1. October 2013
Prosecution Group Luncheon
October 17, 2013

2. Trademark Office Announcements
• Online ID Manual enhanced – more examples,
more quick tips and guidance
• RFC for draft guidelines on examination of
gTLDs (10/23/13)
• RFC for potential change in policy for postregistration amendments of goods/services
based on changes in technology (e.g. audio
tapes to music recordings, printed magazines
to online publications, installed software to
software as a service) (12/1/13)

3. “Super” Trademarks – aren’t
• App for SUPERJAWS for machine and hand
tools, including “jaws” for precision clamping
and “metal vice jaws” – rejected as descriptive
• There is no per se rule for how USPTO should treat word
“super” when used in composite mark,
– if “super” is combined with word that names goods or
services, or principal component, grade or size thereof,
mark will be considered merely descriptive,
– if “super” is joined with suggestive term, combination
remains suggestive of products and services;
• consumers would readily understand that “Superjaws” mark
describes superior vice system for grasping and holding
workpieces.
•
In re Positec Grp. Ltd., 108 USPQ2d 1161 (TTAB 2013)

4. Don’t Disparage Yourself
• Band applied to register THE SLANTS
• USPTO denied as disparaging to persons of
Asian descent.
• EA relied on dictionary definitions, online articles,
and applicant's own webpage and Wikipedia.
– The band tried to “own the stereotype”
– even if applicant is willing to take on the disparaging term as a
band name, that does not mean that all members of the
referenced group share his view
• In re Simon Shiao Tam, Serial No. 85472044 (September 26, 2013)
[precedential].

5. Did You Hehr That Mahk?
• JIN-JA for herbal tea – rejected as merely descriptive
• Applicant contended that JIN-JA is an arbitrary term with
no recognized meaning in English, and that U.S.
consumers would not recognize or pronounce Jin-Ja as
"ginger."
• EA - the mark is the phonetic equivalent of "ginger,"
particularly as pronounced by persons with non-rhotic
accents (i.e., a Boston accent)
• SPLIT Decision – majority found insufficient evidence,
dissent suggested Examiners supply more evidence when
arguing based on regional accents
• In re Canada Enterprises LLC, Serial No. 85026331
(September 27, 2013) [not precedential].

6. ACHOUFFE? Gesundheit
• ACHOUFFE refused for beer geographically descriptive
• Achouffe is the name of a small village in the municipality
of Houffalize, located in the Wallonia region of Belgium
• EA ‘s evidence insufficient to show that Achouffe is
generally known to beer drinkers. Achouffe is "very much
an obscure location and would be relatively unknown to
the relevant American consumer."
• In re Brasserie D’Achouffe, Société Anonyme, Serial No.
79107741 (September 26, 2013) [not precedential].

7. Patent Application Initiatives Website at USPTO

8. After Final Pilot Program 2.0.
• The original pilot program has been relaunched.
• To be eligible for consideration under AFCP 2.0, you
must:
 file a response under 37 CFR §1.116, which includes a request
for consideration under the pilot (Form PTO/SB/434) and
 amend at least one independent claim that does not broaden
the scope of the independent claim in any aspect
 be willing to interview

9. Pre and Post AIA - Design Patent Priority
• Review
– No provisional application priority
– May be a continuing application of a utility, U.S.
or PCT
– A design application must be filed within six
months of the foreign application to be entitled to
foreign priority
 35 USC §§119(a)-(d), 172
– No design application priority for PCT
applications

10. Pre and Post AIA - Design Patent Priority
App filed in foreign
country
≤6 months
Pre-AIA
Yes, foreign priority
Post AIA
Yes, foreign priority
35 USC §§119(a)-(d), 172
App filed in US with
priority claim

11. Pre and Post AIA - Design Patent Priority
App filed in foreign
country
App filed in US with
priority claim
>6 months
Pre-AIA
No foreign priority
Post AIA
No foreign priority
BUT…Is the foreign application prior art?

12. Pre and Post AIA - Design Patent Prior Art
App filed in
foreign country
Foreign App granted
and published
Same inventor files
in US
<12 months
Pre-AIA
Inventor’s own publication is not prior art.
Post AIA
Inventor’s own publication is prior art, but exception 102(b)(1)(A)
applies
A disclosure made 1 year or less before the effective filing date of a
claimed invention shall not be prior art to the claimed invention under
subsection (a)(1) if—
(A) the disclosure was made by the inventor or joint inventor or by another
who obtained the subject matter disclosed directly or indirectly from the
inventor or a joint inventor;

13. Hamilton Beach v. Sunbeam Products (CAFC)

14. Timeline
Feb 8, 2005
Hamilton Beach
Purchase Order

15. Timeline
Feb 25, 2005
Supplier confirms
receipt
Feb 8, 2005
Hamilton Beach
Purchase Order

16. Timeline
Feb 25, 2005
Sunbeam introduces
Cook & Carry®
designing around
application with clips
on lid.
Supplier confirms
receipt
Feb 8, 2005
March 2006
June 2010
Hamilton Beach
Purchase Order
Hamilton Beach files
Patent application –
discloses clips on
cooker
Hamilton Beach files
Patent application –
claims clips on lid.

17. Purchase order
February 8, 2005: Hamilton Beach issues
purchase order to foreign supplier for
manufacture of Stay or Go® slow cooker.
February 25, 2005: Supplier confirms receipt of
purchase order via email and notes it will
begin production of the slow cookers after
receiving Hamilton Beach’s “release.”
March 2006: First patent application.

18. Hamilton Beach v. Sunbeam Products
35 U.S.C. § 102(b) Pre-AIA:
A person shall be entitled to a patent unless —
(b) the invention was patented or described in a
printed publication in this or a foreign country
or in public use or on sale in this country,
more than one year prior to the date of the
application for patent in the United States, . . .

19. On-Sale Bar
Two conditions must be satisfied before the
critical date:
1. The claimed invention must be the subject of
a commercial offer for sale; and
2. The invention must be ready for patenting.
Question of law based on underlying factual
findings.
Pfaff v. Wells Elecs., Inc., 525 U.S. 55 (1998)

20. “. . .on sale in this country. . .”
A commercial offer for sale made by a foreign entity
that is directed to a United States customer at its
place of business in the United States may serve as
an invalidating activity.
A commercial offer for sale under 102(b) is “one which
the other party could make into a binding contract by
simple acceptance.
In re Caveny, 761, F.2d 671 (Fed. Cir. 1985)
Grp. One Ltd. V. Hallmark Cards, Inc., 254 F.3d 1041 (Fed. Cir. 2012)

21. Ready for patenting
An invention is ready for patenting if the claimed
invention is:
1. Reduced to practice; or
2. Depicted in drawings or other descriptions “that
were sufficiently specific to enable a person skilled
in the art to practice the invention.
This does not require a detailed “element-by-element
analysis on the prototypes and products samples
on which it was working prior to the critical date.”
Pfaff

22. Purchase order
February 8, 2005: Hamilton Beach issues
purchase order to foreign supplier for
manufacture of Stay or Go® slow cooker.
February 25, 2005: Supplier confirms receipt of
purchase order via email and notes it will
begin production of the slow cookers after
receiving Hamilton Beach’s “release.”

23. Purchase order
February 8, 2005: Hamilton Beach issues
purchase order to foreign supplier for
manufacture of Stay or Go® slow cooker.
Offer to buy
February 25, 2005: Supplier confirms receipt of
purchase order via email and notes it will
begin production of the slow cookers after
receiving Hamilton Beach’s “release.”
Offer to sell – it is at this point that the
commercial offer for sale was made.
Hamilton Beach could make into a binding
contract by simple acceptance.

24. Holding
Hamilton Beach’s asserted claims are invalid
under the on-sale bar of § 102(b).

25. Fair Use of References at the USPTO
• Magistrate judge in Minnesota finds that the
copying and use of copyrighted reference at
the USPTO is fair use.
• “[T]his Court concludes that [defendant] Is
entitled to the fair use defense as a matter of
law and recommends that the District Court
grant [defendant]’s motion for summary
judgment”
JEFFREY J. KEYES, United States Magistrate Judge in American Institute of Physics,
John Wiley & Sons, Inc., and Wiley Periodicals, Inc., v. Schwegman Lundberg &
Woessner, P.A., and John Doe Nos. 1-10

26. • Questions?

27. Pre and Post AIA - Design Patent Prior Art
App filed in
foreign country
3rd Party files Same inventor files
Foreign App granted or publishes in US
and published
<12 months
Pre-AIA
3rd party’s publication is 102(e) if filed in or designated the U.S.
and published in English; or 102(a) prior art
- If prior invention date, can overcome with declaration
Post AIA
3rd party’s publication is prior art, but exceptions 102(b)(1)(B) or
102(b)(2)(B) apply
the subject matter disclosed had, before such subject matter was
effectively filed under subsection (a)(2), been publicly disclosed by the
inventor or a joint inventor or another who obtained the subject matter
disclosed directly or indirectly from the inventor or a joint inventor;

28. Pre and Post AIA - Design Patent Prior Art
App filed in
foreign country
3rd Party files Same inventor files
Foreign App granted or publishes in US
and published
<12 months
Pre-AIA
-same as before
-may be able to overcome with declaration
Post AIA
3rd party’s publication is prior art; no exceptions apply with just
these facts

29. Pre and Post AIA - Design Patent Prior Art
App filed in
foreign country
Foreign App granted
and published
Same inventor files
in US
>12 months
Pre-AIA
Publication is prior art. 102(d) maybe even 102(b)
Post AIA
Publication is prior art under 102(a)(1), exception may apply
(a) Novelty; Prior Art.—A person shall be entitled to a patent unless—
(1) the claimed invention was patented, described in a printed publication,
or in public use, on sale, or otherwise available to the public before the
effective filing date of the claimed invention;