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2021 | VOL. 30 | NO. 1
Bright Ideas
A publication of the Intellectual Property Law Section of the New York State Bar Association
Prosecution of Generic.com News Reporting and the
Correction of Inventorship
Trademarks in a Instagram Photo:
Under the America Invents Act
Post-Booking.com World Recent Fair Use Rulings
New York State Bar Association
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Contents Bright Ideas
2021 | Vol. 30 | No. 1
Features Regulars
6 Prosecution of Generic.com Trademarks in a
Post-Booking.com World 2 Submission of
Articles
By Joelle A. Milov
3 Message From
the Chair
13 Correction of Inventorship Under the
America Invents Act
Michael Oropallo
By Eric Saparli
5 Message From
the Editor
16 News Reporting and the Instagram Photo:
Recent Fair Use Rulings
Jonathan Bloom
24
By Jonathan Bloom Section Committees
and Chairs
25 Welcome New
Section Members
Bright Ideas Editor-in-Chief
Jonathan Bloom
Weil, Gotshal & Manges LLP
Submission of Articles 767 Fifth Avenue
New York, NY 10153
Anyone wishing to submit an article, announcement,
jonathan.bloom@weil.com
practice tip, etc., for publication in an upcoming issue
of Bright Ideas is encouraged to do so. Articles should be Executive Editor
works of original authorship on any topic relating to Rory J. Radding
intellectual property. Submissions may be of any length. Mauriel Kapouytian Woods LLP
15 W 26th St
Submissions should preferably be sent by e-mail to New York, NY 10010
incoming Editor-in-Chief, Sarah Ryu, at: rradding@mkwllp.com
sarah.ryu@weil.com.
At-Large Members of the Executive Committee
David B. Bassett Raymond A. Mantle Section Officers
Chair
Michael A. Oropallo
Barclay Damon LLP
moropallo@barclaydamon.com
Accommodations for Persons with Disabilities:
NYSBA welcomes participation by individuals with Vice-Chair
disabilities. NYSBA is committed to complying with Brooke Erdos Singer
all applicable laws that prohibit discrimination against Davis & Gilbert LLP
individuals on the basis of disability in the full and equal 1740 Broadway
enjoyment of its goods, services, programs, activities, New York, NY 10019
facilities, privileges, advantages, or accommodations. bsinger@dglaw.com
To request auxiliary aids or services or if you have any
questions regarding accessibility, please contact the Bar Treasurer
Center at 518-463-3200. William Robert Samuels
Warshaw Burstein LLP
Bright Ideas is a publication of the Intellectual Property wsamuels@wbny.com
Law Section of the New York State Bar Association.
Members of the Section receive a subscription to NYSBA.ORG/IP
the publication without charge. Each article in this
publication represents the author’s viewpoint and not
that of the Editors, Section Officers or Section. The
accuracy of the sources used and the cases, statutes,
rules, legislation and other references cited is the
responsibility of the respective authors.
Publication Date: January 2021
Copyright 2021 by the New York State Bar Association.
ISSN 1530-3934 (print) ISSN 1933-8392 (online)
Message from the Chair
2020 . . . . What a practices online as well as the challenges and opportuni-
long, strange trip it’s ties facing clients and in-house counsel. We will also hear
been! By the time this about the nuances of litigating and mediating cases via
issue comes out, this Zoom and by other virtual platforms.
unprecedented year
NYSBA has adjusted its registration and pricing to
will be in our rearview
encourage participation. To many of you who have had
mirror, but its effects—
neither the resources nor the time to travel to New York
harsher for some than
City to attend an Annual Meeting, this year is an oppor-
for others—will be
tunity to build your practice, stay up to date, and earn
with us forever. To
CLE credits.
those who have lost
loved ones, my deep- After a year of all of us working remotely—be it
est sympathy. For all from a home office, a closet, or the kitchen table—I am
of us, 2021 will be time cautiously optimistic that our scientists and innovators
for renewal. Great will enable us to return to human-to-human interaction
challenges lie ahead. in 2021. Toward that end, the Executive Committee and
Michael A. Oropallo Section leadership are working on future Section events,
One of the con-
including a return to the traditional Fall Meeting that was
tinuing challenges for
the genesis for relationships that many of us developed
the Section will be coping with the loss of our in-person
and that has made the IP Section inclusive and strong. I
meetings, networking, and getting used to our new virtual
encourage you to participate and look forward to meeting
world. This happens to be the theme of this year’s NYSBA
many of you—ideally in person.
Intellectual Property Section’s Annual “Meeting” (held
virtually, of course) scheduled for January 20 (1:00 p.m.– In the meantime, I wish you all a healthy and safe
4:30 p.m.) and January 26 (8:30 a.m.–12:00 p.m.). The end to 2020/beginning to 2021!
Annual Meeting Chairs have assembled a diverse array
of topics and presenters that will help guide our members Michael A. Oropallo
and practitioners as “we boldly go where no one has gone
before.” We will hear about challenges in moving our
Contribute to the NYSBA Journal and reach the
entire membership of the state bar association
The editors would like to see well-written and researched articles from
practicing attorneys and legal scholars. They should focus on timely topics
or provide historical context for New York State law and demonstrate a
strong voice and a command of the subject. Please keep all submissions
under 4,000 words.
All articles are also posted individually on the website for easy
linking and sharing.
Please review our submission guidelines
at www.nysba.org/JournalSubmission.
NYSBA Bright Ideas | 2021 | Vol. 30 | No. 1 3
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Online only. Does not include live programs, CD or DVD products.
All Access Pass requires member login and cannot be transferred. Annual subscription required.Message from the Editor
After more than 20 years as Editor-in-Chief of Bright I am very pleased that my colleague Sarah Ryu will
Ideas, this is my last issue. I am leaving the firm at which be taking over as Editor-in-Chief and that Rory will re-
I have spent my entire career and going on to . . . well, main as Executive Editor. It was not my intention to pass
we’ll see. As I pack up my Smith-Corona, tape, scissors, the red pen to another lawyer at my firm, but Sarah’s
and erasers, I take this opportunity to say that I have combination of literary skill, substantive IP knowledge,
benefited enormously from this job and have enjoyed and other fine qualities too numerous to mention recom-
working on this publication with the many lawyers, mended her to the Section’s leaders as the right person
experts, and law students who have contributed to it over for the job. Having worked with Sarah for several years,
the years. Pulling together three issues a year, and attend- I am confident that she is more than up to the task. I en-
ing Section programs as often as possible, has broadened courage all of you to help ease her transition by shower-
and deepened my knowledge of intellectual property law ing her with erudite, insightful, lucidly written, meticu-
and given me the chance to interact with a lot of really lously polished articles—a great way to promote your
smart people, including (but not limited to) the group of expertise in the range of IP and IP-adjacent topics that fall
dedicated stalwarts who have led this Section during my within the Section’s expansive umbrella. And once the
tenure and published regularly in these pages. I especial- pandemic ends and normal Section activities resume, I
ly want to thank Rory Radding, the founder of the Section hope you will have a chance to say hello to her in person.
and longtime Executive Editor, for allowing me to occupy
this post and for providing wise counsel on a regular ba- Jonathan Bloom
sis. I am also very grateful to the publications staff up in
Albany who have so capably turned my manuscripts into
a presentable finished product.
N E W Y O R K S TAT E B A R A S S O C I AT I O N
If you have written an article you would like
considered for publication, or have an idea
for one, please contact the Editor-in-Chief:
Sarah Ryu
Editor-in-Chief
Weil, Gotshal & Manges LLP
767 Fifth Avenue
New York, NY 10153-0001
sarah.ryu@weil.com
Articles should be submitted in electronic document
format (pdfs are NOT acceptable), along with
biographical information.
REQUEST FOR ARTICLES
NYSBA Bright Ideas | 2021 | Vol. 30 | No. 1 5Prosecution of Generic.com Trademarks in a
Post-Booking.com World
By Joelle A. Milov
I. Introduction (such as TIDE) are inherently distinctive and capable
of registration on the Principal Register.10 Descriptive
In United States Patent & Trademark Office v. Booking.
marks (such as 5 MINUTE GLUE)11 are registrable on the
com B.V., the Supreme Court considered whether so-
Principal Register only upon a showing that the mark
called generic.com marks, which combine a generic term
has acquired distinctiveness.12 Finally, a generic term
with a top-level domain name, are registrable on the
(such as WINE) “is one that refers to the genus of which
Principal Register.1 The United States Patent & Trade-
the particular product is a species.”13 Such marks are not
mark Office (USPTO) sought a per se rule that generic.
registrable, even upon proof of secondary meaning, “no
com marks cannot be federally registered, but the Court
matter how much money and effort the user of a generic
declined to impose such a rule, opening the door for ap-
term has poured into promoting the sale of its merchan-
plicants to seek registrations for such marks. However,
dise and what success it has achieved in securing public
the Court did not address how the USPTO should assess
identification.”14
future generic.com applications. This article seeks to
provide guidance as to prosecuting generic.com federal Classifying a mark as descriptive and capable of
trademark applications. registration or generic and incapable of registration is not
merely a semantic exercise, as registration on the Princi-
Part II of this article reviews the law regarding gener-
pal Register provides a trademark owner with significant
ic and descriptive marks and the lower court rulings in
benefits. For example, a federal trademark registration
Booking.com. Part III discusses the Supreme Court’s ruling
provides its owner with a presumption of the mark’s va-
in Booking.com. Part IV offers direction for attorneys in
lidity nationwide.15 Further, once a trademark registration
applying to register generic.com marks, reviewing both
becomes incontestable under 15 U.S.C. § 1065 after being
recently issued USPTO guidance for examiners and the
in continuous use in commerce for five years registration,
recent prosecution of three generic.com applications.
it cannot be attacked as merely descriptive.16 “‘The
rub . . . is in trying to distinguish generic marks from
II. Background [protectable marks].’”17
In Booking.com the Supreme Court considered wheth-
B. Prior Proceedings in Booking.com
er the mark BOOKING.COM, comprised of a generic
term—“booking”—and a top level domain—.com—was Booking.com, a travel reservation website, sought
generic per se and thus unregistrable.2 The USPTO argued federal registration of BOOKING.COM in standard char-
that any “generic.com” term is unregistrable,3 but the acter and stylized forms for various travel agency and
Court rejected such a per se rule and affirmed the deci- hotel reservation services, but the USPTO denied regis-
sion of the Fourth Circuit upholding registration.4 Before tration.18 The examining attorney initially rejected all four
analyzing the Court’s decision, it is necessary by way applications on the ground that BOOKING.COM was
of background to review the law relating to generic and descriptive.19 After Booking.com objected that the mark
descriptive trademarks as well as the lower court rulings had acquired distinctiveness, the examiner again refused
in Booking.com. the applications on the ground that the mark was generic
for the applied-for services or, in the alternative, that it
A. Descriptive and Generic Marks was descriptive and lacked acquired distinctiveness.20
Trademark law seeks to protect both trademark own- Booking.com sought reconsideration, but it was denied,
ers and consumers.5 The primary purpose of trademarks and Booking.com also appealed the refusal of registration
is to distinguish between sources of various goods and to the USPTO Trademark Trial and Appeal Board (TTAB),
services.6 “Guarding a trademark against use by others but the TTAB affirmed the refusal.21
. . . ‘secure[s] to the owner of the mark the goodwill’ of Booking.com appealed the denial of registration to
her business and ‘protect[s] the ability of consumers to the United States District Court for the Eastern District of
distinguish among competing producers.’”7 Virginia.22 The evidence before the district court included
Trademarks fall on a spectrum of distinctiveness the record before the TTAB, but the court also relied on
and protectability.8 At the most-protectable end of the Booking.com’s Teflon survey, a widely used trademark
spectrum are arbitrary or fanciful marks, followed by
suggestive marks, descriptive marks, and generic terms
(which are not protectable).9 Arbitrary/fanciful marks Joelle A. Milov is an associate with Cowan, Liebowitz &
(such as CAMEL OR KODAK) and suggestive marks Latman, P.C.
6 NYSBA Bright Ideas | 2021 | Vol. 30 | No. 1survey, which showed that 74.8% of respondents found the term “Company,” the Court found, only established
BOOKING.COM to be a brand name.23 The court found that parties have formed an entity to deal in the relevant
that the mark was descriptive, not generic,24 and that goods, and this addition could not prevent others from
Booking.com had established secondary meaning for using a similar name for a similar business “for the obvi-
the mark in International Class 43 for hotel reservation ous reason that all persons have a right to deal in such
services for two of its applications and ordered that the articles, and to publish the fact to the world.”37
marks be registered for those applications.25 The court
remanded the remaining two applications in Class 43 to
the USPTO for further factfinding.26
The USPTO appealed the court’s determination re-
“In Goodyear, the Court found that
garding the registrability of BOOKING.COM. The USPTO ‘Goodyear Rubber Company’ was not
only challenged the trial court’s finding that the mark
was not generic; it did not challenge the court’s secondary
capable of serving as a trademark
meaning determination.27 The Fourth Circuit affirmed, because ‘Goodyear Rubber’ was
finding that the district court did not err in holding that
the USPTO failed to meet its burden to establish that the
descriptive of goods produced by a
relevant public would understand BOOKING.COM “to particular process.”
refer to general online hotel reservation services rather
than Booking.com the company.”28 The Fourth Circuit
also rejected the USPTO’s argument that the addition of With respect to generic.com marks, the Court in
the top-level domain “.com” to a generic term like book- Booking.com concluded that Goodyear did not support
ing would necessarily be generic.29 Instead, the court held the proposed per se rule for two reasons. First, the Court
that “when ‘.com’ is combined with a [second level do- found that a generic.com mark could provide source-
main], even a generic [second level domain], the resulting identifying information because it would be linked to
composite may be non-generic where evidence demon- a specific website, i.e., www.generic.com.38 Because of
strates that the mark’s primary significance to the public this, a consumer would know that a generic.com mark
as a whole is the source, not the product.”30 would refer to the website or the website’s owner and
not merely to a class of goods or services such that it is
The USPTO petitioned for a writ of certiorari on the incapable of signifying source.39 Second, the Court found
following question: “Whether the addition by an online the USPTO’s reliance on Goodyear to be contrary to funda-
business of a generic top-level domain (‘.com’) to an oth- mental trademark law principles because the per se rule
erwise generic term can create a protectable trademark.”31 advocated by the USPTO would apply regardless of how
On November 8, 2019, the Supreme Court granted the consumers perceive the mark.40 Genericism, however, de-
petition.32 pends on how consumers perceive a given term.41 A per se
rule that disregarded consumer perception was therefore
III. The Supreme Court Decision inappropriate.42
In the Supreme Court, the USPTO advanced two ar- The Court also found that not adopting a per se rule
guments in favor of a per se rule that marks composed of a would not inhibit competition.43 While the USPTO argued
generic term (such as “booking”) and a top-level domain that registering BOOKING.COM might prevent others
(such as “.com”) are necessarily generic and unregistrable from using a BOOKING mark or a domain name that
without regard to how consumers perceive the mark: (1) included the term “booking,” the Court noted that trade-
the rule was a necessary extension of the Court’s prec- mark law does not prevent the use of similar marks writ
edent, and (2) it was necessary to ensure competition.33 large; instead, infringing marks are those that are likely
The Court, in an opinion by Justice Ruth Bader Ginsburg, to cause consumer confusion.44 In analyzing whether a
joined by seven other Justices, rejected both arguments mark is likely to confuse consumers, a court will consider
and declined to adopt the USPTO’s proposed rule.34 whether the mark is distinctive, and “[w]hen a mark
The USPTO analogized a generic.com mark to a incorporates generic or highly descriptive components,
“generic company” trademark that the Court held was consumers are less likely to think that other uses of the
incapable of serving as a trademark in a pre-Lanham Act common element emanate from the mark’s owner.”45
case, Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Further, classic fair use allows an individual to use a term
Rubber Co.35 In Goodyear, the Court found that “Good- not as a mark but to describe his or her wares.46
year Rubber Company” was not capable of serving as a While the USPTO argued that the owner of a generic.
trademark because “Goodyear Rubber” was descriptive com mark had other advantages and remedies available
of goods produced by a particular process, and “[n]ames without registration, the Court found that such recourse
which are thus descriptive of a class of goods cannot be did not negate registrability.47 The USPTO also argued
exclusively appropriated by any one.”36 The addition of that owners of generic.com domains were already well
NYSBA Bright Ideas | 2021 | Vol. 30 | No. 1 7poised competitively because consumers could find their • evidence of the “generic.com” term used by third
sites easily.48 It argued further that unfair competition parties as part of their domain names (e.g., “[adjec-
law could prevent any attempts at passing off.49 The tive]generic.com”) in connection with the same or
Court found that none of these contentions precluded similar goods and/or services; or
registration.50
• evidence of the applicant’s own use of the generic.
Although the Court declined to adopt a per se rule com term.55
regarding generic.com terms, it also did not hold that all
An examining attorney must establish that an ap-
generic.com terms necessarily would qualify for trade-
plied-for term is generic by clear evidence.56 If the evi-
mark protection. Instead, it held that whether a generic.
dence indicates that the mark is generic, the examining
com mark is generic “depends on whether consumers in
attorney will initially issue a refusal on the ground that
fact perceive that term as the name of a class or, instead,
the mark is merely descriptive under 15 U.S.C. § 1052(e)
as a term capable of distinguishing among members of
(1).57 If the examining attorney issues a refusal on generic-
the class.”51
ness grounds, the attorney also should explain how the
cited evidence establishes that the component parts of
III. Prosecution Guidance for Generic.com Terms the generic.com term are generic and that the composite
In Booking.com, the Court opened the door to generic. does not provide new or further significance to consum-
com registrations, but it did not indicate how the USPTO ers that could indicate the source of goods or services.58
should assess generic.com applications. Practitioners, If the cited evidence “strongly suggests” that the applied-
however, may find direction in prosecuting their clients’ for generic.com term cannot indicate the source of goods
generic.com marks from a recently issued USPTO guide. or services, the examining attorney should include an
In addition, a review of the recent prosecution history of advisory statement that the attorney does not recommend
three generic.com applications suggests options for attor- an acquired distinctiveness claim or an amendment to the
neys to present to clients attempting to register generic. application to seek registration on the Supplemental Reg-
com marks. ister.59 Conversely, if the evidence shows that the applied-
for generic.com mark is capable of identifying a source,
A. USPTO Guide 3-20 the examining attorney may alert the applicant that it can
In October 2020, a few months after the Court de- amend its application to seek registration on the Supple-
cided Booking.com, the USPTO issued Examination Guide mental Register.60
3-20, entitled “Generic.com Terms after USPTO v. Booking. If an applicant seeks registration for a generic.com
com” (“Guide 3-20”).52 Guide 3-20 reviews an examin- mark under a claim that the applied-for mark has ac-
ing attorney’s process of reviewing generic.com marks quired distinctiveness under section 1052(f), in full or in
as well as the refusals he or she will issue in response to part, the examining attorney will review the applicant’s
applications to register purportedly generic terms. The evidence of acquired distinctiveness, as well as other
Guide also covers how examining attorneys will assess evidence, to assess if consumers consider the generic.
claims of acquired distinctiveness in relation to generic. com mark a source indicator for the applied-for goods or
com marks. services.61 The Guide notes that “[t]ypically, the applicant
In assessing whether a mark is generic, an examining will need to provide a significant amount of actual evi-
attorney will apply the following two-part test: “(1) What dence that the generic.com term has acquired distinctive-
is the genus of goods or services at issue? (2) Does the ness in the minds of consumers.”62 Importantly, a generic.
relevant public understand the designation primarily to com applicant usually will not be able to support its
refer to that genus of goods or services?”53 In making this acquired distinctiveness claim with either the fact that it
assessment, examining attorneys must review all evi- has been using the generic.com mark for five years or that
dence of consumer perception, including evidence sub- it has a prior registration for the same term.63 Instead, in
mitted by applicant, “to determine whether the relevant showing that the applied-for mark has achieved second-
consumers perceive the term as generic for the identified ary meaning, an applicant may submit
class of goods and/or services or, instead, as capable of consumer surveys; consumer declara-
serving as a mark.”54 Evidence that the applied-for ge- tions; declarations or other relevant and
neric.com term is generic may include the following: probative evidence showing the duration,
• a combination of dictionary excerpts defining the extent, and nature of the applicant’s use
component elements of the generic.com term; of the proposed mark, including the de-
gree of exclusivity of use; related adver-
• significant evidence of generic usage of those tising expenditures; letters or statements
elements or the combined term by consumers or from the trade or public; and any other
competitors in the relevant marketplace; appropriate evidence tending to show
8 NYSBA Bright Ideas | 2021 | Vol. 30 | No. 1that the proposed mark distinguishes the post-Booking.com and preserve additional fallback argu-
goods or services to consumers.64 ments. Each of these options has its own benefits and
burdens.
Guide 3-20 reaffirms the usefulness of consumer
surveys in assessing acquired distinctiveness of generic. 1. The stylized mark and disclaimer approach
com trademarks and notes what will be required from
The first potential approach to seeking registration
applicants who submit survey evidence. Any provided
of generic.com marks is to chart a
survey “must be properly designed and interpreted to en-
path of lesser resistance by seeking
sure that [it is] an accurate and reliable representation of
to register a stylized mark with an
consumer perception of a proposed mark.”65 To establish
added disclaimer.73 For example,
the survey’s accuracy and reliability, an applicant must on May 19, 2020, Beef Jerky, LLC
provide a report, usually from a survey expert, showing sought to register BEEFJERKY.
“the procedural aspects of the survey and the statistical COM, UNIVERSALLY FAMOUS
accuracy of the results.”66 The applicant also must pro- ESTABLISHED 1995 B in the styl-
vide—either as an additional submission or as a portion ized form seen here for “beef jerky,
of the report—the universe of surveyed consumers, how beef sticks and dried meat” in International Class 29.74
many participants were surveyed, and the geographic On August 27, 2020, after the decision in Booking.com but
scope of the relied-upon survey.67 If an applicant does not before the publication of Guide 3-20, the examining attor-
provide this information, the examining attorney may ney issued a non-final office action that sought, inter alia,
request it from the applicant.68 a disclaimer of “BEEF JERKY” and “.COM” because “the
If, after reviewing an applicant’s acquired distinc- wording ‘BEEFJERKY’ is merely descriptive of and ge-
tiveness evidence, the examining attorney finds that the neric for applicant’s goods because applicant identifies its
generic.com term is generic, he or she will refuse registra- goods in the record as ‘beef jerky’” and “the non-source-
tion on genericness grounds and state that the submitted identifying generic top-level domain . . . ‘.COM’ merely
acquired distinctiveness evidence does not negate the indicates an Internet address for use by commercial
genericness refusal.69 In addition to refusing registration for-profit organizations.”75 After the examining attorney
on genericness grounds, the examining attorney will continued and made final the disclaimer requirement, the
issue or continue a refusal on merely descriptiveness applicant added the disclaimer “No claim is made to the
grounds, and he or she should disclose why the acquired exclusive right to use ‘BEEF JERKY.COM ESTABLISHED
distinctiveness evidence does not overcome the refusal on 1995’ apart from the mark as shown.”76 On December 1,
descriptiveness grounds if the mark is ultimately found 2020, the applicant’s mark was published in the Trademark
not to be generic.70 If the evidence shows that the applied- Official Gazette.77
for mark is capable of serving as a source indicator, but It should be noted that, in this case, the applicant’s
the examining attorney finds that the submitted evidence addition of a disclaimer cabins the applicant’s rights in
is insufficient to show secondary meaning, he or she may the disclaimed terms to those words in the applied-for
allow registration on the Supplemental Register.71 stylization.78 Accordingly, while the applicant’s rights in
B. Prosecution History of Certain Generic.Com Terms the applied-for mark described above are more circum-
scribed than they would be in a standard character mark
It is too early to determine the full impact that Book- with no disclaimer, the applicant was able to register at
ing.com or Guide 3-20 will have on practitioners’ attempts least one version of its generic.com mark on the Principal
to register other generic.com marks. If an applicant re- Register within a relatively short period of time.
ceived an initial refusal before the issuance of Booking.com
and responded to the initial office action after Booking.com, 2. The § 2(f) claim and additional evidence approach
the USPTO may not yet have acted upon that response The second potential approach to generic.com trade-
to office action. If an examining attorney issued an office mark prosecution is seeking registration on the basis that
action after Booking.com and/or the publication of Guide a generic.com mark has acquired distinctiveness under
3-20, an applicant may not have responded to the office § 2(f) and adducing substantial evidence in support of
action yet, as applicants have six months to respond to such a claim. For example, on May 2, 2019, Entertain-
such refusals.72 Nonetheless, a brief look at some recent mentCareers.Net, Inc. applied for the eponymous term
USPTO filings may provide practitioners with insight into ENTERTAINMENTCAREERS.NET for “Providing
the options they could present to their clients who may be on-line employment information in the field of employ-
seeking to register generic.com marks. Three such options ment opportunities and career placement, recruitment,
are: (1) apply for the generic.com mark in stylized form careers, and job listings; Providing an on-line searchable
with a disclaimer; (2) apply for the generic.com mark database featuring classified ad listings and employment
under a section 2(f) claim of acquired distinctiveness and opportunities; Employment hiring, recruiting, placement,
supply significant evidence; or (3) apply for the generic. staffing and career networking services” in International
com mark and, if applicable, argue that the examining Class 35.79 The examining attorney issued an office ac-
attorney has not adduced sufficient genericness evidence
NYSBA Bright Ideas | 2021 | Vol. 30 | No. 1 9tion to the applicant, asserting that the mark was merely glasses’.”90 In the alternative, the examining attorney is-
descriptive of the applicant’s services and appeared to sued a refusal on the basis that the applied-for mark was
be generic.80 In support of this assertion, the examining merely descriptive of the applicant’s applied-for goods.91
attorney attached internet evidence “show[ing] the word- On December 23, 2019, the applicant responded to the
ing ENTERTAINMENT CAREERS routinely refers to office action and argued that the examining attorney’s
jobs and job opportunities in the entertainment field.”81 evidence was insufficient to show that the applied-for
In response to the office action, the applicant argued that mark as a whole was generic and cited Booking.com, in
the mark had acquired distinctiveness and, in support of which the Court had recently granted certiorari.92 The
this claim, it introduced a declaration and pointed to the applicant also disputed that the applied-for mark was
fact that it previously had two registrations, supported by merely descriptive and highlighted its statement of sub-
§ 2(f) claims, for the same mark for largely the same ser- stantially exclusive and continuous use of the mark for
vice, which marks had “lapsed inadvertently.”82 The dec- five preceding years as well as its active prior registration
laration attested to the fact that the mark had been in use for the mark.93
After receiving the response to office action, the USP-
“. . . it was not until the issuance of Guide 3-20 a TO approved READERS.COM for publication but later
withdrew the approval and issued another office action
few months later that practitioners gained some in May 2020, just weeks before Booking.com was handed
insight into how generic.com applications will down.94 In the office action, the examining attorney
be analyzed by the USPTO moving forward. “ refused registration, finding that the mark was generic
and, in the alternative, that the mark was merely descrip-
tive and that the acquired distinctiveness evidence of five
years’ use was insufficient “because it is such a short pe-
for almost two decades and that the applicant’s website
riod of time of use and no evidence regarding the adver-
has featured more than 300,000 jobs posts and attracted
tising or sales expenditures, customer surveys or verified
more than 25 million unique visitors.83 The applicant also
highlighted its unsolicited media coverage in no fewer statements of long term use has been provided.”95 In its
response to the office action, written after the issuance of
than 40 publications.84 On February 19, 2020, the applica-
Booking.com and Guide 3-20, the applicant again argued
tion’s status was listed as “Approved for Publication,”85
that the examining attorney did not sufficiently establish
but it was not until after the Booking.com decision that the
that the applied-for mark was generic and asserted that
applicant received notice that the mark would be pub-
the argument regarding genericness—that the applied-
lished in the Trademark Official Gazette.86 The application
for mark was generic because READERS is generic—was
for ENTERTAINMENTCAREERS.NET recently matured
inconsistent with Booking.com.96 In the alternative, the
into a registration on October 20, 2020.87 While the appli-
applicant argued that the applied-for mark had acquired
cant ultimately was successful in its registration efforts,
distinctiveness and, as a final fallback, that if that argu-
the accumulation of evidence to support its § 2(f) claim
ment could not overcome the descriptiveness refusal, then
took time and effort.
it would amend its application to seek registration on the
3. The arguing insufficient genericness evidence with Supplemental Register.97 As of this writing, the examining
fallback approach attorney has not acted upon the applicant’s response.
The third potential approach is to argue insufficient
genericness evidence in light of Booking.com. Indeed, at IV. Conclusion
least one applicant appears to have been emboldened The Supreme Court in Booking.com provided brand
by Booking.com and continues to seek registration of its owners with the possibility that generic.com terms may
generic.com mark on the Principal Register. On April 11, be registrable. But it was not until the issuance of Guide
2019, One Click Internet Ventures LLC filed an applica- 3-20 a few months later that practitioners gained some
tion to register the standard character mark READERS. insight into how generic.com applications will be ana-
COM for “eyewear; eyeglasses; reading glasses; read- lyzed by the USPTO moving forward. While it is still too
ing sunglasses, computer glasses, eyewear accessories, early to determine the types of arguments and evidence
namely, pouches and cases” in International Class 9.88 that will be most well received by the USPTO in support
The examining attorney issued an office action to the ap- of registration, the above examples of recent generic.com
plicant that addressed, inter alia, the fact that the applied- applications provide some possible guidance for practi-
for mark was generic for the applied-for goods.89 In sup- tioners who may choose to prosecute such applications.
port of this assertion, the examining attorney “attached In addition to available facts supporting registrability, the
evidence from various online retailers [that] shows that client’s appetite for risk, budgetary considerations, and
the wording ‘READERS’ in the applied-for mark means desire for speedy resolution will also inform the prosecu-
‘reading glasses’ and thus the relevant public would un- tion strategy for a given generic.com mark.
derstand this designation to refer primarily to that genus
of goods because it equates the term ‘readers’ to ‘reading
10 NYSBA Bright Ideas | 2021 | Vol. 30 | No. 1Endnotes court that was not before the TTAB. See Booking.com III, 140 S. Ct. at
2303; Booking.com I, 278 F. Supp. 3d at 915.
1. United States PTO v. Booking.com B.V., 140 S. Ct. 2298 (2020)
(“Booking.com III”). Teflon surveys, which are the “most widely used survey format to
resolve a genericness challenge,” provide survey respondents with
2. Id. at 2301. This article uses BOOKING.COM (in all caps) to refer to
a primer on the distinction between the generic or common names
the applied-for mark and Booking.com to refer to the entity seeking
and trademark or brand names, and then present respondents with
registration of such mark.
a series of names, which they are asked to identify as common or
3. Id. at 2303, 2305. brand names.”
The USPTO recognized one exception to its request for a per se rule: Booking.com I, 278 F. Supp. 3d at 915 (internal citation omitted).
“Sometimes adding a generic term to a generic top-level domain
24. Id. at 918.
results in wordplay (for example, “tennis.net”). Id. at 2305 n.4.
As the Court recognized, such an exception was not at issue in 25. Id. at 923–24.
Booking.com III, see id., and for purposes of this article, I will not 26. Id. The court found that Booking.com did not establish secondary
consider it as part of the USPTO’s argument. meaning for the mark for the Class 39 services. Id. at 923. Booking.
4. Id. at 2308–09. com did not appeal the determination regarding its Class 39
services. Booking.com II, 915 F.3d at 177 n.2.
5. See Booking.com B.V. v. United States Patent and Trademark Office, 915
F.3d 171, 176 (4th Cir. 2019) (“Booking.com II”) (“Trademark law 27. Booking.com II, 915 F.3d at 179.
protects the goodwill represented by particular marks and serves 28. Id. at 181.
the twin objectives of preventing consumer confusion between
products and the sources of those products, on the one hand, and 29. Id. at 184.
protecting the linguistic commons by preventing exclusive use of 30. Id. at 186.
terms that represent their common meaning, on the other.”).
31. Petition for Writ of Certiorari at 1, Booking.com III, 140 S. Ct. 2298
6. 15 U.S.C. § 1127 (“The term ‘trademark’ includes any word, name, (2020).
symbol, or device, or any combination thereof . . . to identify and
32. United States PTO v. Booking.com B.V., 589 U.S. ___ (2019).
distinguish his or her goods, including a unique product, from
those manufactured or sold by others and to indicate the source of 33. Booking.com III, 140 S. Ct. at 2305–08.
the goods, even if that source is unknown.”); see B&B Hardware, Inc. 34. Id. at 2305.
v. Hargis Indus., 575 U.S. 138, 142 (2015) (“The principle underlying
trademark protection is that distinctive marks—words, names, 35. Id.
symbols, and the like—can help distinguish a particular artisan’s 36. Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128
goods from those of others.”). U.S. 598, 602 (1888); see also Booking.com III, 140 S. Ct. at 2305.
7. Booking.com III, 140 S. Ct. at 2302 (quoting Park ‘N Fly, Inc. v. Dollar 37. Goodyear, 128 U.S. at 602–03; see also Booking.com III, 140 S. Ct. at
Park & Fly, Inc., 469 U.S. 189, 198 (1985)). 2305.
8. See Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (1976); 38. Booking.com III, 140 S. Ct. at 2306.
Booking.com III, 140 S. Ct. at 2302.
39. Id.
9. Abercrombie, 537 F.2d at 9.
40. Id.
10. See, e.g., Wal-mart Stores v. Samara Bros., 529 U.S. 205, 210–11 (2000);
id. at 210 (describing CAMEL as an arbitrary mark for cigarettes, 41. See infra part II.A for the applicable genericness test.
KODAK as a fanciful mark for film, and TIDE as a suggestive mark 42. “The primary significance of the registered mark to the relevant
for laundry detergent). public rather than purchaser motivation shall be the test for
11. See Booking.com v. Matal, 278 F. Supp. 3d 891, 901 (E.D. Va. 2017) determining whether the registered mark has become the generic
(“Booking.com I”) (categorizing 5 MINUTE GLUE as descriptive). name of goods or services on or in connection with which it has
been used.” 15 U.S.C. § 1064(3).
12. See Samara Bros., 529 U.S. at 211–12; Booking.com III, 140 S. Ct. a 2302–
03. “This acquired distinctiveness is generally called ‘secondary 43. Booking.com III, 140 S. Ct. at 2307–08.
meaning.’” Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 769 44. Id. at 2307.
(1992).
45. Id.
Descriptive marks that have not achieved secondary meaning, but
46. Id. at 2307–08.
are “capable of distinguishing applicant’s goods or services,” are
registrable on the Supplemental Register. 15 U.S.C. § 1091. 47. Id. at 2308.
13. Park ’n Fly, 469 U.S. at 194; see Abercrombie, 537 F.2d at 9; Booking.com 48. Id.
III, 140 S. Ct. at 2303 (describing WINE as a generic term for wine). 49. Id.
14. Abercrombie, 537 F.2d at 9. 50. Id.
15. 15 U.S.C.§ 1057(b); see, e.g., Samara Bros., 529 U.S. 205, 209 (2000). 51. Id. at 2307.
16. 15 U.S.C. § 1065; Park ’n Fly, 469 U.S. at 205. 52. United States Patent & Trademark Office, Examination Guide 3-20:
17. Booking.com I, 278 F. Supp. 3d at 902 (quoting Ashley Furniture Indus. Generic.com Terms after USPTO v. Booking.com (“Guide 3-20”) (Oct.
Inc. v. Sangiacomo N.A., 187 F.3d 363, 369 (4th Cir. 1999)). 2020), available at https://www.uspto.gov/sites/default/files/
documents/TM-ExamGuide-3-20.pdf.
18. Id. at 895–97.
53. United States Patent & Trademark Office, Trademark Manual of
19. Id. at 897.
Examining Procedure (TMEP) § 1209.01(c)(i) (Oct. 2018) (citing
20. Id. H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987,
21. Id. at 895–97. 990 (Fed. Cir. 1986)), available at https://tmep.uspto.gov/RDMS/
TMEP/current; see Guide 3-20 at 2.
22. Id. at 891.
54. Guide 3-20 at 2; TMEP § 1215.05 (“Thus, to establish that a mark
23. Pursuant to Booking.com’s appeal to the district court under 15 comprising a generic term with a non-source-identifying gTLD
U.S.C. § 1071(b), it was permitted to submit evidence to the trial is generic, the examining attorney must show that the relevant
NYSBA Bright Ideas | 2021 | Vol. 30 | No. 1 11public would understand the mark as a whole to have generic form that the USPTO approved for publication and not in the form
significance.”). that applicant sought to initially register.
55. Guide 3-20 at 3 (footnote omitted). 80. Nonfinal Office Action at 2–3, U.S. Trademark App. Ser. No.
88413492 (July 20, 2019), available at https://tsdr.uspto.gov/docu
56. TMEP § 1209.01(c)(i).
mentviewer?caseId=sn88413492&docId=OOA20190720110429#doc
57. Guide 3-20 at 3. Index=9&page=1; see generally Guide 3-20 at 2 (noting that Guide
58. Id. 3-20 applies to various generic top-level domains, such as .com and
.net).
59. Id.
81. Office Action at 2, 9–21, U.S. Trademark App. Ser. No. 88413492
60. Id. (July 20, 2019), available at https://tsdr.uspto.gov/documentviewe
61. Id. r?caseId=sn88413492&docId=OOA20190720110429#docIndex=9&p
age=1.
62. Id. at 4; see generally Bill Donahue, USPTO Weighs In On High Court’s
Booking.com TM Ruling, Law360 (Oct. 28, 2020 5:59 PM), https:// 82. Response to Office Action at 2–3, U.S. Trademark App. Ser. No.
www.law360.com/ip/articles/1323718/uspto-weighs-in-on-high- 88413492 (Jan. 17, 2020), available at https://tsdr.uspto.gov/docu
court-s-booking-com-tm-ruling?nl_pk=c8cfc137-ec9a-45b6-ade1- mentviewer?caseId=sn88413492&docId=ROA20200120180747#doc
d6f439902158%E2%80%A6. Index=8&page=1.
63. Guide 3-20 at 3. 83. Id., Declaration of Brad Hall at 1-2; see id. Response to Office Action
at 2–4.
64. Id. at 4.
84. Id., Response to Office Action at 4; id., see Declaration of Brad Hall
65. Id.; see generally Booking.com III, 140 S. Ct. at 2307 n.6 (“Surveys can
at 2–3 & Ex. 4.
be helpful evidence of consumer perception but require care in
their design and interpretation.”). 85. Trademark Snap Shot Publication Stylesheet, U.S. Trademark App.
Ser. No. 88413492 (Feb. 19, 2020), available at https://tsdr.uspto.
66. Guide 3-20 at 4.
gov/documentviewer?caseId=sn88413492&docId=EXA202002181
67. Id. 51302#docIndex=4&page=1.
68. Id. 86. Official USPTO Notice of Publication Under 12(a), U.S. Trademark
69. Id. App. Ser. No. 88413492 (July 15, 2020), available at https://tsdr.
uspto.gov/documentviewer?caseId=sn88413492&docId=NOP2020
70. Id. 0715060628#docIndex=3&page=1.
71. See id. 87. Registration Certificate for ENTERTAINMENTCAREEERS.NET,
72. 15 U.S.C. § 1062(b); TMEP § 711. Reg. No. 6177638, (October 20, 2020), available at https://tsdr.
uspto.gov/documentviewer?caseId=sn88413492&docId=ORC2020
73. Such an approach likely would have been available even before 1005092030#docIndex=0&page=1.
Booking.com. For example, in a first office action issued to Booking.
com, the examining attorney sought the addition of a disclaimer 88. U.S. Trademark App. Ser. No. 88381046 (filed Apr. 11, 2019),
of BOOKING.COM in the stylized mark. Office Action at 3–4, U.S. available at https://tsdr.uspto.gov/documentviewer?caseId=sn88
Trademark App. No. 85485097 (Mar. 23, 2012), available at https:// 381046&docId=RFA20190415075159#docIndex=8&page=1. For the
tsdr.uspto.gov/documentviewer?caseId=sn85485097&docId=OO sake of simplicity, the owner of the application and identification
A20120323135119#docIndex=23&page=1. of goods are listed as they currently are listed on the USPTO’s
Trademark Status & Document Retrieval System, and not as they
74. U.S. Trademark App. Ser. No. 88922990 (filed May 19, 2020), appear in the initial application.
available at https://tsdr.uspto.gov/documentviewer?caseId=s
n88922990&docId=APP20200522093437#docIndex=17&page=1. 89. Office Action at 2, U.S. Trademark App. Ser. No. 88381046 (June 24,
For the sake of simplicity, the depiction of the mark and the 2019), available at https://tsdr.uspto.gov/documentviewer?caseId
identification of goods are presented above in the form that the =sn88381046&docId=OOA20190624113611#docIndex=7&page=1.
USPTO approved for publication. It should be noted, however, that 90. Id. at 3.
neither the drawing nor the identification of goods listed above is
in the form that applicant initially sought to register. 91. Id.
75. Non-Final Office Action at 2, U.S. Trademark App. Ser. No. 92. Response to Office Action at 2–7, U.S. Trademark App. Ser. No.
88922990 (Aug. 27, 2020), Ser. No. 88922990, available at https:// 88381046 (Dec. 23, 2019), available at https://tsdr.uspto.gov/docu
tsdr.uspto.gov/documentviewer?caseId=sn88922990&docId=OO mentviewer?caseId=sn88381046&docId=ROA20191223182507#doc
A20200827152155#docIndex=12&page=1. Index=5&page=1.
76. Final Office Action at 2, U.S. Trademark App. Ser. No. 88922990 93. Id. at 7–8.
(Oct. 21, 2020), available at https://tsdr.uspto.gov/documentvi 94. Nonfinal Office Action at 1, U.S. Trademark App. Ser. No. 88381046
ewer?caseId=sn88922990&docId=OOA20201021105452#docInde (May 11, 2020), available at https://tsdr.uspto.gov/documentview
x=7&page=1; Request for Reconsideration after Final Action at 1, er?caseId=sn88381046&docId=OOA20200511134807#docIndex=2&
U.S. Trademark App. Ser. No. 88922990 (Oct. 27, 2020), available at page=1.
https://tsdr.uspto.gov/documentviewer?caseId=sn88922990&do
95. See id. at 2. The examining attorney also noted that the applicant’s
cId=RFR20201028204015#docIndex=4&page=1. Notably, the mark
cited prior registration, which was on the Supplemental Register,
contains additional words that were not required to be disclaimed.
showed the term’s “inherent descriptiveness.” Id.
77. Trademark Official Gazette Publication Confirmation, U.S.
96. Response to Office Action at 1, U.S. Trademark App. Ser. No.
Trademark App. Ser. No. 88922990 (Dec.1, 2020), available at
88381046 (Nov. 10, 2020), available at https://tsdr.uspto.gov/doc
https://tsdr.uspto.gov/documentviewer?caseId=sn88922990&doc
umentviewer?caseId=sn88381046&docId=ROA20201111184951#do
Id=PB320201201075000#docIndex=0&page=1.
cIndex=1&page=1.
78. See TMEP § 1213; Guide 3-20 at 4; see generally TMEP § 1209.03(w).
97. Id.
79. U.S. Trademark App. Ser. No. 88413492 (filed May 2, 2019), available
at https://tsdr.uspto.gov/documentviewer?caseId=sn88413492&
docId=RFA20190506082211#docIndex=11&page=1. For the sake of
simplicity, the identification of services is presented above in the
12 NYSBA Bright Ideas | 2021 | Vol. 30 | No. 1Correction of Inventorship Under the America
Invents Act
By Eric Saparli
I. Introduction true inventor had to be left off the application as a result
Inc.1 the
In Egenera, Inc. v. Cisco Systems, Federal of a mistake and not as a result of deception on the part
Circuit held that the America Invents Act (AIA) did not of either the named inventor or the actual inventor.7 As a
change the holding in Stark v Advanced Magnetics, Inc.2 result, the court held that Stark’s federal claim for correc-
with regard to the meaning of the term “error” in 35 tion of inventorship conflicted with his state law claims
U.S.C. § 256 of the 1952 Patent Act. In Stark, the Federal for conversion, theft of trade secrets, fraud and deceptive
Circuit held that the term “error” in § 256 included both conduct.8 Because Stark’s state law claims alleged fraud
honest and intentional mistakes. The AIA amended in- on the part of the patent applicants, the court dismissed
consistent statutory language with regard to error correc- Stark’s action for correction of the inventors on the
tion that was construed in Stark, and Egenera was the first patent.9
case in which the Federal Circuit considered the impact of The issue on appeal to the Federal Circuit was the
the AIA on the holding in Stark. This article will explore proper interpretation of the term “error” as used in § 256.
the impact of these changes made by the AIA with respect
to error correction. AMI argued that the Federal Circuit had held pre-
viously that § 256 provided a remedy only in a case of
“bona fide mistake in inventorship.” Section 256 refer-
II. Stark v. Advanced Magnetics, Inc. ences two types of error: The court characterized the error
In Stark, the plaintiff, Stark, collaborated with the of listing a person who was not an inventor as “misjoin-
defendant, Advanced Magnetics, Inc. (AMI), and their der” and the error of failing to list a person who was an
work resulted in six issued patents. Stark’s name was not inventor as “nonjoinder.”10 Since there was no binding
on any of the patents. Stark sued AMI in federal district precedent as to the meaning of the terms “error” and
court in Massachusetts, alleging that he was a sole inven- “without any deceptive intention on his part,” the panel
tor of the subject matter covered by one of the patents turned to the statutory language.
and a joint inventor of the subject matter disclosed in the
other five patents and requesting correction of inventor- The court concluded that if the error was nonjoin-
ship under 35 U.S.C. § 256, which provided: der of an inventor, the error must occur “without any
deceptive intention” on his part because the phrase “on
Whenever through error a person is his part” referred to the antecedent “inventor,” thereby
named in an issued patent as the inven- requiring that the omitted inventor not have engaged in
tor, or through error an inventor is not any deceptive conduct in relation to the nonjoinder. Mis-
named in an issued patent and such error joinder clause, by contrast, did not contain a “without de-
arose without any deceptive intention ceptive intention” restriction; if the term “error” referred
on his part, the Commissioner may, on only to honest mistakes, the court reasoned, the “without
application of all the parties and assign- deceptive intention” qualification would be superfluous.
ees, with proof of the facts and such other Therefore, the court reasoned, in order to avoid redun-
requirements as may be imposed, issue[ ] dancy, the term “error” with respect to nonjoinder must
a certificate correcting such error. include both honest and dishonest mistakes, “harmoniz-
AMI moved for summary judgment on two grounds. ing well with the title 35 policy seeking to reward the
First, it argued that by alleging that AMI procured the actual inventors of technological advances.”11
patents through fraud, Stark effectively removed himself The panel agreed with the district court’s conclusion
from the remedial scope of § 256.3 Second, AMI argued that the legislative history of the 1982 amendments to
that by failing to act diligently in seeking to correct inven- §§ 116 and 256 had suggested that Congress intended to
torship, Stark’s § 256 claims were barred.4 In response, permit correction of inventorship without regard to the
Stark argued that the statute required only the absence of conduct of the named inventor so long as there was no
deceptive intent on the part of the actual inventor regard- deceptive intention on the part of the true inventor.12 AMI
less of the intentions of the named inventor.5 brought the court’s attention to 35 U.S.C. Section 116,
The court interpreted § 256 “as requiring that both
the applicant (here, [AMI]) and the actual inventor (here,
Stark) must have made an honest mistake and must be
innocent of fraud.”6 Based on this interpretation, the Eric Saparli is a patent attorney practicing in New York.
court held the statute required that to amend a patent, the
NYSBA Bright Ideas | 2021 | Vol. 30 | No. 1 13which permitted the correction of inventorship during through error without deceptive intent on the part of the
prosecution, which provides, in pertinent part: actual inventor or inventors, the Commissioner can issue
a certificate naming only the actual inventors.18 Accord-
Whenever through error a person is ingly, the Federal Circuit rejected Stark’s argument that
named in an application for patent as the even if AMI’s inequitable conduct could preclude AMI
inventor, or through error an inventor is from enforcing the patent, he still could enforce it. The
not named in an application, and such court reasoned that in this context, because of inequitable
error arose without any deceptive inten- conduct, an “innocent” co-inventor could not enforce the
tion on his part, the Commissioner may patent, as wrongdoing by an inventor or even a patent
permit the application to be amended attorney could influence “property rights of an otherwise
accordingly, under such terms as he innocent individual.”19 Thus, with respect to the patent
prescribes.13 for which Stark alleged that he was a sole inventor, the
In the panel’s view, § 116 requires a lack of deceptive court held that § 256 permitted substitution of inven-
intent in both nonjoinder and misjoinder cases because of tors as long as the true inventor was without deceptive
the comma after the term “application,” which is absent intent.20 With regard to the other patents, the court held
from § 256.14 Therefore, the two provisions, when parsed, that Stark’s allegation of deceptive intent did not preclude
lead to different, and possibly inconsistent results even him from seeking correction of inventorship, but his fraud
though the legislative history suggested that both provi- allegations could have implications under the inequitable
sions had to be interpreted in a uniform manner.15 conduct doctrine.21
III. Egenera, Inc. v. Cisco Systems, Inc.
“Without any reason to authorize correction The AIA deleted the restrictive language that in-
formed the outcome in Stark. Under § 256(a) of the AIA,
only where there is no deceptive intent on when through error an issued patent lists a person as the
the part of the inventor in one type of case inventor, or when through error an issued patent does not
but not the other, the Stark court construed list an inventor, upon an application of all parties and as-
the term ‘error’ to include both honest and signees, the Director of the USPTO may issue a certificate
intentional error.” of correction of inventorship.
In Egenera, a patentee, Egenera, Inc., sued Cisco
Systems, Inc. in federal district court in Massachusetts for
It should be noted, however, that the court did not infringement of a patent covering a platform for auto-
attempt to resolve the apparent inconsistency between matically deploying a scalable and reconfigurable virtual
§§ 116 and 256, suggesting instead that only Congress network. In response, Cisco initiated an inter partes review
could correct it. The court offered no explanation for why (IPR) proceeding. Upon reviewing the patent, Egenera
Congress may have imposed different requirements for realized that all claim limitations had been conceived
misjoinder and nonjoinder cases. before Egenera hired one listed inventor, Peter Schulter.22
In order to facilitate swearing behind a piece of a prior
Congress’s intent to authorize correction in absence art asserted against Egenera in the IPR, Egenera sought
of any deceptive intention on the part of the inventor to remove Schulter as a listed inventor, and the USPTO
does not explain different treatment of the two types of granted the Egenera’s petition to remove Schulter from
cases. Without any reason to authorize correction only the inventorship.23 Ultimately, the USPTO declined to
where there is no deceptive intent on the part of the institute the IPR because Cisco had not met its burden
inventor in one type of case but not the other, the Stark of establishing a reasonable likelihood of success on the
court construed the term “error” to include both honest merits.24
and intentional error and held that the statute permitted
deletion of a misjoined inventor without regard to decep- When the case returned to the district court, Cisco
tion or innocent mistake. In other words, in the court’s argued that certain terms in the claims had to be in-
view, the statute allowed correction of error in all misjoin- terpreted as means-plus-function.25 In addition, Cisco
der cases, but in nonjoinder cases, like Stark, only in the sought to invalidate the patent under the pre-AIA § 102(f)
absence of deceptive intent on a part of the inventor.16 on the ground that Schulter invented a structure in the
specification corresponding to the claimed function, and
However, the court concluded that the statute would the patent therefore did not list all the inventors.26 In
not likely permit a deceptive inventor to correct misjoin- response, Egenera argued that if the trial showed that
der without penalty because the rule against inequitable Schulter was an inventor, the patent’s inventorship had to
conduct would likely prevent enforcement of a patent ob- be corrected under § 256(b).27 The district court rejected
tained by deceiving the USPTO.17 Under 37 C.F.R. § 1.324, this argument on the ground that Egenera was judicially
if the correct inventor is, or inventors are, not named estopped from invoking § 256 to restore Schulter’s name
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