Blog

A trademark is deceptive under Section 2(a) if: it consists of or comprises a term that misdescribes the character, quality, function, composition, or use of the goods; prospective purchasers are likely to believe that the misdescription actually describes the goods; and the misdescription...

Claim construction interprets a patent claim based on the words in the claim. Construing a claim, however, does not mean redrafting a claim. Chef America In Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1374 (Fed. Cir. 2004), the patent claimed a process for making baked goods. Id. at 1...

The motivation-to-combine analysis for obviousness is a flexible one under patent law. “[A]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” KSR Int'l Co. v. Teleflex Inc.,...

Today, March 14, is Pi Day. As you may recall from your school days, pi is the ratio of a circle's circumference to its diameter. Pi is a mathematical constant and an irrational number. As an “infinite decimal,” the digits (so far) never end after the decimal point. But an estimate of pi to the h...

Two key factors in Section 2(d) cases are the similarity or dissimilarity of the marks and the goods or services. See In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017); Herbko Int'l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002); Fed...

“Courts have considered social media comments and posts authenticated where the comments were authored by parties or witnesses.” MGA Ent. Inc. v. Harris, No. 2:20-CV-11548-NSA-GRX, 2022 WL 4596697, at *5 (C.D. Cal. July 29, 2022), reconsideration denied, No. 2:20-CV-11548-NSA-GRX, 2022 WL 4596585...

A geographic certification mark may feature a recognized geographic term that identifies the relevant geographic region, such as ROQUEFORT for cheese.  Cmty of Roquefort v. William Faehndrich, Inc., 303 F.2d 494, 497, 133 USPQ 633, 635 (2d Cir. 1962). “[C]ertification marks, including indications...

The Consumer Review Fairness Act (“CRFA”), enacted by Congress in 2016, states that “[i]t shall be unlawful for a person to offer a form contract containing a provision” that “prohibits or restricts the ability of an individual who is a party to the form contract to engage in a covered communicat...

A “collective” (such as an association, union, cooperative, fraternal organization, or other organized collective group) may own trademarks for marketing the collective's own goods or services, like any other entity. However, there also are two types of “collective marks.” See 15 U.S.C. § 1127. C...

Pending the USPTO's petition for certiorari to the U.S. Supreme Court to review the Federal Circuit's In re Elster, 26 F.4th 1328, 2022 USPQ2d 195 (Fed. Cir. 2022) decision that Section 2(c) of the Lanham Act, 15 U.S.C. § 1052(c), is unconstitutional, the USPTO will be suspending action on pendin...

Under the “Alice” test, a claim falls outside § 101 if (1) it is directed to a patent-ineligible concept like an abstract idea, and (2) lacks elements sufficient to transform the claim into a patent-eligible application. SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1166–67 (Fed. Cir. 2018) (gr...

“[A] patentee, acting in good faith on its belief as to the nature and scope of its rights, is fully permitted to press those rights ‘even though he may misconceive what those rights are.'” Mikohn Gaming Corp. v. Acres Gaming, Inc., 165 F.3d 891, 897 (Fed. Cir. 1998) (quoting Kaplan v. Helenhart ...

“The purpose of a preliminary injunction is merely to preserve the relative positions of the parties until a trial on the merits can be held.” Univ. of Texas v. Camenisch, 451 U.S. 390, 395 (1981). “Crafting a preliminary injunction is an exercise of discretion and judgment, often dependent as mu...

Under the Federal Rules of Civil Procedure, a court may grant Rule 11 sanctions when one improperly certifies a document filed with the court that (1) “is not being presented for any improper purpose, such as to harass, cause unnecessary delay, or needlessly increase the cost of litigation”; (2) ...

Pending trademark applications for the RAMEN HOOD mark filed by Ramen Hood, LLC, a California company, were suspending in view of earlier-filed trademark applications for RAMEN HOOD composite word-and-design marks filed by Ramenhood LLC, an Arizona company. Both applications were for restaurant s...

Under the Stored Communications Act (“SCA”), 18 U.S.C. § 2701, whoever: (1) intentionally accesses without authorization a facility through which an electronic communication service is provided; or (2) intentionally exceeds an authorization to access that facility; and thereby obtains, alt...

The filing of a complaint tolls the statute of limitations for compulsory counterclaims in many courts. See, e.g., Burlington Indus., Inc. v. Milliken & Co., 690 F.2d 380, 389 (4th Cir. 1982); UST Capital Corp. v. Charter Nat'l Life Ins. Co., 684 F. Supp. 757, 759 (D. Mass. 1986). But this conclu...

The purpose of the statute of limitations “is to require the reasonably diligent presentation of tort claims.” U.S. v. Kubrick, 444 U.S. 111, 123 (1979); see also Hickerson v. Vessels, 316 P.3d 620, 623–24 (Colo. 2014) (“The purpose of a statute of limitations is to promote justice, discourage un...

A trademark application may be refused under Section 2(d) based on a likelihood of confusion with an existing trademark registration according to the DuPont factors, which includes the relatedness of the respective goods identified in the application and the registration. In re Majestic Distillin...

In a proceeding before the Patent Trial and Appeal Board (“PTAB”), a party may be represented by counsel. If so, then the party must designate a lead counsel and at least one back-up counsel who can conduct business on behalf of the lead counsel. 37 C.F.R. § 42.10(a). Lead counsel must be a regis...

Slogans, phrases or terms that consumers perceive as “merely informational in nature” are not registrable. In re Brunetti, 2022 USPQ2d 764, at *11 (TTAB 2022); In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010). “Matter may be merely informational and fail to function as a trademark if it ...

A “derivative work” is created where a preexisting work is “recast, transformed, or adapted.” 17 U.S.C. § 101. Such a derivative work could be a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgement, or condensati...

“Under normal circumstances, a photographer is the author of his or her photographs. But, as with any general rule, exceptions exist….” Natkin v. Winfrey, 111 F. Supp. 2d 1003, 1008 (N.D. Ill. 2000) (Castillo, J.) (internal quotation omitted) (citing Burrow– Giles Lithographic Co. v. Sarony, 111 ...

The label for 99-cent bottles of “Fireball Cinnamon” states that it is a “malt beverage with natural whisky & other flavors and caramel color.” So, would the average consumer believe that the distilled spirit of whisky was an ingredient here? Anna Marquez did. And she has filed a class-action law...

The Anti-cybersquatting Consumer Protection Act (“ACPA”) was intended to fill the gap between cybersquatting and the traditional likelihood of confusion analysis for trademark infringement. The ACPA applies to whether a domain name was registered in bad faith “at the time of registration of the d...