Blueprint of a gear train.

 Robert J. Yarbrough
Patent Attorney

 Patents - Inventions - Trademarks 

Newsletter Issue 83 - January 2016

In this issue:

   'Super Bowl®' as a registered trademark
   Trademark in the appearance of a candy bar
   Attorney's fees in patent litigation

Ask Dr. Copyright...

Dear Doc:

Everywhere I look today, I see advertisements about what to eat during "THE BIG GAME". What's up with that?

Super Confused

Dear Sportsfan:

According to the National Football League, "Super Bowl®" is their registered trademark for television broadcasting services; television transmission services; distribution of television programming to cable and satellite television systems; distribution of television programs for others; cable television broadcasting; radio broadcasting; broadcasting programming on the Internet; information transmission via electronic communications networks; transmission of information through video communication systems; broadcasting services and provision of telecommunication access to video and audio content provided via a video on demand; streaming of audio material on the Internet; streaming of video material and podcasts on the Internet; electronic delivery of images and photos via a global computer network; providing multiple-user access to a global computer information network for the purpose of participating in interactive polling in the field of football; wireless communications services, namely transmission of text, graphics, data and entertainment information to mobile phones; mobile media and entertainment services in the nature of electronic transmission of entertainment media content.

The League has also registered the term for football helmets, cell phone covers, cell phone straps, special holsters and accessories in connection thereof for carrying cellular telephones, cell phone face plates, decorative magnets, prerecorded compact discs, audio tapes, videotapes and DVDs all featuring the sport of football, computer mouse pads, jewelry, watches, clocks, pins, earrings, necklaces, bracelets, belt buckles made primarily of precious metals, charms, money clips made primarily of precious metals, tie pins, rings, collectible coins, commemorative coins, posters, trading cards, series of books relating to football, magazines relating to football, newsletters relating to football, notepads, stickers, bumper stickers, paper pennants and greeting cards; printed tickets to sports games and events; pens and pencils, rub on decorative transfers, note paper, pictorial prints, picture postcards, art pictures, wrapping paper, paper table cloths, paper napkins, paper party invitations, paper gift cards; paper gift bags, paper decorations, collectible cards; collectible card and memorabilia holders, souvenir programs for sports events, toys and sporting goods, namely, plush toys, stuffed animals, play figures, golf balls, golf club covers, footballs, toy banks, playing cards, Christmas tree ornaments, balloons, jigsaw puzzles, and miniature helmets.

If anyone wants to use any logo or trademark of the League, she must apply to NFL Properties LLC for a license by submitting a 36 page application, and agree to pay guaranteed royalties that start at $100,000 per year and go up (way up) from there. If she does not want to pay NFL Properties, and does not want to get sued for trademark infringement, the only choice is to choose a euphemism like "Big Game", which is OK, unless you're a dentist from Indiana (just sayin').

Now, if you watch the Game-O Gigantico, you will also hear: "This telecast is copyrighted by the NFL for the private use of our audience. Any other use of this telecast or any pictures, descriptions, or accounts of the game without the NFL's consent is prohibited." So be sure not to tell anyone the score if you are asked.

Now, where are my nachos? It's time to watch the COLOSSAL CONCUSSION CONTEST.

The "Doc"

Trademark Disputes Can Be So Sweeeet!

In late 2013 we wrote about a trademark dispute between the Hershey Company and Mars Inc. over whether Mars had trademark rights in the cross-section of its Snickers candy bar. Hershey opposed the mark on grounds that it was merely descriptive, de jure functional, generic, and failed to function as a trademark.

The cross-section of Snickers, according to Hershey, was no more distinctive than the cross-section of other candy bars such as Oh Henry!, Baby Ruth, and Peanut Chews. We wrote that that this was "a great example of the interaction between aggressive branding, trademark law, and competitive forces." So, what happened to this sweet trademark dispute? Nothing! Since the case was filed, the Appeal Board's docket shows a series of routinely granted motions for an extension.

Recent events in the UK suggests that Hershey may have the upper hand in its dispute with Mars. In 2010, Nestlé attempted to register the shape of its KitKat candy bar in the UK. Cadbury chocolates opposed the registration on grounds that the shape of the candy bar was insufficiently distinctive to warrant a trademark registration. The European Court of Justice concluded that Nestlé's trademark application did not comply with European law. In a 2014 written opinion, the judge said that Nestlé had not used the candy bar's shape in promoting it and, in fact, packaged it in opaque wrapping that hid the allegedly distinctive shape. So, this means that consumers identified the source of the chocolate bar not by its shape but by the written trademark written on the candy's wrapper. The judge wrote that consumers may associate the shape with KitKat candy "but no more than that." This is not to say that shape cannot distinguish a candy product. According to the Guardian, which reported the story, the shapes of the Toblerone candy bar and Nestlé's Walnut Whip are both registered trademarks.

Under European trademark law (and under U.S. law), trademarks are deemed to be indicators of the source of goods and services. If consumers do not rely upon the product's shape to identify the product's source (i.e., who made it) then it would appear that the shape is not a trademark. Nestlé disagrees and it intends to appeal the European Court's decision. The Guardian quoted a European trademark attorney:

This seems to be a commonsense decision and perhaps public policy also played a part. Allowing registration of the KitKat shape would have given Nestlé invaluable monopoly and competitive advantage over other confectionery manufacturers, which is one of the reasons why Cadbury has been keen to stop them.

If we were to apply this reasoning to the Hershey - Mars dispute reported by us in 2013, Mars could not maintain trademark rights over the cross-section of its Snickers candy bar because the cross-section is invisible to the consumer before he buys and bites into it. Let's see what happens.

Want to Collect Attorney's Fees? Explain Why You Don't Infringe! Supreme Court seal

Most parties to litigation have to pay their own attorneys' fees. The patent statute includes an exception - in 'exceptional' circumstances, the successful party in patent infringement litigation can collect attorneys' fees from the losing party.

Not every losing litigant is liable for the other party's fees. The reasonableness of the party's litigation position and the unreasonableness of the party's conduct are factors considered by the trial court. Plaintiffs who perform no investigation, have no facts to back up their allegations, or who make unreasonable interpretations of their patent claims have been tagged for fees.

The case of Lumen View Tech. v, Inc, is illustrative. Lumen View was a non-practicing entity that was created to acquire a particular patent and after acquisition immediately initiated multiple lawsuits for infringement. The trial judge said:

No reasonable litigant could have expected success on the merits. ... [T]he most basic pre-suit investigation would have revealed this fact. Not only that, FTB's attorneys informed Lumen of the baselessness of the suit from the onset of litigation and repeatedly sought clarification as to the nature of the alleged infringement.

The trial judge clearly was offended by Lumen's conduct:

...Lumen was motivated... by its plan to extract a nuisance settlement from FTB on the theory that FTB would rather pay an unjustified license fee than bear the costs of the threatened expensive litigation. ...The nature of Lumen's complaint, the absence of any reasonable pre-suit investigation, and the number of similar lawsuits filed within a short time frame all indicate that Lumen's instigation of baseless litigation is not isolated to this instance, but is instead part of a predatory strategy aimed at reaping financial advantage from the inability or unwillingness of defendants to engage in litigation against even frivolous patent lawsuits.

The judge found the matter 'exceptional' and awarded attorneys' fees of $149,000 to Findthebest; however, the judge was not done. She doubled the award to almost $300,000.00 to deter further frivolous litigation. On appeal, the Court of Appeals for the Federal Circuit affirmed the trial court's finding of an 'exceptional' case warranting attorneys' fees, but reversed the doubling of the damages because enhanced fee awards are not authorized by the statute.

The bottom line: if you're a patent infringement plaintiff, investigate your case before you file and be prepared to show that the defendant infringes. If you're an infringement defendant that does not infringe, explain that fact to the patent owner early and often.

Robert J. Yarbrough was awarded an 'AV' (highest possible) rating by the Martindale 
			Hubbel attorney rating agency.