• News
Creepy IP and Lessons Learned

During the month of October, the US Patent and Trademark Office used the hashtag, #CreepyIP, to tweet about patents and trademarks related to Halloween or other scary subjects.  This was a fun exercise by the USPTO and Shlesinger, Arkwright & Garvey enjoyed looking at the various types of intellectual property displayed on Twitter.  We re-tweeted several of the postings by the USPTO.  In addition to the enjoyment at seeing the various types of "Creepy IP", the tweets reminded us of the importance of protecting intellectual property.  The "Creepy IP" included home protection devices, decorations, masks, a tombstone, a life preserving bubble and many other patented products.  In addition, several trademarks were tweeted.  This is a reminder to everyone that many different types of inventions can be patented.  With respect to trademarks, aside from standard protection of a brand for the primary product, there are other techniques and requirements for protecting a trademark (for example, the title of an individual work can not be registered, but the title of a series of works can).  Other Intellectual Property Offices, including the European Intellectual property Office and the Canadian IP Office, had some fun with #CreepyIP during October, too.  You can see some of these examples on our Twitter page, @SAGLLP .

College Rivalries Never End

In an opposition to registration of the mark, HOKIE, the opposer, HOOS, LLC, a one person LLC in Virginia that stands for Hokie Objective Onomastics Society, LLC, founded by a graduate of the University of Virginia, failed to prove that the term HOKIE is generic for education and entertainment services, or that Applicant, Virginia Polytechnic Institute and State University (VA Tech), improperly used the ® symbol of registration or abandoned the mark.  Hokie Objective Onomastics Society, LLC v.  Virginia Polytechnic Institute and State University.  The TTAB resolved several evidentiary issues before reaching its decision.  In the decision, the TTAB ruled that the opposer failed to prove by a preponderance of the evidence that the term "hokie" is recognized by the general public as referring to generic education and entertainment services.  Instead, the evidence demonstrated that this term refers to education and entertainment services offered by VA Tech.  With respect to abandonment, the opposer failed to properly introduce evidence of naked licensing of the mark, and therefor failed to prove abandonment.  Finally, the opposer failed to prove that VA Tech improperly used the ® symbol of registration with the intent to deceive the purchasing public or others in the industry that the mark is registered.

People familiar with the University of Virginia know that Hoos is a common nickname for the athletic teams and supporters of the UVA Cavaliers, one of VA Tech's biggest rivals.  The name of the opposer, HOOS, LLC, and the alma mater of the one member of the opposer, makes this case a little more interesting.  The TTAB may not agree, as they made the decision non-precedential.

What Is a Descriptive Trademark: PERSON

The TTAB recently ruled that the mark, PERSON, is not descriptive for a broad range of wearable electronic devices.  In re Caleb Suresh MotupalliA descriptive trademark is a mark that immediately conveys knowledge of a quality, feature, function characteristic or purpose of the goods or services for which it is used.  The Examining Attorney argued that a "person" is the user of the wearable electronic devices and therefor the mark was descriptive of a feature of the goods, namely, the type of being that would use the goods.  The term "person" was distinguished from animals, who may also wear such goods.  The TTAB disagreed.  The TTAB ruled that the term "person" was so broad, it would describe the consumer of all goods and services.  Further, the TTAB ruled that the Examining Attorney did not present evidence that demonstrates that the term "person" describes a feature of these goods with a degree of particularity.  Thus, the mark was approved for registration.

Does this mean PERSON is not descriptive for any goods or services?

Would LEGS be descriptive of pants?

When is A Win on Appeal not a Win?

On September 6, 2017, The Trademark Trial and Appeal Board (the Board) issued a decision granting an opposition to registration of the mark, PRETZEL CRISPS, on the Principal Register, and cancelling a Supplemental Registration of the mark PRETZEL CRISPS.  The decision can be found here.  The Board had originally granted the opposition and cancelled the registration in a decision issued on February 28, 2014, Frito-Lay N. Am., Inc. v. Princeton Vanguard, LLC, 109 USPQ2d 1949 (TTAB 2014).  On appeal, the Federal Circuit vacated the decision and remanded the case to the Board after finding that the Board had used an incorrect standard.  Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 114 USPQ2d 1827 (Fed. Cir. 2015).  So Princeton Vanguard won, right?  No.

On remand, the Board asked the parties to re-brief the case on the original record.  The Board then came to the same conclusion:  the mark, PRETZEL CRISPS, as used on pretzel crackers is generic.  Even on remand, Princeton Vanguard lost both registrations.

Shlesinger, Arkwright & Garvey, LLP in Top 50 for Patents

Shlesinger, Arkwright & Garvey, LLP is  ranked #45 in the number of Utility patents obtained for clients in 2016.  In a recent ranking of law firms, SAG LLP was ranked #45 in number of Utility patents obtained for our clients in the United States.

Venue in Patent Litigation
The Federal Circuit has clarified the rules concerning venue in patent litigation.  In In re Cray Inc., the Federal Circuit ruled that an employee who telecommutes from a particular judicial district does not create a "regular and established place of business" in that district.  If the defendant does not have a "regular and established place of business" in the judicial district, venue is not proper.  In reaching the decision, the Federal Circuit considered factors such as whether the employee may move without the consent of the employer; whether the defendant owned, leased or exercised any control over the home; whether living in the judicial district was a requirement of employment; and other factors.  The ultimate decision rests on the idea that the "regular and established place of business" must be of the defendant, not the defendant's employees.  This decision will make it harder for plaintiffs to file suit in friendly venues.

Intellectual Property Video
The European Intellectual Property Office has created a Youtube video with a little information about how intellectual property affects you.  Although it is specific to EU Intellectual Property rights, the same basic principles apply in the US.  That flying Segway could really help with the commute here in the Washington, DC area.

Follow us on Twitter
Our Twitter handle is @SAGLLP. Follow us for news about Intellectual Property and our firm.

What is Use of a Service?
Under U.S. trademark laws, use of a mark in connection with a service means the mark is used in the advertising or selling of services and the services are rendered in interstate commerce.  It is virtually impossible to place a mark on a service, so the specimen of use required for registration may be advertising or promotional materials, unlike the requirement for goods.  However, the services must be rendered, meaning services are being performed, not just advertised and offered.  If no services are rendered, the mark is not in use.  Keep this in mind when applying to register a service mark.  If an application is based on use, and the mark is not used on any of the goods or services listed in the application, the application is void and no registration will issue.  This differs from a fraud claim, because an intent to deceive the PTO is not required.  If you are not sure, it is best to file based on intent to use. 

Fraud in Trademark Cases
Once again, the Trademark Trial and Appeal Board (TTAB) did not find fraud in the procurement of a trademark registration.



[ Page 1 | 2 ]
Next Page