IP Law Bulletin

Today the United States Supreme Court decided the case of Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., 574 U. S.____ (2015), which presented the question of the proper standard of review for factual findings by district courts during patent claim construction. The Court of Appeals for the Federal Circuit (CAFC), the Nation's sole appellate court for cases arising under the patent statute (Chapter 35 of the United States Code), has long held that claim construction rulings, including underlying factual findings, are reviewed de novo (that is, without deference to the district court). The Supreme Court has now partly upended that rule, holding that determinations of fact made by district courts must be reviewed for abuse of discretion, which is more deferential to the district court. The Court left alone, however, the existing de novo standard of review for the ultimate legal determination of patent claims' meanings.

While the Court noted that "[i]n some instances, a factual finding will play only a small role in a judge's ultimate legal conclusion about the meaning of [a term in a patent claim]," in other cases "a factual finding may be close to dispositive of the ultimate legal question of the proper meaning of the term in the context of the patent." In either case, "the ultimate question of construction will remain a legal question."

Because the case before it presented a potentially dispositive factual dispute regarding the meaning of a particular term to persons skilled in the art, and because the CAFC overturned the district court's determination of that dispute under the de novo standard, the Court has remanded the case back to the CAFC with the instruction to apply the less stringent abuse of discretion standard to the district court's factual findings. Thus, while the Court was careful to note that "subsidiary factfinding is unlikely to loom large in the universe of litigated claim construction," there are sure to be litigants, like those in Teva Pharmaceuticals, who will be affected by this decision.

This advisory was prepared by the Intellectual Property practice group at Nutter McClennen & Fish LLP. For more information, please contact your Nutter attorney at 617.439.2000.

This advisory is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising.

There are two types of taglines or slogans companies typically seek protection of, taglines tied to an advertising campaign or sales of a good or service, and taglines or slogans that are on merchandise intended to invoke or amuse people and drive them to purchase the merchandise. In deciding whether obtaining protection is a good business decision, most companies weigh the potential costs of obtaining protection against the strength of the mark for which protection is desired. A question that we commonly encounter when companies seek protection of a tagline is whether the tagline is even protectable. The short answer to that question is yes, usually.

Historically, the United States Patent and Trademark Office (USPTO) and the courts have been reluctant to extend trademark protection to slogans and taglines, leading to the reluctance of companies to seek protection at all. Over the past few decades, however, protection of taglines has become more commonplace, as it is now settled that the level of protection afforded to a tagline or slogan is the same as that for other trademarks. As early as 1970, the courts decided that slogans as trademarks are subject to the same scrutiny as non-slogan trademarks. See Roux Laboratories, Inc. v. Clairol Inc., 427 F.2d 823 (C.C.P.A. 1970). Since then, courts and administrative bodies have followed the Roux Laboratories decision in evaluating slogan and tagline marks using the same scrutiny as non-slogan marks. For example, the Trademark Trial and Appeal Board affirmed registration of the slogan “AMERICA’S BEST CHEW” in 1986 because it had established secondary meaning. See Taylor Bros. Inc. v. Pinkerton Tobacco Co., 231 U.S.P.Q. (BNA) 412 (T.T.A.B. 1986).

To qualify as protectable, taglines or slogans must be either inherently distinctive or creative, or have developed enough secondary meaning to immediately call a product or service to mind. Secondary meaning is not typically a company’s first choice in establishing that a tagline is protectable. Descriptive taglines, however, require evidence of secondary meaning to be protectable. Secondary meaning refers to the distinction the mark has acquired with consumers to associate the mark with a source. This distinction can take time to establish, and can be proven with either five years of continuous use in commerce or substantial sales and advertising. Accordingly, unless the tagline is used in a substantial advertising campaign, establishing secondary meaning can be a lengthy and uphill battle with the USPTO.

More frequently, a tagline will be protectable if it is considered inherently distinctive or creative. Better protection is afforded to marks that are more distinctive or creative. Taglines and slogans are subject to the same scrutiny as non-tagline trademarks when being examined by the USPTO for inherent distinctiveness. Inherently distinctive or creative taglines typically consist of made-up words, words that are surprising or unexpected in the context of their usage, or words that cleverly connote qualities about the product or service. Examples of inherently distinctive taglines include Coca-Cola’s “It’s The Real Thing,” McDonalds’ “I’m Lovin’ It,” and Nike’s “Just Do It.” The threshold for inherent distinctiveness is not notably high. For example, “Your Financial Service is Our Business” was registered on the basis of inherent distinctiveness for insurance planning services, as was “From Maine’s Cool Breeze to the Florida Keys” for moving services. Although inherent distinctiveness is not a particularly high threshold, merely informational taglines are not protectable. Taglines such as “Think Green” or “Proudly Made in the USA” have been denied protection by the USPTO for being merely informational.

Generally, taglines and “traditional” trademarks are governed by the same rules. Accordingly, so long as a tagline or slogan is either inherently distinctive or has developed secondary meaning, a tagline is protectable as a trademark. If a tagline is closely linked to an advertising campaign or used frequently on goods or services, it is likely a good business decision to file for trademark registration with the USPTO.

This update was prepared by the Intellectual Property practice of Nutter McClennen & Fish LLP. For more information, please contact your Nutter attorney at 617.439.2000.

This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising.

The Federal Circuit recently issued a decision in Antares Pharma, Inc. v. Medac Pharma, Inc. (Fed. Cir. 2014) that examined the issue of whether claims have been properly broadened in a reissue application. A patent holder can seek broadened reissue claims within a two year period from the grant of the original patent, as set forth in 35 U.S.C. § 251. However, there are restrictions on how a patentee can broaden claims during the reissue proceeding. Those restrictions include 1) the recapture rule and 2) the original patent requirement. The Court in Antares found reissue claims to be invalid for failing the original patent requirement. Under the original patent requirement, the invention claimed in the reissue application must be directed to the same invention disclosed in the original patent. The Court found that the original patent requirement mandates that newly claimed subject matter be disclosed in an explicit and unequivocal manner in the specification. In other words, the newly added claims cannot be merely suggested or indicated in the specification. In contrast, the Court noted that continuation and divisional applications are avenues for applicants to shift the scope of the claims from one invention to another without the original patent requirement of § 251.

When last we met, you had successfully navigated the trademark-examination process and were gazing with pride and happiness upon your Certificate of Registration from the United States Patent and Trademark Office.

In Octane Fitness LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014), decided in April 2014, the Supreme Court lowered the bar for obtaining attorneys’ fees in patent infringement cases. In particular, the Supreme Court replaced the previously restrictive interpretation of an “exceptional case” that qualifies for the award of attorneys’ fees under § 285 of the Patent Act (chapter 35 of the United States Code (U.S.C.)) with a lower, more discretionary standard. We previously provided an analysis of Octane Fitness, and the related Highmark Inc. v. Allcare Health Mgmt. Sys., Inc. decision in an April 30, 2014 advisory. Since then, there has been a rash of litigants attempting to cash in on their success in intellectual property litigation of all types—including trademark and trade dress litigation brought under the Lanham Act (15 U.S.C.). Section 1117(a) of the Lanham Act includes a provision for awarding attorneys’ fees that is identical to § 285 of the Patent Act; however, because Octane Fitness only expressly addresses exceptional cases under § 285 of the Patent Act, courts are struggling with whether to replace the prevailing standard in their Circuit with the new, lower standard in cases brought under the Lanham Act. So far, courts are divided as to whether Octane Fitness applies to the Lanham Act, although a greater weight of authority exists in favor of applying the Octane Fitness standard to § 1117(a) of the Lanham Act.

The United States Patent and Trademark Office (USPTO) released final rules on January 9, 2015 implementing changes to the way in which Patent Term Adjustment (PTA) is calculated in view of the recent Novartis v. Lee case.