The Third Circuit Court of Appeals recently issued an opinion regarding a dispute over the rights to the “EBONYS” trademark in relation to a Philadelphia soul band. Procedurally, the dispute arose in 2013, when David Beasley (“Beasley”) brought a petition to cancel a former bandmate’s (William Howard) trademark registration based upon fraud, which was subsequently dismissed. Later, in 2017, Beasley filed another petition asserting that Howard’s trademark was likely to cause confusion with Beasley’s purported rights and interests in his alleged “EBONYS” mark; however, the Board dismissed that petition as well.
Beasley then used Howard for trademark infringement in federal court, asking the Court to cancel Howard’s registration and ownership of the subject mark, and for damages as a result of the alleged infringement. The district court dismissed that case, holding that the Board had dealt with the same allegations, claims, and theories, and therefore was precluded. On appeal, Beasley asserted, and the Third Circuit agreed, with the proposition of law that claim preclusion was inapplicable because the Board’s review and rulings were confined to trademark registration ownership issues, and not whether infringement and resulting damages was present. In its September 17th opinion, the Third Circuit held that “[b]ecause the TTAB has no jurisdiction to consider whether an infringer's use of a mark damages a petitioner seeking cancellation, and in turn cannot award any remedy beyond cancellation," Beasley's claim is "not one that could have been brought in a TTAB cancellation proceeding.” Accordingly, the Third Circuit found that Beasley’s trademark infringement case should proceed, and therefore remanded the case back to the district court for further proceedings.
Peloton Cold Brew, LLC (“PCB”) recently filed a lawsuit against Peloton, Interactive, Inc. (“PII”) – the indoor exercise bike manufacturer – seeking a declaratory judgment that PCB is entitled to use the PELOTON name. PCB alleges that it filed a trademark application in 2017 for “PELOTON” in conjunction with “beverages made of coffee,” that PCB obtained a trademark registration, and that at no point in time did PII object to or seek denial of PCB’s registration. PCB further alleges that while PII’s bike-related trademarks are used in conjunction with “computers and downloadable software," PCB’s trademark is only being used for coffee-related goods and services (products with PII has not developed or offered).
In this new era of name, image, and likeness (“NIL”), college athletes are seizing the opportunity. Such is the case with University of Connecticut basketball star, Paige Bueckers, who recently filed a trademark application for her nickname, PAIGE BUCKETS, to be used in conjunction with hats, tshirts, pants, jackets, footwear, and other apparel items. Bueckers’ nickname seems appropriate, given that she was awarded the prestigious Wooden Award as a freshman during the 2020-2021 season, where she averaged 20 points per game. Several athletes have decided to file trademark applications in light of the Supreme Court’s June 2021 decision, which ruled that the National Collegiate Athletic Association cannot enforce certain regulations limiting education-related benefits.
Apple recently avoided a significant damages payout by successfully proving that its opponent, Personalized Media Communications, LLC ("PMC"), had inentionally and unfairly delayed issuance of its patents by decades, until a significant portion of the industry had adopted its technology. Due to this, the Court ruled that PMC's patents are unenforceable.
Among other patents, PMC sued on U.S. Patent No. 7,775,264 for signal processing methods related to the delivery of content over computer networks. The patent was filed in May of 1995, issued in 2010, but includes technology dating back to the early 80's. The strategy of delaying the issuance of patents was apparently discovered in an internal document from 1991 citing Apple, Intel, IBM, and Microsoft as potential targets.
Of course, such a strategy is no longer possible to pursue today. After June 8, 1995, the term of a U.S. patent is set at twenty years from its earliest filing date. Therefore, there is no benefit to delaying issuance of a patent. When PMC filed its applications, however, the term was set at seventeen years from the grant date of the patent.
This week, Sony Music initiated a copyright lawsuit in the Southern District of Florida against Vital Pharmaceuticals, Inc., known for doing business as Bang Energy in the energy drink industry. In its Complaint, Sony accuses Bang of using at least 132 copyrighted sound recordings owned or exclusively licensed by Sony without authorization. For example, Sony points out Bang’s alleged use of “Please Don’t Go” by Mike Posner, “Bad” by Michael Jackson, “Roxanne” by Arizona Zervas, “Gimme More” by Britney Spears, “Say So” and “Like That” by Doja Cat, as well as “Worth It” by Fifth Harmony. Some of those songs, such as “Please Don’t Go,” have been the subject of viral so-called “TikTok trends” within that application.
This case is Sony Music Entertainment v. Vital Pharmaceuticals, Inc., Case No. 1:21-cv-22825, in the Southern District of Florida.
In March, Kimsaprincess Inc., a company connected to Kim Kardashian West, filed nineteen trademark applications for the mark “SKKN BY KIM” in connection with an upcoming brand launch—one application for each international class encompassed by the proposed goods and/or services. On July 9, Kimsaprincess Inc. filed another trademark application, this time for “SKKN” in a single international class. The twenty applications, which encompass goods and/or services ranging from skin care services to couch cushions, were filed on an intent-to-use basis.
On July 21, however, Beauty Concepts LLC (“Beauty Concepts”)—owner of U.S. Trademark Application No. 90/608,147 for “SKKN+”—sent a cease-and-desist letter to Kimsaprincess Inc., demanding that it immediately withdraw the twenty pending applications and agree to forego use of the word “SKKN” in connection with any skin care or beauty products and/or services. Specifically, Beauty Concepts does not believe “[c]o-existence of the brands is  tenable, given the similarities [between the marks] and given the social media and online presence of . . . Ms. Kardashian.”
Beauty Concepts’ use-based application was filed just two days prior to the filing of the nineteen “SKKN BY KIM” applications, and the cease-and-desist letter claims Beauty Concepts has been using its “SKKN+” mark in commerce since at least July of 2017.
The cease-and-desist letter in its entirety can be found at the following link: https://www.scribd.com/document/517729700/Letter-re-Kimsaprincess-SKKN-trademark-redacted
The Federal Court of Australia set an unconventional precedent by concluding DABUS can be an inventor of a patent.1 DABUS, or the “Device for the Autonomous Bootstrapping of Unified Sentience,” is an artificially intelligent machine claimed to have invented a “Food Container and Devices and Methods for Attracting Enhanced Attention.”2
In nearly every other Governmental Patent Office, DABUS, or more broadly, artificial intelligence, is ineligible to be named as an inventor on a patent. For example, in the United States, the U.S. Patent and Trademark Office’s opinion is; “ . . . interpreting ‘inventor’ broadly to encompass machines would contradict the plain reading of the patent statues that refer to (natural) persons and individuals.”3 The European Union’s Patent Office believes, “The EPC (European Patent Convention) does not provide for non-persons, i.e. neither natural nor legal persons, as applicant, inventor or in any other role in the patent grant proceedings. In the context of inventorship, reference is made only to natural persons.” 4 The United Kingdom’s Patent Office also holds a similar view to the European Unions’. 5
Therefore, The Federal Court of Australia’s conclusion, “(a)n inventor as recognized under the (Patents) Act can be an artificial intelligence system or device(,)”6 is sure to change the patent landscape.
Be that as it may, DABUS has not yet been named an inventor of a patent in Australia yet. However, The Federal Court of Australia has ordered: “(t)he matter as to whether patent application no. 2019363177 satisfies the formalities under the Patents Regulations 1991 (Cth) and its examination be remitted to the Deputy Commissioner to be determined according to law in accordance with these reasons.”7
Consequently, Australian Patent Application No. 2019363177 is an Application to follow closely.
1 See Thaler v. Commissioner of Patents (2021) FCA 879 (30 July 2021) (Austl.).
2 See WO 2020/079499 A1
3 Devices and Methods for Attracting Enhanced Attention, decision of the Deputy Commissioner for Patent Examination Policy, Application No. 16/524,350, Decision on Petition, Page 4 (citing 35 U.S.C § 115).
4 Grounds for the EPO Decision of 27 January 2020 on EP 18 275 174, PK23498.
5 See Thaler v. The Comptroller-General of Patents, Designs And Trademarks  EWHC 2412 (Pat).
6 Thaler v. Commissioner of Patents (2021) FCA 879 at ¶ 222 (30 July 2021) (Austl.).
7 Id. at 1.
Yesterday, the USPTO granted Tesla, Inc. a design patent for the ornamental design of the Cybertruck, Tesla’s all-electric utility vehicle. Since the prototype’s unveiling in November 2019 at the Tesla Design Studio in Los Angeles, the Cybertruck has generated a substantial amount of buzz due to its unique appearance. The patent application for the design of the vehicle’s body was filed the same day as the Cybertruck’s reveal, and the corresponding registration has a term of fifteen years. While the Cybertruck is not expected to enter production until later this year, prospective buyers can make a $100 deposit towards purchasing the vehicle on Tesla’s website today.
(Image from Tesla’s website)
This is U.S. Patent No. D926,085.