December/January 2022 Decisions in Brief

The Court considered the purpose and character of Google’s use and found that even though the use was commercial in nature, this was not dispositive. The Court also noted that Google copied no more than the necessary portions of API to create its platform. The Court determined that the portion copied amounted to only 0.4% of the total code. The Court also found that Google’s use did not harm the actual or potential markets for the Java SE program in light of the differences between the markets for computers and mobile devices.

Filing a Suit without a Registration Constitutes Bad Faith

Liebowitz v. Bandshell Artist Management, 2021 U.S.P.Q.2d 790 (2d Cir. 2021). The Second Circuit upheld sanctions applied against a copyright attorney who violated multiple court orders and acted in bad faith. The district court determined that Liebowitz brought and maintained a copyright infringement action in bad faith; that he violated multiple court orders; and that, when asked about his conduct, Liebowitz lied about it to the court. The district court imposed sanctions that Liebowitz appealed. The Second Circuit concluded that the district court acted within the scope of its discretion and, given Leibowitz’s conduct, the sanctions were reasonable.

Liebowitz filed a complaint asserting copyright infringement by Bandshell of a photograph that was not registered with the U.S. Copyright Office. The district court found that Liebowitz’s actions in bringing and maintaining the copyright claim were unsupported because the photograph was not registered at the time of filing the complaint, and the Copyright Act specifically requires a copyright registration or preregistration to bring a claim. Liebowitz conceded that he took no subsequent action to ensure that his representation that the photograph was registered was accurate. He also admitted that even after being put on notice, he failed to timely do anything about it. The district court further found that Liebowitz and his firm’s willful disregard of the registration requirement was part of a strategy to use litigation to garner settlements even in frivolous or unmeritorious suits.

Patents

Assignor Estoppel

➤ Minerva Surgical, Inc. v. Hologic, Inc., 141 S. Ct. 2298, 2021 U.S.P.Q.2d 701 (2021). The Supreme Court vacated and remanded the decision of the Federal Circuit, which had affirmed the district court’s decision that assignor estoppel barred Minerva’s invalidity defense. The Supreme Court held that assignor estoppel is well grounded in centuries-old fairness principles, but assignor estoppel applies only when the assignor’s claim of invalidity contradicts explicit or implicit representations made in assigning the patent. Because the inventor only assigned rights in the patent application, the Supreme Court remanded to the Federal Circuit to consider whether new claims in the continuation application were materially broader than those originally assigned.

Claim Construction

Bio-Rad Laboratories, Inc. v. International Trade Commission, 998 F.3d 1320, 2021 U.S.P.Q.2d 585 (Fed. Cir. 2021). The Federal Circuit affirmed the International Trade Commission’s (ITC’s) decision that certain accused products infringed and other accused products did not infringe. The Federal Circuit upheld the ITC’s claim construction. The Federal Circuit also found indirect infringement as the administrative law judge found certain evidence to be lacking in credibility.

SpeedTrack, Inc. v. Amazon.com, Inc., 998 F.3d 1373, 2021 U.S.P.Q.2d 602 (Fed. Cir. 2021). The Federal Circuit affirmed the district court’s determination of noninfringement. After the parties stipulated to noninfringement based on the district court’s claim construction, the Federal Circuit determined that the district court properly found prosecution disclaimer based on the applicant’s statements during prosecution, which limited the scope of the claims and supported the claim construction.

Claim Construction/Administrative Procedure Act Violation

Qualcomm Inc. v. Intel Corp., 6 F.4th 1256, 2021 U.S.P.Q.2d 795 (Fed. Cir. 2021). The Federal Circuit vacated and remanded decisions by the Patent Trial and Appeal Board (PTAB) that claims of Qualcomm’s patent were invalid as obvious over prior art in six inter partes reviews (IPRs) filed by Intel. Qualcomm argued that it was not afforded notice of, or an adequate opportunity to respond to, the PTAB’s claim constructions. According to the Federal Circuit, the PTAB failed to provide Qualcomm adequate notice of and opportunity to respond to its sua sponte claim construction in a final written decision. The Federal Circuit found no error in one of the PTAB’s constructions.

Enablement/Written Description

Pacific Biosciences of California, Inc. v. Oxford Nanopore Technologies, Inc., 996 F.3d 1342, 2021 U.S.P.Q.2d 519 (Fed. Cir. 2021). The Federal Circuit affirmed the district court’s judgment that the asserted patents were invalid for lack of enablement, holding that the jury’s task was not to view one piece of evidence in isolation, but to consider all the evidence. The patentee focused primarily on the fact that the accused infringer’s expert testified on cross-examination that a relevant artisan, having a particular piece of prior art (Akeson), could perform the method of the claimed invention. In affirming the district court’s judgment of invalidity for lack of enablement, the Federal Circuit held that the jury could reasonably have understood the accused infringer’s expert testimony to mean that a relevant artisan could perform the claimed method successfully on the particular subset of nucleic acids addressed in the Akeson grant but could not make and use the full scope of the invention.

Evidence—Admissibility

Wi-LAN Inc. v. Sharp Electronics Corp., 992 F.3d 1366, 2021 U.S.P.Q.2d 399 (Fed. Cir. 2021). The Federal Circuit affirmed the summary judgment decision of noninfringement, holding that the district court did not abuse its discretion in finding that the source code printout that the patentee sought to use as evidence of direct infringement was inadmissible. The patentee failed to establish that the source code printout constituted an admissible business record. The Federal Circuit found that the declarations that the patentee presented from employees of the third parties (testifying as to the source code) were inadmissible hearsay because the patentee did not establish that the declarants would be available to testify at trial. The Federal Circuit also found that the declarations obtained from litigation against third parties were not business records because the declarations were created and prepared for the purposes of litigation.

Fraud

Cap Export, LLC v. Zinus, Inc., 996 F.3d 1332, 2021 U.S.P.Q.2d 495 (Fed. Cir. 2021). The Federal Circuit affirmed the district court’s decision to set aside a stipulated final judgment in favor of the patentee and permanent injunction, because the accused infringer proved by clear and convincing evidence that the testimony provided by the patentee’s then president (who was also the testifying technical expert) included material affirmative misrepresentations as to the prior art.

Induced Infringement

GlaxoSmithKline LLC v. Teva Pharmaceuticals USA, Inc., No. 2018-1976, 2021 WL 3412496, 2021 U.S.P.Q.2d 832 (Fed. Cir. Aug. 5, 2021). The Federal Circuit vacated the district court’s grant of judgment as a matter of law and reinstated the jury’s induced infringement verdict and damages award. The Federal Circuit found substantial evidence supported the jury’s finding that Teva’s marketing materials encouraged doctors to prescribe their generic drug in a manner that would cause infringement of the method claims of the patent in suit.

Interlocutory Appeal

Mondis Technology Ltd. v. LG Electronics Inc., 6 F.4th 1379, 2021 U.S.P.Q.2d 821 (Fed. Cir. 2021). The Federal Circuit dismissed as untimely under 28 U.S.C. § 2107(a) an interlocutory appeal from LG. After an adverse jury verdict, LG filed several posttrial motions regarding noninfringement, invalidity, willfulness, and damages. The district court denied all of LG’s motions except damages, after ordering further briefing, and granted LG’s motion for a new trial on damages. LG filed its notice of interlocutory appeal more than seven months after the district court’s order. The Federal Circuit dismissed the appeal as untimely pursuant to 28 U.S.C. § 2107(a).

Obviousness

Becton, Dickinson & Co. v. Baxter Corp. Englewood, 998 F.3d 1337, 2021 U.S.P.Q.2d 586 (Fed. Cir. 2021). The Federal Circuit found the claims invalid, reversing a decision by the PTAB. The Federal Circuit found that the prior art taught that a verification step was required in certain circumstances and therefore was disclosed.

Chemours Co. FC, LLC v. Daikin Industries, Ltd., 4 F.4th 1370, 2021 U.S.P.Q.2d 781 (Fed. Cir. 2021). The Federal Circuit reversed the PTAB’s obviousness finding. The Federal Circuit held that the PTAB’s findings on motivation to combine prior art references lacked sufficient evidentiary support and, therefore, the PTAB’s decision was not supported by substantial evidence. In particular, the Federal Circuit found that although the PTAB was permitted to rely on additional prior art to inform the overall state of the art, the PTAB erred when it failed to acknowledge that the primary reference on which the PTAB relied expressly taught away from the proposed modification. The Federal Circuit also held that the PTAB erred by concluding that market share data was required to establish commercial success.

Raytheon Technologies Corp. v. General Electric Co., 993 F.3d 1374, 2021 U.S.P.Q.2d 434 (Fed. Cir. 2021). The Federal Circuit reversed the obviousness finding of the PTAB in an IPR decision. The claimed invention is directed to a geared gas turbine engine with a certain power density range that the patent describes as much higher than in the prior art. The prior art reference discloses the claimed power density range of a futuristic turbine engine that was based on the use of nonexistent composite materials. The Federal Circuit held that in the absence of other supporting evidence, a stand-alone 35 U.S.C. § 103 reference must enable the portions of its disclosure being relied upon. Here, the petitioner never put forth any evidence suggesting a skilled artisan could have made a turbine engine with the claimed power density.

Uniloc 2017 LLC v. Apple Inc., 996 F.3d 1368, 2021 U.S.P.Q.2d 526 (Fed. Cir. 2021). The Federal Circuit affirmed the PTAB’s ruling that certain claims were invalid for obviousness.

Patent Assignment

Omni MedSci, Inc. v. Apple Inc., 7 F.4th 1148, 2021 U.S.P.Q.2d 817 (Fed. Cir. 2021). The Federal Circuit affirmed the district court’s decision denying Apple’s motion to dismiss Omni’s complaint alleging infringement of two patents related to health sensors. Apple argued that Omni did not own the patents because the inventor who sold them automatically assigned them and other future inventions to the University of Michigan, his former employer, via the university’s bylaws. But, the Federal Circuit agreed with the district court that the university’s bylaws—which used the phrase “shall be the property of”—did not effectuate a present automatic assignment of the inventor’s patent rights, finding that the bylaws, at most, included a statement of a future intention to assign the patents at issue.

Patent Trial and Appeal Board

➤ United States v. Arthrex, Inc., 141 S. Ct. 1970, 2021 U.S.P.Q.2d 662 (2021). The Supreme Court vacated the Federal Circuit’s holding that administrative patent judges (APJs) were principal officers whose appointments were unconstitutional because neither the Senate nor the U.S. Patent and Trademark Office (USPTO) director could review their decisions or remove them at will. To remedy that situation, the Federal Circuit invalidated the APJs’ tenure protections, making them removable at will by the secretary of commerce. The Supreme Court held that the unreviewable authority wielded by APJs during IPR was incompatible with their appointment by the secretary to an inferior office. The Supreme Court concluded that the USPTO director must have the discretion and power to review and reverse final IPR decisions by the PTAB and remanded the case to the Federal Circuit.

Personal Jurisdiction

Trimble Inc. v. PerDiemCo LLC, 997 F.3d 1147, 2021 U.S.P.Q.2d 525 (Fed. Cir. 2021). The Federal Circuit reversed and remanded the district court’s dismissal of a declaratory judgment noninfringement action for lack of personal jurisdiction. The Federal Circuit found that the minimum contacts or purposeful availment test to satisfy personal jurisdiction was met. The defendant exchanged 22 communications with the plaintiff over a period of three months. The Federal Circuit found that the extensive threats of a lawsuit and the numerous communications adding claims and patents to the suit and the identification of lawyers all over a short time period constituted minimal contacts.

Pleading Requirements

Bot M8 LLC v. Sony Corp. of America, 4 F.4th 1342, 2021 U.S.P.Q.2d 750 (Fed. Cir. 2021). The Federal Circuit affirmed in part, reversed in part, and remanded the district court’s holdings. The Federal Circuit concluded that for two asserted patents the district court did not abuse its discretion in directing Bot M8 to file a first amended complaint. Nor did the Federal Circuit find error in the district court’s dismissal of Bot M8’s claims to two patents for failure to state a plausible claim of infringement. But, the district court erred in finding infringement allegations insufficient for two other patents. The Federal Circuit agreed that the district court acted within its discretion in denying Bot M8 leave to file a second amended complaint and in denying reconsideration of that decision and agreed that one claim in a fifth asserted patent was invalid under 35 U.S.C. § 101.

Prosecution Laches

Hyatt v. Hirshfeld, 998 F.3d 1347, 2021 U.S.P.Q.2d 591 (Fed. Cir. 2021). The Federal Circuit vacated and remanded the USPTO’s defense that an inventor unreasonably delayed for decades his applications on computer technology. The Federal Circuit held that the USPTO may assert a prosecution laches defense even if it did not previously issue rejections based on prosecution laches. Next, the Federal Circuit held that the district court failed to properly consider the totality of the circumstances. The district court ignored substantial evidence that weighed in favor of the USPTO, such as the applicant rewriting or shifting claims midway through prosecution, delaying prosecution of applications, and filing claims that he had already lost in interference claims. The delay by the applicant was unreasonable—he filed 381 applications and each application had about 300 claims, and during prosecution he filed amendments adding hundreds of claims.

Standing

➤ Apple Inc. v. Qualcomm Inc., 992 F.3d 1378, 2021 U.S.P.Q.2d 403 (Fed. Cir. 2021). The Federal Circuit dismissed, for lack of standing, the petitioner’s IPR appeal challenging an IPR’s final written decision of the PTAB. Before filing the appeal, the parties had entered into a global settlement and executed a six-year license agreement, which included a license to the patents at issue. The Federal Circuit rejected the petitioner’s argument that because it has ongoing payment obligations under the license agreement it had standing, because the petitioner failed to allege that the validity of the patents would affect its contract rights (i.e., its ongoing royalty obligations). The Federal Circuit also ruled that the possibility that the patentee would sue the petitioner for infringement after the license expires was too speculative to confer standing. The Federal Circuit also ruled that because the petitioner failed to show it would likely be engaging in activities that could give rise to a potential suit after the expiration of the license agreement, the harm the petitioner might face from IPR estoppel was insufficient to prove standing.

Mojave Desert Holdings, LLC v. Crocs, Inc., 995 F.3d 969, 2021 U.S.P.Q.2d 454 (Fed. Cir. 2021). The Federal Circuit granted the motion to substitute Mojave as U.S.A. Dawgs’ successor-in-interest on appeal. During an IPR proceeding against Crocs, the petitioner (U.S.A. Dawgs) went into bankruptcy and conveyed its assets to a second party (Dawgs Holdings), who then conveyed all of those assets to Mojave. The Federal Circuit found that the PTAB erred in not substituting Mojave as the third-party requester while the IPR was pending before the PTAB. The Federal Circuit held that the requester’s right (including its right to appeal) may be transferred at least when it occurs as part of the transfer of the requester’s entire business or assets.

Subject Matter Eligibility

Free Stream Media Corp. v. Alphonso Inc., 996 F.3d 1355, 2021 U.S.P.Q.2d 521 (Fed. Cir. 2021). The Federal Circuit reversed in part and affirmed in part the district court’s motion to dismiss and affirmed the district court’s order as lacking subject matter ineligibility. The Federal Circuit found that the claims were merely improvements of the abstract idea of providing targeted advertising to a mobile device user. The Federal Circuit also found that the claims included generic computing components arranged in a conventional manner that did not transform the claim into patent-eligible subject matter.

New Vision Gaming & Development, Inc. v. SG Gaming, Inc., 996 F.3d 1378, 2021 U.S.P.Q.2d 531 (Fed. Cir. 2021). The Federal Circuit vacated and remanded the PTAB’s decision that the claims were patent ineligible. The patentee asked the Federal Circuit to reverse the PTAB’s decision in light of a newly issued case. The Federal Circuit found that since the case issued after the decision, the patentee had not waived its challenge by raising it for the first time in its opening brief.

Yu v. Apple Inc., 1 F.4th 1040, 2021 U.S.P.Q.2d 632 (Fed. Cir. 2021). The Federal Circuit affirmed the district court’s grant of the defendants’ motion to dismiss on the basis that the asserted claims were invalid under 35 U.S.C. § 101. The Federal Circuit found that the patent was directed to an abstract idea, and that nothing supported the transformation of the abstract idea into a patent-eligible invention.

Venue

Andra Group, LP v. Victoria’s Secret Stores, LLC, 6 F.4th 1283, 2021 U.S.P.Q.2d 820 (Fed. Cir. 2021). The Federal Circuit affirmed the district court’s determination that venue was not proper for L Brands Inc., Victoria’s Secret Stores Brand Management, and Victoria’s Secret Direct Brand Management LLC (nonstore defendants). The parties agreed that the only physical presence in the district for the related defendants were the few Victoria’s Secret store locations. The nonstore defendants did not exercise the degree of control over the store’s employees required to find an agency relationship, or a regular physical presence of its employee or other agent.

In re Samsung Electronics Co., Ltd., 2 F.4th 1371, 2021 U.S.P.Q.2d 725 (Fed. Cir. 2021). The Federal Circuit vacated the district court’s orders denying transfer and directed the district court to grant Samsung’s writs of mandamus to transfer the patent infringement case to a federal district court in California. The Federal Circuit found that the presence of the plaintiff in Texas was plainly recent, ephemeral, and artificial, which is the type of maneuver in anticipation of litigation that has been routinely rejected.

Trade Secrets

Arkeyo, LLC v. Saggezza, Inc., No. 19-cv-08112, 2021 WL 2254959, 2021 U.S. Dist. LEXIS 104380, 2021 U.S.P.Q.2d 611 (N.D. Ill. June 3, 2021). The plaintiff creates software that interacts with coin-counting machines in bank and retail locations. The defendant moved to dismiss for failure to state a claim because a reverse engineered trade secret is not misappropriated. The term “improper means” does not include reverse engineering, independent derivation, or other lawful means of acquisition. The issue at the dismissal stage is whether the plaintiff has pleaded misappropriation—not the affirmative defense of reverse engineering. Thus, the motion to dismiss was denied.

CZS Holdings LLC v. Kolbe, No. 20 C 6886, 2021 WL 1837385, 2021 U.S. Dist. LEXIS 88117 (N.D. Ill. May 7, 2021). The plaintiff alleged trade secret misappropriation upon information and belief. The district court rejected the argument that such pleading is inherently speculative and such allegations are permissible where the pleadings concern matters within the defendant’s knowledge. Here, without access to the defendant’s records, the plaintiff had no way of knowing what information the defendant disclosed or used. In such circumstances, courts allow trade secret misappropriation claims to survive on a theory of inevitable disclosure, which allows a plaintiff to prove a claim of trade secret misappropriation by demonstrating that a defendant’s new employment will inevitably lead him to rely on the plaintiff’s trade secrets. At the motion to dismiss stage, the inquiry is whether, accepting all the well-pleaded facts as true, the plaintiff’s alleged injury, by its nature, is unlikely to be discovered within the prescribed limitations period despite due diligence. Applying this standard, the plaintiff’s trade secret (client list) was unlikely to have been discovered within the limitations period even had the plaintiff exercised due diligence.

NW Monitoring LLC v. Hollander, No. C20-5572 RSM, 2021 WL 1424690, 2021 U.S. Dist. LEXIS 73193, 2021 U.S.P.Q.2d 432 (W.D. Wash. Apr. 15, 2021). The plaintiff provides intraoperative neuromonitoring and intraoperative oversight services throughout the U.S. The defendants were former employees who set up a new competitive business. The defendants moved to dismiss the plaintiff’s trade secret misappropriation claim for failure to adequately identify the trade secrets. Whether specific information is a trade secret is a factual question. At the pleading stage, the court faced a question of law whether hospital credentialing information, physician license renewal, electronic medical records, and customer pricing information can ever constitute trade secrets. The plaintiff also adequately alleged misappropriation. At this stage in the proceedings, the district court does not expect the plaintiff to know all the relevant facts surrounding the defendants’ misappropriation. Thus, the motion to dismiss was denied.

Providence Title Co. v. Truly Title, Inc., No. 4:21-CV-147-SDJ, 2021 WL 2701238, 2021 U.S. Dist. LEXIS 123502, 2021 U.S.P.Q.2d 721 (E.D. Tex. July 1, 2021). Providence and Truly Title are direct competitors in the Texas title insurance market. The issue before the court was the Defend Trade Secrets Act (DTSA) interstate commerce requirement for federal subject matter jurisdiction. The district court held that contrary to the defendants’ arguments, the DTSA does not require that the trade secrets themselves be used in interstate commerce. Rather, the DTSA requires that the trade secrets relate to a product or service used in interstate commerce. It is the underlying product or service—not the trade secret—that must be used or intended for use in interstate commerce. Because Providence alleged that it provides title services out of state and works with out-of-state underwriters on Texas title insurance policies, these out-of-state services were sufficient for DTSA subject matter jurisdiction.

Trademarks

Cancellation/Functionality

McGowen Precision Barrels, LLC v. Proof Research, Inc., 2021 U.S.P.Q.2d 559 (T.T.A.B. 2021). Proof Research owned a trademark registration for a trade dress configuration in connection with guns, rifles, and component parts. The registration described the trade dress as follows: “The mark consists of trade dress applied to gun barrels formed with a mottled pattern of irregularly-sized, rippled patches, resembling a quilt having striated patches of varying shapes and reflectivity depending on the ambient light source and viewing angle.” McGowen, which manufactures steel rifle barrels, barrel blanks, and liners, filed a petition to cancel the Proof Research registration, claiming that the trademark was functional under section 2(e)(5) of the Trademark Act and on other grounds. Proof Research claimed that its trade dress was its signature and that rifles with its carbon fiber rifle barrels were recognized as Proof Research products due to the unique mottled pattern on the rifle barrel.

The Trademark Trial and Appeal Board (TTAB) determined that carbon fiber composites are used to provide strength or stiffness for firearms. Additionally, the use of carbon composite barrels allows tailoring of a rifle barrel’s characteristics and provides the benefit of reducing the weight of firearms. While it was not disputed that carbon fiber composite barrels provided functional benefits to rifles, the question before the TTAB was whether the particular appearance described in the registration was functional as a natural by-product of the manufacturing process.

The TTAB reviewed the Morton-Norwich categories of evidence to determine whether the particular design was functional, starting with a utility patent owned by Proof Research. On reviewing the patent’s disclosure and inventor’s testimony, the TTAB determined that the trade dress was the result of a manufacturing process obtained from practicing the best mode of the invention. Thus, the appearance of the barrel was functional as the carbon fiber composite was essential to the use or purpose and affected the quality of the barrel design. Accordingly, the petition to cancel was granted.

Cancellation/Use in Commerce

NT-MDT LLC v. Kozodaeva, 2021 U.S.P.Q.2d 433 (T.T.A.B. 2021). Irina Kozodaeva owned a registration for the mark NT-MDT and design in connection with goods in class 9, including various apparatus and instruments. NT-MDT LLC filed a cancellation of the registration on the basis that Kozodaeva had not used the mark in interstate commerce, did not own the mark, and did not have a bona fide intent to use the mark when the application was filed. NT-MDT also alleged likelihood of confusion and fraud.

The TTAB first considered the issue of whether Kozodaeva had used the mark in commerce. The record indicated that Kozodaeva had not shipped or sold anything to the U.S. or used the mark in interstate commerce. However, Kozodaeva contended that she could rely on several trademark assignments that entitled her to NT-MDT’s date of first use, including an ownership transfer agreement, a bankruptcy purchase agreement, and a trademark purchase agreement. The TTAB determined that the agreements did not establish clear and convincing evidence that Kozodaeva obtained trademark rights to the NT-MDT trademark or that she could rely on the agreements to claim a first use date. Accordingly, the TTAB sustained NT-MDT’s claim of nonuse in commerce and granted the petition to cancel. The TTAB did not reach the other claims for cancellation.

Fraud

Coca-Cola Co. v. Meenaxi Enterprise, Inc., 2021 U.S.P.Q.2d 709 (T.T.A.B. 2021). Petitioner Coca-Cola sought to cancel registrations for THUMS UP and LIMCA for soft-drink-related goods owned by Meenaxi because Meenaxi had misrepresented the source of the goods. Specifically, Coca-Cola contended that Meenaxi registered its internationally famous THUMS UP and LIMCA marks in a blatant attempt to deceive consumers into believing that its soft drink products were the U.S. versions of the THUMS UP and LIMCA products sold by Coca-Cola in India. Meenaxi denied the allegations and asserted laches as an affirmative defense, contending that Coca-Cola did not file the cancellation until three and one-half years after Meenaxi’s marks had been registered. The TTAB found that Meenaxi did not meet its burden of proof to establish facts constituting laches.

The TTAB also found that Coca-Cola met the low threshold of proof of entitlement to petition to cancel Meenaxi’s marks, since it established that it owned registrations in India and multiple other countries for the same marks for the same types of goods as were at issue. In addition, Coca-Cola showed that it commanded a market share for such goods in India and that the marks were well known in India and other countries. Coca-Cola presented evidence that its products were sold by third-party importers in the U.S.

The TTAB also found that Meenaxi’s registrations violated section 14(3) of the Trademark Act because they were being used to misrepresent the source of the goods on which the marks were used. The TTAB held that Meenaxi was well aware of Coca-Cola’s THUMS UP and LIMCA products in India when it adopted the marks. Thus, the TTAB found that the record as a whole demonstrated that Meenaxi’s adoption of the marks was a blatant misuse of marks in a manner calculated to trade on the goodwill and reputation of others. Accordingly, the petitions for cancellation were granted to both registrations on the ground of misrepresentation of source.

Licensing

Authentic Apparel Group, LLC v. United States, 989 F.3d 1008, 2021 U.S.P.Q.2d 259 (Fed. Cir. 2021). The Federal Circuit affirmed the U.S. Court of Federal Claims’ grant of summary judgment in favor of the government in Authentic’s and Reuben’s action against the Department of the Army for breach of contract in connection with a trademark licensing agreement.

Statements of Use

In re MN Apparel LLC, 2021 U.S.P.Q.2d 535 (T.T.A.B. 2021). MN filed an application to register the mark MOSTLY MN ONE WITH EVERYTHING in standard characters on the Principal Register in class 25. The examining attorney refused registration on the basis that the specimen did not show proper use in commerce, failed to display a “substantially exact representation of the mark,” and was mere advertising for the applied-for goods. MN appealed.

The specimen submitted with MN’s application consisted of five internet web page excerpts. The TTAB rejected the examining attorney’s finding that MN sought to register only part of the mark that appeared on the specimens and was, therefore, not an exact representation of the mark in the application. Rather, the TTAB found that MN’s presentation of its trade name “MN Apparel” and several permutations of the mark, separated by either a hyphen or a sentence on the specimens, created separate commercial impressions. The TTAB noted that the standard for specimens is not that they exactly match, but that they be a substantially exact representation of the applied-for mark. The TTAB found that the use of a comma or the word “AND” between “MN” and “ONE” satisfied this standard because it did not change the mark’s meaning or create a different commercial impression. However, the display of the mark as MOSTLY MINNESOTA, ONE WITH EVERYTHING was not a substantially exact representation because it was significantly different, both aurally and visually. Finally, the TTAB agreed with the examiner that the submitted specimens neither described the goods in any detail nor provided a means to order the goods. The single specimen that would arguably have functioned as a proper point of sale did not include any of the acceptable permutations of the mark.

The TTAB thus reversed the examining attorney’s refusal based on the asserted failure of the specimens to show a substantially exact representation of the mark and affirmed the refusal to register the mark on the ground that the specimens failed to show the applied-for mark in use in commerce as a display associated with the goods.