Florida Patent Lawyer Blog

Can anyone commence a trademark cancellation proceeding before the U.S. Patent and Trademark Office? Must you have a tie or other relation to the mark being canceled? As a Trademark Lawyer practicing in Miami, Florida, I've been asked this question more than once by a client who desires to cancel a U.S. trademark registration.

On the issue of standing to institute a cancellation proceeding, 15 U.S.C. § 1064 [Section 14 of the Trademark Act] states that a petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be filed as follows by any person who believes that he is or will be damaged, including as a result of dilution under section 43(c), by the registration of a mark on the principal register ... Further, 37 CFR § 2.111(b) states that any person who believes that he, she or it is or will be damaged by a registration may file a petition, addressed to the Trademark Trial and Appeal Board, for cancellation of the registration in whole or in part.

The term "damage," as used in Sections 13 and 14 of the Act, 15 U.S.C. §§ 1063 and 1064, concerns specifically a party's standing to file an opposition or a petition to cancel, respectively. A party may establish its standing to oppose or to petition to cancel by showing that it has a "real interest" in the case, that is, a personal interest in the outcome of the proceeding and a reasonable basis for its belief in damage. See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999) and TBMP § 309.03(b). There is no requirement that actual damage be pleaded and proved in order to establish standing or to prevail in an opposition or cancellation proceeding.See Cunningham v. Laser Golf Corp., 222 F.3d 943, 945, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000).

A real interest in the proceeding and a reasonable belief of damage may be found, for example, where plaintiff pleads (and later proves) a claim of likelihood of confusion that is not wholly without merit. See Lipton Industries, supra; Metromedia Steakhouses, Inc. v. Pondco II Inc., 28 USPQ2d 1205, 1209 (TTAB 1993). Also, a real interest in the proceeding and a reasonable belief of damage may be found if Plaintiff pleads that Plaintiff has been refused registration of its mark because of defendant's registration, or has been advised that it will be refused registration when defendant's application matures into a registration, or has a reasonable belief that registration of its application will be refused because of defendant's registration. See Cerveceria Modelo S.A. de C.V. v. R.B. Marco & Sons, Inc., 55 USPQ2d 1298, 1300 (TTAB 2000)

Interestingly, however, if Plaintiff has a bona fide intent to use the same mark for related goods, and is about to file an intent-to-use application to register the mark, and believes registration of the mark will be refused in view of respondent's registration, this satisfies the "damaged" requirement. See American Vitamin Products Inc. v. Dow Brands Inc., 22 USPQ2d 1313, 1314 (TTAB 1992).

Therefore, a party seeking to cancel a U.S. trademark registration at the U.S. Patent and Trademark Office has a variety of options available when attempting to satisfy the standing and therefore the "damaged" requirement for commencing a trademark cancellation proceeding.

Can you cancel an active U.S. Trademark Registration that has been abandoned? As a Trademark Attorney practicing in Miami, Florida, I've been asked this question more than once by a client wanting to clear the path for their own registration.

The Trademark Act provides for the cancellation of a registration if the registered mark has been abandoned. See Section 14 of the Trademark Act, 15 U.S.C. §1064. Under Section 45 of the Trademark Act, 15 U.S.C. §1127, a mark is considered abandoned when "its use has been discontinued with intent not to resume such use." The definition of abandonment is found in this provision, as follows:

A mark shall be deemed to be "abandoned" if either of the following occurs: (1) When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. "Use" of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark. ... See 15 U.S.C. §1127.

Because registrations are presumed valid under the law, the party seeking to cancel a registration on the ground of abandonment bears the burden of proof to establish the case by a preponderance of the evidence. See On-Line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000); and Cerveceria Centroamericana S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d 1307 (Fed. Cir. 1989). If petitioner makes a prima facie case of abandonment, the burden of production, i.e., going forward, then shifts to the registration holder to rebut the prima facie showing with evidence. Cerveceria v. Cerveceria, Id.

Therefore, a party seeking to cancel a U.S. trademark registration on the grounds that is has been abandoned can commence a trademark cancellation proceeding at the U.S. Patent and Trademark Office, and he bears the burden to prove abandonment by a preponderance of the evidence. Another requirement of the Plaintiff in a trademark cancellation proceeding is standing, which shall be discussed in tomorrow's blog entry.

Obtaining a U.S. trademark registration based on a foreign registration under §44(e) has its benefits, but what happens after the U.S. registration is obtained? Is the validity and/or status of the U.S. registration tied to the foreign registration? Is the foreign-based U.S. registration subject to the same provisions that apply to all other U.S. registrations? As a Florida Trademark Lawyer, I am often asked these questions by savvy clients seeking U.S. trademark protection for their foreign trademark registrations.

We all know there are benefits to filing a U.S. trademark application under §44(e) claiming priority to a foreign registration. The main benefits include not having to show use in the U.S. or having to provide a specimen. TMEP §1009 states that "Although §44 applicants must assert a bona fide intention to use the mark in commerce, §44 applicants do not have to allege use or provide specimens or dates of use prior to registration on either the Principal or Supplemental Register in an application based solely on §44. Crocker National Bank v. Canadian Imperial Bank of Commerce, 223 USPQ 909 (TTAB 1984)." That is a load off for a busy trademark attorney.

But what happens after the U.S. registration is issued? TMEP §1015 states that once issued, the United States registration issuing from a §44 application exists independent of the underlying foreign registration and is subject to all provisions of the Trademark Act that apply to all other registrations, such as affidavits of use, renewals, amendments under 15 U.S.C. §1057(e), assignments, and similar matters. 15 U.S.C. §1126(f). See Imperial Tobacco Ltd. v. Philip Morris, Inc., 899 F.2d 1575, 14 USPQ2d 1390 (Fed. Cir. 1990); Exxon Corp. v. Oxon Italia S.p.A., 219 USPQ 907 (TTAB 1982); Reynolds Televator Corp. v. Pfeffer, 173 USPQ 437 (TTAB 1972); Sinclair v. Deb Chemical Proprietaries Ltd., 137 USPQ 161 (TTAB 1963). Therefore, the validity and/or status of the U.S. registration IS NOT tied to the foreign registration and the foreign-based U.S. registration IS subject to the same provisions that apply to all other U.S. registrations. Thus, the foreign-based U.S. registration must continue to be used properly in order to avoid abandonment. Further, the U.S. registration must be renewed with the U.S. Patent and Trademark Office according to the same schedule as domestic-based U.S. registrations, in order to maintain is good standing with the Trademark Office. Further, the same rules pertaining to amendments, assignments and cancellations apply to foreign-based U.S. registration.

In summary, filing a U.S. trademark application under §44(e) claiming priority to a foreign registration affords you certain privileges during trademark prosecution. But once the U.S. registration is issued, the privileges have ended and the registration is treated like any other U.S. registration.

As a Miami Patent Attorney with an active patent prosecution docket, I feel as if I've encountered every possible patent prosecution situation out there. But I was recently faced with a situation I had not previously encountered.

At issue was my client's patent application for project management software. The Examiner at the U.S. Patent and Trademark Office called me to ask if I would agree to an Examiner's Amendment, to which I agreed. Subsequently, the Examiner issues an Examiner's Amendment and a Notice of Allowance all at once. But after reviewing the Examiner's Amendment, I noticed there were a few minor typos in the Examiner's amended claims: a space, a semi-colon and the article "a" were missing from a phrase in the claims. Previously, the only method I had used to amend claims after Allowance was to file a Continuation or a Request for Continued Examination and then clear up the claims in the new application. After doing some research in the Manual for Patent Examining Procedure (MPEP), however, I found that although the aforementioned approaches are adequate in cases where substantive amendments must be made to the claims, there is a much simpler and easier method for making minor claim amendments after Allowance.

MPEP §714.16 states that "[T]he primary examiner ... has authority to enter amendments submitted after Notice of Allowance of an application which embody merely the correction of ... formal matters in a claim without changing the scope thereof, ... without forwarding to the supervisory patent examiner for approval." MPEP §714.16 further states that "where amendments of the type noted are shown ... to require no substantial amount of additional work on the part of the Office, they may be considered and, if proper, entry may be recommended by the primary examiner."

In this case, I simply filed an Amendment After Allowance Under 37 CFR §1.312 and added a semi-colon, the word "a" and a space to certain claims, which does not change the scope of the claims and which required no substantial amount of additional work on the part of the Office. Thus, the Examiner entered my amendment and the patent was issued with no appreciable delay. This illustrates a good tool that should be placed in every patent practitioner's toolbox.

In its first decision of today, the Board of Patent Appeals and Interferences (BPAI) affirmed a Patent Examiner's 35 U.S.C. sec. 112, first paragraph, rejection of a key Sony Corp. invention. As a Patent Attorney practicing in Miami, Florida, this case was interesting because it illustrated how a 35 U.S.C. sec. 112, first paragraph, rejection can be upheld on appeal.

Sony's invention was a heat-sink apparatus for computer or camera microprocessors. At issue was the disclosure in the specification of a single glass with a substrate bonded to it. The specification also disclosed "a main body with a plurality of substrates bonded together." Representative claim 11 recited a first glass with a first substrate and a second glass with a second substrate. The Examiner rejected claim 11 under 35 U.S.C. sec. 112, first paragraph, arguing the written description did not disclose the second glass with the second substrate.

In this past Friday's decision in Ex parte Bass, the Board of Patent Appeals and Interferences (BPAI) reversed a Patent Examiner's 35 U.S.C. sec. 112, first paragraph, rejection. As a Patent Lawyer practicing in Miami, Florida, this case was interesting because it illustrated how a 35 U.S.C. sec. 112, first paragraph, rejection can be reversed on appeal.

Agilent Technologies' patent claim was directed to an apparatus for preparing an array of chemical compounds on a surface. Representative claims 1 recited a gap between two surfaces, wherein the width of the gap was sufficient for gas to flow along the gap so as to create an aerodynamic seal between the two surfaces. Appellant's specification did not describe the dimensions of the gap sufficient to create an aerodynamic seal. The Examiner's position on the 35 U.S.C. sec. 112, first paragraph, rejection was that the Appellant did not provide written descriptive support for the gap. The BPAI disagreed.

The moral of the story here is that an Examiner's 35 U.S.C. sec. 112, first paragraph, rejection must be closely reviewed to make sure that he provides an adequate showing regarding persons skilled in the art and/or evidentiary support for this argument. Further, the rejection should not rest on the argument that the specification does not explicitly define or describe an attribute, since "the disclosure as originally filed does not have to provide in haec verba support for the claimed subject matter at issue."

Yesterday, the Board of Patent Appeals and Interferences (BPAI) affirmed a Patent Examiner's anticipation rejection, citing the Applicant's attempt to claim a new benefit of an old process. As a Miami Patent Attorney that handles anticipation rejections on a weekly basis, Ex parte Satoshi Matsubara, et al. is an interesting case because it illustrates the law surrounding the concepts of inherency and claiming a new use or benefit of a prior art process.

At issue were claims involving a therapeutic method for improving bone density of a human or animal having decreased bone density by administering fermented soy milk. The Patent Examiner rejected representative independent claim 17 under 35 U.S.C. §102(b) as being anticipated by an academic paper by Kikuchi-Hayakawa. The Examiner found that Kikuchi-Hayakawa disclosed administering fermented soy milk to rats with removed ovaries. Since ovariectomized rats have decreased bone densities, and soy milk increases bone density in rats, the Examiner concluded that Kikuchi-Hayakawa disclosed administering fermented soy milk to rats to improve their decreased bone densities. The Appellants, however, argued the rats of Kikuchi-Hayakawa were not selected for their decreased bone densities but for other reasons (to determine the effects of soy milk on lipid metabolism), and therefore Kikuchi-Hayakawa did not disclose every element of claim 17.

For patent practitioners, the educational aspect of this case rests in the classification of a claimed invention as novel, as opposed to an old process. Beware of an Examiner's determination that your claimed process is old or well-known. Further, be wary of an Examiner's finding that your claimed new benefit naturally flows from the allegedly old process. These findings, if not properly rebutted, will hurt your chances of a reversal on appeal.

As a Miami Patent Lawyer specializing in intellectual property issues, I frequently host clients who tell me their patent is being infringed upon. What kinds of letters can I send out to infringers without worrying about a declaratory judgment action in their forum? The Federal Circuit chimed in on this issue this past December and it has (at least somewhat) changed the rules of the game.

In 2008, photographer Mike Hipple took a photo of a famous sculpture by Jack Mackie in Seattle. The photo at issue (see it here) was sold to a stock photo company subsequently used in its for-pay catalog. As a Miami Copyright Attorney, this case interests me because it brings up subtle copyright issues.

This not an issue of direct copyright infringement. The copyright in the sculpture is directed to a 3D work of art. The photographer did not make a 3D copy of the sculpture. Instead, the photographer made a 2D derivative work of the sculpture. Thus, if there is any infringement it is infringement of the right to make derivative works.

Last week, the Board of Patent Appeals and Interferences (BPAI) reversed a Patent Examiner on the issues of hindsight and design choice. As a Florida Patent Attorney with a great interest in the case law surrounding patent prosecution, I enjoyed reading this case because the BPAI used legal citations not familiar to me.

On the issue of hindsight, the BPAI decision stated: "Examiner has the initial duty of supplying the requisite factual basis and may not, because of doubts that the invention is patentable, resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in the factual basis. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967)."

The BPAI had this to say about the Examiner's reasoning for his 35 U.S.C. 103(a) rejection: "the Examiner does not cogently explain how to modify Weisz's return air inlet with Lough's teaching of an adjustable damper... it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does. KSR Int'l., 550 U.S. at 418 ... the conclusion of obviousness appears born from the use of impermissible hindsight reconstruction in view of Appellants' Specification.""

The practice pointer taught by the above is twofold. First, be wary of an Examiner who does not adequately explain how to modify one reference with the teaching of another. Second, note when an Examiner does not identify a reason that would have prompted a POSITA to combine two references. Both of these Examiner errors are grounds for a reversal of a 35 U.S.C. 103(a) rejection.

With regard to the Examiner's faulty finding of "obvious design choice," the BPAI said this: "To support a conclusion that a claim is directed to obvious subject matter... an Examiner must present a "convincing line of reasoning' as to why one of ordinary skill in the art would have found the claimed invention to have been obvious. Ex parte Clapp, 227 USPQ 972, 973 (BPAI 1985). When determining whether a rejection based on design choice is appropriate, the Examiner must review the Specification and ascertain if the limitation in question is disclosed as serving any advantage or particular purpose, or whether it solves a stated problem. The Examiner also should explain the reasoning used to determine that the prior art would have performed equally as well as the claimed invention. These two steps help present the aforementioned "convincing line of reasoning." Ex parte Clapp, 227 USPQ at 973."

Again, the practice pointer taught by the above is twofold. First, in a 35 U.S.C. 103(a) rejection, the Examiner must provide a "convincing line of reasoning" regarding obviousness. This convincing line of reasoning may comprise: 1) explaining how the limitation in question provides a particular advantage and 2) explaining how the prior art would have performed equally well. The failure of an Examiner to provide either or both of these elements of a "convincing line of reasoning" may provide grounds for a reversal of a 35 U.S.C. 103(a) rejection.

Yesterday, the Board of Patent Appeals and Interferences (BPAI) reversed a Patent Examiner's 35 U.S.C. sec. 102(e) anticipation rejection of a key ARM Ltd. microprocessor invention. As a Miami Patent Lawyer that deals with the BPAI frequently, this case is instructive because it illustrates the patent law related to functional equivalents in a hardware device.

At issue in ARM's claimed invention was the existence of a memory management unit (i.e., a physical hardware component referred to as an MMU), which the Examiner asserted was found in the cited patent. The BPAI decision disagreed and stated: "the Examiner paints with a broad brush by reading the claimed memory management unit on nebulous "logic/circuitry that manages indirect and direct access to the Graphics Memory 116" without clearly specifying in the record which particular component in [the cited patent] corresponds to Appellants' claimed memory management unit." The BPAI went on to state: "since the Examiner does not identify the specific hardware component in [the cited patent] that corresponds to the claimed MMU, the Examiner appears to be relying on certain memory management functions performed by various software components in [the cited patent] ... However, we note that functional equivalence is not enough to show anticipation of a structural component (such as the claimed memory management unit). See In re Ruskin, 347 F.2d 843, 846 (CCPA 1965) ("the functional equivalent is not enough to be a full anticipation of the specific device claimed by appellant."). Consequently, the Examiner's 35 U.S.C. sec. 102(e) anticipation rejection was reversed.

In this case, the Examiner erred in asserting that the functions described in the cited patent were equivalent to a claimed structural component. This legally erroneous finding of "functional equivalence" is something I see often in dealing with Patent Examiners. It is all too common for a Patent Examiner to point to "nebulous" logic in a cited patent and assert that it's equivalent to a structural component in your claim. When pressed to point out exactly which component in the cited patent corresponds to the claimed component, I rarely get a straight answer. This BPAI decision is important and a precedent I will surely cite in the future.

The practice pointer illustrated in this case is the following: when prosecuting computer hardware or general mechanical claims, for each claimed structural component, the Patent Examiner must point to a specific component in the cited art. It is not enough for the Examiner to point to a "nebulous" or general area of the cited art and claim that it performs the same function as the claimed component. That would be painting with a "broad brush." The Examiner must point to a specific component in the prior art AND it must perform the same function as the claimed component. If the Examiner fails to do this, you have a good premise for reversing on appeal to the BPAI.

In its first decision of today, the Board of Patent Appeals and Interferences (BPAI) reversed a Patent Examiner's 35 U.S.C. sec. 103(a) obviousness rejection of a key Hewlett-Packard software invention, but came up with a new rejection of its own - a 35 U.S.C. sec. 101 non-statutory subject matter rejection. As a Miami Patent Attorney that deals with Patent Office rejections related to software patents and software inventions almost daily, this case is instructive because it illustrates the case law on non-statutory subject matter and the process of dealing with the BPAI.

The HP invention involved a software process for credentialed authorization requests. HP appealed an Examiner's 35 U.S.C. sec. 103(a) obviousness rejection, which the BPAI reversed. But in an interesting move, the BPAI decision sua sponte noted the nature of the software claims and instituted a 35 U.S.C. sec. 101 non-statutory subject matter rejection.The BPAI started off by reciting case law: a "signal" cannot be patentable subject matter because it is not within any of the four categories. In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007) and a claim that recites no more than software, logic or a data structure (i.e., an abstraction) does not fall within any statutory category. In re Warmerdan, 33 F.3d 1354 (Fed. Cir. 1994).

With regard to the Applicant's claims, the BPAI stated: "The services of the claims on appeal are logical constructs or software abstractions. System claims, independent claims 21 and 26, are directed to software-based systems per se. Additionally, the computer readable mediums recited in the preamble of independent claims 12 and 14 on appeal are directed toward signal-based embodiments when construed in light of the Specification as filed. The earlier-noted case law prohibits patent protection for these claimed features." Therefore, because the Applicant's claims recited pure logical steps with no explicit tie to a machine, and because the specification stated that a computer readable medium could be a signal, the Applicant's claims were non-statutory subject matter under 35 U.S.C. sec. 101. (It is interesting that the BPAI did not cite the Bilski case. Perhaps because the decision may be overturned by the Supreme Court this year?)

The first important practice pointer illustrated here is the importance of writing software patent claims that comprise statutory subject matter under 35 U.S.C. sec. 101. Fellow blogger Karen Hazzah writes an excellent patent prosecution blog that recently highlighted a USPTO memo directed towards helping patent practitioners write computer readable medium claims that survive 35 U.S.C. sec. 101 scrutiny. All patent attorneys that write software patent claims should read that memo.

The second practice pointer illustrated here is the ability of the BPAI to sua sponte come up with new grounds of rejection. It is not true that just because the Examiner missed a rejection, it can no longer be asserted against you (as in federal litigation). The BPAI has the power to bring up any rejection that the Examiner may have missed, even if it is the first time it's being used against you. The BPAI has always had this power, but in the last couple of years, I typically only see them do this for 35 U.S.C. sec. 101 non-statutory subject matter rejection. Thus, when dealing with an appeal to the BPAI, especially one involving software patent claims, the smart patent attorney will double check his claims to make sure there is no chance of such a sua sponte rejection. If the possibility exists, you may want to file an RCE to clean up the claims before going to appeal.

Continue reading "Patent Office Rejects Key HP Invention on Appeal" »

Today the Board of Patent Appeals and Interferences (BPAI) of the U.S. Patent and Trademark Office reversed a Patent Examiner's 35 U.S.C. sec. 103(a) obviousness rejection because the Examiner did not adequately explain why the ordinary artisan would have combined the cited prior art references. As a practicing Miami Patent Lawyer who responds to 35 U.S.C. sec. 103(a) obviousness rejections weekly, today's decision of the BPAI is instructive because it illustrates a method for attacking obviousness rejections.

The patent application at issue belongs to International Specialty Products, a global supplier of pharmaceutical products. The Patent Examiner found multiple prior art references and combined them into a 35 U.S.C. sec. 103(a) obviousness rejection. As is typical for the Patent Office these days, the Examiner's reason for combining the references started with a boiler plate sentence - "one of ordinary skill in the art at the time the invention was made could have been motivated to do so" - and ended with a terse phrase formulated by the Examiner - "in order to improve stability." And other than those 5 words, that's all the Examiner wrote about the reasons for combining - no elaboration, no citation to the references, and no further explanation. As a patent attorney with a sizable patent prosecution docket, this is all too familiar to me. Of course, the Appellant argued the Examiner did not adequately explain why the references should be combined.

The BPAI stated: "A rejection for obviousness must include 'articulated reasoning with some rational underpinning to support the legal conclusion.' KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), quoting In re Kahn, 441 F.3d 977 (Fed. Cir. 2006) ... The Examiner has neither identified any objective teaching in the prior art, nor referenced knowledge generally available to one of ordinary skill in the art that would have led that individual to combine ... [the two cited references] in order to improve stability. Moreover, the Examiner has not provided any reasoning why stability was a problem that needed to be solved." Thus, the BPAI reversed the Examiner's rejection.

This simple case illustrates a valuable lesson to practicing patent practitioners. When encountering a 35 U.S.C. sec. 103(a) obviousness rejection, the Examiner's reasons for combining the cited references is crucial and necessary to the viability of the rejection. The Examiner's reasoning should be scrutinized to ensure that in fact there is evidence in the cited references and/or in the art in general for supporting his reasoning. It is not enough for an Examiner to state that one of ordinary skill in the art would have combined the references in order to [insert reason here]. The Examiner should cite a passage in the cited references indicating a reason to combine and/or cite a publication or other written work illustrating that general knowledge in the art indicates a reason to combine. If the Examiner does neither in his rejection, you have a great premise for reversing his rejection.