Saturday, 23 October 2004

Credibility of Internet articles in the Federal Circuit

For some time, bloggers have been discussing the reliability of Internet-based resources for legal research and as a basis for legal conclusions. (See, e.g.,: 1, 2, 3, 4) Last week, a panel of the U.S. Court of Appeals for the Federal Circuit made an interesting observation in In re DSS Environmental, Inc., 2004 U.S. App. LEXIS 21994 (Fed. Cir. 20 Oct. 2004) (unpublished). (via Patently Obvious) Read on....

In DSS Environmental, a trademark examiner for the U.S. Patent & Trademark Office (PTO) rejected a trademark application for the word DUALSAND as "merely descriptive" when used in connection with "water and wastewater filters." DSS, the applicant, argued that the term was suggestive, not merely descriptive. The examiner disagreed, citing the usage of nearly identical terms in two utility patents and 13 articles she found on the Internet.

In the final office action, the examining attorney refused to register the proposed mark. Relying on 13 articles found on the Internet, she concluded that "'dual sand' is a term-of-art in the wastewater and water treatment industry used to describe a specific filtration process." In reaching that conclusion, the examining attorney cited four articles to show how the terms "dual sand filters," "dual sand filtration system," and "dual sand filtration process" are used in the wastewater treatment industry. The examining attorney also refused to consider the list of third-party registrations that DSS submitted, because DSS did not provide copies of the registrations in order to make them of record. Id. at 3.

The Trademark Trial and Appeals Board (TTAB) affirmed the rejection — relying, in part, on the term's usage in the same two utility patents and 13 articles the examiner had found on the Internet. The Federal Circuit, in turn, affirmed the TTAB, calling this "substantial evidence" of mere descriptiveness. Id. at 6.

Having lost on its main argument, DSS attacked the credibility of the 13 articles on the basis that they were found on the Internet. The Federal Circuit rejected this reasoning because of the particular use made of the references. The examiner had relied on them to establish the usage of a term of art, not for the accuracy of a fact:

DSS argues that the articles in the record lack credibility because their source was the Internet. However, the examining attorney was not relying on the articles for their accuracy, but merely to ascertain how the term "dual sand" is used in the context of water wastewater filtration. In making such a determination, the examining attorney may obtain evidence from "any competent source, such as dictionaries, newspapers, or surveys." [In re Bed & Bath Breakfast Registry, 791 F.2d 157, 160 (Fed. Cir. 1986)], citing Northland Aluminum Prods., Inc., 777 F.2d 1556, 1559 (Fed. Cir. 1985); see also Magic Wand, Inc. v. RDB, Inc., 940 F.2d 638, 641 (Fed. Cir. 1991) ("Evidence of purchaser understanding may come from direct testimony of consumers, consumer surveys, dictionary listings, as well as newspapers and other publications."). The Internet articles in this case, including on-line copies of newspaper articles, fully satisfy that requirement. Id. at 8–9

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