Federal Circuit Tosses Dog Jersey Patent as Obvious

by Sheldon Mak & Anderson on April 18, 2014

The Federal Circuit Court of Appeals has affirmed the dismissal of a patent infringement lawsuit involving sports jerseys for dogs, finding that a lower court properly held that the patents were obvious in light of prior art and thus invalid.

In the case of MRC Innovations Inc. v. Hunter Manufacturing LLP, MRC was the owner by assignment of two patents involving dog apparel.  One was for a football jersey for a dog, and the other was for a baseball jersey.

Hunter is a retailer of licensed sports products for consumers (and their pets), including pet jerseys.

Before September of 2009, Hunter purchased its pet jerseys from inventor Mark Cohen, who later assigned his patent rights to MRC.  Cohen also sold unpatented dog jerseys, including one with the logo of the Philadelphia Eagles.

In 2010, Cohen told Hunter that he no longer intended to do business with them because Hunter was having difficulty making payments.  Hunter then sought proposals from other companies to manufacture and supply pet jerseys and reached an agreement with CDI International.

Cohen’s pet jersey patents were issued in 2011.  MRC sued Hunter and CDI, and the district court granted summary judgment for the defendants on the grounds that the patents were invalid as obvious under  35 U.S.C. § 103(a).

MRC appealed, and a three-judge panel of the Federal Circuit affirmed the dismissal, saying that the dog jersey designs would be obvious to a skilled designer of pet jerseys.

Obviousness is a question of law that is reviewed de novo.  The analysis is based on the following factors:

  • The scope and content of the prior art,
  • The level of ordinary skill in the art,
  • The differences between the claimed invention and the prior art, and
  • Objective evidence of non-obviousness.

The court compared Cohen’s ‘488 patent (for a football jersey) to his previous unpatented Eagles dog jersey.  Key similarities included:

  • an opening at the collar portion for the head,
  • two openings and sleeves stitched to the body of the jersey for limbs,
  • a body portion on which a football logo is applied,
  • mesh and interlock fabric, and
  • ornamental stitching.

The court also acknowledged the differences between the designs:

  • the patented design had a V-neck collar whereas the Eagles jersey had a round neck;
  • the patented design contained an interlock fabric panel on the side portion of the design rather than mesh; and
  • the patented design contained additional ornamental stitching on the rear portion of the jersey.

The district court concluded, and the Federal Circuit agreed, that the overall visual impression was “basically the same.”

If you are preparing to file a design patent and want to know what features of the design you can protect, contact our office to arrange a free initial consultation with one of our patent attorneys.

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge - and it needs protection. Recognized as one of the country’s “Best Law Firms” by U.S. News and Best Lawyers, Sheldon Mak & Anderson was established in 1983 and is one of Pasadena’s oldest law firms. Our full-service IP firm provides local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) or email us at tri@usip.com to find out how we can provide powerful protection for your unique ideas.

We have offices conveniently located in Pasadena (626-796-4000, 100 Corson Street Third Floor, Pasadena, CA 91103-3842);  Riverside (951-787-7770, 5885 Brockton Avenue, Riverside, CA 92506-1863); Upland (909-946-3939, 222 N. Mountain Avenue, Suite 210, Upland, CA 91786-5714); and Orange County (855-874-3327, 2102 Business Center Drive, Suite 130, Irvine, CA 92612-1001).

Disclaimer: We fully comply with all laws related to attorney marketing and this posting is considered an advertisement.

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Trademark Appeals Board Defines when Catalogs Are Merely Advertising

by Sheldon Mak & Anderson on April 17, 2014

The Trademark Trial and Appeal Board (TTAB) of the US Patent and Trademark Office has provided an analysis of the elements required to convert a catalog from “mere advertising” to an acceptable “point of sale” specimen for the purpose of trademark registration.

The case of In re Tsubaki Inc. involved U.S. Tsubaki’s use-based trademark application for the mark TSUBAKI: THE CHOICE FOR CHAIN for “industrial machine parts, namely, chains and sprockets.”

The Trademark Examining Attorney refused registration based on sections of the Trademark Act that require an applicant to submit a specimen showing proper trademark use.  The Examining Attorney contended that the catalogues submitted by Tsubaki were not acceptable to show the use of the mark in connection with the goods because they were merely advertising material.

Under Section 45 of the Trademark Act, a mark is deemed to be in use in commerce on goods when:

  1. it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and
  2. the goods are sold or transported in commerce.

Under Trademark Rule 2.56(b)(1),

A trademark specimen is a label, tag, or container for the goods, or a display associated with the goods. The Office may accept another document related to the goods or the sale of the goods when it is impracticable to place the mark on the goods or packaging for the goods.

According to the Trademark Manual of Examining Procedure (TMEP),  “Folders, brochures, or other materials that describe goods and their characteristics or serve as advertising literature are not per se ‘displays’” and “[i]n order to rely on such materials as specimens, an applicant must submit evidence of point-of-sale presentation.”

Also according to the TMEP, “[i]n appropriate cases, catalogs are acceptable specimens of trademark use,” but catalogs that do not “(1) include[] a picture or a sufficient textual description of the relevant goods; (2) show[] the mark in association with the goods; and (3) include[] the information necessary to order the goods” may constitute “mere advertising” material and thus not qualify.

In the Tsubaki case, the TTAB explained that catalogs can serve as acceptable specimens of trademark use where they include at least the following:

  • a picture or sufficient textual description of the relevant goods,
  • the mark in association with the goods, and
  • information necessary to order the goods.

With respect to the last factor, a phone number, URL, or mailing address in an ad describing a product, standing alone, is not sufficient.

The TTAB concluded,

After reviewing applicant’s catalogs, prospective customers are not yet at the point of purchase and would need to contact applicant to obtain additional information. It is only after obtaining such information, which is not provided on the specimens, that the purchaser would be in a position to make a purchasing decision.

The specimens simply do not contain adequate information for making a decision to purchase the goods and placing an order and, therefore, we find that applicant’s specimens are advertisements that do not show the mark TSUBAKI: THE CHOICE FOR CHAINS used in commerce as a trademark for chains and sprockets. The mere listing of telephone numbers for corporate headquarters and a website URL does not turn what is otherwise an ordinary advertisement into a point-of-sale display or a “display used in association with the goods” and, thus, into a valid specimen showing technical trademark use.

If you have questions about the trademark application process, contact our office to arrange a free initial consultation with one of our trademark attorneys.

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge - and it needs protection. Recognized as one of the country’s “Best Law Firms” by U.S. News and Best Lawyers, Sheldon Mak & Anderson was established in 1983 and is one of Pasadena’s oldest law firms. Our full-service IP firm provides local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) or email us at tri@usip.com to find out how we can provide powerful protection for your unique ideas.

We have offices conveniently located in Pasadena (626-796-4000, 100 Corson Street Third Floor, Pasadena, CA 91103-3842);  Riverside (951-787-7770, 5885 Brockton Avenue, Riverside, CA 92506-1863); Upland (909-946-3939, 222 N. Mountain Avenue, Suite 210, Upland, CA 91786-5714); and Orange County (855-874-3327, 2102 Business Center Drive, Suite 130, Irvine, CA 92612-1001).

Disclaimer: We fully comply with all laws related to attorney marketing and this posting is considered an advertisement.

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Tarantino Says Gawker’s Publication of Script Was Not Fair Use under Copyright Law

April 16, 2014

  At a hearing on Gawker’s motion to dismiss his copyright infringement claim, Academy Award-winning writer and director Quentin Tarantino contended that the site’s link to his screenplay for a Western called “The Hateful Eight” was not fair use. Gawker had included a hyperlink to the script posted by anonymous users on AnonFiles.com in its […]

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PTO Glossary Program Will Expedite Software Patent Application Process

April 15, 2014

The US Patent and Trademark Office is introducing a pilot program to use glossaries to speed up the processing of software-related patent applications. The program will launch on June 2 and run until December 12. The Glossary Initiative arose out of a Software Partnership Meeting held by the USPTO at UC Berkeley School of law […]

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Ninth Circuit Holds that Copyright Registration for Collective Work Includes Component Parts

April 14, 2014

  The Ninth Circuit Court of Appeals has ruled that copyright registration of a collective work also registers the component parts within it. The case involved Alaska Stock, a stock photography agency that registered large number of photographs with the copyright office at one time by registering CD catalogs of the photos.  For “name of […]

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In Lexmark Case, Supreme Court Says False Advertising Claims Not Limited to Competitors

April 11, 2014

  The US Supreme Court has ruled that standing in a federal false advertising case is not limited to the advertiser’s competitors.  The court held that it is sufficient for standing if the plaintiff has a commercial injury “flowing directly from the deception wrought by the defendant’s advertising.” The case arose out of a dispute […]

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