A few weeks ago, the trademark dispute involving the Washington Redskins was back in the news again, with a federal district court judge ruling in favor of the cancellation of the “Redskins” word mark registered with the United States Patent and Trademark Office (USPTO). While this ruling does not invalidate all of the Redskins trademark rights per se, as we addressed when we discussed the internal USPTO ruling, it does deprive the Redskins of significant rights associated with its word marks (it’s logos and other marks not including the word “Redskins” are not subject to the decision.) So what does the ruling from the United States District Court for the Eastern District of Virginia in the case of Pro-Football, Inc. v. Amanda Blackhorse, et al. mean, and what can the Redskins do about it?
Many start ups begin with limited finances, forcing them to consider what they can and cannot afford at any given stage in development. While most small businesses and start ups question whether they can afford to pursue trademark registration as part of their brand development, what they cannot afford is to wind up on the wrong side of litigation for failing to fully explore on whose turf they may inadvertently be treading. It is easy for businesses of all sizes, whether starting up, re-branding, or expanding their growth into other areas of development, to unwittingly adopt a brand already in use by another business. Learning what, or who, is in a name is a step in the start up process that most cannot afford to skip.
In principle, the answer is “yes,” but doing so has become a lot more difficult under recent court decisions. Generally speaking, to obtain a utility patent you must have something that (1) contains patentable subject-matter; (2) is novel; (3) is non-obvious; (4) is specifically defined and fully disclosed; and (5) has utility. We provide further details on our patents and trade secrets page.
Both processes and machines qualify as patentable subject matter under Title 35 of the United States Code. Software patents are often criticized as patenting non-technical processes or otherwise providing monopoly power for abstract ideas or mathematical formulas, all of which are not patentable under current court precedent. On this basis, many argue that software is not patentable subject matter–that is, no matter how novel and non-obvious particular software is, software should never be eligible for patent protection, so the argument goes. Nevertheless, software is clearly patentable as a component part of a machine, but not as a stand-alone item. The United States Supreme Court suggested as much in its 2010 decision in Bilski v. Kappos, when it held that a business method–including one implemented in software–is not per se unpatentable. In practice, business methods are usually implemented in software.
The idea that software embodied in a machine ought to be patentable makes sense. Notwithstanding the position of software patent detractors, it is a simple and intuitive legal rule that a machine should not lose patent eligibility simply because it is programmable. If that were the case, most electronics would have issues obtaining patent eligibility, as many include a programmable chip to control their functions, and they usually can be updated with new software to change the operation of the chip.
There have been stories all over the national news media this week about a trademark spat between Duke University and the heirs of movie legend John Wayne. Wayne’s heirs are trying to register the trademarks DUKE and DUKE JOHN WAYNE for use on whiskey. Duke University opposed the registration applications before the U.S. Trademark Office last year, and now the heirs, apparently fed up, have filed a federal lawsuit back at Duke University. Continue reading “Duke and “The Duke” Duke it Out” »