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Trademark Appeals Board Defines when Catalogs Are Merely Advertising

The Trademark Trial and Appeal Board (TTAB) of the US Patent and Trademark Office has provided an analysis of the elements required to convert a catalog from “mere advertising” to an acceptable “point of sale” specimen for the purpose of trademark registration.

The case of In re Tsubaki Inc. involved U.S. Tsubaki’s use-based trademark application for the mark TSUBAKI: THE CHOICE FOR CHAIN for “industrial machine parts, namely, chains and sprockets.”

The Trademark Examining Attorney refused registration based on sections of the Trademark Act that require an applicant to submit a specimen showing proper trademark use. The Examining Attorney contended that the catalogues submitted by Tsubaki were not acceptable to show the use of the mark in connection with the goods because they were merely advertising material.

Under Section 45 of the Trademark Act, a mark is deemed to be in use in commerce on goods when:

  1. it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and
  2. the goods are sold or transported in commerce.

Under Trademark Rule 2.56(b)(1),

A trademark specimen is a label, tag, or container for the goods, or a display associated with the goods. The Office may accept another document related to the goods or the sale of the goods when it is impracticable to place the mark on the goods or packaging for the goods.

According to the Trademark Manual of Examining Procedure (TMEP),  “Folders, brochures, or other materials that describe goods and their characteristics or serve as advertising literature are not per se ‘displays’” and “[i]n order to rely on such materials as specimens, an applicant must submit evidence of point-of-sale presentation.”

Also according to the TMEP, “[i]n appropriate cases, catalogs are acceptable specimens of trademark use,” but catalogs that do not “(1) include[] a picture or a sufficient textual description of the relevant goods; (2) show[] the mark in association with the goods; and (3) include[] the information necessary to order the goods” may constitute “mere advertising” material and thus not qualify.

In the Tsubaki case, the TTAB explained that catalogs can serve as acceptable specimens of trademark use where they include at least the following:

  • a picture or sufficient textual description of the relevant goods,
  • the mark in association with the goods, and
  • information necessary to order the goods.

With respect to the last factor, a phone number, URL, or mailing address in an ad describing a product, standing alone, is not sufficient.

The TTAB concluded,

After reviewing applicant’s catalogs, prospective customers are not yet at the point of purchase and would need to contact applicant to obtain additional information. It is only after obtaining such information, which is not provided on the specimens, that the purchaser would be in a position to make a purchasing decision.

The specimens simply do not contain adequate information for making a decision to purchase the goods and placing an order and, therefore, we find that applicant’s specimens are advertisements that do not show the mark TSUBAKI: THE CHOICE FOR CHAINS used in commerce as a trademark for chains and sprockets. The mere listing of telephone numbers for corporate headquarters and a website URL does not turn what is otherwise an ordinary advertisement into a point-of-sale display or a “display used in association with the goods” and, thus, into a valid specimen showing technical trademark use.

If you have questions about the trademark application process, contact our office to arrange a free initial consultation with one of our trademark attorneys.

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. Recognized as one of the country’s “Best Law Firms” by U.S. News and Best Lawyers, Sheldon Mak & Anderson was established in 1983 and is one of Pasadena’s oldest law firms. Our full-service IP firm provides local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) or email us at tri@usip.com to find out how we can provide powerful protection for your unique ideas.

We have offices conveniently located in Pasadena (626-796-4000, 100 Corson Street Third Floor, Pasadena, CA 91103-3842);  Riverside (951-787-7770, 5885 Brockton Avenue, Riverside, CA 92506-1863); Upland (909-946-3939, 222 N. Mountain Avenue, Suite 210, Upland, CA 91786-5714); and Orange County (855-874-3327, 2102 Business Center Drive, Suite 130, Irvine, CA 92612-1001).

Disclaimer: We fully comply with all laws related to attorney marketing and this posting is considered an advertisement.

Photo Attribution: “Renthal R1 Chain for Motocross bikes.” by Renthal1969

Schlumberger Claims Its Corporate Counsel Stole Trade Secrets

Schlumberger Ltd.,the world’s largest oilfield services company, has sued its former deputy general counsel in charge of intellectual property, claiming that she stole the company’s trade secrets before leaving the company to join Acacia Research Group.

Former Schlumberger counselCharlotte Rutherford is now a senior vice president at Acacia. She had been with Schlumberger since 1996.

Acacia is a firm that acquires and licenses patents and engages in patent litigation. The firm has been called “the mother of all patent trolls” and it has generated over $1 billion in revenue.

Schlumberger claims that Rutherford copied confidential trade secret information onto USB flash drives and deleted the information from her company-owned laptop just before she left for Acacia.

Schlumberger also claims that Rutherford asked Schlumberger’s information technology department to help her extract files from her company laptop, and that she took hard copies of confidential documents.

Acacia’s CEO said the case was without merit and a “bullying tactic” in response to a patent infringement case against Schlumberger.

Schlumberger admitted that the recent filing of a patent case against it had led it to investigate Rutherford, but did not identify the specific case.

On February 4, Schlumberger was sued for infringing a Dynamic Geosolutions patent in a case filed in Austin, Texas. The patent at issue is for a “Method and system for dynamic, three-dimensional geological interpretation and modeling,” and is used to analyze oil and gas reservoirs.

The inventors entered into a partnership with Acacia to license and enforce the patent in 2013.

The complaint charges that instead of seeking to license the invention, Schlumberger and other companies began using their own infringing software to provide consulting services and training to customers.

If you are concerned about whether your company is taking adequate steps to protect your trade secrets, contact our office to arrange a free initial consultation with one of our attorneys.

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. Recognized as one of the country’s “Best Law Firms” by U.S. News and Best Lawyers, Sheldon Mak & Anderson was established in 1983 and is one of Pasadena’s oldest law firms. Our full-service IP firm provides local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) or email us at tri@usip.com to find out how we can provide powerful protection for your unique ideas.

We have offices conveniently located in Pasadena (626-796-4000, 100 Corson Street Third Floor, Pasadena, CA 91103-3842);  Riverside (951-787-7770, 5885 Brockton Avenue, Riverside, CA 92506-1863); Upland (909-946-3939, 222 N. Mountain Avenue, Suite 210, Upland, CA 91786-5714); and Orange County (855-874-3327, 2102 Business Center Drive, Suite 130, Irvine, CA 92612-1001).

Disclaimer: We fully comply with all laws related to attorney marketing and this posting is considered an advertisement.

Photo Attribution: ”Brazil – The first 100% Brazilian oil platform, the P-51 will produce about 180 thousand barrels of oil and 6 million cubic meters of gas per day when operating at full load.” by Divulgação Petrobras / ABr is licensed under CC BY 3.0.

Ninth Circuit Holds that Copyright Registration for Collective Work Includes Component Parts

The Ninth Circuit Court of Appeals has ruled that copyright registration of a collective work also registers the component parts within it.

The case involved Alaska Stock, a stock photography agency that registered large number of photographs with the copyright office at one time by registering CD catalogs of the photos. For “name of author” on the copyright registration form, Alaska Stock listed only three specific names and added “& 103 others.”

Under conditions specified by the US Copyright Office, large groups of published photographs can be registered together using a single form and by paying a single fee.

Alaska Stock licensed Houghton Mifflin Harcourt Publishing Co. to use the registered pictures in exchange for a fee based on the number of publications the photos were used in.

When Houghton Mifflin and its printer greatly exceeded the number of publications, Alaska Stock sued for copyright infringement.

Even though Alaska Stock’s form of registration was consistent with the Copyright Office’s procedure for more than 30 years, the district court dismissed its claims because it had not provided the names of each photograph and photographer.

The district court stated that the Copyright Office’s administrative practice did not supersede the clear statement of the copyright statute that required titles and authors to be listed individually.

The Ninth Circuit reversed, deferring to the Copyright Office’s interpretation of the law, noting that:

A longstanding administrative interpretation upon which private actors have relied aids in construction of a statute precisely because private parties have long relied upon it.

The court also noted that:

We are not performing a mere verbal, abstract task when we construe the Copyright Act. We are affecting the fortunes of people, many of whose fortunes are small. The stock agencies through their trade association worked out what they should do to register images with the Register of Copyrights, the Copyright Office established a clear procedure and the stock agencies followed it. The Copyright Office has maintained its procedure for three decades, spanning multiple administrations. The livelihoods of photographers and stock agencies have long been founded on their compliance with the Register’s reasonable interpretation of the statute. Their reliance upon a reasonable and longstanding administrative interpretation should be honored. Denying the fruits of reliance by citizens on a longstanding administrative practice reasonably construing a statute is unjust.

If you have questions about the registration of collective works, or copyright law in general, contact our office to arrange a free initial consultation with one of our copyright lawyers.

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. Recognized as one of the country’s “Best Law Firms” by U.S. News and Best Lawyers, Sheldon Mak & Anderson was established in 1983 and is one of Pasadena’s oldest law firms. Our full-service IP firm provides local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) or email us at tri@usip.com to find out how we can provide powerful protection for your unique ideas.

We have offices conveniently located in Pasadena (626-796-4000, 100 Corson Street Third Floor, Pasadena, CA 91103-3842);  Riverside (951-787-7770, 5885 Brockton Avenue, Riverside, CA 92506-1863); Upland (909-946-3939, 222 N. Mountain Avenue, Suite 210, Upland, CA 91786-5714); and Orange County (855-874-3327, 2102 Business Center Drive, Suite 130, Irvine, CA 92612-1001).

Disclaimer: We fully comply with all laws related to attorney marketing and this posting is considered an advertisement.

Photo Attribution:”Contact sheet of 35mm (24×36 mm) black-and-white film” by Satashi (きたし) is licensed under CC BY 3.0

PTO Glossary Program Will Expedite Software Patent Application Process

The US Patent and Trademark Office is introducing a pilot program to use glossaries to speed up the processing of software-related patent applications.

The program will launch on June 2 and run until December 12.

The Glossary Initiative arose out of a Software Partnership Meeting held by the USPTO at UC Berkeley School of law in October of 2013.

According to the PowerPoint Presentation at that meeting, the use of glossaries is intended to clarify “potentially ambiguous, distinctive, and specialized terms.”

The USPTO noted that although some favor the use of glossaries, the majority of patent applicants oppose them, as in the following example:

Requiring an applicant to put a glossary of “potentially ambiguous, distinctive, and specialized terms” in the specification seems to handcuff an applicant to using terms that are actually defined, limited the language that could be used in the claims.

The Patent Office conducted a study on the use of glossaries in patent applications and found:

  • No significant difference in the occurrence of patentability errors based on the presence/absence of glossaries or definitions
  • The presence of a glossary did not impact either the pendency or ultimate disposition of a patent application.

However, in the study definitions were not standardized in any way as to form and content, and there were too many variables for a controlled evaluation.

Thus, the Patent Office concluded that there was a need for a pilot program under more controlled conditions.

According to Michelle Lee, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO, the USPTO recognizes “that a patent with clearly defined boundaries provides notice to the public to help avoid infringement, as well as avoid costly and needless litigation down the road.”

Patent applications accepted into the pilot program will be given expedited treatment.

If you plan to submit a software-related patent application and would like to be included in the pilot program, contact our office to make an appointment for a free initial consultation with one of our patent lawyers.
At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. Recognized as one of the country’s “Best Law Firms” by U.S. News and Best Lawyers, Sheldon Mak & Anderson was established in 1983 and is one of Pasadena’s oldest law firms. Our full-service IP firm provides local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) or email us at tri@usip.com to find out how we can provide powerful protection for your unique ideas.

We have offices conveniently located in Pasadena (626-796-4000, 100 Corson Street Third Floor, Pasadena, CA 91103-3842);  Riverside (951-787-7770, 5885 Brockton Avenue, Riverside, CA 92506-1863); Upland (909-946-3939, 222 N. Mountain Avenue, Suite 210, Upland, CA 91786-5714); and Orange County (855-874-3327, 2102 Business Center Drive, Suite 130, Irvine, CA 92612-1001).

Disclaimer: We fully comply with all laws related to attorney marketing and this posting is considered an advertisement.

Photo Attribution: “Sketch” by Bill Bradley (billbeee) is licensed under CC BY 3.0

In Lexmark Case, Supreme Court Says False Advertising Claims Not Limited to Competitors

The US Supreme Court has ruled that standing in a federal false advertising case is not limited to the advertiser’s competitors. The court held that it is sufficient for standing if the plaintiff has a commercial injury “flowing directly from the deception wrought by the defendant’s advertising.”

The case arose out of a dispute between Lexmark International Inc., a maker of laser printers and printer cartridges, and Static Control Components Inc., which sells parts and supplies for reusing used printer cartridges (including Lexmark’s).

For certain expensive printers, Lexmark offered a “Prebate” program under which buyers could get print cartridges at a discount if they agreed to return them to Lexmark for refilling.

To prevent users from having the cartridges refilled by third parties at a lower cost, Lexmark included a function on a computer chip on each cartridge. A refurbished cartridge would not work unless Lexmark replaced the chip.

Static made a “Smartek” chip that mimicked the effect of the Lexmark chip and sold it to third parties that refurbished Lexmark cartridges. The Static chip included an exact copy of Lexmark’s Toner Loading Program.

Lexmark first sued Static for copyright infringement in 2002, and in 2003 won a preliminary injunction against Static. In 2004, Static filed an action seeking a declaration that its redesigned chips did not infringe Lexmark’s copyrights. Lexmark responded with counterclaims including claims of patent infringement.

Under the Lanham Act (which governs false advertising and trademark claims), Static alleged that Lexmark had engaged in two types of false or misleading conduct:

  • Lexmark “purposely misleads end users” by leading Prebate customers to believe that they are legally required to return cartridges to Lexmark after use, and
  • Lexmark “sent letters to most of the companies in the toner cartridge remanufacturing business” falsely alleging that it was illegal to sell refurbished Prebate cartridges and to use Static’s products to refurbish the cartridges.

Static alleged that Lexmark had disparaged its business and products by alleging that Static’s products infringed Lexmark’s patents and that its business was therefore illegal.

The Supreme Court determined that statements like Lexmark’s (given the requisite intent and resulting harm) can be the basis for an action for false advertising even though Static and Lexmark are not competitors in the chip market.

The Supreme Court’s “zone of interest and proximate cause” approach probably expands the scope of federal false advertising claims.  This is significant because libel (including trade libel) is still generally covered in CGL insurance policies.

If you have questions about false advertising, copyright infringement, or patent infringement, contact out office to arrange a free initial consultation with one of our intellectual property attorneys.

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. Recognized as one of the country’s “Best Law Firms” by U.S. News and Best Lawyers, Sheldon Mak & Anderson was established in 1983 and is one of Pasadena’s oldest law firms. Our full-service IP firm provides local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) or email us at tri@usip.com to find out how we can provide powerful protection for your unique ideas.

We have offices conveniently located in Pasadena (626-796-4000, 100 Corson Street Third Floor, Pasadena, CA 91103-3842);  Riverside (951-787-7770, 5885 Brockton Avenue, Riverside, CA 92506-1863); Upland (909-946-3939, 222 N. Mountain Avenue, Suite 210, Upland, CA 91786-5714); and Orange County (855-874-3327, 2102 Business Center Drive, Suite 130, Irvine, CA 92612-1001).

Disclaimer: We fully comply with all laws related to attorney marketing and this posting is considered an advertisement.

Photo Attribution: “Ink-jet printer” by Julo

Sheldon Mak & Anderson Receives Tier 1 Ranking in “Best Law Firms” Survey

BLF 2014_Silver_General

Sheldon Mak & Anderson is proud to announce that it has received a national Tier 1 ranking in the 2014 Edition of U.S. News – Best Lawyers “Best Law Firms.” The intellectual property law firm was recognized for outstanding work in Trademark Law. The rankings, presented in tiers, showcase more than 10,000 law firms ranked nationally or by metropolitan region.

Sheldon Mak & Anderson is honored to receive the following national rankings:

NATIONAL TIER 1
Trademark Law

NATIONAL TIER 2
Litigation – Intellectual Property
Patent Law

NATIONAL TIER 3
Litigation – Patent

In addition to national recognition, Sheldon Mak & Anderson also garnered four metropolitan Tier 1 rankings for Los Angeles in the following practice areas:

METROPOLITAN TIER 1
Litigation – Intellectual Property
Litigation – Patent
Patent Law
Trademark Law

Sheldon Mak & Anderson is proud to share this honor with all of its attorneys. Achieving a high ranking is a special distinction that signals a unique combination of excellence and breadth of legal expertise.

The “Best Law Firms” rankings are based on a rigorous evaluation process that includes the collection of client and lawyer evaluations, peer review from leading attorneys in their field, and review of additional information provided by law firms as part of the formal submission process. Because firms are not required or allowed to pay a fee to be listed, the U.S. News – Best Lawyers ranking is one of the most respected in the legal community.

The national first-tier rankings will be featured in a special Legal edition of U.S. News & World Report, out on newsstands later this month. The national and metropolitan first-tier rankings are featured in the “Best Law Firms” standalone publication. The rankings in their entirety are posted online at http://bestlawfirms.usnews.com.

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. Recognized as one of the country’s “Best Law Firms” by U.S. News and Best Lawyers, our attorneys possess more than two decades of experience. Our full-service IP firm provides local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.