Troy & Schwartz Attorneys-At-Law

In Trinity Info Media, LLC, et al. v. Covalent, Inc., the Federal Circuit Court of Appeals (CAFC) held that the patent claims were directed to an abstract idea of “matching users who gave corresponding answers to polling questions.” As such, they do not involve an inventive concept under § 101 and are patent ineligible.  The holding itself is not surprising based on previous case law in this post-Alice world.  The precedential decision is noteworthy because it addresses claim construction in the context of a 12(b)(6) motion to dismiss a patent infringement lawsuit on § 101 grounds.  This blog reviews the CAFC’s decision and ends with a discussion of the following two topics:

1. Could the invalidated claims have been written differently to avoid invalidation?
2. How does the proposed Patent Eligibility Restoration Act of 2023 address the § 101 boondoggle created by the courts?

BACKGROUND

Trinity sued Covalent for patent infringement asserting two patents –  nos. 9,087,321 and 10, 946,685.   Both patents are directed to a poll-based networking system that connects users based on similarities as determined through poll answering while providing real-time results to the users.   The later patent contains additional disclosures discussing progressive polling for ecommerce systems.

Covalent filed a motion to dismiss Trinity’s amended complaint, arguing that the claims asserted against it are invalid under 35 U.S.C. § 101.  The District Court for the Central District of California agreed with Covalent, finding that the claims do not improve computer functionality but instead use “generic computer components as tools to perform the functions faster than a human would.”

Trinity appealed the decision to the Federal Circuit, arguing that the dismissal was improper because the district court did not conduct claim construction and discovery before analyzing the claims under § 101 according to the Alice framework  articulated by the U.S. Supreme Court in Alice Corp. v. CLS Bank, Intl.  Citing its previous decisions, the CAFC disagreed, explaining that “[a] patentee must do more than invoke a generic need for claim construction or discovery to avoid grant of a motion to dismiss under § 101.  Instead, the patent holder must “propose a specific claim construction or identify specific facts that need development and explain why those circumstances must be resolved before the scope of the claims can be understood for § 101 purposes.”   Slip opinion at 7. Because Trinity did not identify a proposed claim construction or specific facts to be discovered that would change its analysis, the CAFC proceeded with analyzing Trinity’s asserted claims under the Alice framework.

Step 1 of the Alice Framework – The Claims are Abstract

In finding that the asserted claims are abstract, the CAFC stated: “A telltale sign of abstraction is when the claimed functions are mental processes that can be performed in the human mind or using a pencil and paper.   For example, in SAP Am., Inc. v. InvestPIC, LLC, the CAFC previously held that “[s]electing certain information, analyzing it using mathematical techniques, and reporting or displaying the results of the analysis . . . is all abstract.”   Slip opinion at 9.  Accordingly, Trinity’s independent claims are focused on “collecting information, analyzing it, and displaying certain results” which places them in the “familiar class of claims directed to patent ineligible material.”  Citing Elec. Power Group, LLC v. Alstom S.A., et al.  Slip opinion at 10.  Not surprisingly, the CAFC opined that “[a] human mind could review people’s answers to questions and identify matches based on those answers” and found that the independent claims of both patents are directed to an abstract idea.  As for the dependent claims, they merely add trivial variations of the abstract idea.

Trinity argued that “humans could not mentally engage in the same claimed process because “they could not perform ‘nanosecond comparisons and aggregate ‘result values with huge numbers of pools and members, nor could they select criteria using ‘servers, storage, identifiers, and/or thresholds.’” The CAFC noted that these arguments are not tethered to the asserted claims which do not require “nanosecond comparisons” or aggregating “huge numbers of pools and members.”   Slip opinion at 13.

In rejecting Trinity’s arguments, the CAFC cited its previous decisions where claims were found to be directed to a “forbidden” abstract idea when the claims required generic computer components or required operations that a human could not perform as quickly as a computer.   Moreover, Trinity’s claims relied on generic computing terms such as “data processing systems, processors, and memory.”   And even though Trinity emphasized the invention was intended for use with a hand-held device/mobile phone, such a device was viewed by the CAFC as being no different from a generic computer.  Slip opinion at 10.

Step 2 of the Alice Framework –  The Claim Elements Do Not Transform the Claim into a Patent-Eligible Claim

After finding that Trinity’s asserted claims are abstract, the Court proceeded with the second step of its Alice analysis. Here the CAFC concluded that the asserted claims do not ‘transform’ the claimed abstract idea into a patent-eligible claim.  In particular, the Court took issue with Trinity’s conclusory statements that the prior art did not include, “alone or in combination certain features, including (1) real-time matching based on progressive polling, (2) using match servers and a match aggregator, (3) using a mobile device, (4) displaying matches reviewable by swiping, and (5) using a mobile application. Under its precedent, the CAFC’s policy is to disregard conclusory statements under a Rule 12(b)(6) motion.  Slip opinion at 10.

The CAFC was left with viewing the claim limitations individually and in an ordered combination.  The Court concluded that the asserted claims do not add an inventive concept that would be “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.”  Trinity’s inventiveness arguments were found to merely reflect improved speed inherent with applying the abstract idea using a computer, or in this case a hand-held device.  Nor is there anything inventive in the ordered combination of elements because the asserted claims are organized in an expected was – receiving user information, asking the user questions, receiving answers, and identifying and displaying a match based on those answers.  Slip opinion at 18.  Nor did the CAFC find that the use of “multiple processors, match servers, unique identifications and/or match aggregator” transformed the abstract idea into an inventive concept in the application of an abstract idea.   The CAFC emphasized that has “ruled many times” that “invocations of computers and networks that are not even arguably inventive are insufficient to pass the test of an inventive concept.” Id.

DISCUSSION

Could the Claims Have Been Written in Such a Way So as to Overcome the § 101 Rejection?

It is not surprising that Trinity’s patents were invalidated in our post-Alice patent invalidation environment.  This environment favors infringers who refuse to pay a licensing fee to patent owners and instead pursue patent invalidation through the courts or through administrative proceedings involving the Patent Trial and Appeal Board (PTAB).

Are all computer-based inventions at risk?  Is the current environment fair for patents that have passed the USPTO’s own strict requirements which are now based on judicial exceptions and case law?  For example, patent no. ‘321 was granted in 2015 or a short time after SCOTUS’s infamous holding in Alice Corp v. CLS Bank, Intl.  Patent no. ‘685 was granted in 2021 after the USPTO had developed its first § 101 guidance for its examiners in 2019.   But the CAFC found that both of Trinity’s patents were invalid under its case law involving its and the U.S. Supreme Court’s judicially-created exceptions.

The patents’ independent claims used the words “comparing” and “generating,” two words that are trigger points for the courts to find a § 101 problem.  Merely making conclusory statements that the method “is done on a computer/process” and therefore is done in the “human mind” will not overcome a § 101 rejection.   Under current case law, this is so even if the method could never be practically performed by the human mind.  That is, the courts have not cared if length of time required by a human to achieve the same results would totally defeat the invention’s utility.

Drafting claims for a computer-based invention is no easy task.  Here, the invention did not improve the functioning of a computer to overcome the § 101 rejection.   The § 101 issue in Trinity may have been avoided if the independent claims had been drafted to emphasize how the computer system’s method incorporated the unique ID or claimed just how the likelihood of a match is determined.  Both approaches would have required reciting the steps of an algorithm.

Unfortunately, even with these changes, it is likely that the CAFC would have reached the same conclusion.  The CAFC and other courts have routinely found ineligibility by finding that: 1) the claims are not directed to a technological improvement (slip opinion at 14); and/or 2) the invention merely uses generic computers components as tools to perform functions faster than a human would.  Slip opinion at 5.   Trinity’s inventions are not directed to a technological improvement of the generic computer’s functioning.   Also, given enough time, humans could perform the matching steps no matter how impractical the time commitment.

And this takes us to Congress’s attempt to correct what the judicially-created exceptions to patent eligibility under § 101 have done to thwart innovation, encourage infringement, and hurt the ability of U.S. companies to compete globally.

The Patent Eligibility Restoration Act of 2023 – How It May Fix the § 101 Invalidation Landscape

Thankfully, there is some relief on the horizon through the bipartisan efforts of Senators Thom Tillis and Chris Coons.  On June 22, 2023, these Senators introduced their Patent Eligibility Restoration Act of 2023. This legislation is intended to bring clarity to U.S. patent law by eliminating many of the judicial exceptions to patent eligibility and providing clear guidance on determining patent eligibility especially in areas such as medical diagnostics, biotechnology, personalized medicine, AI, 5G, and blockchain.  The proposed legislation states that the following inventions shall not be eligible for patent prosecution:

• A mathematical formula that is not part of an invention comprising a useful process, machine, manufacture, or composition of matter;
• A mental process performed solely in the mind of a human being;
• An unmodified gene, as that gene exists in the human body;
• An unmodified natural material, as that material exists in nature; and
• A process that is substantially economic, financial, business, social, cultural, or artistic.

However, the legislation includes an important exception:

The processes described in 5 above shall not be excluded from eligibility for a patent if the process cannot be practically performed without the use of a machine (including a computer) or manufacturer. 

The legislation is intended to stop the courts from invalidating patents under § 101 while ignoring the elements of the claimed invention and/or treating them as conventional.  If enacted, the eligibility focus by the USPTO and the courts will be far more focused on the patentability factors involving sections 102 (novelty), 103 (non-obviousness), and 112 (definiteness) of the Patent Act which in the commentator’s opinion is where the focus should be.

Perhaps had this legislation already been in place, Trinity’s patents would not have been invalidated because the invention clearly cannot be practically performed without a computer.   On the other hand, one factor that will likely be litigated with the new legislation is what exactly constitutes “practically performed.”  Regardless, this legislation is a huge step forward, something that has been needed for a long time as the courts have effectively taken over Congress’s patent law regulatory role through judicially-created law.

Have a question on obtaining a U.S. or foreign patent or enforcing your rights as a patent owner? Contact us at 305-279-4740.  And be sure to check out our other patent law blogs at www.troyandschwartzlaw.com.

THANK YOU FOR YOUR INTEREST IN THIS BLOG.  AS USUAL THE CONTENT IS FOR INFORMATIONAL PURPOSES ONLY AND IS NOT LEGAL ADVICE.

© 2023 by Troy & Schwartz, LLC

Take Home Points

1. A distinctive registered trademark can become generic over time meaning it is no longer protectable as a registered mark. Such a mark can also be subject to cancellation.
2. Ceasing the opportunity to overcome negative press can alleviate bad press in the court of public opinion.

In 1978, the trademark TACO JOHN’S  was registered with the USPTO.  In 1989, the owner of the TACO JOHN’S mark received a registered mark for Taco Tuesday (Reg. No. 1572589).   In 2019, the current owner of both marks, Spicy Seasons, LLC, sent a cease-and-desist letter to Freedom Edge’s Brewery Co. for using the term “Taco Tuesdays” to advertise a taco truck that parks outside the brewery once a week.   Spicy Seasons had every right to do so as the owner of the registered mark, but Freedom Edge did not keep the matter private. Soon Facebook became the forum for litigating the matter in the court of public opinion via social media.

Then in March 2023, Taco Bell IP Holder, LLC, the owner of the TACO BELL mark and a competitor of Taco John’s restaurants, filed a petition with the Trademark Trial & Appeal Board (TTAB ) to cancel the Taco Tuesday mark on the grounds that the mark had become generic.  The cancellation petition is tongue-in-cheek and quite humorous.  For example, paragraph C under the Preface states: “The Registration potentially subjects Taco Bell and anyone else who wants to share tacos with the world to the possibility of legal action or angry letters if they say “Taco Tuesday” with express permission from the Registrant – simply for pursuing happiness on a Tuesday.  This violates an American idea: “the pursuit of happiness.”

Rather than participate in the cancellation proceeding, this month Spicy Seasons filed a Notice of Abandonment of the TACO TUESDAY mark with the TTAB, effectively ending the cancellation proceeding.  This business decision makes good sense for two reasons.  First, there was considerable negative press about Taco John’s “beating” up on small proprietors.  In doing so, Spicy Seasons seized on the opportunity to make amends in the arena of public opinion by announcing it was abandoning the mark and giving a substantial donation to Children of Restaurant Employees.  It also challenged Taco Bell to do likewise since they will not have to spend further legal fees on the cancellation proceeding.

Second and from a legal perspective, “TACO TUESDAY” has suffered from genericide because it has become too well known to still be identified with Taco John’s.  It is not unusual for an initial distinctive registered mark to become generic and lose its registered trademark status over time.   Two examples are:  DRY ICE (Originally a trademark of Dry Ice Corporation of America) and  ESCALATOR (Originally a trademark of Otis Elevator Company).   Once a mark becomes generic, it risks losing its ability to enforce its mark.  Not only has the term “Taco Tuesday” been used frequently across the country but the mark was also featured in the 2014 “The Lego Movie.”

Also note that the USPTO will not register a generic mark.   For example, a local store just calling itself “Boutique” for clothes would have no trademark rights to that identifier. The rationale for refusing the registration of generic marks is: since they describe common terminology for specific industries, generic terms are free to use by any brand owner in its development, marketing, promotion activities, etc.

In conclusion, Spicy Seasons chose to officially abandon its now-generic TACO TUESDAY mark.  Had  Spicy Seasons filed trademark infringement lawsuits, defendants could have sought cancellation of the mark by the court on generic grounds.

Waffle Wednesday anyone?

Have a question on obtaining a registered trademark nationally and/or internationally or enforcing your rights as a registered trademark owner? Contact us at 305-279-4740.  And check Susan’s reviews at www.avvo.com.  Be sure to check out our other trademark law blogs at www.troyandschwartzlaw.com.

THANK YOU FOR YOUR INTEREST IN THIS BLOG.  AS USUAL THE CONTENT IS FOR INFORMATIONAL PURPOSES ONLY AND IS NOT LEGAL ADVICE.

© 2023 by Troy & Schwartz, LLC

The blog provides a detailed analysis of the U.S. Supreme Court’s June 29, 2023 decision in Abitron Austria v. Hetronic International, a case which involves international trademark rights.   Justice Sotomayer’s concurrence, reading more like a dissent, is, in this commentator’s opinion, the correct legal application of the Lanham Act.

Quick Overview of Abitron’s Take Home Points:

1. More than ever before, trademark owners will likely need to protect their marks abroad by registering the mark in the countries in which the goods/services will be sold and/or even manufactured.
2. Contracts between U.S. companies and foreign parties need to clearly specify ownership and use of the relevant IP globally to clearly provide a contractual basis for trademark infringement liability related to conduct outside of the U.S.

Analysis

U.S. trademark law is governed by the Lanham Act (“Act”).  The Lanham Act was enacted at a time when international commerce was far less common than it is today. Sections 1114(1)(a) and 1125(a)(1) of the Act specify remedies for trademark infringement.  The former section pertains to situations when a person without the consent a trademark registrant uses in commerce a reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offer for sale, distribution, or advertising of any goods or services or in connection of such use is likely to cause confusion, cause a mistake or deceive with a registered is used in commerce.  The latter section pertains to situations where any person, who on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device or any false designation of origin, false, or misleading description of fact or false or misleading representation of fact is likely to cause confusion, cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person as to the origin, sponsorship, or approval of his or her goods.

Registered marks are enforceable under the laws of the country in which they are registered.  As for infringement activities, neither of the above referenced Lanham Act sections define what is meant by “in commerce.”  That is, does “in commerce” pertain to infringing activities of a U.S. registered mark only in the United States for a U.S. registered mark? Or does it “in commerce” include commerce within foreign jurisdictions?

The underlying case involved Hetronic’s radio remote controls, which are used to operate heavy-duty construction equipment, such as cranes.  An agreement between Hetronic and Abitron allowed Abitron to make and sell Hetronic-branded products that contained genuine Hetronic parts. In 2015, Hetronic sued Abitron and its affiliates in Oklahoma federal court, alleging they breached the contracts by making and selling products with unauthorized parts.   The district court awarded Hetronic a permanent injunction blocking Abitron from further infringement worldwide.  The jury’s $96 million dollar award was upheld by the Tenth Circuit Court of Appeals even though Abitron had argued that 99.98% of its infringing sales happened abroad.

In affirming the district court, the appeals court found that a significant amount of Abitron’s foreign sales of the infringing products ended up in the U.S. and Hetronic provided evidence that these sales caused confusion among U.S. customers and “even Abitron Germany’s own U.S. distributor.”  In finding for Hetronic, the appellate court also stated that the fact that only a small percentage of Abitron’s products made it into the U.S. was irrelevant.  “Otherwise, billion-dollar-revenue companies could escape Lanham Act liability by claiming millions of dollars of their infringing products from entering the U.S. represented only a fraction of their sales.”  The opinion also emphasized that the Lanham Act applied because Abitron “diverted tens of millions of foreign sales from Hetronic that otherwise would have ultimately flowed into the U.S.”

Abitron appealed to SCOTUS arguing that the Lanham Act is not applicable when infringement occurs outside of the U.S. for a U.S. registered mark and does not cause likelihood of confusion within the U.S.  Arbitron again emphasized its “small” percentage of U.S. sales.

SCOTUS construed the “in commerce” references in Sections 1114(1)(a) and 1125(a)(1) as providing no express statement of [the Act’s] extraterritorial application beyond U.S. borders or any other clear indication that [the Act] is one of the ‘rare’ provisions that do apply abroad. Having found that the Lanham Act provisions are not extraterritorial, SCOTUS next determined whether Hetronic’s claims involved domestic (i.e., in the U.S.) conduct.  According to the majority, Arbitron’s use in commerce (i.e., conduct) was not in the U.S.  As such, there could be no likelihood of confusion in the U.S and the Tenth Circuit’s decision was thus vacated.

Justice Sotomayer’s concurring opinion argued that the analysis should actually include a two-pronged approach.  She agreed that there is no indication that the Lanham Act’s “in commerce” provision has an extraterritorial reach.  However, a “domestic application of the statute can implicate foreign conduct in prong two of the analysis so long as the plaintiff proves a likelihood of confusion domestically.”   She concluded that the case should be vacated not because of the majority’s reasoning but because the Tenth Circuit and the district court did not apply the proper two-prong test.  As she emphasized, for a plaintiff to prevail on the second prong of such an analysis, the plaintiff must offer proof of likelihood of confusion by U.S. consumers as a result of the defendant’s extraterritorial infringing activities.  The majority’s statement that such a test would open the floodgates for confusion by the lower courts in applying the Lanham Act is thus misplaced.  Instead, the majority’s conduct-focused test on remand is improper because that test “is not supported by either the Lanham Act or this Court’s traditional two-step extraterritoriality framework.”

In reaching its conclusion, the Court did not rely on its decades-old previous decision on the Lanham Act’s extraterritorial reach in Steele v. Bulova Watch Co. Inc., 344 U.S, 280 (1952). That case involved both domestic conduct by a U.S. citizen and the likelihood of domestic confusion.  The Steele case involved a San Antonio, Texas resident who purchased unfinished Bulova watches and took them to Mexico for finishing.  When he learned that Bulova had not registered its mark in Mexico, he obtained a Mexican trademark which was later cancelled by the Mexican trademark agency.  His watches, sold in Texas and Mexico, were of inferior quality.

The Steele Court held that, “[w]here as here, there can be no interference with the sovereignty of another nation (because the defendant no longer had a Mexico-registered trademark), the District Court, in exercising its equity powers, may command persons properly before it to cease or perform acts outside its territorial jurisdiction.”

The Supreme Court in Abitron noted that the Steele and Abitron cases involve a different set of facts; in Steele, the plaintiff’s “in commerce” conduct within the U.S. was clear.  Even so, unfortunately, the Abitron decision now seemingly immunizes all trademark infringement that originates abroad regardless of whether that infringement (“the conduct”) also causes adverse effects (a damaging result”) in the U.S.   The various circuit courts of appeal had relied on Steele v. Bulova to develop different tests for applying the Lanham Act extraterritorially.  Will these courts now need to reevaluate their tests in light of the Arbitron decision?

Moreover, the Arbitron decision arhttps://www.law.cornell.edu/uscode/text/15/1125guably misses the Lanham Act’s point: that the focus should be on whether consumer confusion (the result) ultimately occurs in the U.S., not whether the defendant’s use (the conduct) was abroad or domestic.  SCOTUS in essence has established a bright-line test, overturning over 60 years of jurisprudence from the various circuits since Steele.  If the defendant’s use in commerce occurs abroad, then no claim can seemingly now be made under Abitron.  Yet with our global economy, the possibility of extraterritorial infringement has increased dramatically including promoting the importation of counterfeit goods into the U.S.  Abitron, as a foreign infringer, may not have intended that its problematic goods ever end up in the U.S., but some did as the district court case found.

The Act’s Section 1125(b) does cover importation of imported counterfeit goods (goods marked or labeled in contravention of the provisions of Section 1125(b) wherein such goods are not to be imported into the U.S. and may be seized by customs and border patrol.  The port of Miami alone seizes millions of dollars of counterfeit goods on an annual basis.  Obviously, the manufacture of such goods is an extraterritorial activity.  But here, the Act clearly is intended to prevent a U.S. effect from happening in the first place.   Unfortunately, foreign counterfeiting of major U.S. brands continues to be a significant problem particularly in the areas of electronics, pharmaceuticals, and fashion.  The Arbitron opinion may well make it more difficult for U.S. companies to enforce their trademarks and stem the flow of counterfeit goods into the U.S. (which happened with Arbitron’s counterfeit products as the jury found) when such items make it past customs and border control.

Conclusions

After Abitron, trademark registration strategies even by smaller companies should consider the possibility of registration in appropriate foreign jurisdictions.  For example, had Hetronic had an Austrian registered mark or an EU registered mark, it would have had an action for trademark infringement in Austria or any EU member country where the infringement occurred.   Please also see the take home points presented at the beginning of this blog.  Contact Susan at 305-279-4740 for a complimentary consultation on international trademark registration strategy.  We liaise with law firms abroad to protect our clients rights on an international basis.

THANK YOU FOR YOUR INTEREST IN THIS BLOG.  AS USUAL THE CONTENT IS FOR INFORMATIONAL PURPOSES ONLY AND IS NOT LEGAL ADVICE.

© 2023 by Troy & Schwartz, LLC

Recently, numerous news publications have rather gleefully reported that the Sussexes (a/k/a Harry and Meghan) intent-to-use trademark application for the word mark ARCHETYPES has been rejected by the USPTO due to the likelihood of confusion with a previously registered mark.  The rejection has been viewed by many as a deserved comeuppance for the couple’s actions since leaving England’s royal family.

Quite apart from one’s personal opinions of the Sussexes, trademark law is trademark law.    This blog discusses the USPTO’s rejection of the ARCHETYPES mark to emphasize the factors that the examining attorney relied on to reach her likelihood of confusion conclusion.  The rationale for her rejection is instructive for those who are considering seeking registration of a trademark which is very similar to already existing registered mark(s).   In particular, it is important to note that the applicant’s and registrant’s specified goods/services need not be identical for a likelihood of confusion finding by the USPTO.

1. Actual Status of the Application

The news headlines have not been totally accurate regarding the status of the ARCHETYPES mark.  The USPTO has issued only an initial rejection, not a final rejection of the mark.  The initial rejection was on January 18, 2023.  The applicant has until July 18^th to respond to the initial rejection.  If the USPTO’s examining attorney finds that the response overcomes her initial rejection, the application will receive a Notice of Allowance.  After filing a Statement of Use which meets the USPTO’s requirements, the mark will then be registered.

On the other hand, if the examining attorney issues a final rejection, Archewell Audio will have the right to appeal the USPTO’s decision to the Trademark Trial and Appeal Board (TTAB ) and/or through federal courts of law.  It is noted that the Trademark Trial & Appeal Board’s (TTAB) affirmance rate of examining attorneys’ final rejections is 95%.   Accordingly, Archewell Audio will likely have a difficult road ahead to obtain registration of the ARCHEWELL mark.

2. The Lack of the Applicant’s Verification Signature in the Application

The application, filed by an attorney, was cited by the examining attorney for being unsigned.  As such, neither Archewell Audio’s authorized representative nor its attorney ever verified certain statements that must be verified in every application.  Why not?  This failure is an example of sloppiness on the part of the attorney representing Archewell Audio. Either that or Archewell Audio’s authorized representative or its attorney (based on personal knowledge) was unwilling to attest to the following:

The applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; the applicant believes applicant is entitled to use the mark in commerce on or in connection with the goods and service specified in the application; that to the best of the signatory’s knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such persons, to cause confusion, mistake, or to deceive, and that the facts set forth in the application are true.

3. The Examining Attorney’s Likelihood of Confusion Analysis

Archewell Audio’s application (SN 97332048) included lengthy listings under both: 1) Class 9 for downloadable audio recordings, podcasts, webcasts, all in the fields of cultural treatment of women and stereotypes facing women; and Class 41 for entertainment service, namely, an ongoing podcast series in the field of cultural treatment or women and stereotypes facing women.

In finding likelihood of confusion, the examining attorney relied on registration no. 5481385, also for the mark ARCHETYPES.  The registration date was May 29, 2018 and its first use in commerce was in 2012.  The registration specifies services under Class 41: Providing a website featuring blogs and non-downloadable publications in the nature of articles in the field(s) of nutrition, fitness, sexuality, psychological self-improvement, personality identification and matching, personal relationships and dating, spiritually, horoscopes, and astrology, fashion, music, and reviews and recommendations for books.

A.  The Two Marks are Commercially Identical.

The examining attorney first compared the marks, finding them to be identical in nature and in commercial impression.  Accordingly, the marks were found to be confusedly similar just in looking at them, thereby engendering the same connotation and overall commercial impression.  This means that consumers would be confused as to just who is providing the goods and/or services – the applicant or the registrant.

B.  Archewell Audio’s Services Encompass the Registrant’s Services.

Next, the examining attorney compared the goods/services to determine whether they are similar, commercially related, or travel in the same trade channels.  Under trademark law, it is important to understand that the goods and/or services need not be identical or even competitive to find a likelihood of confusion.   Importantly, they need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken believe that the goods and or services emanate from the same source.”

The examining attorney noted the broad wording of Archewell Audio’s application to describe podcasts, downloadable and pre-recorded goods in Class 9 as well as ongoing podcast series, television series, and related services in Class 41.  She concluded that the reference to services in the “fields of cultural treatment of women stereotypes facing women” encompasses all of the goods and services of the types described for the registered mark in the field of sexuality, personality, identification, personal relationships, dating, spirituality, and related topics.   This is so even though the registered mark is for blogs and non-downloadable publications but not podcasts.

C.  Podcasts and Blogs May Emanate from a Single Source Under a Single Mark Thereby Leading to Confusion.

Here, the examining attorney relied on third-party registrations to establish that blogs and podcasts on issues facing women are of a kind that may emanate from a single source under a single mark.  The examining attorney did not interpret Archewell Audio’s reference to “cultural treatment of women and stereotypes facing women” as sufficient to distinguish its goods/services from the registrant’s services.

Additionally, the examining attorney provided evidence to establish that today it is common for bloggers to produce podcasts.  This means that the same entity commonly produces or provides the relevant goods/services (podcasts/blogs) and markets the goods/services under the same mark.  Accordingly, Archewell Audio’s and the registrant’s goods are considered related for likelihood of confusion purposes.

4. Conclusions

It is not known whether Archewell Audio actually conducted a trademark search prior to filing the application to evaluate non-registration risks.  If not, why not?  Did their attorney provide any cautionary guidance?  If so, perhaps the attorney and her clients thought that the specific reference to the cultural treatment of women and stereotypes facing women would be sufficiently limiting to overcome a likelihood of confusion analysis with registration no. 5481385 for the same mark.   Also that podcasts and blogs are not related goods. The examining attorney concluded otherwise for the reasons discussed above as supported by numerous TTAB and court decisions.

The above discussion shows that there is much more to a likelihood of analysis than meets the eye, especially where the applied-for mark provides the same overall commercial impression. It is also important to understand how technology can “transform” a good/service into a more modern version of the good/service.  For example, blogging transformed the content communication highway.  No longer is content reserved for written publications such as hard-copy journals or magazines.  And thanks to platforms such as Spotify and Apple, podcasts are now hugely popular.   Consistent with the examining attorney’s opinion that a blogger is often a podcaster, the author receives emailed blogs from some her favorite podcasters.

Also puzzling is the fact that Archewell Audio’s application was not properly signed.  Why not? It is not clear how the USPTO even accepted an unsigned application through its electronic filing system.  The author has never filed an unsigned/unverified application.  Procedures are in place for electronically sending the application to the applicant’s authorized representative for the verification signature.

5. Where Do the Sussexes Go From Here?

Whether or not the mark is approved for registration remains to be seen presuming a response to the examining attorney’s office action is filed.   Based on the likelihood of analysis factors relied on by the examining attorney as discussed above, it appears that registration of the Sussex’s ARCHETYPES mark is highly unlikely.  If a response is not filed, the application will become abandoned.

One option available to Archewell Audio is to seek a consent or coexistence agreement with the owner of the registered mark, an Arizona limited liability company.  If the registrant agrees, the USPTO will still need to approve the agreement before granting registration.   Click here for a blog on requirements for such an agreement from the USPTO’s perspective.

Finally, since their application was filed, Spotify has cancelled the Archetypes podcast.  If the USPTO grants a Notice of Allowance on this intent-to-use application, Archewell Audio will need to demonstrate the mark is in use to progress to actual registration of the mark.

In Need of Legal Counsel on Trademark Matters?

Trademark law is a complex area of the law.  Contact Susan at 305-279-4740 for a complimentary consultation on all trademark law matters from registration to matters before the Trademark Trial & Appeal Board to enforcing your trademark rights in court.

Thank you for your interest in this blog.  As usual the content is for informational purposes only and is not legal advice.   

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