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

H.R. 243 ("Patent Lawsuit Reform Act of 2011")

          Representative Robert Latta (R-OH) (right) introduced the Patent Lawsuit Reform Act of 2011 in the House of Representatives on January 7, 2011.  The bill was referred to the House Judiciary Committee, Subcommittee on Intellectual Property, Competition and the Internet, on February 7, 2011.

          Latta's measure is apparently aimed at curtailing the increase in the number of "false marking" lawsuits, which saw a sharp uptick in 2010.  False marking is governed by 35 U.S.C. 292, which states that "Whoever marks upon, or affixes to, or uses in advertising in connection with any unpatented article the word "patent" or any word or number importing the same is patented, for the purpose of deceiving the public; or Whoever marks upon, or affixes to, or uses in advertising in connection with any article the words "patent applied for," "patent pending," or any word importing that an application for patent has been made, when no application for patent has been made, or if made, is not pending, for the purpose of deceiving the public - Shall be fined not more than $500 for every such offense."

          Latta's bill would make the $500 fine apply to all of a defendant's falsely marked articles, rather than each article as a separate offense.  His bill would change the language of 292 to state "(b) A person who has suffered a competitive injury as a result of a violation of this section [35 USC 292] may bring a civil action in the appropriate district court of the United States against the person violating this section for recovery of not more than $500 in damages to compensate for the injury."

S.139 ("Equal Access to Tax Planning Act")

     Senator Max Baucus (D-MT) (right) introduced S.139, the Equal Access to Tax Planning Act of 2011, on January 25, 2011.  The bill was referred to the Senate Judiciary Committee the same day.  The text of the bill is apparently directed at preventing the patenting of any methods for reducing, avoiding, or deferring tax liabilities:  

"In General- For purposes of evaluating an invention under section 102 or 103 of title 35, United States Code, any strategy for reducing, avoiding, or deferring tax liability, whether known or unknown at the time of the invention or application for patent, shall be deemed insufficient to differentiate a claimed invention from the prior art."

UPDATE: S.23 ("Patent Reform Act of 2011")

          The Senate's version of Patent Reform, S.23, was reported out of the Judiciary Committee with a few amendments, on February 3, 2011, and placed on the full Senate Legislative Calendar the same day. The date the bill will be debated by the entire Senate has apparently not been determined.

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          On a Chamber of Commerce road sign along a busy Baltimore corridor, someone has appended the word “Hon” to the end of “Welcome to Baltimore.” Ask most people who have lived there for a period of time and they’ll says that Hon (pronounced “hun”) is part of the charm of Charm City, as much as blue crabs and Orioles baseball. But Hon is now also at the center of a growing intellectual property controversy.

          Around Baltimore, Hon is generally used in place of “sir” or “ma’am” or when one doesn’t know another’s given name, though it can also be used as a short version of “honey” and in other contexts. The term might be part of a greeting: “How are you, hon?”  Or used politely at a diner: “Would you please hand me that salt, hon?” It is often associated with blue-haired, hard working-class women from an earlier generation with sixties-era glasses and big hair, a character right out of John Water’s Hairspray. Hon is as entrenched in the region’s vernacular as “y’all” is to those in the south, “bra” is to locals in Hawaii, and “fogetaboutit” is to New Yorkers. Hon is so closely tied to Baltimore’s roots that its use immediately informs the recipient of the speaker’s geographical residence.

          It should come as no surprise, then, even to Baltimoreans, that the term Hon would be used by local businesses to sell their goods and services. What better way to connect with local customers? Denise Whiting, the owner of Café Hon and the founder of the annual Honfest, would certainly agree. Her Café Hon restaurant has been operating in Hampden, a northwest Baltimore neighborhood, for more than a decade; she registered the business name as a U.S. trademark in 1992. Ms. Whiting’s business also owns separate HON trademarks related to restaurant services, for paper goods (bumper stickers, napkins, and the like), and in connection with retail gift shops. Her HONFEST trademark, first used in 1997, is associated with “conducting entertainment exhibitions in the nature of community cultural festivals.” 

          But no one, it seems, knew about her trademarks, at least not until recently when the Baltimore Sun and others reported that Whiting’s trademark lawyers had successfully enforced her trademarks against a local merchant at the BWI Airport, shutting down the merchant’s retail sales of Hon-related products. The lawyers also interceded when Baltimore City wanted to use Hon-related images as part of an advertising campaign. In December 2010, a small group of vocal protesters gathered in front of Café Hon to voice their opposition to the HON trademarks. More recently, Bruce Goldfarb, a Catonsville, Maryland, writer, publicly challenged the trademarks by selling “Hon” mugs on his “Welcome to Baltimore, Hon” website, openly inviting Whiting to sue him so he could challenge the legality of the trademarks in court. Goldfarb and other opponents want Hon back in the public domain. 

          But that may be impossible in the case of Whiting’s marks, which she claims are incontestable.  And it may take more than protests and unpredictable lawsuits to return HON to the public domain, because any decision by a court in Goldfarb’s favor would only directly affect Whiting’s marks, and may not bar the next person from trademarking Hon in connection with, say, the sale of bicycles or t-shirts on Ocean City’s boardwalk. Baltimoreans seeking a more permanent remedy should look West, to Montana.

          Residents of the Big Sky state had a similar problem in 2001. Back then, a Nevada company called Last Best Beef sought to register Montana’s state slogan: THE LAST BEST PLACE, in connection with the company’s sale of meat, beef, clothing, accessories, even travel-related information. The vitriolic public response caught the eye of then Senator Conrad Burns and later Senator Max Baucus, who has inserted language in various federal appropriations bills to prohibit the use of federal funds to “register, issue, transfer, or enforce any trademark of the phrase THE LAST BEST PLACE.” His 2006 measure was challenged by Last Best Beef in court, but the Fourth Circuit Court of Appeals in Richmond, Virginia, upheld Baucus’ spending ban in 2007. As Sen. Baucus said on his official website, “Trying to trademark ‘The Last Best Place’ is as ludicrous as someone trying to patent a Montana sunset. If I have to insert this [appropriation] provision for the next 20 years, I will because that is how important this saying is to our state.” According to Trademark Office records, Last Best Beef’s trademarks and trademark applications are indefinitely suspended as a result of the Baucus spending ban. 

          So Maryland’s contingent in Congress could for do for HON what Sen. Baucus has done for THE LAST BEST PLACE.  And they might very well succeed, though for such legislation to pass muster it may need to be limited to just preventing, prospectively, any new marks from using the term HON.  Even if legislation could be enacted that affects Whiting’s marks, would such a measure be fair?  After all, her trademark applications were laid open by the Trademark Office for public opposition many years ago and before the marks were officially registered, and no one then successfully blocked them. Time, it seems, has only made them stronger.  Will the marks survive today’s challenges?  As those in Baltimore might say, we’ll just have to wait and see, Hon.

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     Rockville, MD-based Yogiberry, Inc., filed an application for registration of the mark YOGIBERRY in the U.S. Trademark Office on March 11, 2008, which was approved for publication and subsequently published for opposition on September 2, 2008.  On November 21, 2008, Hanna-Barbera Productions, Inc., owner of several marks related to the Yogi Bear franchise of cartoons that first appeared on television in 1958, filed an opposition.  In its answer to the opposition, Yogiberry stated that its mark is related to retail frozen yogurt stores, and does not overlap with any goods and services associated with Hanna-Barbera's YOGI BEAR MARKS.  Yogiberry further stated that the parties' respective marks are not confusingly similar or likely to cause confusion amongst consumers or the trade.

     Yogiberry, Inc., is the owner of Registration No. 3498624 for the mark shown below, which was registered on September 9, 2008, based on an application filed February 4, 2008:

     In view of the above opposition, Yogiberry, Inc., and Pinkberry, Inc., filed in the U.S. District Court for the District of Maryland a stipulated motion to a stay their pending trademark litigation.  The parties' motion was granted.

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     In Grand Canyon West Ranch v. Hualapai Tribe, TTAB No. 91162008 (June 30, 2008), the Trademark Trial and Appeal Board found that an applicant, not registrant, committed fraud on the Trademark Office when it represented to the Office that it provided services in association with its mark GRAND CANYON WEST that, in fact, it did not offer. 

     Applicant Hualapai Tribe ("People of the Tall Pine"), whose tribal lands border the Colorado River and Grand Canyon in the western portion of the Canyon, filed an application for the mark GRAND CANYON WEST for a variety of services under Section 1(a), App. Ser. No. 76484111. The examiner prosecuting the application issued an office action requesting further clarification as to the services associated with the mark. The applicant responded in kind, stating that it provided, among other services, horseback rides, bicycle tours, and tractor-based tram rides. During the publication phase, the mark was opposed by Grand Canyon West Ranch, which argued that the mark was merely descriptive, and that the applicant had committed fraud on the PTO by including services in the application that they were not, in fact, offering under the mark.

     The Board found that the mark was not merely descriptive. However, it agreed with Ranch's fraud argument. Specifically, the Board found that there was no evidence that applicant provided horseback rides, bicycle tours, or tractor-based tram rides, as identified in the application. The applicant argued that the error was inadvertent, that it was due to innocent and reasonable reliance on the examiner's instructions to applicant suggesting appropriate services. The Board said that it could not excuse the error. The applicant, it wrote, had an affirmative duty to correct the identification set forth in the examiner's amendment if it contained errors. 

      Acknowledgment: information for this post provided by Alain Lapter, Esq.

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• Nacre AS v. Silynx Communications, Inc., No. 07-cv-02676, filed Oct. 2, 2007.

     Update:  Rockville, MD-based Silynx Communications and Norway's Nacre AS have been facing off on all fronts in their battle to gain control of the U.S. military tactical hearing protection and communications headset market, including the intellectual property front. In September 2007, Nacre, which owns the QUIETPRO trademark, filed a trademark opposition proceeding against Silynx's QUIETOPS mark before the U.S. Trademark Trial and Appeal Board. That proceeding was stayed when, in October 2007, Nacre filed a trademark and patent infringement lawsuit against Silynx in the U.S. District Court for the District of Maryland, which is pending (additional counsel for Nacre just recently motioned for pro hac admission to the Maryland court). In January 2008, Silynx lost its protest of an award from the Dept. of the Navy to Nacre to acquire a quantity of combat radio headsets from the company.

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No sooner had I posted on this blog that the Senate had not voted a patent reform bill out of the Senate Judiciary Committee, the Committee, like the House Judiciary Committee a few days earlier, produced its own version of patent reform legislation for the full Senate to consider.  Based on a statement by Sen. Patrick Leahy, the Senate bill would:

• Reduce the incentives for patent litigation by making it harder for patent owners to show that another company has willfully infringed its patents (and consequently making it harder to receive an award of treble damages and possibly attorney’s fees);
  
  
• Establish regulatory procedures for re-evaluating patents after they are granted;
  
  
• Include limitations on the availability of jurisdictions where patent holders can file lawsuits by requiring suits to be filed where the plaintiffs or defendants are located, where the alleged infringement took place, or where the parties were incorporated or formed (this limitation could affect the number of filings in popular forums like the plaintiff-friendly Eastern District of Texas, which in 2006 surpassed the Central District of California as the hot-bed of patent litigation in the U.S., according to statistics provided by The Patent Troll Tracker).

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