IP UPDATE
Exploring the Latest in Intellectual Property Law
IP UPDATE
Exploring the Latest in Intellectual Property Law
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Ninth Circuit Extends § 230 Immunity to Domain Name Registrars

by | Feb 16, 2023 |

The US Court of Appeals for the Ninth Circuit affirmed a district court’s dismissal of the plaintiff’s suit against a domain name registrar, holding that the plaintiff did not adequately allege that the registrar used the disputed trademark “in commerce” as required by the Lanham Act. The Court also extended immunity under the Communications Decency Act to include domain name registrars. Rigsby v. GoDaddy Inc. et al., Case No. 21-16182 (9th Cir. Feb. 3, 2023) (Clifton, McKeown, Thomas, JJ.).

Scott Rigsby, the first double leg amputee to complete an IRONMAN triathlon and founder of the Scott Rigsby Foundation (a nonprofit for wounded veterans and disabled persons), registered the domain name “scottrigsbyfoundation.org” with GoDaddy.com in 2007. GoDaddy is the world’s largest domain name registrar. When Rigsby failed to renew the domain name in 2018 because of a billing glitch, a third party registered the domain name and changed the content to an online gambling site. Rigsby filed suit against GoDaddy in the US District Court for the Northern District of Georgia, seeking declaratory judgment and alleging Lanham Act and state law claims. The suit was transferred to the US District Court for the District of Arizona pursuant to the forum selection clause in GoDaddy’s terms of service. The district court dismissed all claims with prejudice. Rigsby appealed, challenging dismissal and transfer of venue.

The Ninth Circuit affirmed dismissal. As an initial matter, the Court determined that it lacked jurisdiction to review the transfer order because the transferor fell within the Eleventh Circuit.

Turning to the Lanham Act claims under 15 U.S.C. § 1125(a), Rigsby alleged that GoDaddy knowingly provided use of the domain name in a deceptive manner. The Ninth Circuit rejected this argument for two reasons. First, § 1125(a) has a use in commerce requirement, and GoDaddy simply granted the third-party gambling site access to the domain name. The Court held that the third party’s use in commerce does not subject the registrar to liability for trademark infringement or unfair competition. Second, as a domain name registrar that did not engage in activities other than registration, GoDaddy is shielded from liability for cybersquatting under the Anticybersquatting Consumer Protection Act (ACPA). Importantly, the Court held that the plaintiff did not prove that GoDaddy registered, used or trafficked the domain name with a bad-faith intent to profit—a registrar’s lack of intervention with an infringing third-party use is not equivalent to use in commerce or active promotion of infringement.

The Ninth Circuit also barred Rigsby’s state law claims and related injunctive relief, explaining that GoDaddy is entitled to statutory immunity under Section 230 of the Communications Decency Act (CDA). (See § 230(c)(1) (“[n]o provider or user of an interactive computer service shall be treated as the publisher or speaker of any information provided by another information content provider”).) The Court identified three reasons why GoDaddy qualifies for CDA immunity. First, the Ninth Circuit joined the Second Circuit in ruling that domain name registrars and website hosting companies qualify as interactive computer services because [...]

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You Can’t Skirt around Obviousness by Arguing Expectation of Success Must Be Absolute

by | Feb 16, 2023 |

Affirming an obviousness decision by the Patent Trial & Appeal Board (Board), the US Court of Appeals for the Federal Circuit explained that the expectation of success need only be reasonable and not absolute. Transtex Inc. v. Vidal, Case No. 20-1140 (Fed. Cir. Feb. 3, 2023) (Prost, Reyna JJ.) (Schall, J. dissenting).

Transtex makes aerodynamic trailer skirts, which improve fuel efficiency by reducing air drag. Transtex sued WABCO in the US District Court for the Eastern District of Michigan, alleging that WABCO’s trailer skirts infringed several Transtex patents. WABCO responded by filing two inter partes review (IPR) petitions, one of which was against a patent with claims directed to “resilient” trailer skirts and the “resilient” struts used to attach them to a trailer.

WABCO argued that the challenged claims of the patent were obvious over a combination of the Layfield and Rinard references. WABCO submitted expert declarations stating that a person of ordinary skill in the art would have recognized that Layfield’s rigid struts could benefit from being constructed of resilient, more flexible material. Accordingly, a skilled artisan would have been motivated to look to other, similar types of trailer components that are also flexible—like that disclosed in Rinard—to improve upon Layfield’s rigid struts. WABCO successfully relied on much of the same expert testimony to argue that a skilled artisan would also have enjoyed a reasonable expectation of success in combining the more rigid struts of Layfield with the compressible materials taught in Rinard because Rinard taught the utility of having compressible “air scoops” at the tail end of a trailer, which would compress downwards when the trailer contacted a loading dock.

The Board agreed with WABCO and found the challenged claims obvious. According to the Board, Layfield taught all of the claim limitations except for a “resilient strut” that could flex both toward the center of the trailer and away from the center of the trailer and then regain its shape while Rinard taught the benefits of using compressible air scoops made out of a resilient material as part of a trailer skirt system. The Board also concluded that a skilled artisan would have been motivated to combine Layfield with Rinard and would have had a reasonable expectation of success, given the predictable nature of the field. Transtex appealed.

The Federal Circuit affirmed, finding that substantial evidence in the form of expert testimony supported the Board’s finding that although Layfield taught a more rigid strut instead of a resilient strut as claimed, a skilled artisan would have been motivated to combine Layfield’s strut with the resilient materials disclosed in Rinard and would have enjoyed a reasonable expectation of success when doing so. The Court concluded that this was a case where the evidence of motivation to combine, which “everyone agrees meets the substantial evidence threshold,” significantly overlapped with the evidence relating to a reasonable expectation of success, so it was correct to conclude that a skilled artisan would have reasonably expected the resiliency benefit that motivated them to combine [...]

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Things May Be Bigger in Texas, but Not Necessarily More Convenient

by | Feb 16, 2023 |

The US Court of Appeals for the Federal Circuit granted a mandamus petition after analyzing the Fifth Circuit’s public and private interest factors for transfer motions and ordered the US District Court for the Western District of Texas to transfer a case to the petitioner’s venue. In re Google LLC, Case No. 23-101 (Fed. Cir. Feb. 1, 2023) (Lourie, Taranto, Stark, JJ.).

Jawbone Innovations, LLC, had an eventful 2021:

  • February: Incorporated in Texas
  • May: Obtained ownership of nine patents (all directed to technologies behind the eponymous product line that liquidated in July 2017)
  • August: Rented office space in Waco, Texas
  • September: Asserted the nine patents it just acquired against Google in the Western District of Texas–Waco Division.

Google moved to transfer the dispute to the US District Court for the Northern District of California. That district was where (1) the accused products (earbuds, smartphones, speakers, displays and software) were researched, designed and developed; (2) the asserted technology was developed, and the asserted patents were prosecuted; and (3) the witnesses and sources of proof were primarily located. In contrast, no witnesses or sources of proof were located in the Western District of Texas. Moreover, Jawbone Innovations had no personnel in Waco nor activities related to the accused technology in the whole of Texas.

Judge Albright nevertheless denied Google’s transfer motion, weighing the Fifth Circuit’s four public interest factors and four private interest factors and finding that the transferee venue failed to meet the Fifth Circuit’s “clearly more convenient” standard. With the district court finding half of the eight factors not favoring either the transferee or the transferor, its holding boiled down to a ruling that considerations of “court congestion” and “judicial economy” (found to favor the transferor) outweighed considerations of “unwilling witness compulsion” and the “cost of attendance for willing witnesses” (found to favor the transferee).

Google petitioned the Federal Circuit for a writ of mandamus. The Court, applying the Fifth Circuit’s eight factor test, identified clear error in the district court’s analysis of five of the factors.

First: Addressing the “cost of attendance for willing witnesses” factor, the Federal Circuit found error in the district court’s conclusion that this factor only slightly favored transfer. Rather, the Court explained that this factor “weigh[ed] heavily in favor of transfer” because the transferee venue was clearly more convenient for potential witnesses, especially Google employees with technical, marketing and financial knowledge of the accused products. The error was localized to how the district court considered a Google declaration identifying at least 11 potential employee witnesses (all of whom were located in the transferee venue) and Jawbone Innovations’ assertions that the declaration omitted three potentially relevant Texas-based employees. The Court noted that while this 11 to three imbalance alone was sufficient to settle this factor, the district court’s error went further, finding Google’s declaration unreliable and less worthy of consideration because of the alleged omissions. The Federal Circuit determined this was error on error because the district court improperly ignored that the depositions [...]

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PTO Eliminates CLE Certification and Recognition for Patent Practitioners

by | Feb 9, 2023 |

The US Patent & Trademark Office (PTO) announced a final rule amending 37 C.F.R. § 11.11(a)(1) and (a)(3) to eliminate provisions concerning voluntary continuing legal education (CLE) certification for registered patent practitioners and persons granted limited recognition to practice in patent matters before the PTO. The final rule is effective February 27, 2023.

On August 3, 2020, the PTO provided that patent practitioners could voluntarily certify completion of CLE under 37 C.F.R. § 11.11(a)(3). Section 11.11(a)(1) provided that the Office of Enrollment and Discipline (OED) director could publish whether registered patent practitioners (or persons granted limited recognition under 37 C.F.R. § 11.9) certified that they completed the specified amount of CLE in the preceding 24 months. On October 9, 2020, the PTO published proposed CLE guidelines with a request for comments, and on June 10, 2021, the PTO announced that it would proceed with the voluntary CLE certification in spring 2022. After considering public comments, however, the PTO decided on December 16, 2021, to indefinitely delay the implementation of the voluntary CLE certification.

After further consideration of the public comments, the PTO published an interim final rule (IFR) on November 14, 2022, eliminating voluntary CLE certification and recognition provisions from the rules governing practice in patent matters before the PTO. The IFR provided an opportunity for stakeholders to submit comments by December 14, 2022. The PTO did not receive any comments and therefore adopted the IFR without change. For more information about the rule change, see the Federal Register notice.

The PTO may reconsider CLE reporting for patent practitioners in the future.

Because CLE certification was voluntary, its elimination is not expected to have a significant impact on patent practitioners.



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It’s PRUdent to Refrain from Cybersquatting: ACPA Applies to Domain Name Re-Registration

by | Feb 9, 2023 | ,

The US Court of Appeals for the Fourth Circuit joined the Third and Eleventh Circuits in ruling that the re-registration of an infringing domain name with a bad faith intent to profit violates the Anti-Cybersquatting Consumer Protection Act (ACPA). Prudential Ins. Co. of Am. v. Shenzhen Stone Network Info. Ltd., Case No. 21-1823 (4th Cir. Jan. 24, 2023) (Diaz, Thacker, Floyd, JJ.)

The ACPA, 15 U.S.C. § 1125(d), protects trademark owners from cybersquatters that register, traffic in, or use a domain name “identical or confusingly similar to or dilutive of” a distinctive or famous mark with the “bad faith intent to profit.” The ACPA jurisdictional requirement states that a trademark owner may either establish that a court has in personam jurisdiction over the defendant or, if personal jurisdiction cannot be established, bring an in rem action against the domain name.

Prudential Insurance Company of America’s trademark portfolio includes the term PRU and other PRU-formative marks. Shenzhen Stone Network Information (SSN) acquired the domain name PRU.COM from an online domain name marketplace, which leads to a parked page containing advertisements displaying Prudential’s trademarks and the marks of Prudential’s competitors. Prudential attempted to acquire the PRU.COM domain name twice—once through a domain name brokerage service and once after filing a Uniform Domain Name Dispute Resolution Policy (UDRP) administrative action with the World Intellectual Property Organization (WIPO). SSN rejected both offers. SSN claimed that it planned to develop the website into a foreign exchange and economic news platform, but it never substantively altered the parked page. Prudential subsequently dismissed the UDRP action and filed suit in the Eastern District of Virginia alleging cybersquatting and infringement against the CEO of SSN, Zhang (in personam), and PRU.COM (in rem). Zhang moved to dismiss the action or transfer it to the District of Arizona for lack of personal jurisdiction and in rem jurisdiction. The district court held that although it lacked personal jurisdiction over Zhang, in rem jurisdiction was appropriate at the time the complaint was filed. The district court then dismissed Prudential’s trademark infringement claim as moot, granted summary judgment to Prudential on its cybersquatting claim and ordered SSN to transfer the PRU.COM domain name. SSN timely appealed to the Fourth Circuit.

The Fourth Circuit, reviewing the district court ruling de novo, affirmed. As an initial matter, the Court held that the district court had proper in rem jurisdiction over the PRU.COM domain name because Zhang, as a corporate officer of SSN, lacked standing to defend SSN’s property interests and the domain name registry was located in Virginia. Moreover, in rem jurisdiction is assessed at the time the complaint is filed and cannot be destroyed during the pendency of the case if a proper defendant is later revealed.

Regarding the ACPA claim, SSN argued that since the initial domain name registrant registered PRU.COM in good faith, SSN, as a re-registrant, is not subject to the ACPA. The Fourth Circuit joined the Third and Eleventh Circuits in holding that the term “registration” in the ACPA is [...]

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KSR Does Not Extend to Design Patents (Yet)

by | Feb 9, 2023 |

Addressing the standard for obviousness of design patents, the US Court of Appeals for the Federal Circuit, in a per curiam opinion, upheld the Patent Trial & Appeal Board’s finding that a challenged design patent was not obvious over the pre-KSR design patent obviousness test or anticipated. LKQ Corporation v. GM Global Technology Operations, Case No. 21-2348 (Fed. Cir. Jan. 20, 2023) (per curiam) (Lourie, J., concurring) (Stark, J., concurring).

GM owns a design patent for the fender of a vehicle. LKQ Corp. previously held a license to the patent from GM, but negotiations to renew the license failed. Because LKQ continued to manufacture the fender after the expiration of the license, GM sent LKQ notice that it was infringing the patent. In response, LKQ petitioned for an inter partes review against GM, alleging that the patent was obvious and/or anticipated.

The Board found that LKQ had not presented enough evidence to prove that the patent was obvious or anticipated. For purposes of evaluating the obviousness of the design over prior art, the Board defined ordinary observers as “retail consumers who purchase replacement fenders and commercial replacement part buyers.” The Board concluded that, from the perspective of the ordinary observer, there were multiple differences between the patented design and the key reference, a prior art design patent. LKQ appealed.

LKQ argued that the Board erred in finding that there was no anticipation and in applying the obviousness tests of In re Rosen (C.C.P.A. 1982) and Durling v. Spectrum Furniture (Fed. Cir. 1996) because the Supreme Court of the United States overruled those tests in KSR International v. Telflex (2007).

The Federal Circuit upheld the Board’s definition of the ordinary observer. The Court found that retail purchasers of the entire vehicle would not be included in the ordinary observer group because purchasers of the product embodying the design are interested in the part itself, not the vehicle as a whole. The Court went on to uphold the Board’s application of the ordinary observer obviousness test, agreeing that the patented design created different overall impressions from the prior art for purposes of both obviousness and anticipation.

The Federal Circuit then addressed whether KSR overruled the Durling and Rosen tests for obviousness of design patents. The Court found that LKQ properly preserved the argument for appeal by asserting it in its opening brief to the Board. The Court then found that it was unclear whether the Supreme Court overruled Durling and Rosen, and therefore the Court was bound to apply the existing law. In applying the Durling and Rosen tests, the Court found that LKQ had failed to identify “the correct visual impression created by the patented design as a whole” because the prior art patent lacked certain key design features of the patented design. Thus, the Court affirmed the Board’s finding that the patent was not obvious.

Judge Lourie provided an additional opinion and addressed LKQ’s argument that KSR overruled Rosen. Lourie stated that because KSR did not involve design patents, which [...]

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Actual Confusion Is the Best Evidence of Confusion

by | Feb 9, 2023 |

The US Court of Appeals for the Eighth Circuit reversed and vacated a district court’s preliminary injunction grant in a trademark dispute, concluding that potential confusion is insufficient to satisfy the burden of showing a substantial likelihood of confusion. H&R Block, Inc.; HRB Innovations, Inc. v. Block, Inc., Case Nos. 22-2075; -2023 (8th Cir. Jan. 24, 2023) (Gruender, Erickson, JJ.) (Melloy, J., dissenting).

H&R Block was founded in 1955 and specializes in income tax preparation and other tax and financial services. Over the years, H&R Block has invested billions of dollars in advertising campaigns and has developed significant market presence both in person and online. The company has also obtained several federal registrations directed to the use of a green square logo with its products and asserts that in addition to “H&R Block” it is known as just “Block.”

Square, Inc., is the company behind the Square payment card reader and point-of-sale software that allows individual sellers to accept credit card payments. Square was founded in 2009 and grew over time by acquiring or developing other businesses. Cash App is one of Square’s businesses. Cash App started in 2013 as Square Cash and is a purely digital platform that allows users to deposit and store money on the app. In November 2020, Square acquired free tax credit service Credit Karma Tax, which was rebranded as Cash App Taxes and integrated into the Cash App platform for the 2022 tax season. In December 2021, Square was renamed Block, Inc., and the name change was publicized via Twitter.

Fifteen days after the name change was announced, H&R Block filed suit alleging trademark infringement. Shortly thereafter, H&R Block moved for a preliminary injunction. The district court analyzed the marks at issue for likelihood of confusion and granted, in part, H&R Block’s request for a preliminary injunction. Block appealed.

The Eighth Circuit analyzed a list of six non-exclusive and non-exhaustive factors in assessing likelihood of confusion:

  1. The strength of the owner’s mark
  2. The similarity of the owner’s and the alleged infringer’s marks
  3. The degree to which the products compete with each other
  4. The alleged infringer’s intent to pass off its goods as those of the trademark owner
  5. Incidents of actual confusion
  6. The type of product, its cost and its conditions of purchase.

The Eighth Circuit agreed with the district court that H&R Block had demonstrated that its registered and common law marks were commercially strong but found that the record as a whole did not weigh in favor of H&R Block on the similarity factor because there were observable differences between the two logos and the competing products.

The Eighth Circuit indicated that ultimately the best evidence of likelihood of confusion is actual consumer confusion. While the record supported possible confusion by some consumers, the Court found that the district court had erred in finding actual consumer confusion and that H&R Block had not presented sufficient evidence to rise to the level of substantial confusion by an appreciable number of ordinary consumers. [...]

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2023 IP Outlook: What to Watch in Patent, Trademark and Copyright Law

by , , , , , , , , , , , , , and | Feb 7, 2023 | , , , , ,

Coming out of 2022, developments around the globe are shaping the intellectual property (IP) landscape in the new year. We are seeing cases at the intersection of IP law and NFTs, the opening of the Unified Patent Court in Europe, and decisions from the Supreme Court of the United States and the Court of Appeals for the Federal Circuit affecting innovators and brand owners.

McDermott’s 2023 IP Outlook examines the top trends and decisions in IP law from the past year and shares what you and your business should look out for in the year ahead.

The Latest in SEP Licensing

Amol Parikh

The uncertainty surrounding standard essential patent (SEP) licensing persisted in 2022 and shows little sign of clearing in 2023. SEPs must be licensed to technology implementers on fair, reasonable and nondiscriminatory (FRAND) terms. Because there is no formal definition of FRAND terms, however, legal decisions involving FRAND have historically been determined by courts and non-governmental standard-setting organizations (SSOs). Disputes are frequent—especially between patent owners and technology implementers—and are becoming even more so as advanced wireless technologies such as 5G and WiFi 6 proliferate. Read more.

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Improper Inventorship in US Patent Litigations

Mandy H. Kim | Cecilia Choy, Ph.D.

Inventorship issues can have serious implications in patent litigation, leading to invalidation or unenforceability of the patent at issue, as seen in several notable 2022 cases. In the coming year, patent owners should take steps to minimize risks related to improper inventorship challenges. Read more.

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Patent Decisions Affecting Pharma and Biotech Companies

Douglas H. Carsten | Anisa Noorassa

The past year brought many developments in the life sciences patent legal space. Three decisions in particular hold potential ramifications for drug makers and patent holders in 2023. This year, the Supreme Court of the United States is also expected to consider standards patents claiming a genus must meet to withstand a validity challenge under Section 112—a ruling that could have a significant impact on patent holders in the biotech industry. Read more. 

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Trends in the Western District of Texas

Syed K. Fareed | Alexander Piala, Ph.D. | Christian Tatum

Over the past year, two developments infiltrated the Western District of Texas (WDTX) which may decrease the success of venue transfers and keep case volume steady in 2023. These developments could also give plaintiffs more control over where litigation takes place, including more control over having a case tried before Judge Alan Albright in the Waco Division of the WDTX.
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Strings Attached: No Amendment for Trademark Application in Inter Partes Opposition Proceeding

by | Feb 2, 2023 |

The Trademark Trial & Appeal Board (Board) designated as precedential a decision denying a motion to amend and granting partial summary judgment based on a mistaken identification that did not match the goods sold using the trademark. Fender Musical Instruments Corporation v. Win-D-Fender, LLC, Opp. No. 91272326 (TTAB Sept. 22, 2022) (designated precedential Jan. 12, 2023) (Wolfson, Heasley, Cogins, ATJs) (By the Board).

Win-D-Fender applied for a trademark to register the mark EN-D-FENDER for “musical instruments.” Fender opposed this registration on grounds of nonuse, likelihood of confusion and dilution by blurring and filed a motion for summary judgment on the ground of nonuse. Win-D-Fender then filed a motion to amend the identification of goods in its application from “musical instruments” to “musical instrument accessories, namely, an ambient wind foot joint guard for flute family instruments.”

The Board first considered Win-D-Fender’s motion to amend. Under the relevant trademark rules, an application that is subject to an inter partes proceeding may only be amended if the other party consents (Fender did not) and the Board gives approval, or if the Board grants a motion to amend.

Win-D-Fender filed its application via the Trademark Electronic Application System (TEAS). In a TEAS application, only the goods listed in the proper field can be considered for the identification of goods and broadening the scope of the identification is not permitted. In Win-D-Fender’s application, the only goods listed in the “Identification” field were “musical instruments.” Win-D-Fender argued that its application included a miscellaneous statement reading, “For Musical Instrument Accessories namely a wind guard mounted to a flute.” The Board determined, however, that the description was not in the proper field and therefore was not considered in the identified goods. The Board explained that the TEAS Plus instructions warn applicants to not use the TEAS Plus “Identification” field if it does not contain an accurate listing of the goods and services and to instead use the TEAS Standard filing option. The Board noted that although the identification of “musical instruments” may have been a mistake, it is settled that an established identification cannot later be expanded. The Board concluded that Win-D-Fender was limited to amendments that would narrow or clarify the type of “musical instruments.”

Win-D-Fender also argued that musical instrument accessories would fall under the general umbrella of musical instruments. The Board stated that while musical instruments may use accessories, the accessories themselves are not musical instruments and are not encompassed in the “musical instrument” class. The Board, therefore, denied the motion to amend the identification of goods.

The Board next considered Fender’s motion for summary judgment on the ground of nonuse. An application based on use of the mark in commerce is void if the mark was not used in commerce in connection with the goods identified in the application. As the Board had already decided, Win-D-Fender’s mark was limited to musical instruments and did not include accessories. Fender specifically pointed to an interrogatory response in which Win-D-Fender stated that the products sold under the [...]

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“Open Sesame” Without Translation Won’t Open Door to Trademark Registration

by | Feb 2, 2023 |

The Trademark Trial & Appeal Board (Board) addressed, for the first time, whether an applicant is required to submit an English translation for a word that is created by spelling out the pronunciation of Chinese characters using Latin characters. The Board concluded that the mark required an English translation and upheld the examining attorney’s refusal to register the mark because there was no translation submitted. In re Advanced New Technologies Co., Ltd., Application No. 86832288 (TTAB Jan. 12, 2023) (Bergsman, Taylor, Heasley, ATJs).

Advanced New Technologies sought to register the mark ZHIMA for several goods and services classes. Advanced has a co-pending application for a mark using Chinese characters, where Advanced stated that “[t]he non-Latin characters in the mark translate to ‘ZHIMA’ and this means ‘SESAME’ in English.” According to Advanced, “the Chinese characters [] pronounced ZHIMA mean ‘sesame,’ but ‘Zhima’ itself has no meaning.” The application for ZHIMA was assigned to Advanced by Alibaba Group Holding Limited. Ali Baba is the hero of an Arabian Nights story who opens the door to a thieves’ den using the magical phrase “open sesame.” The use of the Chinese word for “sesame” on goods thus creates an impression that these goods and services bring customers access to something previously unattainable.

Under 37 C.F.R. § 2.32(a)(9), a trademark application must contain an English translation when the mark includes non-English wording. To determine whether a mark includes non-English wording and its meaning, the examining attorney may use dictionaries and search engines. If the examining attorney discovers that the mark contains non-English wording, the applicant must submit a translation. Following this statutory framework, the examining attorney in this case relied on the Chinese English Pinyin Dictionary, which translates “zhi ma” as “sesame” in English and required Advanced to submit a translation that “ZHI MA” means “sesame” in English.

Advanced argued that individuals fluent in English and Chinese would not transliterate “ZHI MA” back into its Chinese character counterparts, which actually do translate to “sesame.” In response, the examining attorney provided at least eight dictionary definitions where “zhima” was defined as “sesame.” Advanced then argued that the dictionaries were defining the Chinese characters, not the English transliteration because “ZHIMA” itself has no meaning in English.

The examining attorney modified the required translation statement to state that “ZHIMA is a transliteration of Chinese characters that means ‘sesame’ in English.” However, Advanced still refused to submit a translation, claiming that it was not required because there are no Chinese characters in the ZHIMA mark and the meaning of the Chinese characters cannot attach to a mark without them. The examining attorney provided information from many news articles where “zhima” was translated as “sesame.” For example, in articles referencing a Chinese version of Sesame Street, “Sesame” was translated as “Zhima.” The examining attorney also produced multiple websites discussing “zhima” products, all of which were sesame products.

The Board found that the many examples where “zhima” was translated as “sesame” by third parties demonstrated that ZHIMA was not an original [...]

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