The Ober|Kaler patent litigation team recently won a significant victory for its clients in Maryland federal District Court. We were able to keep a patent infringement suit in the local federal court despite our opponent’s multiple attempts to have the case transferred to its home state of Florida. The latest gambit by our opponent was based on its claim that our clients did not own the patent at the time the lawsuit was filed. While the court’s ruling marks a significant victory for Ober|Kaler and its clients, the decision also provides a valuable lesson for employers in an area of the law that Justice Breyer of the United States Supreme Court called “a technical drafting trap for the unwary.” (more…)
…neck to police. Just ask Chipotle Mexican Grill which is receiving some mild ridicule from numerous trademark blogs for its recent suit against Kroger supermarkets. Chipotle Mexican Grill accuses Kroger of trying to profit from and trade off of the goodwill that the restaurant chain has developed in its brand by selling ready-to-eat chicken entrees in its supermarkets with a label that reads “Chipotle Spicy Fried Chicken.” As any burrito fan and virtually everyone else knows, a chipotle is a smoke-dried jalapeño pepper commonly used to flavor Mexican and Tex-Mex food and, consequently, the word is commonly used to describe dishes so flavored. Therein lies the problem with policing descriptive marks. Even if a mark is registered and well known, a trademark owner cannot stop others from using ordinary words to describe their own products. This “descriptive fair use” defense is codified in our trademark laws (at 15 U.S.C. § 1115(b)(4)) and applies, according to the U.S. Supreme Court, without regard to whether or not some consumers may be confused. KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004). As a result, the Arby’s restaurant chain can sell a chipotle chicken sandwich and the McCormick spice company can sell a chipotle chicken marinade without infringing any trademark rights. Anyone who has been to the supermarket recently knows that there are scores of chipotle flavored products available.
So Chipotle Mexican Grill was foolish for picking on Kroger, right? (more…)
The US Patent and Trademark Office wants to know. In conjunction with the National Institutes of Standards and Technology, the USPTO is offering an online “Intellectual Property Awareness Assessment”, e.g., a pop-quiz designed to test your IP acumen. http://www.uspto.gov/inventors/assessment/.
The quiz is 62 questions long, takes 20-30 minutes, and covers several basic IP categories:
• Design Patents
• Trade Secrets
• Utility Patents
• Using Technology of Others
• Licensing Technology to Others
• International IP Rights
The survey-like questions are pretty basic, such as “Do you provide training to your employees to help them identify inventions they or their colleagues make?” Results are provided, and remedial training materials are available in case you slept through your first-year law classes. Over-achievers shouldn’t expect advanced questions on plant patents, semiconductor chip protection, vessel hull design protection, etc., and under-achievers can probably get by on pure instinct. Nevertheless, I applaud the nice outreach effort by the USPTO/NIST, and the metrics should provide needed feedback as to whether they are passing/failing their own mission statement which includes “delivering intellectual property information and education worldwide.”
Baltimore’s Patterson Theater was packed Saturday evening for the Creative Alliance’s Grand Marquee Ball. Costumed patrons jostled for position as the CA honored E.Scott Johnson and Terri Rubenstein for their unflagging support for the arts in Maryland.
Dressed as a mad hatter, Mark Steiner of WEAA bulleted Scott’s most recent arts accomplishments– reviving Maryland’s film incentive program which immediately netted three top shelf TV productions for Maryland including VEEP, House of Cards and Game Change, bringing back Maryland Volunteer Lawyers for the Arts, and leading the Maryland State Arts Council. Among Johnson’s many accomplishments mentioned by Steiner are his background as a session musician, losing gear to a sunken recording studio barge, and voting every year as a member of The Recording Academy.
In the post-Bilski/KSR/Prometheus regime patents are unquestionably a costlier and riskier investment. Statistics confirm this. Fifty percent of patent applications are abandoned these days, as opposed to only thirty-five percent in 2004. Paying more to prolong prosecution (via request for continued examination) restores the odds of success, but at a price. [USPTO statistics at www.uspto.gov/dashboards/patents] Even after the patent is awarded, of those subsequently litigated roughly 40% are declared invalid in court, many falling prey to the judicial shifts in patent law. Place all that against a backdrop of a relatively slow recovery from a relatively deep recession, and lingering cutbacks in research and development investment. A sage investor might have predicted a drop-off in patent filings, but just the opposite has happened. U.S. patent filings have increased steadily in recent years, and international patent filings have increased dramatically. Why? The Constitutional purpose of our patent system is to create incentives for innovation, and patent budgets have historically tracked R&D budgets. However, there are recent dynamics that disassociate the two. Patent trolling (by companies seeking only to profit from lawsuits) is on the rise. Reports estimate that there were five times as many patent trolling lawsuits in 2010 than in 2004. [Patent Freedom 2011] Defensive patent aggregation (to mitigate the risk of litigation from patent trolls) is on the rise. The number of U.S. patents granted to foreign companies and individuals is on the rise, exceeding the 50% mark in 2009 and continuing to date. [IFI Patent Intelligence]. Is the U.S. patent system broken? No, but she moves in mysterious ways and the statistics surely bear closer watching. The USPTO is beginning to take an active role in this, having established the Office of the Chief Economist in March 2010, and appointed Dr. Stuart Graham as its first Chief Economist. A few days ago the USPTO jointly released an ambitious report that directly or indirectly attributes forty million U.S. jobs to intellectual property: Intellectual Property and the U.S. Economy: Industries in Focus. http://www.uspto.gov/news/publications/IP_Report_March_2012.pdf The report will convince you that the U.S. economy hinges on intellectual property. The only thing lacking is what to make of it? I’m already looking forward to the sequel.