Newsletter - Volume 47, December 2009
Federal Circuit Clarifies Standards for Using Internet Materials as Specimens of Use
On December 23, 2009, the Federal Circuit Court of Appeals gave trademark
applicant Michael Sones an early Christmas gift in reversing a Trademark Trial
and Appeal Board decision maintaining a refusal to accept Mr. Sones's specimen
of use submitted for his application to register the mark ONE NATION UNDER GOD
for "charity bracelets." In the Federal Circuit decision In re Michael Sones,
the court held that a picture of goods is not a mandatory requirement for a
website-based specimen of use. The proper test for an acceptable website-based
specimen is "just as any other specimen, …it must in some way evince that the
[applied-for] mark is 'associated' with the goods and services as an indicator
of source."
The specimen of use of the applied-for mark submitted with a statement of use
consisted of pages from the applicant's website including a product listing
consisting of the wording "ONE NATION UNDER GOD™ CHARITY BRACELET for
$2.00" and under this listing the wording "ONE NATION UNDER GOD™ CHARITY
BRACELET, CHOICE OF BLUE OR RED $2.00 EACH. No photograph of the product was
displayed on the submitted website materials. The web page also displayed a
"shopping cart" function for online ordering, including a "View Cart" and "Add
to Cart" function.
During prosecution, the trademark examiner treated Sones's specimen of use as a
'web catalog' and strictly adhered to a rule from the Trademark Manual of
Examining Procedures (TMEP) requiring a picture of the relevant goods as part
of an acceptable catalog or similar specimen of use. In following this rule,
the trademark examiner noted that the submitted specimen did not show a picture
of the goods in close proximity to the mark— which, as described above, is
entirely correct. In the Final Office Action, the trademark examiner took a
more entrenched position, emphasizing that "a display is acceptable 'only
if' it includes 'a picture of the relevant goods.'" (emphasis
in original quote) The Board's decision followed the bright line rule applied
by the trademark examiner and concluded that Sones failed to satisfy "the
criteria …that the specimen (1) include a picture of the relevant goods and (2)
show the mark sufficiently near the picture of the goods to associate the mark
with the goods." The Board also noted what it believed to be an inadequacy of
Sones's description of the goods on the submitted materials.
In reaching its decision, the Federal Circuit reviewed and commented on the
origins of the rule applied by the trademark examiner and the Board. This rule
originated in a federal district court decision Land's End, Inc. v. Manbeck,
addressing a specimen of use from a mail order catalog. While the Land's End
decision made reference to the catalog page showing a picture of the goods and
corresponding description—thus constituting "a display associated with the
goods"— the decision hinged on the catalog page's "point of sale"
characteristics through the inclusion of order forms as part of the catalog.
The USPTO interpreted and adopted the Land's End decision and created
a new section in the TMEP specifically for "catalogs as specimens." Trademark
examiners routinely apply this rule to electronic specimens of use, regardless
of whether they are catalog pages, and the Board has regularly applied this
standard on review.
In the Sones decision, the Federal Circuit clearly states that it does
not believe the Land's End decision established a clear rule requiring
that specimens of use from the Internet always include a picture of the goods.
The Federal Circuit pointed to the Land's End decision's reliance on
the "point of sale" nature of the specimen, and less on the fact that the
catalog page included a picture. The Federal Circuit also indicated that
Internet specimens should be viewed in the same manner as actual goods sold in
a brick-and-mortar store. Product labels and product packaging displaying the
mark are readily accepted without a picture of the goods. Likewise, product
displays such as tradeshow booths, have been found to be acceptable, even
though goods were not present or visible at the tradeshow booth. The TMEP
recognizes that a website is akin to an electronic retail store and that a web
page is a "shelf-talker" or "banner" encouraging consumers to buy a product.
The TMEP also recognizes that ordering from a website is the "equivalent" to
picking up a box in a store, and boxes as product packaging do not need a
photograph of the goods per se to link a trademark to the goods inside.
Accordingly, the Federal Circuit questioned the need for a photograph in the
context of Internet specimens. The Federal Circuit further pointed out that the
TMEP also includes a section concerning specimens of use entitled "Electronic
Displays" which makes reference to websites, but does not recite the elements
of the test from Land's End.
The Federal Circuit acknowledged that a "visual depiction" of a product is an
important consideration in determining the sufficiency of an Internet specimen
and the absence of a picture could certainly support a lack of association
between a mark with the source of the goods. Nevertheless, a picture is not the
only means for establishing an association between a mark and the goods, and a
bright-line rule as applied by the trademark examiner and maintained by the
Board was not correct. The Federal Circuit identified factors, as examples, to
be considered in examining an Internet specimen of use, and possibly offsetting
the lack of picture, as the "point of sale" nature of the specimen and whether
the actual features or inherent characteristics of the goods are recognizable
from the textual description.
The Federal Circuit vacated the decision of the Board and remanded the case for
further proceeding consistent with the Federal Circuit's decision.
This decision raises interesting issues that could shape future USPTO analysis
of specimens of use and TMEP sections. The Federal Circuit is clearly looking
to substance over form in specimens of use. Will this ease review of
non-traditional or "new media" specimens of use? The Federal Circuit has made a
distinction between a catalog as a specimen of use and an Internet reference as
a specimen of use, but did not offer guidance on Internet-based catalogs.
Whereas the TMEP section pertaining to catalogs as specimens of use includes
factors that do not fully reflect the Land's End decision, might an
amendment to this TMEP section be forthcoming? These issues are likely to be
addressed as the Board and USPTO digest the Federal Circuit's decision.
Complications Under the Physician's Immunity Statute: Still Rare, Potentially Costly
Attorneys practicing in the medical-patent field routinely submit
method-of-treatment claims for prosecution before the U.S. Patent and Trademark
Office, as such are considered patentable subject matter under U.S. law. When
drafting and enforcing such claims, however, patent practitioners should be
aware of the "physician's immunity" statute in force in the U.S. since 1996, as
the statute may prevent the enforcement of remedies for infringement of certain
method-of-treatment claims against physicians and hospitals.
Under 35 U.S.C. 287(c), a medical practitioner who infringes a patent by
performing a medical or surgical procedure on a human body (the Section also
provides immunity for procedures performed on a nonhuman animal used in medical
research or instruction directly relating to the treatment of humans) is immune
from liability for that infringement, including freedom from injunctions,
damages and attorneys fees. The immunity does not apply if the performance
included the use of a patented product (machine, manufacture, composition of
matter) in violation of patented claims to the product. While nicknamed to
indicate physician's immunity, this statute provides immunity to non-physician
medical treatment providers as well as health care entities related to the
performance (e.g. hospitals). Section 287(c) also provides that immunity does
not apply to certain device manufacturers, pharmacy or clinical lab services,
or to US patents having effective filing dates prior to September 30, 1996.
U.S. law provides little guidance as to the metes and bounds of 35 U.S.C.
287(c). The legislative history of the statute provides some examples of
intended application of the statute, for instance stating that a physician that
transplanted a healthy heart into a cardiac patient using a conventional
anesthetic would likely enjoy Section 287(c) immunity and not be liable for
infringing a method claim covering the transplant procedure. The legislative
history also states that if the method claim were directed to the use of a
novel and non-obvious anesthetic, immunity under 35 U.S.C. 287(c) may not
apply, and patent holders could receive traditional remedies for infringement.
The Supreme Court was given the opportunity to comment on subject matter that
might fall under Section 287(c) in Laboratory Corporation of America Holdings
v. Metabolite Laboratories, Inc., et al., 548 U.S. 124, 126 S.Ct. 2921
(US S.Ct. 2006). At issue was the validity of claim 13 of U.S. Patent No.
4,940,658, which reads as follows:
A method for detecting a deficiency of cobalamin or folate in
warm-blooded animals comprising the steps of:
assaying a body fluid for an elevated level of total homocysteine; and
correlating an elevated level of total homocysteine in said body fluid with a
deficiency of cobalamin or folate.
Commentators hoped the Supreme Court would consider whether this diagnostic
method claim would be considered protected medical activity under 35 U.S.C.
287(c), and whether physicians and hospitals may enjoy immunity from liability
after infringing this claim. However, the Supreme Court dismissed the case on
procedural grounds and did not consider 35 U.S.C. 287(c). Dissenting Supreme
Court Justices commented that this claim should have been considered by the
Court to make the public aware whether such a claim falls under 35 U.S.C.
287(c).
In Emtel, Inc. v. Lipidlabs, Inc., 2008 U.S. Dist. LEXIS 77597 (S.
Dist. Tex. 2008), a district court discussed 35 U.S.C. 287(c) in some detail.
In Emtel, the holder of U.S. Patent No. 7,129,970 alleged infringement
of claims including a method claim self-categorized as a business method,
directed in part to delivering medical services by having a physician diagnose
medical problems from a distance. The alleged infringer filed a motion for
summary judgment, requesting dismissal of the suit in part due to immunity as a
provider of health services under 35 U.S.C. 287(c). The district court denied
the motion for summary judgment under 35 U.S.C. 287(c), stating that the claims
at issue were not infringed and therefore section 287(c) immunity did not
apply.
Also, in response to the patent holder's assertion that the physician's immunity
statute does not apply because "a Diagnosis is not a 'medical or surgical
procedure,'" the Emtel Court noted that a procedure can refer to
diagnosis in the medical field, citing medical dictionary definitions and
reviewing legislative history records to rebut the patent holder's arguments.
The Court also construed the phrase "the performance of a medical or surgical
procedure on a body," suggesting that a diagnosing physician need not
physically interact with a patient to deliver medical or surgical treatment
under 287(c), and that a company providing communication links between
physician and patient may qualify for 287(c) immunity.
General Recommendations
When drafting medical method claims for filing in the United States, we
recommend considering whether the claims may fall under Section 287(c) (for
instance, if they are directed to a medical or surgical method, or even a
diagnostic method), and whether a potential infringer might be a physician or a
hospital. Where Section 287(c) may be a later issue, we recommend that a claim
set include claims having patented products and non-treatment steps where
possible. Also, claims should be included in the application that will be
geared toward manufacturers and others in the medical industry that do not
qualify for 287(c) immunity.
We also recommend that patent litigators seeking immunity under Section 287(c)
remember that the immunity likely only applies if infringement has been found.
The statute does not prevent patent hol¬ders from alleging infringement or
allow alleged infringers to avoid suit altogether. Rather, the statute provides
immunity from the enforcement of remedies for infringement against medical
practitioners and related health care entities.
Multiple forms of patent protection should be considered, including utility,
design and plant patents. It may be that a design patent provides the only
means of patenting the product, in contrast to patenting the use of the product
during a medical or surgical procedure.
Further, global marketing of a new invention should be considered during the
initial claim drafting of the US utility application. In particular, patent
protection and enforcement of such claims are treated differently in various
countries. For example, most foreign patent offices do not allow
method-of-treatment claims, but rather require "use" style claims instead.
Therefore, certain claims may be composed in the US application in anticipation
of the subsequent examination in specific foreign patent offices.
U.S. Design Patent— the New Patent King
A case may be made that recent court decisions have made obtaining and enforcing
a utility patent more difficult. Conversely, recent court decisions have been
largely favorable as to design patents. Although design patents protect
ornamental features while utility patents cover functional aspects of an
invention, this article suggests that design patent protection deserves greater
consideration.
Design patents are on the rise. This is largely due to the fact that the burden
on design patent owners to prove infringement has been reduced, courtesy of the
Federal Circuit's 2008 decision in Egyptian Goddess, Inc. v. Swisa, Inc.,
543 F.3d 665 (Fed. Cir. 2008) (en banc), cert. denied 129 S.Ct. 1917 (2009)
that changed the test for design patent infringement, by dropping one of two
previously required infringement tests. In particular, the Federal Circuit's
point-of-novelty test was dropped in favor of the Court's ordinary-observer
test. (Although the Federal Circuit also suggests that a test similar to the
point-of-novelty test should be taken into consideration during the
ordinary-observer test.) The patent in Egyptian Goddess was directed
to the ornamental features of a nail buffer. While not a typical product for a
design patent, the district court held that the infringer did not demonstrate
the patent to be invalid. The Federal Circuit affirmed the finding of
non-infringement.
In contrast, ongoing developments in patent law have been less favorable to
owners of utility patents. The 2007 U.S. Supreme Court decision in KSR Int'l
Co. v. Teleflex Inc., 550 U.S. 398, 127 S. Ct. 1727 (2007) has changed
the tests applied by the USPTO when deciding to grant a patent, and by the US
courts when deciding whether to invalidate a patent. The ruling has created
great consternation within the patent community, raising concerns that it would
be very difficult to obtain a patent, and that issued patents en masse
could be held invalid. The KSR decision considered a claim directed to
a combination of an electronic sensor with an adjustable automobile pedal so
that pedal's position can be transmitted to a computer that controls the
throttle in the vehicle's engine. The Court held that the claim was invalid as
a combination of familiar elements according to known methods which does no
more than yield predictable results.
It remains unresolved whether the US Supreme Court intended KSR's
patentability analysis to apply to design patents. The Federal Circuit declined
to address this issue in its 2009 decision in Titan Tire Corp. v. Case New
Holland, Inc., 556 F.3d 1372, 1384 (Fed. Cir. 2009). That case was
directed to a design patent covering the ornamental features of a tractor tire.
The Federal Circuit indicated that the issue of whether it was necessary to
consider the KSR analysis was not relevant. Instead, the issue of
obviousness, in the context of a preliminary injunction, was affirmed as to the
district court's Durling analysis (Durling v. Spectrum Furniture Co.,
101 F.3d 100 (Fed. Cir. 1996)). The Titan Tire Corporation decision
suggests that perhaps the analysis of KSR, which was directed to a
utility patent, may not be applied to design patents.
Make no mistake. Design patents are a potent tool and should be given serious
consideration as a means of intellectual property protection for a vast array
of products, provided there is an ornamental aspect of the invention which is
not dictated by function.
Random House Asserts Digital Rights in Its Older Titles
In the mid 1990s, with the dawn of mainstream reliance on the internet and
electronic communication, many of the large publishing companies revised their
standard publishing contracts with authors to explicitly name rights in digital
publication, along with the traditional printing rights. For many publishers,
one of the constant areas for profit in a struggling industry remains its
authors' backlists, the republication and sale of works long after their
initial run. Now, with the swift rise in popularity of e-books in step with the
growing use of digital book readers, many publishing companies find themselves
scrambling for a way to claim digital rights for works in their backlists whose
contracts did not explicitly include such rights, as some of these works had
been published before the existence of the digital format.
The battle between authors and publishers over digital rights has now come to
head in several inter-related events. On December 11 Random House sent a letter
to many literary agents, announcing its position that all digital rights in its
backlists vested with Random House. Many of the contracts that do not
explicitly name the digital publishing rights still grant the rights to publish
books "in book form" or "in any and all editions" according to the comments
made in the letter. Shortly thereafter, the Authors Guild revealed its own
response to Random House's action on December 15, refuting Random House's claim
by pointing to a 2002 New York case also involving Random House and Rosetta
Books LLC (Random House, Inc. v. Rosetta Books LLC, 283 F.3d 490, 62
U.S.P.Q.2d (BNA) 1063 (2d Cir. 2002)). In that case, Random House had pointed
to the same clause in its contracts granting publishing rights "in book form",
that it is currently using to justify its claim to e-book rights in backlist
titles. The Southern District of New York refused to grant a preliminary
injunction to stop Rosetta from publishing the digital books of a number of
authors in Random House's own backlist, finding that Random House did not have
the electronic rights to the works of William Styron, Kurt Vonnegut Jr. and
Robert Parker. Despite having the rights for the earlier print editions of the
books "in book form," the digital rights to works that had been created before
the advent of digital publishing were not automatically encompassed within the
contracts and therefore vested with the author. The court of appeals
subsequently affirmed the refusal to grant the injunctions against Rosetta.
However, in late 2002 Random House and Rosetta settled their litigation and
avoided trial on the merits. The case was also decided under New York state
law, and could conceivably lead to a different approach elsewhere where state
courts take a less restrictive approach in interpreting contracts. Indeed the
New York appeals court pointed out that Random House did have some appeal to
its argument that an e-book is merely "a 'form' of a book, and therefore within
the coverage of [those] licenses."
One could argue that Random House's own actions do contradict its claim that the
digital rights are inherently included in prior grants, considering it has
explicitly contacted authors requesting that the digital rights be released to
Random House, and has also amended its standard contracts in 1994 to explicitly
include such rights where necessary. While such actions may be seen as a way to
just remove all doubt as to who controls the rights rather than as an admission
that the digital rights are not included in prior grants, it certainly
indicates that the issue and scope of prior contracts are not as clear cut as
Random House is claiming.
Random House's announcement may also be a reaction to action by one of its
authors, William Styron, author of "Sophie's Choice," and one of the authors
involved in the earlier case with Rosetta. Styron recently entered an agreement
with a different publishing company to release the e-book version of several of
his novels that are in Random House's backlist. Around the same time, Steven
Covey, the author of the popular "Seven Habits" series of books, announced that
he had reached an independent and exclusive deal with Amazon to publish his
books in digital format, presumably for use with the Kindle reading device. In
reply, Simon & Schuster, the publisher of Covey's traditionally-published
works, announced its intent to still publish its backlists in digital formats.
The issue seems to have not yet come to blows with publishers in Britain, where
the e-book readers are less ubiquitous and a more common view is that
publishers do not maintain the digital rights in their backlists unless they
had been specifically granted. On the flip side, however, there also appears to
be more reluctance in Britain for authors to turn to other e-publishing sourced
beyond their print publisher. While such a gentlemen's agreement is working for
the time being, it may only take one author on the scale of someone like Steven
Covey to step towards seeking digital publishing deals elsewhere and challenge
this arrangement.
Despite the New York case's prior finding, the fact that the parties did
eventually reach a settlement and never went to trial leaves the issue somewhat
open-ended, and Random House does maintain that since the matter eventually
ended in a settlement, it is not a final ruling on the merits, only on the
issue of the injunction. In refusing the injunction, the Rosetta court stated
that the digital publishing rights for works created before the existence of
digital publishing remained with authors, but this was under a fairly
restrictive interpretation of the scope of the contracts. Would the same be
true for works that were created after the existence of digital publishing, but
before publishing contacts were amended to explicitly name such rights? If a
contract granted the general publishing right using the catchall phrase of "in
book form" or "in any and all editions," one could reasonably view this as
encompassing digital publishing, provided the format was in existence at the
time of the contract. While digital formats were certainly not contemplated for
many books in a publishing company's backlist that were created before the dawn
of digital publishing, there is a window between the start of digital
publishing and the time when contracts were amended to specifically address
digital rights.
With the stronghold by Amazon's Kindle in the e-publishing industry, followed
closely by Barnes and Noble's new Nook and the Sony Reader, and the expected
foray of Apple into the market in 2010, this issue is only beginning to
develop. Furthermore, as digital versions are often far less costly for
publishers to produce, authors are concerned that the royalty percentages
provided by old contracts for the print editions may simply be inequitable and
view the digital printing rights as a way to re-negotiate a more favorable
percentage. Added on this, many large publishing companies intend to delay
release of the digital format for many new titles, in an attempt to hold onto
any potential profit from the hardback formats. In light of each party's at
least partial motivation to increase its own profits, large publishing
companies may have been better off approaching author's and agents to rework
old agreements, rather than making unilateral announcements claiming all rights
under former terms.
Random House's letter may be just one more attempt to revive a struggling
industry, and the first shot in what will likely be a long war over the
ownership of the increasingly lucrative digital rights.
Trademark Protection Proposals for New gTLDs Open for Comment
As we have previously reported, the timeline for launch of new gTLDs by ICANN
has slowed while there is continuing evaluation of overarching issues,
including trademark protection. In its Third Draft Applicant Guidebook, ICANN
staff had proposed a number of trademark-protection mechanisms, including
provisions for creation of a Trademark Clearinghouse ("TC"), which would make
verification of rights easier when a new gTLD is in a sunrise period prior to
launch. The Draft also proposed the creation of a Uniform Rapid Suspension
System, which is a post-delegation dispute-resolution mechanism intended to
more swiftly and less costly address the most obvious cases of trademark
infringement or cybersquatting in domain names. Subsequent to the latest
Guidebook proposal, a Special Trademarks Issues (STI) review team was created
to further analyze the proposed rights-protection mechanisms. The STI team
consisted of representatives from the various ICANN constituencies, including
business and intellectual-property constituencies. The STI recently issued its
recommendations, which are available at
www.icann.org and open for comment until January 26, 2010. These
recommendations provide greater detail to the processes than previous
recommendations did, and in some cases are more limited in scope of protection.
In the Trademark Clearinghouse Proposal, the team consensus was that the
Clearinghouse was not a rights-protection mechanism, but was to be used as a
beneficial implementation tool for rights-protection mechanisms, such as during
a Sunrise or Trademark Claims period of a new gTLD. The Clearinghouse is to be
operated by an arms-length contractor, who would validate the trademarks
included in the TC and create a centralized trademark database to provide
information to the new gTLD registries. The database would include only "text
mark" trademarks from all jurisdictions, which were nationally or
multinationally registered, including countries where there is no substantive
review. However, equal protection would not be required to be provided by
registries to marks registered in a country with no substantive review.
Common-law rights would be excluded from the database, except for
court-validated common-law marks.
The TC database would only be used for validation during pre-launch of a new
gTLD, and would not be used post-launch to screen requested domain names for
trademark matches. The matches reported to a registry would only include
identical matches between the domain name string and validated trademarks. The
proposal states that inclusion of a validated mark in the TC database is not
proof of any right, nor does it confer any rights on the trademark holder.
Conversely, failure to file should not be perceived to be a lack of vigilance
by trademark holders.
A minority opinion from the Intellectual Property Constituency objects to the
unequal protection of no-substantive-review marks. It notes that this might
prejudice marks from a large number countries, including most of Europe, which
do not engage in substantive review. It might also prejudice small businesses
and not-for-profits whose budgets may not allow for a global registration
program beyond their home country.
The Business Constituency and At-Large Advisory Committee also objected to the
"identical match" provision. They suggested that a "match" between a validated
mark and requested domain name should include the Mark plus significant words
from the class description in the Nice Classification system, as was used in
the .ASIA Sunrise period. This would further deter cybersquatters and curb
registrations of domain names that include a trademark along with common words
associated with it.
In the proposed Uniform Rapid Suspension Procedure (URS), the consensus of the
STI Review Team is that the procedure would be a beneficial rights-protection
mechanism for inclusion in the new gTLD program. Whereas the Draft Guidebook
proposal made the URS optional for new registries, the STI team calls for
mandatory use of the URS for all new gTLDs. It is intended to be a
post-delegation dispute-resolution mechanism to more swiftly and less costly
address the most obvious cases of trademark infringement or cybersquatting in
domain names. However, some constituencies question its effectiveness, cost and
time savings when comparing it to the UDRP procedure.
In a URS, a Complainant would need to satisfy the same elements as in a UDRP,
but with a higher burden of proof. Namely, a URS Complainant would need to
establish clear and convincing evidence that there is no genuine issue of
material fact requiring further consideration. Upon the filing of a complaint,
and passing initial examination, an "Initial Freeze" status would be applied to
the domain name. The freeze would dictate that the domain name cannot be
transferred and the WHOIS record cannot change, but the domain name would still
resolve to the original IP address and all features of the domain would still
function (e.g. resolving to a website, routing e-mail). However, the effect of
a decision in favor of the Complainant is limited. Rather than allowing a
transfer of the domain name as in a UDRP, a successful Complaint in a URS would
only result in the domain name being placed in "hold" status. As a result, the
domain name would still remain in the Registrant's name in WHOIS information
during the course of the registration, but would no longer resolve to the
original website, pointing instead to an informational web page provided by the
URS service provider about the URS process.
While the initial intent was to create a streamlined and swifter version of the
UDRP, the timelines of the proposal merely create a shorter timeframe for the
examination process, while still allowing 20 days for the registrant to file an
answer. Even if a registrant were to default, there is still the possibility of
filing an answer within 30 days of a decision, or even later upon the payment
of additional fees. Either party would have the right to seek a de novo appeal,
along with the option of pursuing a UDRP or court action. Initial URS
complaints would be decided by one panelist, while an appeal would be decided
by a three-person panel. The URS would also call for penalties against
trademark holders that try to abuse the process, along with penalties against
Examiners who abused the process. The full URS process would also be subject to
a review by ICANN one year after the first date of operation.
Minority positions were voiced again by the Business Constituency and At-Large
Advisory Committee, requesting the transfer of the domain name in a URS.
Otherwise, it would be necessary to file a UDRP if a cybersquatter registered a
domain name that the trademark holder intended to utilize. With similar costs
necessary to investigate and prepare a complaint for a URS, the cost savings in
filing fees and minimal time savings may not be worth the limited value of
placing the domain name on hold, while allowing it to be free for future
registration upon expiration.
While the various constituency groups and stakeholders have had their voice in
preparing a consensus Trademark Protection Proposal for use with new gTLDs,
there is not full consensus on all issues. Trademark holders and other
interested parties are encouraged to provide their comments to ICANN during the
public comment period. The proposals presented by the STI team, along with
public comments, will then be considered by ICANN when it finalizes the
proposed model for trademark protection in the new gTLD program.
Phony Floridians Foiled
Have you ever paid Federated Institute for Patent and Trademark Registry for
services rendered in acquiring a patent or mark? Hundreds of companies paid on
phony invoices issued by this Florida company, a Florida court recently found,
allegedly to the tune of $2.6 million.
The scheme: Companies applying for marks or patents from various government
agencies received invoices from Federated Institute for Patent and Trademark
Registry, indicating money was "due" for "charges of registration." The
companies paid the invoices, believing them to be legitimate charges associated
with their intellectual property. According to official reports, Federated
Institute did not render a service or pay fees with monies it collected, but
rather spirited its booty across the sea into Swiss bank accounts.
The Florida court considered testimony provided by a WIPO PCT expert and held
this behavior violated Florida's Deceptive and Unfair Trade Practices Act. Full
restitution is being sought for targets of the scheme.
We recommend that all IP holders be aware that hoaxers are looking to the
lucrative IP field for potential targets. More information about schemes to
mislead or cheat IP holders is available at
http://wipo.int/pct/en/warning/pct_warning.htm.
Disclaimer: The contents of this newsletter are presented for information purpose only, and as such are not intended to constitute legal advice and should not be construed as such or acted upon without seeking advice of legal counsel. This information is not intended to and shall not create an attorney-client relationship of any kind or nature with IpHorgan Ltd. Please contact the firm with queries, concerns or for further details regarding the information presented herein. The entire contents are current only as of the date of the newsletter and are not to be interpreted as the opinions of our clients past, present, pending or future. (c)2010, IpHorgan Ltd. All Rights Reserved.
Newsletter Volume 55, August 2010
