Fitch Even News Feedhttps://www.fitcheven.com/?t=39&format=xml&stylesheet=rss&directive=0&records=20en-us19 Jul 2018 00:00:00 -0800firmwisehttp://blogs.law.harvard.edu/tech/rssIP Alert: PTAB Cautioned Not to Deviate from Grounds Raised in Petitionhttps://www.fitcheven.com/?t=40&an=79022&format=xml<p>On June 19, in <i><a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/17-1341.Opinion.6-19-2018.pdf">Sirona Dental Systems GMBH v. Institut Straumann AG</a>, </i>the Federal Circuit stated that the Supreme Court&rsquo;s <i>SAS Institute Inc. v. Iancu </i>decision requires that an <i>inter partes</i> review must proceed &ldquo;in accordance with or in conformance to the petition.&rdquo; The court cautioned the Patent Trial and Appeal Board (PTAB) not to substitute its own reasoning for the grounds raised by the petitioner, explaining that &ldquo;nothing suggests the Director enjoys a license to depart from the petition and institute a <i>different</i> inter partes review of his own design.&rdquo;</p> <p>Institut Strauman and Dental Wings filed a petition for <i>inter partes</i> review of a patent based on multiple grounds of unpatentability. The PTAB instituted review based on some of the asserted grounds. Eventually the PTAB issued a final written decision that found all of the claims unpatentable as obvious. Contending that one of those grounds was not raised in the petition, but initiated by the PTAB, Sirona appealed.</p> <p>The court disagreed with Sirona and held that the PTAB had indeed rested its obviousness conclusion on grounds that the petitioner had raised, not substituting its own judgment. In dicta, however, the court stated:</p> <p style="margin-left: 40px;">An inter partes review must proceed &quot;in accordance with or in conformance to the petition.&quot; <i>SAS Inst., Inc. v. Iancu</i>, 138 S. Ct. 1348, 1356 (2018) (internal quotations omitted). &quot;Nothing suggests the Director enjoys a license to depart from the petition and institute a <i>different</i> inter partes review of his own design.&quot; <i>Id.</i> (emphasis in original). &quot;The rest of the statute confirms, too, that the petitioner's petition, not the Director's discretion, is supposed to guide the life of the litigation.&quot; <i>Id.</i> &quot;[T]he statute tells us that the petitioner's contentions, not the Director's discretion, define the scope of the litigation all the way from institution through to conclusion.&quot; <i>Id.</i> at 1357. It would thus not be proper for the Board to deviate from the grounds in the petition and raise its own obviousness theory, as Sirona contends.</p> <p>This language possibly signals future holdings along these lines by the court on appropriate facts.</p> <p>Sirona also argued that the PTAB erred when it denied Sirona&rsquo;s contingent motion to amend, arguing that the PTAB improperly placed the burden on Sirona to prove that the proposed substitute claims were patentable. The court vacated the PTAB&rsquo;s order in light of <i><a href="https://www.fitcheven.com/?t=40&amp;an=69165&amp;anc=180&amp;format=xml&amp;p=5486">Aqua Products, Inc. v. Matal</a></i>, which held that the petitioner bears the burden of proving that proposed amended claims are unpatentable<i>.</i></p> <p>This decision may be significant for patent owners, since it states that the PTAB must only consider the grounds for unpatentability that are raised in the petition.</p> <p>For more information on this ruling, please contact Fitch Even partner <a href="https://www.fitcheven.com/?t=3&amp;A=2596&amp;format=xml&amp;p=5482">Thomas F. Lebens</a>, author of this alert.</p> <p><i>Fitch Even summer associate Zachary Van Engen contributed to this alert.</i></p> <p>&nbsp;</p> <p><b>Fitch Even IP Alert<sup>&reg;</sup></b></p>IP Alerts19 Jul 2018 00:00:00 -0800https://www.fitcheven.com/?t=40&an=79022&format=xmlDesign Patent Enforcement: Recent U.S. Court and PTAB Decisionshttps://www.fitcheven.com/?t=40&an=79006&format=xmlPlease join Fitch, Even, Tabin &amp; Flannery LLP for a free webinar, &ldquo;<a href="https://register.gotowebinar.com/register/7967678473063230722">Design Patent Enforcement: Recent U.S. Court and PTAB Decisions</a>,&rdquo; on Thursday, August 2, 2018, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12 noon EDT. <br /> <br /> This webinar will address current issues in U.S. patent law relating to infringement of design patents, including cases that involve damages, such as <em>Samsung v. Apple</em>. Understanding the latest developments in design patent litigation is essential to developing enforcement or defense strategies, as well as to preparing and prosecuting strong design patent applications. <br /> <br /> In addition, just as with utility patents, the validity of design patents can be challenged by requesting an <em>inter partes</em> review (IPR) before the Patent Trial and Appeal Board (PTAB). We&rsquo;ll discuss the outcomes of recent IPR proceedings that involve design patents and what strategies can be learned from those proceedings. <br /> <br /> Our speaker will be Fitch Even partner <a href="https://www.fitcheven.com/?t=3&amp;A=2574&amp;format=xml&amp;p=5482">Jon A. Birmingham</a>. Jon represents a wide range of clients in intellectual property litigation, opinion matters, and complex patent prosecution matters, including the procurement and enforcement of design patents. <br /> <br /> CLE credit has been approved for California and Illinois and is pending in Nebraska. Other states may also award CLE credit upon attendee request. There is no fee to attend, but please note registration is required.&nbsp;To reserve your place, please <a href="https://register.gotowebinar.com/register/7967678473063230722">REGISTER HERE</a>.<br /> <br type="_moz" />Upcoming Webinars18 Jul 2018 00:00:00 -0800https://www.fitcheven.com/?t=40&an=79006&format=xmlFitch Even Chicago Office Space Featured in <i>Chicago Lawyer</i> Magazinehttps://www.fitcheven.com/?t=40&an=78619&format=xml<p>An article showcasing Fitch Even&rsquo;s new Chicago office space was published in the July 2018 issue of <i><a href="https://www.chicagolawyermagazine.com/home">Chicago Lawyer</a></i> magazine. The piece, titled &ldquo;The Paper Chase,&rdquo; features an interview with managing partner <a href="https://www.fitcheven.com/?t=3&amp;A=2588&amp;format=xml&amp;p=5482">Mark W. Hetzler</a>, who explains the strategy and objectives behind the design of the new space, which included Fitch Even&rsquo;s move to a paperless environment.</p> <p>Creating a more modern, inviting workspace was also key, with a clean open-space plan, attractive gathering areas, sleek and highly functional furniture, and plenty of natural light throughout topping the list. Those enhancements and others resulted in an environment that better supports the firm&rsquo;s longtime emphasis on the team collaboration and streamlined operations essential to optimal client service.</p> <p>Read more about Fitch Even's Chicago office and see accompanying photos in the article <a href="/2E8FB4/assets/files/Documents/Chicago_Lawyer_Spaces_reprint_July_2018.pdf" target="_blank">here</a>. </p>Firm News10 Jul 2018 00:00:00 -0800https://www.fitcheven.com/?t=40&an=78619&format=xmlIP Alert: Grumpy Cat Not Amused by Grumpy Beverageshttps://www.fitcheven.com/?t=40&an=78394&format=xml<p>A recent case from the U.S. District Court for the Central District of California involved Grumpy Cat, a pet cat with a grumpy appearance (not demeanor) who is popular on social media, and the brand the cat has come to represent. The case, <i><a href="/2E8FB4/assets/files/Documents/Grumpy Cat Limited v. Grenade Beverage LLC.pdf">Grumpy Cat Limited v. Grenade Beverage LLC, et al.</a>,</i> illustrates the importance of ensuring that license agreement terms permit the activities that the licensee wants to undertake.</p> <p>In 2013, defendant Grenade Beverage LLC and its principals, Nick and Paul Sandford (collectively &ldquo;Grenade&rdquo;), licensed the exclusive right to use on certain beverage products the Grumpy Cat trademark and copyrighted images from Grumpy Cat Limited, the company formed by Tabatha Bundesen, the famous feline's owner, and her brother Bryan Bundesen. Grenade&rsquo;s license authorized it to use the Grumpy Cat trademark and copyrighted images with the manufacture, advertisement, merchandising, promotion, distribution, and sale of iced-coffee products. The license agreement terms stated that additional products would only become part of the license upon prior approval. A jury in an earlier phase of the case determined that Grenade&rsquo;s license authorized the use of the Grumpy Cat trademark and copyrighted images only with iced coffee.</p> <p>Under the license, Grenade created a line of iced-coffee products branded &ldquo;Grumpy Cat Grumppucino&rdquo; and featured a caricature of Grumpy Cat on the products. Subsequently, in 2015, Grenade and its sublicensee Grumpy Beverage LLC wanted to sell ground coffee featuring the Grumpy Cat trademark and likeness and sought the approval of Grumpy Cat Limited. Being persnickety, as felines are known to be, Grumpy Cat Limited declined approval for the ground-coffee products. Grenade scampered off and produced and sold the Grumpy Cat ground-coffee products anyway. Grumpy Cat Limited pounced, suing Grenade for trademark and copyright infringement over the unauthorized use of its intellectual property. The jury found for Grumpy Cat Limited and awarded it more than $700,000 in damages for the unauthorized use of the Grumpy Cat trademark and images on the ground coffee.</p> <p>Following the trial, the court decided Grenade&rsquo;s declaratory judgment counterclaim for non-infringement of the Grumpy Cat trademark and copyrights. Grenade unsuccessfully argued that the term in the license agreement requiring prior approval for use of the licensed marks on additional products was a covenant and not a condition of the license agreement. The relevant portion of the license agreement stated that &ldquo;other additional products within the Product Category [non-alcoholic beverages] . . . may, upon the Parties&rsquo; mutual approval, be marketed hereunder.&rdquo; Grenade sought the interpretation of this provision as a covenant to avoid liability for infringement of Grumpy Cat Limited&rsquo;s trademark and copyrights. After reviewing the license agreement, the court determined that the &ldquo;additional products&rdquo; language in the agreement is a condition that specifically excludes Grenade from using the licensed mark and images on additional products without the mutual approval of the parties. The court swatted down Grenade&rsquo;s claim for declaratory relief.&nbsp;</p> <p>The court also decided Grumpy Cat Limited&rsquo;s claim for cybersquatting following the trial.&nbsp;During the license, Grenade came to own from a third party the domain name &quot;grumpycat.com,&quot; which they used to redirect internet traffic to their coffee products. Grenade offered to transfer this domain name to Grumpy Cat Limited in exchange for Grumpy Cat Limited granting approval to Grenade&rsquo;s expanding use of the Grumpy Cat mark and images to ground-coffee products. Grumpy Cat Limited declined. As part of its complaint, Grumpy Cat Limited included a count for cybersquatting.</p> <p>To win on cybersquatting, Grumpy Cat Limited needed to prove that (1) Grenade registered, trafficked in, or used the grumpycat.com domain name; (2) the grumpycat.com domain name is identical or confusingly similar to a protected mark owned by Grumpy Cat Limited; and (3) Grenade acted with bad faith intent to profit from its use of the grumpycat.com domain name. Grumpy Cat Limited claimed that the Grenade had used the domain name registration to redirect consumers from Grumpy Cat to the branded coffee products and as leverage during its efforts to get permission to use the Grumpy Cat mark and images on the ground coffee products.</p> <p>The court declined to find bad faith intent on the part of Grenade. Grenade had reasonable grounds under the circumstances (i.e., being licensed to use mark to sell branded coffee products) to believe that the use of the website was lawful. The court also found that Grenade did not use the domain name as leverage for ransom to get money. Instead, Grenade&rsquo;s offer to sell the domain name in exchange for modifications to the license agreement was part of a business negotiation. The court held that Grumpy Cat Limited did not show that Grenade acted in bad faith and denied its cybersquatting claim. At present Grumpy Cat is on the prowl to claw back the attorneys&rsquo; fees her owner spent prosecuting the case and defending against Grenade&rsquo;s counterclaim.&nbsp;&nbsp;&nbsp;</p> <p>To avoid experiencing the grumpiness the defendants did in this case&mdash;and worse, paying damages for infringement&mdash;a licensee must carefully review and negotiate the terms of license agreements to make certain that the licensee receives the permissions desired for the products and services that it intends to offer under the licensed brand. The licensee should also try to obtain limitations on a licensor&rsquo;s approval of new products, such as specifying time frames for approval and not unreasonably withholding approval. In addition to any accountings required by the license terms, a licensee should also audit its activities periodically under license agreements to make sure that they continue to comply with the license terms. When a licensee wants to expand use of the licensed mark to new and different products, the licensee should follow any notice provisions and instructions in the agreement for seeking the prior permission of the licensor to expand use of the licensed mark. If the brand owner declines to grant permission, then the licensee should not use the licensed mark on unlicensed products; doing so risks willful infringement liability and damages.&nbsp;</p> <p>Licensors should carefully identify the licensed properties and clearly define the scope of licensed products and services in their license agreements. Clearly defined licensed products and services help prevent ambiguities about what defined terms in the agreement mean. Licensors should also consider provisions restricting whether and how a licensee may use licensed marks online, including as domain names and on social media sites. If a licensor permits a licensee to register and own domain names that include the licensed mark, then the licensor should include provisions that facilitate the transfer of those domain names to licensor upon termination or expiration of the license.&nbsp; &nbsp;</p> <p>Please contact Fitch Even partner <a href="https://www.fitcheven.com/?t=3&amp;A=2617&amp;format=xml&amp;p=5482">Alisa C. Simmons</a> with any grumpy comments concerning this case.<br /> &nbsp;</p> <p><b>Fitch Even IP Alert<sup>&reg;</sup></b></p>IP Alerts04 Jul 2018 00:00:00 -0800https://www.fitcheven.com/?t=40&an=78394&format=xmlFitch Even Participates in Back 2 School Illinois Programhttps://www.fitcheven.com/?t=40&an=78375&format=xml<p>On June 28, at our Chicago office, a number of Fitch Even attorneys and staff along with their children took part in the Back 2 School Illinois &quot;Build-a-Kit&quot; program for the second consecutive year, assembling 100 kits containing school supplies to be distributed to grade-school students currently living in foster homes overseen by the Illinois Department of Children and Family Services.</p> <p><a href="http://b2si.org/">Back 2 School Illinois</a> is a 501(c)(3) nonprofit whose mission is to create and support educational opportunities that enrich the lives of Illinois children. They partner with 16 <a href="http://b2si.org/partners/">community organizations and governmental agencies</a> to ensure school supplies are effectively distributed to children in need. In addition to its Back 2 School program, the organization offers other programs to fulfill their mission, including a college scholarship program.&nbsp;</p> <p>Fitch Even is proud to support Back 2 School Illinois in their efforts. Please visit our <a href="https://www.facebook.com/FITCHEVEN">Facebook page</a> to view photos from the event. <br /> &nbsp;</p>Community Activities03 Jul 2018 00:00:00 -0800https://www.fitcheven.com/?t=40&an=78375&format=xmlIP Alert: PTAB Issues Rare Discretionary Denialhttps://www.fitcheven.com/?t=40&an=78336&format=xml<p>On June 27, in <i><a href="/2E8FB4/assets/files/Documents/American Honda Motor Co. v Intellectual Ventures II.pdf">American Honda Motor Co., Inc. vs. Intellectual Ventures II LLC</a></i>, the Patent Trial and Appeal Board (PTAB) used its rarely exercised discretionary authority to deny institution of <i>inter partes</i> review (IPR) proceedings. The PTAB concluded that institution was unwarranted in view of a previously initiated IPR that the petitioner had later joined.</p> <p>On June 9, 2017, a third party filed an IPR proceeding to challenge U.S. Patent No. 7,154,200, which is owned by Intellectual Ventures (&ldquo;IV&rdquo;). On December 21, 2017, Honda, the petitioner, filed a second petition to challenge a subset of claims challenged in the third-party IPR. The second petition asserted a first ground of invalidity based on a reference (Senju) not used in the first IPR and a second ground combining Senju with a reference (Koizumi), which was relied upon in the first IPR. On January 12, 2018, Honda filed a third IPR and moved to join the first IPR. The PTAB granted this motion on April 25, 2018.</p> <p>In considering whether to institute the second IPR, the PTAB applied the factors set forth in the 2016 PTAB decision <i>Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha</i>, along with two additional factors. The factors, findings, and the PTAB&rsquo;s determination are summarized in the table below.&nbsp;&nbsp;&nbsp;<br /> &nbsp;</p> <table border="1" cellspacing="0" cellpadding="3"> <tbody> <tr> <td width="208" valign="top"> <p><strong>Factor<br /> </strong></p> </td> <td width="314" valign="top"><strong>Findings</strong></td> <td width="102" valign="top"><strong>Determination</strong></td> </tr> <tr> <td width="208" valign="top"> <p>Whether the same petitioner previously filed a petition directed to the same claims of the same patent</p> </td> <td width="314" valign="top"> <p>The third IPR, joined with the first IPR, is considered a petition directed to the same claims.</p> </td> <td width="102" valign="top">Moderately against institution</td> </tr> <tr> <td width="208" valign="top"> <p>Whether at the time of filing of the first petition the petitioner knew of the prior art asserted in the second petition or should have known of it</p> </td> <td width="314" valign="top">Honda may have been monitoring litigations involving the patent at issue, which would have apprised petitioner of the Koizumi reference.</td> <td width="102" valign="top">Low weight against institution</td> </tr> <tr> <td width="208" valign="top"> <p>Whether at the time of filing of the second petition the petitioner already received the patent owner&rsquo;s preliminary response to the first petition or received the PTAB&rsquo;s decision on whether to institute review in the first petition</p> </td> <td width="314" valign="top">The preliminary response and the institution decision in the first IPR preceded the filing of the second IPR. Honda&rsquo;s citations to Koizumi in the obviousness ground reveals that they mimic positions from the Koizumi obviousness ground in the first IPR.</td> <td width="102" valign="top">Strongly against institution</td> </tr> <tr> <td width="208" valign="top"> <p>The length of time that elapsed between the time the petitioner learned of the prior art asserted in the second petition and the filing of the second petition</p> </td> <td width="314" valign="top">Honda knew or should have known of Koizumi, but no evidence on record indicates when Honda learned of Senju.</td> <td width="102" valign="top">Neutral</td> </tr> <tr> <td width="208" valign="top"> <p>Whether the petitioner provided adequate explanation for the time elapsed between the filings of multiple petitions directed to the same claims of the same patent</p> </td> <td width="314" valign="top">Honda was served with a defective district court complaint nine months before the filing of the petition, but the petition was filed within two months of the operative complaint.</td> <td width="102" valign="top">Neutral</td> </tr> <tr> <td width="208" valign="top"> <p>The finite resources of the PTAB</p> </td> <td width="314" valign="top">Honda uses two separate petitions against the same claims.</td> <td width="102" valign="top">Low weight against institution</td> </tr> <tr> <td width="208" valign="top"> <p>The requirement under 35 U.S.C. &sect; 316(a)(11) to issue a final determination not later than one year after the date on which the Director notices institution of review.</p> </td> <td width="314" valign="top">The PTAB can meet the requirement of issuing a final determination within one year.</td> <td width="102" valign="top">Low weight favors institution</td> </tr> <tr> <td width="208" valign="top"> <p>Whether there is potential prejudice to the petitioner if the petition is denied</p> </td> <td width="314" valign="top">Honda can proceed against the challenged claims in the first even if the other petitioner entities were to withdraw.</td> <td width="102" valign="top">Moderately against institution</td> </tr> <tr> <td width="208" valign="top"> <p>Patent owner&rsquo;s activity</p> </td> <td width="314" valign="top">IV sought to enforce the patent in multiple actions resulting in multiple IPR petitions.</td> <td width="102" valign="top">Slightly favors institution</td> </tr> </tbody> </table> <p class="MsoNormal" style="line-height:normal"><br /> Considering these factors, the PTAB concluded that the factors collectively weighed against institution. The PTAB was swayed particularly by the fact that Honda chose to file two separate petitions and that the petition in this case overlaps the other insofar as it relies on the same reference, Koizumi, in a similar way. The PTAB further noted that the petitioner can continue its challenge of the same claims in the first IPR. <o:p></o:p></p> <p class="MsoNormal" style="line-height:normal">This decision is notable in that Honda&rsquo;s strategic decision to file the third petition and motion to join the first IPR ultimately resulted in the denial of the second petition. Notably, although Honda can challenge the same IV claims in the first IPR, it is likely that Honda cannot rely on the Shenju reference as a ground for invalidity in that proceeding. The decision illustrates that the PTAB heavily disfavors relying on the same reference in multiple IPR petitions even if the reference is only used as a secondary reference in an obviousness combination with a new reference. Petitioners should carefully consider this case in strategizing filings and selecting references when multiple IPRs are involved with the same patent.<o:p></o:p></p> <p class="MsoNormal" style="line-height:normal">If you have any questions regarding this decision, please contact Fitch Even partner <a href="https://www.fitcheven.com/?t=3&amp;A=3766&amp;format=xml&amp;p=5482">Karen J. Wang</a>, author of this alert.<b><span style="font-size: 11pt; line-height: 107%; font-family: Calibri, sans-serif;"><br type="_moz" /> </span></b></p> <p><strong><br /> Fitch Even IP Alert<sup>&reg;</sup> </strong><br /> &nbsp;</p>IP Alerts02 Jul 2018 00:00:00 -0800https://www.fitcheven.com/?t=40&an=78336&format=xmlIP Alert: <i>SAS</i> Requires Institution on All Grounds, Not Just All Claimshttps://www.fitcheven.com/?t=40&an=78374&format=xml<p>Today the Federal Circuit issued a precedential order remanding the case of <i>Adidas AG v. Nike, Inc. </i>to the Patent Trial and Appeal Board (PTAB). Adidas had challenged two Nike patents via <i>inter partes </i>review (IPR) proceedings, raising two grounds of review in each case. The PTAB granted Adidas&rsquo;s petitions and instituted IPR proceedings for all of the challenged claims, but limited its review to only the first invalidity ground. In October 2017, the PTAB issued a final written decision holding that Adidas had not prevailed on this first ground. Adidas appealed.</p> <p>On April 24, 2018, the U.S. Supreme Court issued its decision in <i><a href="https://www.fitcheven.com/?t=40&amp;an=76257&amp;anc=180&amp;format=xml&amp;p=5486">SAS Institute Inc. v. Iancu</a></i>, holding that if the PTAB institutes review proceedings, the review must proceed &ldquo;in accordance with or in conformance to the petition&rdquo; (internal quotation marks omitted).</p> <p>Nike argued that the <i>SAS c</i>ase was inapplicable to the present appeal because <i>SAS </i>only required institution of all <i>claims</i>, not all grounds. In this case, argued Nike, the first asserted invalidity ground encompassed all challenged claims, so the PTAB need not have instituted the IPR for the second ground. The Federal Circuit disagreed, concluding that a Supreme Court&rsquo;s reasoning in <i>SAS</i>&mdash;that the petition controls the scope of the proceeding&mdash;likewise requires that the PTAB institute on all <i>grounds </i>raised in the petition if instituting an IPR.</p> <p>Nike further contended that Adidas had waived its &ldquo;all grounds&rdquo; arguments by failing to present it to the PTAB. The court rejected Nike&rsquo;s waiver argument, observing that Adidas had promptly acted to request remand after the <i>SAS </i>case was decided.</p> <p>Today&rsquo;s decision clarifies an aspect of PTAB practice. Please contact Fitch Even partner <a href="https://www.fitcheven.com/?t=3&amp;A=2587&amp;format=xml&amp;p=5482">Paul B. Henkelmann</a> for more information.<br /> <b><br /> Fitch Even IP Alert<sup>&reg;<br /> <br type="_moz" /> </sup></b></p>IP Alerts02 Jul 2018 00:00:00 -0800https://www.fitcheven.com/?t=40&an=78374&format=xmlIP Alert: Federal Circuit Zeros in on Analysis of ZERO Terms in Beverage Markshttps://www.fitcheven.com/?t=40&an=78305&format=xml<p>On June 20, in <u><a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/16-2375.Opinion.6-20-2018.pdf"><font color="#0563c1">Royal Crown Co., Inc. v. The Coca-Cola Co.</font></a></u>, the Federal Circuit provided significant guidance on the doctrine of generic and merely descriptive terms in trademark law. The court remanded an opposition proceeding to the U.S. Patent and Trademark Office (USPTO) for further assessment into the distinctiveness of the term ZERO for certain soft drink beverages. Notably, the court held that if a mark is generic in a subcategory of products or services, the mark will be deemed generic for the entire category of products or services.</p> <p>More than 10 years ago, Coca-Cola filed trademark applications for several beverage marks containing the term ZERO, such as COCA-COLA ZERO, SPRITE ZERO, and PIBB ZERO, among others. During examination of these applications, the USPTO asked Coca-Cola to disclaim trademark rights in the term ZERO, alleging that purchasers of beverages would not understand the ZERO term as a source identifier, but rather would see it as a description of no or low calories. In a disclaimer, the owner of a mark acknowledges that it has no trademark rights in the disclaimed term, apart from the overall mark. Instead of agreeing to the disclaimer, Coca-Cola responded by submitting survey evidence to support that consumers associate ZERO with Coca-Cola. The USPTO accepted this evidence of acquired distinctiveness and withdrew the requirements for disclaimers.</p> <p>Royal Crown opposed these Coca-Cola beverage marks when published, seeking disclaimers of trademark rights to the term ZERO as being merely descriptive and generic of certain types of beverages and unable to indicate the source of such beverages. Royal Crown also uses the term ZERO as a part of its marks, such as DIET RITE PURE ZERO, and disclaimed the ZERO term in trademark filings. Royal Crown offered evidence of its own and others&rsquo; use of ZERO in connection with beverages as well as filings for ZERO trademarks. In dismissing the oppositions, the Trademark Trial and Appeal Board (TTAB) concluded that Royal Crown&rsquo;s evidence failed to prove that ZERO is generic for the broad category of soft drinks specified in the Coca-Cola applications. The TTAB accepted the survey evidence to affirm that Coca-Cola had acquired distinctiveness in the term ZERO when used as a term in a mark for soft drinks.</p> <p>Royal Crown appealed to the Federal Circuit, which vacated the TTAB&rsquo;s decision with a remand for further proceedings. The Federal Circuit noted that by pursuing registration relying on acquired distinctiveness, Coca-Cola conceded that the term ZERO is initially no stronger than merely descriptive. The appellate decision examines the appropriate assessment of such descriptive terms and reminds the TTAB that a term found to be generic in a subcategory of soft drinks makes the term generic for the broad category of soft drinks.</p> <p>Turning first to whether the term is generic and, if so, subject to disclaimer, the Federal Circuit found that the TTAB &ldquo;failed to examine whether ZERO identified a key aspect of the genus at issue, and it failed to examine how the relevant public understood the brand name at issue when used with the descriptive term ZERO.&rdquo; On remand, the Federal Circuit asked the TTAB to consider whether the &ldquo;consuming public would consider the term ZERO to be generic for a subcategory of the claimed genus of beverages&mdash; . . . specialty beverage categories of drinks with few or no calories or few or no carbohydrates.&rdquo; If generic for this subcategory of no or low-sugar beverages, then the term is generic and must be disclaimed.</p> <p>The Federal Circuit turned next to the assessment of Coca-Cola&rsquo;s evidence supporting acquired distinctiveness in the term ZERO. The Federal Circuit concluded that the TTAB never made &ldquo;any finding as to the degree of descriptiveness conveyed by the term ZERO in the marks[,]&rdquo; which finding would then guide the amount of evidence needed to establish acquired distinctiveness. The court pointed to the longstanding principle that the amount of evidence needed to establish acquired distinctiveness correlates with the descriptiveness of the term at issue. On remand, the TTAB should &ldquo;make an express finding regarding the degree of the mark&rsquo;s descriptiveness on the scale ranging from generic to merely descriptive, and it must explain how its assessment of the evidentiary record reflects that finding.&rdquo;</p> <p>This decision does not rule whether the ZERO term for beverages is generic or not, or whether Coca-Cola has acquired distinctiveness in the ZERO term. However, the Federal Circuit&rsquo;s guidance indicates that evidence in the opposition proceeding will face a higher degree of scrutiny on both of these issues on remand.</p> <p>For more information on this decision, please contact Fitch Even partner <a href="https://www.fitcheven.com/?t=3&amp;A=2600&amp;format=xml&amp;p=5482"><font color="#0563c1">John E. Lyhus</font></a>, author of this alert.</p> <p>&nbsp;</p> <p><b>Fitch Even IP Alert<sup><font size="2">&reg;</font></sup></b></p> <br /> <br />IP Alerts28 Jun 2018 00:00:00 -0800https://www.fitcheven.com/?t=40&an=78305&format=xmlIP Alert: Supreme Court to Consider Copyright Casehttps://www.fitcheven.com/?t=40&an=78315&format=xml<p class="MsoNormal">Today the U.S. Supreme Court granted writs of certiorari in two cases touching on intellectual property law. In the first case, <em>Fourth Estate Public Benefit Corp. v. Wall-Street.com LLC</em>, the Court granted certiorari to consider when registration of a copyright claim has &ldquo;been made&rdquo; under the Copyright Act. Currently, some appellate courts hold that registration has been made when the copyright holder files the copyright application, while others hold that registration has not been made until the Copyright Office issues the registration.<o:p></o:p></p> <p>A second case, <em>Franchise Tax Board of California v. Hyatt</em>, is a dispute between frequent litigant Gilbert Hyatt and the California tax authorities. The case relates to Mr. Hyatt&rsquo;s revenues from patent licenses. <o:p></o:p></p> <p>Fitch Even attorneys will report on the Fourth Estate case and on any intellectual property issues in the Hyatt case once the Court has issued its opinion in each.</p> <p><strong><br /> Fitch Even IP Alert</strong><sup><strong>&reg;</strong></sup></p>IP Alerts28 Jun 2018 00:00:00 -0800https://www.fitcheven.com/?t=40&an=78315&format=xmlIP Alert UPDATE: Supreme Court to Consider AIA "On Sale" Barhttps://www.fitcheven.com/?t=40&an=78265&format=xml<p>UPDATE: On June 25, 2018, the U.S. Supreme Court granted a writ of certiorari in <i>Helsinn Healthcare S.A. v Teva Pharmaceuticals USA, Inc. </i>The Court will consider the following question:</p> <p>&ldquo;Whether, under the Leahy-Smith America Invents Act, an inventor&rsquo;s sale of an invention to a third party that is obligated to keep the invention confidential qualifies as prior art for purposes of determining the patentability of the invention.&rdquo;</p> <p>Our alert summarizing the Federal Circuit&rsquo;s May 2017 ruling in this case can be found <a href="https://www.fitcheven.com/?t=40&amp;an=65334&amp;anc=180&amp;format=xml&amp;p=5486"><font color="#0563c1">here</font></a>.</p> <p>Fitch Even attorneys will report once the Court has issued its opinion.<br /> &nbsp;</p> <p><b>Fitch Even IP Alert<sup><font size="2">&reg;</font></sup></b></p> <br /> <br />IP Alerts26 Jun 2018 00:00:00 -0800https://www.fitcheven.com/?t=40&an=78265&format=xml