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Federal Circuit Evaluates the Use of Domain Names in Trademarks
The Federal Circuit affirmed that absent secondary meaning, the mark “patents.com” for patent tracking software was descriptive, but that no bright line rule exists that would automatically preclude the distinctiveness of a domain name added to a descriptive term.
In In re Oppedahl, 2004 U.S. App. LEXIS 12875 (Fed. Cir. 2004), the USPTO refused to register “patents.com” because the term “patents” was deemed descriptive for patent tracking software and the addition of “.com” did not make the mark distinctive. In rejecting the mark, the USPTO pointed to the policy regarding top level domain names (“TLDs”) in the Trademark Manual of Examination and Procedure (“TMEP”), which states “because TLDs serve generally no source-indicating function, their addition to an unregisterable mark typically cannot render it registerable.” On appeal, Applicants argued that the USPTO had developed a bright line rule against the distinctiveness of TLDs and was not properly considering the mark in its entirety.
The Federal Circuit agreed that a bright line rule would be improper, but disagreed that such a rule existed. Pointing to the words “generally” and “typically” in the TMEP, the court held that there was no absolute prohibition on the distinctiveness of TLDs, and that, in some circumstances, adding a TLD could make a mark distinctive. The court pointed to Applicants' example of “tennis.net” for a non-Internet goods provider that sells tennis nets as a possible example of adding a TLD, “.net,” to a descriptive mark, “tennis,” rendering the entire mark distinctive. Applicants further argued that terms with a TLD were inherently distinctive because they could only be associated with one source at a time. The Federal Circuit refused to adopt a rule that would make TLDs per se distinctive, comparing TLDs to phone numbers or addresses that, while unique, did not by themselves indicate a source of a good or service.
Federal Circuit Holds Parts Must Be Physically in U.S. to Violate 35 U.S.C. '271
In an issue of first impression, the Federal Circuit affirmed summary judgment dismissing patent infringement claims under 35 U.S.C. '271 for devices that, while made and sold abroad, were designed in and had instructions that emanated from the United States.
In Pellegrini v. Analog Devices, 2004 U.S. App. LEXIS 14017 (Fed Cir. 2004), defendant Analog manufactured integrated circuit chips in Ireland and sold the chips to various foreign countries. Plaintiff Pellegrini argued that since Analog's headquarters were in the United States, the chip was designed in the United States, the instructions for production of the chips came from the United States, and purchase orders and invoices for the chips were received in the United States, Analog should be liable for inducing infringement under 35 U.S.C. '271(f).
Section 271 requires all or a substantial portion of the components of a patented invention to be supplied from the United States in order to find induced infringement. Pellegrini argued that the product's extensive U.S. ties fulfilled the “supplied in the United States” requirement, further pointing to boilerplate language on the product's invoices that specified that the product was exported from the United States. Pellegrini argued that Analog should not be allowed to enjoy the benefits of a U.S. exporter without being subject to 35 U.S.C. '271.
The Federal Circuit disagreed, holding that '271 only applies “where the components on an invention are physically present in the United States.” Further, the court stated that the “'tort'” of patent infringement occurs where the offending act [making, using, selling, offering for sale, or importing] is committed and not where the injury is felt. The court then discussed each supposed U.S. contact in turn. The court stated that '271 only referred to the physical supply of components, and not the supply of instructions as the infringing act, and, therefore, without an actual supply of components, supplying instructions was not an infringing act under '271. With regard to the purchase orders processed and received in the United States, the court held that without a sale to someone in the United States or evidence of U.S. manufacturing, the purchase orders could not constitute an infringing act. Finally, with regard to the export notice on the invoices, the court held that even though the language stated that the chips were U.S. exported commodities, there was no evidence of their physical presence in the United States. While reciting such a statement on the invoice might not be proper, the court stated that “compliance with the export laws is not an issue before this court.” By affirming the district court's summary judgment, all the chips that were not ever physically present in the United States were removed from infringement consideration.
USPTO Publishes New Comments on Patent Term Extension
The USPTO recently published a revision of the patent rules that affects the patent term extension and adjustment provisions. The revision would allow, under certain circumstances, a panel remand from the Board of Patent Appeals and Interferences to serve as the “decision in the review reversing an adverse determination of patentability” required to receive a patent term extension or adjustment. The initial revision also explained some miscellaneous changes to 37 C.F.R. 1.703(f) regarding the proper period to be considered for overlapping delays. After a letter submitted by Professor Irving Kayton to the USPTO criticized the wording of the explanation, the USPTO attempted to clarify the revision in a supplemental explanation of 37 C.F.R. 1.0703(f). The revised C.F.R. provision states that in the event there is more than one delay that could contribute to a patent extension, and the multiple delays overlap, the patent would only be extended for the actual number of days delayed. The USPTO explained that if an application is entitled to an adjustment due to the 3-year pendency provisions, the entire application pendency period ' not just the 3 years after filing ' is the relevant time period to determine if any overlapping delays exist. Several examples of different types of delays and the amount of extension they would receive were presented. The full notice can be found at 69 Fed. Reg. 34283 (June 21, 2004).
Federal Circuit Evaluates the Use of Domain Names in Trademarks
The Federal Circuit affirmed that absent secondary meaning, the mark “patents.com” for patent tracking software was descriptive, but that no bright line rule exists that would automatically preclude the distinctiveness of a domain name added to a descriptive term.
In In re Oppedahl, 2004 U.S. App. LEXIS 12875 (Fed. Cir. 2004), the USPTO refused to register “patents.com” because the term “patents” was deemed descriptive for patent tracking software and the addition of “.com” did not make the mark distinctive. In rejecting the mark, the USPTO pointed to the policy regarding top level domain names (“TLDs”) in the Trademark Manual of Examination and Procedure (“TMEP”), which states “because TLDs serve generally no source-indicating function, their addition to an unregisterable mark typically cannot render it registerable.” On appeal, Applicants argued that the USPTO had developed a bright line rule against the distinctiveness of TLDs and was not properly considering the mark in its entirety.
The Federal Circuit agreed that a bright line rule would be improper, but disagreed that such a rule existed. Pointing to the words “generally” and “typically” in the TMEP, the court held that there was no absolute prohibition on the distinctiveness of TLDs, and that, in some circumstances, adding a TLD could make a mark distinctive. The court pointed to Applicants' example of “tennis.net” for a non-Internet goods provider that sells tennis nets as a possible example of adding a TLD, “.net,” to a descriptive mark, “tennis,” rendering the entire mark distinctive. Applicants further argued that terms with a TLD were inherently distinctive because they could only be associated with one source at a time. The Federal Circuit refused to adopt a rule that would make TLDs per se distinctive, comparing TLDs to phone numbers or addresses that, while unique, did not by themselves indicate a source of a good or service.
Federal Circuit Holds Parts Must Be Physically in U.S. to Violate 35 U.S.C. '271
In an issue of first impression, the Federal Circuit affirmed summary judgment dismissing patent infringement claims under 35 U.S.C. '271 for devices that, while made and sold abroad, were designed in and had instructions that emanated from the United States.
In Pellegrini v. Analog Devices, 2004 U.S. App. LEXIS 14017 (Fed Cir. 2004), defendant Analog manufactured integrated circuit chips in Ireland and sold the chips to various foreign countries. Plaintiff Pellegrini argued that since Analog's headquarters were in the United States, the chip was designed in the United States, the instructions for production of the chips came from the United States, and purchase orders and invoices for the chips were received in the United States, Analog should be liable for inducing infringement under 35 U.S.C. '271(f).
Section 271 requires all or a substantial portion of the components of a patented invention to be supplied from the United States in order to find induced infringement. Pellegrini argued that the product's extensive U.S. ties fulfilled the “supplied in the United States” requirement, further pointing to boilerplate language on the product's invoices that specified that the product was exported from the United States. Pellegrini argued that Analog should not be allowed to enjoy the benefits of a U.S. exporter without being subject to 35 U.S.C. '271.
The Federal Circuit disagreed, holding that '271 only applies “where the components on an invention are physically present in the United States.” Further, the court stated that the “'tort'” of patent infringement occurs where the offending act [making, using, selling, offering for sale, or importing] is committed and not where the injury is felt. The court then discussed each supposed U.S. contact in turn. The court stated that '271 only referred to the physical supply of components, and not the supply of instructions as the infringing act, and, therefore, without an actual supply of components, supplying instructions was not an infringing act under '271. With regard to the purchase orders processed and received in the United States, the court held that without a sale to someone in the United States or evidence of U.S. manufacturing, the purchase orders could not constitute an infringing act. Finally, with regard to the export notice on the invoices, the court held that even though the language stated that the chips were U.S. exported commodities, there was no evidence of their physical presence in the United States. While reciting such a statement on the invoice might not be proper, the court stated that “compliance with the export laws is not an issue before this court.” By affirming the district court's summary judgment, all the chips that were not ever physically present in the United States were removed from infringement consideration.
USPTO Publishes New Comments on Patent Term Extension
The USPTO recently published a revision of the patent rules that affects the patent term extension and adjustment provisions. The revision would allow, under certain circumstances, a panel remand from the Board of Patent Appeals and Interferences to serve as the “decision in the review reversing an adverse determination of patentability” required to receive a patent term extension or adjustment. The initial revision also explained some miscellaneous changes to
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