$$ The platform (10) should be continually monitored for removal of one of the tokens. / プラットホーム(10)はトー…

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  • Earnhardt trademark case

    In the outcome, the CAFC vacated a decision of the Trademark Board:

    This case arises from Kerry Earnhardt, Inc.’s (KEI)
    trademark application with the U.S. Patent and Trademark
    Office (PTO) to register the mark EARNHARDT
    COLLECTION for “furniture” in class 20 and “custom
    construction of homes” in class 37. Teresa Earnhardt
    opposed registration based on an asserted likelihood of
    confusion with her registered marks in DALE
    EARNHARDT for goods and services in various classes
    and her common law rights in EARNHARDT and DALE
    EARNHARDT acquired by use with various goods and
    services. She also opposed registration because in her
    view EARNHARDT COLLECTION is “primarily merely a
    surname” under Section 2(e)(4) of the Lanham Act. 15
    U.S.C. § 1052(e)(4) (2012). The Trademark Trial and
    Appeal Board (Board) dismissed Teresa Earnhardt’s
    opposition because it found that there was no likelihood of
    confusion between EARNHARDT COLLECTION and
    Teresa Earnhardt’s marks, and it found that
    EARNHARDT COLLECTION is not primarily merely a
    surname. J.A. 38. Teresa Earnhardt appeals the Board’s
    finding that EARNHARDT COLLECTION is not primarily
    merely a surname. Because it is unclear whether the
    Board’s analysis properly applied our decision in In re
    Hutchinson Technology Inc., 852 F.2d 552, 554 (Fed. Cir.
    1988), we vacate and remand for reconsideration.

    An issue

    A mark is primarily merely a surname if the surname
    “is the primary significance of the mark as a whole to the
    purchasing public.” Hutchinson, 852 F.2d at 554. Because
    EARNHARDT COLLECTION is a combination of
    two terms, the PTO must consider the mark “in its entirety”
    rather than merely “consider[ing] the mark as two
    separate parts.” Id. Thus, to evaluate whether the commercial
    impression of a mark that combines a surname
    with a second term is still primarily merely the surname,
    the PTO must determine whether the primary significance
    of the mark as a whole in connection with the
    recited goods and services is that of the surname. Id. A
    key element in such an inquiry is determining the relative
    distinctiveness of the second term in the mark. Id. at

    “Marks are often classified in categories of generally
    increasing distinctiveness . . . they may be (1) generic;
    (2) descriptive; (3) suggestive; (4) arbitrary; or
    (5) fanciful.” Two Pesos, 505 U.S. at 768. “The latter
    three categories of marks, because their intrinsic nature
    serves to identify a particular source of a product, are
    deemed inherently distinctive and are entitled to protection.”


    Here, we agree with the parties that the Board had to
    determine whether the addition of the term “collection” to
    the mark EARNHARDT COLLECTION altered the
    primary significance of the mark as a whole to the purchasing
    public, and that, in view of Hutchinson, part of
    this inquiry includes determining whether “collection” is
    merely descriptive of KEI’s goods and services. But we
    cannot address the parties’ arguments as to whether
    “collection” is merely descriptive of KEI’s goods and
    services because the Board’s opinion leaves us uncertain
    as to its findings on this issue. See, e.g., Pers. Web Techs.,
    LLC v. Apple, Inc., 848 F.3d 987, 992 (Fed. Cir. 2017)
    (describing the “basic principles of administrative law”
    governing the PTAB’s obligation to explain itself).

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  • America’s Patent System: An amazingly resilient philosophy and entity

    Today, most Americans don’t realize how vital the patent system is to their standard of living. But the founding fathers certainly did. That’s why they very consciously set out to construct the world’s first DEMOCRATIZED patent system that would do what no other patent system in the world had done before; stimulate the inventive genius of the common man… I would call for patience, because I believe history has shown that the system self-corrects and will likely do so again. But in our zeal…

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  • Siebrasse & Cotter on Judicially Determined FRAND Royalties

    Norman Siebrasse and I have posted a draft book chapter on ssrn, titled Judicially Determined FRAND Royalties, forthcoming in The Cambridge Handbook of Technical Standardization Law (Jorge L. Contreras ed., Cambridge University Press).  Here is a link, and here is the abstract:
    This chapter from the forthcoming Cambridge Handbook of Technical Standardization Law reviews the principles and methodologies courts have used for calculating royalties for the infringement of standard-essential patents (SEPs) that the owner is obligated to license on fair, reasonable and non-discriminatory (FRAND) terms. As we show, in the cases so far in which courts have made final judicial determinations of FRAND royalties–the U.S. decisions in Microsoft, Innovatio, Ericsson, and CSIRO, the Japanese Apple v. Samsung judgment, the Chinese Huawei v. InterDigital matter, and the English Unwired Planet v. Huawei case–have tended to focus on a relatively small number of additional considerations beyond the generally applicable principles used for calculating reasonable royalties. Although reasonable minds may disagree with specific features of the relevant decisions, overall the courts (correctly, in our view) have emphasized that the owner of an SEP should receive a royalty that is proportionate to the technology’s contribution to the value of standard — a principle which, when properly applied, reduces concerns over the potential for SEPs to induce holdup and royalty stacking.

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