Maryland Intellectual Property Law Blog : Maryland Intellectual Property Lawyer & Attorney : Brian Wm. Higgins : Serving Baltimore, Columbia, Frederick

     In its 2009 Policy Platform for Technology and Biotechnology published earlier this month, the Technology Council of Maryland (TCM) called for funding and targeted legislation for the state's technology and biotechnology industries, but also urged incentives, financing, tax credits and intellectual property legislation "that will spur the potential for making Maryland a leader in clean and green technology."  The TCM is Maryland's largest technology trade association (500+ members). 

     Does Maryland need incentives to encourage the development of clean and green technologies? If the number of clean energy patents issued to Marylanders is any indication, the answer is yes.  According to U.S. Patent Office data, there were only 11 patents issued in 2008 naming at least one Maryland resident as an inventor that disclosed "fuel cell" (down from 17 in 2007), 11 patents to Maryland inventors that disclosed "hybrid", "electric," and "vehicle" in 2008 (up from 7 in 2007), and only one patent to Maryland inventors that disclosed "wind power" in 2008 (half as many as the 2 patents issued in 2007). Although that snapshot view is far from a scientific and robust analysis, it seems that Maryland trails other states in clean technology innovation (Michigan, for example, received a total of 29 clean energy patents in the 3Q 2008 alone, and New York received 21 in 3Q 2008, according to data published by the Clean Energy Patent Growth Index).

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      Data available from Justia.com shows that the number of trademark lawsuits filed in the U.S. District Court for the District of Maryland (Greenbelt and Baltimore divisions combined) in 2008 (36; see table below comparing Districts) was slightly higher than the number initiated in 2007 (33). The number of parties named in those lawsuits was also higher year over year (about 160 parties in 2008 compared to about 100 parties in 2007).
 

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• American Mensa, Ltd. v. Inpharmatica, Ltd. et al., No. 07-3283 (D. Md filed Dec. 6, 2007); assigned to J. Quarles

     In American Mensa v. Inpharmatic, the U.S. District Court for the District of Maryland granted in part and denied in part Defendants' motion for summary judgment. In doing so, the court found in favor of Mensa on Defendants' motion for summary judgment of no trademark infringement or unfair competition because genuine issues of fact remained, but granted Defendants' motion for summary judgment of no trademark dilution because there was no evidence that Mensa's mark is famous.

     In June 2004, Inpharmatica applied for use of the ADMENSA mark for a variety of services. After the application was published for opposition, Mensa asked Inpharmatica to withdraw its application because the mark would damage Mensa; Inpharmatica refused. On November 22, 2006, Mensa filed an opposition to Inpharmatica’s application with the PTO’s Trademark Trial and Appeal Board. During discovery in the PTO proceeding, Mensa learned that Inpharmatica had begun using the ADMENSA mark in the U.S. On December 6, 2007, Mensa filed the present suit seeking an injunction and damages. On August 25, 2008, the Defendants moved for summary judgment on Mensa’s claims.

Trademark infringement and unfair competition

     Section 32(1) of the Lanham Act prohibits the use in commerce of a "reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale. . .or advertising of any goods or services . . . [that] is likely to cause confusion, or . . . mistake." § 1114(1).

     To prove trademark infringement or unfair competition, Mensa must show that (1) it owns a valid trademark; (2) the Defendants use a colorable imitation of the mark in commerce without Mensa’s consent; and (3) such use is likely to cause confusion. As to the issue of confusion, the court examined how the parties use their marks to determine the likelihood of confusion.

     Whether a mark is likely to cause confusion depends on several factors: (1) the strength or distinctiveness of the plaintiff’s mark; (2) the similarity of the marks; (3) the similarity of the goods or services the marks represent; (4) the similarity of the facilities the parties use in their business; (5) the similarity of the parties’ advertising; (6) the defendant’s intent; and (7) actual confusion. Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 259-60 (4th Cir. 2007).

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     The table below shows how Maryland ranked among other U.S. District Courts in terms of the number of lawsuits that were filed raising patent issues in 2008 (source Justia.com). Table values are based on the number of complaints filed in 2008.  As shown, 31 patent lawsuits were initiated in the U.S. District Court for the District of Maryland (Greenbelt and Baltimore divisions combined) in 2008, which is nearly a 30% increase over the number of patent lawsuits initiated in Maryland in 2007. In terms of the number of parties involved in those lawsuits, there were more parties named in patent lawsuits in 2007 compared to 2008, due to one patent infringement lawsuit initiated in 2007 that involved over a hundred defendants. 
 

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     Ever wonder what the "LR" or "L&R" code means in the electronic file history of a pending patent application?  It refers to the Patent Office's Licensing and Review function, which is an early screening function applicable to all provisional applications filed under 35 U.S.C. 111(b), nonprovisional applications filed under 35 U.S.C. 111(a), and international applications filed under the Patent Cooperation Treaty (PCT).  During L&R screening, applications are reviewed for the purposes of issuance of a foreign filing license and to identify subject matter that, if disclosed, might impact national security. If warranted, applications may be referred to an appropriate governmental agency for consideration of restrictions on disclosure of the subject matter, which may ultimately lead to a Secrecy Order being issued (see MPEP). 

     The number of Secrecy Orders issued in FY '08 are shown (parenthetical values reflect change relative to FY '07 data) (source: FAS):

• Total Secrecy Orders in Effect FY08: 5,023 (-21)
• New Secrecy Orders Imposed: 68 (-60)  
  • ARMY: 8 (-14)
  • NAVY: 8 (-20)
  • AF: 20 (-25)
  • NSA: 20 (-1)
• Secrecy Orders Rescinded: 47 (-21)
• "John Doe" Secrecy Orders: 22 (-31)

     As was noted previously on this website, patent secrecy activity is relevant to Maryland because the counties surrounding Washington, D.C., are home to many government agencies and government contractors that may be involved in patent activity possibly triggering secrecy review. According to Patent Office statistics, many of the agencies/contractors in this area are high on the list of the number of patents issued each year to Maryland organizations, including Johns Hopkins University, which operates the Applied Physics Laboratory (Howard County), a major government defense contractor; the Navy, which operates the Naval Research Lab (Prince George's County); the Army, which operates the Army Research Lab and biodefense research agencies in Frederick, MD; Northrop Grumman (Anne Arundel County); the National Security Agency (NSA) (Anne Arundel County); and a few of the over 300 biotechnology companies in Maryland (mostly located in Montgomery County).

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     U.S. Patent & Trademark Office (PTO) records show that for 2008, the PTO granted 1,942 patents naming at least one Maryland resident as an inventor or joint inventor (based on residence addresses supplied by patent applicants to the PTO). That is a 1% decline in the number of patents issued to Maryland inventors for the same period in 2007 (1,963), and an 8% decline over 2006 numbers (2,116).

     The number of published patent applications naming at least one Maryland inventor in 2008 was up compared to last year. According to the PTO, 3,187 patent applications naming at least one Maryland inventor were published during 2008, which is a 7% increase in the number of patent applications published in 2007 (2,992 patent applications), and a 3% increase over 2006 numbers (3,082).

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• Nacre AS v. Silynx Communications, Inc., matter, No. 07-cv-02676, filed Oct. 2, 2007; assigned to J. Williams

For those of you following the Nacre AS v. Silynx Communications, Inc., matter (and many of you are, based on traffic on this website), the parties jointly filed a stipulated schedule with the court, which was granted by U.S. District Court for the District of Maryland Judge Williams in September 2008.  According to the schedule, the parties are exchanging claim construction briefs in January and February 2009, and trial is expected in August 2009. 

The patents at issue, as indicated in the complaint, are U.S. Patent No. 7,039,195 (“Ear Terminal”) and U.S. Patent No. 6,567,524 (“Noise Protection Verification Device”).

Both parties engage in the development and manufacturing of noise protection/cancelling communications headsets used by military forces (and others). 

Please search "quietpro" on this website for more information about the lawsuit.

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     U.S. Patent & Trademark Office (PTO) records show that in 2008, the PTO received 68 trademark applications from Maryland resident or entities (based on a search of "owner address" records using Trademark Electronic Search System, TESS, database). That number is a 20% decline in the number of applications received in 2007 (85), and a 22% decline over 2006 numbers (87).

     The number of registrations to Maryland individuals or entities in 2008 was also down compared to last year. According to the PTO, 53 registrations were effective in 2008 (as of December 31, 2008), which is a 36% decline in the number of registrations in 2007 (83 registrations), but is one more than the number of registrations in 2006 (52).

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