December 10, 2019

Federal Circuit Court Decisions For Week Ending November 15, 2019

In re Copeland-Smith, No. 2018-1968 (November 12, 2019) (nonprecedential); Trademark Application No. 85/498,107.

Key point(s):

  • Generic terms are generally not enough to distinguish a mark from another mark.
  • Evidence of third-party use bears on the strength of a mark, but the third-party use must be in a related field of use.

Galperti, Inc. v. Galperti S.R.L., No. 2019-1150 (November 13, 2019) (nonprecedential); Trademark Reg. No. 3,411,812

Key point(s):

  • In a claim for fraud on the Trademark Office, a “substantially exclusive” use does not merely involve any other use of the mark, but the use of the mark has to be “significant.”
  • Columbia Sportswear N.A., Inc. v. Seirus Innovative Accessories, Inc., Nos. 2018-1329, 2018-1331, 2018-1728 (November 13, 2019) (precedential) (3-0); Patent Nos. 8,453,270, D657,093

    Key point(s): 

    • While the district court can find waiver based on litigation conduct, it can excuse waiver because of an intervening change in the law.

    Koninklijke KPN N.V. v. Gemalto M2M GMBH., Nos. 2018-1863, 2018-1864, 2018-1865 (November 15, 2019) (precedential) (3-0); Patent Nos. 6,212,662

    Key point(s):

    • A claim directed to improving the functionality of one tool (e.g., error checking device) in an existing system (e.g., data transmission error detection system) does not necessarily need to recite how that tool is applied in the overall system (e.g., to perform error detection) to constitute a technological improvement that is patent-eligible.

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