Posts in Journal

Jason H. Kasner

When choosing a new trademark or service mark, you need to be generally concerned with two things: (1) whether the new mark could be considered descriptive of the product or service it is intended for (i.e. descriptiveness); and (2) whether there are any trademarks or service marks in the marketplace so similar to the intended mark that consumers could be confused as to the source or origin of the goods or services (i.e. likelihood of confusion).  While these considerations are critical, there are some other considerations that could also prevent registration of a new mark.  For instance, what if the mark was not descriptive of the actual product or service it is intended for but descriptive of something else that the product or service lacks?  In some cases, these ‘misdescriptions’ could be problematic and may even lead to a determination that the mark cannot be registered on the basis that it is deceptive under Section 2(a) of the Trademark Act.[1]

In a recent decision, the Trademark Trial and Appeal Board upheld a refusal to register the mark “P6 CHROME” for “dietary and nutritional supplements that do not contain chromium” in Class 5 (In re Woodbolt Distribution, LLC 2018 WL 1981349 (T.T.A.B. 2018)).  The Board agreed with the Examining Attorney’s conclusion that the mark “misdescribes the goods as containing chromium, a substance some doctors say has health benefits” and confirmed the refusal to register under Section 2(a) of the Trademark Act.  Despite arguing that the term “chrome” had multiple meanings not associated with chromium, per se, and that the term was intended to refer to the product’s metallic packaging, the Board determined that the presence of the term “chrome” would create consumer confusion and falsely suggest that the supplement contained chromium when, in fact, it did not.

The Board considered several factors, including dictionary definitions of the term “chrome,” the use of the term “chrome” (and variations thereof) in the marketplace for dietary supplements, whether consumers shopping for dietary supplements would believe that a product called P6 CHROME would contain chromium and finally, whether the misdescription would make the product more desirable to consumers.  The Board determined that (i) the common definition of “chrome” can mean chromium; (ii) other competitors in the marketplace used the term “chrome” (or variations thereof) to market dietary supplements containing chromium (e.g. CHROME MATE, ULTRACHROME 500, AQUA CHROME); (iii) consumers were likely to believe a product called P6 CHROME contained chromium; and (iv) the suggestion that the product contained chromium did make the product more desirable to consumers of dietary supplements.  The Board affirmed the refusal to register the mark P6 CHROME as deceptive under Section 2(a) of the Trademark Act.

Rejection on this basis is not common, but it is something that should be considered when contemplating a new mark.  Look to your market – does the mark describe something consumers may want and expect the product (or service) to contain which it does not?  If so, you may be inviting a deceptiveness challenge down the road.  The resources spent trying to register a potentially deceptive mark may be better spent in selecting and developing a better, stronger mark.  The time and resources lost in trying to argue around a deceptiveness objection is time lost building good will and market awareness for your brand if, ultimately, you must give up on a deceptive mark and choose an alternate brand.  Relying on the expert guidance of a trademark attorney could prevent such an outcome.  A good trademark attorney can help you avoid pitfalls at the early stages of the selecting and identifying a brand, saving your company resources and time, and allowing you to concentrate on building a strong brand from the outset.

[1] Section 2 of the Trademark Act states, in part, “No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—

(a) Consists of or comprises immoral, deceptive, or scandalous matter…”

Suzanna M. M. Morales

In today’s digital world, it is easier than ever to copy a third party’s work that is covered by copyright. The term “fair use” is often used to justify the use of such copyrighted materials without the owner’s consent, but what does “fair use” really mean?

Fair use is an affirmative defense to copyright infringement. That means that even if an alleged infringer is found to have copied the copyright owner’s work, using the work fairly, the alleged infringer will not be liable for infringement. It is the alleged infringer’s burden to prove fair use. However, it is difficult to determine whether there is fair use in any particular instance, and prior court rulings provide little guidance because each case is considered on its own unique facts.

This article discusses the current meaning of fair use as that doctrine evolves under U.S. copyright law, and why it is not so easy to pin down.

Under the U.S. copyright statute (17 U.S.C. § 107), a court will consider four factors to determine whether a use of copyrighted material constitutes “fair use”:

• (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purpose

Here, one important consideration is whether the use is “transformative,” i.e., that the new use “communicates something new and different from the original or expands its utility.” (This language is from the influential Second Circuit Court of Appeals in Authors Guild v. Google, Inc., 804 F.3d 202 (2d Cir. 2015)). In order to be “transformative,” the use must “do something more than repackage or republish the original copyrighted work.” For instance, a user cannot simply re-post the copyrighted work of another in its entirety, no matter what the purpose, if it is to be transformative.

In addition, this factor specifically directs the court to consider whether the purpose is commercial. However, just because a for-profit entity uses the material, that does not end the inquiry. The court will take a closer look at the actual purpose of the copying, no matter what the status of the copier.

• (2) the nature of the copyrighted work

This factor is often considered in comparison with the purpose of the use of the work. One famous example is the Supreme Court’s holding that 2 Live Crew’s off-color interpretation of the song “Pretty Woman,” appropriating the signature opening riff of the famous Roy Orbison song, was a parody of the original, and was used fairly.

There is some indication that the courts will consider the copying of heavily fact-based works to be more likely to constitute fair use because the underlying factual information itself is not copyrightable, but other courts have discounted this, considering the creativity involved in incorporating and presenting those facts in a finished work.

In any event, this factor is generally not significant to the overall consideration of fair use.

• (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole

Here, the court will consider the amount of the copyrighted work made available to the public, rather than the amount used by the alleged copier. Rather than being a simple equation of the percentage of copying, the court will consider whether the material copied is at the heart of the copyrighted work. For example, the Supreme Court held that excerpts of a few hundred words from the book – a highly-anticipated memoir of former President Gerald Ford – was a substantial portion of the work. Harper & Row, Publrs. v. Nation Enters., 471 U.S. 539 (1985).

• (4) the effect of the use upon the potential market for or value of the copyrighted work

The U.S. Supreme Court has held that this is the most important factor. Harper & Row, 471 U.S.  at 566. This factor considers whether the claimed infringer’s use is a competing substitute for the original which would deprive the copyright owner of significant revenues. This factor considers not only the potential effect on the market for the copyrighted work of the claimed infringer, but also the effect of widespread use of the work in a similar manner. Here, the court will consider whether an unlimited number of others using the copyrighted work in the same way would impact the copyright owner’s market for its work.

However, a type of use that is completely unlikely to become a part of the normal market for the original work is more likely to be considered to be fair use than a market that the copyright owner would be likely to exploit.

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It is not possible to generalize instances that may be considered fair use, because courts consider the facts of each case on a case-by-case basis, considering not only these, but also any other relevant factors. Fair use is not a black-and-white, binary consideration, but will depend on the specific factors of each case. A main theme of the fair use consideration is whether the copying would usurp the market and supplant the original. And as new technologies and ways to copy continue to develop, the law will continue to evolve.

The Fourth of Four Articles on the Patent Process

Fritz Klantschi

If you have applied to register a patent in the United States, you also may be interested in filing applications outside the U.S. There are two methods to file a patent application in a foreign country based on an U.S. patent application, (1) Direct filing, and (2) Patent Cooperation Treaty (PCT) filing.  Either method must be initiated within 12 months of the earliest U.S. filing date to ensure the foreign patent application(s) is afforded the priority date of the originally-filed application.

Direct Filing

With direct filing, the patent application is filed directly with the patent office of the selected foreign country(ies) or region(s).  The examination process is generally very similar to that of the U.S.  However, there may be differences in what is patentable and the standard for patentability.  Formal matters, such as translations of the patent application, may be required for certain countries.  Several countries allow for deferred examination.  For example, examination of a Canadian patent application will not start until the applicant requests it.  The request must be made within 5 years of the International Filing Date.  Deferred examination can serve to reduce and defer cost of examination in Canada by awaiting the outcome of examinations in other jurisdictions.  Unlike the U.S., many countries require periodic fees called annuities to be paid to maintain pendency of the patent application.

Europe has for decades examined patent applications at the regional level by the European Patent Office (EPO) and when allowed, the patentee validates the patent in particular European countries chosen by the applicant by paying grant fees and submitting translations.  The European Union (EU) negotiated the creation of a European patent with unitary effect (“unitary patent”) and a unified European patent court.  The European unitary patent will provide protection for inventions in 25 countries across Europe. Read More

The Third of Four Articles on the Patent Process

Fritz Klantschi

This is the third of four articles discussing the basics of filing a U.S. patent. The interaction between the patent applicant and the USPTO regarding the patentability of the application’s claims is referred to as patent prosecution and continues until either the applicant abandons the application or the USPTO declares the claims as patentable and issues a Notice of Allowance.

Upon receipt, the USPTO checks to ensure the filed non-provisional patent application is complete (appropriate fees paid, formalities review – determine if a specification, drawings, claims and oath/declaration are filed and conform to USPTO standards).  If complete, an Official Filing Receipt is issued which identifies the application number, filing date, and other relevant information.  The patent application is assigned to the appropriate technology group and is examined in the order it is received.  Because of the backlog at the USPTO, it may be one or two years before there is any substantive examination of the patent application.  At 18 months from the earliest filing date, the patent application is generally published.  If an applicant decides not to seek patent protection in foreign countries, the applicant can elect that the patent application not be published until the patent is granted.  A benefit of not having a patent application published is that others cannot review the patent application or the prosecution history until and only if the application matures into a patent.  A drawback to not publishing a patent application is that a patent holder may not seek damages for infringement prior to a patent being issued.  In certain situations, a patent holder may be awarded damages for infringement occurring prior to an application maturing as a patent when the published claims remain substantially unchanged and mature into a patent.

Review of the Application

Once an Examiner is assigned and has reviewed the contents of the application for all U.S. legal requirements, the Examiner will determine if the application is claiming more than one invention.  If more than one invention is claimed, the Examiner will issue a restriction requirement requiring the applicant to elect the invention to be examined.  If only one invention is claimed, or the applicant has elected one invention to examine (prosecute), the Examiner conducts a prior art search and generally issues a first Office Action.  Read More

The Second of Four Articles on the Patent Process

Fritz Klantschi

This is the second of four articles discussing the basics of filing a U.S. patent. Once all searching has been completed with no major conflicts, the patent application must be prepared.  The Drafting Stage is the formal process of preparing a patent application for filing with a country’s patent office.  This discussion is directed towards the preparation and filing of utility patents which are the most common patents.  There are two other types of patents in the U.S., design patents and plant patents.  Design patents provide protection for the ornamental design of a functional item.  Plant patents provide protection for any novel, non-obvious, asexually reproducible plant.  Design patents and plant patents will be discussed in future articles.

Drafting the Application

Innovation within a company is generally defined by inventors through Invention Disclosure Forms.  These disclosures are generally reviewed by a committee comprised of engineering staff, business decision makers, and an intellectual property attorney.  The committee may be assisted by the results of one or more of the above-described searches.  Once the committee greenlights an innovation and determines there is value in obtaining patent protection, the drafting stage begins.

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