The Ruttler Mills Blog
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.
Permalink to this entry
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:
- 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.
Permalink to this entry
Posted Monday, October 26, 2015 by Daniel Mills
The answer to this question depends on the specific circumstances. In order to understand the complexities of the circumstances, it is important to remember that the key purpose of trademarks is identify the source of the goods and avoid confusion over the source of goods. One of the main questions the USPTO considers in allowing registrations is whether there is a likelihood of confusion over the source of the goods or services.
What if the goods or services are different?
Generally speaking, if the goods and services are different enough, then there is reason to allow the same mark because the average consumer would not confuse the source of the goods. Consider the mark EZ CLEAN. There are currently 10 live registrations for this mark. The goods associated with the mark include wheel sprockets, pool cleaning chemicals, airbrushes for applying paint, anti-graffiti coating, kits for solidifying medical waste spills, and machine tools for cleaning oil and gas well drilling equipment. This wide variety of goods illustrates the point nicely. Is anyone likely to think that the EZ CLEAN mark associated with cleaning well drilling equipment is from the same company making anti-graffiti coatings - not likely.
What if the goods are the same or very similar?
Under certain circumstances a single mark can be used by two companies in the same or similar class of goods under the concept of concurrent use. There are two conditions that must be met before concurrent use will even be considered:
The use of the lawful use of the mark began before the filing date of the existing marks application.
The continued use of the mark will not result in confusion, deception, or mistake.
So the first question is who began using the mark in commerce first. If an applicant has been using a mark before the filing date of an existing trademark registration, then there may be concurrent use. If the answer is no, then there can be no concurrent use.The second question whether the continued use will cause confusion is answered by applying limitations to the use. The most common type of limitation of use is based on location or geographic region where the companies operate.
For example, consider a mark that will be familiar to many in the Northwest - THRIFTWAY. There are currently two registrations for THRIFTWAY for Grocery Store services. One is restricted to an “area comprising the state of Washington, excluding Clark county and a 30-mile radius surrounding the city of Longview Washington and a 30-mile radius surrounding the city of White Salmon, Washington.” While the other is restricted to an “area comprising the state of Oregon, the county of Clark in the state of Washington, a 30 mile radius surrounding the city of Longview, Washington and a 30 mile radius surrounding the city of White Salmon, Washington.”There are other limitations based on the mode of display or a restriction on specific goods or services but these are rare and usually part of court orders as part of a dispute settlement.
Permalink to this entry
Posted Friday, October 23, 2015 by Jim Ruttler
In a preceding post, I summarized some Patent Board decisions regarding subject matter eligibility where the examiner was reversed. Here I am exploring one of those cases in greater detail.
In application 12/033,641, the applicant appealed on a number of grounds including subject matter eligibility. The examiner had rejected the following claim as being an unpatentable abstract idea in view of the Supreme Court Alice decision.
- A method of teaching comprising:arranging a plurality of cards on a base to indicate a path of movement, wherein said base comprises a plurality of compartments, sized and shaped to receive and retain each card in place for the duration of a game after said cards have been arranged in one of a plurality of different configurations;playing a game on said base in accordance with predetermined rules; andretaining each card in place for the duration of a game;wherein a game piece is advanced along said path of movement from one of said plurality of cards arranged on said base to another of said plurality of cards arranged on said base.
The Board agreed that the claim was directed to an abstract idea because it was essentially a set of rules for playing a game. However, the Board went on to say that the test is two-part and even if the claim is directed to an abstract idea, it may nonetheless be eligible under the second part. The second part of the test is whether the language separately or in combination adds something more to the abstract idea. Interestingly, the Board revived the machine-or-transformation test via Ultramercial v. Hulu, saying that that the inclusion of structure is an important clue as to whether the claim includes something more under the second part of the test. Here, the Board pointed to the following language as structure: “wherein said base comprises a plurality of compartments, sized and shaped to receive and retain each card in place for the duration of a game”. This minimal structure was sufficient in the Board’s mind to convert the claim into patent eligible subject matter.
Accordingly, based on this decision, it would be good practice to make sure there is ample disclosure of structure in your application and include that structure in the claims.
Permalink to this entry
Posted Monday, October 12, 2015 by Jim Ruttler
The state of patent eligibility is currently in flux with recent court decisions splitting on whether methods or software implemented functionality is patent eligible. Accordingly, examiner’s have been fairly inconsistent across the board in application of Section 101 rejections.
The Patent Trial and Appeals Board within the Patent Office has been issuing opinions on eligibility matters as of late and some of these decisions can help in arguments with examiners or with drafting new patent applications.
In a decision on appeal for application 12/033,611, the Board found that “arranging a plurality of cards on a base to indicate a path of movement, wherein said base comprises a plurality of compartments, sized and shaped to receive and retain each card … playing a game on said base” was eligible because it recited a method that couldn’t be performed with a generic set of cards and table. Thus, certain new structure was recited in the claim.
The decision in 12/427,040 found that “a method of 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 … providing a deck of special team cards” similarly was eligible because the claim was not merely rules for playing a game, but was actually directed towards the act of playing the game with certain physical features.
In the decision in 11/820,364, the Board found that “providing information pertaining to the sleep position of the infant on an exterior surface of a front of infant sleep garment that is designed to be worn by the infant when sleeping” because the method included a specific physical garment feature.
In the decision in 12/286,751, the Board held that “means for/circuitry for monitoring at least one health attribute of an individual during an artificial sensory experience, means for/circuitry for associating a characteristic of the artificial sensory experience with the at least one health attribute of the individual, and means for/circuitry for modifying at least one of a bioactive agent or the artificial sensory experience at least partly based on associating a characteristic of the artificial sensory experience with the at least one health attribute of the individual” was eligible because the claims recited specific structure - means and circuitry.
Thus, inclusion of specific hardware/structure in the claims may help overcome rejections with the Board. Specific types of garments, circuits, housings, etc. all may help.
To be continued.
Permalink to this entry