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The latest in Georgia on combating patent trolls’ bad faith assertions

Patent trolls have recently become more of a concern in the context of enforcing patents. A patent troll is a person or company who enforces patent rights against accused infringers in an attempt to collect licensing fees, but does not manufacture products or supply services based upon the patents in question. Needless to say, a need has arisen to combat patent trolls’ meritless assertions which are often in bad faith.

To that end, recent proposed legislation in Georgia, House Bill 809, serves to prevent bad faith assertions (BFA) of patent infringement. The legislation is split into two parts – factors that a court may consider as evidence of BFA and factors that a court may consider as evidence that an individual has not made a BFA.

With regard to the first category, here are the factors that can indicate a BFA:

  • Prior to sending the demand letter, the plaintiff failed to conduct an analysis comparing the claims in the patent to the product, service, or technology. Or, if an analysis was done, it failed to identify the specific areas that are covered by the claims in the patent.
  • The demand letter doesn’t contain the patent number, name and address of patent owner(s) and/or assignee(s), or factual allegations regarding the specific areas that the allegedly infringing product, service, or technology infringes upon the patent, or is covered by the claims in the patent. If omitted and the defendant requests this information and plaintiff still does not provide it within a reasonable period of time, the court may also consider this as a factor.
  • The demand letter demands payment of license fee or response within an unreasonably short period of time.
  • The plaintiff offers to license the patent for an amount that is not based on a reasonable estimate of the value of the patent.
  • The claim or assertion of infringement is meritless and the plaintiff knew, or should have known, that it is meritless.
  • The claim or assertion of infringement is deceptive.
  • The plaintiff (or its subsidiaries or affiliates) previously filed or threatened to file one or more lawsuits based on the same or similar claim of patent infringement, and those threats or lawsuits lacked the above information, or the individual attempted to enforce the claim of patent infringement in litigation and a court found the claim to be meritless.

With regard to the second category, here are the factors that can indicate there was not a BFA:

  • The demand letter contains the above information, or if it does lack the above information and the defendant requests it, the plaintiff provides the information within a reasonable period of time.
  • The plaintiff engages in a good faith effort to establish that the defendant has infringed the patent and to negotiate an appropriate remedy.
  • The plaintiff makes a substantial investment in the use of the patent or in the production or sale of a product or item covered by the patent.
  • The plaintiff is the inventor or joint inventor of the patent, or in the case of a patent filed by and awarded to an assignee of the original inventor or joint inventor, is the original assignee or an institution of higher education or a technology transfer organization owned or affiliated with an institution of higher education.
  • The plaintiff has demonstrated good faith business practices in previous efforts to enforce the patent, or a substantially similar patent, or successfully enforced the patent, or a substantially similar patent, through litigation.

The legislation also discusses remedies and enforcement. For the full text of the legislation, click here.

David M. Lilenfeld

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Avoiding Trademark Disputes: Review the Trademark Official Gazette (TMOG) (Part 5 of 5)

Part Five of our Five-Part series (See Part 1, Part 2, Part 3, and Part 4) addresses another preventative measure trademark owners can take, which is to regularly review the Trademark Official Gazette (TMOG). The TMOG is published every Tuesday and is available on the United States Patent and Trademark Office (USPTO)’s website in both an electronically searchable format as well as in PDF format. Its main purpose is to provide bibliographic information and a drawing for each mark that has been published through the USPTO. Also included is a list of cancelled and renewed registrations for each mark.

You may be thinking, “What is the relevance of the TMOG to me as a trademark owner?” The answer is that it gives you notice of actions that are being taken by the USPTO with regard to certain marks that may be of interest to your portfolio, such as those that are confusingly similar to your marks. This allows you to take action early rather than be blindsided by the mark later on.

As discussed in Part Four, the publication of a mark in the TMOG allows for a period of opposition by any party who believes he or she will be damaged by the registration of the trademark. That party has 30 days to either file an opposition to the trademark with the Trademark Trial and Appeal Board (TTAB) or request an extension of time to file a notice of opposition. The cost to file a notice of opposition is $300 for each class of goods or services, but it is free to file a request an extension of time to file a notice of opposition.

The TMOG is an excellent source of information about marks as they become registered. Keeping abreast of these filings will arm you with the information you need to ensure that the marks you have worked so hard to maintain will stay protected. Contact David Lilenfeld or Sonia Lakhany at Lilenfeld PC to help you evaluate your options for opposing a mark, or for any other intellectual property need you may have.
David Lilenfeld

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USPTO May Possibly Revoke Redskins’ Trademarked Nickname

Trouble may be on the horizon for the Washington Redskins trademark. In correspondence dated December 29, 2013, the United States Patent and Trademark Office (USPTO) rejected a request to register “Redskins Hog Rinds” as a trademark for a pork rind product.  The USPTO stated, “Registration is refused because the applied-for mark REDSKINS HOG RINDS consists of or includes matter which may disparage or bring into contempt or disrepute persons, institutions, beliefs, or national symbols.”  While the “Redskins Hog Rinds” product is not affiliated with the football team, the implications of the USPTO’s letter will certainly affect the team’s intellectual property protection, including its iconic REDSKIN trademark.

The USPTO initially held a hearing on the team’s nickname in March 2013, in the wake of a lawsuit led by Amanda Blackhorse, a Native American issues advocate, and members of the Oneida Indian Nation, all of whom criticize the use of the REDSKIN trademark. A representative of the Oneida Indian Nation, referring to the Redskins nickname as the “R-word”, stated that the term is a “dictionary defined slur designed to demean and dehumanize an entire group of people.”

Daniel Snyder, owner of the team, has refused to change the REDSKIN trademark despite a growing movement through media outlets and advocacy groups, defending it in a recent letter to fans as a “symbol of everything we stand for: strength, courage, pride, and respect — the same values we know guide Native Americans and which are embedded throughout their rich history as the original Americans.” The Oneida Indian Nation criticized Snyder’s letter as “an attempt to re-write history.”

What the USPTO ultimately decides regarding the Redskins mark remains to be seen and we will post an update once that the decision is released.

David M. Lilenfeld

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Avoiding Trademark Disputes: Set Up a Watch Service (Part 4 of 5)

Once you have performed a thorough clearance search, registered your trademarks, and are actively managing your registrations, the next prudent step is to set up a trademark watch service. This is an imperative component of protecting your brand and something no trademark owner should neglect. Part Four of our Five-Part Series will provide an overview of what a watch service is and why you should consider one.

As you may know, the process of registration of a trademark includes a period of publication of the mark in the Trademark Official Gazette (TMOG) (to be discussed further in Part Five), allowing watch services to track trademark filings and inform trademark owners so they can act within the allotted opposition period. Essentially, a watch service monitors sources both domestically and internationally, alerting you of newly-filed applications with the United States Patent and Trademark Office (USPTO) or applications that are in the publication period that may be confusingly similar or even infringing upon a mark in your portfolio. This can include all types of trademarks – word marks, logos, and slogans. Having this information is invaluable to you as a trademark owner, since you can take action early in the form of an opposition through the Trademark Trial and Appeal Board (TTAB).

Watch services allow you to specify which marks and which classes to monitor. They will send you a report that can be customized to your preference to include cases, notes, and opinions if you choose. You can specify certain countries or territories, as well as expand the report to include domain name registrations and common law uses. Some services may even review the watch notices for you and recommend what action you should take.

The cost for watch subscriptions can range depending on the type of services you require, but as with other trademark costs, it is far better to pay these fees up front than to try to stop infringement once it has started. Think of it as preventative care for your portfolio. Contact David Lilenfeld or Sonia Lakhany at Lilenfeld PC to help arrange and set up a watch service for your marks.

David M. Lilenfeld

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GoDaddy Off The Hook for Contributory Trademark Infringement

Good news came recently in the intellectual property world for GoDaddy, as well as other domain name registrars.  In a recent trademark case, the United States Court of Appeals for the Ninth Circuit ruled that GoDaddy is not liable for contributory trademark infringement by cybersquatters.  If you aren’t familiar with cybersquatters, they are third parties who register domain names similar to well-known trademarks and redirect their websites to alternative, and often offensive, content.

The appellate case, Petronas v. GoDaddy.com, came after a federal district court’s dismissal on the same facts.  The facts, though relatively simple, serve as a large victory for domain name registrars since cybersquatting is becoming more common with so many recent technological. A third party registered the domain names <www.petronastower.net> and <petronastowers.net> using GoDaddy, thereby infringing or diluting the trademark PETRONAS, owned by the Malaysian oil and gas company Petroliam Nasional Berhard.  The third party’s domains, via GoDaddy’s domain-forward service, led users who visited the websites to adult content instead. GoDaddy declined to penalize the cybersquatter, asserting that under the Uniform Domain Name Dispute Resolution Policy promulgated by ICANN (the Internet Corporation for Assigned Names and Numbers), a domain registrar cannot get involved in trademark disputes involving domain names.

Petroliam Nasional Berhard brought suit, alleging contributory trademark infringement by GoDaddy for hosting the infringing websites and providing a forwarding service to adult content.  The district court declined to hold GoDaddy liable for refusing to take action.

On appeal, Petroliam Nasional Berhard requested that the Ninth Circuit allow a claim under the 1999 Anticybersquatting Consumer Protection Act (ACPA), a law that allows trademark owners to contest infringing domain names, against a domain name registrar if the registrar’s conduct contributed to the cybersquatter’s trademark infringement.  The Ninth Circuit ruled against Petroliam Nasional Berhard, referring to the need to “spare neutral third party services providers from divining the intent of their customers” who registered or redirected domain names.

While GoDaddy is the world’s largest domain name registrar, hosting approximately 50 million registered domain names in its database, the ruling extends to smaller domain name registrars as well.  Considering the vast number of domain names registered through GoDaddy, the Court pointed out that it would be nearly impossible for GoDaddy to track which domain names were legitimate and lawful and which were being used for cybersquatting.

David M. Lilenfeld

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Victory for Baltimore Ravens over “Flying B” Trademark/Logo

A battle lasting longer than fifteen years over the Baltimore Ravens’ “Flying B” logo has finally come to an end, after multiple lawsuits by the owner of the copyrighted work, Frederick Bouchat.  Affirming the lower court’s decision, the United States Court of Appeals for the Fourth Circuit ruled that the NFL’s use of the logo in three videos and in certain historical displays in the team’s stadium was Fair Use.  The three videos Bouchat challenged were produced by the NFL for display on the NFL network, and were also featured on websites including NFL.com and Hulu.com. Two of the videos were part of the film series Top Ten, each episode of which features a countdown of ten memorable players, coaches, or events in NFL history. The third video is part of the Sound FX series, which provides viewers with an inside look at the sights and sounds of the NFL through players who wear microphones.  The historical displays Bouchat challenged were a timeline, a highlight reel, and a significant plays exhibit, all of which were located on the Club Level section of the Ravens’ stadium.

The Court analyzed each alleged infringing use using each of the four Fair Use factors. With regard to the three videos, the Court found that the first factor, whether the use was transformative, was met.  Rather than the initial use of serving as the brand symbol for the team, the Flying B is now used in the videos as part of the team’s historical record.  The infrequent appearance of the logo supports the finding of transformative use, as the logos appear only for a few seconds.  Also part of the analysis under this factor was the commercial nature of the use.  Indeed, the NFL’s use of the logo is largely commercial, but the Court found that this was outweighed by the highly transformative and limited nature of the uses.

The second factor, the nature of the copyrighted work, was found to be neutral. Citing its own decision in a prior Bouchat case, the Court stated that the second factor may be of limited usefulness where the creative work of art is being used for a transformative purpose.

The third factor, the amount and substantiality of the portion used in relation to the copyrighted work as a whole, was also found to be neutral.  Here, the NFL had no choice but to film the whole logo in order to fulfill its “legitimate transformative purpose” of creating the historical videos at issue, so the factor has limited influence.

The fourth factor is the effect of the use upon the potential market for or value of the copyrighted work.  This involves assessing whether the NFL’s use of the logo would materially impair the marketability of the work and whether it would act as a market substitute for it. A transformative use renders market substitution less likely and market harm more difficult to infer. Due to the transient and fleeting use of the Flying B logo, as well as the factual (as opposed to expressive) content, the Court concluded that the logos served a different purpose in the videos than they do standing alone.

Bouchat also challenged the incidental use of the Flying B logo in certain historical displays located on the Club Level of the Baltimore Ravens’ stadium – a timeline, a highlight reel, and a significant plays exhibit.  The Court undertook a similar analysis as that above and again concluded Fair Use, stating: “It would force those wishing to create videos and documentaries to receive approval and endorsement from their subjects, who could ‘simply choose to prohibit unflattering or disfavored depictions’…This regime…would chill the very artistic creation that copyright law attempts to nurture.”

David M. Lilenfeld

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Avoiding Trademark Disputes: Actively Manage Existing Trademark Registrations (Part 3 of 5)

In our last blog we discussed the importance of registering your trademarks as a means for avoiding trademark disputes. We continue here by explaining why and how to tend to those registrations once acquired. This tending to is referred to as “portfolio management” or “portfolio maintenance.”

1.         This first point seems obvious but it is often overlooked. Ensure that the ownership information in the registration is up-to-date. If there have been any changes to key information since the original registration, the registration needs to be updated. Company name, address, contact email are examples of information that often change and need updating. Otherwise, correspondence from the trademark or someone trying to reach you about your trademark might be missed by you.

2.         Periodically, the trademark owner must prove that it is still using the trademark. For federal registrations, renewals are under “Section 9” and proof of your continued use of a mark is made through a Declaration of Continued Use under “Section 8.”

3          Registrations should be reviewed to determine the availability of the mark for incontestability status.  Incontestable status shields the trademark from certain (but not all) challenges – making your trademark somewhat bulletproof.  Similarly, a mark registered on the Supplemental Register may be appropriate for transfer to the Principal Register, which also strengthens the registration.

4.         Registrations should be reviewed to make sure that the goods or services listed in the registration are consistent with your actual use of that trademark. For example, if you began using the mark in connection with plumbing services, that will be reflected in your trademark registration.  If you later expand your services to HVAC equipment, you may need to apply to add that new service to your registration.

5.         Existing registrations might also not cover all geographic areas where you use your mark. For example, if you registered the mark with the State of California because you only used the mark there, you might need to register the mark elsewhere if you are now using the mark outside California. Another example, perhaps a more common situation, is a mark being initially registered in the United States with the mark later also being used outside the United States. A foreign registration may be appropriate in such circumstances.

6.         Also, I’ve seen disclaimers in trademark registrations that may have been appropriate at the time of the initial registration, but are no longer appropriate.  (A disclaimer is a declaration from the Trademark Office that the trademark owner does not have the exclusive right to the disclaimed portion of a registered trademark.)  For example, in its registration for Google PLACES, Google was required to disclaim “places.” Removal of a disclaimer can strengthen the registration.

It is much easier to address these trademark portfolio issues in advance and not while under time pressure, rather than in response to a crisis created by a third party’s unauthorized use of your trademark or some other external event.

**** Remember, that none of our posts are or can substitute for legal advice. Our posts address general legal matters, while “legal advice,” on the other hand, is tailored by an attorney to fit your particular situation.****

David M. Lilenfeld

 

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Avoiding Trademark Disputes: Register Your Trademarks (2/5)

In almost all cases, trademarks should be registered. They can be registered with the federal government – more specifically, with the United States Patent and Trademark Office – if you, as the trademark owner, use the mark in “interstate” commerce (most marks are used in “interstate” commerce). Most of the 50 states also allow for registration of trademarks if the trademark is used in the state where registration is sought.  State and federal trademark registrations is a service provided by Lilenfeld PC.

Federally registering a trademark gives you national rights to it.  Such a registration preserves your right to expand your use of the mark into geographic regions of the United States where you have not previously used the trademark.  Without a federal registration, you will be hard-pressed to establish trademark rights in states you have not yet used the trademark.

A federal registration will also assist you in the event someone uses your trademark in a domain name, without your permission.  Such a registration will make it easier to persuade the person who registered the infringing domain name to relinquish the domain name registration to you.

A federal registration will also serve as a deterrent to others who might be thinking about using a trademark similar to yours.  A trademark registration shows that you are aware of and active in protected your trademark rights.  And, after five years of continuous use of a trademark your registration may become even stronger, gaining what is called “incontestable” status.

Finally, if a dispute over your trademark does arise, a federal registration entitles you to a presumption from the court that your registration is valid.  Your registration also entitles you to additional damages in the event it is found that your mark was infringed.  And a federal registration makes it easier to work with the United States Customs Service to stop the importation into the United States of unauthorized goods bearing your registered trademark.

As you can see, registering your trademarks greatly strengthens your rights and will likely help you avoid disputes.  We’ll post Part 3 of this 5 part series next week.  Please check back!

David M. Lilenfeld

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Avoiding Trademark Disputes: Only Adopt a New Trademark After it is Cleared (1/5)

Before you adopt a new trademark you should devote resources to making sure, to the greatest extent you can, that using that trademark will not infringe on some other party’s rights. This sounds obvious, but we see many trademark disputes occur because not enough effort was made before a new trademark was adopted.

Once you’ve identified the trademark you would like to use, we generally suggest that you look for the same and similar trademarks in your industry and related industry on the Internet. If you do not find anything that looks problematic, step two is to forward your results to a trademark lawyer and retain that lawyer to conduct a formal search. Most trademark lawyers, including us at Lilenfeld PC, will engage a vendor to conduct what is often called a “trademark availability search.”

The results from the trademark availability search are listed in a report, which consists of trademarks which are the same or similar to the trademark you are considering. The report itself does not offer any opinions about whether it is safe to adopt the trademark or not.  Instead, your trademark lawyer will review the report and provide a legal opinion about the risks, if any, associated with adopting the trademark. Following this process will not guarantee that no one claims that your new trademark creates an issue, but it should greatly lower the risk and give your trademark the best start.

Clearing your trademark is step one in avoiding trademark disputes. We’ll post Part 2 of 5 next week.  Take care.
David M. Lilenfeld
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