Peloton Seeks To Invalidate 'Spinning' Trademark Held By Trademark Bully

from the spin-cycle dept

Back in 2010, we discussed that the at-the-time "spin class" craze in the fitness world was encountering the fact that one company, Mad Dogg Athletics, held a trademark on the term "spinning" for use in the fitness industry. Mad Dogg had taken to going around the world and threatening anyone else using the term with trademark infringement as a result. And, to be clear, they had a lot of targets for these threats, which factored into the argument that term was now generic and hadn't been properly enforced as a trademark for years.

Since 2010, the spin class craze has morphed out of the brick and mortar gym and into home fitness, with the current fad being app-driven home stationary spin bikes. The leader in that field is, of course, Peloton. Mad Dogg sued Peloton for trademark infringement last year over patents it holds for core features of its bikes. In what may be something of a clap back in that dispute, however, Peloton has now petitioned to have Mad Dogg's "spinning" trademark canceled entirely.

Peloton claimed that rival fitness company Mad Dogg Athletics is “abusively enforcing” its trademark rights of ‘Spinning’ and ‘Spin’ across the indoor biking industry in a petition filed to the US Patent and Trademark Office’s Trademark Trial and Appeal Board (USPTO) yesterday.

The petition argued that the terms are generic and that Mad Dogg’s lawyers have been ceaseless in their campaign to chase down infringers. It also cites John Baudhuin, co-founder of Mad Dogg, admitting to spending “hundreds of thousands of dollars a year” on litigation.

This is Peloton calling out the game, which is very useful. Rather than focusing primarily on the business of selling spin bikes, Mad Dogg instead seems to be focused on policing its trademark. The argument that the term "spinning" has become generic is only bolstered by the high volume of victims of Mad Dogg's bullying. In addition, it would be interesting to see Mad Dogg attempt to come up with any evidence that the wider public currently associates the term with its products, because that feels like it would be a stretch to say the least.

Peloton's petition calls out the extremes to which Mad Dogg has gone in its bullying.

“Enough is enough. It is time to put a stop to Mad Dogg’s tactic of profiting by threatening competitors, marketplaces and even journalists with enforcement of generic trademarks.”

Imagine the instant good the USPTO could do simply by invalidating a trademark for what has become a generic term in the fitness industry.

Filed Under: spinning, trademark, upsto
Companies: mad dogg athletics, peloton

Senators Tell The USPTO To Remove The Arbitrary Obstacles Preventing Inventors (Especially Women Inventors) From Getting Patents

from the patent-barred dept

There are plenty of issues with the patent system as we know it today, but one big one is with the system we use to award them. It's a problem because the more important we think patents are, the more important it is to ensure that the mechanism we use to grant them is capable of recognizing all the invention patent law is intended to protect. Unfortunately, however, right now the patent-review system is architected in a way that makes it miss all too many patent-worthy inventions – including, especially, those inventions invented by women.

The lack of diversity among patent recipients has now caught the attention of a few Senators, who in December wrote to USPTO Director Iancu to express their concern. There may be several reasons for why women inventors are, by and large, not being granted patents, but one conspicuous one that the Senators focused on in their letter is the commensurate lack of women allowed to do the specialized work of filing for patents:

In today’s increasingly competitive global economy, we must leverage the creativity and talents of all Americans—including women, minorities, and people from low-income and other disadvantaged communities—to maintain the United States’ place as the world’s leading innovator. The patent system has long played a critical role in fostering American innovation. As you well know, the USPTO faces a significant gender gap among named inventors. According to a 2020 USPTO report, only 12.8% of named patent inventors are women. The USPTO has undertaken laudable efforts in recent years to recognize and start addressing this gender gap. These efforts are good first steps.

However, we fear that the USPTO’s efforts will be undercut by an apparent gender gap among patent practitioners. While recent data on the demographic make-up of the patent bar is not publicly available, studies from 2011 and 2014 suggest women made up as little as 18% of patent agents and patent attorneys with little growth over time. Unless there has been a significant increase in the number of women admitted to the patent bar in the ensuing years, female membership lags far behind the share of women earning degrees in either science, technology, engineering, or math (“STEM”) fields (~36%) or the law (~50%).

Quoting a letter submitted by Eric Goldman and Jess Miers (disclosure: I signed it), the Senators' letter further explained why the paucity of women in the patent bar may resultingly be limiting the number of women patent recipients:

[A]ccess to women patent prosecutors can increase women’s patenting activity in several ways. Women patent prosecutors can bring extra substantive expertise on goods and services catering to women customers. This expertise can help inventors recognize patentable inventions and better describe them in patent applications. Women patent prosecutors use their unique social networks to cultivate and support women inventors, and they make it easier for women inventors to “see” themselves in the patent system. Also, women patent prosecutors may develop more effective client relationships with women inventors than would develop with male patent prosecutors. That, in turn, can help women inventors feel comfortable seeking patent prosecution assistance and produce the evidence necessary to succeed with their patent applications.

In other words, if you want to patent more inventions, and to make sure women's inventions are among them, you are going to need more women able to help inventors (including those women inventors) obtain their patents. And right now they are being kept out the profession at arbitrarily high rates and for, as the letter also explained, equally arbitrary, if not outright absurd, reasons.

For those confused by some of the vernacular being used here, the "patent bar" is a fancy way of describing the legal professionals allowed to help inventors try to obtain patent grants from the USPTO. The fancy name for this activity is "patent prosecution" and those who do it are "patent prosecutors." Patent prosecutors don't necessarily have to be lawyers able to practice in any other jurisdiction, and most lawyers are not permitted to do the specialized work of patent prosecution. Instead, to be allowed to prosecute patents you need to take, and pass, a separate exam to be able to join the patent bar. It is that exam that is at the heart of the problem.

The problem, however, isn't necessarily with the exam itself. The real issue is that only certain people are eligible to sit for it, and these limitations on exam eligibility are unduly limiting the patent bar by pointlessly excluding otherwise qualified people, including, especially, women:

The USPTO sets the requirements for patent practitioners and, as such, serves as a gatekeeper to the patent bar. To ensure a high level of patent quality, it requires that all candidates pass a six-hour, 100-question exam in order to practice before the USPTO. However, this exam is not open to all. It is reserved for those who possess certain “scientific” and “technical” qualifications. Currently, the USPTO allows college graduates with degrees in only thirty-two specific majors to automatically qualify to sit for the exam (so-called “Category A”). This list includes a wide array of majors in engineering and the physical sciences—degrees that disproportionately go to men. However, it excludes several other majors, such as mathematics, that are highly relevant to modern-day innovation and are earned by women at a rate much closer to their share of overall undergraduate degrees. The list also excludes students who major in industrial and fashion design—fields highly relevant to design patents and for which women make up a majority of students.

True, sometimes those who are not automatically allowed to sit for the exam still can establish their eligibility in other ways, but these rules are even more Byzantine, and the result is still the same: the doors to the profession end up pointlessly closed to people capable of passing the exam and doing the work of patent prosecution. And this limitation on patent prosecutors thus has an echo effect on patent diversity, because it means that only a small subset of patentable inventions are ever likely to be successfully prosecuted.

These exam-eligibility rules therefore need to be reconsidered, the Senators told the USPTO. And to make sure the USPTO takes the matter seriously, the Senators also required it to provide answers to additional questions on the matter, due back to them by January 15.

Filed Under: diversity, inventors, patent bar, sexism, upsto

US Patent Office: Supreme Court Made Us Reject More Patents, But We've Now Fixed That And Are Back To Approving Bad Patents

from the say-what-now? dept

One of the most important Supreme Court rulings in the patent space is the so-called Alice ruling in 2014 which should have effectively spelled the end of software patents (even though the ruling doesn't exactly say that). The ruling just says that you shouldn't get patents on software that "does no more than require a generic computer to perform generic computer functions." As we noted at the time... that's basically all software that is found on computers and personal devices. Sure, there may be some specialized machines, and, fine, let them get patents. But based on this ruling, nearly all software patents should be rejected.

And, for a little while it seemed like that was happening. There were stories of the Patent Office rejecting a bunch of patents based on this ruling and things seemed to be heading in a good direction. Bad patents for generic software were not being allowed. But something changed. Indeed, after a general plateau in patents granted after Alice, patents started to go back up again.

While some patent system supporters have been claiming that various Supreme Court decisions, such as Alice, have destroyed their ability to patent their non-patentable concepts, reality shows that the PTO has continued approving plenty of awful patents.

And, now we know why. The US Patent Office has just released quite an eye-opening report regarding how it responded to the Alice decision entitled Adjusting to Alice. The TL;DR summary: "After Alice we started rejecting a lot more patents, but then Patent Office bosses issued "new guidance" that effectively overruled Alice, and we're back to approving bad patents again!"

They didn't quite put it that way, but that seems to be the clearest interpretation of the report. First, they say what happened after the Alice decision:

The likelihood of receiving a first office action with a rejection for patent-ineligible subject matter increased by 31% in the 18 months following the U.S. Supreme Court decision in Alice Corp. v. CLS Bank International in 33 “Alice-affected” technology areas.

For these technologies, uncertainty in patent examination — measured as variability in patent subject matter eligibility determinations across examiners in the first action stage of examination — increased by 26% in the 18 months following the Alice decision.

But have no fear patent trolls, the USPTO stepped in with "guidance" and magically the number of patent rejects quickly dropped.

One year after the United States Patent and Trademark Office issued its January 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG), the likelihood of Aliceaffected technologies receiving a first office action with a rejection for patent-ineligible subject matter had decreased by 25%.

Uncertainty in patent examination for Alice-affected technologies decreased by 44% in the 12 months following the issuance of the 2019 PEG.

Apparently, the Patent Office thinks it gets to overrule the Supreme Court with "guidance." How about that? The charts are pretty clear. After the Alice decision, patent examiners (understanding the Supreme Court's clear statement regarding these kinds of patents) started issuing rejections more frequently, stopping unpatentable subject matter from getting patents (which is a good thing):

Then, in early 2019, the Patent Office issues "guidance" that more or less tells examiners to start approving these kinds of patents again and, voila, the number of initial rejects declines massively

And then look back up at the chart showing total patents granted in 2019 and you can see why the number of patents shot up so much. This is a massive problem and seems to be the Patent Office deciding that it can write its way around the Supreme Court in order to go back to approving bad patents. That's bad on any number of levels, but will almost certainly lead to more patent trolling in the next few years that will stifle all kinds of innovation.

Filed Under: guidance, patent trolls, patentable subject matter, patents, software patents, upsto
Companies: alice, cls bank

USPTO Drops Its Demands For Applicants' Green Cards

from the begrudgingly-slides-back-into-its-own-lane dept

The US Patent and Trademark Office's side venture into immigration enforcement has come to an abrupt end. It recently instituted a US attorney requirement for foreigners filing trademark applications with the Office. This was apparently done to limit the flow of bogus trademark applications, a large number of which originated in China.

This wasn't the problem. The problem was that the USPTO started requiring examiners to verify the immigration status of non-US citizens applying for trademarks. It was no longer enough to provide some form of address verification, like a utility bill. The USPTO was now demanding proof of permanent residence, which would limit applications by non-US citizens living in this country to green card holders.

Notably, the USPTO does not require applicants to be legal residents of the United States. And only recently did it even require applicants from foreign countries to retain a US attorney for filing.

After receiving a bit of backlash for branching out into immigration enforcement, the USPTO is backing down on its demands for green cards. Paul Singer of WGBH (who broke the original story) has more details on the rollback.

Friday morning, the trademark office scrapped the guidance and issued new instructions that dropped any reference to immigration status. The new guidelines to staff say only that an applicant may be asked to provide proof of residence at the U.S. address, such as a lease or a utility bill.

The new instructions also remove provisions that would have required foreign applicants declaring U.S. addresses to provide proof of legal status even if they had obtained a U.S. trademark attorney. The change makes it clear that proof of address is only needed in cases where the applicant does not have a U.S. attorney.

This walk-back indicates the USPTO was looking to be in the immigration business but had trouble getting examiners to buy in on the new focus. If it was a wholly legitimate directive, there'd be no reason to alter it so soon after its enactment. Now that this directive has been clarified, examiners can go back to doing their actual job -- fielding ridiculous trademark applications -- and stop worrying about whether they're going to have to start sharing cubicle space with ICE officers.

Filed Under: immigration status, trademarks, upsto

Patent Trolls Strike Back: Trolling Rebounds After Brief Supreme Court-Enabled Dip

from the someone-found-the-loopholes dept

Following last year's pretty good Supreme Court ruling in the Alice v. CLS Bank case, which effectively wiped out the basis of many software and business method patents by saying you couldn't get a patent on "generic" functions, there was a pretty immediate impact on patent trolling. Courts were invalidating patents based on the ruling, the US Patent and Trademark seemed more willing to reject patents based on the Alice ruling, and even trolls seemed to be admitting defeat. Uber troll Intellectual Ventures laid off a bunch of people and OG patent troll Ray Niro indicated he was moving on to more lucrative trolling opportunities, such as in trade secrets.

But, never fear, the Patent Troll Strikes back sequel is fast becoming reality. The good folks over at Unified Patent have a report out on the latest numbers, which suggest the decline in patent troll activities last year was merely a brief disturbance and that patent trolling has bounced back significantly. While 2014 definitely showed a dip, 2015 has showed that patent lawsuits have gone right back up again: And, it's notable that a growing number appear to be patent trolls (or "non practicing entities" as some prefer to call them). The gold color are troll suits: And this is all particularly pronounced in the high tech field, where nearly 90% of all lawsuits were filed by trolls: And thus, despite the Alice ruling there seems to be tremendous evidence that we need patent reform as part of the solution. While another recent analysis shows that courts are still tossing out patent claims as invalid in a post-Alice world, it doesn't seem to be stopping the lawsuits. And that's likely because many trolls are realizing that even if their patents are invalid, it's still much easier for many to just settle and pay up than go through with the whole trial process.

Filed Under: alice, cls bank, lawsuits, patent reform, patent trolls, patents, upsto
Companies: alice, cls bank

The USPTO Regularly Turns A Profit But Is Still Forced To Suffer Through Every Sequestration And Shutdown

from the sympathy-for-the-USPTO-somewhat-of-an-anomaly-itself dept

The US government is now shut down, thanks to both parties' inability to see a national budget as anything more than a partisan battleground, sniping at each others' pet funding for weeks on end without reaching a compromise. A number of gutless spending cuts were proposed, fought over and rejected, with very little forward progress being made.

This shutdown hits certain agencies harder than others. National parks, health services, immigration and housing (among others) are being closed while intelligence agencies (along with any agency that "provides for national security") have been greenlighted for business as usual. Fans of IP will be happy to hear that the USPTO will be staying open, at least for the next month or so, thanks to a reserve fee surplus.

In the event of a general government shutdown on October 1, 2013, the United States Patent and Trademark Office will remain open, using prior year reserve fee collections to operate as usual for approximately four weeks. We continue to assess our fee collections compared to our operating requirements to determine how long we will be able to operate in this capacity during a general government shutdown. We will provide an update as more definitive information becomes available.

Should we exhaust these reserve funds before a general government shutdown comes to an end, USPTO would shut down at that time, although a very small staff would continue to work to accept new applications and maintain IT infrastructure, among other functions.

Say what you will about the office's track record of granting trademark and patent protection to some very dubious applicants, but the USPTO does some things few other government agencies can claim: 1.) operate on its collected fees and 2.) turn a profit.

As it technically shouldn't require a budget allocation to operate, it seems odd that it should have to shut down at all. Arguments were made by the American Intellectual Property Law Association earlier this year that it shouldn't be part of the sequester, thanks to its ability to fund itself with collected fees.

“[W]e have serious doubts that the USPTO is lawfully subject to sequestration in the first place because it is funded through fee collections, not through government spending.”

“We believe that [the procedures being applied] restricts the spending authority of fee funded agencies and impacts them asymmetrically and unfairly relative to non-fee funded bodies.”

So, the USPTO is still a budget line and as such, is subject to the same treatment as other entities in these appropriations bills. Consequently, it will be shutting down along with the rest of the government if the shutdown outlasts its reserve. The other factor that plays into this strange situation is the fact that the reserve fees it's using to fund the next four weeks aren't safe from the rest of the government, which has shown a propensity for dipping into the USPTO's profits repeatedly over the past 20+ years.

Fee diversion (i.e., confiscating money paid to the USPTO by customers) has a long history that spans at least two decades and three different Presidents, although for a brief time during the Bush Administration it did cease thanks to the efforts of then Director Jon Dudas.

More details here.

Since 1991, about $1 billion in user fees have been withheld from the USPTO as a result of the practice of diverting user fees – collected from patent and trademark applicants – away from the Office to unrelated government programs. The America Invents Act, signed into law on September 16, 2011, created a “reserve account” in the U.S. Treasury to hold the fees collected by the USPTO that exceed its annual appropriation. The law instructs the USPTO to look to appropriations acts for instructions on how to access the money. The FY 2012 appropriations bill did include instructions for the USPTO on how to access money in the reserve fund, however such language must be reinserted each future appropriations bill. Therefore, the reserve account alone will not stop diversion and a more permanent fix is needed.

To that end, Rep. Mike Honda has submitted a bill to protect the reserve fees from being diverted to cover shortfalls elsewhere or fund new spending. But, much like the budget itself, it's currently languishing in the House, not having moved forward since June 28th.

The entire office (of nearly 12,000 employees) won't be shut down, though. Critical systems will be maintained in order to protect two mostly-imaginary things that the government holds near and dear: intellectual property rights and national security.

The excepted employees will ensure the functionality of processes and systems minimally necessary for the preservation of patent rights, to allow compliance with statutory provisions that cannot be waived, and avoid disclosures of information that would be detrimental to the national security.

Additionally, the excepted employees will ensure the functionality of processes and systems minimally necessary to preserve trademark rights. Preventing the public from accessing the USPTO’s electronic filing and payments systems may result in the complete or partial loss of intellectual property. Therefore, in order to prevent the loss of valuable intellectual property, these systems should remain open during any closure of the USPTO.

While I have (along with others) expressed some deep disappointment and incredulity at the agency's actions, the fact remains that it's a governmental anomaly. It turns a profit. And its reward for making money is being made to suffer through sequestration and shutdowns and have its surplus (which could keep it operating through both events) drained by opportunistic legislators who assume a penny saved is a penny better spent.

Filed Under: fee diversion, funds, government shutdown, upsto