It is sometimes possible to get a refund from the USPTO where it collects fees for services that are eventually not required or not performed. Unfortunately this does not seem to include refunds of International Search fees for PCT applications.

Anyway, a Ms Karen L. Parish succeeded in diverting these refunds into her personal bank accounts in a way that the USPTO thought they were refunded to customers.

She apparently succeeded in pocketing over half a million dollars over a 15 year period before getting caught.

For more details see: http://www2.insidenova.com/isn/news/local/article/woman_sentenced_for_embezzlement/47485/

On Monday, the United States Supreme Court rejected an appeal from a group of Native Americans asking the court to cancel registration of the Washington Redskins trademark due to its derogatory nature. The court’s rejection means the Washington Redskins retain federal protection for the Redskin mark and may continue to use the name. You may recall the USPTO’s infamous decision to grant protection for the mark “Redskins” a term many feel is derogatory towards Native Americans.

* It is important to note this legal battle never affected the Washington’s ability to use the Redskin name, but instead was limited to whether the Redskins mark would retain federal trademark registration and protection.

While the case may have received its proverbial nail in the coffin, it does shed light into an often misunderstood area of trademark law.

Absolute Bar to Registration

Federal trademark law bars registration of marks comprised of immoral, deceptive, or scandalous matter. This provision of the current Lanham Act of 1946, which governs trademark law today, is a carry over from the original Trademark Act of 1905.  While the issue is addressed on a case by case basis and examples of what is and is not permissible vary greatly, in general, the Act barsmarks that are shocking to the sense of truth, decency, or propriety; disgraceful; offensive; disreputable; and give offense to the conscience or moral feelings.

According to the Trademark Manual of Examining Procedure, all examiners must provide sufficient evidence to support their decision to deny trademark registration due to immoral or scandalous matter. This evidence may come in the form of dictionary definitions, relevant articles, and even internet websites. This evidentiary standard does not exist in a vacuum, however, and is somewhat flexible. Courts have ruled the examining attorney must make this determination not in isolation, but in the context of the goods in the marketplace and in view of contemporary attitudes.

Some have criticized this evidentiary standard as too flexible and gray. There are some marks that on their face seem scandalous or immoral but have nevertheless earned federal registration. In 2007, a mark containing a derogatory term for a lesbian was approved by the USPTO after it was previously rejected. Attorneys for the applicant argued that the mark was a source of honor and pride, and not considered derogatory by a substantial portion of the gay and lesbian community. The attorneys stressed the applicant’s intent was not to disparage, discriminate, or otherwise offend the gay community through the use of the mark. Even so, the examining attorney rejected the mark stating, “we’re looking out for the sensitivities of the general public more than that of a specific applicant.” However, four years after the initial application was filed, the Trademark Trial and Appeal Board allowed registration of the mark after considerable amounts of testimony was given on the empowering nature of the questionable term contained in the trademark.

So how does one seemingly offensive mark earn protection when another is rejected?

When determining whether a mark is scandalous or immoral an examiner must consider the context of the applicable marketplace for the goods or services identified in the trademark application. In the aforementioned case, the applicant’s mark earned protection mainly because the marketplace for the goods associated with the mark was the gay community who did not find the mark disparaging. Also factoring into the decision to register the mark is the requirement for examiners to consider the nature of the mark in light of contemporary standards.

This leads me to wonder what would happen if the Washington Redskins applied for the mark in today’s society. Do you think a substantial composite of the general public find the term “Redskin” disparaging, barring it from registration?

I would love to hear your comments on this post.

This is the last installment of my occasional series about MPEP 2143.01, which will focus on 2143.01(I).  That section is entitled “Prior Art Suggestion of the Desirability of the Claimed Invention.”  Essentially, 2143.01(I) just states that the “teaching, suggestion, or motivation” test is one way to establish obviousness, and that the motivation to combine need not be expressly set forth in writing.  Unlike the other sections of MPEP 2143.01, which inform the applicant of ways to show nonobviousness, 2143.01(I) informs the examining corps about a methodology to show obviousness.  And that’s about it.

Next up, a discussion about the safe harbor that isn’t, when an applicant attempts to amend an independent claim to include the limitations of claims depending therefrom, concurrent with the filing of an appeal brief.

The Director of the U.S. Patent & Trademark Office posted his first blog post today. You can visit the blog at http://www.uspto.gov/blog/.

In an interesting development, the Director of the USPTO, Mr. David Kappos, has launched an IP blog! See http://www.uspto.gov/blog/director/entry/director_s_forum_david_kappos

I don’t think that it will become a resource on Israel IP developments and thus doubt that it will adversely affect my ratings, but I suspect it will attract a large number of blog hits.

We wish him luck.

Here is another article , “The Case for Market Based Patent Reform” pushing patent reform.  This article repeats many of the myths of those people who want to weaken our patent system.  For instance, it repeats the myth that there is a patent quality problem.  All the studies that purport to scientifically show that there is a patent quality problem have flawed methodologies.  For more information see Patent Quality Myth .  What we have in this country is a small number of large companies that have made a business out of infringing (stealing) other peoples’ patents.

Another myth this article repeats is that NPEs (Non-Practicing Entities) are a anomaly and distort the patent system.  Every company that licenses out its technology is a NPE including all our major research universities.  NPEs are practicing “division of labor” between research and production.  As Adam Smith would have pointed out this is a good thing as is a secondary market in patents.

The bigger problem in the US is the dearth of patents being issued to US based inventors.  The number of patents issued to foreigners from the US Patent Office, exceeded the number of patents issued to US inventors in 2008.  The number of patents issued to US inventors has not increased since 1998.  Not coincidentally, the median household income in the US has not increased since 1998.  The last time the US attempted to emasculate the patent system was in the 1970s, which lead to worst decade economically since the great depression.  For more information see Foreigners Receive More Patents Than US.

David Kappos, Director of the USPTO,  stated at an AIPLA meeting, “We are blowing up the quality-measuring system.”  Kappos’ stated that the system is “dysfunctional and backwards.”  For more information see the article “No Quick End to Backlog in Sight”, at JSOnline.

This is great news for inventors, and the American economy.

The word being “moot.”

One of my least favorite things about Office Action is the form sentence that states “Applicant’s arguments have been considered but are moot in view of the new ground(s) of rejection.”  More often than not, the Office Action cuts and pastes a section from a previous Office Action that necessitated the applicant argument that was supposedly considered but is now “moot.”  Then I get to cut and paste the same argument a second (or third, or fourth) time in the response.  I suppose this is “compact prosecution.”

MPEP 2143.01(II) directs that, “where the teachings of the prior art conflict, the Examiner must weigh the suggestive power of each reference.” 

This section of the MPEP describes a fact situation that does not arise often in practice, in my experience.  In the cited case, In re Young, 927 F.2d 588 (Fed. Cir. 1991), the application was rejected as obvious over a patent to Carlisle.  The applicant, Young, claimed a particular spacing of air guns in water to generate a seismic pulse.  According the USPTO and the Federal Circuit, Carlisle disclosed the same spacing for chemical explosives in order to generate a seismic pulse in water. 

Young challenged the Carlisle patent, based on a later-published article published in a peer-reviewed journal by Knudsen.  Young claimed that the experiments conducted by Knudsen discredited the usefulness of the particular spacing of Carlisle, thereby teaching away from the use of Carlisle.  The Federal Circuit held that it didn’t matter whether Knudsen contradicted Carlisle; Carlisle was still relevant “for what it disclosed in relation to the claimed invention.”  Nevertheless, “[t]he Board must consider all disclosures of the prior art…to the extent that the references are, as here, in analogous fields of endeavor and thus would have been considered by a person of ordinary skill in the field of the invention. The Board, in weighing the suggestive power of each reference, must consider the degree to which one reference might accurately discredit another.”  (emphasis added)

Turning to the substantive content of Knudsen and Carlisle, the Federal Circuit held that “Knudsen is not so credible or persuasive of a contrary teaching that it would have deterred the skilled artisan from using the teachings of Carlisle.”  The conditions of the experiments of Knudsen were different enough from the content of Carlisle, and “did not accurately test Carlisle.”  As a result, a skilled artisan would have dismissed Knudsen, not Carlisle.  And with that, the applicant’s hopes were dashed against the unforgiving shoals of 35 USC §103.

The key takeaway from In re Young that didn’t make it into the MPEP is the “credible and persuasive” test.  If you attempt to rebut a first reference with a second reference that purportedly discredits the first, you have to be sure that the second reference is “credible and persuasive.”  If so, that second reference might be sufficient to overcome the first reference. 

Even so, one has to be careful with this argument.  In this fact pattern, what you’re really arguing is that the first reference is relevant to the claims, but that a second reference would have discouraged people from utilizing the teachings of that first reference.  That argument essentially admits that the obviousness rejection would have been valid, but for the uncertainty introduced by the second reference.  For that reason – the essential admission of the relevance of the first reference – the Federal Circuit set the bar pretty high with the “credible and persuasive” test.  Even if you are successful, this argument opens the door for the Examiner to reject the claims under 102 instead, based on inherency. 

Nevertheless, MPEP 2143.01(II) may be useful in a new and/or unpredictable art where there is significant controversy about a particular aspect of the claims.  One or more references that contradict a cited reference may be produced to show that one of ordinary skill in the art would not have blinded followed the cited reference, but instead would have been just as likely to reject that cited reference and head down another path to the invention. 

Next up, I will finish out my intermittent series on MPEP 2143.01 with a discussion of MPEP 2143.01(I).

“Google’s Patent on its GOOGLE.COM Home Page”
9/13/09, Patently-O

The USPTO issued a design patent to Google for its layout of their homepage. It is not a typical patent, but a design patent. They have apparently been granting patents for screenshots and icons for years, and few of these patents have ever been found to be invalid. It is done in such a way that even if the Google logo and name were replaced, it would still be against the patent.

It is also notable that they have copyright and trademark protections on the page. This overlapping causes problems because it makes it even harder to fight any claim that may not initially seem legitimate. Design patents last for 14 years, so theirs will be good until 2023. An image of their patent can be seen by clicking the original link.

Response

As written in Free For A Fee on page 95, “In order for an invention to be patentable it must be new or novel, non-obvious, useful, and must satisfy a variety of statutory requirements.” It is also important to keep in mind that such a patent has nothing to do with functionality.

Because it is so simple, it seems hard to justify the layout of Google’s homepage as non-obvious. A big logo, with a field, two buttons, and some links underneath it seems fairly elementary. I’m not saying it isn’t a brilliant design for their business, but it just doesn’t have that much to it. While a middle schooler could not create a page with Google’s functionality, it seems as though something with a similar layout would not be that far of a stretch.

What is also worth noting is upon examining Google’s homepage from day to day, the links and text seem to change frequently. While I guess the patent doesn’t pertain to the exact words but rather the location of such, this seems to make it even more vague.

So while this doesn’t seem all that legitimate, how can Google get away with it? Obvious. Because it’s Google. As the article said, they have so many overlapping protections on the look and use of that front page that if anyone attempted anything in the same ballpark the hydraulic cylinder in their computer chair would immediately launch them into space.

The US Patent and Trademark Office (USPTO) has released a beta version of its redesigned website, and is seeking constructive feedback from users.  Why not take a few minutes to compare the current site with the proposed new site, and provide your comments and suggestions to betafeedback@uspto.gov?  Regards, — nks

Need more information?  Perhaps I can help.

http://www.nksinfoservices.com

Tuesday, September 15, 2009 2-4 p.m.  

Discover unique features that can speed up your patent search as you learn the basics of searching on databases available only at the U.S. Patent and Trademark Office (USPTO) and at Patent and Trademark Depository Libraries. Find out about keyword and U.S. patent classification searching on PubWEST. There will be limited hands-on experience. Free. No registration.

Choosing your band’s name can be an arduous task when the best ones always seem to be taken. I’m talking more to you Clap Your Hands Say Yeah, and less to you Jonas Brothers.

Bands have a tendency to choose their names without ever checking if they are already being used. While this might not be a big problem for smaller bands content on playing local bars and clubs, researching a name is exceedingly important for bands with goals towards touring, releasing music nationwide, and otherwise playing past their local bar or parent’s basement. Unfortunately, it is not uncommon for a band to be forced to pay for the right to continue the use of its name or change its name altogether.

A typical scenario goes something like this:

Polar Bear With Me, a small indie band from Iowa City, catches the attention of a record company and signs a lucrative recording contract. As the band prepares for a nationwide tour and release of its first album, an attorney for a New York-based group with the same name contacts the band and insists the group either purchase the right to use the name or otherwise cease all uses immediately. It turns out the New York band has been using their name all along the east coast for several years, and a touring indie band with the same name would cause great confusion for the east coast fans. Cash strapped and angry, the Iowa band is forced to abandon the name and choose a new one.

How could the upstart indie group have avoided losing its name to the likes of another band all the way across the country?

A Brief Lesson in Trademark Law

A trademark is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce, to identify and distinguish the goods of one provider from the goods provided by others. Like a trademark, a service mark serves to indicate the source of services as opposed to goods.  In the case of bands, names can be used as trademarks for merchandise like t-shirts, and as service marks for providing the service of entertainment.

Rights to a mark arise with continuous use of the mark in commerce. While, registration is not required, it is highly recommended for several distinct advantages:

1. Gives nationwide constructive notice of trademark owner’s claim to a mark;
2. Provides evidence of ownership of a mark, which places the burden on someone else to prove you do not own the mark; and
3. Infringement claims can be brought in federal court

Searches

The first step towards determining whether a band name is available is through a series of online searches.

USPTO Search

The USPTO has a searchable online database of all federal trademark registrations and applications. While this type of search is great for finding conflicting names, it does not include marks not registered on the federal level. Therefore, a more comprehensive and prudent search will include additional methods.

State Search

Each state has its own searchable trademark and service mark database. In Illinois you can visit the Secretary of State’s website to search trademarks for potential conflicts. Like the federal database, all names will not appear in this type of search, so don’t stop at the state level.

Internet Search

Run a Google search for a desired band name and see what comes up. Tread lightly however; if a name produces no search results it does not necessarily mean a name is available. Think of a small band who doesn’t have a web presence or whose website isn’t published at the time of a search. There are also websites devoted to archiving active and inactive band names.

Registration

Federal

After a thorough search, a band should register its name at the federal level with the United States Patent & Trademark Office to achieve the benefits discussed above. There are two scenarios where a band can file for protection. The first is for a band already making continuous use of its name in interstate commerce. This is a fancy way for saying the band must prove its name is being used in a way that reaches across state lines. Examples include advertisements that are sent to multiple states or music distributed nationally through the internet.

The second basis is for a band that has not yet used a name, but plans to do so in the future. These bands may file based on a good faith or bona fide intention to use their names in commerce. Provided there are no confusingly similar marks in the database, the name will be registered once a band can provide evidence their name is actually being used in commerce.

Technically, you can do this without an attorney but I highly suggest you find a licensed trademark attorney in your area for assistance. It’s sort of like giving yourself a haircut; you could always try to do it yourself, but if you mess up, you are definitely going to regret the consequences.

* A note on registration

Its true that trademark registration is not required for a band to earn some rights in its name. Common law rights may arise in a name that is actively used commercially. However, these rights are limited and generally restricted to a small geographic area in which the band makes use of its name. This may be fine for a small garage band, but a band that tours or releases music could run into legal problems. Federal registration is the better option here.

There is no doubt a band’s name holds intrinsic value. Taking the time to perform the necessary searches and registrations will help to alleviate future headaches and possible heartache. If you are a band looking to protect its name or want to stop another band from using your name, contact a licensed trademark and entertainment attorney in your area for assistance.

ANNANDALE, Va.–(Business Wire)–
Emantix, an enterprise productivity software company, today announced that David
Ian Forbes, Emantix founder and CEO, has been awarded United States Patent
#7,584,161, titled “Software System for Managing Information in Context.”

The new patent relates to a method for contextual interaction with information.
A key innovation in the patent is the complete reinvention of traditional
software interfaces and tool sets to deliver better user interaction and
interface usability. The system also provides novel methods for structuring and
searching metadata, text and digital media.

“This patent reinforces my ongoing commitment to honest and useful innovation,
looking at things in non-traditional but commercially viable ways,” stated Mr.
Forbes, the primary inventor on the patent. “Certainly, this patent yields
benefits from the ideas protected, but perhaps of even greater value are the
lessons learned in successfully bringing a disruptive technology to market.”

The system described in the patent is commercially available today. Mr. Forbes
is also primary inventor on two additional patents pending, both related to the
Emantix software platform.

About Emantix

Emantix (www.emantix.com) technology platform provides enterprises, search vendors and publishers with an automated, on-demand method for extracting definitions,
context and relevance from information. This provides a superior user experience
for retrieving and navigating relevant and meaningful information.

The United States Patent and Trademark Office (USPTO) has granted a patent to Google Inc. entitled “The ornamental design for a graphical user interface for a display screen of a communications terminal”. Based on the images provided, the patent, which was originally filed in March 2004, appears to relate to Google famous front-page single box interface.

On Friday August 28th, 2009 a jury in the Northern District of California found ISP/web hosts Akanoc Solutions, Inc., Managed Solutions Group, Inc. and Steven Chen liable for contributory trademark counterfeiting and awarded Plaintiff Louis Vuitton Malletier $32 Million.

This story is not only the first you will likely read on this case, but its author was the primary investigator and a witness for the Plaintiff.

I first observed this group a few years ago doing business as Managed Solutions Group (MSG) when they were popping up as a US-based web host for China-based sellers of counterfeit goods.

A couple of my luxury brand clients asked me to look into this entity and I did.  I asked a colleague who is a higher-up at a major anti-spamming organization if he had ever heard of them.  His immediate response was, “Yeah.  They are spammers.”  He later clarified stating that they had positioned themselves as bulletproof hosts for spammers for some time.  He told me they had straightened their act in that industry after the CAN-SPAM Act was passed and made it a criminal act to facilitate such activity.

Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc. et al was a bold case and a years-long battle fueled by the passion of Vuitton’s in-house legal wizard Nikolay Livadkin and outside counsel Andy Coombs and Annie Wang of J. Andrew Coombs a P.C. A brilliant case was laid out that illustrated Akanoc, MSG & Chen’s non-compliance despite diligent efforts by Vuitton.

Laughably, Akanoc admitted that they complied with the requests of big companies like eBay and Microsoft but not with smaller companies such as my client.  I don’t know which part of that statement is more moronic: The Defendant sneezing at a 100 year-old company that made $24 Billion last year (triple eBay but less than Microsoft); or that they looked a federal judge in the eye and sneezed at the rights of all companies they did not perceive to be ‘big’.

The verdict is below and many interesting stories will arise.  There are many things to learn from this.  A few of which are:

• Web hosts must not ignore the violation of anyone’s rights on their watch.
• Don’t mess with Louis Vuitton.
• Evidence produced by my office is far better than our competition and can help you win cases like this one.

For more information please contact me by phone at (972) 422-2100 or by email at rob@ipcybercrime.com.

Now, I’m going to finish my coffee.

Preempting the US Supreme Court’s review of patentable inventions (re Bilski), the USPTO deputy commissioner has issued some nifty guidelines and rather inane flow-charts demonstrating to those requiring  intellectual examination what a machine is or what a transformation is.  See Dennis Crouch’s Patently-O:

http://www.patentlyo.com/patent/2009/08/interim-guidelines-on-statutory-subject-matter.html

From my reading of the guidelines, I would say that business methods and gene sequences are out in the interim. Note, this is interpretation only.  There are no clear statements to that effect. It does seem that anything new under the sun, is no longer patentable; merely new materials, new devices and systems and new methods of transforming matter.

I am not sure what the Supreme Court will do, but I assume that they are hearing the case as they intend to do something. It is, however, not clear why the USPTO has decided to publish interim guidelines.   

For a great piece of satire on the topic by Professor Jeremy Phillips, see the IPKAT: 

http://ipkitten.blogspot.com/2009/08/another-new-uspto-test.html

Gary Locke, the U.S. Commerce Secretary, in an article in Journal Sentinel stated that the time it takes to issue patents is unacceptable.  The article also points out the problem of patent office policy forcing examiners to reject applications at unprecedented rate.  Secretary Locke also acknowledged that these problems have hurt the American economy.  This is great news for inventors.

The only potentially bad news in the article is the statement that the patent office faces severe financial problems.  This may mean higher fees in the future.  Please read the full article at http://www.jsonline.com/business/54199852.html

The Guardian is reporting on the story of Twitter’s failed bid to register the mark “tweet”. According to the article, the US Patent and Trademark office found a “likelihood of confusion” between the term and other pending applications.

“Twitter applied to the US patent and trademark office last month for ownership of the word but the request was provisionally denied on the grounds that other companies had filed for trademarks of very similar words.”

Andrew Clark in New York
guardian.co.uk

Twitter launched three years ago. It hung around for awhile, before finally getting folks the world over to share their lives in 140 character sound bites. Heck, even President Obama’s campaign team used Twitter and other social media vehicles to rally its supporters. So why, tell me, did the company only recently apply to the USPTO to own the word its made famous.

The rich and famous “tweet” from the red carpet. Professional athletes tweet from the team bus, the locker room and other places that sometimes we just don’t need to see. Before the Twitter-boom, when you said tweet, I thought of the Jackson 5 singing Rocking Robin. Now, it’s an official verb according the AP Style Guide. I wonder if the phenomenon took on a life of its own and just began rolling so fast the brains just couldn’t keep up.

As small business owners, we all get to that point. The project you’re working on suddenly spirals out of control and you’re doing all you can just to answer emails and phone calls. But if there’s a lesson in this for us all, those of us hoping to bring something into the international lexicon, I’d break it down like this.

1. Determine if your company name needs protection.
2. Visit http://www.uspto.gov/ to discern the difference between trademarks, copyrights, patents and the like.
3. Search often to see if another business or product uses your company name or product name – and how.
4. If you can afford it, consult an attorney familiar with intellectual property laws – even if only for an hour.

Protect your brand. You never know if you’ve got a new verb hiding in there somewhere.