the Family Home Movie Act of 2005. Finally, the district court found that all four fair use factors weighed against fair use.

N.Y. Court Retreats into Its Shell on Common-Law Public Performance Protection

Flo & Eddie, Inc. v. Sirius XM Radio, Inc., 121 U.S.P.Q.2d 1150 (2nd Cir. 2016). Flo & Eddie are two original members of the band The Turtles and own the master recordings for a number of successful songs recorded before 1972. Sirius XM is a satellite radio provider that features some channels playing songs recorded before 1972, and has not paid any fees to broadcast these songs. The Turtles sued XM alleging New York common-law copyright infringement. The district court denied XM’s summary judgment motion and ruled that New York has a common-law right of public performance for sound recordings. XM filed an interlocutory appeal to the Second Circuit, which presented a certified question to the New York Court of Appeals as to whether New York has a common-law copyright to cover public performance of pre-1972 sound recordings. The Second Circuit ruled that no such right exists under New York law.

The Second Circuit began its analysis by looking at the history of the U.S. Copyright Act, and noted that historically sound recordings were not protected until 1972, and Congress explicitly excluded the right of public performance from the owners of the copyright for a sound recording from the 1972 Act. The Second Circuit noted that Congress passed the 1995 Digital Performance Right in Sound Recordings Act (DPRA) to cover the public performance rights for digital transmissions, but also set up a complex statutory licensing scheme to allow service providers like XM to license the post-1972 works.

Turning to New York common-law copyright cases, the Second Circuit noted that previous common-law copyright decisions focused on making illegal copies of works, not publicly performing a lawfully obtained copy of a work. To establish common-law copyright infringement in New York, a plaintiff must show (1) the existence of a valid copyright; and (2) unauthorized reproduction of the work protected by the copyright. Therefore, the Second Circuit found that the unauthorized performance of a work was not sufficient to show infringement. Thus, common-law copyright protection in New York only protects the unauthorized reproduction of a sound recording, but once a copy of a sound recording is lawfully purchased, the purchaser may use that copy in any way seen fit.

Protest Song’s Copyright Owners Lose a Round

We Shall Overcome Found. v. The Richmond Org., Inc., 2016 BL 386200 (S.D.N.Y. 2016). The defendants own copyrights in the song “We Shall Overcome.” The plaintiffs used the song in a documentary and sought declaratory judgment that the plaintiffs’ copyrights were invalid, in part because the lyrics of the first verse of the song are virtually identical to the lyrics of a public domain song, “We Will Overcome.” The copyright owners moved to dismiss the case. The copyright applications for “We Shall Overcome” were filed in 1960 and 1963. A reason for making those filings was, apparently, that folk singers wanted to prevent others from trying to produce a peppier version of the public domain song, which dates to at least as early as 1909. The district court denied the defendants’ motion to dismiss primarily because of the similarity of “We Shall Overcome” to “We Will Overcome.” The district court stated that given the similarities between the two songs (including the fact that only a few words were changed in the first verse, and those words were changed to their synonyms), “resolution of the issues of originality and ownership will require discovery and a more developed record.”

PATENTS

Anticipation

REG Synthetic Fuels, LLC v. Neste Oil Oyj, 841 F.3d 954, 120 U.S.P.Q.2d 1729 (Fed. Cir. 2016). The Federal Circuit affirmed-in-part, reversed-in-part, and remanded the PTAB’s unpatentability determinations and exclusion of certain evidence. The Federal Circuit upheld the PTAB’s finding of certain claims invalid in view of prior art. Regarding other claims, the Federal Circuit found that certain evidence was improperly excluded, and that such evidence proved a conception date prior to the filing date of the applicable prior art.

Appealability

Wi-Fi One, LLC v. Broadcom Corp.,________, 121 U.S.P.Q.2d 1133 (Fed. Cir. 2017). The Federal Circuit granted the petitions for en banc rehearing, vacated the earlier opinions panel opinions, and reinstated the appeals. Wi-Fi One petitioned for rehearing en banc in three appeals. The Federal Circuit granted the petition and requested briefs on whether the Federal Circuit should overrule Achates Reference Publishing, Inc. v. Apple Inc., and hold that judicial review is available for a patent owner to challenge the PTO’s determination that the petitioner satisfied the timeliness requirement of 35 U.S.C. § 315(b) governing the petitions for inter partes review.

Claim Construction

D’Agostino v. Mastercard Int’l, 844 F.3d 945, 121 U.S.P.Q.2d 1134 (Fed. Cir. 2016). The Federal Circuit vacated and remanded the PTAB’s decision finding the reviewed claims unpatentable as being anticipated and obvious. The Federal Circuit found that the PTAB had based its anticipation and obviousness determinations on an unreasonable claim interpretation in selected claims.

Default Judgment/Permanent Injunction

United Constr. Prods., Inc. v. Tile Tech, Inc., 843 F.3d 1363, 121 U.S.P.Q.2d 1001 (Fed. Cir. 2016). The Federal Circuit affirmed the district court’s grant of default judgment and a permanent injunction. First, applying Ninth Circuit precedent, the Federal Circuit addressed the district court’s grant of default judgment under the five Malone factors, finding that four favored default. Second, the Federal Circuit rejected the appellant’s arguments that the district court’s injunction was overly broad. The injunction required that the appellant surrender the molds used to create a portion of the allegedly infringing products even though the molds were to a non-infringing component of the patented invention. The Federal Circuit reasoned that this scope was permissible because the component was a crucial component of the patented invention.

Divided Infringement

Medgraph, Inc. v. Medtronic, Inc., 843 F.3d 942, 121 U.S.P.Q.2d 1007 (Fed. Cir. 2016). The Federal Circuit affirmed summary judgment of non-infringement of method claims and a system claim. First, although the Federal Circuit agreed with Medgraph that its ruling in Akamai Techs., Inc. v. Limelight Networks, Inc. broadened the circumstances in which a court may attribute others’ acts to an accused infringer in divided infringement, that holding did not apply here. Medgraph had not provided evidence of direct infringement, which indirect infringement requires. Second, the Federal Circuit addressed the judgment as it related to infringement of a single system claim. The Federal Circuit affirmed the district court’s construction, which resulted in an affirmance of summary judgment of non-infringement.

Indefiniteness

Sonix Tech. Co. v. Publ’ns Int’l, Ltd., 844 F.3d 1370, 121 U.S.P.Q.2d 1247 (Fed. Cir. 2017). The Federal Circuit reversed summary judgment of invalidity due to indefiniteness with claims reciting the term “visually negligible.” The Federal Circuit found that a person of skill in the art would have understood the phrase “visually negligible” with reasonable certainty based primarily on the intrinsic evidence (claim language, description including examples and the prosecution history).

Infringement

Eli Lilly & Co. v. Teva Parenteral Meds., Inc., 845 F.3d 1357, 121 U.S.P.Q.2d 1277 (Fed. Cir. 2017). The Federal Circuit affirmed the district court’s findings that despite no single actor performing all the steps of the asserted claims under Akamai, direct infringement was attributable to physicians despite actions of both the physicians and patient being required. The defendants were held liable for inducing that infringement. The district court’s holding that the asserted claims were not invalid on definiteness, obviousness, and double-patenting grounds was also affirmed.

Invalidity

U.S. Water Servs., Inc. v. Novozymes A/S, 843 F.3d 1345, 121 U.S.P.Q.2d 1081 (Fed. Cir. 2016). The Federal Circuit vacated-in-part, affirmed-in-part, and remanded the district court’s summary judgment finding that the asserted claims are invalid. The Federal Circuit found that the district court overlooked evidence that was material to whether the prior art disclosed a claim limitation. The Federal Circuit affirmed the district court’s finding of no inequitable conduct.

Lost Profits

Samsung Electronics Co. v. Apple Inc., 137 S.Ct. 429, 120 USPQ2d 1749, (2016). The Supreme Court reversed and remanded the Federal Circuit’s decision upholding a $399 million damages award to Apple for infringement of its design patents by smartphone makers. Here, the Federal Circuit identified the entire smartphone as the only permissible article of manufacture for purposes of § 289 damages because consumers could not separately purchase components of the smartphones. The Supreme Court held that in the case of a multicomponent product, the relevant “article of manufacture” for arriving at a § 289 damages award need not be the end product sold to the consumer, but may be only a component of that product.

Mandamus

In re Rearden LLC, 841 F.3d 1327, 120 U.S.P.Q.2d 1674 (Fed. Cir. 2016). The Federal Circuit denied the defendants’ petition for writ of mandamus, which challenged the district court’s order compelling them to produce allegedly privileged documents. The Federal Circuit found that the petitioner’s arguments relied heavily on an extra-record declaration and that there were alternative avenues to obtain meaningful review of the arguments after trial. The petitioners thus fell short of showing that the district court abused its discretion, and failed to show a clear and indisputable right to relief with no adequate alternative legal channels in which petitioners could obtain the same relief.

Multiple Issues

Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 843 F.3d 1315, 121 U.S.P.Q.2d 1087 (Fed. Cir. 2016). The Federal Circuit affirmed-in-part, reversed-in-part, vacated-in-part, and remanded the district court’s decision. There were 12 issues raised on appeal generally, including claim construction issues, jury instructions, verdict form, JMOL motions, new trial motions, and the permanent injunction motion.

Obviousness

In re Ethicon, Inc., 844 F.3d 1344, 121 U.S.P.Q.2d 1139 (Fed. Cir. 2017). The Federal Circuit affirmed the PTAB’s decision of the claims being obvious. In a merged inter partes reexamination, the PTAB affirmed the Examiner’s rejection of the claims being obvious, and rejected Ethicon’s evidence regarding objective indicia of nonobviousness, finding that none of it was entitled to substantial weight.

In re Van Os, 844 F.3d 1359, 121 U.S.P.Q.2d 1209 (Fed. Cir. 2017). The Federal Circuit remanded the PTAB’s obviousness decision because the PTAB merely stated that it would have been intuitive to combine the references. The PTAB did not explain why combining the references would have been intuitive or identify a motivation to combine.

Patent Eligible Subject Matter

Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 120 U.S.P.Q.2d 1844 (Fed. Cir. 2016). The Federal Circuit affirmed-in-part and reversed-in-part the PTAB decision in three covered business method reviews and held that each of the patents combined patent ineligible subject matter. The technology was directed to information management and synchronous communication systems with menu generation that could be configured on a desktop computer and then downloaded to a handheld device. First, the Federal Circuit agreed that the claims’ recitation of the ability to generate menus with certain features, without reciting a particular way of programming or designing the software to create the features, were directed to abstract ideas. The elements of the claims did not amount to significantly more to transform the abstract idea into a patent-eligible application of the abstract idea. The Federal Circuit reversed the finding of patent-eligibility of select dependent claims because the claims were merely directed to manual modifications performed on a computer of linking orders, and included handwriting and voice capture.

Unwired Planet, LLC v. Google Inc., 841 F.3d 1376, 120 U.S.P.Q.2d 1679 (Fed. Cir. 2016).The Federal Circuit vacated and remanded the PTAB’s decision that the asserted claims are directed to unpatentable subject matter. The Federal Circuit found that the PTAB relied on an incorrect definition of a covered business method (CBM) patent. CBM review is available only for a covered business method patent, which is defined as “a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.” Instead of applying this definition, the PTAB found that the claims are financial in nature, incidental to a financial activity, or complementary to a financial activity.

Practice/Procedure

Walker v. Health Int’l Corp., 845 F.3d 1148, 121 U.S.P.Q.2d 1301 (Fed. Cir. 2017). The Federal Circuit affirmed the district court’s judgment awarding sanctions for the plaintiff’s vexatious actions in continuing to litigate after the parties settled all claims. The defendant’s motion that the appeal itself is frivolous was granted resulting in an award of damages and double costs under Rule 38 of the Federal Rules of Appellate Procedure.

Procedure/Obviousness

In re NuVasive, Inc., 842 F.3d 1376, 120 U.S.P.Q.2d 1821 (Fed. Cir. 2016). The Federal Circuit vacated and remanded the case following NuVasive’s appeal of the PTAB’s final written decision finding select claims obvious. The Federal Circuit found NuVasive waived its arguments to the PTAB’s treatment of non-patent prior art references as printed publications because it affirmatively chose not to address such argument before the PTAB during the trial phase. The Federal Circuit found that the PTAB did not adequately explain how the claims would have been obvious because it failed to articulate a motivation to combine the prior art references.

Rehearing En Banc

SAS Inst., Inc. v. ComplementSoft, LLC, 842 F.3d 1223, 120 U.S.P.Q.2d 1669 (Fed. Cir. 2016). The Federal Circuit denied the petition for rehearing en banc.

Res Judicata

Asetek Danmark A/S v. CMI USA Inc., 842 F.3d 1350, 120 U.S.P.Q.2d 1857 (Fed. Cir. 2016). The Federal Circuit upheld the finding of infringement, the damages award, and the injunction against the U.S. company, but remanded the case for further consideration regarding the injunction reaching conduct by the Taiwanese defendant, who was dismissed from the case with prejudice.

Standing

Phigenix, Inc. v. Immunogen, Inc., 845 F.3d 1168, 121 U.S.P.Q.2d 1242 (Fed. Cir. 2017). The Federal Circuit dismissed an appeal brought by an unsuccessful petitioner in an inter partes review proceeding in which the PTAB found the claims of the challenged patent to be nonobvious. The Federal Circuit found that the petitioner-appellant did not have standing to bring the appeal, because the appellant failed to offer sufficient proof to establish that it had suffered an injury in fact. The Federal Circuit explained that although it is not a requirement to appear before an administrative agency (e.g., the PTAB), a federal court cannot decide a matter that does not involve a case or controversy under Article III of the Constitution. A case or controversy, and, thus, standing to be heard in a federal appellate court, exists where an appellant has (1) suffered an injury in fact, (2) that is fairly traceable to the challenged conduct of the appellee, (3) that is likely to be redressed by a favorable judicial decision. The appellant argued, based on declarations and an attorney letter, that it had suffered an injury in fact because the existence of the challenged patent increased competition between itself and the patentee and affected its own licensing efforts. The appellant did not contend that there was a risk of infringement. The evidence did not indicate, for example, that the appellant had been unsuccessful in attempting to license its own patents because a potential licensee chose to take a license to the challenged patent, instead. As such, the Federal Circuit found the evidence was insufficient to demonstrate the requisite injury in fact and dismissed.

TRADE SECRETS

Chubb INA Holdings, Inc. v. Chang, 2017 WL 499682, 2017 U.S. Dist. LEXIS 16744 (D.N.J. 2017). Chang worked at Chubb for more than 19 years in Chubb’s real estate and hospitality division. Chubb’s complaint alleged that Chang indirectly coordinated competitor Endurance’s recruitment of many key employees. In February 2016, 15 employees in Chubb’s real estate and hospitality division received employment offers, and all but three accepted the offers. Endurance subsequently hired another 12 former Chubb employees.

Chubb sued under the Defend Trade Secrets Act (DTSA) alleging that Chang and Endurance acquired, disclosed, and used trade secret information from Chubb to commence this raid and hire both employees and former employees of Chubb. The defendants moved to dismiss the DTSA because the effective date of the statute is May 11, 2016 and the alleged acts of trade secret misappropriation occurred before this date. The defendants also argued that the mere retention of Chubb’s documents containing alleged Chubb confidential information was not actionable because these documents were provided in the ordinary course of employment (and not stolen). The district court rejected these arguments and sustained the DTSA claim. The former Chubb employees retained large amounts of documents containing confidential information after termination of their employment at Chubb and these documents were used for the benefit of Endurance after May 11, 2016 (effective date of DTSA).

Magnesita Refractories Co. v. Mishra, 2017 WL 365619, 2017 U.S. Dist. LEXIS 10204 (N.D. Ind. 2017). On December 23, 2016, the district court entered an ex parte TRO authorizing the seizure of a laptop computer owned by defendant Mishra. The district court was persuaded that his employer (Magnesita) had made the requisite showing that there was a strong likelihood that Mr. Mishra was conspiring to steal Magnesita’s trade secrets contained on the laptop, and the seizure was needed to be taken to prevent the impending harm. Although the DTSA only has been in effect since May 11, 2016, the district court noted that at least two other courts presiding over cases involving DTSA claims have issued TROs under Rule 65 ordering the seizure of property. The defendant argued the novel argument because the TRO ordered a seizure of property that the TRO triggered Rule 64 of the Federal Rules of Civil Procedure, and Rule 64 required the court to comply with the ex parte seizure provisions of the DTSA.

The district court rejected this argument, noting that Rule 64 relates to the seizure of property for the purpose of securing assets for the satisfaction of a potential judgment. Here, Magnesita did not request seizure of Mishra’s property for the purpose of securing assets for the satisfaction of a potential judgment. Here, Magnesita only requested the laptop for 48 hours so that it could be imaged and returned to Mishra. In other words, the seizure here had nothing to do with securing assets to satisfy a judgment. A Rule 65 order requiring defendant to turn over his personal laptop for forensic imaging is proper. Courts have no problem relying on a Rule 65, rather than the DTSA, to accomplish the seizure.

Unum Grp. v. Loftus, 2016 U.S. Dist. LEXIS 168713 (D. Mass. 2016). Loftus requested dismissal of Unum’s federal and state law claims for trade secret misappropriation on the grounds that he turned over the documents he removed from Unum to his attorney to report and investigate a violation of law, and he is therefore immune from any liability for trade secret misappropriation pursuant to 18 U.S.C. § 1833(b) of the new Defend Trade Secrets Act (DTSA). Section 1833(b) shields individuals from liability under any federal or state trade secret law for disclosure of a trade secret made “in confidence . . . to an attorney . . . solely for the purpose of reporting or investigating a suspected violation of law.”

Loftus did not deny that the documents he removed contain trade secrets. While Loftus contends that he is entitled to immunity under the DTSA because he handed Unum’s documents over to his attorney to pursue legal action against Unum for alleged unlawful activities, the record lacked facts to support or reject his affirmative defense at this stage of litigation.

There has been no discovery to determine the significance of the documents taken or their contents, and Loftus has not filed any potential lawsuit that could be supported by information in those documents. Further, it is not ascertainable from the complaint whether Loftus turned over all of Unum’s documents to his attorney, which documents he took and what information they contained, or whether he used, is using, or plans to use, those documents for any purpose other than investigating a potential violation of law. Thus, the motion to dismiss the trade secret misappropriation claim was denied.

TRADEMARKS

Abandonment for Non-Use

In re JobDiva, Inc., 843 F.3d 936, 121 U.S.P.Q.2d 1122 (Fed. Cir. 2016). The Federal Circuit vacated and remanded for further consideration of the TTAB’s decision to cancel JobDiva’s trademark registration based on nonuse. JobDiva’s owned two trademark registrations: (1) JOBDIVA in standard characters (the “‘917 registration”) registered for “personnel placement and recruitment”; and (2) JOBDIVA and Design (the “‘235 registration”) for “personnel placement and recruitment services; computer services . . .” related thereto. JobDiva used its software to automatically provide products and services related to staffing. JobDiva petitioned the TTAB to cancel a registration owned by a third party, who counterclaimed, petitioning to cancel JobDiva’s trademark registrations by alleging that JobDiva failed to perform personnel placement and recruitment services. The TTAB granted the counterclaim, cancelling the ‘917 registration in whole and the ‘235 registration in part, finding JobDiva’s evidence of use insufficient because JobDiva only provided software, not any additional “personnel placement and recruitment” services independent and distinct from providing its software to others.

The Federal Circuit acknowledged that, with modern technology, the line between services and products sometimes blurs. The Federal Circuit found that the TTAB erred in requiring JobDiva to show that it offered personnel placement and recruitment activities in addition to its provision of software. The key consideration is the perception of the user and, more specifically, whether JobDiva’s use of its marks sufficiently creates in the minds of purchasers an association between the marks and JobDiva’s personnel placement and recruitment services. Because the question is a factual one, the Federal Circuit found that the TTAB must answer it in the first instance. Because the TTAB applied the wrong legal standard, the Federal Circuit vacated its judgment and remanded for further consideration.

Descriptiveness

In re LC Trademarks, Inc., 121 U.S.P.Q.2d 1197 (T.T.A.B. 2016). The applicant LC Trademarks sought registration on the Principal Register of the mark DEEP! DEEP! DISH PIZZA (in standard characters with “DEEP DISH PIZZA” disclaimed) for pizza. The Examining Attorney refused registration on grounds that the mark was merely descriptive and had not acquired distinctiveness under Section 2(f). The TTAB affirmed.

The applicant acknowledged that the more descriptive the term, the greater an applicant’s evidentiary burden to establish acquired distinctiveness, but argued that DEEP! DEEP! DISH PIZZA is a unitary phrase that, taken as a whole, creates a new and different commercial impression from that of its component words, thereby diminishing its degree of descriptiveness. However, the TTAB agreed with the Examining Attorney that the mark’s repetition of the word “DEEP!” simply conveys the impression of being somewhat deeper than a general deep dish pizza.

The applicant then argued that the mark was a member of a family of double word marks having exclamation points after each word, which helps it acquire distinctiveness. The TTAB found that although evidence of a family of marks can be presented to help show acquired distinctiveness of a new member of the family, the applicant must show that the family of marks: (1) has a recognizable common characteristic; (2) is distinctive; and (3) has been promoted in such a way as to create “recognition among the purchasing public that the common characteristic is indicative of a common origin of the goods or services.” The TTAB found that none of these factors was satisfied.

Thus, the TTAB agreed with the Examining Attorney’s determination that the applicant failed to meet its burden of proving acquired distinctiveness of the applied-for mark. As such, the refusal to register DEEP!DEEP! DISH PIZZA was affirmed.

Likelihood of Confusion/Geographically Misdescriptive

In re Morinaga Nyugyo Kabushiki Kaisha, 120 U.S.P.Q.2d 1738 (T.T.A.B. 2016). Morinaga appealed the refusal of registration of its application for a mark for MT. RAINIER THE MOUNTAIN OF SEATTLE ESPRESSO & MILK and design for “milk beverages containing espresso coffee and milk; milk products containing espresso coffee and milk, excluding ice cream, ice milk and frozen yogurt.” The Examining Attorney refused registration of Morinaga’s mark based on a likelihood of confusion with two registrations for MOUNT RAINIER COFFEE COMPANY (word and design marks) for use with coffee.

In reviewing the du Pont factors, the TTAB found that the factors strongly supported a finding that confusion was likely. The TTAB determined that the marks were quite similar in appearance and meaning, as “MT. RAINIER” was the dominant part of the marks and the additional wording was not sufficiently distinctive to change the commercial impression of Morinaga’s mark. Moreover, the fact that one of the cited marks was on the Supplemental Register did not lessen its ability to preclude registration of Morinaga’s mark.

The TTAB also reviewed several third-party registrations comprising the term “RAINIER,” which Morinaga offered as evidence of the limited scope of protection of the cited marks. However, the TTAB stated that the existence of confusingly similar marks on the Principal Register did not aid in registration of Morinaga’s mark but, rather, third-party uses of the mark were more relevant for showing the term’s weakness as a trademark.

Regarding whether Morinaga’s mark was geographically misdescriptive based on the use of the term “SEATTLE” in the mark, the TTAB indicated that evaluation of the mark must be based on the mark as a whole. Under that standard, the TTAB determined that although the term “SEATTLE” was a generally known geographic location, the TTAB did not find that the relevant public would consider the mark’s use of “SEATTLE” to indicate the source of the goods and, thus, the mark was not geographically misdescriptive.

Primarily Merely a Surname

In re Adlon Brand GmbH & Co. KG, 120 U.S.P.Q.2d 1717 (T.T.A.B. 2016). Adlon Brand appealed the refusal of registration of its application for the mark ADLON for alcoholic beverages, entertainment services, bar services, and hygienic and beauty care services. The Examining Attorney refused registration on the ground that the mark was primarily a surname under Section 2(e)(4) of the Trademark Act, 15 U.S.C. § 1052(e)(4).

To support the rejection, the Examining Attorney provided evidence of the mark as a surname, although such evidence demonstrated that the surname was rare. The TTAB indicated that the surname’s rareness may be relevant to determining whether the primary significance of the mark to the purchasing public is that of a surname.

Adlon Brand argued that the primary significance of ADLON was as an indicator of the Adlon Brand itself, and/or the historic Adlon Hotel in Germany, which was named for the Adlon family that operated the hotel. However, the TTAB found Adlon Brand’s historical arguments were not sufficient to counter the Examining Attorney’s evidence of the surname significance of the mark ADLON to the purchasing public. Upon examining all of the evidence of record, the TTAB affirmed that the primary significance of the mark ADLON was as a surname, and that ADLON has no other ordinary meaning.

John C. Gatz

John C. Gatz is a member of the firm Nixon Peabody in Chicago, Illinois.

 

Column contributors include the following writers: Copyrights: Zachary J. Smolinski, Smolinski Law PC; Michael N. Spink, Brinks, Hofer, Gilson & Lione; Mark R. Anderson, Akerman LLP. Patents: Cynthia K. Barnett, Johnson & Johnson; R. Trevor Carter, Daniel M. Lechleiter, and Andrew M. McCoy, Faegre Baker Daniels LLP; Robert W. (Bill) Mason, CeloNova BioSciences, Inc.; Peter J. Prommer, Nixon Peabody LLP. Trade Secrets: R. Mark Halligan, FisherBroyles LLP. Trademarks: Janet M. Garetto and Elizabeth W. Baio, Nixon Peabody LLP; Amy L. Sierocki.