What Every GC Needsto Know About IP

Speakers:Seann W. Hallisky, Stoel Rives LLP

Samuel E. Webb, Stoel Rives LLP

June 12, 2007

Trademark & Copyright Topics

• Commonly held misconceptions regarding trademarks

• Is domain name “tasting” simply a new flavor of cybersquatting?

• Federal Trademark Dilution Act

• Copyright basics in a digital age

Common Trademark Misconceptions—a U.S. Perspective*

1. Trademark rights are based on registration, not use?

2. A “mark” refers only to a logo?

3. Common English words can or cannot be marks?

4. To infringe, two trademarks need to be identical?

5. Territorial scope of trademark rights—global? * Adapted from Five Common Misconceptions Regarding Trademark Protection: A U.S.

Perspective, Valerie Brennan, Hogan & Hartson LLP, INTA Bulletin (Apr.15, 2007).

“Legal” Definition of a Trademark (Lanham Act § 45)

“The term ‘trademark’ includes any word, name, symbol, or device, or any combination thereof—

“(1) used by a person, or

“(2) for which a person has a bona fide intention to

use in commerce and applies to register on the

principal register established by this chapter,

to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.”

What Can Be Protected as a Trademark?

What Can Be Protected as a Trademark? (continued)

• Words

• Designs (logos)

• Packaging and product configurations

• Colors

• Sounds

• Fragrances

• Combinations of the above

Distinctiveness

• A mark must be inherently distinctive or have acquired distinctiveness (“secondary meaning”)

Most distinctive

Least distinctive

Fanci

ful o

r arb

itrar

y m

arks

(e.g

., KODAK, A

PPLE)

Suggestiv

e m

arks

(e.g

.,

COPPERTONE, TREE T

OP)

Descr

iptiv

e m

arks

(e.

g.,

WASHIN

GTON MUTUAL)

Gen

eric

term

s

(e.g

., BIK

E for b

icyc

les)

Likelihood of Confusion

• Junior user’s use of mark likely to cause confusion in minds of purchasers as to source of the product or service. Factors to consider:– Similarity of marks (sound, sight and meaning)– Similarity of goods– Similarity of marketing

“channels” of trade– Sophistication of consumers– “Strength” of marks– Actual confusion in the market

Confusingly Similar?

BANK OF AMERICA AMERIBANC

International Considerations

Is a Federal Trademark Registration Valid Outside the United States?

• No. Most countries maintain their own register of trademarks. The laws of each country regarding registration must be consulted.

• Certain countries, however, dorecognize a U.S. registration as a basis for registering the mark in those countries.

• Federal protection does not give international protection

Int’l Considerations (continued)

• First to use vs. first to register

• Traditional (national) approach

• Paris Convention– Allows a U.S. applicant to claim the date of its

U.S. application as the priority date for foreign trademark protection if the applicant files in the foreign country within 6 months of the U.S. filing date

Int’l Considerations (continued)

• Community Trademark Registration– 27 countries in the European Union

• Madrid Protocol – Allows a U.S. applicant to seek registration in

any of the member countries by filing one application with the USPTO and designating as many member countries as it chooses

Domain Name “Tasting”

• “Add-delete” is registering a name with a subsequent deletion of the name during the five-day registration grace period

• “Name tasting” is add-delete but with the delete decision based on whether or not the traffic level on the name during the grace period surpasses a threshold

Domain Name “Tasting” (continued)

• In practice, “new names” (names that had NOT been unavailable immediately before registration) and “dropped names” (names that had been unavailable immediately before registration) are both subject to tasting– New add-delete activity is approximately 2 million names

per day

– Drop add-delete activity is approximately 20,000 names per day

• “Keep rate” is the percentage of names out of the batch of names tasted that exit the five-day grace period

Problems…

• User confusion

• Registry load

• Trademarks

See Handouts on…

• Trademark Dilution Revision Act of 2006 (15 U.S.C. § 1125)

• Copyright Tips for Using Content of Others – Checklist

• Regional Foreign Trademark Registration Systems: CTM and Madrid System

Patentable Subject Matter

• Patentable subject matter (35 U.S.C. § 101)– Any “new and useful process, machine, manufacture,

or composition of matter . . . ”– Interpreted to encompass broad range of subject

matter– Though general overlap, international standards are

not perfectly harmonious

• Must be “novel” (35 U.S.C. § 102) and “nonobvious” (35 U.S.C. § 103)

Patent Rights

• Patent claims define your patent rights– General rule: potential value increases as

claim breadth increases

• A patent does not afford the right to practice your invention

• Patents create a negative right to exclude– It is a right to sue, not to do

Patent Fundamentals

• Define the business purpose • Create and fund a patent strategy that

achieves defined purpose – Candid assessment of patent opportunities– Cross-function coordination– Resource allocation – Consider incentives

• Institute practices that establish, preserve and possibly extend patent rights

Create & Preserve Patent Rights

• Know your patent opportunities– General – Specific

• Define a patent strategy– Organization level– Product level

• Prevent loss of rights– Preserve inventive history (inventor notebooks)– Guard against premature public disclosures– Timing of first sale or offer for sale– Monitor publication and international filing dates

Strong Specifications

• Coordinate patent strategy with R&D– Projects to be pursued– Manner in which R&D proceeds

• Allocate time and resources

• Draft specification to support patent strategy and magnify patent opportunities– Consider the technology and ripeness for filing– Specification supports full breadth of desired claims– Specification allows alternative claim strategies– U.S.-only strategy vs. international strategy– Pay attention to formal requirements

Prosecution Fundamentals

• Prosecute with business purpose in mind• Preserve patent term adjustments

– USPTO has obligation to act within defined time limits– Failure to do so will result in upward “adjustment” of

patent term– Applicant delays subtracted from USPTO adjustment

• Do not compromise U.S. patents during international proceedings

• Watch your language • Correct errors at first opportunity

Post-Allowance:Are We Done Yet?

• Continuing applications– Capture full benefit of invention – Competitive tool

• Review allowed applications/issued patents– Mistakes may result in loss of rights– Correction available pre- and (for some errors) post-issuance

• Industry-specific opportunities• Administrative obligations

– Maintenance fees– Patent marking

Application Tools

• U.S. utility application – “Standard” U.S. patent application– Term = 20 years from filing (some exceptions pre-

June 1995)– Several formal requirements

• U.S. provisional application– Gain a year of priority without sacrificing a year of

term– Avoid “Utility Jr.” perception– Due to informal nature, may mitigate effects of

unavoidable disclosure

International Tools• PCT international application

– Single application affords entry into all member states– Defer significant international costs– Term of resulting national patents = 20 years from

filing PCT application

• Regional organizations– EPO, CSIR, OAPI, ARIPO, EAPO

• Direct national filings– Only route for non-PCT member countries– Becomes expensive fast– Not typically available for U.S. entity as first filing

Current Climate

• Low regard held by certain prominent academic, industrial and judicial figures– Low-quality patents– Too long to get patents– Too easy to get patents– Patent trolls (perhaps the ugliest public battle)

• The U.S. patent system “has become sand rather than lubricant in the wheels of American progress . . . .” (Adam Jaffe & Josh Lerner, Innovation & Its Discontents )

Climate Driving the Perfect Storm

• Proposed USPTO rule changes– Expected this summer

• Pending patent reform legislation– 2005 first proposed– Renewed effort in 2007

• Judicial changes/uncertainty– U.S. Supreme Court– Court of Appeals for the Federal Circuit

Proposed Rule Changes

• Response to USPTO difficulties– Workload, staffing, “complex” applications

• Strange evolution• Initial proposals harsh• Expected finalization in July, but details unclear• In short:

– Limit availability of continuing applications– Limit number of claims examined

Patent Reform

• Driven by various interests• Legislation proposed in 2005 (House) and 2006

(Senate), but stalled• Reintroduced in 2007 (S. 1145, H.R. 1908), with

recent markup of House version. Selected provisions include:– Post-grant opposition system– First inventor to file, not first to invent system– Changes to “willfulness” standards and damages

calculations

Changes in Case Law

• U.S. Supreme Court decisions in 2006 and 2007– Availability of injunctions (eBay Inc. v. MercExchange,

L.L.C., 126 S. Ct. 1837 (2006))

– Patentable subject matter (Lab. Corp. of Am. Holdings v. Metabolite Labs., Inc., 126 S. Ct. 2921 (2006))

– Availability of declaratory judgment (MedImmune, Inc. v. Genentech, Inc., 127 S. Ct. 764, 767 (2007))

– Obviousness standard (KSR Int’l. Co. v. Teleflex, Inc., 127 S. Ct. 1727 (2007))

Changes in Case Law

• Federal Circuit unpredictability• Some concepts continually evolving (Ferring

B.V. v. Barr Labs, 437 F.3d 1181 (Fed. Cir. 2006))– Response to external stimuli (e.g., Supreme Court

action)• “There is flexibility in our obviousness jurisprudence because

a motivation may be found implicitly in the prior art.” Alza v. Mylan, 464 F.3d 1286 (Fed. Cir. 2006).

• “In contrast to the characterization of some commentators, the suggestion test is not a rigid categorical rule. DyStar v. C.H. Patrick Co., 464 F.3d 1356 (Fed. Cir. 2006).

Q & A