April 8, 2009(C) Dinsmore & Shohl LLP1 INTELLECTUAL PROPERTY BOOT CAMP IN THE CANDLE WORLD Joshua A. Lorentz, Esq. Dinsmore & Shohl LLP National Candle

April 8, 2009April 8, 2009 (C) Dinsmore & Shohl LLP (C) Dinsmore & Shohl LLP 11

INTELLECTUAL INTELLECTUAL PROPERTY BOOT CAMP PROPERTY BOOT CAMP IN THE CANDLE WORLDIN THE CANDLE WORLD

Joshua A. Lorentz, Esq.Joshua A. Lorentz, Esq.Dinsmore & Shohl LLPDinsmore & Shohl LLP

National Candle Association National Candle Association Annual Meeting, New OrleansAnnual Meeting, New Orleans


Public PolicyPublic Policy

Competition is GoodCompetition is Good Copying considered goodCopying considered good

Restraint On Competition is BadRestraint On Competition is Bad Monopoly considered BadMonopoly considered Bad

Intellectual Property laws attempt to Intellectual Property laws attempt to balance these competing interests balance these competing interests


Types Of Intellectual Types Of Intellectual PropertyProperty

PatentsPatents Trade SecretsTrade Secrets TrademarksTrademarks Trade DressTrade Dress CopyrightsCopyrights


PatentsPatents

Grants an inventor the right to exclude Grants an inventor the right to exclude others from making, using, offering for others from making, using, offering for sale, or selling the patented invention in sale, or selling the patented invention in the United States, or importing the the United States, or importing the invention into the United Statesinvention into the United States


Types Of PatentsTypes Of Patents

Utility – functional aspects of Utility – functional aspects of Process/method, machine, article of manufacture, or Process/method, machine, article of manufacture, or

composition of mattercomposition of matter 20 years from filing date20 years from filing date

Design – ornamental designDesign – ornamental design 14 years from the date of patent grant14 years from the date of patent grant

Plant – plants that are novel and nonobviousPlant – plants that are novel and nonobvious 20 years from filing date20 years from filing date


Types Of Utility PatentsTypes Of Utility Patents

A process or method for producing a useful, concrete, A process or method for producing a useful, concrete, and tangible result (e.g., computer software, a new e-and tangible result (e.g., computer software, a new e-business model, a process for manufacturing something business model, a process for manufacturing something previously made by hand) previously made by hand)

A machine (e.g., something with moving parts or A machine (e.g., something with moving parts or circuitry, such as an engine, a new kind of printer, etc.) circuitry, such as an engine, a new kind of printer, etc.)

An article of manufacture (e.g., garden tools, containers, An article of manufacture (e.g., garden tools, containers, a tire) a tire)


Types Of Utility PatentsTypes Of Utility Patents

A composition of matter (shampoo, soft drinks, A composition of matter (shampoo, soft drinks, a drug) a drug)

An improvement of an invention in one of the An improvement of an invention in one of the above categories above categories


Patents Requirements:Patents Requirements:

UtilityUtility

Novelty Novelty

Non-obviousnessNon-obviousness


Patents - UtilityPatents - Utility

Must be usefulMust be useful Fairly easy threshold to overcomeFairly easy threshold to overcome

Slot machines - found to be usefulSlot machines - found to be useful

Laws of nature, physical phenomena and Laws of nature, physical phenomena and abstract ideas are not patentable no abstract ideas are not patentable no matter how useful matter how useful


Patents - NovelPatents - Novel

It must be newIt must be new

In the US: Must never have been made In the US: Must never have been made public, in any way, anywhere in the public, in any way, anywhere in the world, 1 year prior to filing of the patentworld, 1 year prior to filing of the patent

Most other countries: No grace periodMost other countries: No grace period File before you publicly discloseFile before you publicly disclose


Patents - UnobviousPatents - Unobvious

Must be unobvious to one of ordinary skill Must be unobvious to one of ordinary skill in the artin the art

Motivation or suggestion in the art to Motivation or suggestion in the art to combine teachings? combine teachings? KSRKSR may limit may limit mechanical casesmechanical cases


Patent MarkingPatent Marking

A patentee who makes or sells patented A patentee who makes or sells patented articles is required to mark the articles with the articles is required to mark the articles with the word "Patent" and the number of the patent. word "Patent" and the number of the patent.

Penalty for failure to mark is that the patentee Penalty for failure to mark is that the patentee may not recover damages from an infringer may not recover damages from an infringer unless the infringer was duly notified of the unless the infringer was duly notified of the infringement and continued to infringe after the infringement and continued to infringe after the notice. notice.


Patent MarkingPatent Marking

Patent PendingPatent Pending No legal effectNo legal effect Does provide notice of pending application Does provide notice of pending application


Design Patents Design Patents – Ornamental – Ornamental DesignDesign


Patent InfringementPatent Infringement

DirectDirect Meet every limitation of claimMeet every limitation of claim

IndirectIndirect ContributoryContributory InducementInducement


Patent InfringementPatent Infringement

Willful InfringementWillful Infringement Treble damages = 3 X damagesTreble damages = 3 X damages Requires objective recklessness - the infringer acted Requires objective recklessness - the infringer acted

despite an objectively high likelihood that its actions despite an objectively high likelihood that its actions constituted infringement of a valid patent constituted infringement of a valid patent

No intentNo intent required required

Totality ofTotality of the the circumstancescircumstances


Willful Infringement – Totality of Willful Infringement – Totality of Circumstances May Include Circumstances May Include

Whether infringer deliberately copiedWhether infringer deliberately copied Rely on reasonable opinion from competent attorneyRely on reasonable opinion from competent attorney

Freedom-To-Market OpinionFreedom-To-Market Opinion Non-infringement/Invalidity OpinionNon-infringement/Invalidity Opinion

Sophistication of defendant – size and financial Sophistication of defendant – size and financial conditioncondition

Duration of defendant’s misconductDuration of defendant’s misconduct Remedial action by defendantRemedial action by defendant Defendant’s motivation for harmDefendant’s motivation for harm Attempt to conceal behaviorAttempt to conceal behavior


Hosley Int’l Trading Corp. Hosley Int’l Trading Corp. v. Designcov. Designco, Northern District of Illinois 2002, Northern District of Illinois 2002

Defendant’s cauldron shaped candle holder Defendant’s cauldron shaped candle holder found not to infringe Plaintiff's design patent for found not to infringe Plaintiff's design patent for a similar cauldron shaped candle holdera similar cauldron shaped candle holder

Didn’t contain the features which Didn’t contain the features which distinguished the patented design from distinguished the patented design from prior artprior art - ornamentation on handle and a - ornamentation on handle and a decorative ring decorative ring

These features made Plaintiff’s design These features made Plaintiff’s design patentable, so important in the infringement patentable, so important in the infringement analysisanalysis


Reachi v. EdmondReachi v. Edmond, Ninth Circuit 1960, Ninth Circuit 1960

Defendant’s candle-lamp didn’t infringe Defendant’s candle-lamp didn’t infringe Plaintiff’s design patent for similar candle-lampPlaintiff’s design patent for similar candle-lamp

““Looked alike” enough to be competitive Looked alike” enough to be competitive products, BUTproducts, BUT

Technical differences in the shape and Technical differences in the shape and construction of the lamp made the accused construction of the lamp made the accused design different enough that design different enough that a a purchaser purchaser wouldn’t be deceived into thinking it was wouldn’t be deceived into thinking it was the patented productthe patented product


Ball Aerosol v. Limited Ball Aerosol v. Limited BrandsBrands, Federal Circuit 2009, Federal Circuit 2009

Plaintiff’s patent for a candle holder with feet Plaintiff’s patent for a candle holder with feet and a cover which doubled as a base was and a cover which doubled as a base was invalid for obviousness invalid for obviousness

Prior art disclosed patent for candle can with Prior art disclosed patent for candle can with feet and separate patent for combination feet and separate patent for combination cover-basecover-base

Obvious to a person of ordinary skill to Obvious to a person of ordinary skill to combine these elements to address the combine these elements to address the problemproblem of candle scorching of candle scorching


Ball Aerosol v. Limited Ball Aerosol v. Limited BrandsBrands, Federal Circuit 2009, Federal Circuit 2009

Further, Defendant’s product didn’t Further, Defendant’s product didn’t infringe the patent because the claim infringe the patent because the claim specified that the feet were to rest on the specified that the feet were to rest on the covercover

Even though Even though the Defendant’s product the Defendant’s product was reasonably capable of being put was reasonably capable of being put in this configuration, Defendant didn’t in this configuration, Defendant didn’t put the feet on the coverput the feet on the cover


REMEMBERREMEMBER…..…..

File File BEFOREBEFORE you you DISCLOSEDISCLOSE

You can have a You can have a PatentPatent on an Invention... on an Invention...

BUTBUT not have the not have the FREEDOM TO FREEDOM TO PRACTICEPRACTICE it……… it………


REMEMBERREMEMBER…… ……

ImportantImportant to perform to perform Freedom-To-Freedom-To-PracticePractice assessment/opinion assessment/opinion BEFOREBEFORE large Initiatives…..large Initiatives…..


Are you still with me????Are you still with me????

Questions????Questions????


TrademarksTrademarks

Include any word, name, symbol, or Include any word, name, symbol, or device (or any combination of these) device (or any combination of these) which is used in commerce to identify which is used in commerce to identify and distinguish the goods or services of and distinguish the goods or services of one entity from those of anotherone entity from those of another


TrademarksTrademarks

Must be Must be distinctivedistinctive

Virtually anything capable of indicating Virtually anything capable of indicating source of goods/servicessource of goods/services

Descriptiveness is a common problem for Descriptiveness is a common problem for

trademarks used on scents and candlestrademarks used on scents and candles


In re Primal Elements, In re Primal Elements, Inc.Inc., Trademark Trial & Appeal Board 2004, Trademark Trial & Appeal Board 2004

Application for BOTANICALLY BASED Application for BOTANICALLY BASED for candles rejected as merely descriptive for candles rejected as merely descriptive

Considered in relation to candles, Considered in relation to candles, mark mark immediately conveyed information immediately conveyed information about the productabout the product – ingredients made – ingredients made from plantsfrom plants

Considered descriptive use of phrase on Considered descriptive use of phrase on applicant’s own website!applicant’s own website!


In re Lumi-Lite Candle In re Lumi-Lite Candle CompanyCompany, Trademark Trial & Appeal Board 2002, Trademark Trial & Appeal Board 2002

CAKE CANDLE rejected by Trademark CAKE CANDLE rejected by Trademark Office as genericOffice as generic

Fairly widespread use of mark by third Fairly widespread use of mark by third parties parties

Sufficient to show Sufficient to show public understood public understood the mark to refer to entire category of the mark to refer to entire category of candlescandles which resemble cakes which resemble cakes


Trademark ExamplesTrademark Examples

Word: Kodak, Coke, Kleenex Word: Kodak, Coke, Kleenex Symbol: Bass Red Triangle, Starbucks Symbol: Bass Red Triangle, Starbucks Device (Trade Dress): Tide Box, Coke Device (Trade Dress): Tide Box, Coke

Bottle, Car Shape Bottle, Car Shape Color: Pink for fiberglass Color: Pink for fiberglass Sound: NBC Chimes, ESPN Sports Sound: NBC Chimes, ESPN Sports

Center Ditty Center Ditty


Trademarks Trademarks

Trademark rights may continue indefinitely, Trademark rights may continue indefinitely, provided that the owner continues to use the provided that the owner continues to use the mark and the mark does not become a generic mark and the mark does not become a generic term (e.g., escalator, linoleum, zipper) term (e.g., escalator, linoleum, zipper)

Common law trademark rights arise when the Common law trademark rights arise when the mark is actually used in commence mark is actually used in commence

Federal registration is Federal registration is notnot required to establish required to establish rights in a trademark rights in a trademark


Examples of Benefits of Examples of Benefits of Federal RegistrationFederal Registration

Constructive notice nationwide of owner’s Constructive notice nationwide of owner’s claimclaim

Jurisdiction in Federal courtsJurisdiction in Federal courts Statutory remedies, e.g., treble damagesStatutory remedies, e.g., treble damages May be filed in U.S. Customs to prevent May be filed in U.S. Customs to prevent

importationimportation


USPTO Descriptiveness USPTO Descriptiveness Examples: Candle Marks Examples: Candle Marks

CINNAMOROLL – AllowedCINNAMOROLL – Allowed Composite mark, unique spelling Composite mark, unique spelling suggestssuggests

cinnamon scentcinnamon scent

SWEET VANILLA CINNAMON- SWEET VANILLA CINNAMON- Abandoned – Failed to overcome Abandoned – Failed to overcome descriptiveness rejectiondescriptiveness rejection immediatelyimmediately conveys scent conveys scent


USPTO Descriptiveness USPTO Descriptiveness Examples: Candle MarksExamples: Candle Marks

WARM CINNAMON – Approved for publicationWARM CINNAMON – Approved for publication Section 2(f) applicationSection 2(f) application, claimed acquired , claimed acquired

secondary meaning through substantially exclusive secondary meaning through substantially exclusive and continuous use for 5 yearsand continuous use for 5 years

CINNAMON HEART- Registered with CINNAMON HEART- Registered with disclaimer of “cinnamon”disclaimer of “cinnamon” Disclaim descriptive portionDisclaim descriptive portion of otherwise eligible of otherwise eligible

markmark Others can use “cinnamon,” but not CINNAMON Others can use “cinnamon,” but not CINNAMON

HEARTHEART


USPTO Descriptiveness USPTO Descriptiveness Examples: Candle MarksExamples: Candle Marks

CINNAMON FROSTING- Supplemental CINNAMON FROSTING- Supplemental Register, “cinnamon” disclaimedRegister, “cinnamon” disclaimed Amendment and disclaimer in response to Amendment and disclaimer in response to

descriptiveness rejectiondescriptiveness rejection

Supplemental Register doesn’t offer all Supplemental Register doesn’t offer all the benefits of registration, but: the benefits of registration, but: Can use Can use ® symbol and mark is on the ® symbol and mark is on the

federal registerfederal register


Building Distinctiveness Building Distinctiveness for Descriptive Marksfor Descriptive Marks

Proof of Proof of five yearsfive years of of substantially exclusivesubstantially exclusive and and continuouscontinuous use of a designation use of a designation as a as a markmark by the applicant may prove the mark has by the applicant may prove the mark has acquired distinctivenessacquired distinctiveness Substantial advertising expenditures may also prove Substantial advertising expenditures may also prove

acquired distinctiveness acquired distinctiveness Consumer surveys showing that the public views the Consumer surveys showing that the public views the

proposed mark as an indication of the source of the proposed mark as an indication of the source of the product or service are helpfulproduct or service are helpful

The more descriptive the mark, the more The more descriptive the mark, the more evidence is requiredevidence is required


S.C. Johnson v. Lever S.C. Johnson v. Lever BrothersBrothers, Eastern District of Wisconsin 1991, Eastern District of Wisconsin 1991

Plaintiff claimed SNUGGLE MORNING Plaintiff claimed SNUGGLE MORNING FRESH fabric softener infringed GLADE FRESH fabric softener infringed GLADE MORNING FRESH air freshenerMORNING FRESH air freshener

Because Plaintiff owned registration, Because Plaintiff owned registration, court presumed MORNING FRESH was court presumed MORNING FRESH was not descriptive or genericnot descriptive or generic

Defendant couldn’t overcome Defendant couldn’t overcome presumptionpresumption


S.C. Johnson v. Lever S.C. Johnson v. Lever BrothersBrothers, Eastern District of Wisconsin 1991, Eastern District of Wisconsin 1991

MORNING FRESH is suggestive, not descriptive MORNING FRESH is suggestive, not descriptive for fragrancefor fragrance

It doesn’t immediately tell consumers the It doesn’t immediately tell consumers the fragrance - some imagination is requiredfragrance - some imagination is required

Still, no infringement because of difference in Still, no infringement because of difference in products and strong house marks (GLADE, products and strong house marks (GLADE, SNUGGLE)SNUGGLE)


Fair Use of Trademarks Fair Use of Trademarks ((Marilyn Miglin Model Makeup, Inc. v. Jovan, Inc.Marilyn Miglin Model Makeup, Inc. v. Jovan, Inc., Northern , Northern District of Illinois 1983)District of Illinois 1983)

Others can use mark in good faith to Others can use mark in good faith to describe productdescribe product

Owner of PHEROMONE for fragrances Owner of PHEROMONE for fragrances couldn’t prevent competitor from couldn’t prevent competitor from marketing fragrance as “pheromone marketing fragrance as “pheromone based”based”

Fragrance did contain pheromone and Fragrance did contain pheromone and was marketed under separate name, was marketed under separate name, ANDRON ANDRON


Proper Use of Proper Use of TrademarksTrademarks

A trademark should always be used as A trademark should always be used as an adjective, followed by a noun which is an adjective, followed by a noun which is the generic or descriptive name of the the generic or descriptive name of the product or service: product or service:

KLEENEX® tissues KLEENEX® tissues Q-TIP® cotton swabs Q-TIP® cotton swabs STYROFOAM® brand plastic foam STYROFOAM® brand plastic foam


Proper Use of Proper Use of TrademarksTrademarks

You should also try to distinguish the You should also try to distinguish the mark from other text (e.g., by using mark from other text (e.g., by using capitalized, bold or italicized letters) capitalized, bold or italicized letters)


Trademarks - Trademarks - USING ® AND USING ® AND

“TM” PROPERLY“TM” PROPERLY Can only use the ® designation next to Can only use the ® designation next to

the mark if it is the mark if it is federallyfederally registered registered

However, you can use “TM” (or “SM” for However, you can use “TM” (or “SM” for service marks) even if the mark is not service marks) even if the mark is not registered registered Puts others on notice that you are claiming Puts others on notice that you are claiming

common law rights in the mark common law rights in the mark


Trade DressTrade Dress

An arrangement of identifying An arrangement of identifying characteristics or decorations connected characteristics or decorations connected with a product or service, whether by with a product or service, whether by packaging or otherwise, which is packaging or otherwise, which is intended to make the source of the intended to make the source of the product or service distinguishable from product or service distinguishable from another and to promote its sale another and to promote its sale


IP Questions???? IP Questions????


Thank You!!!Thank You!!!

Josh LorentzJosh Lorentz

Dinsmore & Shohl LLPDinsmore & Shohl LLP


Dinsmore & Shohl LLPDinsmore & Shohl LLP

is a full-service law firm with over 400 attorneys practicing in nine is a full-service law firm with over 400 attorneys practicing in nine offices in four states. For the past 100 years, Dinsmore & Shohl offices in four states. For the past 100 years, Dinsmore & Shohl has provided a broad range of integrated services to meet the has provided a broad range of integrated services to meet the needs of both large and small businesses as well as institutions, needs of both large and small businesses as well as institutions, associations, governments, professional firms and individuals. associations, governments, professional firms and individuals.

Documents

April 8, 2009(C) Dinsmore & Shohl LLP1 INTELLECTUAL PROPERTY BOOT CAMP IN THE CANDLE WORLD Joshua A. Lorentz, Esq. Dinsmore & Shohl LLP National Candle