Google Tries to Trademark "Glass"

Written by Matthew G. Miller, Gearhart Law
www.gearhartlaw.com

 

Google, the Mountain View-based search giant, is preparing for the release of their hotly anticipated new product, Google Glass. Aside from promoting Google Glass through various publicity stunts, Google is also looking to protect their legal rights associated with Google Glass. The company has filed a number of patent applications pertaining to the technology contained in Google Glass. However, recently Google has turned their eye towards a new realm of protection; federally registered trademarks.

In 2012, Google filed for a trademark on the term “Google Glass” and now the search giant is looking to expand its protection by registering a stylized version of the term “Glass,” as shown below. 

 

                  

 

 

              Note that under federal law** (15 U.S.C. §1052(e)(1)) a trademark cannot be registered when it is “merely descriptive” of the goods on which on the mark is being used unless the term obtains what is known as “secondary meaning.” Without this secondary meaning it is impossible for a mark to obtain full trademark protection. Establishing secondary meaning indicates that even though the desired trademark is merely descriptive, the public still identifies the trademark with the goods the mark is intended to identify. An example of this is Kellogg’s All-Bran Cereal. While the mark “All-Bran” describes an aspect of the cereal, the general public thinks of Kellogg’s cereal and no other product or service when hearing or seeing the mark.

Because “glass” is a descriptive term, the United States Trademark Office has rejected Google’s application to register the word. In response to the Trademark Office’s rejection, Google has filed a staggering 1,928 page reply. Granted, the reply is only 24 pages of substance and 1,904 pages of examples of “glass” being used in connection with Google’s product, Google Glass.  These additional 1,904 pages of examples are provided in an attempt to show the Trademark Office that the public, upon hearing the term “glass” thinks of their product. If Google can establish this connection, they will have achieved secondary meaning for the term “glass” in connection with Google Glass. In further support of their argument that this trademark should be granted, Google argues that the term “glass” is not descriptive of their product since Google Glass contains only minimal amount of glass, and is actually made up mostly of metal and plastic.

 

 

Whether or not Google will prevail in their attempt remains to be seen, but it will certainly be interesting to watch where things go from here…

 

**In the United States, under common law principles, a party gets protection of their trademark simply by using it. However, registering your mark with the federal government provides many, many benefits. 

USPTO Issues New Guidelines in Light of New Supreme Court Precedent

Written by Matthew G. Miller, Gearhart Law
www.GearhartLaw.com

 

Over the past few years, the Supreme Court of the United States issued two seminal opinions on patent law: Association for Molecular Pathology v. Myriad Genetics (“Myriad”) and Mayo Collaborative Services v. Prometheus Laboratories (“Mayo”). Each of these cases grappled with what constitutes patent-eligible subject matter. Generally, Myriad discussed whether gene patents are allowed and Mayo discussed whether a patent on a treatment regiment is allowable. In Myriad, that court held that gene patents are allowable only if the gene does not naturally occur in nature. In Mayo, because the patent merely directed a practitioner to measure the levels of a particular metabolite and adjust the treatment dosage accordingly, the Supreme Court held that the patent-in-suit was invalid. That said, these summaries are a gross oversimplification of both Myriad and Mayo (which are long, and can be difficult to wrap one’s head around) and the cases themselves give little guidance on their practical implications.

Due to the lack of guidance from the Supreme Court, the United States Patent and Trademark Office (“USPTO”) issued new guidelines on what is patent-eligible subject matter for patent agents and attorneys. These guidelines are also long and can be difficult to wrap one’s head around, however the USPTO has offered a quick reference guide to distill some of the main points of the unabridged guidelines.

In short, the guidelines directs an Applicant/Examiner to walk through the flow chart below. Regarding the third question, the USPTO gives a list of factors that must be considered, in their totality, to arrive at the appropriate answer for the third question. These factors are summarized below the flow chart.

 

 

For Question (3)

Factors that weigh towards eligibility

 (claim does recite something significantly different)

Factors that weigh against eligibility

(claim does not recite something significantly different)

 

1. Product claim that initially appears to be a natural product, but after analysis is determined to be non-naturally occurring and markedly different in structure from something naturally-occurring.

1. Product claim recites something that appears to be a natural product and has a structure that reflects that.

2. Claim recites elements/steps that impose meaningful limits on claim scope beyond the judicial exceptions. (Claim is narrow enough so that others are not precluded from using idea entirely.

2. Claim recites elements/steps that impose meaningful limits on claim scope beyond the judicial exceptions, but are too generalized and overly broad.

               

3. Claim recites elements/steps in beyond the judicial exceptions that are more than nominally related to what is being claimed.

3. Claim recites elements/steps in addition to the idea/objecting being claimed that must be used or taken by others to be applied.

4. Claim recites elements/steps that are more than just general instructions to apply or use the idea/object being claimed.

4. Claim recites elements/steps that are well-understood and conventional.

5. Claim recites elements/steps that include a particular machine or perform a transformation of a particular article.

5. Claim recites elements/steps in addition to the idea/object being claimed, but add no meaningful limiting steps.

6. Claim recites one or more elements/steps in addition to the idea/object being claimed that add a feature that is well-understood and conventional.

6. Claim recites elements/steps that amount to nothing more than a mere field of use.

            As you can see, for many inventions determining whether it discloses patent-eligible subject matter can be challenging! In light of these rulings and their interpretation by the USPTO, it is advisable to consult with your patent professional about your patent strategy and available options.

Solar Powered Laptop

                                 

written by Elizabeth Gearhart, Ph.D., patent agent at Gearhart Law
www.gearhartlaw.com

 

Apple has finally done it! At least we hope this technology works out. They’ve invented a solar-powered MacBook.   They’ve even been issued a patent for it:

US Patent # 8,638,549, “Electronic device display module.”


You can view the patent on the USPTO website:

http://patft.uspto.gov/netacgi/nph-Parser?Sect1=PTO1&Sect2=HITOFF&d=PALL&p=1&u=%2Fnetahtml%2FPTO%2Fsrchnum.htm&r=1&f=G&l=50&s1=8638549.PN.&OS=PN/8638549&RS=PN/8638549

Click on ‘images’ and then ‘full pages’ to see a full pdf of the patent.

In a nutshell, the patent describes an electrochromic glass plate for the lid that covers the display screen. Between the two would be photovoltaic cells to collect light and convert it to energy. The patent states that the energy collected from light may be used to either power the device directly or to power the device battery. 

Some bloggers have pointed out that a glass laptop is a bit risky. That may be, but I think this is a great advance in technology. Imagine our troops in Afghanistan using these, or people in countries that aren’t advanced enough to have ready access to electricity. I say Bravo to Apple and I can hardly wait to try one!

              

Entrepreneur Magazine Online

                                           

written by Elizabeth Gearhart, Ph.D., patent agent at Gearhart Law
www.gearhartlaw.com

 

To all entrepreneurs:

Have you checked out Entrepreneur.com? If not, you could probably spend all day or evening on it. It’s the on-line companion to Entrepreneur Magazine. 

Entrepreneur.com

http://entrepreneur.com

This site has a wide range of articles to capture your interest. They fall under the categories of: Start-ups, Run & Grow, Money, Marketing, Technology, Franchises, The ‘Treps (general news and articles), Answers, Magazine, and Video. 

I explored the marketing tab and found many interesting articles, but these three really got my attention:

3 Strategies to Keep Your Website Relevant to Google

http://www.entrepreneur.com/article/231752 

Do you know the name of Google’s new search algorithm? Hummingbird. As in the bird whose wings move so fast they’re hard to see. This article points out aspects of this new program that you wouldn’t necessarily expect, like the fact that the typeface and font that you use on your website matter to the search algorithm. The wrong ones can slow the search process down, and Hummingbird won’t like that. The article is full of other great tips for your website too, and was written by Anca Bradley at Fruition in Denver.

10 Advanced Facebook Tips and Tricks

http://www.entrepreneur.com/article/230893 

Another one I liked was this article by Scott Levy, who is CEO of Fuel Online. It contains 10 tips outlined in an easy to read format.    Here’s one thing that Scott points out: different people are online at different times, so there may be an optimal time for you to post depending on who you’re trying to reach. He suggests experimenting by posting at varying times. His other nine tips are very useful as well.

17 Linked-In Profile Must-Haves

http://www.entrepreneur.com/article/231750

Who doesn’t love Linked-In? Love may be a strong word, but every business person should consider having a Linked-In account. This article was written by Kristen Piombino from PR Daily.  One of her important tips: put your email address on your linked-in profile. You can communicate through Linked-In, but some people prefer email. And yes, you should get a professional head shot done to put on your profile page. She shares these and many other relevant tips to help you maximize your profile. 

I found this site full of interesting and useful articles. I hope you do too.

Trademark Basics from the USPTO

 

                  ® ™

Should I get a trademark, copyright, or patent?

How do I go about getting a trademark?

Do I need an attorney?

What are the roles of the USPTO and the trademark attorney?

If you’ve ever had any of these or other trademark questions, now there’s a free website you can go to for answers. The US Patent and Trademark Office has a wealth of information on trademarks at http://www.uspto.gov/trademarks/basics/BasicFacts.pdf.

If you need further help, feel free to call us at 908-273-0700 or email us at hello@gearhartlaw.com 

Inventors' competition for New Jersey high school students

Gearhart Law is pleased to sponsor along with AT&T, The New York Jets and others, a competition for New Jersey high school students presented by Fairleigh Dickinson University and The Rothman Institute of Entrepreneurship. For more information and the online application, go to www.fdu.edu/businessidea.   The entry deadline is February 16th.  If you know a New Jersey high school student with a great idea, please pass this on!

 

 

Can King.com trademark the word "candy"?

 

written by James Klobucar, Esq., Patent Attorney at Gearhart Law
www.Gearhartlaw.com

One of the latest news stories to take the internet by storm stemmed from reports that King.com, makers of the wildly popular Candy Crush mobile application (amongst others), has trademarked the word “candy” in the United States. The furor brought about statements of disbelief such as, “how can someone trademark a common word?” to factual inaccuracies such as, “these copyright trolls must be stopped,” and “I hope they get sued by makers of Candy Land (board game).” Let’s attempt to clear the air a bit and understand exactly what has happened thus far, and why King.com has taken the actions they have.

Numerous reports have stated that King.com has received a trademark for “candy” in the United States; however, this is not yet the case. King filed for a trademark in the U.S. on the word “candy” for use in connection with a list of various items (see below) on February 6, 2013. The trademark was allowed for publication on January 15, 2014 and will be published on February 25, 2014. Upon publication, the trademark will enter a 30 day opposition period where any third party can oppose the mark if they believe they will be damaged by the granting of the mark. Only after successfully navigating this period will King be afforded federal rights to the mark. The confusion likely arose since King.com owns the same trademark in Europe (EU) and from a misinterpretation of the law by many of those on the internet.

In addition, others are frustrated that King.com is sending out cease and desist letters to various app developers who happen to have the word “candy” in the title of their app. They have effectively been deemed “trademark trolls” by the public and a “fraud” because they don’t yet own the trademark. However, unlike patent law, trademark law differs in that “if you don’t use it, you lose it.” Thus, in order to preserve their rights to the mark King.com must use the mark and must actively prevent others from using the mark or they risk losing their rights. Additionally, to assert your right(s) to a trademark you must have a reasonable belief that you have rights to the mark.  Again, a misinterpretation of the law is likely to blame in that trademark and patent practices have been equated when they are two distinct areas of law governed by different rules.

Most of the conversation has centered over the attempt to trademark a single word. However a common, single word can be a trademark under trademark law. In fact, most of the American public is probably familiar with at least one such trademark.  Apple? Time? Fortune? However, such marks are not descriptive of their goods. The notion of an apple does not generally give rise to a computer. Part of the issue many seem to have actually does have validity under trademark law in that “candy” describes the game Candy Crush where one indeed….crushes candies. An attempt to register a descriptive trademark should be rejected by the USPTO.

However, the filing for the trademark makes no mention of candy and it, in fact, has a laundry list of items including DVDs and video recordings featuring computer games, calculating machines, baby monitors, battery performance monitors, aprons, bandanas, bath robes, bathing caps, game equipment rental, operating lotteries, organization of sport and electronic games competitions, and party planning. Somewhere in the listing of well over 100 goods and services is the intended usage (as far as we know) for downloadable software for mobile applications. Additionally, King claimed their existing mark in Europe and filed the application under this claim, which is fairly uncommon. Thus, the USPTO and more importantly the Examining Attorney was probably not as diligent as they should have been and likely made some assumptions as to the validity based off the foreign filing.

The final element which has people riled up is the supposed “hypocrisy” of King.com. King was involved in a dispute over the cloning of a game they were in talks to acquire, and just recently filed an opposition to another app’s trademark to “saga” which is actually in King’s mobile application’s full name “Candy Crush Saga.” Thus, people see King sending out cease and desist letters for “candy” and then opposing someone else from obtaining the mark “saga.” To an extent, the anger and frustration is understandable even though their actions are in compliance with the law, and even necessary to preserve rights as noted above. The general outrage by the public and their perception of King led to a statement to be issued by Riccardo Zacconi, King’s CEO (see link below). 

In conclusion:

  1. King.com does not currently have a trademark for “candy” in the United States.
  2. Anyone who legitimately feels they will be harmed by the grant of the “candy” trademark can oppose it within a thirty day period beginning February 25, 2014.
  3. If you don’t prevent others from improperly using your trademark, you risk losing it.
  4. While one may not have a registered trademark, one must have a legitimate and appropriate reason to believe they have rights to the mark to assert those rights.

Further Reading:

http://about.king.com/about/our-approach-to-ip

How to expedite patent prosection at the USPTO

written by Susanne Somersalo, Ph.D., Esq., patent attorney at Gearhart Law
www.GearhartLaw.com 

How to expedite patent prosecution?

Some statistics

According to the USPTO statistics of November 2013 there were 590,070 patent applications waiting to get examined in the U.S. Patent and Trademark Office. The expected time from filing of a patent application to the first office action is on average 17.6 months. On average the total time of examination is 37.3 months.

The total time depends a lot on the art unit the application belongs to. Some units are very fast and clearly below the average. In any case, the inventor most probably has to wait around a year before an office action is issued and most probably two to three years before the application may become issued.

Thus it seems that the patenting process is sometimes painfully slow. In order to provide faster examination, the USPTO has established alternatives for expedited prosecution.

Track One

Track One examination is a relatively new process. For an additional fee, the applicant gets an expedited examination. The fee is currently $2000 for an applicant who qualifies as a small entity.

In order to get an application onto Track One, the application may not have more than 30 claims, no more than 4 independent claims and no multiple dependent claims. An essential feature in Track One examination is that the applicant can keep the expedited status only if all office actions are replied to within the set time frame: if the applicant requests an extension of time to reply he will automatically lose the expedited status.

Track one may seem to be expensive, but it expedites the process tremendously. The average time for first office action is 2.4 months and the total prosecution time is on average 6.13 months. Thus it is possible to get a patent in about half a year.

However, it has to be noticed that Track One does not increase the chances of getting the patent issued. The average allowance rate of patents in the U.S. Patent and Trademark Office is about 43%. Track One applications have about the same rate.

Patent Prosecution Highway

Another way to expedite the patent examination process is to use the Patent Prosecution Highway (PPH) when possible. PPH is possible and definitely worthwhile to consider when an application that is substantially similar to the US application was filed with certain foreign offices (e.g. European or Japanese Patent Office) or as an international PCT application and the foreign or PCT authority has issued a positive search report. Under the PPH-program the USPTO Examiner would consider the positive search report in his examination of the US application. Of course the US claims have to be substantially same as the PCT –claims.

The PPH-examination is similarly expedited as the Track One, but in addition to this, the allowance rate is currently over 90%. When the international search report is positive, the US Examiner may rely on the international search and basically allow the patent based on the positive international search report.

Inventor over 65 years

Probably not a very well known way to expedite patent application prosecution is to file a petition to expedite the petition when one of the inventors is over 65. There are no additional fees for the expedited process. The first office action usually comes a few months after the petition has been accepted. The expedited process in this case does not increase the allowance rate; it remains at about 43%.

At Gearhart Law we can help you in filing your patent application via normal examination or via an expedited route.  Call us at 908-273-0700 to discuss your options or send us an email at hello@gearhartlaw.com

Google's latest patent

What did Google get for a New Year’s present? Their patent issued! On December 31, 2013 patent number 8,261,366 titled “Self-creation of comic strips in social networks and other communications” was issued, assigned to Google. This patent, like other software patents, is a method patent. It teaches a method rather than how to make an actual product that you can hold in your hand. 

Why do we care? Because this patent is for something fun for consumers. The only catch; you have to use Google+ to be able to get it, although there are similar comic-generating apps out there. Basically, it allows you to create your own comic strip electronically and share it. You can see two of the inventor’s figures from the patent below. Figure 5 shows how you put in the text of your comic, and figure 7 shows how it can be shared through social media. It will be interesting to see how quickly this catches on and how creative Google+ users are with their humor! It also shows the value of patents. By the time this becomes just another routine Google+ feature, Google will be making big bucks off it, just like everything else they do, and no one will be able to copy them because they hold the patent.

The patent was originally filed on February 16, 2010 and issued nearly 4 years later. Even the mighty Google has to wait years to get their patent, just like everyone else. So the next time you get frustrated because the US patent office is taking so long to issue your patent, just remember, you’re not alone. But also remember, only a small fraction of people in the world own patents, so hang in there and watch your perserverance pay off!

US Supreme Court to Hear Patent Case

written by James Klobucar, Esq., Patent Attorney at Gearhart Law
www.GearhartLaw.com

The Supreme Court recently accepted another patent law case directed to software inventions (i.e. computer-implemented inventions) by adding Alice Corporation Pty. Ltd. v. CLS Bank International to its docket. At issue, is whether claims to computer-implemented inventions, including claims to systems and machines, processes, and items of manufacture, are directed to patent-eligible subject matter within the meaning of 35 U.S.C. § 101. The case was initially filed by CLS Bank International in May 2007 and passed through various courts over the years. Eventually, the Federal Circuit for the U.S. Court of Appeals, sitting en banc, found the claims in the asserted patent(s) in question to be invalid, however, the Justices could not agree on the applicable standard by which to invalidate, which prompted the Supreme Court to step in and clarify the lower court’s position.

In this case, Alice asserted four different, but related patents against CLS. The patents pertain to “the management of risk relating to specified, yet unknown, future events.” More specifically, the patents focused on using a reputable third party to oversee and facilitate financial transactions through a computerized platform which absolves various financial settlement risks including only one party paying their financial obligation. Thus, the third party can ensure both parties oblige or neither party obliges. Alice asserts that their methodology is tied to a particular system, while CLS argues that such a methodology is an abstract idea not patentable under U.S. patent law.

Per 35 U.S.C. § 101, "whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title." It is important to note that this section only defines matter that is patent eligible, not necessarily patentable. Further while these qualifications are interpreted broadly, laws of nature, natural phenomena, and abstract ideas are explicitly disqualified from being patentable. Thus, it would seem the language of Section 101 is fairly clear, however, its application, especially with regard to computer implemented inventions, has been anything but.

A representative claim of the asserted methodology is as follows:

Claim 33. A method of exchanging obligations as between parties, each party holding a credit record and a debit record with an exchange institution, the credit records and debit records for exchange of predetermined obligations, the method comprising the steps of: (a) creating a shadow credit record and a shadow debit record for each stakeholder party to be held independently by a supervisory institution from the exchange institutions;

(b) obtaining from each exchange institution a start-of-day balance for each shadow credit record and shadow debit record;

(c) for every transaction resulting in an exchange obligation, the supervisory institution adjusting each respective party's shadow credit record or shadow debit record, allowing only these transactions that do not result in the value of the shadow debit record being less than the value of the shadow credit record at any time, each said adjustment taking place in chronological order; and

(d) at the end-of-day, the supervisory institution instructing ones of the exchange institutions to exchange credits or debits to the credit record and debit record of the respective parties in accordance with the adjustments of the said permitted transactions, the credits and debits being irrevocable, time invariant obligations placed on the exchange institutions.

The above claim merely recites a process which leads to the question whether that process is patentable or merely an abstract idea as CLS claims. The Federal Circuit, in part, agreed with CLS in that this broad, non-technical claim is nothing more than a “basic concept of protecting against risk” and the addition of a computer to provide generic functions does nothing to limit the claim and therefore does not satisfy Section 101 as patentable. Included in this assessment were also claims to a computer readable medium and data processing. The problem with this ruling from the Federal Circuit is that there was no majority opinion; however, 7 out of 10 Justices agreed the claims were invalid under Section 101. The Justices authored a number of concurring and dissenting opinions on why the claims were or were not valid. With no clear voice on such an important matter as patent eligibility, the Supreme Court rightfully granted certiorari and will hear the case in the coming months to hopefully further clarify the Federal Circuit’s position.

           

Further Reading:

http://www2.bloomberglaw.com/public/desktop/document/CLS_Bank_Intl_v_Alice_Corp_Pty_Ltd_717_F3d_1269_106_USPQ2d_1696_2/1

Lyle Denniston, Court to rule on patent rights, SCOTUSblog (Dec. 6, 2013, 12:35 PM), http://www.scotusblog.com/2013/12/court-to-rule-on-patent-rights/