The US Supreme Court’s decision in Alice Corp. v. CLS Bank, which came down last June elaborated on patent ineligible subject matter, particularly as it applies to software patents. But the scope of these 101 type rejections has expanded to business method patents as well. We have been noticing an uptick in these rejections just in the past few months. The ABA just posted this article discussing Alice’s wrath.
Los Angeles Trademark Lawyer
I remember the Friendly’s restaurant chain when we lived in Columbia, Maryland, back in the days when I clerked for a Senior Judge on the Court of Appeals for the Federal Circuit in Washington, D.C., so at my first sighting of the about-to-open Freddy’s restaurant location in Maple, Grove, Minnesota (shown above), it brought memories of Friendly’s to mind:
Beyond the similarities as to sound, appearance, and cadence of the names, the graphic design of the cursive logos, the possessive forms, the color schemes, and trade dress, they seem to have a similar menu focus too:
Yet, they appear to peacefully coexist on the Principal Register at the USPTO (Friendly’s and Freddy’s), and it further appears from the location maps for each restaurant chain (Friendly’s v. Freddy’s) that there are some areas of geographic overlap too, although I haven’t studied the maps closely enough to determine how many miles separate the actual locations within a particular state.
Now, I’m not suggesting a brand manager or trademark counsel go all out crazy here — Freddy-Krueger-style, but I’ve also seen far worse cases pursued too.
What do you think, is there a plausible case of likelihood of confusion here, or would this be another example of trademark bullying?
Do you suppose these growing chains will ever bump into each other, and if so, will there be polite exchanges of, “excuse me” — is there any possibility of real friendship in their futures?
Ten years ago today, somewhat on a whim, yet to fulfill a need I saw for discussion about the law of the internet in the “blogosphere” (a term we loved dearly back then), I launched internetcases.
What started as a one-page handwritten pamphlet that I would mimeograph in the basement of my one-bedroom apartment and then foist upon unsuspecting people on street corners has in ten years turned into a billion dollar conglomerate and network. internetcases is now translated into 7 languages daily and employs a staff of thousands to do the Lord’s work fighting Ebola and terrorism on 4 continents. Or it’s a WordPress install on some cheap GoDaddy space and I write when I can.
All seriousness aside, on this 10th anniversary, I want to sincerely thank my loyal readers and followers. Writing this blog has been the single most satisfying thing I’ve done in my professional life, and I am immensely grateful for the knowledge it has helped me develop, the opportunities for personal brand development it has given (speaking, press, media opportunities), but most of all, I’m grateful for the hundreds of people it has enabled me to connect with and get to know.
Blogging (and the web in general) has changed a lot in 10 years. And the legal issues arising from the internet continue to challenge us to stretch our thinking and amp up our powers of analysis. It’s great to have a platform on the web from which to share news and thoughts about the role that technology plays in shaping our legal rules and our culture.
Precedential No. 2: Applicant's Third-Party Registrations Show That RV Trailers and Trucks are Not Related
The evidence established that towable RVs (see illustration below) are essentially travel trailers equipped with electric and water capacities, as well as toilet facilities. The examining attorney submitted seven third-party registrations covering "trucks" and "trailers," but five of them listed trailers that were not recreational vehicles. The other two, however, served to suggest that trucks, conversion kits, trailer hitches and trailers may emanate from the same source.
Applicant Thor Tech countered with fifty sets of third-party registrations for the same or similar marks, owned by different entities, and covering automobiles, trucks or sport utility vehicles on the one hand and recreational vehicles, travel trailers, and/or motor homes on the other. The Board found that this "pattern of registrations" rebutted the two registrations submitted by the examining attorney. The Board came to a similar conclusion in In re Keebler Company v. Associated Biscuits Limited, 207 U.S.P.Q. 1034, 1038 (TTAB 1980) ("The mutual respect and restraint exhibited toward each other by the owners of the plethora of marks, evidenced by their coexistence on the Register, are akin to the opinion manifested by knowledgeable businessmen .... "). These third-party registrations "suggest that consumers are aware that [the goods] are offered by different companies under the same or similar marks."
The examining attorney, relying on a number of Internet websites, contended that the involved goods travel in the same channels of trade, but the Board was unpersuaded. It found that, at best, this evidence indicated that two small retailers that sell a wide variety of vehicles also sell used trucks and recreational vehicle towable trailers, and another retailer sells automobiles (and presumably trucks) and recreational vehicles. "While trucks and recreational towable trailers may occasionally be sold by the same retailers, we cannot overlook the facts that the products are, at least on this record, noncompetitive, differ completely in utility, have nothing in common with respect to their essential characteristics or sales appeal, and ... are expensive."
Because the involved goods are costly - the TERRAIN vehicle was sold by registrant GM for $26,23, while towable trailers cost in the $8,000 to $24,000 range - the Board inferred that purchasers would exercise a high degree of care in making their purchasing decisions. Trucks and towable RVs are not everyday purchases, and a consumer would be expected to closely examine the products, probably after conducting some research regarding the vehicles. In short, this du Pont factor weighed against a finding of likely confusion.
Balancing the relevant du Pont factors, the Board concluded that applicant's mark is not likely to cause confusion with registrant's mark, and so it reversed the refusal.
Read comments and post your comment here
TTABlog note: Would the "pattern of registrations" argument be effective in the context of wine versus other alcoholic beverages?
Text Copyright John L. Welch 2015.
Today the United States Federal Trade Commission issued a report in which it detailed a number of consumer-focused issues arising from the growing Internet of Things (IoT). Companies should pay attention to the portion of the report detailing the Commission’s recommendations on best practices to participants (such as device manufacturers and service providers) in the IoT space.
The Commission structured its recommendations around four of the “FIPPS” – the Fair Information Practice Principles – which first appeared in the 1970’s and which inform much of the world’s regulation geared to protect personal data. The recommendations focused on data security, data minimization, notice and choice.
IoT participants should implement reasonable data security. The Commission noted that “[o]f course, what constitutes reasonable security for a given device will depend on a number of factors, including the amount and sensitivity of data collected and the costs of remedying the security vulnerabilities.” Nonetheless, companies should:
- Implement “security by design”
- Ensure their personnel practices promote good security
- Retain and oversee service providers that provide reasonable security
- Implement “defense-in-depth” approach where appropriate
- Implement reasonable access control measures
- Monitor products in the marketplace and patch vulnerabilities
Security by Design
Companies should implement “security by design” into their devices at the outset, rather than as an afterthought by:
- Conducting a privacy or security risk assessment to consider the risks presented by the collection and retention of consumer information.
- Incorporating the use of “smart defaults” such as requiring consumers to change default passwords during the set-up process.
- Considering how to minimize the data collected and retained.
- Testing security measures before launching products.
Personnel Practices and Good Security
Companies should ensure their personnel practices promote good security by making security an executive-level concern and training employees about good security practices. A company should not assume that the ability to write code is equivalent to an understanding of the security of an embedded device.
Retain and Oversee Service Providers That Provide Reasonable Security
The Commission urged IoT participants to retain service providers that are capable of maintaining reasonable security and to oversee those companies’ performance to ensure that they do so. On this point, the Commission specifically noted that failure to do so could result in FTC law enforcement action. It pointed to a recent (non IoT) case in which a medical transcription company outsourced its services to independent typists in India who stored their notes in clear text on an unsecured server. Patients in the U.S. were shocked to find their confidential medical information showing up in web searches.
The “Defense-in-Depth” Approach
The Commission urged companies to take additional steps to protect particularly sensitive information (e.g., health information). For example, instead of relying on the user to ensure that data passing over his or her local wireless network is encrypted using the Wi-Fi password, companies should undertake additional efforts to ensure that data is not publicly available.
Reasonable Access Control Measures
While tools such as strong authentication could be used to permit or restrict IoT devices from interacting with other devices or systems, the Commission noted companies should ensure that they do not unduly impede the usability of the device.
Monitoring of Products and Patching of Vulnerabilities
Companies may reasonably decide to limit the time during which they provide security updates and software patches, but must weigh these decisions carefully. IoT participants should also be forthright in their representations about providing ongoing security updates and software patches to consumers. Disclosing the length of time companies plan to support and release software updates for a given product line will help consumers better understand the safe “expiration dates” for their commodity internet-connected devices.
Data minimization refers to the concept that companies should limit the data they collect and retain, and dispose of it once they no longer need it. The Commission acknowledged the concern that requiring data minimization might curtail innovative uses of data. A new enterprise may not be able to reasonably foresee the types of uses it may have for information gathered in the course of providing a connected device or operating a service in conjunction with connected devices. Despite certain concerns against data minimization, the Commission recommended that companies should consider reasonably limiting their collection and retention of consumer data.
The Commission observed how data minimization mitigates risk in two ways. First, the less information in a database, the less attractive the database is as a target for hackers. Second, having less data reduces the risk that the company providing the device or service will use the information in a way that the consumer does not expect.
The Commission provided a useful example of how data minimization might work in practice. It discussed a hypothetical startup that develops a wearable device, such as a patch, that can assess a consumer’s skin condition. The device does not need to collect precise geolocation information in order to work, but it has that capability. The device manufacturer believes that such information could be useful for a future product feature that would enable users to find treatment options in their area. The Commission observed that as part of a data minimization exercise, the company should consider whether it should wait to collect geolocation information until after it begins to offer the new product feature, at which time it could disclose the new collection and seek consent. The company should also consider whether it could offer the same feature while collecting less information, such as by collecting zip code rather than precise geolocation. If the company does decide it needs the precise geolocation information, the Commission would recommend that the company provide a prominent disclosure about its collection and use of this information, and obtain consumers’ affirmative express consent. And the company should establish reasonable retention limits for the data it does collect.
As an aspect of data minimization, the Commission also discussed de-identification as a “viable option in some contexts” to help minimize data and the risk of potential consumer harm. But as with any conversation about de-identification, the Commission addressed the risks associated with the chances of re-identification. On this note, the Commission referred to its 2012 Privacy Report in which it said that companies should:
- take reasonable steps to de-identify the data, including by keeping up with technological developments;
- publicly commit not to re-identify the data; and
- have enforceable contracts in place with any third parties with whom they share the data, requiring the third parties to commit not to re-identify the data.
This approach ensures that if the data is not reasonably de-identified and then is re-identified
in the future, regulators can hold the company responsible.
NOTICE AND CHOICE
Giving consumers notice that information is being collected, and the ability to make choices as to that collection is problematic in many IoT contexts. Data is collected continuously, by many integrated devices and systems, and getting a consumer’s consent in each context might discourage use of the technology. Moreover, often there is no easy user interface through which to provide notice and offer choice.
With these concerns in mind, the Commission noted that “not every data collection requires choice.” As an alternative, the Commission acknowledged the efficacy of a use-based approach. Companies should not be compelled, for example, to provide choice before collecting and using consumer data for practices that are consistent with the context of a transaction or the company’s relationship with a consumer. By way of example, the Commission discussed a hypothetical purchaser of a “smart oven”. The company could use temperature data to recommend another of the company’s kitchen products. The consumer would expect that. But a consumer would not expect the company to disclose information to a data broker or an ad network without having been given notice of that sharing and the ability to choose whether it should occur.
Given the practical difficulty of notice and choice on the IoT, the Commission acknowledged there is no one-size-fits all approach. But it did suggest a number of mechanisms for communications of this sort, including:
- Choices at point of sale
- Tutorials (like the one Facebook uses)
- QR codes on the device
- Choices during setup
- Management portals or dashboards
- Out-of-band notifications (e.g., via email or text)
- User-experience approach – “learning” what the user wants, and adjusting automatically
The Commission’s report does not have the force of law, but is useful in a couple of ways. From a practical standpoint, it serves as a guide for how to avoid engaging in flagrant privacy and security abuses on the IoT. But it also serves to frame a larger discussion about how providers of goods and services can and should approach the innovation process for the development of the Internet of Things.
When we file trademark applications electronically, there is a form declaration for the signatory. At the time Slep-Tone Entertainment filed its applications, this was the language:
The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements, and the like, may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. Section 1051(b), he/she believes applicant to be entitled to use such mark in commerce; …
This language proved to be problematic for Slep-Tone in Slep-Tone Entertainment Corp. v. Coyne. Slep-Tone’s use of its trademark was through a licensee, not by Slep-Tone directly.* The rub is that the Code of Federal Regulations says “(b) If the mark is not in fact being used by the applicant but is being used by one or more related companies whose use inures to the benefit of the applicant under section 5 of the Act, such facts must be indicated in the application.” And what’s missing from the fill-in-the-blank form and declaration language quoted above? Anything about use of the mark through a licensee.
Defendant Coyle challenged the validity of the registration, claiming that it was fraudulently procured. The court first expressed doubt that failing to disclose use through a licensee would be fraudulent:
As an initial matter, it is not clear that an applicant’s failure to disclose that a mark was used by a related company, standing alone, would constitute fraud on the USPTO. “Fraud in procuring a trademark registration … occurs when an applicant knowingly makes false, material representations of fact in connection with his application.” “To constitute ‘fraud’ the knowing misrepresentation to the PTO must be ‘material’ in the sense that but for the misrepresentation, the federal registration either would not or should not have issued…. And had Slep–Tone expressly stated in its application that it was relying on the related-company doctrine, the registration still would have issued. Accordingly, Slep–Tone’s alleged omission might not have been material in the first place.
But it didn’t matter, because Slep-tone had in fact disclosed that its use was through a licensee, in the part of the application where you describe the specimen:
Coyne tried, unsuccessfully, to argue that the disclosing a “licensee” isn’t the same as disclosing that a use was by a “related company.” The court relied on the Trademark Manual for Examining Procedure § 1201.03(a) to find that disclosing a “licensee” is good enough; the TMEP says “In an application under § 1(a) of the Trademark Act, the applicant should state in the body of the application that the applicant has adopted and is using the mark through its related company (or equivalent explanatory wording).”
So Slep-Tone successfully defeated this attempt at claiming a fraudulent registration. And the PTO has fixed the problem systemically, so we don’t have to remember to make a reference to a licensee somewhere. This is the language of the declaration now:
The signatory believes that: if the applicant is filing the application under 15 U.S.C. Section 1051(a), the applicant is the owner of the trademark/service mark sought to be registered; the applicant or the applicant’s related company or licensee is using the mark in commerce on or in connection with the goods/services in the application, and such use by the applicant’s related company or licensee inures to the benefit of the applicant; … and/or if the applicant filed an application under 15 U.S.C. Section 1051(b), Section 1126(d), and/or Section 1126(e), the applicant is entitled to use the mark in commerce; the applicant has a bona fide intention to use or use through the applicant’s related company or licensee the mark in commerce on or in connection with the goods/services in the application.
SlepTone Enter. Corp.v. Coyne, No. 13 C 2290 (N.D. Ill. Jan. 8, 2015)
* The fact that Slep-Tone claimed its only use was by a licensee puzzles me. Slep-Tone manufactures karaoke accompaniment tracks and sells them to karaoke jockeys (“KJs”) who are hired by bars and restaurants to provide karaoke entertainment. The main thrust of the many lawsuits Slep-Tone has filed is a claim that the KJs are making illicit copies of the tracks. But for trademark purposes (as distinguished from copyright purposes), the KJ is the purchaser of the original goods, not a licensee. A license would authorize the KJ to make new goods using the mark, but that’s not the relationship here. So as I see it, Slep-Tone is fighting a battle it never needed to fight.
The text of this work is licensed under a Creative Commons Attribution-No Derivative Works 3.0 United States License.
- Insuring a Great Super Bowl Trademark Fight
- Fair Use of Super Bowl Trademark?
- Super (Bowl) Sunday, Ads Coming Soon
Advertisers — fearful of NFL legal action — strain and contort to avoid the two words that could make out a nominative fair use of the Super Bowl trademark, opting instead for pairs of other code words like “Super Sunday,” the “Big Game,” “Super Party,” or “Superb Owl” coverage.
Please, would someone just lawyer up, and call it the Super Bowl, while calling the NFL’s bluff?
The legal differences between the concept of use in the United States and in the EU are not merely technical. While in the United States, generally, "the owner of a mark may not monopolize markets that his trade has never reached," this may be possible in the EU In this article, we will look at the European and U.S. treatments of "use" as a trademark concept and consider which (if either) is better, and why.
* * *
The European registration-based system is a natural result of a philosophy of open and equal competition across the Community. The U.S. use-based system is a direct result of the United States Constitution and the understanding of trademarks as nothing outside of an identifier of source for goods or services and primarily a method of protecting the consuming public from confusion. Both systems require use to a lesser or greater extent, and both systems are flexible in varying degrees. But the differences are stark and only become greater as the trajectories of these different philosophies become clear.
Read comments and post your comment here
TTABlog note: Again I thank The Trademark Reporter for granting permission to provide links to these two commentaries, which are Copyright © 2014 the International Trademark Association and reprinted with permission from The Trademark Reporter®, 106 TMR No. 6 (November-December 2014).
Text Copyright John L. Welch 2015.
Tiffany & Co. made some waves over the past several weeks when it featured a same sex couple in its “Will You?” engagement campaign. Tiffany is the first “famous” brands to take this path, and they are undoubtedly hoping this campaign will pay high dividends after disappointing holiday sales.
Personally, I applaud Tiffany for taking a bold step in the advertising world. Although, as the Wall Street Journal noted, the legalization of gay marriage in numerous states has created new opportunities for wedding related goods to be sold. While somewhat ground breaking, this campaign was certainly sensible from an economic standpoint.
The question that it raises for me is whether we will shortly see more mainstream advertising catering to gay and lesbian consumers. Of course, such advertising has taken place in publications catering to the LGBT community, but perhaps its time that such advertising start taking place in more of our everyday channels. Regular print publications and television commercial could all start providing more inclusive campaigns. Indeed, while the Tiffany ad seems to be garnering the most attention, there was a nice bit of publicity generated for a DirecTV Sunday Ticket ad which “apparently” featured a gay couple. I say “apparently,” because you’d miss it if you weren’t paying attention.
I’m sure there are those out there that think catering explicitly to same sex couples and/or members of the LGBT community risks alienating more “conservative” consumers. Admittedly, I think this could be an unfortunate problem that is difficult to quantify in advance. But seriously, if the NFL and Sunday Ticket are comfortable with the idea, how bad could that downside really be. I think advertisers need to be prepared to make that leap if they’re not already there.