Decisions in Brief

Failure to Mitigate Copyright Infringement Limits Statutory Damages

Energy Intelligence Group, Inc. v. Kayne Anderson Capital Advisors, LP, No. 4:14-cv-01903, 2018 WL 2048896 (S.D. Tex. May 2, 2018). EIG publishes a subscription newsletter called Oil Daily that Kayne had a single subscription to receive. Kayne forwarded copies of Oil Daily to employees who did not have subscriptions. EIG sued Kayne for copyright infringement, and the jury found that Kayne had infringed the copyright of 1,646 Oil Daily works, and had violated the Digital Millennium Copyright Act (DMCA) 425 times by removing or altering copyright management information. However, the jury also found that EIG could have mitigated 1,607 acts of infringement and all 425 DMCA violations. EIG was awarded $585,000 in statutory damages for copyright infringement, and no damages for the violations of the DMCA. EIG moved to alter or amend the judgment with respect to the affirmative defense that EIG failed to mitigate damages, or in the alternative for a new trial on the issue of failure to mitigate damages. EIG also moved for fees and costs.

The district court rejected EIG’s motions related to altering the judgment or granting a new trial, but granted EIG’s motion for fees and costs. The district court began its analysis by looking to the standard for amending a judgment under Rule 59(e). The district court found that there had not been an intervening change in controlling law, no newly discovered evidence had been presented, and there was no manifest error of law or fact. The district court determined that EIG simply restated arguments it made during trial about whether mitigation of damages was applicable to statutory damages under the Copyright Act. The district court also found that the jury did not make manifest error of fact, as there was evidence to support that EIG did not mitigate its damages.

Turning to EIG’s motion for a new trial under Rule 59(a), the court determined that EIG did not ask the court to instruct the jury on the use of fraudulent concealment of copyright infringement as a defense to Kayne’s mitigation affirmative defense, and had waived this argument.

Finally, the district court considered EIG’s motion for attorney fees and costs. EIG argued that it was the prevailing party, since the jury returned a verdict that Kayne infringed EIG’s copyright, but Kayne countered that EIG was not a prevailing party. The court found that EIG was the prevailing party, as EIG was awarded $585,000 in damages for Kayne’s copyright infringement. The district court did reject the portion of EIG’s attorney fees related to the DMCA claims, since the jury had found that EIG could have mitigated all damages related to those claims. Further, the district court reduced the fees sought by EIG based on the jury awarding damages on only 39 of the 1,646 acts of infringement, but still awarded EIG over $4 million in attorney fees and $75,000 in costs.

Narrow Ruling on Appeal in “Blurred Lines” Case

Williams v. Gaye, 885 F.3d 1150, 126 U.S.P.Q.2d 1105 (9th Cir. 2018). This case, addressing the Copyright Act of 1909, stems from the alleged infringement of Marvin Gaye’s song “Got to Give It Up” by the 2013 hit “Blurred Lines,” performed by Robin Thicke, Pharrell Williams, and others. At the district court level, “Blurred Lines” was found to be infringing, and following post-trial rulings, Gaye’s estate was awarded a judgment in the amount of $5.3 million plus a 50 percent running royalty award. The Ninth Circuit approached the case on cross-appeals from both sides: Thicke appealed (among other things) the damages award, and the Gaye estate asked for (among other things) attorney fees, which they were denied in the district court.

The Thicke parties argued that “Got to Give It Up” should be granted thin protection, an assertion that the Ninth Circuit denied, stating that “[m]usical compositions are not confined to a narrow range of expression.” Addressing a number of procedural issues, the Ninth Circuit largely left the district court determinations untouched, ruling that the verdict was not against the clear weight of the evidence and that the damages and running royalty awards were proper. The majority also determined the decision not to award attorney fees was proper. [Editor’s Note: For further reading, see Megan Coane & Maximillian Verrelli, “Blurring Lines? The Practical Implications of Williams v. Bridgeport Music,” 8 Landslide, no. 3, Jan./Feb. 2016.]

The Fight for Zorro

Cabell v. Zorro Productions Inc., 126 U.S.P.Q.2d 1704 (N.D. Cal. 2018). Plaintiff Cabell developed a musical based on the fictional character Zorro, who first debuted in 1919 in the serialized story “The Curse of Capistrano” and subsequent silent movies. These older works are now in the public domain, and Cabell has registered various scripts and audio versions of the Cabell musical with the Copyright Office. Defendant ZPI is the successor-in-interest to various IP rights related to Zorro (not specifically identified), which it has licensed to various Hollywood companies for Zorro-related works and paraphernalia.

In developing the Cabell musical, Cabell met with ZPI to discuss licensing, but determined he had a sufficient basis to proceed solely on the works in the public domain. Since the early 2000s, Cabell has attempted to commercialize the Cabell musical, but asserts ZPI threatened litigation against his partners and actively discouraged third parties from producing the musical. Limited performances of the Cabell musical have occurred in the United States. In 2004, Cabell petitioned to cancel ZPI’s trademarks, but withdrew without prejudice after negotiation with Sony Pictures and ZPI out of concern for Sony’s impending film Legend of Zorro, in exchange for ZPI’s promise not to challenge Cabell’s Zorro-related copyrights and trademarks. Subsequently, ZPI has licensed its rights to an author for a book about young Zorro, and others for another musical.

Cabell asserted infringement of his rights in the Cabell musical by the book and ZPI musical, and also sought a declaratory judgment of noninfringement. As to the claims of copyright infringement, the district court found there was a triable question of fact remaining as to whether the authors of the book and ZPI musical had sufficient access to the Cabell musical, and whether the ZPI musical was substantially similar to the Cabell musical. However, the district court found that no reasonable juror could find the book to be substantially similar to the Cabell musical, due to differences in the age of Zorro and the plot, characters, setting, themes, dialog, pace, mood, and tone.

As for the declaratory judgment, the district court agreed with Cabell. Most notably, the district court extended the ruling that laches does not apply to remedies at law, which includes copyright infringement. The district court ruled that the nonapplicability of laches extends to copyright issues adjudicated as part of a declaratory judgment claim, since the claim draws its equitable or legal substance from the nature of the underlying controversy.

PATENTS

ANDA Litigation

Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals International Ltd., 887 F.3d 1117, 126 U.S.P.Q.2d 1266 (Fed. Cir. 2018). The Federal Circuit upheld the district court’s infringement finding under 35 U.S.C. § 271(e)(2) and affirmed the court’s grant of injunctive relief pursuant to § 271(e)(4). The appellant filed an abbreviated new drug application (ANDA) to sell a generic version of the appellee’s drug three years after FDA approval. However, the same year the ANDA was certified, the appellee’s patent issued. The district court found induced infringement of the appellee’s patent following a bench trial, but determined that § 271(e)(4)(A) relief was unavailable because the patent did not issue until after the ANDA was filed. The Federal Circuit stated that upon a finding of patent infringement under § 271(e)(2), the district court must order remedies in accordance with § 271(e)(4).

Anticipation/Written Description

Knowles Electronics LLC v. Cirrus Logic, Inc., 883 F.3d 1358, 126 U.S.P.Q.2d 1014 (Fed. Cir. 2018). The Federal Circuit affirmed the Patent Trial and Appeal Board’s (PTAB’s) decision, finding that an examiner correctly selected claims for anticipation and other claims for lack of an adequate written description. The other claims lacked adequate written description because the specification lacked support for the claimed solder pads “configured to” connect to a printed circuit board by a reflow process.

Assignment

James v. J2 Cloud Services, LLC, 887 F.3d 1368, 126 U.S.P.Q.2d 1445 (Fed. Cir. 2018). The Federal Circuit reversed the district court’s dismissal of correction of inventorship claims and various state law claims, and remanded for further proceedings. The district court found that an agreement between the inventor and the assignee of the patent granted the assignee rights to the application, so the inventor lacked standing. The Federal Circuit disagreed, finding the assignment language ambiguous as it relates to patents because it only referenced copyrights and not patents.

Attorney Fees

Raniere v. Microsoft Corp., 887 F.3d 1298, 126 U.S.P.Q.2d 1430 (Fed. Cir. 2018). The Federal Circuit affirmed the district court’s findings and awarding of attorney fees and costs. The Federal Circuit found that the appellees were the prevailing parties because the district court’s decision on standing gave the appellees the full relief to which they were entitled. Further, the Federal Circuit agreed that this case was exceptional because the appellant employed a pattern of obfuscation and bad faith throughout the litigation, resulting in the appellees incurring significant fees and costs.

Claim Construction

In re Power Integrations, Inc., 884 F.3d 1370, 126 U.S.P.Q.2d 1001 (Fed. Cir. 2018). The Federal Circuit reversed the PTAB’s decision in an ex parte reexamination proceeding finding that several claims of the patent were anticipated. The Federal Circuit found that the PTAB’s claim construction of the term “coupled” was unreasonably broad and improperly omitted any consideration of the specification disclosure. Because the PTAB’s anticipation finding was based on an improper claim construction, the Federal Circuit reversed.

Ottah v. Fiat Chrysler, 884 F.3d 1135, 125 U.S.P.Q.2d 1901 (Fed. Cir. 2018). The Federal Circuit affirmed the district court’s summary judgment of noninfringement as to certain defendants and dismissal of the complaint with prejudice as to other defendants. The asserted patent related to a removable book holder assembly for use by a person in a protective or mobile structure (e.g., car seat or stroller). The specification describes the claimed book holder as having an adjustable, releasable clipping means and a support arm. The specification indicated that the invention could be used to hold items besides books, such as cameras, but the only embodiment described and illustrated was for holding books. The plaintiff sued several automobile manufactures related to their vehicle-based camera holders. A panel of the Federal Circuit previously found that the claimed book holder had a removable mounting in which mounts requiring tools for removal did not literally infringe the claim, and prosecution history estoppel prevented the claims from encompassing fixed mounts that required tools for removal.

Sumitomo Dainippon Pharma Co. v. Emcure Pharmaceuticals Ltd., 887 F.3d 1153, 126 U.S.P.Q.2d 1389 (Fed. Cir. 2018). The Federal Circuit affirmed the district court’s claim construction, the stipulated infringement, and entry of permanent injunctions.

Claim Preclusion/Kessler Doctrine

SimpleAir, Inc. v. Google LLC, 884 F.3d 1160, 126 U.S.P.Q.2d 1026 (Fed. Cir. 2018). The Federal Circuit reversed the district court’s Rule 12(b)(6) dismissal. The district court ruled that SimpleAir’s infringement claims were too closely related to its prior lawsuits against Google (all for which Google received judgments of noninfringement on related patents) and, as a result, barred SimpleAir’s claims under the doctrine of claim preclusion. The district court also ruled that select SimpleAir claims were barred under the Supreme Court’s decision in Kessler v. Eldred, 206 U.S. 285 (1907)—i.e., the so-called “Kessler doctrine.” Regarding claim preclusion, the district court relied on the patent-in-suit being a continuation of a previously asserted patent and noted that a terminal disclaimer had also been filed, and thus the patent-in-suit was not distinct from the previously asserted patents. The Federal Circuit disagreed, holding that while such facts are persuasive, the district court must make more specific factual findings under the transactional approach required to reach a finding of claim preclusion. Regarding the Kessler doctrine, which holds that if an earlier judgment of noninfringement is based on “essentially the same” conduct accused of infringement in the present lawsuit (and which occurred after the prior judgment) then the present lawsuit is barred, the Federal Circuit remanded the issue to the district court.

Collateral Estoppel

Nestle USA, Inc. v. Steuben Foods, Inc., 884 F.3d 1350, 125 U.S.P.Q.2d 1910 (Fed. Cir. 2018). The Federal Circuit vacated and remanded the PTAB’s decision, finding that collateral estoppel precluded a claim construction by the PTAB for the claim term “aseptic.” The Federal Circuit ruled that its prior claim construction in a related application controlled, and since the PTAB’s nonobviousness decision was found based on the incorrect claim construction, this was to be vacated and remanded to proceed with the correct claim construction.

Conception

Apator Miitors ApS v. Kamstrup A/S, 887 F.3d 1293, 126 U.S.P.Q.2d 1349 (Fed. Cir. 2018). The Federal Circuit affirmed the PTAB’s finding that Apator failed to sufficiently corroborate the inventor’s testimony of conception, leaving the claims anticipated or obvious. The primary issue was whether Apator could swear behind a reference by showing conception and reduction to practice prior to the reference’s effective filing date. It is well established that when a party seeks to prove conception through an inventor’s testimony, it must present evidence in addition to the inventor’s own statement and documents.

Equitable Estoppel

John Bean Technologies Corp. v. Morris & Associates, Inc., 887 F.3d 1322, 126 U.S.P.Q.2d 1357 (Fed. Cir. 2018). The Federal Circuit reversed the district court’s grant of summary judgment based on its finding of equitable estoppel and remanded. The asserted claims were substantively amended or added following ex parte reexamination in 2014, and the plaintiff only sought damages on the reexamined claims. The district court therefore abused its discretion in finding equitable estoppel based on activity beginning in 2002, 12 years prior to the issuance of the reexamination certificate.

Infringement

01 Communique Laboratory, Inc. v. Citrix Systems, Inc., 889 F.3d 735, 126 U.S.P.Q.2d 1439 (Fed. Cir. 2018). The Federal Circuit affirmed the district court’s denial of a motion for a new trial. The patentee argued that it was entitled to a new trial because the district court allowed the accused infringer to bypass the comparison between the claim limitations and the accused products. The Federal Circuit disagreed, finding that the accused infringer properly compared the accused products to the asserted claims and set forth differences between the same. The fact that the alleged infringer also included an invalidity defense that its product practiced the prior art did not mean the accused infringer relied on an improper “practicing the prior art defense.” Instead, the accused infringer recognized that claims must be construed the same for both infringement and invalidity.

Inter Partes Review (IPR)

Dell Inc. v. Acceleron, LLC, 884 F.3d 1364, 126 U.S.P.Q.2d 1055 (Fed. Cir. 2018). The Federal Circuit affirmed the PTAB’s decision not to consider new evidence related to invalidity presented at oral argument during an IPR proceeding. The Federal Circuit reasoned that due process and preserving the PTAB’s discretion outweighed any policy concerns. The Federal Circuit had previously remanded the case to the PTAB since the patentee should have been given an opportunity to respond to the IPR petitioner’s new evidence during oral argument. However, the Federal Circuit noted that this did not require the PTAB to consider the petitioner’s new argument or the patentee’s response thereto.

Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, 138 S. Ct. 1365, 126 U.S.P.Q.2d 1293 (2018). The Supreme Court held that IPR does not violate Article III and does not violate the Seventh Amendment. The Court addressed only the constitutionality of IPR and the precise constitutional challenges that the petitioner raised. The decision should not be misconstrued as suggesting that patents are not property for purposes of the due process clause or the takings clause.

SAS Institute Inc. v. Iancu, 138 S. Ct. 1348, 126 U.S.P.Q.2d 1307 (2018). The Supreme Court held that when the U.S. Patent and Trademark Office (USPTO) institutes an IPR, it must decide the patentability of all of the claims the petitioner challenged. Here the petitioner had alleged that all 16 claims were not patentable, but the Director instituted review on only some of the claims. The Federal Circuit rejected the petitioner’s argument that the PTAB had to decide the patentability of every claim challenged in the petition. The Supreme Court disagreed and held that the statute indicated that the Director’s decision to institute review is a yes-or-no choice, and that the petitioner’s petition, not the Director’s discretion, should guide the life of the litigation.

Obviousness

DSS Technology Management, Inc. v. Apple Inc., 885 F.3d 1367, 126 U.S.P.Q.2d 1084 (Fed. Cir. 2018). The Federal Circuit reversed the PTAB’s obviousness rejection because the PTAB did not provide sufficient explanation for its decision. The PTAB decision relied on “ordinary creativity” instead of “common sense” to supply a missing claim limitation, which was not sufficient.

In re Brandt, 886 F.3d 1171, 126 U.S.P.Q.2d 1079 (Fed. Cir. 2018). The Federal Circuit upheld the PTAB’s decision affirming an obviousness rejection. The claims recite a range of values that were not disclosed in the prior art, but the examiner determined the claimed range to be an obvious design choice. The PTAB determined that the difference in disclosed ranges between the claims and the prior art was virtually negligible and could not be smaller, and that the applicant did not rebut this prima facie rejection through evidence of unexpected results or teaching away.

Knowles Electronics LLC v. Iancu, 886 F.3d 1369, 126 U.S.P.Q.2d 1137 (Fed. Cir. 2018). The Federal Circuit affirmed the PTAB’s prior art rejections based on anticipation and obviousness. The appellant also argued that the PTAB relied on a new ground of rejection on appeal. However, the Federal Circuit determined that the PTAB relied on the same substantive reasons provided by the examiner, albeit using slightly different verbiage.

Polaris Industries, Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 125 U.S.P.Q.2d 1749 (Fed. Cir. 2018). The Federal Circuit affirmed in part, vacated in part, and remanded the PTAB’s decision in a first IPR, and affirmed the PTAB’s determination that the challenged claims were not proven unpatentable in the second IPR. On appeal of the first IPR, the Federal Circuit found no error with respect to the PTAB’s finding for two claims, but found error on the third claim. The PTAB relied on a subjective standard not articulated in prior Federal Circuit case law instead of relying on whether the prior art taught away from the claims. The Federal Circuit also found that the PTAB properly relied on the broadest reasonable interpretation of the claims, and that it improperly failed to consider Polaris’s undisputed evidence of commercial success.

Steuben Foods, Inc. v. Nestle USA, Inc., 884 F.3d 1352, 125 U.S.P.Q.2d 1906 (Fed. Cir. 2018). The Federal Circuit affirmed the PTAB’s decision of obviousness. For an underlying claim construction issue, the Federal Circuit found that the appellant’s position improperly limited a claim term to a single preferred embodiment. The Federal Circuit found that substantial evidence supported the PTAB’s findings.

Pleadings

Disc Disease Solutions, Inc. v. VGH Solutions, Inc., 888 F.3d 1256, 126 U.S.P.Q.2d 1494 (Fed. Cir. 2018). The Federal Circuit reversed the district court’s dismissal of the complaint for failure to state a claim. The district court dismissed the complaint for not meeting a standard articulated by the Supreme Court (in an opinion issued a day after the complaint was filed) and then refused to allow the plaintiff a first amended complaint. The Federal Circuit found that the complaint filed by the plaintiff met the standard articulated by the Supreme Court. The Federal Circuit found that the patent was directed to a simple technology and, therefore, recitation of the claims as well as identification of the allegedly infringing products (and pictures of such products) along with reciting that the products met every element of at least one claim was sufficient to meet the Supreme Court’s standard.

Priority

Droplets, Inc. v. E*TRADE Bank, 887 F.3d 1309, 126 U.S.P.Q.2d 1317 (Fed. Cir. 2018). The Federal Circuit affirmed the PTAB’s decision finding all claims invalid as obvious. The patent expressly claimed priority only to an immediately preceding application, and not the earlier filed provisional. As a result, an international publication with the same specification qualified as prior art and therefore invalidated the claims. The Federal Circuit also found that incorporation by reference could not satisfy the “specific reference” requirement of § 120.

Hologic, Inc. v. Smith & Nephew, Inc., 884 F.3d 1357, 126 U.S.P.Q.2d 1008 (Fed. Cir. 2018). The Federal Circuit affirmed the PTAB’s decision, finding that the claimed PCT application had adequate disclosure to support an earlier priority date. To reach this conclusion, the Federal Circuit interpreted the claims and the specification, and also relied on extrinsic evidence, including prior patents reflecting the state of the art at the time of invention and expert testimony regarding the state of the art at the time of invention.

Privity

Wi-Fi One, LLC v. Broadcom Corp., 887 F.3d 1329, 126 U.S.P.Q.2d 1370 (Fed. Cir. 2018). The Federal Circuit affirmed the PTAB’s decision that Broadcom was not the real party in interest or privity. Wi-Fi argued that the PTAB had neglected to address the real party in interest issue when the PTAB decided that Broadcom timely filed its IPR petition. Wi-Fi argued that the PTAB further abused its discretion in denying Wi-Fi discovery on Broadcom’s role in prior patent litigation. The Federal Circuit found that the evidence showed that despite Broadcom having aligning interests with the defendants to the litigation, Broadcom had no right to control the litigation and therefore was not in privity.

Subject Matter Eligibility

Voter Verified, Inc. v. Election Systems & Software LLC, 887 F.3d 1376, 126 U.S.P.Q.2d 1498 (Fed. Cir. 2018). The Federal Circuit affirmed the district court’s finding that the claims were directed to patent-ineligible subject matter. The patentee argued that the district court was incorrect because of a prior litigation of the claims, pre-Alice, where the claims were patent eligible under § 101. The Federal Circuit first determined that the Supreme Court’s Alice decision was not an intervening change in the law. However, issue preclusion did not apply because patent-ineligible subject matter was not clearly litigated. Based on the Alice test, the claims are invalid because they are human cognitive functions, directed to voting, verifying the vote, and submitting the vote for tabulation.

Unclean Hands

Gilead Sciences, Inc. v. Merck & Co., 888 F.3d 1231, 126 U.S.P.Q.2d 1481 (Fed. Cir. 2018). The Federal Circuit affirmed the district court’s finding of unenforceability of the patents based on unclean hands. The Federal Circuit found two related forms of prelitigation business misconduct. First, a patent attorney for Merck participated in a conference call with the accused infringer, violating a firewall understanding between the parties that those participating in the patentee’s patent prosecution not be involved in the discussions. The patent attorney continued to prosecute related applications after the call. The patent attorney’s participation influenced the patentee’s prosecution strategy, resulting in the patents at issue.

TRADE SECRETS

Advanced Fluid Systems, Inc. v. Huber, 295 F. Supp. 3d 467 (M.D. Pa. 2018). The courts have not addressed whether the Pennsylvania Uniform Trade Secrets Act (PUTSA) allows for vicarious trade secret liability. The near unanimous consensus of federal and state courts holds that the Uniform Trade Secrets Act—on which the PUTSA is based—does contemplate vicarious liability when state law otherwise provides the cause of action. Pennsylvania law recognizes respondent superior liability for intentional and even criminal acts of an employee. As a result, the district court elected to join the majority of federal and state courts and held that the PUTSA authorizes vicarious trade secret liability.

Gold Medal Products Co. v. Bell Flavors & Fragrance, Inc., No. 1:17-CV-4084, 2018 WL 1135629, 2018 U.S. Dist. LEXIS 35711 (N.D. Ill. Mar. 2, 2018). The plaintiff’s Glaze Pop product line consists of nonpublic specific chemical compositions. It is not the name of the ingredients on the packaging that determines a trade secret; rather, it is the nonpublic specific chemical compositions. Further, a trade secret can exist in a combination of characteristics and components, each of which, by itself, is in the public domain, but the unified process, design, and operation of which, in unique combination, affords a competitive advantage and is a protectable trade secret.

Industrial Packaging Supplies, Inc. v. Channell, No. 18 C 165, 2018 WL 2560993 (N.D. Ill. June 4, 2018). The trade secret misappropriation claim that pleaded “upon information and belief” was dismissed because the plaintiff did not alleged any facts to support its contention that the defendants misappropriated its trade secrets. A complaint may make allegations upon information and belief where the acts are inaccessible to the plaintiff, but it must also plead reasonable grounds for its suspicions.

Insight Global, LLC v. Borchardt, No. 18 C 00628, 2018 WL 2267810, 2018 U.S. Dist. LEXIS 82904 (N.D. Ill. May 17, 2018). Even if the district court were to hold that the plaintiff failed to allege any disclosure or use of trade secrets by Borchardt, they did alleged that the defendant acquired trade secrets through improper means by showing that her employment contract outlined what was considered trade secrets and prohibited their removal or continued use after her separation from the company and that Borchardt did exactly what the agreement prohibited.

TRADEMARKS

Descriptiveness/Genericness

In re Mecca Grade Growers, LLC, 125 U.S.P.Q.2d 1950 (T.T.A.B. 2018). Mecca sought to register the mark MECHANICALLY FLOOR-MALTED for malt in brewing and distilling in International Class 31, and processing of agricultural grain in International Class 40. The application was refused under section 2(e) of the Trademark Act on the ground that the mark was merely descriptive of the identified goods and services and was also denied registration on the Supplemental Register on the ground that the mark was generic. The Trademark Trial and Appeal Board (TTAB) found that the mark immediately conveyed characteristics of both the goods and the services. The TTAB noted the meaning of “mechanically” as being derived from the adjective “mechanical,” which is defined as “of or relating to machinery” or “produced or operated by a machine or tool.” Moreover, in the brewing and distilling industry, “floor malting” referred to “the practice of germinating (malting) steeped barley on the floor of the malt house,” which can be performed manually or with machinery. Despite Mecca’s arguments that the mark was suggestive and that the juxtaposition of “mechanically” with “floor-malted” resulted in an incongruity, the TTAB found that as a whole the mark did not have a separate nondescriptive meaning and that the mark immediately conveyed an attribute of Mecca’s malt and the mechanical nature of Mecca’s processing services.

Regarding the two-step analysis for genericness, the TTAB first determined that the genus was adequately defined by Mecca’s goods (“malt for brewing and distilling”) and services (“processing of agricultural grain”). Second, as to whether the mark MECHANICALLY FLOOR-MALTED was understood by the relevant purchasing public as primarily referring to the goods and services, the TTAB defined the customers as those in the brewing and distilling business, who were likely to know that MECHANICALLY FLOOR-MALTED is the process for producing this type of malt. Thus, even though Mecca might have been the first to use the precise phrase “mechanically floor-malted,” the record showed that the relevant public would perceive this phrase as a generic designation for Mecca’s goods and services. Thus, the descriptiveness refusal and genericness determination were both affirmed.

Likelihood of Confusion/Composite Mark

In re Aquitaine Wine USA, LLC, 126 U.S.P.Q.2d 1181 (T.T.A.B. 2018). Aquitaine appealed the refusal to register the mark LAROQUE and design for “wine of French origin protected by the appellation of the origin Cité de Carcassonne” in International Class 33. The application was refused based on a likelihood of confusion with a registration for the mark CHATEAU LAROQUE for “wines having the controlled appellation Saint-Emilion Grand Cru.” Applying the DuPont factors, the TTAB found that the marks were similar in sight and sound due to the shared term “LAROQUE.” Moreover, there was no indication in the record that this term had any meaning, nor that it was weak or not inherently distinctive.

The TTAB noted that in the case of marks consisting of words and a design, the words are normally accorded greater weight because they are likely to make a greater impression on consumers. Because of the position, size, and bolding of the term “LAROQUE,” this term dominated the commercial impression of Aquitaine’s mark. Moreover, the smaller wording, “Cité de Carcassonne,” had been disclaimed. Also, the design element in Aquitaine’s mark included a “chateau,” and therefore the word “CHATEAU” in the cited mark did not distinguish the marks. Thus, the marks were found to be partly similar in sound and more similar than dissimilar in appearance, and to convey similar connotations and commercial impressions. The TTAB determined that even if U.S. customers were aware that the wines came from different regions in France, they were still likely to assume that the wines shared a common source or affiliation. Based on these factors, the refusal to register was affirmed.

Product Design Mark

Grote Industries, Inc. v. Truck-Lite Co., 126 U.S.P.Q.2d 1197 (T.T.A.B. 2018). In a consolidated proceeding, Grote sought to oppose/cancel Truck-Lite’s application and registration for a pattern of truck lights. Grote argued that the marks were functional, lacked acquired distinctiveness, and were fraudulently obtained. The TTAB granted the petition to cancel the registration and sustained the opposition of the application.

The marks in question consisted of the configuration of a stop/turn/tail light, with a circular base and cover portion. One lens was located in a center of the cover, and the remaining five lenses were arranged around the pentagonal perimeter of the center lens. The design was referred to as the “Penta-Star Pattern.”

In assessing the functionality of the marks, the TTAB considered whether the design was essential to the use or purpose of the article, if it affected the cost or quality of the article, or if its exclusive use would put competitors at a significant disadvantage. Although Truck-Lite owned a utility patent for its product, the TTAB found that the Penta-Star Pattern was only incidentally disclosed therein and thus was not essential to the use or purpose of the article. The TTAB found that Truck-Lite’s advertising did not promote utilitarian advantages specifically arising from the Penta-Star Pattern. The TTAB further found that there appeared to be alternative designs that satisfied federal regulations and that there was no clear benefit as to either cost or ease of manufacture attributable to the Penta-Star Pattern. The TTAB then went on to assess whether the Penta-Star Pattern had acquired distinctiveness, a requirement for registration of a product design. The TTAB found that the record contained insufficient probative evidence that the primary significance of Truck-Lite’s design at the time of trial was to identify the source of the lights in the minds of consumers. Thus, the TTAB granted the petition to cancel the registration and sustained the opposition of the application.

Prior Use of Mark

RxD Media, LLC v. IP Application Development LLC, 125 U.S.P.Q.2d 1801 (T.T.A.B. 2018). RxD Media opposed two applications filed by IP Application Development (IP) for the mark IPAD for various services in several international classes. IP sought to register the mark under section 2(f) on the basis that the IPAD mark had acquired distinctiveness. In its opposition, RxD Media asserted prior use of the same mark for “providing temporary use of a web-based software application for mobile-access database management whereby users can store and access their personal information” based on its common law use. As such, RxD Media was required to show that it had used the IPAD mark prior to IP’s constructive use of its mark.

IP asserted that RxD Media had not used the mark IPAD and instead used “IPAD.mobi” and “IPAD.mobi” as a component of a composite mark that used a pen for the letter I in “IPAD.mobi.” As RxD Media’s use of “IPAD.mobi” was different from use of the mark IPAD alone, the TTAB found that RxD Media failed to show that it had used the mark IPAD as a stand-alone mark. The TTAB further determined that RxD Media’s use of IPAD was merely descriptive of “mobile Internet notepad” services and that the evidence failed to establish that the mark had acquired distinctiveness. Thus, because RxD Media had not shown a prior proprietary interest in the mark IPAD prior to IP’s constructive filing dates, its claim for a likelihood of confusion failed and the opposition was dismissed.

Specimen of Use/Computer Software Goods

In re Minerva Associates, Inc., 125 U.S.P.Q.2d 1634 (T.T.A.B. 2018). Minerva appealed the refusal to register the mark AWLVIEW for warehouse inventory management software and related software. During examination, Minerva submitted a substitute specimen showing use of the mark AWLVIEW that consisted of screenshots of login and search query pages that are displayed when a customer uses the downloaded software. The examining attorney found the specimens insufficient to show trademark use because the mark appeared above the screenshots and not in the title bar or on the login or launch screen where it could be viewed by consumers. Minerva argued that the specimen showed the full screen that customers viewed when they open the software and that the mark appeared in the header just above the login and search query windows. Because the mark appeared on the login and search query screen when the software was in use, the TTAB determined that the substitute specimen showed the AWLVIEW mark with the applied-for goods and would be viewed by customers as identifying the source of the goods. The refusal to register was reversed.