Micah Gunn is a South Carolina Patent Attorney. He joined FRESH recently and quickly became an integral part of the FRESH team.

At FRESH, we believe that our top team is everything so now that he has settled down a bit, we met to ask him to share a little bit more about his work, background, professional achievements and also to tell us a bit about Micah the person.

Micah, you are a so called “all-rounder” when it comes to IP. You do patents, trademarks. Can you tell us how your career path evolved?

Absolutely – I was always a little nerdy and as a kid I used to love the idea of inventing things. I fell in love with science in college and pursued biochemistry with hopes of inventing some breakthrough medicine that would change people’s lives for the better. The first time I considered patent work was while working for a brilliant, adjunct professor at John’s Hopkins University who had invented and patented a novel way of screening unviable embryos prior to in-vitro fertilization. I saw patent law as a way of helping people like my then-boss. That is really where I first thought about getting into patent law and fell in love with the idea of helping brilliant people achieve inspiring goals.

I passed the patent bar prior to law school and took as many intellectual property courses as possible. There I discovered my second love, Trademark Law. Inventions and entrepreneurship are usually closely associated and both have always fascinated me. The thing that first struck me about trademark law was the clever arguments used to obtain a registration or block or cancel another person’s registration.

I am the youngest of six. I feel like I have been coming up with creative arguments my whole life, so when I discovered trademark law it felt very natural. Additionally, like patent law, it is more or less based on a set of rules that operate like a board game of sorts. The better you know the rules of the game, the better you are at winning. Patent law and trademark law have a lot of similarities and the skills that make you good at one tend to make you good at the other. I knew I wanted to do both early on in my practice.

After law school, I started at a small boutique patent firm that was one of the three firms in the country that handled all of the patent work for an invention company that advertised on late-night TV. This was a high-volume firm that allowed me to really hone my skills in drafting patents and responding to UPTO Office Actions. Due to the volume of work, it was a really great experience. Also, many of these patents were for solo inventors/entrepreneurs, so I got to gain some trademark prosecution experience as well.

After this firm, I worked in a big law firm in D.C. and focused on chemical patent prosecution. This work was very technical and allowed me to work on really cutting-edge chemistry-based technologies for world renowned companies. There is nothing cooler than working on patents for technology you know will end up in the products you use regularly.

Next, I worked at a firm owned by my former patent prosecution law school professor. This allowed me to continue learning directly from a thought leader in the field, and also provided me the opportunity to work on both patents and trademarks. This is where I gained a majority of my trademark experience and realized that working in both fields allowed me to be a much stronger practitioner, because I was twice as engaged and constantly sharpening my argumentative tools.

 

Which do you enjoy more – patents or trademarks?

That’s a tough one! It really depends on a lot of factors. I think work in this field is extremely rewarding when you get to work closely with clients, understand their objectives, and help them to use intellectual property law to achieve their goals. If I get to work closely with a client on a matter, that is more important to me than whether it is in patent or trademark law.

I will share two things I love about both, so as not to entirely avoid the question.

When it comes to trademark law, I love engaging in adversarial proceedings. It really becomes a chess match where you are matching your wits against an opponent’s. I think too many trademark owners naively engage in adversarial proceedings without understanding how competitive and complicated the proceedings can get. It’s always great to help them navigate the process and flex their intellectual property might to crush the competition.

When it comes to patent law, I really love the technological aspect. To be sure, there is an adversarial component in patent law as well. Even in prosecution you are essentially in adversarial conflict with an Examiner for the broadest patent coverage you can get. There is great satisfaction to be found in pointing out flaws in an Examiner’s logic or finding somewhere in the prior art that actually teaches away from your client’s invention or helps establish that your client’s invention is the product of unexpected results.

 

You describe your patent practice as focusing on the intersection between chemistry and other disciplines. Can you give some examples?

Sure, chemistry is pretty fundamental to a lot of inventions you might not generally think of as involving chemistry. Printers, for example, require a lot of chemistry to ensure that the ink glides on smoothly and dries quickly without cracking and is specially formulated for its intended use. Also, 3d printed anticounterfeit technologies might include various chemical signatures embedded within simple goods allowing sellers and distributors to ensure the authenticity of their goods.

Of course, there are also biochemistry related inventions such as plant transcription factor polypeptides, or the polynucleotides that encode them. Pharmaceutical products and nutraceuticals involve some level of chemistry. Therapeutic methods often involve treatment with various chemical compositions. Oil additives for engines, polymer chemistries of various materials, just about everything on the market today has been enhanced by some form of chemical process or composition.

Tell us about an interesting patent case that you handled.

In a Supplemental Examination, which is a form of post-grant proceeding, we were evaluating the issued claims of a patent against newly discovered supposed prior art. The Examiner contended that the prior art read on one of the claims of the patent. The Examiner’s position was somewhat reasonable based on how the patent was drafted.

However, the patent issued from a US National Stage Application which claimed priority from a Chinese Application. When the Chinese Application was translated into English it included a very important term that was open to a couple of different interpretations. According to the Examiner’s interpretation, the prior art might have read on the claim. However, we were able to provide the correct interpretation and clear up certain language in the patent and ended up saving the claims through from this supposed prior art. This example goes to show just how important the drafting process of an application is and how difficult it can be to avoid issues, even after a patent has granted.

 

Your trademark practice is very contentious, correct? Tell us about it.

That’s correct. Well, nothing in IP really has any proven value until it stands up in battle as a sword or a shield against your competitors.

I like the Jim James lyric, “We are the innovators. They are the imitators”.  I think we all know that it is easier to imitate than to innovate. That’s why there are so many copycat products on the market. Trademarks are so critical to protecting your brand from imitators.

Sometimes the imitation is blatant, and in those cases, it is good to be firm and strongly enforce your trademark rights. Of course, it all starts with a well-groomed trademark portfolio. Before you do anything, it’s always a good idea to have an attorney check over your whole portfolio to ensure that there are no glaring issues before chasing away a competitor. There is nothing worse than being scared to assert one of your trademarks against a competitor due to something you could have addressed a long time ago.

There is also a lot of “accidental imitation”. It is not uncommon for multiple people to independently come up with the same unique branding concept. Sometimes the products are different enough or cater to different consumers that a contentious battle is not really warranted. In those instances, it might be best to attempt to settle as early as possible to avoid the anguish and expense of an adversarial proceeding.

 

Tell us about an interesting trademark case.

My favorite case was a classic tale of David versus Goliath. We represented the smaller of the two, Carr Spirits, who made and sold various liquors and spirits. Our opponent was the owner of The Sazerac Company, a multinational billion-dollar corporation which made and sold various well-known spirits including the famous Fireball Whiskey. My client had filed an intent-to-use mark for DREAMSICLE in association with flavored liquors.

The mark had just published when we received a notice of opposition from Sazerac alleging that our mark was generic. Sazerac has a reputation for being particularly litigious, and I suppose, for one reason or another, they decided to go after our client’s mark. They were not alleging likelihood of confusion, so it seemed our opponent just wanted to bully our client away from their nice new business venture. Obviously, there are a lot of emotions at play when a smaller client feels personally attacked by a larger business entity known for being a bully.

So, we had to decide how best to defend against the opposition. Our client’s mark was clearly not generic so defending on those grounds was a no-brainer and was not going to be much of an issue. However, when going into a litigation against a company with much deeper pockets you do not want to rely on just your defenses. You want to find a way to put your adversary on defensive footing as well. One way to do this is a counter-claim which sends an important message that your client won’t be bullied into submission. You never know what weaknesses you might find lurking in your adversary’s trademark portfolio until you look.

When dealing with a very litigious adversary, it is a good idea to look at other cases your adversary was involved in. This might give insight into their motives and strategies. It might also reveal potential weaknesses, for example, if they settled shortly after receiving counter-claims from other adversaries. Unfortunately, the record did not reveal any counter-claims that were useful to our case. So, the next place I looked was their trademark portfolio to see if any of their marks had any weaknesses that we could exploit.

The interesting thing about Sazerac is that it is also the name of what is believed to be America’s first cocktail. It was invented by Antonine Amédée Peychaud a pharmacist from New Orleans. According to Peychaud’s death certificate, he died on June 30th, 1883, at 80 years old, so this drink dates back to the 1800’s. According to the United States Bartender’s Guild:

Legend holds that Antonine Amédée Peychaud…served his tenures in a Coquetier (co’k-tee-yay. similar to “cocktail”) a double-ended egg cup resembling our modern jigger. Peychaud used Sazerac De Forge et Fils brand of cognac, an Absinthe rinse, sugar, and his house-made bitters. Peychaud called his concoction the Sazerac Cocktail because of the spirit he used and the vessel he served it in. Therefore, the Sazerac Cocktail created by Peychaud, is known as the oldest cocktail in America. Legend has it that Peychaud coined the word cocktail, which created the structural medicinal tincture called a cocktail, and the cocktail we know today as the Sazerac.

The Sazerac company owned the mark, SAZERAC, which was registered in 1955 as U.S. Trademark Registration No. 602,218 (“Registration `218”) and claimed use as far back as 1895. This was very likely the Sazerac company’s oldest mark, and we could see in the Assignment Database records showing that certain banks had a security interest in the mark. So, clearly the Sazerac company had leveraged the mark to some extent just before this conflict arose.

Here is where the Sazerac company went wrong. In 1955, when they filed the application for the ‘218 registration, they only identified their goods as “alcoholic cocktails”. In present day, Sazerac is using the mark to identify much more than just alcoholic cocktails. Any good Trademark Attorney would have counselled them on the prudence of registering the mark SAZERAC for all of the goods in which it was being used, not just alcoholic cocktails. Especially in light of the following facts.

You can order a Sazerac cocktail at almost any upscale bar in America. In fact, Louisiana is so proud of America’s oldest cocktail that the state legislature passed La. R.S. § 33:1420.2, declaring “The Sazerac” the official cocktail of the city of New Orleans. The Sazerac company never challenged such designation. They didn’t appear to have policed the mark at all with respect to cocktails, and it didn’t appear that any of the Sazerac cocktails that could be ordered in New Orleans or across the country came from the Sazerac company.

Additionally, Registration `218 did not appear to have ever been asserted or alleged in a proceeding before the Trademark Trial and Appeal Board, the US Court of Appeals for the Federal Circuit, or any other state or federal court within the United States. Thus, it didn’t appear that they had taken the proper steps to police their mark or protect their mark from becoming the generic term for America’s oldest cocktail, the Sazerac.

We drafted a counter-claim to cancel the Sazerac company’s oldest, leveraged mark and a few short weeks later received an offer to settle on terms favorable to both parties. It is really rewarding to help a client out of such a predicament, especially when that client produces such delicious liquors!

 

Outside of work, you are a pretty cool guy. You surf and play the guitar. Anyone told you that you don’t sound like a typical patent attorney?

That is very kind of you to say! It is important to stay young at heart. A big part of that is keeping mentally and physically fit and keeping a positive attitude. Surfing and music provide a lot of metaphors for life. You have to improvise a lot in life to make things work. Sometimes the wave doesn’t break the way you want, or the music takes a different direction than you are anticipating, and all you can do is improvise and keep a positive attitude. Patent and trademark law are a lot like that as well. You constantly have to reassess and improvise based on what you think might work, whether it be the law, the facts, or something else. Most importantly, though, you should remain positive.

It helps that I have a five-year-old daughter whom I adore and who sets the standard for excellence. If I can learn a tenth of what she learns in a day and keep in as good of spirits then that is a really great day! She keeps me young, happy, and determined.

 

Why have you joined Fresh?

Initially, it started with the people. There are a lot of personalities in the legal field and a lot of approaches to business. When I researched the firm and met with the principals, I quickly realized that I would be working with really good, smart, and like-minded people that I could learn a lot from and grow with as a professional. My feelings strengthened when I met the rest of the team and discovered that everyone working at the firm was very bright and likable, two qualities that make producing top-notch work that much easier.

I did not realize before I joined that the firm was so cutting edge. The tools which Fresh employs have greatly increased my productivity and ease in which I am able to connect with global clients and foreign firms. I really believe this firm has the potential to rival any firm in the world in terms work product and has a true edge when it comes to global collaboration. Many firms are playing catchup in response to the global pandemic and adopt new technologies to maintain productivity, however, Fresh had already perfected.