This morning, the Federal Circuit released two precedential opinions in cases appealed from the Patent and Trademark Office. One is a trademark case, and the other is a patent case. Notably, Judge Lourie dissented in the trademark case. The Federal Circuit also released two nonprecedential orders dismissing appeals. One was in an appeal from the Court of Appeals for Veterans Claims, and one was in an appeal from the Court of Federal Claims. Here are the introductions to the opinions and links to the dismissals.
In re Brunetti (Precedential)
Erik Brunetti appeals a decision of the Trademark Trial and Appeal Board (“Board”). The Board affirmed the examining attorney’s refusal to register the word FUCK as a trademark for certain goods and services because it failed to function as a trademark. In re Brunetti, No. 88308426, 2022 WL 3644733 (T.T.A.B. Aug. 22, 2022). We reject many of Mr. Brunetti’s arguments but nonetheless conclude that the decision of the Board lacks sufficient clarity, and, accordingly, we vacate and remand for further proceedings.
Lourie, Circuit Judge, dissenting
“[A] trademark is not a trademark unless it . . . tells the public who is responsible for a product.” Jack Daniel’s Props., Inc. v. VIP Prods. LLC, 599 U.S. 140, 146 (2023); see 15 U.S.C. § 1127 (a trademark must “indicate the source” of the applicant’s goods and “distinguish [the applicant’s] goods . . . from those manufactured or sold by others”). Substantial evidence supports a conclusion that the f-word cannot do so for the classes of goods in Brunetti’s applications. I therefore respectfully dissent.
Global Health Solutions LLC v. Selner (Precedential)
In 2011, Congress passed and the President signed the Leahy-Smith America Invents Act of 2011, Pub. L. No. 11229, 125 Stat. 284, 284-341 (Sept. 16, 2011) (“AIA”). Among other innovations, “the AIA changed how priority is determined, by converting the U.S. patent system from a first-to-invent to a first-inventor-to-file system.” SNIPR Techs. Ltd. v. Rockefeller Univ., 72 F.4th 1372, 1374 (Fed. Cir. 2023). Prior to the AIA’s enactment, a first inventor could obtain a patent even if a second inventor filed an application for the same invention first, as long as the first inventor could prove she was the first to invent. That was the essence of our prior “first-to-invent” system. Under the AIA, by contrast, a first inventor will generally not be entitled to a patent if a second inventor files his application first. This is a consequence of our transition to a “first-to-file” system.
The AIA does, however, preserve a limited opportunity for a first-inventor second-filer to obtain a patent despite another person filing his application first: where the first-filer derived the invention from the second-filer. That is, the first-inventor second-filer can try to prove that she conceived of the invention and communicated that invention to the first-filer before he filed his patent application. The AIA permits a first-inventor second-filer to pursue such a claim against a first-filer in a derivation proceeding.
This case marks our court’s first review of an AIA derivation proceeding that was litigated in the Patent Trial and Appeal Board (“Board”). Global Health Solutions LLC (“GHS”) and Marc Selner each filed a patent application covering the same subject matter. After discovering Selner’s application, GHS filed a petition for an AIA derivation proceeding against Selner, contending that, although Selner filed his patent application first, he was not the true inventor. Rather, according to GHS, that distinction belongs to its founder, Bradley Burnam, who is listed as the inventor on GHS’ patent application.
Before the Board, GHS alleged that Burnam conceived of the invention prior to Selner, and he communicated his invention to Selner; therefore, Selner derived his purported invention from Burnam. For this reason, GHS argued that its patent application should be granted despite Selner’s earlier filing date. The Board disagreed, ruling in Selner’s favor.
GHS now appeals. Before us, GHS contends that the Board committed multiple errors, each requiring reversal. GHS additionally argues that, at minimum, we should remand for the Board to consider GHS’ alternative request that Burnam be named a co-inventor on Selner’s patent application. As we see no merit in any of GHS’ contentions, we affirm.