Our weekly SoCal IP Institute meeting on Monday, April 8, 2013 will be a discussion of one Federal Circuit case regarding design patents and a TTAB concurrent use proceeding decision. Brief synopses of the cases appear below.
In re Owens, Case No. 2010-1426 (Fed. Cir. March 26, 2013) (available here).
The Federal Circuit affirmed the BPAI’s rejection of design patent Application No. 29/253,172 for failure to comply with 35 U.S.C. § 112, ¶ 1. The ‘172 application was a continuation of a prior patented bottle, U.S. Design Pat. No. D531,515. The Federal Circuit affirmed the BPAI’s rejection, where: 1) the Board’s finding that nothing in the parent application’s disclosure suggested anything uniquely patentable about the top portion of the bottle’s front panel is supported by substantial evidence because the parent disclosure does not distinguish the now-claimed top trapezoidal portion of the panel from the rest of the pentagon in any way; and 2) unclaimed boundary lines typically should satisfy the written description requirement only if they make explicit a boundary that already exists, but was unclaimed, in the original disclosure.
America’s Best Franchising, Inc. v. Roger Abbott (TTAB March 20, 2013) (available here).
In this concurrent use proceeding, the Board awarded the applicant America’s Best Franchising (ABF) concurrent use registrations for three marks in the entire United States except for the state of Arizona. Applicant ABF is the junior user and ABF conceded that Abbott uses his mark in the state of Arizona. The Board held that even though Abbott was the first user, his “inaction over a considerable period of time, abandoned [his] right to expand use of the mark… outside of the trading area, and that by virtue of such abandonment, [Abbott’s] prior use of the mark cannot serve to preclude [ABF], a[n] innocent user.”
All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, April 8, 2013 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.