Indiana Intellectual Property Law News

October 10, 2014

Trademark Update: eTAS Enhancements

The following improvements were made by the United States Patent and Trademark Office to the Electronic Trademark Assignment System (“eTAS”) during fiscal year 2014. These enhancements are designed to facilitate filing and recording assignments with the Assignment Recordation Branch.

NEW CONVEYANCE TYPES: Added three new Conveyance Types to improve database specificity and reduce the need to file two documents in the case of a merger involving a name change:

Merger and Change of Name” allows customers to select both conveyance types in a single submission
Entity Conversion
Court Order

ORDER OF RECORDATION: Added a method for customers to designate the order of recordation for multiple, related assignment submissions.

PHONE COMMUNICATION: Introduced new service in which the USPTO will contact customers by phone: (1) to resolve recordation issues rather than issuing a Non-Recordation Notice, and (2) to help identify potential typographical errors that might result in the filer having to file a subsequent corrective assignment.

ELECTRONIC RESUBMISSION: Added electronic resubmission capability allowing customers who receive a Non-Recordation Notice to resubmit the corrected paperwork electronically.

COUNTRY CODES: Updated and reordered country codes in the eTAS (1) to be consistent with other USPTO systems such as the Trademark Electronic Application System and (2) to enable the USPTO to add and delete countries from the list.

SPECIAL CHARACTERS: Added the ability for customers to enter special characters in the name fields in eTAS. For example, customers may now enter a corporation called XYZ*, Inc. as a name.

NOTICE DELIVERY: Instituted delivery of recordation notices via three methods in succession: (1) first attempt is via email, (2) if email is unsuccessful, then send via fax and, (3) if fax is unsuccessful, then send via postal mail.

VERIFICATION: Added a statement to the validation page requiring a filer to verify that he/she is aware that the unauthorized use of eTAS is a misrepresentation to the federal government, is prohibited and is subject to criminal and civil penalties. This change was made in an attempt to prevent the filing of false transfers against another’s property.

October 9, 2014

USPTO Seeks Public Input Regarding Cybersecurity

By Overhauser Law Offices, LLC

The facts are alarming: the cybersecurity threat to the U.S. – and the world – is real and growing. The Economist Magazine reported early this year that one security firm estimated that cybercrime costs the world $113 billion per year and affects 378 million people, while a research institute estimated that malicious cyber-attacks in 2012 cost U.S. companies $277 for each customer’s or user’s account put at risk.

To combat the threat, the United States Patent and Trademark Office (“USPTO”) and National Institute of Standards and Technology (“NIST”) have teamed up to explore viable cybersecurity solutions and are asking for help from the public.

NIST’s Request for Information is accessible at: https://federalregister.gov/a/2014-20315. The 45-day comment period ends October 10, 2014. All RFI responses should be submitted to cyberframework@nist.gov and will be posted on NIST’s website.

October 8, 2014

185 Trademark Registrations Issued to Indiana Companies in September 2014

By Overhauser Law Offices, LLC

The U.S. Trademark Office issued the following 185 trademark registrations to persons and businesses in Indiana in September 2014 based on applications filed by Indiana trademark attorneys:

Reg. Number	Word Mark	Click To View
4596040	ESG SECURITY	VIEW
4611624	AROUND THE CLOCK SPORTS TALK	VIEW
4609858	EVERY CONTACT MATTERS	VIEW
4609713	CENTERFIRST	VIEW
4609559	GOD ROCKS	VIEW
4609463	LEAF	VIEW
4609273	REAL PURITY	VIEW
4609053	GRAND DESIGN	VIEW
4608998	B. HAPPY PEANUT BUTTER	VIEW
4608976	OMNI HEALTH AND FITNESS	VIEW
4608873	SPRINGBUK	VIEW
4608870	THE POWER OF BEST	VIEW
4608869	STORYTIME SERIES	VIEW
4608863	PENTREXFLU	VIEW

October 6, 2014

Patent Office Issues 219 Patents To Indiana Citizens in September 2014

By Overhauser Law Offices, LLC

The U.S. Patent Office issued the following 219 patent registrations to persons and businesses in Indiana in September2014, based on applications filed by Indiana patent attorneys:

PAT. NO.		TITLE
8849728		Visual analytics law enforcement tools
8849673		Rule generation
8849459		Power management system for a handheld medical device
8849458		Collection device with selective display of test results, method and computer program product thereof
8849439		Mass production of orthopedic implants
8847756		Bed status indicators
8847446		Method and apparatus for fastening cooling fans to electro-mechanical machines
8847114		Laser-assisted micromachining system and method
8847030		Inbred corn line XHK20
8846717		Stable insecticide compositions and methods for producing same
8846570		Herbicidal compositions comprising 4-amino-3-chloro-5-fluoro-6-(4-chloro-2-fluoro-3-methoxyphenyl)pyridine-2- -carboxylic acid or a derivative thereof and microtubule inhibiting herbicides
8846231		Battery assembly with temperature control device
8846132		Method for producing polymer layers
8846068		Methods and compositions for treating post-operative pain comprising a local anesthetic
8846059		Extracellular matrix adjuvant and methods for prevention and/or inhibition of ovarian tumors and ovarian cancer
8845772		Process and system for syngas production from biomass materials
8845749		Modular orthopaedic component case
8845744		Ulnar head implant

October 3, 2014

If You Have Been Sued for Patent Infringement

By Overhauser Law Offices, LLC

How does a patent infringement lawsuit begin?

A patent lawsuit begins with the filing of a complaint alleging patent infringement by the patent

holder. If a lawsuit is filed against you, the patent owner must serve two documents on you: (1) a document called a “complaint,” which explains the accusations made against you; and (2) a document called a “summons.” The patent owner may first send a “demand” letter that states that you are potentially infringing the claims of a patent and requests that you pay for a license to use the patented invention, or it may go straight to court.

October 1, 2014

Indiana Trademark Litigation: KM Innovations Sues LTD Commodities

By Overhauser Law Offices, LLC

Indianapolis, Indiana – An Indiana trademark attorney for KM Innovations LLC of New Castle, Indiana (“KM”) sued in the Southern District of Indiana alleging that LTD Commodities LLC of Bannockburn, Illinois (“LTD”) infringed the trademarked “INDOOR SNOWBALL FIGHT”, Trademark Registration No. 4,425,111 which has been issued by the U.S. Trademark Office.

KM sells synthetic “snowballs” for use in indoor “snowball fights.” It contends that it uses two distinct trademarks to market and sell these synthetic snowballs: “SNOWTIME anytime!” and INDOOR SNOWBALL FIGHT. KM has also sought patent protection for its indoor snowballs.

The SNOWTIME anytime!/”indoor snowball fight” concept was conceived in December 2012. At a party, several parents realized that a market might exist for “indoor snowballs,” which would enable children to have a “snowball fight” but without the usual requirements of snow or being outside. KM later introduced a product based on this idea.

In this Indiana trademark complaint, KM asserts that an item called an “Indoor Snowball Fight Set” is being offered and sold on by LTD on the LTD website. The retail price of the product offered by LTD is $9.95 per 12 synthetic balls, while an allegedly similar product is offered and sold by KM for somewhat more, with a retail price of about $1 per synthetic snowball.

KM contends that, by using the name “Indoor Snowball Fight Set,” LTD has deliberately misappropriated KM’s trademark rights. It claims that the use by LTD of this name demonstrates a wrongful attempt by LTD to utilize the goodwill associated with the KM synthetic-snowball product. KM also claims that LTD’s product is inferior and that, as a result, KM’s reputation will be damaged when consumers are confused into believing that KM is associated with LTD’s “Indoor Snowball Fight Set.”

In its complaint, filed by an Indiana trademark lawyer, KM claims the following:

• Count I: Infringement of Federal Trademark Registration No. 4,425,111
• Count II: False Designation of Origin/Unfair Competition – 35 U.S.C. § 1125(a)

KM asks the court for a judgment of trademark infringement and unfair competition. It requests that the court award damages, including treble damages; order the surrender of any infringing materials; prohibit the use of “Indoor Snowball Fight” by LTD and its agents; and award to KM its costs and attorneys’ fees.

Practice Tip #1: While not included as a separate count, KM did allege trademark dilution in paragraph 24 of the complaint. This cause of action is distinct from trademark infringement and applies to trademarks that are deemed to be famous. An action for dilution can assert either, or both, of two principal harms: blurring and tarnishment. Dilution by blurring, codified in 15 U.S.C. 1125(c)(2)(B), arises when association with another similar mark causes the distinctiveness of the famous mark to be compromised. In contrast, dilution by tarnishment under 15 U.S.C. § 1125(c)(2)(C) happens when the reputation of the famous mark is damaged by association with a similar mark.

Practice Tip #2: KM, no stranger to intellectual property litigation, has previously sued in Indiana federal court alleging trade dress infringement of the packaging for its synthetic snowballs.

September 29, 2014

What To Do If You Get a Demand Letter

By Overhauser Law Offices, LLC

What is a demand letter? Am I legally

obligated to respond?

A demand letter is correspondence that states that you are potentially infringing the claims of a patent and requesting that you pay for a license to use the patented invention. You are not legally required to respond to a demand letter, but in some situations that may be the right course of action. Before deciding, consider your options, described below.

September 26, 2014

Patenting Your Invention

By Overhauser Law Offices, LLC

What can be patented?

Utility patents are available for a new, nonobvious and useful:

• Process,

September 25, 2014

About Patents

By Overhauser Law Offices, LLC

What is a patent?

A patent is an intellectual property right granted by the U.S. Patent and Trademark Office (“USPTO”) that gives a patent owner the right “to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States” for a limited time in exchange for public disclosure of the invention when the patent is granted. The “invention” is set forth by a patent’s “claims” and individual claims of a patent or patent application may be challenged.

Basic information about patents and the process of applying for a patent can be found on the USPTO’s Inventor’s Resources webpage. Also you may find this video from the Federal Judicial Center helpful in explaining patents and the patenting process.

September 24, 2014

J & J Sports Sues Soriano’s Mexican Restaurant and Owner for Illegal Signal Interception

By Overhauser Law Offices, LLC

Indianapolis, Indiana – An intellectual property attorney for J & J Sports Production, Inc. of Campbell, California (“J & J Sports”) sued Minerva Soriano and Soriano’s Mexican Restaurant, LLC, both d/b/a Soriano’s Mexican Restaurant of Indianapolis, Indiana, in the Southern District of Indiana. Plaintiff alleges that Defendants illegally intercepted and broadcast the Julio Cesar Chavez, Jr. v. Sergio Martinez WBC Middleweight Championship Fight Program on September 15, 2012.

Defendant Minerva Soriano, alleged to be an owner and/or an individual with control, oversight and management of Soriano’s Mexican Restaurant has been sued for the illegal interception of the Julio Cesar Chavez, Jr. v. Sergio Martinez WBC Middleweight Championship Fight Program (the “Program”). Soriano’s Mexican Restaurant, LLC, the legal entity which apparently owns the restaurant, has also been sued.

Plaintiff J & J Sports alleges that it was granted the exclusive nationwide television distribution rights to the Program, including all under-card bouts and fight commentary included in the television broadcast of the event. It states that it entered into subsequent sublicensing agreements with various commercial entities, which were, in turn, granted certain commercial sublicensing rights to the Program.

J & J Sports contends that, “with full knowledge that the Program was not to be intercepted, received and exhibited by entities unauthorized to do so” Defendants and/or their agents unlawfully published, divulged and exhibited the Program. It further asserts that this conduct was “willful, malicious, and intentionally designed to harm” J & J Sports and to cause economic distress.

In the Indiana intellectual property complaint filed on behalf of J & J Sports, the following is alleged:

• Count I: Violation of Title 47 U.S.C. Section 605
• Count II: Violation of Title 47 U.S.C. Section 553
• Count III: Conversion

Regarding Count I, J & J Sports asks the court for the following: (a) Statutory damages for each willful violation in an amount to $100,000.00 pursuant to Title 47 U.S.C. 605(e)(3)(C)(ii), and (b) the recovery of full costs, including reasonable attorneys’ fees, pursuant to Title 47 U.S.C. Section 605(e)(3)(B)(iii).

Plaintiff requests the following remedies for the alleged violations of Count II: (a) Statutory damages for each willful violation in an amount to $50,000.00 pursuant to Title 47 U.S.C. 553 (b)(2) and (b) the recovery of full costs pursuant to Title 47 U.S.C. Section 553
(c)(2)(C), and (c) and reasonable attorneys’ fees, pursuant to Title 47 U.S.C. Section 553 (c)(2)(C).

Finally, for the count of conversion, J & J Sports asks: for compensatory damages in an amount according to proof against Defendants, and for reasonable attorney fees, and for all costs of the lawsuit, including but not limited to filing fees, service of process fees, investigative costs.

Practice Tip:

J & J Sports is a frequent litigant but it is relatively infrequent that a trial on the merits of its intellectual property claims is held. In 2010, it sued in the United States District Court for the Northern District of Texas alleging unauthorized interception and broadcast of the December 2007 “Undefeated” match between Floyd Mayweather and Ricky Hatton. Defendants argued that the broadcast had been authorized by its cable provider. Specifically, Time Warner Cable, which had been licensed to provide the non-commercial rights, expressly admitted that it had inadvertently authorized the commercial display of the broadcast. Time Warner Cable had also offered to pay to J & J Sports the liquidated damages that the contract required in cases of such a breach. On a motion for summary judgment, the trial court agreed with J & J Sports’ allegations that either a violation of § 605 or § 553 had occurred and awarded to J & J Sports statutory damages of $350 and costs and attorneys’ fees of $26,780.30.

The U.S. Court of Appeals for the Fifth Circuit reversed. The issue of whether § 605 applied was one of first impression for the court. It stated that § 605 did not apply to that case, holding that the receipt or interception of communications by wire from a cable system was not governed by § 605. The court then evaluated Defendants’ conduct under the “safe harbor” provision of § 553. That provision exempts from liability any cable recipient who is authorized by a cable company to receive a transmission. In this case,Time Warner Cable’s representative admitted that it had inadvertently sold the broadcast of the fight to Defendants for a non-commercial price, despite knowing that Defendants ran a commercial establishment. This, held the Fifth Circuit, was enough to create a material fact regarding whether Defendants in that case had violated § 553 making the trial court’s grant of summary judgment reversible error.