Brinks Gilson & Lione Attorney Leads Webinar on Preparing a Patent Disclosure for Prosecution Before the EPO

Linda Nattler, an IP attorney with the Ann Arbor office of Brinks Gilson & Lione, one of the largest intellectual property law firms in the U.S., conducted a webinar on June 28, 2016 entitled Preparing a Patent Disclosure for Efficient and Effective Prosecution Before the European Patent Office (EPO). The webinar launched the firm’s new series, Transatlantic Synergy: Drafting Patent Applications to Comply with Both the USPTO and the EPO Practice.

Patent applications drafted outside of Europe are sometimes difficult to prosecute before the EPO because claim amendments must pass a much stricter disclosure standard than in many other countries. Even if claims result in a granted patent, opposition proceedings before the EPO may lead to a revocation of the patent if claim amendments are held to be insufficiently disclosed in the description.

In the webinar, Nattler provided insight into the European disclosure requirements for claim amendments. She also noted strategies for drafting a patent disclosure that allows for a broad variety of claims amendments that will withstand scrutiny before and after grant.

A German native, Nattler focuses her intellectual property law practice on patent prosecution and IP portfolio management, with a particular emphasis on the areas of mechanics, electronics, hydraulics and computerized processes. Prior to joining Brinks, Nattler gathered extensive experience in U.S., European and German patent prosecution. While employed in Europe, she was admitted to practice before the European Patent Office. Nattler attended Thomas Cooley Law School on a full academic scholarship and graduated magna cum laude. She holds an undergraduate degree in physics from Universität Bayreuth in Germany.

Brinks Gilson & Lione
The attorneys, scientific advisors and patent agents at Brinks Gilson & Lione focus their practice in the field of intellectual property. Brinks is one of the largest intellectual property law firms in the U.S. Clients around the world use Brinks to help them protect and enforce their intellectual property rights. Brinks lawyers provide counseling in all aspects of patent, trademark, unfair competition, trade secret and copyright law.

More information is at www.brinksgilson.com.

Brooks Kushman Partners with Girl Scouts to Promote Diversity in STEM Education

In partnership with the Girl Scouts of Southeast Michigan, Intellectual Property Owners Educational Foundation and the U.S. Patent and Trademark Office (USPTO), Brooks Kushman was able to distribute over 160 IP Patches throughout southeast Michigan during the 2015/2016 Girl Scouts calendar year. The IP Patch was created to supplement the Innovation badge series.

The program was made available to the Brownie, Junior, Cadette, and Senior level Girl Scouts. To earn their IP Patch, the girls learn how to think like an inventor, how inventions can improve lives, how to think like an entrepreneur and how to identify and develop solutions for social problems.

Since the inaugural IP Patch workshop last year, the program has grown to an average of 55 attendees per session. This year a special workshop was hosted at the Detroit USPTO on April 23rd, which included a tour of the facility, one of just four Regional Offices in the United States, and a presentation by Midwest Regional Director Christal Sheppard. Brooks Kushman will host a total of four workshops during the 2015/2016 school year and anticipates hosting eight workshops during the next calendar year; one session for each age group with Girl Scouts of Southeast Michigan and Girl Scouts Heart of Michigan.

“We are excited to see the program grow and develop,” said Brooks Kushman Attorney Rachel Smith. “It is especially rewarding to see how each of the programs brings an awareness and enthusiasm for intellectual property. The girls have also demonstrated an eagerness to learn about the abundance of career opportunities available in IP law and other STEM industries.”

Brooks Kushman co-founded the workshop in an effort to promote STEM education and awareness of STEM career opportunities for women in an industry historically male-centric. Smith notes, “Research shows girls typically start losing interest in math and science during middle school; by providing a fun, dynamic, interactive workshop we increase the likelihood they will stay engaged with STEM learning throughout their academic careers. Building a diverse and inclusive industry starts with them.”

About Brooks Kushman P.C.
Brooks Kushman P.C. is a leading intellectual property (IP) and technology law firm with offices in Michigan and California, and represents clients nationally and internationally with respect to protection, enforcement and monetization of IP, including patents, trademarks, copyrights and trade secrets. The firm has more than 90 intellectual property professionals specializing in various technical disciplines, and has a reputation for providing leading IP counseling with a focus on the business objectives of their clients.

Brooks Kushman counts a number of Fortune 100 companies across a variety of industries among its clients. The firm is also recognized by leading legal publications and rankings, including Corporate Counsel magazine, U.S. News & World Report, Law360, Intellectual Asset Management, Managing Intellectual Property, and Intellectual Property Today.

For more information, please visit www.BrooksKushman.com.

Brooks Kushman hosts workshop for Girl Scouts to earn IP Patch at USPTO Detroit office

DETROIT (April 5, 2016) – Brooks Kushman will host an event on Saturday, April 23, 2016 from noon to 2 p.m. for Brownies in the Girl Scouts of Southeast Michigan to earn their IP Patch. The event will be held at the United States Patent and Trademark Office’s (USPTO) Regional Outreach Center, located at 300 River Place Dr. in Detroit.

During the event, Girl Scouts will attend workshops led by Brooks Kushman attorneys, where they will learn to identify and design their own Trademarks and create Copyrighted pieces of work. In addition to the standard IP Patch curriculum, the girls will also have a chance to meet and speak with USPTO Midwest Regional Director Dr. Christal Sheppard, and to take a tour of the facility, which is one of just four Regional Offices in the United States.

“We are proud to offer this opportunity for Girl Scouts to learn about the different tools to protect intellectual property,” said Brooks Kushman Shareholder Elizabeth Janda. “We have worked with Girl Scouts throughout the state to show girls that there is an abundance of career opportunities for them in IP law and other STEM industries. These events teach girls valuable lessons that could one day help them protect innovations in their careers. We are especially excited that the girls will have the special opportunity to tour the USPTO regional office and meet the leadership and staff there to learn more about their role in intellectual property.”

The IP Patch is available to four levels of Girl Scouts (Brownie, Junior, Cadette and Senior). It was created by the Girl Scouts as a supplement to the Innovation badge series with the help of industry partners like the Intellectual Property Owners Educational Foundation and the USPTO.

As Girl Scouts earn each of the four levels of the IP Patch, they will learn how to think like an inventor, how inventions can improve lives, how to think like an entrepreneur and how to identify and develop solutions for social problems.

Brooks Kushman Shareholder Elizabeth Janda, Senior Attorney Jennifer Ziegler and Associate, Rachel Smith will present and lead hands-on workshops during the event.

The event fee, which includes all supplies, a snack and the IP Patch, is $5 per girl. Interested Girl Scouts in troops that are part of the Southeastern Michigan Council can find more information and register for the event here.

About Brooks Kushman P.C.
Brooks Kushman P.C. is a leading intellectual property (IP) and technology law firm with offices in Michigan and California, and represents clients nationally and internationally with respect to protection, enforcement and monetization of IP, including patents, trademarks, copyrights and trade secrets. The firm has more than 90 intellectual property professionals specializing in various technical disciplines, and has a reputation for providing leading IP counseling with a focus on the business objectives of their clients.

Brooks Kushman counts a number of Fortune 100 companies across a variety of industries among its clients. The firm is also recognized by leading legal publications and rankings, including Corporate Counsel magazine, U.S. News & World Report, Law360, Intellectual Asset Management, Managing Intellectual Property, and Intellectual Property Today. For more information, please visit www.BrooksKushman.com.

Brooks Kushman Attorneys Guide Inventors and Students at Wayne State’s Patent Procurement Clinic

Brooks Kushman attorneys David C. Berry and Michael N. MacCallum recently were appointed adjunct professors at Wayne State University Law School, and will supervise Wayne’s successful Patent Procurement Clinic.

As a leader in intellectual property (IP) law, Wayne Law’s Patent Procurement Clinic is part of the U.S. Patent and Trademark Office’s Clinic Certification Program, and one of about 45 participating law school clinics in the country offering clients important services such as patentability services, patent application drafting, and responses to patent office rejections. The Wayne State clinic provides law school students interested in patent law the opportunity to learn practical skills such as patent application drafting, under the direction of experienced practitioners. The Clinic also provides pro bono patent legal services to metro Detroit inventors.

Adjunct professors Berry and MacCallum will teach students strategies and good practices regarding meeting with clients, conducting patentability searches, drafting patent applications, and prosecuting the applications before the Patent Office. Berry and MacCallum, who both are registered patent attorneys, supervise all of the clinic’s patent services provided by upper-level Law School students with degrees in engineering or science. They co-teach Wayne Law’s Patent Procurement Clinic and Advanced Patent Procurement Clinic courses.

Berry has more than 12 years of experience as a law school professor and over 15 years of law practice experience focusing on patent litigation and IP licensing. He provides counsel to Brooks Kushman’s clients on issues of patent and licensing disputes and has represented clients in all phases of litigation, including pre-trial proceedings, bench and jury trials and appeals, including arguing before the U.S. Court of Appeals for the Federal Circuit. Berry currently is chair-elect of the State Bar of Michigan Intellectual Property Law Section and is a member of the board of directors of the national Patent Pro Bono Advisory Council.

MacCallum’s practice focuses on preparing and prosecuting patent applications in the automotive and manufacturing industries. An alumnus of Wayne Law, he is also actively involved in post-grant proceedings before the Patent Office.

About Brooks Kushman P.C.
Brooks Kushman P.C. is a leading intellectual property (IP) and technology law firm with offices in Michigan and California, and represents clients nationally and internationally with respect to protection, enforcement and monetization of IP, including patents, trademarks, copyrights and trade secrets. The firm has more than 90 intellectual property professionals specializing in various technical disciplines, and has a reputation for providing leading IP counseling with a focus on the business objectives of their clients.

Brooks Kushman counts a number of Fortune 100 companies across a variety of industries among its clients. The firm is also recognized by leading legal publications and rankings, including Corporate Counsel magazine, U.S. News & World Report, Law360, Intellectual Asset Management, Managing Intellectual Property, and Intellectual Property Today.

For more information, please visit www.BrooksKushman.com.

Brinks Gilson & Lione attorney reviews USPTO’s proposed changes to the America Invents Act

ANN ARBOR – Sept. 9, 2015 – On August 19, 2015, the U.S. Patent and Trademark Office (PTO) announced a second round of proposed changes to the rules for America Invents Act (AIA) proceedings based on comments and feedback the PTO has received in the past year. Jon H. Beaupré, a shareholder in the Ann Arbor office of Brinks Gilson & Lione, one of the largest intellectual property law firms in the U.S., says the proposed changes have been eagerly anticipated.

“The USPTO recognized that although its new proceedings are working well, they can still be improved,” Beaupré said.

According to Beaupre, the proposed rules would implement the following key changes: allowing patent owners to submit a broader scope of evidence with a preliminary response; imposing enhanced certification requirements, akin to FRCP Rule 11; and clarifying that the broadest reasonable interpretation (BRI) standard applies in all cases except for patents that will expire during the proceedings. The proposed rules package also addresses several other topics and provides PTO commentary explaining why no rules changes are proposed for certain topics. Beaupre highlights the proposed changes below.

Patent Owner’s Preliminary Response
The PTO proposes amending its rules to allow the patent owner to file new testimonial evidence with its preliminary response, with the goal of preserving the petitioner’s right to challenge statements made by the patent owner’s declarant. The proposed rules expressly provide that no right of cross-examination of a declarant exists before institution so as to meet the three-month statutory deadline for issuing a decision on institution. The PTO proposes, however, amending the rules to provide that any factual dispute that is material to the institution decision will be resolved in favor of the petitioner for purposes of making a determination about whether to institute.

Rule 11-Type Certification
The PTO proposes amending 37 CFR § 42.11, which prescribes the duty of candor owed to the Office, to impose on all papers filed with the Board requirements that closely mirror Rule 11 of the Federal Rules of Civil Procedure. The amendment will maintain the existing language of the duty of candor while adding three paragraphs regarding the Rule 11-type certification. Unlike Rule 11, the proposed rules do not include a provision for monetary sanctions. In response to comments received about attorneys authoring expert reports and the filing unsupported expert reports, the PTO states that authority of the PTO to sanction a party for misconduct is robust and the proposed Rule 11-type certification would be applicable against both practitioners and parties. Responding to a comment received regarding fairness, the PTO also touts the Rule 11-type certification as a way to police the actions of counsel, as well as parties, in AIA proceedings.

Claim Construction Standard: The proposed rules would retain the BRI standard and clarify that it applies in all cases except for patents that will expire during the proceedings. The current rules apply the BRI standard to any “unexpired patent” but do not specify a time by which the patent must expire for the PTAB to apply a Phillips construction.

Patent Owner’s Motions to Amend
On this highly debated topic, the PTO does not include any proposed rules changes and instead notes its development of motion-to-amend practice through Board decisions. For example, the PTO cites the MasterImage 3D decision (IPR2015-0040, July 15, 2015, Paper 42) which clarifies that a patent owner must argue for the patentability of the proposed substitute claims over the prior art of record, including any art provided in light of a patent owner’s duty of candor and any other prior art or arguments supplied by the petitioner.

Regarding the burden to show patentability, the PTO notes that, “the ultimate burden of persuasion on patent owner’s motion to amend remains best situated with the patent owner, to ensure that there is a clear representation on the record that the proposed substitute claims are patentable, given that there is no opportunity for separate examination of these newly proposed substitute claims in these adjudicatory-style AIA proceedings.”

Additional Discovery and Obviousness
In seeking prior comments, the PTO had asked “Under what circumstances should the Board permit the discovery of evidence of non-obviousness held by the Petitioner, for example, evidence of commercial success for a product of the Petitioner?” After considering comments received, the PTO states that “…it believes the Garmin factors currently provide appropriate and sufficient guidance for how to handle requests for additional discovery, which the PTO will continue to decide on a case-by-case basis.” Accordingly, no rule changes are proposed regarding additional discovery and obviousness. With respect to patent owner requests for additional discovery regarding the petitioner’s product in support of a commercial success non-obviousness argument, the PTO indicates that some showing of nexus is required between the claimed invention and the information being sought through discovery. However, the PTO stops short of requiring a conclusive showing that the challenged claims read on the petitioner’s product, that the product was commercially successful, and that the alleged success resulted from the patented feature.

Real Party In Interest
There are no proposed rule changes on this topic. Instead, the PTO plans to revise the Trial Practice Guide to provide guidance on raising a challenge regarding a real party-in-interest identified by a party and will later provide guidance on issues such as timing of a challenge, providing proof of real party-in-interest, and correction the identification of a real party-in-interest.

On a related issue, the PTO states that the petitioner bears the burden of producing evidence of standing as well as the burden of persuasion on the issue.

Multiple Proceedings
Regarding the coordination of multiple PTO proceedings related to the same patent, such as a reissue, a reexamination and an AIA trial, the PTO notes that the Board will continue to exercise its discretion on a case-by-case basis as to whether a particular proceeding should be stayed, transferred, consolidated or terminated. The Board’s decision in a particular case will be based on optimizing efficiencies and promoting a fair result.

Extension of One Year Period to Issue a Final Determination
The PTO sees no reason to revise the rules to provide for specific circumstances under which “good cause” may be shown by a party to extend the term of the trial beyond one year. The PTO intends to continue striving to meet the one-year statutory time period for trial so as to preserve one of the core advantages of trial before the Board of being speedier at reaching a decision than a district court.

Oral Hearing
In response to comments received on permitting live testimony at oral hearings and changes to the format of oral hearings, the PTO proposes amending 37 CFR § 42.70 to require that demonstrative exhibits be served two days earlier than under the current rules, namely seven business days before oral argument.

The PTO confirms that it is currently planning to upgrade its ability to hold hearings in regional offices. Furthermore, the PTO states that it will strongly encourage panel members assigned to several related cases be present for all the sessions.

General Topics
The PTO proposes amending 37 CFR § 42.24 to implement a word count limitation, instead of page limitations, for petitions, patent owner preliminary responses, patent owner response, and petitioner’s replies. The PTO does not indicate these changes are intended to expand or shorten page limits; however, the change will likely allow parties to insert more figures and flow charts that have little or no effect on word count.

The public comment period for this second set of rule changes ends on October 19, 2015 and the PTO expects to finalize the rules by the end of 2015. A copy of the proposed rules may be found here. The PTO previously announced its first round of “quick fixes” in March of 2015 and expects to shortly publish a third set of proposed rules changes related to staffing of PTAB panels and the institution phase of proceedings.

Brinks Gilson & Lione
The attorneys, scientific advisors and patent agents at Brinks Gilson & Lione focus their practice in the field of intellectual property, making Brinks one of the largest intellectual property law firms in the U.S. Clients around the world rely on Brinks to help them protect and enforce their intellectual property rights. Brinks attorneys provide counseling in all aspects of patent, trademark, unfair competition, trade secret and copyright law. More information is available at www.brinksgilson.com.

Brooks Kushman Attorneys Help Lead USPTO Pro Bono Efforts

Southfield, Mich. – Brooks Kushman Shareholder Frank Angileri and Of Counsel David Berry have both joined the U.S. Patent and Trademark Office’s (USPTO) Pro Bono Steering Committee. The committee leads the USPTO’s nationwide effort to establish pro bono programs for financially under-resourced inventors and small businesses. Angileri will serve as a member of the steering committee and Berry will serve as the committee chair.

The pro bono program was developed as a result of the American Invents Act (AIA), signed into law by President Obama in 2011. Since its creation, the USPTO has worked with several intellectual property (IP) law associations to help create additional pro bono programs across the country.

Angileri’s practice at Brooks Kushman focuses on IP litigation. He has successfully tried patent, trademark, trade secret and copyright cases in Federal Courts nationwide. Angileri also serves as co-chair of Brooks Kushman’s Post Grant Proceedings practice and serves on the Board of Directors for Challenge Detroit.

Berry, a former IP law professor at Cooley Law School, provides counsel to Brooks Kushman clients on issues of patent and license disputes. He also serves as co-chair of the International Trademark Association’s Academic Committee and as a member of the American Intellectual Property Law Association’s Education and Patent Litigation Committees.

For more information on the USPTO pro bono program, visit the USPTO’s website.

About Brooks Kushman P.C.
Brooks Kushman P.C. is a leading intellectual property (IP) and technology law firm with offices in Michigan and California, and represents clients nationally and internationally with respect to protection, enforcement and monetization of IP, including patents, trademarks, copyrights and trade secrets. The firm has more than 90 intellectual property professionals specializing in various technical disciplines, and has a reputation for providing leading IP counseling with a focus on the business objectives of their clients.

Brooks Kushman counts a number of Fortune 100 companies across a variety of industries among its clients. The firm is also recognized by leading legal publications and rankings, including Corporate Counsel magazine, U.S. News & World Report, Law360, Intellectual Asset Management, Managing Intellectual Property, and Intellectual Property Today. For more information, please visit www.BrooksKushman.com.

Brinks Gilson & Lione launches webinar series on post-grant proceeding developments; first webinar is Sept. 30

ANN ARBOR/DETROIT – Sept. 10, 2014 -Brinks Gilson & Lione, one of the largest intellectual property law firms in the U.S., announces the Sept. 30 launch of a quarterly webinar series hosted by the firm’s Post-Grant Practice Group. The series will focus on recent developments in post-grant proceedings and will be led by Jon Beaupré, shareholder in the Ann Arbor office; Kelly Burris, managing shareholder of the Detroit office; and Rickard DeMille, attorney in the Chicago office.

The first webinar will be held on Tuesday, Sept. 30 from 1 to 2 p.m. EST and will cover various topics related to post-grant proceedings, including:

  • The latest statistics from the Patent Trial and Appeal Board (PTAB)
  • How to amend claims during post-grant proceedings
  • Examining discovery issues at the PTAB

There is no cost to attend the webinar and one hour of (Illinois) MCLE credit will be available; MCLE credit for other states requiring MCLE is available upon request. Learn more about the event or register here.

About the presenters:

Jon Beaupré, shareholder in the Ann Arbor office, counsels clients and litigates on their behalf in the areas of patent, trademark, copyright, trade secret and unfair competition law. He has represented a wide range of clients, from large multinational entities to small corporations, in federal courts and before the U.S. Patent and Trademark Office, the International Trade Commission, and the United States Court of Appeals for the Federal Circuit. His litigation experience includes trials, preliminary injunction hearings, Markman hearings, summary judgment proceedings, and all aspects of fact and expert witness discovery, as well as reexamination and Inter Partes review proceedings.

Kelly Burris is managing shareholder of Brinks’ Detroit office and co-chair of the firm’s Post-Grant Patent Practice Group. She focuses her practice on the preparation and prosecution of U.S. and foreign patent applications in the mechanical, materials science, and electrical arts. Burris is active with appeal proceedings in the United States Patent and Trademark Office (USPTO), at the Patent Trial and Appeal Board (PTAB).

Rickard DeMille’s intellectual property law practice includes patent prosecution and litigations. His patent practice focuses on the electrical, computer and mechanical arts. In particular, DeMille has experience prosecuting patent applications in fields ranging from semiconductors to software applications to office chairs. His practice also includes preparing and prosecuting petitions for inter partes review, as well as requests for both ex parte and inter partes reexamination with the USPTO.

Brinks Gilson & Lione
Brinks Gilson & Lione has 160 attorneys, scientific advisors and patent agents who specialize in intellectual property, making it one of the largest intellectual property law firms in the U.S. Clients around the world use Brinks to help them identify, protect, manage and enforce their intellectual property. Brinks lawyers provide expertise in all aspects of patent, trademark, unfair competition, trade secret and copyright law. The Brinks team includes lawyers with advanced degrees in all fields of technology and science. Based in Chicago, Brinks has offices in Washington, D.C., Research Triangle Park, N.C., Ann Arbor, Detroit, Salt Lake City and Indianapolis. More information is at www.brinksgilson.com.

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Brinks shareholder to serve as panelist for April 24 USPTO Patent Trial and Appeal Board America Invents Act Trial Roundtable

ANN ARBOR— April 11, 2014 – Jon Beaupré, a shareholder in the Ann Arbor office of Brinks Gilson & Lione, one of the largest intellectual property law firms in the U.S., has been selected to serve as a panelist at the April 24 United States Patent and Trademark Office (USPTO) Patent Trial and Appeal Board America Invents Act (AIA) Trial Roundtable, to be held on the campus of Cooley Law School in Auburn Hills, Mich.

The roundtable is one of eight being hosted nationwide from April through May to share information about the new AIA trials, including statistics, lessons learned and techniques for successful motions practice. The roundtables serve as a way for the USPTO to receive feedback about the trials on Inter Partes reviews, post grant reviews, covered business method reviews and derivations; the panel discussion aims to elicit public input.

At Brinks, Beaupré represents large multinational entities, as well as small corporations, in a variety of areas. He specializes in patent, trademark, copyright, trade secret and unfair competition law in a broad range of technologies including mechanical engineering, medical devices, wireless technology, software technology, business methods and industrial mechanical devices. He also prepares and prosecutes patents, manages patent portfolios and counsels clients regarding various patent issues.

Beaupré’s litigation experience includes trials, preliminary injunction hearings, Markman hearings, summary judgment proceedings, and all aspects of fact and expert witness discovery, as well as reexamination and Inter Partes review proceedings. He has represented clients before the USPTO, the International Trade Commission and the United States Court of Appeals for the Federal Circuit.

To learn more about the USPTO Patent Trial and Appeal Board AIA Roundtable series, please visit http://www.uspto.gov/ip/boards/bpai/ptab_aia_trial_roundtables_2014.jsp.

Brinks Gilson & Lione
Brinks Gilson & Lione has 160 attorneys, scientific advisors and patent agents who specialize in intellectual property, making it one of the largest intellectual property law firms in the U.S. Clients around the world use Brinks to help them identify, protect, manage and enforce their intellectual property. Brinks lawyers provide expertise in all aspects of patent, trademark, unfair competition, trade secret and copyright law. The Brinks team includes lawyers with advanced degrees in all fields of technology and science. Based in Chicago, Brinks has offices in Washington, D.C., Research Triangle Park, N.C., Ann Arbor, Detroit, Salt Lake City and Indianapolis. More information is at www.brinksgilson.com.

Brinks attorney notes funky trademark trend continues as Procter & Gamble files trademark request for Old Spice whistle

Pig calls and reality show catch phrases also aim for trademark protection

ANN ARBOR, MICH – March 18, 2014 – The familiar Old Spice whistle is a decades-old jingle, but owner Procter & Gamble has just now applied to federally register the sound as a trademark. The consumer products giant is joining companies and universities of all sizes in the trend toward registering non-traditional trademarks, according to Michael Spink, an intellectual property attorney who blogs (http://funkymarks.wordpress.com/) and tweets (@funkymarksblog) about unusual trademarks for motion, sound, color, scent, texture, and shape.

While unusual, Spink says the whistle trademark seems less so when considering both historical and recent non-traditional mark registrations for sound. For example, the NBC chime (the three notes G, E and C) has been used for more than 50 years, and was registered with the United States Patent and Trademark Office in 1971.

More recently, the University of Arkansas’ famous ‘hog call’, a distinctive crowd cheering “”Woooooooo. Pig. Sooie! Woooooooo. Pig. Sooie! Woooooooo. Pig. Sooie! Razorbacks!” was recently registered with the trademark office, according to Spink, who is a shareholder in the Ann Arbor office of Brinks Gilson & Lione, one of the nation’s largest intellectual property law firms. “In overcoming an initial rejection, the University submitted a substitute specimen, along with evidence of continuous and exclusive use for at least 5 years preceding the application, in order to obtain the trademark registration.”

Spink notes that while most types of non-traditional marks are registerable in the U.S., they can be more difficult to register than traditional marks, mainly due to the requirement that non-traditional marks be distinctive and non-functional.

“The first hurdle is that all trademarks must be distinctive, that is, capable of distinguishing the owner’s goods from those of others; however, certain non-traditional marks such as product configuration, color, scent, flavor and some sound marks can never be inherently distinctive,” said Spink. “In these cases, secondary meaning, which is distinctiveness acquired through consumer recognition, must be shown for registration on the Principal Register, which is the primary register of trademarks maintained by the United States Patent and Trademark Office (USPTO).”

As an example, Spink notes that a recent trademark application for the catch phrase, “Right Here” from the reality television show, Storage Wars, was recently rejected by the USPTO as not being source-identifying, rather considered by consumers simply as dialogue. Still, Spink notes that rejection doesn’t mean the TV show couldn’t seek a different mark in the category of ’Entertainment in the nature of live radio personality performances,’ perhaps in the auction calling segment of the show.

When non-traditional marks are merely appealing aspects of a product, or simply inherent features, they can only be registered on the principal register with proof of secondary meaning. For example, the sound emitted by a device in its normal course of operation requires secondary meaning to be accepted for trademark consideration.

Even when a non-traditional mark is sufficiently distinctive, the functionality doctrine may present a barrier to trademark registration. The functionality doctrine prevents the owner from limiting competition by trademarking a useful product feature to extend patent-like protection. Generally, the question asked by the Trademark Office is whether aspects of the design are essential to the use or purpose of the article, or affect the cost or quality of the article.

“If a shape of a product enables it to operate, or improves on another design in some way (i.e. cheaper, faster, lighter, stronger), then it cannot be trademarked,” said Spink. “Similarly, if a particular color makes a device more visible in an industry where visibility is desired, it cannot be trademarked.”

Whistles, pig calls and catch phrases notwithstanding, product packaging is still the most common type of non-traditional trademark registered in the U.S., followed by product configuration, sound and color. What’s next on the trademark horizon?

“Scent, texture and flavor trademarks, while increasing, are still fairly rare in the U.S., but I expect that to change over the next five to ten years,” said Spink.

Brinks Gilson & Lione
Brinks Gilson & Lione has 160 attorneys, scientific advisors and patent agents who specialize in intellectual property, making it one of the largest intellectual property law firms in the U.S. Clients around the world use Brinks to help them identify, protect, manage and enforce their intellectual property. Brinks lawyers provide expertise in all aspects of patent, trademark, unfair competition, trade secret and copyright law. The Brinks team includes lawyers with advanced degrees in all fields of technology and science. Based in Chicago, Brinks has offices in Washington, D.C., Research Triangle Park, N.C., Ann Arbor, Detroit, Salt Lake City and Indianapolis. More information is at www.brinksgilson.com.