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IP News

By Matt Berkowitz and Hany Rizkalla
January 31, 2008

Federal Circuit Interprets 'New Evidence' under Interference Rules

In In Re Garner, 2007-1221 (Fed. Cir. Dec. 5, 2007), a patent applicant ('Garner') appealed from a ruling by the U.S. Patent and Trademark Office Board of Patent Appeals and Interferences ('Board') that he had failed to make a prima facie showing of priority in an interference proceeding. The Federal Circuit held that the Board erred in refusing to consider certain documents Garner submitted in response to an Order to Show Cause, but which had not been submitted along with the Rule 202(d) declaration that provoked the interference. However, the Federal Circuit deemed this error harmless because the additional documents did not establish a prima facie case of priority.

Following an anticipation rejection over U.S. Patent No. 6,480,324 ('324 patent), Garner copied all claims of the '324 patent in order to provoke an interference. However, as the junior party, Garner had the burden of establishing prior invention under 37 C.F.R. '41.202(d). In an attempt to do so, Garner retitled a Rule 131 declaration filed in connection with the parent of the application at issue, as a Rule 202(d) declaration. In response to this Rule 202(d) declaration, the Board declared an interference, but found the same insufficient to establish a prima facie showing of priority. The Board therefore issued an Order to Show Cause why judgment should not be entered against Garner. In response to this Order, Garner relied on three items to show priority that had not been part of his original Rule 202(d) submission: 1) a Rule 131 declaration filed on Sept. 2, 2003 (2003 Garner declaration); 2) the specification of Garner's provisional application; and 3) the specification of Garner's utility application. The Board found that these three items were 'new evidence' that it was not permitted to consider under Rule 202(d) without a showing of good cause and that Garner had not attempted to show good cause for his belated reliance. Therefore, the Board issued judgment against Garner.

On appeal, the Federal Circuit held that the Board should have considered the specifications of both the provisional and utility applications and erred in finding these to be 'new evidence.' Specifically, the Federal Circuit considered two parts of 37 C.F.R. '41.202, which state:

(a) Applicant. An applicant, including a reissue applicant, may suggest an interference with another applicant or a patent. The suggestion must:

(5) If a claim has been added or amended to provoke an interference, provide a claim chart showing the written description for each claim in the applicant's specification.

 

(d) Requirement to show priority under 35 U.S.C. 102(g).

'

(2) If an applicant fails to show priority under paragraph (d)(1) of this section, an administrative patent judge may nevertheless declare an interference to place the applicant under an order to show cause why judgment should not be entered against the applicant on priority. New evidence in support of priority will not be admitted except on a showing of good cause '

The court reasoned that the Board's interpretation of 'new evidence' was inconsistent with the regulations because the Board interpreted it in such a way that required it to consider the specifications under Rule 202(a), but not under Rule 202(d), unless the applicant resubmitted the specification. The Federal Circuit further reasoned that since the specifications were already before the Board in the interference proceeding pursuant to Rule 202(a), they cannot be 'new evidence' under Rule 202(d). As to the 2003 Garner declaration, the court ruled that the Board's holding was not plainly erroneous or inconsistent with the regulation.

Despite the court's holding that the Board erred with regard to consideration of the specifications, it affirmed the Board's ruling that Garner failed to establish a prima facie case of priority because none of the evidence relied on established reduction to practice of the claimed invention.

 

Hormel Unable to Can 'Spam Arrest' Trademark

In Hormel Foods Corp. and Hormel Foods, LLC v. Spam Arrest, LLC, Cancellation No. 92042134 (TTAB, Nov. 21, 2007), the Trademark Trial and Appeal Board dismissed Hormel Foods' petition to cancel the registration of respondent Spam Arrest's SPAM ARREST trademark for 'computer software, namely software designed to eliminate unsolicited commercial electronic mail.' The Board found that Hormel failed to prove likelihood of confusion as well as likelihood of dilution by blurring or by tarnishment.

Hormel Foods introduced the SPAM trademark in 1937 in association with a canned luncheon meat product made from pork and ham. SPAM was derived from 'SPiced hAM.' Since that time, 6.3 billion cans of SPAM luncheon meat have been produced, and they are sold in virtually every retail outlet that sells food. Hormel promotes its SPAM meat product in a variety of ways including sending SPAMMOBILES, trucks made to resemble a can of SPAM, across the United States, sponsoring festivals like SPAM JAM and SPAMARAMA, and running an online SPAM fan club. Further, in 1991, Hormel began selling 'collateral products' ' merchandise bearing SPAM trademarks. Many of these products, like caps, shirts, and mouse pads, are featured in Hormel's SPAMTASTIC gift catalog and can be purchased online or over the phone. Hormel's SPAM mark has also been used for a downloadable screen saver.

Spam Arrest, LLC was started in September 2001 and on Nov. 27, 2001 filed an intent-to-use application for the mark SPAM ARREST for products and services to help customers avoid spam, or unsolicited commercial e-mail. Spam Arrest's software and services are offered through the Internet via its Web site and through various affiliate Web sites. Spam Arrest publicizes its goods and services mainly through banner ads and other types of Internet advertising.

Before addressing Hormel's likelihood of confusion and dilution claims, the Board noted that the word 'spam' is a recognized generic term for unsolicited commercial e-mail. Indeed, the Board pointed to a dictionary's definition of 'spam' as 'unsolicited ' commercial e-mail sent to a large number of addresses.' Further, the Board noted that federal legislation on the issue is titled the CANSPAM Act.

In addressing the issue of likelihood of confusion, the Board noted that this case presents a 'very unusual' situation where Hormel's trademark SPAM is undisputedly famous in terms of the likelihood of confusion analysis, but, at the same time, the term 'spam' is undisputedly generic as a term for unsolicited commercial e-mail. The Board indicated that this dichotomy informed its analysis of the du Pont factors. In considering the similarity of the marks, the Board noted that despite the fact that SPAM and 'spam' are identical in pronunciation and appearance, the marks as a whole 'are different in connotation and commercial impression' because Spam Arrest's use of the mark SPAM has the connotation of the generic term that refers to unsolicited e-mail. Further, the Board noted that SPAM ARREST 'does not have the same overall look as the members of [Hormel's] family of SPAM marks' and thus would not be perceived as belonging to Hormel's family of marks. In considering the similarity of goods and services, the Board held that despite Hormel's use of the mark on collateral products, when the mark is used on software to filter unsolicited e-mail, the word 'spam' would be viewed as having its generic meaning and thus be unrelated to Hormel's collateral products or services. The Board, among other factors, also considered the fame of Hormel's mark and noted that despite SPAM being a strong and famous mark, Hormel was not 'entitle[d] ' to a monopoly on the use of SPAM as a trademark for all goods and services.' Such a monopoly, the Board stated, would amount to Hormel having a 'right in gross in a term.' Therefore, the Board held that the trademark SPAM is not a strong mark for computer software that eliminates unsolicited commercial e-mail. After considering the various du Pont factors, the Board found that Hormel failed to prove that the mark SPAM ARREST is likely to cause confusion with its SPAM and SPAM-derivative marks.

Hormel also sought to cancel SPAM ARREST's mark by asserting dilution by blurring and by tarnishment. The Board noted that while Hormel's mark achieved the 'degree of fame with respect to canned meat that is necessary for a dilution claim,' it was not a distinctive mark when used in connection with services related to unsolicited commercial e-mail because 'spam' has become a generic term for such e-mail. The Board held that since 'spam' has this alternative generic meaning, others can use the term in its generic sense and that 'there can be no dilution of the original [SPAM] mark ' because that mark is not distinctive with respect to the goods which the generic term describes.'


Matt Berkowitz and Hany Rizkalla, Ph.D. are associates in the New York office of Kenyon & Kenyon LLP.

Federal Circuit Interprets 'New Evidence' under Interference Rules

In In Re Garner, 2007-1221 (Fed. Cir. Dec. 5, 2007), a patent applicant ('Garner') appealed from a ruling by the U.S. Patent and Trademark Office Board of Patent Appeals and Interferences ('Board') that he had failed to make a prima facie showing of priority in an interference proceeding. The Federal Circuit held that the Board erred in refusing to consider certain documents Garner submitted in response to an Order to Show Cause, but which had not been submitted along with the Rule 202(d) declaration that provoked the interference. However, the Federal Circuit deemed this error harmless because the additional documents did not establish a prima facie case of priority.

Following an anticipation rejection over U.S. Patent No. 6,480,324 ('324 patent), Garner copied all claims of the '324 patent in order to provoke an interference. However, as the junior party, Garner had the burden of establishing prior invention under 37 C.F.R. '41.202(d). In an attempt to do so, Garner retitled a Rule 131 declaration filed in connection with the parent of the application at issue, as a Rule 202(d) declaration. In response to this Rule 202(d) declaration, the Board declared an interference, but found the same insufficient to establish a prima facie showing of priority. The Board therefore issued an Order to Show Cause why judgment should not be entered against Garner. In response to this Order, Garner relied on three items to show priority that had not been part of his original Rule 202(d) submission: 1) a Rule 131 declaration filed on Sept. 2, 2003 (2003 Garner declaration); 2) the specification of Garner's provisional application; and 3) the specification of Garner's utility application. The Board found that these three items were 'new evidence' that it was not permitted to consider under Rule 202(d) without a showing of good cause and that Garner had not attempted to show good cause for his belated reliance. Therefore, the Board issued judgment against Garner.

On appeal, the Federal Circuit held that the Board should have considered the specifications of both the provisional and utility applications and erred in finding these to be 'new evidence.' Specifically, the Federal Circuit considered two parts of 37 C.F.R. '41.202, which state:

(a) Applicant. An applicant, including a reissue applicant, may suggest an interference with another applicant or a patent. The suggestion must:

(5) If a claim has been added or amended to provoke an interference, provide a claim chart showing the written description for each claim in the applicant's specification.

 

(d) Requirement to show priority under 35 U.S.C. 102(g).

'

(2) If an applicant fails to show priority under paragraph (d)(1) of this section, an administrative patent judge may nevertheless declare an interference to place the applicant under an order to show cause why judgment should not be entered against the applicant on priority. New evidence in support of priority will not be admitted except on a showing of good cause '

The court reasoned that the Board's interpretation of 'new evidence' was inconsistent with the regulations because the Board interpreted it in such a way that required it to consider the specifications under Rule 202(a), but not under Rule 202(d), unless the applicant resubmitted the specification. The Federal Circuit further reasoned that since the specifications were already before the Board in the interference proceeding pursuant to Rule 202(a), they cannot be 'new evidence' under Rule 202(d). As to the 2003 Garner declaration, the court ruled that the Board's holding was not plainly erroneous or inconsistent with the regulation.

Despite the court's holding that the Board erred with regard to consideration of the specifications, it affirmed the Board's ruling that Garner failed to establish a prima facie case of priority because none of the evidence relied on established reduction to practice of the claimed invention.

 

Hormel Unable to Can 'Spam Arrest' Trademark

In Hormel Foods Corp. and Hormel Foods, LLC v. Spam Arrest, LLC, Cancellation No. 92042134 (TTAB, Nov. 21, 2007), the Trademark Trial and Appeal Board dismissed Hormel Foods' petition to cancel the registration of respondent Spam Arrest's SPAM ARREST trademark for 'computer software, namely software designed to eliminate unsolicited commercial electronic mail.' The Board found that Hormel failed to prove likelihood of confusion as well as likelihood of dilution by blurring or by tarnishment.

Hormel Foods introduced the SPAM trademark in 1937 in association with a canned luncheon meat product made from pork and ham. SPAM was derived from 'SPiced hAM.' Since that time, 6.3 billion cans of SPAM luncheon meat have been produced, and they are sold in virtually every retail outlet that sells food. Hormel promotes its SPAM meat product in a variety of ways including sending SPAMMOBILES, trucks made to resemble a can of SPAM, across the United States, sponsoring festivals like SPAM JAM and SPAMARAMA, and running an online SPAM fan club. Further, in 1991, Hormel began selling 'collateral products' ' merchandise bearing SPAM trademarks. Many of these products, like caps, shirts, and mouse pads, are featured in Hormel's SPAMTASTIC gift catalog and can be purchased online or over the phone. Hormel's SPAM mark has also been used for a downloadable screen saver.

Spam Arrest, LLC was started in September 2001 and on Nov. 27, 2001 filed an intent-to-use application for the mark SPAM ARREST for products and services to help customers avoid spam, or unsolicited commercial e-mail. Spam Arrest's software and services are offered through the Internet via its Web site and through various affiliate Web sites. Spam Arrest publicizes its goods and services mainly through banner ads and other types of Internet advertising.

Before addressing Hormel's likelihood of confusion and dilution claims, the Board noted that the word 'spam' is a recognized generic term for unsolicited commercial e-mail. Indeed, the Board pointed to a dictionary's definition of 'spam' as 'unsolicited ' commercial e-mail sent to a large number of addresses.' Further, the Board noted that federal legislation on the issue is titled the CANSPAM Act.

In addressing the issue of likelihood of confusion, the Board noted that this case presents a 'very unusual' situation where Hormel's trademark SPAM is undisputedly famous in terms of the likelihood of confusion analysis, but, at the same time, the term 'spam' is undisputedly generic as a term for unsolicited commercial e-mail. The Board indicated that this dichotomy informed its analysis of the du Pont factors. In considering the similarity of the marks, the Board noted that despite the fact that SPAM and 'spam' are identical in pronunciation and appearance, the marks as a whole 'are different in connotation and commercial impression' because Spam Arrest's use of the mark SPAM has the connotation of the generic term that refers to unsolicited e-mail. Further, the Board noted that SPAM ARREST 'does not have the same overall look as the members of [Hormel's] family of SPAM marks' and thus would not be perceived as belonging to Hormel's family of marks. In considering the similarity of goods and services, the Board held that despite Hormel's use of the mark on collateral products, when the mark is used on software to filter unsolicited e-mail, the word 'spam' would be viewed as having its generic meaning and thus be unrelated to Hormel's collateral products or services. The Board, among other factors, also considered the fame of Hormel's mark and noted that despite SPAM being a strong and famous mark, Hormel was not 'entitle[d] ' to a monopoly on the use of SPAM as a trademark for all goods and services.' Such a monopoly, the Board stated, would amount to Hormel having a 'right in gross in a term.' Therefore, the Board held that the trademark SPAM is not a strong mark for computer software that eliminates unsolicited commercial e-mail. After considering the various du Pont factors, the Board found that Hormel failed to prove that the mark SPAM ARREST is likely to cause confusion with its SPAM and SPAM-derivative marks.

Hormel also sought to cancel SPAM ARREST's mark by asserting dilution by blurring and by tarnishment. The Board noted that while Hormel's mark achieved the 'degree of fame with respect to canned meat that is necessary for a dilution claim,' it was not a distinctive mark when used in connection with services related to unsolicited commercial e-mail because 'spam' has become a generic term for such e-mail. The Board held that since 'spam' has this alternative generic meaning, others can use the term in its generic sense and that 'there can be no dilution of the original [SPAM] mark ' because that mark is not distinctive with respect to the goods which the generic term describes.'


Matt Berkowitz and Hany Rizkalla, Ph.D. are associates in the New York office of Kenyon & Kenyon LLP.

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