TiVo and IP Protection: 1, Comcast: 0

A recent decision by the United States International Trade Commission constitutes a victory for the country’s intellectual property system. The ITC found set top boxes used by Comcast to be infringing TiVo’s patent rights. TiVo sued Comcast when the cable provider decided it would no longer pay to license TiVo’s patented technology but would instead use it for free. Meanwhile, other cable companies would continue to pay to license this technology from TiVo.

The technology at issue is based on two patents that essentially allow viewers to use their smartphones to control their set top boxes. U.S. Patent No. 8,006,263 for an “Interactive Television Program Guide with Remote Access” provided for a system for selecting television programs over a remote access link. This permits users to access program guide system features, such as parental controls and program reminders, without being physically present in their home. U.S. Patent No. 8,578,413, by the same name, discloses a similar system that allows users to adjust settings of multiple program guides at different locations within the home from a single remote device. Initially, TiVo alleged Section 337 infringement of 6 total patents but the ITC ultimately found only these two patents to have been violated. Accordingly, TiVo received a ruling for an exclusion order forbidding the importation of Comcast’s cable boxes into the United States as long as they contain the infringing technology.

The International Trade Commission is a quasi-judicial body whose duty is partially to investigate claims regarding intellectual property rights violations by imported goods. The Commission is comprised of U.S.-appointed commissioners and judges. Comcast manufactures its set top boxes outside the United States so the ITC has jurisdiction to impose such an exclusion order on the cable giant. Had Comcast manufactured its products in the United States rather than overseas, the ITC would have no jurisdiction over the dispute. However, TiVo would still have other legal remedies available for protection.

The United States has long been a leader in innovation across the globe. This is in part due to its strong patent system, written directly into our Constitution, which bolsters creativity and invention. Inventors want to reap the benefits of their work and protect it when someone steals it. Thus, they desire to be able to enforce their rights and protect their intellectual property. Without sufficient protection, innovation slowly withers away.

Apple Patents Smart Flip Phone

Apple recently filed an application with the United States Patent and Trademark Office for a bendable electronic device with a flexible display. This application suggests the tech giant is keen to manufacture a foldable smartphone but mentions the technology can be used on any type of electronic device with a display including laptop computers, tablet computers, wristwatches, or other gadgets. The claimed device contains a display that would fold along its axis allowing it to bend in two ways allowing it to be opened like a book or propped up on half of its screen. This application is amongst news that other technology rivals are planning to release similar foldable gadgets. Before Apple released its iPhone 8, Samsung announced plans to release a Galaxy X handset that is capable of folding out into a full-size tablet in 2018. Nokia also received a patent earlier this month for a smartphone capable of folding, which looks like a pocket mirror. Similarly, Lenovo and Xiaomi have showcased bendable devices in the last year. Moreover, Microsoft was granted a patent for a tablet that folded up to become a cellular phone. It is unclear whether Apple will actually make use of this patent as the company is known for filing decoy patents in order to throw competitors off its tracks. Indeed, the tech company previously obtained a patent for a screen that retracts into itself like a Fruit Roll-Up but has yet to bring such a device to the production stage. #omnilegalgroup #patent #Apple #smartphone #Samsung #Nokia #Microsoft #Lenovo #Xiaomi

Carving Out Patent Rights for Turkey-Related Inventions

After a year of struggle following their initial arrival at Plymouth Rock in 1620, the Pilgrims finally had a fruitful harvest due to the help of the Native Americans. To celebrate, the Pilgrims invited their Native American friends to a feast and Thanksgiving was born. In the spirit of this struggle faced by the Pilgrims, many inventors have concocted various methods and apparatuses to ease the struggle facing modern chefs. For instance, Alan B. Rogers et al. disclosed a method for preparing a frozen stuffed fowl in U.S. Patent No. 2,928,748, describing a poultry-stuffing process. Similarly, Peter A. Sieczkiewiz patented a method of preparing edible fowl (U.S. Pat. No. 2,844,844). People have also invented various ovens and containers for cooking the holiday’s signature fowl. In 1909, Joseph Mathy patented the first roasting oven that creates a steam essentially basting the turkey without the need for continual basting by the cook. U.S. Patent No. 4,700,618 depicts a meat smoker containing a fire box and smoker oven offset from the fire box. In the more recent trend of frying the bird, U.S. Patent No. 5,896,810 covers a turkey frying apparatus and U.S. Patent No. 5,758,569 involves a poultry frying apparatus designed such that the user is able to raise and lower the turkey without burning themselves. People have also applied for design patents covering ornamental aspects of the turkey cooking process. One such design patent is for a “stand for cooking chicken or turkey” disclosed in Publication No. D612693. Given the many products and services associated with Thanksgiving, the abundant number of turkey-related patents is unsurprising. #omnilegalgroup #patents #thanksgiving #turkey

Lululemon’s Design Patents v. Amazon’s New Line of Athleisure Attire

Amazon.com Inc. recently announced its intention to make a foray into private-label athletic attire. While Lululemon already faces competition from brands such as Nike, Under Armour, Athleta, as well as others, the e-commerce company may pose a novel threat with its price-driven strategy. Moreover, in order to manufacture this new line of sportswear, Amazon has contracted Eclat Textile Co., a top Lululemon supplier that helped the yoga-pant giant create its signature Luon fabric as well as newer materials. This may prove problematic for Lululemon as it lacks the proper intellectual property protection to halt Amazon from invading its market. Not only is Lululemon known for its high-end technical athletic apparel, the Canadian retailer has previously been deemed “the fashion industry’s biggest patent troll” due to its aggressive acquisition of design patents and protection of its product line therewith. While the athletic retailer owns over 45 patents on its sports gear, most of these patents are focused on design aspects rather than the actual fabric used in the garments. Design patents cover the ornamental, nonfunctional aspects of a product’s design and provide 15 years of exclusive use. In contrast, utility patents cover the useful features of a product, that is, the way it is used or how it works, and provide for 20 years of exclusivity. With primarily design patents in its portfolio, Lululemon cannot stop Amazon from manufacturing and selling fabrics that are nearly identical to Lululemon’s signature materials at a fraction of the price. While many industry experts have opined Lululemon will likely see its market share and profit margins diminished by Amazon, Lululemon’s CEO, Laurent Potdevin, dispelled such concerns through assurances that the athleisure company would continue to focus on innovation and the high-end of the market. Potdevin further claimed, “I think Amazon is mostly around commodity product. That’s not our sandbox.” #omnilegalgroup #patents #lululemon #amazon

Did you know?

Famous athletes commonly trademark their names and jersey numbers. Indeed, Shaquille O’Neal owns “Dunkman” for apparel and accessories, “Shaq-Fu” for books, softdrinks, and video games, and “Shaq Attaq” for clothing and footwear. Shaq even trademarked his signature. Similarly, Tim Tebow holds the trademark for “Tebowing,” which is the kneeling prayer stance he took before games. Not only do these sports icons trademark their personas, many also seek protection of inspirational slogans or phrases. Back in 2007, the Lance Armstrong Foundation registered “Livestrong.”  More recently, LBJ Trademarks LLC, owned by Lebron James, trademarked “Nothing is Given. Everything is Earned.” Olympic sprinter Usain Bolt trademarked an icon of his signature lightening bolt stance as well as the phrase “Bolt to the world.” Pro-athletes seek these trademarks to create a personal brand and generate income outside their athletic career.

Hasbro Sniffs Out New Way to Trademark Play-Doh

Scientific research has consistently confirmed that olfaction is strongly associated with memories and emotions. As such, the use of this less-exploited sense as a marketing ploy provides an advantage over other crowded channels, such as visual or auditory. Earlier this year, Hasbro filed an application for registration of the scent of its Play-Doh toy modeling compound as a trademark. Trademarks serve to distinguish the products and services of one company from those of a competitor in the minds of consumers. Trademarks are commonly words, designs, or combinations thereof, but other non-traditional trademarks, including scent, have been recognized by the U.S. Patent and Trademark Office. Hasbro’s application describes Play-Doh’s scent as “a unique scent formed through combination of a sweet, slightly musky, vanilla-like fragrance, with slight overtones of cherry, and the natural smell of a salted, wheat-based dough.” The toy company also mailed a container of the putty-like substance for the examiner to smell. In order to be granted registration, Hasbro must prove the scent of Play-Doh is distinctive. The scent mark must be unique from other marks such that consumers have come to recognize that scent as being associated with that company and its goods or services.The evidence may be either direct, including consumer surveys, or indirect, including promotional materials, revenue data, and number of years in use. Hasbro claimed acquired distinctiveness in its application based on 62 years of use, beginning in 1955. Moreover, the scent must be non-functional in that it does not serve a utilitarian purpose. More particularly, the scent cannot be necessary to the use or purpose of the product and cannot affect its cost or quality. In response to the toy company’s application, the USPTO issued an office action finding the use evidence to be insufficient. Additionally, the examiner opined that scent in the context of toy modeling compounds is ubiquitous and does not serve as a source identifier. To overcome these obstacles, Hasbro will need to submit additional evidence of the acquired distinctiveness of Play-Doh’s scent. #omnilegalgroup #trademark #Hasbro #PlayDoh

Recent Foreign Brand Victories in China Demonstrate Efforts Against Bad Faith Trademark Applications

In the past, the general impression has been that trademark law in China weighed heavily in favor of local companies over foreign brands. This has proven problematic for many global companies due to the fact that the need to think about intellectual property protection in China is an inevitable reality. Then, at the end of last year, Michael Jordan received a rare ruling in favor of a foreign brand in a Chinese court. The basketball legend had sued Qiaodan (Michael Jordan’s Chinese name) Sports in 2012 claiming the local company had built its business around his name and famous jersey number. Holding in favor of Michael Jordan, the court found the Chinese company’s actions evidenced “malicious intent.” New Balance also received a victory in China earlier this year after it sued three Chinese companies which were all using a highly similar logo on shoes it sold under the name “New Boon.” New Balance received a hefty damages award of $1.5 million after the court decided the defendants had damaged New Balance’s business reputation and depleted its market share in China. Additionally, China’s trademark office recently rejected an application for “MUSK & Chinese Characters” for “electrical vehicles,” which was filed by a Chinese individual. It found the application had been filed in bad faith without the authorization of the widely known opponent. Article 7 of the Trademark Law of China provides generally that use and registration of a trademark should follow the principle of good faith. Moreover, Article 44.1 states that if a mark was registered through “fraudulent or other illegitimate means,” the trademark office itself may invalidate the mark or others may bring an action to do the same. Taken together, these laws and recent court rulings indicate China is taking actions against bad faith trademark applications. However, the trademark office remains overwhelmed with applications and examiners do not have sufficient time to perform a proper analysis of each filing. Thus, brand holders seeking international protection of their intellectual property rights must closely monitor the Chinese trademark office. #omnilegalgroup #trademark

Candy Companies Trademark Shapes and Designs of Halloween Treats

Classic trademarks consist of word or graphic elements or a combination of the two. However, a trademark may consist of colors, sounds, or even shapes of goods. Various candy manufacturers have taken advantage of this by requesting registration of the designs and shapes of their treats as a trademark. For instance, Hershey was granted trademark protection for its classic chocolate bar being described as “a configuration of a candy bar that consists of 12 equally-sized recessed rectangular panels arranged in a four panel by three panel format with each panel having its own raised border within a large rectangle.” The chocolate conglomerate also holds trademarks for the iconic Hershey’s Kiss plume emanating from the top of the candy. Another chocolate maker, Toblerone, has also been successful in trademarking the classic triangular shape of its Swiss chocolate. Nestle, on the other hand, has not been so fortunate as earlier this year, the high court in the UK rejected the candy-maker’s attempt to trademark the four-fingered shape of the Kit Kat bar. In receiving trademark protection, a design or shape must be either “inherently distinctive” or have “acquired distinctiveness,” meaning the public has come to recognize that element as being representative of a particular company. Thus, the shape of a candy bar must be a source identifier. #omnilegalgroup #trademark #halloweencandy #Hershey #Toblerone #Nestle #KitKat