The analysis for design patent infringement differs from utility patent infringement, because, notwithstanding the Federal Circuit’s “Ordinary Observer” test that controls the analysis (see Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 676 (Fed. Cir. 2008) (en banc)), it can often simply seem like an exercise of “you know it when you see it.”
For a case in which all nine Justices agreed to vacate a jury award based on trademark infringement, the Supreme Court’s decision in Abitron Austria GmbH v. Hetronic Int’l, Inc., No. 21-1043, 2023 WL 4239255 (June 29, 2023), spawned a sharp disagreement between two camps of Justices. The decision also leaves unanswered some key questions with which lower courts will have to grapple.
The Supreme Court returned this past term to a subject that it analyzes every few years: personal jurisdiction. The wrinkle the Court wrestled with in Mallory v. Norfolk S. Ry. Co., No. 21-1168, 2023 WL 4187749 (June 27, 2023), was the constitutionality of a Pennsylvania corporate registration statute. The law in question required a non-resident corporation that registers to do business in Pennsylvania to submit to “general personal jurisdiction” in the state for any suit brought against it, regardless of the parties’ and the case’s connection to Pennsylvania. A sharply divided Court held that the statute did not offend due process.
Trademarks, the Supreme Court held in its Two Pesos decision, “are often classified in categories of generally increasing distinctiveness: they may be (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful.” Suggestive, arbitrary, and fanciful marks all qualify for trademark protection. Generic marks do not qualify for protection, while those that are descriptive can only qualify if they have acquired distinctiveness. Accordingly, a trademark lawyer is frequently called on to argue that a trademark falls on the suggestive, and not descriptive, side of things, thus warranting registration on the United States Principal Register for trademarks.
By now, most of us are familiar with the Wordle fairy tale. As recounted in The New York Times and throughout the media, Josh Wardle created the game for his partner and released it in October 2021. On November 1, 2021, ninety people were playing Wordle. Almost two months later, that number was up to 300,000. And, by the end of January 2022, millions were playing. The New York Times Company then swooped in, purchasing Wordle for “an undisclosed price in the low seven figures.”
Many patent specifications describe the prior art before setting forth the claimed invention. This “applicant admitted prior art” can be used for prior art purposes in litigation. See, e.g., PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342, 1362 (Fed. Cir. 2007) (“Admissions in the specification regarding the prior art are binding on the patentee for purposes of a later inquiry into obviousness.”).
Over the years, spirited disputes have occasionally arisen involving a family name and an alcoholic beverage. There have been cases concerning wine makers (Jordan Vineyard & Winery v. Ehren Jordan Wine Cellars, Case No. 3:01-cv-03647-WHA (N.D. Cal.); Taylor Wine Co. v. Bully Hill Vineyards, Inc., 569 F.2d 731 (2d Cir. 1978)) and bourbon distillers (National Distillers Products Corp. v. K. Taylor Distilling Co., 31 F. Supp. 611, 614 (E.D. Ky. 1940)), among others. The latest such case is being litigated in Kentucky, the heart of bourbon country, and concerns the use of a well-known name in the bourbon industry.
The Federal Circuit recently held in Novartis Pharmaceuticals Corp. v. HEC Pharm Co., Ltd et.al., (Jan. 3, 2022), over a vigorous dissent, that the written description requirement may be met by the trial testimony of expert witnesses even though the specification is silent on the claim limitation at issue. This decision is important for patent prosecutors and litigators.
Even when they do not break significant new ground, decisions on claim construction can offer practical reminders about how the words that inventors and patent drafters choose to use in the specification – even in the title of invention – can impact the way in which a court will later construe claim language. The Federal Circuit’s decision earlier this year in Wastow Enterprises, LLC v. Truckmovers.com, Inc., 855 F. App’x 748 (Fed. Cir. May 14, 2021), is a good example of this.
They say that diamonds are forever. Trademarks can be too—but only if you keep using your goods or services in commerce. For example, Samson Rope Technology’s trademark logo (seen at https://samsonrope.com/ ) was registered with the United States Patent and Trademark Office on May 27, 1884, and the registration has been timely renewed since then. Samson Rope can keep this trademark until the end of time so long as it keeps using its logo in commerce in connection with the goods covered by its registration (and pays the appropriate fees to the Trademark Office).