Likelihood of Confusion trademarks service marks

Likelihood of Confusion – Trademarks

“Likelihood of confusion” is a legal test. It is applied by the courts and administrative agencies to contested Trademark/Service Mark proceedings and by United States Patent and Trademark Office (USPTO) Examiners during the registration process for Trademark/Service Mark Applications.

Likelihood of Confusion – What Law Applies?

Before a federal Trademark is granted, an Applicant must prove to the USPTO that the Trademark was used on goods and/or services in commerce that the U.S. Congress may lawfully regulate. The geographical limit for a federal Trademark registration is the geographical boundary of the United States and its territories.

Federal Jurisdiction

Federal jurisdiction of Trademarks/Service Marks (hereinafter Trademarks) can be controlled by the precedent of the US Supreme Court or one of the thirteen federal circuit courts sitting beneath the US Supreme Court.

Each of the thirteen federal circuits has its own case law precedent for adjudicating “likelihood of confusion” for contested Trademarks.  Although the case law precedent of the federal circuits is similar, it is not identical.

State Jurisdiction

When a Trademark is granted at the State level, the law of that State controls court and agency proceedings. The laws of the several States are variable on the standards for “likelihood of confusion.” The geographical limit for a State Trademark is the border of the State.

Likelihood of Confusion – USPTO Trademark Applications

For the USPTO, the “likelihood of confusion” precedent for Trademark Examiners is set forth in the case of In re E. I. du Pont de Nemours & Co., 177 U.S.P.Q. 563 (C.C.P.A. 1973). Today, the Court of Appeals for the Federal Circuit has jurisdiction over appeals from USPTO agencies and adopted the du Pont case as precedent.

On page 567 of the du Pont case, the court stated:

“In testing for the likelihood of confusion under 15 U.S.C. § 1052 Sec. 2 (d), the following, when of record, must be considered:

  1. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
  2. The similarity of dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use.
  3. The similarity or dissimilarity of established, likely-to-continue trade channels.
  4. The conditions under which and buyers to whom sales are made, i.e., “impulse” vs. care, sophisticated purchasing.
  5. The fame of the prior mark (sales, advertising, length of use.)
  6. The number and nature of similar marks in use on similar goods.
  7. The nature and extent of any actual confusion. The length of time during and conditions under which there has been concurrent use without evidence of actual confusion.
  8. The variety of goods on which a mark is or is not used (house mark, “family” mark, product mark).
  9. The market interface between applicant and the owner of a prior mark… (e.g., have the interested parties executed a contract to proclaim there is no confusion?).
  10. The extent to which the applicant has a right to exclude others from use of its mark on its goods.
  11. The extent of potential confusion, i.e., whether de minimis or substantial.
  12. Any other established fact probative of the effect of use.”

If the Examiner or the USPTO determines there is a “likelihood of confusion” between Applicant’s Trademark and a prior Registration or pending Application, the USPTO will refuse to register the junior Applicant’s Trademark.

Observations

With regard to the “likelihood of confusion” test, each of the federal circuit courts have adopted precedent similar to the test set forth in the case of In re E. I. du Pont de Nemours & Co., 177 U.S.P.Q. 563 (C.C.P.A. 1973). When possible, parties to an infringement will attempt to try the case in a venue most favorable a party’s evidence and arguments.

Have Questions on Your Trademark?

Business Patent Law, PLLC assists companies and individuals with the procurement and management of their Intellectual Property portfolios.

If your enterprise needs legal assistance procuring/managing/enforcing your Patent Applications, Patents, Copyrights or Trademarks/Service Marks, please contact Business Patent Law, PLLC.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses of all sizes.

If you would like to stay up-to-date with news that impacts your business and intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.

Copyright Registrations and Copyright Protections

Copyright Registrations

What are Copyright Registrations?

Copyright Registrations are defined in Title 17 of the United States Code (U.S.C). In part, 17 U.S.C. 102 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:

      • literary works
      • musical works, including any accompanying words
      • dramatic works, including any accompanying music
      • pantomimes and choreographic works
      • pictorial, graphic, and sculptural works
      • motion pictures and other audiovisual works
      • sound recordings
      • architectural works”

A Competitor Published our Copyright – What can We do?

Our advertising manager had lunch with a competitor’s public relations manager. Unfortunately, over lunch, our advertising manager discussed the focus of our advertising campaign. He also discussed our new audiovisual commercial for our third most profitable product line. Before we could publish our new commercial, our competitor launched its own commercial. Their commercial included every focus point from our advertising campaign.

According to our accounting estimates, their use of our ideas reduced our sales by $500K. Can we sue our Competitor for Copyright Infringement?

The answer is… it depends.

What is Required to Prove Copyright Infringement?

Among other things, a Copyright Registration requires, a work “…of authorship fixed in any tangible medium of expression…”

  • If your company had filed an Application for Copyright Registration, prior to the advertising manager’s disclosure to the public relations manager, then Yes, you can probably prove copyright infringement. (The work of authorship was fixed in a tangible medium of expression.)
  • If your company can provide a written document, audio recording or audiovisual recording of what the advertising manager disclosed to the public relations manager then Yes. It may be worthwhile to pursue a claim of copyright infringement, since “the work of authorship was fixed in a tangible medium of expression.”
  • If your company relies only on oral testimony of the advertising manager to prove existence of a Copyright then No. The likelihood of a successful suit is very low since the focus concept was an idea and not “a work of authorship fixed in a tangible medium of expression.”

Advantages of Copyright Registrations

  • Evidence of ownership of the registered work of authorship
  • Public notice of ownership of the work
  • Federal District Court jurisdiction for an infringement suit
  • Possibility of statutory damages and attorneys’ fees

If your enterprise needs legal assistance procuring, managing and enforcing your Copyrights, please contact Business Patent Law, PLLC.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.

If you would like to stay up-to-date with news that impacts your business and intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.

Blue Sky Laws Securities and Smooth Sailing

Securities Laws: State Blue Sky Laws and Smooth Sailing

What Are Blue Sky Laws?

Blue Sky laws are another name for State Securities Laws. The first use of the term is unknown, but the first well-known use of the term was in 1917 by Supreme Court Justice Joseph McKenna. Justice McKenna wrote the Court’s opinion in Hall vs. Geiger-Jones Co., 242 U.S. 539 (1917), which upheld the rights of states to regulate securities. He wrote:

“The name that is given to the law indicates the evil at which it is aimed, that is, to use the language of a cited case, “speculative schemes which have no more basis than so many feet of ‘blue sky'”; or, as stated by counsel in another case, “to stop the sale of stock in fly-by-night concerns, visionary oil wells, distant gold mines and other like fraudulent exploitations.”

State Securities Laws

Unless preempted by federal law, each State regulates the securities of a company that are held by a citizen of the State. By way of example, unless preempted by federal law, the shares of an Ohio small business that are held by a citizen of Kentucky can be the subject of both the Ohio and the Kentucky Blue Sky Laws.

For a small business that has shareholders in several States it is wise to utilize a federal preemption to the registration requirements of the States’ Blue Sky Laws when possible.

Is My Small Business Exempt?

If your business has an exemption from the federal securities laws, you may be unclear on whether or not it is automatically exempted from a State’s securities laws.  Security laws are complex. Whether your securities are exempt depends on which federal exemption you use.

A Federal Preemption Strategy for Securities

When circumstances permit, Business Patent Law, PLLC prefers to utilize Rule 506(b) of Regulation D to obtain and exemption from the “Blue Sky” laws.  Use of Rule 506(b):

  • Provides an exemption from the registration requirements of the federal securities laws
  • Provides an exemption from the registration requirements of one or more States’ “Blue Sky” laws
  • Does not limit the amount of capital that can be raised from the private offering
  • Allows your company to offer a single class of stock to an unlimited number of “accredited” investors
  • Reduces governmental and attorneys’ costs associated with your company’s private stock offering

Rule 506 (b) is not the only federal preemption to the Blue Sky Laws, but it is probably a more cost-effective strategy for your small business.

If you have questions about the securities laws, please contact Business Patent Law, PLLC and we will discuss possibilities for your business and intellectual properties.

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when do patent rights expire

When Do Patent Rights Expire?

Patent rights do not last forever, eventually patent rights expire. A recent Supreme Court decision reviewed the conditions under which patent rights expire and one justice explained why they should. Here’s the information you need to know:

On May 30, 2017, in the case of Impressions Products, Inc. v. Lexmark International, Inc., 581 US ______(2017) 15-1189, the Supreme Court of the United States answered the decade’s old uncertainty regarding the “exhaustion of patent rights” doctrine.(https://www.supremecourt.gov/opinions/16pdf/15-1189_ebfj.pdf)

Impression Products, Inc., Petitioner v.  Lexmark International, Inc., 581 US _____(2017) 15-1189 

In the Lexmark International opinion, the Supreme Court of the United States held that a Patentee could not use patent rights to control the use or sale of the patented article once the Patentee or a licensee of the Patentee had sold the patent article to another.

35 United States Code Section 154(a) – Patent Rights

In the Lexmark International opinion, the Supreme Court wrote, “A United States patent entitles the patent holder (the “patentee”), for a period of 20 years, to “exclude others from making, using, offering for sale, or selling [its] invention throughout the United States or importing the invention into the United States.” 35 U.S.C. § 154(a). Whoever engages in one of these acts “without authority” from the patentee may face liability for patent infringement. §271(a).”

The Supreme Court’s Illustration Supporting the Opinion

Chief Justice Roberts wrote, “But an illustration never hurts. Take a shop that restores and sells used cars. The business works because the shop can rest assured that, so long as those bringing in the cars own them, the shop is free to repair and resell those vehicles. That smooth flow of commerce would sputter if companies that make the thousands of parts that go into a vehicle could keep their patent rights after the first sale. Those companies might, for instance, restrict resale rights and sue the shop owner for patent infringement. And even if they refrained from imposing such restrictions, the very threat of patent liability would force the shop to invest in efforts to protect itself from hidden lawsuits. Either way, extending the patent rights beyond the first sale would clog the channels of commerce, with little benefit from the extra control that the patentees retain. And advances in technology, along with increasingly complex supply chains, magnify the problem. See Brief for Costco Wholesale Corp. et al. as Amici Curiae 7-9; Brief for Intel Corp. et al. as Amici Curiae 17, n. 5 (“A generic smartphone assembled from various high-tech components could practice an estimated 250, 000 patents”).”

Doctrine of Patent Exhaustion and the Patentee’s Rights

In the Lexmark International opinion, the Supreme Court stated, “For over 160 years, the doctrine of patent exhaustion has imposed a limit on that right to exclude. See Bloomer v. McQuewan, 14 How. 539 (1853). The limit functions automatically: When a patentee chooses to sell an item, that product “is no longer within the limits of the monopoly” and instead becomes the “private, individual property” of the purchaser, with the rights and benefits that come along with ownership. Id., at 549-550. A patentee is free to set the price and negotiate contracts with purchasers, but may not, “by virtue of his patent, control the use or disposition” of the product after ownership passes to the purchaser. United States v. Univis Lens Co., 316 U.S. 241, 250 (1942) (emphasis added). The sale “terminates all patent rights to that item.” Quanta Computer, Inc. v. LG Electronics, Inc., 553 U.S. 617, 625(2008).”

Conclusion – Patent Rights Expire Stateside and Abroad

In the Lexmark International opinion, a majority of the Supreme Court Justices concluded that the patent exhaustion doctrine applies to both domestic and foreign sales of the patented article, unless the patented article was not purchased from a Patentee or the Patentee’s licensee.

If you have questions regarding Impressions Products, Inc. v. Lexmark International, Inc., 581 US ______(2017) 15-1189 opinion, or when patent rights expire, please contact Business Patent Law, PLLC and we will discuss how the Lexmark International opinion may or may not affect your business and your intellectual properties.

If you would like to stay up-to-date with news that impacts your intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.

Leahy-Smith America Invents Act changes Patent Law

America Invents Act (AIA) Celebrates 5th Anniversary

What is the America Invents Act?

The Leahy-Smith America Invents Act was signed into law five years ago today. This legislation changed the legal landscape of patent system in the United States.

Prior to the America Invents Act, the United States was “first to invent” nation – meaning that the first person to invent the invention was presumed by the United States Patent and Trademark Office (USPTO) to be the inventor.

What is the Significance of the America Invents Act?

Pursuant to the America Invents Act, the United States is now a “first to file” nation – meaning that the first person to file the necessary documents in the USPTO is presumed by the USPTO to be the inventor.

How Does This Change My Intellectual Property Needs?

Because of the Leahy-Smith American Invents Act, more and more of my clients are opting to file Provisional Patent Applications.  Under the America Invents Act, filing Provisional Applications eliminates some of the pitfalls that were not a problem for Applicants prior to 2011.

Proponents of the Act say this law streamlines the process and encourages an increase in domestic innovation. Opponents of the Act have claimed that the changes favor large business over micro-businesses and the individual inventor.

To learn more general information about the changes implemented by this law, contact Business Patent Law, PLLC and we will discuss how these rules apply to your inventions.

If you would like to stay abreast of changes and other news that impacts your intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.