Indiana Cyberpiracy• Laporte County CAVB announced new campaign,“Visit Michigan City Laporte”• Serenity Springs then reserved and began usingdomain name• at bench trial – trial court held that there was TMinfringement and “cybersquatting that approachescyberpiracy.” HELD:– TM law does not apply to gov’t entities the same b/c oftransparency requirement– “mark certified as a TM,” relied on Indiana registration– secondary meaning based on subsequent use• Serenity Springs v. Laporte County CAVB, 46A03-1205-MI-214 (Ind.App. 4/15/13)
Indiana Cyberpiracy• Appellate Court Reverses – “clearlyerroneous”:– mark is geographically descriptive– No evidence of secondary meaning, indeed notpossible before use actually begins• BUT, “None of this is to say, however, thatSerenity’s actions are necessarily beyond thereach of the law.”– Remanded for consideration of unfaircompetition claims
TM Clearinghouse OPEN for gTLDs• New top gTLDs program set to launch in 2013• The TMCH is a central database where TM owners mayrecord information - available as of March 26, 2013.• Benefits:– Allows participation in “Sunrise Period” – 30 days forTM owners to register domain under a gTLD beforeregistration is available to the public.– If an application is submitted for a new gTLD whichmatches a recorded TM, owner will be notified - Optionto challenge.• Cost $150 for one year; $435/3yrs; $725/5 yrs
TTAB – email service nixes 5 day extension!• opposition parties stipulated to service by e-mail while retaining the five additional daysnormally added if service by first-class mail.• TTAB – Not allowed• Suggestion: stipulate to service by first-classmail but with a courtesy e-mail copy sentsimultaneously.• McDonalds Corporation v. Cambridge Overseas Development Inc.,Opposition No. 91208437 (March 22, 13) [precedential].
Black is Aesthetically Functional• FTD applies to register “black” for floral pkg.– Even if not functional in a utilitarian sense, adesign feature is “aesthetically functional” if theexclusive appropriation of that feature would putcompetitors at a significant non-reputationrelated disadvantage.• EA’s evidence: black communicates to therecipient - elegance or luxury, on somberoccasions such as in the context of death or inHalloween bouquets• TTAB: competitive need, rejection aff’d• In re Florists’ Transworld Delivery, Inc., Serial No.77590475 (March 28, 2013) [precedential].
Professional Conduct Rules RevisionsPatterned on ABA Model Rules“Closer conformity” with rules of 49 states + DC, “whileaddressing circumstances particular to [PTO] practice”– But: “decisions and opinions [of states] are not bindingprecedent relative to USPTO rules”• Examples– Express authorization to take interest in “patent or patentapplication” as part or all of fee [§ 11.108(i)(3)]– No CLE reporting requirement– May “refer not only to law but to other considerations suchas moral, economic, social and political factors” relevant toclient in rendering advice [§ 11.201]• Effective May 3, 2013 [see 78 Fed. Reg. 20179]
Timing is Everything . . .Blue: Average time predicted by PTOfor FAOMRed: Average actual time for FAOMPTO’s focus on reducing backlogseems to be bearing fruitIf trend continues, may see the timebetween filing and FAOM down toabout 12 monthsh/t PatentlyO.com
Double Patenting with Mobile Inventor• In re Hubbell (Fed. Cir. 2013)• One common inventor, two applications– App. 1 with joint inventors, owned by Employer 1– App. 2 with different inventor group owned by Employer 2– App. 2 issued 2002, but is not prior art (102) to App. 1• PTO rejected App. 1 under obviousness-type double patenting;no terminal disclaimer possible because of lack of co-ownership• FC affirmed (over dissent): double patenting applies, Employer 1cannot receive patent without linking ownership• Is OTDP a viable doctrine following AIA?• Employers: review employment agreements, tailor obligations toassign
App. 1: inventors A, B, C, assigned to CaltechApp. 2: inventors A, D, E, assigned to ETH ZürichApp. 1 filed(inventedbefore App. 2)App. 2filedApp. 2issuedCON of App. 1rejected underOTDP
Another Mobile InventorDawson v. Dawson (Fed. Cir. 2013)• Inventor left UCSF for InSite, then filed applications– UCSF copies applications years later– Did conception occur early (at UCSF) or later (at InSite)?• PTAB: UCSF failed to prove conception at UCSF– Dawson “did not fully appreciate how [his] idea was to beimplemented in actual practice. . . . [at UCSF] Dawson had ageneral idea for a future research plan . . .”• FC affirmed – substantial evidence supports result (deceasedinventors lack of testimony was a critical factor)• Note that prior employer may have no patent rights associated withideas that do not amount to “conception”– May need contract language re ownership of developmentsstemming from work begun at the prior employer
Design Patent Strategy• Rather than a single design application for a newproduct release, Gillette filed a group each claimingpart of the overall design– Perhaps the only change needed among applications isto alter particular lines in the drawing to solid (claimedfeature) or dashed (unclaimed)– One copying only a part still infringes at least one of thepatents– Product design may still be covered by patent rights evenafter small changes• Another approach: file design cases on featuresrelated to the actual design– Create further zone of protection around product