Trademark 101 is a video presentation on the basics of trademark law prepared by Kean Miller Intellectual Property and Business Litigation partner Tara Madison.  This informative video covers what constitutes a trademark, what can be trademarked, generic words and more.

View the video here.

This first appeared on the Louisiana Law Blog here

In its ruling of May 9, 2012, the Sixth Circuit Court of Appeals affirmed the district court’s conclusion that Maker’s Mark Distillery, Inc.’s registered trademark consisting of the signature red dripping wax seal is due protection. The Samuels Family founded the Maker’s Mark Distillery in Loretto, Kentucky, and has been producing whiskey since the Eighteenth Century. Bill Samuels formulated the recipe for the Maker’s Mark bourbon in 1953. His wife, Margie, conceived of the red dripping wax seal. The company has bottled bourbon for commercial sale under the Maker’s Mark name and has used a red dripping wax seal on the bottle since 1958. In 1985, Maker’s Mark registered a trademark for the dripping wax seal component of its trade dress which is described it as a “wax-like coating covering the cap of the bottle and trickling down the neck of the bottle in a freeform irregular pattern.”

In 1995, Jose Cuervo began producing premium tequila entitled “Reserva de la Familia.” The tequila bottle had a wax seal that was straight edged and did not feature drips. However, in 2001, Cuervo began selling its tequila in the United States in bottles with a red dripping wax seal similar to the seal of the Maker’s Mark bottle.
Continue Reading Whiskey vs. Tequila: Courts find Cuervo’s Seal Infringes Maker’s Mark Red Wax Seal Trademark

Social networks like Facebook, YouTube and Twitter are transforming the way companies communicate with consumers. Facebook, YouTube and Twitter can be powerful business tools, but you must be mindful of certain legal limitations and guidelines.

The words “Facebook,” “YouTube,” and “Twitter” are proprietary to the companies that own them. “Facebook,” “YouTube,” and “Twitter” are all registered with the U.S. Patent & Trademark Office. A trademark is a distinctive word, logo or phrase that is used by an individual or business to identify a unique source of products or services.

Facebook, Inc., Twitter, Inc. and Google, Inc., the owner of YouTube, are entitled to prevent others from using their trademarks, which include logos, or something similar, in a way that is misleading, deceptive or could cause confusion in the marketplace. You must first obtain permission before using another’s trademark.

Both Facebook and Google authorize the use of the Facebook and YouTube trademarks in specified ways. For example, both Facebook and Google prohibit users from modifying their trademarks and from using their trademarks as a verb. These guidelines are set forth in full on each of their websites. Twitter, however, expressly prohibits the use of its trademarks. The Twitter basic terms state, “Nothing in the Terms gives you a right to use the Twitter name or any of the Twitter trademarks, logos, domain names, and other distinctive brand features.” Thus, Twitter users should be wary of using the Twitter trademark to promote their businesses in advertising without receiving specific permission.

Google allows commercial usage of certain YouTube badges by those who make use of YouTube API, which allows users to incorporate YouTube content into the user’s own website or software application. A user is not required to get preapproval to use the YouTube API or to promote API functionality on the user’s website using the “YouTube Ready,” “YouTube Videos” or “Powered by YouTube” badges, all of which are provided on the website for free download and use. But, by downloading the badges, the user agrees to be bound by certain guidelines, all of which are set forth in the Branding Guidelines on the Google website available here.  Google prohibits usage of any other form of the YouTube logo other than the badges provided on the website, as well as any variation of the YouTube trademark such as “YouTubers,” “Tubing,” “You-Tube,” or “YouTubed,” etc. Additionally, it is important to note that the YouTube license appears to only extend to use of a YouTube Badge to give attribution to a YouTube video on a website, blog, or other such means of electronic communication. The license does not specifically address print advertisements, such as billboards.

Facebook actually recommends promoting one’s Facebook page outside of Facebook, assuming very specific guidelines are followed. Facebook’s guidelines for both the use of its Brand Assets and for referencing Facebook are located in Facebook’s Brand Permissions Center located online here. For example, Facebook allows usage of its Like Button logo to be used in print advertisements and in connection with the Like Button social plugin that Facebook provides on its website. Facebook, however, prohibits usage of the Like Button logo in online advertisements. Facebook also requires users to get special permission to use the Facebook logo. Permission can be obtained directly from the Brand Permissions Center website by accessing the Permissions Request Form. Additionally, Facebook typically prohibits use of its trademarks in connection with merchandise such as clothing, hats, mugs, dolls, and toys. More examples of acceptable and unacceptable uses of Facebook’s trademarks and appropriate ways for users to reference Facebook are provided on the Brand Permission Center section of the Facebook website.

Before delving into the world of social networking advertising, take the time to read the permissions and guidelines of whatever social networking site you may be using. These guidelines are typically located on the social network’s website. If there are no guidelines, the default rule is that specific permission should be sought to use the social network’s trademark to promote your business by incorporating a social network’s trademark in commercial advertisements.

This article first appeared on the Louisiana Law Blog here

Ever since the Supreme Court handed down its decision in Bliski v. Kappos, 130 U.S. 3218 (2010), practitioners have grappled with the line between eligible and ineligible patent processes. Two recent cases, one eligible and one not will undoubtedly be cited to describe the divide as it relates to a business process.

In August, the United States Court of Appeals for the Federal Circuit Court decided that a method of verifying the validity of credit card transactions over the Internet was patent ineligible. Cybersource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011). The claims were very broad and were capable of implementation through a purely mental process. Further, use of a computer to perform the method, by itself was insufficient to render the process patentable.

In September the Federal Circuit decided that a method, that provided for a triangular business transaction was patent eligible. Under scrutiny was a method of providing copyrighted materials to one party, in exchange for royalties from a third party advertiser. In this transaction, the advertiser paid the royalty to the intellectual property owner, and in return secured an individual to view their advertisement. Ultramercial, LLC v. Hulu, LLC, 2011 WL 4090761 (Fed. Cir. 2011). The viewer received entertainment value of the copyrighted material for the cost of viewing the advertisement. Although the Court concluded that “the mere idea that advertising can be used as a form of currency is abstract,” it noted that the patent “disclosed a practical application of this idea.” Id. at 5. Such is fully consistent with accepting patentability of the Arrhenius equation when narrowly and practically applied to the manufacturer of rubber. Diamond v. Diehr, 450 U.S. 175, 187 (1981).

But why is one patent eligible and the other not? Although the Court disavows level of complexity as a factor, one is left to consider.

The Court rejected the credit verification card method as all the steps could be “performed in the human mind or by a human using a pen and paper.” Practice of the patent would require no more than construction of a list and comparing future transaction to that list; furthermore, no particular algorithms were disclosed. Cybersource at 1372. In contrast, the process to implement the “controlled interaction with a consumer via an Internet website” was “far removed from purely mental steps.” Ultramercial at 6.

Both the eligible and ineligible methods included the use of computers. The Court reiterates that “use of a computer to execute an algorithm that can be performed in the mind” does not make the method patentable, nor does “mere manipulation or reorganization of data.” Cybersource at 1375. In contrast, the triangular business method “required intricate and complex computer programming” and “specific application to the Internet.” Ultramercial at 5

In conclusion, the rumor that patentable business methods are dead is premature at best. The Federal Circuit may allow the patentability of a business method; however, implementation must require more than a purely mental process. Although future decisions will define the degree of required non-mental process, the Federal Circuit has present some hints; computer programming must be more involved than data management and must truly relate to implementation of the method, application of specific algorithms in a narrow fashion is desirable and finally, complex methods requiring complex computer programming are more likely patentable than simple system.

This article first appeared on the Louisiana Law Blog here

In Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc, 617 F.3d 1296 (Fed. Cir. 2010), the Federal Circuit reversed a district court’s summary judgment decision that no patent infringement occurred when a US company made an offer to sell to another US company when the sale negotiations occurred outside of the US.

Transocean filed suit for infringement of patents related to an improved apparatus for conducting offshore drilling. In order to drill for oil and other offshore resources, drilling rigs must lower several components to the seabed including the drill bit, casings, BOB’s, and the drill string. A conventional offshore drilling rig utilizes a derrick with a single top drive and drawworks that can only lower one element at a time in a time consuming process. Transocean patented a specialized derrick to improve the efficiency of lowering the above components. The specialized derrick included “two stations – a main advancing station and an auxiliary advancing station that can each assemble drill strings and lower components to the seabed.” Id. at 1301. This duel-activity rig could significantly decrease the time required to complete a borehole. Id at 1302. Transocean sued Maersk rig for infringement of the specialized derrick patent.
Continue Reading Parties Cannot Avoid Patent Infringement by Conducting Negotiations Outside the United States for Products that will be Delivered and Utilized in the United States

In one of its last acts before its summer 2010 recess, the United States Supreme Court issued its opinion in the long-awaited case of Bilski v. Kappos (S.Ct. 2010 80-964). In the Bilski case, the inventor was seeking to obtain a patent on a method of hedging risk. The Supreme Court found that the method was not patentable because it was merely an abstract idea. In earlier jurisprudence from the Court of Appeals for the Federal Circuit (CAFC), the CAFC had used a “machine-or-transformation test” to determine whether business methods were patentable. In Bilski, the Supreme Court refused to say that the machine or transformation test was the sole test for determining patentability, and the Court did not reject the machine or transformation test. Instead, the Bilski court stated that the machine or transformation test is a useful tool, but not the only tool, for evaluating whether an invention is proper subject matter for patent protection.

Continue Reading Supreme Court Decides Long-Awaited Patent Case