Author: socialated


TTAB Hears the Manufacturer-Importer Trademark Issue … Again

Written by: Mark Terry It’s an issue that comes up often. A manufacturer makes a widget and sells it to a U.S. importer, who registers the mark associated with the widget. The manufacturer later claims it owns the mark and seeks to cancel the importer’s trademark registration. As a Florida Trademark Lawyer, this is a situation I’ve seen more than once and I’m constantly looking for the courts’ and the Trademark Trial and Appeal Board’s (TTAB’s) take on this issue. The TTAB’s recent decision on this issue in the ZYTNIA vodka case affirms the widely held stance that it’s usually the registrant that wins. As

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What is the Burden of Proof when practicing before the Board of Patent Appeals? – Florida Patent Lawyer Blog

Written by Mark Terry In short, the answer is “by a preponderance of the evidence.” The Board of Patent Appeals and Interferences (BPAI) decision of Ex parte Hochsmann did a good job of highlighting this axiom. As a Miami Patent Lawyer, I found the Ex parte Hochsmann decision interesting because it reminded me of the burden I must carry when I practice before the BPAI. The case of Ex parte Hochsmann involved a chemical process including salt crystals. The principal issue in this appeal was whether Appellant had established that the Examiner erred in finding that the prior art reference would have disclosed a salt crystal. But

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Already-Existing Characteristic in Prior Art Composition is Obvious under 35 U.S.C. 103

Written by Mark Terry In an educational decision yesterday, the Board of Patent Appeals and Interferences decided in Ex Parte Nakamura that an already-existing, but unacknowledged, characteristic in a prior art composition is obvious under 35 U.S.C. 103(a) but rebuttable if there is evidence to the contrary. As a patent attorney in Florida with an active patent prosecution docket, I’m always on the lookout for decisions of the BPAI that divulge methods for fighting rejections. In this case, the Appellant claimed a composition of nickel and tin that has a characteristic of preventing copper from diffusing. The problem was that the Examiner found a

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Common Patent Prosecution Mishap: Failing to Address a 35 U.S.C. 112 Rejection – Florida Patent Lawyer Blog

Written by: Mark Terry Yesterday’s Board of Patent Appeals and Interferences (BPAI) decision in Ex Parte Lin reveals a common patent prosecution error -especially before the BPAI – failing to properly address a rejection. The case of Ex Parte Lin involved a photolithography invention. The Examiner rejected the claims under the 1st paragraph of 35 U.S.C. § 112 for failing to comply with the enablement requirement. According to the Examiner, the Specification disclosure would not enable a person with ordinary skill in this art (POSITA) to make or use, without undue experimentation, a “photomask with wavelength-reducing material throughout the full scope of the claimed

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Is the Registrant’s Financial Data Relevant to Damages in a Trademark Infringement Case?

Written by: Mark Terry How do you calculate damages in a Trademark Infringement case? Is the financial data of the Plaintiff relevant when calculating damages in a trademark infringement case? This is an issue that often comes up during the discovery phase of a trademark infringement case. As a Miami Trademark Attorney currently involved in multiple trademark infringement cases in the Southern District of Florida, the subject of calculating damages is always in the forefront of my mind. With regard to a federal trademark infringement claim under the Lanham Act, a Plaintiff can elect to recover actual or statutory damages pursuant to 15 U.S.C.

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The Value of Patents in the World of IT

Written by: Mark Terry Alibaba Group Holding Ltd. is preparing its estimated $16 Billion IPO by fortressing itself with patents. Although Alibaba has more than 1,900 issued patents and pending applications in Asia, it has also been aggressively filing patent applications in the U.S. China’s largest e-commerce company has obtained 102 U.S. patents, including 20 purchased from IBM Corp. Alibaba has 300 pending patent applications for technologies like product recommendations, payment processing and picture searches. Why the patent buying spree? If you’re an innovator like IBM, you obtain patents to protect the hard work and millions of dollars that has

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USPTO Commissioner Bob Stoll and Me

Written by: Mark Terry Last night I had the pleasure of attending a South Florida Intellectual Property Law dinner in Miami, Florida that featured a presentation by Commissioner Robert Stoll. Super nice guy, by the way. In a word, he killed. He knew exactly what to present to a group of patent practitioners and he has really changed my outlook regarding the Patent Office. Just some of the good news he presented: a program to decrease pendency to first action to 10 months a program to decrease TOTAL pendency to 20 months a First Action Interview program to encourage Examiner’s to initiate an

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Written by: Mark Terry PART TWO In general, a reexamination is the process by which a patent owner or third-party requests that a patent’s claim(s) be reviewed against other patents or publications (prior art) by the USPTO’s Board. A patent owner may initiate the process to ensure that they have a valid patent. Subsequently, the patent owner can either pursue infringers or sleep well at night knowing that the USPTO has affirmed the validity of their patent. On the other hand, a third party may want to request a reexamination to question the validity of a patent in order to

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TTAB Decides: “Heavy Burden” in Proving Fraud on USPTO

Written by: Mark Terry The Trademark Trial and Appeal Board (TTAB) has issued another decision highlighting the “heavy burden” in proving fraud on the USPTO during prosecution of a trademark application (Ex Parte Metal Gear). As a Florida Trademark Attorney, I constantly monitor TTAB decisions for golden nuggets that help me prosecute my client’s rights at the USPTO. The holding in this case illustrates how a “fraud on the USPTO” claim can and cannot be won. The Court in In re Bose Corp., 476 F.3d 1331, 91 USPQ2d 1938, 1939 (Fed. Cir. 2009), set out the relevant standard for proving fraud.

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Board of Patent Appeals Issues Key Claim Construction Decision

Written by: Mark Terry Last week, the Board of Patent Appeals and Interferences (BPAI) upheld a Patent Examiner’s rejection under 35 U.S.C. § 102(e) of a patent application for an invention that was claimed too broadly. As a Miami Patent and Trademark Attorney I follow BPAI decisions on a daily basis, and I constantly seek wisdom from the mistakes of others. At issue in Ex parte Tosey was a claim to enhance the initiation of a coupling between a wireless digital device and an “interconnected network”. The applicant argued that the terms “interconnect network” and “wireless network” are not synonymous as pertains to a

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