Latest updates

Supreme Court hears oral argument in Lee v Tam
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • February 06 2017

The US Supreme Court recently heard oral argument in Lee v Tam. The decision in this case will address whether Section 2(a) of the Lanham Act, which permits the US Patent and Trademark Office to refuse to register 'disparaging' trademarks, is constitutional under the First Amendment. It is difficult to tell from the oral argument how the Supreme Court will decide this case.

Federal Circuit dismisses appeal by inter partes review petitioner
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • January 16 2017

In a recent case, petitioner Phigenix challenged the validity of a patent which related to antibody-maytansinoid conjugates for the treatment of cancer. The Federal Circuit dismissed Phigenix's appeal for lack of standing under Article III of the Constitution. In dismissing the appeal, the Federal Circuit, among other things, reiterated the minimum requirements for Article III standing.

Supreme Court hears oral argument on infringement liability for US exporters
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • January 09 2017

The Supreme Court recently heard oral argument on the interpretation and application of a statutory provision which imposes infringement liability on US manufacturers that supply components of patented inventions for use abroad. At issue is whether the export from the United States of a single component of a patented multi-component invention, which is later assembled outside the United States, qualifies as an infringing act.

Supreme Court rejects Federal Circuit's basis for affirming $399 million damages in Apple v Samsung
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • December 19 2016

In a recent decision, the Supreme Court rejected the Federal Circuit's interpretation of a damages statute in litigation between Apple and Samsung over Apple's smartphone design patents. The court disagreed with the Federal Circuit over the term 'articles of manufacture' and overturned its decision, therefore raising the possibility that Apple's $399 million in damages could be reduced significantly.

Federal Circuit holds failure to provide opportunity to respond to portion of prior art is procedural violation
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • December 05 2016

The Federal Circuit recently found that the Patent Trial and Appeal Board (PTAB) violated a patentee's rights in an inter partes review proceeding by cancelling patent claims based on a portion of a prior art reference that was not specifically identified and by denying the patentee the opportunity to address that portion of the reference. The Federal Circuit vacated the cancellation of the claims and remanded the matter to the PTAB.

TTAB refuses marijuana-related mark
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • November 28 2016

The Trademark Trial and Appeal Board recently reiterated its position that a product or service which is legal at the state level cannot qualify for a federal service mark registration if the product or service is illegal under federal law. This ruling, which is especially relevant in view of the growing number of states legalising marijuana, demonstrates the growing practice of the US Patent and Trademark Office to look beyond the language used by applicants to determine a hidden agenda.

TTAB finds colour white distinctive
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • November 21 2016

In a rare decision resulting in trademark registration status for a colour mark, the Trademark Trial and Appeal Board (TTAB) recently found the colour white to be registrable. The TTAB noted that while a mark comprised of a single colour cannot be inherently distinctive, a product's colour can be protected as a trademark and acquired distinctiveness can be found for a colour in conjunction with a product. Nonetheless, the process of obtaining colour registrations remains difficult.

TTAB affirms refusal of motion mark for hand tools on grounds of functionality
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • November 07 2016

In another chapter chronicling the relationship between functionality and trademarks, the Trademark Trial and Appeal Board (TTAB) recently found that an application claiming a motion mark depicting a specific product configuration was functional, thereby making the mark unregistrable. The TTAB considered four factors when analysing the functionality of Loggerhead Tools, LLC's trademark application and affirmed the refusal on all factors.

TTAB instructive decision concludes that social media advertising is not evidence of trademark services
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • October 31 2016

In an instructive decision for trademark applicants relying on social media to help advertise and promote their products and services, the Trademark Trial and Appeal Board recently concluded that advertising and promoting via a social networking website does not, in and of itself, support a trademark registration for such services, unless the applicant is in the business of providing such services.

Acquired distinctiveness trumps likelihood of confusion in TTAB decision
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • October 24 2016

The Trademark Trial and Appeal Board recently concluded a nine-year battle between Mini Melts, Inc and Reckitt Benckiser LLC, refusing the applicant's mark on the basis of descriptiveness. The decision warns trademark applicants seeking to register an arguably descriptive mark on the grounds of acquired distinctiveness that advertising and sales evidence may be insufficient to support their claim.

Contract manufacturer's sale to patentee does not constitute invalidating sale
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • August 08 2016

In a recent decision the Federal Circuit en banc held that a contract manufacturer's sale to the patentee of manufacturing services – where both the title to the patented embodiments and the right to market them did not pass to the manufacturer – did not constitute an invalidating sale. The Federal Circuit asserted that commercial benefit is not enough to trigger the on-sale bar. Rather, the transaction must be one in which the product is commercially marketed.

Supreme Court agrees to consider infringement liability for exporters
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • July 25 2016

The Supreme Court recently granted in part a petition for certiorari filed by LifeTech concerning the interpretation and application of a statutory provision in relation to infringement for US manufacturers that supply components of patented inventions for use abroad. The court declined to consider whether a single entity can actively induce itself to infringe a patent.

Supreme Court lowers the bar for awards of enhanced patent damages
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • July 18 2016

The US Supreme Court recently lowered the bar for awards of enhanced patent damages. The court held that an award of enhanced patent damages should be left to the discretion of the district courts, entitlement to enhanced damages need be proven only by a preponderance of the evidence and an appellate court should review an enhanced patent damages award for abuse of discretion.

Supreme Court affirms non-appealable nature of institution decisions and use of broadest reasonable construction standard
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • July 11 2016

The US Supreme Court recently held that 35 USC Section 314(d) bars challenge to the US Patent and Trademark Office's (USPTO) decision to institute aninter partes review, and that the USPTO's application of the 'broadest reasonable construction' standard to interpret patent claims is a reasonable exercise of the rulemaking authority granted by Congress.

TTAB affirms two refusals of HOUSEBOAT BLOB mark for inflatable mattresses
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • July 04 2016

The Trademark Trial and Appeal Board recently utilised the relevant factors from In re EI du Pont de Nemours & Co to determine likelihood of confusion between the HOUSEBOAT BLOB mark and three other pertinent marks on the Principal Register. Despite some differences in sound, appearance and meaning, the marks created commercial impressions that were sufficiently similar to be likely to give rise to confusion.

TTAB precedential decision clarifies parent and subsidiary trademark use
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • June 27 2016

The Trademark Trial and Appeal Board recently addressed claims of abandonment, asserting that an intent-to-use applicant need not use its mark until it files the statement of use, and that a company's use of its subsidiary's trademark does not inure to the subsidiary's benefit when the parent company controls the nature and quality of the products sold under the mark.

Precedential: brewer's 'Blonde' ambition fails to secure trademark approval from TTAB
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • June 20 2016

The Trademark Trial and Appeal Board recently decided that a consent agreement between parties is not dispositive when determining whether a trademark is likely to cause confusion. Instead, the determining entity needs to look at the entirety of the relevant factors and determine whether other factors for likelihood of confusion outweigh the existence of the consent agreement.

TTAB precedential decision reviews doctrine of foreign equivalents
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • June 13 2016

The Trademark Trial and Appeal Board recently decided that a foreign-language translation of a mark registered in English is not the 'same mark' as the previously registered mark. This decision should encourage applicants seeking a foreign-language mark with a registered English translation to offer substantial evidence that consumers would recognise the foreign-language mark as the 'same mark' as the registered mark.

TTAB precedential decision clarifies when fame must be shown in cases of dilution by blurring
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • June 06 2016

The Trademark Trial and Appeal Board (TTAB) recently shed light on when fame must be shown in cases of dilution by blurring. The board decided that fame must be shown as of first use of an applicant's trademark, and as of the date of first use of any kind by an applicant. The TTAB's findings arguably make it more difficult for an opposer to assert a claim of dilution by blurring when an applicant has previously used its mark in commerce.

US Patent Trial and Appeal Board designates five decisions as precedential
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • May 30 2016

On May 9 2016 the US Patent Trial and Appeal Board (PTAB) designated as precedential five decisions that provide guidance on various issues relating to America Invents Act review proceedings. Alongside discussion of the distinct standards for 'routine' and 'additional' discovery in inter partes review proceedings, the PTAB provided three points of clarification for any proposed claim amendment in inter partes reviews.

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