Receiving full patent rights is desirable before introducing a new product to the marketplace. If the market venue is online, a patent for the new product is all-important as a merchant can expect copycat products shortly after introducing the new product.
A pending patent application allows the seller the right to announce the new product has ‘patent pending’. ‘patent pending’, though, is insufficient to protect the product as the merchant cannot avail herself of online legal protections, or pre-litigation actions.
An issued patent (full patent right) is desirable because the merchant has access to more tools with which to answer copycats.

An online merchant desired to introduce a new product to the home products industry.  A search for similar products showed the field to be particularly crowded. However, the merchant asserted the new product would contain improvements over the existing products.  The online merchant contacted DeWitty and Associates to begin the steps to obtain patent protection.

The number of competitors in the industry foreshadowed difficulty in the merchant being able to acquire sufficient market share for the new product. If the new product with its new improvements were introduced in the marketplace without legal protection, there would be a strong likelihood that competitors would copy the improvements.  Lack of legal protection would mean the merchant would have few tools to stop copycats.

After analyzing the new product with its improvements, currently existing products, and the goals of the merchant, we recommended a patent search, followed by a new patent application filed using the Track One – Prioritized Examination program of the U.S. Patent Office.  The patent search, performed on the USPTO database and search engine EAST, gave us the ability to prepare claims to sufficiently overcome previous patents. Through the Track One program, we expected to have a response on the patentabilty of the new product within 12 months.

After being accepted into the Track One – Prioritized Examination, we were able to receive an allowed patent in less than 3 months of filing.  Whereas the Track One program reports final deposition in around 6.5 months, we attribute the speedy decision to the detailed patent search performed on the product.  Our search led us to craft exact claims that the examiner could allow.

Securing early patent protection gives the merchant a strong barrier of protection around the new product, while also being able to warn potential copycats of the existing patent protection.  In the event copycat sellers do arise, the seller has more tools at its disposal to combat the copycats.

This case has shown the importance of knowing prior art, through a search, before submitting a patent application.  The Track One Examination program showed benefit to merchants by awarding full patent protection by the time the new product was offered online.

Background.  Online, trademarks can be bought and sold as keywords used in search engines-such is the business of Google and Bing.   Keywords are used to trigger paid advertisements on a web page following a search query. Tax filings show the keyword sales markets are large, currently over $30 billion annually.  However, many, and we think most, trademark owners remain unaware of the value of their marks within the online business model.

Several legal cases show the use of trademarks as keywords to be the exclusive right of the trademark owner.  For example, in December 2017, Birkenstock won a battle against Amazon when the district court in Dusseldorf, Germany ordered Amazon to stop using typo-targeting to direct shoppers to Birkenstock’s competitors during online searches.  Here in the U.S., cases such as Rescuecom Corp v. Google, 562 F.3d 123 also support a trademark owner’s exclusive right to use their trademark as a keyword.

Even though trademarks as keywords have been recognized as a legal right for owners, we were unable to locate a model or method of calculating the value of a trademark used online.  Our solution was to make one:

(Click above img. 1 to access site)

Image 1 is a screenshot of our online application to value a trademark as it is used online.  At this time, we invite trademark owners and other interested parties to test it free-of-charge.  Powered by an industry-specific algorithm known as the “L” factor, and metrics supplied by Google AdWords API, the application takes into consideration a trademark used as a keyword and the industry in which the trademark will be used.

We hope trademark owners will be able to use the application when considering which trademarks to pursue, i.e., comparing the cost of registering a trademark vs. its current online valuation.  In its beta-stage, the application is applicable to the Consumer Electronic industry only.  In coming weeks and months, we will be adding additional industry databases. Please provide us feedback so we may improve the tool.  Thanks.

Legal Protection for Fashion Experts

On Wednesday, June 21st, DeWitty and Associates, Chtd. attended “Fashion Design and Copyright Protection,” an event orchestrated by the Public Education and Information Division of the U.S. Copyright Office here in Washington, D.C. This standing room only event was a rare opportunity for artists and fashion creators of all kinds to join industry professionals in a review for legal protection in fashion. The discussion focused on the Star Athletica Decision (Star Athletica, L. L. C. v. Varsity Brands, Inc., et al, 580 U.S. ___ 2017,)  a case handed down by the U.S. Supreme Court in March 2017. As the host explained, the Supreme Court held that features incorporated into the designs of useful articles can be assigned copyright protection if the features can be perceived as a 2-D or 3-D work of art separate from the article, and they would qualify as a protectable pictoral, graphic, or sculptural work if they were imagined separate from the article itself. For the industry, this decision effectively ended the physical separability test which previously governed such decisions, and enacted a test of conceptual separability – evaluating features on the basis that they can be imagined separately from articles. In addition, the court decided that articles do not have to remain useful after the features are removed.
The effects of the Star Athletica decision have already begun to reverberate throughout the fashion industry.  Before ending the session, the host highlighted the recent claims brought against Forever 21 by the German company Puma for patent, trade dress, and copyright infringement of several of the shoes in Rihanna’s “Fenty” collection (Puma SE v. Forever 21, Inc., 2:17-cv-02523 (C.D. Cal). According to their complaint filed on March 31st, Puma’s “Creeper,” sneaker, the “Bow Slide” sandal, and “Fur Slide” sandal have been copied by Forever 21 in an effort to produce items that are confusingly similar and infringe upon the Fenty Trade Dress. In a nutshell, Puma is seeking an end to Forever 21’s sales of the items in question, fees and damages for the case, and a judgement for the infringement of their patent, trade dress, and copyrights. This will be a case in to watch in the coming months.