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The Abelman Firm Intellectual Property Report

October 1, 2004

Volume 3, Issue 5

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

October 3 - 6 INTA - Trademark Administrator Conference.
October 4 - 15 INTARoundtable Discussions - Trademark Enforcement & Pre-Litigation Strategies Roundtable (Various US Cities).
October 5 PLI - Patents in the Financial Services Industry: What you need to Know; New York, NY
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 11 - 12 WIPO - WIPO/OECD Workshop on the Use of Patent Statistics, Geneva, Switzerland.
October 12 - 13 PLI - Biotechnology and Pharmaceutical Law 2004 - Patents & Business Strategies. New York, NY
October 13 AIPPI (United States Section)Annual Meeting - Washington, DC
October 13 - 15 WIPO Interregional Intermediate Seminar on Copyright and Related Rights; Geneva, Switzerland
October 14 - 15 INTACommunity Trade Marks and Community Designs Forum, San Francisco, CA.
October 14 - 16 AIPLA - 2004 Annual Meeting. Washington, D.C.
October 17 - 21 LES - 2004 Annual Meeting. Boston, MA
October 18 - 19 PLI - Understanding the Intellectual Property License. New York, NY.
October 18 - 29 INTA Roundtable Discussions - Trademark Counterfeiting and Enforcement (Various US cities).
October 19 ITMA CTM Opposition/Revocations Formalities, Leeds, Great Britain.
October 20 PLI - Electronic Discovery Guidance for Corporate Counsel. New York, NY
October 21 - 22 PLI -10th Annual Institute for Intellectual Property Law, San Francisco, CA.
October 21-23 ECTA - 48th Council Meeting. Copenhagen, Denmark
October 25 - 26 PLI - Patent Litigation 2004. New York, NY
October 25 - 26 WIPOWorkshop for Arbitrators; Geneva, Switzerland.
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 28 - 29 WIPO - Workshop for Arbitrators; Geneva, Switzerland.
October 28 - 29 ITMA - International Trademark Conference- Management Forum; London, Great Britain.
November 2 ITMA - CTM Opposition/Revocation Formalities; London, Great Britain.
November 3 -5 AIPLA - Legal Secretaries and Administrators Conference (co-sponsored by USPTO); Washington, D.C.
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 IPO - ADR in the IP Context: What Practitioners and Clients Need to Know; Washington, D.C.
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 15 - 18 LES - Fundamentals of Intellectual Asset Management, Intermediate Intellectual Asset Management, Arlington, VA.
November 18 AIPLA - Trilateral Users Conference; Alexandria, VA.
November 18-19 The Center for Negotiation Strategy - Cutting Edge Negotiation Strategy for Lawyers. San Francisco, CA
November 29 ITMA - ITMA/CIPA Seminar: Alternate Dispute Resolution; London, Great Britain.
December 1-2 The Center for Negotiation Strategy - Cutting Edge Negotiation Strategy for Lawyers. Century City, CA
December 1-3 PLI - Fundamental of Patent Prosecution Winter 2004: A Boot Camp for Claim and Amendment Writing; San Francisco, CA.
December 1 - 5 ICAAN - Year-End Meeting. Cape Town, South Africa
December 2 - 3 INTA - Europe 2004 and Beyond - New Frontiers and Opportunities, Prague, Czech Republic
December 6 IPO-PTO Day; Washington, D.C.
December 7 IPO - Appellate and Contested Case Practice in the New Millennium: Practicing Under the New Rules; Washington, D.C.
December 8 FCBA/LAIPLALos Angeles Horizons Reception and Dinner for Practitioners and members of the Judiciary.
December 13 - 14 PLIUnderstanding the Intellectual Property License 2004 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
January 26 - 29 AIPLA - Mid-Winter Institute, Jacksonville, Florida
February 9 - 15 ABA - Midyear Meeting, Salt Lake City, Utah.
February 18 FCBA - Horizons on the West Coast; Berkeley, CA.
February 24 - 25 PLI - Navigating Trademark Practice before the PTO 2005: From Filing through TTAB Hearing; New York, NY.
March 6 - 8 Helsinki Symposium - The Helsinki Symposium - The Enforcement of Intellectual Property Rights, Helsinki, Finland
March 7 - 8 PLI - Advanced Licensing Agreements 2005; New York, NY.
March 14 IPO - Spring Meeting, Washington, DC.
March 14 - 15 PLI - Handling Intellectual Property Issues in Business Transactions 2005; New York, NY.
March 17 - 18 PLI - Advanced Licensing Agreements 2005; San Francisco, CA
March 18 NYIPLA - 83rd Annual Dinner in Honor of the Federal Judiciary; New York, NY.
March 30 - April 1 PLI - Counseling Clients in the Entertainment Industry 2005: TV, THE Computer and video Game Industry; Ethics and the Development of an Entertainment Law Practice; Film, Theater; Music Publishing, Sound Recordings (Combo Program)(may also be taken in segments); New York, NY.
April 6 - 8 ITMA - London International Meeting, London, UK.
April 13 - 15 AIPLA Legal Secretaries and Administrators Conference; Alexandria, VA.
April 21 - 22 PLI - Handling Intellectual Property Issues in Business Transactions 2005; Chicago, IL
April 25 IPO - IPO Venture Summit; Silicon Valley, CA.
April 29 - May 5 FICPI FICPI EXCO Meeting, Seoul, South Korea.
May 2 -3 PLI - Handling Intellectual Property Issues in Business Transactions 2005; San Francisco, CA.
May 14 - 18 INTA - Annual Meeting, San Diego, CA
June 8 - 11 ECTA: 24TH Annual Conference; London, Great Britain.
June 12 - 15 LES International - LES International Conference; Munich, Germany.
August 4 - 10 ABA -Annual Meeting, Chicago, IL
September 11 - 13 IPO - IPO Annual Meeting; Seattle, WA
September 13 - 16 MARQUES - MARQUES Annual Conference, Prague, Czech Republic.
September 23 -29 AIPPI - Forum and Executive Committee Meetings; Berlin, Germany.

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
FCB A - Federal Circuit Bar Association
ICANN - Internet Corporation for Assigned Names and Numbers
INTA - International Trademark Association
IPO - Intellectual Property Owners Association
ITMA - Insititute of Trade Mark Attorneys (UK)
LES - Licensing Executives Society
LAIPLA - Los Angeles Intellectual Property Law Association
MARQUES - Association of European Trade Mark Owners
NYIPLA - New York Intellectual Property Law Association
PLI - Practicing Law Institute
WIPO - World Intellectual Property Organization

NEWS

Trademarks and Unfair Competition

European Union: Accession to Madrid Protocol    top

On October 1, 2004 the European Union's accession to the Madrid Protocol becomes effective. From that date, International Registrations may be extended to designate the Community and Community marks may serve as a basis for obtaining an International Registration.

A party seeking to designate the Eurpean Community in an International Registration must specify as a second language one of the working languages of the Community Trademark Office (English, French, German, Italian and Spanish).

A party seeking to base an International Registration on a Community registration or application must be a national of a country of the European Union, or have a real and effective industrial or commercial establishment in a member state of the European Union, or be domiciled in a member state of the European Union.

Libya: US Sanctions Terminated; Filing of Trademark Applications Now Possible    top

On September 20, 2004, the President signed an executive order terminating the national emergency declared January 7, 1986 with respect to the policies and actions of the Government of Libya and terminating the sanctions imposed sanctions against Libya in response to the national emergency.

The documents required for filing in Libya are (1) a legalized power of attorney (a general power is permissible), (2) a legalized copy of the certificate of incorporation (with Arabic translation), (3) a legalized copy of a home trademark registration or a basic registration (with Arabic translation), and (4) a description of the business activities of the applicant. Note that the authority of the individual signing the power of attorney should be stated in the certificate of incorporation.

United Kingdom: Registrability of Surnames    top

In August 2000, Nichols plc sought to register as a trademark "Nichols" in relation to vending machines and food and beverage products sold by means of such machines. Registration of the mark was granted in relation to the vending machines.

Registration was refused, however, in respect of the products sold by means of the vending machines. In the Examiner's opinion, Nichols and its phonetic equivalents was a common surname in the United Kingdom, occurring over 400 times in the London Telephone Directory, and likely to be required for use by others possessing that surname in the relevant market for food and drink.

Nichols plc appealed the decision to the European Court of Justice ("ECJ") which ruled on September 16, 2004 that pursuant to the European Union Trade Mark Directive 89/104/EEC ("Directive") the distinctiveness of a mark should be assessed by reference to the products or services in respect of which registration is sought and the perception of the relevant consumers. The ECJ, held that the Directive "draws no distinction between different categories of trademark" and "the criteria for assessment of the distinctive character of trademarks constituted by a personal name are therefore the same as those applicable to the other categories of trade mark".

As a result of this decision, although it remains possible for refusals to issue against trademark applications composed soley of common surnames, an Examiner cannnot rely solely on the number of times a surname is mentioned in a telephone directory. The determining issue is how consumers perceive the mark. However common the surname may be, the Examiner must consider its distinctiveness as likely to be perceived by consumers in determing registrability.

In addition to Examination practice in the United Kingdom, the decision should impact practice in other countries in the European Union which have, to date, refused applications solely on the number appearances of a surname in local telephone directories (Sweden leaps to mind in this regard).


Domain Names and Other Internet Matters

Dominica: Registration of .dm Domain Names Possible    top

Registration of domain names in the Commonwealth of Dominica is now possible under the .dm domain space. Please contact us for more information.

Northern Mariana Islands: Registration of .mp Domain Names Possible    top

Effective October 1, 2004 it is possible to register domain names in the Commonwealth of the Northern Mariana slands under the .mp domain space. This domain name space is being marketed for mobile phones. Please contact us for further information.

Singapore: Registration of Domain Names in the .SG Domain Space Now Possible    top

The Singapore domain name registry is now accepting applications for domain names in the .SG domain space. Previously it was only possble to file for domain names in the .COM.SG domain space.

All applications filed between September 15 to October 31, 2004 will be processed simultaneously. Conflicts between identical applications will be determined according to a schedule of preferences (contact us for details). Effective January 3, 2005, applications will be processed on a first-come, first served basis.


Patents

United States - Both Words And Deeds Matter: The Federal Circuit Solidifies Patent Law Regarding Limiting Claims By Amendments    top

Anthony J. Natoli, Partner, Abelman, Frayne & Schwab

Traditional interpretation of the scope of patent claims relied primarily, if not exclusively, on the wording of the claims. Practitioners have often made an analogy of patents to real property, with a patent document and its claims being akin to a land deed, and the wording of the claims defining the "metes and bounds" of patent coverage as would the survey lines and markers listed in the land deed serve to determine the extent of the plot of land.

However, this patent-as-real-property analogy is incomplete; for, the Court of Appeals for the Federal Circuit as well as the U.S. Supreme Court have stressed, in at least four separate opinions in the past two years (Festo, Deering, Ranbaxy, and Honeywell, described infra) that it is not merely the words of the claims, but also the deeds or actions of the applicant in shaping those words which defines the extent of patent coverage.

DOCTRINE OF EQUIVALENTS IN FLUX

During the last decade, questions have been raised regarding the extent to which a patent claim can cover not just literal infringement but also equivalent or insubstantial alterations in products which would be deemed infringement under the Doctrine of Equivalents.

As set forth in Warner-Jenkinson Co. v. Hilton Davis Chemical. Co., 520 U.S. 17 (1997) and Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002), the U.S. Supreme Court stated that the addition of claim limitations creates a presumptive surrender of equivalents. For example, to address or overcome an examiner's rejection based on cited art, or merely to clarify the language of the claims to distinguish the applicant's invention from the cited art, a practitioner may amend the claims. In view of Warner-Jenkinson and Festo, the practitioner has, through his/her actions, thus presumptively surrendered a portion of the patent coverage by adding words to the claims describing what the invention is and, in turn, what the invention is not.

Therefore, to obtain allowance of claims and issuance of a patent, the practitioner must either avoid amending the claims by appealing the examiner's rejection, or accept the presumptive surrender of patent coverage by amending the claims. Appealing the rejection to clarify the basis of the rejection and the interpretation of cited art may allow the applicant to avoid adding distinguishing limitations to the claims by amendment, and therefore such appeals may be conducive to allowance of broader claims than those obtained by mere amendment without appeal.

However, since appeals of claim rejections increase the time and costs of prosecution of a patent application, amending the claims during prosecution is the most expedient and successful manner of obtaining a patent within reasonable costs and with maximum term of the granted patent.

In view of the limited reach of the Doctrine of Equivalents to find non-literal infringement of claims, under such rulings of the U.S. Supreme Court, the loss of patent coverage due to amendments is an unfortunate side effect of the examination process.

BEYOND FESTO

To rescue the Doctrine of Equivalents and retain the broadest claim coverage available, practitioners have been attempting to determine precisely what constitutes an amendment or limitation to the claims during prosecution. Post-Festo cases discussed some circumstances of amendments and their effects. The Federal Circuit opinions in Deering Precision Instruments, L.L.C. v. Vector Distribution Systems, Inc., 347 F.3d 1314 (Fed. Cir. 2003), and Ranbaxy Pharmaceuticals, Inc. v. Apotex, Inc. , 350 F.3d 1235 (Fed. Cir. 2003), held that the cancellation of a broader independent claim and the amending of dependent claims to be in independent form effected a surrender of patent coverage found in the canceled broader independent claims under the Doctrine of Equivalents.

In the most recent Federal Circuit opinion on this issue of claim amendments, Honeywell International Inc. v. Hamilton Sundstrand Corp. , 370 F.3d 1131 (Fed. Cir. 2004), the Federal Circuit repeated the holding in Deering and Ranbaxy, supra as to the surrender effect of cancellation of a broader independent claim and the amending of dependent claims on patent coverage under the Doctrine of Equivalents, and has noted that the surrender of equivalents was affirmatively caused by the direct cancellation by the applicant of the broader independent claims when amending the dependent claims.

However, the Federal Circuit in Honeywell reminded practitioners that such a surrender is a rebuttable presumption, which may be overcome by the applicant's providing a showing of any of:

  1. the unforeseeability of the alleged equivalent when the amended claims were narrowed;
  2. the narrowing of the claims being tangential to the alleged equivalent; or
  3. c. another reason suggesting that the patentee could not reasonably have been expected to have described the alleged equivalent encompassed by the narrowing amendments.

PRACTICE TIPS

Judge Newman's dissent in Honeywell mentions the most advantageous recourse available to practitioners to avoid the presumptive surrender of equivalents; that is, file independent claims covering every feature to be protected, instead of filing dependent claims for such features. Currently, the U.S. Patent and Trademark Office charges $ 88 per independent claim in excess of three, and $ 18 per claim in excess of twenty of any type of claim in a patent application. Therefore, practitioners choosing to file only independent claims instead of dependent claims face an increased price of $ 70 per claim to file each desired feature separately in an independent claim instead of the less costly claims in dependent format.

In this manner, by filing independent claims providing a range of patent coverage and different features, the applicant can pursue claims for all desired features to be protected while minimizing the surrender effect of canceling broader independent claims to obtain allowance of the patent. The filing and allowance of an independent claim without amendment or additional limitations avoids the surrender of equivalents for that particular claim, even if broader independent claims are separately canceled to expedite prosecution and issuance of the patent.

Alternatively, if broader or different coverage is to be claimed, a continuation application with only the desired broader independent claims may be filed, prosecuted, and appealed separately from any allowable but narrower and unamended independent claims in the parent patent application.

Another practice tip is for the applicant or practitioner to be prepared in litigation to rebut the presumptive surrender by amendments with the three possible showings described supra.

An additional recourse is for practitioners to perform a more careful analysis of the claims and the cited art, in order to be less expedient and more cautious in the amendments to the claims. For example, minimal and innocuous amendments may be as effective in promoting allowance the claims as would the more detailed but possibly more limiting amendments to the claims. In this manner, the degree to which equivalents are surrendered may be minimized.

Furthermore, practitioners should avail themselves of examiner interviews to vocally address the cited art and rejections with few or no claim amendments. Such interviews may also facilitate quicker allowance of claims with few, if any, statements on the record by the applicant which may limit the scope of the allowed claims.

Finally, in view of the current state of the Doctrine of Equivalents in relation to claim amendments and their effects set forth in U.S. Supreme Court and Federal Circuit decisions, the ultimate and more costly recourse is to appeal patent claim rejections during prosecution, and to avoid amending the claims to the furthest extent possible.



Discussions

United States - Is Fair Use an Absolute Defense to a Claim of Trademark Infringement?    top

Frank Terranella, Associate, Abelman, Frayne & Schwab

When a trademark owner sues for trademark infringement, the Lanham Act provides the defendant with a number of defenses. Among these are claims that the trademark has been abandoned or that the registration was obtained fraudulently.

One of the most common defenses is commonly referred to as "fair use." It arises where the trademark "is descriptive of and used fairly and in good faith only to describe the goods or services of such party" and not as a trademark. Lanham Act Section 33(b)(4)

An example of this is where a software manufacturer advertisers that its program is Windows-compatible. Another example is where a mark becomes generic such as Firestone's trademark Steel-Belted Radial for tires (Reg. No. 1034762). Trademark law refuses to give trademark owners an exclusive right to use a term that is or becomes descriptive of a class of goods. The feeling is that everyone needs to be able to use these terms to describe his or her goods.

But is this fair use an absolute defense, even where it is likely to cause confusion as to the source of the goods? Noted trademark commentator J. Thomas McCarthy doesn't think so. Professor McCarthy writes, "[a] court should never find that likelihood of confusion exists but refuse to enjoin it because defendant's use is 'fair.'" McCarthy on Trademarks & Unfair Competition § 11:47 (4th Ed. 2004)

In a case that will be reviewed by the U.S. Supreme Court this term, the San Francisco-based 9th Circuit Court of Appeals agreed with Professor McCarthy (See KP Permanent Make-Up, Inc. v. Lasting Impressions I, Inc., 328 F.3d 1061 (9th Cir. 2003) cert granted 124 S.Ct. 981 (January 9, 2004)).

The 9th Circuit decision is at odds with a New York federal appeals court decision in a case called Cosmetically Sealed Indus., Inc. v. Chesebrough-Pond's USA Co., 125 F.3d 28 (2nd Cir. 1997). In that case, the court held that fair use is a defense even when there is likelihood of confusion. This is in keeping with the view of the Restatement (Third) of Unfair Competition §28, comment b, which states: "A defendant who uses a descriptive term fairly and in good faith to describe its goods or services is not liable for infringement even if some residual confusion is likely."

So the Supreme Court is poised to decide a classic East Coast-West Coast split in the courts. If it upholds the 9th Circuit view, then the fair use defense will become much less useful to defendants. In fact, since likelihood of confusion must be disproved, it is doubtful that disputes involving fair use could ever be resolved on a summary judgment motion.

On the other hand, the 2nd Circuit position contends that the fair use defense was put in the Lanham Act specifically as an exception to the general rule that likelihood of confusion equals infringement. If the defendant must show that there is no likelihood of confusion, then there will be little use for the fair use defense. As a 4th Circuit panel put it, "If a fair use defense is not to be considered when there is a likelihood of confusion, then it is never to be considered." Shakespeare Company v. Silstar Cororation of America, 110 F.3d 234 (1997)

We'll be watching for a decision from the Supreme Court and will report the outcome in the coming months.


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