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Analogous Art for Design Patents

By Austen Zuege

The Federal Circuit issued an en banc decision in LKQ Corp. v. GM Global Tech. Operations LLC that substantially altered the obviousness analysis for design patents. The so-called RosenDurling framework was overruled (largely sidestepping the question of its abrogation by KSR). The patentability of ornamental designs of useful articles will now be under the same Graham v. John Deere obviousness standard that applies to utility patents. The LKQ decision emphasized that analogous arts requirements still apply to references cited for obviousness. But what will (or might) the analogous art requirements mean specifically in the design context? The following discussion explores some possibilities in a rough initial take on what might follow in the wake of LKQ.

Analogous and Non-Analogous Art: Two Tests or Prongs

In order to be used as a prior reference to try to establish obviousness, a given reference must be “analogous art”. There are two tests or prongs used to assess whether or not a given reference is analogous art (at least for utility patents). A reference is analogous art if: (a) it is from the same field of endeavor as the claimed invention (even if it addresses a different problem), or (b) if it is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). To be analogous, a given reference must satisfy only one of these two tests/prongs. Although the evidence and analysis may overlap, so some prior art might satisfy both tests.

The analogous arts framework has been around for a long time with respect to obviousness analyses for utility patents. Courts have generally taken a broad and expansive view of what constitutes analogous arts, especially in light of KSR. But it remains in place as a check against hindsight bias by establishing requirements for the factual foundation needed in order to rely on a given prior art reference for an obviousness argument. In that sense, it is about assessing whether a person of ordinary skill would have been motivated to look at or otherwise consider a reference at all in relation to the claimed invention at the time of invention (or effective filing date).

Analogous Art Analysis for Designs: Some Initial Thoughts

Although the LKQ decision paints its holding as something of a modification of the Rosen-Durling framework, that seems to be mainly a diplomatic attempt to counter the “chicken little” arguments that a disastrously chaotic free-for-all would ensue if design patents were held to the same standards as utility patents under KSR. Application of the non-analogous arts standard to designs going forward will likely not be merely a continuation of business-as-usual. LKQ represents a major shift in the patentability analysis for design patents. As a result, design patent prosecution will likely move further away from a quasi-registration process (a prospect that Robert Post once described as “intoxicating” applicants and their agents), with design examination extended beyond rejections for mere procedure and formality defects towards more substantive concerns. Obviousness rejections based on combinations of prior art references—long a ubiquitous feature of utility patent examination—should become more common. And similar effects should be seen in litigation and Patent Trial and Appeal Board (PTAB) challenges.

Yet the LKQ decision is hardly definitive about what will come next. For utility patents, the non-analogous arts test is rarely invoked and courts have generally taken a broad view of analogous art. But there are few if any prior cases applying analogous arts requirements to designs. That means there are many open questions and practical considerations about how it should be approached for designs. Let us turn to the two prongs/tests with those things in mind.

Analyzing the Same Field of Endeavor for Designs

The LKQ decision reaffirmed a statement from an old case that “[t]he scope of the prior art is not the universe of abstract design and artistic creativity, but designs of the same article of manufacture or of articles sufficiently similar that a person of ordinary skill would look to such articles for their designs.” Even though design patents are short, all design patents have to specify an article of manufacture. Indeed, U.S. Patent & Trademark Office regulations specify that “[t]he title of the design must designate the particular article.” (37 C.F.R. § 1.153(a)). So an applicant cannot obtain a design patent without specifying a particular article in the title, even if no further textual description is required.

What is notable here is that LKQ quotes a prior case that encompasses not only the same article of manufacture, but also “articles sufficiently similar that a person of ordinary skill would look to such articles for their designs.” This matters in view of a string of rather questionable Federal Circuit cases that took narrow views that only prior art for the same article of manufacture qualifies as prior art for validity analysis or for three-way infringement comparisons. I call these cases questionable in part because they contradict earlier precedent, but also because their conclusions are poorly explained or highly tendentious. So, a key takeaway is that in an en banc decision the Federal circuit has ruled that the analogous arts same field of endeavor prong/test must extend beyond the same article. This has the effect of neutralizing the impact of In re SurgiSil on the obviousness question (without yet resolving the conflict between SurgiSil and older precedent for anticipation).

As one example, LKQ may permit some generalizing of the article for the field of endeavor prong/test. This can be thought of as saying that the field of endeavor may be a genus of which the claimed invention is a species. For instance, if a particular design patent is for a plow of the sort used with a tractor in a farm or garden, the field of endeavor might be considered to be farm or tractor implements rather than only plows. That might mean that other implements like harrows used with tractors are analogous art. This could mean that a design that merely carries over the ornamental appearance of one farm implement to a different one is merely obvious, even though the implements serve different functions. Or, a prior art reference for a cat toy might be in the same or similar field of endeavor as a claimed dog toy. Different articles might also be similar, or part of the same genus, if they are known substitutes/alternatives.

But there might other ways to look at “similarity” for the field of endeavor prong/test for designs. Take an example of different articles sold together as a set or kit. There might be, for instance, a cutting board plus a large wooden fork and spoon that are sold together as a set, with common ornamentation on each item. This might be common surface ornamentation and/or a similar shape/configuration of handles of each item. Even though cutting boards and forks/spoons are different articles with different characteristics and uses, their sale together as a set may support a conclusion that they fall within similar fields of endeavor. Or there may be different articles advertised together as part of a product line with similar ornamentation, even if the articles are only sold separately. Such approaches to field of endeavor similarity are not entirely unlike the evaluation of the relatedness of different goods/services in trademark cases by looking at proffered evidence that they commonly emanate from a single source under a single brand.

Analyzing What is Reasonably Pertinent to the Problem Faced for Designs

LKQ recognized that a design patent itself does not clearly or reliably indicate the particular problem with which the inventor is involved. The decision further stated that it does not foreclose that art from outside the same field of endeavor could also be analogous. Apart from stating that this is a fact question to be addressed on a case-by-case basis, the court explicitly left this an open question. It will therefore be up to future cases to further develop the application of this standard. It will be interesting to see how this open question will eventually be resolved. What follows are some initial thoughts and suggestions, which draw from insight from social sciences.

Before going further, though, let me say that it is fair to wonder what problem-solving means for non-functional ornamental designs. This opens a rather large can of worms that is the question of whether industrial designs regarding ornamental appearance really involve “invention” at all. This is a big question because, in turn, it implicates the question of whether design patents, first made possible in the 1842 Patent Act following a proposal to have copyright protection for designs modeled on then-recent British law, are constitutional or not. Justice Douglas observed long ago that “attempts through the years to get a broader, looser conception of patents than the Constitution contemplates have been persistent.” Does that apply to the very existence of design patents? Although these concerns should be borne in mind, broader questions of constitutionality are for another day. Let us turn to the much narrower question of what designing really involves in terms of solutions it purports to offer.

Setting aside design patent protection pursued for improper purposes (such as to try to preclude functional interoperability), most industrial designs are about marketability. This is a topic Thorstein Veblen wrote about in terms of how the relationship between workmanship and salesmanship was often wrongly blurred by treating the cultivation of saleable appearances as a necessary engineering production cost.

Under that rubric, it may be helpful to look at the ways that designers approach their work. Reference to storytelling and narrative are common. It is easy to find assertions that “[t]he story is the primary motivating event that leads to design and innovation.” Or that design is cultural and tells a story about things like place/geography. It is also said that product design can “tap into users’ emotions” by building on a motivating narrative. Indeed, industrial design training courses in “form fundamentals” even emphasize “How Great Storytelling Leads to Great Industrial Design.”

The way that marketing proposals are presented to clients is also informative. It is typical for advertising pitches to include statements about things like “color psychology” to justify choices of colors in terms that are emotive and feelings-based. For instance, “this is yellow as a symbol of kindness, warmth, and empathy.” Whether this is deployed in a way that is scientific or more akin to pseudo-sciences like phrenology or alchemy is worth consideration here. But the fact remains that visual presentations are presented in this manner in real-world scenarios. Whatever criticisms might be made against the bases for these theories, or their use in a given situation, they might well be what a designer of ordinary skill would consider when devising a new industrial design. The crux is the purported link between social meaning and visual appearance that is known or otherwise already available in the art. And reference to marketing, advertising, and branding rather than product design specifically is still fair, because Federal Circuit panels have held—for better or worse—that design patent and trademark standards are analogous and that blurring distinctions between them is harmless. And talk about storytelling and narratives is often framed as simultaneously being about both product design and branding so that users/customers “understand the value of the product and to build a deeper connection with the brand.”

There have been many efforts to analyze social significance of visual representations. A fascinating example is the television documentary mini-series and corresponding book “Ways of Seeing” by John Berger et al. This looked at artworks and assessed, through critical studies, how certain depictions and themes reinforced things like sexism and patriarchy. The analyses presented are open to criticism, particularly in terms of their underlying essentialism (in somewhat the same way patent claim construction rules that seem to simply decree that a given term means one particular thing without explanation). After all, Beethoven’s “Ode to Joy” in his 9th Symphony has been used to represent just about every possible worldview (even fascists used it!), which tends to refute essentialist notions that there is any particular meaning inherent to it. But, still, the “Ways of Seeing” series and book presents a very useful reference (easily accessible to any viewer or reader) that informs how reasonably pertinent problems might be assessed for design patent analogous art. That is, it may be possible to ask what sort of (non-technical/non-functional) social objective is sought to be promoted, and then look at ways that other designers have sought to express those non-visual concepts visually before with the same or different types of articles.

The essentialism of Berger et al.’s approach might be softened or avoided by looking more to something like Pierre Bourdieu’s sociology, which investigates meaning in terms of social fields. Bourdieu’s famous book La Distinction [Distinction: a Social Critique of the Judgement of Taste] is useful in exploring how artistic tastes reflect attempts to draw social distinctions. People’s tastes associate them with one group and distance them from others. To (over)simplify this, taste is less about inherent qualities of artistic works or isolated individual preferences than reflecting social distinctions arising from social factors that have meaning as part of a larger field in which individual instances cluster as nodes. For example, if someone says they “like all types of music except country” they are are probably trying to convey that they are not like the sorts of people who listen to country music. And “disco sucks” epithets were, historically, often effectively dog-whistle homophobic slurs. While Bourdieu’s more formal methods involving surveys will be impractical to routinely apply in patent litigation, a book like David Lee’s Battle of the Five Spot, about why jazz musician Ornette Coleman’s 1959 performances at a New York City club were musicologically significant, shows that the general framework can be applied without extensive surveys.

And this comes up in more seemingly utilitarian contexts as well. A 2021 segment on the long-running British television series Gardeners’ World by Advolly Richmond explored the origins of lawns. These came into being in the later middle ages in Europe on aristocratic estates. They required having many servants to mow them, and technology that made such work feasible. The subsequent expansion of lawns can be seen—though the lens of Thorstein Veblen’s seminal book The Theory of the Leisure Class: An Economic Study of Institutions—as people of lesser means attempting to emulate feudal aristocracy with the aid of improvements to lawn mower technology. That is, lawns were a symbol of aristocratic wealth and privilege and the appearance of a “well kept” lawn evolved into widespread use as a visual symbol meant to convey the owner’s wealth (i.e., ability to hire a servant or available free time to mow him- or herself with a purchased lawnmower device) and/or connection to aristocratic values.

Fads are also relevant here. Take computer presentation slide deck templates. Companies often have these and there are trends/fads that develop such that different templates used by different companies share common features at given times. For instance, one fad was to use blocky sans serif fonts and high-contrast color schemes incorporating bright, vivid colors. Suffice it to say, fads are social determinants that can provide motivations to those devising ornamental designs. And designing slide deck templates is not altogether that different from, say, designing the ornamental appearance of graphical user interfaces and computer-generated icons, which are the subject of design patents. How many companies have explicitly tried to have a minimalist computer search interface that looks “like Google’s”?

What does all this social science framework really tell us about problems faced for those developing industrial designs? Well, if some bit of evidence (more on that later) establishes an intent to modify an existing product design to be more aggressive and powerful looking, then looking to prior art with bigger, thicker, taller, etc. characteristics that create a more aggressive and powerful visual appearance would seem to be analogous in terms of the problem faced, even if pertaining to a different type of article or different field of endeavor.

In a more direct way, there can be situations in which designers reproduce known ornamentation of their own or co-workers. For instance, there might be an explicit intention or goal to “create a sense of continuity and coherence across a brand’s products and services.” Some ornamental feature or general style of ornamentation might simply be copied or ported over to another design project. In the design patent context, this sort of motivation is undoubtedly relevant to questions about the obviousness of re-using and adapting known ornamental aspects of one product to another, even when dealing with different types of products/articles.

The parties in LKQ disputed whether designs solve problems at all. Perhaps another way of looking at that (in a Veblenian way) is to say that most or all designs address the problem of saleability, which is not specific enough to any particular claimed design to be of use for the obviousness analysis. And the word “problem” might imply functional solutions rather than ornamental ones—although dictionaries merely define that word as a question to be considered. But, in this author’s view, the social science guidance discussed above still bears on having a second prong or test for analogous arts for design patents. Perhaps it is simply a matter of renaming the second prong/test, maybe as being about the realization of a type of (visual/social) impression sought rather than the “problem” faced. Here again, we run up against the issue (for another day) of whether ornamental designs are really “inventions” at all.

Evidentiary Considerations

Design patents are scant on text. Their prosecution histories might contain some relevant information about the field of endeavor and/or problem faced, but only on occasion or inferentially (for instance, in terms of what prior art was cited or not cited, or through amendments to the title). And, unique to design patent practice, an unpublished appendix of the original application might contain information relevant to what is analogous art, but not always. Family-related or commonly-assigned or -invented utility patent applications, if they exist, will also be a rich source of information, as they have been for functional vs. ornamental analysis in the past.

In the longer term, design patent applicants might choose to voluntarily insert some sort of problem statement in an application (possibly in the appendix), or the Patent Office might institute a new rule requiring such a statement. While patentees might balk at doing this, it may give the patentee some measure of input or control over the way analogous art analysis proceeds.

Notably, the LKQ decision cites approvingly Airbus S.A.S. v. Firepass Corp., a case that looked at the analogous art “reasonably pertinent” prong/test and said that extrinsic evidence can be considered to link the claimed invention and cited prior art (that fell in a different field of endeavor) by a common technical problem. Airbus relied on KSR to hold that overly strict problem statements cannot be used to limit obviousness to express suggestions to combine references or to otherwise ignore or contradict the background knowledge possessed by a person having ordinary skill in the art. Extrinsic evidence can thus be used to help define the problem faced. And extrinsic evidence will undoubtedly play an even larger role in addressing questions about analogous art status for design patents than with utility patents, particularly when defining the “problem faced” or a similar inquiry.

In litigation, discovery around a designer’s intentions and objectives may be useful. This might convey the problem faced. Advertising by the patentee might also be a fertile source of that kind of information. Do ads highlight a “sleek” look or “curved” lines of the patented product, for instance, like televised car commercials often do? Information about the work experience of a designer named on a design patent might also be relevant to the field of endeavor and scope of “similar” articles.

One difficulty, however, is trying to evaluate any link between a cited prior art design patent or printed publication reference and a common problem faced. If the reference is silent on its face about this, what sort of evidence will either link it to the challenged patented design or differentiate it? A conventional approach is expert testimony. Just in the way copyright litigation can involve expert testimony from musicologists, or the way utility patent litigation involves scientific or engineering expert testimony, there are opportunities to present testimony about links or differences. And, following Airbus, additional extrinsic evidence such as textbooks, printed publications, other patents, etc. might be relevant to link (or differentiate) a given prior art reference. Evidence about fads, trends, or brand/product product line coherence might fall in this category. Another possible approach, less conventional historically, is a survey of ordinary consumers. If we return to the example of making something look more aggressive and powerful, would a significant percentage of ordinary observers use those same words to describe a given prior art reference? Or would a survey somewhat similar to a trademark likelihood of confusion survey also potentially provide relevant evidence? Perhaps such a survey might focus on something other than, or rather more specific than, the overall impression, like aspects of the prior art that are a material part of the overall visual impression to the ordinary observer (and which are shared in common with the claimed design being challenged). Testimony from the designer or author of the cited prior art might be possible, if also potentially subject to attack.

May 2024
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Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.

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Q&A Trademarks

What Is Failure to Function?

Trademark applications are sometimes refused for a failure to function. What is failure to function, and what does a failure to function as a trademark refusal mean? This article addresses the relevant requirements for U.S. federal trademark registrations, how to respond to such a refusal, and introduces a few related concepts.

The Function of Trademarks

Trademarks (and service marks) are used to identify the source of goods and services. Put another way, the basic purpose of trademarks is allow consumers to tell apart goods (or services) originating from different sources. Take any commodity—like a car, pen, or frying pan. Branding these with a trademark allows consumers to understand which ones original from company A rather than company B. This allows consumers to rely on branding as an indication of quality, and to avoid counterfeits or fakes that may be of unreliable quality.

The U.S. federal trademark laws, often referred to as the Lanham Act, actually include explicit definitions of trademarks (and service marks). These definitions emphasize that trademarks are indicators of source that distinguish goods from those made or sold by others.

“The term ‘trademark’ includes any word, name, symbol, or device, or any combination thereof— (1) used by a person, or (2) [constructively used by filing an intent-to-use application], to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.”

15 U.S.C. § 1127

Context and Form of Use Matter

In order for something to actually function as an indicator of source (that is, as a trademark), it has to actually be used in that sort of way. That means context and the form of use matter. And these are things are considered from the standpoint of consumer perception.

For instance, the prominence and precise location of a mark on goods or their packaging is important. A phrase buried in the “fine print” on an insert inside a package, but not visible to consumers when considering buying it does not function as a trademark. But a unique and distinctive logo that consistently appears on the front of the same package is likely to be recognized by consumers as a trademark that indicates the source of the goods.

graphic of example trademark specimens of shirts, with one on left showing a branded tag inside the collar and the one one the right shoing an ornamental graphic on the center front of the shirt
On the left, a tag inside the shirt collar is branded with the trademark EXAMPLE. On the right, the stylized wording “EXAMPLE!” appears in an ornamental way across the center front of the shirt.

A common issue is use of things on clothing. In some locations, these thing would be perceived as indicating the source. This includes distinctive branding on the tag inside shirt or attached label. Or sometimes there are conventions like having polo or tennis shirts branded with a logo that appears on a pocket or other location that is recognized by consumers as indicating the source of the shirt. But something on clothing that is merely ornamentation would generally not be perceived as an indication of source and thus fail to function as a trademark. This can arise, for instance, for merely background designs and shapes. These considerations are not limited to clothing either.

Content Matters

The nature of the content of an alleged trademark matters a lot too. Not every word, name, phrase, symbol or design, or combination of such things that appears on a product functions as a trademark. And mere intent that it function as a trademark is not enough in and of itself to make it a trademark. Merely informational matter fails to function as a mark to indicate source and thus is not registrable. That is because consumers would perceive such information matter as merely conveying general information about the goods or services or an informational message, and not as a means to identify and distinguish the applicant’s goods or services from those of others.

Common examples of things that fail to function as trademarks include: (a) general information about the goods or services that does no more than inform the public with reasonable accuracy what is being offered, and including highly laudatory claims of superiority (“best”, “greatest”, etc.); (b) a common phrase or message that would ordinarily be used in advertising or in the relevant industry, or that consumers are accustomed to seeing used in everyday speech by a variety of sources; or (c) something that primarily is or identifies the product itself rather than something that identifies the source of the product.

General Information

What does or does not constitute mere “general information” about goods/services is highly contextual. So it also relates to prominence and location of use, as discussed above; to function as a trademark such usage should stand out from merely information text in some way. Common examples of things that fail to function as trademarks are mere ornamentation, the title of a single work (as opposed to a series), or the name of an artist or author.

Mere model numbers, grade designations, and the like can also be merely information in nature. These depend on context too, including placement and prominence. For instance, the USPTO considers some model numbers and grade designations to be dual-purpose, serving as both a model or grade designation and a trademark. Similar considerations apply to so-called universal symbols, like the recycling symbol with arrows forming a triangle.

For instance, if a product package said “this end up”, most consumers would understand that as merely being an instruction for how to handle the package without damaging the goods inside, and not a trademark indicating the source of the goods. That phrase does not describe any quality or characteristic of the goods inside. Even so, consumers would still not see it as branding. The same could be said for many types of warning labels, address indications, prices, and all sorts of other information that accompanies the sale of goods and services.

In a notable case, two designations for crabmeat (shown below), each containing both stylized wording and graphical design elements, were each refused registration for failure to function. While sometimes the addition of stylization and/or graphical elements can provide sufficient distinctiveness to otherwise non-distinctive wording, those non-textual elements were insufficient here.

The wording was found to be merely informational terminology commonly used in the relevant trade/industry to denote the purity, quality, ingredients, and, for one of them, also the geographic origin. The minimally stylized font created no distinct commercial impression, nor did a simple geometric (circle) shape, which consumers would perceive as a background design or carrier to enclosed wording rather than as a separable design element with trademark significance. The image of a crab was also insufficiently distinctive because it was similar to, or reinforcement of, the meaning of the accompanying wording, and simply informed prospective consumers that the associated product is crabmeat.

Sometimes this relates to descriptiveness too. In one example case, THE BEST BEER IN AMERICA was found to be so highly laudatory and descriptive of the qualities of its product—beer—that the slogan did not and could not function as a trademark. Situations like this involve self-lauditory terms that are normally considered descriptive, and typically involve slogans. But to give one user exclusive rights would be ridiculous. In this sense, general information is incapable of acquiring secondary meaning and thus incapable of functioning as a trademark. This makes sense because all competitors want and deserve the ability to use common lauditory terms and slogans and consumers are unlikely to see them as source-indicators.

But this goes beyond self-lauditory terms. In another case, LITE was incapable of functioning as a trademark for vegetable oil foods and margarine because it merely indicated that the product contains less than the usual amount of some element as with so many other products (in yet another case, both LIGHT and LITE were found generic for beer).

There are therefore two categories of general information. The first pertains to things slightly more removed from the qualities or characteristics of the goods or services, like instructions. The other relates to merely descriptive terms incapable of attaining secondary meaning.

Common Phrases or Messages

Common phrases or messages are interesting, because there are a large number of examples of people and companies seeking to improperly claim a monopoly over them through misuse of trademark law. The following are just a few examples common phrases and messages that failed to function as trademarks:

  • I ♥ DC for use on apparel and souvenirs
  • I LOVE YOU for bracelets
  • EVERBODY VS RACISM for tote bags; t-shirts, hoodies as clothing, tops as clothing, bottoms as clothing, and head wear; and promoting public interest and awareness of the need for racial reconciliation and encouraging people to know their neighbor and then affect change in their own sphere of influence
  • WHITE LIVES MATTER for jogging suits; shirts; sweatpants; sweatshirts; tee-shirts
  • NO MORE RINOS! (meaning “No More Republicans In Name Only”) for a variety of paper items, shirts, and novelty buttons
  • PROUDLY MADE IN THE USA for electric shavers
  • INVESTING IN AMERICAN JOBS for retail store services or promoting public awareness of goods made or assembled by American workers
  • FARM TO TABLE for wine
  • WHY PAY MORE! for supermarket services
  • LEGAL LANDMINES for business coaching services and education services in the field of business
  • 40-0 for T-shirts and other sports-related apparel
  • AOP (an acronym for “appellation d’origine protégée,” which translates from French as “protected designation of origin”) for wine (note: this was not an application for a certification mark)

Although not (yet) the subject of a definitive court ruling, the sports-related message “threepeat” is currently the subject of at least one trademark registration for clothing. But that registration is highly dubious as being directed a widely-used message related to three-in-a-row sports championship victories. There are actually many examples of questionable assertions of trademark rights related to sports, politics, and other things that have not yet seen definitive court rulings, such as LET’S GET READY TO RUMBLE, MAKE AMERICA GREAT AGAIN, and TRUMP TOO SMALL. And both TACO TUESDAY and TACO TUESDAY were voluntarily surrendered without final court rulings.

Aesthetic Ornamentation

Although not specifically called out as a separate category by the USPTO, some alleged trademarks may also have purely aesthetic ornamental value that fails to function as a trademark. This is to say marks without any words may not convey “information” or a “common phrase or message” but still be ornamental. This most often arises with things like clothing designs and alleged trade dress rights, and to some extent overlaps with the concept of aesthetic functionality. But this can include dubious alleged trademark rights in the color red on shoes (reversed on appeal) and three stripes on clothing, for example.

Potential Exceptions

If something acquires distinctiveness through secondary meaning, an otherwise unprotectable mark can become protectable under trademark law. This possibility first arose with the expansion of trademark law in the mid-Twentieth Century (but such things were not widely considered protectable before then).

There is also a controversial possible exception to failure to function problems for so-called “affinity” marks or “secondary source” usage. The U.S. Patent & Trademark Office (USPTO) currently accepts evidence of these things to potentially overcome failure to function refusals. However, this USPTO policy is not supported by any significant court decisions. Indeed, in a case challenging the legal foundation of that policy, a judge commented that even though a multibillion-dollar industry has grown up around these practices, “that a house is large is of little matter if it’s been built on sand.”

The weirdest exception is for the olympics. There is a separate U.S. law (35 U.S.C. § 220506) that gives the olympic committee exclusive rights broader than normal trademark law in the emblem consisting of five (5) interlocking rings and the words “Olympic”, “Olympiad”, “Citius Altius Fortius”, “Paralympic”, “Paralympiad”, “Pan-American”, “Parapan American”, “America Espirito Sport Fraternite”, or any combination of those words. This law was challenged but upheld by a divided Supreme Court, with the dissent pointing out how this law eliminates defenses from regular trademark law that are significant to the constitutionality of federal trademark law. While normally trademark law does not provide rights in gross, that is not the case for the olympics.

How to Overcome a Failure-to-Function Refusal

Overcoming a failure-to-function refusal of a trademark application often requires providing evidence of consumer perception that the applied-for mark actually does function as a trademark, or establishing secondary meaning. Of course, these will only be realistic possibilities if the mark actually does function as a trademark. While occasionally it might be possible to respond to a refusal with mere argument, without submitting evidence, most of the time arguments will require corroborating evidence to be successful. Such evidence might be a substitute specimen of use or evidence of the impression the matter makes on the relevant public (such as survey results, internet evidence, etc.).

In the broader sense, having trademark rights in something requires actually using the mark as a trademark. This means making efforts to engage in proper usage and avoid improper use. If that is done, then it should be possible to gather evidence to support an argument that there is trademark usage involved. But it will not be possible to generate evidence of trademark use when something does not function as a trademark and is not or would not be considered a trademark by consumers. For example, mere use of the “TM” or “SM” symbol cannot transform an unregistrable designation into a registrable mark. And, importantly, evidence of function as a trademark must outweigh evidence of widespread non-trademark usage.

Another approach is to amend an application to add limitations regarding the relevant consumers, or delete certain goods/services. If the identification of goods/services is limited to only particular consumers, then the perception of those specific consumers needs to be considered. The perception of other consumers might be irrelevant. This might exclude or diminish the weight of unfavorable evidence of a failure to function.

Limits

When alleged trademark rights are asserted against another party, there may be defenses that arise related to a failure of the asserted designation to function as a trademark, or simply other defenses that protect the ability to make use of that designation under certain circumstances.

Descriptive or nominative fair use can apply to permit usage by others, even when there might be secondary meaning. Fair use is a limit on trademark rights even when there is a registration, and even when that registration is incontestable (see 15 U.S.C. §§ 1115(b)(4); see also § 1125(c)(3)(A)). This is a potential defense against the assertion of a dubious trademark registration that does not appear to function as a trademark, or against infringement allegations that relate to non-trademark usage by another party.

Genericness might also be a defense and a ground for cancellation of a registration. For instance, there are cases where courts have held that even adjectives can be generic, like the LITE beer case cited above. Or, in another case, BRICK OVEN was found to be generic for frozen pizzas. In these situations, a distinction is sometimes made between terms that were widely used before adoption and those that were coined but later became generic. But this does not make allegedly coined terms invulnerable to genericness—or preclude questioning as to whether they were truly coined/fanciful terms to begin with.

In district court litigation or TTAB proceedings, other defenses or challenges to an asserted registration or unregistered mark might also be available, like abandonment, unclean hands (or other equitable doctrines), etc. However, most cases involving failure to function are treated as evidentiary ones involving the sufficiency of specimens of use and there have not yet been definitive court rulings on failure to function arguments and defenses after a registration has been granted.

Other Related Concepts

In general, unless a patent or copyright protects an item, it will be subject to copying. Trademark law cannot be used to exclude competitors from the market. Accordingly, for alleged trade dress rights in product configuration, there is never inherent distinctiveness, and secondary meaning and acquired distinctiveness must be established. But there may be situations in which secondary meaning can never be acquired because the product configuration is incapable of functioning as a trademark to identify source. So, although these other limits are often discussed in public policy terms, they can also been seen as concern about failure to function.

In one case, involving the assertion of (unregistered) trademark false designation of origin rights in a documentary television series for which copyright had expired, the television series materials could be copied without liability. This was a clear case of improperly attempting to use trademark law to undermine fundamental aspects of copyright law. However, the court did not address how secondary meaning might arise, if at all, in this situation.

The U.S. trademark laws also explicitly prohibit trademark rights in things that are functional rather than source identifying. That places purely functional aspects of products outside the scope of trademark law. For example, in one case the configuration of partly chocolate-covered cookie sticks was found to be purely functional and unprotectable under trademark law as trade dress.

But this gets more difficult to evaluate when dealing with something aesthetic like copyrightable material, including aspects of entertainment performances that the public would see as the service/thing itself. For instance, one court has said in a different case that trademark law does not protect the content of a creative work of artistic expression as a trademark for itself. The court declined to accept an argument that was tantamount to saying that a product itself—in that case, a song—can serve as its own trademark. The different, source-identifying function of trademarks requires that a trademark in a musical composition not be coextensive with the (copyrightable) music itself. The court’s reasoning very much reflects failure-to-function concerns. Although, curiously, the court noted the defendant’s concession that the song title had acquired secondary meaning, a position that is rejected by the USPTO for single-work titles, due to a failure to function.

So-called aesthetic functionality limits trademark rights. However, that limit has, at times, been set out somewhat circularly as depending on whether the recognition of trademark rights would significantly hinder competition. But these assertions of trade dress or other trademark rights in things/works themselves are usually attempts to hinder competition rather than protect consumers from deception. This has led to rather arbitrary and subjective court decisions in this area, with variable and inconsistent outcomes.

Conclusion

From the examples given above, refusals for failure to function are an important check against overreaching and misuse of trademark law. Many of these examples relate to clothing and merchandising, in which an entity tries to improperly use trademark law to obtain a monopoly over widely used sentiments and slogans/taglines.

Failure to function issues tend to involve so-called “propertization” of trademarks. This moves away from the basis of trademarks in consumer protection. Instead, a failure to function is most typical when someone is trying to appropriate and “monetize” some existing sentiment for their own private benefit or trying to unfairly suppress competition.

In the hilarious TV series “The Office” (American version), there is an episode (season 7, episode 14) where small business entrepreneurs show up for a seminar organized by a paper salesman. One of the attendees explains his business idea as getting point-two cents from every phone call or online shipping order (without providing any benefit, simply taking a cut). One of the show’s regular characters tries not to grimace when hearing this ridiculous idea for a grift. But that scene encapsulates the way numerous entities have analogously tried to use trademark law as a “get rich quick” scheme to monopolize common slogans and general information for their own benefit.

The best approach when branding products and services is to select a strong, distinctive mark in the first place, then consistently use that mark properly. When those things are done, failure-to-function refusals simply will not be an issue.

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Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.

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Patents Q&A

What Is Non-Analogous Art?

Under U.S. patent law, a distinction between analogous versus non-analogous art sometimes arises. Understanding when this concept matters, and how to draw a line between these two possibilities may be important. The following article explains what analogous and non-analogous art is, why it matters, and how to determine whether a given piece of prior art is analogous art or not.

I handled a patent application years ago related to fishing lures. The examiner had cited a prior art patent directed to a rocket fuel additive for a rejection in an office action. This fishing lure application was not rocket science, as the saying goes. But could the examiner properly say that a fishing-related invention was obvious because of a prior teaching about rocket fuel additives? The concept of non-analogous art helps to answer that question.

When Non-Analogous Art Status Matters

In order for a prior art reference to be usable to establish obviousness, the reference must be analogous art to the claimed invention. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Teachings in non-analogous art cannot be relied upon to establish obviousness. However, there is no analogous art requirement for a prior art reference being applied for anticipation. In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997).

There are two different ways to establish something is analogous art. Satisfying either one of them is sufficient. Under these tests or prongs, a prior art reference is analogous art to a claimed invention under either of the following circumstances:

  1. the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or
  2. the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention)

In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992).

Although, the evidence and analysis relating to the field of endeavor and reasonably pertinent prongs may overlap. And some prior art might satisfy both tests, even though the requirement is only that it satisfy one of them.

A Burden To Meet When Disputed

The analogous art requirement is about the factual foundation needed to be able to rely on a given prior art reference for an obviousness argument. See In re GPAC, Inc., 57 F.3d 1573, 1577 (Fed. Cir. 1995); In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1378 (Fed. Cir. 2007). This is not merely about what a given prior art reference literally teaches. It is about whether a person of ordinary skill would have been motivated to look at or otherwise consider a reference at all in relation to the claimed invention at the time of invention (or effective filing date). That makes this a kind of threshold that disallows obviousness arguments premised on obscure, remote, or out-of-context teachings.

This is also an aspect of the well-established notion that an obviousness analysis must not succumb to hindsight bias. Netflix, Inc. v. DivX, LLC, 80 F.4th 1352, 1358-59 (Fed. Cir. 2023). Jorge Luis Borges wrote in “Kafka y sus precursores” [Kafka and His Precursors]” (La Nación, August 15, 1951) that a writer modifies our conception of the past to create precursors. After describing various prior works with elements that resemble Kafka’s later work, he said, “Kafka’s idiosyncracy is present in each of these writings, to a greater or lesser degree, but if Kafka had not written, we would not perceive it; that is to say, it would not exist.” This is not a bad way of thinking about non-analogous art that only appears as a relevant precursor in hindsight. While Borges refers to writers generally, what he really was referring to was Kafka’s new and unique genius rather than ordinary writing that might merely reuse commonplace ideas and styles. This is like talking about inventive genius with patenting.

In the end, establishing that a reference is analogous art is a factual, evidentiary burden that a patent examiner or challenger must satisfy as part of arguing that a claim is unpatentable or invalid as obvious. Although, normally, analogous art status is assumed unless the patentee or applicant asserts that a given reference is non-analogous art. That means this question is not routinely addressed. In practice, it only arises when a patentee or applicant believes that an obviousness argument is improper. So, it is up to the patentee/applicant to raise this issue when applicable. Then the examiner or challenger must be able to show that the reference relied upon is analogous. That involves pointing to evidence that satisfies at least one of the two tests.

Intrinsic evidence, contained in the patent/application and its prosecution history, is generally the best and most significant. It is helpful to look at what is said in the claims, the title, and the background section, for instance, where identifications of technical fields and discussions of problems to be solved are frequently found. Often, this type of evidence alone is sufficient to determine if a reference is analogous or non-analogous art. But extrinsic evidence can also be used. For instance, there might be expert testimony in court about the knowledge and skill of a person of ordinary skill in the art, or reliance on additional patents or publications that indicate the knowledge and skill that prevailed in the art.

The Same Field of Endeavor Test

The field of endeavor test or prong asks whether the art is from the same field of endeavor as the claimed invention, regardless of the problem addressed. Bigio, 381 F.3d at 1325. This test rests on an assessment of the nature of the patent or application and claimed invention in addition to the level of ordinary skill in the art. Bigio, 381 F.3d at 1326.

The field of endeavor is determined by reference to explanations of the invention’s subject matter in the patent or application. This includes the function and structure of the claimed invention, taking into account the complete factual description of all embodiments. So this involves considering similarities and differences in structure and function between the claimed invention and the cited art. The field of endeavor is not limited to the specific point of novelty, the narrowest possible conception of the field, or to a particular focus within a given field. Courts tend to take an expansive view of the relevant field of endeavor. Netflix, 80 F.4th at 1359.

In the Bigio case, it was found that that toothbrush art was analogous to a claimed hair brush invention. In support of that conclusion, the structure and function of the claimed hair brush invention was found to be similar to that of toothbrushes. Both were in the field of hand-held brushes having a handle segment and a bristle substrate segment. Also, it was found that toothbrush prior art could easily be used for brushing hair (e.g., human facial hair) in view of the size of the bristle segment and arrangement of the bristle bundles described in the reference.

Disputes over the proper application of this test are not particularly common, because it is often clear when a reference is or is not from the same field. But when disputes do arise, they tend to center around how broadly or narrowly the relevant field of endeavor should be defined. Patentees and patent applicants will tend to argue for a narrower definition of the field, which tends to exclude more potential prior art. Challengers and examiners may instead argue that the relevant field of endeavor is broad and generic. The correct approach in any particular case is the one best supported by the facts and evidence. In other words, this test requires both accurate identification of and careful review of the relevant facts.

The Reasonably Pertinent Test

The reasonably pertinent test or prong asks whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved, even if the reference is not within the same field of endeavor. Bigio, 381 F.3d at 1325. Sometimes this is discussed in terms of a “purpose” instead of a “problem”, but this means the same thing.

When addressing whether a reference is analogous or non-analogous art to a claimed invention under a reasonable-pertinence theory, the problems to which the claimed invention and reference at issue relate must be identified and compared from the perspective of a person having ordinary skill in the art. The relevant question is whether a person of ordinary skill would reasonably have consulted the reference in solving a relevant problem. Although the dividing line between reasonable pertinence and less-than-reasonable pertinence is context dependent, it ultimately rests on the extent to which the reference and the claimed invention relate to a similar problem or purpose. Donner Tech., LLC v. Pro Stage Gear, LLC, 979 F.3d 1353, 1359-61 (Fed. Cir. 2020).

A reference can be analogous art with respect to a patent even if there are significant differences. Familiar items may have obvious uses beyond their primary purposes. And, for instance, a person of ordinary skill might reasonably consult a reference even if she would not understand every last detail of it, so long as she would understand the portions relevant to solving her problem well enough to glean useful information. Yet the pertinence of the reference as a source of solution to the inventor’s problem must be recognizable with the foresight of a person of ordinary skill, not with the hindsight of the inventor’s successful achievement. Sci. Plastic Prods., Inc. v. Biotage AB, 766 F.3d 1355, 1359 (Fed. Cir. 2014).

Also, the articulation of the purpose of or problem to be solved by the patent cannot be so intertwined with the field of endeavor as to effectively exclude consideration of any references outside that field. The second prong cannot be collapsed into the first. It must remain a distinctly additional way of establishing analogousness. Donner, 979 F.3d at 1360. And, further, the so-called teaching, suggestion, or motivation (TSM) test for obviousness was overturned by the Supreme Court in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007). That means overly strict problem statements cannot be used to limit obviousness to express suggestions to combine references or to otherwise ignore or contradict the background knowledge possessed by a person having ordinary skill in the art. Airbus SAS v. Firepass Corp., 941 F.3d 1374, 1383-84 (Fed. Cir. 2019).

The Airbus case involved a patent that claimed “A system for providing breathable fire-preventive and fire suppressive atmosphere in enclosed human-occupied spaces” and addressed the problem of fire prevention and fire suppression. The cited reference that the patentee alleged was non-analogous was a prior patent by the same inventor that disclosed equipment for providing hypoxic air in an enclosed area for the purposes of athletic training or therapy. Four additional prior art references (that is, other extrinsic evidence beyond the cited reference alleged to be non-analogous) established that use of normbaric hypoxic atmospheres in enclosed environments was well-known in the art of fire prevention and suppression at the time of the invention. The court found that an ordinarily skilled artisan seeking to address the problem identified by the patent in question would reasonably have consulted the cited reference relating to enclosed hypoxic environments because it was reasonably pertinent to a similar problem, even though it was from a different field of endeavor. The court therefor overturned a prior decision refusing to consider the extrinsic evidence about knowledge that was available in the art, which linked the challenged claim and the cited prior art reference by a common technical problem.

In re Klein, 647 F.3d 1343, 1350-51 (Fed. Cir. 2011), involved a claimed invention addressing the problem of “making a nectar feeder with a movable divider to prepare different ratios of sugar and water for different animals.” The purpose of a first group of references was separating solid objects. But none of them showed a partitioned container adapted to receive water or contain it long enough to be able to prepare different ratios in the different compartments. A second group of references was directed to containers that facilitate mixing two separated fluids together. But the second group did not show a movable divider or the ability to prepare different ratios. The court ruled that an inventor considering the relevant problem would not have been motivated to consider any of the cited references. Accordingly, they were non-analogous and did not qualify as prior art for purposes of obviousness. Rejections of the claims were reversed.

There tend to be more disputes over application of the reasonably pertinent prong than the field of endeavor prong. But just as with the other prong, patentees and applicants are incentivized to define the relevant problem narrowly. Examiners and challengers may define the problem more broadly and generically. Reasonable pertinence rests on what is best supported by the relevant facts. For example, a statement of the relevant problem that is inconsistent with the discussion in a patent or application, viewed as a whole, is likely incorrect—whether broader or narrower than they way the disclosed invention was described. And extrinsic evidence from other patents, expert testimony, etc. can be used to establish pertinence. So even if a given patent is very short and says relatively little about problems faced in the art, other evidence might inform that inquiry.

Conclusion

The analogous versus non-analogous art question establishes whether or not a given reference qualifies as prior art for purposes of obviousness. But it is not applicable to use of the same reference for an anticipation/novelty analysis. This factual question is rarely explicitly discussed in practice and usually it is assumed that any cited art is analogous. That is partly because courts have generally taken an expansive view of what qualifies as analogous. But, at the end of the day, whether a reference is analogous or not is just one facet of the fact-intensive obviousness analysis. An obviousness position requires solid evidence and a good, logical argument. Reliance on non-analogous art is simply a type of bad argument resting on deficient evidence.

In my example of a fishing lure invention and a rocket fuel additive reference, the examiner eventually did acknowledge that his cited reference could not be relied upon for an obviousness rejection. It was bad optics. The argument that “this is not rocket science” when dealing with the patentability of a fishing lure invention was clearly a winning one (and a fun one to be able to make!). In particular, rocket science and fishing lure design and manufacturing were different fields of endeavor. And prior art about fuel additives designed to influence combustion properties had no bearing on the purposes of the fishing lure invention, which was intended to provide certain weighting characteristics during use without causing environmental pollution. So this was a stark illustration of non-analogous art.

Sometimes looking to disparate fields and combining teachings that were, individually, already known can be the product of true invention. Of course, on the other hand, sometimes an alleged invention is obvious and unpatentable. Simply because an applicant or patentee finds a cited reference to be inconvenient does not make it non-analogous art. The non-anlogous arts tests are occasionally useful as a way to draw the line between patentable and unpatentable ideas.

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Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.

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Patents Q&A

What Is a Negative Limitation?

Patents and patent applications have claims that define an invention. Those claims can have various elements or limitations to recite aspects of the invention. But what is a negative limitation? This article explains what they are and some considerations about whether and when they are permitted.

Basic Definition

In the simplest terms, a negative limitation in a patent claim defines an invention in terms of what it is not, rather than what it is. Any limitation in a patent claim that does this can be considered a negative limitation. Although, there are many different ways negative limitations can arise or be worded. There is no standard format for a negative limitation. Indeed, whether or not something constitutes a negative limitation might even be disputed.

When design patent claims include negative limitations is an interesting question that courts have not definitively resolved. The discussion that follows focuses mostly on utility or invention patents.

Example Negative Limitations

The following are some examples of patent claims with negative limitations.

“1. An apparatus comprising: a first panel; and a second panel, wherein the second panel is arranged parallel to and in direct contact with the first panel, wherein the first panel is perforated, and wherein the second panel is a continuous sheet of material without perforations.”

In this example claim 1 above, the limitation that the second sheet is “without perforations” is a negative limitation. It states what is not present (perforations). The negative limitation further defines what the limitation “a continuous sheet of material” means. It also emphasizes a difference from the first panel, which is perforated.

“2. A system comprising a printed circuit board having a first electrical conductor, wherein the first electrical conductor does not have a sinusoidal shape.”

Example claim 2 above includes the negative limitation “wherein the first electrical conductor does not have a sinusoidal shape.” This limitation does not specify the shape of the first electrical conductor. Instead, it specifies the shape that it does not have. That is, this limitation excludes one possible type of shape.

“3. An apparatus comprising: a platform; and one and only one pillar connected to the platform.”

In example claim 3 above, the recitation of “one and only one pillar” includes a negative limitation. It is actually both a positive recitation of a pillar and a negative limitation excluding the presence of more than one pillar. Recitation of a “single” element—as in “a single pillar connected to the platform”—is a similar type of negative limitation.

Different But Related Concepts

There are some other concepts in patent law that have similarities to negative limitations but are distinguishable in some way.

Closed and Partially Closed Transitional Phrases

Transitional phrases in patent claims can be closed or partially closed. The closed transitional phrase “consisting of” excludes the possibility of other elements being present. For instance, in a chemical compound this closed transitional phrase can be used to exclude the presence of additional substances. The partially closed transitional phrase “consisting essentially of” is limited to the explicitly recited elements and those that do not materially affect the basic and novel characteristic(s) of the claimed invention.

Closed and partially closed transitional phrases are not negative limitations in the strict sense. That is because they are transitional phrases and not substantive claim limitations or elements. However, they may have a rather similar effect as exclusionary negative limitations.

Reciting Holes, Voids, Etc.

A limitation directed to “a hole,” “a gap,” etc. is not strictly a negative limitation. But it also can partly resemble one. It is generally preferable to claim surrounding structures that define a hole, aperture, passageway, void, empty space, or the like. This avoids the awkwardness of trying positively claim nothing or the absence of something.

Are Negative Limitations Permitted?

In the U.S., negative claim limitations are not categorically prohibited. But that does not mean they are necessarily proper. Whether they are permitted depends on the context, including the scope of the limitation, support (or lack thereof) in the original disclosure, and the timing of introduction of the negative limitation.

A negative limitation that seeks to exclude the prior art and claim everything else is often problematic. Such claims tend to be based on the desired scope of a patent monopoly rather than pointing out the subject matter regarded as the invention. In other words, this kind of claim tries to carve out and exclude the prior art while preempting everything else. That might mean reciting a given result (perhaps using functional language) while excluding unpatentable prior art solutions. Courts have long disfavored this kind of approach and tend invalidate such claims one way or another. For instance, such a claim may be indefinite. This makes sense because peripheral claiming rather than central claiming is used in the United States.

Attempts to add a negative limitation by way of a later amendment can raise additional issues about support. For instance, if the original disclosure explicitly listed multiple alternatives, that is generally sufficient to later introduce a limitation to exclude one or more of them. However, silence will not generally suffice to support a negative claim limitation. So the ability to later add one by amendment in response to a rejection may depend on the sufficiency of the original disclosure. Claims present at initial filing (including in a preliminary amendment) are considered part of the original disclosure and may support themselves.

Best Practices: Is a Negative Limitation a Good Idea?

Negative claim limitations are generally disfavored. Patent attorneys usually try to avoid using them. As already discussed, they can sometimes raise issues about validity. Negative limitations that make up the entire recitation of the point of novelty, without more, have a greater chance of raising those kinds of problems than ones that merely clarify or elaborate on positively-recited elements. Claims with negative limitations also are sometimes easier to avoid when designing around a patent. This may impact how valuable or desirable it is to have them.

Yet, there are times when negative limitations fairly and helpfully delineate an invention. They are permitted in many instances and may be useful in the right context.

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Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.

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Patents Q&A

Does Your Patent Allow for Infringement Detection?

Patent law places the burden on the patentee to identify infringement and enforce the patent against infringers. This raises an important gating question. How can patent infringement be detected? Some patents—and more specifically some patent claims—can make detection of infringement either easier or more difficult. What follows are some important considerations about patent infringement detection, and a possible alternative to patenting for hard-to-detect inventions.

Proving Infringement

A patent establishes exclusive rights in an invention that provide a limited monopoly to the patentee. The claim(s) of a patent determine the scope of what is patented, and by implication what is not patented. There are different types of infringement possible under U.S. patent law. Each type has its own elements that must be proven.

Generally speaking, direct patent infringement in the U.S. requires that each and every element or limitation—as properly construed—of at least one claim of a patent is found either literally or (sometimes) equivalently in an accused product or method. The infringement analysis always involves comparing the asserted patent claim(s) to an accused product or method. Importantly, a patent only covers what is claimed. So the comparison for an infringement analysis always depends on what is (or is not) claimed. And literal infringement requires meeting each element of the claim exactly. Any deviation from a claim limitation (as properly construed) will preclude a finding of literal infringement.

Example Comparison for Infringement Analysis

The following illustration helps explain how patent claims are compared to a potentially infringing product (or process). This example is highly simplified and assumes that the hypothetical claim has no negative limitations and no closed or partially-closed transitional phrases following the preamble, and that no Doctrine of Equivalents issues arise.

graphic comparing claim elements A, B and C to an accused product with elements, A, B, Y, and C, with the respective elements A, B, and C connected by arrows, that is infringing

In the simplified example graphic above, a claim with elements A, B, and C is compared to an accused product. Here, the accused product contains each claim element A, B, and C. The accused product meets all the limitations of the claim, so there is infringement. Ordinarily, the presence of an additional element Y in the accused product does not change this result. The accused product does not have to be identical to embodiments disclosed in the patent. It only matters that the accused product falls within the scope of the given claim by meeting all of the claim limitations.

Alleging Infringement

In order to bring a lawsuit for infringement, there must be a reasonable basis to believe that infringement has occurred. Federal Rule of Civil Procedure 11 requires “an inquiry reasonable under the circumstances” before commencing a lawsuit. This encompasses both legal and factual aspects and bars complaints made for improper purposes (such as to harass). Courts can issue sanctions on attorneys, law firms, and parties for violations of this rule.

Courts have said that in patent cases Rule 11 requires, at a minimum, interpreting the asserted patent claim(s) in a non-frivolous manner and comparing the accused device with those claims before alleging infringement. See Q-Pharma, Inc. v. Andrew Jergens Co., 360 F.3d 1295, 1300-03 (Fed. Cir. 2004).

“In bringing a claim of infringement, the patent holder, if challenged, must be prepared to demonstrate to both the court and the alleged infringer exactly why it believed before filing the claim that it had a reasonable chance of proving infringement. Failure to do so should ordinarily result in the district court expressing its broad discretion in favor of Rule 11 sanctions . . . .”

View Eng’g, Inc. v. Robotic Vision Sys., Inc., 208 F.3d 981, 986 (Fed. Cir. 2000)

So it is not permitted to simply wildly guess or casually speculate that an accused product meets all the limitations of a patent claim. But applicable rules means that judges ultimately decide what is reasonable or non-frivolous under the circumstances.

Detectability

Establishing infringement means proving that all the elements of an asserted claim are present. And bringing a lawsuit in the first place requires reasonable confidence you will prevail. But what if you can’t tell exactly how a potentially infringing product is configured or how it was made or operates during use? For instance, what if there are inaccessible internal components, the composition of certain materials cannot be tested, manufacturing methods are not apparent from resulting physical characteristics, or the performance of certain software-based computer processing steps is unclear? Or what if a method of use requires that an end user operate a device but it is unknown if or when that has happened? These are all problems with detecting infringement.

The crux of the detectability issue is that you need to have a level of information about potentially infringing products commensurate with the level of detail recited in the claim(s) of a patent. Investigations to locate that information can range from the simple to the complex and expensive to the impossible. Sometimes merely reviewing marketing materials for competing products is insufficient to understand if claimed elements are present or not. Then it may be necessary to obtain one of the products for evaluation, or look for some other source of the missing information.

Example Detectability Problems

In the simplified example graphic immediately below, another accused product is compared to the claim with elements A, B, and C. This accused product meets claim element A and B. However, it is unclear whether claim element C is found in the accused product or not. This is a detectability problem. Whether infringement has occurred or not here is not yet known because it has not yet been established that the accused product falls within the claim. More information about the accused product is required to make a final determination.

graphic comparing claim elements A, B and C to an accused product with elements, A, B, and an unknown "?", with the elements A and B connected by arrows and an arrow pointing to the question mark, that presents a detectability problem

Take as another example a patented software-driven device that produces a particular result based on a certain type of calculation (following a specific algorithm). If it is possible for competing products to achieve the same result using different calculations, then it may be hard to detect infringement. It may not even be possible to reverse-engineer how particular software commands are written. In this situation, detection of infringement may be difficult even if all the physical hardware components are the same.

Yet another example involves a claim to a chemical with a particular molecular structure. You must have the means to test for the presence of that molecular structure to detect infringement. This might necessitate obtaining product samples and sending them to a lab for analysis.

Patentability and Detection

Ideally patent claims will only recite elements that are easily detected through convenient forms inspection or testing of an accused product. This aids with enforcement of the patent. During patent preparation and prosecution, care should be taken to write claims that recite what is detectable rather than what is not. Although, this is sometimes more easily said than done.

Before enforcing a patent you first have to obtain a patent. This means convincing at least one patent examiner that the claimed invention is patentable. The broader the claim, the more difficult it can be to establish patentability. It is fairly easy to want broad claims. What patentee wouldn’t want wider coverage? But you can’t always get what you want. Sometimes difficult- or impossible-to-detect elements are precisely what make inventions patentable over the prior art. Without them, the claims may be rejected as unpatentable. In those situations, the choice may be between claims that make it hard to detect infringement or having no patent at all.

Trade Secrecy as an Alternative to Patenting

There is an alternative to patenting. And that is trade secrecy. Of course, not all inventions lend themselves to being kept secret. But an invention that is not detectable in physical products, or only involves steps performed away from public view, may be a good candidate for trade secrecy. An example is a manufacturing method, or a machine, tool, or fixture used in manufacturing. These sorts of things can often be keep secret inside a private factory. Another example is a “secret formula” for a chemical composition that cannot be reverse-engineered through testing. So an inventor may have a choice between either pursuing a patent or instead maintaining a non-detectable invention as a trade secret.

An important consideration when relying on secrecy is the level of confidence you can have that it is practical to do so. Trade secret protections are lost when something is publicly disclosed. So foregoing patent protection means thinking long and hard about what steps can be taken to maintain secrecy and how effective those steps are likely to be.

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Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.

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Q&A Trademarks

Does a Trademark Registration Prevail Over Prior Use?

In U.S. trademark law, use of a trademark matters a lot. Rights generally go to the “senior” user. That is whoever has earlier or prior use. This can mean that determining who is the senior user generally determines who has rights and who is an infringer. But what if a “junior” user has a federal trademark registration? Does a later trademark registration mean the registrant prevails over a prior user? Can a junior user’s registration be asserted against the senior user? Is the result the same even when the prior user never registered the trademark and only has “common law” rights?

Prior Use Prevails

Courts have said that a prior trademark user prevails over a later registration. However, prior use by one business followed by later federal registration by another sometimes leads to concurrent rights by multiple entities. How that works depends on the geographic scope of the senior user’s pre-registration use. For example, if the most senior user only uses a mark in a limited geographic area, a later user in a remote geographic area might obtain concurrent use rights in that particular area prior to the senior user obtaining a federal registration.

This happened in a famous case involving the mark BURGER KING for restaurant services. A party that began using the same mark in part of Illinois without knowledge of the senior party’s use elsewhere retained concurrent exclusive rights to continue use it in an area around one city, despite the senior party having previously used the mark in numerous other states and later federally registering it. Burger King of Florida, Inc. v. Hoots, 403 F.2d 904 (7th Cir. 1968).

Another case like this involved the mark OLD DUTCH for packaged pretzels. There, different parties had been using the same mark for the same goods in different parts of the country. One party (Dee Dee) was the first user in six states before the other party (Old Dutch Foods) obtained a federal registration. The later federal registration could not prevent concurrent use by the prior user Dee Dee in those six states. The court determined that each party was entitled to a concurrent use federal registration, each registration limited to particular geographic areas. Old Dutch Foods, Inc. v. Dan Dee Pretzel & Potato Chip Co., 477 F.2d 150 (6th Cir. 1973).

There can even be situations in which a prior user’s rights encompass the entire country. In that situation, the later registrant can be prevented (enjoined) from using its registered mark anywhere in the country (even as a corporate trade name) and the later registration cancelled. Cuban Cigar Brands N.V. v. Upmann Int’l, Inc., 457 F. Supp. 1090, 199 USPQ 193 (S.D.N.Y. 1978), aff’d 607 F.2d 995 (2d Cir. 1979).

Incontestability Changes Nothing

Priority of use generally prevails even if the later registration becomes incontestable. Indeed Section 15 of the Lanham Act (15 U.S.C. § 1065) says:

except to the extent, if any, to which the use of a mark registered on the principal register infringes a valid right acquired under the law of any State or Territory by use of a mark or trade name continuing from a date prior to the date of registration under this chapter of such registered mark, the right of the owner to use such registered mark in commerce for the goods or services on or in connection with which such registered mark has been in continuous use for five consecutive years subsequent to the date of such registration and is still in use in commerce, shall be incontestable . . . .”

15 U.S.C. § 1065

As a court summarized the law this way. “The plain meaning of this language is that if a party has acquired common-law trademark rights continuing since before the publication of the federal registration, then to that extent the registration will not be incontestable” and “geographically defined areas of exclusive use are required for each party . . . .” Wrist-Rocket Mfg. Co., Inc. v. Saunders Archery Co., 578 F.2d 727, 731 (8th Cir. 1978).

Conclusion

Under U.S. trademark law, it matters who was first to use a trademark. Trademark rights arise from use. Even when there is a federal trademark registration, the registration must bow to prior use. That is to say that a registration does not trump prior use. Of course, unregistered common law trademark rights are limited only to the geographic markets in which prior use has occurred substantially consistently and continually.

However, the law can be different in other countries. Common law rights are not recognized in the same way in all countries. First-to-file trademark laws in many countries give rights to the first to register, regardless of others’ prior use. Although even in first-to-file regimes there might be limited prior use defenses available. These questions require legal review under the laws of each relevant country or jurisdiction.

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Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.

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Q&A Trademarks

How Can You Know if a Trademark Search is Reliable?

There are different situations where a trademark search is beneficial. And there are different types of searches with different levels of scope. But how can you know if a given trademark search is reliable? How thorough or extensive does search have to be? Are simple queries in online portals enough to rely on? This article will address those questions about what makes for a good trademark search.

Overview of Best Practices

Trademark searching is perhaps more art than science. There is no single approach suitable for all situations. But there are a number of factors that tend to make trademark searches better and more reliable in general. These include the following:

  • Accounts for applicable trademark laws in the relevant jurisdiction(s)
  • Encompasses variants and similar marks, and not limited to exact or identical matches
  • Looks beyond identical and overlapping goods and services to different but related goods/services
  • Uses reliable tools or databases with relevant content coverage
  • Results are coupled with a competent legal analysis

These factors are discussed further below. Although this article is not meant to be a tutorial on the mechanics of or strategies for performing trademark searches.

The Likelihood of Confusion Standard

Under U.S. trademark law, a likelihood of confusion standard is used. It applies when determining if a proposed mark is federally registrable. This is the standards trademark examiners apply to new trademark applications. Registration will be refused if there is a likelihood of confusion with a prior mark. It also generally applies when assessing potential infringement. Trademark infringement arises when there is a likelihood of consumer confusion, even if actual confusion has not occurred among customers.

This legal standard looks an multiple factors from the point of view of relevant consumers. There is no precise formula for how these factors are applied. But two factors tend to be most important. One is how similar (or dissimilar) two marks are, when considering the overall commercial impressions the proposed create. Another is how similar (or dissimilar) the goods and services are.

Importantly, the trademarks do not have to be identical to be similar enough to create a likelihood of consumer confusion. The goods and services can potentially differ as well. For instance, they might partially overlap or the goods and services might differ but still be considered related. There is no universal, bright-line rule for how close is too close, or what sorts of differences will sufficiently avoid potential confusion.

Legal standards in other countries may different. But most countries take a generally similar approach.

Simply Queries Are Often Not Enough

A reliable trademark search needs to be broad enough to capture different but similar marks. This includes things like alternate spellings, phonetic equivalents, transposition of words, different punctuation—like the difference between one word or two, with or without a hyphen—and even other words with similar meanings. Foreign-language translations or transliterations might also be considered, which can be particular useful when looking at foreign countries where other languages are common. Basically, the search needs to account for the fact that prior trademarks may be relevant to the likelihood of consumer confusion even though they differ in some way.

A few limited keyword searches in an Internet search engine or trademark database may not be sufficient. That is especially true if searching only for marks that are identical. For instance, if a search for a proposed brand name that includes the word “theater” omits prior marks using the alternate spelling “theatre” or intentional misspelling “theatr” it could miss something important. The same goes for portmanteau or compound word terms that incorporate words like “theater”.

Trademark searching also involves the difficult problem of trying to prove a negative. You can never be absolutely certain that nothing relevant is out there. If nothing appears it might mean nothing else exists, or it might simply mean you missed a relevant prior mark. A perfect search is impossible. Even a high quality search might miss a prior mark that someone else considers relevant. After all, there are some judgement calls involved with these fuzzy legal standards. But the goal is to use sufficiently robust and thorough searching methods. Getting “zero hits” or “no results” from a few cursory searches, based only on looking for exact matches in a limited coverage database, is often not adequate or reliable.

Using Online Portals

There are some free, open-access online portals that allow trademark searching. Some of these are provided by official trademark offices. Others are privately run by various companies. There are also proprietary databases that require paid subscriptions or other fees.

Many free “trademark availability” search engines are unreliable and misleading. For instance, queries in a free trademark availability search engine for the following proposed marks all said they were supposedly “available”:

  • THE CHEVROLET
  • COCA-COLA USA
  • SAMSUNG COMPANY
  • NIKE SHOES

Of course, none of these proposed marks are actually available for use, at least not if they create a likelihood of confusion with the famous brands they incorporate (or cause dilution). Simply adding an additional generic or highly descriptive term without changing the overall commercial impression is not enough to avoid confusion. Those minor differences from an existing mark generally do not mean that a proposed mark is available for use or registration. Any of these example marks would be refused registration. Their use would probably also result in legal problems.

Adequate Coverage

A trademark search also needs to encompass sources likely to contain the kind of trademark information that matters to your legal questions. There are many different trademark databases available. But there is no single comprehensive database of all worldwide trademark information searchable across all possible fields. It would be nice if there were. But every real-word tool or database has limits on its coverage. This even applies to general-purpose Internet search engines. For instance, there can be purely offline trademark uses that cannot be found online.

Reliable searching involves selecting the right resources to consult. This might mean paying for access to certain proprietary tools. Or it might mean searching in multiple databases or tools each having different coverage. Often the specific coverage of a given database can be confusing or not readily apparent.

Considerations for Graphical Logos and Non-Traditional Marks

Searching trademarks with prominent visual design components or stylization, especially logos without any wording, presents some unique challenges. The same applies to non-traditional marks like trade dress, colors, sounds, etc. There are tools that allow what amounts to a reverse image search of a logo. Those tool can be helpful. But they are not always completely reliable on their own. There are also design search codes or other classification systems for categorizing elements of trademarks other than wording. These codes or classifications offer a particularly helpful way to search for similar logos, visual design elements, and elements of non-traditional trademarks.

A Search Alone is Not a Legal Opinion

Simply searching for trademarks—and no more—tells you very little. It will at most give you a list of existing marks. But which of those matter? Which ones are distinguishable? Which ones are close enough to present problems? Was your search robust enough to have confidence that there actually are no problematic existing trademarks? To answer those questions you need a legal opinion. That means analyzing trademark search results from a legal perspective. It is recommended to have a knowledgeable attorney analyze search results and provide legal advice about registrability and/or any infringement risk.

Budgeting

There is definitely cost associated with a quality, reliable trademark search and accompanying legal analysis. Costs especially tend to increase when the scope of a search encompasses more geographic regions or jurisdictions. Selecting the cheapest option, or taking a free do-it-yourself approach, often does not result in the reliable results. Cheap searches and $99 fixed-fee “legal” services are not going to give you a reliable legal opinion or provide meaningful strategic guidance.

Small businesses frequently feel they cannot afford these costs. Skipping a search means you are taking you chances. It is like rolling the dice and hoping there are no obstacles or infringement risks lying in wait. Businesses often regret not clearing their branding before adopting it, or regret selecting a weak mark. Doing so might mean later facing large re-branding costs, limits on expansion of your brand, and/or a decreased business valuation. In a worst case scenario it might even destroy everything built-up in a business. So a good search (+ legal opinion) upfront can be a good value in the long run.

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Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.

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Q&A Trademarks

How Should a Trademark Search Be Conducted?

What should a trademark search involve? How should a trademark search be conducted? These are questions about the scope and format of a trademark search. There are many different ways of performing trademark searches that vary in scope and thoroughness. Not all searches are equal. The right approach will depend on a number of factors including the purpose of the search and the type of legal questions the search is meant to address. The following is an overview of basic considerations about how to structure a trademark search to meet your needs.

Different Types of Searches

Sometimes trademark searches are grouped into different levels, with different pricing. A basic search is sometimes called a “knockout” search. These are usually the cheapest option. Names like “comprehensive” are applied to other types of searches that are more thorough (and more expensive). There are also special searches for various specific purposes, such as to look for evidence of relatedness of goods and services. But what differs between these different searches in terms of what you get? And which one is the right choice for your circumstances?

Knockout Searches

A knockout or preliminary search is usually the most basic and most limited in scope. It is typically limited to searching only registrations and pending applications in a particular jurisdiction. This means it will not capture unregistered uses of similar trademarks that may exist.

Also, a knockout search may be limited in terms of capturing variations. Trademarks do not need to be identical to create problems under the likelihood of confusion standard. The exact scope of knockout searches can vary. But often they will provide little or no identification of alternate spellings, phonetic equivalents, translations, distinct terms with a similar meaning, or the like. Yet prior trademarks that are not identical can still create a likelihood of confusion in some situations.

If a knockout search is all your budget permits, it may be better than nothing. But often a knockout search is often too limited to provide a lot of value. For example, for a trademark clearance or freedom-to-operate in the United States where unregistered “common law” trademark rights can exist, a knockout search is generally inadequate. And even for merely preliminary purposes some “bargain” searches may fall short. Quite frankly, cheap searches are not always reliable.

More Comprehensive Searches

A more comprehensive or full trademark search is usually just what the name implies. It is a broad search meant to capture as much as is feasible within a reasonable budget. More comprehensive searches will typically assess any unregistered prior uses. These searches also usually devote much more effort toward searching for alternate spellings, phonetic equivalents, and different words with similar meaning. But beyond those typical parameters, the exact scope of these searches can still vary. There is a continuum of effort involved.

For example, sometimes, but not always, they will address registrations in U.S. states, territories, and districts too. For marks used only locally, and not in interstate commerce, such a state or similar registration might be the only type available. Searching all such state-level registrations can add significant extra expense to a search and therefore is frequently omitted.

Also, whether foreign words are searched will also vary considerably. There are many languages and whether wording of a proposed mark would be considered relevant to one with a similar meaning in another langue is very context-dependent. It can matter if the other language is commonly spoken in a relevant area. For these reasons, translations will usually be considered like separate searches and excluded from even fairly comprehensive searches.

Special Searches

There can also be other types of trademark searches meant to address very particular questions. For instance, there can be situations during the examination of a trademark application or in connection with a lawsuit in which certain trademark searches are useful. These can include searches for evidence of relatedness of goods and services, by looking for usage of a single brand with different but “related” goods/services. Also, trademark-related searches might be performed to identify evidence of genericness or of descriptive meaning of the the words of a given mark.

Geographic Scope

Every trademark search should consider the particular jurisdictions of interest. That is because trademark rights are territorial. They exist only in in particular countries, states, or blocs (like the European Union). For example, there might be pre-existing trademark rights in one country but not another. A search for trademarks in one country will tell you little or nothing about trademark rights in other countries.

If new branding will be used in multiple countries or geographic regions, a trademark search (or series of searches) should encompass each and every one of them. Even if a trademark will not be used in other regions immediately, if expansion to them is likely or merely possible in the future it may help to search those countries too. This can allow evaluation of possibilities for later geographic expansion. This avoids being boxed-in and finding later expansion stymied.

For very substantial brands, with large advertising campaigns planned, it may also be worthwhile to search other jurisdictions to identify potential priority claims. This is because an international treaty may permit an application to be filed in a country of interest that claims priority to an application filed in another country up to six months earlier. In other words, this means searching in countries beyond those you plan to use your mark in. Although this sort of step is often skipped due to the effort and cost and the relative infrequency of such priority claims causing problems.

The type or scope of searching that fits your needs will depend on the nature of the proposed use of a trademark and the particular legal questions you want to address. And your budget. But bear in mind that a search alone tells you little or nothing unless the search results are analyzed by knowledgeable trademark counsel. It is all too easy to misunderstand the significant of bare trademark search results if unfamiliar with trademark law. You need a legal opinion too. Running a few queries yourself in a trademark database and (supposedly) getting “no results” may only provide false confidence.

Another way to think about all this is to ask, “How difficult would it be to later re-brand later?” If the answer is “difficult”, then a broader and more thorough search and analysis is worthwhile. When you are not well positioned to pay legal fees to defend yourself against infringement allegations, or just the thought of having to do this later seems unpleasant, then a search is one way to try to reduce those risks upfront. These things point to doing more than a cursory knockout search. Yet a slogan or tagline might be easily dropped or changed in some situations, unlike a primary brand.

More limited searches are better suited to low-stakes situations. For instance, when you are only concerned with registrability in the short term, such as for a planned intent-to-use (ITU) trademark application, then a knockout search may be minimally adequate. During examination of new U.S. federal trademark applications, the U.S. Patent & Trademark Office (USPTO) only looks at prior federal registrations and pending applications. They do not search for unregistered “known marks”. So a knockout search is similar in scope to searching done by a trademark examiner. But a knockout search will usually not provide a very good picture of all possible oppositions or cancellations sought by others against your desired trademark registration.

Have a Backup or Alternate Mark In Mind

It is quite common for a trademark search to reveal a potential problem with a proposed mark. For that reason, it is often helpful to conduct searching against a list of multiple candidate trademarks. These could be ranked in preferential order. Having a list of multiple marks searched and then legally reviewed in parallel or in preferential sequence increases the chances that at least one of them will be available and registrable. This can be especially beneficial when clearing a mark planned for use in many different countries or regions.

Of course, working from a list of multiple candidate trademarks makes the most sense before you have committed to certain branding. That can be challenging for many businesses. There is a tendency to grow attached to desired branding. But the pain of giving up on a favorite only gets worse if you have to re-brand later because of a problem.

Caution: No Search is Perfect

No matter how thorough, no search can eliminate all risk when selecting and adopting a trademark. Searching is always imperfect and can only serve to minimize risks. Trademark rights in the United States arise primarily from use and not mere registration. So it is possible that someone is using the proposed mark (or a similar one) in connection with the same or similar goods and/or services, but that use may not be detected in the search. That could be because the prior user did not seek registration or a prior mark was not listed in any of the resources or databases that the searcher used.

Also, when it comes to the analysis of search results, there can be differences of opinion. A prior user or registrant noted in this search may object to use or registrations of a proposed mark. Such objections may be questionable or even baseless at times. That is sometimes called trademark bullying. Or there may be facts that influence the ultimate outcome of a dispute that the searcher or attorney was not aware of.

The main takeaway is that just because a search does not identify any problems does not mean that an infringement allegation or refusal of registration is impossible. The right search and a competent legal analysis can still be quite useful and valuable.

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Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.

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Q&A Trademarks

Do I Need a Trademark Search?

When adopting branding, such as a brand name or logo, people sometimes wonder, “Do I need to conduct a trademark search?” Or, “Is this trademark available?” These questions can arise when considering filing a new trademark application. Or they can come up when adopting branding for new products or services being offered for sale. In either context, this question should be considered at some level. What follows is more detailed information about whether and when a trademark search is worthwhile. Another article covers how to structure a trademark search.

What a Trademark Search Can Tell You

Some brand names and logos are already taken by others. In fact, it is quite common that when you have a “great” branding idea someone else has already had the same idea or a similar one. A trademark search can help address either or both of the following questions:

  • Will proposed branding create a significant risk of infringing someone else’s existing trademark?
  • Will a given proposed trademark be registrable?

The first question is about trademark clearance or freedom-to-operate. It is about assess risk and trying to avoid infringement problems and disputes. The second question is about whether a given jurisdiction is likely to grant you a trademark registration. It is more about how protectable a proposed mark appears to be. Put another way, the second question can inform you about the scope of exclusivity potentially available under the proposed mark. But both questions are about trademark availability.

A single trademark search in a given jurisdiction can generally be used to analyze both of these questions. So one search should permit both legal questions to be addressed. But the scope and thoroughness of a search can vary.

What a Trademark Search Won’t Tell You

In the strict sense, simply searching for trademarks tells you very little. It will only produce a list of existing marks. But which of those matter? Which ones are distinguishable? Which ones are close enough to present problems? Also, simply obtaining a list of prior trademarks will not tell you whether a proposed new mark is distinctive enough to serve as a trademark. And a search alone will not address other strategic considerations involved in trying to register a particular trademark.

After obtaining search results, it is necessary to further analyze whatever comes up in a search from a legal perspective. Anyone who does not understand trademark law will struggle to properly interpret what is or is not a problem when it comes to infringement risk and obstacles to registration. Self-serving bias is a common issue too. When you have a great branding idea, you might be biased against the notion that someone else already has a trademark that presents an obstacle to your business plans. This can turn into a matter of unreasonably splitting hairs over illusory differences. Or it can lead to incorrectly disregarding inconvenient or disappointing search results.

It helps to have a knowledgeable and independent expert analyze search results and provide guidance about registrability and/or any infringement risk. This kind of legal analysis goes beyond searching alone.

Which Region or Regions?

Trademark searches should be considered for each relevant region. That is because trademark rights are territorial. They exist only in particular jurisdictions, that is, in particular countries, states, or blocs (like the European Union). For example, there might be pre-existing trademark rights in one country but not another. If new branding will be used in multiple countries, a trademark search (or series of searches) should encompass all of them.

Is a Search Legally Required?

In the United States, it is not required to perform a trademark search before applying to register a mark. So, it is possible to proceed without a search and take your chances. But it is a gamble.

But, on the other hand, investing considerable effort and resources into developing and advertising a brand only to find out later that it cannot be protected may lead to crushing disappointment. And it may result in wasted time and money. Having to rebrand later on after a problem arises is usually far more expensive than the cost of an initial search and analysis. On top of that, legal liability and even merely a cloud of uncertainty can have a terrible impact on a business, from disruption of daily operations to decreased valuation.

An early trademark search encourages adoption of a non-infringing and registrable mark from the start. The cost and burden to switch marks or re-brand generally increases over time. So even if a search is not mandated by law, obtain one along with a legal opinion still offer pragmatic benefits. Those steps can potentially avoid a lot of later headaches.

Didn’t I Already Take Care of This?

You still want a trademark search despite having registered a company or assumed name with a local government. The same goes for having already registered a domain name containing your trademark. The fact is that practically no screening is performed by the government or a domain registrar. They only care about such names having the slightest differences. Corporate filings and domain name registrations are accepted when there are only minor differences in terms of punctuation or a single different letter. That is not enough to avoid trademark problems. Trademark confusion and infringement (and/or cybersquatting) is still possible in those situations.

Small businesses often mistakenly believe that corporate and domain name filings insulate them from legal problems like trademark infringement. But they don’t.

When is a Search Needed?

In terms of timing, a trademark search should be performed before any new brand is adopted and used. In other words, the ideal time for a search is before you commit to a particular trademark and before you start actually using it. But searches can still be worthwhile later on. For instance, as usage changes to encompass different goods or services, or expands geographically, new issues might arise that call for a new or further trademark search. Special types of searches may also be useful during examination of a trademark application or in connection with a contentious proceeding.

Further, a trademark search is just snapshot at a given moment. Use of similar marks by others is constantly changing. Prior registrations are abandoned or cancelled, commercial usage changes, consumer perceptions evolve, and new brands are adopted by others. This means that trademark search results can go stale and lose relevance as time passes. Ideally, a trademark search should be performed close to when business and marketing decisions are made about the mark being searched. Old search results may not be reliable for a legal review much later in time.

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Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.

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Patents Q&A

What Exclusive Rights Does a Patent Provide?

What sort of legal rights does a patent provide to a patent holder? This article explains what exclusive rights arise from patents. It also addresses a common misconception about the scope of patent rights.

The Right to Exclude

In the simplest terms, patent rights are about the right to exclude others. A patent provides a limited monopoly over an invention in a particular jurisdiction. The scope of rights in any given patent will depend on the scope of the claims in that patent, which define the specific invention that is patented, as well as scope of monopoly rights granted under the patent laws of the relevant jurisdiction. Patent rights are territorial. They provide enforceable rights only in a particular country (or regional group of countries). Patent rights also only last for a limited period of time, called term. At the end of their term they expire and the patented invention can then be freely practiced by others.

Under U.S. patent law, a patent gives the holder exclusive rights to make, use, offer to sell, sell, or import the patented invention. Put another way, anyone who does any of these things with the patented invention—or some other related but more indirect things—can be liable as an infringer.

The exclusive rights provided by patents can be significant. In the absence of a patent (or other intellectual property right, like copyright), a product or service that is being sold or offered commercially can generally be copied by others. But patents are only awarded for inventions that meet the requirements for patentability.

Not a Right to Practice an Invention

A common misconception about patent rights is assuming that having a patent provides an affirmative right to practice the patented invention. This is actually not true. A patent provides only a right to exclude others from practicing the claimed invention. But it is possible that someone else has a prior patent that also covers some aspect of the invention. In that case, the earlier patent can be called a blocking patent. A later invention might still be patentable as an improvement. But that later patent can be called a subordinate patent. That is because practicing it requires rights to the blocking patent during the blocking patent’s term.

Take the following simple example. A first person invents and patents a bucket. Later, another person invents and patents an improved bucket with a handle. The addition of the handle made the second invention patentable. And the later patent about the handle prevents the first inventor from adding a handle to buckets. But the earlier patent on the bucket itself prevents the second inventor from selling buckets with handles during the term of the earlier inventor’s blocking patent without a license.

Of course, it is also possible that there are laws completely unrelated to patents that prohibit selling or using a patented invention. For instance, local health & safety laws, building codes, or the like might prohibit certain things that would be necessary to sell or use an invention. Having a patent does not exempt the patentee from complying with those other laws.

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Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.