High School IP Presentation

Last month, Leonid and I discussed intellectual property with two business law classes at Federal Way High School. The business law classes are part of the career and technical education classes now being offered in Washington State schools to help students “graduate from high school globally competitive for work and postsecondary education and prepared for life in the 21st century.” Office of Superintendent of Public Instruction, www.k12.wa.us.

Our discussion included a presentation focusing on patents, trademarks, copyrights, and trade secrets. We also went over examples of each type of intellectual property and facilitated activities in which the students participated. I was amazed at the well-thought-out questions by the students and the (mostly) correct answers, even to our trick questions! I would definitely love to return! Also, we received some pretty awesome thank you letters from the students.

IP THANK YOU

Go Beast Mode!

Beast Mode

When I hear the name Marshawn Lynch or his nickname “Beast Mode,” I think of an awesome football player that makes huge running plays and of course, Skittles. However, he is much more than football. Lynch co-founded the charity, Fam 1st Family Foundation, which helps improve the lives of children through mentoring, education, literacy, and self-esteem.

Lynch donates valuable time and resources to the foundation, including all money generated from four registered trademarks for “Beast Mode.” The four registrations cover t-shirts, sweatshirts, hats, caps, watches, and sunglasses. Additionally, three more applications for the mark “Beast Mode” are pending for headphones, bracelets, sport bags, candy, and non-alcoholic beverages.

To ensure the “Beast Mode” trademarks remain valuable, they are actively monitored and so far, licensing has been limited. In an article by ESPN, Darren Rovell explains that Lynch turns away about five proposals for licensing a month and every design must be approved by Lynch. Lynch’s strict guidelines regarding use of the mark “Beast Mode” have assisted in protecting the mark and commanding a high royalty fee, which Lynch donates to his foundation to benefit youth. Thus, Marshawn Lynch is not only successful on the field, but off as well!

Left Shark, the Star of the Superbowl!

As a Seattlelite, I am trying to move on from the dreaded Super Bowl XLIX, featuring my favorite team, the Seahawks. However, some headlines from the game linger. No, not the last play. No, not another win by the Patriots.

Two months after the Superbowl, we are still hearing about “Left Shark,” one of the back-up dancers during Katy Perry’s halftime performance. Left shark danced alongside Katy Perry with Right Shark, but appeared to stray from the choreography and at times seemed uncomfortable and awkward on stage. Due to his interesting performance, the hashtag #leftshark immediately began trending and SB Nation even jokingly declared Left Shark, the MVP of the Superbowl. On February 6, 2015, Katy Perry, company Killer Queen applied for the word mark “Left Shark” for use on cell phone covers, stickers, mugs, shirts, and toys, as well as for live performances. Trademark applications were also filed for the phrases “Right Shark,” “Drunk Shark,” and “Basking Shark,” and front and side views of a shark.

Shark

Since the fast rise of Left Shark, Katy Perry appears to have been busy enforcing her intellectual property rights and working to market Left Shark merchandise. Through her lawyer, at least one cease and desist letter was sent, to Fernando Sosa, who offered for sale, a 3-D printed sculpture of a shark, shortly after the Superbowl. Also, earlier this month, Katy Perry announced that all Left Shark fans can purchase a #LeftShark onsie for $129.99. Left Shark, I hope to see more of you in the future! You’ll always be my favorite memory from Superbowl XLIX (since the Seahawks didn’t win!).

Making Amendments to a PCT Patent Application

We sometimes receive requests to make changes to an already-filed PCT patent application. Various opportunities exist during prosecution for amending a PCT patent application depending on a nature and type of change requested. Obvious mistakes in the description, claims, or drawings of a PCT application can be rectified if correction of the mistake is requested within 26 months from the priority date of the PCT application. Mistakes are considered to be obvious if “something else was intended than what appears in the document concerned and that nothing else could have been intended than the proposed rectification.” PCT Rule 91.1(c).

However, an Applicant who wishes to make amendments to the claims of a PCT application that do not correct an obvious mistake can file the amendments under Article 19 prior to the expiration of 16 months from the priority date of the PCT application or two months from the mailing date of an International Search Report and Written Opinion, whichever is later. Additionally, amendments to the claims, as well as the description or drawings, of a PCT application can also be made after the Article 19 deadline passes, as long as a Demand for International Preliminary Examination is timely filed. Specifically, the Demand must be filed prior to expiration of 22 months from the priority date of the PCT application or within three months from the mailing date of the International Search Report and Written Opinion. Any desired amendments can then be filed at the time of filing the Demand or in reply to any notification mailed during International Preliminary Examination.

Finally, amendments can also be entered via a preliminary amendment upon entering the national stage in one or more countries, when the time has passed for filing amendments during the above-identified periods. However, unlike the amendments discussed above, a preliminary amendment must be filed in each country in which the national stage has been entered.

In summary, any amendments to the description or drawings of a PCT application must accompany a Demand unless the amendments correct an obvious mistake. However, claim amendments can be filed without the filing of a Demand, as long as the claim amendments are filed prior to the expiration of 16 months from the priority date of the PCT application or two months from the mailing date of an International Search Report and Written Opinion, whichever is later. Also, amendments to the description, claims, or drawings can be filed with a national stage entry application, but the amendments must be made in each country in which the national stage has been entered.

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.

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.