Recap of the SIP (Shelter in Place) Institute

The COVID-19 pandemic has forced many trials to be held virtually. Speakers Jaime Olin and Sarah E. Spires, with Moderator Mieke K. Malmberg, recounted some of the challenges and unexpected benefits of conducting their patent trial by remote video.

First, there were several preliminary considerations. Sorting out technical logistics was the primary concern. Both parties shared a technology coordinator, who they decided would be in the courtroom during the trial. Placing the coordinator in the courtroom was one way to resolve issues on the judge’s end. In order to prevent any technical failures, the speakers suggested using several large monitors, high-end cameras and microphones, assessing the strength of internet connections, and having a plan B if a given technology fails.

Exhibits were shipped to witnesses ahead of time with tamper tape that was to be removed on-camera. As for the trial itself, the speakers’ team decided to socially distance at their office in order to have some contact with each other. They felt this added a helpful level of interaction that would be lost if it was completely remote. The first ten minutes of a remote trial can feel awkward, but the routine quickly kicks in for everyone involved. However, as discussed below, one benefit of a remote trial is access to extra materials off-camera. The speakers noted they had to consistently remind themselves where the camera was with relation to private information.

The first real challenge was the location of witnesses. Witnesses can be located from California to Central Europe, requiring flexibility to accommodate time zone differences. During witness testimonies, there’s a risk that a witness can go rogue by reading things not seen in the video. The speakers encountered an interesting example of this when a German witness suddenly spoke in German to someone off-camera during his testimony. It also proved difficult to read the body language of witnesses, either due to cameras not capturing people’s body or because people react differently on-camera. Witnesses and attorneys practiced voice inflection to counteract the loss of body language.

There were several benefits along the way. The speakers enjoyed having dinner with their family at home, not having to waste time on travel, and of course not risking exposure to the virus. Regarding litigation, advantages included the ability to spread out pre-trial witness preparation, significantly lightening the load on work hours. During trial, extra monitors could be used to keep track of notes easily. The trial team also had the ability to communicate with each other via separate chat boxes. Several pre-trial formalities were withdrawn. For example, the counter designations, objections, and exhibit designations deadlines were reduced. As a result, late-night discussions with opposing counsel were no longer necessary.

It seemed the speakers found the advantages outweighed the drawbacks. The biggest disadvantage was the lack of trial team comradery. With a bit of luck, following the pandemic, team comradery will return while the benefits of video conferencing will remain.

Professor Tyler Ochoa of Santa Clara University School of Law and High Tech Law Institute gave a wonderful lecture about the trademark controversy surrounding the name change of the well-known band, Lady Antebellum.

The band chose to change their name this summer, June 2020, in response to the social unrest and Black Lives Matter movement. The word “Antebellum” romanticized the Old South and has been associated with slavery and racism. Yet, when the band decided to take action towards social responsibility, they allegedly infringed on the rights of another black person, Seattle-based blues singer, Ms. Anita White.

In June 2020, the band announced they were changing their name to “Lady A,” a moniker that had been used by Ms. White for over two decades. The band claims that they performed adequate research into the name and did not find any issues with adopting it. When they were alerted of their potential infringement they reached out to Ms. White to try to facilitate an agreement but without success.

In July 2020, the band filed suit in the Middle District of Tennessee seeking a declaratory judgement of non-infringement. In turn, Ms. White filed her own trademark infringement suit against the band in the Western District of Washington.

Not only is it likely that both parties will file motions to dismiss in their respective cases, but the courts also may decide to combine the cases in one venue. While the Tennessee case was filed first, the Washington case might have stronger jurisdiction over both parties as compared to Tennessee.

A trademark infringement case will likely boil down to the likelihood of confusion which depends on factors such as: strength of the mark, relatedness of the goods or services, similarity of the marks, evidence of actual confusion, marketing channels used by the parties, degree of purchaser care and sophistication, defendant’s intent, and the likelihood of expansion of a product line. Here, the two parties offer very similar goods and services and operate within the same marketing channels.

While this case is yet to be resolved, Big O Tires Dealers, Inc. v. The Goodyear Tire & Rubber Co. (10th Cir. 1977) was a similar case. Like the band, the defendant in this case was a junior user that was more famous and widely acclaimed than the plaintiff, the senior user. Yet the two companies produced more similar products than the music of the band and Anita White. Big O Tires invoked reverse confusion, when the junior user’s  use of the  mark results in confusion as to the origin of the senior user’s product. The outcome of Big O Tires focused on the amount of damages awarded to the plaintiff, specifically for corrective advertising. Courts still have many viable options to handle trademark infringement cases including, but not limited to, whether or not to grant injunctions, whether or not to allow the junior user to continue to use the trademark but award the senior user royalties, and the amount of damages to assign.

Peter Bromaghim, a former USPTO Trademark Examining Attorney and current Partner at Womble Bond Dickinson, provided an overview of how attorneys should consider approaching trademark registration for software-related clients. As a general starting point trademarks are not typically approached from an industry-specific perspective as they always require the same elements laid out by the USPTO. What can differentiate software and require more pre-filing strategy is filing a trademark on an intent-to-use basis.

The requirements for a software trademark registration include 1) determining whether the mark is for a good, a service, or both; 2) the field(s) of use; and 3) the functions. The presentation examined through case studies the differences between the requirements for the different classifications of software types.

To distinguish between a good or service the main consideration is whether the software is downloadable. When a piece of software is downloadable or pre-recorded and thus capable of transmission or distribution it is typically considered a good. This includes the growing field of the Internet of Things, which combines hardware and software. On the other hand, cloud-based, web-based, software/platform as a service (SaaS/PaaS,) and software design, consulting, and development are classified as services. There is a growing trend that a software application will fall under both classifications. This distinction between goods and services comes into play when filling under Class 9 (goods) vs. Class 42 (services.)

It is important not to forget some of the more general classifications that get at the underlying product or services provided, such as Class 43 (restaurant services) or Class 35 (legal docket management services for others). This requires a good deal of back and forth with the client to determine as many of the functions and fields of potential use as possible.

The specimen requirements for software programs are another key difference from other more traditional trademarks. For downloadable software, a specimen must include 1) a website with “sufficient information to download or purchase” or 2) a screenshot of the mark in use on the software. For recorded software, the specimens are more similar to traditional marks allowing use on the goods themselves, the packaging or the point-of-sale display (including an electronic point-of-sale display) or a screenshot of the mark in use on the software. For non-downloadable software services, there are more specimen options so long as the mark is “use[d] in the sale or advertising of the services.” There are some instances, such as business-to-business services, that may be more tricky as they typically are not promoted via websites.

Even after the initial filing, the client should be prepared for additional concerns. When broad fields and functions are used in the initial filing, it is important to consider that fields and functions for which the trademark is not in actual use will need to be deleted before final registration is given. Extensions can be requested in increments of six months for up to three years after the date of notice of allowance. Another aspect to keep in mind is that the broader the fields and functions the more likely you are to receive third-party opposition or refusals. All of these nuances require attorneys to be prepared specifically for registering trademarks for software.