News & Events

In re Sones: New Ruling Provides a Uniform Approach to U.S. Patent and Trademark Office (USPTO) Review of Specimens of Use When submitting a web page as a specimen for goods, the USPTO will no longer require a picture of the goods and instead, in the absence of a picture, will accept a written description of the goods for which registration of the mark is sought. As many of you know, U.S. law requires that a trademark applicant submit a specimen of use before a mark is allowed to register. The intent of the specimen is to show that the mark is used in association with the goods. This specimen must be submitted with the application or, in the case of an intent to use application, after the mark is allowed. Generally, for goods, this requires a label, tag, or container for the goods, or a display associated with the goods. Also acceptable have been catalogs, as well as electronic displays (i.e. on a web site). In order for an electronic display to be accepted, the USPTO in the past has required that the mark be used in association with a picture of the goods along with a means for purchasing the goods (for example, information on cost, and an on-line ordering and purchasing process, or a toll-free number.)

Last month, the U.S. Court of Appeals for the Federal Circuit clarified this requirement for a picture of the goods and allowed that, in the absence of a picture, a description of the goods would suffice. This overturns a standard used by the USPTO for over ten years, which required website and catalog specimens specifically to include a picture of the relevant goods to be considered acceptable. Trademark owners now have greater flexibility in proving use where the goods are sold on-line and make it all the more easier for applicants to get an acceptable specimen filed to support registration of a mark.

The Court of Appeals in In re Sones, ___ F.3d ___, ___ USPQ2d ___, No. 2009-1140, 2009 U.S. App. LEXIS 28198, at *11-13 (Fed. Cir. Dec. 23, 2009), held that there is no absolute requirement that an acceptable specimen show an actual picture of the goods, and that submissions by trademark owners of website or catalog pages that have a textual description of the goods may be perfectly acceptable to the USPTO during the application process to fulfill the statutory requirement to show use of the mark in connection with the claimed goods or services. In In re Sones, the applicant attempted to register the mark ONE NATION UNDER GOD in connection with charity bracelets, and submitted as a specimen of use a website printout that gave the name of the applicant, depicted the mark and a briefly worded description of the goods, and provided an opportunity to purchase the bracelets. Next to the description of the bracelets was a gray-shaded box that stated “photo not availble” [sic]. The USPTO Examiner and Appeal Board refused to accept this website printout as a proper specimen because it did not include a photograph of the goods, and based their determination on an interpretation of an earlier case, Lands’ End, Inc. v. Manbeck, 797 F. Supp. 511 (E.D. Va. 1992). In Lands’ End, the issue was whether catalog pages could suffice as proper specimens of use for trademarks as required by the Lanham Act, which states an applicant must show “use in commerce” by submitting evidence that the mark is “placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto.” ₁

The Lands’ End court observed that the catalog pages in that case “include[d] a picture and a description of each item,” however, it determined that because the catalog pages allowed a customer to make a decision to purchase by sending in an order form, the pages constituted a proper display associated with the goods.

Subsequently in 1997 the USPTO instructed its examiners “to accept any catalog or similar specimen as a display associated with the goods provided that (1) it includes a picture of the relevant goods, (2) it includes the mark sufficiently near the picture of the goods to associate the mark with the goods, and (3) it includes information necessary to order the goods.” ₂

Until now, the requirement to include a picture of the goods has been repeated in the several subsequent decisions but has not been specifically challenged. The court in In re Sones has now specifically removed that requirement and admonished the USPTO to consider the evidence as a whole, consistently looking for point-of-s al e access, accurate descriptions of the goods in some form, reference to the source of the goods, and other factors as required by statute no matter what form of specimen is submitted. Although this conclusion seems obvious now, for trademark owners, I n re Sones is a welcome clarification that the actual test for an acceptable website specimen, as with all specimens, is whether it shows that the mark is associated with the goods and serves as an indicator of source; there is no absolute requirement that an acceptable specimen show an actual picture of the goods.

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₁ 11 U.S.C. Section 1127.

₂ See TMEP Section 904.03 (6th ed. Oct 12, 2009) as this test still appears in the latest version.

The Supreme Court (“the Court”) heard oral arguments last Monday in the matter of In re Bilski. For those not familiar with the case, Bilski applied for a patent with the U.S. Patent Office (“PTO”) claiming a method for commodities trading. The PTO rejected the claims on the theory they did not qualify as protectable subject matter under U.S. patent law. Following two appeals, ending with the Court of Appeals for the Federal Circuit (the country’s patent court), the PTO’s decision was upheld with Bilski’s claims ultimately failing the new “machine-or-transformation” test. As was expected, Bilski appealed to the Supreme Court.   U.S. patent law says that “any new and useful process, machine, manufacture, or composition of matter” is entitled to a patent, provided it is novel and not obvious (two requirements not at issue in this case). The question for the Court in Bilski boils down to what is a “process”?   The government’s position was that this question is adequately answered by the Federal Circuit’s “machine-or transformation” test. Additionally, the government advocated for restraint from the Court in making any broad pronouncements that might negatively affect process patents, such as finding all business methods not patentable. Bilski’s position was considerably different, taking the stance that the “machine-or-transformation” test has no statutory support or support in case law, and that it is obvious from the statute that “process” is meant to mean any process.

The Court did not seem happy with either of these positions during oral argument, causing two themes to emerge during questioning: (1) the justices were highly skeptical of Bilski’s invention; and (2) the justices were extremely bewildered as to what the test for a patenteligible process should be. Despite the Court’s confusion, the Court is almost guaranteed to deny Bilski a patent. The real mystery is on what basis will the Court do so?  While the Court, overall, seemed less concerned with the “machine-or-transformation” test than with the subject matter of Bilski’s claims, there was apprehension expressed over the apparent rigidity of the test; in particular, how will it affect future technologies.   The worry is that there may be unforeseen consequences that could stifle future innovation under the “machine-or-transformation” test. But this concern paled in comparison to the tough, and sometimes sarcastic, questions directed to Bilski’s commodities trading invention

The questions at argument strongly hint at the end result in the justices’ minds for t hi s case.  Unfortunately, there were no such hints for what the basis will be for denying Bilski a patent. One option is to stick with the “machine-or transformation” test, but wait for a more “appropriate” case to answer the question of what is a “process” under the statute. The Court may alternatively put forth a new test, with such tests as a “useful arts” test or “no abstract ideas or laws of nature” test popping up at argument. The Court may also just do away with business method patents altogether and deal with other process patents, such as software or diagnostic treatments, in later cases.

It is impossible to predict how the Court will rule in this case and what new test, if any, will come down. But going on the theory that sweeping pronouncements that will have large impacts, such as completely banning business methods, are not something the Supreme Court does often, a limited and even narrow ruling is likely the result. So, for now it should be business as usual. Innovations in processes, such as software, diagnostic testing, and even business methods should continue to be patented, but with an eye towards careful and robust patent application drafting.

At a recent meeting in Seoul, Korea, the Board of the Internet Corporation for Assigned Names and Numbers (ICANN) approved the Internationalized Domain Name (IDN) Country Code Top-Level Domain Names (ccTLDs) Fast Track Process. In addition to the Latin alphabet country codes currently in use, ccTLDs composed of nearly every known script will soon be available.

Historically, domain names on the Internet have been restricted to a limited set of characters: 26 Latin letters, the numerals 0 to 9, and a hyphen. Internationalized Domain Names (IDNs) are domain names represented by local language characters. IDNs could contain letters or characters from alphabets, such as Korean, Vietnamese, Chinese, Cyrillic, Arabic, and other languages using non-Latin alphabets and non-Roman characters. Because ICANN has long permitted use of non-Roman scripts in the portion of the domain name preceding the “dot,” it will soon be possible to register Web site addresses written entirely in a script other than Roman and a language other than English.

The IDN ccTLD Fast Track Process will launch on 16 November 2009. Countries and territories will be able to request their country name in the script of their choice as a top-level domain name. Approval of these requests is expected to take several months, and it is hoped that the new ccTLDs will be available to Internet users in early to mid-2010. Countries and territories that use languages based on scripts other than Roman will then be able to offer their Internet users domain names entirely in non-Roman characters.

How does this development affect your business? If you do business in areas around the world where the predominant alphabet is something other than the Latin alphabet, you should consider developing transliterations of your trademarks and service marks from the Latin alphabet into the alphabet of those countries. In addition, be ready to register those transliterations as domain names when the time comes. If the transliterations are used in the packaging or marketing of your products or services, you should also consider registration of those transliterations as trademarks in order to fully protect your trademark rights in the countries where the transliterations are used.

The Federal Law has for many years provided that any registration obtained based upon the submission of fraudulent representations could be cancelled.  Fraud has historically been considered different from mere submission of a “false” statement in the following way.  A false statement might be made if a person simply makes a mistake in stating the facts.  The mistake might be due to a misunderstanding, negligence, or inadvertence.  A fraudulent statement is one made with an intention to deceive someone.

A few years ago the Trademark Trial and Appeal Board (TTAB) decided in a formal opinion that a registration should be cancelled because the owner reported in a signed statement submitted to the trademark office that the mark had been used with neurological stents and catheters. Medinol v. Neuro Vasx, Inc., 67 U.S.P.Q. 2d 1205 (T.T.A.B. 2003).   When the registration was later challenged as invalid the owner admitted that not only had the mark never been used for stents, but the company had never sold stents.  The TTAB declared the submission of the statement that the mark was used on stents was fraudulent and declared the registration invalid.

Medinol would not have caused much concern if the TTAB had only found that the statement that the mark was used on stents by the company when, in fact, stents were never sold by company was fraudulent because the statement was made with an intention to deceive the trademark office.  The TTAB went one step further, however, and stated that “the undisputed facts in this case clearly establish that the respondent knew or should have known at the time it submitted its statement of use that the mark was not in use on all of the goods.”  This statement was construed by lawyers and Courts to eliminate the requirement to find that a fraudulent statement was made with a specific intention to deceive.

Lawyers argued and subsequent Courts found that making a statement to the Trademark Office when one “should have known” otherwise constitutes fraud and would support the cancellation of a registration.  We are pleased to see that the U.S. Federal Court of Appeals for the Federal Circuit (CAFC) has now in the case of In re Bose Corporation corrected this odd blip in the field of trademark law.  Recently the CAFC confirmed that fraud can only be found in the prosecution of a trademark application or maintenance of a trademark registration if a statement i s made with knowledge that it is false and the statement is a material misrepresentation.

The CAFC was presented with a perfect case to correct the aberrant line of cases developing after Medinol. In the Bose case a challenger asserted that the registration for the famous WAVE trademark used to identify Bose radios should be cancelled because the General  Counsel of Bose represented that the mark was being used with audio tape recorders and players.   Technology has evolved to the point that Bose no longer sells new tape recorders and players but Bose still repairs previously sol d tape recorders and players.  The General Counsel made the statement after the change in technology but was under the mistaken impression that the repair activity constituted use of the mark with tape recorders and players.   The CAFC correctly noted that fraud cannot be found if a false misrepresentation is based on an honest misunderstanding or inadvertence without willful intent to deceive.   The Bose Court also determined that the proper remedy in the case of such mistakes is simply to delete from the registration the goods with which the mark was not used.  No longer do trademark registration owners face cancellation of an entire registration or an entire class from a registration where a mistaken statement is submitted to the trademark office but there is no intention to deceive.    The unfortunate aspect of this entire line of cases is that the Medinol Board had sufficient facts to find that the misrepresentations made by Medinol were made with specific intention to deceive and were thus fraudulent.  Medinol’s President would have been hard pressed to convince the Board he made an honest mistake when he stated that his company used the mark with stents when his company never  sold stents.

Effective June 15, 2009, Google has changed its US trademark policy to permit the use of third party trademarks in adword text and on sponsored link websites. Specifically, the policy states in the following terms that trademark owners will have to police the use of their marks on the web independent of Google.

Google is not in a position to arbitrate trademark disputes between advertisers and trademark owners. As stated in our Terms and Conditions, advertisers are responsible for the keywords and ad text that they choose to use. Accordingly, Google encourages trademark owners to resolve their disputes directly with the advertiser, particularly because the advertiser may have similar ads on other sites. However, as a courtesy to trademark owners, Google is willing to perform a limited investigation of reasonable complaints.

Historically, the search-engine giant has been more accommodating to trademark owners than other search engines. Specifically Google previously had a policy that prohibited the use of a trademark in ad text that was featured in the sponsored link or the highlighting of a particular brand unless the site owner was also the trademark owner or the site owner had the approval of the trademark owner ( yes, those wonderful “affiliate” programs ) . This policy theoretically enabled trademark owners to prevent others from promotion of goods under their trademarks.

It is probably not a coincidence that this change in policy came roughly a month after the U.S. Court of Appeals for the Second Circuit ruled that a lawsuit may proceed in which the Plaintiff has asserted that Google’s sale of trademarks as adwords constitutes infringement of the rights owned by the rightful owners of those trademarks. Google argued that the sale of trademarks as adwords was not a “use” of the trademark in commerce and therefore could not infringe the rights of trademark owners. Google may still win that case. In order to stop Google’s sale of trademarks as adwords, the Plaintiff will have to prove that the sale of adwords by Google is likely to confuse consumers who are drawn to rival websites. Proving the likelihood of such confusion may be tough. Nonetheless, Google is now faced with discovery and possibly trial if the case does not settle.

Seemingly in response to this burden, Google issued the more hands off trademark policy that advises trademark owners to police their own marks as used on Google advertisements. True that the case addresses sale of adwords and not use of trademarks as keywords or in advertising text, but perhaps Google has decided to leave those burdens to the trademark owners who are annoyed by Google’s sale of trademarks as adwords to competitors.

Trademark owners still have some recourse with Google in addressing trademark infringement on Google advertisements. For example Google’s Trademark Complaint Procedure for Adwords states that “Google recognizes the importance of trademarks. Our AdWords Terms and Conditions with advertisers prohibit intellectual property infringement by advertisers. Advertisers are responsible for the keywords they choose to generate advertisements and the text that they choose to use in those advertisements.” Moreover, in egregious cases Google has agreed to “investigate all reasonable complaints; our actions may include disapproving or disabling ads and/or terminating advertisers. Any such investigation and action will only affect ads served on or by Google.” You should be aware, however, that “upon request and approval, a complainant’s contact details may be forwarded to the affected advertiser( s ) .” i.e., Google will give you up to the infringer if they ask why their advertisement has been disapproved or disabled.

Google’s updated policy now seems to be in line with that of other search engines. The bottom line – now that Google’s “hands off” policy has taken effect on the web, it is even more important that trademark owners conduct internet searches of their marks on a regular basis. Policing your trademarks in a proactive way is the best way to prevent infringing uses from growing both in terms of geographic distribution of goods and markets. The change in Google’s trademark policy makes the use of a competitor’s trademark on a Google sponsored ad possible but does not make it legal. More and more companies are now instructing their external legal counsel to monitor their marks on a quarterly or bi-annual basis and alert them of any possible misuse.

New York, NY – The Boeing Co. has won a patent infringement suit in the U.S. Court of Federal Claims based on NASA’s use of an aluminum alloy in the space shuttle. With the assistance of Christensen O’Connor Johnson Kindness (primarily member Lee Johnson), Boeing obtained the patent on the aluminum alloy in 1989. The alloy provided a lighter structure for aircraft frames. NASA has been ordered to pay Boeing a total of $28.3 million, including $11.3 million in interest, after a U.S. Federal judge concluded that techniques used in constructing the space shuttle infringed Boeing’s patent.

Boeing developed a composition that could be heat-treated with a process called low temperature underaging to create an alloy suitable for airplane manufacturing. COJK filed the original application and obtained the patent in 1989, and Boeing subsequently licensed the patent to three aluminum manufacturers.

The patent-in-suit is U.S. Patent Number 4,840,682, issued in 1989 and titled “Low temperature underaging process for lithium bearing alloys.”

The case is The Boeing Co. v. U.S., case number 00-cv-00705, in the U.S. Court of Federal Claims.

To view the original story on Law360 please follow the link below: http://ip.law360.com/articles/97559

Seattle, WA – Six Christensen O’Connor Johnson Kindness PLLC attorneys have been named as “Washington Rising Stars” for 2010 by Washington Law & Politics magazine. The six include members Emily Peyser and Tina Quinton, and associates Margie Aoki, Matt Balint, Landin Boring and Pam Jacobson. “Rising Stars” is a list of the leading up-and-coming attorneys in Washington who are either 40 years of age or less or have no more than ten years of practice experience.

In order to be selected, lawyers must receive recognition from their peers and an independent, attorney-led research team. Only a small percentage of attorneys in Washington receive this honor. The names of all the “Rising Stars” for 2010 appear in the Winter issue of Washington Law & Politics.

CHRISTENSEN O’CONNOR JOHNSON KINDNESS PLLC are pleased to announce the appointment of two new Members, Emily C. Peyser and Tineka J. Quinton with effect from 1 Jan 2009. The firm is also very pleased to welcome back James W. Anable as Of Counsel.

EMILY C. PEYSER

Emily joined the firm as a Law Clerk in 2001, and became an Associate in 2003. Her practice encompasses the procurement of U.S. and foreign patents primarily in the chemical and mechanical fields. She also counsels clients on general intellectual property matters, including trademark, copyright and licensing. Her technical experience includes chemical engineer positions at Boeing and Proctor & Gamble. She has also worked as a research associate at the Environmental Protection Bureau of the New York Attorney General’s Office.

TINEKA J. QUINTON

Tina joined the firm as a Law Clerk in 2001, became a Patent Agent in 2002, and an Associate in 2003. Her practice focuses on patent drafting and prosecution, opinions, due diligence studies, and client counseling primarily in the fields of biotechnology and the medical sciences. Her extensive experience as a research scientist at Targeted Genetics, Zymogenetics, and Fred Hutchinson Cancer Research Center gives her insight into patent procurement in the fields of molecular biology, genetics, and immunology. As a published research scientist and patent holder, Tina is well versed in our clients’ challenges both in the laboratory and in effectively handling intellectual property matters. Jerry Nagae, COJK Managing Partner commented: “We are very pleased to welcome Emily and Tina to the membership. They are both extremely capable attorneys, with significant technical backgrounds that will continue to benefit many of the firm’s clients and practices.”

JAMES W. ANABLE

Jim joined the firm as an Associate in 1975, becoming a Member in 1980. He returns to the firm as Of Counsel from Townsend and Townsend and Crew. Jim’s career has spanned the gamut of legal practice relating to patents, copyrights, trademarks, and trade secrets. Currently, the focus of Jim’s practice is dispute resolution, where he has served as lead counsel in numerous court actions, arbitrations, and mediations in both federal and appellate courts. He also has extensive technical experience in the areas of discrete and integrated circuits, semiconductor manufacturing techniques, computer-generated speech, acoustics, analog and digital circuit design for telephone station sets, and mobile telephone systems. Jerry Nagae, COJK Managing Partner commented: “It is with great pleasure that we welcome Jim back to the firm. He brings with him a wealth of knowledge and experience that will not only benefit clients, but other attorneys within the firm.”

The 2008 Law Firm Diversity Report presented by the Minority Bar Associations of Washington Joint Committee on Law Firm Diversity (JCLFD) has ranked COJK as one of the most diverse firms in Washington.

The Firm is ranked No. 1 in:

• Highest Percentage of Racial and Ethnic Minority Attorneys
• Highest Percentage of Combined Minority, Female, GLBT, and Disabled Partners

The JCLFD created and distributed a Law Firm Diversity Questionnaire to the 50 largest firms or law firm offices in Washington State, as reported by Washington Law and Politics. The Questionnaire sought detailed demographic information regarding the racial/ethnic, gender, sexual orientation, and disability status of attorneys and summer associates in the law firms that were surveyed.

Jerry Nagae, COJK’s Managing Partner, said: “COJK has always believed in the power of a diverse workforce, which has shaped our approach in the way we think, work, and behave.”

The JCLFD is a coalition of leading attorneys in the Northwest from nine prominent minority bar associations:

• Asian Bar Association of Washington
• Korean American Bar Association of Washington
• Latina/Latino Bar Association of Washington
• Loren Miller Bar Association
• Northwest Indian Bar Association
• QLaw (the GLBT Bar Association of Washington)
• South Asian Bar Association of Washington
• Vietnamese American Bar Association of Washington
• Washington Women Lawyers (In consultation with the Washington Attorneys with Disabilities Association)

For further information, please contact: Arun Mistry, Marketing Director, +1 206 695 1750 or email: arun.mistry@cojk.com