Happy 15th Anniversary!

Yesterday, our sponsor, Cascadia Intellectual Property, celebrated 15 years of service to the legal community! The firm was founded on July 20, 1999. Here are ten interesting facts about Cascadia Intellectual Property:

  1. The firm was formed 30 years after the first moon landing.
  2. We are international. Six of us originate from outside the United States, including the Republic of Georgia, Poland, Russia, Japan, and China.
  3. Our mascot is a Shetland sheepdog, named Taisho, which means “Boss” in Japanese.
  4. We are multilingual. We speak eight foreign languages, including French, Georgian, Polish, Russian, Tartar, Japanese, Spanish, and Mandarin.
  5. The firm is in the tallest office building in the Lake City neighborhood.
  6. We like to eat. We spoil ourselves with ethic delicacies, like khatchapuri (Georgian cheese bread), borscht (Russian beet soup), Zapiekanki (Polish street sandwiches), and chichi dango (Japanese sweet rice treats).
  7. We take our summer interns geocaching at lunch time when the weather is nice.
  8. We are green thumbs. We have a Chrysanthemum that is three years old and Krista keeps a small grove of avocado trees in her office.
  9. Patrick is still using the same desk that he first started with.
  10. We are musical. We play the piano, saxaphone and guitar.

Use It (Correctly) or Lose It: Best Practices For Proper Trademark Usage

A trademark protects words, names, symbols, sounds, or colors that distinguish goods and services from those manufactured or sold by others and indicates the source of the goods and services. 15 U.S.C. § 1127.

Trademark rights are based upon use of the mark. Accordingly, proper use of a trademark is critical to obtaining registration and for maintenance of the mark, as well as in weighing enforcement of trademark rights against an infringer.

Below we present some general guidelines on proper trademark usage.

1. Provide Notice

For a trademark or service mark registered with the United States Patent and Trademark Office, use the ® symbol in connection with the trademark, which signifies a federally-registered mark. Use of the ® symbol is not permitted with non-federally-registered marks. Failure to provide notice of a registered mark can be considered misuse and could result in abandonment of the trademark, as well as a possible reduction in the amount of damages for infringement.

For non-federally-registered marks, use “TM” in connection with goods and “SM” in connection with services where common law trademark protection is claimed. Although not required, the use of “TM” and “SM” supports correct trademark usage as a source identifier.

The above notations are generally placed above the right end of the mark. If the mark is used repeatedly within a document, providing notice within the title and with the first use in the body is sufficient.

However, when using a mark as a reference to a corporate entity instead of as a brand, use of a notice symbol is unnecessary.

2. Distinguish the Mark

Along with providing notice, for trademarks that include words, consider offsetting the mark by using typography different than the surrounding text. For example, capitalize, underline, boldface, italicize, or use a different size of font for the mark to create a distinction in the mind of the public between the mark and the goods or services that are provided by your business.

3. Always Use the Mark as an Adjective

Be sure to only use the trademark as an adjective, never as a noun or verb, when in combination with the general term for the product or service offered, and never use the mark in place of the general term. For example, “use a Kleenex® facial tissue for a runny nose” is proper, while “use a Kleenex for a runny nose” would be improper.

4. Affix the Mark

A trademark must be “affixed” to a good or used in connection with a service to function as a source identifier. A trademark can be affixed by placing the mark directly on the good, on a tag or label attached to the good, or on packaging containing the good, while a trademark for a service can be affixed by using the mark in connection with advertising or other promotional materials, or placed on letterhead or invoices.

Do not affix a service mark to goods, or a trademark to services.

“Their finest hour”

On this day, in 1940, the Luftwaffe began an aerial bombing campaign against the United Kingdom, in what has become known as the “Battle of Britain.” The British ultimately prevailed, with 544 aircrew killed, 422 aircrew wounded, and 1,547 aircraft destroyed, while the Luftwaffe lost 2,698 aircrew and 1,887 aircraft. Britain’s victory prevented Germany from achieving air superiority and stopped Hitler from launching Operation Sea Lion, an amphibious and airborne assault of Britain. Part of the credit goes to Sir Robert Alexander Watson Watt, who received a patent in Britain in 1935, GB593017, “Improvements in or Relating to Wireless Systems,” for a radar to detect aircraft. His work became the basis of the Chain Home ring of coastal early warning radar stations, which was instrumental in helping detect the approach of Luftwaffe aircraft.Spitfire_and_He_111_during_Battle_of_Britain_1940

The Aftermath of Alice Corp.

On June 25, 2014, the USPTO issued preliminary examination instructions to address the Supreme Court’s recent decision in Alice Corp. Pty. Ltd. V. CLS Bank Int’l et al. (“Alice Corp.”), which held that the patent claims at issue were not subject matter eligible under 35 U.S.C. § 101. When the notice first came out, we wondered how the instructions might affect the actual examination of patent applications.

This situation reminded me of the time when the Bilski v. Kappos decision was handed down in 2010. There, as here, the USPTO issued interim guidance for determining subject matter eligibility for process claims. Many of us were concerned about how the machine-or-transformation test would affect claim allowance and what amendments would be needed to place the claims in a condition for allowance. After months of working with examiners, we found that standard language regarding inclusion of a “suitably-programmed computer” or “a processor to execute method steps” could place process claims in compliance with the USPTO’s interpretation of Bilski.

Less than two weeks after having been decided, the Alice Corp. decision is already influencing the examination of software claims by throwing a metaphorical wrench into the familiar interpretation of statutory subject matter under the Bilski guidance. Now, under the new Alice Corp. instructions, statutory subject matter interpretation seems to suggest that: 1) a general computer is not enough to make a software claim statutory and the standard language used to comply with the requirements of Bilski under the former guidance will likely not make the software claim statutory; and 2) the steps of a method claim should be steps that cannot be performed by a human or alternatively, are known to be performed only by a computer and not a person, such as encryption.

My concern that the United States is moving closer to a view of software patents similar to that held by the European Patent Office appears to be validated. Currently, examiners and practitioners are struggling to interpret the Alice Corp. instructions; the examining corps has not yet been trained under the new instructions. Perhaps, once training has been provided and examiners have had an opportunity to work through a few cases, the actual implementation of the guidelines will be less stringently interpreted than appears to be the case today.

Happy Fourth of July

NSRW_Thomas_JeffersonHere in the States, the Fourth of July is celebrated as Independence Day, to commemorate the signing and adoption of the Declaration of Independence on July 4, 1776. Thomas Jefferson wrote the first draft of the Declaration, which was then edited and finalized by the Second Continental Congress. Jefferson later went on to help draft our first Patent Act in 1790 and to accomplish a great many other things.