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2015 TTAB Results Show Appeal Victories on the Rise

Posted Friday, February 5, 2016 by Daniel MIlls

Thanks to the hard work of TTAB watcher extraordinaire John L. Welch, we have some idea that 2015 was a better year for appeals at the TTAB when it comes to Section 2(d) refusals for likelihood-of-confusion and Section 2(e)(1) refusals for merely descriptive. You can find his post here.

Mr. Welch determined that of the 223 Section 2(d) refusals, 188 were affirmed and 35 reversed, making the reversal rate 15%. While that sounds paltry, that is a 36% increase over last year’s rate of 11%. Of the 97 Section 2(e)(1) refusals, 84 were affirmed and 13 reversed, making the reversal rate 14%.

The increase in reversals brings 2015 back in to the historical average of the last few years. The outcome of an appeal will be based on the set of facts, circumstance, and the relative strength of the marks in question. One way to interpret these numbers is to say that the examining attorneys at the PTO get it right a good majority of the time. Another way to look at it is that the TTAB and the PTO read from the same play book, and it is no surprise that they agree so often. As with any statistical presentation, the numbers don’t account for a lot of factors. Primarily, the aspect of picking the right fight cannot be quantified. Some appeals should never be filed and many good battles are never waged, so the percentage in any year could be affected by the “quality” of the cases.

I come out on the side that says the examiners do a good job. I believe this mainly out of personal experience and that fact the rules, procedures, decisions, and TMEP, are all available for practitioners to learn from, so we all have access to the same playbook. I work hard to counsel clients honestly about the strength of their marks, and their chances of success in overcoming refusals. Picking the right mark makes picking the right battle easier and helps me keep my personal reversal rate much better than average.

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Pine Tree Crushes Palm Tree in Battle of Car Air Fresheners

Posted Thursday, December 17, 2015 by Daniel Mills

On the day I posted about the lawsuit involving Car-Freshener and rival Exotica Freshener Company over trademark infringement, the jury in the case found that the Exotica’s palm tree design, packaging, and colors infringed on Car-Freshener’s much more familiar pine tree shaped product. The story of the verdict in the New York Times includes an image that compares the two products.

When I look at the image, I can see why the jury found that the trade dress was confusingly similar. Trade Dress used to refer only to a products packaging, but over the years has been extended to protect a product’s design. In this case, the jury found that both the packaging and the product design were similar enough to cause confusion as to the source of goods. In other words, the average consumer might believe that the palm tree air freshener was made by the same company that made the pine tree version.

The legal principle behind trade dress is the perfect subject for a future post.

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Intellectual Property Theft Alleged at 160 MPH

Posted Tuesday, December 8, 2015 by Daniel Mills

In a sport that costs tens of millions of dollars to compete and the results are decided by thousandths of a second, any advantage can mean significant rewards. The 2015 F1 season has just ended and it saw Ferrari make significant improvements over its 2014 campaign. Ferrari still finished a distant 2nd to Mercedes in the Contstructor’s points, but that was an big improvement over the 4th place finish in 2014 behind Mercedes, Red Bull, and Williams.

Bloomberg Business reports today that a former Team Leader at Mercedes AMG High Performance Powertrains decided to leave Mercedes at the end of this season and join Ferrari. According to the report, recently released filing documents allege that Benjamin Hoyle informed Mercedes in May that he intended to leave in May. Mercedes got word that Mr. Hoyle intended to join Ferrari at the end of the year so they reassigned him to other work unrelated to Formula 1, removed data from his laptop, and gave him a new email address.

The report states that Mr. Hoyle was “found looking at race reports and took confidential data.” Furthermore he deleted files in an attempt to cover it up. Ferrari stated that Mr. Hoyle is not joining the company any time soon.

I’ve written in this blog several articles about Trade Secrets and the lengths that companies must go to protect themselves from theft. Access to data is so critical to an organizations success, but that same access provides a major exposure to loss of property that took millions to develop, and can cost millions more in damages in the hands of a competitor.

So if the hyper competitive and secretive world of Formula 1 can have such thefts, what is the average small to mid-size business to do to prevent such losses. To start, proper network monitoring of access and file transfers is essential. Also controlling employee hardware, phones, thumbs drives, etc. is also necessary. Finally, having the right policies in place in your employee handbook and taking a zero tolerance policy to any breach helps establish a culture that can minimize the exposure. But as with all things, there is seldom a way to prevent a violation of trust.

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This Trademark Dispute has that New Car Smell

Posted Thursday, November 19, 2015 by Daniel Mills

I am a bit of a car nut. I’ve always liked cars; I follow Formula 1 and Indy Car pretty closely; I like to change my own oil; and I work on my own cars to the extent that I can. I especially like detailing my car and my wife’s car. It is very satisfying to take a muddy, coffee stained, dog hair covered interior and restore it to freshness. Even if it only lasts for a week or so until the kids mess it up again. Although my formula for having a fresh smelling car is to simply keep it clean, millions upon millions of people like to add an air freshener to the mix.

If I say car air freshener, how many of you instantly think of the pine tree shaped variety produced by a company called Car-Freshener Corporation? As Andy Newman pointed out in his article in the New York Times, the product is “familiar to anyone who has ever ridden in a cab or wanted their car to smell like one.”

This week, Car-Freshener is suing rival Exotica Freshener Company for trademark infringement over a competing line of products. At the heart of the lawsuit is Car-Freshener’s claim that the public would be confused by Exotica’s palm tree shaped product thinking that it was made by Car-Freshener. To support its claim, Car-Freshener points to the fact that Exotica uses the exact same names, colors, and packaging for its products.For example, The orange tree is coconut, the light blue one is baby powder, the pink one is “morning Fresh” which are the exact same as Car-Freshener’s.

Showing similarities is one thing, proving confusion is quite another. It can be tedious and expensive to conduct the types of consumer research that can support confusion claims. There does not have to be actual confusion under the law, but it sure helps a jury decide in favor of it when there is. When I saw the two products side by side, my first impression was that they were from the same company and that the palm tree was a line extension for people who didn’t want the pine tree. Can Car-Freshener convince enough people on the jury of the same thing?

I will post a follow up to examine the legal issues that decide this case after the verdict is decided. Until then, if you want your car to smell good, clean it one in a while, don’t eat in it, and keep kids from riding in it. If that is not possible, pick your poison: pine tree or palm tree.

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Review of Patent Board Eligibility Decision in 12/427,040

Posted Tuesday, November 10, 2015 by Jim Ruttler

In prior posts, I summarized some recent Patent Board decisions where the examiner was reversed on eligibility. This is a more detailed look at the Board’s reversal of the eligibility rejections in case 12/427,040.

In this case, the examiner rejected the following claim as being directed toward ineligible subject matter under 35 U.S.C. 101:

  1. A method for playing a card game that simulates a game of football with kibitz and side bet options, the method comprising:providing a table as a playing area comprising:a simulated football field and a simulated line of scrimmage;areas for placing a deck of playing cards;a plurality of yard markers;a first football goal and a second football goal; andindicators comprising: tabular means, numeric means, chips, numbers, markers, or game pieces for indicating bets, game information, game statistics, or combinations thereof;providing a the [sic] deck of playing cards comprising offensive play cards and defensive play cards;providing a deck of special teams cards;randomizing the deck of playing cards and the deck of special teams cards;permitting placement of at least one bet from at least one spectator;dealing a first plurality of cards from the deck of playing cards to a first player;dealing a second plurality of cards from the deck of playing cards to a second player;designating a football offense player and a football defense player;permitting selection and play of a first card by the football offense player, wherein the first card is a first offensive card or a first defensive card;indicating a first outcome with the first offensive card or the first defensive card;dealing a replacement card for the first card from the deck of playing cards to the football offense player;determining a game outcome based on the first card;positioning the simulated line of scrimmage within the simulated football field based on the game outcome;awarding winnings based on the at least one bet and the game outcome;placing, displaying, and tracking: the bets, the game information, the game statistics, or combinations thereof using the playing area and the indicators;visually displaying a progress and a status of the card game that simulates the game of football with kibitz and side bet options using the playing area and the indicators; andupdating the progress and the status of the card game that simulates the game of football with kibitz and side bet options using the playing area and the indicators.

In rendering the rejection, the examiner concluded that the claim amounted to no more than a set of rules. Based on this, the examiner found that the claim was directed toward an abstract idea.

The Board disagreed and found that the claim was not directed toward a set of rules, but was rather directed toward playing a game using a table and cards. Because of this, the Board found that the examiner had not evaluated the actual claim language for eligibility and did not satisfy the prima facie case requirements for issuing a rejection under Section 101.

While the Board did reverse the examiner’s rejections, they did no on procedural grounds and not substantive. That is, the examiner was reversed because the examiner didn’t evaluate the actual claim language, but instead made a conclusion that was based on imagined claim language. It is uncertain what the outcome would have been had the examiner conducted a thorough examination, but the lesson here is that the Board will not hesitate to reverse an examiner who doesn’t do his/her job.

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