LA Chargers Face New Troubles at the USPTO

By: Abigail Zeller

In January 2016, the National Football League (NFL) agreed to allow the St. Louis Ram’s to relocate to Los Angeles (LA). As part of that agreement, the NFL also gave the San Diego Chargers a one-year option to join the Rams in LA. Recently, the Chargers exercised that option and reached an agreement that will allow them to play in the new Inglewood Stadium, which is which is slated for completion in 2019.

Even though the Chargers move was announced only a few weeks ago, the team took steps to protect its intellectual property interests much earlier.   For example, almost a year ago the Chargers Football Company (owner of the team) filed trademark applications with the U.S. Patent and Trademark Office (USPTO) for the marks, “LA CHARGERS” and “LOS ANGELES CHARGERS” for products such as toys, apparel, and, of course, for “professional football games and exhibitions.”

Unfortunately for the Chargers, LA GEAR, a well-known athletic apparel company, recently filed a Notice of Opposition against the “LA CHARGERS” trademark application. A Notice of Opposition is legal challenge to the right to register a particular trademark. Most often, a trademark application is opposed by someone who owns prior rights in an identical or confusingly similar trademark.

In this instance, LA GEAR’s opposition asserts that the “LA CHARGERS” trademark conflicts with its own trademarks, and is likely to cause consumer confusion, leading consumers to incorrectly believe that the “LA CHARGERS” goods originate from LA GEAR. This argument, known as “likelihood of confusion,” is the core claim of a trademark infringement suit. Trademark law protects trademark owners from others who use marks that are identical or, as LA GEAR alleges, confusingly similar to the trademark owner’s marks.

If the USPTO rules in LA GEAR’s favor, the Charger’s may be forced to take corrective action, e.g., by rebranding the team with a new mark that is not confusingly similar to LA GEARS’ marks.  Alternatively, the Chargers could challenge the decision in federal court or attempt to settle the matter with LA GEAR privately.

In addition to LA Gear’s opposition, the Chargers’ new logo faced widespread criticism on the basis that it was too similar to the logo of other major sports teams, most notably the LA Dodgers (see below).  In the face of such criticism, the Chargers revised their new logo several times before finally settling on a variation resembling the Chargers’ original logo.

The circumstances facing the Chargers emphasize the importance of performing trademark due diligence when branding any company, no matter how big or small. Among other things, trademark due diligence includes searching existing trademark records to determine the availability and overall protectibility of a chosen trademark, as well as the risk of potential conflicts down the line.  Although U.S. law does not require that trademark searches be conducted prior to using and/or filing an application to register a trademark, conducting such a search can help uncover risks and save time and headaches down the road.

Intellectual Property Law: Seeing Software as Patent-Eligible Subject Matter

By: Nikolas J. Uhlir

blog postPrompting a collective sigh of relief from patent attorneys that represent clients in the software industry, the Court of Appeals for the Federal Circuit in Enfish LLC v. Microsoft reversed a lower court’s holding that Enfish’s patent claims – which are directed to software – were invalid for claiming patent-ineligible subject matter under 35 US Code Section 101.

Enfish is the first Federal Circuit case, after the Supreme Court’s landmark decision in Alice Corp. Pty. v. CLS Bank International (2014), to reverse a lower court’s holding that software patent claims are patent-ineligible under Section 101. More important, though, is the insight Enfish provides to patent practitioners and businesses who seek to patent software-based inventions in the United States.

The patents at issue in Enfish are drawn to a logical model for a computer database. Typical logical models create data tables that do not describe how the information therein is arranged in the physical memory of a computer. In contrast, the patents at issue in Enfish relate to a logical model that creates a self-referencing data table that “…includes all data entities… with column definitions provided by rows….” Notably, the Enfish patents assert that the patented logical model enables computers to search and store data more efficiently than prior known logical models.

Section 101 provides that a patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” Intentionally broad, the language of Section 101 indicates that a wide range of inventions are eligible for patent protection, provided the other statutory requirements for patentability are also met. However, US courts have long since held that laws of nature, natural phenomenon, and abstract ideas are “exceptions” to Section 101 and do not qualify as “patent eligible” subject matter.

In its Alice decision, the Supreme Court applied a two-part test for determining whether a claimed invention was patent eligible under Section 101. Step one of the test requires a court to “…determine whether the claims at issue are directed to a patent-ineligible concept…” such as an abstract idea. If so, step two requires the court to determine whether the claim elements transform the claim into a patent-eligible application, e.g., by providing “substantially more” than a claim to the abstract concept itself.

Unfortunately, the Supreme Court in Alice provided no guidance as to how lower courts are to determine what constitutes an “abstract idea.” In the absence of such guidance, many federal courts have summarily concluded that many software patent claims are drawn to abstract ideas under step one of the test, and are not saved by the analysis under step two. Many software patents have therefore been invalidated as being drawn to patent-ineligible subject matter under Section 101.

Writing for a unanimous panel, Judge Todd Hughes distinguished the Enfish patents from many prior Section 101 decisions under Alice, and provided much needed guidance with regard to the application of step one of the two-part test. Of particular interest to the software patent community is the court’s indication that it does not read Alice to broadly hold that all improvements in computer-related technology (including software) are inherently abstract and, therefore, must be considered at step two of the analysis. According to the court, “software can make non-abstract improvements to computer technology just as hardware improvements can, and sometimes the improvements can be accomplished through either route.”

The court also explained that it was important not to construe claims at an excessively high level of abstraction, lest “the exceptions to Section 101 swallow the rule.” That is, the court cautioned against overgeneralizing the interpretation of the claims under step one, as doing so makes all inventions unpatentable because all inventions can be reduced to underlying abstract ideas and principles of nature.

Applying that reasoning, the Enfish court explained that “the first step… asks whether the focus of the claims is on… [a] specific asserted improvement in computer capabilities…” as opposed to an abstract idea in which a computer is “merely invoked as a tool.” Because the claims at issue in the Enfish patents were directed to a self-referential table that provided various improvements to the operation of a computer, the court found that the claims were not drawn to a patent-ineligible abstract concept. This new application of step one of the Alice test is significant, as many prior patent cases involving Section 101 have summarily concluded that software patent claims are drawn to an abstract idea, thus prompting consideration under step two of the test.

Also notable is how the Enfish court distinguished the claims at issue from the circumstances of various other notable patent cases involving Section 101, including Alice. According to the court, the claims in Enfish are drawn to specific improvements in computer “technology,” whereas the claims in various prior Section 101 cases are drawn to the generic application of computer technology to execute known business methods and/or mathematical formulas.

Although the impact of the Enfish decision will be realized in future decisions, practitioners and businesses should take note of the guidance provided by the court with regard to the abstract-idea analysis when preparing and prosecuting patent applications drawn to computer software. Specifically, patent applications and arguments in support of patent eligibility should focus on the impact an invention has on “computer-related technology,” e.g., improvements to the performance/operation of a computer during the execution of a task.

Arguably, all software improves a general purpose computer to the extent that a computer is useless without software. However, not all software improves computer-related technology. Focusing on how an invention improves the latter may help practitioners and businesses fall on the “patent-eligible” side of the analysis provided by the Enfish court.