Weekly IP Takeaways

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.

1.      In a group of cases that are a civil procedure wonk’s dream, the Federal Circuit affirmed, in a non-precedential opinion, the setting aside of a $32 million judgment against Sprint where claims in the same patent (but not the same claims) were invalidated in a different action under 35 U.S.C. 101. The opinion is here. A few thoughts: (1) enforce your judgments quickly, if possible, and (2) pay attention to how courts focus on representative claims in their Alice/101 analyses, and how the invalidity of such representative claims may impact some or all of the other claims in the same patent, even if they were not formally analyzed by the court.

2.      Skechers has filed an interesting new case in the Central District of California challenging the scope of Adidas’ 3-stripe trademark rights. Comments and information on the case can be found here. The “house mark” argument, the multiple users of similar designs argument, and the question about the scope of Adidas’ 3-stripe trademark are all interesting questions that this case raises. Whether any of these issues are litigated (as opposed to the matter settling) remains to be seen.

3.      In an appeal of a district court decision determining that “booking.com” may serve as a valid trademark, an additional issue presented was whether litigants that take the U.S. Patent and Trademark Office (“USPTO”) to court to challenge the denial of a trademark application (or potentially for other reasons) are required to pay the USPTO’s legal fees in defending the action, regardless of whether the USPTO wins or loses. The Fourth Circuit Court of Appeals, following its own precedent, requires that litigants reimburse the USPTO its legal fees regardless of outcome. The opinion is here. This position is presently being challenged, albeit not entirely directly, in a matter pending before the U.S. Supreme Court, Nantkwest v. Iancu. The Supreme Court has yet to grant certiorari in the case, and may not. Author’s note – requiring litigants to reimburse the USPTO, particularly when the USPTO loses, will likely have a chilling effect on challenging USPTO decisions on patents and trademarks, which is not necessarily a good outcome.

4.      The Federal Circuit, in an appeal from the Trademark Trial and Appeal Board (TTAB), ruled that the TTAB failed to consider the long-term peaceful co-existence of two allegedly conflicting marks in reaching its decision that a likelihood of confusion existed. While a showing of actual confusion is not required to prove infringement or a likelihood of confusion that would bar registration, the Federal Circuit’s ruling seems to indicate that the absence of actual confusion between companies in geographic proximity, with similar names, in similar fields, is germane to the issue of whether or not a mark should be registered by the United States Patent and Trademark Office. Thus, the Federal Circuit reversed the TTAB for failing to consider the long-term absence of confusion in its analysis. This ruling will likely be used in trademark infringement cases in district courts as well. The opinion is here.