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Is “UGG” Generic? Understanding the Doctrine of Foreign Equivalents

By James Tuck Deckers Outdoor Corp. (Deckers), the owners of the well-known, federally registered trademark for sheepskin boots, “UGG,” recently scored a major victory over its competitor, Australian Leather Ltd. (Australian Leather). A jury in Illinois awarded it $450,000 in damages for the willful infringement of two of its trademarks. It was not in dispute whether Australian Leather used the “ugg” term to market and sell its own line of sheepskin boots to Americans. The issue was whether the UGG trademark was generic concerning sheepskin boots. What Is a Generic Mark? The United States Patent and Trademark Office (USPTO) considers a term to be generic when the relevant purchasing public understands or considers the term to primarily function as the common name for particular goods or services. This is important because a generic term cannot serve as a trademark. In addition, it cannot be registered on either the Principal Register…

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Judge Albright Orders Intra-district Transfer to Austin Division for Amazon and Whole Foods

By Vincent J. Allen. Judge Albright recently ordered transfers to the Austin Division for convenience in multiple patent infringement cases filed in the Waco Division of the Western District of Texas.  However, consistent with past practice, the judge is maintaining these cases on his docket. In one of these cases, Freshub filed suit against Amazon, Prime Now, and Whole Foods on June 24, 2019.  The suit alleges infringement of a patent covering voice processing and voice interpretation technology.  The technology allows consumers to utilize home appliances to add items to their shopping carts or grocery lists using voice commands or the simple wave of a hand.  Freshhub alleges that Amazon’s Alexa, Echo, Fire TV, Fire Tablet, and Amazon App products infringe the patents in suit.  One of the alleged infringing products is shown below. Exhibit 18 of Plaintiff’s Complaint Alleging Infringement by Alexa App Whole Foods, now owned by Amazon,…

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How Can a Trademark Be Lost During the Trademark Application Process?

Written by Andrew Reed In the first part of this series, we discussed why a business should register their trademarks. In the second part of this series, we will discuss how a trademark can be lost during the trademark application process. While some of these issues may not result in instant loss of trademark rights, issues could occur during the post-registration period. As a trademark applicant, it is important to be truthful with your trademark attorney. Fraud is one of the limited number of arguments that a challenger can raise post-registration. How can you avoid this? Know Your Products First, be sure to know the products on which you plan to use the trademark. If your application includes goods or services not currently being used in relation to the trademark, then the application can be denied and a future registration could be attacked. When in doubt, allow your trademark lawyer…

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Waco Division Update: Albright Denies Google’s Section 101 Motion to Dismiss

**See note below.   By Vincent J. Allen. As discussed in a prior post, the Waco Division of the Western District of Texas has seen a rise in patent infringement suits.  Plaintiffs are filing in Waco because of Judge Alan Albright’s promise to efficiently resolve patent disputes.  Judge Albright has also made clear that he does not favor dismissal of actions on the pleadings based on lack of patentable subject matter under section 101. Judge Albright Denies Google’s Section 101 Motion to Dismiss Judge Albright’s attitude toward early dismissal was confirmed in his recent decision denying Google’s Section 101 motion to dismiss. The patent infringement suit was brought by Hammond Development International in the Waco Division.  The plaintiff claims that Google’s smart home systems, specifically its Nest devices, infringe the patents covering a system for remote execution of an application. Google filed a Rule 12(b)(6) motion to dismiss on the…

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Why Should I File for a Trademark Registration? Part One

Written by Andrew Reed. You may be wondering why you should register your business’s trademarks.  A business’s brand and identity are two of its most valuable assets. Recently, Nike was said to have received over 22 million dollars from Tiger Woods’ win at the 2019 PGA Masters solely because of the publicity of its trademark swoosh during the tournament. However, if a company does not take steps to properly secure and maintain its trademarks through trademark registration, it risks losing them. This series of articles will examine the ways a company might lose the opportunity to protect its trademarks. In this article, we will look at the various ways that trademark rights may be lost before a trademark application is ever filed with the U.S. Patent and Trademark Office (USPTO). Trademark Considerations When Choosing a Trademark Some companies wait until after formation of the company and selection of a name…

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Texas Patent Lawyers and Agents, Second Most of Any State

By Texas patent lawyer, Vincent Allen. As of August 24, 2019, there are 12,083 registered patent agents and 35,331 registered patent lawyers.  Patent lawyers and patent agents are eligible to practice before the United States Patent & Trademark Office (USPTO). 3,508 registered Texas patent lawyers and agents call Texas home.  This is the second most of any state. Of these Texas patent lawyers and agents, 2,843 or 81% are patent lawyers, and 561 are Dallas patent lawyers. Based on these numbers, 8% of all patent lawyers are located in Texas. The state with the most patent lawyers and agents is California, with 8,598. New York has the third most, at 3,471. Palo Duro Canyon, Texas What does it mean to be a registered patent lawyer or patent agent? To become a registered patent lawyer, an attorney who is licensed to practice in at least one state must take the patent…

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Texas Patent Attorney, Mississippi to Dallas via Greenville, SC and Waco

Written by Texas Patent Attorney Vincent Allen. From a farm boy in Mississippi to a big city Texas intellectual property lawyer, this is the story of how I became a Texas patent attorney. I was not one of those like my partner David who knew he wanted to be a patent attorney before he even went to college. No, my journey to becoming a Texas patent attorney had a few stops, but they all helped me develop a unique background that my clients appreciate. Cars, Dirt Bikes and Aircraft Maintenance School Like my son Johnny, I had a natural affinity for aviation since before I could remember. Planes flying over always fascinated me.  I wanted to be a fighter pilot in the Air Force, but when I realized that I would probably not be able to do that because of the strict medical certification requirements, I decided to attend aircraft…

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Carstens & Cahoon’s Waco Office Is Now Open

Carstens & Cahoon, LLP is an intellectual property law firm founded in Dallas in 1998. For the first time, the firm is opening a satellite office and has chosen Waco, Texas for that office. Some of the firm’s attorneys have close ties to Waco and selected Waco because of this and Judge Albright’s growing patent litigation docket in the Waco Division of the Western District of Texas. The office is located at 404 Schroeder Dr. in the OLS Electric building just off Franklin Avenue near the Richland Mall. Our partner Ted Baroody, an experienced first-chair patent litigator, will split his time between the Dallas and Waco offices. You can reach him on our Waco number at 254-831-9951. Oliver Lee Sharp is Ted’s father-in-law. Mr. Sharp’s father started OLS Electric in 1953, the year of the great tornado. You can visit us in our Waco office by appointment only, or we…

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USPTO Requires Foreign Trademark Applicants to Appoint U.S. Attorney

Written by Vincent Allen The U.S. Patent and Trademark Office (USPTO) now requires that any applicant, registrant or party to a trademark proceeding whose domicile is not located within the U.S. must be represented by a U.S. attorney. You can find the new rule at 37 C.F.R. § 2.11. The rule was effective August 3, 2019 and applies to new applications or proceedings filed on or after the effective date. Trademark oppositions and cancellation proceedings are also included. Domicile and Principal Place of Business Defined The domicile of an applicant is defined as “the permanent legal place of residence of a natural person or the principal place of business of a juristic entity.”  “Principal place of business” is “the location of a juristic entity’s headquarters where the entity’s senior executives or officers ordinarily direct and control the entity’s activities and is usually the center from where other locations are controlled.”…

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Is Austin better than Waco?—Judge Albright Orders Intra-district Transfer but Keeps Case on His Docket

By Vincent Allen* As discussed in my prior post, the Waco Division of the Western District of Texas has seen a dramatic uptick in the number of patent infringement suits since Judge Albright took the bench.  And like other venues where plaintiffs have flocked, it is only natural that defendants attempt to transfer cases out of Waco where venue is either improper or clearly more convenient in another forum. In a suit filed against Dell Computers by Datascape in the Waco Division on February 13, 2019, Dell did just that.  Dell has its headquarters in Round Rock, a suburb of Austin located in the Austin Division of the Western District of Texas.  However, the same rules for transfer for convenience under section 1404(a) apply to intra-division transfer requests as for transfer between districts. Dell asked Judge Albright for an intra-district to transfer of the case from the Waco Division to…

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Waco, Texas—Will Judge Alan Albright Create a New Hotbed of Patent Litigation Deep in the Heart of Texas?

By Vincent Allen* The Waco Division of the Western District of Texas has seen a dramatic up-tick in the number of patent infringement suits filed there since Judge Alan Albright was sworn into office in September 2018.  The judge’s implementation of standing orders for patent cases and his promise of running an efficient docket by issuing timely rulings and offering prompt access to jury trials makes the venue an attractive choice.  While not any case can be filed in Waco due to the restrictions placed on venue in patent cases by the Supreme Court’s TC Heartland decision, the Western District of Texas is home to places of business for many companies.  In addition to Waco, the district includes Austin,  San Antonio, Midland-Odessa, and El Paso.  So venue would be proper in Judge Albright’s court against any company that has a regular and established place of business in these other cities.  However, a plaintiff may face a motion to transfer venue for convenience to another…

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Trademark Abandonment

If you are a trademark owner who has several registered trademarks that correlate to various products in your portfolio, then you may have periods of time in which certain trademarks are not currently being used. While periods of non-use are often unavoidable, there are a few things to keep in mind during these times so as not to inadvertently abandon your trademark or cancel your registration. To abandon a mark means to cease use of the mark. Abandonment of an application is a formal term which means that the unregistered application is no longer pending and, thus, cannot mature into registration.  The term cancellation is used to describe what occurs when the owner of a trademark registration no longer has rights to a mark, and the registration ceases to be enforceable. Occasionally abandonment or cancellation may be intentional, but, most of the time, it is inadvertent. One way a federally…

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Protecting your Business: Copyright vs. Trademark

Have you ever wondered about the difference between copyrights and trademarks?  Do you have a great product and wonder if you can do more to protect it from competitors?  If so, this short and sweet article is for you. First, let’s look at copyrights.  The basic rule is fairly simple: to be copyrightable, a work must be fixed in a tangible form and have a modicum of originality.[1]  Of course, as with most legal issues, there are nuances that can complicate matters.  For example, you cannot copyright a fact or abstract idea, but you can copyright an original expression of the fact or idea.[2]  Similarly, you cannot copyright functional aspects of a work, although you can copyright features that are separable from the functional aspects.[3] There are several advantages associated with copyrights. First, they can literally last a lifetime. . . or even longer.[4]  Also, infringement of a registered copyright…

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Colin On The Mark Davis Show!

On February 19th, Colin Cahoon returned to the Mark Davis Show to discuss intellectual property.  The focus of the discussion was on entertainment and highlighted related considerations under copyright, patent, and trademark law. Colin discussed the recent lawsuits against the famous game Fortnite that have been brought under copyright as well as California privacy laws.  In particular, players of the game are able to purchase characters along with dance moves for their characters.  The dances typically emulate famous dances or people including the “Milly Rock” by Terrence Ferguson (aka 2 Milly), the “floss dance” by Russell Horning (aka backpack kid), and the Carlton performed by Alfonso Ribeiro in Fresh Prince of Bel-Air. Colin commented that dance moves that have been successfully protected under patent law in the past.  For example, Michael Jackson was issued a patent for his “method and means for creating antigravity illusion.”  The idea was conceived by…

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Women Inventors—Does this group comprise you?

Albert Einstein, Thomas Edison, Samuel Morse, Henry Ford, Bill Gates—the list of famous male inventors that many Americans can recite from memory are endless.  Mary Kies, Hedy Lamarr, Bette Graham, Josephine Cochrane—do any of these names sound familiar?  These are just a few among many women who hold U.S. patents and have contributed significantly to science, engineering and technology.  In observance of Women’s History Month, we recognize these trail blazers and their contribution to the U.S. and to the world. Nineteen years after the passage of the Patent Act of 1790, Mary Dixon Kies was the first woman inventor to receive a U.S. patent for her method of weaving straw with silk or thread.  Her patent, describing a new technique for making hats, was signed by President James Madison and was recognized by the First Lady as a source of aid to the American economy. Hedy Lamarr was a famous…

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SEPs, FRAND and Antitrust

Courts, patent owners, attorneys and policy makers are currently working through challenges associated with the large numbers of patents, especially in the cellular phone space and other related wireless communication, that read on portions of the industry standards necessary to implement the technology to function with products from multiple competing vendors.   Such patents are termed “standard essential” and patent owners that are members of  industry standards setting organizations are often under an obligation to license such “standard essential patents” or “SEPs” to the industry on terms that are “fair, reasonable and non-discriminatory” (“FRAND”).   Numerous issues have developed as to when a patent is properly considered an SEP, when a FRAND obligation arise, what is the appropriate FRAND royalty, and whether pooling SEPs among a group to wall off others from implementing the standard raises antitrust issues. Judge Gilstrap in the Eastern District of Texas recently considered several SEP issues in…

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Mayo v. Prometheus: 7 Years Later – Re-Establishing a Workable Solution for Patent-Eligible Subject Matter

The year was 2013.  You may remember it for the roll-out of the Affordable Care Act (a.k.a. Obama-Care) or perhaps the Boston Marathon Bombings.  For me, the latter event hit especially close to home.  I was attending law school in Boston, and earlier in the day I rode my bike to watch the Boston Marathon.  Little did I know that home-made bombs would soon shatter the lives of runners and spectators alike.  Later, I remember sitting on the couch in my apartment and hearing the omnipresent whine of sirens – the sound seemed to be coming from everywhere at once, and for good reason.  One of the perpetrators lived a few blocks from my apartment in Cambridge, Massachusetts. Being a patent attorney, I also remember 2013 for other events, although most people probably didn’t notice.  In particular, I remember 2013 for the immediate aftermath of the Supreme Court’s decision in…

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Recapping 2018—The year of Data Privacy

Last year, General Data Protection Regulation (GDPR) went into effect in the European Union (EU) regulating and protecting data from individuals within the EU.  Large US companies operating abroad were forced to update their privacy policies and procedures and have opted to broaden the changes to individuals even outside the EU.  Although GDPR has already affected companies operating in the US, there is no equivalent US federal law in place to regulate individual data. Instead, the privacy laws are enforced on a state level. California recently announced its own new privacy law, the California Consumer Privacy Act of 2018 (CCPA), that will go into effect in 2020.  Because many large companies operate in California as well as the EU, many of the practices in these regions will also extend to the remaining states.  However, the concern over data misuse on a national level continues to heighten as CEOs like Mark…

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Principal vs Supplemental Register

If you are researching potential trademarks for your business or your products, you may have come across terms such as principal register and supplemental register. To the uninitiated, these terms can be a little confusing and opaque. So, what is the difference between the two and do you have a choice when you request registration of your trademark? To begin, yes, you do have a choice; Ideally, however, you want your mark on the principal register. Generally, when discussing trademark protection, one is referring to the principal register. Marks that distinctly identify the source that the goods or services come from are placed on the principal register. Once there, these marks are given the full range of protection afforded by federal registration. The supplemental register, in contrast, is for marks that are determined to be merely descriptive and not unique. A mark that is placed on the supplemental register does…

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How Much Do You Care About Your Right-to-Repair?

The two decade old Digital Millennium Copyright Act (“DMCA”) was intended to prevent circumvention of protective measures placed on copyrighted material such as movies and music.  In the absence, or perhaps scant presence, of legislative updates, the same laws used to govern movies and music have been extended to new technologies brought by the internet age.  To keep pace with emerging technology, section 1201 of the DMCA calls for triennial proceedings to determine the types of activity that are temporarily exempt from anti-circumvention laws. The proceedings are meant, in part, to prevent overreach of the DMCA into activities that should remain fair use. At the same time, software is quickly becoming ubiquitous and more vulnerable to reverse engineering, necessitating intellectual property protection outside of trade secrecy.  The issues of increasing importance is determining what types of protection will continue to be available to copyrighted software and how “impermissible circumvention” could…

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