chevron-down Created with Sketch Beta.
January 16, 2024 Decisions in Brief

December/January 2024 Decisions in Brief

John C. Gatz

©2024. Published in Landslide, Vol. 16, No. 2, December/January 2024, 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.


Computer Systems Cannot Be Authors and Works Created without Human Involvement Are Not Copyrightable

Thaler v. Perlmutter, No. 22-1564 (BAH), 2023 WL 5333236, 2023 U.S.P.Q.2d 980 (D.D.C. Aug. 18, 2023). Plaintiff Stephen Thaler created a work of visual art using his own artificial intelligence computer system he calls the “Creativity Machine.” Thaler filed a copyright application for the work identifying the Creativity Machine as the author. The U.S. Copyright Office denied registration because the work lacked human authorship. Thaler then sued the Copyright Office and the Register of Copyrights, Shira Perlmutter (collectively, the Office). Both parties moved for summary judgment. The district court denied Thaler’s summary judgment motion and granted the Office’s motion, finding that Thaler’s work is not registrable.

The suit was brought under the Administrative Procedure Act, which allows for the judicial review and setting aside of a final government agency action if the action is found to be arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law. The court opined that the copyright law has never protected works created without the guidance of a human hand and concluded that human authorship is a bedrock requirement of copyright. Because Thaler’s work was created by a machine without human involvement, his work was not entitled to copyright registration.

Embedding Is Still Okay!

Hunley v. Instagram, LLC, 73 F.4th 1060, 2023 U.S.P.Q.2d 833 (9th Cir. 2023). This case involves the well-known social media platform Instagram and Instagram’s allowance of third-party websites to embed Instagram posts and images. Embedding is a function that provides instructions to the browser, and the browser automatically retrieves and shows content from a host website in the format specified by the embedding website. Embedding is distinct from hyperlinking, which gives the user the URL address where external content is located. In other words, embedding shows the actual content on a website versus hyperlinking that provides the URL address to access the content. However, similar to a website using a hyperlink, the embedding website does not store or transmit a copy of the particular content. The courts have generally held that hyperlinking does not constitute copyright infringement. This decision discusses whether embedding also does not constitute infringement.

Plaintiffs Alexis Hunley and Matthew Brauer are photographers who post their photographs to their Instagram profiles. Without permission or license, BuzzFeed News embedded one of Henley’s photos from Instagram in an article published in 2020, and Time embedded one of Brauer’s photos from Instagram in an article published in 2016. The plaintiffs filed a class action suit against Instagram, alleging that Instagram’s embedding tool violates copyright owners’ exclusive rights, specifically the right to publicly display the work, and asserted secondary copyright infringement claims against the social media site. Instagram moved to dismiss the suit, and the district court granted the motion. The Copyright Act defines “display” as to show a copy of a work. Because the embedding websites do not store or communicate a copy of the photo, the district court determined that the websites do not violate the right to display. Since the district court found the embedding websites were not directly liable, it concluded that Instagram could not be secondarily liable. Hunley and Brauer appealed. The Ninth Circuit found no error in the judgment of the district court and affirmed the decision.



► SNIPR Technologies Ltd. v. Rockefeller University, 72 F.4th 1372, 2023 U.S.P.Q.2d 827 (Fed. Cir. 2023). The Federal Circuit reversed the Patent Trial and Appeal Board’s (PTAB’s) application of an interference proceeding between SNIPR, which owned five patents subject to the America Invents Act (AIA), and Rockefeller, which owned a pre-AIA patent relating to methods of selectively killing bacteria using CRISPR gene editing. Rockefeller and the PTAB argued that the phrase “any unexpired patent” in pre-AIA § 135 governing interference proceedings allowed the PTAB to subject the SNIPR AIA patents to an interference proceeding since the Rockefeller patent was governed by pre-AIA laws. The Federal Circuit disagreed, noting that the legislative history and intent of the AIA to remove the lengthy and expensive interference proceedings clearly establish that patents fully subject to the AIA provisions, such as the SNIPR patents, cannot be subjected to interference proceedings.

Attorney Fees

OneSubsea IP UK Ltd. v. FMC Technologies, Inc., 68 F.4th 1285, 2023 U.S.P.Q.2d 618 (Fed. Cir. 2023). The district court did not abuse its discretion in denying FMC’s motion for attorney fees under 35 U.S.C. § 285 after granting summary judgment on noninfringement. The Federal Circuit confirmed that § 285 determinations are reviewed under an abuse of discretion standard rather than de novo review. The case was not objectively baseless, in part, because the district court initially expressed skepticism as to whether summary judgment would be appropriate solely based on the claim construction order.

United Cannabis Corp. v. Pure Hemp Collective Inc., 66 F.4th 1362, 2023 U.S.P.Q.2d 547 (Fed. Cir. 2023). The Federal Circuit affirmed the district court’s denial of attorney fees and sanctions. While the district court erred in not finding the accused infringer as the prevailing party, this error was harmless. Regarding the accused infringer’s claim of inequitable conduct, the Federal Circuit found that the record left genuine disputes regarding issues of material fact as to whether inequitable conduct occurred. The final claim for sanctions was that the patentee’s attorneys had a conflict of interest. The Federal Circuit, however, found that this claim had been waived.

Claim Construction

Bot M8 LLC v. Sony Interactive Entertainment LLC, 66 F.4th 1380, 2023 U.S.P.Q.2d 553 (Fed. Cir. 2023). The Federal Circuit affirmed the PTAB’s decision that all challenged claims were unpatentable. The Federal Circuit found that the PTAB did not err in its claim construction and Bot M8’s obviousness arguments with respect to the independent claim depended on a new claim construction. Therefore, the Federal Circuit upheld the finding of obviousness.

Medytox, Inc. v. Galderma S.A., 71 F.4th 990, 2023 U.S.P.Q.2d 748 (Fed. Cir. 2023). The Federal Circuit affirmed the PTAB’s findings on claim construction, written description, and enablement. Medytox appealed the final written decision in a post-grant review that denied Medytox’s revised motion to amend to substitute claims. The Federal Circuit affirmed the PTAB’s construction of the responder rate limitation as a range, as both parties agreed that there was no substantive difference between a “threshold” or “range” construction.

Claim Construction/Collateral Estoppel

United Therapeutics Corp. v. Liquidia Technologies, Inc., 74 F.4th 1360, 2023 U.S.P.Q.2d 862 (Fed. Cir. 2023). The Federal Circuit affirmed the district court’s infringement and invalidity findings with respect to certain claims of two patents owned by United Therapeutics. One issue raised on appeal was the proper construction of “treating pulmonary hypertension.” Liquidia argued that the plain and ordinary meaning requires that the method be accomplished safely and effectively. The Federal Circuit rejected that argument, explaining that questions of safety and efficacy in patent law have long fallen under the purview of the Food and Drug Administration, not the courts. Liquidia also argued that, under Commil USA, LLC v. Cisco Systems, Inc., 575 U.S. 632 (2015), it could not have the requisite intent to induce infringement where a parallel inter partes review (IPR) found the relevant claims unpatentable. The Federal Circuit rejected that argument as the IPR was pending on appeal and, thus, did not have collateral estoppel effect.


► Amgen Inc. v. Sanofi, 143 S. Ct. 1243, 2023 U.S.P.Q.2d 602 (2023). The U.S. Supreme Court upheld the Federal Circuit’s finding that the patentee failed to enable any person skilled in the art to make and use the claimed invention. The Supreme Court found that the claims were much broader than the 26 antibodies identified in the specification. The Supreme Court reinforced its former decisions, stating, “If a patent claims an entire class of processes, machines, manufactures, or compositions of matter, the patent’s specification must enable a person skilled in the art to make and use the entire class.” The patentee argued that it had enabled the broad claims because the specification provided two methods for determining such antibodies. The Supreme Court disagreed, finding that the two methods were research assignments, setting forth a trial-and-error method of finding whether an antibody met the claim limitations.

Invalidity/Eligible Subject Matter

Trinity Info Media, LLC v. Covalent, Inc., 72 F.4th 1355, 2023 U.S.P.Q.2d 828 (Fed. Cir. 2023). The Federal Circuit affirmed the district court’s granting of a motion to dismiss claims of two patents relating to methods and systems for connecting users based on their answers to polling questions as not being directed to eligible subject matter under 35 U.S.C. § 101. Under step one of the Alice/Mayo framework, the Federal Circuit agreed with the district court that the claims of the patents were directed to the abstract idea of matching users based on questioning. The Federal Circuit similarly rejected Trinity’s arguments with respect to step two that the asserted claims included an inventive concept because the polling system could be used on a mobile device and used “multiple processors, match servers, unique identifications and/or a match aggregator.” The Federal Circuit noted that these conventional components used in an expected manner are not inventive.


Blue Gentian, LLC v. Tristar Products, Inc., 70 F.4th 1351, 2023 U.S.P.Q.2d 687 (Fed. Cir. 2023). The Federal Circuit affirmed the district court’s determination that a nonparty should have been a named coinventor on all asserted patents. The Federal Circuit found that the nonparty inventor contributed significantly to the conception of at least one claim of each asserted patent. The district court drew reasonable inferences from the circumstantial evidence, as the named inventor’s first prototype, physical evidence created within a day of meeting the nonparty, provided a strong indication that inventorship required correction.

HIP, Inc. v. Hormel Foods Corp., 66 F.4th 1346, 2023 U.S.P.Q.2d 521 (Fed. Cir. 2023). The Federal Circuit reversed the district court’s holding that David Howard was a joint inventor. The Federal Circuit found that Howard’s contribution was insignificant as it was only mentioned once in the specification, was only in a single claim as one of numerous possibilities, and was not disclosed in the figures.


Medtronic, Inc. v. Teleflex Innovations S.à.r.l., 68 F.4th 1298, 2023 U.S.P.Q.2d 625 (Fed. Cir. 2023). The PTAB correctly found that the primary reference in several IPRs was not prior art due to the patentee’s earlier conception and reduction to practice of the claimed inventions. The Federal Circuit found that the PTAB correctly framed the intended purpose of the inventions, while Medtronic’s proposed intended purpose was too narrow. The Federal Circuit also found that the patentee’s corroborating evidence was sufficient.

Yita LLC v. MacNeil IP LLC, 69 F.4th 1356 (Fed. Cir. 2023). Yita filed two IPRs challenging two of MacNeil’s patents as being invalid for obviousness. The PTAB found the ’186 patent to not be obvious because although there was motivation to combine and a reasonable chance of success in combining, the secondary considerations were indicative of nonobviousness. The PTAB found some claims of the ’834 patent to be nonobvious. Yita appealed to the Federal Circuit. The Federal Circuit affirmed the PTAB’s decision as to the ’834 patent because the appeal was based on an argument Yita failed to raise until its reply brief. The Federal Circuit reversed the PTAB’s decision as to the ’186 patent and found the claims to be obvious because the secondary considerations were based on a feature that was known in the prior art. The Federal Circuit further clarified that secondary-consideration evidence on a feature that is known in the prior art need not be well-known to be disregarded.


Axonics, Inc. v. Medtronic, Inc., 73 F.4th 950, 2023 U.S.P.Q.2d 795 (Fed. Cir. 2023). The Federal Circuit vacated and remanded the PTAB’s nonobvious findings with respect to certain Medtronic patents. First, the Federal Circuit found that the PTAB had committed legal error by improperly confining the motivation-to-combine inquiry to whether a motivation would exist to make the proposed combination for use in the trigeminal nerve context specifically. The Federal Circuit reasoned that this was error because the Medtronic patents’ claims and shared specification were not limited to the trigeminal nerve context and there was no finding that the issues present in the trigeminal nerve context were equally present in other nerve-stimulation contexts. Second, the Federal Circuit found that the PTAB committed factual error by defining the relevant art as limited to medical leads for sacral-nerve stimulation. Thus, the Federal Circuit vacated and remanded for further proceedings.

In re Couvaras, 70 F.4th 1374, 2023 U.S.P.Q.2d 697 (Fed. Cir. 2023). The Federal Circuit affirmed the PTAB’s affirmation of the examiner’s rejection of the pending claims as obvious in view of the prior art. The Federal Circuit held that the recitation of mechanisms for known compounds to yield a known result could not overcome a prima facie case of obviousness, even if the nature of that mechanism was unexpected. The Federal Circuit also rejected Couvaras’s asserted errors in identifying and weighing additional indicia of nonobviousness, including teach away, failure of others, and the length of time elapsed between the initial discovery of the compounds and the claimed method of coadministering the compounds.

Medtronic, Inc. v. Teleflex Innovations S.à.r.l., 69 F.4th 1341, 2023 U.S.P.Q.2d 660 (Fed. Cir. 2023). The Federal Circuit affirmed the PTAB’s decision finding that the patent was not unpatentable as obvious. The PTAB found that the proposed obviousness combination would render the patented invention inoperable for its intended purpose.

Medtronic, Inc. v. Teleflex Innovations S.à.r.l., 70 F.4th 1331, 2023 U.S.P.Q.2d 659 (Fed. Cir. 2023). The Federal Circuit affirmed the PTAB’s decision finding that the petitioner failed to prove that the patent was obvious. The PTAB found the objective evidence of nonobviousness determinative, despite every element of the patent being individually known in the prior art. The PTAB reasoned that the objective evidence rendered the patent nonobvious because the combination of features as a whole was not previously known. The Federal Circuit determined that the PTAB did not commit legal error in finding a nexus between the objective evidence and the claims.

Parus Holdings, Inc. v. Google LLC, 70 F.4th 1365, 2023 U.S.P.Q.2d 688 (Fed. Cir. 2023). The Federal Circuit affirmed the PTAB’s holding of the claims unpatentable as obvious.

Sanofi-Aventis Deutschland GmbH v. Mylan Pharmaceuticals Inc., 66 F.4th 1373, 2023 U.S.P.Q.2d 552 (Fed. Cir. 2023). The Federal Circuit reversed the PTAB’s decision that all challenged claims were unpatentable. The Federal Circuit found that Mylan failed to argue that a prior art reference was analogous to the patent. Instead, Mylan argued that the prior art reference was analogous to another prior art reference.


In re Float‘N’Grill LLC, 72 F.4th 1347, 2023 U.S.P.Q.2d 815 (Fed. Cir. 2023). The Federal Circuit affirmed the PTAB’s rejection of Float‘N’Grill’s (FNG’s) application for reissue of its original patent as the application violated the original patent requirement of 35 U.S.C. § 251. The Federal Circuit found that the original patent described a single embodiment that included magnets for safely and removably securing a grill to a float. The Federal Circuit also found that the magnets’ feature was essential to the patented invention, as it was the only disclosed component for removably securing the grill to the support and was never described as optional. The reissue application, however, attempted to claim more generically the removable securing of a grill to a float apparatus by omitting the magnets. Consequently, the Federal Circuit found that because the reissue application omitted an essential part of the invention (the magnets), the reissue claims were not directed to the invention disclosed in the original patent and, therefore, violated § 251. The Federal Circuit rejected FNG’s attempt to equate § 251 with the written description requirement of § 112, noting that the two standards are different.

Res Judicata

Inguran, LLC v. ABS Global, Inc., 72 F.4th 1272, 2023 U.S.P.Q.2d 780 (Fed. Cir. 2023). The Federal Circuit reversed the district court’s res judicata finding and interpretation of the scope of its earlier judgment. The Federal Circuit agreed with the plaintiff that an induced infringement claim brought at the time of the earlier trial would have been based on speculation, in part because the parties stipulated to direct infringement and the question of inducement was not before the jury. Therefore, the district court erred in applying res judicata regarding the induced infringement claim. Because claim preclusion did not apply, the Federal Circuit further held that the district court improperly broadened the scope of its prior judgment to address induced infringement activity.

Trade Secrets

Customer Lists

Dental Health Services, Inc. v. Miller, No. 2:23-cv-00383-LK, 2023 U.S. Dist. LEXIS 61099, 2023 U.S.P.Q.2d 422 (W.D. Wash. Apr. 6, 2023). To prevail on a trade secret misappropriation claim under the Defend Trade Secrets Act (DTSA), a plaintiff must demonstrate that (1) it possessed a trade secret, (2) a defendant misappropriated the trade secret, and (3) the misappropriation caused or threatened damage to the plaintiff. A trade secret can only exist if it cannot be readily ascertainable by proper means from another source. Customer lists are not trade secrets when the information is readily ascertainable. The motion for a temporary restraining order and expedited discovery was denied.


Syntel Sterling Best Shores Mauritius Ltd. v. TriZetto Group, Inc., 68 F.4th 792, 2023 U.S.P.Q.2d 636 (2d Cir. 2023). A plaintiff in a DTSA action is not entitled to recover “avoided cost” damages if the trade secret owner’s unjust gain was addressed in computing damages for the plaintiff’s actual loss. The jury verdict for unjust enrichment for $243 million was overturned by the Second Circuit.

Independent Economic Value

Synopsys, Inc. v. Risk Based Security, Inc., 70 F.4th 759, 2023 U.S.P.Q.2d 699 (4th Cir. 2023). The definition of a trade secret requires proof of something that derives independent economic value from its secrecy and that its owner has undertaken reasonable efforts to maintain the secrecy of its asserted trade secrets. Failure to prove the existence of a trade secret dooms a misappropriation claim. The Fourth Circuit affirmed the motion for summary judgment because Risk Based Security failed to put forward admissible evidence showing that 75 alleged trade secrets had independent economic value.


Ahern Rentals, Inc. v., Inc., 59 F.4th 948, 2023 U.S.P.Q.2d 162 (8th Cir. 2023). Allegations pleaded on information and belief are not categorically insufficient to state a claim for relief where the proof supporting the allegation is within the sole possession and control of a defendant or where the belief is based on sufficient factual material that makes the inference of culpability plausible. Ahern’s allegations pleaded on information and belief were sufficient to nudge the trade secret misappropriation claim across the line between possibility and plausibility, resulting in reversal of the dismissal of the trade secret misappropriation claim by the Eighth Circuit.

Coda Development s.r.o. v. Goodyear Tire & Rubber Co., No. 5:15-cv-1572, 2023 WL 2734684, 2023 U.S. Dist. LEXIS 57556 (N.D. Ohio Mar. 31, 2023). The jury returned a verdict for the plaintiff on five misappropriation claims, awarding $2.8 million in compensatory damages and $61.2 million in punitive damages. Goodyear filed a motion for judgment as matter of law, and the district court set aside all five trade secret misappropriation claims for failing to identify the alleged trade secrets with particularity to separate the trade secret from matters of general knowledge in the trade or special knowledge of persons skilled in the trade. Thus, the district court entered judgment for Goodyear.

Sufficiency of Evidence

Foundation Building Materials, LLC v. Conking & Calabrese, Co., No. 23 CVS 9285, 2023 NCBC 46, 2023 WL 4561583 (N.C. Super. Ct. July 7, 2023). Although it is possible for a plaintiff to use circumstantial evidence to support its claim, a wrongdoer’s access to and opportunity to acquire a trade secret—without more—is insufficient. Rather, there must be substantial evidence (1) that the wrongdoer accessed the trade secret without consent, or (2) of misappropriation resulting in an inference of actual acquisition or use of the trade secret.


Extraterritorial Reach of the Lanham Act

► Abitron Austria GmbH v. Hetronic International, Inc., 143 S. Ct. 2522, 2023 U.S.P.Q.2d 760 (2023). Abitron was a licensed distributor for Hetronic’s products. Abitron began to sell Hetronic-branded products, which incorporated parts sourced from third parties, in the United States and abroad. Hetronic sued Abitron for trademark violations under two different provisions of the Lanham Act. The district court awarded Hetronic $96 million in damages related to Abitron’s global use of Hetronic’s marks, as well as a permanent global injunction. The Tenth Circuit narrowed this injunction to cover fewer countries but otherwise affirmed the district court’s decision. The Supreme Court granted certiorari to resolve the circuit split regarding the extraterritorial reach of the Lanham Act.

The Supreme Court applied the presumption against extraterritoriality to the Lanham Act, which involves a two-step framework. At step one, the Supreme Court determined whether the provisions of the Lanham Act are extraterritorial, which depends on whether Congress has affirmatively and unmistakably instructed that the Lanham Act provisions should apply to foreign conduct. The Lanham Act does not make a clear and affirmative indication of extraterritorial application, and the Supreme Court confirmed that the Lanham Act’s reference to “foreign commerce” when defining commerce was insufficient for the provisions to be extraterritorial.

At step two, the Supreme Court applied the presumption against extraterritoriality to the claims that involved both domestic and foreign activity to separate the activity that matters from the activity that does not. The permissible domestic application of the Lanham Act depended on the location of the relevant conduct—infringing use in commerce as defined by the Lanham Act.

The Supreme Court therefore vacated the judgment of the Tenth Circuit and remanded the case for further proceedings consistent with the Supreme Court’s holding that the infringing use of Hetronic’s marks in commerce is the dividing line between foreign and domestic application of the Lanham Act provisions.

Likelihood of Confusion

Spireon, Inc. v. Flex Ltd., 71 F.4th 1355, 2023 U.S.P.Q.2d 737 (Fed. Cir. 2023). Spireon filed a trademark application for the mark FL FLEX for electronic devices for tracking the locations of mobile assets. Flex opposed registration on the ground of a likelihood of confusion with Flex’s previously registered marks for FLEX, FLEX (stylized), and FLEX PULSE for “supply chain management services.”

After finding Flex’s marks to be inherently distinctive, the marks to be highly similar, and the goods and services to be related and complimentary, the Trademark Trial and Appeal Board (TTAB) agreed with the examining attorney that there was a likelihood of confusion between Spireon’s and Flex’s marks and, therefore, sustained Flex’s opposition. Spireon appealed.

The Federal Circuit considered the central issue to be the sixth DuPont factor, “[t]he number and nature of similar marks in use on similar goods.” It noted the two-prong analysis for a mark’s strength under the sixth factor: conceptual strength (a measure of a mark’s distinctiveness) and commercial strength (“marketplace recognition value of the mark”). The court found that the TTAB erred in analyzing conceptual strength by discounting 15 other registered composite marks with other words or letters in addition to “FLEX,” which should have been considered relevant to whether the shared segment (FLEX) has a commonly understood descriptive or suggestive meaning in the field. With respect to commercial strength, the Federal Circuit also found that the TTAB erred in declining to consider composite marks as to which there was evidence of use. The Federal Circuit stated that although Flex, as opposer, failed to show that identical marks for identical goods were not used in the marketplace, on remand, it should be given the opportunity to do so. If Flex failed to establish such nonuse, the commercial strength of the Flex marks must be considered weak as to Spireon’s nonidentical mark.

The Federal Circuit vacated and remanded to the TTAB to reconsider the likelihood of confusion and its ultimate decision to sustain the opposition.

Parody in Trademark Infringement

► Jack Daniel’s Properties, Inc. v. VIP Products LLC, 143 S. Ct. 1578, 2023 U.S.P.Q.2d 677 (2023). VIP is a dog toy manufacturer with a line of toys that resemble alcoholic beverages. Among their products was a dog toy that “parodied” Jack Daniel’s whiskey bottle. The toy replaced the brand name with “Bad Spaniels” and transformed the original label’s wording. Jack Daniel’s requested VIP to discontinue selling the toy, but VIP declined and filed a lawsuit for declaratory judgment to declare that it hadn’t infringed upon or diluted any of Jack Daniel’ s trademarks. In response, Jack Daniel’s filed a countersuit, asserting that the toy infringed upon its protected trademarks under the Lanham Act’s “likelihood of confusion” test. Jack Daniel’s also claimed trademark dilution by tarnishment.

VIP argued that the threshold Rogers test, which carves out an exception to trademark infringement where trademark uses serve artistic or expressive purposes, should be applied and would result in dismissal. The district court agreed with Jack Daniel’s, finding that VIP’s trademark use was not protected by the First Amendment’s Rogers test. VIP appealed to the Ninth Circuit, which reversed the lower court’s ruling, applying the Rogers test and ruling in VIP’s favor. The Ninth Circuit deemed the dog toy’s “humorous message” to be expressive, thereby protecting it under the First Amendment. Jack Daniel’s then filed a petition for a writ of certiorari in the Supreme Court, where the case centered around the First Amendment’s parody exception in trademark infringement.

The Supreme Court overturned the Ninth Circuit’s ruling that the First Amendment protected the dog toy created by VIP and determined that the Rogers test does not apply when an infringing trademark is used to identify the source of a product. The Court’s opinion reframed the Rogers test’s applicability in cases involving parody. Specifically, the Court determined that when a trademark is used as a source identifier for the alleged infringer’s goods, the Rogers test does not apply. Instead, the standard likelihood of confusion test, which evaluates the potential for confusion among consumers, should be employed.

Unlawful Subject Matter

In re National Concessions Group, Inc., Serial Nos. 87168058, 87183434, 2023 U.S.P.Q.2d 527 (T.T.A.B. May 3, 2023). The applicant, National Concessions, self-identified as “the largest Cannabis Company in the US,” sought to register the mark BAKKED and a stylized drop design mark, both for “essential oil dispenser, sold empty.” The examining attorney refused both applications because the identified goods were unlawful drug paraphernalia and, therefore, could not be sold in commerce. The applicant disagreed, stating that the goods were used to dispense essential oil and Colorado state law permits the applicant to sell the identified goods. When the applications were finally rejected, the applicant appealed, and the TTAB affirmed.

First, the TTAB considered whether the identified goods were prohibited drug paraphernalia. Although the product was not unlawful, as identified in the application, the examining attorney argued—and the TTAB agreed—that its primary intended purpose was to dispense premeasured amounts of cannabis-based oil to a vaping or smoking device for “dabbing.” As such, the identified goods comprised prohibited drug paraphernalia. The TTAB distinguished the identified goods from razor blades and postage scales (which the applicant argued were not considered prohibited drug paraphernalia, even though they could be used to cut and weigh illegal drugs) because razor blades and postage scales are primarily intended, respectively, for shaving and weighing letters and packages prior to mailing. The TTAB also found that the exemptions based on Colorado law did not apply because state law exemptions do not support federal registration, which would give the applicant exclusive rights to nationwide use of its mark in association with the identified goods. Finally, the TTAB found that the exemption for traditional tobacco products did not apply because the evidence failed to show that essential oil dispensers were “traditionally” used with tobacco-based oils or substances.

Thus, the TTAB affirmed the refusal to register both applications under sections 1 and 45 of the Trademark Act.

The material in all ABA publications is copyrighted and may be reprinted by permission only. Request reprint permission here.

John C. Gatz

Nixon Peabody LLP

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

Column contributors include the following writers: Copyrights: Jenni Psihoules, Nixon Peabody LLP; and Mark R. Anderson, Actuate Law LLC. Patents: Cynthia K. Barnett, Johnson & Johnson; R. Trevor Carter and Andrew M. McCoy, Faegre Drinker Biddle & Reath LLP; Robert W. (Bill) Mason, Southwest Research Institute; and Angelo Christopher, Allison Strong, and Peter Krusiewicz, Nixon Peabody LLP. Trade Secrets: R. Mark Halligan, FisherBroyles LLP. Trademarks: Elizabeth W. Baio, Allison Strong, and Eliana Torres, Nixon Peabody LLP; and Amy L. Sierocki, Blumenfield & Shereff LLP.