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

• Man & Machine, Inc. v. Apple, Inc., No. 8:2008cv02453 (D. Md filed Sep. 18, 2008); assigned to J. Williams

     Man & Machine, Inc. (M&M), a Maryland company based in Landover, MD, owns the federally registered MIGHTY MOUSE trademark, which, according to Trademark Office records, was first used in commerce in 2004 (in connection with M&M's medical and industrial and hygienic waterproof computer mice products).

     In its Complaint, M&M contends that Apple's Mighty Mouse product infringes M&M's trademark, that Apple purchased the keyword "Mighty Mouse" from various Internet search engines to drive search engine traffice to Apple's website, and that Apple received an invalid license from CBS Operations for use of CBS's MIGHTY MOUSE trademark, which is allegedly the subject of a pending trademark application for computer mice, and is also the subject of a trademark opposition (CBS Corporation allegedly owns the mark MIGHTY MOUSE for use in connection with toys and children's apparel).

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     Not too long ago, I noticed that Google® Patents was including an "RSS" feed link on some of its hit lists. I started using this feature to track what others are saying in new patent applications about specific pharmaceutical drugs, medical diseases, or a specific patent number (a client's patent, for instance). Here's how it works. 

     If I'm interested in tracking, say, a specific kind of cancer, I can search Google® Patents using that search term. At the bottom of the results page is a link that looks like the following:

"Stay up to date on these results using the patents RSS feed on cancer"

     I then cut and past the link into my RSS feed reader software. Whenever Google® Patents adds a new patent application that contains the search term ("cancer," in this example), my feed reader will grab the text of the application (or a portion thereof) and display it in my reader along with a link to the actual patent application on Google® Patents. 

     This saves me the time of having to manually enter the search every few days or whenever I need to know what others are discussing in patent applications about my topic of interest. This is especially useful when I want to track what others are saying about a client's patent portfolio, or a specific generic drug formulation that I might be researching, or whatever.

     You can do the same thing in Google® Web, if you want to broaden the scope of your search to include the entire Internet.

     "RSS" (stands for "Really Simple Syndication"). Click here for a summary of how RSS works (Wikipedia discussion).

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     The first nine months of 2007 saw an increase in the number of federal trademarks registered to Maryland entities and/or individuals, compared to the same period in 2006. U.S. Patent & Trademark Office (PTO) searchable records show that for the period January through September 2007, the PTO registered 45 federal trademarks to Marylanders (based on a search of "owner address" records using TESS). The PTO registered 35 federal trademarks to Marylanders for the same period in 2006 (a 29% difference). 


     

      In terms of filed applications, the PTO received 71 applications for trademarks from Maryland entities and individuals for the first nine months of 2007, compared to 65 applications received during the same period in 2006 (a 9% increase).

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Summary: The House version of the Patent Reform Act of 2007 would bar submission of search reports prepared by non-U.S. citizens.

     H.R.1908, the Patent Reform Act of 2007, was introduced in the House of Representatives on April 18, 2007. As proposed, the Bill did not include Section 12, entitled "Additional Information," which made its way into the legislation when the House debated, and eventually passed, H.R.1908 on September 7, 2007. The table below, left column (after the jump), shows the original language of the provision, which would add a new Sec. 123 to Title 35 U.S.C. and grant the PTO authority to require prior art search reports. House Report 110-314 describes the measure as follows:

"The USPTO has discussed the need for some sort of examination support document [ESD] or applicant quality submission to improve the examination process. It may include a thorough search of the art in the field of the invention and in related fields in which one skilled in the art pertaining to the invention would expect to find information applicable to the invention. It is also expected that the information discovered by the search that is material to the patentability of the claimed invention be disclosed to the USPTO along with an analysis of how the information relates to the claimed invention and how the claimed invention is distinguished over the prior art information."

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     Yesterday, Part 1 of this post identified issues of potential concern regarding the impacts of the new U.S. Patent & Trademark Office (PTO) rules on the number of continuation, continuation-in-part (CIP), and Request for Continued Examination (RCE) applications being prosecuted at the PTO for an invention. Below are some suggestions for dealing with the rule's limitations on the number of claims permitted in those patent applications, as suggested by Peter Weissman, a Partner at Blank Rome LLP.  In particular, patent applicants and their representatives should:

• Carefully consider all claims in an application to ensure they add benefit to the application;
  
  
• Review pending unexamined applications that exceed the 5/25 number of claims limitation in preparation to limit the number of claims or conduct a search prior to receiving a notification from the PTO; 
  
  
• Be mindful of disclosed but unclaimed embodiments in the specification;
  
  
• Consider conducting a search prior to filing an application, because a search could be used for the combined purpose of accelerating examination in one application and requesting additional claims beyond the allotted 5/25 limit in another application. But remember that these procedures could have a substantial negative impact on the scope of claims.

Comments:

• Click here for part 1 of this post
  
  
• Final Rule:  "Changes To Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications" 72 FR 46716 (Aug. 21, 2007)
  
  
• Thanks to Peter Weissman for granting permission to use his article"Patent Prosecution Considerations under the New U.S. Patent & Trademark Office Rules," which may be found here

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     The first seven months of 2007 saw an increase in the number of federal trademarks registered to Maryland entities and/or individuals, compared to the same period in 2006. U.S. Patent & Trademark Office (PTO) searchable records show that for the period January through July 2007, the PTO registered 27 trademarks to Marylanders (based on a search of "owner address" records using TESS). The PTO registered 24 marks to Marylanders for the same period in 2006. 

     In terms of filed applications, the PTO received 65 applications for trademarks from Maryland entities and individuals for the first seven months of 2007, compared to 35 applications received during the same period in 2006. 

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          The practice by which companies buy keywords from search engines to rank their web sites high when those keywords are used in searches is common.  However, the law is unsettled as to whether that practice constitutes trademark infringement when the purchased keywords are someone else's registered mark.  In some jurisdictions, including Maryland's federal District Court, this may be an issue of first impression. [1]  Maryland's court, however, may have the chance to address the issue if the case Young Again Products, Inc. v. Vitamins Home [2] is adjudicated.  The case involves Vitamins Home's alleged "engage[ment] in the unauthorized use of the Young Again™ Mark by utilizing the Mark in pay-for-placement and pay-for-rank search engine advertising to direct Internet customers to its on-line nutritional supplement store."

           A sampling of other jurisdiction's decisions may reveal how Maryland's federal District Court may decide the issue today [3]:  Government Employees Insur. Co. (GEICO)  v. Google, Inc., 330 F.Supp.2d 700 (E.D. Va. 2004) (finding Google's AdWords program a "use in commerce" under the Lanham Act);  GEICO  v. Google, Inc., 414 F.3d 400 (2d Cir. 2005) (finding that a paid-for advertisement that itself did not mention a mark used as the keyword search term either in the title or the text of the advertisement was not likely to cause confusion); 800-JR Cigar, Inc. v. GoTo.com, Inc. 437 F.Supp.2d 273 (D.N.J. 2006) (finding GoTo's conduct was a "use in commerce," but the issue of likelihood of confusion was not suitable for summary judgment because of disputed facts); Rescuecom Corp. v. Google, Inc. 456 F.Supp.2d 393 (N.D.N.Y. 2006) (granting motion to dismiss on the basis that Google's sale of other's trademarks as keywords was not a "use in commerce," and concluding that there must be an allegation of trademark use in the first instance to sustain a cause of action for trademark infringement); J.G. Wentworth SSC Ltd. v. Settlement Funding LLC, 2007 U.S. Dist. LEXIS 288 (E.D. Pa. 2007) (rejecting infringement contentions based on theory of "initial interest confusion").  This is only a partial listing of cases.

Comments and references:

• [1]  Brief Lexis search 
  
  
• [2]  Young Again Products, Inc. v. Vitamins Home, No. 07 Civ. 2073 (D. Md. filed Aug. 3, 2007)
  
  
• [3]  See Allison McDade, Use of Competitors' Trademarks as Keywords: Corporate Considerations, 2007 ABA IP Law Conference (2007) for a recent comprehensive analysis of the pay-for-click issue and case law cites.
  
  
• Thanks to attorney David Weslow at Sutherland Asbill & Brennan for providing information for this blog post

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