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Archive for August, 2011

Do you need to submit a special drawing with your trade dress application?

When the applicant is seeking to register a specific design feature of its goods or packaging, the answer is yes.  The applicant should present a three-dimensional view of the goods or packaging showing in solid lines those feature which the applicant claims as its trade dress and the remainder of the drawing in broken dotted lines.  See In re Water Gremlin Co., 635 F.2d 841, 208 USPQ 89 (C.C.P.A. 1980); In re Famous Foods, Inc., 217 USPQ 177 (TTAB 1983); 37 C.F.R. §2.52(b)(2) and (b)(4); TMEP §§807.08 and 807.10.  In addition to these drawing requirements, a clear and concise description of the features claimed as the mark should also be included in such an application. See 37 C.F.R. §2.52(b)(4); TMEP §807.08.  The description required is similar to the description you would submit with an application for a composite mark.  However, instead of describing color placement and features of the composite mark, your description will distinguish the nonfunctional features claimed as trade dress from those features of the goods or packing to be excluded.

If you are interested in registering your trade dress on the Principle Register of the United States Patent and Trademark Office, we recommend seeking the assistance of an Intellectual Property Attorney.  We are located just outside of Downtown Los Angeles in the City of Pasadena.

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Imitation Is the Sincerest Form of Flattery

Not so, if you ask Kim Kardashian.  Kardashian has filed a suit against The Gap for an ad campaign launched by Old Navy, a subsidiary of The Gap.  Kardashian alleges, among other things, that her likeness, in the form of a celebrity “look-alike,” is being used in the ads and is likely to cause confusion in the consuming public as to an association of Kardashian with Old Navy’s products.  Kardashian has pleaded Unfair Competition under the Lanham Act, Violation of California Common Law Right of Publicity, and California Statutory Right of Publicity.  She is seeking injunctive relief and a laundry list of damages.

Using the likeness of a living person without proper consent or a “look-alike” without proper disclaimers can create serious problems.  The cost to remedy the situation may seriously outweigh any profit gained.  Should you find yourself on either end of this scenario, seek the advice of an Intellectual Property Attorney.  We are located just outside of Downtown Los Angeles in the City of Pasadena.

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Patent Litigation in Good Faith

On July 29, 2001, the Court of Appeals for the Federal Circuit issued an important decision regarding patent litigation: Eon-Net LP v. Flagstar Bancorp (Fed. Cir. 2011).  Eon-Net is a patent holding company that primarily earnings as revenue through litigation and licensing fees, rather than developing manufacturing or marketing (also known as a patent troll).   The court awarded Flagstar $489,150.48 in attorney fees and costs and $141,984.70 in sanctions against Eon-Net.  Slip  Op. at 3.  In view of this opinion, patent owners may be wondering how to enforce and license their valid patent rights without incurring liability like Eon-Net.

The court imposed sanctions under 35 U.S.C. 285, which allows sanctions to punish exceptional cases of misconduct.  Specifically, the court found that Eon-Net violated Rule 11 of the Federal Rules of Civil Procedure because “(1) the patentee brought the litigation in bad faith; and (2) the litigation is objectively baseless.”  Slip Op. at 17.

The district court noted that Eon-Net’s behavior had an “indicia of extortion”.  Slip Op. at 22.  After evaluating Eon-Net’s behavior, the court noted that Eon-Net filed over 100 lawsuits, immediately followed by offers to settle at a price far lower than the cost to defend the litigation. Slip Op. at 22.  Settlements were offered at between $25,000-$75,000 based on the annual sales of the defendant.  Slip  Op. at 22-23.  Because these settlement offers were far lower than the cost of defending a patent litigation, the great majority of defendants chose to settle.

Furthermore, the court noted that EonNet failed to engage the claim construction process in good faith because Eon-Net destroyed relevant and important documents, attempted to evade a careful analysis of the claim terms in litigation, failed to offer a construction for any disputed claim terms, lodged incomplete and  misleading extrinsic evidence with the court, and submitted declarations that contradicted earlier deposition testimony by the declarants. Slip Op. at 18-19.

The court acknowledged that patentees should be able to fit be able to defend and profit from their intellectual property.  However, the court noted that this was not a case where the claims present a close call; rather, the specification unequivocally compels the claim constructions adopted by the district court.  Slip Op. at 15-16.

Before engaging in litigation, a patentee should have a valid argument that the opposing party is infringing its patent.  The infringement argument should be based on a good-faith interpretation of the claims.  If you believe your intellectual property rights are being violated, contact us if you need a patent attorney in Los Angeles to evaluate your case. Your patent attorney has the expertise to help you determine the scope of your intellectual property rights.

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Does a Notice of Abandonment mean I need to re-file my trademark application?

Short answer, not always.  A Notice of Abandonment is issued when a Trademark Applicant fails to take action by not filing a timely response to an Office Action or a Notice of Allowance.  The Notice of Abandonment triggers a two-month period wherein the Applicant can file a Petition to Revive Abandoned Application.  However, if the applicant failed to file a Statement of Use in response to the Notice of Allowance after expiration of the fifth extension (or 36 months from the date of the Notice of Allowance), the Applicant cannot revive the application and must re-file.  The Trademark Electronic System (TEAS) will alert the Applicant upon entry of the U.S. Serial Number at the time of filing the petition.

There are two types of Petitions to Revive:

  1. A Petition to Revive Abandoned Application – Failure to Respond Timely to Office Action.  This Petition must have an accompanying Office Action Response addressing all issues raised in the Office Action.
  2. A Petition to Revive Abandoned Application – Failure to File Timely Statement of Use Or Extension Request.  This Petition is necessary when an Applicant has failed to respond to a Notice of Allowance received in connection with an Intent To Use application. The Applicant will have the option of filing a Statement of Use or, if the Applicant has any of the 5 allotted extension remaining and the Petition not is being filed beyond 30 months from issuance of the Notice of Allowance, an Extension Request.

If you have received a Notice of Abandonment, we recommend you seek counsel from a Trademark Attorney immediately as the passage of time can reduce your chances of getting the Petition to revive granted.  Cotman IP is located in Pasadena, California just outside of Downtown Los Angeles.

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Use of the PPH Increases the Likelihood of Allowance

The USPTO’s Patent Prosecution Highway (PPH) program is an effective way to expedite your patent application and increases your chances of allowance.  The PPH is a framework in which an application whose claims have been determined to be patentable in one country’s patent office is eligible to go through an accelerated examination in another country’s patent office. Under the PCT-PPH, patent applicants can request a fast-track examination procedure in participating offices where patent examiners can make use of the work products from other offices. Over the course of the past five months, the number of requests for PPH has increased by approximately 33%, and the number of requests for PCT-PPH has increased by almost 200%. The reason for this is the chances of allowance for cases prosecuted under the PPH significantly increases. If you have an opportunity to take advantage of PPH it is generally beneficial to do so.
More information about the PPH is available here: http://www.uspto.gov/patents/init_events/pph/index.jsp
Posted in Patent Pitfalls, Patent Preparation Errors | No Comments »