“Taken together, there is no rhyme or reason to the Federal Circuit’s strict construction of ‘obtain’ in the patent context and its loosey-goosey approach in the trademark realm.”
On July 26, 2024, the U.S. Court of Appeals for the Federal Circuit issued a precedential opinion in Softview LLC v. Apple Inc., Nos. 2023-1005, -1007. In that decision, the court construed an estoppel provision in a U.S. Patent and Trademark Office (USPTO) regulation promulgated under the America Invents Act (AIA). That regulation provides that a patentee is precluded from “taking action inconsistent with [an] adverse judgment, including obtaining in any patent…. a claim which is not patentably distinct from a finally refused or canceled claim.” (Emphasis added). The court narrowly construed the regulation to apply only to newly issued claims and amended claims, but not to existing, unamended claims.
Just nine months earlier, the Federal Circuit had given its blessings to a series of rulings addressing a section of the Lanham Act which allows for the filling of a petition in the USPTO to cancel a federal trademark registration which was “obtained” fraudulently. Those rulings concluded that, with regard to USPTO “maintenance” filings that are made subsequent to the issuance of a registration, affidavits of continuing use and applications for renewal are acts of “obtaining” a registration, while an affidavit seeking to make an existing registration incontestable is not an act of “obtaining” a registration. See Wepner, “Great Concepts; Not So Great Reasoning.”
In this author’s view, taken together, there is no rhyme or reason to the Federal Circuit’s strict construction of “obtain” in the patent context and its loosey-goosey approach in the trademark realm. I agree with Softview in that new and amended patent claims were truly “obtained” in the proceeding in question, as they simply did not exist beforehand; while existing claims are exactly what they were when the USPTO issued them. On the trademark side, while I previously suggested that all acts of maintenance—or none of them—should be deemed acts of “obtaining” a registration, in light of Softview, I am now of the belief that they all create situations analogous to “amended” patent claims in the Softview context, and should all be treated as acts of “obtaining” a registration.
The Softview Decision
Softview was an appeal from a decision of the Patent Trial and Appeal Board (PTAB) in two inter partes reexaminations of U.S. Patent No. 7,461,353, which had previously been the subject of an inter partes review (IPR) proceeding before the PTAB. A number of claims had been held invalid by the PTAB in the reexaminations under 37 C.F.R. §42.73(d) (3), which prohibits a patent owner from “obtaining in any patent: (i) A claim that is not patentably distinct from a finally refused or canceled claim.” (Emphasis added.) These included amended claims as well as claims which had previously been issued, but had not been amended.
The Federal Circuit in Softview held that the estoppel regulation in question applies only to new or amended claims but not previously issued claims. It reasoned:
“Drawing a distinction between obtaining a new claim and maintaining a previously issued claim makes sense. It is reasonable to characterize “obtaining” a new claim that is not patentably distinct from a finally refused or canceled claim as an “action inconsistent with the adverse judgment” under 37 C.F.R. §42.73(d) (3), because such an action can fairly be viewed as an effort to circumvent the prior adverse judgment. By contrast, seeking to maintain an already issued claim cannot be viewed as circumventing a subsequent decision on related claims.”
Softview, slip op. at 14.
The Crown, Torres and Great Concepts Decisions
In Crown Wallcovering Corp. v. The Wallpaper Manufacturers Ltd., 188 U.S.P.Q. (BNA) 141 (T.T.A.B. 1975), the Trademark Trial and Appeal Board (TTAB) examined Section 14(c) of the Lanham Act, which allows for the filing of a petition to cancel a federal registration which was “obtained” fraudulently. It noted that, in the past, it had concluded that the foregoing language contemplated not only the initial securance of a registration, “but the maintenance thereof, i.e., the securance of continuing rights of registration, by fraud.” (Emphasis added.) Such “continuing rights” are achieved through, e.g., an affidavit of continuing use under Section 8. The TTAB concluded in Crown that filings made to seek incontestability under Section 15 also could be the subject of a fraud challenge under Section 14. Thereafter, in Torres v. Cantine Torresella S.r.l., 808 F. 2d 46 (Fed. Cir. 1986), the Federal Circuit expressly held that fraud in obtaining a renewal under Section 9 does constitute fraud in “obtaining” a registration.
Last year, in Great Concepts, LLC v. Chutter, Inc., 84 F. 4th 1014 (Fed. Cir. 2023), a divided panel of the Federal Circuit abrogated Crown and held in connection with the service mark DANTANNA’S (for a steak and seafood restaurant) that fraud in seeking incontestability under Section 15 does not constitute fraud in “obtaining” a registration for Section 14 purposes.
Can the Patent and Trademark Precedents Be Reconciled?
Shortly after Great Concepts was decided, and long before Softview, this observer suggested that either all post-registration filings (under Sections 8, 9 and 15) should be deemed acts of “obtaining,” or none of them should. I then cast my vote in favor of none, on the basis that obtaining and maintaining are simply different concepts. My perhaps overly simple analogy was that to “obtain” a car, one buys or leases it, but when one changes the oil or rotates the tires, that is called maintenance.
With the advent of Softview, I am no longer so sure. In that regard, let us focus on patent claims which have been amended, which are treated as “obtained” in Softview. In my view, the Federal Circuit was correct in treating amended claims in the same way as new claims. An amended patent claim, by definition, will differ in scope from the unamended version. The right to exclude built in to that amended claim will thus be new and different. And even if (as is likely) the amendment has narrowed the claim, while the patentee may have given up some coverage in making the amendment, the patentee has gained a claim that is most likely less susceptible to invalidation than the original claim.
With those thoughts in mind, let us now take a fresh look at post-registration filings under Lanham Act Sections 8, 9 and 15. One might argue that each of them seeks what is a de facto “amendment” to the registration.
Consider first those Sections 8 and 9 filings. Their primary purpose is to extend the term (although, technically with Section 8, the filing actually stops the PTO from cancelling the registration). So, in a sense, the expiration date of the registration is “amended.” This is no small thing. We often talk about how trademarks can be perpetual. While a common law trademark can potentially last indefinitely, a registered trademark must be nourished with periodic filings and filing fees.
Sections 8 and 9 filings can also be seen as “amendments” in a more literal sense. In each case, the filing must identify on which of the goods and services enumerated in the original registration the mark is still being used at the time of the post-registration filing. See 15 U.S.C. §1058 (b) (1)(B) and 37 C.F.R. §2.183(d). That list can be shorter than the list of goods and services in the original registration; but such filings are still acts of “obtaining.”That leaves us with Section 15. The court in Great Concepts went to great pains to point out that “registration and incontestability are different rights,” 84 F. 4th at 1021, in that incontestability makes a registration harder to invalidate. But cannot that be seen as another type of “amendment,” not unlike the narrowed (and less likely to be invalidated) patent claims at issue in Softview? If you will allow me to again invoke the automobile analogy, making a filing under Section 15 is not unlike trading in a bottom-of-the-line car to “obtain” the premium model with more bells and whistles. A Section 15 filing allows a trademark registrant to “obtain” an upgraded registration.
For example, with regard to the registration at issue in Great Concepts, Reg. No., 2,929,764, the mark was DANTANNA’S and the services were steak and seafood restaurants. From the date of its issuance, the ‘764 Registration was prima facie evidence of the validity of the mark DANTANNA’S and its ownership by Great Concepts (see 15 U.S.C. § 1057(b)). It enjoyed constructive nationwide use as of the application’s filing date (see id., §1057(c)). It also served as constructive notice of Great Concept’s claim of ownership of the mark DANTANNA’S for steak and seafood restaurants as of the date of registration (see id., §1072)). And it was prima facie evidence of Great Concepts’ exclusive right to use DANTANNA’S in commerce on or in connection with steak and seafood restaurants.
After the Section 15 affidavit was filed (long after issuance and before the ‘764 Registration was cancelled by the TTAB, and again after that decision was reversed by the Federal Circuit), the registration continued to enjoy each and every one of the foregoing benefits. But it also was armed with incontestability, which meant that the ‘764 Registration was now conclusive evidence of, inter alia, the validity of the mark DANTANNA’S, its ownership by Great Concepts, and Great Concepts’ exclusive right to use DANTANNA’S in commerce (see id., §1115(a)). These new rights were not created in a vacuum. They were and are inextricably tied to the original registration, and have no existence apart from the original existence.
Thus, the Section 15 affidavit in Great Concepts is not all that different from the amendments to patent claims at issue in Softview. Those claim amendments were filed long after the patent issued. If, say, such an amendment was the addition of a new limitation, the original claim limitations remained in place. The specification may well have been unchanged. The effective filing date and expiration date may have remained unchanged, as well as the universe of potential prior art. The inventorship may have remained unchanged. Not surprisingly, with all of those connections to the original patent, the amended claims were deemed “obtained” in Softview and thus subject to potential estoppel.
Time for Another Look
Thus, perhaps it can be said that both an amended patent claim and an “amended” trademark registration (i.e. one for which filings under Sections 8, 9 and/or 15 have been made) are updated versions of the underlying intellectual properties which bear a different constellation of rights and susceptibilities. I suggest that they all have been “obtained.”
Accordingly, when viewed in light of Softview, the Federal Circuit’s treatment of “obtained” in the trademark context merits—at a minimum—another look.
Image Source: Deposit Photos
Author: Wavebreakmedia
Image ID: 81996574
