Archive for September, 2014

It’s No Use: Why Chevy’s BOLT Trademark Isn’t (Necessarily) a New Brand

September 24th, 2014

There is some curious eco-mark news to report:  apparently, last month General Motors filed two notable U.S. trademark applications, one for BOLT and the other for CHEVROLET BOLT.

They are Application Nos. 86357513 and 86357523 (BOLT Applications), respectively, and list the goods as “motor land vehicles, namely, automobiles.”

The clean tech and electric vehicle blogosphere was buzzing with speculation as to what this new brand means.  Is GM planning to offer additional EVs, perhaps a new low-cost Chevy Volt, a short-range performance vehicle, or a cool new concept car?  Maybe different battery sizes?

One clue is that the BOLT applications’ goods listing is much broader than the goods in GM’s prior CHEVROLET VOLT trademark registration, which identified “extended range electric automobiles.”  So, contrasted with the VOLT, the BOLT trademark could cover any type of automobile, electric or otherwise.

For now, though, the clean tech blogs had to conclude there is no indication that GM intends to use this new trademark.  Inside EVs proposed that GM might be trying to protect itself from a Chinese ripoff called Bolt.

Gas 2.0 carried this non-use preemptive motive further, noting that:

Car companies are constantly taking out trademarks for names they have no intention of using; it’s just a matter of making sure nobody else uses it either.

While car companies may try to keep potential brand names away from their competitors, there are strict legal limits on the ability to protect a trademark that is not in use.

To fully understand this and to put the BOLT Applications in context, we need a bit more information about the U.S. trademark system.

A U.S. trademark application must have one or more legal bases, i.e., a situation (basis) defined by the federal trademark law, to support the filing.  The available filing bases are (1) actual use of the mark in interstate commerce, (2) a bona fide intent-to-use the mark in interstate commerce, (3) a foreign trademark application for the same mark and the same goods or services, (4) a foreign registration for the same mark and the same goods or services, and/or (5) extension of an international registration for the same mark and the same goods or services.  By far the most common filing bases are the first two.

In the United States, trademark rights flow from, and are contingent upon, use of the mark.  Although an applicant can keep a U.S. trademark application pending for about two and a half years based only on the stated intent to use the mark, the U.S. Patent and Trademark Office (USPTO) will not register a trademark in a use-based or intent-to-use application absent proof of use in interstate commerce and there is no enforceable trademark right, even at common law, without use of the mark.

More particularly, to obtain a registration of a use-based or an intent-to-use application, the applicant must prove use of the mark for the goods and/or services listed in the application by submitting a specimen showing such use.

If based on a foreign trademark application or registration or an international registration, however, the applicant does not need to use the mark in the United States to obtain a U.S. registration.  The USPTO will register the trademark upon proof that the applicant obtained a foreign registration.

Interestingly, the United States is one of only a handful of countries that require use to register a trademark and have an enforceable right in the mark.  Most countries do not require use of the mark to obtain a registration.

So filing a U.S. trademark application based on a foreign or international registration gets around the use requirement (in the United States and potentially anywhere in the world), at least or the purpose of obtaining a U.S. trademark registration.

But that’s not the end of the story.  The owner of a U.S. trademark registration registered solely on the basis of a foreign or international registration (i.e., without use in the United States) cannot enforce its trademark in a U.S. court.  While some U.S. courts have held that such registrants have standing to sue, even in those courts, the registration would be canceled without use in interstate commerce.

So while a foreign trademark registration can get you a U.S. registration without use in the United States, you probably can’t stop other U.S. users of the mark because your registration would be unenforceable and would not stand up in court.

Now back to GM’s BOLT applications.  This is where it gets interesting.  The applications are not based on use of the marks in the United States or an intent to use in the United States.  Rather, each application is based on a foreign application filing, specifically Brazilian trademark application number 907703178 for CHEVROLET BOLT and 907703070 for BOLT.

Brazil is one of those countries that does not require use to obtain a trademark registration.  So GM could get itself U.S. trademark registrations, albeit unenforceable ones, for BOLT and CHEVROLET BOLT without ever using this exciting new brand anywhere in the world.

Even though GM’s U.S. registrations may be unenforceable “paper” registrations, Gas 2.0’s point still has some merit.  Ownership of U.S. trademark registrations for the BOLT marks could still scare off potential users and keep competitors at bay for a while.

Don’t be surprised, though, to not see a shiny new Chevy Bolt speeding by you on the highway. 

Guest Post: Pace of Wind Innovation Slows, But is Set to Skyrocket Again

September 17th, 2014

Totaro & Associates, a Houston, TX based research and consulting firm has released a new research report on the pace of wind turbine technology innovation and proliferation.

IP ownership rankings show General Electric still leading with over 1,400 patent families, and the ability to now leverage the Alstom wind portfolio, which puts the combined total above 1,550.  Siemens has overtaken Vestas for #2 as predicted in last year’s report, and Mitsubishi drops from #4 to #5.

Previously outside the top 10, Guodian United Power has rocketed up into the #4 spot due to more patent filings in 2012 than any other company, although most filings were exclusive to China.

The top 10 wind turbine manufacturers control more than 56% of all wind patent filings, as well as over 77% of the patents which are broadly applicable to the entire industry or potentially infringed.  This strongly suggests the concentration of innovation in wind lies with those who can afford it.

The pace of patent filings has finally dropped for the first time after an average CAGR of 47% during the 2007 – 2011 time-frame.  The report indicates only a 7% growth in the number of global patent filings in wind in 2012 vs. 2011 and a slight decline for 2013 is expected as the recent market downturn has put a damper on research and development (R&D) spending and expenditure on IP protection.

Market conditions indicate that the pace is set to increase again in the coming years due to an increased commitment of expenditure on R&D.  Some companies are spending up to 6% of their revenue on R&D, which is almost double the spend rate in 2010 after the financial crisis.  Filings are expected to return to the levels seen in 2011 by 2015/16, although the average CAGR is expected to be a more modest 5 – 10%.

The research also shows that the US has the greatest number of patent filings on wind turbine technology, and companies have collectively spent over $162M on IP protection with over 8,365 individual patent filings there.  Europe is second at $138M with over 6,100 filings and China third at $61M with over 5,000 filings.  China is poised to overtake Europe for #2 within the next 12 months.

Globally, the entire wind industry has spent $522M to date on patent protection.  Expenditure on IP protection by wind companies is expected to escalate, with $1B to be spent by 2019 and $2B by 2026.

The past year has seen the penetration of some non-practicing entities (NPEs), more commonly referred to as ‘patent trolls,’ into the wind market.  These companies acquire orphaned intellectual property assets or develop their own patent portfolios specifically for the purpose of monetizing against the entrenched players in the industry.

With so many patents available for acquisition in the past 18 months, it is no surprise that these NPEs are seeing an opportunity to take advantage of market timing and attempt to drive up costs for operating companies in wind.

The full report is available from Totaro & Associates www.totaro-associates.com.

 

*Philip Totaro is the Principal at Totaro & Associates, a consulting firm focused on innovation strategy, competitive intelligence, product development and patent search.  To find out more, or get in touch please visit www.totaro-associates.com.

Clean Tech in Court: Green Patent Complaint Update

September 11th, 2014

As with many things, July and August were slow months for green patent litigation.  However, a handful of green patent complaints were filed in the last two months in the areas of solar power, green chemicals, smart meters, and, of course, LEDs.

 

Solar Power

Conlin v. Solarcraft, Inc.

Kevin L. Conlin sued Solarcraft on July 2, 2014 in federal court in Houston, Texas.  The complaint alleges that several patents relating to portable solar power units are invalid or unenforceable due to inequitable conduct.  Conlin further alleges that he should have been named as an inventor on the patents.

The patents-in-suit are:

U.S. Patent No. 7,832,253, entitled “Portable weather resistant gas chromatograph system”

U.S. Patent No. 7,843,163, entitled “Portable weather resistant enclosure”

U.S. Patent No. 7,750,502, entitled “Portable weather resistant flow meter system”

U.S. Patent No. 7,795,837, entitled “Portable solar power supply trailer with a security containment area and multiple power interfaces”

U.S. Patent No. 7,880,333, entitled “Method for weather resistant portable flow metering”

E. I. du Pont de Nemours and Co. v. SunEdison, Inc.

A previous post discussed du Pont’s solar paste patent litigation with Heraeus and another post detailed the parties’ subsequent legal wrangling over a press release and customer letters du Pont wrote about the litigation.

Armed with a new solar paste patent, du Pont has sued SunEdison.  Filed August 21, 2014 in the U.S. District Court for the District of Delaware, Du Pont’s complaint accuses SunEdison of infringing U.S. Patent No. 8,497,420 (‘420 Patent).

The ‘420 Patent is entitled “Thick-film pastes containing lead- and tellurium-oxides, and their use in the manufacture of semiconductor devices” an directed to a thick-film paste for printing the front-side of a solar cell having one or more insulating layers.  The thick-film paste comprises an electrically conductive metal and a lead-tellurium-oxide dispersed in an organic medium.

Green Chemicals

Koch Agronomic Services, LLC v. Eco Agro Resources, LLC

In this lawsuit over a treatment agent for fertilizer, Koch accuses Eco Agro of infringing U.S. Patent No. 5,698,003 (‘003 Patent).  The complaint was filed in the U.S. District Court for the Middle District of North Carolina on August 13, 2014.

The ‘003 Patent is entitled “Formulation for fertilizer additive concentrate” and directed to solvent systems for the formulation of certain urease inhibitors. These formulations enable the preparation of stable concentrated solutions for storage, transportation, and impregnation onto solid urea fertilizers and incorporation into liquid urea fertilizers.

According to the complaint, Eco Agro’s N-YIELD product, an environmentally-friendly urease inhibitor used to treat urea-based fertilizers, infringes the ‘003 Patent.

Smart Meters

Sensor-Tech Innovations LLC v. CenterPoint Energy Houston Electric, LLC

On July 16, 2014 Sensor-Tech sued CenterPoint for patent infringement in federal court in Marshall, Texas.  According to the complaint, CenterPoint’s Advanced Metering System infringes U.S. Patent No. 6,505,086 (‘086 Patent).

Entitled “XML sensor system,” the ‘086 Patent is directed to a sensor communication system comprising an array of sensors adapted to transmit sensor data in XML format.

LEDs

Koninklijke Philips N.V.  et al. v. JST Performance, Inc.

Philips has asserted eleven LED patents against JST in an infringement action filed July 23, 2014 in federal court in Orlando, Florida.

According to the complaint, the patents are infringed by JST products in the A-Series, D-Series, E-Series, SR-Series, SR-M, SR-Q, RDS Series, Q-Series, and Wake Flame product lines, and LED products used in LED Lighting Devices such as dome lights, deck lights, driving lights, fog lights, light bars, spotlights, floodlights, diffused lights, and marine lighting products.

The asserted patents are:

U.S. Patent No. 6,250,774, entitled “Luminaire”

U.S. Patent No. 6,561,690, entitled “Luminaire based on the light emission of light-emitting diodes”

U.S. Patent No. 6,586,890, entitled “LED driver circuit with PWM output”

U.S. Patent No. 6,692,136, entitled “LED/phosphor-LED hybrid lighting systems”

U.S. Patent No. 6,788,011, entitled “Multicolored LED lighting method and apparatus”

U.S. Patent No. 6,806,659, entitled “Multicolored LED lighting method and apparatus”

U.S. Patent No. 6,967,448, entitled “Methods and apparatus for controlling illumination”

U.S. Patent No. 7,030,572, entitled “Lighting arrangement”

U.S. Patent No. 7,262,559, entitled “LEDS driver”

U.S. Patent No. 7,348,604, entitled “Light-emitting module”

U.S. Patent No. 7,566,155, entitled “LED light system”

 

Seoul Semiconductor Co. v. Curtis International Ltd.

Filed July 22, 2014 in the U.S. District Court for the Southern District of Florida, Seoul’s 7-patent complaint accuses Curtis’s LED televisions sold under the Proscan brand name of infringement.

The following patents are listed in the complaint:

U.S. Patent No. 8,314,440, entitled “Light emitting diode chip and method of fabricating the same”

U.S. Patent No. 7,964,943, entitled “Light emitting device”

U.S. Patent No. 7,626,209, entitled “Light emitting diode having active region of multi quantum well structure”

U.S. Patent No. 7,572,653, entitled “Method of fabricating light emitting diode”

U.S. Patent No. 6,942,731, entitled “Method for improving the efficiency of epitaxially produced quantum dot semiconductor components”

U.S. Patent No. 6,473,554, entitled “Lighting apparatus having low profile”

U.S. Patent No. 6,007,209, entitled “Light source for backlighting”