April 2013 Patent and Trademark Prosecution Group Luncheon

1. Prosecution Luncheon
April 18, 2013

2. TTAB Success in 2(e) Refusals?
TTABLOG informal analysis – 139 2(e)
decisions in 2012
• (e)(1) descriptive – 96 aff’d, 21 rev’d (82%)
• (e)(2) geographically descriptive – 5 aff’d, 2
rev’d
• (e)(3) geographically misdescriptive – 3 aff’d
• (e)(4) surname – 4 aff’d, 3 rev’d
• (e)(5) functional – 1 aff’d, 4 rev’d

3. Indiana Cyberpiracy
• Laporte County CAVB announced new campaign,
“Visit Michigan City Laporte”
• Serenity Springs then reserved and began using
domain name
• at bench trial – trial court held that there was TM
infringement and “cybersquatting that approaches
cyberpiracy.” HELD:
– TM law does not apply to gov’t entities the same b/c of
transparency requirement
– “mark certified as a TM,” relied on Indiana registration
– secondary meaning based on subsequent use
• Serenity Springs v. Laporte County CAVB, 46A03-1205-MI-214 (Ind.
App. 4/15/13)

4. Indiana Cyberpiracy
• Appellate Court Reverses – “clearly
erroneous”:
– mark is geographically descriptive
– No evidence of secondary meaning, indeed not
possible before use actually begins
• BUT, “None of this is to say, however, that
Serenity’s actions are necessarily beyond the
reach of the law.”
– Remanded for consideration of unfair
competition claims

5. TM Clearinghouse OPEN for gTLDs
• New top gTLDs program set to launch in 2013
• The TMCH is a central database where TM owners may
record information - available as of March 26, 2013.
• Benefits:
– Allows participation in “Sunrise Period” – 30 days for
TM owners to register domain under a gTLD before
registration is available to the public.
– If an application is submitted for a new gTLD which
matches a recorded TM, owner will be notified - Option
to challenge.
• Cost $150 for one year; $435/3yrs; $725/5 yrs

6. TTAB – email service nixes 5 day extension!
• opposition parties stipulated to service by e-
mail while retaining the five additional days
normally added if service by first-class mail.
• TTAB – Not allowed
• Suggestion: stipulate to service by first-class
mail but with a courtesy e-mail copy sent
simultaneously.
• McDonald's Corporation v. Cambridge Overseas Development Inc.,
Opposition No. 91208437 (March 22, 13) [precedential].

7. Black is Aesthetically Functional
• FTD applies to register “black” for floral pkg.
– Even if not functional in a utilitarian sense, a
design feature is “aesthetically functional” if the
exclusive appropriation of that feature would put
competitors at a significant non-reputation
related disadvantage.
• EA’s evidence: black communicates to the
recipient - elegance or luxury, on somber
occasions such as in the context of death or in
Halloween bouquets
• TTAB: competitive need, rejection aff’d
• In re Florists’ Transworld Delivery, Inc., Serial No.
77590475 (March 28, 2013) [precedential].

8. Professional Conduct Rules Revisions
Patterned on ABA Model Rules
“Closer conformity” with rules of 49 states + DC, “while
addressing circumstances particular to [PTO] practice”
– But: “decisions and opinions [of states] are not binding
precedent relative to USPTO rules”
• Examples
– Express authorization to take interest in “patent or patent
application” as part or all of fee [§ 11.108(i)(3)]
– No CLE reporting requirement
– May “refer not only to law but to other considerations such
as moral, economic, social and political factors” relevant to
client in rendering advice [§ 11.201]
• Effective May 3, 2013 [see 78 Fed. Reg. 20179]

9. Timing is Everything . . .
Blue: Average time predicted by PTO
for FAOM
Red: Average actual time for FAOM
PTO’s focus on reducing backlog
seems to be bearing fruit
If trend continues, may see the time
between filing and FAOM down to
about 12 months
h/t PatentlyO.com

10. Double Patenting with Mobile Inventor
• In re Hubbell (Fed. Cir. 2013)
• One common inventor, two applications
– App. 1 with joint inventors, owned by Employer 1
– App. 2 with different inventor group owned by Employer 2
– App. 2 issued 2002, but is not prior art (102) to App. 1
• PTO rejected App. 1 under obviousness-type double patenting;
no terminal disclaimer possible because of lack of co-ownership
• FC affirmed (over dissent): double patenting applies, Employer 1
cannot receive patent without linking ownership
• Is OTDP a viable doctrine following AIA?
• Employers: review employment agreements, tailor obligations to
assign

11. App. 1: inventors A, B, C, assigned to Caltech
App. 2: inventors A, D, E, assigned to ETH Zürich
App. 1 filed
(invented
before App. 2)
App. 2
filed
App. 2
issued
CON of App. 1
rejected under
OTDP

12. Another Mobile Inventor
Dawson v. Dawson (Fed. Cir. 2013)
• Inventor left UCSF for InSite, then filed applications
– UCSF copies applications years later
– Did conception occur early (at UCSF) or later (at InSite)?
• PTAB: UCSF failed to prove conception at UCSF
– Dawson “did not fully appreciate how [his] idea was to be
implemented in actual practice. . . . [at UCSF] Dawson had a
general idea for a future research plan . . .”
• FC affirmed – substantial evidence supports result (deceased
inventor's lack of testimony was a critical factor)
• Note that prior employer may have no patent rights associated with
ideas that do not amount to “conception”
– May need contract language re ownership of developments
stemming from work begun at the prior employer

13. Design Patent Strategy
• Rather than a single design application for a new
product release, Gillette filed a group each claiming
part of the overall design
– Perhaps the only change needed among applications is
to alter particular lines in the drawing to solid (claimed
feature) or dashed (unclaimed)
– One copying only a part still infringes at least one of the
patents
– Product design may still be covered by patent rights even
after small changes
• Another approach: file design cases on features
related to the actual design
– Create further zone of protection around product

14. D674142
D674141
D674140
D674139