Supreme Court Corner
American Axle & Manufacturing, Inc. v. Neapco Holdings LLC
PATENT – March 1, 2021
In the Q3 2020 edition of Supreme Court Corner, we noted the probability of a forthcoming petition for writ of certiorari in American Axle v. Neapco, in light of a divided, evenly split denial of rehearing en banc. American Axle involves another chapter in the Federal Circuit’s ongoing exposition of the law of patent eligible subject matter, and another case that suggests Supreme Court guidance would be helpful.
Having sought certiorari at the Supreme Court, patentholder American Axle has a number of amici who are urging the Court to take the case. This post is an amicus roundup, canvassing the approaches taken by the different amici.
A number of amici propose that the Court look to history in guiding present-day patent eligibility. Namely, where an invention resembles historically patentable subject matter, the new invention should be patentable. According to these amici, since the patent at issue claims the driveshaft of a car, and improved components of cars were historically patentable, this patent claims patentable subject matter.
This approach resembles the way federal courts approach many other issues. However, it may only kick the analytical can down the road because it does not address how to determine the degree of resemblance to historical analogues. Indeed, the rehearing decision at the Federal Circuit rejected precisely these analogy arguments by finding that the claims were directed not to a driveshaft itself, but to a law of nature embodied within a driveshaft. And would this inquiry be a factual question (i.e., a degree of technical comparability), or a question of law, or a mixed question?
United States Patent and Trademark Office v. Booking.com B.V.
TRADEMARK – Decided: June 30, 2020
In the Q3 2020 edition of Supreme Court Corner, we reported on the June 30, 2020 Supreme Court decision in USPTO v. Booking.com B.V., in which the Supreme Court held that the term “Booking.com” is not generic and therefore eligible for federal trademark registration. The Court based its decision on the general proposition that a term styled "generic.com" is a generic name for a class of goods or services only if the term has that meaning to consumers.
In response, the USPTO issued new guidance to its examiners in October that “a generic top-level domain, such as ‘.com,’ is not automatically generic, nor is it automatically non-generic. Instead, as in any other genericness analysis, examining attorneys must evaluate all of the available evidence, including the applicant’s evidence of consumer perception, to determine whether the relevant consumers perceive the term as generic for the identified class of goods and/or services or, instead, as capable of serving as a mark.”
The examiner is also instructed to determine whether the generic.com mark has acquired distinctiveness under 15 U.S.C. § 1052(f), though “applicants will generally have a greater evidentiary burden to establish that the proposed mark has acquired distinctiveness.”
Mark holders or practitioners seeking to register a generic top-level domain may wish to heed the USPTO’s guidance. In particular, the guide identifies a non-exhaustive list of evidence that examiners are instructed to consult, including dictionaries, usage by the applicant, usage by consumers and competitors, use in the trade, consumer declarations, and relevant and probative consumer surveys. Applicants would be wise to amass and submit as much of this evidence as it can when seeking to register a generic.com mark to assist the examiner’s highly factual inquiry.
The USPTO’s guidance can be found here: https://www.uspto.gov/sites/default/files/documents/TM-ExamGuide-3-20.pdf.