The Intellectual Property Strategist

Features

On Aug. 1, 2007, the U.S. Patent and Trademark Office ('USPTO') issued a final rulemaking action titled 'Miscellaneous Changes to Trademark Trial and Appeal Board Rules' (the 'Amendments'). This article summarizes the most significant Amendments affecting Board <i>inter partes</i> proceedings.

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Highlights of the latest intellectual property news from around the country.

Many complaints for patent infringement allege that a defendant's conduct is willful, justifying an award of enhanced damages. The <i>Seagate Technology</i> decision substantially increases the difficulty of proving willful infringement. <i>In re Seagate Technology, LLC,</i> 2007 WL 2358677 (Fed. Cir. 2007).

In determining whether competitors' trademarks are confusingly similar, some of the most vexing issues involve comparisons between marks that contain multiple terms or components, and comparisons between multiple marks. A pair of recent decisions by the Federal Circuit and the Trademark Trial and Appeal Board ('TTAB') clarifies how these issues should be approached. In <i>Schering-Plough HealthCare Products, Inc. v. Huang,</i> 2007 TTAB LEXIS 67 (TTAB June 18, 2007), the TTAB synthesized various precedents governing challenges to a trademark application based on combinations of separately registered marks. In <i>China Healthways Institute, Inc. v. Wang,</i> 2007 U.S. App. LEXIS 14815 (Fed. Cir. June 22, 2007), the Federal Circuit clarified the antidissection rule governing marks with multiple components.

The latest change in the rapidly evolving field of patent practice emerged in August 2007, when the U.S. Patent and Trademark Office ('PTO') published its new rules for practice. Covering examination of patent claims and continued examination filings, these rules may be the most fundamental change to patent practice in decades. In particular, they will significantly limit applicants' ability to present patent claims in a single application, and they will in many cases prevent applicants from pursuing additional claims in continued application filings. These rules will generally make the patent process significantly more time-consuming, more complicated, and, as a result, more expensive.

This article continues the theme of an article I wrote in late 2004 concerning <i>U.S. v. Martignon</i>, 346 F. Supp. 2d 413 (S.D.N.Y. 2004), in which the district court for the Southern District of New York found that 18 U.S.C. &sect;2319A (the 'anti-bootleg statute') was unconstitutional on the ground that Congress had exceeded its delegated power to legislate copyright law when it enacted the statute. My previous article observed that <i>Martignon</i> implicated several important and fundamental public policies in reaching its decision, among which are the protection of intellectual property, constitutional limits on congressional power to enact laws, freedom of expression as protected by the First Amendment, and the necessity of laws threatening a citizen's liberty to be definite and within a legitimate ambit of congressional authority to act.

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Ethical prohibitions impact the common practice of almost every active trademark lawyer regarding his or her use of private investigators to collect information from third parties. However, the scope of permissible conduct is not always clearly defined. For instance, when a search report reveals one possible bar to your client's adoption of the mark, such as a nine-year-old federal registration by an individual who does not appear to have a Web site, can you or your investigator contact this person and devise some plausible explanation for the reason that you want to know if the mark is still in use? Or if you discover that a company appears to be infringing your client's trademark, can you send someone pretending to be a customer, but who asks all sorts of questions relevant to proving infringement that the ordinary consumer is highly unlikely to raise? Does it matter if the person you or your investigator makes contact with is a low-level sales clerk or the owner of the company?