America-Israel Patent Law

Proposed Amendments to Regulations at Israel PTO: Powers of attorney (Part 2)

Yesterday I discussed many of the problems with the Israel’s PTO’s treatment powers of attorney. Today I discuss the ILPTO’s proposed amendments to the Regulations regarding powers of attorney.

The good news is that the ILPTO has now woken up to problem of the rules seemingly requiring a POA, and seeks to rectify it. The bad news is that the ILPTO’s proposed language not only won’t accomplish this, but (a) it will make things worse than they presently are, and (b) it doesn’t address other issues that need to be addressed, such as the appointment of multiple practitioners who are not part of the same firm (e.g. an in-house attorney along with outside counsel). 

Below I present side-by-side the current wording and the proposed wording for the relevant parts of Rule 17, in both cases my translation:[1]

Current	Proposed
17.(a). Any action required of a person in accordance with the statute or these regulations or which is permitted in accordance with them, he may, by written power of attorney that shall be delivered to the Office, appoint a patent agent or lawyer who are licensed to practice their professions to do that action.	17.(a). Any action required of a person in accordance with the statute or these regulations or which is permitted in accordance with them, he may, by written power of attorney that shall be delivered to the Office, appoint a patent agent or lawyer who are licensed to practice their professions to do that action. The appointee shall inform the Commissioner that he has power of attorney to take the action on the electronic application form at the time of filing the application, and if he is appointed after the filing of the application, by way of written notice which shall be delivered to the Office.
	(d) The Commissioner may, at any time, or for a specific matter, require the appointee to produce the power of attorney, and even to condition the taking of the action on the production of the power of attorney.

Ostensibly, the idea is to allow practitioners to file patent applications and to continue to take actions in those applications, without actually submitting powers of attorney, unless the Office requires such submission.  The problem is that way the proposed amendment is worded, the practitioner will need to aver upon filing that he already has a signed POA in hand. That’s worse than the present situation, since, as noted yesterday, at present a practitioner can file without a POA. 

Will practitioners be willing to make such a statement if it’s not true, viz. if they don’t have a signed POA in hand at filing time – especially if they can then be required to produce the document later? I suspect many if not most practitioners will not want to aver to something that’s not true. Thus the proposed amendment, as worded, will be a hindrance rather than a help.

Moreover, since, as also noted yesterday, the statute does not give the ILPTO the authority to close a patent application for failure to file a POA, from the perspective of making things easier for applicants and practitioners, the ostensible problem that needs addressing is one of the ILPTO’s own making, since it is the ILPTO that threatens, without authority, to close files if a POA is not filed. 

It’s also worth noting that there’s nothing in the proposed amendment to limit the power of the Commissioner to require production of a POA, i.e. that’s entirely at his discretion.  That leaves things open to abuse

It would be better to rewrite 17(a) to read something like, 17.(a). With respect to any action required of a person in accordance with the statute or these regulations or which is permitted in accordance with them, he may, by written power of attorney that shall be delivered to the Office, appoint a patent agent or lawyer who are licensed to practice their professions to do that action. The patent agent or lawyer may provide the Office with a written power of attorney from the person appointing him; in the absence of a written power of attorney, the submission of a document by a patent agent or lawyer in an application shall constitute an assertion by the agent or attorney that he is authorized to file the document.

And new 17(d) could read, (d) The Commissioner may, by way of public notice, specify classes of documents or actions for which the Office will require from the appointee a written power of attorney in order for such document or action to be valid.  (This wording could be appended at the end of 17(a) rather than appear as its own separate sub-section.)

By wording the regulation this way, all registered practitioners would be able to file documents in all patents and patent applications, but the ILPTO could still designate certain types of actions – such as express abandonments – that would require the submission of a power of attorney.  Because the electronic filing system utilizes two-factor authentication, the Office would be able to track who filed which document, and for further ease of reference the ILPTO could require documents submitted to specify the filer’s patent agent or lawyer registration number.  It would be necessary to modify the electronic filing system to enable these functions, but those technical concerns should not be an impediment to setting good policy.

Additionally, while the ILPTO’s proposed amendment doesn’t address the matter of applicants who wish to appoint multiple practitioners who are neither “partners” (a term that is not defined in the statute or regulations) nor who “work together in the same single office”, the modified proposal here would in principle facilitate such multiple appointments, since any practitioner would be able to file a document in any application, and for those documents or actions for which a POA is required, it would easy for the office to check to be sure that person filing the paper was authorized in the POA to submit the paper.  However, for the sake of completeness, it would be necessary to amend regulations 16(f) and 17(b):

Current	Proposed
16(f) If a person gave authorization in accordance with regulation 17, the address of the authorized party shall be regarded as the address for service for the authorizer, as long as the authorization remains in force and as long as neither the authorizer nor the authorized inform the Office otherwise; this sub-section applies also with respect to the address of the authorized or any other address provided, and the authorized may inform the Office of an email address as set forth in regulation 16(b) for use with all patent applications and proceedings before the office in which the authorized represents the applicant.	16(f) If a person gave authorization in accordance with regulation 17, the address of one of the authorized party parties, designated by the authorizer, shall be regarded as the address for service for the authorizer, as long as the authorization remains in force and as long as neither the authorizer nor the authorized inform the Office otherwise; this sub-section applies also with respect to the address of the authorized or any other address provided, and the authorized may inform the Office of an email address as set forth in regulation 16(b) for use with all patent applications and proceedings before the office in which the authorized represents the applicant.
17(b) No more than one person may be authorized per matter, unless there are authorized together several persons who are partners or who work together in the same office; however, a person may authorize more than one authorized to appear and argue in his name [in litigious proceedings before the ILPTO – DJF].	17(b) No mMore than one person may be authorized per matter; the Commissioner may, by way of public notice, limit to a number not less than 10 the number of persons that the authorizer may authorize, unless there are several persons authorized together several persons who are partners or who work together in the same office; however, a person may authorize more than one authorized to appear and argue in his name.

Finally, Regulations 16 and 17 should be further amended to specify that, after issuance of a patent, if a party pays a maintenance fee, then that party becomes the address for service for maintenance fees only, while any power of attorney already on file would stay in force for any other matters.  This would eliminate the present situation in which the practitioner who prosecuted the case but is not responsible for maintenance fees continues to receive notices about maintenance fees.

 

[1] In point of fact, I’ve cleaned this up, as the draft amendments appear to contain some errors.

Proposed Amendments to Regulations at Israel PTO: Powers of attorney (Part 1)

Last week the Israel PTO announced by email proposed amendments to the regulations (rules) governing certain aspects of practice before the Israel PTO in all four areas over which it has jurisdiction - patent, trademark and design applications and registrations, and appellation of origin applications and registrations.  I did not find a corresponding announcement on the ILPTO website, but the following links to the draft regulations appear in the email announcement:

• טיוטת תקנות הפטנטים (נוהלי הרשות, סדרי דין, מסמכים ואגרות) (תיקון), התשפ"ג-2023
• טיוטת תקנות הפטנטים (הארכת תקופת הגנה – סדרי דין בבקשה לצו, בהתנגדות לצו ובבקשה לביטול) (תיקון), התשפ"ג-2023
• טיוטת תקנות סימני המסחר (תיקון), התשפ"ג-2023
• טיוטת תקנות העיצובים (תיקון), התשפ"ג-2023
• טיוטת תקנות המדגמים (תיקון), התשפ"ג-2023
• טיוטת תקנות כינויי מקור (סדרי רישום של כינויי מקור שארץ מקורם היא ישראל), התשפ"ג-2023

Comments are due by the end of the day on Sunday, June 4.[1]  Sadly, the announcement doesn’t include an email address to which to send comments. Rather, the announcement refers to each of the web pages above, which include links for people to provide comments, although I have not yet checked to see that those links work.[2] 

The principal change proposed, and on the only one common to all the proposals, is a change in the procedures for filing power of attorney.  In tomorrow’s post, I’ll relate to those proposed changes and their shortcomings.  In this post I’ll focus on the current shortcomings concerning powers of attorney.  Although I’m going to specifically POAs with respect to patents, the ILPTO has proposed the same change with the same language in the relevant regulations for trademarks, designs and appellations of origin as well.

As one would expect, in Israel applicants for patents may act pro se, or such applicants may appoint an authorized representative.[3]  The relevant provisions are set forth in rules 16 and 17 of the Patents Regulations. Rule 16 concerns providing the ILPTO with an address for service in Israel; for pending patent applications, the applicant must provide the office with such an address.  Per the most recent amendments to the regs from several years ago, the applicant may also provide an address for email service of documents.[4] 

Rule 16(f) specifies that if the applicant is represented by an authorized representative per rule 17 (see next paragraph), then the address for service must be the address of that representative.  Since probably upward of 99% of patent applications in Israel are filed via representatives, and the regulations also stipulate that representatives must file electronically, de facto these provisions collectively mean that almost all correspondence with the ILPTO must be conducted electronically.

Rule 17 concerns the appointment of representatives, and says that, by way of a written power of attorney that “shall be delivered to the ILPTO”, an applicant may appoint a representative to act on the applicant’s behalf before the ILPTO.  Rule 17 also says that a person may not appoint more than one representative per matter, unless the multiple representatives are “partners or they work together in the same single office”.

It’s not always possible to get a signed power of attorney prior to filing a patent application, so the practice of the ILPTO has been to allow practitioners to submit a patent application without a POA, and then to requisition a POA (asserting rule 17 as granting authority to requisition the POA), giving the applicant a month to provide the POA.  Failure to file the POA will result in abandonment of the application.

As someone licensed to practice before both the USPTO and ILPTO, and who also makes use of WIPO’s ePCT filing system, I’ve long found the ILPTO’s approach to be suboptimal (to put it mildly), and possibly ultra vires.

Specifically, what practitioner is going to file a new patent application that he hasn’t been instructed to file? The electronic filing system that an Israel practitioner must use to file the application won’t allow the new application to be filed without paying the filing fee (around $600 for an application of 100 or fewer pages); why would any practitioner spend that money if he hasn’t been told he’ll be reimbursed?

More importantly, a practitioner’s license is his livelihood. What practitioner is going to knowingly file an application, or a document in an application, that he hasn’t been authorized to file, particularly if doing so will prejudice the putative client’s interests? It’s a safe bet that the practitioner is only going to file something if he’s been instructed to do so, or if he hasn’t received specific instructions but has a general standing instruction from the client to keep the case pending. It doesn’t take a genius to understanding that doing something to deliberately harm the applicant or patentee could not only cost the practitioner money in a tort suit, it could be the end of his career. (For readers who have studied Gemara, this is an example of one of the definitions of the term “migo” מיגו.)

The USPTO recognizes this reality, and operates accordingly.  As in Israel, US Rule 1.33(a) requires that a new application include a correspondence address. But Rule 1.33(b) says that amendments may be filed by a practitioner who is on record as having power of attorney, or by a practitioner acting in a representative capacity per Rule. 1.34.  And Rule 1.34 establishes when a practitioner who is not of record (viz. for whom a power of attorney has not been recorded) files papers, “his or her personal appearance or signature shall constitute a representation to the United States Patent and Trademark Office that under the provisions of this subchapter and the law, he or she is authorized to represent the particular party on whose behalf he or she acts”.

That’s a smart arrangement: it makes it clear that the practitioner can act without a POA, but by doing so he’s effectively certifying that he’s authorized to act. 

Additionally, the USPTO as a matter of policy still requires a POA for the filing of two documents: an express abandonment of an application or patent, or a terminal disclaimer that foreshortens the term of the patent.  That makes sense too, since those acts irreversible and, on their face, prejudicial to the applicant/patentee’s interests.

What this means in practice is that, for example, if an applicant wants a new US practitioner to take over a file, the new practitioner can do so without having to wait to obtain a power of attorney. Of course, if the new practitioner wants to receive notifications from the USPTO about new correspondence in the case, and the like, he’ll need to record a change of correspondence, but that’s a separate matter, and doesn’t prevent the new representative from filing responses or paying fees.

The USPTO arrangement also means that if, for example, a solo practitioner will be going on vacation, and some response will need to be filed or a fee will need to be paid, he can arrange for a colleague to attend to the matter. 

So for the ILPTO to insist on the submission of a signed POA as condition for continued representation of the applicant in most situations is, from the practical standpoint, not just silly, but counterproductive.[5]

Additionally, the threat of closing the file because a POA isn’t submitted is legal hogwash, both statutorily[6] and from the commonsense standpoint: if an application is incomplete upon filing (e.g. it contains illegible drawings), and the defect is never cured, or if an applicant doesn’t respond to an examination report, those could be a reason for closing the file. But failure to submit a POA? It’s not in the same league. And in point of fact, I have had cases that were filed without a POA, in which the ILPTO has asked for a POA, which I prosecuted through to grant.

Another problem with the present system in Israel is that, as mentioned earlier, Rule 17 says that an applicant or patentee may not appoint more than one representative per matter, unless the multiple representatives are “partners [a term not defined in the patent statute] or they work together in the same single office”.  That reflects a particular way of thinking about how people work or should work together that is outmoded: people work together in different constellations and with different arrangements, and it’s unreasonable for the ILPTO to try to force them into a particular work model. Such a narrow conception of what constitutes “working together” is also prejudicial to applicants, who may want a particular team of practitioners to work on a matter, even though the practitioners are not “partners” and do not “work together in the same single office”.

Inasmuch as the present regulations limit practitioners’ freedom to make their own work arrangements, and limits applicants’ ability to choose their representatives, this narrow conception of “working together” also stands in contravention to two so-called “basic laws”, the “Basic Law: Freedom of Occupation” and the “Basic Law: Human Dignity and Freedom”, which the “High Court of Justice” (not to be confused with the Supreme Court) regards as having constitutional status.  

By contrast, USPTO allows an applicant to appoint whichever registered practitioners it wants to represent it before the USPTO.[7] Similarly, in PCT applications, WIPO makes it possible for any combination of people that the applicant desires to have access to its PCT applications, with varying levels of authorization. 

A related point is that whereas the USPTO will send out notices of correspondence in a file to up to three email addresses, and WIPO’s ePCT allows for notifications to be sent to multiple email addresses, the ILPTO will only send such correspondence to a single email address.

There’s also the problem (discussed in an earlier blog post) that the Israel PTO does not have a mechanism that enables patentees to provide correspondence addresses for maintenance fees only.

As will be discussed in tomorrow’s blog post, the ILPTO’s proposed amendments attempt to address only one of these matters, and fails even at that.

 

[1] Like in the USA, statutes in Israel often omit details about the specific means of implementation of the statutes, and say that the details will be set forth in implementing regulations.  For readers familiar with the rule-making process in the USA, the process in Israel is similar, except that formally the job of enacting the regulations is assigned to a particular minister, and the regulations must be approved by the relevant committee in the Knesset, rather than being enacted by the administrative body itself (following notice-and-comment procedures) as is the case in the USA.  In the present case, it’s clear that the impetus for these amendments is coming from the Israel PTO itself, which will then ask the Minister of Laws (a title which is unfortunately mis-translated as Justice Minister, even though the Hebrew term משפטים does not mean “justice” and is never, ever translated that way in any other context) to sign them and bring them to the committee for approval.

[2] Why allow members of the public to send a single document with comments when you can have them go to six different web sites and provide six separate sets of comments?

[3]  Namely, a licensed patent practitioner who has a technical degree and has passed the ILPTO licensing exams, or, in keeping with the practice in banana republics, any one of the tens of thousands people who don’t have a technical background but have a law degree as a first degree and have passed the lawyer licensing exams – because we all know that law school is much, much more difficult than getting a STEM degree and passing the lawyer exams imbues people with wisdom otherwise not imparted to mere mortals.

[4] Until now, Rule 16 precluded email service of the patent certificate itself, and required the office to send a paper certificate, but the proposed amendments will allow the patent certificate itself to also be sent by email; patentees will have the option of requesting a paper copy from the ILPTO, presumably for a fee.

[5] The ILPTO’s position on this is that its hands are tied, and that Rule 17 as presently worded forces it to require the submission of a written POA. I find that disingenuous, because there are other areas where the ILPTO in effect doesn’t enforce the statute or the rules. But as those situations sometimes accrue to clients’ benefit, I’m not going to discuss them here.

[6] The ILPTO says that its notice to submit a POA constitutes a “notification of defects” under section 20 of the statute, and therefore failure to reply is cause to close the file, but that’s just plain wrong. Section 20 of the statute says that if the examiner or the Commissioner find that the (claimed) invention is unpatentable or that the application fails to meet the requirements of sections 11-16A of the statute (none of which say anything about a power of attorney), the then the Office will notify the applicant. Section 21 says that if the applicant doesn’t fix the defect(s) within a specified time, the Commissioner will refuse the application. So there’s no statutory basis for closing the file – viz., refusing the application – for failure to file a POA.

[7] The mechanism by which this is done at the USPTO will wait for a later blog post.

Weizmann Institute, or Sesame Street?

When I was a kid, almost every episode of Sesame Street included a bit with a song that went something like,

"One of these things is not like the others, one of these things just doesn't belong. Can you tell which thing is not like the others by the time I finish my song?".

And usually what would be shown was a grid containing three triangles and one circle, or three cats and one dog, or three tools and a shoe, or something like that, and then the person singing the song would explain which item was different from the others.

This morning, the Weizmann Institute held a party to which all Institute staff and students were invited - probably close to two thousand people. 

 

And what occasioned these festivities?

The unveiling of Weizmann's new logo.

Below are examples of the old and new logos. I'm not saying which is which. Five brownie points for anyone who can spot the differences in less than 5 seconds.

 


With that kind of money to spend on frivolities, it's no wonder the Israel Tax Authorities have been considering taxing the interest and investment income on Weizmann's endowment.  And with so little difference in the logos, one wonders if some of the people at the Institute need to watch more Sesame Street. Especially with Israel's universities dropping in world rankings.

Interestingly, Weizmann has 11 trademarks registered in Israel, including several on the logo, but as of this writing, the Israel PTO database doesn't show an application, let alone a registration, for the new logo.

This Is Why The Use of Trademarks To Identify Goods In Patents Can Be Problematic

For those who don't speak Hebrew, the bottom line says, "Cream Cheese 25% Fat - New Recipe".

Where'd They Go?

Well, that didn't take long. On Friday I wrote about B&J's virtue-signaling (or is it peccancy-signaling?) statement on its website regarding Israel, noting that they still had Israel listed a place where they sell. By last they had changed it: no, they still hadn't posted a press release about the Unilever litigation, and no, they hadn't removed the "Don't worry, we still hate the Jews" notice. But Israel is no longer listed as one of the places where they do business:

Buh bye!

Ben & Jerry’s v Unilever Litigation Settles; Will B&J Try to Sell In Israel Via a Different Distributor?

Yesterday, Unilever published a one-liner on its web site: “Unilever is pleased to announce that the litigation with Ben & Jerry’s Independent Board has been resolved.”  There’s a longer story at the Jerusalem Post, but the information in Unilever’s statement is all we know for sure. And there’s nothing about the settlement of the litigation at B&J site.

But there is a whiny, “We’re self-absorbed Vermont leftists who are soooo pissed off at Unilever that we’re ready to explode, and please don’t question our commitment to the progressive cause” statement on B&J’s “Where We Do Business” page:

“Unilever has sold trademark rights to the Hebrew and Arabic language versions of the Ben & Jerry’s name to Blue & White Ice-Cream Ltd.  No English language trademark of the Ben & Jerry’s Homemade Inc. has been transferred to Blue & White Ice-Cream Ltd. Blue & White Ice-Cream Ltd. is a completely separate and distinct entity from Ben & Jerry’s Homemade Inc.  Ben & Jerry’s has no ownership of or economic interest in Blue & White Ice-Cream Ltd.”

Thanks for the clarification, guys. A simple "We are not connected with those Jews (or Snyder's of Berlin)" would have sufficed.

Interestingly, that page still shows and lists Israel as one of the places where they do business:

Does this mean that B&J is planning to try to sell English-labeled ice cream in Israel? I’m sure they’d love to give a license to someone in Ramallah, although doing business in the areas controlled by the corrupt PA might entail some looking the other way when it comes to B&J’s morals. But my understanding from Unilever’s memorandum filed recently in the B&J litigation is that the commercial decisions regarding B&J’s ice cream, like where to sell, are in the hands of Unilever. Moreover, depending on what B&J might try to sell and where, there are potential issues of infringement of what are now Blue & White’s marks.

I’ll keep buying Avi Zinger’s ice cream. But when in the USA, I’ll buy from a manufacturer other than Ben & Jerry’s.

Yet More on Ben & Jerry’s

I’ve written twice before about the saga of Ben & Jerry’s ice cream in Israel, specifically about (a) the 2021 decision by the B&J board to not renew the license of its Israeli licensee of over 30 years, Avi Zinger (and two companies he owns) because he refused to capitulate to a demand that he not sell in areas of Israel that were occupied by Jordan from 1948 through June 1967, viz. Judea and Samaria, and (b) the licensee’s suit against B&J and its parent company, Unilever, filed earlier this year in New Jersey, to force Unilever to continue to allow the licensee to produce Ben & Jerry’s ice cream in Israel and to sell it throughout the country, including in Judea and Samaria.

In June Unilever and the licensee settled that suit by agreeing, among other things, to transfer to the licensee all of the Unilever’s Ben & Jerry’s intellectual property in Israel, and that henceforth the Israeli licensee would be the owner of the that IP and would continue to sell manufacture Ben & Jerry’s ice cream throughout Israel, provided that its labeling be in Hebrew and Arabic, and not in English.  On that basis, the licensee’s suit against Unilever was dropped.

But that wasn’t good enough for some of the Jew-haters at B&J in Vermont: soon thereafter, Ben & Jerry’s board – or rather, a group of members of that board – sued Unilever in federal court in New York, seeking to nullify the agreement with the Israeli licensee.  Those B&J board members subsequently filed an amended complaint. Last week Unilever filed a memorandum of law in support of its motion to dismiss the case at the pleadings stage.  Unilever’s grounds for dismissal are numerous, and include the point that neither of Avi Zinger’s companies were named as defendants, so that as non-joined “indispensable parties”, the suit can’t go forward.  But the real crux of the motion is that in 2000, when Unilever took over Ben & Jerry’s, it assumed responsibility for all commercial decisions about IP, and that Ben & Jerry’s board therefore doesn’t have a basis to sue.

In the meantime, Avi Zinger & Co. continue to produce and sell Ben & Jerry’s ice cream, Unilever has assigned its Ben & Jerry’s trademarks in Israel to one of Avi Zinger’s companies, and at least here in Israel, they’re proceeding on the assumption that this is a done deal. Notice the signage on the Ben & Jerry’s factory, which I toured recently courtesy of Alyza Lewin, who spearheaded the Avi Zinger’s suit against Unilever and the subsequent negotiations that led to the settlement. The English lettering has been removed, and covered over with Hebrew lettering only.  I have to say I was a bit disappointed to discover there were no Oompa-Loompas working in the factory, but, as is usually the case in industrial manufacturing, there were some cool machines (how do you get all the caps for the tubs of ice cream oriented in the right position?) … that we weren’t allowed to photograph.

Israel Ben & Jerry’s Licensee Beats the BDS BS

I wrote last year about the decision by Ben & Jerry’s not to renew its license agreement with Avi Zinger’s company, American Quality Products, when that license expires at the end of 2022. AQP manufactures Ben & Jerry’s ice cream in Israel, and sells it all over the country.  B&J tried to impose as a condition of license renewal an agreement from AQP to no longer sell the ice cream in Judea, Samaria and the eastern part of Jerusalem. Such a condition is illegal under Israel law, and Zinger refused to agree.

B&J’s demand was part of the so-called “boycott, divestment and sanctions” movement, which ostensibly seeks to get Israel to “leave” what it illogically terms “occupied Palestinian territories” (the illogic being that there never was a state of Palestine and thus the land in question can’t be “occupied” by a foreign power), but which actually wants to see Israel wiped off the map. 

The announcement about the non-renewal of the license came about because, although Ben & Jerry’s was bought by Unilever over 20 years ago, part of the deal was that B&J could still have its own governing board that determined its “social mission”, and that board seems to be composed of people who think as clearly as Bernie Sanders, Alexandra Occasional Cortex, and other luminaries of the American political scene.

Earlier this year, Zinger and AQP, represented by Alyza Lewin of the Brandeis Center and Marc Zell of Jerusalem (among others), filed suit against both Unilever and Ben & Jerry’s in Federal District Court in New Jersey, alleging that the conditioning of the license renewal on capitulation to BDS terms violated both US and Israel law, the Israel government’s consent decree for the Unilever-B&J merger, and the license agreement with AQP. 

Yesterday, it was announced that Unilever, which retained responsibility for financial and operational decisions regarding Ben & Jerry’s, had decided to exercise its prerogative and act like the adult in the room – or at least look after its own financial interests, which had been hurt by reaction to the boycott announcement.  The press releases state that Unilever settled the NJ litigation by agreeing to sell its interest in Ben & Jerry’s in Israel to Zinger, thus allowing AQP to continue to sell Ben & Jerry’s ice cream all over Israel – including Judea and Samaria – with Hebrew and Arabic labeling, in perpetuity.  (Unilever press release; Brandeis Center press release).

As an IP practitioner, it was this last statement that intrigued me, because it seems to implicate trademark law, and it implies that the agreement precludes AQP from selling Ben & Jerry’s in Israel with English labeling.  So I wondered how this aspect of the deal might be structured.

There are presently ten active registered Ben & Jerry’s trademarks in Israel (i.e. that contain the words "Ben & Jerry's"), in Hebrew and English, that cover Ben & Jerry’s products, ice cream sales services, and clothing bearing the Ben & Jerry’s logo.  Ownership of all of these marks was transferred to Unilever in early 2021 – several months before B&J announced its refusal to renew AQP’s license agreement.

At their heart, trademark rights, like all IP rights, are negative rights – they don’t give the owner of the mark the ability to prevent others from using the mark, but rather give the mark owner the power to prevent others from using the mark without permission.  But also central to trademark rights is the use of the mark: failure to use a registered mark over a prolonged period can be the basis for a cancellation action to get the mark off the register.  (This is in contrast to patents, where, in most jurisdictions, the patentee need not make, use or sell the patented invention as a condition for keeping the patent in force.) 

There are different ways that Zinger could have obtained the right to sell B&J in Israel in perpetuity, with Hebrew and Arabic labelling. One way is for Unilever to transfer ownership of all the marks in Israel to Zinger, with a stipulation in the settlement agreement that the agreement is contingent upon Zinger not selling B&J ice cream with English labeling.  Or Unilever could transfer the ownership of the Hebrew marks only to Zinger, retaining ownership of the English marks.  These two arrangements are consistent with the statement that Unilever is selling its Ben & Jerry’s business in Israel to Zinger.  Another possibility is that Unilever could retain ownership of the marks, and license only the Hebrew marks to Zinger.  In view of Ben & Jerry’s own statement on Twitter that “Unilever's arrangement means Ben and Jerry's in Israel will be owned and operated by AQP. Our company will no longer profit from Ben & Jerry's in Israel”, such a license would presumably be a royalty-free license.

The problem with any of these scenarios is that it would mean the English marks aren’t being used, and could eventually be subject to cancellation, regardless of who owns them. A way around this would be for AQP to occasionally produce batches with English labeling, or for AQP or a third party (if Zinger/AQP is not the owner of the English language marks) to import and sell Ben & Jerry’s ice cream produced outside Israel with English labelling.  However, as noted above, such sales could not legally be subject to limitations on the place of sale, viz. the seller ice cream labelled in English could not deliberately sell only in pre-1967 Israel or agree to such a limitation on the geography of sales.

Another interesting observation is that although the press releases state that the labeling will be in Hebrew and Arabic, none of the marks presently registered in Israel are in Arabic. Presumably such marks will be registered in the near future.

But it’s not just Arabic language marks that aren’t registered in Israel.  While some of the names of ice cream flavors are registered, like Chunky Monkey and Cherry Garcia, others, like Chubby Hubby, are not.  And Phish Food is registered, in class 30 for ice cream, frozen yogurt and sorbet, but the registrant is Phish, Inc., not Unilever or Ben & Jerry’s. 

There’s also the matter of the individual ice cream recipes themselves: without those, any agreement is worthless.  Presumably the agreement also gives Zinger rights in those recipes in Israel, as well as the names of the flavors, but what about new flavors developed in the future?

Regardless of the legal mechanics of the arrangement, by reaching an agreement with Unilever, Avi Zinger and his legal team, and the government of Israel, which was also involved in the negotiations, have given the BDS BS a big “KMA”.

Avi Zinger Strikes Back: More on the Ben & Jerry's Boycott Israel Saga

This post isn't really patent or even IP related.  Last year I wrote about how Ben & Jerry's announced it wouldn't renew its Israeli licensee's contract because the latter refused to stop selling ice cream in Judea and Samaria, and how from an IP practitioner's standpoint this presented several interesting possibilities, like selling ice cream under the name "Jen & Barry's", registering that mark, and eventually seeking cancellation of the Ben & Jerry's mark in Judea and Samaria for non-use (if cancellation of the mark only in those areas is possible under Israel law; I'm not sure it is).  

One point I missed at the time was that any contract that would require a licensee to refuse to sell in Judea and Samaria would be void and/or unenforceable, as such a contract violates Israeli law. Which means either the ice cream is sold throughout Israel, including Judea and Samaria, or it's not sold at all.  And if the latter, that's the basis for a trademark cancellation action.

Earlier this month, the Israeli licensee, Avi Zinger, struck back: he filed suit in Federal District Court in New Jersey seeking an injunction against the termination of the license, inter alia on the grounds that the basis for the termination violates both US and Israel law, and constitutes a breach of his existing contract.  You can read the complaint here.

Today Mr. Zinger published a piece on substack, explaining why he took the action he did.  He notes how much he has done for coexistence, and how the so-called boycott, divest and sanctions movement (BDS) is directed not against Israeli sovereignty in Judea and Samaria but the existence of Israel, period (as evinced by B&J's refusal to consider giving distribution rights in Judea and Samaria to local Arabs - B&J's doesn't want ANY of its product sold in those areas, not to Jews, not to Arabs).

I hope Mr. Zinger prevails, for many reasons, but among them is the selfish reason that B&J in Israel recently produced a run of mint cookie ice cream, which is a personal favorite of mine.  This the first time I can recall that in over 30 years of living here, there has been locally produced mint ice cream.

Let’s Go Brandon? Or Let’s Go, No-Brand: Some Thoughts On Trademark Protection From a Non-Trademark Practitioner

If you’re up on current events in the USA, skip to the next paragraph.  If you don’t follow cultural and political developments in the USA, then you’re unaware that the performance of the current occupant of the White House has led crowds at certain events – notably some college football games and some automobile races – to shout, in 4/4 time, “F**k Joe Bi-den” (clap, clap, clap clap, clap). Recently, at a race won by a driver named Brandon, with the FJB chant clearly audible in the background, a TV announcer wearing a straight face told the viewers that the attendees were chanting “Let’s go Brandon”.  Thus was born a polite way for critics of Mr. Biden to express their displeasure with both him and the various media outlets that seem unable to find anything wrong with his mental acuity or his administration’s policies, without actually uttering what many consider to be a profanity.

The popularization of the phrase has caused some consternation (ok, apoplexy might be a better word) among some of the self-appointed cognoscenti working for tabloids like the New York Times and the Washington Post, who seem to have quickly forgotten some of the rhetoric used by their colleagues and others with reference to Mr. Biden’s immediate predecessor.  This popularization has also, predictably, resulted in the availability of items like hats, t-shirts, flags and bumper stickers bearing the phrase “Let’s Go Brandon”. And wherever you find commerce in a phrase, you can be sure that someone is going to try to cash in by protecting the phrase using trademark or copyright law. Or in the case of political speech, to try to suppress that speech, by asserting rights in the phrase (recall Hillary “I am a dingbat, hear me roar” Clinton’s attempt to stifle the production of paraphernalia mocking her campaign slogan in 2014, or a similarly unsuccessful attempt in 2015 by one Donald “Don’t Call Me Thin-Skinned” Trump to silence critics).

So, surprise, surprise (not!), as of today there are six pending applications for US trademark registrations for the phrase “Let’s Go Brandon” (some with an exclamation point):

For those of you who don’t want to look up each application, here’s a summary:

No.	applicant, location	class	description	first use/first use in commerce	filed
97061110	NovelTEA Gifts LLC, Wisconsin	25	“Clothing, namely, sweatshirts, T-shirts, tank tops, long sleeve shirts; headwear, namely, caps and hats; baby clothing, namely, one piece garments; children's clothing, namely, t-shirts”	02 Oct /05 Oct 21	05 Oct 21
97059307	NovelTEA Gifts LLC, Wisconsin	16	bumper stickers	02 Oct/04 Oct 21	04 Oct 21
97087688	Shenzhen Hengda Century Electronic Commerce Co.,Ltd, China	24	“Brocade flags; Cloth flags; Fabric flags; Flags of textile; Nylon flags; Plastic flags”	Both 01 Oct 21	22 Oct 21
97085454	YANG LEISHENG, China	24	“Pillow covers; Cloth flags; Fabric flags; Nylon flags”	Both 02 Oct 2021	21 Oct 2021
97084267	Robert Wong DBA Bulletproof Tips Corporation, California	24	“Flags of textile; Flags of textile or plastic; Banners and flags of textile; Brocade flags; Cloth flags; Fabric flags; Fabrics with Let's Go Brandon printed thereon for the manufacture of Flags; Nylon flags; Plastic flags”	Both 19 Oct 2021	20 Oct 2021
97070721	Angela Thurman, Tennessee	25	“Clothes, stickers, hats, and bags”	none	12 Oct 2021

If the USPTO allows these to proceed, it looks like some folks are going to be duking it out over rights. Based on e.g. the PTO’s past granting of registrations of certain names of places in Yosemite National Park to a private party rather than the US government, no questions asked, it won’t be surprising if the USPTO ultimately grants some of these registrations. And unlike, say, the short-lived contretemps over the rights in the phrase “Left Shark” (short-lived because within a month of the Superbowl in 2015 it was a forgotten “meme” and no one was going to buy “Left Shark” merchandise), Mr. Biden will presumably remain in office until January 20, 2025, so the market for “Let’s Go Brandon” items will remain strong for some time.  

But it’s not clear to me that any of these entities are entitled to TM registration, for at least three reasons.

First, none of them came up with the phrase. I suppose that’s more of a patent person’s way of thinking than a TM person’s way of thinking, but something seems amiss if one person can coin a phrase and someone else can then obtain rights in the phrase, merely because that other person was the first to put the phrase on a t-shirt.  The fact that within a period of about two weeks, multiple entities sought TM protection for the same types of goods indicates that it’s an obvious idea.  Of course, “obviousness” is a patent term, not a TM term, but if you’re not a TM attorney, I’m sure you’ll get the idea. 

Second, going back to first principles, trademarks are supposed to indicate the source of the goods. If you’re buying French fries in a red carton with the golden arches on it, you’re supposed to be getting the genuine article from Mickey D’s.  Same thing if your shoes say “Nike” or your purse says “Gucci”.  It’s both an indication to the buyer that the goods meet a certain standard of quality (or not), and for the status-conscious, a signal to others that someone paid for the real McCoy.  Here, none of that is applicable. There’s no company called “Let’s Go Brandon” that’s producing goods, and no one who plans to wear a cap with “Let’s Go Brandon” printed on it cares who the manufacturer is or that others see that the wearer bought the cap from a particular manufacturer.  The wearer just wants to express displeasure with the POTUS (or to indicate his support for a friend or relative named Brandon). So TM protection seems inapposite here.  These TM registration applications appear to be attempts at unjustified rent-seeking, as none of the applicants invented anything or invested time and money in developing a brand (or, as far as I know, raising a Brandon). 

The logic behind that second reason derives from the third reason: if, as the pro-Biden press asserts, the phrase is now a veiled way of saying “F**k Joe Biden”, then use of that phrase constitutes political speech, and therefore the placement of it on articles of clothing, bumper stickers or flags shouldn’t be subject to the injunctions that can come with trademark protection.  What the Chinese Communist Party does to its own people is bad enough; should it now be given control over political speech in the USA too?

So it seems that the parties seeking to register “Let’s Go Brandon” are really saying, “Let’s Go, No-Brand”.

By comparison, despite the Supreme Court’s 2019 decision allowing the registration of “FUCT” as a mark (on the grounds that the “immoral or scandalous” clause of the Lanham Act was unconstitutional), no one has sought to register “Fuck Joe Biden” or F**k Joe Biden” for any class of goods.

Jen & Barry’s: The Answer to Ben & Jerry’s?

It’s safe to assume that by now most readers of this blog have heard that ice cream manufacturer Ben & Jerry’s will cease selling in Judea and Samaria in 2022.    

To quickly review the background: B&J, which is owned by Unilever, licensed a local company in Israel (reported in the press as “Ben & Jerry’s Israel”, but according to the Companies Register there is no such company), to make and sell ice cream under the Ben & Jerry’s name.  Presumably, as part of the arrangement, the local company also receives know-how and other proprietary information from B&J (e.g. recipes and methods of preparation), and perhaps is required to use special equipment as well.  B&J’s board has for years pressured the local company to not sell in Judea and Samaria, but the owner of that company, Avi Zinger, has resisted those calls. Hence the continued availability of locally-produced Ben & Jerry’s in Efrat, Maaleh Adumim, Ariel, et al.  Last week, the Ben & Jerry’s board informed Mr. Zinger that it would not renew its licensing/franchise agreement with him in 2022, and will be seeking a different licensee/franchisee. According to a subsequent press announcement from B&J, its board actually decided to terminate all activity in Israel, but Unilever overruled that board and said that activity in what it deems to constitute Israel will continue with a new to-be-named partner.

Aside from being annoyed with yet another instance of b.s. brought to us by imbeciles and Jew-haters (BDS pressure on Soda Stream led to the relocation of its plant from Mishor Adumim to the Negev, resulting in the loss of hundreds of jobs for people in the PA, showing that BDS has nothing to do with helping so-called Palestinians), my instinctive reaction as an IP attorney was, “Well, this presents some opportunities for some fun!”  As in, there are ways to stick it to Ben & Jerry’s.  Let’s look at what those might be.

One thing might be for the local company to continue to produce B&J’s ice cream, but to sell it under a different name, say “Jen & Barry’s” (more on the name in a moment).  That will probably prove difficult because, as noted, those recipes and specific production methods are likely considered propriety B&J information, and therefore continued use of the recipes after expiration of the agreement will probably be precluded under trade secret law (and specifically the Israel Commercial Torts statute).

But ice cream is not exactly high tech, and there are few if any impediments to making ice cream using other recipes and/or methods.  Indeed, patents, at least Unilever patents, probably don’t figure into this story at all.  Unilever presently has only four patents in force in Israel, and Ben & Jerry’s has none.  The most relevant of the Unilever patents is IL 223735, which claims an “aerated frozen confectionary product” and a method for making the product; this does not appear to apply to hard-pack ice cream. IL 164736 claims a “frozen aerated product in a container” in which the container has two compartments; that’s not your typical ice cream, and I haven’t seen any B&J products in Israel that would infringe this. Additionally, the patent will expire in May 2023.  IL 156438, “Method for the production of a heterologous protein by a fungus”, and IL 207765, “Stackable cosmetic jar”, are irrelevant.

So the local company could switch to making ice cream similar to B&J’s, but without using proprietary information it obtained from B&J.  And to really make things fun, it could sell its products under a name similar to but nevertheless different from “Ben & Jerry’s”.  Like “Jen & Barry’s”, which has the ring of a nice Jewish couple from LA, or maybe a sister and brother from the Rockaways.

In this regard, there are two different issues, and from a story today in the New York Post, it’s clear that some people get these issues mixed up.  The first issue is, Can B&J’s stop someone from selling ice cream under the name “Jen & Barry’s”?  The second issue, related to but independent of the first, is, Can someone selling ice cream under the name “Jen & Barry’s” register that name as a trademark?

Regarding the first issue, I’ve no doubt that B&J’s would seek to prevent the sale in Israel (or anywhere else) of ice cream under the name “Jen & Barry’s”.  And not being a trademark specialist, I won’t try to predict the outcome of such a suit.  But what I can say is the obtaining of an injunction is not a slam-dunk.  The basic question in trademark law is likelihood of confusion: is a consumer likely to (erroneously) think that the competing product was produced by or with the imprimatur of the mark holder?  (A subsidiary claim might be that J&B is trying to free-ride on B&J’s mark, viz. to unjustly enrich itself at B&J’s expense.) Here, it would be abundantly clear to every Israeli with working brain cells that the product is NOT Ben & Jerry’s, but rather a response to B&J’s anti-Israel stance, and that the selling point is precisely that it is NOT B&J’s, but is being made by the company that B&J’s screwed.  And while the judiciary in no-jury-trial-Israel has a reputation of being left-leaning, there are no doubt judges who would latch onto this fact to find no infringement any of B&J’s registered marks in Israel (they have several) and no unjust enrichment, and to thus refuse to issue an injunction.

The new brand could make this decision even easier for a judge if the brand were to add further distinguishing feature, e.g. use a different font, and/or a different color scheme, and/or instead of having a bucolic Vermont scene in the background including a cow, have a more typical Israel scene, e.g. one showing a sabra plant, viz. a prickly pear cactus. 

A particularly interesting legal question would arise if sales of the new brand were geographically limited to those areas where B&J’s has publicly announced it won’t sell.  If the new brand were to be launched only after the current agreement with B&J’s has expired – and thus after cessation of sales in those areas – then the new company could (a) argue that Unilever (the mark owner) has no case, because B&J’s announcement – which, as noted, was originally going to apply to all of Israel, and was made only after modification by Unilever – means that Unilever has forfeited its rights in those areas by publicly announcing its view that those areas are not part of Israel, and (b) seek cancellation of B&J’s marks, on grounds of non-use in Judea and Samaria.  I’m doubtful the latter argument will gain traction – B&J’s will presumably still be sold in other parts of Israel – but a decision in favor of the competitor on the first grounds is not out of the question, and would send a powerful message to the BDS people.

Turning to the question of registration of the “Jen & Barry’s” mark, this would initially lie within the province of the Israel PTO, where there is already precedent for co-registration of similar marks.  In 1972 two Israelis started a pizza chain that they called “Pizza Domino”, but didn’t bother to register their mark.  In the 1990’s, the American pizza giant Domino’s Pizza opened branches in Israel, and a fight ensued over TM registrations.  In the end, the Commissioner allowed simultaneous registration of the marks of both companies, on the grounds that their respective marks used different color schemes (green and yellow vs. red and blue), and that there were different numbers of dots in the dominoes of the two marks.  So while it’s possible a TM examiner might initially object to registration of “Jen & Barry’s”, and a certainty that if allowed, registration would be opposed by Unilever, given the political nature of the dispute over registration of the hypothetical ‘’Jen & Barry’s” mark, it wouldn’t be surprising if ultimately the ILPTO decided to allow the registration of “Jen & Barry’s”.  Ditto for the disposition of an appeal of that decision.

The NYPost story linked to above says that Shurat Hadin, a non-profit headed by Nitsana Darshan-Leitner, has filed with the ILPTO to register the mark “Judea and Samaria Ben & Jerry’s”.  I have tremendous respect for Ms. Darshan-Leitner and the work that her organization has done over the years. In this particular case, I’m not sure that their tactics make sense, if the goal is to ultimately prevail. Israel TM law does not have a mechanism for TM registration only in Judea and Samaria – you register in all of Israel, which includes Judea & Samaria. And using the name “Ben & Jerry’s”, even if it’s supplemented with other words, in the same font, and with the same color scheme and cow scene, is not a winning formula to register a competing mark.  Moreover, the proposed mark is not even in use yet, so there’s no way to show acquisition of secondary meaning. I’ll be surprised if this particular mark gets registered, and I think it would be prudent to withdraw the application and come up with a strategy that has a greater likelihood of success, rather than setting the stage for the ILPTO a court to render a decision that could come back to bite a party that really wants to sell ice cream in Judea & Samaria, under a name that mocks B&J.

Finally, there is one other possibility, and that is that the new licensee could officially not sell in Judea and Samaria, but could turn a blind eye to sales in those areas by others.  Since the product was made under license, trademark law would be of no avail to Unilever to prevent such sales – parallel importation is allowed under Israel TM law, and from Unilever’s perspective, that’s exactly would this would be.

Dedication of IP Rights to the Public (Tom Lehrer Fans, Rejoice!)

 

We refer to patents, trademarks and copyrights as "intellectual property" in part because they have attributes of what we normally think of as tangible property.  Just as ownership of tangible property – a piece of land or a bicycle – allows us to say who can and can’t use our property, but doesn’t necessarily allow us to use our own property in all situations (e.g. in most places you need a license to drive a car, even if you own it), so too IP rights provide us with a say over who can use our IP, even if IP ownership doesn’t guarantee us the right to use our own IP (e.g. sometimes it’s necessary to cross-license with another IP owner). 

Additionally, we can dispose of IP rights like we do tangible property: we can transfer ownership to others, we can pass on IP rights to our inheritors, or we can forego our rights and dedicate our IP to the public (in the case of IP, prior to the date on which those rights would otherwise have expired). 

Dedication to the public is probably most commonly encountered in the context of US patent prosecution, which sometimes requires an applicant to disclaim the term of a to-be-granted patent beyond a certain date and to promise that that to-be-granted patent will be co-owned with an earlier-granted patent in order to be enforceable, in order to secure grant of the later patent.  (We’ve discussed this in previous blog posts, e.g. here and here.)  That is at its heart a form of dedication to the public, or can be viewed as such.

Less commonly, an author will dedicate his writings to the public.  Recently, Tom Lehrer announced that that’s what he’s doing with his corpus of songs and, to the extent he can, the music he wrote for those songs.  Actually, since US copyright law doesn’t have a dedication-to-the-public provision, technically what he did was to grant an irrevocable, royalty-free license to all comers to use his words and music, but the end result is the same.  We sometimes see this in the patent sphere; a covenant not to sue can also achieve the same end.

If you’re reading this blog and you don’t know who Tom Lehrer is, he was trained as a mathematician, but he gained fame in writing and performing satirical songs on topics of the day in the 1950’s and 1960’s.  His classic “I got it from Agnes”, for example, seems rather appropriate in this era of the Wuhan virus and “contact tracing”.  As an Eagle Scout and a chemist, two of my personal favorites are “Be Prepared” and “The Elements Song”, respectively. 

In any event, Mr. Lehrer is still alive and now in his 90’s, and has made his lyrics and much of his music available here.