Intellectual Property Archives - Business Patent Law, PLLC

USPTO Inventor's Oath or Declaration Requirement

Notice Requiring Inventor’s Oath or Declaration

March 7, 2025March 7, 2025Kenneth Pearce

The USPTO can issue a Notice Requiring Inventor’s Oath or Declaration that requires action by the Applicant. Failure of the Applicant to respond will cause the Patent Application to become abandoned.

Basic Requirements for a US Patent Application

An Inventor’s oath or declaration is one of the requirements for filing a US Patent Application. Basic minimum requirements for filing a US Patent Application include:

Specification
Drawings
At least one claim
Application Data Sheet
Inventor’s Oath or Declaration
USPTO fees – NOTE: It is less expensive to pay the required USPTO fees on the day the Application is filed

An Example of Oath/Declaration Problems

The given name of the inventor was William. However, William generally used the name Will in his business. Will also used the name Will on his federal income taxes.

With the filing of the Patent Application, in the Inventor’s Declaration, the name William was used. However, in the Application Data Sheet, the name Will was utilized.

The Scenario that Unfolded

Will’s Patent Application was examined and approved by the Examiner. A Notice of Allowance was issued. Will was very happy he was going to be granted his first US Patent.

Several days after receiving the Notice of Allowance, Will received a USPTO Notice Requiring Inventor’s Oath or Declaration. Will contacted Business Patent Law about his dilemma.

The Solution to the USPTO Notice

William can file an amended Application Data Sheet indicating his name is William or
Will can file a substitute Inventor’s Declaration changing the name to William

Of course, the USPTO charges a small fee for making either one of these corrections.

The Takeaway

When comes to an inventor’s given name and surname, the USPTO demands precision.

Based on information provided to BPL by our IRS and Social Security affiliates, it appears it does not matter if William or Will is utilized for those agencies as long as the social security number is identical.

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Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies. If you need assistance, please contact Business Patent Law, PLLC.

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Copyright Fair Use

February 11, 2025February 11, 2025Kenneth Pearce

Copyright Fair Use

Copyright Fair Use was Defined by the Supreme Court Case – Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 598 U.S. 508 (U.S. 2023). Copyright Fair Use can involve a complex intricate legal and factual test.

The Rock-and-Roll Photographer

[Presenting the Abbreviated Facts (Pages 515-522 of Goldsmith) regarding Copyright Fair Use.]

Goldsmith began a career in rock-and-roll photography when there were few women in the genre. Her award-winning concert and portrait images, however, shot to the top. Goldsmith’s work appeared in Life, Time, Rolling Stone, and People magazines, not to mention the National Portrait Gallery and the Museum of Modern Art. She captured some of the 20th century’s greatest rock stars: Bob Dylan, Mick Jagger, Patti Smith, Bruce Springsteen, and, as relevant here, Prince.

In 1981, Goldsmith convinced Newsweek magazine to hire her to photograph Prince Rogers Nelson, then an “up and coming” and “hot young musician.” Newsweek agreed, and Goldsmith took photos of Prince in concert at the Palladium in New York City and in her studio on West 36th Street. Newsweek ran one of the concert photos, together with an article titled “‘The Naughty Prince of Rock.’” Goldsmith retained the other photos. She holds copyright in all of them.

Photographer vs. Andy Worhol

In 1984, Vanity Fair sought to license one of Goldsmith’s Prince photographs for use as an “artist reference.” The magazine wanted the photograph to help illustrate a story about the musician. Goldsmith agreed, on the condition that the use of her photo be for “one time” only. (1 App. 85.) The artist Vanity Fair hired was Andy Warhol. Warhol made a silkscreen using Goldsmith’s photo, and Vanity Fair published the resulting image alongside an article about Prince. The magazine credited Goldsmith for the “source photograph,” and it paid her $400.

That Was Not The End of the Story

Warhol, however, did not stop there. From Goldsmith’s photograph, he derived 15 additional works. Later, the Andy Warhol Foundation for the Visual Arts, Inc. (AWF) licensed one of those works to Condé Nast, again for the purpose of illustrating a magazine story about Prince. AWF came away with $10,000. Goldsmith received nothing.

Goldsmith notified AWF of her belief that it had infringed her copyright. AWF then sued Goldsmith and her agency for a declaratory judgment of noninfringement or, in the alternative, fair use. Goldsmith counterclaimed for infringement.

The District Court granted summary judgment for AWF on its assertion of “fair use,” but the Court of Appeals for the Second Circuit reversed that decision.

In this Court, the sole question presented is whether the first fair use factor, “the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes,” weighs in favor of AWF’s recent commercial licensing to Condé Nast. On that narrow issue, and limited to the challenged use, the Court agrees with the Second Circuit: The first factor favors Goldsmith, not AWF.

Let’s explore the rest of the considerations…

What is Fair Use?

On Page 526 of Goldsmith, Justice Sotomayor wrote, “AWF does not challenge the Court of Appeals’ holding that Goldsmith’s photograph and the Prince Series works are substantially similar. The question here is whether AWF can defend against a claim of copyright infringement because it made “fair use” of Goldsmith’s photograph.”

On pages 527-551 of Goldsmith, the Court stated, “To determine whether a particular use is “fair,” the statute sets out four factors to be considered:

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work.”

The First Factor

The first fair use factor is “the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes.” This factor considers the reasons for, and nature of, the copier’s use of an original work.

The “central” question it asks is “whether the new work merely ‘supersede[s] the objects’ of the original creation . . . (‘supplanting’ the original), or instead adds something new, with a further purpose or different character.” In that way, the first factor relates to the problem of substitution—copyright’s bête noire. The use of an original work to achieve a purpose that is the same as, or highly similar to, that of the original work is more likely to substitute for, or “‘supplan[t],’” the work….

Consider the “purposes” listed in the preamble paragraph of §107: “criticism, comment, news reporting, teaching . . ., scholarship, or research.” Although the examples given are “‘illustrative and not limitative,’” they reflect “the sorts of copying that courts and Congress most commonly ha[ve] found to be fair uses,” and so may guide the first factor inquiry.

A use that has a further purpose or different character is said to be “‘transformative.’” As before, “transformativeness” is a matter of degree. That is important because the word “transform,” though not included in, appears elsewhere in the Copyright Act.

The statute defines derivative works, which the copyright owner has “the exclusive righ[t]” to prepare, to include “any other form in which a work may be recast, transformed, or adapted. In other words, the owner has a right to derivative transformations of her work.

Such transformations may be substantial, like the adaptation of a book into a movie. To be sure, this right is “[s]ubject to” fair use. The two are not mutually exclusive. But an overbroad concept of transformative use, one that includes any further purpose, or any different character, would narrow the copyright owner’s exclusive right to create derivative works. To preserve that right, the degree of transformation required to make “transformative” use of an original must go beyond that required to qualify as a derivative.

In sum, the first fair use factor considers whether the use of a copyrighted work has a further purpose or different character, which is a matter of degree, and the degree of difference must be balanced against the commercial nature of the use. If an original work and a secondary use share the same or highly similar purposes, and the secondary use is of a commercial nature, the first factor is likely to weigh against fair use, absent some other justification for copying.

Lynn Goldsmith’s original works, like those of other photographers, are entitled to copyright protection, even against famous artists. Such protection includes the right to prepare derivative works that transform the original. The use of a copyrighted work may nevertheless be fair if, among other things, the use has a purpose and character that is sufficiently distinct from the original.

In this case, however, Goldsmith’s original photograph of Prince, and AWF’s copying use of that photograph in an image licensed to a special edition magazine devoted to Prince, share substantially the same purpose, and the use is of a commercial nature. AWF has offered no other persuasive justification for its unauthorized use of the photograph. Therefore, the “purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes,” weighs in Goldsmith’s favor.

All Factors Must Be Considered

The Court has cautioned that the four statutory fair use factors may not “be treated in isolation, one from another. All are to be explored, and the results weighed together, in light of the purposes of copyright.”

AWF does not challenge the Court of Appeals’ determinations that the second factor, “the nature of the copyrighted work,”; third factor, “the amount and substantiality of the portion used in relation to the copyrighted work as a whole,”; and fourth factor, “the effect of the use upon the potential market for or value of the copyrighted work,” all favor Goldsmith. Because this Court agrees with the Court of Appeals that the first factor likewise favors her, the judgment of the Court of Appeals is Affirmed.

If you have a question about Copyright Fair Use, please contact Business Patent Law, PLLC.

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Trademark Infringement: US Supreme Court Case

January 9, 2025January 9, 2025Kenneth Pearce

**US Supreme Court Case – Abitron Austria GmbH v. Hetronic Int’l, Inc., 600 U.S. 412 (U.S. 2023)**

The Facts

The case is a trademark dispute between a United States company (Hetronic International, Inc.) and six foreign parties (five companies and one individual (collectively Abitron)). Hetronic manufactures radio remote controls for construction equipment. It sells and services these products, which employ “a distinctive black-and-yellow color scheme to distinguish them from those of its competitors,” in more than 45 countries.

Abitron originally operated as a licensed distributor for Hetronic, but it later concluded that it held the rights to much of Hetronic’s intellectual property, including the marks on the products at issue in this suit. After reverse engineering Hetronic’s products, Abitron began to sell Hetronic-branded products that incorporated parts sourced from third parties. Abitron mostly sold its products in Europe, but it also made some direct sales into the United States.

Hetronic sued Abitron in the Western District of Oklahoma for the unauthorized “use in commerce [of] any reproduction . . . of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services” when “such use is likely to cause confusion” and Hetronic also invoked §1125(a)(1), which prohibits the “us[e] in commerce” of a protected mark, whether registered or not, that “is likely to cause confusion.”

Abitron argued that Hetronic sought an impermissible extraterritorial application of the Lanham Act. However, the District Court rejected this argument, and a jury later awarded Hetronic approximately $96 million in damages related to Abitron’s global employment of Hetronic’s marks.

This amount thus included damages from Abitron’s direct sales to consumers in the United States, its foreign sales of products for which the foreign buyers designated the United States as the ultimate destination, and its foreign sales of products that did not end up in the United States. The District Court also entered a permanent injunction preventing Abitron from using the marks anywhere in the world.

On appeal, the Tenth Circuit narrowed the injunction to cover only certain countries but otherwise affirmed the judgment. It concluded that the Lanham Act extended to “all of [Abitron’s] foreign infringing conduct” because the “impacts within the United States [were] of a sufficient character and magnitude as would give the United States a reasonably strong interest in the litigation.”

The ruling of the US Supreme Court

On page 415 of Abitron Austria GmbH, Mr. Justice Alito, for the US Supreme Court, wrote, “This case requires us to decide the foreign reach of 15 U.S.C. §1114(1)(a) and §1125(a)(1), two provisions of the Lanham Act prohibit trademark infringement. Applying the presumption against extraterritoriality, we hold that these provisions are not extraterritorial and that they extend only to claims where the claimed infringing use in commerce is domestic.”

How the US Supreme Court reached the Conclusion

“It is a ‘longstanding principle of American law “that legislation of Congress, unless a contrary intent appears, is meant to apply only within the territorial jurisdiction of the United States.” Abitron Austria GmbH at 417.

“Applying the presumption against extraterritoriality involves “a two-step framework.” Id., at 337, 136 S. Ct. 2090, 195 L. Ed. 2d 476. At step one, we determine whether a provision is extraterritorial, and that determination turns on whether “Congress has affirmatively and unmistakably instructed that” the provision at issue should “apply to foreign conduct.” “If Congress has provided an unmistakable instruction that the provision is extraterritorial, then claims alleging exclusively foreign conduct may proceed, subject to the limits Congress has (or has not) imposed on the statute’s foreign application.” Abitron Austria GmbH, 417, 418.

“If a provision is not extraterritorial, we move to step two, which resolves whether the suit seeks a (permissible) domestic or (impermissible) foreign application of the provision.” Abitron Austria GmbH, 418.

“Step two is designed to apply the presumption against extraterritoriality to claims that involve both domestic and foreign activity, separating the activity that matters from the activity that does not. After all, we have long recognized that the presumption would be meaningless if any domestic conduct could defeat it. Thus, “‘[i]f the conduct relevant to the statute’s focus occurred in the United States, then the case involves a permissible domestic application’ of the statute, ‘even if other conduct occurred abroad.’” And “if the relevant conduct occurred in another country, ‘then the case involves an impermissible extraterritorial application regardless of any other conduct that occurred in US territory.’”

Of course, if all the conduct “‘regarding [the] violations ‘took place outside the United States,” then courts do “not need to determine . . . the statute’s ‘focus’” at all. In that circumstance, there would be no domestic conduct that could be relevant to any focus, so the focus test has no filtering role to play. Abitron Austria GmbH, 419.

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Election Requirement

December 5, 2024December 5, 2024Kenneth Pearce

What is a USPTO Election Requirement?

Before the Patent Examiner examines the Application on its merits, the Examiner can generate an Election Requirement causing the Applicant to select a first group of claims for first examination.

The Examiner generates a USPTO Office Action that includes wording similar to:

“The Application contains claims directed to the following patentably distinct species:

Group 1: Claims 1-5 and 15-20, drawn to invention Z1, shown in figures 1-10.
Group 2: Claims 6-14, drawn to invention Z2 shown in figures 11-17.
Group 3: Claims 21-27, drawn to invention Z3 shown in figures 18-27.”

“Applicant is required under 35 U.S.C. 121 to select a single disclosed species, or a single grouping of patentably indistinct species, for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable.”

“There is a serious search and/or examination burden for the patentably distinct species as for above because at least the following reason(s)…”

Election Requirement – Statutory Law

35 United States Code 121 reads, “If two or more independent and distinct inventions are claimed in one application, the Director may require the application to be restricted to one of the inventions. If the other invention is made the subject of a divisional application which complies with the requirements of section 120 it shall be entitled to the benefit of the filing date of the original application. A patent issuing on an application with respect to which a requirement for restriction under this section has been made, or on an application filed as a result of such a requirement, shall not be used as a reference either in the Patent and Trademark Office or in the courts against a divisional application or against the original application or any patent issued on either of them, if the divisional application is filed before the issuance of the patent on the other application. The validity of a patent shall not be questioned for failure of the Director to require the application to be restricted to one invention.” [Emphasis by BPL].

Observations Regarding Divisional Applications

In view of the Election Requirement, the Applicant elects a first group of claims for first examination
Although an Applicant can argue against the Examiner’s Restriction Requirement, it is generally not cost-efficient for an Applicant to make such an argument
After the election of the first group of claims, in due course, the Examiner will issue an Office Action regarding the patentability of the elected claims
When the original Application has allowable claims, to receive the benefit of the original filing date, any Divisional Application to be filed, must be filed before the Patent for the original Application is granted
A Divisional Application can be filed at any time prior to the Patent grant flowing from the original Application

If your company or you need assistance with US national, foreign or international Patent Applications, please contact Business Patent Law, PLLC.

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If you or your business are located in the greater Cincinnati, Indianapolis, Lexington, or Louisville Kentucky standard metropolitan statistical areas and have a topic or question you would like Business Patent Law, PLLC to address in the blog, please send us an email.

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USPTO National Stage Application - US Patent Lawyer

US National Stage – Revisited

November 8, 2024November 8, 2024Kenneth Pearce

US National Stage

In the November 6, 2017 post, it was written, “By using this procedure, it is possible for your company to receive the grant of the US Patent before parallel Application filed in other jurisdictions are examined.” Since that date, the USPTO has somewhat altered the time line associated with US National Stage Applications.

Regarding the US National Stage, in the November 6, 2017 post, Business Patent Law, PLLC wrote:

Regardless of the nationality of the Patent Applicant, file a Patent Application in the USPTO
It best for your company to originally file a Provisional, Nonprovisional or PCT Application in the USPTO — however, if the Provisional, Nonprovisional or PCT Application was first filed in another jurisdiction, a US Nonprovisional Application can be filed in the USPTO until the US statutory deadline has passed
If a PCT Application is not the first Application filed, a PCT Application claiming priority to a Provisional or Nonprovisional Application is filed in a PCT Receiving Office (preferably, the USPTO Receiving Office)
File a US Nonprovisional Patent Application shortly after the PCT Application was filed, rather than waiting until near the deadline allowed by the PCT
By using this procedure, it is possible for your company to receive the grant of the US Patent before parallel Applications filed in other jurisdictions are examined
As previously indicated, the grant of a US Patent can expedite the grant of parallel Patents in many foreign jurisdictions

Current Timing for a US National Stage

After the National Stage Application is filed in the USPTO, the length of time before receiving the USPTO “Notice of Acceptance of Application Under 35 U.S.C. 371 and 37 CFR 1.495” is variable. Because of this uncertainty, it is unlikely that the National Stage Application will be granted before parallel applications must be filed in foreign jurisdictions.

If the National Stage Applicant has not received the USPTO “Notice of Acceptance of Application Under 35 U.S.C. 371 and 37 CFT 1.495” after the passage of a reasonable amount of time, contact the USPTO Help Desk to assist with the determination that the US National Stage Application has been properly filed in the USPTO.

Business Patent Law, PLLC’s Observation

Although US law allows the National Stage Applicant to file amended claims with the initial filing of the US National Stage Application, Business Patent Law, PLLC has concluded that it is better to first receive the “Notice of Acceptance of Application Under 35 U.S.C. 371 and 37 CFT 1.495,” and thereafter file the set of amended claims before the first USPTO Office Action.

If you or your company needs assistance with US national, foreign or international Patent Applications, please contact Business Patent Law, PLLC.

Ask Us Anything…about Intellectual Property!

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies. If you need assistance, please contact Business Patent Law, PLLC.

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Copyrights and Trademarks

August 14, 2024August 14, 2024Kenneth Pearce

Can Artworks be the Subject of both Copyrights and Trademarks?

Yes. Certain works fixed in a tangible medium of expression can be granted both Copyrights and Trademarks Registrations by the US Copyright Office and the US Trademark Office.

Examples of Artworks that can be the Subject of Copyrights and Trademarks

Logo
Painting
Picture
Sound Recording

17 U.S. Code § 102 – Subject matter of copyright: In general

17 U.S.C. §102, in part, reads:

(a) Copyright protection subsists, in accordance with this title, in 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. Works of authorship include the following categories:

pictorial, graphic, and sculptural works;
sound recording;

15 U.S. Code § 1052 – Trademarks Registrable on Principal Register; Concurrent Registration

35 U.S.C. § 1052, in part, reads:

No trademark [or service mark] by which the goods [or services] of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—

(a) Consists 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; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 3501(9) of title 19) enters into force with respect to the United States.

(b) Consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof.

(c) Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.

(d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive: Provided, That if the Director determines that confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limitations as to the mode or place of use of the marks or the goods on or in connection with which such marks are used, concurrent registrations may be issued to such persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to (1) the earliest of the filing dates of the applications pending or of any registration issued under this chapter; (2) July 5, 1947, in the case of registrations previously issued under the Act of March 3, 1881, or February 20, 1905, and continuing in full force and effect on that date; or (3) July 5, 1947, in the case of applications filed under the Act of February 20, 1905, and registered after July 5, 1947. Use prior to the filing date of any pending application or a registration shall not be required when the owner of such application or registration consents to the grant of a concurrent registration to the applicant. Concurrent registrations may also be issued by the Director when a court of competent jurisdiction has finally determined that more than one person is entitled to use the same or similar marks in commerce. In issuing concurrent registrations, the Director shall prescribe conditions and limitations as to the mode or place of use of the mark or the goods on or in connection with which such mark is registered to the respective persons.

(e) Consists of a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them, (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them, except as indications of regional origin may be registrable under section 1054 of this title, (3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them, (4) is primarily merely a surname, or (5) comprises any matter that, as a whole, is functional.

(f) See 15 U.S. Code § 1052 (f).

If your company needs assistance with its Copyrights and Trademarks or Service Marks, please contact Business Patent Law, PLLC.

Ask Us Anything…about Intellectual Property!

If you or your business are located in the greater Cincinnati, Indianapolis, Lexington, or Louisville standard metropolitan statistical areas and you have a topic or question you would like Business Patent Law, PLLC to address in the blog, please send us an email.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies. If you need assistance, please contact us.

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What Is the European Unitary Patent?

July 14, 2024July 15, 2024Kenneth Pearce

The European Unity Patent, which came into effect on June 1, 2023, is a way to have a single patent cover multiple countries. As of September 1, 2024, it is expected that eighteen European countries will participate in the Unitary Patent System. In the future it is anticipated twenty-five European countries will participate.

Where Do I File?

A request for a Unitary Patent commences in the European Patent Office.

What are the European Patent Office’s Costs of Filing a European Unitary Patent?

It is estimated that the current cost of filing for a Unitary Patent is approximately 2000 Euros plus VAT, if any. (This less than the traditional manner of validating a European Patent in selected jurisdictions.)

Which European Countries Currently Participate in the Unitary Patent System?

Austria
Belgium
Bulgaria
Denmark
Estonia
Finland
France
Germany
Italy
Latvia
Lithuania
Luxembourg
Malta
Netherlands
Portugal
Romania
Slovenia
Sweden

Which European Countries will Not Participate in the Unitary Patent System?

Switzerland and the United Kingdom are not members of the European Union and they participate only with the traditional validations of European Patents.

If your company needs assistance with its European Patent Applications or Patents, please contact Business Patent Law, PLLC.

Ask Us Anything…About Intellectual Property!

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies. If you need assistance, please contact Business Patent Law, PLLC.

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Letter Codes for US Patents

June 9, 2024June 9, 2024Kenneth Pearce

Letter Codes for US Patents & Published Patent Applications

Commencing on January 1, 2002, letter Codes were added to United States Patents.

In 2002, the United States Patent and Trademark Office (USPTO) began publishing Patent Applications that included letter Codes.

Some of the Letter Codes Used by the USPTO

Letter Code Document Type

A Utility Patent Grant issued prior to January 2, 2001

A1 Utility Patent Application published on or after January 2, 2001

A2 Second or subsequent publication of a Utility Patent Application

A9 Correction published Utility Patent Application

Bn Reexamination Certificate issued prior to January 2, 2001

B1 Utility Patent Grant without pre-grant publication issued on or after January 2, 2001

B2 Utility Patent Grant with pre-grant publication issued on or after January 2, 2001

Cn Reexamination Certificate issued on or after January 2, 2001

E Reissue Patent

S Design Patent

If your company needs assistance with its intellectual properties, contact Business Patent Law, PLLC.

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Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies. If you need assistance, please contact Business Patent Law, PLLC.

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Whiskey vs. Dog Toys – A Supreme Court Case about Trademark Infringement

April 14, 2024June 30, 2024Kenneth Pearce

Jack Daniel’s Whiskey Trademark vs A Dog Toys Trademark

Jack Daniels objects to Bad Spaniels Trademark. The Supreme Court Case – Jack Daniel’s Props. v. VIP Prods. LLC, 143 S. Ct. 1578, 216 L. Ed. 2d 161, 599 U.S. 140 (U.S.).

The Facts

On page 1582 of the Jack Daniel’s Props. Supreme Court case, Justice Kagan wrote, “This case is about dog toys and whiskey, two items seldom appearing in the same sentence. Respondent VIP Products makes a squeaky, chewable dog toy designed to look like a bottle of Jack Daniel’s whiskey. Though not entirely. On the toy, for example, the words “Jack Daniel’s” become “Bad Spaniels.” And the descriptive phrase “Old No. 7 Brand Tennessee Sour Mash Whiskey” turns into “The Old No. 2 On Your Tennessee Carpet.” The jokes did not impress petitioner Jack Daniel’s Properties. It owns trademarks in the distinctive Jack Daniel’s bottle and in many of the words and graphics on the label. And it believed Bad Spaniels had both infringed and diluted those trademarks. Bad Spaniels had infringed the marks, the argument ran, by leading consumers to think that Jack Daniel’s had created, or was otherwise responsible for, the dog toy. And Bad Spaniels had diluted the marks, the argument went on, by associating the famed whiskey with, well, dog excrement.”

The Court of Appeals, in the decision we review [953 F.3d 1170 (2020)], saw things differently. Though the federal trademark statute makes infringement turn on the likelihood of consumer confusion, the Court of Appeals never got to that issue. On the court’s view, the First Amendment compels a stringent threshold test when an infringement suit challenges a so-called expressive work—here (so said the court), the Bad Spaniels toy. And that test knocked out Jack Daniel’s claim, whatever the likelihood of confusion. Likewise, Jack’s dilution claim failed—though on that issue the problem was statutory. The trademark law provides that the “noncommercial” use of a mark cannot count as dilution. 15 U.S.C. §1125(c)(3)(C). The Bad Spaniels marks, the court held, fell within that exemption because the toy communicated a message—a kind of parody—about Jack Daniel’s.

**Supreme Court Legal Principles from the Jack Daniel’s Props. Decision**

A trademark is not a trademark unless it identifies a product’s source and distinguishes that source from others. In other words, a mark tells the public who is responsible for a product.
A source-identifying mark enables customers to select “the goods and services that they wish to purchase, as well as those they want to avoid.
The mark “quickly and easily assures a potential customer that this item—the item with this mark—is made by the same producer as other similarly marked items that he or she liked or disliked in the past. Because that is so, the producer of a quality product may derive significant value from its marks.
The Lanham Act creates a federal cause of action for the plaintiff when the defendant’s actions are “likely to cause confusion, or to cause mistake, or to deceive.”
The Lanham Act also creates a cause of action for the defendant’s dilution of famous marks, where the plaintiff does not need to prove “likelihood of confusion.”

The Supreme Court’s Conclusions

A parody must “conjure up” “enough of [an] original to make the object of its critical wit recognizable.” The parody must also create contrasts, so that its message of ridicule or pointed humor comes clear. And once that is done, a parody is not often likely to create confusion.
The fair-use exclusion has its own exclusion: It does not apply when the use is “as a designation of source for the person’s own goods or services.” In that event, no parody, criticism, or commentary will rescue the alleged dilutor. It will be subject to liability regardless.
On infringement, we hold only that Rogers v. Grimalidi, 875 F. 2d 994, 999 (2^nd Second 1989) does not apply when the challenged use of a mark is as a mark.
On dilution, we hold only that the noncommercial exclusion does not shield parody or other commentary when its use of a mark is similarly source-identifying.

Ask Us Anything… about Intellectual Property!

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies. If you need assistance, please contact Business Patent Law, PLLC.

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Should You Accept a Trademark Examiner’s Amendment?

January 10, 2024January 10, 2024Kenneth Pearce

Trademark Examiner’s Amendment of Application

A Trademark Examiner’s amendment is sometimes suggested and/or required during examination a US Trademark Application*.

Some Examiner’s amendments will alter the scope of rights associated with a future Trademark Registration. Other Trademark Examiner’s amendments will not modify the scope of rights associated with a future Trademark Registration.

Whether or not to accept the Trademark Examiner’s amendment is a business decision.

Potential Consequences of an Amendment

Applicant’s acceptance of the Trademark Examiner’s amendment generally results in Trademark Registration for the Applicant.

Failure to agree to the Examiner’s amendment can result in:

Legal arguments that the Examiner’s suggested amendment is inappropriate
A refusal to register the Trademark and the loss of long-term federal rights associated with a US Registration
An appeal to the Trademark Trial and Appeal Board where the Applicant can lose the appeal
Filing a new Application to register the Trademark, where the new Application is modified from the previously filed Trademark Application

About Section 707 – TMEP – Examiner’s Amendment*

Examples of Section 707 relevant procedures for Trademark Examiners include:

An Examiner’s amendment should be used whenever appropriate to expedite prosecution of an Application
An Examiner’s amendment is a communication to the Applicant in which the examining attorney states that the Application has been amended in a specified way
Except in the situations listed in TMEP §707.02, the amendment must be specifically authorized by the individual Applicant, someone with legal authority to bind a juristic Applicant 700-20 October 2010 (e.g., an officer of a corporation or general partner of a partnership), or the applicant’s qualified practitioner
Except in the situations set forth in TMEP §707.02 in which an examiner’s amendment is permitted without prior authorization by the Applicant, an examining attorney may amend an application by examiner’s amendment only after securing approval of the amendment from the individual Applicant, someone with legal authority to bind a juristic Applicant, or the Applicant’s qualified practitioner by telephone, e-mail, or in person during an interview. Cf. 37 C.F.R. §§2.62(b) and 2.74(b)
If the Applicant has a qualified practitioner, the examining attorney must speak directly with the practitioner
If the Applicant is pro se, the examining attorney must speak directly with the individual Applicant or with someone with legal authority to bind a juristic Applicant (e.g., a corporate officer or general partner of a partnership)
For joint Applicants who are not represented by a qualified practitioner, each joint Applicant must authorize the examiner’s amendment

*Along with Trademarks, the USPTO Trademark Manual of Examining Procedure (TME) also applies to Service Mark Applications.

If your company needs assistance with its Trademarks/Service Marks, please contact Business Patent Law.

Ask Us Anything… about Intellectual Property!

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies. If you need assistance, please contact Business Patent Law, PLLC.

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