Troy & Schwartz Attorneys-At-Law

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.   

© 2023 by Troy & Schwartz, LLC

Selecting a company name or a name for a new product is no easy task.  Both types of names have the potential to become the company’s valuable intellectual property assets, i.e., valuable brands.  A haphazard name selection process, however, may result in legal problems and/or prevent registration of the name as a trademark or service mark with the United States Patent & Trademark Office.  Clearly the last thing a new startup needs is a legal dispute involving the alleged infringement by its product name or company name of someone else’s registered trademark.   Also, the “wrong” name may well prevent its registration as a trademark or service mark.  Registered marks generally have substantially more value than unregistered marks.

Anybody who has been involved in a lawsuit understands that they are costly, stressful, and can take on a life of their own.  A registered trademark owner may of course give you the chance to comply with an initial cease and desist letter.  However, the company’s compliance will generally require it to stop using the mark and transfer any domain name rights, etc.  The upshot?  The company will have to start over in the branding process.

The following tips are intended to get your company off and running with a viable company and/or product name.

1. Do a Google search on the name to see what other companies may already be using the same or a similar name.
2. Do a search of your state’s corporate or limited liability company records in the states where the company will do business to see if anyone is using the same or similar name. Also check the state’s registered trademark records since some companies do obtain state-registered marks.  For Florida, this information can be found here.
3. Do a search of the U.S. Patent & Trademark Office (USPTO) for federal trademark registrations of your proposed company/product name. Do not think that merely changing a letter in your proposed name or reversing the order words in a multi-word work will save you from a legal dispute with the owner of the registered mark or prevent trademark registration issues.  Clearly if you plan to file a trademark registration application for your company/product name with the USPTO, you should select a name that has a solid chance of meeting the USPTO’s trademark registration requirements.  This means that your mark must not be confusedly similar to a registered mark, generic, or merely descriptive of the goods or services provided under the mark.
4. Do a search of domain name registrar websites such as GoDaddy.com to see if the domain name you want is available. Not only are domain names a necessity in today’s e-commerce world, but domain names also may have associated trademark rights.  Therefore, a minor change in the registered domain name, e.g., by registering the plural form (ABCS) of the registered domain name (ABC) could result in a trademark dispute.   The registration of a dot com domain name in particular could signal potential trademark issues.
5. The best company/product name is one that is distinctive and memorable for both branding purposes and obtaining valuable registered trademark rights.
6. Come up with at least three names you like and get the reactions of trusted individuals.
7. If you plan to have a logo designed, ensure that there is a contract in place assigning all of the logo creator’s intellectual property rights to your company.
8. If you are a non-US company planning to expand into the United States, note that US trademark law will apply to you.  In the United States, common law trademark rights are recognized.  Additionally, trademark registration requires usage of the mark in interstate commerce at the time of registration.
9. Watch out for cultural implications involving your mark if you plan to register it in other countries.
10. Consult with an intellectual property law attorney up front to avoid costly problems.  A good attorney will discuss potential problems with your proposed names.   A thorough mark knockout search should also be considered.

We are proud of the legal services we provide to our business and entrepreneurial clients on all matters related to intellectual property law including trademark law.  Contact us at 305-279-4740 to discuss your questions on trademark law matters.   Doing things right the first time in selecting a company/product name and building your brand could save you some real legal headaches and a lot of money down the road.  

Troy & Schwartz, LLC

Attorneys-at-Law

Miami, Florida  (305) 279-4740

Where Legal Meets Entrepreneurship™

This blog is for informational purposes only and does not constitute legal advice.

© 2023 by Troy & Schwartz, LLC

Introduction

Last week’s blog provided information on the Supplemental Register as part of its discussion on the Trademark Trial & Appeal’s Board’s refusal to register the generic mark FELATI on even the Supplemental Register.  That blog briefly referred to the fact that merely descriptive marks may be registered on the Principal Register if: 1) they are found to be suggestive rather than merely descriptive; or 2) have become distinctive.  Otherwise, merely descriptive marks may be registered on the Supplemental Register.  For registration on either register, the examiner must have concluded that there is no likelihood of confusion with an existing registered mark.

This blog goes into depth as to what constitutes a merely descriptive mark by discussing the Board’s affirmance of the examining attorney’s Section 2(e)(1) refusal to register the proposed word mark SMART BEZEL.  In re Zuma Array Limited, 2020 USPQ2d 736 (TTAB 2022) [precedential]. The opinion is instructive because it is a reminder that a proposed mark that describes the intended use or purpose of the goods may be a merely descriptive mark.  In other words, the definition of a merely descriptive mark is not confined to those marks which merely describe a characteristic of the specified goods or services, e.g., CHUNKY CHOCOLATE for ice cream.

Discussion

 Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), prohibits registration on the Principal Register of “a mark which, (1) when used on or in connection with the goods of the applicant is merely descriptive . . . of them,” unless the mark has acquired distinctiveness under Section 2(f) of the Lanham Act, 15 U.S.C. § 1052(f).  A merely descriptive mark which has acquired distinctiveness according to the USPTO’s requirements may file for registration of the mark on the Principal Register under Section 2(f).  If the mark is instead registered on the Supplemental Register, the registrant may later seek registration on the Principal Register if and when the merely descriptive mark acquires the required level of distinctiveness for such registration.

Here the Applicant’s identified goods under IC class 009 were for “electronic sensor modules for controlling and integrating home automation systems, including lighting and thermal control apparatus, energy control devices and household appliances, smart plugs, smart sockets for electric lights, electronic appliances and smart switches, audio and loudspeakers, alarms, and other security control apparatus and home monitoring equipment; electronic sensor modules for controlling and integrating smart lighting systems and smart heating systems; component parts and fittings for the aforesaid goods.”

In rejecting the mark SMART BEZEL on merely descriptive grounds, the examining attorney relied on: 1) the dictionary definition of the adjective “smart” in this context as using a built-in microprocessor for automatic operation, for processing of data, or for achieving greater versatility;” a dictionary definition of the word “bezel” as the “outer frame of a computer screen, mobile phone, or other electronic device;” and an article about a patent held by Apple where the article states the invention enabled Apple to create a “smart bezel.”  Slip opinion @ 2.  The Applicant acknowledged that “smart” is defined as “using a built-in microprocessor” and the word “bezel” refers to “the outer frame of a computer screen, mobile phone or other electronic device.” However, it also asserted, “none of the applied for goods … feature a ‘bezel’ at all.”     The Examining Attorney, on the other hand, maintained that the proposed mark immediately conveys information about the goods because Zuma’s sensors are designed to be incorporated into the bezels of various electronic appliances and lighting and heating systems, “to render the bezels … capable of performing automatic operations for processing data or achieving greater versatility.”

The Board discounted the Applicant’s argument, finding the mark to be descriptive of a use or purpose of the goods’ modules, and thus ineligible for registration without proof of acquired distinctiveness.  In reaching its conclusion, the Board took a somewhat different tack by focusing on the nature of the Applicant’s “electronic sensor modules.”  First, the Board took judicial notice that a “module”  is “a usually packaged functional assembly of electronic components for use with … other assemblies.”  Second, the Board then relied on the wording in the Applicant’s own website to conclude that the proposed mark, by describing the intended use or purpose of the goods with which it is used, is merely descriptive.  For example, the Applicant’s website states that “swap[ping] out a standard bezel for a Smart Bezel (TM)” enables homeowners to access a wide range of built-in sensors to support environmental, presence and life safety operations.”  Slip opinion at 15.  Citing precedent, the Board emphasized that “[P]roof of mere descriptiveness may originate from [the] applicant’s own descriptive use of its proposed mark,  or portions thereof” in its materials and “an applicant’s own website and marketing materials may be  . . . ‘the most damaging evidence’ in indicating how the relevant purchasing public perceives a term.’”  Slip opinion at 14.

Accordingly, the Board concluded that the word BEZEL refers to the type of device on which Zuma’s sensors will be used.  The commercial context of Applicant’s use of its proposed mark on its website “demonstrates that a consumer would immediately understand the intended meaning of” SMART BEZEL for electronic sensor modules, namely, that the modules are used to create a “smart bezel.”

The commentator notes that the Applicant should now have the option of seeking registration on the Supplemental Register.

Take Home Points

1. Trademark law is complex. As this decision demonstrates, a merely descriptive analysis involves an evaluation of whether the proposed mark describes a particular characteristic of the specified goods/services and/or the intended usage of the proposed mark.  Many applicants are focused on a likelihood of analysis rejection and not familiar with other types of registration rejections.  Accordingly, a proposed mark that is not rejected on likelihood of confusion grounds may still be rejected on merely descriptive or generic grounds as the Zuma Array decision demonstrates.
2. The USPTO may look beyond the Principal Register other registered marks to ascertain whether a mark is merely descriptive. Here, the examining attorney and the Board used dictionary definitions, a patent document, and the Applicant’s own website to find that the mark was merely descriptive.
3. Interestingly there was no evidence that third parties were descriptively using “smart bezel” for the application’s specified goods. Although such proof can be highly relevant to a merely descriptive analysis, such lack of proof was of no consequence in the Zuma Array decision.  “The fact that Applicant may be the first or only user of a term does not render the term distinctive if, as here, it has been shown to be merely descriptive of the goods identified in the application.”  Slip opinion at 12.  The commentator notes that Applicant may be able to establish distinctiveness in the future by, e.g., by providing satisfactory evidence that the consumer has come to associate the mark with the Applicant as the provider of the goods.

In Need of Legal Counsel on Trademark Matters and Other Intellectual Property Matters?

Contact Susan Troy, the author of this blog and all of the IP law blogs posted at this website, at 305-279-4740.  She will assist you in determining whether your proposed brand is synergistic with the legal requirements for obtaining a registered trademark.

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

© 2022 by Troy & Schwartz, LLC

On July 7, 2022, in In re Lana Grossa mode mit Wolle Handels-und Vertriebs GmbH, the Trademark Trial & Appeal Board (the “Board”) held that a mark utilizing the Italian word for yarn, Filati, could not be registered because the mark is generic and thus incapable of registration.

The opinion is instructive because it covers several matters pertinent to trademark registration that often take a backseat to the far more common likelihood-of-confusion registration issues.  This blog summarizes the take home points from Lana Grossa wherein the Applicant sought registration of the mark FILATI on the Supplement Register as a generic mark.

1.  Some Background on the Supplemental Register.

The Supplemental Register (“SR”) offers legal protections to a lesser extent than the Principal Register.  SR can thus be a viable alternative to registration on the Principal Register if an applied-for mark is rejected on merely descriptive/generic grounds providing the proposed mark passes a likelihood of confusion analysis by the examining attorney.  Indeed, examining attorneys may recommend that the original application be amended to a “Supplemental Registration” application if the applied-for mark is not rejected on likelihood of confusion grounds. One can also initially apply for registration on the Supplemental Register as did the FILATI mark Applicant but such an application will nevertheless be examined to see if it qualifies for such registration.   Additionally, a “Supplemental Registered” mark may later qualify for registration on the Principal Register if the registrant can establish that the mark has become distinctive in the minds of consumers.

2.  A Mark Comprising a Foreign Word Will Not Overcome Potential Registration Issues.

Over the years, the commentator has encountered clients who mistakenly believe that using a foreign word as a mark for service(s) or good(s) provided in the U.S will eliminate registration problems.   This assumption is a fallacy.  First, trademark applications require the applicant to provide a translation of the foreign word.

Second, under the doctrine of equivalents, the foreign equivalent of a registered arbitrary English word mark may result in a finding of likelihood of confusion.  For example, a proposed mark for MANZANA (Spanish for apple) as an arbitrary mark for computers would clearly not be registrable in today’s “Apple Brand” world.

Moreover, a merely descriptive or generic foreign word mark is no more registrable than its English counter-part. As the Lana Grossa opinion states:  “[A] word taken from a well-known foreign modern language, which is, itself, merely descriptive of a product or service will be so considered when it is attempted to be registered as a trademark in the United States for the same product.”   The doctrine is, however, to be applied only when it is likely that the ordinary American purchaser who is knowledgeable in the foreign language would stop and translate the foreign word into its English equivalent.  The FILATI mark applicant had argued that the mark was merely descriptive and eligible for registration on the SR.

As a result of various websites and publications accessible in the U.S. promoting a premier international Italian yarn (as “Filati”) event, the Board concluded that the relevant U.S. consumers, particularly those with knowledge of Italian, will translate the word “Filati” into “yarn.” As such, the word “Filati” is a generic term for yarn and cannot be registered on the Supplemental Register.

As discussed above, a merely descriptive foreign word may be registered on the Supplemental Register.  A merely descriptive mark is one which describes a desirable characteristic of the specified good/service.  For example, In In re Geo. A. Hormel & Co., 227 USPQ 813 (TTAB 1985), the Board held that the applied-for mark SAPORITO, an Italian word meaning “tasty,” was merely descriptive and ineligible for registration on the Principal Register.   Interestingly the SAPORITO mark was originally registered in 1973 on the Supplemental Register by a company other than Hormel.  Reg. no. 952,895.   In 1989, that same company was able to achieve registration on the Principal Registration by showing that the mark had acquired distinctiveness and recognition by the buying public.  Reg. no. 1573637 obtained under Section 2(F) of the Lanham Act.

3. The Stylized Lettering in FILATI Is Insufficient for Creating a Distinct Commercial Impression Separate and Apart from the Generic Word Itself.

Having found that the mark FILATI is generic, the Board next determined if the Applicant’s stylized drawing of the word mark is so distinctive that it is possible to disclaim the unregistrable components and still have a registrable mark as a whole.  Generic matter within an applied-for mark, whether the mark is to be registered on the Principal Register or the Supplemental Register, must generally be disclaimed. Here, the entire mark itself (i.e. (“Filati”) would need to be disclaimed.  Yet, an entire mark cannot be disclaimed.  TMEP § 1213.06 (2022).   The Board concluded that the FILATI mark does not create a distinct commercial impression separate and apart from the word itself.   As such the mark was not registrable on the Supplemental Register.  To understand the Board’s reasoning, compare the registered mark CONSTRUCT A CLOSET, where the stylistic rendering of the mark was found to be distinctive, with the unregistrable FILATI mark.

4. Take Home Points.

Trademark law is not as simple as it may seem as this decision shows.   This is why a trademark attorney should be consulted so that the registration risks can be understood and discussed.  Why spend a lot of money on building brand where legal protection may well not even be available?   Contact Susan Troy at 305-279-4740 for a complimentary consultation on your branding legal requirements.

 WE THANK YOU READING THIS BLOG AND HOPE YOU FOUND IT INFORMATIVE.  HOWEVER, THE CONTENT IS PROVIDED FOR INFORMATION ONLY AND DOES NOT CONSTITUTE LEGAL ADVICE OR ANY  ATTORNEY-CLIENT RELATIONSHIP.

©2022

Troy & Schwartz, LLC

Where Legal Meets Entrepreneurship™

 (305) 279-4740

Just because a patent is granted does not mean that it will not be subjected to attempts to have one or more of its claims invalidated during the lifetime of the patent.   Such invalidation attempts by the defendants in a patent infringement lawsuit are not uncommon.  Grounds for invalidation include claim indefiniteness.  The public policy behind trying to prevent indefinite patent claims is that the public is entitled to know what the claim is really about. This blog discusses the recent opinion in University of Massachusetts, Carmel Laboratories, LLC  v. L’Oréal S.S., L’Oréal USA, Inc. by the Court of Appeals for the Federal Circuit (CAFC) where the court held that the patent claims were indefinite.  The opinion provides an excellent discussion of the type of analysis that goes into such a determination.

This is a long blog and hopefully instructive in its approach to explaining what went wrong for the patentee so that a similar mistake can be avoided by others during patent prosecution.

Some background information

A patent application examiner may reject a claim on the basis of indefiniteness.  Amendment of the claim by the applicant is an option to try to overcome the indefiniteness conclusion.  If an allegation of indefiniteness is made by the defendant during a patent infringement lawsuit, the court may engage in a process known as Claim Construction to determine what the claim is “really” saying or “not” saying.  In doing so, the court may refer to the patent’s specification to try and ascertain what the inventors were contemplating, how a particular word was defined, etc. and the prosecution history.  For a previous blog on the importance of the patent’s specification to claim construction, click here.   Generally, the court will rely on the plain reading of the claim.

The Questionable Claim in U Mass

A method for enhancing the condition of unbroken skin of a mammal by reducing one more of wrinkling, roughness, dryness, or laxity of the skin, without increasing dermal cell proliferation, the method comprising [1] topically applying to the skin a composition comprising a concentration of adenosine in [2] an amount effective to enhance the condition of the skin without increasing dermal cell proliferation, [3] wherein the adenosine concentration applied to the dermal cells is 10^-4 to 10^-7 M.

Can you see the problem with this claim?  First it says that a topical solution containing adenosine is applied to the skin but clause [1] does not recite the concentration of adenosine in this topical solution effective for achieving the result stated in clause [2].  Clause [3] with its “wherein” clause can be interpreted to mean that the amount of adenosine which ends up coming into contact with dermal cell falls in the specified range.  What is the actual adenosine concentration in the topical solution?  If clause [3] is intended to mean the resultant adenosine concentration in the dermis, was this concentration actually measured?  Furthermore, there are 2 objects intended for contact with the adenosine: the skin and the dermal cell.

The dermis is the skin layer under the outer epidermis layer.  Common sense would tell us that the topical solution would have to have an adenosine concentration greater than the amount of adenosine which ends up in a dermis cell for a number of physiological and structural skin reasons based on the topical solution’s absorption properties and the skin’s level of hydration and texture.   For example, the epidermis layer protects the dermis layer.  Anything intended for the dermis layer must first get through the epidermis layer. But what exactly is that concentration and why didn’t the claim just state “a topical solution having an adenosine concentration in the range of X-Y?”  Does clause [3] really refer to adenosine’s concentration in the dermis or is the clause the result of inartful drafting which has caused a big problem for the patent owner?

The CAFC’s Conclusion

The district court had relied on subjective determination precedent to conclude that the claim was indefinite because of clause [2] which focused on the topical solution’s effectiveness: “Indeed, the determination of whether the skin is enhanced provides a paradigmatic example of indefiniteness. Beauty after all, is ‘in the eyes of the beholder.’ ”

The Federal Circuit decided claim construction de novo because of the district court’s wrong approach to finding indefiniteness.  Upon appeal to the CAFC, U Mass contended that the “concentration” in the wherein clause is the concentration of adenosine in the dermis after it has entered the dermis.  In other words, to overcome an indefiniteness finding, U Mass would have to establish exactly what the suspect wording actually meant because the wording was ambiguous and not clear on its face.

The CAFC concluded that the claim was ambiguous about what clause [3] referred to:  “We first conclude that the relevant claim language, especially when viewed in the context of the whole claim, is not plain on its face, much less plain in supporting U Mass’s interpretation of it.”  Slip opinion at 8.  The court went on to emphasize the U Mass’s view of clause [3] is referring to something that has no existence before the application – that it refers to an adenosine concentration of the dermal layer after the adenosine particles per unit of dermal layer, after the adenosine particles have suffused into the dermis and thus already come into contact with the dermal cells.  Slip opinion at 10.   Therefore, the claim cannot be definite.

After the district court’s construction, U Mass had retained an infringement expert to conduct various experiments to assess the concentration as moles of applied adenosine in the dermis over liters of the dermis to “come up” with numbers within the range specified in the claim.  The CAFC emphasized that the expert’s methodology actually revealed an interpretation that would call for a rewrite of the wherein clause to say something like “wherein the adenosine permeating to the dermal layer results in a concentration of adenosine in the dermal layer of 10^-4 to 10^-7 M.   As such, the need for a departure from the natural meaning confirmed that U Mass’s asserted meaning is not plain.  Slip opinion at 10.

Next the court looked to the specification to see if it supported U Mass’s claim construction.  It did not.  Tellingly, the disclosure never implied that the invention included measuring adenosine concentrations beneath the skin surface after topical application. “U Mass has not shown that, even in this context, the specification makes clear that the inventors contemplated the adenosine concentration after exposure to the cells, rather than in a solution before application in the cells.”  Id. at 12.

The court also looked at the prosecution history, emphasizing that the histories resolve the ambiguity surrounding the meaning of “the adenosine concentration applied to the dermal cells” in the wherein clause. As with most patent applications, the prosecution history involved amendments to the original claims.  To overcome a prior-art rejection, U Mass imported a previous dependent claim which had only referred to an adenosine concentration with no mention of dermal cells into the preceding independent claim to create the problematic claim which now included the wording: formal “wherein the adenosine concentration applied to the dermal cells is …..” Slip opinion at 13.

The accompanying remarks made by the applicant are inconsistent with the “new wording” because they stated: “All [claims] are based on the application of certain concentrations of adenosine to the skin to achieve certain results.”   The applicants also stated that the amendment included no new matter suggesting that the invention was still and always was the topical solution at the specified concentration.  The new wording changed the scope and resulted in an indefinite claim. Interestingly, the examiner made the following comment in writing after accepting the amendment:  “the [i]nstant claims are directed to a method of enhancing the condition of unbroken skin . . . where the method comprises administering adenosine at a concentration of 10-4 M to 10-7 M, to the skin.” Slip opinion at 13.

According to the CAFC, U Mass’s amendments and comments clearly conveyed that U Mass had never veered from its pre-amendment reliance on the adenosine composition in the topical solution which had resulted in its two patents.  During prosecution, no mention had ever been of the materially different, unexplained notion of an adenosine concentration being determined after contact with the object (the dermis) of the topical solution.   Slip opinion at 14.   Even in its response to the examiner’s reasons for allowance, the applicants never communicated a disagreement with the examiner’s clear statement of what the language meant.

The CAFC reversed the district court’s claim construction of the wherein clause and vacated the court’s subsequent summary-judgement determination.  The case has been remanded for further proceedings consistent with the opinion.

Commentator’s Comments

This is a situation which seemingly could have been avoided.  The claims at issue in two related patents were not complicated.  The examiner made very clear that the adenosine was applied to the skin at the concentration range specified but somehow the claims ended up stating that the adenosine was applied to the dermal cells.   It is not clear why U Mass changed the wording in the amendment. Sloppy drafting?  Not carefully reading the new independent claims as whole?  Why didn’t the examiner mention anything about an incongruity between the amended claim and what the concentration range was referring to.  A few simple word changes could have resolved the ambiguity.

Patent prosecution can be a long, tedious process.  This case is a good lesson on how every aspect of the prosecution process must be monitored and the documents read and reread by both the patent attorney and the inventors.  An issued patent is in no way a guarantee that the patent will withstand scrutiny if push comes to shove in a court of law.   And if an amendment is made, make sure that it’s supported by the specification.   Remember, no new matter can be introduced in an amended specification.

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