• MA State Senator Eric Lesser makes push towards reform on bad faith patent assertions

    The HuffPost recently published a piece authored by Massachusetts State Senator Eric P. Lesser (D), which is titled Patent Trolls Are Trolling Startups In Massachusetts – And We Need To Change That. The piece attempts to engage readers by taking a situation from the HBO sitcom Silicon Valley and apply it to real world business activities currently ongoing within the state of Massachusetts. However, critical analysis of Lesser’s article indicates glaring flaws with his logic in a way that makes…

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  • Patent Quality Isn’t the Question. Patent Value is the Question.

    “It’s not very helpful to talk about quality,” said former Chief Judge Michel. We agree. Quality has too many meanings for too many people. We all want quality patents, but we do not agree on what quality means. A better objective for patent strategy and patent management is the pursuit of valuable patents. “But wait!” […]

    The post Patent Quality Isn’t the Question. Patent Value is the Question. appeared first on IPWatchdog.com | Patents & Patent Law.

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  • Federal Circuit says Will.i.am not allowed to trademark I AM

    William Adams is the well-known front man for the music group The Black Eyed Peas and is known as will.i.am. Adams’ company – i.am.symbolic, llc – already owns trademarks on WILL.I.AM for certain goods and services, and also the mark I AM (typed drawing) for clothing in class 25. The trademark examining attorney refused registration of the standard character trademark I AM on the ground of likelihood of confusion with existing registered trademarks. The Trademark Trial and Appeal Board…

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  • Li v. Matal. Matter arising out of attorney discipline in New Jersey

    The outcome

    Feng Li appeals from the decision of the United States
    District Court for the Eastern District of Virginia granting
    the motion of the United States Patent and Trademark
    Office (“USPTO”) and the Director of the USPTO
    (collectively, “Appellees”) to dismiss Mr. Li’s complaint for
    lack of subject matter jurisdiction and failure to state a
    claim, thereby affirming the USPTO’s decision to exclude
    Mr. Li from practice before the USPTO. Li v. Matal, No.
    15-cv-668 (E.D. Va. Jan. 22, 2016). We affirm.

    The case has a New Jersey connection:

    After successfully obtaining a
    judgment for his clients, Mr. Li disagreed with his clients
    on the amount of attorney’s fees he was owed, resulting in
    his clients filing suit in New Jersey state court. Knowing
    the fees were in dispute, Mr. Li transferred $1.2 million of
    the judgment into trust funds in his children’s names.
    The New Jersey Office of Attorney Ethics determined that
    Mr. Li violated the New Jersey Rules of Professional
    Conduct by taking possession of client funds he knew to
    be disputed. In 2013, the Supreme Court of New Jersey
    disbarred Mr. Li from the practice of law based on attorney


    Mr. Li’s response to the
    Notice and Order did not dispute the fact that he had
    been disbarred in New Jersey, but rather argued that
    reciprocal discipline by the USPTO was not justified
    because the New Jersey Supreme Court did not have
    jurisdiction to disbar him based on his conduct in New
    . He further argued that the New Jersey Supreme
    Court’s actions violated the due process, equal protection,
    and Ex Post Facto clauses of the U.S. Constitution. On
    April 28, 2015, the Director of the USPTO issued a final
    order pursuant to 37 C.F.R. § 11.24, excluding Mr. Li from
    practice before the USPTO. The USPTO Director carefully
    applied § 11.24 and found that Mr. Li failed to meet his
    burden to show by clear and convincing evidence that: (1)
    the New Jersey disciplinary process was “so lacking in
    notice or opportunity to be heard;” (2) there was an “infirmity
    of proof” establishing his conduct; or (3) a “grave
    injustice” would result from his disbarment.

    Of CAFC review:

    Our review of a district court’s
    decision on a petition brought pursuant to 35 U.S.C. § 32
    is de novo, “reapplying the standard” applied by the
    district court under the APA.

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    Symbolic lost its appeal to the CAFC from an adverse decision
    from the TTAB. Its arguments:

    Symbolic argues that the Board erred in its likelihood
    of confusion analysis by: (1) holding that the will.i.am
    restriction is “precatory” and “meaningless” and therefore
    not considering it in analyzing certain DuPont factors;
    (2) ignoring third-party use and the peaceful coexistence
    on the primary and supplemental registers and in the
    marketplace of other I AM marks; and (3) finding a likelihood
    of reverse confusion. We will address each argument
    in turn.

    Likelihood of confusion is a question of law based on
    underlying findings of fact. In re Chatam Int’l Inc., 380
    F.3d 1340, 1342 (Fed. Cir. 2004). We assess a likelihood
    of confusion based on the factors set forth in DuPont. 476
    F.2d at 1361. “The likelihood of confusion analysis considers
    all DuPont factors for which there is record evidence
    but ‘may focus . . . on dispositive factors, such as
    similarity of the marks and relatedness of the goods.’”
    Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156,
    1164–65 (Fed. Cir. 2002) (quoting Han Beauty, Inc. v.
    Alberto–Culver Co., 236 F.3d 1333, 1336 (Fed. Cir. 2001)
    (alteration in original)). While evidence of actual confusion
    may be considered in the DuPont analysis, “a showing
    of actual confusion is not necessary to establish a
    likelihood of confusion.” Id. (citing Giant Food, Inc. v.
    Nation’s Foodservice, Inc., 710 F.2d 1565, 1571 (Fed. Cir.
    1983)). In the likelihood of confusion analysis “doubts are
    to be resolved against the newcomer and in favor of the
    prior user.” San Fernando Elec. Mfg. Co. v. JFD Elecs.
    Components Corp., 565 F.2d 683, 684 (CCPA 1977).

    The Coach case arose:

    Furthermore, Symbolic’s reliance on Coach is misplaced.
    Although it is true that word marks identical in
    sound and appearance may have different meanings and
    commercial impressions, 668 F.3d at 1369, the Board’s
    finding that this is not such a case is supported by substantial
    evidence. Unlike in Coach, Symbolic did not
    establish that the words “I AM,” which comprise the
    totality of the mark, by themselves “ha[ve] many different
    definitions in different contexts,” or that I AM when
    applied to Symbolic’s goods “brings to mind” something
    different from I AM when applied to registrants’ marks.

    Of reverse confusion:

    “The term ‘reverse confusion’ has been used to describe
    the situation where a significantly larger or prominent
    newcomer ‘saturates the market’ with a trademark
    that is confusingly similar to that of a smaller, senior
    registrant for related goods or services.” In re Shell Oil
    Co., 992 F.2d 1204, 1208 (Fed. Cir. 1993) (quoting Sands,
    Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947, 957
    & n.12 (7th Cir. 1992)). In that situation, “[t]he junior
    user does not seek to benefit from the goodwill of the
    senior user; however, the senior user may experience
    diminution or even loss of its mark’s identity and goodwill
    due to extensive use of a confusingly similar mark by the
    junior user.” Id. Trademark law “protects the registrant
    and senior user from adverse commercial impact due to
    use of a similar mark by a newcomer.” Id.; see also Wallpaper
    Mfrs., Ltd. v. Crown Wallcovering Corp., 680 F.2d
    755, 762 (CCPA 1982) (explaining “even where there is
    reverse confusion . . . another source with superior de jure
    rights may prevail regardless of what source or sources
    the public identifies with the mark”).

    Symbolic argues that the Board found a likelihood of
    reverse confusion and that that finding is not supported
    by substantial evidence. The PTO responds that the
    Board did not find a likelihood of reverse confusion and
    that its finding that the fame of the marks, the fifth
    DuPont factor, is neutral is supported by substantial
    We agree with the PTO that the Board did not find a
    likelihood of reverse confusion. The Board treated the
    fifth DuPont factor as “neutral” and explained that the
    “purported lack of fame” of registrants’ marks was of
    “little consequence.” Symbolic I, 116 U.S.P.Q.2d at 1412;
    Symbolic II, 2015 WL 6746544, at *8; Symbolic III, 2015
    WL 6746545, at *8. That determination is consistent with
    our precedent holding that the purported lack of fame of a
    registrant’s mark has “little probative value” in the likelihood
    of confusion analysis. Majestic Distilling, 315 F.3d
    at 1317.
    Symbolic points to a footnote in the Board’s opinions
    in support of its contention that the Board found a likelihood
    of reverse confusion.

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    In re i.am.symbolic, LLC (Fed. Cir. 2017) will.i.am of the Black Eyed Peas (and solo) has a registered mark on his professional name, but is now seeking a mark of more biblical proportions: “I AM.” Actually, his company i.am.symbolic already has registered the mark “I AM” for all sorts of clothing in class 25, but is now […]

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