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December 01, 2019 Decisions in Brief

Decisions in Brief

John C. Gatz

©2019. Published in Landslide, Vol. 12, No. 2, November/December 2019, 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

A Registration Is Required

Xclusive-Lee, Inc. v. Hadid, No. 19-CV-520, 2019 U.S.P.Q.2d 265437 (E.D.N.Y. July 18, 2019). Jelena Noura “Gigi” Hadid is a well-known international supermodel modeling for major fashion brands such as Fendi and Stuart Weitzman. She was sued for copyright infringement for uploading a cropped version of a photograph of herself allegedly owned by Xclusive (a paparazzi photographer). Hadid moved to dismiss the complaint on the basis that Xclusive failed to allege or obtain a copyright registration in the photograph. The district court agreed with Hadid and dismissed the complaint.

At the time the complaint was filed, Xclusive had submitted an application for registration of the photograph with the U.S. Copyright Office, but the registration had not yet issued. It is a statutory requirement under the Copyright Act that a plaintiff must obtain registration of a work before filing a lawsuit based on infringement of the same work. The U.S. Supreme Court recently clarified in Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, 139 S. Ct. 881, 887 (2019), that registration occurs only when the Copyright Office grants registration; the filing of an application is not enough. The district court found that because Xclusive did not have a registration at the time it filed the complaint, Xclusive had not met the statutory requirement for bringing a suit.

Banana Costumes Are Copyrightable

Silvertop Associates Inc. v. Kangaroo Manufacturing Inc., No. 18-2266, 2019 U.S.P.Q.2d 285853 (3d Cir. Aug. 1, 2019). Appellee Silvertop (d/b/a Rasta) and appellant Kangaroo both sell costumes. Rasta obtained a copyright registration for its full-body banana costume. Rasta became aware that Kangaroo was selling a banana costume that closely resembled its costume and sued Kangaroo for copyright infringement, among other causes of action. Rasta moved for a preliminary injunction. The district court granted the preliminary injunction and Kangaroo appealed to the Third Circuit on the grounds that the injunction should not have been issued because Rasta is not likely to succeed on the merits.

On appeal, Kangaroo asserted that Rasta did not have a valid copyright claim in the banana costume. The Third Circuit first looked at whether the nonutilitarian, sculptural features of the costume are copyrightable using the reasoning set forth in the Supreme Court decision of Star Athletica, L.L.C. v. Varsity Brands, Inc., 137 S. Ct. 1002 (2017). The Third Circuit then considered whether the merger or scenes a faire doctrine renders the costume unregistrable. The Third Circuit ultimately concluded that Rasta is likely to be able to prove a valid copyright in its banana costume. Specifically, the Third Circuit determined that Rasta’s costume is a “useful article.” The Third Circuit explained that the costume’s colors, lines, shape, and length are all artistic and protectable features under the copyright law.

The Third Circuit construed Kangaroo’s invocation of the merger and scenes a faire doctrines into the single question of whether registering the banana costume would essentially monopolize an underlying idea, which here would be the concept of a banana as a costume. Because there are a multitude of ways to create and portray a banana costume, the Third Circuit found that a copyright claim in Rasta’s costume would not monopolize such an idea. In fact, Rasta provided over 20 examples of other banana costumes that it found noninfringing, which the Third Circuit used to support its conclusion.

Errors on Copyright Registration Not Sufficient to Invalidate Copyright

Universal Dyeing & Printing, Inc. v. Knitwork Productions II, LLC, No. 2:17-cv-05660, 2019 U.S.P.Q.2d 237269 (C.D. Cal. June 25, 2019). Universal is a company that makes and sells fabrics. Universal registered copyrights in a number of designs in 2010 and 2013, including two copyright registrations asserted against Knitwork. The 2010 registration had an error where the designs deposited for two applications were switched. Universal filed for a supplementary registration to correct the description of the deposited design, so the supplementary registration matched the deposited article. The 2013 application contained 15 designs as a single work registration; however, some of the designs included public domain elements, and other designs had been purchased from another entity. The 2013 application did not include this information. Universal filed a supplementary application to correct the 2013 registration. Knitwork moved for summary judgment that the copyrights were invalid based on Universal trying to defraud the Copyright Office with the errors in the applications.

The district court denied Knitwork’s motion for summary judgment. Starting with the 2010 registration, the district court determined that Universal did not change the deposit of the 2010 application in a way prohibited by 37 C.F.R. § 202.6(d)(4)(ii), but instead amended the information of the registration to match what was deposited. Additionally, the district court found that Knitwork failed to show any evidence that the mistakes in Universal’s 2010 application were made intentionally. Turning to the 2013 application, the district court found that there was no evidence that the asserted design had been published before the filing of the application, so the fact that some of the designs had been previously published did not invalidate the copyright to the previously unpublished designs. The district court further found that the failure to disclose in the original application that certain designs contained public domain materials and that some designs were assigned to Universal were mistakes that could be corrected by a supplementary application.

Knowing False Information in Copyright Registration Can Lead to Invalidation

Gold Value International Textile, Inc. v. Sanctuary Clothing, LLC, 925 F.3d 1140 (9th Cir. 2019). Gold Value (d/b/a Fiesta) sued Sanctuary and other clothing retailers (collectively Sanctuary) alleging that Sanctuary copied its fabric design. Sanctuary counterclaimed, asserting invalidation of Fiesta’s copyright registration. The district court granted summary judgment in favor of Sanctuary, finding Fiesta’s registration invalid because Fiesta knowingly included false information that would have prevented registration of the design. Fiesta appealed to the Ninth Circuit.

Fiesta alleged that it owns the copyright in the textile fabric design 1461-43 (1461 design). Fiesta further alleged that Sanctuary infringed the 1461 design by using a substantially similar design on clothing that it sells to other retailers and customers. Fiesta obtained a copyright registration for the 1461 design as part of an unpublished collection (which includes 33 additional fabric designs). However, prior to seeking the registration, Fiesta had sold samples of the 1461 design. Fiesta did not consider these sales to constitute publication of the 1461 design.

The district court determined that because Fiesta had sold the 1461 design prior to registration, it had been published and Fiesta’s inclusion of the 1461 design in its registration for the unpublished collection was inaccurate and done knowingly. The district court submitted the question as to whether or not the registration should be invalidated to the Copyright Office. The Copyright Office responded that “had the Office been aware that the 1461 Design had been previously published, the Office would have refused registration of that work using the unpublished collections option because the work was registered as unpublished when in fact it had been published.”

On appeal, Fiesta argued that: (1) it made a mistake in failing to include a publication date in its application for registration, which could be corrected by a supplemental registration; (2) the registration is not inaccurate, because the entire collection had never been published together as a collection; and (3) the registration is accurate, because the publication of the 1461 design was a limited distribution, which does not constitute publication under the Copyright Act. The Ninth Circuit found these arguments unconvincing.

Patents

Anticipation/Obviousness

Mayne Pharma International Pty. Ltd. v. Merck Sharp & Dohme Corp., 927 F.3d 1232, 2019 U.S.P.Q.2d 229142 (Fed. Cir. 2019). The Federal Circuit affirmed the Patent Trial and Appeal Board’s (PTAB’s) finding that all challenged claims, which related to an antifungal drug composition, were anticipated or obvious. The Federal Circuit found no error with the PTAB’s decision to permit Merck to amend its petition after filing—but without affecting the filing date—to correct the listing of real parties in interest. The Federal Circuit also agreed with the PTAB’s claim constructions. Because the patentee did not dispute anticipation or obviousness under the PTAB’s constructions, the Federal Circuit affirmed.

Assignment

Lone Star Silicon Innovations LLC v. Nanya Technology Corp., 925 F.3d 1225, 2019 U.S.P.Q.2d 197812 (Fed. Cir. 2019). The Federal Circuit vacated and remanded the district court’s dismissal of the case. The Federal Circuit found that although the original assignee (who was not a party) did not assign all substantial rights, the district court should have considered whether the original assignee could have been joined prior to dismissal.

Attorney Fees

Elbit Systems Land & C4I Ltd. v. Hughes Network Systems, LLC, 927 F.3d 1292, 2019 U.S.P.Q.2d 233840 (Fed. Cir. 2019). The Federal Circuit affirmed the finding of infringement and damages but dismissed the attorney fees decision due to lack of jurisdiction. The Federal Circuit found that substantial evidence supported the jury’s findings as to infringement. The attorney fees award was unquantified and not a final decision, so the Federal Circuit lacked jurisdiction to review the exceptionality finding.

Claim Construction

Cisco Systems, Inc. v. TQ Delta, LLC, 928 F.3d 1359, 2019 U.S.P.Q.2d 253755 (Fed. Cir. 2019). The PTAB incorrectly construed the term “synchronization signal” to exclude a “synchronization frame.” Thus, the Federal Circuit vacated and remanded the decision.

Conception

Kolcraft Enterprises, Inc. v. Graco Children’s Products, Inc., 927 F.3d 1320, 2019 U.S.P.Q.2d 244694 (Fed. Cir. 2019). The Federal Circuit affirmed the PTAB’s determination that Kolcraft did not antedate the prior art. The case turned on the corroboration of inventor testimony. The Federal Circuit found that substantial evidence supported the PTAB’s finding that the inventor declaration and exhibits did not corroborate dates of prior conception enough to antedate the patent.

DOE Infringement/Anticipation

UCB, Inc. v. Watson Laboratories Inc., 927 F.3d 1272, 2019 U.S.P.Q.2d 231466 (Fed. Cir. 2019). The Federal Circuit affirmed the district court’s findings that one asserted patent was infringed under the doctrine of equivalents (DOE) and the second asserted patent was anticipated. The asserted patents related to rotigotine, a drug used for the treatment of Parkinson’s disease. Addressing the invalidity of the second patent, the Federal Circuit agreed that a rotigotine skin patch used by a patient in the United States prior to the patent’s priority date constituted an anticipatory prior use.

Enablement

Enzo Life Sciences, Inc. v. Roche Molecular Systems, Inc., 928 F.3d 1340, 2019 U.S.P.Q.2d 249412 (Fed. Cir. 2019). The Federal Circuit upheld the district court’s finding that the claims were invalid for lack of enablement. The Federal Circuit found the claims invalid because it would require undue experimentation to create the polynucleotide that is hybridizable and detectable as required by the claims. The specification failed to teach one skilled in the art which combinations would meet those limitations.

Interference (Written Description)

Quake v. Lo, 928 F.3d 1365, 2019 U.S.P.Q.2d 253753 (Fed. Cir. 2019). The Federal Circuit affirmed the PTAB’s decision in an interference proceeding holding that certain claims were unpatentable for lack of written description support. While certain individual elements of the method claim were disclosed in the specification, these disclosures were not adequate to convey using them together as claimed.

Inter Partes Review (IPR)

General Electric Co. v. United Technologies Corp., 928 F.3d 1349, 2019 U.S.P.Q.2d 253832 (Fed. Cir. 2019). The Federal Circuit held that GE lacked Article III standing to appeal the PTAB’s final written decision in an IPR filed by GE. The Federal Circuit found that GE’s alleged competitive injuries were too speculative to confer constitutional standing. Further, the Federal Circuit noted the lack of evidence that GE suffered economic losses and that GE was not in the process of designing a product covered by the claims.

Power Integrations, Inc. v. Semiconductor Components Industries, LLC, 926 F.3d 1306, 2019 U.S.P.Q.2d 217749 (Fed. Cir. 2019). The Federal Circuit vacated and remanded the PTAB’s findings that Semiconductor’s IPR petition was not time-barred and that all challenged claims were invalid as obvious. Under 35 U.S.C. § 315(b), the PTAB may not institute an IPR if the petition “is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” After Semiconductor filed its IPR petition, but before the PTAB’s final written decision, it agreed to merge with Fairchild. However, the patentee, Power Integrations, had sued Fairchild for infringing the challenged patent more than one year before Semiconductor filed its IPR petition. Accordingly, the Federal Circuit found that, once the merger closed, Fairchild became a real party in interest whose status as such caused the time bar of § 315(b) to apply to the petition.

TQ Delta, LLC v. Dish Network LLC, 929 F.3d 1350, 2019 U.S.P.Q.2d 253874 (Fed. Cir. 2019). The Federal Circuit held that the PTAB did not violate TQ’s procedural rights in construing a claim term in its final written decision that was not construed in the institution decision. The Federal Circuit noted that TQ had the opportunity to address the construction during oral argument.

Inventive Concept

Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306, 2019 U.S.P.Q.2d 233391 (Fed. Cir. 2019). The Federal Circuit vacated the district court’s grant of the motion to dismiss, vacated the award of attorney fees, and remanded. Although the Federal Circuit agreed with the district court that the asserted claims were directed to an abstract idea, the district court erred with respect to the inventive concept inquiry by ignoring allegations that, when properly accepted as true, precluded the grant of a motion to dismiss.

Issue Preclusion

Papst Licensing GmbH & Co. KG v. Samsung Electronics America, Inc., 924 F.3d 1243, 2019 U.S.P.Q.2d 188096 (Fed. Cir. 2019). The Federal Circuit affirmed the PTAB’s finding of certain claims being obvious. The patentee sued on a number of patents against different infringers. Three of the patents were determined to be obvious by the PTAB (in different hearings). The patents shared a specification, and many claims had similar terms. The applied prior art to invalidate all three patents was the same. The patentee appealed all three, but at the last minute abandoned the appeal of two of the cases, making the decision final for those patents. The Federal Circuit found that issue preclusion applied and that the patentee could not argue this late in the case that any exception applied.

ITC Proceedings

Hyosung TNS Inc. v. International Trade Commission, 926 F.3d 1353, 2019 U.S.P.Q.2d 221196 (Fed. Cir. 2019). The Federal Circuit affirmed the ITC’s finding that various imported ATMs infringed claims of a patent owned by Diebold. The ITC found that the accused ATMs infringed two patents, and entered a limited exclusion order and cease and desist orders against Hyosung. Thereafter, but prior to appeal, one of the two patents expired. The Federal Circuit found that the appeal was moot with respect to the expired patent because, on expiration, the ITC’s orders “had no further prospective effect.” The Federal Circuit also found that Hyosung failed to show that the second patent was obvious or that Diebold had failed to satisfy the economic prong of the domestic industry requirement. Thus, the Federal Circuit affirmed the ITC’s infringement finding on that patent.

Obviousness

Bradium Technologies LLC v. Iancu, 923 F.3d 1032, 2019 U.S.P.Q.2d 171664 (Fed. Cir. 2019). The Federal Circuit affirmed the PTAB’s finding that the claims of the two patents were obvious.

Game & Technology Co. v. Activision Blizzard Inc., 926 F.3d 1370, 2019 U.S.P.Q.2d 229101 (Fed. Cir. 2019). The Federal Circuit affirmed the PTAB’s finding following an IPR that all challenged patent claims, which related to customizing video game characters, were obvious.

Sony Corp. v. Iancu, 924 F.3d 1235, 2019 U.S.P.Q.2d 185891 (Fed. Cir. 2019). The Federal Circuit vacated and remanded the PTAB’s decision that two claims were obvious. The Federal Circuit found the term “reproducing means” was limited to a computer implementation because there was no discussion in the specification of this function being performed by hardware. Because the claim construction was altered, the case was vacated and remanded.

Samsung Electronics Co. v. Elm 3DS Innovations, LLC, 925 F.3d 1373, 2019 U.S.P.Q.2d 215845 (Fed. Cir. 2019). The Federal Circuit affirmed the PTAB’s finding in 13 IPRs that the 11 patents were not invalid over the prior art. The Federal Circuit agreed with the PTAB that there was a lack of reasonable expectation of success based on the combination of the references and, therefore, the claims were not invalid.

Patentable Subject Matter

Athena Diagnostics, Inc. v. Mayo Collaborative Services, LLC, 927 F.3d 1333, 2019 U.S.P.Q.2d 246748 (Fed. Cir. 2019). The Federal Circuit denied the petition for panel rehearing and the petition for rehearing en banc. The earlier decision invalidated a patent directed to a way to diagnose a severe neurological disorder. The Federal Circuit urged the Supreme Court or Congress to clarify the patentable subject matter issue.

Personhood under AIA

Return Mail, Inc. v. U.S. Postal Service, 139 S. Ct. 1853, 2019 U.S.P.Q.2d 212299 (2019). The Supreme Court held that a government agency is not a “person” capable of instituting post-issuance reviews under the America Invents Act (AIA). USPS was sued for patent infringement and attempted to file a post-issuance proceeding with the U.S. Patent and Trademark Office (USPTO) to invalidate the patent. There is a long-standing presumption that the term “person” does not include sovereign entities, and therefore excludes federal agencies in its definitions. The AIA does not include any express definition of person, which would include the federal government. The statute itself uses the term “person” to sometimes include the government and sometimes not. Therefore, one cannot assume a standard definition throughout.

Reissue

Forum US, Inc. v. Flow Valve, LLC, 926 F.3d 1346, 2019 U.S.P.Q.2d 221227 (Fed. Cir. 2019). The Federal Circuit affirmed the district court’s summary judgment of invalidity with respect to the asserted reissue patent. The Federal Circuit held that the original patent, which discloses and claims fixtures for machining pipes, all of which included one or more “arbors,” did not disclose or otherwise support the “arbor-less” embodiment of the invention claimed in the reissue patent. As such, the Federal Circuit found the reissue claims invalid for failing to comply with 35 U.S.C. § 251(a).

In re Global IP Holdings LLC, 927 F.3d 1373, 2019 U.S.P.Q.2d 249416 (Fed. Cir. 2019). The Federal Circuit reversed the PTAB’s decision rejecting a broadening reissue claim as lacking the written description requirement. The applicant amended a claim to replace the term “thermoplastic” with the broader genus term “plastic.” While the term “plastic” was not found in the specification, the Federal Circuit remanded for consideration of the predictability and criticality of the limitation.

Sovereign Immunity in IPR Proceedings

Regents of the University of Minnesota v. LSI Corp., 926 F.3d 1327, 2019 U.S.P.Q.2d 219331 (Fed. Cir. 2019). The Federal Circuit affirmed the PTAB’s denial of the University of Minnesota’s motions to dismiss several IPR proceedings based on state sovereign immunity. The PTAB found that state sovereign immunity applied to IPR proceedings, but that the university had waived its immunity because it had previously sued the petitioners in district court. The Federal Circuit held that state sovereign immunity does not apply to IPR proceedings, so although it reached a different legal conclusion than the PTAB with respect to the applicability of sovereign immunity, the Federal Circuit reached the same end result.

Venue

Westech Aerosol Corp. v. 3M Co., 927 F.3d 1378, 2019 U.S.P.Q.2d 249409 (Fed. Cir. 2019). The Federal Circuit affirmed the district court’s granting of the motion to dismiss for improper venue and denied the motion for attorney fees and costs. Westech failed to allege facts showing that 3M had a regular and established place of business in the Western District of Washington.

Trade Secrets

Admor HVAC Products, Inc. v. Lessary, No. 19-00068, 2019 WL 3430766, 2019 U.S. Dist. LEXIS 126744 (D. Haw. June 18, 2019). A plaintiff seeking a preliminary injunction must establish that: (1) he is likely to succeed on the merits; (2) he is likely to suffer irreparable harm in the absence of preliminary relief; (3) the balance of equities tips in his favor; and (4) an injunction is in the public interest. A plaintiff who seeks relief for misappropriation of trade secrets must identify the trade secrets and carry the burden of showing that they exist. The plaintiff should describe the subject matter of the trade secret with sufficient particularity to separate it from matters of general knowledge in the trade or of special knowledge of those persons skilled in the trade. Admor failed to show that Lessary violated the Defend Trade Secrets Act because Admor did not establish that Lessary misappropriated any Admor trade secrets.

Miner, Ltd. v. Anguiano, 383 F. Supp. 3d 682 (W.D. Tex. 2019). The plaintiff claimed that Anguiano misappropriated a sales quote sheet, an Excel calculator, a client list, and know-how acquired while employed by the plaintiff. The question was whether these constituted trade secrets under Texas law. The Texas Supreme Court enumerated six factors that bear on whether information constitutes a trade secret: (1) the extent to which the information is known outside of his business; (2) the extent to which it is known by employees and others involved in his business; (3) the extent of the measures taken by him to guard the secrecy of the information; (4) the value of the information to him and to his competitors; (5) the amount of effort or money expended in developing the information; and (6) the ease or difficulty with which the information could be properly acquired or duplicated by others. Examining each of the alleged trade secrets, the district court concluded that the plaintiff had not made a prima facie showing that any of the four alleged items qualified as a trade secret.

M-I L.L.C. v. Q’Max Solutions, Inc., No. H-18-1099, 2019 WL 3565104, 2019 U.S. Dist. LEXIS 131275 (S.D. Tex. Aug. 6, 2019). M-I developed Virtual Hydraulics and Presspro, which are hydraulics simulation software used in oil and gas drilling. Roy worked as a developer at M-I for over 20 years. M-I discovered that Roy had retained possession of confidential M-I documents after he left M-I, and M-I moved for summary judgment for trade secret misappropriation. In reviewing the evidence, a court must draw all reasonable inferences in favor of the nonmoving party, and it may not make credibility determinations or weigh the evidence. M-I failed to satisfy its initial burden to show that there was no genuine dispute of material fact as to whether (1) the documents on which M-I relied contained trade secrets, and (2) the defendants used M-I’s alleged trade secrets.

Trademarks

Genericness/Descriptiveness

Performance Open Wheel Racing, Inc. v. United States Auto Club Inc., No. 91229632, 2019 U.S.P.Q.2d 208901 (T.T.A.B. June 5, 2019). United States Auto Club (USAC) filed an application for NATIONAL MIDGET SERIES in connection with “entertainment services, namely, arranging and conducting automobile racing events; and sanctioning, supervising, and officiating of automobile races.” Performance opposed USAC’s application on the grounds that the mark was generic or, alternatively, merely descriptive and that USAC had not shown that its mark had acquired distinctiveness.

The Trademark Trial and Appeal Board (TTAB) first applied the two-step inquiry to determine whether NATIONAL MIDGET SERIES was generic. Finding the evidence did not show that each of the terms was generic for the services and that the relevant public used or understood NATIONAL MIDGET SERIES to be generic for the services, Performance did not prove that the mark was generic. On the issue of descriptiveness, however, the TTAB found the mark to be highly descriptive.

Based on the entire evidence, the TTAB determined that USAC failed to prove that NATIONAL MIDGET SERIES had acquired distinctiveness. The TTAB based its decision on several factors, including that (1) use of the mark was not substantially exclusive, (2) the record was ambiguous as to the total number of fans who attended the racing events, and (3) the amount of advertising expenditures was de minimis. Moreover, there was a lack of clarity regarding the number of social media followers and the number of actual subscribers to USAC’s on-demand broadcasting service. Accordingly, USAC failed to prove the mark had acquired distinctiveness.

USAC raised the affirmative defense that Performance could not be damaged by the registration of NATIONAL MIDGET SERIES because it owned a registration for NATIONAL MIDGET CHAMPIONSHIP. This prior registration defense was, however, unavailable as an equitable defense in an IPR due to the overriding public interest in precluding registration of a merely descriptive mark. Thus, the opposition was sustained.

Likelihood of Confusion

Swagway, LLC v. International Trade Commission, 923 F.3d 1349, 2019 U.S.P.Q.2d 167736 (Fed. Cir. 2019). The Federal Circuit upheld the ITC’s finding that Swagway violated Segway’s trademark in its motorized, self-propelled personal mobility devices. Segway filed a complaint with the ITC against Swagway, alleging patent infringement (not at issue in the current appeal) and trademark infringement. The complaint alleged that Swagway’s SWAGWAY X1 and X2, and SWATRON T1 and T3 infringed Segway’s SEGWAY mark. The administrative law judge issued an initial determination that Swagway did infringe Segway’s trademarks. The ITC found that confusion between Swagway and Segway’s products was likely based on the similarity of the marks in appearance and pronunciation, and the strength of the Segway marks. The ITC found that absence of actual confusion was not dispositive.

The Federal Circuit affirmed the ITC’s determination. The Federal Circuit found that concurrent use without evidence of actual confusion does not bar a likelihood of confusion finding but, rather, must be balanced against the other evidence of record. The Federal Circuit also noted that the DuPont factors should not be simply tallied to determine a likelihood of confusion; instead, they should be afforded different weight in different circumstances.

Scandalous/Immoral Marks

Iancu v. Brunetti, 139 S. Ct. 2294, 2019 U.S.P.Q.2d 232043 (2019). The Supreme Court held that the Lanham Act’s ban on “scandalous” or “immoral” trademarks is an unconstitutional ban on free speech. The USPTO denied Brunetti’s application for federal trademark registration of the mark FUCT for clothing under a provision of the Lanham Act that prohibits registration of trademarks that include immoral or scandalous matter. Brunetti challenged the decision, alleging that the prohibition violated the First Amendment. The Supreme Court found impermissible facial viewpoint bias in the Lanham Act allowing registration of marks when their messages accord with—but not if they defy—society’s sense of decency or propriety. Such bias resulted in viewpoint-discriminatory application. The Court rejected the government’s proposal to limit the statute’s construction to apply to only lewd, sexually explicit, or profane marks, finding that the statute said something markedly different. The Supreme Court thus found that the “immoral or scandalous” bar to federal trademark registration violates the First Amendment.

Service Specimens

In re Cardio Group, LLC, No. 86840860, 2019 U.S.P.Q.2d 227232 (T.T.A.B. June 20, 2019). Cardio filed a trademark application for THE CARDIO GROUP and design for “retail store services featuring medical devices.” Cardio submitted specimens consisting of a web page and a sales agreement. The specimens were refused for failing to refer to retail store services. Cardio submitted an additional specimen that included a sales invoice. However, the examining attorney found that none of the proposed specimens indicated that the sales were made at retail stores. The TTAB agreed and found that while the specimens reflected product sales, they failed to indicate any direct association between THE CARDIO GROUP mark and design and any type of retail store service. Moreover, nothing in the proposed specimens indicated that THE CARDIO GROUP mark and design would be perceived by consumers as a source indicator for retail store services. Accordingly, the refusal to register was affirmed.

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John C. Gatz

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

 

Column contributors include the following writers: Copyrights: Jenni Psihoules, Nixon Peabody LLP; and 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, Southwest Research Institute; and Angelo Christopher, Nixon Peabody LLP. Trade Secrets: R. Mark Halligan, FisherBroyles LLP. Trademarks: Elizabeth W. Baio, Nixon Peabody LLP; and Amy L. Sierocki, Blumenfield & Shereff LLP.