Dallas Bar Association
HEADNOTES
Focus Computer/Intellectual Property Law
June 2012 Volume 37 Number 6
Focus
Law Day Luncheon
Computer/Intellectual Property Law
The America Invents Act: Changes to U.S. Patent Laws By BY Timothy TIMOTHYW. G. Ackermann ACKERMANN
(Above) On May 4, local judiciary and attorneys attended the 2012 Law Day Luncheon at which Hon. Sam Lindsay, Judge of the Northern District of Texas, was the keynote speaker. Top: Justice Phil Johnson, Judge Lindsay, DBA President Paul K. Stafford and Justice Debra Lehrmann. In addition to awards presented to the winners of the Law Day DISD art and essay contests, the Dallas Association of Young Lawyers President Chip Brooker presented awards for (bottom left) Outstanding Mentor (Judge Martin Hoffman) and (bottom right) the Liberty Bell Award (Bette Buschow).
Focus
Last September’s amendments to the patent laws—commonly known as the “America Invents Act” or “AIA”—touch upon many areas, including how to get a patent, what the fees are, defenses in patent lawsuits and U.S. Patent and Trademark Office (PTO) review of already-issued patents. Here are some highlights: First, the best-known provisions are those changing how the patent-filing and granting process works. For applications filed after March 16, 2013, patents will be granted upon a “first-to-file” system. Rather than focusing on when something was invented, the “effective filing date” will be the actual filing date, or the date of the earliest application (e.g. an earlier U.S. or foreign application) to which it may claim priority. This will make filing early more important. The AIA also changes “prior art”—that is, what the PTO or a court can use to conclude an invention is not patentable because it was not new or would have been obvious. Prior art, for post-March 2013 applications, has been broadened to include anything “patented, described in a printed publication, or in public use, on sale, or otherwise available to the public” before the effective filing date. Under the pre-amendment provisions—which will apply
for many years to applications and patents filed before that date—certain acts or things are not prior art unless they occur or exist in the United States. Other amendments include fee-setting authority for the PTO (for recovering its “aggregate estimated costs”), a fee for prioritized examination and penalty for paper applications, the opening of a satellite PTO office in Detroit and the deeming of tax strategies as being within the prior art, making them not patentable unless combined with other technology. Next, the AIA altered a number of substantive and other provisions concerning patent litigation. Perhaps the two highest profile changes concern areas seeing public criticism in recent years. Plaintiffs must now have suffered a “competitive injury” to seek damages for false patent marking, and only the government can seek a penalty for each article marked falsely. The statute also now permits virtual marking— via a link to a website—and eliminates the risk of retaining the number of a now-expired patent. Plaintiffs can also no longer join a number of accused infringers in the same case solely because each is alleged to have infringed the patent. Rather, they must meet a joinder test relating to an infringing act that concerns “the CONTINUED ON PAGE 12
Computer/Intellectual Property Law
Non-traditional Trademark: Louboutin Red Sole Shoes by Dyan M. House
Apple®. Nike®. Starbucks®. All are wellknown trademarks. We recognize the word marks and know the icons that represent these brands—the apple, swoosh and mermaid, respectively. But a trademark can be something other than a name or a logo. A color, sound, shape or smell can function as a trademark as long as it identifies the source of goods or services and is not purely functional. Business owners often have the mistaken view that only a logo design can function as a trademark. For this reason, it is important to take a global inventory of the products and services of the business and how they are marketed. When this is done it will become apparent that product names, service identifiers and slogans may function as marks. Some of the most valuable trademarks fall into the category of “non-traditional” marks such as color, product shape, sound or smell. The Lanham Act provides for registration of “any word, name,
symbol, or device, or any combination thereof” used “to identify and distinguish” the goods or services of one party from another. The NBC chime, the Harlem Globetrotters’ theme music, and the Pillsbury Doughboy giggle are all examples of sound marks. Examples of product shape marks include the CocaCola bottle and the iPod. Robin’s egg blue for jewelry (Tiffany & Co.), pink insulation (Owens-Corning), canary yellow notes (3M’s Post-It Notes) and brown delivery vehicles (United Parcel Service) are among the most well-known examples of color marks. For non-traditional marks such as color, the mark must come to identify particular goods or services of the mark’s owner before it can rise to the level of a protectable trademark. It is well established that color cannot be protectable as a trademark if it performs a utilitarian function. If a color is essential to the use or purpose of a product, or if it affects the cost or quality of a product, it may not rise to the level of a trademark. Color may be protectable where the
color has attained “secondary meaning” identifying and distinguishing a particular brand. Robin’s egg blue by itself does not indicate the source of luxury jewelry. It is through Tiffany’s substantially exclusive and continuous use, and extensive advertising, that robin’s egg blue has come to be known as “Tiffany blue.” A recent case found two giants of fashion arguing over whether color is a protectable trademark as applied to shoes. This case involved famed shoe designer Christian Louboutin, whose shoes bear the recognizable lacquered red sole, suing Yves Saint Laurent for trademark infringement for YSL’s use of a red outsole in its 2011 cruise collection. Louboutin obtained a federal registration for a lacquered red sole on footwear in connection with “women’s high fashion designer footwear.” But despite the fame of the red sole, substantially exclusive use, secondary meaning and a federal registration, the district court held that the lacquered red sole is not entitled to trademark protection under the Lanham
Act. Christian Louboutin S.A. et al v. Yves Saint Laurent America, Inc. et al, 778 F.Supp.2d 445 (S.D.N.Y. 2011). Appeals have been filed in this matter, and there has been much discussion as to whether Louboutin’s trademark red sole is really a trademark at all. Whether or not Louboutin is ultimately successful in arguing in favor of his red sole mark, brand owners are well advised to consider what non-traditional trademarks they use and take action to protect those marks. How? In the same way as with an inherently distinctive logo—--through consistent and continuous use. The mark, whether it is a color, shape, sound or smell, should serve the purpose of identifying the source of the goods or services. Once a non-traditional trademark is identified as a key mark, the company should consider taking the steps to register it with the United States Patent and Trademark Office. Dyan M. House is a partner at Carter Stafford Arnett Hamada & Mockler, PLLC. She can be reached at dhouse@carterstafford.com.
Inside 5 Confronting a Trademark Bully on a Digital Playground 9 Cellular Tethering Data Fees: Are They Legal? 11 Privacy and Legal Issues in Global Shareware Tools
Bar None presents
“The Girl With the File-Stamp Tattoo” June 6-9 at the Greer Garson Theatre on the SMU Campus All proceeds benefit the Sarah T. Hughes Diversity Scholarships. To buy tickets, visit www.barnoneshow.com or contact Elizabeth Philipp at (214) 220-7487 or ephilipp@dallasbar.org.