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 June of 2014, the United States Supreme Court upheld the decision of the United States Court of Appeals for the Federal Circuit in striking a blow against the patent eligibility of software and business methods by concluding that the patent claims in the patents at issue in the infringement case of Alice Corp. Pty Ltd v. CLS Bank Int’l were directed toward ineligible subject matter for patent protection.  In so doing, the Supreme Court attempted to promulgate a standard for determining patent eligibility under 35 U.S.C. § 101.  The pronounced test involves a two-part inquiry: (1) whether the claims directed to an abstract idea; and (2) subsequently, whether the claims add significantly more in their implementation such that the abstract idea is transformed into a patent eligible invention.  Following the decision, many scholars and practitioners were disappointed, however, to have received little practical guidance from the Supreme Court, which limited its consideration of what constitutes an abstract idea to only the claims at issue in Alice and did not elucidate what was necessary to transform a claim directed at an abstract idea into a patent eligible invention.

Notwithstanding the somewhat hazy standard it instituted, the Supreme Court has not been shy about encouraging lower courts and the United States Patent and Trademark Office (USPTO) to apply it.  Such adherence has resulted in a new form of a § 101 “Alice” rejection being issued by Patent Examiners at the USPTO and lower courts striking down software and business method patents with greater frequency.  The latest instance of this occurred on November 14, 2014 in the Federal Circuit case of Ultramercial Inc. v. Hulu, LLC, Fed. Cir., No. 10-1544, November 14, 2014.  The main patent claims at issue would be familiar to anyone who has spent some time on websites such as YouTube, Pandora, and particularly in this case, Hulu.  U.S. Patent No. 7,346,545 revolved around a method of exchange where a consumer receives free streams of video or other media by watching a paid advertisement.  The judges of the Federal Circuit, though careful to say that this is not necessarily true for all claims in all software patents, found the claims directed to the abstract idea of advertising as an exchange of currency, also utilized on television and the radio.  The method at issue, which outlined the steps of the exchange, was not found sufficiently concrete or tangible to pass muster under the first prong of the Supreme Court’s test.  The Federal Circuit deemed the method an abstract idea.

Moreover, the court did not find the claims to add any elements to transform the claims into a patent eligible invention by adding that ever-elusive “inventive step.”  According to the court, the method was nothing more than an implementation of an abstract idea through conventional steps, and the claims’ additional limitations, such as updating an activity log, were all considered just as routine, conventional, and well-understood.  The court went further to state that the mere addition of novel or non-routine elements does not necessarily transform the abstract idea to make it patent eligible.  The claims must add “significantly more” to the abstract idea, offer some type of technological, physiological, or otherwise transformative leap to satisfy patent eligibility.  Perhaps most importantly, following in the wake of Alice in particular, the court emphasized that the addition of the Internet alone cannot make the abstract idea patentable.  Instruction to use or implement the abstract idea on the Internet (or in the case of Alice, on a computer in general) does not constitute that “inventive step” necessary for eligibility, particularly in light of the prevalence and permeation of such technology in today’s society.

Arguably, the Alice standard has already made it tougher to attain and maintain software and business-type method patents.  The Supreme Court’s two-part framework offers the contours of an analysis, but was not actually accompanied by clear, practical decision-making standards.  As such, patent applicants in the USPTO and patent litigants throughout the federal districts are still confused and wary, and will remain so at least until a solid body of case law accumulates interpreting and implementing the Alice test.  It appears, however, that courts are at least beginning to make strides toward that end, even though recent decisions do not pave a smooth and easy road for software inventions.

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.”