Generic terms cannot function as a trademark, and thus the phrase "generic trademark" is an oxymoron. Trademark law can be a bit confusing on the subject of generic terms. This article defines and clarifies what a generic term is in order to enable trademark owners to avoid the genericness problem in their pursuit of trademark protection.
Trademark terms are categorized into four levels of descriptiveness with regard to their potential for protection: generic marks, descriptive trademarks, suggestive marks, and fanciful or arbitrary marks. Generic terms are common names for products or services and cannot be protected as they do not identify the product's source. At the other extreme, arbitrary or fanciful marks use words or phrases with no direct connection to the product, identifying the source with inherent distinctiveness, and thus automatically qualifying for trademark protection. An example of an arbitrary or fanciful mark is Nintendo for video games. Descriptive terms directly describe a characteristic or quality of the product and can only be protected if they acquire a secondary meaning. An example of a descriptive mark is International Business Machines (IBM) for computers. Suggestive terms imply qualities or characteristics, requiring imagination to connect to the product, and are inherently protectable. An example is Tesla Motors, as Tesla suggests the electric motors of the vehicles.
There is a spectrum of protectability for trademarks, from generic terms to arbitrary or fanciful marks. Generic terms like "apple" for the fruit lack protection because they denote a class of products. In contrast, arbitrary terms like "Apple" for computers are highly protectable due to their distinctiveness and lack of inherent connection to the product.
A generic term is a term that serves as a name of the actual product or service that the seller is offering. It should be understood that “generic” in the context of trademark law has a specific meaning and does not imply that common terms cannot be registered as trademarks. For example, simple, common words like Apple and Guess are routinely registered as trademarks. The critical factor is whether the trademark is descriptive of goods or services offered under the mark to the point that it is a name for the goods or services. “Apple” does not identify consumer electronics, and Guess does not identify clothing. Generic terms are not capable of distinguishing the source of one product from a competitor because they refer to an entire class or genus of products. An example of a generic mark is ‘cycle’ is a generic term for a two-wheeled vehicle, so generally speaking, a bicycle company would not be able to register, e.g., CYCLE CO as a trademark for use on its bicycles. A company seeking to protect its brand should pick a company name and brands that avoid the genericness problem.
A term can be a generic name for one thing but may still be considered a valid trademark for some other product. Apple does not sell the fruit; the company sells computers. Similarly, Shell in no way provides goods or services relating to the covering of an egg, but rather sells gasoline.
Trademarks act to identify and distinguish the goods and services provided by one seller under a particular brand from those of the others. Generic terms, designations that refer to the same product or service they supposedly identify the source of, do not provide this function. Since the name of a product or service offered cannot identify its source, it cannot function as a trademark and cannot be registered with the United States Patent and Trademark Office (USPTO). If this were not the case, one seller could trademark their product or service and preclude the use of the term by competitors offering the same product or service. This would be akin to granting a monopoly on identifying a particular product.
The genericness test turns on the (relevant) public’s perception of the mark in question. The general test asks: what does the relevant consumer understand the word to refer to—the generic name of a product or a mark indicating one source of that product? Two considerations flow from this general question.
This test may seem to render a term generic if buyers often call or order a product using that specific term. For instance, people commonly refer to photocopy machines as ‘Xerox Machines,’ and photocopying as ‘Xeroxing.’ However, it is the use and understanding of the term in the context of purchasing decisions that determines the primary significance of the designation. Unfortunately for the Xerox Corporation it was in jeopardy of losing its trademark registration. It had to fight off the generic usage of "xerox" through an expensive advertising effort to shift the public usage to "photocopying" documents, in order to protect its XEROX registration and associated intellectual property rights.
A simple and helpful way of understanding the basic question of whether a term is generic is to ask the following question: In the minds of the consumers, does the term provide an answer to what the product is (generic), or does it answer where it comes from (source identifier)?
Genericide is a potential pitfall for trademark owners. Genericide describes a situation in which one seller obtains trademark rights for a term which is in turn appropriated by the relevant public to refer to the name of a product. The term may therefore become generic, and the associated exclusive right to use the trademark can be lost.
There are two common causes of genericide. The first is when a new product is developed, and the term intended to be used and registered as a trademark is taken by the public and used in a generic way. Because it is a new product, the buyers have no other word to use. The second is the failure to police the usage by competitors, which can thereby influence its usage among consumers. By observing the term is used among many sellers, the consumers may begin to see the term as generic. If genericide occurs, all trademark protection is lost and the competitors can use the mark without risk of trademark infringement. There are famous examples of genericide resulting in a registered trademark becoming generic, including:
These examples illustrate how certain trademarks have lost their distinctiveness and become generic, often due to widespread consumer use that associates the term with the product category rather than a specific brand.
Once the public begins to identify a trademarked term as the name for the trademark owner's product and perhaps similar products, it is very difficult for the trademark owner to reverse the trend. It is therefore crucial to take precautions because once a trademark becomes a generic term, it provides no legal protection to the business that uses it. Two strategies in particular can help companies maintain their trademark protection and defend against genericide:
There are different kinds of patent protection under US patent law. Typically, when one thinks about "patentable subject matter", they are thinking about an invention. Patents that cover an invention (e.g., a new device, method, composition of matter, etc.) are utility patents. There are several patentability requirements for utility patents. An invention is evaluated by the US Patent and Trademark Office under the following four statutory categories: patent eligible subject matter (the right kind of thing), novelty (it must not have been done/made before), nonobviousness (minimal changes to existing technology are not enough), and clarity and enablement (the invention must be functional and properly described). The invention must meet each of these requirements to qualify for a patent. This article provides an explanation of what qualifies as patent eligible subject matter - the kind of thing that can be patented.
Subject matter eligibility under U.S. patent law requires an invention to meet specific criteria set forth in 35 U.S.C. § 101. This statute outlines four categories of patentable subject matter: processes (methods - series of steps or acts), machines, manufactures, compositions of matter, or a new and useful improvement thereof.
An eligible method invention involves a series of steps or actions to achieve a specific result. For example, consider a novel method for manufacturing a semiconductor device. The claimed method might involve a series of steps such as depositing layers of materials, patterning them using photolithography, and etching to create microstructures. This claimed method would fall under the process category and could be eligible for a process patent if it meets other criteria, such as novelty and non-obviousness. Here are some further examples of new and useful process subject matter:
Machines are tangible devices or apparatuses designed to perform specific functions. For instance, an innovative robotic arm used in manufacturing that includes new and useful improvements over existing technology can be patented. This robotic arm might integrate advanced sensors, AI algorithms for precision, and energy-efficient motors, making it a valuable invention in the field of automation.
A more familiar example is the computer. Patents on computer hardware innovations, such as faster processors, more efficient cooling systems, or improved data storage solutions, fall under the machine category. These innovations must be concrete and specific, avoiding abstraction to meet the criteria for patent eligibility. Here are some further examples of appropriate subject matter under the machine category:
The manufacture category includes items that are made or produced, often through industrial processes. For example, a new type of biodegradable plastic, created by synthesizing polymers from renewable resources, could be patented. This new material, which decomposes more quickly than conventional plastics, addresses environmental concerns and represents a significant advancement in materials science. Here are some further examples of appropriate subject matter under the manufacture category:
This category includes chemical compositions and compounds. Pharmaceuticals are a prime example. A new drug that effectively treats a disease with fewer side effects represents a patentable composition of matter. The patent application would cover the specific chemical structure of the drug, which is proper subject matter under section 101.
Improvements on existing technologies form a significant category of patentable subject matter, often leading to incremental but valuable advancements in various fields. According to the Patent Act, any new and useful improvement of a process, machine, manufacture, or composition of matter can be patented. The essence of this category lies in enhancing the functionality, efficiency, or utility of existing inventions, making them more effective or adaptable. Here are some examples:
Patentable improvements drive technological progress by building on existing inventions. These new and useful enhancements not only offer practical benefits but also qualify for patent protection, encouraging continuous innovation and development across various industries.
While an invention must fall into a statutory category to be patent eligible, fitting into one of these categories alone does not guarantee patent subject matter eligibility. The Supreme Court has established an exclusionary principle that holds that a claimed invention that is directed to an abstract ideas, laws of nature, or a natural phenomena cannot be patented. These judicial exceptions are based on the concern that granting patents for "basic tools of scientific and technological work" would impede innovation, rather than promote it. Gottschalk v. Benson, 409 U.S. 63 (1972). This principle was reinforced by the Supreme Court in cases such as Alice Corp. v. CLS Bank Int’l and Mayo Collaborative Services v. Prometheus Laboratories, Inc., which established a two-part test for determining patent eligibility.
If the claim includes a judicial exception, it will likely be rejected by a patent examiner. However, if there is a novel, innovative concept within the claim, the inventive aspect may be sufficient to confer patent eligibility to the patent claim. The following is an example of a claimed invention that includes an natural phenomenon, but also includes an inventive concept that may overcome a judicial exception rejection under the natural phenomenon exclusion.
A claim for a method for diagnosing a disease may include obtaining a blood sample from a subject; determining the presence or absence of a biomarker in the blood sample by using a specific reagent that selectively binds to the biomarker; comparing the level of the biomarker in the blood sample to a predetermined threshold level; diagnosing the subject with the disease if the level of the biomarker is above the predetermined threshold level and the reagent is a novel engineered protein that improves the specificity and sensitivity of the biomarker detection. The claim involves a method of diagnosing a disease, which falls under the category of "laws of nature" or "natural phenomenon." This is because the correlation between the biomarker level and the disease is a natural phenomenon.
Despite involving a judicial exception, the claim includes a novel engineered protein. The inclusion of a novel engineered protein as a specific reagent that selectively binds to the biomarker is a concrete and inventive step. This protein improves the specificity and sensitivity of the biomarker detection compared to existing methods, thus adding man-made chemical that is significantly more than just the natural correlation. The novel engineered protein provides a technological improvement created by the scientific and technological work of man, which is a significant step beyond the abstract idea or natural law. The method claim satisfies as a whole demonstrates a practical application of the natural correlation in a way that provides improved diagnosis, a tangible and useful result.
The United States Patent and Trademark Office (USPTO) employs a meticulous approach when analyzing patentable subject matter, ensuring that each application meets statutory requirements before granting patent rights. A key aspect of this examination is claim interpretation, specifically under the broadest reasonable interpretation (BRI) standard. This method plays a crucial role in determining whether an invention encompasses subject matter eligible for patent protection.
When evaluating a patent application, the USPTO applies the broadest reasonable interpretation to the claims. This means that the claims are interpreted in their broadest form consistent with the specification as understood by someone skilled in the art. The purpose of this approach is to establish a clear boundary of what the patent covers, thus ensuring that the claims are not interpreted in an unduly broad or vague manner. This claim construction is essential in identifying claims that meet the criteria for patentability.
The BRI standard affects the evaluation process by ensuring that the claim interpretation affects the breadth and scope of the claimed invention. The examiner determines if the interpreted claim encompasses subject matter that falls into one of the statutory categories. The examiner also assesses whether the claim is directed to a patent ineligible concept such as an abstract idea, law of nature, or natural phenomenon.
To determine patentability, the examiner conducts the following detailed analysis of the claims:
When a claim is found to be patent ineligible, the examiner provides a detailed explanation, identifying the specific reasons for ineligibility. This includes discussing how the claim falls within a judicial exception and lacks additional elements that confer patentability. Applicants may then respond by amending claims or providing arguments to demonstrate eligibility. The USPTO’s approach to claim interpretation under the broadest reasonable interpretation standard is a cornerstone in the patent examination process. The goal of the BRI standard is clarity and precision in determining patentability, thereby maintaining a balanced system that fosters innovation while preventing overly broad or ambiguous claims. By carefully evaluating eligibility based on this standard, the USPTO ensures that only inventions meeting stringent criteria are awarded patent protection, thus upholding the integrity of the patent system.
The patent law encompasses a wide range of technologies across various statutory categories. Understanding subject matter eligibility is crucial for inventors and practitioners to navigate the complexities of the Patent Act. While judicially recognized exceptions like laws of nature, natural phenomena, and abstract ideas present challenges, the inclusion of inventive concepts and practical applications can transform these exceptions into patentable subject matter. By ensuring that a claim satisfies the criteria for patent eligibility, inventors can secure exclusive rights to their innovations, driving progress and benefiting society at large.
When seeking a utility patent for an invention, it is critical to properly identify the inventors in the patent application. In general, an inventor is a person who conceives and reduces to practice an invention that falls into one of the statutory categories of patentable subject matter under 35 USC § 101, which include methods, articles of manufacture, compositions of matter, machines, and improvements thereon. The inventor must come up with something novel and innovative that can actually be created or practiced in the real world; it must be reduced to practice in a complete and operative form. An idea is not enough to be considered an inventor under US patent law. Additionally, an inventor can only be a person. Corporations and governments cannot be considered inventors, though they may hold legal interest (e.g., an ownership stake) in the invention or patent.
Inventorship can be separated into two distinct requirements. The first requirement is the conception of the invention and the second is reduction to practice. Both steps must be completed in order for an "idea" to transform into an invention. These steps can be completed by multiple people. For example, an engineer working on developing a device that performs a certain function may create concept for the device and plans and schematics that can be executed by a technician, and then hand the project off to a team of technicians that build the device. The engineer and technicians jointly performed the two required steps of conception and reduction to practice. A more in depth discussion of each step is provided below.
Conception occurs when a definite and permanent idea of a complete and operable invention is formed. A complete conception of an invention should include every feature sought to be claimed in a patent application for the invention. This means the idea should be so completely developed that it can be reduced to practice. There is a corollary in US patent law with respect to patent applications: a patent application must describe the invention in sufficient detail to enable someone of ordinary skill in the relevant art to practice the claimed invention (e.g., create a physical version of the invention) without inventive skill or performing extensive experimentation. The conception step is the key to being an inventor. Only persons that contribute to the conception of the novel aspects of an invention can be considered inventors.
Imagine a scenario where John and Alice, two engineers, are collaborating to create a new smart thermostat designed to learn a user's temperature preferences and automatically adjust the home heating and cooling system. The device consists of conventional components such as the thermostat housing, temperature sensors, a touchscreen interface, and Wi-Fi connectivity. However, the key innovation lies in an Adaptive Learning Algorithm, which uses machine learning to predict and adjust temperature settings based on user behavior, weather forecasts, and energy usage patterns.
In their collaboration, John focuses on designing the thermostat housing, selecting the temperature sensors, integrating the touchscreen interface, and setting up the Wi-Fi connectivity. He also handles the physical assembly and ensures the basic functionality of the device. Alice, on the other hand, develops the Adaptive Learning Algorithm from scratch. She programs the algorithm to interact with the other components of the thermostat and ensures that it accurately learns and predicts user preferences.
According to US patent law, an inventor is someone who contributes to the conception of the novel aspects of an invention. In this case, the Adaptive Learning Algorithm is the novel feature that sets this smart thermostat apart from conventional ones. Therefore, Alice, who conceived and developed this novel feature, is considered the inventor. While John made significant contributions to the overall project, he did not contribute to the conception of the novel Adaptive Learning Algorithm. Consequently, for the patent application of this smart thermostat, Alice would be listed as the inventor, while John, despite his important role in the development, would not be listed as an inventor. This example highlights how inventorship under US patent law is determined based on the contribution to the conception of the novel features of an invention.
The second requirement of inventorship is reduction to practice, i.e., creating a tangible and practical form of the invention. This step is crucial to prove that the invention is more than just an abstract idea; it must be an actual, operable creation. For example, concepts like cold fusion and perpetual motion machines are often touted as revolutionary, but they have not been reduced to practice, rendering them mere ideas rather than true inventions. An inventor can accomplish reduction to practice in two ways: actual reduction to practice or constructive reduction to practice. Constructive reduction to practice occurs when a patent application is filed with sufficient description to allow one of ordinary skill in the art to practice the invention. Constructive reduction to practice does not require the inventor to complete performance of the invention. The inventor can establish a filing date, which serves as the date of invention, by filing a patent application that thoroughly discusses the subject matter of the invention. However, it is worth noting that notoriously unproven technologies like cold fusion and perpetual motion must be actually reduced to practice and demonstrated to the United States Patent and Trademark Office before any patent can be issued.
Actual reduction requires a two part test: 1) the inventor constructed a tangible form which includes all of the features of the claimed invention, and 2) the invention worked for its intended purpose. The testing of the invention does not need to be done by the inventor; it can be conducted by someone under the direction of the inventor. The only requirement is that the inventor is informed and understands that the testing was successful. The person(s) reducing the invention to practice may not make an inventive contribution. John in the example above is not an inventor, even though he reduced Alice's invention to practice.
The acts of conception and reduction to practice can be muddled with some types of inventions. For example, when an inventor conceives a species or chemical compound, conception in the mind is not enough to produce an actual chemical species. The inventor may have an idea about kind of compound he seeks to produce, but the chemical species is likely produced only by extensive trial and error. Thus, both conception and the second step of reduction to practice may be simultaneous. Until the experiment is successful, the inventor cannot envision the completed chemical species or describe with certainty the method to obtain it; i.e., conception is incomplete until the reduction to practice is successful.
When making a claim of inventorship, the inventor or inventors should have a reasonable belief she is the original and first inventor of the invention. Usually, this means the inventor was the first person to conceive the idea and create a tangible form of the invention. The invention must be original or novel, i.e., something that no one else has created or used before. Originality is the basic requirement for a patent to ensure the alleged inventor did not obtain or take the invention from another.
Any claim of inventorship should be supported by reliable evidence. The evidence may include documents prepared by the inventor, circumstantial evidence about the inventive process, or oral testimony from a third-party. The information is not an absolute requirement, but inventorship is often an issues that is raised in patent lawsuits. Patent attorneys often challenge the plaintiff's patent rights by probing inventorship. The defendant's attorney may try to establish, e.g., that the claimed invention was a joint invention and that one or more co inventors were intentionally omitted from the patent application. This is a basis for patent invalidity. In the process of determining inventorship, it is far better to have documentation than to rely purely on patent application filings and memory.
Joint inventorship occurs when two or more persons contributed to the conception of the invention. Each person that makes an inventive contribution to the conception of the invention must be named as a joint inventor. The contribution must be to the novel aspects of the invention for the person to be a named inventor. If the individual contributes only conventional elements and features or simply followed the instructions of an inventor in reducing the invention to practice, the individual is not an inventor. In the case of a joint invention, each joint inventor has an equal ownership interest in the patent rights in the invention. Once the patent is granted, all joint inventors become joint owners and can use the patent or sell or license a share of the patent without the permission of any other joint owner.
In some circumstances, joint inventors may have developed aspects of the invention separately without working together, developing aspects of the invention independently. Such a scenario may occur within a corporate entity that has multiple teams working on similar technologies. US patent law allows a joint inventorship application to be filed even though the inventors did not physically work together or make the same type or amount of inventive contribution. In such situations, there must be collaboration either through direct or indirect communication to have a valid patent application under joint inventorship.
It is critical to ensure correct inventorship for any patent application. Any failure to properly include joint inventors may have serious consequences for the patent’s validity as discussed in more detail below.
Proper inventorship: The following are requirements for proper inventorship: 1) the invention must be original or novel, i.e., something that no one has created or used before, 2) the idea must be complete conception of the invention, and 3) the idea must be actually or constructively reduced to practice.
Examples include:
Improper inventorship
Here is a non-exhaustive list of what is not considered proper inventorship:
It is important to correctly name the inventors in a patent application. Failure to do so may result in forfeiting the rights to the patent. When proper inventors are not included in a patent application, this is called nonjoinder. Another improper listing is misjoinder, listing a person as an inventor on a patent application when that person is not an inventor. Both nonjoinder and misjoinder render a patent application invalid and unenforceable if done intentionally. Inadvertent nonjoinder or misjoinder can be corrected. Whether it is a patent application or an issued patent, some courts allow correction of errors for inadvertence, accident, mistake, poor judgment, or even deliberate acts (though this should be avoided). Also, when correcting an error for not naming an inventor, i.e., nonjoinder, it is not necessary to provide specific details of what that person provided to the invention.
For patent applications, the Director of the USPTO has the power and authority to amend the application. The Director may set certain terms to allow the amendment; however, generally the USPTO will allow inventorship to be corrected if the applicant submits the appropriate documents and the processing fee.
Once a patent is issued, the patent is presumed to be valid even if there are errors in inventorship. Whether or not a third party is attempting to invalidate the patent, it is best to fix issues in inventorship as soon as possible. To fix inventorship errors on an issued patent, an inventor can correct the issue through the USPTO or through the courts. For the USPTO to correct inventorship on an issued patent, each person being added as an inventor and each person currently listed as an inventor must make a statement that they either agree to the change of inventorship or that they have no disagreement with the change. Any assignee or person that has received a right in the patent must also agree to the change. Finally, the fee associated with this correction must be paid. If any party refuses to allow the change, the change to inventorship must go through the courts.
A person desiring to amend the inventorship of a patent may be granted a court order with the information listed above. The person seeking the inventorship change is not limited to only being an inventor. Parties which have an economic or reputational stake in the inventorship of the patent may also seek a court order to change the inventorship. For example, an employer of the inventors may file a patent application as the assignee of the inventors' interests in the invention. The employer may seek a court order to fix the inventorship of the patent if a problem with inventorship is discovered. The employer may have a great interest in correcting the inventorship in the event that the patent covers an important product made and sold by the employer.
As discussed in the “Who Qualifies as an Inventor?” section, it is crucial to have documentation to demonstrate whether someone is an inventor and should be added to or removed from the patent.
Understanding and accurately determining inventorship for a patent application is crucial for ensuring the integrity and enforceability of the patent. Different inventors contribute uniquely to the development of an invention, each adding distinct elements to the subject matter. The process to determine inventorship involves a careful analysis of who contributed to the inventive aspects of the claims. Not every person who contributed to the project is necessarily an inventor; only those who have made a substantial contribution to the conception of the claimed invention qualify. Each inventor named on a patent must have made a significant contribution to the subject matter as defined by the claims. Misidentifying or omitting inventors can lead to legal complications, such as challenges to the validity of the patent. It is essential to delineate clearly how each person contributes to ensure that all and only those who qualify as inventors are recognized. This careful assessment and proper listing of inventors ensure that the patent accurately reflects the contributions of those who were truly inventive, thereby safeguarding the patent’s enforceability and avoiding potential disputes or claims of inequitable conduct. In conclusion, accurately identifying and naming inventors is a foundational aspect of patent law that upholds the principles of recognition and legal protection for genuine innovation.
© 2024 Sierra IP Law, PC. The information provided herein does not constitute legal advice, but merely conveys general information that may be beneficial to the public, and should not be viewed as a substitute for legal consultation in a particular case.
Entrepreneurs are generally aware of trademarks and the purpose for which they are used: serving as a unique identifier of a business's goods and services. However, the rules that govern what can be "trademarked", or more accurately, what can function and be registered as a trademark are not widely known. There are a couple of ways categorize trademarks:
(1) The form of the mark. Trademarks encompass a wide array of identifying elements including words, logos, symbols, colors, and even sounds that distinguish one company's products or services from those of others.
(2) The distinctiveness and strength of the mark. The more distinctive the mark and the less descriptive of the goods and services offered under the mark, the stronger the mark.
The United States Patent and Trademark Office (USPTO) is responsible for the registration and protection of trademarks in the United States, and is thus the arbiter of what qualifies as a trademark. Understanding (1) what can be properly used and registered as a trademark, and (2) what is a strong trademark allows business owners and entrepreneurs to establish strong brand identity and secure valuable trademark protection.
A trademark is a distinctive sign or indicator used by a business to identify and distinguish its products or services from those of other companies. Various elements can serve as a trademark, provided they meet the necessary criteria of distinctiveness and non-functionality. Below are some forms of trademarks along with famous examples for each:
Words are the most common type of trademark. They can be single words, multiple words, or phrases used to identify a product or service. For instance, "Google" is a trademark for the well-known search engine company, and "Nike" is a trademark for the global sportswear brand. The phrase "Just Do It" is also a registered trademark for Nike, demonstrating how phrases can serve as trademarks.
A logo is a graphic symbol or design that represents a company or product. Logos are often more recognizable than words and can include stylized letters, images, or both. The golden arches of McDonald's and the swoosh of Nike are famous examples of logo trademarks. These logos help consumers quickly identify the products and services associated with these companies.
Single letters or combinations of letters and numbers can also be trademarked, provided they are distinctive. For example, "IBM" is a trademark for International Business Machines Corporation, and "3M" is a trademark for the company known for its innovative products like adhesives and tapes.
Shapes can function as trademarks if they are distinctive and identify the source of a product or service. For example, the simple target shape used by the Target Corporation is a registered trademark. Similarly, the three stripe logo of the Adidas AG company is trademarked, helping it stand out among other athletic apparel companies.
Colors can be trademarked when they are used in a distinctive manner to identify and distinguish a product or service. For example, Tiffany & Co. has trademarked the specific shade of robin's egg blue used in its packaging and marketing materials. Color can serve as a trademark, but it cannot be inherently distinctive, as noted in Qualitex Co. v. Jacobson Prods. Co. In this 1995 Supreme Court case, the Court ruled that color could be protected as a trademark, but only if it had acquired distinctiveness (also referred to as secondary meaning) in the minds of consumers. Consumers must associate the color with the source of a particular product or service for protection under the Lanham Act. Furthermore, a color mark must be non-functional, meaning it cannot provide a utilitarian advantage to the product itself. In Wal-Mart Stores v. Samara Bros., the Court reinforced the principle that color and product design cannot be inherently distinctive and must acquire secondary meaning to be eligible for protection
Sounds can serve as trademarks when they are distinctive and associated with a particular source. For example, the NBC chimes, consisting of the notes G, E, and C, are a registered sound trademark. The lion's roar used by Metro-Goldwyn-Mayer (MGM) in its movie openings is another well-known sound trademark. Unlike colors, sound marks are often considered inherently distinctive because they tend to serve as clear source identifiers, much like traditional word or symbol marks. Sound marks do not typically require evidence of secondary meaning to be registered, as they are more naturally associated with the origin of a product or service.
Although less common, scents can be trademarked if they are distinctive and non-functional. For example, the scent of Play-Doh, which has a unique combination of vanilla, cherry, and other fragrances, is a registered trademark. These marks present unique challenges as they are generally not inherently source-identifying and require substantial evidence of secondary meaning. Courts have recognized scent, flavor, and tactile marks, but their conceptual distinction from traditional packaging or product design makes them harder to categorize. For instance, the USPTO requires that scent and flavor marks demonstrate secondary meaning before registration. However, these marks can often be functional. For example, in In re N.V. Organon, the Trademark Trial and Appeal Board (TTAB) found that the orange flavor of a pharmaceutical pill was functional because it made the medicine more palatable, serving a utilitarian purpose.Consequently, these types of marks often struggle to satisfy the non-functionality requirement.
Motion trademarks involve the movement of a logo or symbol that is used to identify a company or product. For instance, the animated lamp that hops across the screen in Pixar's logo is a registered motion trademark. Motion marks have been recognized and registered by the USPTO, particularly when they are part of a traditional logo or trademark displayed in a digital or televised context. These marks, such as a distinctive way a car door opens or the NBC peacock logo in motion, can serve as source identifiers when they have either inherent distinctiveness or acquired distinctiveness. Some motion marks fall into a grey area between product design and marketing techniques. For example, cases involving marketing strategies, like a hotel using live ducks to walk across a red carpet, blur the line between trademark protection and marketing theatrics.
Combination marks involve a mix of words, logos, and other elements to create a distinctive trademark. The Starbucks logo, which includes both the stylized image of a mermaid and the company's name, is an example of a combination mark.
To register any of these forms of trademarks, an application must be filed with the United States Patent and Trademark Office (USPTO), detailing the specific use of the trademark in commerce. Once approved, these trademarks help protect the brand identity of a company and prevent unauthorized use by others, ensuring that consumers can reliably identify the source of the products or services they purchase.
Similar to trademarks, service marks identify and distinguish the source of a service rather than a product. The term "trademark" is often used interchangeably with "service mark," but it is important to recognize the distinction. Examples of service marks include "FedEx" for delivery services and "McKinsey & Company" for consulting services. Service marks are eligible for registration and protection under the same principles as trademarks.
Trademarks can be categorized based on their distinctiveness, which is essential for the registration and protection of the mark. The USPTO classifies trademarks into four main categories: fanciful marks, arbitrary marks, suggestive marks, and descriptive marks, which are listed in descending order of strength. Each category varies in terms of strength and registrability.
Fanciful marks are coined terms that have no existing meaning outside their use as a trademark. These marks are inherently distinctive and often considered the strongest type of trademark. Examples include "Xerox" for photocopiers and "Kodak" for cameras. Since fanciful marks are unique and created specifically for the brand, they are easily registered and provide strong trademark protection.
Arbitrary marks use common words in an unrelated context to the products or services they represent. These marks are also highly distinctive and strong trademarks due to their non-descriptive use. An example of an arbitrary mark is "Apple" for computers. The word apple does not express the quality, characteristic, or nature of a computer, is not descriptive of computers, and arbitrary is thus arbitrary as a trademark for computers. The strength of arbitrary marks lies in their ability to stand out and create a unique brand association, making them easier to register and protect.
Suggestive marks hint at or suggest the nature or characteristics of the products or services without describing them directly. These marks require consumers to use their imagination to connect the mark with the product or service. For example, "Netflix" suggests streaming movies and TV shows but does not directly describe it. Suggestive marks strike a balance between distinctiveness and descriptiveness, making them relatively strong and easier to register than descriptive marks. The USPTO recognizes the creativity involved in suggestive marks, which often leads to successful trademark registration.
Descriptive marks directly describe a characteristic, quality, or feature of the goods and services on which they are used. Examples include "Best Buy" for retail stores or "Creamy" for a dairy product. Descriptive words are generally not eligible for registration on the USPTO principal register. There are other kinds of terms that are also considered descriptive, including:
Common surnames like "Johnson", "Smith", or even rarer ones like "Brinkley" are also treated as equivalent to descriptive terms, as they are commonly held names. None of these forms of marks can be registered on the principal register, unless they acquire a secondary meaning. Alternatively, a descriptive term or mark can be registered on the supplemental register if it has not yet established secondary meaning. The USPTO supplemental register carries fewer rights than the principal register, most importantly the presumption of nationwide trademark rights.
Secondary meaning occurs when the public associates the descriptive term with a specific source rather than the product or service itself. Secondary meaning arises when consumers recognize the mark as identifying a specific source rather than just describing the product or service. Establishing secondary meaning typically involves demonstrating extensive use, advertising, and consumer recognition over time. Although a trademark application for a descriptive mark can eventually be approved, descriptive marks are inherently weaker than fanciful, arbitrary, or suggestive marks.
Generic terms refer to common names for products or services and cannot be trademarked. For example, the term "computer" cannot be registered as a trademark for computer products because it is the generic name for the goods. The USPTO does not grant trademark rights for generic terms, as doing so would prevent other businesses from using the necessary terminology to describe their products or services.
Trademarks play a crucial role in building and protecting brands, customer loyalty, and business success. They provide legal protection against infringement and help distinguish a company's products or services in the marketplace. Registered trademarks offer several benefits, including:
Trademark protection extends beyond registration. Trademark owners must actively monitor and enforce their rights to maintain the strength and exclusivity of their marks. This includes taking action against unauthorized uses and protecting the mark from becoming generic. Trademark infringement occurs when another party adopts a mark that is confusingly similar to a pre-existing trademark, which is likely to cause or actually causes consumer confusion. Trademark owners can seek legal remedies, including injunctions and damages, to protect their rights.
Trademarks are a vital component of a company's intellectual property portfolio, alongside patents, copyrights, and trade secrets. They contribute to the overall value and competitive advantage of a business. A well-managed intellectual property strategy includes securing and enforcing trademarks to protect the brand and ensure long-term success.
Understanding what can be trademarked is essential for businesses aiming to establish and protect their brand. The trademark registration process with the USPTO provides significant benefits, including exclusive rights and legal protection. Trademarks, as part of a broader intellectual property strategy, play a crucial role in building and sustaining a successful business. By selecting a strong mark (e.g., a fanciful, arbitrary, or suggestive mark) and avoiding descriptive and generic terms, a businesses can build a strong brand and maintain an edge over competitors offering similar products and services in the marketplace.
Design patent claims protect the ornamental design of an article of manufacture. Unlike a utility patent, which covers functional aspects, a design patent focuses on the visual appearance, including the shape, configuration, or surface ornamentation of the claimed design. A design patent has a single claim that refers to the design patent drawings that illustrate the design, which serve as the primary basis for determining the scope of protection.
Infringement of a design patent occurs when an unauthorized party makes, uses, sells, or imports an article embodying a design that is substantially similar to the claimed design in the eyes of an ordinary observer. The primary test for design patent infringement is the "ordinary observer" test, established by the Supreme Court in Gorham Co. v. White. Under this test, if an ordinary observer, familiar with the prior art, would be deceived into thinking that the accused product is the same as the patented design, then infringement has occurred.
The Federal Circuit in Egyptian Goddess, Inc. v. Swisa, Inc. reaffirmed that the ordinary observer test is the sole test for determining design patent infringement. This approach focuses on the overall visual impression of the design rather than specific differences, ensuring that minor variations do not circumvent patent protection. Therefore, to avoid infringing a design patent, a competing design must create a distinctly different visual impression to an ordinary observer. The infringement is analyzed after the scope of the design patent claim is determined by a claim construction process.
This article provides explanation of design patent claim construction and the impact of the Federal Circuit decision in Curver Luxembourg SARL v. Home Expressions Inc.
Design patent claim construction involves interpreting the scope and meaning of a design patent's claim to determine the extent of its protection. This design patent claim construction process is conducted by the district court judge in design patent litigation. The district court examines the design patent claim, considering the visual disclosure of the design provided in the design patent drawings. The claim scope is primarily defined by the visual elements of the design drawings. However, in the context of a patent trial, the district court also considers the impact of functional features of the design on the scope of the claimed design. Functional aspects are generally not protectable in a design patent. Therefore, the court distinguishes between functional features and ornamental design elements to ensure that the claim scope is appropriately limited to non-functional aspects.
Prior art also plays a significant role in design patent claim construction. The district court evaluates prior art to ascertain the novel aspects of the claimed design. During patent litigation, if the prior art discloses similar designs, the court may narrow the claim scope to avoid overlap of the design with the prior art, ensuring that the patented design is novel and distinct from the prior art.
In Egyptian Goddess, the Federal Circuit explained and reinforced that the "ordinary observer" test is the test for infringement. This test requires considering whether an ordinary observer, familiar with the prior art, would find the claimed design and the accused design to be substantially similar. The ordinary observer is assumed to be familiar with the prior art. Thus, the district court defines the claim scope in a manner that accurately reflects the ornamental nature of the design while excluding functional features and features that were previously disclosed in the prior art to provide an appropriately narrow construction. Design patent claim construction thus involves a detailed analysis of the visual disclosure, consideration of functional features, and evaluation of prior art.
The scope of a design patent claim is also defined by the claim language of the design patent. In teh Curver Luxembourg case, the Federal Circuit held that the claim language, not just the drawings, limits the scope of a design patent. This decision emphasizes that the claim language, and also the title and text of the design patent can restrict the application of the design to a specific article of manufacture, such as a chair, even if the drawings do not depict the article itself.
The case revolves around the design patent D677,946, owned by Curver Luxembourg SARL, which claims an "ornamental design for a pattern for a chair." The dispute arose when Home Expressions Inc. marketed baskets with a similar overlapping Y-shaped design pattern as claimed in Curver's patent. Curver alleged design patent infringement, but the district court dismissed the case, and the Federal Circuit affirmed the dismissal.
The Federal Circuit decision in the Curver Luxembourg case places new emphasis on the interpretation of claim language of a design patent. While decision ensures that design patents are tied to specific articles of manufacture, it may complicate infringement analysis, in which the district court may find a precise meaning of claim language. A design patent claim is traditionally a formal requirement that simply refers to the design patent drawings. Patent practitioners must now carefully draft the design patent claim to address the article of manufacture requirement.
The Curver Luxembourg case has significant implications for prosecuting design patent applications at the United States Patent and Trademark Office (USPTO). This case emphasizes the importance of clear claim language in design patent applications. The Curver Luxembourg case illustrated that claim language specifying the article of manufacture can limit the scope of the design patent, even if the article is not depicted in the drawings. A patent examiner must ensure that the design claim aligns with the specific article described in the design patent specification.
Patent law, particularly 35 U.S.C. 112, requires that the design patent application provides a written description that clearly identifies the article of manufacture. For example, a design patent for a two-dimensional surface ornamentation must clearly specify the article of manufacture it is applied to, preventing overly broad interpretations of the design's scope. This clarity helps the patent examiner evaluate the novelty and non-obviousness of the claimed design in light of prior art. For example, had the patent application discussed a woven textile as the article of manufacture, the claim scope may have been broader than it was construed in the Curver Luxembourg case. Therefore, patent practitioners must carefully define the article of manufacture in a design patent application to avoid limitations on the claim scope. Patent examiners, guided by this case, will scrutinize the consistency between the design claim and the drawings, ensuring compliance with the requirements highlighted by the Federal Circuit in the Curver Luxembourg case.
The Curver Luxembourg case reinforces the necessity for a carefully considered definition of the article of manufacture in a design patent application. This definition guides the patent examiner in their assessment of compliance with 35 U.S.C. 112 and a carefully defined article of manufacture may allow for a favorable determination of the design patent claim.
The Curver Luxembourg case and the accompanying analysis underscore the critical role of claim language in design patent claims. The Federal Circuit's decision to limit the scope based on the specified article of manufacture (a chair) rather than the abstract design has significant implications for how design patents are prosecuted and enforced. Practitioners should take heed of this ruling to draft clear and deliberate descriptions of the article of manufacture in a design patent and carefully navigate the prosecution history to avoid restrictive interpretations of the patent's scope.
Prior to applying for a trademark or service mark registration, it is crucial to understand the specimen requirements set forth by the United States Patent and Trademark Office (USPTO). A trademark specimen of use is evidence demonstrating the actual use of a trademark or service mark in commerce concerning the goods and services listed in a trademark application or registration. This article explains the rules and guidelines for acceptable trademark specimens.
There are two different types of trademark applications based on whether the mark is being used at the time the application is filed. There are trademark applications under Section 1(a) of the Lanham Act for marks that are in use at the time of the application, and there are intent-to-use (ITU) applications under Section 1(b) for marks that are not in use at the time of filing, but for which the applicant has a bona fide intent to use the mark in commerce. For applications based on current "use in commerce", applicants must submit a specimen at the time the application is filed.
An ITU trademark application allows an applicant to secure priority in a trademark or service mark before it is actually used in commerce. The applicant must demonstrate a "bona fide intent" to use the mark in commerce in the near future. This genuine intention must be supported by evidence, such as business plans, marketing materials, or product prototypes. When filing an ITU application with the USPTO, the applicant must submit a completed application identifying the mark and the goods and services with which the mark will be used, and a declaration that the applicant has a bona fide intent to use the mark in commerce. Once the application is approved, the applicant must file a Statement of Use (SOU) or a request for an extension of time to file the SOU within six months. The SOU includes proof that the mark is being used in commerce, such as labels, packaging, or advertisements displaying the mark (e.g., a business card, online advertising examples, a website printout, or other appropriate specimen).
In some cases, a US trademark application may be filed claiming priority to a foreign registration or application filed under the Madrid Protocol. In such cases, a specimen is not required prior issuance of a federal registration. Such applications only require a statement of use in commerce between the 5th and 6th year after registration (Section 8 or 71 Declaration of Continued Use) and every ten years thereafter for renewal.
When a specimen submission is required, the applicant must submit one specimen for each class of goods or services in the application or registration.
The USPTO has specific rules and guidelines on what constitutes an acceptable specimen. As of February 15, 2020, these rules have been updated to align with statutory requirements and precedential case law. Key requirements for acceptable trademark specimens include:
Acceptable specimens must show the mark used on goods, their containers, packaging, labels, tags, or associated displays, which must be point-of-sale in nature. Examples of acceptable specimens include clear and legible photocopies, photographs, web page printouts (with URL and date), or similar reproductions of actual use. Specimens cannot be artist renderings, proofs, illustrations, or computer mockups. The specimen must display the mark directly associated with the goods, showing use in commerce. If impractical to place the mark directly on goods or packaging, the USPTO may accept other documents related to the sale of the goods.
Labels or tags attached to goods are acceptable, provided they show the mark as a source indicator. Shipping labels may be accepted if they are affixed to goods and show proper trademark use, not just as a trade name (e.g., a return address). Labels or tags must include typical information like net weight or UPC codes. Stamping the trademark on goods, containers, or tags is acceptable, and photographs or web page printouts showing the stamping are valid specimens.
Commercial packaging that normally accompanies the goods is also acceptable. For digital goods like software, movies, or audio recordings, screenshots or photos showing the trademark on the display are valid, provided there is a way to download or purchase the goods. Specimens must include the URL and access or print date for web page printouts to verify their authenticity. Specimens before February 15, 2020, are grandfathered under prior rules unless certain conditions apply.
Generally, to serves as proper specimens, business signs must be in association with the services listed in service mark applications. In a case involving Republic National LLC's service mark application (Ser. No. 86513101) to register the mark REPUBLIC NATIONAL for various real estate services, the Board affirmed the refusal due to insufficient specimens for services. The applicant submitted photographs of their facility's front door with the REPUBLIC NATIONAL mark. The Board emphasized that a specimen must show a direct association between the mark and the services listed in the service mark application. Although the mark need not explicitly mention the services, it must be used in rendering those services.
The front door displaying the REPUBLIC NATIONAL mark did not reference the real estate services offered, failing to establish a direct association. The Board noted that the front door, merely bearing the mark, did not associate the provision of services like real estate investment, acquisition, banking, financing, or development. Instead, it functioned more like an advertisement and lacked reference to the services.
The Board contrasted this with the case of In re Metriplex (23 USPQ2d 1315, 1316 (TTAB 1992)), where a computer screen displaying the mark during the provision of data transmission services was accepted because the services were provided through a tangible item (the computer terminal), and the mark was shown in use. In contrast, Republic National's front door only served as an advertisement without indicating the services provided.
Specimens that are deemed unacceptable by the USPTO include:
The filing basis of a trademark application affects specimen submission. For an "intent to use" application, the applicant must eventually submit evidence of use through an Amendment to Allege Use or a Statement of Use. For a "use in commerce" application, evidence of use must be submitted at the time of application.
Applicants must ensure their specimens meet all requirements to avoid rejection by a USPTO examining attorney. The specimen must depict the mark as shown in the application drawing and demonstrate its use in a manner that consumers recognize as a source indicator.
Understanding and adhering to the trademark office specimen requirements is crucial for successful trademark or service mark applications. Applicants must submit specimens that show actual use in commerce, direct association with goods or services, and serve as a source indicator to be awarded a trademark registration. Familiarity with the United States Patent and Trademark Office Trademark Manual of Examination Procedure and guidelines ensures that applicants provide the necessary evidence, avoid common pitfalls, and achieve their trademark registration goals.
This article provided an overview of trademark specimen requirements, including examples of acceptable and unacceptable specimens. By following these guidelines and ensuring the submission of appropriate specimens, applicants can navigate the trademark application process more effectively and secure their trademarks under federal law.
If you have questions about trademarks, visit our trademark FAQ page, general trademark page, and our trademark registration page.
An invention must be non-obvious when compared to related prior art. Specifically, under 35 U.S.C. § 103, an invention cannot be patented if the differences between the claimed invention and the prior art are such that the invention as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.
The evaluation of obviousness involves a multi-step analysis, typically beginning with the identification of the scope and content of prior art related to the claimed invention. The next steps involve ascertaining the differences between the prior art and the invention at issue and assessing the level of ordinary skill in the pertinent art.
The seminal case of Graham v. John Deere Co. of Kansas City established the framework for assessing obviousness, which includes examining these objective indicators. Later cases, such as KSR International Co. v. Teleflex Inc., have evolved the standards, emphasizing a flexible, expansive approach to determining obviousness, which includes an understanding that obviousness can be based on common sense and the ordinary creativity of those skilled in the art. This move away from a rigid, formulaic approach allows for more nuanced considerations of what constitutes an obvious improvement in a field, ensuring that patents only cover truly innovative advancements.
A proper obviousness rejection under must meet several key requirements. First, there must be a clear identification of the relevant prior art that would have been known to a person having ordinary skill in the art (POSITA) at the time the invention was made. The rejection should explicitly state which specific prior art references are being combined and how they relate to each element of the claimed invention. Additionally, the rejection must include a rationale for combining these references, supported by a reasoned explanation that includes factual findings. This rationale should demonstrate that the combination of prior art references would have been obvious to a POSITA, not merely speculative or general. The rejection also needs to address any teaching away by the prior art, which could argue against the combination. Finally, any assertions of obviousness must consider the claimed invention as a whole and not just individual elements in isolation.
Prior art refers to all information that has been made available to the public in any form before the effective filing date of a patent application. Under the US Patent Act, the patentability of an invention depends on how distinctive it is from the closest related prior art. Examples of prior art include previously issued utility patents, design patents, published patent applications, and other public disclosures such as articles, books, or products on the market, which predate the filing of the patent application under examination. The effective filing date of a patent application is the reference point to determine whether particular information qualifies as prior art.
Patent examiners perform a prior art search to find prior art related to the invention claimed in the patent application. When a patent examiner finds prior art that predates the effective filing date and discloses similar innovations, the examiner may cite the prior art found to reject the claimed invention as anticipated or obvious. This process ensures that patents are granted only for genuinely new and inventive contributions to the field.
A proper obviousness rejection must based on prior art that is "analogous" to the claimed invention. See M.P.E.P. § 2141.01(a). A reference qualifies as “analogous” if it meets one of two separate tests. There is the "field of endeavor" test, which requires that the prior art reference is from the same field of endeavor. The other test requires that the prior art reference is "reasonably pertinent" to a particular problem addressed by the claimed invention. In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (quoting In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004)). These tests are exclusive to one another. If the prior art meets the field of endeavor test, it need not address the problem addressed in the patent application. If the prior art meets the reasonably pertinent test, it need not be in the same field of endeavor.
In an exemplary case, the Patent Trial and Appeal Board issued a decision in Ex parte Taskinen reversing obviousness rejections because the examiner did not properly establish that a cited secondary prior art reference was analogous to the claimed invention. The patent application disclosed adjustable massage apparatuses. The examiner rejected the claims as being obvious in view of Taskinen (US 2008/0200778), Khen (WO 2008/063478), and Lockwood (US 2003/0014022). Lockwood discloses wound treatment apparatuses.
The examiner asserted that Lockwood is the in the same field of endeavor as the invention, but failed to explain how Lockwood's disclosure was analogous to massage apparatuses. The examiner offered no assertion or explanation as to whether Lockwood was “reasonably pertinent” to the invention described in the patent application. The applicant challenged the examiner's assertion that Lockwood was in the same field of endeavor, arguing that a POSITA would not look to Lockwood because the structure and purpose the devices disclosed by Lockwood are unrelated to massage devices. Applicant argued that while Lockwood describes a low pressure suction device, the structure and purpose of the Lockwood device are different than a massage apparatus. Ergo, a POSITA would look to Lockwood in conceiving the device disclosed by the primary reference, Taskinen. Applicant further argued that a POSITA would not combine features of Lockwood with Taskinen because they were not practicably combinable with the device of Taskinen.
The Board found that Lockwood was not in the same “field of endeavor” as the claimed invention, because massage devices are not remotely vacuum treatment devices. The Board explained that the field of endeavor test requires the examiner to determine the appropriate field of endeavor by reference to explanations of the invention’s subject matter in the patent application, including the embodiments, function, and structure of the claimed invention. In re Bigio, 381 F.3d at 1325. The test is not satisfied by a subjective determination by the patent examiner. Id. at 1326. The patent office must have a basis in the application and its claimed invention for defining the scope of the field of endeavor. Id.
The Board found that the patent examiner's opinion that Lockwood was in the same field of endeavor did not find a basis objective evidence, and amounted to an unsupported legal conclusion. The field of endeavor identified by the examiner (vacuum treatment devices for a user) was too generic. The PTAB found that Appellant’s field of endeavor was actually massage devices, as demonstrated by the technical field, the discussion of the prior art, the detailed description of the invention, the figures, and the patent claims provided in the patent application. This case illustrates that the patent applicant must carefully review the prior art relied upon by the patent office and challenge obviousness rejections based on non-analogous art.
A prior art reference meets the "analogous art requirement" and can be relied upon in an obviousness rejection under 35 U.S.C. § 103 if it is reasonably pertinent to the particular problem with which the inventor is involved. The reasonably pertinent test is independent of whether a prior art reference is from the same field of endeavor.
The test for whether a prior art reference is "reasonably pertinent" does not require the prior art to be in the exact field of the claimed invention; rather, a reference is reasonably pertinent if the prior art at least one of the issues addressed by the claimed invention and has the same purpose with respect to that issue.
In the case of Sanofi-Aventis Deutschland GmbH v. Mylan Pharmaceuticals Inc., the Federal Circuit addressed the applicability of the "reasonably pertinent" test for determining analogous art in patent law. This case highlighted critical issues regarding the classification of prior art as analogous in the context of an inter partes review (IPR) proceeding before the Patent Trial and Appeal Board.
Sanofi’s ’614 patent, which pertained to a metered drug-dosing device, was challenged by Mylan who argued that the patent was obvious in light of three prior art references: Venezia, Burren, and primarily, de Gennes. The latter, though related to automobile technology—a field distinct from drug delivery—was claimed by Mylan to be analogous because it addressed similar mechanical issues.
The crux of the dispute revolved around whether de Gennes was "reasonably pertinent" to the specific problem addressed by the ’614 patent. The Patent Trial and Appeals Board (PTAB) initially found de Gennes to be analogous art, reasoning that it dealt with relevant mechanical issues despite its primary application in a different field. However, this conclusion was based on an indirect comparison where de Gennes was aligned with Burren rather than directly with the ’614 patent.
On appeal, Sanofi argued that PTAB improperly expanded the scope of analogous art by shifting the burden from Mylan to Sanofi, requiring the patentee to prove non-obviousness. The Federal Circuit sided with Sanofi, noting that patent challengers must clearly establish the pertinence of prior art directly to the challenged patent. The Court emphasized that the determination of whether a reference is "reasonably pertinent" relies on its direct relevance to the problem addressed by the patent in question, not merely its presence in related discussions or its utility in solving similar issues in a different context.
The Federal Circuit's decision underscores the necessity for patent challengers to meticulously demonstrate the relevance of prior art to the specific patent challenges, particularly through the lens of the "reasonably pertinent" standard. It serves as a reminder that the burden of proof in establishing obviousness lies with the challenger, who must convincingly show that the prior art directly pertains to the patented invention.
The foregoing cases illustrate that both patentees and challengers to thoroughly evaluate and argue the analogous nature of prior art from the earliest stages of patent disputes. Legal frameworks require that the art must either be within the same field of endeavor or reasonably pertinent to the particular problem addressed by the invention. Court decisions like Sanofi-Aventis have underscored the necessity of that the prior art must be sufficiently related to to the invention for it to be a proper basis for rejecting a patent claim as non obvious. The patent office must meet the legal requirements and its own examination guidelines in determining whether an invention is obvious.
Introducing new product ideas and services is the life blood of many businesses. There are numerous steps along the path to a developing a new product vision. For instance, a product idea must be evaluated for its technical feasibility, manufacturing costs, and potential profit margins. Additionally, as part of the product design process, a company must conduct thorough market research to identify related products and potential competitors for the proposed new product. These steps are absolutely necessary at the product development stage to enable an effective product development. However, while necessary, these steps are not sufficient to effectively launch a final product or service.
Beyond developing new product opportunities that address customer needs, a business must also consider whether a new product or service presents a potential infringement lawsuit due to a third party patent covering the new product or service. A comprehensive patent search and review process prior to a product launch can reveal whether a proposed innovation infringes on such patents. In some circumstances, there may be competitive products that are covered by one or more patents. In other cases, there may be third party patents that are not connected to any existing product in the marketplace. For example, there may be patents that cover an unlaunched product currently under development or the patent owner may have no plans to make the patented invention.
In order to identify such patents, a thorough freedom to operate search of issued patents and pending patent applications must be conducted to allow evaluation of infringement risks. This step should be taken by a company to avoid infringement liability resulting from a new product launch. In the event that the new product idea poses an infringement risk, the freedom to operate search and analysis may provide a roadmap for a revised product strategy to either design around existing patents or engage in licensing negotiations with the patent owner. This proactive approach is necessary to avoid legal pitfalls that can doom the new innovation and secure a smoother market entry.
Businesses that are engaged in the product development process must consider the risk of infringing a patented invention. If any such patent rights are found, the client may wish to do an in-depth infringement analysis to determine whether there is a real risk of infringement. Infringement analyses and non-infringement opinions of closely related patents identified in a freedom to operate search or otherwise are due diligence exercises that inform a client about either present or potential patent infringement risks. A non-infringement opinion can provide cover against claims of willful patent infringement. There are several situations in which an infringement analysis and non-infringement opinion are prudent. Where a freedom to operate search has been performed and related, enforceable patents have been identified. The need for infringement analysis and a non-infringement opinion also commonly arises where a client receives a cease and desist letter asserting that the client is infringing one or more patents. The client, of course, will wish to investigate the merits of the asserted patent infringement claim(s). There are other situations where a non-infringement opinion is a prudent exercise. Another situation in which the infringement analysis may be needed is where a client is seeking to develop a new product or new service, but is aware that a competitor offers a related product or service and has one or more patents related to such product or service. The client would naturally want to know its infringement exposure risk before launching a product or service that directly competes with its rival’s patented offerings. Such due diligence should be stand a standard business analysis step for companies engaging in product development.
The benefits of an infringement analysis include (1) the client becomes well-informed of the infringement risk posed by patents on related goods or services issued to third patent owners, and (2) design around strategies may be formulated to allow the client to move forward with a competing product or service without risking infringement. If it is found that the client’s new product or service offerings do not or likely do not infringe the analyzed patent(s), then a non-infringement opinion can be written that provides a good faith basis for the client to move forward with the product or service with confidence that they likely do not infringe the patents discussed in the non-infringement opinion.
Additionally, the non-infringement opinion can be used as a shield against assertions of willful infringement. Willful infringement requires a finding of recklessness on the part of the infringer, and can result in enhanced monetary damages awards of up to three times the patentee’s actual damages. Recklessness in this instance means that there was a high likelihood that an activity would result in patent infringement. Thus, for example, if a client is aware of a competitor’s patent, but regardless offers a competing product or service, a court may find that the client engaged in willful infringement. However, a competently written non-infringement opinion provides a defense against a claim of willful infringement.
It is important to understand that if an infringement opinion is sought, the client cannot blindly rely upon it as a shield to accusations of infringement. The infringement opinion must have indicia of competency, such as the competency of the practitioner providing the opinion (Is the opinion provided by a patent attorney with experience in infringement matters and relevant patent law?), the completeness of the opinion (Does it include a review of the prosecution history of the patent or patents of concern?), the factual and legal accuracy of the opinion, and reasonableness of the opinion’s conclusions (Does the opinion claim there is no possibility of infringement?). Also, in order to use the infringement opinion as a defense to willful infringement, the client must review the opinion and verify that it is reasonable and competently prepared. Of course, the client must also follow the guidance in the infringement opinion.
An additional benefit of a freedom to operate search is that search results and analysis provides the patent landscape surrounding the new product or service. This knowledge is critical not just for navigating potential infringements, but also for evaluating the patentability of the new product concept. The understanding of the patent landscape allows for evaluation of the novelty and non-obviousness of the new product idea under US patent law. A determination as to whether patent protection is available is also highly valuable information for product development strategy. If there is a good chance of patentability, a patent application may be pursued. Mapping the patent landscape through the freedom to operate analysis ensures that the new product not only avoids infringement of existing patents but also informs the business of its own patent prospects.
Entrepreneurs are constantly innovating and realizing new product ideas. However, as part of their product development process, they need to vet their new product or service for potential conflict with third party patent rights. Infringement analyses are important due diligence tools for keeping clients out of costly litigation situations when they are trying to deliver an innovative product idea to customers. The risk of patent infringement should always be on the minds of product development teams and entrepreneurs when they are contemplating a new product or service offering. Patent litigation is a painstaking and highly expensive process. An ounce of due diligence and patent infringement analysis prevention can avoid massive patent litigation pain.
US patent law provides for exclusive rights in an original ornamental design through issuance of a design patent. The primary focus of a design patent is not the functional features of a product but rather its ornamental features. The "claimed design" must be novel and non-obvious in its ornamental aspects. The protection it offers is limited to the appearance of the item as depicted and claimed in the patent drawings.
A design patent application may include multiple versions or embodiments of the claimed design. During the patent examination process before the United States Patent and Trademark Office (USPTO), a patent examiner may issue a restriction requirement in an application that includes multiple embodiments. This procedural step is rooted in the principle that each design patent application should cover only a single claimed design. If designs are not substantially similar, they may be divided into separate filings. This requirement ensures that design patents issue for a single ornamental design.
Applicants faced with a restriction requirement have the option to pursue each segregated design through a divisional application. This allows the patent applicant to continue seeking protection for all originally presented designs. However, a restriction requirement may create prosecution estoppel (or file wrapper estoppel) that can impact the rights of the patent owner.
Since the Federal Circuit’s decision in Pacific Coast Marine Windshields in 2014, patent attorneys have been wary of the potential consequences of filing design patent applications including two designs or more. In Pacific Coast, the court held that under the doctrine of prosecution history estoppel, when a design patent applicant agrees to elect specific embodiments in response to a restriction requirement, the unelected embodiments fall outside the scope of a design patent that issues from the application. Generally speaking, the issuing design patent cannot be successfully asserted against a third party practicing the non-elected embodiment. In the wake of the Pacific Coast case, it became clear that divisional design patent applications must be filed in order to secure patent rights in any non-elected embodiments.
However, in the Advantek Mktg. v. Shanghai Walk-Long Tools Co. case, the Federal Circuit court of appeals was again presented with a design patent case involving prosecution history estoppel arising from a restriction requirement. In Advantek Mktg., Advantek filed suit against its former contract manufacturer (Shanghai Walk-Long Tools Co.), asserting that Walk-Long infringed US Design Patent No. D715,006 covering a portable kennel. The application for the ‘006 design patent was filed with five figures: the first four figures showed an octagonal pet kennel design without a cover, and the fifth figured showed the same octagonal design with a cover. The patent office found that the application included more than one design and issued a restriction requirement in the application identifying two distinct embodiments – (1) the first four figures as a subcombination and (2) the fifth figure as a combination – and required the election of one of the embodiments. Advantek elected the first embodiment as shown in the first four figures (the kennel with no cover).
The allegedly infringing kennels sold by Walk-Long included a cover. Walk-Long filed a motion for judgment on the pleadings under 12(c) asserting that the scope of the ‘006 patent excludes a kennel design with a cover under the doctrine of prosecution history estoppel as a result of the election made during the examination of the application for the ‘006 patent. The US District Court for the Central District of California granted judgment on the pleadings, agreeing with Walk-Long that prosecution history estoppel barred Advantek’s claim.
On appeal, the Federal Circuit reversed and remanded in spite of the prosecution history estoppel. Advantek successfully argued that, even though it had surrendered the embodiment of the kennel that included a cover, the kennel sold by Walk-Long necessarily includes the design covered by the ‘006 patent because it is a “skeletal structure” onto which a cover can be added. The Federal Circuit agreed, pointing to the US Supreme Court’s recent decision in Samsung Electronics Co. v. Apple Inc., in which the court affirmed that a design patent can cover a component of a larger product and that such design patent can be infringed by a product that incorporates the patented design. The court stated that:
The Federal Circuit accordingly concluded that Advantek was not estopped from asserted the ‘006 patent against Walk-Long.
While this case reiterates the potential dangers of surrendering embodiments in design patent applications, it also shows that the scope of the surrendered subject matter can be narrow. The outcome in this case is not unlike the Pacific Coast case, in which it was held that the accused design fell within the scope of the asserted patent, even though some of the embodiments in the plaintiff’s patent application were surrendered as a result of a restriction requirement. The surrendered design in that case was a boat windshield design having two holes therein, whereas the asserted design patents covered boat windshield designs with no holes and four holes. The Federal Circuit concluded that the patentee had surrendered only the two-hole and not the accused three-hole design, and that prosecution history estoppel did prevent the plaintiff from asserting infringement based on the three-hole design.
In both the Pacific Coast and the Advantek Mktg. cases, the subject matter surrendered and subject to prosecution history estoppel was very narrow in scope. In fact, in the Advantek Mktg. case, the scope elected embodiment of the ‘006 patent essentially swallowed the scope of the surrendered embodiment. The two embodiments were a combination and subcombination. In such situations, it seems intuitive that the broader subcombination should be elected, barring other considerations. However, even though it appears that prosecution history estoppel resulting from restriction requirements and elections of species may have a limited impact on the scope of a design patent, patent practitioners should remain wary of its potential threat and thoroughly consider filing divisional applications to cover the withdrawn embodiments or species.
A trademark (word, name, symbol, sound, or design) is a source identifier for goods and/or services that are provided in connection with the mark. The trademark serves to indicate to the consumer the likely quality and character of the goods or services based on the reputation the trademark owner has built in the marketplace. For example, everyone recognizes that the Nike company makes athletic shoes of a high quality, and consumers expect to get a certain level of quality from a pair of shoes marked with the word NIKE. This reputation is built through the use of the NIKE trademark in connection with its quality products. But when does trademark protection begin? It is common misconception that one can protect a word, phrase, and/or graphic as a trademark or service mark once it is created. Under US trademark law, trademark protection does not begin until a mark is “used in commerce”. The Nike company was not able to register its NIKE trademark for use on shoes until it actually began selling shoes to consumers. Trademarks protect both the consumer looking for reliable goods and services and the trademark owner’s business and reputation that it has built through the provision of quality goods or services.
Use in commerce is defined as a mark placed on goods (e.g., on the container, label, tag, packaging, or point of sale display) or presented in connection with services (e.g., on business cards, advertisements, and websites) that are sold or transported in interstate commerce. Interstate commerce, in this sense, means anything Congress can lawfully regulate. Generally, this means commerce across state lines and commerce between the US and a foreign market, or with a substantial connection to interstate commerce that is more than nominal. Solely intrastate commerce does not qualify as “use in commerce” under the Lanham Act (the Federal Trademark Act) and such marks cannot be registered with the USPTO. A local nail salon, grocery store, or the like probably does not use its service mark in interstate commerce. However, if an intrastate business affects commerce that Congress can regulate, it would qualify as “interstate commerce” under the Lanham Act. An example of such a business would be a local travel agency that is booking interstate and/or international travel. It should be noted that intrastate commercial activity does result in common law trademark rights in the geographic area where the business’s goods are sold and/or services are provided.
In order to demonstrate that transactions constitute uses in commerce, the mark must already be present on the goods or in association with the offered services when they are sold or transported to the public. It cannot be placed on the good or associated with the service after the sale or swapped out with another mark after the purchase but before the delivery.
Use in interstate commerce requires an actual sale: typically an exchange of money for a good or service. This means members of the public must be exposed to the mark and choose to purchase the good or service offered under the trademark based on their own choice. Advertising alone is not sufficient. Also, the good or service must actually be available for sale and delivery to the customer.
A sham transaction refers to a transaction crafted solely for the purpose of creating the appearance of genuine sale of a a good or service in connection with the trademark. For example, a trademark owner requests that a friend or employee purchase a newly offered good to establish a sale. In other words, the sale is not a bona fide commercial transaction, even though money has been paid for the good. For a use to be considered "in interstate commerce" US Trademark Law, it must be a legitimate use of the mark in the ordinary course of trade, and not merely to reserve rights in the mark. The United States Patent and Trademark Office (USPTO) and courts look for actual sales of goods or services under the mark to real customers, where the transaction is indicative legitimate commercial activity. It is contrary to the purpose of trademarks to allow ownership rights in a trademark to a party or business that does not legitimately use the mark in connection with goods or services. A sham sale or transaction is usually done to create inauthentic documentation of a sale to circumvent the legal requirements register a trademark with the USPTO. Such actions are scrutinized and often dismissed as attempts to unjustly reserve trademark rights without engaging in real commercial activities. This principle ensures that trademark protection is granted only to marks that are truly used to facilitate commerce and consumer recognition in the marketplace.
Advertising, though it exposes the public to the good, without the ability to perform a sale does not constitute use in commerce. This applies to television or radio commercials, paper or billboard advertisements, and online ads and websites. If a website simply displays and advertises a good or service without presenting an ability to purchase it, the trademark is not considered to be used in interstate commerce. Also, an internal distribution between a manufacturer and regional managers or a distributor is not a sale or use in commerce. The goods must be presented for public use to potential wholesale or retail customers.
Also, the good or service must be in existence when it is sold. The trademark will not be considered used in commerce until the good physically exists or the service is actually available. The mark needs to identify or distinguish the goods from others’ goods.
The other way goods are used in commerce is through transportation. Transportation also requires the goods to be available for public use. Therefore, in-house experimentation, evaluation or preparation do not constitute bona fide shipments to satisfy the public use requirement. However, if the good is shipped to individuals or groups outside the company, e.g., sending a new drug to clinical investigators, this may constitute transportation use in commerce.
The USPTO may allow businesses distributing promotional gifts, free services, or free samples a registration of their trademark. However, any giveaways will usually need to be connected to selling the good or service in the future. Additionally, they may allow goods transported for a sale presentation to potential customers to qualify as use in commerce. Typically, any imported or exported goods will meet the use in commerce requirement. No matter how the goods are transported or what type of goods they are, the mark owner must authorize any transportation through interstate commerce.
An intent-to-use (ITU) trademark application under Section 1(b) of the Lanham Act allows an entity to apply for trademark registration before it has actually begun using the trademark in commerce. An ITU application serves specific purposes and has distinct requirements.
An ITU application is a strategic tool for securing trademark rights in the United States and requires careful planning and timely action to move from an intent-to-use basis to actual use in commerce to achieve registration.
A trademark must be used in at least one commercial transaction in order to generate trademark rights and justify a federal registration for the trademark. This requires the good or service to be available to the public and exist at the time of sale. Advertising alone will usually not meet the use in commerce requirement. An online website must have the capability of selling the good or service on the webpage. Any transportation of a good or service must be for the purpose of selling the product and the goods and services must be provided in connection with the trademark. However, a business or entrepreneur may get some early protection of a trademark by filing an ITU application prior to using the trademark in commerce, if they have a bona fide intent to use the mark in commerce.
© Sierra IP Law, PC – Patents, Trademarks, and Copyrights 2022. The information provided herein is not intended to be legal advice, but merely conveys general information that may be beneficial to the legal professional community, and should not be viewed as a substitute for legal consultation in a particular case.
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