Publications

The holidays are upon us.  Given that everything seems to be protected by intellectual property rights, could someone protect Christmas?

The most likely candidate to try to patent Christmas would be Santa Claus.  But (assuming all other issues are addressed), could Santa Claus really patent Christmas? Assuming that Santa Claus invented Christmas, then perhaps he could! U.S. patent law provides patent protection for pretty much everything. Under the patent laws of the U.S. and most foreign countries, the first person to invent something may file a patent application seeking a patent for that invention. Unlike most foreign countries, however, U.S. law provides a one-year grace period in which a patent application can be filed after certain types of public disclosures by the inventor.

So, maybe Santa Claus could file a patent application in the U.S. if he was the first to invent something that has not been publicly disclosed in the last year.  Of course, there may be no one else claiming to have invented Christmas, so it might not be much of a problem. And, because Santa has been operating in secret for hundreds of years, there cannot have been any public disclosures.

Santa might even be able to patent the method he uses to deliver gifts to every child all around the world on Christmas Eve.  His method might be treated as a business method, which could make it more difficult to patent, even though it is not really a “business.”

What other kinds of Christmas inventions could someone patent?  The United States Patent and Trademark Office lists over 980 U.S. patents with the word “Christmas” in the title.  These patents cover items like Christmas lights, decorations, Christmas tree stands and turntables, antler apparatus, Christmas tree watering devices, fire extinguishers, and many other things.  My personal favorite is the “Apparatus to Prevent Pets Climbing a Christmas Tree.”  The need for this invention is obvious if you have ever had kittens or cats around your Christmas tree.  The patent states: “as is generally well known in the prior art, pets, such as cats, like to climb up the branches of a Christmas tree. Oftentimes this will result in knocking some of the ornaments off such tree.  These ornaments may be broken…”  The invention is basically a giant circular screen that clips under the lowest branches of the tree. Based on my experience, however, this device will have precisely the opposite of its intended effect. Any cat who sees the screen will climb up or jump onto it.  And, anyway, who really wants to stop cats from climbing Christmas trees?!  It’s too much fun to watch them perched on the branches and swatting ornaments (and to see their embarrassed looks when they land clumsily on the floor)!

What about a new type of Christmas tree?  Trees (and all plants) are patentable, as long as they are new and developed by humans, not discovered in nature.  In fact, a flying reindeer would be patentable (if it was created by humans), as living organisms can be patented.

How about a new nose for Rudolph — one that allows Santa to turn it on remotely from the sleigh?  The nose could be patentable, as could the software that runs it.

New designs for Christmas stockings and ornaments?  The designs for these objects (separate from the objects themselves) are patentable as design patents.  A design patent offers less protection than a utility patent and has a shorter lifespan, but it does protect against designs that are substantially the same as the patented design.

Maybe Santa could protect signature laugh (“Ho, Ho, Ho!”) or his red suit.  The phrase could be trademarked, just as business names and logos, as long as Santa uses it in commerce and was the first to use it.  The red suit might be protectable as a trademark or possibly as trade dress, or more likely as a design patent.  Unlike a patent that expires, however, a trademark has the advantage of lasting indefinitely.

What about your favorite Christmas carol?  The traditional carols are now in the public domain and belong to everyone, but any new song (lyrics and music) is protected by copyright as soon as it is created.  Unlike a trademark, copyright protection only lasts for the life of the author plus a specific number of years.

How about Christmas cookies?  Or that special eggnog recipe? Recipes can be protected and are usually best protected as trade secrets, provided that they are not easily reverse-engineered.  (Think how long Coca-Cola has been around, and it’s still a secret.)

Of course, the most important thing about Christmas is not what can be protected under the law, but the spirit of giving and sharing the holidays bring.  So, have a wonderful holiday season and may the New Year be filled with peace and joy!

Stay tuned for Part 2 of our Holiday Horror Series on December 2nd. 

The United States Supreme Court is considering whether the doctrine of laches will bar a patent infringement claim filed within the Patent Act’s six-year damage limitations period set forth in 35 U.S.C. §286.  The case before the Court is SCA Hygiene Products AB v. First Quality Baby Products LLC, 767 F.3d 1339 (Fed. Cir. 2014).

SCA owned a patent for adult incontinence products.  In 2003, SCA sent First Quality, a competitor, a cease and desist letter, accusing First Quality of infringement.  First Quality responded that it did not infringe SCA’s patent because the patent was invalid.  In 2004, SCA filed an ex parte reexamination of its patent.  The patent was confirmed in 2007.  SCA did not inform First Quality of the reexamination.  During this time, First Quality invested heavily in expanding its business.  In 2010, almost seven years after first notifying First Quality of its infringement, SCA filed an infringement suit against First Quality.  First Quality moved for summary judgment of non-infringement on the grounds that laches barred the claim.  The district court granted First Quality’s motion.

The defense of laches requires the defendant to prove an unreasonable and inexcusable delay by the plaintiff in filing suit and prejudice to the defendant.  In determining whether laches is a defense, a court must balance the equitable factors, including the length of the delay, the severity of the prejudice, the plaintiff’s excuses for the delay, and the defendant’s culpability.  A delay of more than six years establishes a presumption that the delay is unreasonable and inexcusable and caused prejudice to the defendant.  The burden the shifts to the plaintiff patent owner to produce evidence that the delay was excusable or not unreasonable, or that the defendant was not prejudiced.  If the plaintiff satisfies this burden, then the defendant must prove the elements of laches.

On appeal to the Federal Circuit, SCA argued that laches should not apply to a claim brought within the six-year limitations period for damages, and that the time that its patent was under reexamination (three years) should not count, meaning that its suit was filed only four years after SCA learned of First Quality’s infringement.

The Federal Circuit rejected SCA’s argument and affirmed the district court’s decision granting summary judgment for First Quality.  The court held that the presumption of laches was established because SCA’s delay exceeded six years.  The court further held that SCA had not met its burden to produce evidence of excusable or reasonable delay, or lack of prejudice to First Quality.  The court explained that it was not reasonable for SCA to delay almost three years after the reexamination concluded to file suit against First Quality – SCA should have sued First Quality earlier.  With respect to prejudice to First Quality, the court held that First Quality had suffered prejudice as a result of SCA’s delay because it had invested in expanding its product line during that period of time.

SCA’s petition for certiorari to the Supreme Court was granted on May 2, 2016.  SCA relied on a 2014 Supreme Court case (Petrella v. Metro-Goldwyn-Mayer, 134 S. Ct. 1962 (2014)) that held that laches does not apply to copyright infringement cases brought within the three-year damage limitations period of the Copyright Act.  SCA argued that the rationale of Petrella should apply to patent infringement cases – laches should not apply during the six-year damage limitations period set forth in §286 of the Patent Act.  First Quality argued that the reasoning of Petrella should not apply.  First Quality contended that §286 is not a statute of limitations (which requires a plaintiff to file suit within a specific period of time after learning of its claim), but a merely a backwards limit on the recovery of damages.

On November 1, 2016, the Supreme Court held oral argument.  The justices were sympathetic to SCA’s position, asking First Quality why laches should remain a defense when the patent statutes do not specifically provide for the defense.  Based on the oral argument, those following the case predict that the Court will reverse the Federal Circuit’s decision and hold that laches does not apply to patent infringement suits brought within the six-year damage limitations period.

If voters in California  approve Proposition 64 which would legalize the possession and use of marijuana for recreational purposes, it is without question that the sunshine state will see a huge increase in the number of businesses within the cannabis industry. According to a November 7, 2016 Forbes article, the passage of Proposition 64 could add $8.38 billion in annual sales to an already robust medical market worth an estimated $2.83 billion.  Despite what happens at the voting polls on November 8, marijuana is still illegal under federal law and this makes branding marijuana strains,  paraphernalia or services related primarily to marijuana tricky.

One example of this is the recent problems a cannabis entrepreneur faced in seeking to register two trademarks.  JJ206, LLC sought to register the marks POWERED BY JUJU and JUJU JOINTS with the USPTO, for “smokeless cannabis vaporizing apparatus, namely, oral vaporizers for smoking purposes; vaporizing cannabis delivery device, namely, oral vaporizers for smoking purposes.” The Examining Attorney refused registration of the marks based upon lack of lawful use of the mark in commerce.

Under Section 1 of the Lanham Act (15 USC 1051),  the registration of a trademark requires use in commerce.  Section 45 of the Lanham Act (15 USC 1127) defines “commerce” as all commerce which may lawfully be regulated by Congress.  If the goods or services covered by a mark are unlawful, actual lawful use in commerce is not possible, and a refusal under Trademark Act Sections 1 and 45 will be made. But what about the situation where the goods or services are lawful under state law and illegal under federal law.

While vaporizing devices for cannabis may be legal in certain states, they are illegal under the federal Controlled Substances Act (CSA).  The CSA makes it unlawful to sell, offer for sale, or use any facility of interstate commerce to transport drug paraphernalia, defined as “any equipment, product, or material of any kind which is primarily intended or designed for use in manufacturing, compounding, converting, concealing, producing, processing, preparing, injecting, ingesting, inhaling, or otherwise introducing into the human body a controlled substance, possession of which is unlawful under [the CSA].”  Where goods or services in a trademark application are identified as primarily intended or designed for use in ingesting, inhaling, or otherwise introducing cannabis or marijuana into the human body, it constitutes unlawful drug paraphernalia under the CSA.

JJ206’s argument that it only intends to do business in states which allow for the sale and distribution of marijuana was not persuasive.  The TTAB noted that whether a product or service is lawful within a state is irrelevant to the question of federal registration when it is unlawful under federal law.  Because “commerce” is defined in the Trademark Act as commerce lawfully regulated by Congress, that which is illegal under federal law cannot be lawful “commerce” under the Trademark Act.  As such, any application to federally register any goods or services that are illegal under federal law will be refused, regardless if it is legal under state law.

So what’s a California cannabis entrepreneur to do?  One could rely on common law trademark rights.  Common law rights arise from actual use of a mark in commerce and no registration is required to establish common law rights.  However, enforcement can present the challenge of establishing proof of the date of first use.  Additionally, common law trademark rights are limited to the actual geographic scope of use established through evidence.

State trademark registration would be an improvement over common law rights.  In California registration is prima facie evidence of ownership of a valid mark and the exclusive right to use the mark for the covered goods or services within California.  Granted seeking registration in California and the other states in which marijuana is legal may not be as convenient or cost effective as a single federal registration and you can’t file based on intent to use, but it is still preferred over relying on common law rights.

Another strategy would be to seek registration for an ancillary product or service that does not violate the CSA.  The application could be filed based on either use in commerce or intent to use. If the mark is registered, the owner would be entitled to argue that the subsequent use by a third party would cause likelihood of confusion and infringe its trademark rights.