Please join us Monday, April 08, 2024 at noon where we will discuss a decision made by the U.S. Court of Appeals for the Federal Circuit in Rady v. Boston Consulting Group, Inc., No. 22-2218 (Fed. Cir. Apr. 1, 2024), a 9th Circuit Court of Appels decision in BBK Tobacco & Foods, LLP v. Central Coast Agriculture, Inc., No. 22-16190 (9th Cir. Apr. 1, 2024), and a TTAB decision in In re Sheet Pile, LLC, Serial No. 97010763 (TTAB Mar. 19, 2024).

Rady v. Boston Consulting Group, Inc., No. 22-2218 (Fed. Cir. Apr. 1, 2024)

The U.S. Court of Appeals for the Federal Circuit upheld the district court’s decision to invalidate patent claims related to improvements to physical asset provenance via blockchain in the case, Rady v. The Boston Consulting Group. Rady had accused Boston Consulting Gropu (”BCG”) of using his personal academic research to develop a blockchain-based authentication and tracing tool designed to eliminate industry issues regarding supplies of false gemstones. Rady also claimed that BCG fired him because he confronted the company over its potential misappropriation of his research and development for De Beers’ Tracr blockchain platform for gemstone authentication. The CAFC found that Rady’s patent claims did not offer an improvement to the underlying blockchain technology, and were directed to an abstract idea, merely identifying items by their unique physical features. The court also highlighted that, while the system may be useful in preventing the counterfeiting of gemstones, utility is not the measure of patent eligibility.

BBK Tobacco & Foods, LLP v. Central Coast Agriculture, Inc., No. 22-16190 (9th Cir. Apr. 1, 2024)

The U.S. Court of Appeals for the Ninth Circuit has ruled that district courts can cancel trademark applications if there is no bona fide intent to use the mark. This decision was made in the case of BBK Tobacco & Foods LLP v. Central Coast Agriculture, Inc., where BBK Tobacco (”BBK”) sued Central Coast Agriculture (”CCA”), alleging that the CCA’s “Raw Garden” cannabis product label infringed upon BBK’s “RAW”-branded smoking products. While the district court ruled in favor of CCA on the trademark infringement claims, it invalidated four of their trademark applications as BBK’s complaint also included a petition to cancel several of CCA’s trademarks. This decision was affirmed by the Ninth Circuit, marking the first time it has addressed whether district courts have this jurisdiction.

In re Sheet Pile, LLC, Serial No. 97010763 (TTAB Mar. 19, 2024)

A construction materials company, Sheet Pile LLC, faced rejection from the Trademark Trial and Appeal Board (“TTAB”) regarding their attempt to register “ZPile” as a trademark. The TTAB upheld the examining attorney’s decision, labeling the mark as “merely descriptive” of a type of metal sheet pile known in the industry. Despite Sheet Pile’s comparison of their proposed mark to “EPHONE,” which has been registered, the TTAB cited evidence showing that “Z PILE” is commonly used in the industry to describe the shape and form of sheet pile products. The TTAB did not examine whether the mark fails to function, focusing on its descriptive nature.

Jonathan Gutierrez, law clerk at SoCal IP, will lead the discussion.