Memorial Day - Honoring Those Who Have Served

On this Memorial Day Weekend, let's all remember the men and women of our armed forces who have died while serving our country in peace and in war.

- Henry Park

Startup Iceland 2016

     In just over a week, I will be flying to Reykjavik Iceland to participate in this year's Startup Iceland event at the Harpa Center on May 30, 2016.

     I look forward to diving into the startup scene and meeting some wonderful entrepreneurs.

- Henry Park

Patent - International Patent Application Registration Services Scams

     One of our clients recently contacted us about two "invoices" that they received allegedly related to its PCT application, which was recently published.

     The invoices were from IP Save s.r.o., based in the Slovak Republic, and IPTO (International Patent & Trademark Organization) s.r.o., based in the Czech Republic.






     Given the legion of businesses that scam intellectual property owners, I figured these would be scams.  First, in our client's case, any fees related to the PCT application would come from WIPO (World Intellectual Property Organization).  Second, the documents looked like invoices and unless you read the fine print, you would miss the disclaimer that "This is not an invoice" and "This is solicitation."  Third, the "invoices" had basic spelling, grammatical and mathematical errors.  In both documents, they spelled "APPROVED" as "APPROOVED".  Additionally, the IPSave "invoice" wasn't even for the correct amount.

     We confirmed the nature of these documents for our client, and in the process saved our client a considerable amount of money.

     A number of legitimate organizations keep lists of such nefarious businesses, such as WIPO at this link and the U.S. Patent & Trademark Office at this link.

     If you receive such documents, read them with care.

- Henry Park

Synchronicity - Copyright isn't quite like that

     Over this weekend, I watched a movie titled Synchronicity.  It was a bit of a mind bender, but one bit of dialog about "copyright" left me scratching my head.

     Here is some background.  The protagonist, Jim Beale, needs radioactive materials to power his experimental wormhole machine.  He also needs to send a specific genetically engineered plant through a wormhole to a point in time five days earlier.  When he approaches Klaus Meisner, the sponsor of his research, about the radioactive materials, Klaus tells him:

"You need tangible proof that your prototype works. Evidence that you've actually created a traversable wormhole, and to do that you need to be able to send the original specimen [of the genetically engineered plant] which is registered as KMC-014 back through to the other side.

Now it just so happens that I own all copyrights -- commercial and private -- for all KMC products.

Which means... this is your lucky day.  I'm willing to sell to you those rights for let's say 50% of your operation."

Assuming we are talking about current US law, this monologue left me scratching their head.

     First, you cannot copyright a plant because a plant is not copyrightable subject matter. 17 USC 102(a).

     Second, even if you could copyright a plant, then the first sale doctrine would limit the rights of the copyright owner where there is a transfer of title. In the movie, Klaus gifted the plant to Abby, who then gave it to Jim. Walt Disney Prods. v. Basmajian, 600 F. Supp. 439, 442 (S.D.N.Y. 1984) (first sale doctrine applied for goods given as a gift).  Thus, Jim could do whatever he wanted with the gifted plant (other than make additional copies).

     Finally, even patent law doesn't quite fit the situation. Patent law prohibits others from making, using or selling a patented invention. Sending a patented plant through a wormhole to an earlier time is not something that patent law would prohibit.

- Henry Park

Trademarks - What is the Use in Commerce Requirement?

     As part of a federal trademark application, the applicant typically will need to identify two dates:  (1) "Date of First Use of Mark Anywhere" and (2) "Date of First Use of the Mark in Commerce".

 

The responses seem like they should be simple.  However, if you are unaware of what these questions are asking actually, then your responses may void your application or invalidate your issued registration. Aycock Engineering, Inc. v. Airflite, Inc., 560 F. 3d 1350, 1361-62 (Fed. Cir. 2009).  These questions are not asking about the first time that the trademark was used publicly.

     The "Commerce" part of the second question means commerce which may be regulated by Congress. 15 USC 1127.  Thus, commerce between the states, between the US and its territories, between the US and a foreign country, or commerce in one state that affects a type of commerce that Congress can regulate.  An example of the last type of commerce would be a restaurant in one state that serves interstate travelers.  TMEP 901.03.

    The Lanham Act, 15 USC 1127 (emphasis added), additionally defines "use in commerce" to mean:

the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For purposes of this chapter, a mark shall be deemed to be in use in commerce—

(1) on goods when—

(A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and

(B) the goods are sold or transported in commerce, and

(2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.

Thus, as applied to goods, the "Date of First Use of the Mark in Commerce" is asking actually for the date that the mark (a) was used in a bona fide manner (b) on the goods or associated paraphernalia and (c) the goods are sold or transported between the states, between the US and its territories, between the US and a foreign country, or commerce in one state that affects a type of commerce that Congress can regulate.

    Because of the importance of the "Date of First Use of the Mark in Commerce", all applicants should keep records of what they are relying on to prove the mark's use.

- Henry Park

updated on 6/8/16.

LOHP - Opening Our New Jersey Office

     The Law Office of Henry Park is proud to announce our second office, and our first in New Jersey. The office is located at 526 Pacific Avenue, Unit 1008, Atlantic City, New Jersey 08401. This office will continue our tradition of focusing on intellectual property and corporate law matters, and our official expansion into Gaming Law practice.

     Henry Park Law is positioned strategically to provide cost-effective high-quality representation in various matters regarding gaming, including but not limited to licensing, iGaming, software patent protection and retail gaming (slot machines or VLTs in bars, taverns, and other designated establishments).  We monitor and communicate with local and state legislatures regarding the crafting and implementing of laws and regulations regarding gaming; and thus, we can provide a thorough understanding of the process, the intent, and the implementation of proposed legislation.

     We look forward to meeting you at the East Coast Gaming Conference on May 25-26 in Atlantic City, NJ.

- Henry Park

Patents - USPTO issues May 2016 update on Subject Matter Eligibility

 


     On May 4th, the United States Patent & Trademark Office (USPTO) updated its guidance documents concerning Subject Matter Eligibility under 35 U.S.C. § 101 (aka. Alice Corp. v. CLS Bank, 573 U.S. ___, 134 S. Ct. 2347 (2014)).

    The USPTO provided:

1.    an index of eligibility examples that briefly explains how each example satisfies the Subject Matter Eligibility inquiry.

2.   new life sciences examples concerning Subject Matter Eligibility.

3.   a revised chart of selected U.S. Supreme Court and Court of Appeals for the Federal Circuit cases concerning subject matter eligibility.

     Hopefully, the guidance documents will cause the USPTO's patent examiners to apply the subject matter eligibility test in a more nuanced fashion.  Because, at it stands now, the Alice Storm has decreased dramatically (some say crippled) the allowance of patent applications (and, not surprisingly, the viability of issued patents).

District Courts
65.9% of decisions found the patent claims invalid on subject matter eligibility grounds

Federal Circuit
97.3% of decisions found the patent claims invalid on subject matter eligibility grounds

Figures are from this presentation at slide 5, and are current through April 25, 2016.

- Henry Park

Trademark - Using your trademark correctly

     Using a trademark correctly is important because building your brand takes resources, and a failure to use your mark correcly can jeopardize your exclusive rights to use the mark. For example, "aspirin" and "escalator" were once trademarks (Wikipedia cite). However, because their respective owners failed to use properly their marks and failed to protect their marks, the marks became generic and available for use by anyone.

     Last week, on April 28th, Apple marketing chief Phil Schiller started a kerfuffle when he wrote on Twitter that Apple devices should not be pluralized. Apparently Apple CEO Tim Cook might need a refresher on how to describe Apple devices.






Mr. Schiller's position is understandable because trademarks are adjectives that modify a generic noun, and he was trying to ensure that Apple's marks are used properly.

     Proper education concerning how to use a trademark is easy and extremely important.  Some rules to follow are:

1.  Trademark are adjectives -- not nouns or verbs.
2.  Do not use a trademark as a plural or in a possessive form.
3.  Use the mark only on or in connection with the identified goods or services in the Registration Certificate.
4.  Use a trademark notice at least once per document in a prominent fashion. Use ™if your mark is not registered, and ® if your mark is registered.
5.  Don't vary the registered mark.
6.  Monitor the usage of your mark.
7.  Trademark rights are territorial. Only use ® in countries you have registered your mark.

- Henry Park

updated March 1, 2017