Archive for the ‘Intellectual Property Law’ Category


Don’t Lose Out on Trademark Registration by Submitting Faulty Specimens!

I.   Background

Trademark applicants may mistakenly assume the USPTO’s specimen requirements play second fiddle to other trademark registration requirements (e.g., no likelihood of confusion, not merely descriptive or generic, etc.)  That is, if the examining attorney finds that the proposed mark meets non-specimen related registration requirements, the submission of specimens is a mere formality for being granted registration of the mark.  This misplaced belief can result in a refusal by the examining attorney to register the mark.

The commentator has previously blogged about specimen-related issues that will likely prevent an otherwise satisfactory applied-for mark from being registered.  The Trademark Trial and Appeal Board’s recent decision in In re Midwestern Pet Foods, Inc. (July 18, 2018) is another reminder that non-compliant specimens will prevent registration of the mark.

In Midwestern, the applicant’s word mark EARTHBORN REBORN for pet food, submitted to the USPTO  as in intent-to-use application, received a Notice of Approval.  The applicant’s registration problems started when it submitted specimens with its Statement of Use.   Under the Trademark Act, the specimen must show a substantially exact representation of the mark as used in commerce.  Additionally, for goods (in this case pet food under International Class 31) the specimen must establish that the mark is used in connection with the identified goods.  Put another way, the specimens must establish that the consumer will readily identify the mark as being associated with the goods the consumer plans to purchase.

In Midwestern, the applicant had submitted a website shot of the actual product as its specimen.   Oddly the screen shot mentioned nothing about a pet food product but instead stated “Turn your empty earthborn holistic bags into recycled products and earn money for pet charities in the process.”   The applied-for mark was a simple word mark for the words EARTHBORN REBORN.  The specimen displayed the mark as EARTHBORN HOLISTIC inside of a circular design with the wording REBORN below and overlapping the circle.  Basically the specimen showed a mark with the intervening word  “holistic” separating the words Earthborn and Reborn.  This presentation was deemed an unacceptable material alternation of the approved word mark EARTHBORN REBORN.  Nor was there any reference to pet food in the submitted specimen.

The types of specimens acceptable for goods include tags, labels, instruction manuals, and packaging showing the mark on the actual goods or displays associated with the actual goods at their point of sale.  The USPTO, in recognition of the fact that many goods are sold on websites, will accept webpages as specimens as long as they include a picture or textual description of the goods associated with the marks and specify the means to order the odds or services associated with the mark.  Generally, the mark in combination with the good/service and the ordering means must be presented on the same webpage.  Such a website page layout should serve as an acceptable point of display of the mark.

The USPTO allows an applicant to submit a substitute specimen if the original specimen is not accepted by the examining attorney for registration purposes.  Surprisingly, the Midwestern applicant did not submit a substitute specimen but instead filed a response that did not address the specimen’s deficiencies and even stated that the recycling container depicted in the specimen as an acceptable point-of-sale display as ancillary services to goods.

Not surprisingly, the examining attorney issued a final refusal.  Then the applicant filed a Request for Reconsideration and submitted a substitute specimen.  The substitute specimen was an advertisement faxed to the USPTO containing an image of the applicant’s recycling bin which now featured the prominent EARTHBORN REBORN abutting images of the applicant’s pet food contained in bags.  The substitute specimen was accompanied by an affidavit of a corporate representative stating that the recycling bins featuring the mark are located in the same retail locations as the where the applicant’s pet food is sold, thus “encouraging our customers to buy our pet foods and recycle out bags.”  The affidavit further stated that the bins serve as point-of-sale displays that further “strengthen our customers’ association of the EARTHBORN REBORN mark with our pet food.”

The examining attorney denied the Request for Reconsideration on the same grounds she had specified in her final rejection and the applicant appealed.  The Board considered both the original and substitute specimens in rendering its opinion.

II. The Board’s Conclusions

  • The original specimen was not a substantially exact representation of the mark because EARTHBORN HOLISTIC is not congruent with the word REBORN. As depicted, the word EARTHBORN is “entwined” both physically and conceptually with the word HOLISTIC.   This presentation prevents EARTHBORN and REBORN from “engendering a separate commercial impression apart from the remaining elements” of the specimens.   That is the mark EARTHBORN REBORN is not presented  as a “stand-alone” mark.
  • The substitute specimen which included the words “Through our EARTHBORN REBORN” recycling program . . . .” Here, the Board deemed this presentation as a substantially exact representation of the drawing presented in the application.
  • Both the original and substitute specimens failed to show the applied-for mark in connection with the identified goods. The Board noted that the specimens did not involve containers, tags, or labels.  The deciding factor was whether the provided specimens constituted a display associated with the goods specified in the application, namely pet food.   To be an appropriate point of sale display, the usage of the mark must be at the “point of sale location to provide a customer with the opportunity to look to the displayed mark as a means of identifying and distinguishing the source of the goods.”  The Board citing In re Sones, 590 F.3d 1282, 1293 (Fed. Cir. 2009).

Regarding the original specimen, the Board found that the webpage specimen did not contain a picture or textual representation of pet food;  it did not show the mark EARTHBORN REBORN in association with pet food; and it did not provide a recognizable means for the customer to order the pet food.  The only product depicted was a recycling bin.  The Board also stated that website tabs labelled, e.g., “Learn Me” and “Find a Dealer” are not recognized means of ordering website goods for trademark specimen purposes.

Regarding the substitute specimen (which was found to meet the first prong of the specimen suitability test), the applicant argued that the advertisement constituted a point of sale display.  Again, the Board found that EARTHBORN REBORN mark functioned as a source identified for a recycling program, not pet food.  The Board had no information as to how the flyer was used in connection with the marketing and sale of the applicant’s pet food in retail locations.  Accordingly the Board refused to register the mark because the substitute specimen failed to meet the “point of display” requirement.

III.  Discussion and Take-Home Points

This case is a good example of how lack of communication can result in the rejection of an otherwise acceptable mark.  Here the applicant had come up with a catchy mark which was subsequently denied registration on “inadequate” specimen grounds.   So what went wrong?

It is this commentator’s opinion that an attorney who files, in particular an intent-to-use application, should inform the applicant of the specimen requirements should the mark receive a Notice of Approval early on.  Sometimes a great deal of time can pass between the issuance of the Notice of Approval and the submission of the required Statement of Use because the applicant is working on the getting the product to market and can request up to 5 extensions of time for submitting the required specimens.  The attorney should also inform the applicant that it would be a good idea for the attorney to review labels, marketing materials, etc. showing the mark before these items are actually used in commerce to ensure that they will meet the requirements of the USPTO from a specimen perspective. This would include examining website pages to ensure that the “point-of-sale” requirements will be met with a website page specimen.

If a 1A application is to be submitted, the attorney should not be hesitant to tell the applicant to “design” or “fix” a specimen so as to prevent a registration problem.

Also, specimens are to be current representations showing usage of the mark in commerce.  Furthermore, any future updates of the specimens once the mark is registered must continue to show the mark as depicted in the application’s drawing; material alternations may affect the mark’s registration status.

In Midwestern, it is also not clear why the original application did not specify both pet food as a good and recycling services as a service for which trademark registration was being sought since it seems that its “favorite” marketing focus aspect was promoting the recyclability of its pet food’s packaging, not the pet food itself.  Nevertheless, a specimen showing usage of the mark in connection with the pet food good would still have been required.

In conclusion, with the appeal, the applicant spent a lot a money trying to overcome obvious specimen errors only to still be denied registration of its mark.   There were also some procedural issues concerning the appeal process itself that are not discussed here but are detailed in the opinion.

The Bottom Line: The trademark registration process should not be conducted in a vacuum. Attorneys should be consult with the applicant about the specifics concerning the presentation of the applied-for mark in its marketing endeavors from labels to website presentations to ensure that they comply with specimen and mark usage requirements.  This proactive approach will help ensure that an otherwise acceptable mark will not miss out on registration due to faulty specimens.


© 2018 by Troy & Schwartz, LLC



Assuming a Patent Application’s Effective Filing Date Is Always Equal to Its Claimed Priority Date – A Trap for the Unwary


Many of the recent decisions concerning patent claim validity have focused on whether or not the claims cover inventions meeting the requirements for subject matter eligibility under § 101 since the infamous Alice decision. This commentator has blogged on that very topic and her blog on the Enfish decision appeared at in 2016.    This blog will focus on some of the other points of patent application preparation that may crop up during an infringement proceeding and prevent the patentee from prevailing.  These points apply to all patent applications no matter what the subject area.

A May 2017 opinion granting the defendants’ motion for summary judgment resulting in claims invalidation is a good reminder that the specification is a critical aspect of a patent application to establish that the inventor had possession of the invention at the time the application was filed.  The patentee’s specified claim of priority to an earlier filed application may not necessarily be the effective filing date if the earlier application’s specification is found to be “invention disclosure” deficient.   Losing a priority date for reasons discussed below may well result in a situation where previously unconsidered intervening prior art is fair game during a claim invalidation proceeding.

In D Three Enterprises, LLC  v. Rillito River Solar, LLC and Sunmodo Corp., case no. 15-cv-1148 (D. Colo. 2017), the district court invalidated several of D Three’s claims in two patents at the summary judgment stage of the lawsuit because the claims were not supported by the application’s original provisional application disclosure.  Although D Three had filed two separate lawsuits, the defendants filed joint motions for summary judgment.  It is not clear why the cases were not consolidated.

The D Three court went to great lengths to point out that the written description requirement under § 112(a) is distinct from the enablement requirement.  Under § 112(a), “]t]he application’s specification shall contain a written description of the invention and of the manner and process of making and using it, in such full, clear, concise and exact terms as to enable any person skilled in the art to which pertains . . . to make and use the same.”  The written description is intended to establish that the inventor was in possession of the invention as of the filing date sought.   D Three Court citing Ariad Phar., Inc. v. Eli Lily & Co., 598 F.3d 1336, 1340 (Fed. Cir. 2010). This requirement is achieved through descriptive means as words, structures, figures, diagrams, formulas, etc. that set forth the claimed invention.”  D Three opinion citing Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306, 1319 (Fed. Cir. 2003).

Furthermore, all limitations expressed in actual claims must appear in the specification.  The Federal Circuit has interpreted this requirement to mean that the written description must actually or inherently disclose the claim element according to the jurisprudence of the Federal Circuit on which the D Three court relied.  Where, for example, a provisional patent application is involved, this jurisprudence requires that “one skilled in the art, reading the provisional patent application must reasonably discern the limitation at issue in the challenged claims within the original disclosure.   “If the asserted claims describe an invention that ‘is an obvious variant of that which is disclosed in the [earlier] specification,’ or ‘renders obvious the invention for which an earlier filing date is sought,’ that is insufficient.”  D Three opinion citing Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1007).

The D Three case was complicated by the fact that the chain of applications starting with a 2009 provisional patent application included a continuation-in-part application (“CIP”).  A CIP application may include subject matter that appears for the first time in the CIP application.  Any claims derived from this additional subject matter are not entitled to any earlier application.  Any patent resulting from a CIP application may have claims with two different effective filing dates – a date for a previously filed application and the filing date of the CIP.

This blog will review the many issues addressed in the opinion and the court’s responses.  The district court’s opinion itself is worth a read because it provides a “real world” scenario of how “text book” procedures can become important considerations in a patent infringement case.   Moreover, these issues and the court’s detailed analysis provide a good reminder of patent law principles and just how difficult it can be to write an application that will withstand future challenges to validity.  It is noted that the court emphasized claim invalidation must be based on clear and convincing evidence or, as the court put it, the court must be convinced that invalidation of the suspect claims is appropriate.

Three D appealed the decision to the Federal Circuit.   The Federal Circuit affirmed the district court’s opinion in May 2018.

Take home points are presented at the end of the blog.


Issue:  Is claim validity assumed if the USPTO did not question the validity of a claimed earlier effective filing date?

Plaintiff’s argument:  The claims at issue were allowed by the USPTO and awarded an effective filing date corresponding to the filing of a provisional application in a long chain of applications.  As such the challenged claims were entitled to a presumption of validity.

Court’s Response:  There is no presumption that a patent is entitled to an earlier filing date.  The presumption that claims are valid rests on the merit of claims based on their novelty and non-obviousness according to the prior art and meet the requirements for subject matter eligibility. Here, the plaintiff could not present evidence showing a decision by the PTO or the Board of Patent Appeals and Interferences regarding whether the specified effective filing date are to be presumed valid.

Issue:  Can select limitations from the specification’s preferred embodiments be imported during a patent invalidation proceeding to render previously approved claims invalid? 

Plaintiff’s and Defendants’ Positions:  The defendant argued that the suspect claims were broader than the original provisional patent application’s disclosure.  The plaintiff argued that the defendants were trying to import select limitations from the disclosed preferred embodiments described in the specification.

Court’s Response:  The plaintiff was misreading sections 120 and 112.  The question is not whether the broad scope of plaintiff’s claims should be limited to its disclosed preferred embodiments.  The question under well-settled patent law is whether the Plaintiff’s applications (particularly the very first 2009 application) describe inventions at least equal in breadth to the asserted claims.  If not, then the asserted claims were not entitled to the earlier effective filing date.   That is, the inventor cannot claim what was not disclosed.

Issue:  Do “comprising” claims mean that the claims are not actually excluding unidentified elements (i.e., elements not actually in the claim)?  Do such claims nevertheless include an element, in this case a washer, that was not mentioned in the claim?

Court’s Response:  The court opined that the at-issue claims were broad enough to include a soft washer or not.  However, even with “comprising” claims, the inventor must be able to locate within the written description the information which support the full scope of the “comprising” claim.  That is, comprising claims are not exempt from the written description requirement according to the case law of the Federal Circuit which was cited by the D Three court.

Issue:  Are an application’s figures sufficient to disclose an invention when the narrative description itself if incompleteHere the original 2009 application disclosed an assembly for roof mounts with and without soft washer.   However, the 2009 application only disclosed one invention that lacked a washer.  Most of the disclosed embodiments included a soft washer.

Court’s Response.  The court found that the 2009 application’s narrative description did not suggest that the figures were incomplete or that a soft washer was included in each and every Figure.  The court found that certain Figures in the 2009 application did not include a washer.   The application therefore had disclosed an assembly both with and without a washer.

Issue:  Is the “phrase incorporated by reference” sufficient for establishing that a later filed application is entitled to the earlier application’s filing date?

Court’s Response.  Here is where things became tricky.  The answer is yes, this phrase will generally include all that was previously disclosed as long as the instant specification is itself consistent with what was previously disclosed.  The court found that a later filed 2011 application properly incorporated 2009 and 2010 applications by reference and that the incorporation included both the washerless and washer-including assemblies.  The beginning with the 2012 application, the specification suggested that the washer was “in all embodiments” and “regards only the embodiments in the subset of figures under discussion.  The commentator notes that the referred-to Figures were 10-14- 21-22, 25a-b and 27 a-c.  The washerless assembly had been depicted in Figures 27-33 and 41 in the 2009 application.  The court found that the plaintiffs’ application ambiguous as to whether the plaintiff intended to abandon the washerless assembly disclosed in 2009 in its 2012 application.

Issue:  Is an application depending from an earlier filed application entitled to its asserted claims if these claims are broader than what was originally disclosed?

Court’s Response. The inventor had disclosed one type of attachment bracket for the washerless assembly.  The asserted claims were not limited to this type of attachment bracket –  a W-shaped prong and face seat.   The 2009 application and each intervening application disclosed three types of attachment bracket: support post, W-pronged, and T slide.  The W-pronged bracket was the only attachment bracket that the application disclosed as being bolted through the flashing either with or without a washer.  Therefore the asserted claims were broader than what was disclosed and were not entitled to the effective 2009 filing date because the inventors did not possess a washerless assembly other than the one requiring the W-pronged attachment bracket.  Here, the disclosure of one species (the W-pronged bracket) was not found to support the asserted claim of three brackets (i.e., a genus claim).

IssueWhat if the positioning of a component as claimed in the original application differs from the disclosed positioning of the component as claimed in a later application claiming priority to the original application?  Here the original 2009 disclosure disclosed a washer positioned above the sheet member. In the intervening applications, the assemblies had a washer placed either above the sheet member or both above and below the sheet member.

Court’s Response.   Switching the location of the soft washer would eliminate the lack of support in the original 2009 application with one exception – one skilled in the art would discern from the 2009 application that the plaintiff had invented an assembly where the disclosed soft washer could be positioned in other locations of the assembly. Here, the plaintiff could offer no evidence to meet the exception.   As such, the filing dates for the two patents in suit were actually the filing dates of the applications directly preceding the two issued patent documents and not the 2009 application.

Issue:  Do the effective filing dates of Sept. 4, 2013 and Oct. 2, 2014 (and not Feb. 8, 2009) render the “problematic” claims invalid?

Court’s Response: It is axiomatic that “[t]hat which infringers if later, anticipates if earlier.” Three D court quoting SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1321 (Fed. Cir. 2006).  Here, the the first public sale dates [by both defendants] were earlier than the effective filing dates of the challenged patents.   The defendants’ alleged infringing products were first sold in 2009 and 2010, or several years before the actual effective filing dates of the patents in suit.

The court concluded that the defendants had meet the burden of providing by clear and convincing evidence that the asserted claims were not entitled to the 2009 filing date.

Take Home Points

  1. Adequate disclosure of the invention in the written description and drawings is essential to ensure that a later filed application’s claimed priority date is also the later filed application’s effective filing date.
  2. Adequate disclosure in the specification is required to support claim validity. A too broad of claim not supported by the specification’s disclosure either in an instant application or one relying on incorporation by reference of an earlier filed application may be subject to invalidation in a patent infringement lawsuit.
  3. When relying on “incorporation by reference to an earlier application,” be careful to not inadvertently abandon the earlier invention.
  4. Develop a strategy for filing multiple applications. Although not discussed in this blog, the D Three case briefly discussed how published patent publications under § 122 may serve as invalidating prior art if they are published before the “true” effective filing date of a later-filed application by the same applicant.
  5. Consider developing a patent application filing strategy to minimize the types of situations D Three faced and ultimately could not overcome.

© 2018 by Troy & Schwartz, LLC





Don’t Lose Out on Getting a Registered Trademark or Service Mark by Filing an Unacceptable Specimen!


The scenario:  An applicant files an application for a registered trademark with the USPTO and the proposed mark meets the following requirements for obtaining a registered trademark: no likelihood of confusion with existing registered marks plus the mark is not merely descriptive or generic.   So far so good.  But what if the applicant does not provide an appropriate specimen to the USPTO demonstrating how the otherwise acceptable mark is used in interstate commerce?  The registered mark will not be granted even though the mark itself was found to meet the other criteria for registration.

Although relatively uncommon, a “wrong” specimen situation that involves appeal to the Trademark Trial and Appeal Board (“TTAB” or “Board”)  does occasionally arise as the TTAB’s precedential decisions in In re Kohr Brothers, Inc.  (decided Feb. 9, 2017) and In re Pitney Bowes (decided Jan. 10, 2018) remind us. In the former case, the TTAB sided with the examining attorney and found that the provided specimen for a trademark application was inadequate for showing usage of the mark in interstate commerce.  In the latter case, the TTAB found that the Applicant’s substitute specimen for a service mark would allow the consumer to identify the mark with the offered services.

Specimens for goods and services have different requirements.  For service marks, business cards, website screen shots, brochures, etc. are generally accepted as specimens providing the specimens indicate the types of services being offered, show the mark itself, and designate the source of the services (i.e., the person or business entity providing the services under the mark).   These days, screen shots of websites are often submitted as specimens for service marks.

For trademarks, the specimen must have an association with the actual goods specified in the trademark application.   Section 45 of the Trademark Act states:

A mark is deemed to be in use in commerce on goods when (A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on the documents associated with the goods or their sale; and (B) the goods are sold or transported in commerce. 

An example of an appropriate “specimen” document is a package insert included with a clinical assay kit consisting of small vials of reagents.

The In Re Kohr Brothers, Inc. Decision

In In re Kohr Brothers the Applicant’s word mark for CONEY ISLAND BOARDWALK CUSTARD had received provisional approval as an intent-to-use application.  However, the examining attorney subsequently refused to register the mark because the proffered specimen appeared to be mere advertising material.

The Applicant had submitted as its specimen a photograph of a sign posted within its small shop (basically a boardwalk stand) which it asserted was an appropriate “display” specimen.  The examining attorney disagreed and the appeal ensued.  The Board first noted that “[s]ection 45 of the Trademark Act does not define the term “displays associated therewith, and . . . the Board must make a case-by-case determination of whether a particular use asserted to be a ‘display’ is adequate to demonstrate use in commerce.”  Slip opinion at 3.

The Board concluded that the display specimen did not demonstrate use in commerce for several reasons.  First, the submitted specimen included a picture of the goods (a cone with presumably custard).  The specimen also included a stylized ferris wheel on the right.  Yet, the application had been for the word mark CONEY ISLAND BOARDWALK CUSTARD.  The Board found that the depiction of the cone is more likely to be perceived as part and parcel of a composite word and design mark than as an unmistakable indication of the Applicant’s goods.  Slip opinion at 6.  That is, the specimen did not truly reflect the mark actually specified in the application.

Second, the specimen photograph was of a small sign that was posted on a wall opposite the counter where customers placed their orders and adjacent to governmental issued licenses for the business.    The Board opined that the placement of the specimen was “hardly a place where the merchant would place material intended “ ‘to catch the attention of purchasers and prospective purchasers as an inducement to make a sale.’ ” Slip opinion at 7 quoting TMEP § 904.03(g).  As such the Board held that the specimen cannot be considered as a display establishing a ready connection between the mark and the goods and affirmed the examining attorney’s refusal to register the mark.  Slip opinion at 8.

The In Re Pitney Bowes Decision

In In re Pitney Bowes, the mark was a logo for various services involving mail services.  The Applicant submitted screen shots of a website as its specimen.  The examining attorney refused registration on the ground that the specimen did not show the Applicant’s mark in use in connection of any of the recited services in the application.  The situation was complicated by the fact that the webpage described a self-service kiosk that consumers could visit to mail and ship items.  Although the kiosk was provided by Pitney Bowes, the examining attorney contended that Pitney Bowes itself was not performing the mail-related services itself.   The screen shot did show the name of the service provider, Pitney Bowes next to the logo mark thereby establishing a “linkage” between the mark owner and the mark readily ascertainable by the consumer.

The situation was further complicated by the fact that the webpage referenced third-party services such as those of the United States Postal Service.  The examining attorney understood this fact to mean that the only services provided through Pitney Bowes’ kiosk were not services actually being performed by Pitney Bowes.

Pitney Bowes then offered a substitute specimen showing a webpage referring to automated shipping software. i.e., a good.  The examining attorney again found that the specimen failed to demonstrate that the Applicant was providing the services listed in the application.  Slip opinion at 5.  Instead, the Applicant was providing a good that assisted consumers in mailing and shipping and ship letters and packages.  Slip opinion at 7.

Pitney Bowes appealed the matter to the Board and won.  In siding with Pitney Bowes, the Board emphasized the fact that the company’s attorney had sent a letter to the examining attorney during the prosecution process that Pitney Bowes does provide some of the application’s referenced mailing services in that its employees pick up letters and packages left by users in the kiosk receptacle and deliver them “into the mail stream.”

Precedent caused the Board to find that consideration must be given to explanations offered by the Applicant which clarify the nature, content, or context of use of the specimen that are consistent with what the specimen itself shows.  Slip opinion at 8.  Here, even though the examining attorney had reasonably found the first submitted specimen unclear as to whether the Applicant itself provided the mailing services listing in the application, the Applicant’s attorney had adequately clarified the services performed by the Applicant to establish that there was a direct association between the mark and at least some of the services in the class.  The first specimen was deemed acceptable by the Board because it demonstrated the use of the logo mark in a manner that “creates in the minds of potential consumers a direct association between the mark and at least some of the services in the class.”  Slip opinion at 9.


  1. An improper specimen can prevent registration of a mark even though the mark meets all of the other criteria for registration.
  2. Specimens must clearly show an association between the mark actually presented in the application and the associated goods/services. Any major deviation in the way the mark is presented in a specimen from its presentation in the application may prevent registration of the mark as the In re Kohr Brothers decision demonstrates.
  3. The mark needs to be readily ascertainable by the consumer to allow the consumer to associate the mark with the goods or services. In In re Kohr Brothers, placement of a sign with the actual mark right on or right next to counter frequented by consumers such that consumers could readily see the mark may have been acceptable.  So would some type of cone wrap or disposable cup for holding a scoop of the custard which included the mark and reference the business providing the product.
  4. With website specimens, it is important that the mark be present on the webpages as well as the name of the business/individual providing the service. Additionally, any service mark specimen must include the mark as presented in the application and specify the services being provided under the mark.
  5. Webpage screen shots may be provided as specimens for the goods listed in a trademark application but certain criteria must be met.
  6. It is a good idea to assess the reasonableness of a specimen before submitting it to the USPTO to ensure that it will meet specimen requirements.   If the application is for an intent-to-use application and not filed by a trademark attorney, the applicant may nevertheless wish to consult with a trademark attorney concerning future specimen requirements if and when a Statement of Use is to be filed to secure registration of the applied-for mark should a Notice of Allowance issue.   Most intent-to-use applicants will be “developing” specimens after the application is submitted to the USPTO and have the time to do it right.



© 2018 by Troy & Schwartz, LLC







Issue Preclusion in Trademark Infringement Lawsuits Commenced After an Opposition Proceeding Before the TTAB

This blog discusses the doctrine of issue preclusion applied in the context of trademark infringement lawsuits when the defendant and plaintiff were previously  involved in an opposition proceeding before the TTAB.

On Dec. 11, 2017 the Southern District of New York granted summary judgment to the plaintiff in the trademark infringement case of Cesari s.r.l. (Italian Limited Liability Company) v. Peju Province, Winery, L.P., et al. on issue preclusion grounds based on the U.S. Supreme Court’s 2015 decision in BB Hardware, Inc. v. Hargis Indus.   Defendant Peju Province and plaintiff Cesari had “met previously” in a 2003 opposition proceeding before the Trademark and Appeal Board (TTAB) when Cesari s.r.l. (“Cesari”) as the registrant of the mark LIANO for wines opposed registration of Peju Province Winery, L.P.’s (“Peju”) applied-for mark, LIANA, for wines.  The TTAB sided with the registrant and denied registration of the LIANA mark.  The trademark infringement lawsuit, which is the subject of this blog, ensued many years later.

In the trademark infringement lawsuit Peju argued that there was no confusion between its white wines versus Cesari’s red wine products. Different trade channels were involved based on the cost of the parties’ respective wines and other factors. Peju alleged that the TTAB in its opposition decision had not addressed these differences in marketing channels including the fact that its wines were white wines from grapes grown in the Napa Valley.   The TTAB’s opinion had cited Octocom Systems v. Houston Computers Services, Inc. in support of its position favoring opposer Cesari. 918 F.2d 937 (Fed. Cir. 1990) (stating that “[t]he authority is legion that the question of registerability of an applicant’s mark must be decided on the basis of the identification of applicant’s goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant’s goods, the particular channels of trade or the class of purchasers to which the sales are directed.”).

According to the Cesari court, neither the opposer’s pleaded registration or the involved application had restrictions as to the channels of trade or purchases.  That is, the TTAB had correctly found that both the registered mark and the applied-for mark used the broad term “wines” for its description of goods with no limitation as to the intended trade channels, if any.

The Cesari opinion distinguished the differences between a trademark infringement action and a TTAB opposition proceeding in assessing marketplace factors.  In a trademark infringement action courts are focused on what is actually happening in the marketplace rather than on an application or registration.   The registered mark and accused mark are not just viewed according to their typewritten and aural similarity of the marks but how they are presented in the marketplace. Cesari slip opinion at 7.

By contrast, in a TTAB opposition proceeding, “a party opposing an application to register a mark . . . often relies only on its federal registration, not on any common-law rights in usages not encompassed by its registration.” The TTAB thus “typically analyzes the marks, goods, and channels of trade only as set forth in the application and in the opposer’s registration, regardless of whether the actual usage of the marks by either party differs.”   Cesari slip opinion at 7.  The TTAB is therefore limited to deciding whether or not a likelihood of confusion exists on the basis of the disclosed usages within an application versus a registration.

When would issue preclusion be appropriately applied in a trademark infringement lawsuit despite the different focus by a federal court? According to the Cesari court “[i]f a mark owner uses its mark in ways that are materially the same as the usages included in its registration application, then the TTAB is deciding the same likelihood-of confusion issue as a district court in infringement litigation.”  Slip opinion at 7.

Issue preclusion would not apply if the registered mark owner uses its mark in ways that are materially unlike the usages in its application.  Thus, if  the TTAB does not consider the marketplace usage of the parties’ marks, the TTAB’s decision should have no later preclusive effect in a suit where actual usage in the marketplace is the paramount issue.  This statement by the Cesari court recognized Justice Ginsberg’s concurring opinion in B & B Hardware where she emphasized the “marketplace” requirement for finding issue preclusion.  Specifically, where the TTAB decided contested registrations “upon a comparison of the marks in the abstract and apart from their marketplace usage,” there will be no preclusion in a later infringement lawsuit.   Concurring opinion in B&B Hardware quoting 6 J. McCarthy, Trademarks, and Unfair Competition §32: 101, p. 32-247 (4th ed. 2014).

The Cesari court held that the TTAB had adequately considered the market place issue in finding that the LIANA mark should not be registered.  The registered and applied-for mark were both listed as International Class 33 goods, namely wines.  No other descriptive words were used which might have limited the usage of the goods to limited and different trade channels.  As such, “[i]n the absence of any limitations in the parties’ identifications of goods, [the TTAB] must presume that the goods move through all reasonable trade channels for such goods to all usual classes of consumers for such goods.” Cesari quoting C&N Corp. d/b/a/ Door Peninsula Winery v. Ill. River Winery, Inc., No. 91174718, 2008 WL 4803896, at *3 (T.T.A.B. Oct. 21, 2008).

The defendants had argued that their actual marketplace usage of LIANA is materially different from that which the TTAB adjudicated. This usage, according to defendants, involves wines from grapes grown in Northern California, wines purchased by sophisticated customers; new world wines; wines priced between $40 and $60 a bottle; and wines sold on specific websites and at specific wineries.

The Cesari court discounted the defendants’ arguments and found that the defendants’ specific trade channels are among the “reasonable trade channels” and “usual classes of consumers” the TTAB considered.  The Cesari opinion rather sarcastically concluded that “[w]ines purchased by sophisticated consumers are still wines.  “Because defendants have not offered any evidence that LIANA is used with respect to goods other than wines (bicycles or soda, for instance), there are no “non-disclosed” usages that might necessitate a successive adjudication.”  Slip opinion at 9. Summary judgment was granted to Cesari on issue preclusion grounds.

A sommelier may not agree with the court’s inference that wines purchased by sophisticated consumers are on the same level as wines purchased by the average Jill.   Nevertheless, after registration had been denied by the USPTO, the defendants could have appealed the TTAB’s decision rather than simply continue using a name that is essentially a verbatim copy of a registered mark.   This commentator has no idea why Peju was “stuck” on the name LIANA.  Perhaps the defendants were the prior users in which case this evidence could have been brought to attention of an appellate court had Peju appealed the TTAB’s decision. Peju knowingly took a risk in its continued usage of the mark following the opposition proceeding before the TTAB.  Perhaps it felt that its usage was too geographically limited to cause a problem with imported wines and/or that the Italian company owner of the mark would not pursue a costly trademark infringement lawsuit in a U.S. court.

Commentator’s Comments

Did the district court get it right that issue preclusion prevented a “revisit” of the confusion issue on marketplace grounds? Wine is available in a wide variety of markets from local wineries to grocery stores to liquor stores to restaurants to on-line ordering.   The prices vary widely across all markets and within markets.   And consumers often do have a preference for white whites (the defendants’ wines) versus red wines (the plaintiff’s wines) but both white and red wines are generally sold within the same liquor store, restaurant, etc.   It is not clear what Peju’s market place usage was at the time its application was rejected by the TTAB in 2004 versus when the trademark infringement lawsuit was commenced.  For example, was the usage of LIANA indeed confined to specific and different trade channels relative to the LIANO mark as the defendant contended even though its original trademark application provided no such limitations in its one-word broad description of goods –  i.e., wines?

As a practical matter the defendant may have been wise to adopt another name rather than risk a trademark infringement lawsuit. If Peju disagreed with the TTAB’s decision, it could have appealed that decision. Instead it chose to continue selling wines under a name that most practitioners would opine was “too close” to the registered mark.  It is not clear why it had even filed a trademark application for such a similar mark for precisely the same goods.  The Cesari opinion also suggests that the district court found the defendants’ continued actions after losing the much earlier opposition proceeding unsavory.

Take Home Points

The procurement of registered trademark is not a slam dunk process. There are many factors that enter into the evaluation calculus including likelihood of confusion with previously registered marks.  Before spending a lot a money on filing an application and creating marketing materials for the proposed mark, the players should conduct a risk analysis to determine potential problems in either the registration process or a future trademark infringement lawsuit.  Small businesses, the backbone of the U.S. economy, in particular should avoid unnecessary costly legal complications by addressing potential problems and the probability that a chosen course of action could have costly legal complications.   Peju should have been alerted to problems with its applied-for mark presuming a trademark search was done.   If it did conduct a search and decided to proceed anyway with registration, and later unauthorized usage after losing the opposition proceeding, then it did so solely at its own risk.  And no American business should ever presume that the foreign owner of U.S. registered mark will “ignore” trademark infringement activities within the United States.

Trademark law is further complicated by the fact that trademark infringement lawsuits are not limited to registered marks but may also include infringement of common law marks. Accordingly, a thorough trademark search of both registered federal and state marks and common law marks is highly recommended to determine potential registration and trademark infringement issues.  An ounce of prevention is worth a pound of cure – such prevention can translate into considerable savings on legal fees and other costs associated with legal disputes.

© 2018 by Troy & Schwartz, LLC



An Employer’s Referral Sources May Be a Protected Legitimate Business Interest Under Fla. Stat. 542.335 According to Florida’s Supreme Court


This blog discusses the September 14, 2017 Florida Supreme Court’s holding in the consolidated cases of White v. Mederi Caretenders Visiting Services of SE Florida, LLC, et al. and Americare Home Therapy, Inc. v. Hiles.

A previous blog discussed Florida’s restrictive covenant statute which, when compared to similar statutes in other states, is generally quite favorable to businesses when it comes to the enforcement of non-compete agreements.  Many lawsuits involving Fla. Stat. 542.335 involve a former employee who has left the employment of the business and either started a competing business or has gone to work for a competitor.  Generally, the employee has signed a non-compete agreement as a condition for employment with his former employer.  The former employer may commence a lawsuit to prevent the former employee and his new employer from using information associated with the former employer’s  legitimate business interests.  Where the former employee goes to work for a competitor of the former employer, both the former employee and new employer are often named as co-defendants.

Under the Florida statute, a contract providing restrictions on competition must involve a legitimate business interest as defined by statute to be enforceable.  Fla. Stat. 542.335(1)(b).  Both of the above referenced cases involved employees who had worked for businesses that relied on home health referral sources cultivated through extensive personal marketing and relationship building with potential referral sources, primarily physician’s offices.  Section 542.335 does not specify home health referral sources as a legitimate business interest but does provide a non-exhaustive list preceded by the words “legitimate business interest includes but is not limited to:

  1. Trade secretes as defined in s. 688.002(4);
  2. Valuable, confidential business or professional information that does not otherwise qualify as trade secrets;
  3. Substantial relationships with specific, prospective, or existing customers, patients, or clients;
  4. Customer, patient, or client goodwill associated with:  a) An on-going business or professional practice, by way of trade name, trademark, service mark, or trade dress; b) A specific geographic location; or c) Specific marketing or trade area;
  5. Extraordinary or specialized training.”

The Florida Supreme Court’s Analysis

In White/Americare the Florida Supreme Court engaged in statutory interpretation to conclude home health referral sources were indeed legitimate business interests for several reasons.  First, the legislature’s stated examples were meant to be just that – examples.  The list was never intended to be exhaustive as clearly indicated by the words “includes but is not limited too.”

Second, the Court refused to interpret the statute in such a way so as to exclude a claimed legitimate business interest in non-identifiable prospective patients.  The Court tellingly stated “[g]enerally, it is improper to apply espressio unius to a statute in which the Legislature used the word include.  This follows the conventional rule in Florida that the Legislature uses the word “including” in a statute as a word of expansion, not one of limitation.” Slip opinion at 13.

Third, the Court noted that for home health care companies (HHCs), there is an “indispensable relationship between referral sources and their undisputed legitimate business interests in relationships with patients protected by the statute”  Furthermore, the Court noted that referral sources are somewhat analogous to customer goodwill which is expressly protected by the statute.  Slip opinion at 20.  It is important to understand the home health referral sources generally do not involve identifiable patients although the home health referral sources will hopefully result in referred patients who then of course become identifiable.

In reaching its conclusion, the Court was careful to point out that the statute does not protect covenants whose “sole purpose is to prevent competition per se because such contracts are void against public policy.  Even under Florida law with its pro-business stance, the courts have held that “[f]or an employer to be entitled to protection,   ‘there must be special facts present over and above ordinary competition such that, absent a non-competition agreement, the employee would gain an unfair advantage in future competition with the employer.’ ”  White/Americare citing Passal v. Naviant, Inc., 844 So. 2d 792, 795 (Fla. 4th DCA 2003).   Slip opinion at 21.

The statute also allows the courts to ameliorate any concern regarding overly restrictive covenants by commanding the courts to modify any non-competition agreement that is not reasonably necessary to protect the legitimate business interest and to grant only the relief necessary to protect such interests.  Fla. Stat. s. 542.115.  Here both non-competition agreements were limited to certain geographical areas – to the counties where the HHCs actually operated for a period of one year.

Conclusively, by finding for the HHCs, the Court was not expanding the reach of restrictive covenants to limit competition.  It was merely finding that the nature of an HHC-based business necessitates the classification of its referral sources as legitimate business interests.

Take-Home Points

After White/Americare, businesses may be able to more easily establish legitimate business interests to protect their interests in non-compete agreements where the alleged business interest is not specifically articulated by the statute.   The decision shows, however, that the analysis will be fact-specific, and that the agreement must still be reasonably tailored to cover a reasonable geographic area and time-frame.  The plaintiff will also need to be able to adequately explain why the subject matter is a legitimate business interest based on the nature of the business.

This commentator notes that the conduct of the employee in Hiles was particularly egregious with respect to her transferring of Americare’s confidential information, including patient information, to her personal e-mail account both before she even gave notice of her resignation and after she was let go a few days after giving notice to Americare prior to her notice’s specified “last day.”

Clearly the technology age has made the wrongful usage/theft of a business’s intellectual property and/or confidential information (intangible assets) easy.  It is up to businesses, no matter how small, to be proactive in protecting their intellectual property and confidential information from this wrongful usage.  As the White/Americare holding demonstrates for cases involving employees, a non-compete agreement does not always prevent problems after an employee resigns or is terminated.   Contact us to obtain a complimentary checklist of suggested steps to take to help protect your business’s intangible assets and thereby try to eliminate the need of future costly litigation to protect your business’s interests.


© 2017 by Troy & Schwartz, LLC