IP Law Bulletin

Written opinions of counsel are gaining renewed interest as a valuable tool for avoiding enhanced damages for willful patent infringement following the Halo decision. A written opinion may set forth the factual and legal basis for finding a third party patent not infringed, invalid, and/or unenforceable. However, to be effective, the timing of the opinion may be critical.

September 2017 marks the planned release of the first iteration of the eCommerce Modernization (eMod) Patent Center (“the Alpha Release”), as well as the introduction of new EFS-Web and PAIR features by the USPTO. Effective September 10, features of the recently concluded eMod Text Pilot Program will be rolled out to the public. EFS-Web and Private PAIR users will be able to file structured text via EFS-Web and access structured text submissions and Office Actions via Private PAIR. Additionally, the Alpha Release, which is the next phase of the USPTO’s eMod Project that seeks to improve “the electronic patent application process by modernizing USPTO’s application filing and viewing systems,” will be made available to Pilot Program enrollees. The Alpha Release will include a new user interface and introduce new functionality that the USPTO aims to roll into future iterations of the Patent Center.

For declaratory judgment (DJ) actions concerning patents, whether a patent owner’s conduct is sufficient for there to be a real and immediate controversy is the usual jurisdictional hurdle. In BASF Plant Science, LP v. Nuseed Americas Inc., a District of Delaware court recently examined a different issue–who must be named as a defendant to support DJ jurisdiction when there is an exclusive patent licensee.

The Court of Appeals for the Federal Circuit revisited the often unclear question of subject matter eligibility under 35 U.S.C. § 101 in Visual Memory LLC. v. Nvidia Corp. In the 2-1 decision, the Federal Circuit reversed the district court’s determination that the claims at issue were directed to an abstract idea. 

In a recent decision denying defendants’ motion for Rule 11 sanctions, the District of Massachusetts interpreted its local rule regarding the district’s filing deadline. The decision gives guidance to litigators regarding the use of the court’s electronic filing system.

Key Takeaway

• Despite the fact that no Local Rule for the District of Massachusetts expressly addresses the question of after-hours electronic service, the 6:00 p.m. filing deadline provides a “useful—and sensible—analogy for timeliness of electronic service.” Service on opposing parties should generally be filed by 6:00 p.m. of the due date.

There are occasions where displaying another company’s trademark is desirable. Whether that type of trademark use is lawful generally is a subjective, fact-specific determination under both United States and European Union law. A recent United Kingdom appeals court decision is instructive.

U.K. Court Ruling

The decision stemmed from a trademark infringement lawsuit brought by BMW against a London auto repair shop. The U.K. appeals court, applying E.U. law, handed BMW a victory. The appeals court, overruling a High Court of Justice decision, held that the shop’s use of the phrase “Technosport - BMW” infringed BMW’s European word mark “BMW.”[1] Not at issue on appeal was the lower court’s finding that Technosport’s use of BMW’s famous “Roundel” logo “would lead the average consumer to believe that [Technosport] was an authorized dealer.” The appeal instead focused on Technosport’s use of the BMW acronym in plain text immediately after its trade name, in particular on the top portion of the back of its service trucks, as shown in the image below.

Technosport had successfully argued before the lower court that its use of “BMW” was merely descriptive of the fact that it had experience servicing BMW cars, and thus non-infringing. 

The appeals court, however, found that “putting BMW immediately after the shop’s name isn’t merely a description of the business’s services.” The appeals court expounded on the distinction between permissible descriptive use and impermissible infringing use under E.U. law through examples: Suggesting or implying “my business provides a service which repairs BMWs” is permissible. In contrast, suggesting or implying “my repairing service is commercially connected with BMW” is not. Once a use crosses the line to suggest a connection with the trademark holder, the use is no longer a non-infringing descriptive use.

The U.K. appeals court ultimately found that Technosport’s use of BMW infringed because it would likely lead the average consumer to believe that the shop has a commercial connection with BMW, despite no evidence of actual consumer confusion. Technosport’s use was therefore not merely “informative.” Indeed, one of the reasons the appeals court overturned the lower court’s finding of non-infringement was the lower court’s undue focus in its decision on the lack of actual evidence of consumer confusion.

How Can One Use Another’s TM in the U.S. without “Crossing the Line?”

While the case above was decided in the United Kingdom under E.U. law, the principle applied is similar to that applied in determining the “fairness” of use of another’s mark in the United States. The concept, labeled “informative use” under E.U. law, is known as “referential use” or “nominative fair use” under U.S. law.

A leading case under U.S. law for determining whether a given use of another’s trademark merely refers to another’s mark in a “fair” way or, instead, crosses the line and suggests affiliation or sponsorship is New Kids on the Block.[2] That decision established a three pronged test for determining if a use is fair, namely:

Nominative fair use is available as a defense to trademark infringement where the defendant uses a trademark to describe the trademark holder’s product or service and (1) the product or service in question is not readily identifiable without use of the trademark, (2) only so much of the mark or marks may be used as is reasonably necessary to identify the product or service, and (3) the defendant does nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.[3]  

Introducing the three prong test, the 9^th Circuit in New Kids affirmed a lower court’s finding that a publisher’s use of the NEW KIDS ON THE BLOCK band trademark was a non-infringing, fair use. The publisher had displayed the mark in conjunction with a phone-in poll (callers were charged a fee to participate) asking readers to chime in with opinions about the group. 

It is important to note that use of another’s logo, as opposed to a plain text mark, is more likely to be deemed to suggest sponsorship or affiliation with the trademark holder under the test.

 *  *  *  *  *

It can be entirely lawful to use another’s mark within marketing materials, for example, in the comparative advertising context, etc. At the end of the day, however, the three prong legal inquiry into whether a use qualifies as fair requires a subjective determination that is best assessed from the perspective of an experienced trademark attorney.

[1] See Bayerische Motoren Weke AG v. Technosport London Ltd. [2017] EWCA Civ 779, No. A3 2016 1801.

[2] New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302 (9th Cir. 1992).

[3] Id. at 308.

The author would like to thank legal intern Liza Hadley for her assistance with this blog entry.

Recently the Ninth Circuit ruled that Google’s trademark for search engines has not become generic and is still enforceable as to search engines. As Bayer learned with its previously-existing trademark aspirin, when a court determines a trademark to be generic, the mark is no longer protectable. In effect, a generic (no longer a) trademark is re-appropriated by the public such that the mark is no longer a source-identifier for the related goods and services. A generic (no longer a) trademark tells the public what the good and services are rather than who makes and/or sells the goods or services. Additional examples of trademarks that courts held to be generic include cellophane, thermos, and trampoline[1].

The District of Massachusetts recently issued something of a legal unicorn;¹ it granted a plaintiff’s motion to strike two of the defendant’s affirmative defenses. This uncommon result offers some insight into the importance of careful pleading.

On June 12, 2017, the U.S. Supreme Court granted certiorari in Oil States Energy Services LLC v. Greene’s Energy Group, LLC to decide whether the AIA (America Invents Act) patent review program for challenging the validity of issued patents is constitutional. Specifically, the Court will decide the question of “whether inter partes review – an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents – violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.”

The Supreme Court held in Matal v. Tam that the Lanham Act’s provision forbidding the registration of disparaging trademarks is unconstitutional in violation of the First Amendment. The Court explained that “[s]peech may not be banned on the ground that it expresses ideas that offend.”