A PARTY MUST SHOW ITS ROYALTY RATE WITH SUFFICIENT EVIDENCE

On 5 February 2010, the Court of Appeals for the Federal Circuit decided ResQNet.com, Inc. v. Lansa, Inc.  The Court held that a plaintiff must present 'sufficient evidence' of its royalty rate.  Defendant has no burden to present or rebut evidence if Plaintiff has not presented at least 'sufficient evidence.'

Call Robert at 1-888-468-0444 with your questions on patent or trademark law.
http://www.sayfiepatents.com/

Dissecting a trademark into components is a proper way to show that there is no likelihood of confusion.

In Odom’s Tennessee Pride Sausage, Inc. v. FF Acquisition, L.L.C., 2009-1473, an opinion dated March 19, 2010, the Court of Appeals for the Federal Circuit reviewed a decision by the Trademark Trial and Appeal Board (“TTAB”), which discussed whether the defendant’s applied for mark, illustrated below,

                       Defendant’s U.S. Trademark Application Serial No. 77/148,503.

is likely to cause confusion with some of plaintiff’s marks, one of which is illustrated below.

Above is one of Plaintiff's registered marks.

The TTAB opined that,

“Sufficient distinctions exist between the registered marks considered by the board and the applied-for mark to create a different commercial impression. The marks differ in the size and shape of the boys’ hands and feet, the shape and style of their hats, and the fact that FF’s boy has a piece of straw in his mouth and shoes on his feet while Odom’s has neither.”

Plaintiff argued that the [TTAB] inappropriately dissected the marks into these components in performing its analysis.

However, the TTAB reasoned that,

“…it is these individual aspects that collectively create a difference in the overall impressions made by the marks. In re Nat’l Data Corp., 753 F.2d 1056, 1058 (Fed. Cir. 1985) (“[I]n articulating reasons for reaching a conclusion on the issue of confusion, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark . . . .”). As the board correctly concluded, the visual distinctions between the marks at issue here create unquestionably different commercial impressions, thereby precluding a finding of likelihood of confusion.”

Standard for proving fraud on a trademark applicant

In Enbridge Inc. v. Excelerate Energy Ltd., 92 U.S.P.Q. 2d 1537 (T.T.A.B. Oct. 6, 2009) the Trademark Trial and Appeal Board ("TTAB") , held that if a trademark application is filed with incorrect information, a registrant's claim of honest mistake and good faith correction, such as by filing an amendment, is sufficient to form a genuine issue of material fact on the issue of "intent to deceive."  And thus defeats a motion for summary judgment on fraud.

Microsoft hit with paying $240 million in damages

On 22 December 2009, the Court of Appeals for the Federal Circuit affirmed an award in favor of i4i Limited Partnership against Microsoft for $240 Million due to patent infringement.  The court stated that Microsoft never filed a pre-verdict JMOL, which prevented the damages award from being reviewed.

Lesson:  File a Rule 50 JMOL.

Contact The Patent Law Office of Robert J. Sayfie if you have any questions on patent or trademark law. 
Phone: 1-888-468-0444
URL: http://www.sayfiepatents.com/

Design Patent Infringement

In Richardson v. Stanley Works, Inc., Plaintiff and Defendant both obtained design patents for a device that can be used as a hammer, a crowbar, and a stud-climbing tool. The plaintiff’s invention is illustrated below:

Plaintiff, Richardson’s U.S. Patent D507,167.

The defendant’s patent is illustrated below:

Defendant, Stanley’s U.S. Patent D562,101.

In the opinion issued 9 March 2010 by the Court of Appeals for the Federal Circuit, the Court held that the defendant’s product did not infringe the claims of the plaintiff’s patent because:


(1) when the design has functional and ornamental aspects, it is entitled to a design patent whose scope is limited to the ornamental aspects alone and does not extend to any functional elements of the claimed article; and


(2) from the perspective of an ordinary observer familiar with the prior art, the overall visual effect of the defendant’s product is significantly different from the claims of the plaintiff’s patent.

Court imposes penalty against a party who indicated it's product was patented, when the party knew that it was not.

In a recent case, The Forest Group, Inc. v. Bon Tool Co., 2009-1044 (Fed. Cir. Dec 28, 2009), the Federal Circuit held that each article or product that is falsely marked, stating that it is patented when it is not, is subject to a fine of $500 per falsely marked article or product, under the statute 35 U.S.C. section 292.

Visit http://www.sayfiepatents.com/ to learn more about patent law, and how to contact Robert J. Sayfie, Registered Patent Attorney.

Did you know:

That you can not receive a U.S. patent if the invention was in public use or on sale in this country, for more than one year prior to the date of the application for patent in the United States. 35 United States Code 102(b).