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What happens when a junior trademark holder’s business becomes so popular and well known that it threatens to swamp the reputation of a senior mark holder?  The senior mark holder brings a trademark infringement case alleging “reverse confusion” among its potential customers.  This was the scenario the Ninth Circuit faced in its recent decision in: Ironhawk Technologies, Inc. v. Dropbox, Inc. (decided April 20, 2021).

Ironhawk develops computer software that uses compression technology to allow for the efficient transfer of data, especially in “bandwidth-challenged environments.”  It has marketed its software under the name “SmartSync” since 2004 and obtained a trademark for SmartSync in 2007.  It sells its software primarily to the United States Navy but, in 2013, sold its software to at least one major pharmacy chain.

Dropbox (as most lawyers know) produces cloud storage software that millions of users utilize around the world.  One of Dropbox’s software features, “Smart Sync,” allows a user to see and access files in their Dropbox cloud account without using up any of the user’s hard drive storage. Dropbox launched its Smart Sync feature in 2017 and was previously aware of Ironhawk’s SmartSync mark.  Ironhawk sued Dropbox for violations of the Lanham Act, i.e., trademark infringement, and unfair competition claiming that Dropbox’s use of the name “Smart Sync” intentionally infringed upon Ironhawk’s “SmartSync” trademark.

After some discovery, Dropbox moved for summary judgment.  After applying the Sleekcraft factors [from AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-349 (9th Cir. 1979)], the district court granted summary judgment to Dropbox.  The Court found that “the overwhelming balance of the Sleekcraft factors weighs against a likelihood of confusion” and that no reasonable jury would find any confusion. Ironhawk appealed to the Ninth Circuit from summary judgment.…
Continue Reading The Sleekcraft Factors and “Reverse Confusion” Trademark Infringement

Quick answer: no!

The Federal Circuit Court of Appeals recently tangled with a patent application for an invention that did not have scientific support.  The court affirmed a decision of the Patent Trial and Appeal Board rejecting a patent application on these grounds.  While this is not a common occurrence, in this case, it’s an easy conclusion to reach.

In In re Huping Hu, 2021 U.S. App. LEXIS 7776, the inventors applied for patents for inventions related to “quantum entanglement.”  According to the inventors, quantum entanglement is “quantum spins of photons, electrons and nuclei.”  The inventors explained that “quantum spins of photons, electrons and nuclei have now been successfully entangled in various ways for purposes of quantum computation and communication.”  The inventors said that quantum entanglement is a phenomenon that happens if particles, such as photons and electrons, become linked, and, when separated, the mechanical states of the molecules are still linked such that if the state of one particle is changed, the linked particle is affected.  The PTO explained the inventors’ method as using quantum entanglement “to change the characteristics of one substance via the manipulation of a completely physically separate substance.”  The PTO did not dispute the existence of quantum entanglement, but said that the phenomenon has been seen in very specific conditions for only a fraction of a second.…
Continue Reading Can a Patent Violate the Laws of Chemistry and Physics?

In Hytera Communications Corp. Ltd. v. Motorola Solutions, Inc., 1-17-cv-01794 (NDOH 2021-04-29, Order) (Donald C. Nugent), the District Court denied defendant’s motion for attorney fees under 35 U.S.C. § 285, determining plaintiff’s litigation positions were not baseless even after a granting of summary judgment of noninfringement that “was not a close call.”  

As way …