2009 May

In a recent Trademark Trial and Appeal Board (TTAB) decision, the Applicant attempted to register the mark CYNERGY and in response received a section 2(d) likelihood of confusion refusal in light of a prior registration for SYNERGIE PEEL. In responding to the rejection, the Applicant argued that familiarity with its family of marks would cause consumers to pronounce the mark with a long “I”, rendering the mark sufficiently different from the cited registration. The TTAB held that a family-of-marks argument is not available in seeking to overcome a likelihood of confusion refusal. Further, the TTAB dismissed the Applicant’s remaining arguments, holding that the marks and goods are sufficiently similar and that sophisticated consumers may still be confused. In re Cynosure, Inc., Serial No. 76653359 (TTAB 2009) [precedential].

Germany has now agreed to participate in the Patent Prosecution Highway Program (PPH). Under the PPH, an applicant receiving a favorable ruling from one nation may request that the corresponding application filed with the other nation advance out of turn for examination. Other patent offices already participating in the PPH with the U.S. include those in Canada, Europe, Japan, Korea, UK, Australia, Denmark and Finland.

There are some lesser known alternatives for protecting and enforcing patents in China that can save patent owners both time and money. For example, a utility model patent application can be a quicker and less expensive alternative for obtaining patent protection. The utility model application has no substantive examination and allows an unlimited number of claims (until October 1, 2009, when the limit will be 10 claims) directed only to a product (no method claims). The utility model patent is granted in 9-14 months and is effective for 10 years. Only when a challenge is made to the utility model patent is proof of validity required. A popular strategy is to file a utility model application in China and a PCT application at the same time; then, upon entry of the PCT into the Chinese national stage, the utility model is abandoned in favor of the utility patent application.

Associate Marta Paul was elected to serve on the Indiana State Bar Association’s Intellectual Property Section executive committee as Chair Elect for 2008-2009. Additionally, Ms. Paul was elected to serve on the Indianapolis Bar Association’s Intellectual Property Section executive committee as Secretary for 2009.

The Applicant in this case filed an application for “19-0 THE PERFECT SEASON” on November 8, 2007, seeking registration on the Supplemental Register, and amended the application on April 22, 2008 to seek registration on the Principal Register. In the meantime, the Patriots filed an intent-to-use application on January 17, 2008, for the same mark for registration on the Principal Register. The Patriots opposed the Applicant’s mark. To succeed in the opposition, the Patriots needed priority and thus attempted to knock out the prior application. The Patriots argued that the Applicant had admittedly not used the mark by its first filing date for registration on the Supplemental Register and did not specify use-in-commerce as the filing basis, and the application was void on those bases. In response, the TTAB held that the prior application met all the requirements to receive a filing date and the Patriots were attempting to conflate the requirements for filing a trademark application with the requirements for registration. The TTAB commented that applicants are allowed to add missing information to an application without losing the original filing date. Kraft Group LLC v. William A. Harpole, Opposition No. 91185033 (TTAB 2009) [precedential].

The Hague System allows companies to seek international protection for industrial designs inexpensively. For example, an Applicant could save in excess of $5,800 for a design patent application filed in the European Community, Switzerland, and Turkey. However, there are a number of limitations. Currently, the Hague Agreement covers 56 member countries (contracting parties), and of greatest interest are the European Union countries. At this time, the Hague Agreement does not cover Australia, Canada, China, Japan, Mexico, or the United States.

Similar to the Madrid Protocol international registration for trademarks, the Hague Agreement offers protection for industrial designs in a number of contracting states with a single application filed with the World Intellectual Property Organization (WIPO). While the United States has signed the Agreement, it has not yet passed implementing legislation. However, a U.S. party meeting one of the following criteria may still be able to file an application if the party: (a) is a national of a Contracting Party; (b) is domiciled in a Contracting Party; or (c) has an industrial or commercial establishment in a Contracting Party.

The application can be filed first at the international level without a prior national application or registration and may include up to 100 designs, all in the same class. It is possible to defer publication for 12 to 30 months from the filing date or the priority date. Substantive examination is handled by each Contracting Party. International registrations are effective for 5 years, with 5-year renewals to the total term allowed by each member country. Renewals are made in one place and allow for non-renewal of individual embodiments in multiple countries in the same transaction if desired.

A cost comparison of official filing fees: Filing a design application having 4 embodiments (one in color) directly in Europe, Switzerland and Turkey would be $6,928 for the basic filing and publication fees, not including attorney fees. Filing the same application under the Hague Agreement would be $1,102 for the basic filing and publication fees, a savings of over $5,800. In addition, by filing internationally, there would be no additional foreign associate fees for each country.

Please contact us if you would like additional information relating to the Hague Agreement concerning the international registration of industrial designs.

Unfortunately, it is not uncommon for IP owners to receive phony invoices from third-party organizations. These organizations often monitor notices of acceptance of patents and trademarks in various countries and transmit official-looking, unsolicited bills to IP owners on the hope and expectation that some percentage will get processed for payment without proper verification. In an effort to combat this practice, a foreign law firm used by Woodard, Emhardt, Moriarty, McNett & Henry LLP has prepared a list of companies known or expected to send out these sham bills. Please contact us if you receive an invoice from a third-party organization and are questioning its legitimacy. According to the list received from our foreign associate firm, the suspect companies might include:

* American Trademark Agency (USA)
* Central Data Register of International Patents (Germany)
* Central Patent & Trademark Database (CPTD)(Hong Kong)
* Commercial Centre for Industry and Trade (Switzerland)
* Company of Economic Publications Ltd (Austria)
* Company for Publications and Information Anstalt (CPI)(Liechtenstein)
* Edition The Marks KFT (Hungary)
* European Institute for Economy and Commerce (EIEC)(Belgium)
* Federated Institute for Patent & Trademark Registry (FIPTR)(US)
* Globus Edition SL (Spain)
* INFOCOM (Switzerland)
* Institut of Commerce for Industry, Trade, Commerce (Switzerland)
* International Bureau for Intellectual Property (IBIP)(USA)
* International Data Medium Anstalt (IDM) (Liechtenstein)
* International Organization for Intellectual Property (Switzerland)
* International Organization for Patent & Trademark Service (USA)
* IPTR International Patent and Trademark Register (Germany)
* IT&T AG (Switzerland)
* Register of International Patents – Office Data Management (Italy)
* Register of International Patent Bulletin (Germany)
* Société pour Publications et Information (SARL)(Austria)
* TM-Collection Kft (Hungary)
* Trademark Renewal Service (TRS)(USA)
* United States Trademark Protection Agency (USA)
* ZDR – Datenregister GmbH (Germany)

We would like to congratulate Dave Emhardt on his 50th Anniversary with the firm. The firm celebrated Mr. Emhardt’s anniversary with a firm-wide gathering on April 30, 2009. Mr. Emhardt began working at Lockwood, Woodard, Smith & Weikart in 1959, which has evolved into Woodard, Emhardt, Moriarty, McNett & Henry LLP. Mr. Emhardt has been an integral part of the firm’s success over the years. He has seen the firm grow from 4 attorneys to over 30 and has seen the number of staff grow from 4 to over 40. Before joining the firm, Mr. Emhardt served as an Officer in the U.S. Army Corps of Engineers, and was a Patent Attorney for Western Electric Company after graduating from Harvard Law School in 1955. Among his numerous accomplishments during his time with the firm, in February of 2006, Mr. Emhardt was honored as a Sagamore of the Wabash – the highest award in the State for civic achievement.

In his 50 year tenure, Mr. Emhardt has played a major role in maintaining our firm culture of excellence in a friendly environment. We are extremely grateful for his service, his leadership and the example he has set over the last 50 years.