2010

Chippendales Cuffs & Collar lack Inherent Distinctiveness as Product Packaging Trade Dress

Blogroll, Patent, Trademark

In re Chippendales USA, Inc. (Fed. Cir. 2010)

PatentlyO080The first Chippendales club opened in Los Angeles in 1978. The following year, on-stage performers began wearing their now well-known Cuffs & Collar costumes. In 2003, the USPTO agreed that the trade-dress had acquired distinctiveness and issued Trademark Registration No. 2,694,613. (Chippendales had argued that the mark was also inherently distinctive, but the examiner had rejected that argument.) In 2008, the original mark became “incontestable.”

PatentlyO083This case arose in 2005 when Chippendales requested a new registratation for the same mark based upon its inherent distinctiveness. (The company wanted to strengthen its mark.) The Tradmark Trial and Appeal Board ruled against Chippendales — finding that the mark was not inherently distinctive.  In particular, the Board noted that strippers often wear revealing would-be professional costumes such as a stethoscope, utility belt, or chaps with a ten-gallon hat.  In this case, the Chippendales Cuffs & Collar costume appears directly derived from a Playboy Bunny costume.  Based on these facts, the Board held that the Chippendales outfit failed the test for inherently distinctive trade dress outlined in Seabrook (CCPA 1977). 

On appeal, the Federal Circuit first looked to determine whether the costume is part of the product design or only product packaging.  That distinction is legally important because of the Supreme Court ruling in Wal-Mart v. Samara Bros (2000) that product design is never inherently distinctive.  Here, the court held that the costume is product packaging — with the product being “adult entertainment services.” 

The Appellate Court then walked through each of the three relevant Seabrook elements: 

  1. Whether the mark is a common shape or design;
  2. Whether the mark is unique or unusual in the particular field;
  3. Whether the mark is a mere refinement of a commonly adopted and well-known form of ornamentation for a particular class of goods or services viewed by the public as a dress or ornamentation for the goods or services; or
  4. Whether the mark is capable of creating a commercial impression distinct from any accompanying words. (This fourth element was held irrelevant in this case.)

Here, the Appellate Court rejected the Board’s implicit holding that no costume on an adult entertainer could be inherently distinctive.  However, the Appellate Court agreed with the Board that the Cuffs & Collar costume was a “mere refinement” of the well-known Playboy Bunny costume.  As a result, the Cuffs & Collar costume failed the third Seabrook element and therefore lacks inherent distinctiveness.

The use of the Playboy mark constitutes substantial evidence supporting the Board’s determination that Chippendales’ Cuffs & Collar mark is not inherently distinctive. The Playboy bunny suit, including cuffs and a collar, was widely used for almost twenty years before Chippendales’ first use of its Cuffs & Collar trade dress. The Cuffs & Collar mark is very similar to the Playboy bunny costume, although the Cuffs & Collar mark in-cludes no bunny ears and includes a bare-chested man instead of a woman in a corset. While the Playboy clubs themselves did not involve exotic dancing, the mark was registered for “operating establishments which feature food, drink and entertainment.” The Cuffs & Collar mark was also worn by waiters and bartenders at Chippendales establishments, which Chippendales argues reinforced the association of the mark with the Chippendales brand. Additionally, the pervasive association between the Playboy brand and adult entertainment at the time of the Board’s decision leads us to conclude that the Board did not err in considering the mark to be within the relevant field of use. Thus, the Playboy registrations constitute substantial evidence supporting the Board’s factual determination that Chippendales’ Cuffs & Collar mark is not inherently distinctive under the Seabrook test.

In its brief, Chippendales argues that Wal-Mart v. Samara is at odds with Seabrook and that the Seabrook should therefore be revisited. The Federal Circuit rejected that suggestion.

Federal Circuit Advisory Council

Current Affairs, Patent

Chief Judge Randall Rader has announced some changes to the Advisory Council for the Court of Appeals for the Federal Circuit. Ed Reines is taking-over as Chair. [Link] New members of the Council include Tina Chappell (Intel), Chip Lutton (Apple), Dean Whealan (GWU), and Professor Katherine White (Wayne State). Chappell, Lutton, Whealan, and White all clerked for Judge Rader.

Other members of the Council include:

  • Meredith Martin Addy (Brinks Hofer);
  • Jeanne Davidson (DOJ);
  • Professor Lisa Dolak (Syracuse);
  • Robert Huffman (Akin Gump);
  • Michael Jakes (Finnegan);
  • Joe Re (Knobbe);
  • Michael Schaengold (Patton Boggs);
  • Ronald Smith (Finnegan); and
  • Richard Stanley (Howrey).

One role of the Advisor Council is to ensure that the Court is aware of concerns from the bar and litigants. Direct contact information for the council members is available online. [Link]

Council members generally serve three-year terms.

Update: To be clear, I don't see any problem with Judge Rader appointing his former clerks. These are people that the Judge trusts because he has worked closely with them. Trust is important — especially when dealing with potentially sensitive inner-workings of the court system. At the same time, I know from experience that each of these new Council Members are incredibly strong, intelligent, and independent thinkers.

Judge Jimmie V. Reyna

CAFC, Patent

Reyna_Jimmie_01President Obama has announced the nomination of Jimmie V. Reyna to fill the open slot on the Court of Appeals for the Federal Circuit that was created when Judge Mayer moved to Senior Status in June 2010. The Spring 2010 nominations of Kathleen O'Malley and Ed DuMont are still pending Senate confirmation. Federal Circuit Judges Newman, Lourie, Gajarsa, Dyk, and Bryson are all eligible to take senior status.

Reyna has an all-star reputation as head of the International Trade practice of the Williams Mullen firm.  His professional focus fits well within the Federal Circuit's jurisprudence over  international trade decisions by the Court of International Trade (CIT) and the International Trade Commission (ITC). Reyna has also been an active member of Hispanic legal community and the majority of his work appears to involve US-Mexico trade. His third book on international trade will be published later this year.

Challenging the Clear and Convincing Standard of Proof for Invalidating Patents in Court

Invalidity, Patent

Microsoft Corp. v. i4i Limited Partnership (on petition for certiorari 2010)

By Dennis Crouch

In 2009, an Eastern District of Texas jury awarded $200 million to i4i after finding that Microsoft willfully infringed the Canadian company’s patent. Judge Davis subsequently added-on $40 million of punitive damages for willful infringement.  The judge also issued an injunction ordering Microsoft to stop selling Word products with the capability of using “custom XML.” That injunction was stayed by the Federal Circuit pending appeal.  On appeal, the Federal Circuit affirmed the lower court’s findings of validity, willful infringement, enhanced damages, and permanent injunctive relief. Despite the injunction, Microsoft continues to sell its software based on a “patch” that apparently prevents the use of custom XML in Word.

Meanwhile, the USPTO conducted a reexamination of the i4i patent and confirmed that the claims at issue were properly patentable.   However, the reexamination did not consider what Microsoft's (now) argues is its key invalidity argument.  That invalidity argument is based on a prior offer-for-sale, and offers-for-sale are excluded from consideration during reexaminations.  The prior offer-for-sale was likewise not considered during the original prosecution of the i4i patent.

This summer, Microsoft petitioned the Supreme Court to take a fresh look at the case —  specifically asking the Court to reject the Federal Circuit's requirement that invalidity be proven with “clear and convincing evidence” when the invalidity argument is one that was not specifically considered by the Patent Office when granting the patent.  Microsoft raised the following  question:

The Patent Act provides that “[a] patent shall be presumed valid” and that “[t]he burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity.” 35 U.S.C. § 282.The Federal Circuit held below that Microsoft was required to prove its defense of invalidity under 35 U.S.C. § 102(b) by “clear and convincing evidence,” even though the prior art on which the invalidity defense rests was not considered by the Patent and Trademark Office prior to the issuance of the asserted patent. The question presented is:

Whether the court of appeals erred in holding that Microsoft’s invalidity defense must be proved by clear and convincing evidence.

This petition is one similar to that raised by Microsoft in z4. That petition was withdrawn when the parties settled. 

Eleven parties have filed amicus briefs supporting the petition for certiorari.  Microsoft's counsel makes the point that the companies signing in their own name “employ more than three million people and the publicly-traded companies have a combined market capitalization of more than $1.2 trillion.”  Briefs opposing the petition as well as i4i's opposition appear to be due on October 29, 2010.

Chief Judge Roberts has recused himself from the case.

A review of the briefs follow.  Many of the briefs cover similar material and I have attempted to point out some of the differences. Of course, all of these briefs listed argue that the current evidentiary standard is too-high.

* * * * *

Briefs in support of the Petition:

36 Professors led by Mark Lemley:  The professors suggest that the clear and convincing standard does not make sense based on the known bureaucratic difficulties of the USPTO and the result that many issued patents would not survive a serious Section 103(a) analysis. The professors also write that the Supreme Court offered a signal in KSR that the Federal Circuit should reconsider its standard, but that the Federal Circuit has refused to do so.

Brief by Acushnet, SAP, and Others: James Dabney and John Duffy collaborated to examine the history of invalidity defenses. The brief does an especially good job of spelling out different aspects of an invalidity argument that may need a higher standard of proof.  Thus, Acushnet seemingly argues that uncorroborated oral testimony should still be excluded even if the general standard of proof was lowered.  This is one of the more nuanced briefs.

Teva, Cisco, and the Generic Pharma Association: The current standard creates an incentive for patent applicants to conceal material information from the USPTO. An issued patent is valuable — even if it would eventually be found invalid. The cost of invalidating a patent is so high that a patentee can usually obtain significant settlements even for a patent that should have never issued.

Google, Verizon, Dell, HP, Wal-Mart: A preponderance-of-the-evidence is the default burden of proof in civil cases.  The Federal Circuit has no legal justification for its clear-and-convincing standard that unduly burdens accused infringers.  The USPTO normal examination of patents is insufficient to warrant a high level of deference.

Yahoo!: “In requiring clear and convincing proof of facts bearing on patent invalidity, the Federal Circuit’s rule conflicts with this Court’s teaching that a heightened evidentiary standard should not apply where a statute does not prescribe the heightened standard.”

Intel: We have “a thicket of invalid patents that stifles competition and impedes further innovation.”

Securities Industry and Financial Markets Association:  “The Federal Circuit’s stance is contrary to the guidance of this Court as well as to the standards applied by the regional circuits before 1982.”  The flood of bad patents is especially troublesome in the area of business methods and financial software. New transparency laws make it more likely that these patents will be enforced.

Facebook, Netflix, et al.: An important goal of the patent system is to encourage innovation without disrupting other-innovation through mistaken government “grants of monopolies.” To harmonize with the reexamination statute, court's should at least lower the threshold for proving invalidity once a substantial new question of patentability is established.  (I wonder if Facebook's loose use of the “monopoly” term here will come back to haunt them.).

EFF et al.: Giving value to illegitimate patents creates perverse incentives.  These problems are particularly concerning in the software and internet realms for several reasons, including that they impede alternative innovation models such as FOSS.  In addition, the clear and convincing standard is a non-statutory extension of the law.

Apple: Apple argues that the current system makes it too difficult and costly to obtain a judicial decision that a patent is invalid. “”The clear and convincing standard shields a growing number of poor quality patents from the truthseeking function of our adversarial system.”

CTIA –  The Wireless Association: The clear and convincing standard makes a difference in litigation — making it much more likely that a patent will survive validity attacks.  This reality has created practical problems in dealing with holders of low-quality patents who seek large damage awards.

Documents:

Links


 

Patently-O Bits and Bytes

Bits and Bytes, Patent
  • USPTO Technical Training for Examiners: The USPTO is looking for folks to provide free scientific & technical training to examiners. The program does not allow guest lecturers to discuss their own pending applications or provide advice on the patentability of any particular claims. [Participate Here]
  • Top-25: IP Reporter Joe Mullin and his crew have created a list of "The 25 Most Influential People in IP." The list includes Professors Lemley & Duffy; PTO Director Kappos; Judges Rader, Michel, & Ward; Justice Kennedy, Senator Leahy; Bob Armitage (Lilly); John Amster (RPX, son of Mort Amster); and Chip Lutton (Apple).
  • London Conference: International Patent Litigation 2010 — IBC Legal is holding a conference on International Patent Litigation 2010 in London on December 6th-7th. Use code KW8093PO to get a 10% discount. http://www.informaglobalevents.com/patlitpo.
  • Reexaminations: In 1998, an anonymous requester filed a request for ex parte reexamination of U.S. Patent No. 5,583,216 owned by Takeda Pharmaceuticals. Earlier this week (and after 12-years in-process) the USPTO issued a reexamination certificate confirming that the original claims are patentable. Hal Wegner handled the reexamination for Takeda, including multiple appeals to Federal Court. The average reexamination certificate in FY10 was issued about 2.5 years after the reexamination request was filed.

Patently-O Bits and Bytes

Bits and Bytes, Patent
  • USPTO Technical Training for Examiners: The USPTO is looking for folks to provide free scientific & technical training to examiners. The program does not allow guest lecturers to discuss their own pending applications or provide advice on the patentability of any particular claims. [Participate Here]
  • Top-25: IP Reporter Joe Mullin and his crew have created a list of "The 25 Most Influential People in IP." The list includes Professors Lemley & Duffy; PTO Director Kappos; Judges Rader, Michel, & Ward; Justice Kennedy, Senator Leahy; Bob Armitage (Lilly); John Amster (RPX, son of Mort Amster); and Chip Lutton (Apple).
  • London Conference: International Patent Litigation 2010 — IBC Legal is holding a conference on International Patent Litigation 2010 in London on December 6th-7th. Use code KW8093PO to get a 10% discount. http://www.informaglobalevents.com/patlitpo.
  • Reexaminations: In 1998, an anonymous requester filed a request for ex parte reexamination of U.S. Patent No. 5,583,216 owned by Takeda Pharmaceuticals. Earlier this week (and after 12-years in-process) the USPTO issued a reexamination certificate confirming that the original claims are patentable. Hal Wegner handled the reexamination for Takeda, including multiple appeals to Federal Court. The average reexamination certificate in FY10 was issued about 2.5 years after the reexamination request was filed.

Patent Term Adjustments – Accounting for Rejections Withdrawn after Appeal-Brief Filings

BPAI, Patent

The next Patent-Term-Adjustment (PTA) challenge appears to be simmering.

The ordinary term of a patent is twenty-years from the original patent application filing date. The first several years of that term are generally worthless because they are spent prosecuting the application. The Patent Act provides for a patent term adjustment in cases where the patent prosecution process is unduly slow. With the current USPTO backlog, about 80% of issued patent receive some term adjustment. The average PTA for recently issued patents is just shy of two years. Thus, any discussion of the US twenty-year patent term must consider the real impact of PTA. In Wyeth v. Kappos, 591 F.3d 1364 (Fed. Cir. 2010), the Federal Circuit held that the USPTO had been substantially under-calculating the PTO due to patentees. That change boosted the average calculated PTA by about six-months.

Now, a new PTA challenge appears to be brewing in relation the dramatic increase in the number of appeals to the Board of Patent Appeals & Interferences (BPAI). There is typically a fairly long delay between (1) the point that a patent applicant files a notice of appeal and (2) the point that the appeal is docketed at the BPAI. That delay is due to a lengthy briefing and review period. The patent examiner maintains control over the case during that entire briefing period. It turns out that the majority of appeals never actually reach the BPAI. Rather, the most common occurrence is that at some point during the briefing-period the patent examiner withdraws the appealed rejection and subsequently either issues (1) a notice of allowance or else (2) a new rejection.

The brewing patent term adjustment issue involves how to account for the prosecution delay when a patent applicant appeals a rejection that is later withdrawn prior to a BPAI decision . The delay from notice-to-appeal to withdrawal-of-rejection is often around eight months.

PTA calculations are somewhat complex. 35 U.S.C. 154(b)(1) divides the "patent term guarantee" into three parts: (A) adjustments for delayed USPTO office responses; (B) adjustments for application pendency of more than three years; and (C) adjustments for delays due to appeals, interferences, and secrecy orders. Each Part considers aspects of appeals to the BPAI: Part (A) accounts for any USPTO delay that is more than four-months in responding to "an appeal taken under section 134" or to a decision by the BPAI where allowable claims remain; Part (B) states that the three-year pendency guarantee does not include "any time consumed by appellate review by the Board of Patent Appeals and Interferences or by a Federal court;" while Part (C) accounts for time in appellate review, but only if "the patent was issued under a decision in the review reversing an adverse determination of patentability."

In recent papers, the USPTO petitions office has rejected any PTA for the situation discussed above – where the applicant files a notice of appeal and appeal brief but then the examiner withdraws the rejection, so long as the withdrawal occurs within four-months of the appeal brief filing date. Running through the three-parts, the PTO argues that: Part (A) does not apply because the response to the appeal occurred within four months of the appeal brief. (37 U.S.C. §1.703 specifically interprets "appeal taken" to mean filing of the appeal brief rather than notice of appeal.) Part (B) does not apply because the USPTO interprets every day subsequent to the notice of appeal as being "consumed by appellate review." Finally, Part (C) does not apply because the board did not reach a decision.

Wrong Interpretation: The PTO's interpretation of the statute is not clearly right and is probably wrong because of the inconsistency in how the Office interprets the timing of BPAI review and because the current interpretation frustrates the "guarantees" provided in the statute. In particular, for Part (A) the USPTO states that an appeal is "taken" (and PTA counting-started) only after the applicant files the appeal brief while for Part (B) the USPTO states that time is being consumed by appellate review (and PTA counting-delayed) as soon as a notice of appeal is filed. The better interpretation is that "appellate review by the Board" for Part (B) does not begin until after the examiner answer. Certainly, until that point, the case-file remains under the examiner's control and not under review by the Board.

Trademark Rights for Sound Recordings

Patent, Trademark

Carl Oppedahl lost his case to register the mark “patents.com.”  However, that setback did not dissuade him from continuing to push against trademark law limitations. 

Recently, the USPTO issued a trademark registration certificate for his “sensory mark.” The mark consists of a sixteen-second musical introduction that Oppedahl uses for his recorded lectures on patent law practice. 

During the trademark prosecution, the USPTO examining attorney initially suggested that "due to the length of the proposed mark, consumers may consider the sound to be a mere entertaining prelude to the sound recording, more suitable as a copyrightable work than as a trademarkable source indicator."  Oppedahl responded by pointing-out that the PTO had registered the THX sound recording [THX.MP3] which is apparently 25–seconds in length as registered.  I recently (and unsuccessfully) attempted to use a similar argument when pulled-over for speeding.  Apparently, I have no right to speed just because others speed without getting caught. 

The USPTO has registered a number of sound marks, including the NBC chimes in 1972.  Harley Davidson eventually withdrew its application to register a mark on the sound made by the roar of its V-Twin engine.