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South Carolina Trademark Laws 2021

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SC Trademark Law

Our 2021 annual update regarding Trademark Laws in South Carolina is now live on Thomson Reuters Practical Law website.  The Q&A guide to South Carolina laws protecting trademarks addresses the governing of trademark registration, infringement, dilution, counterfeiting, unfair competition, and deceptive trade practices.

For attorneys without access to Westlaw, a PDF of this information may be downloaded here.

headshot of B.C. Killough B.C. Killough is a registered patent attorney based in Charleston, SC. On behalf of his clients, Bill has obtained more than 300 United States patents, participated in prosecuting more than 100 foreign patent applications and he has filed more than 1000 trademark applications with the US Patent and Trademark Offices.

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Teva Pharmaceuticals v Eli Lilly

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TEVA PHARMACEUTICALS INTERNATIONAL GMBH, Appellant,  v. ELI LILLY AND COMPANY, Appellee

ANDREW HIRSHFELD, PERFORMING THE FUNCTIONS AND DUTIES OF THE UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR OF THE UNITED STATES PATENT AND TRADEMARK OFFICE, Intervenor  2020-1747, 2020-1748, 2020-1750 Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. IPR2018- 01422, IPR2018-01423, IPR2018-01425. Decided:  August 16, 2021

Teva Pharmaceuticals International GmbH (“Teva”) appealed from a final written decision of the U.S. Patent and Trademark Office (“PTO”) Patent Trial and Appeal Board (“Board”) holding that the claims of three U.S. Patents are unpatentable as obvious over the cited prior art. The Federal Circuit affirmed.

Teva proposed that the Court first decide the merits of the appeal, and if not reversed or remanded, then the Court would issue a limited remand under Arthrex. The Court rejected Teva’s proposal.  Teva  then waived its right to a limited remand to seek rehearing by the Director.

Lilly asserted that a skilled artisan would have been motivated to combine the teachings of the references to make a humanized anti-CGRP monoclonal antibody for therapeutic use in humans.  Teva argued that the Board considered whether a skilled artisan would have been motivated to make an antibody merely to study or use it.  Therefore, according to Teva, the Board incorrectly discounted important safety and efficacy concerns when used for treating human disease. (more…)

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New Vision Gaming v SG Gaming

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New Vision Gaming & Development, Inc. v. SG Gaming, Inc., FKA Bally Gaming, Inc.

Nos. 2020-1399, 2020-1400 Fed. Cir. May 13, 2021 Before Circuit Judges Newman, Moore, and Taranto. Opinion by Circuit Judge Moore. Opinion concurring in part and dissenting in part filed by Circuit Judge Newman.

New Vision Gaming & Development, Inc. appealed two covered-business method decisions in which the Patent Trial and Appeal Board held that all claims and proposed claims are patent ineligible under 35 U.S.C. § 101. Since the Board issued those decisions before Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019), the Arthrex challenge was not waived by the appellant’s “raising it for the first time in its opening brief before this Court.” The Court vacated and remanded for further proceedings consistent with Arthrex. Judge Moore’s opinion specifically stated that “we need not reach any other issue presented in this case.” (more…)

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Mojave Desert Holdings v. Crocs

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MOJAVE DESERT HOLDINGS, LLC, Appellant v. CROCS, INC., Appellee

Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. 95/002,100.

ORDER ISSUED: February 11, 2021  ORDER MODIFIED: April 21, 2021

U.S.A. Dawgs appealed from a United States Patent and Trademark Office decision finding Crocs design patent (No. D517,789) patentable. U.S.A. Dawgs and Mojave Desert Holdings moved the Court to substitute Mojave as U.S.A. Dawgs’s successor-in-interest pursuant to Rule 43(b) of the Federal Rules of Appellate Procedure. The Court granted the motion.

Crocs sued U.S.A. Dawgs for infringement of the ’789 patent in the United States District Court for the District of Colorado.  U.S.A. Dawgs filed a request for inter partes reexamination of the ’789 patent at the USPTO.  The examiner rejected the claim. Crocs appealed to the Patent Trial and Appeal Board. (more…)

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Uniloc v Facebook, Whatsapp

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UNILOC 2017 LLC,  Appellant v.  FACEBOOK INC., WHATSAPP, INC.,   Appellees

Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. IPR2017- 01427, IPR2017-02087.

Uniloc 2017 LLC (Uniloc) appealed from two consolidated inter partes review (IPR) decisions of the Patent Trial and Appeal Board (Board) finding certain  claims of U.S. Patent No. 8,995,433 (Patent) as obvious.  Facebook petitioned to join an IPR initiated by Apple, Inc. challenging claims 1-6 and 8 of the Patent.  LG Electronics Inc. (LG) also petitioned to join both of Facebook’s IPRs.  This scenario presented a possible statutory estoppel issue. (more…)

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cxLoyalty v Maritz Holdings

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cxLoyalty, Inc. v. Maritz Holdings Inc.

No. 2019-1567 Nos. 2020-1307, 2020-1309Fed. Cir. February 8, 2021 Before Chief Judge Prost, with Circuit Judges Lourie and Hughes.

cxLoyalty petitioned for a covered business method (“CBM”) review of claims of U.S. Patent No. 7,134,087. The Board instituted CBM review and concluded that the original claims 1–15 are ineligible for patenting under 35 U.S.C. § 101 but that proposed substitute claims 16–23 are patent eligible. cxLoyalty appealed the Board’s ruling as to the substitute claims. Maritz cross-appealed the Board’s determination that the patent is eligible for CBM review and the ruling as to the original claims. The Court held that it did have authority to entertain the challenge to the CBM eligibility of the patent and that both the original and substitute claims are directed to patent-ineligible subject matter under § 101.

The patent presents a system and method that permits a customer of a loyalty program to redeem points for rewards without the need for human intervention. A graphical user interface (“GUI”) provides the interface for a customer to communicate with a web-based vendor system such as an airline-reservation system. An application programming interface (“API”) interfaces with the GUI and the vendor system to facilitate information transfer between them. (more…)

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Australian Therapeutic v Naked

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Australian Therapeutic Supplies Pty. Ltd. v Naked TM, LLC

No. 2019-1567  Fed. Cir. December 4 , 2020  Circuit Judge Wallach, dissenting from denial of a petition for rehearing en banc.

Naked and Australian both sell condoms. Pursuant to an “informal” settlement agreement, Australian agreed that it would not use or register the mark NAKED for condoms in the United States. Years later, Australian filed a petition to cancel Naked’s registration of the NAKED mark before the TTAB. The TTAB found that Australian had “contracted away its right to use and register NAKED and by extension NAKED CONDOMS,” had “failed to prove that it has standing to cancel the [NAKED] registration” due to it’s settlement agreement with Naked. (more…)

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Donner Tech v Pro Stage Gear

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Donner Technology, LLC V. Pro Stage Gear, LLC

No. 2020-1104 Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2018- 00708. Fed. Cir. November 9, 2020 Before Chief Judge Prost, with Circuit Judges Dyk and Hughes.

Donner Technology, LLC (“Donner”) petitioned for inter partes review (“IPR”) challenging various claims as obvious under 35 U.S.C. § 103. Donner’s petition set forth three grounds of unpatentability relying on the teachings of U.S. Patent No. 3,504,311 (“Mullen”). The Patent Trial and Appeal Board (“Board”) rejected these challenges on the ground that Donner did not prove that Mullen is analogous art. The Court vacated the Board’s decision and remanded the case.

Guitar effects pedals are electronic devices usually placed on a pedalboard and controlled by foot operation switches. The Pro Stage Gear patent purported to yield an improved pedal effects board that allowed easy positioning and changing of individual guitar effects, while providing a confined and secure area for cable routing and placement. (more…)

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Facebook v Windy City Innovations

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Facebook, Inc., v. Windy City Innovations, LLC

Nos. 2018-1400, 2018-1401, 2018-1402, 2018-1403, 2018-1537,2018-1540, 2018-1541  Opinion Issued: March 18, 2020 Opinion Modified: September 4, 2020  Before Chief Judge Prost, with Circuit Judges Plager and O’Malley.

Windy City Innovations, LLC (“Windy City”) filed a complaint accusing Facebook, Inc. (“Facebook”) of infringing certain patents. Exactly one year after being served with Windy City’s complaint, Facebook timely petitioned for inter partes review (“IPR”) of several claims of each patent. Windy City had not yet identified the specific claims it was asserting in the district court proceeding. The Patent Trial and Appeal Board (“Board”) instituted IPR of each patent. After Windy City had identified the claims it was asserting in the district court litigation, Facebook filed two additional petitions for IPR of additional claims, along with motions for joinder to the already instituted IPRs on those patents. The Board granted Facebook’s motions for joinder even though the one year deadline for institution had passed for the two additional petitions. The Court held that joinder of the new claims was improper, vacated the Board’s final written decisions as to those claims, and remanded for the Board to consider whether the termination of those proceedings finally resolved them.

(more…)

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Alacritech v Intel, Cavium, Dell

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Alacritech, Inc. v. Intel Corporation, Cavium, LLC, Dell, Inc.

Nos. 2019-1467, 2019-1468 Fed. Cir. July 31, 2020 Before Circuit Judges Moore, Chen, and Stoll.

Alacritech appealed the Patent Trial and Appeal Board’s decisions holding certain claims of U.S. Patent No. 8,131,880 unpatentable as obvious. The Court held that the Board did not adequately support its finding that the asserted prior art combination teaches or suggests a limitation recited in claims 41-43 of the patent, but found no reversible error in the Board’s remaining obviousness determinations.

The claim limitations at issue require that reassembly of packets take place in the network interface, as opposed to a central processor. None of the parties disputed that reassembly is disclosed by the asserted prior art. The crux of the dispute was where reassembly takes place in the prior art and whether that location satisfies the claim limitations. (more…)

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