october 2013 prosecution group luncheon october 17, 2013
TRANSCRIPT
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October 2013
Prosecution Group Luncheon
October 17, 2013
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Trademark Office Announcements
• Online ID Manual enhanced – more examples, more quick tips and guidance
• RFC for draft guidelines on examination of gTLDs (10/23/13)
• RFC for potential change in policy for post-registration amendments of goods/services based on changes in technology (e.g. audio tapes to music recordings, printed magazines to online publications, installed software to software as a service) (12/1/13)
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“Super” Trademarks – aren’t
• App for SUPERJAWS for machine and hand
tools, including “jaws” for precision clamping
and “metal vice jaws” – rejected as descriptive
• There is no per se rule for how USPTO should treat word “super” when used in composite mark,
– if “super” is combined with word that names goods or services, or principal component, grade or size thereof, mark will be considered merely descriptive,
– if “super” is joined with suggestive term, combination remains suggestive of products and services;
• consumers would readily understand that “Superjaws” mark describes superior vice system for grasping and holding workpieces.
• In re Positec Grp. Ltd., 108 USPQ2d 1161 (TTAB 2013)
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Don’t Disparage Yourself
• Band applied to register THE SLANTS• USPTO denied as disparaging to persons of
Asian descent. • EA relied on dictionary definitions, online articles,
and applicant's own webpage and Wikipedia.– The band tried to “own the stereotype” – even if applicant is willing to take on the disparaging term as a
band name, that does not mean that all members of the referenced group share his view
• In re Simon Shiao Tam, Serial No. 85472044 (September 26, 2013) [precedential].
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Did You Hehr That Mahk?
• JIN-JA for herbal tea – rejected as merely descriptive• Applicant contended that JIN-JA is an arbitrary term with
no recognized meaning in English, and that U.S. consumers would not recognize or pronounce Jin-Ja as "ginger."
• EA - the mark is the phonetic equivalent of "ginger," particularly as pronounced by persons with non-rhotic accents (i.e., a Boston accent)
• SPLIT Decision – majority found insufficient evidence, dissent suggested Examiners supply more evidence when arguing based on regional accents
• In re Canada Enterprises LLC, Serial No. 85026331 (September 27, 2013) [not precedential].
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ACHOUFFE? Gesundheit
• ACHOUFFE refused for beer - geographically descriptive
• Achouffe is the name of a small village in the municipality of Houffalize, located in the Wallonia region of Belgium
• EA ‘s evidence insufficient to show that Achouffe is generally known to beer drinkers. Achouffe is "very much an obscure location and would be relatively unknown to the relevant American consumer."
• In re Brasserie D’Achouffe, Société Anonyme, Serial No. 79107741 (September 26, 2013) [not precedential].
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Patent Application Initiatives Website at USPTO
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After Final Pilot Program 2.0.
• The original pilot program has been re-launched.
• To be eligible for consideration under AFCP 2.0, you must: file a response under 37 CFR §1.116, which includes a request
for consideration under the pilot (Form PTO/SB/434) and amend at least one independent claim that does not broaden
the scope of the independent claim in any aspect be willing to interview
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Pre and Post AIA - Design Patent Priority
• Review– No provisional application priority– May be a continuing application of a utility, U.S.
or PCT– A design application must be filed within six
months of the foreign application to be entitled to foreign priority 35 USC §§119(a)-(d), 172
– No design application priority for PCT applications
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Hamilton Beach v. Sunbeam Products (CAFC)
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Timeline
Feb 8, 2005
Hamilton Beach Purchase Order
Feb 25, 2005
Supplier confirms receipt
March 2006
Hamilton Beach files Patent application – discloses clips on cooker
June 2010
Hamilton Beach files Patent application – claims clips on lid.
Sunbeam introduces Cook & Carry® designing around application with clips on lid.
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Purchase order
February 8, 2005: Hamilton Beach issues purchase order to foreign supplier for manufacture of Stay or Go® slow cooker.
February 25, 2005: Supplier confirms receipt of purchase order via email and notes it will begin production of the slow cookers after receiving Hamilton Beach’s “release.”
March 2006: First patent application.
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Hamilton Beach v. Sunbeam Products
35 U.S.C. § 102(b) Pre-AIA:
A person shall be entitled to a patent unless —
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, . . .
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On-Sale Bar
Two conditions must be satisfied before the critical date:
1. The claimed invention must be the subject of a commercial offer for sale; and
2. The invention must be ready for patenting.
Question of law based on underlying factual findings.
Pfaff v. Wells Elecs., Inc., 525 U.S. 55 (1998)
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“. . .on sale in this country. . .”
A commercial offer for sale made by a foreign entity that is directed to a United States customer at its place of business in the United States may serve as an invalidating activity.
A commercial offer for sale under 102(b) is “one which the other party could make into a binding contract by simple acceptance.
In re Caveny, 761, F.2d 671 (Fed. Cir. 1985)Grp. One Ltd. V. Hallmark Cards, Inc., 254 F.3d 1041 (Fed. Cir. 2012)
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Ready for patentingAn invention is ready for patenting if the claimed
invention is:
1. Reduced to practice; or
2. Depicted in drawings or other descriptions “that were sufficiently specific to enable a person skilled in the art to practice the invention.
This does not require a detailed “element-by-element analysis on the prototypes and products samples on which it was working prior to the critical date.”
Pfaff
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Purchase order
February 8, 2005: Hamilton Beach issues purchase order to foreign supplier for manufacture of Stay or Go® slow cooker.
Offer to buyFebruary 25, 2005: Supplier confirms receipt of
purchase order via email and notes it will begin production of the slow cookers after receiving Hamilton Beach’s “release.”
Offer to sell – it is at this point that the commercial offer for sale was made. Hamilton Beach could make into a binding contract by simple acceptance.
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Holding
Hamilton Beach’s asserted claims are invalid under the on-sale bar of § 102(b).
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Fair Use of References at the USPTO
• Magistrate judge in Minnesota finds that the copying and use of copyrighted reference at the USPTO is fair use.
• “[T]his Court concludes that [defendant] Is entitled to the fair use defense as a matter of law and recommends that the District Court grant [defendant]’s motion for summary judgment”
JEFFREY J. KEYES, United States Magistrate Judge in American Institute of Physics, John Wiley & Sons, Inc., and Wiley Periodicals, Inc., v. Schwegman Lundberg & Woessner, P.A., and John Doe Nos. 1-10
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• Questions?