Intellectual Property Report - April 2007
04/04/2007

• The Trademark Dilution Revision Act of 2006: Rewriting Federal Trademark Dilution Law
• U.S. Patent Office Launches New Accelerated Examination Program
• Marketing on or Through Blogs Poses New Legal Issues
• Supreme Court Weighs in on Key Patent Standard
• Other IP Announcements
  • Litigators Win Copyright Jury Verdict
  • New I.P. Personnel

The Trademark Dilution Revision Act of 2006: Rewriting Federal Trademark Dilution Law
By Kelley Lynch

Important legislation targeted at federal dilution law reform was signed into law on October 6, 2006. The Trademark Dilution Revision Act of 2006 (TDRA) overturns Supreme Court precedent and introduces changes that represent a departure from the previous, and first, federal trademark dilution statute, the Federal Trademark Dilution Act of 1996. Trademark owners should be aware of these changes and the implications for future litigation, as some of the amendments represent a complete change from current federal dilution law and other changes could cause courts to revisit issues of interpretation previously debated.

History of Federal Dilution Law

Dilution law is an anomaly in trademark law, for it focuses on protecting the property rights of owners of famous and distinctive trademarks, as opposed to focusing on consumer protection against source confusion. Until 1996, the year in which the FTDA was passed, causes of action based on dilution could only be brought on the state level, where many states have anti-dilution statutes. The confinement of dilution to the state level meant limited relief for plaintiffs with national trademarks.

The FTDA established the first federal basis for trademark dilution. The statute provided a means for relief to owners of “distinctive and famous” trademarks. Under the FTDA, an owner of a famous mark is entitled to relief when a third party’s use of a mark dilutes the strength and distinctiveness of the famous mark. Although the FTDA provided a basis for federal relief in dilution situations, the statute’s vague language in certain aspects led to inconsistent interpretations of the statute among courts. The principal areas of controversy with the FTDA centered around (a) the burden of proof on the owner of the mark to show dilution, i.e. whether the burden of proof was an “actual dilution” standard or a “likelihood of dilution standard;” (b) the definition of what makes a mark “famous;” and (c) whether there is a separate cause of action for dilution by tarnishment.

In 2003, the Supreme Court, in Moseley v. Victoria’s Secret1, attempted to address many of the issues regarding the interpretation of the FTDA. Answering the controversy as to the level of proof required under the FTDA, the Supreme Court’s opinion found that “actual dilution” must be proved to entitle a mark owner to relief, rather than the less burdensome “likelihood of dilution” standard. But, the Supreme Court’s opinion offered plaintiffs little guidance for establishing actual dilution. Moreover, the Supreme Court’s opinion expressed uncertainty regarding whether the FTDA encompassed dilution by tarnishment. Thus, the Supreme Court’s opinion made proving dilution more difficult for trademark owners and created more controversy regarding the interpretation and application of the FTDA.

The Revised Federal Dilution Law

The Trademark Dilution Revision Act (TDRA) attempts to reform and clarify federal dilution law. Overall, the statute clarifies the language in many of the subparts of the Act. The primary amendments to the TDRA provide: (1) only a showing of “likelihood of dilution” is required to entitle a trademark owner to relief, as opposed to the “actual dilution” standard the Supreme Court endorsed; (2) “distinctive” marks and “famous” marks are treated separately rather than continuing the FTDA’s similar treatment of distinctive and famous marks, (3) two types of dilution actions are desired, dilution by blurring and dilution by tarnishment; and (4) to prove dilution of unregistered trade dress, the party asserting dilution must establish that the trade dress is not functional and that the trade dress’s fame is not derived from use in conjunction with a trademark.2

First, the TDRA entitles an owner of a famous or distinctive mark to relief if it can establish a likelihood of dilution. This amendment to the statute overturns the decision of the Supreme Court in Moseley, which stated that the trademark owner of a famous mark had to establish actual dilution, and makes it less burdensome for the owner of a famous, distinctive mark to make a showing of dilution sufficient to obtain relief.3

Second, the TDRA defines a “famous” mark as one “widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner,” and provides a list of factors that a court may consider in determining if a mark is famous. The relevant factors that the court “may consider” in making the determination as to the mark’s fame includes: (1) the duration, extent and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties; (2) the amount, volume and geographic extent of sales of goods or services offered under the mark; (3) the extent of actual recognition of the mark; (4) whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the Principal Register.4 This amendment is a departure from the FTDA in that it separates distinctiveness and fame. Whereas the FTDA provided a non-exclusive list of factors that could be used in determining distinctiveness and fame, the TDRA’s list focuses only on fame. Moreover, the TDRA specifically provides that marks having acquired distinctiveness qualify for relief under the statute, should the other requirements of the statute be met. Moreover, the language in the TDRA that a mark is famous if it is “widely recognized by the general consuming public” excludes marks that are famous only within a niche market.

Third, the TDRA clearly provides for two types of dilution claims: dilution by blurring and dilution by tarnishment. As discussed earlier, this change represents a departure from the FTDA and the Supreme Court’s interpretation of the statute, in which it was unclear whether a cause of action under tarnishment existed. Dilution by blurring is defined as “association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark.” The TDRA provides six relevant, non-exclusive factors that a court should consider when determining whether dilution by blurring has occurred: (1) the degree of similarity between the mark or trade name and the famous mark; (2) the degree of inherent or acquired distinctiveness of the famous mark; (3) the extent to which the owner of the famous mark in engaging in substantially exclusive use of the mark; (4) the degree of recognition of the famous mark; (5) whether the user of the accused mark or company name intended to create an association with the famous mark; (6) any actual association between the accused mark or company name and the famous mark.5 The statute defines dilution by tarnishment as “association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.”6

Fourth, the TDRA addresses dilution of unregistered trade dress, which the FTDA did not include, and provides that there can be protection under the TDRA only if the trade dress is distinctive and famous independent of its use with a trademark. If the fame and distinctiveness of the unregistered trade dress is tied to a trademark, then the trade dress is not protected under the TDRA.7

The TDRA also supplements other parts of the FTDA. For example, it reinforces the “fair use” defense through the addition of language that defines fair use to include “nominative or descriptive fair use, or facilitation of such use.” Furthermore, the new amendments to the TDRA provide more detailed guidance as to when other remedies beyond injunctive relief are available for instances of willful infringement incorporated in the TDRA.

Conclusion

The amendments incorporated in the TDRA represent noteworthy attempts to reform federal dilution law. They appear to create an advantage for owners of marks that can establish the requisite level of fame or distinctiveness to assert claim for dilution. However, the revised definition of what may be regarded as a “famous” mark appears to narrow the pool of marks that can meet that definition and thereby be protected under the statute. We will soon see how courts are interpreting these amendments, as these amendments are now effective.

back to top

U.S. Patent Office Launches New Accelerated Examination Program
By Christopher Hermanson

Introduction

Recently, a new Accelerated Examination Program1 was implemented by the United States Patent Office (USPTO) that applies to all petitions to accelerate the examination of a patent application except petitions that are based on an Applicant’s health, age (65 or older) or the Patent Prosecution Highway Pilot Program.2 Under the new Program, the USPTO says that it will attempt to allow or reject a patent application within one year from its filing date. It should be noted, however, that the one year period is merely a goal and is not petitionable or appealable if it is not met.

Background

Standard patent applications typically sit in the USPTO for several years before they are examined due to the tremendous backlog of patent applications. For example, in certain technology areas such as Interactive Video Distribution, a patent application is expected to take over four years from the filing date of the application before a first action is received from the USPTO.

Prior to the new Program, a patent applicant could expedite examination of their patent application by filing a petition, to make the application special. In order to file the petition however, the patent applicant or the patent application had to fall within one of several categories. For example, if a patent applicant was very ill or if the patent application was directed at counter terrorism or improving the environment, the patent applicant could file a petition to make its patent application special and move its application to the front of the pile for examination. Alternatively, a patent applicant could file a petition to make special with a fee and basically perform much of the examination work on their own to expedite examination. These petitions, however, did not expedite initial application processing or post-allowance publication. Additionally, the USPTO did not establish any type of examination time targets for applications filed with a petition to make special.

The Requirements of the New Program

Although patent applications filed under the new Program have the opportunity to be acted on and examined by the USPTO in a much shorter time frame, there are several significant requirements that must be met for a patent application to qualify for the new Program. For example, to take advantage of the new Program, a patent applicant must do the following at the time of filing the application: (1) submit a petition and fee of $130.00; (2) limit the number of independent claims to 3 and the total claims to 20; (3) agree to have an interview with the examiner during the examination process; (4) conduct an extensive prefiling search for prior art; and (5) provide an Accelerated Examination Support Document (AESD) which must include (a) an Information Disclosure Statement that cites all prior art and also states whether any such prior art is disqualified, (b) show where each limitation of each claim is disclosed by each prior art reference; (c) explain how each claim is patentable over the prior art; (d) describe the utility of the invention in each independent claim; and (e) show where each limitation of claim is disclosed in the detailed description and drawings.

As is evident by the above list, the USPTO requires much more information for a patent application filed under the new Program than that of a standard patent application. The additional information is to be used by the examiner to focus on the key issues for examination.

Once a patent application qualifies for the new Program, there are special steps that will be taken, such as: a telephone interview will be conducted between the examiner and the applicant’s attorney prior to issuing a first action, all responses must be filed within one month for date of any action other than a final rejection or allowance, extensions of time are permitted only for sufficient cause, and an updated AESD must be filed for any amended or new claims that are not supported by the previously filed AESD.

Important Considerations

The main advantage of the Program is speed. The USPTO has stated that it will finally allow or reject a patent application filed pursuant to the Program within one year, thereby avoiding the current significant backlog of patent applications in the USPTO. However, there are several important considerations that should be taken into account before selecting the Program.

First, there is a question of whether the USPTO can actually live up to its commitment to issue an allowance or rejection in one year, particularly if a substantial number of applications enter the new Program.

Second, the USPTO has stated that the one year time frame is only a goal. Any failure to meet this goal by the USPTO is not a petitionable or appealable matter. Therefore, a patent applicant has no recourse if the one year time frame is not met.

Third, the cost of conducting the extensive search, preparing the AESD and other activities associated with the Program will likely be several thousand dollars.

Fourth, a narrower claim scope may result under the new Program, because an application is limited to a maximum of three independent claims and twenty total claims.

Finally, it will likely be easier for an accused infringer to defend lawsuits on patents issuing from the new Program, because of the additional statements and information that must be provided by the patent applicant’s attorney during prosecution. Because of the foregoing, we will not file a patent application on behalf of any client under the Program unless we receive the client’s specific instructions in writing to do so.

Conclusion

There are several significant considerations and strategies involved in filing a patent application under the new Accelerated Examination Progam. Specifically because of the significant amount of work and costs to prepare and file a patent application under the new Program, patent applicants should fully consider all of the potential benefits and shortcomings of the new Program before proceeding. If you want more information about the new Program or have any questions, please call us.

back to top

Marketing on or Through Blogs Poses New Legal Issues
By Bart A. Lazar

Over the past year or so, blogs have gone from strange Internet diaries to one of the most significant trends in marketing. The term “blog” is derived from “Web log” and is an individual website where entries are made in a diary or journal style. Everyone wants to know what the bloggers are saying about market trends and their products and services and how to use blogs for marketing.

Mind you, there is nothing wrong with a blog, but there are some legal issues that should be considered when developing a commercial blog or providing financial support to a blog or blogger. These issues have not yet been the subject of legal proceedings, but they will soon enough. Two of the main concerns regarding blogs are the potential for inadvertent leaking of trade secret information and the potential for false or deceptive advertising claims that could arise from blogs.

Don’t Disclose Confidential or Valuable Information on a Blog

Although the return on investment of a blog is currently the subject of debate, it is often the goal of a marketing blog is to get consumers or the media excited about a product or service. Additionally, companies like Microsoft permit or encourage its employees to create blogs because blogs help to personalize a company that would otherwise be viewed as a faceless business enterprise. The employee talks (or types) about what is going on at the company and at his or her desk. This can be an exciting “inside” look at the company. However, it is important that the blogger does not reveal too much inside information. Bloggers could unknowingly reveal confidential information, such as information about new customers before a deal is signed, confidential terms of an agreement, new product developments before they are complete or publicly announced new advertising campaigns or other confidential or trade secret information. Such information could be used by competitors to the blogged company’s detriment. Therefore, it is important that an internal blogger understand the limitations on what information can and cannot be put in the blog.

Could the Blog be Viewed as an Advertisement?

Any blog or blogger supported by a company for marketing purposes could potentially be viewed as an advertisement. However, it is still unclear whether and to what extent a blog would be subject to traditional advertising and marketing laws. Assuming a blog is created or supported by a company for marketing purposes, theoretically the same rules could govern. For example, if a blogger makes a false statement about a competitor’s product, would it be considered false advertising? Typically, individual opinions are not subject to liability because they are not statements of fact. However, the blog could be looked at in the same way as any advertisement. The line between First Amendment protected speech and advertising can get blurry.

The First Amendment applies much more to individual speech than it does to commercial speech. Therefore, a supposedly opinionated citizen has more leeway to state his or her opinion than a paid endorser. Therefore, the more a blog veers towards a commercial message supporting a product or service, the more likely it would seem that the contents of the blog, even though superficially created by an individual, would be subject to legal scrutiny and could be challenged as improper if those contents include false or unsubstantiated statements of fact or improper comparisons.

Is the Blogger a Paid Endorser?

There are a couple of factors which seem to make a blog appear to be more commercial in nature.

One key issue is whether the blogger is compensated by a company for creating the blog. If a blogger is paid, the individual could be treated in the same way as a paid endorser. The Federal Trade Commission (FTC) has detailed guidelines on endorsements (available at http://www.ftc.gov/bcp/guides/endorse.htm) and the Word of Mouth Advertising Association (WOMMA) has an ethical guide, which apply to a variety of situations in which material facts concerning a blogger’s relationship to a product or service promoted in the blog would need to be disclosed. Additionally, more and more bloggers are posting disclaimers notifying the viewer that the person is being compensated for creating and maintaining the blog. There are still some very grey areas, such as whether an employee that creates a blog on his or her own time without receiving additional compensation, or a blogger who receives free product, meets the criteria of receiving compensation. After all, record and film reviewers have always received free product and admissions. Though there may not be any express rules today, the rule of thumb should be that the blog should make clear to a reader what role the blog or blogger plays vis-à-vis products, services or companies it discusses.

Another issue is whether the company exercises control over the content of the blog. This could create a conflict concerning the actual content of the blog. A company whose employees are encouraged and compensated to create blogs could be caught in the middle of a dilemma as to whether or not to assert control over the material appearing in the blog. If a company exercises control, it is more likely to be held responsible and liable for acts of copyright infringement, trademark infringement and false advertising committed by the blog operator. This is the same kind of quandary Internet service providers like Yahoo® have had to deal with since the beginning of the Internet.

While there are no hard and fast solutions at this time as to how to deal with company bloggers, one way to deal with a company-employee blogger may be to provide the blogger with training regarding what is proper and improper to post on a blog, and what the company will permit in the blog. The company should be careful not to exercise too much control over the content of the blog, lest it be held responsible for the content of the blog. Blogs should be addressed on a case by case basis or, at least, the content of the blog should be reviewed by the company before it is published. In this way, the company can try to make sure that the blogger does not inadvertently damage the company by posting improper information on the blog. Furthermore, the company should also try to avoid the potential additional liability that advance content review could bring.

Conclusion

Ultimately, the question may not be “to blog or not to blog,” but how to make blogs work for your company. By keeping legal considerations in mind, hopefully blog marketing will not pose an unreasonable risk to a company’s business.

back to top

Supreme Court Weighs in on Key Patent Standard
By Christopher Hermanson

In November 2006, the Supreme Court heard oral arguments in KSR International Company v. Teleflex, Inc.1, which is a case that could significantly change the patent landscape. The issue on appeal to the Supreme Court is whether the Federal Circuit’s “teaching-suggestionmotivation test,” which is used to determine whether an invention is “obvious” and, therefore, unpatentable, is inconsistent with Supreme Court precedent.

During the examination of a patent application, one or more claims in the patent application may be rejected based on obviousness. An obviousness rejection is typically based on the information found in a combination of prior art references (as opposed to a single reference). In the obviousness test, the question is whether, in light of the prior art and references which are sought to be combined, the claimed invention would have been obvious to a person of ordinary skill in the art at the time the invention was made. The person of ordinary skill in the art is presumed to have available all known prior technology (known in the patent field as “prior art”), including, of course, the prior art to be combined.

The Federal Circuit uses the so-called “teachingsuggestion- motivation test” (the TSM Test) to determine whether it would have been appropriate for a person of ordinary skill in the art to render the claimed invention obvious. Specifically, the TSM Test requires that there be some teaching, suggestion or motivation, either in the references themselves, or in the knowledge generally available to one of ordinary skill in the art, to make a combination of the references “obvious.” If there is no teaching, suggestion or motivation, then, according to Federal Circuit, the prior art references cannot be combined to invalidate the patent.

The KSR International Company v. Teleflex, Inc. case centers on this issue. Teleflex owns U.S. Patent No. 6,237,565 (the ‘565 patent) which is directed to an adjustable pedal assembly for use in vehicles having electronically controlled engines powered by an electronic throttle control. The gas pedals are “adjustable” pedals whose resting position can be moved or adjusted relative to a driver’s seat position. These types of pedals permit shorter drivers to operate a motor vehicle with the driver’s seat pushed further back from the steering wheel and airbag than may be possible with non-adjustable pedals. Such pedals also allow taller drivers to achieve a more comfortable driving position.

Teleflex sued KSR for infringement of claim 4 of the ‘565 patent. Claim 4 is directed to an adjustable pedal assembly for use with automobiles having engines controlled electronically by an electronic throttle control. The electronic throttle control responds to the movement of the gas pedal and generates an electrical signal corresponding to the position of the gas pedal. Specifically in claim 4, the electronic control is mounted to the support bracket of the assembly, which avoids movement of the electronic control during adjustment of the pedal’s position.2 In response, KSR filed a motion for summary judgment stating that claim 4 is unpatentable and invalid based on obviousness in view of the combination of two prior art references consisting of U.S. Patent no. 5,010,782 to Asano, which discloses the adjustable pedal assembly of claim 4, and an “off-the-shelf, modular electronic pedal sensor that was designed to engage the pivot shaft of any type of gas pedal.”

The district court granted KSR’s motion, finding that claim 4 was obvious. The Federal Circuit then vacated the district court’s decision and stated that the district court failed to properly apply the TSM Test to determine the propriety of combining the references.

KSR appealed to the Supreme Court, stating that the Federal Circuit ignored Supreme Court precedent which does not require application of any TSM Test to find a patent to be invalid.

During oral argument in the KSR case, certain justices of the Court suggested that they may favor a bright line rule. Specifically, certain justices stated that if known elements are combined to form an invention, and those elements are functioning in the way that they are meant to function, then any claims directed to that combination should be rejected, regardless of whether there is a “teaching, suggestion or motivation” in the references to make such a combination. Certain justices indicated that the Federal Circuit’s TSM Test may be too patent friendly and result in too many “junk patents” being issued, which would stifle competition. Chief Justice John Roberts, Jr. said that the TSM Test is “Federal Circuit jargon” and is “inflexible” and “worse than meaningless.” Justices Bryer and Scalia added that they don’t understand the test or how to apply it. Justice Scalia further stated the test includes “three imponderable nouns” and called it “a lot of gobbledygook.”

Judge Michel, the Chief Judge of the Federal Circuit, responded to the Supreme Court justices’ comments by stating that “[t]he judges of our court are quire clear on what it [the test] is and how to apply it.”

Some believe that the Federal Circuit’s TSM Test makes it too difficult to challenge many patent claims, regardless of how small the differences are between a claimed invention and the prior art and how “simple” it would be to combine prior art references to arrive at the claimed invention. Others warn that creating a completely new test and dumping the Federal Circuit’s TSM Test could cause millions of patents, which were previously upheld under the TSM Test, to be challenged in court.

If history is any indicator, the Supreme Court will likely reject the Federal Circuit’s TSM Test in favor of its own precedent. While it may not completely reject the TSM test, the Supreme Court is likely to modify the test so that apparently simple, obvious combinations of the prior art cannot be patented merely because the prior art references do not specifically “teach,” “suggest,” or “motivate” one to make, the combination.

It is clear that the decision in this case will have a profound effect not only future patent application filings and issued patents, but on pending and future patent litigation as well. A reversal of the Federal Circuit’s decision could lead to fewer patents and a much more difficult battle by patent applicants to overcome obviousness rejections during the prosecution of patent applications in the United States Patent and Trademark Office. Because of its impact, many patent owners and attorneys eagerly await the Supreme Court’s decision, which is expected to come later this year.

back to top

Other IP Announcements
Litigators Win Copyright Jury Verdict

Congratulations to Chicago attorneys Tom Piskorski and Joe Lanser who won a jury verdict in a copyright infringement case in the Central District of Illinois. We represented the defendants. The plaintiff was a professor that created teaching materials while she was employed at the University of Illinois College of Medicine. As a professor, she created certain teaching materials that were distributed over the years to students at the College of Medicine. In 2003, she resigned less than a month before classes were to begin and another professor “stepped into her shoes” and taught the classes, and therefore necessarily used some of her teaching materials, which she registered with the Copyright Office in July 2003. In Dec. 2003, she filed a copyright infringement lawsuit, alleging direct infringement against the professor, and contributory infringement against the Regional Dean. The jury found that while the professor owned some of the teaching materials under the University’s General Rules regarding copyright ownership, the second professor’s use of such materials to teach the course was fair use under the Copyright Act, and, therefore, not an infringement.

New I.P. Personnel
Washington, D.C.

We are pleased to welcome Sunwoo Lee, Ph.D. to our Washington office along with his colleagues Victoria Hao, associate; Baldine B. Paul, Ph.D., patent agent; and Donald L. Monin, Jr., patent agent. Their professional descriptions are provided below.

Sunwoo Lee, Ph.D.
Sunwoo Lee is an equity partner. Sunwoo counsels domestic and foreign clients ranging from start-ups to Fortune 500 companies with respect to all aspects of intellectual property law. His practice includes patent litigation, counseling, patentability and infringement/validity opinions, due diligence, licensing and agreement work, and patent portfolio strategy planning, acquisition and management. He has a comprehensive background and technical expertise in the areas of electrical engineering and materials science, including semiconductor, display, multimedia, telecommunication and automobile technologies. Sunwoo received his B.S. in Metallurgical Engineering from Hanyang University in South Korea, his M.S. in Materials Science & Engineering from the Stevens Institute of Technology, his Ph.D. in Solid State Science & Technology from Syracuse University and earned his J.D. from George Mason University School of Law. He is admitted to practice before the United States Patent and Trademark Office and is licensed to practice in Maryland and the District of Columbia.

Victoria Hao
Victoria Hao is an associate. Victoria’s practice concentrates on intellectual property matters with an emphasis on IP portfolio management, IP-related litigation, patent prosecution, and trade secret issues. Her experience also encompasses proceedings in U.S. District Courts and patent-based unfair trade practice investigations before the International Trade Commission. She is a former patent examiner for the United States Patent & Trademark Office; she received her B.S. in Electrical Engineering from the University of Maryland, College Park and earned her J.D. from The George Washington University Law School. Victoria is admitted to the bar in the District of Columbia and Maryland and is a Registered Patent Attorney with the U.S. Patent & Trademark Office.

Baldine B. Paul, Ph.D.
Baldine Paul is a patent agent. He has prosecuted patent applications in a wide range of technical areas, including all types of flat panel displays, semiconductors, such as OLEDs, micro-electronic circuits, LCDs, communications systems, and image compression. As a Research Scientist, he contributed to advances in Video Compression, Video/Multimedia Communications over Packet Networks, Video Conferencing over Switched/Packet Networks, and Feature Detection in Motion Video Sequences. Baldine is a Registered Patent Agent with the U.S. Patent & Trademark Office. He has a B.S. in Electrical Engineering from Florida A&M University, an M.S. in Electrical Engineering from Florida A&M University, a Ph.D. in Electrical Engineering from the Georgia Institute of Technology and (expected in 2007) will earn his J.D. from George Washington University.

Donald L. Monin, Jr.
Donald Monin is a patent agent. He prosecutes and drafts patent applications in solid state device related technologies and systems related to the use of solid state devices. He has prosecuted patent applications pertaining to optical guidance systems, telecommunication components, satellite emitters/receivers, optical modulators, radar systems, all types of flat panel displays, memory devices, transistors and lasers. He has drafted numerous patent applications pertaining to semiconductor devices, methods of manufacturing semiconductor devices, telecommunication networks/equipment, guidance systems, optical modulators, infrared imaging systems and radar systems. Donald was a Patent Examiner in the United States Patent & Trademark Office for more than a decade in the area of active solid state semiconductor devices and the method of making them. He is a Registered Patent Agent with the U.S. Patent & Trademark Office and has a B.S. in Electrical Engineering from the University of Missouri-Columbia.

back to top

Footnotes

The Trademark Dilution Revision Act of 2006: Rewriting Federal Trademark Dilution Law

1. Moseley v. V. Secret Catalogue, Inc., 537 U.S. 418 (2003)
2. 15 U.S.C. §1125(c)
3. 15 U.S.C. 1125(c)(1)
4. 15 U.S.C. 1125(c)(2)(A)
5. 15 U.S.C. §1125(c)(2)(B)
6. 15 U.S.C. §1125(c)(2)(C)
7. 15 U.S.C. §1125(c)(4)

back to top

U.S. Patent Office Launches New Accelerated Examination Program

1. Details regarding the Accelerated Examination Program can be found on the USPTO’s website at http://www.uspto.gov/web/patents/accelerated
2. Under the Patent Prosecution Highway Pilot Program (PPHPP) between the USPTO and the Japanese Patent Office (JPO), an applicant receiving a ruling from either the JPO or the USPTO that at least one claim in an application is patentable, may request that the other office fast track the examination of corresponding claims in corresponding applications. The PPHPP will leverage fast-track patent examination procedures already available in both offices to allow applicants in both countries to obtain corresponding patents faster and more efficiently.

back to top

Supreme Court Weighs in on Key Patent Standard

1. 126 S.Ct. 2965 (2006) (No. 04-1350).
2. Teleflex, Inc. v. KSR Int’l Co., 119 Fed.Appx. 282 (Fed. Cir. 2005), cert. granted, 126 S.Ct. 2965 (2006) (No. 04-1350).

back to top

 Download Intellectual Property Report - April 2007

This newsletter is a periodical publication of Seyfarth Shaw LLP and should not be construed as legal advice or a legal opinion on any specific facts or circumstances. The contents are intended for general information purposes only, and you are urged to consult a lawyer concerning your own situation and any specific legal questions you may have. Any tax information or written tax advice contained herein (including any attachments) is not intended to be and cannot be used by any taxpayer for the purpose of avoiding tax penalties that may be imposed on the taxpayer. (The foregoing legend has been affixed pursuant to U.S. Treasury Regulations governing tax practice.) Copyright © 2008 Seyfarth Shaw LLP All rights reserved.