America-Israel Patent Law

Goodbye, Old RV

In what was one of my father’s few extravagances in life – and I think the only one that was publicly visible – in the early 1980’s he bought a used Fleetwood Pace Arrow motor home.  We took a few family trips in it, but its primary use for about 10 years was a portable kosher kitchen that went to various Boy Scout events.  Thereafter, it served as Dad’s “man cave” (before that term gained widespread use), where he’d go to smoke cigars and watch sports, mom having banned smoking in the house, and the RV having air conditioning where there was none in the house – that would have been an extravagance. 

At the time Dad bought the RV, I had no inkling that I’d eventually work in IP.  It turns out that Fleetwood has a few dozen US patents, although most of them were issued well after our RV was manufactured.  Nevertheless, it’s possible that some of the paneling was covered by this patent.   It’s also possible that some of the components of the RV were patented at the time.  The toilet, for example, was manufactured by the Thetford Corporation of Ann Arbor, which at the time had a few dozen US patents assigned to it, both utility and design, such as this one, which shows a unit that looks a lot like the one in the RV.  And as far as I can gather, at the time there was an affiliation between Fleetwood and General Motors: the title and registration both say it was a Chevy, and I’m sure the chassis and engine were GM-built.  GM, of course, only has a few thousand US patents.  Dad did not try to patent the man cave or a method of using an RV as such.

After being parked in the same spot since August 1998, today the RV was towed to a new home.  I’ve no doubt there are or were a few patents covering the tow rig that was used.  We wish the new owner good luck, and as patent professionals my brother and I are at his service should he develop new methods of refurbishing an RV that he thinks may be commercially significant and in need of patent protection.

When Is Unauthorized Use Of A Team Logo Not Trademark Infringement?

Trademarks are not a regular part of my practice, but I don’t think there’s a patent practitioner out there who isn’t at least a bit sensitive to trademark issues.  US-based sports leagues are famous (or notorious, depending on your perspective) for enforcing the marks in their teams’ logos. The NFL will even go after companies that use the word “Superbowl” in their advertisements if they don’t pay the NFL for that privilege.

With many American-born Israelis and many American tourists passing through Israel, as well as the effort of some sports leagues to branch out beyond the USA, it’s not surprising that (a) there would be people in Israel interested in clothing bearing the logos of their favorite teams, and (b) such clothing might include kippot, viz. the round skullcaps worn by religiously observant Jewish men (and in certain small circles, by women).  As one might imagine, the demand for such headgear pales in comparison to, say, the worldwide demand for jerseys of popular NBA players, presumably making it cost-inefficient to obtain a license from the relevant league to produce and sell such skullcaps.  (But maybe not, this site advertises an MLB-licensed Chicago Cubs kippa.)  Moreover, the places where such demand exists are concentrated geographically in a few US metropolitan areas and in certain parts of Israel.  Hence there are a few stores in Jerusalem where one can obtain kippot bearing the logos of various teams.  Periodically, there are reports of raids on these stores (probably instigated at the behest of the local attorney representing the league in question), in which unlicensed products are seized.  Then after a time, things revert to status quo ante.

A boy I know in Israel, who does not live near an ice rink and has ice skated only a handful of times, if that, became a fan of the Washington Capitals a few years ago.  He recently procured a Capitals kippa at one of those Jerusalem stores.  Seeing this, my curiosity got the better of me: I checked to see who does the NHL’s TM work in Israel.  Apparently no one: there are no NHL-affiliated marks registered in Israel.  Which means that the sale or offer for sale of the kippa didn’t constitute infringement of a registered trademark.  The NHL could try to bring a passing-off action, but I assume the same small market that mitigated against the (not very large cost of) TM registration in Israel in the first place would mitigate against initiating a(n even more costly) passing-off action against the kippa shop for infringement of an unregistered TM. 

So rest easy, kid, you won’t be receiving a cease-and-desist letter about that kippa any time soon.

Follow-Up Post: Israel PTO Tightens Criteria For Invoking “Overlap” Between Applicant’s Own Applications

We reported last month on one of the proposed changes in the ILPTO’s examination guidelines, viz. the proposal to stop rejecting applications having claims that “overlap” with claims of an applicant’s own granted patent or pending application, provided the two filings had the same filing date.  On February 10, as expected, the ILPTO announced that it was implementing this change. 

As an epilogue, on February 11 we received confirmation that the ILPTO has indeed implemented the change: we received an allowance in a case that had previously been rejected for “overlap” with one of the applicant’s earlier-issued patents.  This situation was a bit unusual in that the two applications have the same filing dates and same priority dates, but were filed as two separate applications, not as a parent and divisional.  Nevertheless, they fit the criteria of the revised examination guidelines: same filing date, as noted, and the newly-allowed case claims a genus of compounds, whereas the already-granted patent claims a single compound falling within the genus.  In our most recent response, which was filed after the ILPTO announced the proposed examination policy change, we argued that the rejection had no basis in the statute, as evidenced by the proposed change.  The letter from the examiner neither confirms nor denies our argument, but simply states that “In view of the change in the examination guidelines regarding applications having the same filing date, it is now permissible to withdraw the rejection under section 2 of the statute [i.e. double-patenting – DJF].”

Since the change in the ILPTO’s examination guidelines ostensibly reflects a change in the ILPTO’s view regarding section 2 of the statute, and the wording of the statute itself remains unchanged, it will be interesting to see if the ILPTO’s new view is eventually challenged during litigation, and if so, how that plays out.  Until then, applicants will not need to worry about “overlap” between the claims of their parent and divisional applications.