Nominative Fair Use

Posted Wednesday, September 30, 2009 by Katie Long.

One valid defense to a trademark infringement claim based on likelihood of confusion is the doctrine of fair use. Nominative fair use may occur when the only practical way to refer to a product or service is by using a trademarked term. Classic fair use occurs where a defendant uses another’s trademark to describe his or her own product. The burden of proving likelihood of confusion, even in fair use cases, remains with the plaintiff.

Courts use the following multi-factor test in assessing for likelihood of confusion in fair use cases:
(1) price of the goods and other factors indicative of the care and attention expected of consumers when making a purchase;
(2) length of time the defendant has used the mark without evidence of actual confusion;
(3) intent of the defendant in adopting the mark;
(4) evidence of actual confusion;
(5) whether the goods, though not competing, are marketed through the same channels of trade and advertised through the same media;
(6) the extent to which the targets of the parties’ sales efforts are the same;
(7) the relationship of the goods in the minds of consumers because of the similarity of function; and
(8) other facts suggesting that the consuming public might expect the prior owner to manufacture a product in the defendant’s market or that he is likely to expand into that market.

Once a plaintiff proves likelihood of confusion, the burden shifts to the defendant to prove that the nominative use of the plaintiff’s mark constitutes fair use. While the circuits do not agree on the exact test, fair use can generally be illustrated by answering the following questions:
(1)Is the use of plaintiff’s mark necessary to describe (a) plaintiff’s product or services and (b) defendants product or service?
(2)Is only so much of plaintiff’s mark used as is necessary to describe plaintiff’s products or services?
(3)Does the defendant’s conduct of language reflect the true and accurate relationship between plaintiff and defendant’s products or services?

If these questions can be answered in the affirmative, use of the plaintiff’s mark will generally be deemed fair use.

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President's Strategy for American Innovation

Posted Wednesday, September 30, 2009 by Jim Ruttler.

The Executive Office of the President has released a paper detailing the President’s strategy for American innovation. The essence of the paper is that bubble type growth in dot coms, housing, and finance are not sustainable drivers of economic activity. The President suggests that a returned focus on innovation is necessary for Americans to thrive in an increasingly competitive global economy. In order to achieve the goal of an innovation based economy, the President seeks to promote research, invest in education, improve our physical infrastructure, increase internet access, open capital markets, and implement policies that encourage innovation. Notably, the President believes that the government’s role should be in providing tools to foster innovation. With respect to the U.S. patent system, the paper stated:

“Intellectual property is to the digital age what physical goods were to the industrial age. We must ensure that intellectual property is protected in foreign markets and promote greater cooperation on international standards that allow our technologies to compete everywhere. The Administration is committed to ensuring that the United States Patent and Trademark Office has the resources, authority, and flexibility to administer the patent system effectively and issue high-quality patents on innovative intellectual property, while rejecting claims that do not merit patent protection.”

The paper can be read in its entirety at: http://www.patentlyo.com/sept-20-innovation-whitepaper_final.pdf.

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New Patent Office Director on Objectives

Posted Wednesday, September 30, 2009 by Jim Ruttler.

The new Director of the U.S. Patent Office, David Kappos, has provided some exciting and interesting initial thoughts on where the Patent Office is heading. Among other things, Kappos indicated that he is working towards reducing the pendency of the first examiner action to around 10 months. This would be an exceptional accomplishment, given that applications presently wait for around 24-36 months prior to the first examiner action. If implemented, it would make it possible to more expediently obtain an enforceable patent or, alternatively, determine whether patent protection was not possible. Kappos has suggested two possible means for achieving this goal: modifying the present examiner reward system to incentivize compact examination and making it possible to request accelerated examination in exchange for abandoning another pending application. The incentives for compact examination would presumably reward examiners for disposing of applications within one or two actions, instead of the present practice of requiring multiple requests for continued examination, which delays issuance and prevents the examiner from considering new applications. The accelerated option would be useful in having applicants voluntarily abandon currently pending applications, thereby cutting into the present backlog. However, it may provide an advantage to larger entities in that small entities and independent inventors sometimes only file one application. The transcript of the Kappos presentation can be found at http://www.uspto.gov/ under news.

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Patent Prosecution Highway

Posted Thursday, September 17, 2009 by Jim Ruttler.

There are currently procedures with a number of foreign patent offices to advance examination of patent applications when a corresponding U.S. patent application has been allowed. For instance, when a U.S. patent application has been examined and claims have been found to be allowable, an applicant can turn around and use this finding of allowability to request that examination of corresponding foreign patent applications be expedited. This obviously requires foreign patent applications to have been filed within the requisite time frame (generally 12 months from the U.S. filing date or 30 months from the U.S. filing date when a PCT application has been filed within 12 months of the U.S. filing date). However, pendency of foreign applications can be significantly reduced to only a few months once the corresponding U.S. application has been found allowable. The official statistics also indicate that the likelihood of rejections goes down along with the number of rejections. Currently, only Japan and Korean offer a patent prosecution highway, but there are a number of other foreign patent offices that offer a pilot program: http://www.uspto.gov/web/patents/pph/.

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Temporary Patent Office Guidelines on Patentable Subject Matter

Posted Thursday, September 03, 2009 by Jim Ruttler.

The Patent Office has released interim guidelines for determining whether a process defines patentable subject matter. A flow chart outlining the guidelines is provided by the Patently-O blog: http://www.patentlyo.com/files/flowchartmort-8-24-09.pdf. Unfortunately, these guidelines are almost certain to change in the coming months when the Supreme Court issues its decision on the standard for determining patentable subject matter in the Bilski case. For the time being, however, these guidelines can help in preparing an application for examination. But, one should also include in the application subject matter that may not currently be patentable in the hopes that that subject matter becomes patentable by the time examination of the application occurs.

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