Patent and Trademark

Why should trademark registrants prepare for a heightened level of scrutiny upon renewal of their marks?

Overview of the Trademark Renewal Audit Program

If you registered a trademark and are looking to renew the registration, it is important to be prepared for a heightened level of scrutiny. Why? Because the United States Patent and Trademark Office (USPTO) established a program requiring certain trademark registrants to do more than simply renew their trademark and substantiate their continued use of the items listed in their trademark application, or applications. The new program is an audit whereby the USPTO is requiring trademark registrants to ensure that every item listed is being actively sold in connection with the registered trademark.

• New Audit Program Revealing Inaccurate Trademark Applications

The USPTO launched the audit program in November of 2017. Since its launch, the USPTO discovered that around 50 percent of registrants needed to delete at least a portion of their listed goods and services. However, it is worth noting that the registrations flagged as needing to be amended were created prior to the launch of this audit program. As a result, there is a good chance that the trademark owners did not review their registrations carefully to ensure that every item listed is being sold actively in connection with the registered trademarks.

• What to Expect If You are Selected for a Trademark Audit

Not every trademark owner is going to be subjected to an audit. According to the USPTO, the audits are conducted randomly. In addition, the audit program is currently limited to registrations for which a registrant submitted a renewal filing.

If your mark winds up being selected for an audit, you will receive a “Post-Registration Office Action” notice from a specialist or staff attorney with the USPTO. This notice will then be recorded in the registration’s file in the Trademark Status & Document Retrieval database.

• How to Effectively Respond to an Audit

If your mark is selected for an audit, your response needs to have two key components:

1. Evidence that your trademark is currently used in commerce. All of your goods and service utilizing the trademark need to be accounted for in your response.
2. A formal statement that is accompanied by a signed declaration or affidavit. Here is a sample statement:

“The owner/holder was using the mark in commerce on or in connection with the goods and/or services identified in the registration for which use of the mark in commerce is claimed, as evidenced by the submitted proof of use, during the relevant period for filing the affidavit of use.”

• What Happens If the Audit Raises Red Flags

If the USPTO determines that your response failed to meet the requirements of the audit and your goods and/or services remain in the registration without acceptable proof of use, expect to receive a second Office Action requesting you provide sufficient proof of use for all remaining goods and/or services.

The response time for an audit is currently six months from the issuance of the Office Action.

Key to Prevailing an Audit – Detailing Active “Commercial Use” of All Goods and Services Claimed in Your Registration Prior to Filing Your Renewal

The best advice to ensure you prevail in a USPTO audit is to work with your Los Angeles trademark attorney and come up with a strategy for thoroughly vetting each and every item listed in your registration before filing.

If you need assistance with a trademark renewal audit, contact the reputable Omni Legal Group at 855.433.2226 to schedule a confidential case review. We are a premier Los Angeles trademark law firm with offices in LA, Santa Monica, and Beverly Hills. Our team of experienced Los Angeles trademark attorneys specialize in protecting your intellectual property and work tirelessly to secure your patents, trademarks, and copyrights. www.OmniLegalGroup.com.

Can the United States Space Force lose its trademark to the Netflix series by the same name?

            While President Trump officially unveiled the flag of the country’s newest military unit, Space Force, Netflix has been working to secure trademark rights to the same name for its comedy series across the globe. Prior to the series’ launch in late May, the popular streaming company secured rights to the show’s logo in certain countries in Europe, as well as, Australia and Mexico. The Department of the Air Force has since filed its own United States trademark applications for registration of “SPACE FORCE,” both of which remain pending. Currently, the Trademark Electronic Search System indicates Netflix has not yet attempted to secure trademark rights to “SPACE FORCE” in this country.

            In May of this year, President Trump signed the 2020 Armed Forces Day Proclamation, officially creating the United States Space Force. In so doing, President Trump indicated that the branch would be aimed at protecting strategic American space infrastructure, including communications, navigation, and spy satellites from adversaries. In signing this proclamation, the President also unveiled the official flag of the new military branch, which included the Space Force logo. According to the White House, the colors used on the logo are meant to symbolize the “vast recesses of outer space.” Moreover, the logo includes an elliptical orbit with three large stars, each of which are meant to represent the branches’ three-pronged purpose: organizing, training and equipping Space Force troopers.

            Netflix first filed to register its “SPACE FORCE” trademark in January of 2019 for the Netflix series starring Steve Carell. Since then, the entertainment giant has succeeded in securing rights in Australia, Canada, Mexico, and the European Union for entertainment services in the nature of a comedic drama television series. Netflix has also secured registration of the mark as applied to calendars, greeting cards, clothing, Christmas tree decorations, dolls, exercise equipment, and other goods in Canada. Moreover, Netflix holds other applications for the mark as applied to additional goods and services in Australia, Europe, and Canada, all of which remain pending. Most recently, Netflix sought registration of the mark in Mexico for a wide range of goods, such as calendars, posters, books, clothing, Christmas tree decorations, toy figures, and numerous others. Despite these multiple international filings under “Netflix Studios,” no U.S. applications to “Netflix Studios” have been filed.

            Beginning in March 2019, the Air Force filed two intent-to-use applications for the standard character mark for “SPACE FORCE.” Standard character marks are those which allow the applicant to register the words of the mark in any design, capitalization, or font. To date, the Air Force has not filed any trademark applications for the Space Force logo. However, standard character marks not only provide broader protection than design trademarks, they also constitute the broadest type of trademark protection permitted in the United States. These applications provide a large range of goods and services, including space vehicles, promoting public awareness of the need for the United States Space Force, educational services, clothing, metal and non-metal name plates, backpacks, belt buckles, beer mugs, and cigarette lighters.

            Intent-to-use applications are filed when the applicant may or may not have already been using the mark in commerce prior to filing their application. Such applicants must file based on a good faith or bona fide intent to use the mark in commerce. Along these lines, the United States Patent and Trademark Office relies on the “first-to-use” concept in trademark registrations. Under this concept, the entity which first uses a given trademark in commerce then secures the rights to it. Oppositely, most other countries follow the “first-to-file” rule, essentially creating a race to the trademark office in order to secure rights. Thus, in the event a dispute arises between the Department of the Air Force and Netflix, the entity which first used the mark in commerce is likely to prevail.

            Ironically, some have commented that the logo for the military’s newest branch appears confusingly similar to Star Trek’s Starfleet logo.  Others have rebutted that imagery such as arrowheads, orbits, stars, planets, and swooshes have been used in space emblems long before either the Starfleet or the space force logo. However, interestingly, there exist more than twenty applications and/or registrations which include the phrase “space force.” For instance, one application was filed in August 2019 for computer software in the field of parking lot services. As another example, another “SPACE FORCE” intent-to-use application was filed in May of this year for dietary supplement drink mixes, clothing, and energy drinks. Others exist for various goods and services, including video games, toys/action figures, community service organizations, and writing instruments.

            Two identical trademarks can coexist if they are used in wholly unrelated industries. In particular, trademark infringement exists when there is a likelihood that consumers will be confused, mistaken, or deceived as to the source of particular goods or services. In this manner, if consumers are likely to believe the United States military’s newest branch is connected to the Netflix series, trademark infringement exists. For infringement to exist in this case, consumers would have to be likely to believe that Netflix is sponsoring the military’s training of fighting astronauts or that the federal government produced a television series about it.

Can artificial intelligence be a patent inventor?

            The United States Patent and Trademark Office (USPTO) was recently required to determine whether a patent application may list artificial intelligence as an inventor. At issue were two patent applications for two separate, seemingly mundane devices. One application described a shape-shifting container for food and the other an emergency flashlight. The two inventions were created by DABUS, an artificial intelligence system created by physicist and artificial intelligence researcher Stephen Thaler. In a published decision, the USPTO determined that neither DABUS, nor any other artificial intelligence, can be listed as an inventor on a patent filing.

            For a patent to be granted, it must satisfy certain requirements. The invention must be (1) patent eligible in that it is either a machine, process, article of manufacture, or a composition of matter; (2) useful; (3) new; (4) nonobvious; and (5) described with enough particularity that a person of ordinary skill in the relevant technology field would understand the invention without undue experimentation. Aside from these patentability requirements, the application must be filed with certain documentation, including, among others, an application data sheet which identifies the inventor(s).

            When filed, the application papers at issue included an application data sheet, a substitute statement in lieu of a declaration, an inventorship statement, and assignment documentation assigning the entire right title and interest to Stephen Thaler. The application data sheet, which identifies the inventor or joint inventors of an invention, identified a single inventor with the given name “DABUS” and the family name “Invention generated by artificial intelligence.” Similarly, the substitute statement was executed by Stephen Thaler, who identified himself as the legal representative of DABUS and the applicant of the invention. Substitute statements take the place of an oath or declaration when an inventor is deceased, under a legal incapacity, has refused to execute an oath or declaration, or cannot be found or reached after diligent effort.

            In August 2019, a Notice to File Missing Parts was issued, which indicated the application data sheet “did not identify each inventor by his or her legal name.” In instances where a Notice to File Missing Parts is issued, the patent application will still be accorded a filing date and application number. The applicant is then given a certain time period (usually two months) to file all required items and any fee. In this case, although the Notice sought a new application data sheet with correct inventorship, the applicant instead filed a petition requesting supervisory review of the Notice. This petition was dismissed, and the applicant requested reconsideration of this decision. The USPTO agreed with the prior ruling and therefore, refused to vacate the decision.

            According to the applicant, DABUS is programmed as a series of neural networks that have been trained with general information in the field of endeavor to independently create the invention. Thaler claims it was DABUS, not a person, that recognized the novelty and importance of the purported invention. Moreover, DABUS was not trained to solve any specific problem nor was it trained on any special data relevant to the invention at issue. As a result, Thaler maintains the position that inventorship should not be limited to natural persons.

            In explaining its decision, the USPTO provided several statutes, including that which sets forth the requirement that a patent application include “the name of the inventor for any invention claimed in the application” and that which defines “inventor” as “the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.” The USPTO determined that the statute precludes the applicant’s proposed broad interpretation of “inventor.” Indeed, it was also explained that the terms “whoever,” “himself,” “herself,” and “person” suggest a natural person and not a machine. Further, the USPTO cited several Federal Circuit Court of Appeals decisions that set forth that drafted must be natural persons. Overall, the USPTO found that the language of the patent laws as written by Congress and as subsequently interpreted by courts unequivocally supports the position that machines cannot be inventors.

Can a test for COVID-19 be subject to patent infringement?

            Labrador Diagnostics has filed a lawsuit in the United States District Court for the District of Delaware against BioFire Diagnostics, a company that makes medical testing equipment and most recently, developed a test for the new coronavirus. The lawsuit alleges patent infringement of two of Labrador’s patents related to testing the presence of substances in bodily fluids. Labrador purchased these, and other, original Theranos’ patents after the failed blood-testing startup sold its patent portfolio to Fortress Investment Group in 2018.

            One of the Theranos patents, United States Patent No. 8,283,155, teaches point-of-care fluidic systems and uses thereof. The patent describes a generic architecture for a machine that automates testing for the presence of substances in bodily fluids. The system includes a test device and a reader device. The test device contains both the patient’s bodily fluid to be tested and the reactants required to perform the test. However, no particular reactants, other than generally an immunoassay and nucleic acid reagents, or bodily fluids are disclosed. The reader device triggers the chemical reactions necessary to perform the test and reports the results. Again, however, no particular testing protocol is disclosed.

            The other Theranos patent-in-suit, United States Patent No, 10,533,994, teaches systems and methods of sample processing and fluid control in a fluidic system. The system generally comprises a cartridge for sample collection and assaying and a reader assembly for detection of the presence or absence of the analyte and communication of the same. Again, no particular reactants or bodily samples are disclosed, nor are any reaction types. Indeed, the reactant is described as something that “reacts with the analyte to yield a signal indicative of the presence of the analyte.”

            A working prototype or actual use of an invention is not needed to obtain a patent. In this way, your technology need not necessarily work in order to obtain a patent. This is how Theranos managed to obtain numerous patents regardless of its famed inability to produce functioning technology. Indeed, all that is needed to obtain a patent is a novel, non-obvious invention. In addition, a patent document must sufficiently describe the technology on which a patent is sought by disclosing the technologic knowledge upon which the patent is based and demonstrating that the inventor was in possession of the invention that is claimed at the time of filing.

            The defendant-in-suit, BioFire Diagnostics, offer a BioFire Filmarray machine that automates detection of a variety of pathogens. Labrador claims that each of BioFire’s FilmArray devices, including the accompanying pouches and software, infringe its patents. Most recently, BioFire added coronavirus to the slate of pathogens capable of detection. Prior to the initiation of this litigation, the medical diagnostic supply company hoped to make this test publicly available to customers by the end of March.  

            After filing its lawsuit last week, a slew of bad press fell upon Labrador, including multiple articles referring to it as a “patent troll” and “tone deaf” given the recent coronavirus crisis. As such, earlier this week, the small firm announced it would grant royalty-free licenses to companies developing COVID-19 tests. The company also claims that it was unaware that BioFire was developing a coronavirus test at the time the lawsuit was filed. Nonetheless, Labrador appears to be intending to proceed with the lawsuit as no notice of dismissal has been filed.