IP News

Ninth Circuit Holds 'Advertising.com' Mark Likely to Be Found Generic

In Advertising.com, Inc. v. AOL Advertising, Inc. et al., 2010 U.S. App. Lexis 16054 (Aug. 3, 2010), the Ninth Circuit Court of Appeals reversed and vacated a district court's preliminary injunction, holding that the district court erred in finding that AOL had demonstrated a likelihood of success in showing that its ADVERTISING.COM mark was descriptive and not generic.

AOL owns trademark registrations covering certain stylized representations of the mark ADVERTISING.COM. During prosecution of those marks, the PTO requested that AOL disclaim the standard text version of ADVERTISING.COM to obtain registration of the stylized representations of that term. AOL refused, arguing that the standard text version was distinctive and protectable. AOL's registrations eventually issued without the requested disclaimer.

On Aug. 17, 2009, AOL filed a complaint against Advertise.com, alleging that Advertise.com had infringed AOL's trademark rights by using the designation Advertise.com and by using a stylized version of that designation that was confusingly similar to AOL's stylized ADVERTISING.COM. The district court enjoined Advertise.com from using “any design mark or logo that is confusingly similar to the stylized forms of AOL's ADVERTISING.COM marks” and from using the designation and trade name Advertise.com or any other name confusingly similar to ADVERTISING.COM. Advertise.com was not enjoined from using its Web site address “advertise.com.” Advertise.com appealed the district court's decision with respect to the standard text mark, arguing that the standard text ADVERTISING.COM mark is generic. Advertise.com did not appeal the portion of the district court's ruling enjoining it from using any design mark that was confusingly similar to AOL's stylized marks.

The Ninth Circuit reversed the district court's decision with respect to the standard text mark, holding that AOL was unlikely to prove that the mark was descriptive. The court first considered whether ADVERTISING.COM conveys only the “genus of which [AOL's] particular [service] is a species” (which the parties agreed is “online advertising” or “internet advertising”) or whether the mark is descriptive because it “directly describe[s] the qualities or features of the product.” The court first reasoned that, taken separately, “advertising” and “.com” reflect only the genus of the services offered since “advertising” was concededly generic, and “.com” was a top-level domain name that refers to almost anything connected to business on the Internet. The court next considered whether the “mark as a whole and ' the combination of generic terms ' result[s] in a distinctive mark.” As to this question, the court applied a “who-are-you/what-are-you” test: “A mark answers the buyer's questions: 'Who are you?' 'Where do you come from?' 'Who vouches for you?' but the generic name of the product answers the question 'What are you?'” The court reasoned that when any online advertising company, including AOL's competitors, is asked the question “What are you?” it would be entirely appropriate for the company to respond “an advertising.com” or an “advertising dot-com.” The court determined that this was strong evidence that the mark was generic, and noted that its conclusion was consistent with extensive Federal Circuit precedent finding that the combination of “.com” and an otherwise generic word does not result in a descriptive mark.

The court found further support for its holding from the fact that 32 separate domain names incorporate “advertising.com.” The court reasoned that under Federal Circuit precedent, such evidence is sufficient to prove genericness under a clear evidence standard when the elements of the mark are highly generic.

Patent Claims Relating to Administration of Known Drug with Food Are Inherently Anticipated

In King Pharmaceuticals, Inc. v. Eon Labs, Inc., U.S. App. LEXIS 15947 (Aug. 2, 2010), the Federal Circuit affirmed a district court's summary judgment ruling that the asserted patent claims were invalid, and held that merely discovering and claiming a new benefit of an old process cannot render a process again patentable. King Pharmaceuticals, Inc. (“King”) markets and sells a brand version of metaxalone, under the name Skelaxin'. Metaxalone is a muscle relaxant used to treat “discomforts associated with accused, painful musculoskeletal conditions.” Metaxalone was first discovered in the 1960s, and the first patent claiming the method of producing the compound issued in 1962.

King is the owner of U.S. Patent No. 6,407,128 and 6,683,102, which issued in 2002 and 2004, respectively, and which each relate to a method of “increasing the bioavailability of metaxalone by administration of an oral dosage form with food.” Specifically, claim 1 of the '128 patent claims “a method of increasing the oral bioavailability of metaxalone” by “administering to the patient a therapeutically effective amount of metaxalone in a pharmaceutical composition with food.” Dependent claim 21 claims the method of claim 1 with the additional limitation of “informing” the patient that taking metaxalone with food will increase the drug's bioavailability. The asserted claims of the '102 patent included similar limitations relating to administering metaxalone with food to increase bioavailability and about “informing” the patient about this benefit.

On Aug. 31, 2004, Eon Labs, Inc. (“Eon”) filed an ANDA for a generic 800 mg metaxalone tablet, along with a Paragraph IV certification that none of the claims of the '128 patent would be infringed, and that they are all invalid. In response, King filed suit accusing Eon of infringing the '128 and '102 patents.

Before the district court, Eon presented six prior art references it contended invalidated the '128 and '102 patents. In granting Eon's motion for summary judgment, the district court relied upon three of these references, each of which indicated that taking metaxalone with food reduced nausea. The district court held that “an increase in the bioavailability of metaxalone is inherent when the drug is taken with food.”

The Federal Circuit affirmed, holding that “merely discovering and claiming a new benefit of an old process cannot render the process again patentable.” The court reasoned that although the prior art suggested taking metaxalone with food to reduce nausea, the natural result is an increase in the bioavailability of the drug. The court rejected King's expert's opinion that a disclosure of taking metaxalone with food would not inherently disclose increasing its bioavailability, reasoning that the patent disclosed no more than the prior art, i.e., the patent discloses no more than taking metaxalone with food, and to the extent such a method increases bioavailability, the identical prior art method does as well.

As to dependent claim 21, the court held that an otherwise anticipated method claim does not become patentable because it includes a step of “informing” someone about the existence of an inherent property of that method. The court reasoned that the relevant inquiry should be whether the additional instructional limitation of claim 21 has a “new and unobvious functional relationship” with the known method of administering metaxalone with food. Although King contended that the “informing” limitation increases the likelihood that the patient will take metaxalone with food, the court held that this relationship was not a functional one since, irrespective of whether the patient is informed about the benefits, the actual method ' taking metaxalone with food ' is the same.

Howard J. Shire is a partner and Matthew Berkowitz is an associate in the New York office of Kenyon & Kenyon LLP.

Ninth Circuit Holds 'Advertising.com' Mark Likely to Be Found Generic

In Advertising.com, Inc. v. AOL Advertising, Inc. et al., 2010 U.S. App. Lexis 16054 (Aug. 3, 2010), the Ninth Circuit Court of Appeals reversed and vacated a district court's preliminary injunction, holding that the district court erred in finding that AOL had demonstrated a likelihood of success in showing that its ADVERTISING.COM mark was descriptive and not generic.

AOL owns trademark registrations covering certain stylized representations of the mark ADVERTISING.COM. During prosecution of those marks, the PTO requested that AOL disclaim the standard text version of ADVERTISING.COM to obtain registration of the stylized representations of that term. AOL refused, arguing that the standard text version was distinctive and protectable. AOL's registrations eventually issued without the requested disclaimer.

On Aug. 17, 2009, AOL filed a complaint against Advertise.com, alleging that Advertise.com had infringed AOL's trademark rights by using the designation Advertise.com and by using a stylized version of that designation that was confusingly similar to AOL's stylized ADVERTISING.COM. The district court enjoined Advertise.com from using “any design mark or logo that is confusingly similar to the stylized forms of AOL's ADVERTISING.COM marks” and from using the designation and trade name Advertise.com or any other name confusingly similar to ADVERTISING.COM. Advertise.com was not enjoined from using its Web site address “advertise.com.” Advertise.com appealed the district court's decision with respect to the standard text mark, arguing that the standard text ADVERTISING.COM mark is generic. Advertise.com did not appeal the portion of the district court's ruling enjoining it from using any design mark that was confusingly similar to AOL's stylized marks.

The Ninth Circuit reversed the district court's decision with respect to the standard text mark, holding that AOL was unlikely to prove that the mark was descriptive. The court first considered whether ADVERTISING.COM conveys only the “genus of which [AOL's] particular [service] is a species” (which the parties agreed is “online advertising” or “internet advertising”) or whether the mark is descriptive because it “directly describe[s] the qualities or features of the product.” The court first reasoned that, taken separately, “advertising” and “.com” reflect only the genus of the services offered since “advertising” was concededly generic, and “.com” was a top-level domain name that refers to almost anything connected to business on the Internet. The court next considered whether the “mark as a whole and ' the combination of generic terms ' result[s] in a distinctive mark.” As to this question, the court applied a “who-are-you/what-are-you” test: “A mark answers the buyer's questions: 'Who are you?' 'Where do you come from?' 'Who vouches for you?' but the generic name of the product answers the question 'What are you?'” The court reasoned that when any online advertising company, including AOL's competitors, is asked the question “What are you?” it would be entirely appropriate for the company to respond “an advertising.com” or an “advertising dot-com.” The court determined that this was strong evidence that the mark was generic, and noted that its conclusion was consistent with extensive Federal Circuit precedent finding that the combination of “.com” and an otherwise generic word does not result in a descriptive mark.

The court found further support for its holding from the fact that 32 separate domain names incorporate “advertising.com.” The court reasoned that under Federal Circuit precedent, such evidence is sufficient to prove genericness under a clear evidence standard when the elements of the mark are highly generic.

Patent Claims Relating to Administration of Known Drug with Food Are Inherently Anticipated

In King Pharmaceuticals, Inc. v. Eon Labs, Inc., U.S. App. LEXIS 15947 (Aug. 2, 2010), the Federal Circuit affirmed a district court's summary judgment ruling that the asserted patent claims were invalid, and held that merely discovering and claiming a new benefit of an old process cannot render a process again patentable. King Pharmaceuticals, Inc. (“King”) markets and sells a brand version of metaxalone, under the name Skelaxin'. Metaxalone is a muscle relaxant used to treat “discomforts associated with accused, painful musculoskeletal conditions.” Metaxalone was first discovered in the 1960s, and the first patent claiming the method of producing the compound issued in 1962.

King is the owner of U.S. Patent No. 6,407,128 and 6,683,102, which issued in 2002 and 2004, respectively, and which each relate to a method of “increasing the bioavailability of metaxalone by administration of an oral dosage form with food.” Specifically, claim 1 of the '128 patent claims “a method of increasing the oral bioavailability of metaxalone” by “administering to the patient a therapeutically effective amount of metaxalone in a pharmaceutical composition with food.” Dependent claim 21 claims the method of claim 1 with the additional limitation of “informing” the patient that taking metaxalone with food will increase the drug's bioavailability. The asserted claims of the '102 patent included similar limitations relating to administering metaxalone with food to increase bioavailability and about “informing” the patient about this benefit.

On Aug. 31, 2004, Eon Labs, Inc. (“Eon”) filed an ANDA for a generic 800 mg metaxalone tablet, along with a Paragraph IV certification that none of the claims of the '128 patent would be infringed, and that they are all invalid. In response, King filed suit accusing Eon of infringing the '128 and '102 patents.

Before the district court, Eon presented six prior art references it contended invalidated the '128 and '102 patents. In granting Eon's motion for summary judgment, the district court relied upon three of these references, each of which indicated that taking metaxalone with food reduced nausea. The district court held that “an increase in the bioavailability of metaxalone is inherent when the drug is taken with food.”

The Federal Circuit affirmed, holding that “merely discovering and claiming a new benefit of an old process cannot render the process again patentable.” The court reasoned that although the prior art suggested taking metaxalone with food to reduce nausea, the natural result is an increase in the bioavailability of the drug. The court rejected King's expert's opinion that a disclosure of taking metaxalone with food would not inherently disclose increasing its bioavailability, reasoning that the patent disclosed no more than the prior art, i.e., the patent discloses no more than taking metaxalone with food, and to the extent such a method increases bioavailability, the identical prior art method does as well.

As to dependent claim 21, the court held that an otherwise anticipated method claim does not become patentable because it includes a step of “informing” someone about the existence of an inherent property of that method. The court reasoned that the relevant inquiry should be whether the additional instructional limitation of claim 21 has a “new and unobvious functional relationship” with the known method of administering metaxalone with food. Although King contended that the “informing” limitation increases the likelihood that the patient will take metaxalone with food, the court held that this relationship was not a functional one since, irrespective of whether the patient is informed about the benefits, the actual method ' taking metaxalone with food ' is the same.

Howard J. Shire is a partner and Matthew Berkowitz is an associate in the New York office of Kenyon & Kenyon LLP.