Tag Archives: anna vradenbugh

Services Must Be Rendered, Not Merely Available, To Support The Registration of A Trademark

On March 2, 2015, in a case of first impression before the Federal Circuit, the Court directly addressed “whether the offering of a service, without the actual provision of a service, is sufficient to constitute use in commerce under Lanham Act § 45, 15 U.S.C. § 1127.”  The Court said no.

In 2008, David Couture filed a trademark application for PLAYDOM for writing and production services. As part of the use based application pursuant to Lanham Act. § 1(a), Couture submitted a screenshot of a web page bearing the trademark to the United States Patent and Trademark Office (USPTO) as proof of use of the mark in connection with the identified services.  That page simply had the PLAYDOM name and stated “[w]e are proud to offer writing and production services for motion picture film, television, and new media.”  The USPTO approved the application in 2009, but no services were actually provided until 2010.
One month after PLAYDOM’s application was approved, Playdom, Inc. (a different company) filed a trademark application for the identical trademark, PLAYDOM.  The new application for PLAYDOM was refused based on the Couture application for PLAYDOM. In response to the refusal, Playdom sought cancellation of Couture’s now issued registration for PLAYDOM before the Trademark Trial and Appeal Board (“TTAB”).   Despite Couture’s belief that the availability of the services was sufficient to support the claim of use, the TTAB granted the cancellation of the Couture registration stating that Couture “‘had not rendered his services as of the filing date of his application'” because he had “‘merely posted a website advertising his readiness, willingness and ability to render said services.'”  (emphasis added)  Accordingly, the original application was void ab initio.  Couture appealed to the Federal Circuit, which upheld the decision of the TTAB.
In discussing its decision, the Federal Circuit noted that in its prior decision, Aycock Eng’g, Inc. v. Airflite, Inc., 560 F.3d 1350, 1357 (Fed.Cir.2009), it stated that “[a]t the very least, in order for an applicant to meet the use requirement, there must be an open and notorious public offering of the services to those for whom the services are intended.”  The Federal Circuit, however, went on to clarify that it did not suggest in Aycock that an open and notorious public offering alone is sufficient to establish use in commerce.  Rather, the Federal Circuit stated that the “statute is clear that a mark for services is used in commerce only when both [1] ‘it is used or displayed in the sale or advertising of services and [2] the services are rendered.'” 15 U.S.C. § 1127 (emphasis added).  Thus, in the Couture case, the mere advertising of a service “that the applicant intends to perform in the future will not support registration.”
The Couture decision emphasizes the importance of proper trademark use at the time of filing to support a resulting trademark registration.  Since the Couture application was based on use, the trademark had to have been in acceptable use on the date the application was filed.  If there is no use on the filing date of an application, the application can be filed based on an-intent to use the trademark, wherein once perfected, trademark rights are protected as of the filing date.  As seen from this case, the consequences for failing to file the appropriate application can be catastrophic.
Anna Vradenburgh is a well-respected, business-minded expert in intellectual property issues.  As a patent attorney licensed to practice before the United States Patent and Trademark Office, Anna assists clients in patent and trademark prosecution, and represents clients in trademark opposition matters, domain name dispute matters, and patent and trademark litigation.  Anna can also assist your company in all manner of intellectual property protection.  For more information, visit her website, or contact Anna at (818) 946-2300, or email her at anna@apogeelawgroup.com.  This article is for educational purposes only and nothing in this article is intended to be, nor should be considered legal advice.

Will SCOTUS Overturn Brulotte?

In Brulotte v. Thys Co., 379 U.S. 29 (1964), the Supreme Court drew a bright line rule that royalty payments beyond the expiration of a patent were unlawful. However, many think that a case involving Spider Man might be the undoing of that case.
In Kimble v. Marvel Enterprises, 727 F.3d 856, 857-58 (9th Cir. 2013), Kimble invented a glove that allows the shooting of foam string from the hand, like Spider Man. Kimble approached Marvel and discussed the idea covered by the then-pending application, and other “ideas and know-how.” Marvel declined participation in the toy and other ideas, but according to Kimble, verbally agreed to compensate Kimble should Marvel use any of the discussed ideas. Some time later, Marvel introduced the “Web Blaster,” a product that was similar to Kimble’s and which allowed the user to shoot foam string from a can mounted on the wrist. Kimble brought suit. The court granted Marvel summary judgment on the patent infringement claims, but a jury later found in Kimble’s favor on the contract claims. While on appeal, the parties reached a settlement, wherein Marvel agreed to buy Kimble’s patent for a lump-sum payment and further agreed to a 3% royalty on “net product sales,” which included products that would otherwise have infringed the patent, as well as, Web Blaster sales. The settlement agreement and the royalty obligations had no expiration date. Marvel ceased payments after the patent expired.
Kimble filed suit for breach of contract. The trial court held that the royalty provision was unenforceable after the expiration of the patent, citing Brulotte. Kimble appealed and the Supreme Court granted certiorari.
Pitting antitrust law v. patent law, at issue is whether the freedom to contract trumps stare decisis. That is, can parties privately agree to extend royalties beyond patent expiration despite the holding in Brulotte?
The decision will have a far-reaching effect, for example, as in the life sciences industry where new drug products often come to market late in the 20 year patent term. Supporters of Brulotte contend that problems, such as the term of the patent, should be addressed by Congress, while those supporting overturning Brulotte, contend that more flexibility in negotiations is of greater importance than maintaining a rigid rule. The decision will either maintain a 50 year status quo, or could substantially offer new avenues in negotiations regarding patented technology and products.
Anna Vradenburgh is a well-respected, business-minded expert in intellectual property issues. As a patent attorney licensed to practice before the United States Patent and Trademark Office, Anna assists clients in patent and trademark prosecution, and represents clients in trademark opposition matters, domain name dispute matters, and patent and trademark litigation. Anna can also assist your company in all manner of intellectual property protection. For more information, visit her website, or contact Anna at (818) 946-2300. This article is for educational purposes only and nothing in this article is intended to be, nor should be considered legal advice.

Trans-Pacific Partnership Agreement Raises Intellectual Property Concerns

The Obama Administration is currently negotiating with 11 other nations across the Pacific Rim, which account for 40 percent of the global gross domestic product, to form the Trans-Pacific Partnership Agreement (TPP). In some ways mirroring NAFTA, the TPP purports to level the playing field with regard to trade and tariffs among the member nations by creating uniform standards. It also opens the door for corporations to file suit against governments whose trade restrictions harm their business. Those suits would be held in an investor-state dispute tribunal designated by the World Bank or the United Nations.

The TPP negotiations are largely being conducted secretly, but the New York Times, via WikiLeaks, obtained a draft of the proposal. Based on the leaked documents, there are criticisms from both the political left and right. Both sides complain that even local regulations would be subject to an international tribunal for resolution.

Supporters, including the United States Trade Representative, believe that the concerns are overblown. That is, under NAFTA, which has a similar provision, there have been only 17 investor state cases, and the United States has prevailed in each case.
Of concern to Intellectual Property attorneys and innovators is the language in the TPP that “proposes to give private companies the ability to enforce public international law whenever a local regulation ‘either directly or indirectly’ expropriates any ‘investment.’ (Art. 11.7). The term ‘indirectly’ opens the process to consideration of what in U.S. constitutional law is referred to as a ‘regulatory taking’ – that is a regulation or regulatory action that diminishes the value of property, even if the government does not take ownership of the property.” The “directly or indirectly” language could potentially give the tribunals the power to overturn decisions made in national courts based on an interest held by an international corporation operating domestically.
Some contend that these regulations, as proposed, would hinder global innovation. Dr. Robert Atkinson, President of the Innovation Technology and Innovation Foundation, asserts that the solution lies in binding the member states to the United States’ method of IP protection through “proper patent, copyright and trade secret protections, effective mechanisms to prevent counterfeiting and digital piracy, as well as 12 years of data protection for innovative and incredibly complex biologic medicines.” Dr. Atkinson indicates that such intellectual property protections in the TPP have broad support both in Congress as well as the business community. The final provisions remain to be seen.
Anna Vradenburgh is a well-respected, business-minded expert in intellectual property issues. As a patent attorney licensed to practice before the United States Patent and Trademark Office, Anna assists clients in patent and trademark prosecution, and represents clients in trademark opposition matters, domain name dispute matters, and patent and trademark litigation. Anna can also assist your company in all manner of intellectual property protection. For more information, visit her website, or contact Anna at (818) 946-2300. This article is for educational purposes only and nothing in this article is intended to be, nor should be considered legal advice.