JurisNotes.com, Inc.
Intellectual Property Admin Notes 12/05/2022
TTAB     ICANN    
PTAB    CORB


Headlines

Trademark Trial & Appeal Board Decisions:
TTAB - Term identified prominent part of varietal name.
TTAB - Marks were too dissimilar for confusion to arise.
Domain Name Disputes:

WIPO - Party failed to establish bad faith registration.
Patent Trial & Appeal Board Decisions:

PTAB - Limitation was not disclosed by prior art.
PTAB - Relationship between terms was not explained.
Copyright Office Review Board Decisions:

CORB - Combination showed only de minimis creativity.  Top


TTAB Decisions

TTAB - Term identified prominent part of varietal name.
In re International Fruit Genetics, LLC (citable 11/22/22)  Full Summary Decision
International applied to register the mark "IFG" for fresh fruits and vegetables, live plants, and related goods. The examining attorney refused registration on the ground that the proposed mark identified the prominent portion of a varietal name for the identified goods. The Board affirmed the refusal to register. The evidence showed that the proposed mark was the prominent portion of numerous varietal denominations for the identified goods. The prominent portion of a varietal name could not be registered as a trademark. Here, the initial letter designation "IFG" would make more of an impression with breeders and other consumers of the identified goods, while the subsequent numerical designations were more akin to various changing "model numbers." International risked the integrity of its "IFG" mark by using that designation to name new varietals.

TTAB - Marks were too dissimilar for confusion to arise.
Therabody v. Shanghai Three Gun (not citable 11/17/22)  Full Summary Decision
Therabody opposed STG's application to register the mark "Threegun" for electric blankets for medical use, masks for use by medical personnel, a massage apparatus, and other goods based on a likelihood of confusion with its registered "Theragun" marks used for a massage apparatus and other goods and services. The Board dismissed the opposition.
The third-party registration and use evidence confirmed the highly suggestive meaning of "gun" in the massage apparatus industry. The record also showed that the "Thera" portion of the cited mark could be perceived by consumers as a shortened form of the word "therapy." Because Therabody succeeded in showing that its mark had garnered some renown, its mark was entitled to a slightly broader scope of protection. Despite this, the parties' marks differed in sight, sound, meaning, and overall commercial impression.  Top

Domain Name Disputes

WIPO - Party failed to establish bad faith registration.
CitiusTech Healthcare v. Moussa (11/22/22)  Full Summary  Decision
CTH had not carried its burden of proving that Moussa registered the domain name "citustech.com" in bad faith. While CTH held rights in the "CitiusTech" mark, that term was different than the one used in the disputed domain name. Moreover, CTH held no registered trademark rights at the time Moussa registered the domain name. Further, the record did not establish that, as of 2013, CTH's mark was so well-known that someone in Moussa's position would likely have known of the mark. In addition, the record did not indicate the extent to which CTH's sales and operations prior to 2013 occurred in the United States, as opposed to India and the other countries where CTH operated. The panel also noted that Moussa's explanation of why he registered the domain name seemed plausible. Moussa's account of his behavior and motives appeared forthright.  Top

PTAB Decisions

PTAB - Limitation was not disclosed by prior art.
CoStar Realty Information v. Clantech (IPR 11/25/22)  Full Summary  Decision
CoStar petitioned for IPR of claims 1-28 of the '127 patent for obviousness, which the Board denied. CoStar had not established a reasonable likelihood of demonstrating that Collins disclosed the limitation in question. In particular, CoStar did not explain how one skilled in the art would have understood Collins to disclose a rendered document "displayed using the same exact font," as required by claim 1. Instead, Collins disclosed a rendered document "with virtually the exact same appearance." Similarly, Collins explained that its invention enabled virtually any document created with virtually any font to be "accurately reproduced" on another computer that did not contain the original font descriptions. CoStar did not explain how teaching the display of an accurate reproduction of the font disclosed the recited "displaying the exact same font."

PTAB - Relationship between terms was not explained.
In re Hung (not binding 11/25/22)  Full Summary  Decision
The examiner rejected various claims of the '703 application for anticipation and obviousness; the Board reversed. The examiner found that Plotnikov disclosed generating address offsets for each element of a multi-dimensional structure, with the structure having elements along each dimension. However, the examiner did not identify where Plotnikov disclosed "precomputing an address modifier for each dimension included in the multi-dimensional loop," as recited in the disputed limitation of claim 1. Nor did the examiner explain sufficiently the relationship between a "dimension," as recited in claim 1, and an "element," as disclosed in Plotnikov. In particular, the examiner did not explain where Plotnikov disclosed that any of the plurality of address offsets generated for elements of a particular dimension was an address modifier/offset for that dimension.  
Top

CORB Decisions

CORB - Combination showed only de minimis creativity.
In re Explora Science & Children's Museum (11/25/22)  Full Summary Decision
The Board affirmed the registration program's refusal to register a two-dimensional artwork claim. The work consisted of two outstretched white hands with the thumbs touching and the thumbs and index fingers of the two hands partially encompassing a yellow star. Both elements were depicted within an irregular green trapezoid. Both the individual elements of the work and the work as a whole failed to demonstrate sufficient creativity. The work was a combination of three elements: hands, a star, and a trapezoidal background. The star and trapezoid were common shapes and the simple, abstract depiction of hands represented a basic idea from nature. The combination of these elements demonstrated only de minimis creativity. Small stylistic changes in common shapes, such as the irregular angles in the work's trapezoidal background, could not sustain copyright registration.  Top


In re Int'l. Fruit Genetics, LLC (citable 11/22/22)  Decision Short Summary
International applied to register the mark "IFG" for fresh fruits and vegetables, live plants, and related goods. The examining attorney refused registration on the ground that the proposed mark identified the prominent portion of a varietal name for the goods. The Board affirmed the refusal to register.

"IFG" was an element in numerous varietal names designated in plant breeder's rights and plant patents for grapes, cherries, and other plants. The prominent portion of a varietal name could not be registered as a trademark. To permit allowance of the proposed mark would contravene the public policy of prohibiting any one breeder or supplier from retaining exclusivity in the name of a variety once the patent, PVP certificate, or breeder's right expired. Varietal names were properly treated as the legal equivalent of a generic designation. The designation "IFG" would make more of an impression with breeders and other consumers of the identified goods, while the subsequent numerical designations were more akin to various changing "model numbers." Further, International's prior registration could not overcome the varietal name refusal. The application for that prior registration was filed prior to International obtaining plant patent and PVP protection for any of the new varietals it developed. International, through its predecessor, selected varietal denominations comprised of "IFG" as the initial term when International later filed its applications for plant patent protection and PVP protection. International risked the integrity of its "IFG" mark by using that designation to name new varietals. International could not now inhibit public use of these varietal denominations. Allowance of "IFG" as a mark would amount to an improper extension of International's plant patent and PVP certificate rights under U.S. law.  Top


Therabody v. Shanghai Three (not citable 11/17/22)  Decision Short Summary
Therabody opposed STG's application to register the mark "Threegun" for electric blankets for medical use, masks for use by medical personnel, a massage apparatus, and other goods based on a likelihood of confusion with its registered "Theragun" marks used for a massage apparatus and other goods and services. The Board dismissed the opposition.

The parties' goods were identical in part, making it appropriate to conclude that the channels of trade and classes of purchasers overlapped. STG submitted numerous third-party registrations for "Gun" formative marks. These registrations demonstrated that the term "gun" formed a part of numerous registered marks, in a manner used to describe certain types of massage apparatuses. The third-party registration and use evidence confirmed the highly suggestive meaning of "gun" in the massage apparatus industry. As a result, the term "gun" was weak and diluted for such goods. The record also showed that the "Thera" portion of the cited mark could be perceived by consumers as a shortened form of the word "therapy." As a whole, "Theragun" was somewhat suggestive of massage apparatuses. The evidence did not show that the "Theragun" mark was commercially strong or famous. But because Therabody succeeded in showing that its mark had garnered some renown, its mark was entitled to a slightly broader scope of protection. Despite this, the parties' marks differed in sight, sound, meaning, and overall commercial impression. STG's mark was likely to be perceived by consumers as conveying the meaning of multiple guns or gun-like massage devices, while Therabody's mark was likely to be understood as conveying the meaning of a therapeutic massage device. These different connotations and impressions distinguished the two marks.  Top


CitiusTech Healthcare v. Moussa (WIPO 11/22/22)  Decision Short Summary
CTH provides consulting and digital technology to healthcare and life sciences companies. CTH operates in several countries, including India, the United States, and Singapore. CTH holds a registration for the mark "CitiusTech" dating from March 2014. According to CTH, it began using that mark in 2005, when the company was founded. Moussa registered the domain name "citustech.com" in May 2013. The domain name currently resolves to a parking page where it is offered for sale.

CTH had not carried its burden of proving that Moussa registered the subject domain name in bad faith. While CTH held rights in the "CitiusTech" mark, that term was different than the one used in the disputed domain name. Moreover, CTH held no registered trademark rights at the time Moussa registered the domain name. Further, the record did not establish that, as of 2013, CTH's mark was so well-known that someone in Moussa's position would likely have known of the mark. In addition, the record did not indicate the extent to which CTH's sales and operations prior to 2013 occurred in the United States, as opposed to India and the other countries where CTH operated. The panel also noted that Moussa's explanation of why he registered the domain name seemed plausible. According to Moussa, he registered the domain name for potential use as a new name for his IT company, noting that "citus" translated to "quick" in Latin. Moussa's account of his behavior and motives appeared forthright. As a result, the panel credited Moussa's emphatic and clear denial of any knowledge of CTH's mark in 2013. On a balance of probabilities, Moussa likely did not have CTH's mark in mind when registering the disputed domain name.  Top


CoStar Realty v. Clantech, Inc. (IPR 11/25/22)  Decision Short Summary
CoStar petitioned for IPR of claims 1-28 of the '127 patent for obviousness, which the Board denied.

The '127 patent related to methods, systems, and software products for allowing font characters that were not standard to an operating system to be displayed and used by the operating system. CoStar had not established a reasonable likelihood of demonstrating that Collins disclosed the limitation in question. In particular, CoStar did not explain how one skilled in the art would have understood Collins to disclose a rendered document "displayed using the same exact font," as required by claim 1. Instead, Collins disclosed a rendered document "with virtually the exact same appearance." Similarly, Collins explained that its invention enabled virtually any document created with virtually any font to be "accurately reproduced" on another computer that did not contain the original font descriptions. CoStar did not explain how teaching the display of an accurate reproduction of the font disclosed the recited "displaying the exact same font." That Collins taught that the image rendered on the second computer approximated, instead of identically duplicated, the original fonted document was consistent with its disclosures. Collins taught the conversion of the original fonts into new font descriptions that were intended to reproduce the shapes of the original fonts, not transferring and displaying the original font.  Top


In re Hung (not binding 11/25/22)  Decision Short Summary
The examiner rejected various claims of the '703 application for anticipation and obviousness; the Board reversed.

The claims were directed to a system for executing a collapsed multi-dimensional loop. The examiner found that Plotnikov disclosed generating address offsets for each element of a multi-dimensional structure, with the structure having elements along each dimension. The examiner explained that because the claims did not require only one address modifier for each dimension, any of the plurality of address offsets generated for elements of a particular dimension was an address modifier or offset for that dimension. However, the examiner did not identify where Plotnikov disclosed "precomputing an address modifier for each dimension included in the multi-dimensional loop," as recited in the disputed limitation of claim 1. Nor did the examiner explain sufficiently the relationship between a "dimension," as recited in claim 1, and an "element," as disclosed in Plotnikov. In particular, the examiner did not explain where Plotnikov disclosed that any of the plurality of address offsets generated for elements of a particular dimension was an address modifier/offset for that dimension. For these reasons, the examiner erred in finding that the cited portions of Plotnikov disclosed the disputed "precomputing" limitation of claim 1. Top


In re Explora Science (11/25/22)  Decision  Short Summary
The Board affirmed the registration program's refusal to register a two-dimensional artwork claim.

The work consisted of two outstretched white hands with the thumbs touching and the thumbs and index fingers of the two hands partially encompassing a yellow star. Both elements were depicted within an irregular green trapezoid. Both the individual elements of the work and the work as a whole failed to demonstrate sufficient creativity. The work was a combination of three elements: hands, a star, and a trapezoidal background. The star and trapezoid were common shapes and the simple, abstract depiction of hands represented a basic idea from nature. The combination of these elements demonstrated only de minimis creativity. Small stylistic changes in common shapes, such as the irregular angles in the work's trapezoidal background, could not sustain copyright registration. Placing the star within two hands was a predictable arrangement that reflected the use of hands to symbolically depict the grabbing, touching, and reaching for the stars.  Top


Intellectual Property Admin Notes is published by JurisNotes.com, Inc.
Editor: Margie S. Schweitzer, J.D.; email Margie@JurisNotes.com; phone 503-763-8717.
Copyright 2022 by
JurisNotes.com, Inc.  No claim to copyright as to original U.S. government work.  Reproduction and retransmission of our newsletters is forbidden except as permitted by your subscription agreement.

 


JurisNotes.Com - The Law in Brief
Copyright   JurisNotes.Com