Here’s the latest.

Wrong case, right result, Fed Circuit holds in trademark win for Sprouts Farmers Market

Reported by Barbara Grzincic on Reuters

The U.S. Court of Appeals for the Federal Circuit ruled on Tuesday that the Trademark Trial and Appeal Board should have used Lexmark to evaluate standing for trademark cancellation. However, finding no meaningful distinction between the Lexmark decision and the test the TTAB used, the court ultimately affirmed the TTAB decision cancelling Corcamore, LLC’s registration for the mark SPROUT. The Federal Circuit’s decision also affirms the sanctions imposed against Corcamore for discovery abuses, violations of case management, and procedural rules. According to Corcamore’s attorney, Charles “Lee” Thomason, the goal of Corcamore’s appeal was to reconcile the TTAB’s test for statutory standing with the Supreme Court’s ruling in Lexmark. Finding that Lexmark applied only to civil lawsuits and not administrative proceedings, the TTAB decided to apply the Federal Circuit’s test from Empresa Cubana del Tabaco v. General Cigar Co.

“The (Federal Circuit) agreed with Corcamore that the Lexmark two-prong test must be applied, and agreed that the TTAB did not apply Lexmark,” Thomason wrote. While the panel found that the Empresa Cubana test was “equivalent enough,” he said, that “may overlook that in Lexmark, the Supreme Court rejected ‘reasonableness’ tests as not what the statutory language contemplates.”

USPTO Sees ‘Unprecedented Growth’ In AI Patent Apps

Reported by Tiffany Hu on Law360

The U.S. Patent and Trademark Office issued a report on Tuesday acknowledging the expansion of patent applications containing artificial intelligence technologies. In fact, the USPTO’s report shows that AI-related patent applications have more than doubled since 2002. The report also notes that AI inventors are not all huddled in large cities like those in Silicon Valley. According to the report, there has been a notable increase in inventors coming from the Midwest. In addition to inventors coming from a broad geographical scope, inventors are also incorporating AI in a broad range of technologies. Tiffany Hu articulates the USPTO’s interest in adapting to the increase in AI-related patents. With the surge of these patent applications comes AI’s potential to contribute to U.S. economic activity. Hu also points out that at the American Intellectual Property Law Association’s virtual annual meeting held last week, USPTO Director Andrei Iancu stated that the agency is still looking out for further developments, which may require an update in intellectual property laws.  

“We are not at the point yet where the machine truly is in a singularity situation where they create themselves, they train themselves, they decide what to do and what to invent and completely operate autonomously,” Iancu said at the time. “If that’s not the case, then machines are still just a tool, a very advanced tool, but still just a tool for human use.”

Trademark Office Issues Guidance for World

Reported by Kyle Jahner on BloombergLaw

The U.S. Patent and Trademark Office offered guidance for examiners following the Supreme Court’s landmark decision. The Supreme Court’s decision in USPTO v. issued this past June stated that the addition of “.com” to an otherwise generic term could transform the entire phrase into a protectable trademark. Notably, however, while the terms like will no longer be automatically rejected, the path to registration is still not easy. According to Kyle Jahner, the marks must be distinctive to consumers and hold special meaning beyond their literal meaning.

The guidance cited the high court’s description of evidence that can indicate whether a trademark has acquired secondary meaning among consumers. Consumer surveys and declarations, advertising expenditures, and evidence of the extent, nature, exclusivity, and length of use can all support a claim of distinctiveness, the guidance said.

Additionally, the guidance noted that a term can still be deemed generic unregistrable despite acquiring secondary meaning. The term must identify the source of the product.

If the term before a top-level domain is deemed generic, examiners should require a disclaimer of the term, the guidance said. The Supreme Court said registration of “would not yield its holder a monopoly on the term ‘booking.’” Examiners would, in that example, require’s trademark to disclaim “booking” without “.com” attached.

Furthermore, the guidance reflected the Supreme Court’s recognition that registrations may be subject to narrower protections. Therefore, it may be more difficult for examiners to find likelihood of confusion in future proposed marks featuring similar words.