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Developments in Intellectual Property Law

Important Notice for Non-US Trademark Owners

Beginning August 3, 2019, all foreign-domiciled trademark applicants, registrants, and parties before the Trademark Trial and Appeal Board (TTAB) are required to be represented by an attorney who is licensed to practice law in the United States.

Any trademark filings in violation of this rule may be rejected or the validity of any potential rights may be jeopardized.

The new rule is intended to increase compliance with U.S. law and USPTO regulations, improve accuracy of trademark submissions, and safeguard the integrity of the U.S. trademark register.
We remain committed to assisting our foreign-domiciled clients and associates with all of their trademark needs. Please contact us with any inquiries.

Iancu v. Brunetti: Scandal and Immorality vs. The First Amendment

By Matthew F. Abbott
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The Trademark Act, 15 U.S.C. § 1502, sets forth several categories of marks that will be refused registration by the U.S. Patent & Trademark Office (“PTO”). In particular, § 1502(a) prohibits registration of marks consisting of “matter which may disparage . . . a person,” as well as marks “consist[ing] of or compris[ing] immoral, deceptive, or scandalous behavior.”  In 2017, the Supreme Court ruled that the statute’s prohibition of “disparaging trademarks” violated the First Amendment because it discriminated on the basis of viewpoint. Matal v. Tam, 582 U.S. __ (2017).  On June 24, 2019, in Iancu & Brunetti, 588 U.S. ___ (2019), the Supreme Court ruled on the portion of § 1502(a) that prohibits “immoral” or “scandalous” marks, holding that this provision also violates the First Amendment because it disfavors certain ideas.

Mr. Brunetti’s Proposed Trademark

Erik Brunetti founded a clothing line that uses the trademark “FUCT.”   When Mr. Brunetti applied for a federal trademark registration for his mark, both the PTO Examining Attorney and the Trademark Trial and Appeal Board (“Board”) rejected it as unregistrable under § 1502(a).   The standard applied by the PTO in evaluating potentially “immoral” or “scandalous” marks is whether “a substantial composite of the general public would find the mark “shocking to the sense of truth, decency or propriety”; “giving offense to the conscience or moral feelings”; “calling out for condemnation”; “disgraceful”; “offensive”; “disreputable”; or “vulgar.” In re Brunetti, 877 F.3d 1330, 1446 (Fed. Cir. 2017).   The PTO Examiner found the mark was “totally vulgar” and therefore unregistrable, and the Board found it additionally to be “highly offensive” and having “decidedly negative sexual connotations.”  The Board found further that Brunetti’s website and products contained “extreme nihilism” and “anti-social behavior” and that in this context, the mark communicated “misogyny, depravity and violence” and was “extremely offensive.”  Following rejection by the Board, Brunetti then challenged the “immoral and scandalous” bar in the U.S. Court of Appeals for the Federal Circuit, which found it violated the First Amendment.  The Supreme Court thereafter granted certiorari.

BONG HITS 4 JESUS: the PTO’s Viewpoint-Based Treatment of Immoral or Scandalous Marks

Writing for the majority, Justice Kagan identified the key inquiry as whether the “immoral or scandalous” criterion was viewpoint neutral or viewpoint-based. She had little trouble in concluding that the criterion was impermissibly viewpoint-based.  In particular, she pointed to a number of examples where the PTO has refused to register marks espousing “immoral” or “scandalous” views of certain subjects while allowing marks that express more accepted view of the same subjects.  For example, in regard to the subject of recreational drug use, the PTO refused registration of YOU CAN’T SPELL HEALTHCARE WITHOUT THC (for pain relief medication), MARIJUANA COLA and KO KANE (for beverages), while allowing D.A.R.E. TO RESIST DRUGS AND VIOLENCE and SAY NO TO DRUGS – REALITY IS THE BEST TRIP IN LIFE.  In regard to trademarks associating religious references, the PTO refused AGNUS DEI (for safes) and MADONNA (for wine) while allowing PRAISE THE LORD (for a game) and JESUS DIED FOR YOU (on clothing).  The PTO similarly refused the mark BONG HITS 4 JESUS on the basis that Christians would be morally outraged by a statement that connects Jesus Christ with illegal drug use.

Rejection of the Government’s Statutory Limitation Argument

Justice Kagan rejected the government’s argument that the statute could be subject to a limiting exception that would limit the prohibition to “marks that are offensive [or] shocking to a substantial segment of the public because of their mode of expression independent of any views they may express,” which would effectively limit the refusals to marks that are “vulgar” (i.e., “sexually explicit or profane”).  Justice Kagan held that the statute “covers the universe of immoral and scandalous” – not merely the “mode” of expression, and that limiting the statute in the proposed manner would not be interpreting it but rather creating a new statute.  Consequently, she held that both the “immoral” criterion and the “scandalous” criterion violated the First Amendment.  Her majority opinion was joined by Justices Thomas, Ginsburg, Alito, Gorsuch and Kavanaugh.

Concurring in part and dissenting in part, Justice Sotomayor agreed that the term “immoral” could not be saved, but argued that the term “scandalous” could be limited in the manner proposed by the government. Her opinion was joined by Justice Breyer, and Chief Justice Roberts wrote a separate opinion concurring in part and dissenting in part in which he expressed the same view.  Justice Alito wrote a concurring opinion in which he invited Congress to enact a more precise statute that singles out “vulgar terms that play no real part in the expression of ideas.”

Justice Sotomayor speculated that the floodgates were now open and the PTO will be besieged with applications for highly offensive trademarks. Whether this happens remains to be seen, but in the event that this becomes a significant problem in the eyes of the public or the government, then Congress may see fit to take Justice Alito up on his invitation and take a second try at legislating against “vulgar” marks.

U.S. Supreme Court Determines Government Cannot Challenge Patent for Post Issuance Review under the AIA

Return Mail, Inc. v. United States Postal Services

By Fritz Klantschi
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On June 10, 2019 the United States Supreme Court in Return Mail, Inc. v. United States Postal Service, 868 F.3d 1350 (“Return Mail v. USPS”) held that the federal government is not a “person” able of instituting AIA review proceedings.

Background

The decision centered around Section 18(a)(1)(B) of the America Invents Act (“AIA”), concerning Covered Business Method (CBM) patents, and reads “[a] person may not file a petition for a transitional proceeding with respect to a covered business method patent unless the person or the person’s real party in interest or privy has been sued for infringement of the patent or has been charged with infringement under that patent” (emphasis added). Return Mail, Inc. had sued the U.S. Postal Service in the U.S. Court of Federal Claims (“USCFC”) alleging infringement of its patent, and, in turn, the USPS challenged Return Mail’s patent under the AIA. A prior blog post on this site discussed the background of the case in further detail.

Supreme Court Decision

Justice Sotomayor delivered the opinion of the Court in a 6-3 decision. The Court held that, unless there is an express definition of the term “person” in the patent statutes, the courts must proceed with the presumption that the government is not a person, absent an affirmative showing to the contrary.

The USPS made three arguments that the Court addressed.

  1. 1. The USPS argued that AIA post-issuance review proceedings must include the government because other references in the patent statutes appear to do so. The Court however found that at least 18 references to “persons” in the Patent Act and the AIA showed no clear trend that the term “person” included the government.

 

  1. 2. Next, the USPS argued that, because the government has a longstanding history with the patent system, Congress must have intended to allow the government access to the AIA post-issuance reviews. The USPS and the dissent by Justice Breyer both noted that since 1981 the Patent Office treated federal agencies as “persons” who may request an ex parte reexamination. The majority however countered that they might take account of this “executive interpretation” if they were determining whether Congress meant to include the government as a “person” for purposes of the ex parte reexamination procedures. The Court also noted, even assuming the government may petition for ex parte reexamination, there are differences between an ex parte reexamination and an AIA proceeding such that there are good reasons why Congress might have authorized the government to request a “hands-off” ex parte reexamination but not be a party to a full-blown adversarial proceeding of an AIA review proceeding. The Court found there to be no “settled” meaning of the term “person” with respect to the AIA review proceedings and the Manual of Patent Examining Procedures (“MPEP”) does not justify putting aside the presumptive meaning of “person.”

 

  1. 3. Finally, the USPS argued that it must be a “person” because, like other infringers, it is subject to civil liability and can assert a defense of patent invalidity. The Court held however that, unlike a private party, the government faces lower risks in an USCFC trial because it cannot be subject to an injunction and there are legal limits on the damages that can be ordered. Since the USPS faces a lower risk, the Court found it is reasonable for Congress to treat federal agencies differently, even though the burden of proof for invalidity is greater at the USCFC (clear and convincing standard) than for an AIA proceeding (preponderance of the evidence). Also, excluding federal agencies from using the AIA review proceedings avoids the “awkward situation” of having a civilian patent owner defend its patent against one federal agency overseen by another government agency, the PTAB.

Conclusion

The Court held that a federal agency, such as the USPS, is not a person who may petition review under the AIA post-issuance proceedings. The decision of the U.S. Court of Appeals for the Federal Circuit was therefore reversed and the case remanded.  It can be argued, however, that it would be more efficient for the PTAB to hear validity claims in cases where a federal agency is sued for patent infringement, as opposed to the USCFC, which is the only court in which the government can be sued for patent infringement.  Congress may decide to amend the AIA to include the federal government as a “person” and address the estoppel provisions of the AIA to include the USCFC along with the ITC and civil actions.

The Return Mail decision does not address the ability of government contractors petitioning the PTAB to institute an AIA review proceeding to protect their interests. Government contractors have done so in the past.  Whether a government contractor can intervene will depend, in part, on whether the government contract that procured the alleged infringing product included a patent indemnity clause.

Finally, the language the Court used with respect to ex parte reexaminations may foreshadow the prospect that the federal government is not a person under 35 U.S.C. §301(a) which provides that “[a] person at any time may cite to the Office in writing . . .  prior art . . . which that person believes to have a bearing on the patentability of any claim of a particular patent,” and therefore cannot request an ex parte reexamination proceeding.

Proposed U.S. Copyright Office rule would make it easier and less expensive for individual authors to register multiple works

By Suzanna M. M. Morales
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A rule proposed by the U.S. Copyright office could soon make it easier for individual writers like bloggers and freelancers to register copyrights for up to fifty online literary works with a single filing.

The proposed rule would allow a single individual to register up to fifty separate short literary works that are first published online. The proposed filing fee would be $55 for the entire filing. This should be compared with the current $35 filing fee for each single work. If the proposed rule is enacted, it would result in savings of up to $1,695 for registering fifty works as a group rather than through single work applications.

Proposed Registration Requirements

Under the proposed rules, a short work would be 100 to 17,500 words. This length requirement would exclude short phrases, such as Tweets, on one end, and novellas, on the other. Failure to comply with the length requirement may result in rejection of the entire application.

The works must be created by a single individual, and cannot be works made for hire.

The resulting registration would cover only the literary works. Any accompanying materials, such as artwork or photography, would not be protected by the registration. The proposal would require the application to be submitted online, attaching the works, unless the applicant is able to prove exceptional circumstances requiring a waiver of the online filing requirement.

In order to qualify for registration under the proposal, the works must be first published online, even if they are later published in another format. However, it would not be necessary for all of the works to be published on the same website or online platform. The works must also all be published within a three-month period.

Criticisms by Authors’ Groups

In publicly-available comments submitted in response to the Copyright Office’s Notice of Proposed Rulemaking, the Authors Guild noted that authors may not have control over whether their works are first published online or in print, and may not even know whether their works are made available in a way that constitutes “publication” under U.S. Copyright Law. The Authors Guild also requested that the word limit be broadened from 100-17,500 to 50-40,000 to accommodate short blog posts and poems on the one hand and long-form journalism and short fiction on the other.

Comments by the National Writers Union suggested that a single application should cover 500 works, rather than 100, noting that group registrations for photographs can cover up to 750 works. The Science Fiction and Fantasy Writers of America noted that the proposed rule would not cover collaborations by multiple authors.

Our firm will continue to follow this proposed rule and will provide updates on relevant developments.

Overview of ITC Decision in Chuck Taylor All Star Trade Dress Case

By Stephen M. Ankrom
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The Court of Appeals for the Federal Circuit recently vacated a final determination by the International Trade Commission (“ITC”) in Converse Inc.’s long-running trademark infringement battle over the Chuck Taylor All Star sneaker.[1]  The Federal Circuit’s key holdings are discussed below.

Background: Converse’s claimed rights in the Chuck Taylor trade dress

In 2014, Converse filed a complaint in the ITC seeking a general exclusion order pursuant to section 337 of the Tariff Act of 1930, 19 U.S.C. § 1337, (“section 337”),[2] forbidding entry into the United States of footwear that violate Converse’s common law and federally registered trademark rights in the Chuck Taylor shoe.  Specifically, Converse asserted rights in the “design of the two stripes on the midsole of the shoe, the design of the toe cap, the design of the multi-layered toe bumper featuring diamonds and the line patterns, and the relative position of these elements to each other.”

A central issue before the ITC was whether Converse’s mark had acquired secondary meaning., which is necessary for trade dress protection in product design.  In 2016, the ITC held in a final determination that Converse’s trademark in the midsole design of its Chuck Taylor All Star shoes had not acquired secondary meaning, and consequently there was no violation of section 337.  On appeal, the Federal Circuit vacated the ITC’s determination and remanded for further proceedings.

Effect of Converse’s trademark registration

The Federal Circuit found fault with the ITC’s analysis in a number of areas.  First, the Federal Circuit found that the ITC erred by not distinguishing between those alleged infringements that began before Converse obtained its trademark registration and those who began infringing afterward.  Much of the ITC’s decision turned on whether Converse had a valid federal registration, which was registered on September 10, 2013.  A valid federal trademark registration entitles the owner of the mark to a presumption that the mark is valid, including that it has acquired secondary meaning.  15 U.S.C. §§ 1057(b), 1115(a).

The ITC’s focus on the federal registration was an error, the Federal Circuit held, because the remaining respondents in the ITC action had first uses prior to the registration date, and the registration’s presumption of validity operates prospectively from the date of registration and cannot support a presumption of validity for the period before registration.  The Federal Circuit held that on remand, Converse must establish without the benefit of the presumption conferred by a federal registration that its mark had acquired secondary meaning before the first infringing use by each respondent.

Secondary meaning standard

The Federal Circuit sided with Converse in holding that the ITC applied the incorrect legal standard when performing the secondary meaning analysis.  The Federal Circuit held that the test for secondary meaning involves weighing six factors:

  1. 1. association of the trade dress with a particular source by actual purchasers (typically measured by customer surveys);
  2. 2. length, degree, and exclusivity of use;
  3. 3. amount and manner of advertising;
  4. 4. amount of sales and number of customers;
  5. 5. intentional copying; and
  6. 6. unsolicited media coverage of the product embodying the mark.

The Federal Circuit held that the ITC’s test was erroneous, among other reasons, because it set forth length, degree, and exclusivity of use as separate factors, which caused undue weight to be placed on what the Federal Circuit considered to be substantially interrelated factors.

According to the Federal Circuit, the ITC also erred in relying too heavily on prior uses that predated the first infringing uses and the date of registration.  Reasoning that the most relevant evidence is the trademark owner’s and third parties’ use of the mark in the recent period before first use or infringement, the Federal Circuit instructed that the ITC, on remand, rely principally on uses within the five years prior to the first use when considering the “length, degree, and exclusivity of use.”  Uses older than five years may be considered only if there is evidence that such uses were likely to have impacted consumers’ perceptions of the mark as of the relevant date.

The ITC also considered prior uses that the Federal Circuit determined not to be substantially similar to the mark when it performed its secondary meaning analysis.  According to the Federal Circuit, “several of the instances of third-party use cited in the ITC’s decision are shoes that bear at most a passing resemblance” to Converse’s mark.  Others instances of prior use were reproduced in low resolutions such that any meaningful comparisons could not be made.

The Federal Circuit also found that the ITC erred by placing substantial weight on a survey submitted by the respondents (the Butler survey) to support its determination that Converse’s mark had not obtained secondary meaning.  The Butler survey was taken more than ten years after the earliest infringing use of Converse’s mark, and thus should be given little probative weight in the ITC’s analysis.  Additionally, the ITC erred by finding that the Butler survey weighed against a finding of secondary meaning when the survey only found a lack of evidence of secondary meaning.  Unless the survey affirmatively shows lack of secondary meaning, a lack of survey evidence of secondary meaning is a neutral factor which does not favor either party.

The ITC’s determination was vacated, and the Federal Circuit remanded the case back to the ITC for further proceedings consistent with the ruling.

[1] Powley & Gibson, P.C. represent Converse Inc. in lawsuits brought in the Eastern District of New York asserting infringement of the Chuck Taylor trademark by various manufacturers, distributors, and retailers.  These caseshave been stayed pending resolution of the matter before the ITC.

[2] Section 337(a)(1)(c) makes unlawful the “importation into the United States, the sale for importation, or the sale within the United States after importation” of articles that infringe a trademark.

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