Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.
1. In an important design patent case out of the Federal Circuit, the Court re-affirmed the under-appreciated value of design patents in the context of certain exterior automotive parts – a hood design and a headlight design. The opinion is here. The accused infringer attempted to invalidate the design patents as functional, or under the exhaustion doctrine. The Federal Circuit said that because other ornamental designs were possible, the patented design was not functional. The Court declined to extend the trade dress infringement defense of aesthetic functionality to the design patent context. The Court also found that there was no exhaustion of patent rights after the original product was sold because the replacement/accused parts were not the subject of an authorized sale. In other words, the Court rejected the notion of creating an infringing replacement part, but being shielded from liability under the exhaustion doctrine. This case is a good one for design patent owners.
2. A copyright small claims bill is moving ahead in Congress. The House Bill H.R. 2426 sponsored by Representative Jeffries (D-NY) is here; the Senate Bill S. 1273 sponsored by Senator Kennedy (R-LA) is here. The bills are the same. They introduce a procedural means to adjudicate copyright cases worth less than $30,000. The Senate version of the bill was approved by the Senate Judiciary Committee by a voice vote. It seems there is rare bipartisan support for these bills, and a desire to have a dispute resolution mechanism for infringements that will not have high enough damages to justify federal court litigation (which is where all copyright disputes are to be litigated).
3. The Trademark Trial and Appeal Board (TTAB), which is an appellate tribunal within the United States Patent and Trademark Office, handles certain trademark disputes and appeals of issues with trademark applications. In In re Canopy Growth Corporation, the TTAB affirmed a trademark Examining Attorney’s refusal to register a mark for vape devices for cannabis delivery on the grounds that “marihuana” remains federal illegal under the Controlled Substances Act, as do devices for using marijuana. The opinion is here. Thus, a trademark applicant cannot show a lawful use or a bona fide intent to make a lawful use of such items because the Controlled Substances Act still controls the federal legality of marijuana. This is a very interesting issue in that this is a hot area for trademarks right now, but federal trademark applicants are put in the difficult position (if they want to register a mark for a cannabis product or for a device for using cannabis product) of practically admitting to a federally illegal act, or an intent to sometime down the road commit a federally illegal act.