Federal Circuit Instructs USPTO: Burden Shifting practice in IPR Proceedings is Improper and the Board cannot base a decision upon an argument that “could have been” but was not raised by the Patent Challenger

On July 25, 2016, the Federal Circuit issued a precedential opinion overturning a Patent Trial and Appeal Board final decision in an inter partes review (IPR), reviving a patent owned by Magnum Oil Tools International, Ltd. The Court held the Board incorrectly shifted burden from the petitioner to Magnum by requiring Magnum to prove the patent claims were nonobvious over the prior art cited by the petitioner. Additionally, the Court rejected the USPTO’s position that the Board is free to issue a final written decision based upon an argument that could have been, but was not, made by the petitioner. Finally, the Court rejected the USPTO’s position that Magnum was required to file a request for rehearing on the final written decision with the Board before Magnum could file its appeal to the Court.


Alexandra Taylor, Esq. published in the St. Petersburg Bar Association’s Legal Journal, The Paraclete

Alexandra Taylor, Esq. of Maxey Law Offices was recently published in the St. Petersburg Bar Association’s Legal Journal, The Paraclete. Ms. Taylor’s article, titled “International Trademark Protection: The Pros and Cons of Filing through the World Intellectual Property Organization”, discusses the benefits and potential downfalls of filing an international trademark application through the WIPO. The article can be viewed at http://tinyurl.com/zl8tr84

USPTO Announces Post-Prosecution Pilot Program

On July 11, 2016 the United States Patent and Trademark Office announced a new pilot program termed “P3,” which the USPTO hopes will reduce the number of appeals to the Patent Trial and Appeal Board and reduce Requests for Continued Examination. The program will “test its impact on enhancing patent practice during the period subsequent to a final rejection and prior to the filing of a notice of appeal,” the USPTO explains.

P3 begins July 11, 2016 and will run through January 12, 2017 or until the USPTO accepts a total of 1600 complainant requests across all of the technology centers, which ever occurs first. The USPTO explains that participation in P3 requires the applicant to file a request within two months from the mailing date of a final office action and prior to filing a notice of appeal, together with a response to the final rejection and a statement that the applicant is willing to participate in a conference with a panel of examiners. Complete details of the program were published in the Federal Register.

The USPTO is currently seeking public comments on P3. Comments can be sent by email to: afterfinalpractice@uspto.gov or by mail addressed to: United States Patent and Trademark Office, Mail Stop Comments – Patents, Office of Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the attention of Raul Tamayo.

“Say No to the Dress, and Yes to Active Policing” by Giselle Girones

Chinese Corporation, ShenZhen Global Egrow E-Commerce Co., or Global Egrow, has recently received a lot of heat after an exposé piece compiling numerous complaints by U.S. consumers cited at least eight of its sites for fraudulent behavior. The sites offer dresses or tops at low prices and feature models and/or celebrities, like Katy Perry. The China-based sites rely on advertisements that include stolen images from U.S. companies. Not only are the images stolen, but the sites also place their own watermark over these images, tricking consumers into believing they will receive a product from a certain manufacturer, but instead receive a poor quality alternative that many times looks nothing like the image.

Since the sites are overseas, customer service is not a viable recourse for consumers, as many times they take months to respond, or ask customers to pay for shipping, which more often than not cost more than the product itself.

The list of fraudulent sites include: DressLily, RoseWholesale, RoseGal, SammyDress, Zaful, Nasty Dress, TwinkleDeals and TrendsGal. The use of the copyrighted images is not only willful infringement, but also tarnishes the U.S. companies goodwill, as the China-based sites rely on the designs and images of these brands in order to receive traffic onto their sites.

Facebook plays a big role, as the China-based sites primarily advertise through Facebook. This means clothing companies should not only be actively policing their images, but should also take immediate action if they believe something like this may be happening.

PromGirl, a U.S. Company, has been one of the first to send a copyright complaint to Google after one of its photos was stolen by one of the China-based sites. Their complaint cites 153 infringing URLs, including these eight sites. Facebook has since stated they will work on new ways to police advertisers who products are “overwhelmingly unsatisfactory”.

“Consent – It’s Not the Only Factor that Counts” by Giselle Girones

Specificity in consent agreements in avoiding likelihood of confusion refusals is the key, according to the Trademark Trial and Appeal Board which found that a consent agreement between TIME TRAVELER BLONDE for “beer” and TIME TRAVELER for “beer, ale and lager” was not sufficient to avoid confusion. The agreement, according to the Board, was not properly designed and did “not fully contemplate all reasonable circumstances in which the marks may be used by consumers calling for goods.”

Through a comparison of the virtual identity of the marks, the goods, and specific trade channels, the Board found a convincing case for likelihood of confusion. The Board stressed that a consent agreement is just evidence to be included in the determination of a likelihood of confusion, but it is not a conclusive factor to avoid the refusal. The agreement between the parties focused on each party using their mark in connection with their house mark, as well as a geographical limitation limiting the Applicant’s use to New England and New York, while the Registrant had no geographical limitation. The Board found this also created a problem because the registrant was free to use the mark in the Applicant’s territory. All in all, the Board found that the consent agreement was insufficient and was outweighed by the other relevant likelihood of confusion factors. http://www.lexology.com/library/detail.aspx?g=a6058dc9-1c59-418a-954e-8d818d152120

“Slanting in Favor of Disparaging Marks – Asian-American Band Overturns USPTO Ruling” by Giselle Girones

The U.S. Court of Appeals for the Federal Circuit recently held that the longstanding “exclusion of disparaging marks” under Trademark §2(a) violates the First Amendment. The U.S.P.T.O. had barred registration of the mark The Slants, being used by an Asian-American rock band, finding that it fell within the “disparaging” definition of §2(a). This decision is not binding in other circuits, like the Fourth Circuit where the Redskins case is pending, and so this may not be the end of the battle for the band, as the Supreme Court will likely agree to hear the case. The majority opinion stated that this exclusion is a “viewpoint-based denial” which is unconstitutional. The Court cites to numerous examples of marks that are of a “non-disparaging manner” which present a particular group in a positive light, versus those the U.S.P.T.O. found disparaging, presenting groups in an offensive or hostile manner. Other points made by the majority include finding that trademarks are not “commercial speech” but expressive in nature, and that they are not to be considered government speech or tied to the government simply by being registered through the U.S.P.T.O.


Webcasting IV – New Year, New Rates by Giselle Girones

The Copyright Royalty Board started off the New Year by announcing new rates for 2016-2020 that will apply to sound recordings on internet radio and webcasts. The new rates of $0.0017 for non-subscription streams and $0.0022 for subscription streams only apply to non-interactive digital music services, unlike YouTube, Spotify, and Apple Music. These interactive services negotiate deals directly with the copyright owners, as opposed to having a fixed statutory rate.