On February 17, 2023 Germany has deposited its instrument of ratification of the Unified Patent Agreement making it definite that the agreement will come into effect on June 1, 2023 and that the sunrise period will commence on March 1, 2023 .

This means that as from June 1, 2023 it will be possible for European patents granted  after that date to secure a unitary patent covering  for Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia and Sweden as an alternative to the traditional bundle of patents.  The traditional route resulting in a bundle of patents remains the only option or all other member countries that are members of the European Patent Convention.  If a unitary patent is desired, it will be necessary to advise the EPO of this within one month of the grant and supply a full translation of the patent into the language of another EPC-member state within the same time period.  Such unitary patents will be subject to the exclusive jurisdiction of the new Unified Patent Court.

The coming into force of the Agreement also means that unless the owner has filed a declaration opting out of the jurisdiction of the new Unitary Patent Court any patent in the countries listed above that originated from a European Patent Application irrespective of when it was granted will be subject to the concurrent jurisdiction of the new court and the appropriate national court until an action is brought before either of them, at which time that court will have exclusive jurisdiction. In this context, it should be noted that revocation actions against a patent subject to the jurisdiction of the Unified Court can be brought before that court at any time during the life of the patent and there are no standing requirements limiting the persons who may file such an action.  If an owner has opted out of the jurisdiction of the Unified Patent Court, national courts retain exclusive jurisdiction.

Declarations that an owner is opting out of the jurisdiction of the Unified Court may be filed with the Court Registry at any time after the sunrise period commences on March 1, 2023.  If there are different owners of patents in different countries arising from the same European Patent application, all of the owners of the different patents must agree to the opt-out.

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“Women should always have a seat at the table. They bring a unique vision and voice in every situation. I have had great pleasure in meeting and working with many amazing women from all over the world who have overcome challenges through perseverance and hard work, while remaining true to their individual cultures and backgrounds. These women have had an uplifting influence on me both personally and professionally and I am deeply proud of their creative accomplishments and professional achievements.” Bharati Bakshani – Partner, Ladas & Parry LLP DR. SHIRLEY JACKSON (1946-): Dr. Shirley Jackson was born in 1946 and is a theoretical physicist.  She is the first woman and the first African American to be the President of Rensselaer Polytechnic Institute. Dr. Jackson’s research and experiments spurred advances in telecommunications and development of technologies for the invention of the portable fax, touchtone telephone, solar cells, fiber optic cables, caller id and call waiting while at AT&T Bell Laboratories. In addition to these impressive accomplishments, Dr. Jackson was also the first African American woman to graduate with a PhD from MIT and the first woman and first African American to be named as chairman of the U.S. Nuclear Regulatory Commission. Dr. Jackson has received innumerable awards, including the National Medal of Science – awarded by President Obama (the nation’s highest honor for contributions in science and technology) in 2016. She has also sat on the Board of Directors of the New York Stock Exchange, IBM Corporation and FEDEX Corporation, among many others. Time Magazine called her “perhaps the ultimate role model for women in science”. GLADYS WEST (1930-): Gladys West is a true pioneer and inventor. She is an African American mathematician born in 1930. She provided calculations that led to the development of global positioning system technology (“GPS”). Her discovery was made during her tenure at the male dominated Weapons Laboratory – Dahlgren in Virginia, where she worked for 40 years. GPS is utilized in missile defense systems, the U.S. Space Program and by hundreds of millions of smart phone and computer owners and navigation systems throughout the world. In 2018, the U.S. Air Force awarded her the “U.S. Air Force Space and Missile Pioneers Award”. The award recognizes “the leaders of the early years of the Air Force space program” and salutes “the innovators whose vision and perseverance overcame the obstacles of the unknown”.  Her achievements are an inspiration to all Americans and perhaps especially little girls with an interest in math, science and Space technology. STEPHANIE KWOLEK (1923-2014): Stephanie Kwolek was an American chemist and inventor.  In 1965, she unexpectedly discovered a process for creating a man-made fiber that was five times as strong as steel and fire-resistant, yet lightweight.  The first Kevlar® vests were introduced to the market ten years after her discovery, and these products have gone on to save thousands of lives, in addition to myriad other applications.  Ms. Kwolek is a named inventor on a line of patents covering this process and the resulting fiber.  Among her many achievements, Ms. Kwolek was awarded the National Medal of Technology, the nation’s highest honor for technological achievement, bestowed by the President of the United States of America on America’s leading innovators, in 1996; the Society of Chemical Industry’s Perkin Medal, one of the highest honors awarded in applied chemistry in the U.S., in 1997; was inducted into the National Inventors Hall of Fame in 1995 and the National Women’s Hall of Fame in 2003; and is the first and only woman to receive DuPont’s Lavoisier Medal, in 1995.  Ms. Kwolek also served as a mentor for female scientists, including tutoring high school students in chemistry after her retirement. SARAH E. GOODE (circa 1855-1905): Sarah E. Goode received a patent (U.S. Patent No. 322,177) on July 14, 1885 for a cabinet bed. Accounts of Goode’s early life are murky: some say she was born a slave and others suggest she was born a free woman. What is known about her is that at some point in her life, she married and moved with her husband, a carpenter, to Chicago, Illinois where they owned a furniture store. It was during this time that she invented a folding bed that could be formed into a desk when not in use. Sarah’s invention was a practical one that served an underrepresented population of customers, who lived in small apartments where space for furniture was scarce. JUDY W. REED (circa 1826-1905): Easing the burden of housework was behind many of the inventions made by women, including the hand operated dough kneader and roller (U.S. Patent No. 305,474 on September 23, 1884) invented by Judy Reed. Ms. Reed is believed by many to be the first African American woman to receive a patent. Though Reed’s name appears on her patent, many black female inventors at the time were afraid to have their name associated with their inventions because of the likelihood that white people would refuse to buy a product they knew was invented by a black woman. MARIE CURIE (1867-1934): Marie Curie was born in Poland in 1867. Curie was unable to seek traditional higher education in Poland because she was a woman; instead, she attended a “Flying University” – a clandestine and illegal university open to men and women. In 1891, Curie left Poland for Paris, studying physics, chemistry, and mathematics at the Sorbonne, where she pioneered research on radioactivity. Curie, working with her husband Pierre, developed a method for isolating radioactive (a term she coined) material, which led to their discovery of the elements polonium and radium in 1898. Curie also championed the use of radium as a treatment for cancer after discovering that radium destroyed diseased cells faster than healthy cells. The Curies chose not to patent their process for isolating radioactive material or radium’s medical applications, believing that others should be able to use them for the advancement of science and benefit of humanity. In 1903, Marie Curie became the first woman to win a Nobel Prize, in Physics for research on radiation phenomena. She received the prize jointly with her husband Pierre and shared with Henri Becquerel. Initially only Pierre Curie and Henri Becquerel were nominated for the prize, but after being advised of Marie’s exclusion, Pierre wrote to the Nobel Committee that “a Nobel Prize for research in radioactivity that failed to acknowledge Marie’s pivotal role would be a travesty.” In 1911, Marie Curie became the first person to win a Nobel Prize twice, in Chemistry for the discovery and study of the elements radium and polonium. Curie remains the only woman to win a Nobel Prize twice and the only person ever to win a Nobel Prize in two different scientific fields.

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Hitherto, if cancellation or invalidation proceedings were brought against the United Kingdom designation of an International design or trademark where no representative had been appointed in the United Kingdom, the owner would have had an effective two month period within which to take action.

Under the new procedure, if a challenge is made to a UK designation of an International trademark registration ¹ or international design for which no address for service in the UK has been recorded, the UKIPO will write to “whichever contact details are available at the time”.  In the case of designs, this is stated to be the address of the representative shown on WIPO’s records or failing that, to the address given for the owner of the international design.  That letter will give the owner one month in which to provide an address for service within the United Kingdom and confirm that it wishes to contest the challenge.  Once the address for service has been provided, the papers challenging the registration will be served on the UK representative, giving the normal two months term for filing a response to the challenge. If no address for service is provided within the one month period set in the UKIPO’s initial letter, the mark or design in question may be declared invalid or revoked.

Similar provisions will apply from January 1, 2024 to “cloned” UK rights deriving from applications originally filed at the EU Intellectual Property Office, but until then, under the terms of the UK’s Withdrawal Agreement from the EU, papers can continue to be served at the address for service provided to the EUIPO.

The new provisions do not apply to oppositions to registration of international trademarks in the United Kingdom, which continue to be governed by regulations made under the Madrid Protocol and for which WIPO is responsible for making proper service of opposition papers on the applicant.

In view of these changes, it is recommended that holders of international trademarks and designs designating the United Kingdom appoint a UK address for service promptly after creation of their rights to minimize the risk that the new one month term for taking action is missed.

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17 USC 102(a) provides copyright protection for original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.

On the question of what is meant by “original”, the U.S. Copyright Office’s Compendium of Copyright Office Practices, Sections 308 and 308.1, citing the Supreme Court’s decision in Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499 U.S. 340 (1991), state that “to qualify for copyright protection, a work must be original to the author,” which means that the work must be “independently created by the author” and it must possess “at least some minimal degree of creativity.” Citing the same decision, the compendium goes on to state the term “independent creation” means that the author created the work without copying from other works but “originality” does not require “novelty.”

On the question of what is meant by “fixed”, 17 USC 101 defines “fixed” as follows: A work is “fixed” in a tangible medium of expression when its embodiment in a copy or phono record, by or under the authority of the author, is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration. A work consisting of sounds, images, or both, that are being transmitted, is “fixed” for purposes of this title if a fixation of the work is being made simultaneously with its transmission.

This leaves the question of what is a work of authorship.  The statute sets out a number of examples, but nowhere explicitly addresses the question of whether a “work of authorship” requires an author and if so, must the author be human.

Recent developments in the field of artificial intelligence have placed these issues front and center.

In Burrow-Giles Lithographic Co. v. Sarony^[1], the case that decided that a photographer could be an author, even though a machine (the camera) produced the picture, the Supreme Court defined an “author” as “he to whom anything owes its origin; originator; maker; one who completes a work of science or literature.” In Community for Creative Non-Violence v. Reid^[2], Justice Thurgood Marshall noted: “As a general rule, the author is the party who actually creates the work, that is, the person who translates an idea into a fixed, tangible expression entitled to copyright protection.”

The Copyright Office takes the view that only humans can be authors. In a decision of February 14, 2022, the Copyright Review Board held that an artificial intelligence “creativity machine” could not be named as the author of a work because, although the question of works created by artificial intelligence had not previously been considered, courts interpreting the Copyright Act, including the Supreme Court, have uniformly limited copyright protection to creations of human authors. The Copyright Review Board decision has been challenged in an action brought by Thaler before the D.C. District Court.^[3] This position contrasts with the position in some other countries where copyright protection is afforded to computer-created works with ownership vested in the party that makes the arrangements for creation of the work.^[4]

The question of possible protection for works created jointly by humans and machines is less clear.  Applications for registration must name all joint authors.^[5]  In the Thaler case, the Copyright Review Board noted that it did not need to decide “under what circumstances human involvement in the creation of machine-generated works would meet the statutory criteria for copyright protection”, as the same was not raised as a ground of protection by Thaler. On February 21, 2023, the Copyright Office issued a letter stating that in view of further information that it had received, it would cancel a copyright registration that it had issued for the book “Zarya of the Dawn” and issue a more limited registration for the text, and selection, coordination and arrangement of the work’s written and textual elements. This change was the result of the registrant advising the Office that the visual elements of the book had been created by artificial intelligence and the human elements in producing the book were limited to the features to which the copyright registration would now apply.^[6]

 On March 16, 2023, the Copyright Office issued guidance on protection for Works Containing Material Generated by Artificial Intelligence.^[7] This guidance states that it is well-established that copyright can protect only material that is the product of human creativity. This being the case, the guidance states:

“As the agency overseeing the copyright registration system, the Office has extensive experience in evaluating works submitted for registration that contain human authorship combined with uncopyrightable material, including material generated by or with the assistance of technology. It begins by asking whether the work is basically one of human authorship, with the computer [or other device] merely being an assisting instrument, or whether the traditional elements of authorship in the work (literary, artistic, or musical expression or elements of selection, arrangement, etc.) were actually conceived and executed not by man but by a machine.”  In the case of works containing AI-generated material, the Office will consider whether the AI contributions are the result of “mechanical reproduction” or instead of an author’s “own original mental conception, to which [the author] gave visible form.”  The answer will depend on the circumstances, particularly how the AI tool operates and how it was used to create the final work. This is necessarily a case-by-case inquiry. Based on the Office’s understanding of the generative AI technologies currently available, users do not exercise ultimate creative control over how such systems interpret prompts and generate material. Instead, these prompts function more like instructions to a commissioned artist—they identify what the prompter wishes to have depicted, but the machine determines how those instructions are implemented in its output. When an AI technology determines the expressive elements of its output, the generated material is not the product of human authorship. As a result, that material is not protected by copyright and must be disclaimed in a registration application.

In other cases, however, a work containing AI-generated material will also contain sufficient human authorship to support a copyright claim. For example, a human may select or arrange AI-generated material in a sufficiently creative way that “the resulting work as a whole constitutes an original work of authorship.”  Or an artist may modify material originally generated by AI technology to such a degree that the modifications meet the standard for copyright protection In these cases, copyright will only protect the human-authored aspects of the work, which are “independent of” and do “not affect” the copyright status of the AI-generated material itself.

The key question therefore seems to be how much of the “originality” embodied in the work originated from a human and where, in the context of ‘prompts” provided to the AI does the boundary line lie between a “suggestion:” and a “command”, bearing in mind that 17 USC 102(b) states:

In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle or discovery regardless of the form in which it is described, explained, illustrated or embodied in such work.

^[1]  111 U.S. 53, 56 (1884).

^[2] 490 U.S. 730 (1989).

^[3] Thaler v. Perlmutter Case No. 1:22-cv-01564.

 ^[4] See for example UK Copyright Designs and Patents Act 1988 S.9(3) which creates a 50 year term of protection for computer-created works.

^[5] Compendium of U.S. Copyright Office Practices 405.1

^[6] The visual elements of the book had been produced using a program called Midjourney which creates images from textual descriptions, but does so in “an unpredictable way” such that the human using the program could not be said to have exercised control over the form of the output, the Copyright Office viewing the prompts provided by the human running the program as more akin to suggestions than orders. The Copyright Office did, however, comment that “it is possible that other AI offerings that can generate expressive material operate differently than (sic) Midjourney does”.

^[7] 88 Fed. Reg. 16190

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Background 

The appellants, Interprofession du Gruyère and Syndicat Interprofessionnel du Gruyère, are two consortiums, Swiss and French, that regulate use of the term ‘gruyere’ to refer only to cheeses produced in the Gruyère district of Switzerland, or to cheeses produced according to traditional gruyere cheese production standards in Switzerland or France. In 2015 the consortiums filed an application with the US Patent and Trademark Office to register GRUYERE as a certification mark. During the opposition period, the US Dairy Export Council, Atalanta Corporation and Intercibus Inc opposed the application, claiming that while gruyere cheese enjoys protection in the European Union, US consumers perceive ‘gruyere’ to refer to a category of cheese producible anywhere, rather than a source indicator.

The Trademark Trial and Appeal Board ruled in favour of the opponents, and the consortiums appealed the matter to the Eastern District of Virginia, which affirmed on summary judgment. The consortiums appealed again to the US Court of Appeals for the Fourth Circuit, claiming that the district court’s analysis was flawed with respect to three categories of evidence:

1. the Food and Drug Administration (FDA) standards of identity;
2. the prevalence of imported non-French and non-Swiss gruyere cheese and domestically produced US gruyere cheese in US commerce; and
3. common usage of the word ‘gruyere’.

Fourth Circuit decision

The district court had relied on the FDA standard of identity description for gruyere cheese, noting the description was silent regarding any geographical source for the cheese, and supporting the argument that ‘gruyere’ could be produced anywhere. The consortiums contended that the district court improperly relied on the FDA’s description, which applies to trademarks and not certification marks.

The Fourth Circuit agreed that the district court had erred in the manner of analysis it used for the evidence, but asserted that the guide is useful evidence “emphasising that cheeses for which there is a standard of identity tend not to be registrable as a certification mark of regional origin”. While the FDA guide cannot itself preclude registration of GRUYERE, it provides strong evidence that ‘gruyere’ is a generic term used to describe a category of cheese. Limiting the evidence to this purpose, the Fourth Circuit found the consortiums’ arguments unpersuasive.

The consortiums next argued that the district court had erred in its analysis of sales records suggesting that most imported gruyere-labelled cheeses come from countries other than Switzerland and France, and that a substantial amount of US-produced cheeses are sold under the label ‘gruyere’. The Fourth Circuit reasoned that, even if the district court’s analysis regarding the specific amount of non-Swiss and non-French gruyere-labelled cheeses were inaccurate, the “undisputed evidence thus establishes that a substantial quantity of cheese has been imported to the United States from countries other than Switzerland and France and sold to consumers as gruyere”.

The consortiums further argued that the district court had inaccurately inferred from dictionary and general commercial evidence that the most common definitions for the term ‘gruyere’ did not reference the geographical Gruyère location, and therefore weighed in favour of a genericness finding. While the Fourth Circuit agreed that the dictionary definitions provided as evidence included too many conflicts with respect to the geography issue, the provided media definitions (which included recipes and websites) were either silent on the geography issue or claimed a disparate point of origin for gruyere cheese, such as Austria or Wisconsin. Based on this, the Fourth Circuit determined that the public’s idea of gruyere cheese favoured a category of cheese (and, therefore, genericness), not a cheese produced in the specific Gruyère district of Switzerland.

Having analysed the consortiums’ arguments, the Fourth Circuit ultimately determined that, while the district court may have erred in its analysis on some issues, the evidence on record was “so one-sided” that there remained no genuine issue of material fact, and affirmed the district court’s grant of summary judgment in favour of the opponents.

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In In re Palacio Del Rio Inc (Serial Nos 88412764 and 88437801), the Trademark Trial and Appeal Board (TTAB) has issued an opinion affirming the refusal of two building design mark applications by Palacio Del Rio Inc (PDR) – a subsidiary of Hilton Worldwide Holdings Inc.

Background:
Applicant PDR owns and operates a hotel of the same name situated along the famous River Walk in San Antonio, Texas. In May 2019 PDR filed applications for two building design marks for “hotel services; provision of conference, exhibition, and meeting facilities” in Class 43. The marks consisted of minimalist line-drawing representations of the Palacio Del Rio hotel itself, each representing one side of the structure from a diagonal angle:

Serial No 88412764:

Serial No 88437801:

The examining attorney refused registration of the two applications, stating that the marks constituted non-descript trade dress, and that a consumer would not recognise the marks themselves as source indicators. PDR filed arguments against the refusals, arguing in the alternative that the marks had gained acquired distinctiveness under the Trademark Act, Section 2(f). Unpersuaded, the examining attorney maintained the initial refusal and stated that the evidence in favour of PDR’s Section 2(f) claim was insufficient. PDR appealed the decision to the TTAB.

• Decision:
  In affirming the examining attorney’s refusals, the TTAB first employed the so-called “Seabrook factors” to determine whether the proposed marks were inherently distinctive – namely:
  1. whether the proposed marks constituted a “common” basic shape or design;
  2. whether the proposed marks were unique or unusual in the field in which they are used;
  3. whether the proposed marks were a mere refinement of commonly adopted and well-known forms of ornamentation for the particular class of services viewed by the public as a dress or ornamentation for the services; and
  4. whether the proposed marks were capable of creating a commercial impression distinct from the accompanying words.

The TTAB held that the proposed marks themselves were of a too-common design, and found PDR’s assertion that the hotel design was “instantly recognisable” to consumers, and were “unlike any other in the world”, unpersuasive. Among the evidence that PDR provided to support its assertion were articles discussing the hotels from architectural publications; however, the TTAB determined that these merely discussed an overview of modular hotel construction, stating nothing about the inherent distinctiveness of PDR’s specific hotel design.

More notable were four declarations from hotel customers that PDR provided to bolster its inherent distinctiveness claim. The examining attorney initially viewed these declarations to be too few and too similar to imply recognition among the typical consumers.

The TTAB agreed, finding the declarations to be “cookie cutter” in a way that weighed against their persuasiveness. The declarants alleged instant recognition of PDR’s hotel in the context of the proposed marks; however, they provided no basis for such alleged knowledge. This lack of personal knowledge, combined with the rote and repetitive manner in which the declarations came to legal conclusions, diminished any potential probative value. The TTAB found the fourth
Seabrook factor to be irrelevant as neither proposed mark contained any literal element separate from the building designs. Therefore, the TTAB held that PDR’s hotel designs: “constitute basic elements common to hotel buildings; … do not contain or comprise elements that are unique or unusual in the hotel building fi eld; … are mere refinements of commonly-adopted and well-known forms of ornamentation for hotel buildings; and … would be viewed by the public merely ‘as a dress or ornamentation’ for the applicant’s hotel services.”

After concluding that the marks were not inherently distinctive, the TTAB considered PDR’s claim for acquired distinctiveness under Section 2(f) of the Lanham Act. The TTAB weighed PDR’s evidence in support against the so-called “Converse factors” namely:
(1) association of the trade dress with a particular source by actual purchasers (typically measured by customer surveys);
(2) the length, degree and exclusivity of use;
(3) the amount and manner of advertising;
(4) the amount of sales and number of customers;
(5) intentional copying; and
(6) unsolicited media coverage of the services in connection with which the trade dress is used.

The examining attorney found a declaration of PDR’s Vice-President of Sales and Revenue to be “too self-serving and entitled to little weight”. The TTAB agreed, and determined that the sales and marketing figures cited in the declaration lacked the necessary context to establish convincingly any additional effort that PDR employed to establish the hotel design’s distinctiveness.

Finally, the TTAB reviewed the examining attorney’s analysis of two third-party registrations for building design marks provided by PDR. Again, the TTAB affirmed in affording little weight to these third-party registrations, stating that the cited marks were too far a field from PDR’s applications to sustain a viable comparison. The TTAB, in reviewing the examining attorney’s analysis of the evidence provided by PDR, affirmed each of the examining attorney’s conclusions, refusing registration of PDR’s marks.

Comment:
This decision reinforces the challenges of securing registered trademark protection for building designs.

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In Riseandshine Corporation v PepsiCo Inc (SDNY-1-21-cv-06324), plaintiff Riseandshine Corporation, doing business as Rise Brewing, brought three federal and two state claims relating to trademark infringement and unfair competition with respect to the RISE trademark against defendant PepsiCo.

The US District Court for the Southern District of New York (SDNY) granted Rise a preliminary injunction against PepsiCo, enjoining PepsiCo from using the mark in association with its beverages. This injunction was later vacated by the Second Circuit and remanded back to the SDNY. On remand, the SDNY granted a request for summary judgment by PepsiCo, largely basing its determination on the weight of the various Polaroid likelihood of confusion factors given in the Second Circuit’s prior analysis.

BACKGROUND

Rise owns the registration for RISE BREWING CO (US Registration 5168377) and the related design mark (US Registration 5333635, see below), used in association with the company’s canned coffee and tea beverages since 2015.

In March 2021, PepsiCo launched its Mtn Dew Rise Energy line of fruit-flavored energy drinks.

Prior to PepsiCo’s product launch, Rise sent PepsiCo a cease and desist letter. Following the launch, Rise began receiving inquiries asking whether the companies had collaborated on PepsiCo’s new beverage line.

Rise commenced a lawsuit in the US District Court for the Northern District of Illinois citing federal and state trademark infringement as causes of action. The suit was moved to the SDNY.

In November 2021, the SDNY granted Rise a preliminary injunction enjoining PepsiCo from using MTN DEW RISE ENERGY in relation to the sale of canned energy beverages, determining via Polaroid analysis that Rise had shown a sufficient likelihood of confusion between the marks to warrant a preliminary injunction.

Of the eight Polaroid factors, the SDNY found five to weigh in favour of Rise, one to be irrelevant, and two to be inconclusive. Further, the SDNY determined that Rise had met its burden to show irreparable harm if PepsiCo were permitted to continue using its mark, stating: “[The] Plaintiff has submitted credible evidence that it faces an existential threat from [the] Defendant’s infringement.”

PepsiCo appealed and the Second Circuit Court of Appeals vacated the preliminary injunction in July 2022 (RiseandShine II),determining that the marks were not confusingly similar as a matter of law. The court remanded the case back to the SDNY.

Decision

On remand, the SDNY first addressed whether the Second Circuit’s vacating of a preliminary injunction in Rise’s favor should influence the SDNY’s determination. The court determined that, while they deferred to the appellate court’s findings, preliminary injunctions are “by [their] very nature, tentative”, and that “findings of fact and conclusions of law made in a preliminary injunction proceedings do not preclude reexamination of the merits at a subsequent trial”.

Accordingly, the court proceeded to examine, in a light most favorable to Rise, the so-called Polaroid factors that inform the determination of trademark confusion, namely:

• the strength of the plaintiff’s mark;
• the degree of similarity between the two marks;
• the proximity of the products;
• the likelihood that the owner will bridge the gap;
• evidence of actual confusion;
• the defendant’s good faith in adopting the mark;
• the quality of the defendant’s product; and
• the sophistication of the consumers

Since the Second Circuit in Riseandshine II held, as a matter of law, that Rise’s marks are inherently weak, the SDNY held the same, citing a suggestive link between caffeinated beverages and the verb ‘to rise’, as if to rise from one’s bed and wake up. It therefore found Factor 1 to weigh in favour of PepsiCo.

The Second Circuit also ruled in Riseandshine II that Factor 2 weighed in favor of PepsiCo, and the SDNY held the same, noting that similarity could be weighed:

• via a factual inference into whether the marks are similar, which must be ruled in favor of the plaintiff on summary judgment; or
•  as a legal inference into the marks’ similarity, which is a question of law and not applicable to a summary judgment ruling.

The Second Circuit in Riseandshine II did not directly address Factors 3 to 8. Therefore, the SDNY continued its own analysis, determining Factor 3 to weigh in favor of Rise as the markets for coffee and tea-based beverages and energy beverages are quite close – one often being considered an alternative to the other.

The court found Factor 4 to be irrelevant, stating that where trademark owners’ products directly compete, “there is no competitive gap to be bridged”.

Factor 5 weighed in favor of Rise, as the court considered the non-survey evidence on record to be only weakly probative.

Factor 6 weighed in favor of Rise, which alleged that PepsiCo was aware of its marks and had considered acquiring them prior to launching its own product line.

Factor 7 favored neither party, as both product lines were considered to be of similar quality and similarly advertised.

Finally, Factor 8 weighed in favor of Rise, as the consumers of inexpensive products such as the parties’ beverages are considered unsophisticated for the purpose of a Polaroid analysis.

While the greater number of factors weighed in favor of Rise, the court acknowledged that the Second Circuit’s ruling in RiseandShine II controlled. As the Second Circuit found the weight of Polaroid Factors 1 and 2 to afford Rise’s marks “only an extremely narrow scope of protection”, so too did the SDNY. Echoing the Second Circuit, the court found that the inherent weakness of Rise’s marks in so crowded a field as canned caffeinated beverages to be dispositive, and reasoned that the remaining factors could not overcome the weight of this first factor. Accordingly, and in keeping with the Second Circuit’s ruling,the SDNY granted summary judgment to PepsiCo as a matter of law.

Finally, the court granted summary judgment to PepsiCo with respect to Rise’s unjust enrichment claims, as the essence of these claims relied on the unlawful use of Rise’s marks, a claim that failed under the court’s Polaroid analysis.

Comments

Ultimately, it was the perceived weakness of Rise’s marks that tipped the balance against it. The case serves as a cautionary tale for potential plaintiffs trying to enforce their marks against larger competitors

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BACKGROUND:
Great Concepts has owned Registration No. 2929764 for DANTANNA’S, in association with “steak and seafood restaurant[s]”, since March 2005. In 2006 Chutter Inc’s predecessor-in-interest, Dan Tana, petitioned to cancel the mark based on a likelihood of confusion with his common law DAN TANA mark, used in association with restaurant services. The cancellation action was suspended pending the outcome of a trademark infringement suit filed by Chutter against Great Concepts in the Northern District of Georgia, which was ultimately dismissed in September 2009, and affirmed by the 11th Circuit in July 2010. Chutter’s cancellation action was subsequently dismissed by the USPTO in December 2010 after Chutter failed to respond to an order to show cause.

Meanwhile, in March 2010, Great Concepts’ former attorney filed a declaration in support of their Section 8 (required for renewal) and Section 15 (required for incontestability status) application for renewal and incontestability status, respectively. Part of the declaration was the attorney’s affirmation that “there is no proceeding involving said rights pending and not disposed of either in the [USPTO] or in the courts”.

As Great Concepts was at that time engaged in both an ongoing cancellation action at the USPTO and an ongoing infringement suit in federal court with respect to the mark, Great Concepts knowingly filed a false declaration with the USPTO in furtherance of obtaining incontestability status. Chutter again petitioned the USPTO for cancellation of Great Concepts’ mark in July 2015, citing Great Concepts’ false affirmation as a basis for fraud. The USPTO issued a decision in September 2021, finding Great Concepts’ declaration to be fraudulent, and cancelling the DANTANNA’S mark. This decision was notable, clarifying the USPTO’s ability to cancel marks based on a finding of fraud in an incontestability context – specifically, that a false declaration amounted to an “intent to deceive”. Great Concepts appealed.

CAFC DECISION:
In finding for Great Concepts, the CAFC focused not on the “intent to deceive” question, on which the USPTO’s ruling turned in2021 (and, indeed, the court did not reach the issue of whether Great Concepts’ former attorney acted fraudulently at all), but on the Lanham Act itself, and the authority that Section 14 thereof confers on the USPTO to cancel a mark in a finding of fraud.

The relevant language of Section 14 of the Lanham Act provides that a petitioner may file a cancellation action, and the USPTO has the authority to grant cancellation, in an instance where a “registration was obtained fraudulently”. The CAFC noted as a preliminary matter in its statutory analysis that Great Concepts’ 2010 filing was a combined filing of a Section 8 declaration demonstrating use, and a Section 15 filing claiming incontestability. The Section 8 filing was unchallenged by Chutter, and therefore the CAFC determined that its task was to determine whether a false Section 15 filing provided a proper basis on which to stage a Section 14 cancellation proceeding.

The CAFC reasoned that the key question was to determine what right an applicant in a Section 15 filing obtains, and whether such a right was equivalent to any of those on which a Section 14 cancellation action may be based. The CAFC reasoned that Great Concepts’ alleged fraud was related to obtaining an incontestability right, and not registration, as the mark had already been registered since 2005. Otherwise put: Section 14 affords a third party the right to cancel a mark on a number of bases, and while fraud in connection with obtaining a registration is listed under Section 14, fraud in connection with obtaining an incontestability right is not. Therefore, the USPTO’s cancellation of Great Concepts’ mark was beyond its authority under the statute. Accordingly, the CAFC reversed the USPTO’s ruling, and remanded the case back to the office.

COMMENT:
The CAFC’s decision leaves a number of open questions, chief of which is what tools the USPTO has available, if not cancellation, to punish and deter mark owners who file fraudulent Section 15 filings. While the CAFC’s ruling clearly aligns with a plain reading of the Lanham Act, less clear are the potential consequences of limiting the USPTO’s set of remedies to sanction and deter mark owners seeking greater rights for their registrations by fraud.

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Ladas & Parry LLP considers diversity and inclusion as core values and principles that provide access to opportunity, consolidation of expertise and range of perspectives and ensures excellence, particularly in the IP field. We salute those who have helped shape the world and would like to shine a light on these pioneers who sometimes receive little or no credit.

“I am delighted once again to pay tribute to the remarkable IP pioneers before me, who overcame significant obstacles to excel, even when the playing field was not even. Celebrating these individuals enriches our history and sheds light on the truth and the magnitude of the contributions made by these great men and women.”
Ralph H. Cathcart – Partner, Ladas & Parry LLP

ANDREW JACKSON BEARD (c. 1849 -1921)
This amazing inventor spent the first 15 years of his life as a slave in Eastlake, Alabama. Once emancipated, he became a successful farmer, and in 1872 this enterprising man built his own flour mill, which he operated for many years. His keen intellect and knowledge of farming led him to develop several inventions.  In 1881 he patented a new double plow design (U.S. patent no. 240,642.   In 1882, he patented a design for a new rotary steam engine and obtained two patents (U.S. patent no. 433,847 and U.S. patent no. 478,271).  In 1887 he patented another double plow design that allowed for pitch adjustment (patent no. 347,220). He sold some of his patents and invested in real estate.

However, Mr. Beard was probably best known for patents he invented after working with the railroads. Mr. Beard invented improvements to coupler’s used to hook railroad cars together. Known as Jenny Couplers, they were extremely dangerous and required a railroad worker to physically insert a pin in the link between the two cars. Mr. Beard’s ingenious invention allowed railroad cars to be linked automatically and safely. He obtained U.S. patent nos. 594,059 and 624,901.  Mr. Beard’s invention was the first automatic railroad car coupler widely used in the U.S. Indeed, Congress subsequently passed the Federal Safety Appliance Act, which made it illegal to operate any railroad car without automatic couplers.

MICHAEL CROSLIN (1933 – 1989)
Mr. Croslin was a brilliant inventor. He is credited with inventing the Medtek 410.  The device was a revolutionary blood monitoring device with computerized technology. Prior to its development, doctors had to make inferences based largely on guess work. The Medtek410 eliminated the guess work and uncertainty and provided doctors with reliable and accurate data so as to make informed decisions and provide treatment based on accurate information about the patient’s body. Mr. Croslin also developed a similar device, the Medtek 420, for monitoring a patient’s pulse. The Medtek 420 automatically adjusts to account for surrounding noise and air pressure.

MARIAN CROAK (1955 present)
Marian Croak is a renowned computer scientist and inventor. She has significantly contributed to modern communication technology. She is the owner of over 200 patents and was inducted into the Women In Technology International Hall of Fame for her many inventions and noteworthy achievements.  She is probably best known for her development of Voice Over Internet Protocol or VoIP technology.  Her superior intellect and innovative thought process is widely recognized. Indeed, she has held several industry leading positions, including Senior vice President of Research and development at AT&T and Vice President of Engineering at Google.  She is credited with significantly advancing modern communication technology.

TERRY DAVIS:
Brilliant You Denim is a North Carolina-based business founded by Terry Davis. She is the first known African-American female denim manufacturer in the U.S. The success of Davis’ business required overcoming the monumental task of entering and competing in the multi-billion-dollar denim industry. She tackled this challenge by drawing on problem-solving skills developed during her career as an electrical engineer. One of her top priorities was to obtain a design patent for her jeans’ enhancement innovation. The company now holds 11 patents, with several more pending, and has trademarked its brand. Ms. Davis made it a point to set up the company’s manufacturing facilities in Greensboro, North Carolina, because she believes in rebuilding manufacturing domestically in the U.S and not outsourcing to other countries. After growing the domestic business, Davis is now looking to expand into Canada and Mexico.

SHAWN SPRINGS
After 13 seasons of playing in the NFL, Shawn Springs founded Windpact, a company based in Leesburg, Virginia, focused on impact protection of the human brain. He set out with a mission “to be the most advanced impact protection company in the world, to make everyday lives safer” after experiencing the effects of concussions firsthand. That knowledge, combined with the insights gained from a component of an infant car seat, led him to build a company that uses patented Crash Cloud technology to protect athletes, soldiers, and automobile passengers from traumatic brain injuries.  Shawn Springs trademarked the company’s name Windpact in 2011 and set out to focus on finding a solution to mitigate the effects of collisions. With the help of his attorneys and colleagues, he applied for his patent (U.S. Patent no. 8,863,320 B2), which protected his exclusive right to use the padding technology for helmets. Shawn Springs also obtained a trademark for the name he gave to the technology – Crash Cloud.

PATRICIA BATH
New York Ophthalmologist Dr. Patricia Bath, became the first African American female doctor to receive a patent for a medical invention. The patent, No. 4,744,360, issued to protect a method for removing cataracts from patient’s eyes. Her invention literally transformed eye surgery and utilized a laser device (Cataract Laserphaco Probe). Dr. Bath’s invention used cutting edge laser technology to quickly and painlessly vaporize cataracts from patient’s eyes and restore vision, even for people who had no vision for years! Dr. Bath’s contribution may never be fully appreciated, except by those individuals who received the gift of sight again!

GRANVILLE T. WOODS
(1856-1910) Granville Woods, known as the “Black Edison”, was an engineer who developed many important electrical inventions. He was born in 1856 and attended school until he was 10 years old after which he began working in a machine shop fixing railroad equipment. At age 20 it is said that he attended a technical college where he studied mechanical and electrical engineering. After having difficulty finding a job, he would eventually start his own business.

Railway Telegraphy (U.S. Patent No. 388,803), is considered one of his most important inventions. This invention made communication possible between trains and train depots. Thomas Edison, who claimed to be the creator of this invention, filed a lawsuit. Woods challenged his claim and won. Afterwards, Edison offered him a position in his company Edison Electric Light Company in New York. Woods did not accept the offer. Over the course of his life, Granville Woods was granted over 35 patents mostly for railway communication and technology.

ALICE PARKER
Each year, The New Jersey Chamber of Commerce gives out the Alice H. Parker Women Leaders in Innovation Award to honor the memory of Alice H. Parker, an African American woman from Morristown, New Jersey who is known for designing a gas furnace that paved the way to modern heating systems and thermostats. Though Ms. Parker was a graduate of Howard University (1910) she did not have training in this area and yet she received a U.S. patent (US1325905A) for her design on December 23, 1919. At the time of her design, most homes in Morristown were heated with wood or coal.

THOMAS JENNINGS
Mr. Jennings was the first known African American to receive a patent in the United States on March 3, 1821 (U.S. Patent No. 3306x). By doing so, he helped pave the way for future inventors of color to successfully obtain ownership in the exclusive rights to their inventions. Mr. Jennings lived in New York City and worked as a tailor and dry cleaner. In 1821 he invented an early method of dry cleaning called “dry-scouring”. He did this four years prior to Jean Baptiste Jolly of Paris, France, who invented a similar technique for which many people have confusedly credited as the first dry cleaning process.

At the time of Mr. Jennings’ invention, most African Americans were viewed as chattel and could not assert legal rights or ownership. Indeed, the U.S. Patent Laws at the time provided that “The slave master is the owner of the fruits of the labor of the slave, both manual and intellectual”. A literal interpretation meant that while slaves couldn’t legally own their ideas or inventions at that time, no such prohibition applied to Mr. Jennings, who was a free man. Mr. Jennings used profits from his invention to purchase the freedom of the rest of his relatives. He was an ardent abolitionist and served as the assistant secretary of the First Annual Convention of the People of Color, which met in Philadelphia, PA in June 1931.

ELIJAH J. MCCOY
Elijah J. McCoy was an African American inventor who obtained over 50 patents in his lifetime. McCoy was born in Canada in 1844, the son of slaves who had escaped from Kentucky. When he was very young McCoy had shown mechanical aptitude and so at age 15 his parents sent him to Scotland to learn mechanical engineering. After completing his training abroad, he returned to the U.S.

Though McCoy was very qualified, doors to jobs as an engineer were shut to him because of his race. Eventually he took a job working for the Michigan Central Railroad where he shoveled coal into train engines and applied oil to the moving parts. It was doing this sort of work that he figured out solutions to the problems trains had with keeping parts lubricated. On July 23, 1872 he patented his invention of a lubricating device for steam engines (U.S. Patent No.129,843). This device became a very important part of the industry and there were many who tried to imitate McCoy’s invention. So sought after was this device that owning the real one was referred to as having “the real McCoy.” It is also worth noting that in 2012, the USPTO opened the Elijah J. McCoy Midwest Regional U.S. Patent and Trademark Office in Detroit, Michigan.

The post CELEBRATE DIVERSITY IN INTELLECTUAL PROPERTY 2024 appeared first on Ladas & Parry LLP.

Ladas & Parry LLP considers diversity and inclusion as core values and principles that provide access to opportunity, maximization of expertise and a range of perspectives and ensures excellence, particularly in the IP field. We salute those who have helped shape the world and would like to shine a light on these pioneers who sometimes receive little or no credit.

“I am pleased to honor and celebrate the contributions of women throughout history. I would like to pay special tribute to the achievements of women who have broken barriers, shattered stereotypes, and paved the way for progress in various aspects of society. Let us create a world where every woman can thrive and be supported. Together, we can continue to build a society that is more inclusive and equitable for women”. 
Bharati Bakshani, Partner, Ladas & Parry LLP

SYBILLA MASTERS  (c. 1676 – 1720)
Sybilla Masters was born around 1676 in Bermuda and emigrated to the United States and lived in the British colony of Pennsylvania in 1687. Eventually she married and lived there with her husband.

Ms. Masters is noted for inventing a process for cleaning and curing corn as well as a process for making hats and bonnets. Unfortunately, because of the practice of coverture (the common law practice where a married woman was considered under the legal and economic protection and authority of her husband), she was not able to obtain patents for her inventions in her own name.

However, Ms. Masters traveled to London in 1712 and in 1715, and became the first person living in the American colonies to be awarded a patent. The patent was issued by King George I for Ms. Masters’ invention of a process for “Cleaning and Curing The Indian Corn Growing in the several Colonies of America.” The Letters Patent expressly acknowledged that the patent covered “a new Invention found out by Sybilla.”

Ms. Masters’ second patented invention (also issued in her husband’s name) was for the “process for making hats and bonnets out of straw and palmetto leaves.”

MARY KIES  (1752 – 1837)
The Patent Act of 1790, the first patent statute passed by the newly formed federal government of the United States of America, allowed “any person,” man or woman, to protect his or her invention. Accordingly, on May 5, 1809, Mary Kies became the first woman to apply for and receive a U.S. patent, covering a new method of weaving straw with silk. Using Ms. Kies’ invention, women were able to make cost-effective work bonnets in their own homes, boosting the New England hat making industry.

Ms. Kies received a personal letter from First Lady Dolley Madison praising her invention and contribution to the local industry. Unfortunately, the original patent file covering Ms. Kies’ invention was destroyed in a fire at the Patent Office in 1836. In 2006, Ms. Kies was inducted into the National Inventors Hall of Fame.

RADIA PERLMAN  (1951 – )
Radia Perlman, also known as “The Mother of the Internet”, has been a major player and innovator in the development and advancement of the internet and making routing for the internet dependable as well as adaptable. She is most famous for Spanning-Tree Protocol (STP), which is said to have revolutionized the Ethernet (a way in which computers are linked together in a local area network (LAN)).

Ms. Perlman began her career in math and science in the 1960’s and 70’s at MIT, where she received degrees, including her Ph.D., and where she was one of only a handful of female students. Ms. Perlman is also an author of popular texts on cryptography (a way to secure information and communication methods that are made by the use of algorithms) as well as network bridging and routing. She is the holder of 100+ patents and was inducted into the Internet Hall of Fame in 2016.

MARY ANDERSON  (1866 – 1953)
It’s hard to believe that at one time in history there was no such thing as windshield wipers on motor vehicles. However, a woman named Mary Anderson changed all of that.

On a trip to New York City, Ms. Anderson saw that street car drivers had to open their windows so they could see where they were going when it rained.  Ms. Anderson developed a moving arm device that contained a rubber blade that the driver could operate from inside the vehicle.

At first, people were wary of Ms. Andersons’ invention, believing the wipers would be a distraction, however by 1916, windshield wipers had become standard equipment on the majority of vehicles.

Mary Anderson received a patent (No. 743,801) for her device in 1903.

BETTE NESMITH GRAHAM  (1924 – 1980) 
Before Microsoft WORD and other word processing devices, there was a device called the electric typewriter.  While the electric typewriter was definitely faster and neater than the manual typewriter, it was still very difficult to fix typos with a pencil eraser due to their carbon-film ribbons. Secretaries at that time often had to retype an entire page to fix minor errors on a page. However, a woman named Bette Nesmith Graham invented a way around this problem.

Ms. Graham, a secretary at a bank, discovered that painters decorating the bank windows for the holidays removed their mistakes completely by covering them with a coat of paint. The observant Graham mimicked their technique by using a white, tempera paint to cover her typing mistakes.  When the other secretaries found out how well it worked, they came to her for a supply of their own.

Graham, now famous, sold her first batch of Mistake Out in 1956, and then began working at home full time to produce her product. However, Graham continued experimenting with her product by combining paint and other chemicals until she felt she had achieved the perfect combination and replaced the name Mistake Out to Liquid Paper in 1958.

Demand for her product sky-rocketed and Graham applied for a patent and a trademark during that year. Graham’s Liquid Paper Company was a success and by 1967, the company had a corporate headquarters and a production plant and was selling over a million units per year.

In 1975, Graham moved her company to Dallas and then sold her company to the Gillette Corporation.

MICHELLE K. LEE  (1965 – )
On March 13, 2015, after being appointed by President Barack Obama, Michelle K. Lee became the first woman to head the United States Patent and Trademark Office (USPTO). She served as Director until June 6, 2017.

Ms. Lee was born in 1965. She received her B.S. degree in electrical engineering and her M.S. in engineering and computer science from MIT (where she worked in the Artificial Intelligence Lab). She earned her J.D. from Stanford Law School. She also served as a clerk for the Hon. Vaughn R. Walker of the Northern District of California and the Hon. Paul R. Michel of the U.S. Court of Appeals for the Federal Circuit.

Ms. Lee was also a partner at Fenwick and West before joining Google in 2003 as Deputy General Counsel. At Google, Ms. Lee served as the first head of Patents and Patent Strategy and was responsible for formulating and implementing the company’s worldwide patent strategy.

Ms. Lee is currently the Founder, CEO and Principal Advisor of Obsidian Strategies.

The post CELEBRATE DIVERSITY IN INTELLECTUAL PROPERTY – WOMEN’S HISTORY MONTH 2024 appeared first on Ladas & Parry LLP.