The USPTO recently issued its Performance and Accountability Report for FY 2011. So, it’s time for my annual update to the commonly asked question: “how long will it take for my patent or trademark application to grant?” Here are a few highlights from the USPTO report:
Patents: The average time between filing and first Office Action is 28.0 months, an increase of 2.3 months as compared to FY 2010 data. However, the average total pendency (i.e., time from the filing date to patent issuance or abandonment) of a patent application is 33.7 months, representing the first reduction in average total pendency since at least 2005. As (more…)
Filed under: Trademarks and Brands
Last month’s news that Anheuser-Busch Inc. has applied for sixteen USPTO trademark registrations covering major city area codes not only suggests that the company has plans to market “local” brews , it also sheds light on the topic of geographic descriptiveness in trademark law.
In May 2011, A-B filed USPTO applications to register sixteen 3-digit number combinations as trademarks for use in connection with beer. The combinations correspond to the area codes of sixteen U.S. cities: Charlotte (704), Cleveland (216), Dallas (214), Denver (303), Houston (713), Las Vegas (702), Miami (305), Nashville (615), Philadelphia (215), Phoenix (602), Pittsburgh (412), San Diego (619), San Francisco (415), St. Louis (314), and Washington, D.C. (202).
The USPTO’s Trademark Manual of Examining Procedure states that “a mark is primarily geographic if it identifies a real and significant geographic location, and the primary meaning of the mark is the geographic meaning.” If so, the USPTO may reject the mark as geographically descriptive, or the applicant may opt to register the mark on the USPTO’s supplemental register, rather than the principal register. However, the USPTO has not issued specific guidance on when (or even if) an area code is considered “primarily geographic.”
If successful, A-B would not be the first brewer to use an area code as a beer name. However, it appears that A-B would be the first to secure rights to the area code alone, without other words or numbers in the mark. (more…)
In a message to USPTO employees on April 21, USPTO director David Kappos announced that congressional budget cuts will require the agency to reduce or postpone several recently-announced programs. Reductions that are most likely to affect USPTO users are:
- the Track One expedited examination program, which was scheduled to take effect May 4, 2011, is indefinitely postponed;
- plans for a Detroit satellite office are tabled, along with considerations of any other satellite offices; and
- new examiner hiring is frozen and examiner overtime is suspended until further notice.
The cutbacks are likely to impair the USPTO’s efforts to reduce the time that it takes for a patent application to grant. More details will be added as they become available.
According to an April 7, 2011 press release from the United States Patent and Trademark Office:
In the event of a government shutdown on April 9, 2011, the United States Patent and Trademark Office will remain open and continue to operate as usual for a period of six business days – through Monday, April 18, 2011 — because the USPTO has enough available reserves, not linked to the current fiscal year, to remain in operation until then. Should a shutdown occur and continue longer than the six-day period, we anticipate that limited staff will be able to continue to work to accept new electronic applications and maintain IT infrastructure, among other functions.
Filed under: Trademarks and Brands
A recent court opinion from the Eastern District of Pennsylvania concluded that a gift basket vendor could not claim exclusive rights to the phrase “A Taste of Philadelphia,” despite holding a federal trademark registration covering the phrase.
In R.J. Ants LLC v. Marinelli Enterprises, Inc., two Philly rivals squared off in a dispute over which party could use the phrase “A Taste Of . . .” to promote local treats such as pretzels, Tastykakes, Bookbinder’s soup, and Frank’s Black Cherry Wishniak soda. R.J. Ants uses the mark “A Taste of Philadelphia” to sell a variety of products in gift baskets. Marinelli Enterprises operates and franchises retail storefronts under the name “A Taste of Philly Hand Twisted Soft Pretzel Bakery.” When attempts to negotiate a coexistence agreement failed, the parties found themselves in court to resolve the dispute.
The court considered the Third Circuit’s ten factors for finding a likelihood of confusion from its 1983 Interpace Corp. v. Lapp Inc. decision, and the court concluded that both parties could continue using their marks.
In particular, despite the plaintiff’s federal trademark registration, the court found the plaintiff’s mark to be weak because (i) it was geographically descriptive, (ii) several others used variations of “Taste of Philadelphia” to sell food products, (iii) the plaintiff spent very little to advertise with the mark, and (iv) the plaintiff had not earned a profit using the mark for several years.
The court also noted that each party targeted different customers (gift basket buyers v. walk up bakery customers), with different products having different price points (e.g., $5 pretzels vs. $50 -$300 gift baskets) and different marketing channels.
The Office of the U.S. Trade Representative periodically publishes a list of online and physical marketplaces that considers to be “notorious markets” for counterfeiting and intellectual property piracy. On February 28, 2011 the USTR released its latest notorious markets report, which includes markets such as:
- the number one-ranked website in China, which the report cites for enabling between 50 and 75 percent of all illegal music downloads in that country;
- a Russian website that was formerly the world’s largest server-based pirate music website;
- several Chinese B-2-B and B-2-C websites; and
- physical markets in China, Russia, South America, Poland, the Czech Republic, Indonesia, the Philippines, Thailand, and India.
The USTR states that the purpose of the report is to “shine a light’ on the markets and to “urge[] the responsible authorities in these markets to intensify efforts to combat piracy and counterfeiting in these and similar markets, and to use the information contained in the Notorious Markets List to pursue legal actions where appropriate.”
Filed under: Business Law, Electronic Communication, Trademarks and Brands
The American Conference Institute is hosting new seminar that is tailored to help companies learn how to avoid advertising-related pitfalls that can weaken a company’s brand and expose the company to intellectual property litigation. The new seminar, titled Advanced IP Forum for Advertising Counsel, will feature speakers from leading media and brand-driven companies, along with counsel who represent them. Topics of the seminar will include:
- strategies for resolving conflicts and avoiding patent litigation when advertising using new technologies;
- sidestepping copyright landmines: what the DMCA, YouTube and Hulu mean to brand media strategies;
- licensing negotiation strategies for new media; and
- best practices for combatting widespread IP infringement on the Internet.
The seminar will be held in New York City on April 27-28, 2011, with optional workshops on April 29. (Full disclosure: I am one of the speakers at the seminar. I will discuss strategies for avoiding patent infringement claims when using new advertising technologies.)
For more details, visit the ACI website. Early bird registration pricing is available through February 28.
This weekend’s Super Bowl provides an opportunity to review some of the past year’s interesting developments relating to the National Football League and intellectual property:
1. Titlecraft v. NFL: wooden Lombardi trophy replicas infringe NFL copyright.
In Titlecraft Inc. v. National Football League (D. Minn. Dec. 20, 2010) the NFL and NFL Properties sued Titlecraft, a manufacturer of custom wooden trophies. Titlecraft made wooden replicas of the Vince Lombardi trophy. The Lombardi trophy is a silver statue made by Tiffany & Co. that is awarded to each year’s Super Bowl champion; Titlecraft’s trophies were small wooden replicas that were sold to fantasy football leagues for honoring their own champions.
Finding that (i) the NFL had a valid copyright registration for the Lombardi trophy; (ii) Titlecraft had access to the Lombardi trophy; and (iii) the two trophies were substantially similar, the court granted summary judgment for copyright infringement in favor of the NFL. Although Titlecraft pointed to minor differences in size, angles, and texture, the court stated that “‘if it walks like a duck, quacks like a like and looks like a duck, it has got to be a duck’ – or in this case a copy.”
2. Who dat say dey gonna own dem trademarks?
When the New Orleans Saints reached the Super Bowl in 2010, the NFL sent cease-and-desist letters to several Louisiana merchants, demanding that they stop selling (more…)
IP Watchdog is reporting that the United States Patent and Trademark Office plans to open a regional office in Detroit, Michigan next year. According to the report, the agency’s goal is to employ 100 patent examiners in the Detroit office by summer 2011. More details are available from the IP Watchdog website.
UPDATE: In an April 21, 2011 message, USPTO Director David Kappos announced that plans for the Detroit satellite office would be tabled due to congressional appropriations cuts for the USPTO.
When licensing your trademarks to others, it’s important to carefully draft the license agreement or you could end up giving away — or even losing — your trademark rights. “Naked licensing” occurs when a trademark holder licenses its trademark to another party without exercising adequate quality control over the licensee. When a licensor fails to exercise adequate quality control, a court may find that the trademark holder abandoned the trademark. The practical effect of naked licensing may prevent the owner from asserting rights in the trademark in the future.
In FreeCycle Sunnyvale v. The FreeCycle Network (9th Cir. Nov. 24, 2010), the court considered a license agreement in which a recycling organization – The FreeCycle Network (TFN) – coordinated a network of local groups that promote recycling by giving unwanted items away so that others can use them. A local group in Sunnyvale, California formed FreeCycle Sunnyvale and received permission to use TFN’s trademarks via an email. The email correspondence was sparse, and the only express restriction was that the Sunnyvale group could not use the marks for commercial purposes. Two years later, TFN ordered the Sunnyvale group to stop using the mark, and litigation ensued.
The Court found that TFN’s license was a “naked license” because (more…)
