IP Bulletin, January 2015Print PDF
The Nutter IP Bulletin provides periodic IP news updates and practical tips
Supreme Court Decision in Patent Case May Make it Easier to Obtain Attorneys’ Fees in Trademark and Trade Dress Cases
In Octane Fitness LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014), decided in April 2014, the Supreme Court lowered the bar for obtaining attorneys’ fees in patent infringement cases. Since then, there has been a rash of litigants attempting to cash in on their success in intellectual property litigation of all types—including trademark and trade dress litigation brought under the Lanham Act. Courts are currently divided as to whether Octane Fitness applies to the Lanham Act, although a greater weight of authority exists in favor of applying the Octane Fitness standard. Thus, at least in some Circuits, parties to trademark and trade dress infringement litigation should be aware that a lower standard may apply to the awarding of attorneys’ fees to the prevailing party.
Nutter’s IP Bulletin How-To Series on Branding
What to Do Once Your Trademark Registers – Defensive Monitoring and Enforcement
Our prior article in the series addressed the basics of what to do once your trademark registers, focusing mainly on your own use of the mark and supplemental submissions required to the United States Patent and Trademark Office (USPTO) in connection with your registration. Of course, your mark does not exist in a vacuum, and another category of activities you should undertake once your trademark registers involves monitoring the USPTO and other trademark offices for other potentially confusing or otherwise problematic marks and, where necessary, taking action to defend your mark. We also begin to address enforcing your mark through litigation, a vast topic that will be explored further in future articles.
Federal Circuit Invalidates Broadening Reissue Claims
The Federal Circuit recently issued a decision in Antares Pharma, Inc. v. Medac Pharma, Inc. (Fed. Cir. 2014) that examined the issue of whether claims have been properly broadened in a reissue application. The Court in Antares found reissue claims to be invalid for failing the original patent requirement of 35 U.S.C. § 251. The Court found that the original patent requirement mandates that newly claimed subject matter be disclosed in an explicit and unequivocal manner in the specification. In other words, the newly added claims cannot be merely suggested or indicated in the specification. This case highlights an important aspect of reissue practice of which practitioners should take note.
Can You Trademark That Tagline?
Companies often seek protection of taglines tied to an advertising campaign or taglines used on merchandise. In weighing the costs and benefits of filing a trademark application for a slogan or tagline, it is necessary to determine whether the tagline is protectable. Slogans and taglines are protectable in the same manner as any other trademark, that is they are subject to the same scrutiny as non-slogan marks. Therefore, slogans and taglines should be analyzed in the same manner as all other trademarks in determining their value and protectability.
USPTO Issues Revised Guidelines Refining the Test for Patent Eligibility
On December 16, 2014, the USPTO published long-awaited guidelines intended to help examiners determine the patent eligibility of a wide range of inventions from isolated genetic materials to computer-implemented methods. The new guidelines elaborate on the two-part test for patent-eligibility set forth by the Supreme Court in Mayo v. Prometheus and reiterated in Alice v. CLS Bank.
USPTO Issues Final Rules to Implement Changes in PTA Calculation
The USPTO released final rules on January 9, 2015 implementing changes to the way in which Patent Term Adjustment (PTA) is calculated in view of the recent Novartis v. Lee case. As a result, PTA will now be granted for post-allowance USPTO delays even when a Request for Continued Examination is filed during prosecution.
Nutter's IP Bulletin is a bi-monthly publication of the Intellectual Property practice group at Nutter McClennen & Fish LLP in Boston. This edition of the bulletin was edited by Michael P. Visconti, III. Assistance in the preparation of this issue was provided by Ronald E. Cahill, James C. Hall, Konstantin M. Linnik, Ph.D., John J. Penny, V, David J. Powsner, Heather B. Repicky, Derek P. Roller, and Joshua I. Rudawitz. For further information, please contact your Nutter attorney at 617-439-2000.
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