It’s a Grand Old Flag, but Should it Be in Your Ad?

United States Statutes purport to restrict the use made of the American flag.

4 USC § 8 – Respect for Flag

No disrespect should be shown to the flag of the United States of America; the flag should not be dipped to any person or thing. Regimental colors, State flags, and organization or institutional flags are to be dipped as a mark of honor.

(a)   The flag should never be displayed with the union down, except as a signal of dire distress in instances of extreme danger to life or property.

(b)   The flag should never touch anything beneath it, such as the ground, the floor, water, or merchandise.

(c)   The flag should never be carried flat or horizontally, but always aloft and free.

(d)   The flag should never be used as wearing apparel, bedding, or drapery. It should never be festooned, drawn back, nor up, in folds, but always allowed to fall free. Bunting of blue, white, and red, always arranged with the blue above, the white in the middle, and the red below, should be used for covering a speaker’s desk, draping the front of the platform, and for decoration in general.

(e)   The flag should never be fastened, displayed, used, or stored in such a manner as to permit it to be easily torn, soiled, or damaged in any way.

(f)   The flag should never be used as a covering for a ceiling.

(g)   The flag should never have placed upon it, nor on any part of it, nor attached to it any mark, insignia, letter, word, figure, design, picture, or drawing of any nature.

(h)   The flag should never be used as a receptacle for receiving, holding, carrying, or delivering anything.

(i)   The flag should never be used for advertising purposes in any manner whatsoever. It should not be embroidered on such articles as cushions or handkerchiefs and the like, printed or otherwise impressed on paper napkins or boxes or anything that is designed for temporary use and discard. Advertising signs should not be fastened to a staff or halyard from which the flag is flown.

(j)   No part of the flag should ever be used as a costume or athletic uniform. However, a flag patch may be affixed to the uniform of military personnel, firemen, policemen, and members of patriotic organizations. The flag represents a living country and is itself considered a living thing. Therefore, the lapel flag pin being a replica, should be worn on the left lapel near the heart.

(k)   The flag, when it is in such condition that it is no longer a fitting emblem for display, should be destroyed in a dignified way, preferably by burning.

A Senate Report from 2008 provides an excellent summary of federal statutes and regulations.  However, there is no penalty for violation of the statute.  There are corresponding restrictions on the use of the American flag in the statutes of several of the states, some of which includes penalties. While these statutes are still on the books, they are of questionable enforceability, and one does not have to look very far to find the flag used on clothing (compare 4 USC § 8(d)), on costumes and uniforms (compare 4 USC § 8(j));  and in advertising (compare 4 USC § 8(i)).  The collection of U.S. Patents has several of these examples:


D771,519 American Flag Ball


D696,493 American Flag Novelty Headwear


D651,538 American Flag with Three Dimensional Stars






D585,775 Scoreboard in the Form of an American Flag


D549,032 American Flag Style Cover for Barbecue or the Like


D516,730 American Flag Bandage


D515,628 American Flag Duct Tape


D507,843 American Flag Lantern


D487,180 American Flag Pole Cover


D482,144 American Flag Colored Light Bulb


D463,998 Lighted American Flag


D459,860 American Flag Hat

Scams, The Biggest Threat to Patent and Trademark Owners

After threading the tortuous path through the Patent and Trademark Office, and withstanding assaults of infringers, who would have thought that one of the biggest problems for patent and trademark owners is scammers.  These scammers send official looking documents with data downloaded from the Patent and Trademark Office requesting payment for various unnecessary services, such as inclusion in a directory, or sometime for no service at all.

The USPTO has created a webpage, but it is largely forgotten by the time the solicitation is received.  The Director’s Blog recently reported that the Department of Justice obtained guilty pleas from two California men in a mass-mailing scam that targeted owners of U.S. trademark applications, stealing approximately $1.66 million from registrants and applicants of U.S. trademarks through companies called Trademark Compliance Center (TCC) and Trademark Compliance Office (TCO).

While these efforts are encouraging, it is still up to ip owners to protect themselves.  Critically evaluate any invoice you receive; as a general rule if its not from your IP counsel it is a solicitation that should be ignored.  In particular be on the look out for correspondence from:

  • Patent & Trademark Resource Center (Seattle & Woodinville, WA)
  • Patent and Trademark Organization (New York, NY)
  • Trademark Office Ltd. (New York, NY)
  • U.S. Trademark Compliance Office (Wilmington, DE)
  • Patent & Trademark Bureau (Philadelphia, PA)
  • Patent & Trademark Office (555 Madison Ave., New York, NY)
  • Patent & Trademark Office (299 Park Ave., New York, NY)
  • Patent & Trademark Agency (New York, NY)
  • Trademark and Patent Office (Los Angeles, CA)
  • P.T.M.A. Patent and Trademark Association (New York, NY) NEW



Employers Don’t Own Your Brain; They Merely Rent it

Apparently, New Jersey is about to join the list of states with statutes that protect the rights of inventors.  Generally, inventions made by employees belong to the employee, unless (1) that employee was specifically hired to invent, or is later assigned that task; or (2) there is an agreement between the employer and the employee.  However, in most states there is no restriction on the scope of these agreements.  Most times, an employer is content with owning inventions made using the time, material, or information of the employer, or which otherwise relate to the employers’ business.  However, some employers contract for all inventions made by the employer regarding of when or where it is made, or to what it relates.  It is this last category of employer that is targeted by the bill passed by the New Jersey legislature.

If the bill becomes law, New Jersey will join the small, but growing list of states that have statutes that affect employer’s claims to employee’s inventions:

  • California (California Labor Code § 2870)
  • Delaware (Delaware Code Annotated, Title 19, § 805)
  • Illinois (Illinois Revised Statutes, Chapter 140, §§ 301-303)
  • Kansas (Kansas Statutes Annotated §§ 44-130)
  • Minnesota (Minnesota Statutes Annotated § 181.78)
  • North Carolina (North Carolina General Statutes §§ 66-57.1, 66-57.2)
  • Utah (Utah Code Annotated §§ 34-39-2, 34-39-3), and
  • Washington (Washington Revised Code Annotated §§ 49.44.140, 49.44.150).

Employers with employees living or working in one of these states should be aware of these statutes and their requirements, or the employer may find that it does not have the rights it thought it did in its employees’ inventions.

Brexit Stage Right

KEEP_CALMThe Brexit referendum has raised a number of issues related to disentangling United Kingdom from the European Union.  Intellectual Property owners are understandably concerned about their European Intellectual property.



There is no need to be concerned about European Patents.  The European Patent Convention predates the 1993 establishment of the European Union.  Among the 38 contracting states to the EPC, several are not members of the EU: Albania, Iceland, Liechtenstein, Lithuania, Macedonia, San Marino, Serbia, Switzerland, and Turkey.  Upon the departure of United Kingdom from the EU, it can continue its membership in the EPC.

The United Kingdom leaving the EU will impact the proposed new Unitary Patent system and the Unified Patent Court. The United Kingdom was one of the jurisdictions required to ratify the Agreement on the Unified Patent Court, and London was one of the agreed locations for the Unified Patent Court.


With respect to the European Union Trade Mark system, the United Kingdom’s departure from the EU will likely affect the geographic scope of European Union Trademarks.  Some provision will be made to continue the protection of European Union Trademark registrations in the United Kingdom post-separation.  There will be at least two years before the separation occurs, and during which this transition issue will certainly be resolved.  For new applications, applicants should consider a Madrid Protocol application designating both the Community Trademark and the United Kingdom.


With respect to Community Designs, the United Kingdom’s departure from the EU will likely affect the geographic scope of Community Designs.  Some provision will be made to continue the protection of designs in the United Kingdom post-separation.  As pointed out above, it will be at least two years before the separation occurs, and during which this transition issue will certainly be resolved. For applications filed today, applicants should consider filing both United Kingdom and the European Community designs applications.  If the United Kingdom joins the Hague Convention, this double filing will become easier.

Protecting Websites

The graphics on a web page can be protected by copyright.  If they are distinctive enough, they can also be protected as a trademark, and even registered.  However, a third alternative, design patent, which can protect such things as website backgrounds and other website features.  See, for example,  U.S. Patent No. D570,362 on the background image for a portion of a display screen:



Google obtained U.S. Patent No. D599,372 on its landing page:









Timing is Everything

In Trieme Medical, LLC v. Angioscore, Inc., [2015-1504] (February 5, 2015) the Federal Circuit reversed the dismissal of Trieme’s complaint to have its assignor, Dr. Lotan, named as an inventor of Angioscore’s patents.

Lotan worked as a consultant for Angioscore, and had signed a consulting agreement with a Section 9(a) that gave Angioscore a license to any preexisting inventions made by Dr. Lotan:

(a) Inventions Retained and Licensed. Consultant has attached hereto, as part of Exhibit C, a list describing all inventions, original works of authorship, developments, improvements, and trade secrets which were made by Consultant prior to the date of this Agreement (collectively referred to as “Prior Inventions”), that belong solely to Consultant or belong to Consultant jointly with another and that relate to any of the Company’s current or proposed businesses, products or research and development; or if no such list is attached, Consultant represents that there are no such Prior Inventions. If, in the course of providing the Services, Consultant incorporates into a Company product, process or machine or into any Invention (as defined below), a Prior Invention owned by Consultant or in which Consultant has an interest, the Company is hereby granted and shall have a non-exclusive license (with the right to sublicense) to make, have made, copy, modify, make derivative works of, use, sell and otherwise distribute such Prior Inventions as part of or in connection with such product, process, machine or Invention.

and a Section 9(b) that gave Angioscore ownership of any inventions made during the term of the agreement:

(b) Assignment of Inventions. Consultant agrees to promptly disclose to the Company and hereby assigns to the Company, or its designee, all right, title and interest in and to all inventions, original works of authorship, developments, concepts, know-how, improvements or trade secrets, whether or not patentable, that Consultant may solely or jointly conceive or develop or reduce to practice during the term of this Agreement that relate to the Services (collectively referred to as “Inventions”).

Angioscore’s problem was that while the agreement was executed on May 1, 2003, Dr. Lotan actually began working before May 1, 2003, and the results of such pre-agreement work was not assigned to Angioscore.

The Federal Circuit could not determine on the sparse record of the motion to dismiss, whether or not the agreement transferred all of Dr. Lotan’s rights to Angioscore, or whether he retained some ownership based upon his pre-agreement work that he could validly transfer to Angioscore.  Angioscore may still prevail, but this case highlights the importance of knowing when a consultant or other inventor began working on the invention, and making sure that all rights, including those created before the execution of the agreement, are properly addressed.

Better Protection By Design

Design patents protect the aesthetic appearance of a product (or a part of a product). They are relatively easy and inexpensive to get, but are they worthwhile?

A design patent is a patent, meaning while the application is pending (typically about 20 months) the applicant can mark the product “patent pending,” and after the patent issues “patented.”  The design patent allows its owner to sue competitors for making, using, selling, or importing a product that is substantially the same as the patented design.  Substantially the same does not mean identical, and if the patent owner can show  the resemblance is such as to deceive such an observer and sufficient to induce him to purchase one supposing it to be the other, he or she has proven infringement.

A patent owner is usually entitled to an award of its lost profits, but no less than a reasonable royalty, however there is an alternative remedy for design patent infringement: the infringer’s profits. Moreover, this is the profit on the entire product.  Thus Apple was awarded Samsung’s entire profits on the phones found to infringe Applies design patents on the iPhone shell, not just the profits attributable to the shells (which were not sold separately).

Finally, a fifteen year design patent can be a stepping stone to perpetual trade dress protection, providing a period of exclusive use of the design needed to establish that the design has acquired “secondary meaning” and has become a protectable trade dress.

If a design patent makes sense in the United States, what about foreign protection.  Interestingly, while design patents are reasonably popular in the US, with more than 35,000 applications filed last year, design patents are even more popular in Asia,.  More than half a million design patent applications were filed in China last year (sixteen times as many as filed in the US), more than 65,000 were filed in South Korea, (nearly twice as many as filed n the US),and nearly 30,000 were filed in Japan (almost tying US filings):

  1. China (564555)
  2. S. Korea (64574)
  3. United States (35378)
  4. Japan (19738)
  5. EC (25745)
  6. Turkey (10251)
  7. India (9309)
  8. Iran (8864)
  9. Germany (7392)
  10. Australia (6597)
  11. Brazil (6590)
  12. Canada (5767)
  13. Russia (5184)
  14. UK (5084)
  15. France (4782)

Perhaps of more interest to US businesses is which countries are most popular with non-residents:

  1. China
  2. US
  3. EC
  4. Canada
  5. Japan
  6. Australia
  7. S. Korea
  8. India
  9. Russia
  10. Brazil

and in particular which countries are most popular with other U.S. filers:

  1. China
  2. Canada
  3. EC
  4. Australia
  5. Japan
  6. Brazil
  7. Mexico
  8. S. Korea
  9. India
  10. Russia

Design patents help round out an IP portfolio, but domestically, and abroad.


A Challenge to Inventorship Reveals Possible Issues Regarding Transfers of Ownership

In Shukh v. Seagate Technology, LLC, [2014-1406] (Fed. Cir. 2015), the Federal Circuit reversed summary judgment against Shukh claim to be named as a co-inventor for defendants, holding that Shukh’s reputational interest in being named an inventor gave him standing to challenge inventorship under 35 USC 256.

Shukh’s first argument was that Filmtec Corp. v, Allied-Signal, Inc., should be reversed.  Under Filmtec, Dr. Shukh’s assignment in the Employment Agreement of his ownership
and financial interests in his inventions conveyed legal in his inventions to Seagate, depriving him of standing to contest inventorship of the patent.  The Federal Circuit observed that  as a panel, it could not overrule that holding without en banc action — hardly a ringing endorsement of the immediate assignment doctrine of Filmtec.

While Filmtec has inspired us all to use the language “agree to assign, and hereby do assign.”  Perhaps we should do more.  An express statement that rights in any inventions vest immediately upon creation with the employer might provide some rights to the employer.  The employer might also incorporate assignment language in its invention disclosure statement:

I agree that all rights in the inventions disclosed herein belonged to the EMPLOYER from the moment they were created, and agree to assign, and hereby do assign any rights I may have in them to EMPLOYER,and authorize EMPLOYER to file a patent application thereon.  I further grant the the Chief Technology Officer of EMPLOYER a durable, irrevocable power of attorney to declarations, oaths, and other patent application papers, including assignments to EMPLOYER, if I am unable or unwilling to do so.

However, the Federal Circuit concluded that “concrete and particularized reputational
injury can give rise to Article III standing” to challenge inventorship of a patent, noting that “being considered an inventor of important subject matter is a mark of success in one’s field, comparable to being an author of an important scientific paper.”


When Help from A Vendor is Not So Helpful

The district court’s September 30 Order in Ethox Chemical, LLC vs. The Coca-Cola Company, 6:12-1682-KFM (D.S,C.2015) is an important reminder to pay close attention to the contributions made by vendors and consultants, and in particular to plan in advance for the possibility of such contributions.

Coca-Cola’s packaging group pioneered the use of polyethylene terephthalate (“PET”)
beverage containers.  One disadvantage of PET was that it is porous to gas, so the carbonation in beverages would gradually escape from the bottle.  Coca-Cola scientists identified an additive, BPO-1, that functioned as a gas barrier, and sought the assistance of several vendors including Ethox to make BPO-1 on a commercial scale.  Ethox determined that it it was not commercially feasible to use BPO-1, but one if its employees, Dr, Tanner, proposed PEM as an alternative.

Coca-Cola proceeded with a patent application on PET containers, and included PEM, which eventually resulted in the issuance of U.S. Patent No. 8,110,265.  However Coca-Cola did not include Dr. Tanner as a co-inventor.  Ethox and Dr. Tanner sued to have Dr. Tanner named as a co-inventor, and in the Order issued on September 30, the court agreed.  While adding Dr. Tanner as a co-inventor would not affect Coca-Cola’s access to the technology under 35 U.S.C. 262, it would affect Coca-Cola’s ability to block competitor from using the technology.  While the dispute is not yet over, and Coca-Cola may yet prevail, the dispute could have been avoided entirely with some advance planning.

Whenever a business deals with a third party who could potentially solve a technical problem it is facing, that business should address  the possibility upfront taking steps to secure access to the solution, and if desired secure exclusivity over the solution.  In addition, when preparing a patent application, the potential contributions of anyone who might have contributed to the invention should be vetted..



State Statute Restricting Assertion of Patent Infringement Not At Issue, So Remand to State Court Appropriate

Many of the states have passed legislation purporting to restrict a patent owner’s right to make accusations of infringement.  Some of these statutes seem to be of questionable validity, but we will have to wait for a determination.  In State of Vermont v, MPHJ Technology Investments, LLC, [2015-1310] (September 28, 2015), the Federal Circuit affirmed the district court’s remand back to state Court, finding that the Vermont Bad Faith Assertions of Patent Infringement Act (“BFAPIA”) had not (yet) been raised by the state.

The State of Vermont initiated an action under the Vermont Consumer Protection Act, 9 V.S.A. § 2453(a) for unfair trade practices and deceptive trade practices arising from MPHJ’s conduct in sending patent infringement warnings in the State of Vermont.  The district court found that Vermont was not seeking an injunction that requires MPHJ’s compliance with the Vermont Bad Faith Assertions of Patent Infringement Act (“BFAPIA”), 9 V.S.A. §§ 4195–99.. Given this conclusion, the Federal Circuit agreed that if the State
prevails on the merits in state court, it may not seek an injunction requiring MPHJ to comply with the BFAPIA.  The Federal Circuit found that because MPHJ relies
on the BFAPIA as its basis for removal under § 1442(a)(2), the necessary consequence of our decision is that we find no grounds for removal to federal court.