• The colors are merely decorative background; it does not merge with the word trademark and create separate commercial impression
• The design consists of commonplace, geometric shapes (i.e., circle, square, heart, etc.).
• A single color is claimed but secondary meaning has not been proven
• Background designs that do not create a separate commercial impression.

Here are some examples where the TTAB made ornamentation refusals:

•In re F.C.F. Inc., 30 U.S.P.Q.2d 1825 (1994): A rose design used on packaging
•In re Right-On Co., Ltd., 87 U.S.P.Q.2d 1152 (2008): pocket stitching on clothing
• In re J. Kinderman & Sons Inc., 46 U.S.P.Q.2d 1253 (T.T.A.B. 1998): stars and the colors red, green and gold to resemble wrapped Christmas presents for tree-light company.

As a litigator, I tend to get these cases after there has been an ornamentation refusal. But there is a way to overcome this refusal.

The goal is to present evidence of secondary meaning to prove that buyers recognize this design or this shape or this color or this pattern or this location on the product so as to indicate origin. One notable case is In re G. Le Blanc Corp., 429 F.2d 989, 166 U.S.P.Q. 561 (C.C.P.A. 1970). Here, an ornamental objection was reversed after evidence was presented that customers recognized a particular configuration and location of a medallion on a brace on the side of trumpet.

This teaches us that customer recognition can play a huge role. Do customers perceive this feature as mere attractive ornamentation or also as a symbol that identifies and distinguishes a single source? Evidence of customer perception – although it sounds tricky – can be as simple as a survey. If I can prove customer recognition, there is a very good chance the ornamental refusal will be defeated. And designing a good customer survey is one of the few ways I also get to use my Masters Degree.

Fewer Fees!

Canada, unlike most jurisdictions, does not require that the wares and services be divided into classes, with fees payable for each. Only one application fee is payable, no matter how lengthy or diverse the listing of wares and services.

More Fees?

Unlike the US, the Canadian TM Office requires payment of a CDN $200 registration fee at the end of the process.

Classes

Speaking of classes, don`t expect that the Canadian Intellectual Property Office will accept the list of wares and services in a US registration. The Canadian Trade-marks Office demands a relatively high standard of specificity. Examiners will reject terms such as ”appliances”, “apparatus” or “equipment” as too vague, notwithstanding any additional descriptions, and is exceedingly picky about “software”, among other things. Nor should you expect to claim general categories of foodstuffs. “Juices” or “dips”, are likely to be met with a request that you specify what kind. Don`t even think about using the word “including”. In short, be prepared to amend your wares and services listing.

One Register Undivided

In Canada, there is only one TM register and it is national in scope. There are no provincial registers nor is there any “Supplemental Register”.

One Application, Also Undivided

In the US, an applicant may split an existing application based on grounds. For instance, if the original application includes elements of both “prior use” and ”intended use”, the applicant may “split off” a separate application from the original covering the “prior use” wares and services. In Canada, that is not possible. An applicant may delete wares and services, but may not “split them off” except by filing a whole new application.

Grounds for Application

In both countries, trade-mark applications may be based on (i) use of the mark in commerce (ii) proposed or intended use of the mark in commerce, or (iii) registration in a foreign jurisdiction (albeit in Canada, this ground also requires actual use in the foreign country). In Canada, a trade-mark application may also be based on the marks having been “made known” in Canada, i.e. that the fame of a mark in the foreign jurisdiction extends across the border into Canada.

Opposition Period: Double Time

In Canada, applications may be opposed for up to 2 months after advertisement in the Canadian TM Journal, whereas the opposition period in the US is 30 days after publication.

No Evidence Necessary

In Canada, TM applicants are not required to file specimens in order to secure a TM registration, nor is there any automatic requirement to file evidence of use in order to maintain the registration. In the US, a trade-mark owner must file an affidavit of use between 5 and 6 years after registration, and at the 10-year anniversary. In Canada, the only time evidence of use is required is in the event of a third party launching a cancellation proceeding.

The Colder the Climate, the Longer the Term

In Canada, a trade-mark registration lasts for 15 years and may be renewed for 15 year periods. In the US, registrations last only 10 years.

Parting Thoughts

If you are considering registering trade-marks in both the United States and Canada, be aware that each country has unique elements to its trade-mark registration procedure: what may fly in one country may be grounded in another. At Symbus, you have the benefit of experienced counsel in both countries to help you navigate the divide.

U.S. attorneys are often unaware of the concept of secondment attorneys although they are widely used in the U.K. and Europe. The term secondment derives from the days when the British army officers were given temporary assignments outside their regular regiment. The practice benefited the new regiment that received an additional set of hands and a fresh perspective from an experienced officer. In the legal world, this practice means that an experienced attorney from a law firm that offers “secondment” services can be placed in-house on a temporary basis. The attorney can then assist with complex projects and provide client support “in the trenches” and often do so with minimal supervision and training on the part of the hiring manager. When the project is completed the “secondment” attorney returns to her law firm work with a greater understanding of the company’s business and legal needs and can now work more effectively and efficiently with the company on a traditional basis.

Companies requiring special coverage for any of the following situations often use secondment services:

• An attorney on maternity or sick leave
• Long term projects, such as global trademark recordal assignments or name changes
• Global search and filing of a new brand
• A legal department that wants to bring their trademark portfolio in-house but does not need full-time trademark counsel
• Assistance with setting up in-house trademark operations
• Switching to a new trademark management database

How does hiring a secondment attorney differ from hiring a temporary attorney from an agency or borrowing an associate from a law firm? For projects requiring specialized skills and knowledge, such as for intellectual property matters, temporary attorneys from agencies rarely come with the necessary experience to “hit the ground running”. The hiring manager must often train and closely supervise the attorney. Once the project ends, even if the attorney has been of great assistance, the nature of temporary work is that the temporary attorney is unlikely to be available the next time the hiring manager needs an attorney since such attorneys are often on other projects or have taken permanent positions. For these reasons, the time spent training and supervising the temporary attorney usually does not provide a long-term benefit. Likewise, borrowing an associate from a law firm can be an inadequate solution since traditional law firms often insist on billing the attorney at an hourly rate and often will only provide an associate with one or two years of experience. The hiring manager is left to provide training and supervision. To make matters worse, particularly for specialized intellectual property work, even the less experienced associates at traditional firms are often billed at hundreds of dollars an hour. For these reasons, hiring a secondment attorney is often the preferred solution for addressing temporary in-house legal assistance needs.

Symbus Law Group now offers secondment services to companies seeking trademark attorneys to work on a temporary (long term or short term) basis in their offices or ours. Secondment services can be on a 1-5 days/week basis for anywhere from 1 week to 6 months. Call me and we can discuss a cost-effective strategy for addressing your needs, either on an hourly basis or at a flat rate. Symbus trademark attorneys are available to work at in-house locations in the greater Philadelphia, Washington, D.C., Northern Virginia, and Ventura county, California areas. For more information, contact me, Teresa Anzalone, at 610-420-7731, or by email at tanzalone@symbus.com.

For companies that have or expect to have at least a reasonable number of valuable technological developments made over time, a patent program may provide a very strong cost vs. benefit result.  For a relatively small investment of time, resources and money, it is often possible to sigfinicantly increase the valuation of the company as well as its perceived technical position in its industry not to mention the potential monetization opportunites available with respect to issued patents.  The inventions considered under the program for filing may derive from employees of the company, contractors under an obligation to assign inventions to the company or from third parties in connection with arrangements such as joint development where the company is entitled to own some or all of the potentially patentable inventions.

Once a company decides that it wishes to implement such a program, there are a number of key elements that should be considered and implemented in connection with program roll-out.  As a starting point, it is very helpful to document these and other elements of the program via a policy statement which is available for access by employees and management.  The presence of such a document makes it clear to all how the program works and what the relevant expectations should be.

One element which may be included in a patent program (but which is not always included) is some form of monetary or other compensation to inventors in connection with their efforts under the program.  This is sometimes known as an “honararium”  and it can be structured in various different forms with the intention being to most effectively incentivize inventors to take the time to document their inventions, make IP counsel aware of the inventions and work with counsel as needed in connection with the patent procurement process.   So, for example, an honararium may be set up to pay an inventor a set sum of money (e.g. $1000) upon the filing of the patent application in the US Patent and Trademark Office and may also pay the inventor another sum of money upon issuance of the patent in the US.  There are a great many ways to structure an honararium if desired.  Non-monetary consideration such as key inventor dinners, plaques, etc.  may also be considered and included.

A form, typically referred to as an “invention disclosure form” or IDF, should be developed and widely distributed to all employees particularly those that are most likely to develop potentially patentable inventions.  This form should be standardized and used in all cases as the means for inventors to document their inventions and to submit them to the appointed company representative for processing.  The form will typically include areas for the inventor(s) to address questions such as: (i) what is the problem addressed by the invention; (ii) what prior solutions that problem is the inventor aware of and what are their relative shortcomings; (iii) what is the invention in detail; (iv) are there alternative embodiments to the invention; and (iv) how does the invention fit into the company’s products or services as well as the overall industry.  The answers to these questions can be reviewed by company personnel to determine the relative value of the invention against others and to make the determination whether to file a patent on the invention or not and if so, where.  The company should set up an email box and/or use an online form submission process so that all completed IDF’s can quickly be available for review and processing.

As alluded to above, a critical component of a program is to have a predetermined and consistent process for reviewing, ranking and determining which inventions should be filed as patent applications.  This includes the people included in the decision making process and what their particular roles are, whether or not formal meetings will be held and how often, the criteria to be used in ranking and making filing decisions and whether any additional input and/or technical information will be required prior to making a filing.  The criteria for ranking and making filing decisions often depends on the overall strategic goals of the company but may include, for example, the specific novelty of the invention, the scope of the market/products/services covered by the invention, where the invention fits in the company’s overall portfolio and the detectibility of the use of the invention.

A patent program may also include other aspects such as the periodic education of groups of employees within the company most likely to invent as well as the active solicitation of inventions via calls and in-person meetings.  In some cases, “brainstorming sessions” may be conducted where groups of inventors may meet in person under the guidance of a patent attorney and possibly some technical and business experts with the goal of developing and documenting a series of potentially valuable inventions for possible patent filing.  These sessions may be free form or they may be set up to address one or more specific problems.

Another program aspect is consideration for how invention disclosures, patent applications and issued patents may be tracked.  There are numerous commercial software programs and applications for handling this aspect or this function may be outsourced to outside legal counsel or a company specializing in providing this service.

In conclusion, a patent program can be set up anywhere on the spectrum from extremely informal to a very formal, very structured program such as those used by some of the largest inventive companies in the world.  A solution closer to the informal end is typically most appropriate for smaller innovative companies with the ability to grow and scale over time as the number of employees, the products/services portfolio and the relationships of the company with third parties grow.  With the recent passage of the America Invents Act and its provisions converting the US from first to file to first to invent jurisdiction in 2013, it is even more important now for companies wishing to protect their innovations through patents to adopt and implement a consistent and efficient process for making inventions known within the company and acting on them as quickly as possible.

True to form the ECJ also considered that the trade mark owner cannot rely on the “investment ” argument to avoid a competitive environment. It is now for the UK Court to determine whether, on the specific facts, the use by M +S, of the Interflora Adword jeopardizes the maintenance by Interflora of a reputation capable of attracting consumers and retaining their loyalty.

Interflora also raises the issue that M+S is “free-riding” on its reputation. The UK court is advised to consider the difference between the use of an established brand name by an imitator of goods and services (knock off goods) with that of another well established brand – offering an alternative service under its own name. Not infringement, just fair competition in an internet world? Clever use of tools freely available to all? Or unfair trademark infringement on sale to the highest bidder? The UK Court’s ruling could be entertaining..

For franchisors ,who are duty bound to police their name and marks for the good of the entire franchise system, it is useful and hopeful to recognize that in considering the “investment” function of a trademark the European Court has broken new ground. This brings some comfort to brand owners that in such situations where members of the public could believe that the competitor is a member of their commercial network, they may be able to prohibit the use of their trade mark as an AdWord.

First off, we need to know who owns the copyrights to the big hits we download on our iPods. Typically, it is the songwriter, the original person(s) who wrote the lyrics and music for a song. This can be many people sometimes. These person(s) then – presumably – will register their copyright (which of course Symbus can help with!).

So now who is going to sing this song? Perhaps the actual songwriter(s) OR maybe a professional singer – Britney Spears, George Straight, etc. (depending on the genre), to ensure said song is a guaranteed hit. Regardless of whether the songwriter wants to sing it or find a famous person to sing it, the song needs to get recorded. Hopefully, a large recording company will decide to record the song, (i.e., Atlantic Records, Columbia Records – there are hundreds!). Our copyright owner might also decide to hire a publisher to pitch their song to various record companies to get the best offer – i.e., Sony/ATV music publishing.

Assuming the song is successfully recorded, CDs are made, and the song is the latest theme for a blockbuster hit, now our copyright owner gets to sit back and collect the profits…right? Well yes, sort of. In reality, our copyright owner is probably collecting less than half of the profit being made. You see, the recording company, the publisher, and the famous singer all get a slice of this pie. Not to mention all the co-writers, contributors, and members of the band. Our copyright owner has to share a percentage of her royalties with all these players, based on the contracts and licensing schemes in place.

Mechanical royalties are the biggie. These are the royalties paid based on the number of recordings sold. We aren’t talking just CDs, this also includes digital phonorecords. Record companies pay the recording artist either a current minimum statutory penny rate, or a “penny” rate pursuant to the recording contract. The minimum statutory rate goes up periodically. Right now the rate is set at 9.1 cents per minute.

Next we have performance royalties. These are paid when a song is performed live or on the radio. Often there is a license, which gives the licensee the right to play a particular song or album in exchange for a set fee. Performing rights royalties are paid whenever the song is heard on the radio, at restaurants, nightclubs, etc. They are also paid whenever somebody else does a cover of the song.

Let’s not forget synchronization royalties either. The synchronization royalty is paid to songwriters and publishers for use of a song used as background music for a movie or a TV show or commercial, the cost of which is usually based contractually.

Believe it or not, I’ve only mentioned the major ones. There are other issues such as foreign royalties and royalties concerning infringement that there is not enough room in this blog to discuss.

Finally, it is common misconception that copyright owners and their heirs/assigns own the rights to copyrighted music forever. With works created since 1978, Copyrights expire 70 years after the last writer dies. If the material was created under a work for hire agreement, then it is 95 years from first “publication,” or 120 years from creation, whichever comes first. For music published between January 1, 1924 and December 31, 1977, the duration is 95 years from the date of “publication” (mind you, defining “publication” is also a whole separate issue that can be explored in its own blog). Another factor is copyright renewal requirements. Failure to renew caused many works originally published from 1923 through 1963 to enter the public domain – which eliminates an artist’s rights for exclusive use.

Nevertheless, there is plenty of money to be made within this time frame if the copyright owner is smart about her licensing and royalty schemes. Just another thing to think about whenever you hear a song played.

The most likely targets for the .XXX problem are marks that are seemingly potentially related to the adult industry (e.g., liquor brands), names that would really have a significant issue with being associated with an adult site (e.g., church groups) or brands that may have a suggestive meaning in the adult industry (use your imagination).  However, other brands certainly could also face a risk.

The blocking period (Sunrise B) is set to expire on October 28, 2011.

The application fee for a Sunrise B block varies by registrar but average approximately $200-$400 per domain name.  Since the cost of a Uniform Dispute Resolution Policy complaint is generally approximately $5000 – $10,000, it seems clear that the .XXX block–  at least for the primary trademark(s)/vulnerable trademarks is worthwhile from a cost-benefit analysis.

A .XXX Sunrise B block can only be based upon a registered trademark.  Common law trademarks cannot be the basis of a Sunrise B block.

Some trademark owners may also be dismayed to learn that if an adult industry entity has a valid trademark that is the same as your company’s trademark and it files a claim during the sunrise period, their right to get a .XXX domain name will trump your rights to exclude a .XXX domain name with the trademark.

Naturally, the lawyers at Symbus are available to address your questions and concerns about this latest domain name challenge.

Have you ever heard of an Official Mark? No? Are you sitting down?

An Official Mark is an extra-ordinary type of trade-mark protection reserved for public authorities: government bodies, crown agencies, public utilities, universities, colleges and any other party who can meet the two-fold test of governmental control and public benefit. Sorry, these are reserved for Canadian public authorities. Just ask the US Postal Service who were enjoyed public authority status until the Federal Court of Canada decided otherwise in 2005.

So what is so special about Official Marks? Let me give you a list.

1) The Canadian TM Office processes Official Mark requests in roughly half the time it takes to deal with a trade-mark application.

Not impressed?

2) Official marks exist without term, unlike trade-marks which, in Canada, must be renewed every 15 years.

No big deal?

3) Official Marks are not limited by prohibitions against descriptiveness or confusion with other marks. If a provincial government, decides it wants to give public notice that it has adopted the word BAKERY as an Official Mark, it has the statutory authority to do so. All those prohibitions in section 12 of our Act? None of them apply.

Did that get your attention? How about this:

4) Prior registrations do not pose an obstacle to Official Marks. If a public authority wishes to adopt a mark someone has already registered, say ODDBALL TOOLS, then it may do so. A trade-mark registration for ODDBALL TOOLS has absolutely no bearing on a request for an Official Mark. Not only that, the Official Mark will put a brand new fence around ODDBALL TOOLS that was not there before. ODDBALL TOOLS may still be used by its owner, but not for any new uses. So, sorry ODDBALL TOOLS owner, but no, you can’t use your mark with that new product line.

And here’s a kicker:

5) Unlike ordinary registered trade-marks, there is no opportunity for ‘opposition’. Yes, you heard me right. There is no provision for third parties to object. Period. Your client was already using ODDBALL TOOLS? Too bad. There is this small crumb: pre-existing uses may continue.

6) What if your client wants to appeal the granting of an Official Mark? Good luck. Official Marks are virtually unassailable. There is no provision for the appeal in the Act. Oh, judicial review of a decision made by the Registrar may be available, but the grounds are extremely limited.

Baffling, no? This might be classified as one of those laws “in support of public order” that we love so well here in the Great White North. Welcome to Canada, where we believe in peace, order and good government (except when one of our hockey teams blows the Stanley Cup) and extraordinary trade-mark rights for public authorities.

By writing this very blog, I am engaging in social media marketing. This type of advertising recently became relevant in the trademark infringement case Qia Corp. v. Mattel Case decision handed down by the Honorable Judge Jeremy Fogel in the Northern District of California on July 14, 2011. Quia sued Mattel, Inc, and Fisher–Price, Inc., alleging that Defendants’ iXL Learning System, “smart device” for preschool children, infringes on Quia’s trademark, a web-based product or program called “IXL” that generates practice questions on a variety of mathematical concepts and related topics for children. Quia’s trademark was registered in March 2009. Mattel/Fisher-Price filed its trademark application in January 2010.

Since its application to the USPTO, Mattel/Fisher–Price engaged in an extensive social media campaign to promote its product, which according to the opinion, “include email “blasts,” Facebook applications, You–Tube channels, and tie ins with “mommy bloggers.” The opinion states that “Defendants’ advertising agency has concluded that the campaign resulted in over 1.5 million “engagements,” including of video views, comments, ratings, tags, and tweets.”

Quia alleges in this lawsuit that the Defendants’ social media campaign “places its product in marketing channels similar to those Plaintiff uses to market its own product, thus increasing the likelihood of consumer confusion.” The Defendants, Mattel/Fisher-Price brought a motion for summary judgment seeking a determination from the court, among other things, that its social media marketing does not constitute consumer confusion and thus should be dismissed as a matter of law.

On this issue, the Court held that it “cannot conclude that Plaintiff’s theories with respect to Defendants’ marketing strategies are irrelevant to the issue of consumer confusion.” This decision creates new California precedent supporting the introduction of evidence of social media marketing to show that a mark is “confusingly similar” (aka the “likelihood of confusion” test) which is the standard required to prove infringement of a trademark.

I believe this decision strengthens the rights of trademark holders and shows that alleged infringers cannot hide behind evolving marketing channels. That being said, we still do not know how this case will end up after all the evidence is presented. All we know is that summary judgment in favor of the defendants was denied. I will stay tuned to the litigation and keep you posted!

The America Invents Act (S. 23 & H.R. 1249), previously called the Patent Reform Act of 2011, are two similar bills in the two houses of the U.S. Congress.  S.23 was passed by the United States Senate on March 8, 2011 and H.R. 1249 was passed by the House Judiciary Committee on April 14, 2011.  A tentative deal has been reached among House Republican leadership members, making it likely that the America Invents Act will be considered on the House floor next week.

The proposed legislation would make the following changes to the U.S. patent system:

First-Inventor-to-File and Change of One Year Grace Period

This reform would move the U.S. from the present “first-to-invent” system to a “first-to-file” system.  The new law would recognize the first person who files as the legal inventor.  The proposed legislation also would modify prior art definitions of the patent law, providing for a one year grace period only for disclosures made by the inventor.  Under the present law, the grace period exists regardless of who made the public disclosure.  Thus, acts and prior art that would bar a patent would include public use, sales, publications and other disclosures available to the public as of the filing date, other than publications by the inventor, within one year of filing (inventor’s “publication-conditioned grace period”), whether or not a third party also files a patent application.  Hence, applicants that do not publish their inventions prior to filing will receive no grace period.

Interference proceedings at the U.S. Patent Office for resolving priority contests among near-simultaneous inventors who both file applications for the same invention would be repealed because priority would be determined based on filing date.  An administrative proceeding referred to as a “derivation proceeding,” similar to that which currently is used within some interference proceedings, would be available to ensure that the first person to file the application is actually an original inventor and that the application was not derived from another inventor.

Damages

The proposed amendment would add specific procedures and checks on how a judge manages the damages portion of a case.  The amended statute would require that a court “identify methodologies and factors that are relevant to the determination of damages” and that “only those methodologies and factors” be considered when determining the damage award.  In addition, prior to the introduction of damages evidence, the court would be required to consider either party’s contentions that the others damage case lacks a legally sufficient evidentiary base.  In addition, the statute would require a judge to bifurcate the damages portion of a trial if requested “absent good cause to reject the request, such as the absence of issues of significant damages or infringement and validity.”

Enhanced Damages only for Willful Infringement

The current Patent Act is not expressly limited to situations that involve willful infringement.  Section 284 simply states that “the court may increase the damages up to three times the amount found or assessed.”  Federal Circuit precedent, however, has limited the statute only to situations where the infringer’s actions are at least objectively reckless.  The amended statute would codify that holding with the words “Infringement is not willful unless the claimant proves by clear and convincing evidence that the accused infringer’s conduct with respect to the patent was objectively reckless, [i.e., that] the infringer was acting despite an objectively high likelihood that his actions constituted infringement of a valid patent, and this objectively-defined risk was either known or so obvious that it should have been known to the accused infringer.”

Best Mode

An inventor still would be required to “set forth” the best mode for accomplishing the invention.  However, the statute would be amended to exclude failure to disclose a best mode from being used as a basis for invalidating an issued patent.  The United States Pat and Trademark Office (USPTO) would still have a duty to issue only those patents where the best mode requirement has been satisfied.

False Marking

A large number of false patent marking cases have been filed in the past year. The bill would eliminate those lawsuits except for ones filed by the U.S. government or filed by a competitor who can prove competitive injury.

Third-Party Challenges to Patent Rights

The bill includes three expanded ways that a third party can use the USPTO to challenge a patent:  pre-issuance third-party submissions; third-party requested post-grant review; and inter partes post grant review.

Pre-Issuance Third-Party Submissions: Under the amendment, third parties would be allowed to submit any printed publication along with a description of the relevance to the USPTO to be considered during the examination of a pending patent application.

Third-Party Requested Post Grant Review: A post grant review proceeding would be created (similar to the current reexamination proceeding) which could be initiated by any party.  The review would allow a third party to present essentially any legal challenge to the validity of at least one clam.  A major limitation on the post grant review is that the request for review would have to be filed within nine-months of issuance of the patent.

Inter Partes Review Proceedings: Once the nine-month window for post grant review has expired, a party may then file for “inter partes review.”  This new system would replace inter partes reexamination and would be limited to consideration of novelty and obviousness issues based on prior art patents and printed publications.  Third-party requested ex parte reexamination would remain as a viable option.

Oath

The bill would make it easier for a corporation to file a substitute inventor’s oath when the inventor is non-cooperative.

Fee Setting Authority

The USPTO would be given authority to adjust its fees, but only in a way that “in the aggregate” would be necessary to recover the estimated costs of USPTO activities.  In addition, a new “micro” entity would be created that would have additional fee reductions.