Florida Patent Lawyer Blog

Once again the Board of Patent Appeals and Interferences (BPAI) reversed a rejection by an overzealous patent examiner who failed to adequately connect the proverbial dots between prior patents in an attempt to disqualify a patent application for approval ( Ex parte Kobayashi). As a Miami-based Patent Lawyer I constantly keep abreast of new holdings handed down by the BPAI in order to deliver up-to-the-minute defenses for my clients' patent applications.

The patent applicant in this month's Kobayashi decision invented a system for recording the progress of video game players as they achieved certain milestones in online (networked) video games. The inventor describes a system of capturing the players' demographic information for use in supplying targeted advertisements to the gamers when they return to playing a saved online game already in progress from a previous session. For instance, a gamer might achieve level five of a certain game, and then decide to pause and save the session information online. The invention would supply targeted advertisements to the gamer upon his or her return to the game - possibly based on the player's physical location, age or sex demographics, etc.

As is often the case, the patent examiner attempted to produce evidence that this invention had already been disclosed in prior patents. Here, the examiner pointed to a prior patent that describes saving the progress of a game on a local hardware storage unit (Yoshida, JP 2000-005439, Jan 11, 2000). Next the examiner produced a second invention that allows a user to actively participate in television game shows and rewards the user by printing out coupons or other "rewards" on a hardware device located in the viewer's home - there is certainly nothing "targeted" mentioned in the description of this invention either (Von Kohorn, US 6,443,840 B2, Sep 3, 2002). In essence, the examiner tried to argue that because one inventor came up with a method of saving the progress of a video game on his computer, and another inventor came up with a method of allowing a television viewer to print out coupons or other untargeted materials at their home, this obviously equated to the applicant's invention described above. This is a classic case of "hindsight reconstruction" in which the examiner attempts to connect very dissimilar references in order to bolster the conclusion that it would have been obvious to anyone practicing in the industry that this would be readily discernable based on the prior patents.

Sometimes patent examiners make ridiculous stretches of the imagination in an attempt to discredit a new invention as having already been anticipated. Just because algae has chlorophyll, and sea kelp has "bulbs" that look like acorns, doesn't mean that it's obvious that a land-based oak tree would have evolved with both characteristics and produced acorns. Of course in hindsight it might be, but hindsight is always 20-20, and this is a classic case where hindsight fails to persuade that something was "obvious".

It's an issue that comes up often. A manufacturer makes a widget and sells it to a U.S. importer, who registers the mark associated with the widget. The manufacturer later claims it owns the mark and seeks to cancel the importer's trademark registration. As a Florida Trademark Lawyer, this is a situation I've seen more than once and I'm constantly looking for the courts' and the Trademark Trial and Appeal Board's (TTAB's) take on this issue. The TTAB's recent decision on this issue in the ZYTNIA vodka case affirms the widely held stance that it's usually the registrant that wins.

As originally reported in the Property Intangible blog, strike one against the manufacturer was that it brought the cancellation action almost 11 years after the mark was registered, well after incontestablity is established. Incontestability means, of course, that there are limited bases for cancelling a registration, and incorrect ownership isn't one of them. The manufacturer therefore had to rely on fraud as its basis for cancellation, i.e., the manufacturer. The court stated:

"claims that respondent fraudulently obtained the registration by asserting that it was the owner of the mark when, in point of fact, petitioner owned the mark. Because petitioner has alleged and attempted to establish a willful withholding of ownership information by respondent when it prosecuted the underlying application that matured into the involved registration, the ownership question may be addressed, but only in the context of fraud."

(italics in original.) Fraud has to be "proven to the hilt," showing that a statement was false, the falsity was intentional, and that the false statement was material to obtaining or maintaining a registration.

There's more than one lesson to be learned here. First, ownership of the mark is not a premise for cancelling an incontestable mark. Second, fraud on the USPTO is really hard to prove, since the Bose case.

As a Florida Patent Lawyer, I keep up with recent happenings at the U.S. Patent and Trademark Office (USPTO) to stay abreast on the latest in trademark law. Recently, the difficulties encountered at the USPTO by NYC-based Foursquare, which offers a location-based social networking website, has come to light.

First off, the trademark application for the company's main mark - FOURSQUARE - has been rejected because an improper specimen was submitted (see trademark application number 77956808). Apparently the attorney for Foursquare submitted an advertisement for the web site and not an actual web page where the applied-for services are rendered. This is a rookie mistake. Serious practitioners don't screw up the specimen requirement. The real question is why didn't Foursquare, which is valuated at $50 million and has 3 million unique users, employ a heavy weight trademark attorney to handle its main mark?

Second, the company's trademark application for CHECK IN (see trademark application no. 7956822) has been refused multiple times on the grounds that it's informational and/or descriptive. In the technology world, there is no hotter term than "check in" right now, especially in light of the fact that Facebook is entering into the location space with Places.While it seems likely that they weren't the first to use it, Foursquare made it ubiquitous among the location-based services. Still, it's a rather descriptive term and it was another rookie mistake to submit a 1(a) use-based application. They should have gone the 2(f) acquired distinctiveness route - they'd probably have a trademark registration by now. Instead, they took the 1(a) route and now there's a Letter of Protest on the record, which will only hurt their case moving forward. Who is this attorney, anyway?

Third, the company's trademark application for FOURSQUARE CHECK IN (see trademark application no. 77956817 ) has been refused for the same reasons as above - it's informational and/or descriptive.

The moral of the story here is that trademark prosecution can be complicated and subtle. Companies with highly-valued trademark assets should hire a specialist that knows his way around trademark law to handle their company jewels, such as an attorney that is Board Certified in Intellectual Property Law.

The Trademark Trial and Appeal Board (TTAB) has issued another decision highlighting the "heavy burden" in proving fraud on the USPTO during prosecution of a trademark application (Ex Parte Metal Gear). As a Florida Trademark Attorney, I constantly monitor TTAB decisions for golden nuggets that help me prosecute my client's rights at the USPTO. The holding in this case illustrates how a "fraud on the USPTO" claim can and cannot be won.

The Court in In re Bose Corp., 476 F.3d 1331, 91 USPQ2d 1938, 1939 (Fed. Cir. 2009), set out the relevant standard for proving fraud. The TTAB stated in the Metal Gear decision: "To prove its claim of fraud, opposer would need to prove "to the hilt" with "clear and convincing evidence" that applicant knowingly" made a "false, material misrepresentation of fact" regarding the ownership of the relevant mark." In the Bose decision, the Court emphasized that proving falsity was insufficient. Citing earlier precedent, the Court noted, "absent the requisite intent to mislead the PTO, even a material misrepresentation would not qualify as fraud under the Lanham Act warranting cancellation." Id. at 1940, citing King Auto., Inc. v. Speedy Muffler King, Inc., 667 F.2d 1008, 1011 n.4, 212 USPQ 801 (CCPA 1981).

The TTAB went on to state: "Even if applicant's witness is incorrect in his belief that applicant owns the mark, however, opposer has not carried its heavy burden of proving the "subjective intent to deceive," which, the Court in Bose noted, "however difficult it may be to prove, is an indispensable element in the analysis." Id. at 1941, citing Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1366, 88 USPQ2d 1001 (Fed. Cir. 2008). Accordingly, since we find that opposer has not proven "to the hilt" with "clear and convincing evidence," the "subjective intent" of applicant "to deceive" the USPTO by falsely claiming ownership in the METAL GEAR mark, the claim of fraud fails."

The lesson here is that prosecuting a "fraud on the USPTO" claim is super difficult. If you can't get the registrant to admit under oath that he intended to deceive the USPTO, and you don't have a smoking gun document, the fraud claim will lose.

Today the Board of Patent Appeals and Interferences (BPAI) issued a decision citing the proper use of the commercial success argument (Ex Parte Buttercup Legacy). As a Miami Patent Attorney I constantly stay up to date on new holdings that strengthen my knowledge of the arguments I use to bolster my clients' positions in pursuing a patent. The holding in this case illustrates the proper use of the commercial success argument, wherein an Applicant cites the success of his product in the market in order to support his argument that his invention is patentably distinct.

The BPAI stated that "Appellant's arguments regarding commercial success are not persuasive." Appellant claims were not rejected under 35 U.S.C. § 103(a) but rather under 35 U.S.C. §102. "Arguments directed to secondary considerations are not relevant to a rejection under 35 U.S.C. §102. See Cohesive Technologies Inc. v. Waters Corp., 543 F.3d 1351, 1364 (Fed. Cir. 2008).

On this issue, MPEP §1504.03 states: Once a prima facie case of obviousness has been established, the burden shifts to the applicant to rebut it, if possible, with objective evidence of nonobviousness. Examples of secondary considerations are commercial success, expert testimony and copying of the design by others.

The moral of the story is that you should save your commercial success arguments for your 35 U.S.C. § 103(a) rejections because they don't work for 35 U.S.C. §102 rejections.

The Board of Patent Appeals and Interferences (BPAI) recently handed down an influential decision when it reversed an obviousness-type rejection (Ex Parte McManamy, Appeal 2009-008781) entered by a patent examiner under 35 U.S.C. § 103(a). The 103(a) obviousness rejection statute indicates that a patent may not be obtained if it would have been obvious to someone practicing ordinary skill in the "art" at the time of the invention. The wording of the statute clearly leaves room for subjective interpretation, and as a Miami-based Patent Attorney I constantly stay abreast of new holdings that can strengthen my clients' positions in pursuing a patent application. The holding in this case illustrates the importance of attacking a 103(a) rejection from several different angles to show why the patent examiner did not meet the burden of proof in issuing an obviousness rejection.

In Ex Parte McManamy, the appellants (patent applicants) claimed an invention for a composite mattress constructed with a clear polymeric covering specifically designed for use in confinement facilities to help prevent concealment of contraband. The patent application further describes in detail an advanced polymeric material that is flame retardant, anti-microbial, and resistant to fluids and UV light to be used for the covering.
A patent examiner will typically attempt to connect all aspects of an applicant's invention under review with a prior invention or inventions in an attempt to reject the patent application. If this goal can be convincingly achieved, the BPAI will uphold the rejection. Here, the patent examiner attempted to combine the claims of two different existing patents to obviate the McManamy invention.

First, the examiner pointed to a reference (Hicks, GB 772,025, April 10, 1957) where a "demonstration mattress" covered with a "transparent flexible, tear resistant material comprising sheet polyvinyl chloride covering..." was described. However, as the BPAI pointed out, the reference did not disclose actual use of the demonstration mattress as a consumer product for sleeping, citing the reference, "...it would not be wise to use the sheet polyvinyl for the surface of a mattress for normal use..." Second, the examiner cited the Karafa (US 6,351,864 B1, published March 5, 2002) reference, which disclosed mattresses to be used in correctional facilities. However, the BPAI again indicated in its analysis that Karafa never disclosed a clear plastic covering on the mattress, nor did it disclose that the mattress would be useful in preventing the concealment of contraband.

To the layperson it would appear that the Hicks and Karafa references might fully encompass McManamy, however the missing link is not simply the fact that Karafa did not disclose a clear vinyl covering for its correctional facility mattresses, but also that the Hicks demonstration mattress with the clear covering as described was not disclosed for use as bedding. The BPAI looks for a preponderance of evidence to support the supposition that someone skilled in the design of an invention would have anticipated the invention under review. Here, the evidence did not support sufficient links between the cited references to sustain a finding that the mattress described in McManamy was adequately disclosed. As icing on the cake, the BPAI also pointed out that in 1957 Hicks never could have disclosed the advanced polymeric covering described in McManamy because the technology to produce such a polymer did not exist at the time.