The hidden complexity of trademarks

Registered Trademark
Registered Trademark

Trademarks help protect providers of products and services from unfair competition. An example of unfair competition is when company “A” sells a product or service, and business competitor “B” sells a competing product or service in such a manner as to confuse company “A” customers into accidentally buying from company “B”.

Three general principles of trademark law can be summed up as “don’t try to trademark the normal names of a product or service”, “a trademark only has meaning in the context of a particular class of product or service”, and “use it or lose it”.

Trademarks that too closely resemble the normal name of a product or service will be rejected as being “generic“. By contrast, a trademark that is “fanciful”, — that has no obvious correlation to a product or service, will often be accepted. Trademarks falling in between these two extremes, which may be “descriptive” of the underlying product or service, often will be put on probation in a “secondary trademark register” for 5 years. After 5 years of use in trade, absent objection by outsiders, the descriptive name can then be granted full trademark status on the “primary trademark register“.

Note that the word “Trademark” has the word “trade”. This begs the question, trade in what? Under both US and international trademark law, products and services are shoehorned into a limited number of different trademark classes. Although recycling the same names within a class is generally not tolerated, the same names can often be reused for alternate products or services between classes, so long as there is not confusion. The USPTO generally examines trademarks on a per class basis.

Trademarks are granted on a “use it or lose it” basis. Although it is possible to reserve trademarks (at least fanciful trademarks) for up to a few years on an “intent to use” basis, ultimately to get the trademark, you need to provide proof that the mark is actually being used in commerce by submitting a “specimen”. This is often a photograph of sales receipts, website purchase pages, and the like, showing that the trademark name is actually being used in real trade.

There are many other complexities of trademark law as well. Searches can be tricky, because the underlying legal standard for trademark infringement is “possibility of confusion”, and not “the same spelling“. Unregistered common law trademarks are another potential problem. Thus merely avoiding other trademarks with identical spelling is often not enough. Alternative spellings, word prefixes, word suffixes, and other name variations can often cause problems if potential customers might be confused.

Federal Circuit rules against PTAB “Chewbacca defenses”

European patent oppositions: litigation by unfair surprise?
Chewbacca defense?

Litigation by unfair surprise is out, at least for US patent PTAB cases — for European patent oppositions, not so much. 

One thing that I will never forget about my experience with European patent oppositions is that to American eyes, the European process appears to be rather “due process of law” impaired.

Europe has a system by which issued patents can be challenged. This system is called a patent opposition. In the US, the counterpart to this is the Patent Trial and Appeal Board (PTAB), which can conduct Inter Partes Review (IPR) hearings.

The two systems have various differences. For example, although in theory, issues should be argued in advance by written briefs, the European opposition process also allows parties to introduce new issues during the last-minute oral arguments.

This allows for litigation by “unfair surprise”, rather than by reasoned arguments.  In this sort of setting, I have seen that illogical but last-minute “Chewbacca defenses” can work quite well.  The clock is ticking, proceedings are going to finish in an hour, and suddenly you have to discuss entirely new and logically irrelevant issues. It is as if you suddenly have to shift gears and focus on if the Star Wars character Chewbacca lives on the planet Endor or not.

In this regard, it is refreshing to see that the Federal Circuit in Dell Inc., v. Acceleron, LLC (March 15, 2016) has confirmed that this sort of litigation by unfair surprise is unacceptable for US PTAB patent reviews. Due process wins!  That is, arguments made during oral argument must be restricted to only those arguments previously discussed in writing beforehand.  Thank you, Federal Circuit.

Part of why the European patent opposition process permits unfair surprise may be due to the difference between European civil law practice, and American (and UK) common law practice. The European civil law system, which generally does not use juries, assumes that the judges are all-wise, and therefore need little protection against bad input (irrelevant or improper evidence).  By contrast, the common law system, which is jury oriented, has greater protections (rules of evidence) against bad input.

Since all judges are human, a key difference between the two systems is that, at least for patent opposition matters, the European system is running with fewer quality control measures.

I prefer the American system, thanks. In any event, the take-home lesson is that for international patents, sometimes there can be unexpected differences between countries.