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Federal Circuit Reaffirms That Specification Cannot Broaden Narrow Claim Language

Posted Friday, March 9, 2018 by Kyle Straughan

The Federal Circuit recently affirmed a patent drafting principle that practitioners and inventors should keep in mind. Specifically, that general disclosures in a specification along with statements that describe the included embodiments as non-limiting cannot broaden claims that were narrowly drafted and prosecuted.

Chikezie Ottah (“Ottah”), one of the inventors of U.S. Patent 7,152,840 (“Book holder”), a book holding device intended for use in vehicles, strollers, wheelchairs, etc, filed suit against Fiat Chrysler and a number of other auto manufacturers, claiming that they had infringed upon his patent. The crux of Ottah’s argument was that the book holder device could also be interpreted to include the cameras many automakers attach to their vehicles. In a previous case, the Federal Circuit had held that Ottah’s claim’s language excluded fixed mounts because of claim language reading that the device be “removably attached,” and statements made during the patent’s prosecution. They found no reason to overrule previous claim construction and ruled in the defendant’s favor. In the present case, the district court granted summary judgment of non-infringement in the defendant’s favor once more.

On appeal of the present case, the Federal Circuit upheld the district court’s grant of summary judgment on the grounds of the original Federal Circuit dismissal, but also that Ottah’s patent could not be construed to include the equivalent or be the equivalent of a camera. While the specification did include a statement that the book holder “may also be used to support such items as audio/video equipment, PDAs, or mobile phones, cameras” along with other standard language that the invention is not limited to the included embodiments, the Federal Circuit found those statements were not sufficient given the specific claim language relating to book holders.


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Second Circuit Hears Shoe Ornament Trademark Oral Arguments

Posted Monday, December 4, 2017 by Kyle Straughan

Last week the Second Circuit Court of Appeals heard oral arguments in the case of LVL XIII Brands, Inc. v. Louis Vuitton Malletier, a dispute over whether a metal band on the front of a shoe toe can be a trademark and whether it could acquire distinctiveness as a mark in a relatively short period of time.

In 2013, the then 29-year old Antonio Brown founded LVL XIII brands, a “luxury lifestyle” brand specializing in shoes and sneakers, which included a rectangular metal band on the front of the shoe toe. Upon discovering that Louis Vuitton was selling footwear with a similar metal plate adornment in 2014, LVL XIII filed suit, alleging trademark infringement among other unfair competition claims. While LVL XIII had a trade dress application pending at the time of suit, the trade dress application included “the wording ’LVL XIII’ engraved in the metal plate, and four small screws in the corners of the metal plate.” These features do not appear in the Louis Vuitton variants, and by their inclusion on the application could be considered significant to the mark. Notably, Vuitton has included metal bands on their footwear before, prior to LVL XIII’s first use.

At trial, the district court dismissed all of the claims on summary judgment, relying primarily on the circuit’s Polaroid test to find a lack of likelihood of confusion. The court found that there was extensive third-party use of metal shoe ornamentation, and that plate had not yet acquired distinctiveness on its own. Of particular concern for LVL XIII on appeal was what it described as the court’s “unprecedented and reckless ‘test’ for determining … whether a configuration of features is entitled to trademark protection: If a configuration is ‘two-dimensional,’ the district court held, it is a trademark; and if it is ‘three dimensional’ it is not.”

LVL XIII emphasized during oral argument on appeal that one of the key issues is reverse confusion, and its attorney asserted that vendors and other parties have refused to carry or associate with the products out of fear that they would be liable to suit from Louis Vuitton. LVL XIII’s attorney added that there were assumptions by parties that there must be some kind of arrangement between LVL XIII and Vuitton at play that they did not want to be entangled in.

Vuitton focused more on the viability of the plate as a trademark, arguing that the judge was not relying on the two-dimensional v. three-dimensional test, and emphasized the relatively short amount of time LVL XIII’s mark was on the market, which they claim was too short to establish secondary meaning. Vuitton’s attorney also highlighted the distinction between a product’s design, which is not protected by trademark, and a product’s packaging, or “trade dress”, which is. The district court held that the LVL XIII shoe was the former, not the latter.

While the court’s decision is pending, and it was unclear from the questioning what viewpoint they had taken, it could potentially provide interesting precedent regarding an ornamentation on a fashion design as a trademark.

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Upcoming DMCA Rules Taking Effect

Posted Wednesday, October 18, 2017 by Kyle Straughan

The Digital Millennium Copyright Act (“DMCA”) provided legal safeguards for copyright owners on the internet, is approaching the end of its agent designation grace period. Below are some of the noteworthy changes affecting service providers, a.k.a. entities “offering the transmission, routing, or providing of connections for digital online communications, between or among points specified by a user, of material of the user’s choosing, without modification to the content of the material as sent or received,” that will take effect at the end of the current year.

  1. All service providers, including those who have previously designated a copyright takedown agent using the paper process, are required to submit new designations through the electronic system by December 31, 2017. The Copyright Office ceased accepting paper designations on December 1, 2016.

  2. Service provider copyright agent designations will only be valid for three years after registered with the office. However, amending or resubmitting a current designation will begin a new three-year period.

  3. Service providers are permitted to designate agents in a variety of ways including designating a specific person, a specific job title, a division within the company, or even a third party entity. In the case of a third party however the provider risks safe harbor loss if third party fails to provide accurate information and keep up-to-date designation.

  4. A service provider is required to supply its full legal name, physical street address (not a post office box), telephone number, email address, any alternate names used by the service provider, and the name, organization, physical mail address, telephone number, and email address of its designated agent. The mailing address for the agent may be a Post Office box.

  5. Service providers must also provide any alternative names under which it is doing business “including any names that the service provider would expect members of the public to be likely to use to search the directory for the service provider’s designated agent.” The requirement to provide alternate names is not limited solely to names under which a service provider is doing business, such as a “d/b/a” name. Rather, service providers must list all alternate names that the public would be likely to use to search for the service provider’s designated agent in the directory, including all names under which the service provider is doing business, website names and addresses (i.e., URLs, such as .com or .org), software application names, and other commonly used names.

  6. Separate legal entities such as corporate parents or subsidiaries are NOT considered alternate names but each must have its own separately registered designation.

  7. Related or affiliated service providers that are separate legal entities are considered separate service providers and must have their own designation.

  8. The Office will maintain prior versions of electronic and paper designations for up to 10 years.

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Nike v. Gronk - Jumpman v. Spikeman

Daniel Mills, Trademark Attorney

Posted Friday, July 7, 2017 by Daniel Mills

Nike has filed an opposition to a trademark application for a logo by Rob Gornkowski’s business, Gronk Nation, LLC. Nike is basing it’s opposition on two factors, likelihood of confusion and dilution. The two marks are the “Jumpman” logo which is a silhouette of Michael Jordan jumping with a basketball in his hand raised overhead in the act of dunking the basketball, and Gronk’s mark is a silhouette of him with a football in his hand raised over his head in the act of spiking the football. You can find a side by side comparison of the marks here.

Does Nike have a valid argument?

In the Notice of Opposition, Nike asserts that its marks have been in continuous use since 1987, are incontestable, and they have successfully opposed several other marks similar to their Jumpman design. Let’s consider the two issues raised by Nike. First, Likelihood of confusion. Even though there is a side by side comparison for your review above, it is long established precedent that such a comparison is not the way the Trademark Trial and Appeal Bord (“TTAB”) consider that question. The TTAB determine likelihood of confusion by applying the DuPont factors as set forth in the seminal case In re E.I. DuPont DeNemours & Co. There are 13 factors:

Factor 1: The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.

Factor 2: The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use.

Factor 3: The similarity or dissimilarity of established, likely-to-continue trade channels.

Factor 4: The conditions under which and the buyers to whom sales are made, i.e. “impulse purchasing” vs. careful, sophisticated purchasing.

Factor 5: The fame of the prior mark (sales, advertising, length of use).

Factor 6: The number and nature of similar marks in use on similar goods.

Factor 7: The nature and extent of any actual confusion.

Factor 8: The length of time during, and conditions under which, there has been concurrent use without evidence of actual confusion.

Factor 9: The variety of goods on which a mark is or is not used (house mark, “family” mark, product mark).

Factor 10: The market interface between applicant and the owner of a prior mark:

Factor 11: The extent to which applicant has a right to exclude others from use of its mark on its goods.

Factor 12: The extent of potential confusion, i.e., whether de minimis or substantial.

Factor 13: Any other established fact probative of the effect of use.

There is no evidence in the record yet, but in my opinion, Nike has a strong case. In most cases, the first two factors are the most relevant and are given the most weight. Here, the logos do appear similar, and the goods are nearly identical, both of those tilt toward Nike.

The second count in the Opposition is for dilution. Dilution protection is intended to prohibit (a) the lessening of the distinctiveness of a famous mark, and (b) harm to the reputation of a famous mark. In this way, dilution law views trademarks more from a “property right” perspective, seeking to protect a mark’s owner from loss of the mark’s value and uniqueness. There are 3 key issues to be determined in dilution cases:

  1. Whether the plaintiff’s mark is famous;

  2. Whether the plaintiff’s mark became famous prior to applicant’s first use of its mark (in the case of a use-based application) or prior to the filing date of applicant’s application (in the case of an intent-to-use application); and

  3. Whether applicant’s mark is likely to cause dilution of the distinctiveness of plaintiff’s mark, either through dilution by blurring or dilution by tarnishment.

With respect to the first question, Nike states that its marks are famous. Under the Trademark Dilution Revision Act of 2006, a mark is “famous” if “it is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner.” Nike must prove this by showing evidence in the record.

Regarding the second question, the Nike mark has been used longer than Gronk has been playing football, so that is clearly in Nike’s favor.

As to the question of dilution, Nike doesn’t state whether it believes Gronk’s mark will dilute through blurring or tarnishment, but I can see the argument for blurring. From the statue, there are six factors to weigh when considering blurring:

  1. The degree of similarity between the mark or trade name and the famous mark;

  2. The degree of inherent or acquired distinctiveness of the famous mark;

  3. The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark;

  4. The degree of recognition of the famous mark;

  5. Whether the user of the mark or trade name intended to create an association with the famous mark; and

  6. Any actual association between the mark or trade name and the famous mark.

Again, there is no evidence in the record, but I think that Nike’s Dilution claim is strong. In all likelihood, this will be resolved and settled amicably as Mr. Gronkowski is a paid endorser for Nike, and a protracted battle does little good for that relationship. But is push comes to shove on this one, I think Nike would be the one not only Jumping for joy at the end, but also Spiking the ball in the end zone. Mr. Gronkowksi is a great brand and has generated a lot of money for Nike, but his contribution to the Nike fortune and legacy is a drop in the ocean compared to that of the Mr. Jordan and the Jumpman logo.

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Litigation Venue Changes

Posted Thursday, June 1, 2017 by Kyle Straughan

For the past decade, the Eastern District of Texas has been a hotbed of patent litigation, in large part due to its perception as being patent-owner friendly. However, on Monday, May 22, 2017 the Supreme Court in a unanimously issued a decision that will dramatically shift the venues of future patent litigation. The case came down to two apparently conflicting statutes. First, is 28 U. S. C. §1400(b) which states that a patent infringement action may be brought against a corporation in the judicial district where the defendant resides, interpreted in Fourco Glass Co. v. Transmirra Products Corp., 353 U. S. 222, 226 (1957) as being its place of incorporation, or where the defendant has committed acts of infringement and has a regular and established place of business. Second is 28 U. S. C. §1391(c), which states that for venue purposes a corporation shall be deemed, if a defendant, to reside in any judicial district in which it is subject to the court’s personal jurisdiction with respect to the action in question. The issue in the present case was whether the definition from §1391(c) supplanted §1400(b) and the court’s previous decisions.

The Petitioner, TC Heartland LLC, is a corporation organized and headquartered in Indiana, while the respondent, Kraft Foods Group Brands LLC, is organized under Delaware law and has a principle place of business in Illinois. Kraft sued TC for allegedly infringing its patented products, and chose the District Court for the District of Delaware as the venue. TC moved to dismiss the case or transfer to the Southern District of Indiana on the grounds of improper venue under the venue provisions in §1400(b). The lower courts disagreed and concluded that §1391(c) now supplied the proper definition of where a corporation “resides;” stating that because the District of Delaware could exercise personal jurisdiction over TC, then TC essentially resided there under §1391(c) and in turn §1400(b).

The Supreme Court reversed, finding that the more general venue statute, §1391(c), had not supplanted the patent specific venue statute, §1400(b). The court observed that Congress typically makes special note when it intends such reversal, and did not when it adopted the newest version of §1391(c) in 2011. The court also noticed that the newest provision of §1391(c) includes language stating that it does not apply when “otherwise provided by law,” in this case, by §1400(b). As a result, the court held that §1400(b) is the governing statute.

While this decision may seem innocuous at first glance, its effects will be wide ranging. The Electronic Frontier Foundation reports that in 2015 the Eastern District of Texas handled over 2500 patent suits. Following this decision, defendants will only be subject to jurisdiction there if they are incorporated in Texas or have a regular and established place of business there. However, this decision does mean that many future lawsuits will likely be brought in Delaware, where many U.S. Corporations are incorporated.

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