October 2013 Prosecution Group Luncheon October 17 2013

October 2013 Prosecution Group Luncheon October 17, 2013

Trademark Office Announcements • Online ID Manual enhanced – more examples, more quick tips and guidance • RFC for draft guidelines on examination of g. TLDs (10/23/13) • RFC for potential change in policy for postregistration amendments of goods/services based on changes in technology (e. g. audio tapes to music recordings, printed magazines to online publications, installed software to software as a service) (12/1/13)

“Super” Trademarks – aren’t • App for SUPERJAWS for machine and hand tools, including “jaws” for precision clamping and “metal vice jaws” – rejected as descriptive • There is no per se rule for how USPTO should treat word “super” when used in composite mark, – if “super” is combined with word that names goods or services, or principal component, grade or size thereof, mark will be considered merely descriptive, – if “super” is joined with suggestive term, combination remains suggestive of products and services; • consumers would readily understand that “Superjaws” mark describes superior vice system for grasping and holding workpieces. • In re Positec Grp. Ltd. , 108 USPQ 2 d 1161 (TTAB 2013)

Don’t Disparage Yourself • Band applied to register THE SLANTS • USPTO denied as disparaging to persons of Asian descent. • EA relied on dictionary definitions, online articles, and applicant's own webpage and Wikipedia. – The band tried to “own the stereotype” – even if applicant is willing to take on the disparaging term as a band name, that does not mean that all members of the referenced group share his view • In re Simon Shiao Tam, Serial No. 85472044 (September 26, 2013) [precedential].

Did You Hehr That Mahk? • JIN-JA for herbal tea – rejected as merely descriptive • Applicant contended that JIN-JA is an arbitrary term with no recognized meaning in English, and that U. S. consumers would not recognize or pronounce Jin-Ja as "ginger. " • EA - the mark is the phonetic equivalent of "ginger, " particularly as pronounced by persons with non-rhotic accents (i. e. , a Boston accent) • SPLIT Decision – majority found insufficient evidence, dissent suggested Examiners supply more evidence when arguing based on regional accents • In re Canada Enterprises LLC, Serial No. 85026331 (September 27, 2013) [not precedential].

ACHOUFFE? Gesundheit • ACHOUFFE refused for beer - geographically descriptive • Achouffe is the name of a small village in the municipality of Houffalize, located in the Wallonia region of Belgium • EA ‘s evidence insufficient to show that Achouffe is generally known to beer drinkers. Achouffe is "very much an obscure location and would be relatively unknown to the relevant American consumer. " • In re Brasserie D’Achouffe, Société Anonyme, Serial No. 79107741 (September 26, 2013) [not precedential].

Patent Application Initiatives Website at USPTO

After Final Pilot Program 2. 0. • The original pilot program has been relaunched. • To be eligible for consideration under AFCP 2. 0, you must: § file a response under 37 CFR § 1. 116, which includes a request for consideration under the pilot (Form PTO/SB/434) and § amend at least one independent claim that does not broaden the scope of the independent claim in any aspect § be willing to interview

Pre and Post AIA - Design Patent Priority • Review – No provisional application priority – May be a continuing application of a utility, U. S. or PCT – A design application must be filed within six months of the foreign application to be entitled to foreign priority § 35 USC §§ 119(a)-(d), 172 – No design application priority for PCT applications

Hamilton Beach v. Sunbeam Products (CAFC)

Timeline Feb 25, 2005 Sunbeam introduces Cook & Carry® designing around application with clips on lid. Supplier confirms receipt Feb 8, 2005 March 2006 June 2010 Hamilton Beach Purchase Order Hamilton Beach files Patent application – discloses clips on cooker Hamilton Beach files Patent application – claims clips on lid.

Purchase order February 8, 2005: Hamilton Beach issues purchase order to foreign supplier for manufacture of Stay or Go® slow cooker. February 25, 2005: Supplier confirms receipt of purchase order via email and notes it will begin production of the slow cookers after receiving Hamilton Beach’s “release. ” March 2006: First patent application.

Hamilton Beach v. Sunbeam Products 35 U. S. C. § 102(b) Pre-AIA: A person shall be entitled to a patent unless — (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, . . .

On-Sale Bar Two conditions must be satisfied before the critical date: 1. The claimed invention must be the subject of a commercial offer for sale; and 2. The invention must be ready for patenting. Question of law based on underlying factual findings. Pfaff v. Wells Elecs. , Inc. , 525 U. S. 55 (1998)

“. . . on sale in this country. . . ” A commercial offer for sale made by a foreign entity that is directed to a United States customer at its place of business in the United States may serve as an invalidating activity. A commercial offer for sale under 102(b) is “one which the other party could make into a binding contract by simple acceptance. In re Caveny, 761, F. 2 d 671 (Fed. Cir. 1985) Grp. One Ltd. V. Hallmark Cards, Inc. , 254 F. 3 d 1041 (Fed. Cir. 2012)

Ready for patenting An invention is ready for patenting if the claimed invention is: 1. Reduced to practice; or 2. Depicted in drawings or other descriptions “that were sufficiently specific to enable a person skilled in the art to practice the invention. This does not require a detailed “element-by-element analysis on the prototypes and products samples on which it was working prior to the critical date. ” Pfaff

Purchase order February 8, 2005: Hamilton Beach issues purchase order to foreign supplier for manufacture of Stay or Go® slow cooker. Offer to buy February 25, 2005: Supplier confirms receipt of purchase order via email and notes it will begin production of the slow cookers after receiving Hamilton Beach’s “release. ” Offer to sell – it is at this point that the commercial offer for sale was made. Hamilton Beach could make into a binding contract by simple acceptance.

Holding Hamilton Beach’s asserted claims are invalid under the on-sale bar of § 102(b).

Fair Use of References at the USPTO • Magistrate judge in Minnesota finds that the copying and use of copyrighted reference at the USPTO is fair use. • “[T]his Court concludes that [defendant] Is entitled to the fair use defense as a matter of law and recommends that the District Court grant [defendant]’s motion for summary judgment” JEFFREY J. KEYES, United States Magistrate Judge in American Institute of Physics, John Wiley & Sons, Inc. , and Wiley Periodicals, Inc. , v. Schwegman Lundberg & Woessner, P. A. , and John Doe Nos. 1 -10

• Questions?