July 9-10, 2013
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Last week, we learned that the U.S. Patent Office was considering blocking the trademark application for Apple’s “iPad mini” brand over several concerns. But a new filing shows the office’s first major concerns are no longer holding Apple back.

The U.S. Patent Office (USPTO) initially had concerns that the “mini” in iPad mini was not a recognizable sign or design and was just a description. Basically, the word “mini” indicates that it is a smaller version of the iPad, a term that is already trademarked. The USPTO also had a concern over the iPad mini’s overview page being used as Apple’s “specimen,” since the specimen is supposed to show an instance of the trademark “as your purchasers encounter it in the marketplace,” according to the USPTO web site.

But now the office has withdrawn its primary objections to grant Apple the trademark for the term “iPad mini.” The USPTO writes in a newly published briefing:

This Office action supersedes any previous Office action issued in connection with this application.

Upon further review of the application, the examining attorney has determined that the following refusals issued in the initial Office action should be withdrawn. The examining attorney apologizes for any inconvenience caused.

REFUSALS WITHDRAWN:

The Trademark Act Section 2(e)(1) descriptiveness refusal and the Sections 1 and 45 specimen refusal are both withdrawn.

This official letter essentially knocks down the original arguments against giving Apple the new trademark, but the USPTO notes that two issues could still cause a refusal of the trademark.

First, the USPTO says it could refuse the application if certain other trademarks with the word “mini” are approved before it. It notes that Apple’s trademark “may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between these marks.”

The USPTO also says it could refuse the application if Apple does not add a “disclaimer” for the word “mini.” It writes:

Applicant must disclaim the descriptive wording “MINI” apart from the mark as shown because it merely describes a quality, characteristic or feature of applicant’s goods.

iPad mini photo via Devindra Hardawar/VentureBeat

July 9-10, 2013
San Francisco, CA

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The U.K. judge who ruled that Samsung’s tablets did not ape the iPad and forced Apple to apologize to Samsung on its website and in advertisements has been hired by Samsung to help it defend itself against patent infringement complaints by Ericsson.

This isn’t illegal, apparently, but it is a bit of a shake-your-head moment.

FOSS Patents uncovered Sir Robin Jacob’s new gig in documents relating to the new Erisson-Samsung case. One positive: He’s not working on projects — that we know of — that affect Apple. But it’s obviously something that has massive potential for conflict of interest if judges who make rulings affecting companies start getting hired by those very same companies.

Sir Robin was one of the judges that forced Apple to acknowledge publicly on its website that Samsung’s tablet was not a copy of the iPad. When Apple did not comply satisfactorily, he and two other judges then admonished Apple for doing it in confusing, roundabout legalese, and they also told Apple to place ads in U.K. newspapers (how antique!) with a similar message.

Interestingly, Sir Robin had publicly criticized Apple for what he thought was a lack of integrity, adding that he hoped “that the lack of integrity involved in this incident is entirely atypical of Apple.”

I’m fairly sure most companies and people hope that the possible conflict of interest implicit in this judge’s new job is entirely atypical of U.K. jurisprudence.

photo credit: JD Hancock via photopin cc

July 9-10, 2013
San Francisco, CA

Tickets On Sale Now

Ray Felts is North American president of crowdsource patent-research company Article One Partners; David DiGiammarino is a director with the company.

You’re a venture capitalist. You just invested in a promising startup, e-Widgets. The future looks bright. Suddenly, out of nowhere, e-Widgets gets a certified letter in the mail. The letter claims that the company’s flagship software is infringing on an existing patent. Instead of focusing on innovation that e-Widgets can bring to market, the company suddenly gets sidetracked into a legal battle that could ultimately destroy its business.

This is not an uncommon scenario.

Patent trolls, a common term for non-practicing entities (NPEs), are shell companies that do not design, manufacture or distribute products. Rather, their sole purpose is to acquire and license patents to unsuspecting businesses. Last year, NPE litigation cost tech companies $29 billion, up more than 400 percent from 2005.

The “Small Change” Hold-Up Strategy

The majority of NPE litigation consists of “nuisance suits” that target smaller companies for hundreds of thousands of dollars. NPEs take advantage of the fact that most venture-backed companies don’t have the resources of big corporate players, which often include a first-class legal team.

As a result, the venture-backed company is subject to something of an old-fashioned hold up.  Here’s how it works. The patent troll threatens to sue for significant royalties. The financial threat, business distraction and cost of defending the company disposes the startup to a lower settlement. Faced with possible ruin, the venture-backed company agrees to a tidy settlement of $20,000. If they instead choose to engage in a legal battle, the settlement threshold goes up, forcing them back to the initially intended amount. In the end, the startup takes the path of least resistance, and the NPE makes it up on volume.

This is how the patent trolls build their war chests to go after bigger fish. For example Lodsys, a well-known patent troll, has settled with about 150 iOS developers so far. Startups, meanwhile, are frustrated that instead of spending $20K to grow their business, they have to pay off a patent troll.

New Developments to Help Small Businesses

Rather than cooperating with the scheme, entrepreneurs can invest in solutions that derail patent trolls. When they do, they stop the “innovation tax” in its tracks. NPEs like the path of least resistance, so companies that earn a reputation as easy targets may be harvested repeatedly. On the other hand, companies that earn a reputation for shielding themselves against NPEs deter further attacks.

A small but growing body of resources is empowering smaller businesses to fend off NPEs. One such resource involves new ways of finding prior art, evidence that the patented idea existed prior to the patent application date. The process of finding prior art can take months (and lots of money) due to the amount and complexity of information available. The traditional solution to the prior art problem is to hire a specialist to do the search, but most VCs can’t afford the time or financial investment. New solutions can be found in crowdsourcing prior art research, tapping into multilingual experts whose collective experience and diversity of knowledge makes them efficient identifiers of prior art across languages and industries.

In addition, venture-backed companies can now access a number of resources dedicated to helping them defend themselves from litigation. The Electronic Frontier Foundation (EFF), for one, offers an excellent knowledge base and resources at EFF.org/patent. UC Berkeley has developed the Defensive Patent License (DPL), in which inventors share their intellectual property without worrying about being sued, and agreeing not to sue other members.

In the private sector, patent enforcement insurance is another tool that small businesses are increasingly considering in their fight against patent trolls.

When Will Venture-Backed Companies Stop Hiding?

Small businesses are the lifeblood of America’s economy. When innovators are forced to divert resources from productive to unproductive uses, their very existence is threatened and the implications are broad. It’s crucial for venture-backed companies to understand and prepare for the growing threat of NPEs.

photo credit: kevin dooley via photopin cc

July 9-10, 2013
San Francisco, CA

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You can once again forget about bankrupt Chinese company Proview. Apple has finally settled its long-running iPad trademark dispute with the company for $60 million, Bloomberg reports.

Apple purchased rights to the iPad name in China from Proview’s Taiwanese arm in 2009  for a mere $55,000, but it quickly became apparent that deal wasn’t completely kosher.

Here’s where it gets confusing: Proview Shenzen sued Apple earlier this year, claiming that its Taiwanese subsidiary couldn’t sell Apple the Chinese iPad trademark. A Hong Kong court later sided with Apple, but that didn’t stop Proview from angling for ways to stop iPad sales in China (which led to iPads being pulled from some store shelves for a short time).

In May, Proview International rejected Apple’s earlier settlement offer, claiming that the amount was too low. The $60 million settlement was well below the $400 million Proview was angling for, but the company likely couldn’t afford dragging out this legal battle any further.

For Apple, $60 million is a small price to pay to move on from this dispute. China has become an increasingly important market for Apple, with its revenues there tripling last quarter to $7.9 billion.

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July 9-10, 2013
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Apple has been in a months-long battle with Shenzhen technology-manufacturer Proview over the “iPad” trademark in China. After much back and forth, Apple offered Proview a settlement today, which the company says is too little.

“We feel that the attitude of Apple Inc. has changed. Although they expressed that they were willing to negotiate, they have never taken any action before,” said Proview lawyer Xie Xianghui to China’s Xinhuanet. “It’s good for both sides to reach a settlement as soon as possible.”

However, according to a conversation with Bloomberg, Xie says there is still a “big gap between the two sides on the settlement.”

Apple says it purchased the rights to the trademark from Proview for $55,000 back in 2009. Apple claims the company wants it to repurchase the trademark again, only now for millions of dollars more. Proview, which has owned the iPad trademark since 2001, explained the 2009 transaction as taking place between a Proview subsidiary and Apple, and as such the purchase would not count in mainland China.

The case started when Proview demanded $10 million from Apple, claiming the company was using the iPad name illegally in China. Proview attempted to ban stores in China from selling the iPad until Apple coughed up the hefty sum.

A Hong Kong judge sided with Apple in February, saying that Proview was simply a company in financial turmoil, looking to take advantage of the very profitable Apple. Proview’s filed for bankruptcy in August 2010 and has since stopped trading on its stock.

Proview put a win under its belt, however, when Beijing National Copyright Administration deputy director Yan Ziaohong acknowledged Proview as owner of the trademark in China.

We have reached out to Xie Xianghui and will update the post when we hear back.

hat tip All Things D

July 9-10, 2013
San Francisco, CA

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Online retail giant Amazon has registered trademarks for its new Kindle Fire tablet, as well as related products, under a separate company name called Seesaw.

In September, Amazon debuted the Kindle Fire, its first tablet computer, which runs a heavily modified version of the Android mobile operating system, and will compete directly with other Android tablets as well as the iPad. And although the company has created the e-ink Kindle reader, its primary business is in online retail — not hardware manufacturing.

Fusible, which originally spotted that five Kindle Fire products were registered under Seesaw, suggests that Amazon could be setting up a separate company for its tablet business to give it the proper attention.

While this very well may be the case, I think its far more likely a book-keeping tactic. Amazon isn’t a hardware company, and it’s actually taking a $10 loss on each Kindle Fire so that it can push its digital products, like ebooks, music, and more. In this way, the Kindle Fire will still generate money for the company, even though the device itself isn’t profitable.

Should this strategy fail, Amazon may not want to simply shut down its tablet business. Instead, it might want to sell it off to recuperate some of those expenses, which would be much easier if you’ve already established which parts of the business are separate from the main retail business.

The Kindle Fire won’t make its public debut until mid-November, so we won’t really have an accurate prediction of its success (or failure) for a while.

July 9-10, 2013
San Francisco, CA

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Apple has filled 11 separate trademark applications with the US Patent & Trademark Office for its recently announced iCloud data storage service, according to a report by Patently Apple.

The 11 iCloud trademarks Apple filled represent different international classifications and cover a variety of areas, which the company could have done to help simplify the examination process and avoid the delay of an approval by the USPTO, according to the report.

Apple only filed six trademark classifications for iBooks — one of which got flagged for having an unclear description that too closely resembled another trademark classification, Patently Apple stated.

The trademark classes Apple filled for iCloud include: computers, printed publications/periodicals, hand-held game units, advertising/marketing/promotion services, telecommunications, electronic data storage, recording, education and entertainment, application service provider services and social networking.

The only classification the company applied for that doesn’t make obvious sense in regard to the iCloud service is “International Class 025: Clothing, footwear, headgear,” which could have something to do with the company’s jogging technology partnership with Nike (Nike + iPod).

If that’s the case, it might make sense for the company to hold on to the trademark in the event that similar software emerges under different brand names. If that isn’t the case, then the most likely explanation for filing the trademark would be wearable Apple device accessories.

If anyone reading can think of another explanation for iCloud as clothing, footwear or headgear, feel free to leave a comment.

Not just off, but OffBeat.

Sure, Google Beat is just the name for a fluffy Web video series for what people are searching for on Google. But VentureBeat, which has already expanded its coverage under the MobileBeat, GamesBeat, and GreenBeat monikers, among others, could decide to focus like a fricking laser beam on Google. And then what would we call that coverage? GoogleBeat, of course.

We’re not saying that we’re siccing our lawyers — um, wait, make that lawyer, singular — on the mighty armies of Google’s legal department. But we don’t think it’s fair for the monolith of Mountain View to crowd our beat.

In pursuing this cause, we’re merely staying current with intellectual-property trends. If Facebook can seek to trademark both the words “Face” and “Book,” surely VentureBeat can stake a claim to both “Venture” and “Beat.”

Heck, while we’re at it, we might try to snap up “Ven” and “Ture.” Those syllables are ours!

Kidding! In reality, Facebook has a singularly weak case in staking its claim to such basic words. Trademarks must be distinctive, a Harvard guide to trademark law notes, and generic terms on their own are generally not protected by trademark.

So why is Facebook trying anyway? It’s likely trying to protect its own name from what trademark lawyers call “genericide” — the process by which distinctive terms become generic in everyday usage, like “xerox” for a photocopy or “kleenex” for a facial tissue.

Google itself has struggled with genericide, issuing a set of guidelines about the use of the Google trademark. Sometimes they get a bit fussy:

One of the conditions for all uses is that you can’t mess around with our marks. Only we get to do that. Don’t remove, distort or alter any element of a Google Brand Feature. That includes modifying a Google trademark, for example, through hyphenation, combination or abbreviation, such as: Googliscious, Googlyoogly, GaGooglemania. Do not shorten, abbreviate, or create acronyms out of Google trademarks.

Great googly moogly.

Tell you what, Google Trademark Cops: You stay off our beat, and we won’t mess around with your marks. Too much.

P.S. Hey, ChartBeat — we’ve got our eyes on you, too, punks.