Federal Circuit Contradicts Itself in Playdom Service Mark Ruling

Author: Jon Siderits, Associate Member, University of Cincinnati Law Review

On March 2, 2015, the United States Court of Appeals for the Federal Circuit affirmed the Trademark Trial and Appeal Board’s (TTAB) decision to cancel David Couture’s registration on the mark PLAYDOM.[1] The Federal Circuit found that Couture, who applied to register the mark on May 30, 2008, failed to sufficiently use the mark in commerce to qualify for a trademark registration.[2] The decision is controversial due to the Federal Circuit’s failure to follow established precedent regarding what constitutes “use” in commerce and its creation of a new distinction between the “use” required for service marks and marks for goods. The decision ignored the Federal Circuit’s own guidance from its previous encounter with the issue, which supported a ruling in favor of Couture, and instead concluded that the “actual provision” of services is required before a service mark may be registered.[3]

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Federal Circuit No Longer to Review Patent Claim Construction Entirely De Novo

Author: Jon Siderits, Associate Member, University of Cincinnati Law Review

On January 20, 2015, the Supreme Court announced its decision in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., and did away with the Federal Circuit’s longstanding application of a purely de novo standard when reviewing a district court’s construction of a patent claim.[1] Specifically, the Supreme Court held that the Federal Circuit must review the district court’s resolution of any subsidiary factual matters under a clear error standard of review, and only then may it resolve the ultimate legal question of claim construction de novo.[2]  Marking a significant shift in the role of the district court judge in claim construction, and realigning the appellate court’s role with the Federal Rules of Civil Procedure, the Teva decision ensures that the lower court’s construction will play a more dispositive, rather than disposable, part in patent infringement cases.

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