My apologies for the long absence, dear readers.  Just as the U.S. Supreme Court is set to take its collective seat again for a new term this coming Monday, October 2, 2017, however, I am back with more intellectual property legal highlights.

In the past three or four years, the Supreme Court has been taking an increased interest in intellectual property cases, granting certiorari for more IP cases than ever before and coming down with landmark decisions across the IP legal spectrum.  The 2017 term is already shaping up to be yet another high watermark.  First, the Court has already granted a petition for certiorari for an important patent cases.  The Justices will be faced with a constitutional challenge to the review procedures under the America Invents Act (AIA) under the “separation of powers” doctrine and the Seventh Amendment’s given right to a jury trial in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, No. 16-712.

Second, the Court has a full plate of other petitions for certiorari to consider in the new term on significant and divisive IP issues, including:

  1. the role of the patent specification in deciding patent eligibility, in Synopsys, Inc., v. Mentor Graphics Corporation, No. 16-1288;
  2. known interchangeability evidence for patent equivalence, in Tomita Technologies USA, LLC v. Nintendo Co., Ltd., No. 17-292;
  3. patent infringement through the performance of one or more steps of a patented process by multiple independent actors, in Voter Verified, Inc. v. Election Systems & Software LLC, No. 16-1505;
  4. issued copyright registration vs. filed application for filing an infringement suit, in Fourth Estate Public Benefit Corporation v. Wall-Street.com, LLC, No. 17A150;
  5. vicarious liability for copyright infringement, in Perfect 10, Inc. v. Giganews, Inc., No. 17-320;
  6. when copyright causes of action arise, in Olenicoff v. Wakefield, No. 17-56;
  7. Internet service providers’ liability for copyright infringement and the requirement of volitional conduct, in BWP Media USA, INc. v. T&S Software Associates, Inc., No. 17-122;
  8. whether a likelihood of confusion assessment in a trademark infringement suit is a question of law or fact, in Kibler v. Hall, No. 16-1365;
  9. the test for a parody fair use of a trademark with respect to trademark dilution, in Louis Vuitton Malletier, S.A. v. My Other Bag, Inc., No. 17-72;
  10. necessary pleadings with respect to trademark use in a motion to dismiss under Federal Rule 12(b)(6), in Kassa v. Detroit Metro Convention & Visitors Bureau, No. 16-1512; and
  11. online sellers’ liability for counterfeit sales by third parties, in Hart v. Amazon.com, Inc., No. 16-1549.

At least some of these issues have been mired in split-Circuit decisions, or even simply caught in the land of the undecided.  Hopefully, the Court will offer some guidance.

On January 14, 2017, a sweeping set of new rules will govern proceedings before the U.S. Trademark Trial and Appeal Board (TTAB), including those still pending before the Board on that date.  The final publication of the new rules can be located on the TTAB portal of the U.S. Patent and Trademark Office’s website at https://www.uspto.gov/trademarks-application-process/trademark-trial-and-appeal-board-ttab.  While the portal includes a bevy of links and helpful charts to acquiant practioners with all of the changes, there are a few highlights that deserve specific mention.

The major theme of the TTAB’s amended rules is making “electronic” the default method of procedure.  Arguably, practioners were already defaulting to electronic means of filing and communication, not only due to the passive encouragements of the TTAB, but also by the nature of trademark and TTAB practice generally.  Nevertheless, electronic filings via the TTAB’s online filing system, ESTTA, will now be required rather than preferred.  In the same vein, service of papers and documents between parties must be effectuated by email unless stipulated otherwise, eliminating the extra five days previously alotted in instances of service by mail.  The TTAB will also be taking on the responsibility of serving notices of opposition and petitions for cancellation, eletronically, of course, to attorneys of record, rather than requiring parties to serve these initial filings.  In addition, several discovery changes are likely to shake up the status quo, specifically the limit of requests for admissions and requests for production of documents to 75 each, along with the mandate that all discovery be completed by the discovery deadline, including responses to any outstanding discovery requests.

Is it possible that TTAB’s first rule amendments in 10 years could signal more sweeping changes incoming?  For now, attorneys have enough to contemplate in the next three months.

In December 2014, President Obama declared that the United States would finally be working toward lifting a fifty-year-old embargo and resuming economic relations with the neighboring country of Cuba.  Aside from potentially numerous implications to the business endeavors of both American and Cuban citizens, there promise to be important legal consequences as well, at least in the realm of intellectual property protection.

Unlike in the United States, trademark rights in Cuba vest in the first to file a trademark registration application in the Cuban Industrial Property Office, and not the first to use the mark in commerce.  In anticipation of burgeoning economic relations, it may in fact be beneficial to apply for a trademark registration in Cuba promptly, perhaps even before the lift of the embargo, if one anticipates conducting any business in Cuba once trade resumes between the nations.  A Cuban trademark registration would not only serve to secure one’s rights in his or her important and valuable marks in a new market, but would also help prevent others from applying to register those marks first, in a behavior known as trademark squatting, in an attempt to profit from selling the trademark registration back to a legitimate user at a premium cost.

As an important caveat, however, it is still unclear when economic relations with Cuba will actively resume, and trademark registrations in Cuba remain subject to cancellation for three consecutive years of non-use.  Those not desirous of playing the prediction game should nevertheless consider other options to better protect their valuable marks in preparation.  It becomes even more vital to register and adequately maintain trademarks in the United States, including policing would-be infringers, to ensure the strength of the mark before taking it abroad.  Additionally with an eye to increases in imports, it may be wise to record trademarks with U.S. Customs and Border Protection to guard against importation of counterfeit goods.

Overall, Cuba may prove to be an important new market for the United States, and Cuban enterprises looking to enter the U.S. will likely have an impact on U.S. commerce.  At this point, what practical ramifications arise once the embargo is lifted is anyone’s guess, but it is evident that businesses are already vying to secure their place in the changing marketplace.

In a marketplace centered on convenience and consumer choice, it is of little wonder that the Internet is poised to completely overtake brick-and-mortar stores as a preferred method of shopping.  While physical retailers offer the opportunity to see and test products before purchase, the expediency, virtually inexhaustible product choice, and expansive online presence of practically every major retailer often drive people to shop online.  As such, one may think that physical locations are becoming a thing of the past, but they remain, it appears, an important marketing tool in the Internet age of shopping where every competing retailer is at consumers’ fingertips.  In fact, Apple Inc., considered a frontrunner in computer innovation and known primarily for its marketing and design techniques, has apparently found an extra foothold in the race against its competitors by innovating in an area most technology manufacturers have yet to tap: store layout.

Apple Inc. opened its first physical location in 2001, and since then has expanded to various locales and countries, featuring both standalone Apple Stores and stores in malls and shopping centers.  Apple Stores typically include tables displaying various kinds of Apple products for customers to test and examine, and in addition to selling Apple hardware, also market peripheral products such as cases and cables.  They also feature a Genius Bar, a collective of store employees that serve to help customers set up or fix their Apple products.  While consumers could certainly purchase computers and music players from physical retailers before, Apple is one of the only major computer manufacturers, which may include Sony, Samsung, HP, Dell, etc. to have its own physical retail location.  As fiercely protective of its intellectual property as Apple is known to be, it attempted to get protection for its Apple Store design via a United States trademark registration application in 2010.  After being accepted by the U.S. Patent and Trademark Office, Apple turned overseas and filed an International Trademark Application to expand its trademark rights.

The first foreign trademark office to examine the application was the German Trademark Registry, which denied Apple’s application on the grounds that a store layout could not serve as a trademark because it would not be considered by consumers as an indicator of source.  Apple appealed the decision of the German examining attorney to the German Federal Patent Court, who referred the case to the Court of Justice of the European Union.  In a somewhat surprising twist, the Court of Justice decided that a three-dimensional representation of a store layout may be a valid trademark for both goods and services and may function as a source identifier.  The Court emphasized that the store layout must be sufficiently distinctive by departing significantly from the norm or customs in the industry and must serve to distinguish the goods or services of one retailer from those of another to be registrable.  The Court likened the store layout to a sign that may advertise and signify the origin of specific goods or services.

The German Federal Patent Court will now reconsider Apple’s trademark registration application in light of the opinion of the Court of Justice.  Current opinion is split on whether the application will be allowed to register.  Some believe that the store layout as a trademark may be found to lack distinctiveness, which Apple would have to battle with consumer surveys and advertising expenditure records that demonstrate its store layout has acquired secondary meaning in the minds of the consuming public.  Others think that the Patent Court is likely to allow Apple’s application to register, especially after the opinion of the Court of Justice and the general uniqueness typically associated with Apple and Apple products and services.  The more interesting case, of course, would be the latter, and particularly to what extent this protection could stretch.  Could such trademark protection, which has been generally reserved for words, slogans, colors, and designs, pave the way for other companies to gain protection over their store layouts, and even more interesting would be the resulting infringement analysis for confusingly similar marks.  Perhaps there may be instances of actual confusion where one walks into the wrong store thinking it was an Apple Store because the infringing store layout also featured a rows of tables and a Genius Bar.  Either way, it is evident that intellectual property, even in areas that have been considered to be fairly settled, continues to evolve.

To the great joy of some and the great outrage of others, the United States Patent and Trademark Office Trademark Trial and Appeal Board cancelled six federal trademark registrations for the name of the Washington Redskins on July 18, 2014.  The cancellations came as a result of a long battle by Native American individuals and groups, since at least the early 1990s, to petition the U.S. Patent and Trademark Office to agree that the name was offensive to Native Americans and thus undeserving of trademark protection under federal law 15 U.S.C. §1052.  The portion of the Lanham Act in Section 1052 disallows trademark registration for any mark that “[c]onsists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”

The direct impetus of the recent cancellations was a petition filed by six Native American individuals in 2006.  The Trademark Trial and Appeal Board reached its decision by going through a two-part analysis.  The Board decided that the term “Redskins” in the marks would clearly be understood to identify Native Americans as a group, and further, that the term may be perceived as disparaging by a substantial composite, or significant portion, of that group.  Perhaps most interestingly, the Board ultimately held the federal registrations should be cancelled because the marks were disparaging at the time they were registered.

In this case, as in many other socially and politically charged issues, the pendulum of tradition swings both ways.  On the one hand, the Washington Redskins have gone by that name for more than forty years and were granted federal registrations despite the Board’s assertion that the names have always been disparaging.  On the other hand, society’s increased sensitivity to what has been termed “political correctness” is not necessarily a bad thing when derogatory names for racial groups are broadcast in popular culture on a national level.  It is important to note that the trademark cancellations do not require the team to change its name or prevent it from still enjoying the protection of state and common laws resultant from its long period of use and fame of the marks.  Additionally, much of the NFL is governed by contract, with a multitude of licensing arrangements that more than likely still provide the team with a large portion of exclusivity to the name.  The team does, however, lose the benefits afforded by federal registration, such as presumptions of trademark validity, U.S. Customs protections, and the ability to sue for potentially large statutory damages for trademark infringement.  It is also widely believed that the decision will be appealed, most likely to the federal district court, which has the ability to review such decisions de novo.  As such, no matter which side one falls on, it is probably way too early to call “Game Over.”