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ELECTRONIC NEWSLETTER


The Abelman Firm Intellectual Property Report

August 1, 2004

Volume 3, Issue 4

Topics

Calendar (See Below)

News

Trademarks and Unfair Competition

Domain Names and Other Internet Matters

Patents

Discussions

Calendar   top

Marie Anne Mastrovito and Anthony A. Coppola, Partners, Abelman, Frayne & Schwab

August 7 - 13 ABA - ABA Annual Meeting. Atlanta, GA
September 8 - 9 LES - Technology Transfer Seminar. Philadelphia, PA.
September 8 - 10 INTA - Workshop on Electronic Filing. Various U.S. cities.
September 12 - 14 IPO - IPO Annual Meeting. Boston, MA.
September 14 - 17 MARQUES - 18th Annual Conference. Rome, Italy.
September 20 - 21 INTA - Famous Well-known Marks Forum. Brussels, Belgium
September 27 - 28 PLI - 10th Annual Institute for Intellectual Property Law. New York, NY
September 29 PLI - Preparing Patent Legal Opinions 2004. New York, NY
September 30 - October 1 ITMA - ITMA Autumn Conference. Birmingham, England, UK
October 3 - 6 INTA - Trademark Administrator Conference.
October 6 PLI - Preparing Patent Legal Opinions 2004. San Francisco, CA
October 6 - 9 FICPI - The 8th Open Forum. Venice, Italy
October 7 - 8 PLI - Patent Litigation 2004. San Francisco, CA
October 7 - 8 INTA - Trade Dress Forum. New York, NY.
October 12 - 13 PLI - Biotechnology and Pharmaceutical Law 2004 - Patents & Business Strategies. New York, NY
October 14 - 16 AIPLA - 2004 Annual Meeting. Washington, D.C.
October 14 - 15 INTA - Community Trade Marks and Community Designs Forum. San Francisco, CA.
October 17 - 21 LES - 2004 Annual Meeting. Boston, MA
October 18 - 19 PLI - Understanding the Intellectual Property License. New York, NY.
October 20 PLI - Electronic Discovery Guidance for Corporate Counsel. New York, NY
October 21-23 ECTA - 48th Council Meeting. Copenhagen, Denmark
October 25 - 26 PLI - - Patent Litigation 2004. New York, NY
October 27-28 The Center for Negotiation Strategy - Cutting Edge Negotiation Strategy for Lawyers. New York, NY
October 28-29 The Sedona Conference - 5th Annual Patent Litigation Conference. Sedona, AZ
October 30 - November 1 Seoul International Conference - Seoul International Conference on Intellectual Property & Licensing. Seoul, South Korea
November 4 - 5 The Sedona Conference - 6th Annual Antitrust Law & Litigation Conference. Sedona, AZ
November 4 - 5 PLI - Understanding the Intellectual Property License. Chicago, IL
November 8 - 9 PLI - Patent Litigation 2004. Tysons Corner, VA
November 10 - 13 INTA - INTA Leadership Meeting. Phoenix, AZ
November 15 - 16 PLI - Biotechnology and Pharmaceutical Law 2004 - Patents & Business Strategies. San Francisco, CA; Costa Mesa, CA; Beverly Hills, CA
November 15 - 16 PLI - 14th Annual Advanced Patent Prosecution Workshop: Claim Drafting and Amendment Writing. New York, NY
November 18-19 The Center for Negotiation Strategy - Cutting Edge Negotiation Strategy for Lawyers. San Francisco, CA
December 1-2 The Center for Negotiation Strategy - Cutting Edge Negotiation Strategy for Lawyers. Century City, CA
December 1 - 5 ICAAN - Year-End Meeting. Cape Town, South Africa
December 2 - 3 INTA - International Forum 2004. Prague, Czech Republic
December 13 - 14 PLI - Understanding the Intellectual Property License. San Francisco, CA; Beverly Hills, CA (via videoconference); Costa Mesa (via videoconference), CA; San Diego (via videoconference), CA; Seattle, WA (via videoconference)

2005 Events:
January 26 - 29 AIPLA - Mid-Winter Institute. Jacksonville, Florida
March 6 - 8 Helsinki Symposium - The Helsinki Symposium - The Enforcement of Intellectual Property Rights. Helsinki, Finland

ABA - American Bar Association
AIPLA - American Intellectual Property Law Association
AIPPI - Association Internationale pour la Protection de la Propriete Intellectuelle
ECTA - European Communities Trade Mark Association
FICPI - Federation Internationale des Conseils en Propriete Industrielle
ICANN - Internet Corporation for Assigned Names and Numbers
INTA - International Trademark Association
ITMA - Insititute of Trade Mark Attorneys (UK)
LES - Licensing Executives Society
MARQUES - Association of European Trade Mark Owners
PLI - Practicing Law Institute
WIPO - World Intellectual Property Organization

NEWS

Trademarks and Unfair Competition

European Community: Accession to Madrid Protocol    top

On July 1, 2004 the Council of the European Union deposited with the World Intellectual Property Office the instrument of accession of the European Community to the Madrid Protocol. The Madrid Protocol will become effective in respect of the Community on October 1, 2004.

Iraq: New Trademark Law    top

On April 26, 2004 a new trademark law came into force in Iraq. The new law amends the old 1957 law and provides for the protection of trademarks, service marks, certification marks, geographical indications, and collective marks. Multi-class applications are permissible. Please contact our firm for issues relating to trademark filings and enforcement in Iraq.

Although the trademark law in Iraq has been amended, no amendment of the power of attorney required to support trademark applications has issued. The power of attorney currently required includes a reference to compliance with the Arab Boycott of Israel. The United States prohibits U.S. entities from cooperating with the Arab Boycott (i.e., the 1977 amendments to the Export Administration Act and the Ribicoff Amendment to the 1976 Tax Reform Act). Parties seeking to protect or enforce trademarks rights in Iraq should contact our firm before proceeding.

Kyrgyzstan: Accession to Madrid Protocol   top

On March 17, 2004 Kyrgyzstan deposited its instrument of accession to the Madrid Protocol with the World Intellectual Property Office. The Madrid Protocol entered into force with respect of Kyrgyzstan on June 17, 2004. Kyrgyzstan has been a party to the Madrid Agreement since December 25, 1991.

Namibia: Accession to the Madrid Agreement and Madrid Protocol    top

On March 31, 2004 Namibia deposited its instrument of accession to the Madrid Agreement and the Madrid Protocol with the World Intellectual Property Office. The Madrid Arrangement entered into force with respect of Namibia on June 30, 2004.

Singapore: New Trademark Law   top

On July 1, 2004 a new trademark law came into force in Singapore. The new law provides an expanded definition of "trademark" to include scent and sound marks. The law also introduces the concept of dilution and provides protection for famous trademarks not registered in Singapore. Statutory damages for trademark infringement are provided.

Syria: Accession to Madrid Agreement and Madrid Protocol   top

On May 5, 2004 Syria deposited its instrument of accession to the Madrid Agreement and the Madrid Protocol with the World Intellectual Property Office. The Madrid Arrangement will enter into force with respect of Syria on August 5, 2004.

Syria is a party to the Arab Boycott of Israel. Trademark applicants seeking protection in Syria may be requested to execute documents confirming compliance with the Arab Boycott of Israel. United States laws prohibit U.S. entities from cooperating with the Arab Boycott (i.e., the 1977 amendments to the Export Administration Act and the Ribicoff Amendment to the 1976 Tax Reform Act). Parties considering filing applications or enforcing rights in Syria should contact our firm before proceeding.

Domain Names and Other Internet Matters

Italy: Restrictions on .IT Domain Names to Be Lifted   top

Effective August 2, 2004, individuals will be permitted to register as many domain names as they wish in the .IT domain space. The current policy is one domain name per person.

Patents

WHAT'S COOKING IN THE FEDERAL CIRCUIT?
PART I:
THE INVALIDITY OF A "MEAT BROWNING" PATENT IS UPHELD…
BUT ANTI-TRUST? - WHERE'S THE PROOF?   top

Anthony A. Coppola, Partner, Abelman, Frayne & Schwab

On July 12th, in Unitherm Food Systems, Inc. v. Swift-Eckrich, Inc., 2004 U.S. App. LEXIS 14274 (July 12, 2004) the U.S. Court of Appeals for the Federal Circuit upheld the Western District of Oklahoma revisited the issue of anti-trust liability arising out of fraudulent misconduct in the obtaining of a patent. It reminded litigants that despite the fraudulent procurement being a foundational finding for an anti-trust claim - all other aspects of an anti-trust claim must also be proven. However, what would normally be very good news to the accused infringer quickly was spoiled when the Court also set aside the related $18 million jury verdict.

Despite its leaving undisturbed the jury verdict that the patentee, Swift Eckrich (doing business as ConAgra), fraudulently obtained the patent-in-suit (which pertained to the browning of pre-cooked meats), knowing full well that the same process had been on sale and in public use by its rival, Unitherm Food Systems, Inc. ("Unitherm") more than one year before the application for ConAgra's patent was filed, the Federal Circuit rejected as a matter of law the view that ConAgra's fraudulent behavior stripped it of the antitrust immunity it otherwise would have had from owning a patent. Appling Tenth Circuit law on the requisite elements to establish an anti-trust violation, it held that Unitherm failed to present facts to support its proposed market definition or demonstrate antitrust injury.

In 1999, ConAgra obtained its patent which disclosed a method for browning precooked meat products. In early 2000, ConAgra wrote cease and desist letters to companies who sold equipment and processes for preparing and browning pre-cooked meats to warn them of its intention to enforce the patent. In July of that year, ConAgra sent another round of letters to its direct competitors. These letters included a blanket license agreement as a method of resolving the matter but none of the recipients accepted the license.

Jennie-O (a division of Hormel), a direct competitor to ConAgra in the precooked meat business, received ConAgra's letter. Some time earlier Jennie-O had installed equipment from Unitherm to brown meat. An investigation followed and it was determined that Unitherm had invented a process identical to the one described by ConAgra's patent as early as 1993.

In February 2001, Jennie-O and Unitherm brought a declaratory action suit against ConAgra in Oklahoma, seeking to declare ConAgra's patent invalid and unenforceable. The suit also alleged a state law claim for tortious interference with Unitherm's prospective economic relationships, and also asserted what has come to be known as a Walker Process claim, asserting that ConAgra violated the U.S. anti-trust laws.

In general, a patent is a legal monopoly. A Walker Process claim essentially provides that, if a patentee obtains its patent by fraud it cannot enjoy the limited exception to the U.S. anti-trust laws which having the patent provides. Instead the patentee must answer for its conduct under § 2 and also § 4 of the Clayton Act which provides that any person who is injured in his business by reason of anything forbidden in the antitrust laws may sue in the U.S. district courts and shall recover treble damages, costs and attorneys fees.

The district court granted Unitherm's and Jennie-O's' motion for summary judgment of invalidity and unenforceability for reasons of both prior use and prior sale pursuant to 35 U.S.C. § 102(b). The district court consequently also granted Jennie-O's motion for summary judgment of noninfringement on the grounds that ConAgra's patent was invalid and unenforceable.

At trial, $18 million was awarded in damages plus attorneys fees. ConAgra appealed, but it did not appeal the summary judgment finding of noninfringement.

On appeal, the Federal Circuit agreed that, "[t]he evidence showed that in 1993, Unitherm demonstrated and attempted to sell its process to Rocco Foods, Bilmar, Carolina Turkeys, and ConAgra," the court wrote. "These demonstrations alone proved Unitherm's prior public use of every limitation of independent Claims 1 and 20." The court also cited Unitherm's promotional videos in 1993 and 1996 that demonstrated the process later patented by ConAgra.

Moreover, even though the Federal Circuit acknowledged that "Unitherm has shown that, as a matter of Federal Circuit antitrust law, ConAgra attempted to enforce a patent that it obtained through fraud on the PTO," the Court rejected the view that without more an anti-trust claim is proven. The Court observed that Unitherm never presented any additional critical factual elements of an anti-trust claim. In particular, the Federal Circuit found that Unitherm failed to present any facts that could allow a reasonable jury to accept (i) its proposed market definition (which is required to measure the defendant's ability to lessen or destroy competition) or (ii) its demonstration of antitrust injury.


WHAT'S COOKING IN THE FEDERAL CIRCUIT?
PART II:
THE INVALIDITY OF A "MEAT BROWNING" PATENT IS UPHELD…
BUT WHAT DOES “GOLDEN BROWN” MEAN?   top

Anthony A. Coppola, Partner, Abelman, Frayne & Schwab

"Cook until golden brown." It's a phrase common to most any cookbook. But what exactly does the term "golden brown" mean? Believe it or not, the Federal Circuit recently ruled on this issue when it affirmed a district court's interpretation of several claims in a patent that contained the phrase.

The interesting aspect of the claim construction issue in this case is that it concerns the meaning of a particular color. Although, one might not suspect it to be the case, the Federal Circuit admitted that colors can indeed pose challenging construction tasks. At one level, they are commonly used terms with well-accepted plain definitions that rarely need construction. At another, they are precise scientific terms corresponding to very specific portions of the spectrum that require precise definitions and constructions.

As discussed in the earlier article appearing in this newsletter, in the case of Unitherm Food Systems, Inc. v. Swift-Eckrich, Inc., 2004 U.S. App. LEXIS 14274 (July 12, 2004), the U.S. Court of Appeals for the Federal Circuit recently upheld the Western District of Oklahoma court's decision to invalidate a cooking patent for meat browning held by Swift-Eckrich, Inc. (doing business as ConAgra Refrigerated Foods). Leaving aside the Court's decision to vacate a related $18 million antitrust verdict awarded by the jury, the Court also addressed the propriety of the district court's construction of the meaning of the term "golden brown." The particular question on appeal was whether the district court properly looked to the plain meaning of the term despite the existence of what the patentee/appellant claimed was a specific definition provided in the examples that appeared in the patent itself.

Although ConAgra, in a brief it filed opposing the plaintiffs' (Unitherm Food Systems, Inc. ("Unitherm") and Jennie-O Foods, Inc. ("Jennie-O")) motion for summary judgment of non-infringement, stressed the importance of having the district court construe all disputed claim limitations of the patent, it failed to either identify disputed claim terms or to submit specific interpretations of claim terms. Instead, ConAgra countered the plaintiffs' interpretation of the claim language "with little more than a sweeping objection." The only claim term in the patent that ConAgra disputed explicitly was "golden brown."

As there was only one term in dispute, no formal Markman hearing was held to determine the meaning of the claims and the district court provided a formal construction for only that single term. ConAgra contended (and the plaintiffs did not dispute) that "the 'golden-brown' limitation was obviously the heart of the '027 patent." The heart of the dispute over this term both in the lower court and on appeal, in turn, was whether or not the proper construction of "golden brown" flowed from the term's plain meaning. The plaintiffs argued that it did. ConAgra, on the other hand, noted that the patent's five examples all included "Hunter-Lab Color Meter" measurements to describe color, and asserted that construction according to plain meaning was therefore misplaced, and proposed a more technical definition gleaned from the examples.

The Federal Circuit noted that the district court first properly reviewed the intrinsic evidence (i.e., the patent specification, the drawings, and the prosecution history of the patent) to determine that "the '027 patentee did not act as his own 'lexicographer' and failed to specifically define the term "golden brown." Since there was no precise meaning of the term in the intrinsic evidence, the district court was found to have then correctly opted to view the term "golden brown" with its plain meaning to one of skill in the art. The district court turned to Webster's Third New International Dictionary 975 (1986) as a source of plain meaning, and formally construed "golden brown" as "a variable color averaging a strong brown that is yellower and slightly darker than gold brown, yellower and paler than average russet, and yellower and less strong than rust."

Given that claim construction, the district court next considered whether or not the Unitherm process and the patented process were the same process. The district court described the Unitherm process in detail, compared the voluminous documentary evidence describing the Unitherm process to the individual claim limitations claimed in the patent, reviewed what it characterized as undisputed evidence of prior sales and concluded that the patent "describes a process that was both on sale and in public use prior to May 11, 1997 [one year prior to the date the application for the '027 Patent was filed]…. and that the 1999 issuance of the '027 Patent was in error." Consequently, the district court granted the plaintiffs' motion for summary judgment of invalidity and unenforceability for reasons of both prior use and prior sale under 35 U.S.C. § 102(b) and also granted plaintiff's summary judgment motion for noninfringement.

On appeal, the Federal Circuit held that neither ConAgra's generalized request that the district court conduct a Markman hearing nor its insistence that there were many complex issues that lurked in various unnamed claim terms created a disputed issue of material fact sufficient to call for a reversal of the summary judgment findings. The Federal Circuit noted that the district court construed the only term that ConAgra disputed explicitly: "golden brown." The Court also stated, "[p]resumably, all other claim terms were undisputed because one of ordinary skill in the art would understand their plain meanings." The Court (citing to its decision in PSC Computer Prods., Inc. v. Foxconn Int'l, Inc., 355 F.3d 1353, 1357 (Fed. Cir. 2004) stated that it doubted that a district court is obliged to construe undisputed claim terms prior to issuing a summary judgment of invalidity. Thus, ConAgra's attempt to preserve its right to identify new "disputed" claims on appeal by requesting a generalized Markman hearing was found to be lacking.

ConAgra argued that the court should have extracted the range of Hunter-Lab Color Meter measurements from the patent's examples, and construed the term "golden brown" to include colors falling between "about" the low end and the high end of the illustrated ranges.

It has been long recognized in Federal Circuit precedent and in the precedent of its predecessor court, the Court of Customs and Patent Appeals, that dictionaries, encyclopedias and treatises are particularly useful resources to assist the court in determining the ordinary and customary meanings of claim terms. However, the intrinsic record also must be examined in every case to determine whether the presumption of ordinary and customary meaning is rebutted. This presumption will be overcome where the patentee, acting as his or her own lexicographer, has clearly set forth an explicit definition of the term different from its ordinary meaning. Further, the presumption also will be rebutted if the inventor has disavowed or disclaimed scope of coverage, by using words or expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope. Texas Digital System v. Telegenix, Inc, 308 F.3d 1193, 1202-04 (Fed. Cir. 2002).

The Federal Circuit found that the district court did not consult a dictionary prior to searching the intrinsic evidence for a definition. To the contrary, the district court first explicitly concluded that "the '027 patentee did not act as his own 'lexicographer' and failed to specifically define the term 'golden brown'" as a precursor to concluding that the proper construction of "golden brown" flowed from its plain meaning. Given that conclusion, the district court then consulted a dictionary to affix a legal definition at least somewhat more precise than an intuitive understanding of a color. The district court's approach was held to be proper, for as the Federal Circuit put it, "[judges may] rely on dictionary definitions when construing claim terms, so long as the dictionary definition does not contradict any definition found in or ascertained by a reading of the patent documents." (citing, Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584, n.6 (Fed. Cir. 1996)).

Such was found to be the case here -- the dictionary definition that the district court adopted did not contradict any definition that one of ordinary skill in the art could ascertain from the intrinsic evidence in the record. The district court's adoption of a plain meaning construction was therefore found to be presumptively correct. To overcome that presumption, ConAgra would have had to demonstrate that the intrinsic evidence provided both a clear and explicit disclaimer of the plain meaning and substituted a more specific, technical construction of "golden brown." ConAgra's request that the Court glean numeric ranges from examples was found to represent neither a clear nor explicit disavowal of the common meaning. In fact, the examples were held to be precisely what they were purported to be -- examples of Hunter-Lab Color Meter measurements falling within the commonly understood range of "golden brown." ConAgra was found to have done "little other than invite a violation of Federal Circuit precedent counseling against importing limitations into the claims. Texas Digital, 308 F.3d at 1203."

To sum up the Federal Circuit's findings, it held that the district court:

  1. followed the "recipe" for a proper claim construction to perfection;
  2. did not "mix" the order of doing anything;
  3. first "measured" all the intrinsic evidence before determining that none of it could overcome the presumption favoring plain meaning, and only after it "sifted" through the intrinsic evidence did it then turn to a dictionary to affix the plain meaning that one of ordinary skill in the art would assign to the color in question.

The district court therefore was found to have correctly construed the only disputed term according to its plain meaning as one of ordinary skill in the art would understand it, and the Federal Circuit affirmed the claim construction. Given the claim construction, the patent was properly found to be invalid and unenforceable, plaintiffs were found to not infringe the patent and ConAgra's goose was cooked -- just like grandma's turkey on Thanksgiving Day - to the perfect shade of golden brown.


Discussions

HELP! MY COMPETITOR IS USING MY TRADEMARK!   top

Stephen J. Quigley, Associate, Abelman, Frayne & Schwab

Owning a trademark grants you the exclusive right to use that word, design, logo or slogan in connection with your goods or services. But that does not mean that your mark can never be used by someone else, even a direct competitor. Trademark law recognizes the principle of "fair use" which allows the use, under certain circumstances, of another's trademark without infringing that mark. The two most prevalent types of fair use are discussed in this article.

1.- Use of Your Mark to Promote Another's Goods or Services

Using your trademark in advertising or promoting someone else's goods or services is permissible if:

  1. The trademark is used in a descriptive manner; and
  2. The trademark is descriptive of the user's own goods or services; and
  3. The use is fair and made in good faith.

An arbitrary mark such as KODAK is always immune from a fair use claim. On the other hand, one who chooses a trademark with descriptive qualities cannot exclude others from using the word or words comprising that mark in their primary descriptive and non-trademark sense. In other words, everyone has the right to use descriptive words in their ordinary descriptive meaning. For example:

  • "Style Freeze" for hair care products did not infringe the trademark STYLE for hair, skin and nail care products.
  • "The dentists' choice" for advertising toothpaste did not infringe DENTISTS CHOICE for toothbrushes.
  • "Seal It With a Kiss!" in lipstick advertising did not infringe SEALED WITH A KISS for lip gloss.
  • "A Sweet Tart of a Deal" for advertising cranberry juice did not infringe SWEETARTS for candy.
  • "Interview" as the heading for a magazine section did not infringe INTERVIEW which was the title of a magazine.
  • A sporting goods store's promotional slogan "Original Outdoor Authority" did not infringe the trademark and trade name THE SPORTS AUTHORITY for a sporting goods store.

Whether there is fair use of another's trademark depends on a number of factors:

  • Is the trademark displayed in lettering that is larger or more distinctive than most of the other lettering on the product package, advertising, promotional materials, etc.?
  • Is the trademark conspicuously set apart?
  • Is the manufacturer's name and/or a separate product trademark displayed on the package?
  • Does the trademark describe the characteristics, function or consumer appeal of the product?
  • Does the manner in which the trademark is used function as a symbol to attract public attention?

The boundaries of fair use cannot be pushed too far. Generally, if a likelihood of confusion exists, there can never be fair use. Courts will also consider whether there are other suitably descriptive words or phrases to communicate the message. Thus, the producers of Gatorade beverages lost an infringement lawsuit to the producers of Thirst-Aid beverages and were barred from further use of the slogan "Gatorade is Thirst Aid for that Deep Down Body Thirst." Other instances where fair use was not found include:

  • JU JU BITS for soft gum candy infringed JUJUBES for candy.
  • The phrase "ruffled all natural potato chips" infringed RUFFLES for potato chips.

2.- Use of Your Mark by Someone Else to Identify Your Goods or Services

In this second type of fair use, not only is the other person using your trademark, but he or she is using it as a trademark to specifically identify your goods or services. This is called "nominative fair use" and it can be perfectly legitimate provided that the use occurs without any implication of affiliation, sponsorship, or endorsement by the trademark owner. For example:

  • A newspaper promotion which invited readers to vote for their favorite member of the pop music band The New Kids on the Block did not infringe the band's trademarked name.
  • A Volkswagen repair shop was allowed to use the phrase "We repair Volkswagens" because it did not use Volkswagen's distinctive lettering style, color scheme, or the encircled VW emblem
  • An imitator of brand name fragrances was permitted to advertise its perfume as indistinguishable from CHANEL NO. 5 perfume.
  • The Diana Princess of Wales Memorial Fund could not bar the Franklin Mint from producing jewelry, plates and dolls bearing the princess's name and likeness.

To qualify as nominative fair use, all three of the following criteria must be satisfied:

  1. The product or service in question must be one not readily identifiable without use of the trademark.
  2. Only so much of the mark may be used as is reasonably necessary to identify the product or service.
  3. The user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.

In the following examples, nominative fair use was not found:

  • The owner of a golf course which recreated famous golf holes (e.g., the 14th at Pebble Beach), was ordered to remove the names of the original golf courses (Pebble Beach, Pinehurst, Harbour Town, etc.) from items such as score cards, advertising and restaurant menus because players would likely believe that the re-creations were endorsed or sponsored by the original golf courses.
  • Following the termination of a contract with Villanova University, the Villanova Alumni Foundation was barred from using "Villanova" in order to ensure that the public would not mistakenly believe that the foundation was affiliated with the university.
  • The use of a Porsche automobile in an advertisement for Liquid Glass car wax infringed the PORSCHE trademark. According to the court, "Liquid Glass has asserted no reason why the Porsche trademark or trade dress is necessary in its promotion of Liquid Glass products. While it is certainly true that to advertise a car cleaner or polish, one may wish to demonstrate its use on a automobile, nothing mandates that Liquid Glass use an automobile with a protectable trade dress, or prominently display Porsche's trademark in the ads."

Fair Use on the Internet

The Internet has added new dimensions to the fair use principle. Displaying another's mark on a web site as a link to that trademark owner's web site is acceptable. Thus, the owner of the J.K. HARRIS trademark for tax preparation services could not bar the use of this mark on the taxds.com web site. On the other hand, using another's trademark as a metatag or a search engine key word in order to appear at or near the top of a search engine's database is not fair use.

United States Trademark Practice: How a "Home" Registration Can Substitute For a Specimen of Use   top

Frank Terranella, Associate, Abelman, Frayne & Schwab

It happens quite often. A U.S. trademark application is filed on the basis of Intent to Use and then, once it is published and a Notice of Allowance is issued, an acceptable specimen cannot be found. Must the application be abandoned? Certainly not, if the applicant has a "home" registration.

What qualifies as a "home" registration? Well actually the USPTO is quite liberal on this point. Any country in which an applicant has a "bona fide and effective industrial or commercial establishment" is an applicant's home country. That means that any company can have several "home" countries and several jurisdictions from which a registration would be a valid basis for a U.S. application.

What would qualify as a "bona fide and effective industrial or commercial establishment"? Well certainly any office or other facility that regularly houses company employees would qualify. The Trademark Office says "relevant factors include the presence of production facilities, business offices and personnel." TMEP § 1002.04 The office must be run by the applicant itself, not by a parent or sister company.

So assuming the applicant has a registration in some country where it has a facility with employees, that "home" registration could be a basis for the U.S. application to register the exact same mark for goods and services contained within that "home" registration. All that is needed is a plain copy of the "home" registration along with a signed English translation (if the "home" registration is not in English).

Once we have a qualifying "home" registration, we must file a petition with the Commissioner for Trademarks in order to change the basis of the application. This can take as long as 6-9 months depending on the volume of petitions. While the petition is awaiting examination, the Intent to Use basis must be maintained. That means filing requests for extension of time to file a Statement of Use every six months. We cannot stop doing this until the Examiner has approved the change of basis to "home" registration.

The Examiner will not approve the change of basis unless the home registration matches the U.S. application in three respects: (1) the mark must be identical (almost any difference will cause a refusal); (2) the applicant must be identical (if the "home" registration has been assigned to a sister entity, the U.S. application must be assigned as well); (3) the goods and services in the U.S. application must fall within the wording used in the "home" registration.

Once the Examiner approves the "home" registration as the new basis, he or she will pass the application back to the publication and issue department for the mark to be published again. Potential opposers will get another 30-day period in which to file oppositions. If no opposition is filed, the application will be registered. Use will not have to be shown until the Section 8 filing is due in the fifth year of registration.

It's a long process and will delay registration for many months, but when you have specimen trouble, a "home" registration may be the ticket to registration.


Copyright © 2004, Abelman Frayne & Schwab. All rights reserved.
Lawabel, Abelman, L Design, P Design, S Design, T Design, W Design, and Abelman, Frayne & Schwab are trademarks of Abelman, Frayne & Schwab



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