Texas Bar Journal • December 2024

Patent and Trademark Law

Written by Austin Teng

Vidal v. Elster¹
In its fourth trademark case in seven years, the U.S. Supreme Court rejected a First Amendment challenge to the Lanham Act’s “names clause” ruling that the act was not unconstitutional for preventing Steve Elster from registering “Trump Too Small” without Donald Trump’s consent. The court emphasized that the names clause protects individuals’ rights to their names, and because it is viewpoint-neutral, it did not violate the First Amendment. Elster joins other recent trademark decisions—Jack Daniel’s Properties, Inc. v. VIP Products LLC,² Iancu v. Brunetti,³ and Matal v. Tam⁴—that likewise balanced trademark law and the First Amendment. The four decisions reach different outcomes based on the context of how trademarks are used. In Jack Daniel’s, the court rejected a First Amendment defense for the use of a trademark in parody. The ruling centered on the principle that when a trademark is used to identify the source of goods or services, even if expressive, it does not gain special free speech protections. In contrast, in Matal, the court ruled that the act’s “disparagement clause,” which prohibited offensive trademarks, was a viewpoint-based restriction on speech and therefore unconstitutional. Likewise, Iancu invalidated the “immoral or scandalous” clause, as the court found it also imposed viewpoint-based restrictions by allowing the government to deny offensive trademarks. A key takeaway from these cases is that while the court will strike down provisions that censor marks because they are used in expressive or controversial ways, it draws a line when the provision at issue is focused on a mark’s source-identifying function, as seen in Vidal and Jack Daniel’s.

LKQ Corporation v. GM Global Technology Operations, LLC⁵
As for patents, the U.S. Court of Appeals for the Federal Circuit, sitting en banc, discarded the well-established Rosen- Durling test for determining obviousness of design patents and replaced it with the more flexible KSR Int’l Co. v. Teleflex Inc. obviousness standard used for utility patents.⁶ Some may recall Apple’s “rounded corners” design patents contributed to a billion-dollar jury verdict against Samsung in litigation over design elements of the iPhone. Early in the litigation, Samsung argued that Apple’s design patents, such as the D’889 design patent, raised substantial validity questions in view of tablets by Fidler and Hewlett Packard.

Even though the Fidler tablet was rectangular with rounded corners, the federal circuit found it did not qualify as a primary reference under Rosen-Durling because it did not create the “visual impression of an unbroken slab of glass extending from edge to edge.” The panel also held Fidler could not be combined with the TC1000, which was “so different in visual appearance.”⁷ Under the old standard, a fact finder could only consider combinations in which the primary reference was “basically the same” as the challenged design claim and secondary references “so related” to the primary reference that features in one would suggest application of those features to the other. Though a jury ultimately found Apple’s D’889 design patent not infringed, one wonders how obviousness may have been analyzed differently under LKQ Corp.

Eolas Technologies Inc. v. Amazon.com, Inc.⁸
Eolas Technologies petitioned the Supreme Court to consider, among other questions, “[w]hether Alice’s two- step eligibility analysis under § 101 can properly subsume considerations of conventionality, functional claiming, and specificity of description—which traditionally fall under 35 U.S.C. §§ 102, 103, and 112.” While some had hoped the court might revisit Alice, the court denied certiorari in Eolas on October 7. Practitioners looking for a revised standard should monitor Sens. Thomas Tillis and Chris Coons’ Patent Eligibility Restoration Act of 2023.⁹

AUSTIN TENG is a member of Winstead’s Business Litigation Practice Group and focuses on patent infringement, trade secret litigation, and other technology-related matters. Drawing from his background as a seasoned software engineer, Teng brings a wealth of knowledge, handling complex technology-related disputes in both state and federal district courts.