IP Intelligence

IP Intelligence

Insight on Intellectual Property

Coming Soon…the New .sucks gTLD: How Will It Affect You?

To All Brand Owners: The arrival of a new generic top-level domain (gTLD) will require you to once again evaluate your brand strategies and trademark portfolios, particularly as they relate to the Internet. The Internet Corporation for Assigned Names and Numbers (ICANN) has approved several hundred new gTLDs, but the one that may be of most concern to brand owners is the new .sucks gTLD, which is set to launch this year.

The .sucks gTLD, operated by Vox Populi Registry, Ltd. (Vox Populi), is positioning the new gTLD as a platform for conversation. Indeed, its website declares that the .sucks domain is “designed to help consumers find their voices and allow companies to find the value in criticism.” However, critics of the new domain are concerned that the domain has little or no public interest value and is simply a predatory shakedown scheme aimed at getting businesses to spend a lot of money on defensive registrations.

Whatever your view, the time to make a decision about whether you want to protect your valuable brands from winding up on the left side of the .sucks domain, potentially under someone else’s control, is NOW. Continue Reading

The Innovation Act of 2015: Congress Targets Patent ‘Trolls’ Again

On February 5, 2015, the House Judiciary Chairman, Rep. Bob Goodlatte (R-VA), flanked by a bipartisan group of his peers, reintroduced his “Innovation Act” (H.R. 9). The bill is the second time in as many years that the Republican-controlled House has introduced legislation aimed at curtailing the excesses of patent protection litigation. In mid-2014, the first incarnation of the “Innovation Act” (H.R. 3309) passed the House but died in the Democratic-controlled Senate. This time, however, the Republican majority extends into the Senate.

In his statement, Rep. Goodlatte pitched the bill as “commonsense reform” aimed at “curb[ing] abusive patent litigation.”[1] The Act’s major provisions include significantly heightened pleading and demand letter requirements, an attorney’s fee shift to the non-prevailing party, discovery limits, plaintiff patent ownership transparency, and stays of litigation against end users. These reforms are aimed ostensibly at protecting emerging and innovative market enterprises. Rep. Darrell Issa (R-CA), another of the bill’s supporters, explained that “increasingly, Americans find innovation obstructed, with attempts to enter the marketplace frequently shut down by well-funded patent trolls who exploit loopholes in the patent system.”[2] But if this is really the Act’s intent, something may have gone awry. The companies lining up in support of the Innovation Act include Apple, Google, and Broadcom – not exactly average garage start-ups. Meanwhile, those who should be cheering legislation aimed at making it easier for start-ups to enter the marketplace are urging caution. Continue Reading

USPTO Urged to Revise Interim §101 Guidance to Require Examiners to Present a Proper Prima Facie Case Supported by Factual Evidence

As previously reported, on December 15, 2014, the U.S. Patent and Trademark Office (USPTO) published a document titled “2014 Interim Guidance on Patent Subject Matter Eligibility” (Interim Guidance). This Interim Guidance was published as a notice for comments with the possibility of being revised, depending on public feedback.

On March 16, 2015, two of the largest and most influential IP bar organizations, the Intellectual Property Owners Association (IPO) and the American Intellectual Property Law Association (AIPLA), submitted comment letters.[1] A key argument (among others) made by both organizations was the importance of requiring examiners to present a well-reasoned prima facie case of ineligibility, i.e., one supported by factual evidence. I believe this is an excellent suggestion. If adopted, it could go a long way toward easing applicants’ burdens in dealing with the recent onslaught of rejections under §101. Continue Reading

Use of Service Marks in Commerce: Making Good on Your Promises

In order to register a service mark—a trademark used to promote and sell services, as opposed to goods—with the United States Patent and Trademark Office (USPTO), the owner of the service mark must be using the mark in interstate commerce. A service mark is “used in commerce” when “it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.” Lanham Act, 15 U.S.C. § 1127.

On March 2, 2015, in Couture v. Playdom, Inc., the United States Court of Appeals for the Federal Circuit ruled that the owner of a service mark who has used the mark only to advertise its services cannot prove use in commerce. Instead, the service mark owner must both use the mark in its advertising and promotion of the services and make good on its advertising offer through actual sales of those services. When deciding this issue, the Federal Circuit considered a registration for the service mark PLAYDOM, obtained by David Couture in January 2009. In his application for registration, Couture claimed he used the mark in commerce as least as early as May 30, 2008, and based this claim on his ownership of a single-page website, which stated, “[w]elcome to PlaydomInc.com. We are proud to offer writing and production services for motion picture film, television, and new media. Please feel free to contact us if you are interested: playdominc@gmail.com.” At this time, Couture had not actually sold any of his services. His first sale did not occur until 2010.

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Unsolicited Offers for Trademark-Related Services in the United States

WARNING! If you have filed a trademark application in the U.S. Patent and Trademark Office (USPTO), it is likely that you will be the target of private companies who will try to confuse you into paying unnecessary fees.

Here’s how it works. Once your trademark application is filed, the information in the application and subsequent registration becomes public. Anyone with an Internet connection and some minimal knowledge can access and use that information in an attempt to trick you into paying unnecessary fees. The solicitations, which often use names that resemble the USPTO name, including “United States,” “U.S.,” “Trademark,” “Patent,” “ Registration,” “Office,” or “Agency,” may include offers for (1) legal services; (2) trademark monitoring services: (3) customs recordation services; and (4) “registration” in the company’s own private registry. In addition to having official-sounding names, the solicitations also mimic the look of official government documents by emphasizing official government data, such as the serial number, registration number, filing dates, etc. Many refer to other government agencies and the U.S. Code. Almost all of them require the payment of fees.

Unfortunately, most of the services offered by these companies are unnecessary and duplicate what the USPTO does for free. In those situations where the offer may be for legitimate services (e.g., trademark monitoring services), the solicitation nevertheless attempts to confuse the recipient into believing that the services are required rather than merely optional.

The USPTO has a warning on its website about these solicitations at http://www.uspto.gov/trademarks-getting-started/non-uspto-solicitations, and includes the following list of repeat offenders (clicking on the offender will take you to a sample solicitation).

TM-DB Register of Protected Trademarks

Trademark Compliance Center

Trademark Compliance Center (version 2)

Trademark Compliance Center (version 3)

Trademark Registration and Monitoring Office (Past-Due Notice)

Trademark Registration and Monitoring Office (Intellectual Property Rights Recordation Alert)

Patent & Trademark Agency

United States Trademark Maintenance Service

WDTP

WIPT

TM Edition (2012 version)

TM Edition (2015 version)

Patent Trademark Register

Register of International Patents and Trademarks

Trademark Renewal Service (Washington, D.C.)

Trademark Renewal Service (NYC)

Trademark Safeguard – Trademark Monitoring Service

Intellectual Property Agency Ltd.

GBO, Inc.

Intellectual Property Services USA Incorporated

Brand Registration Office (Trademark Selection Edition)

IPTO

It is to be noted that these entities are constantly changing their names and addresses, so the above list is not comprehensive.

How do you know what notices are legitimate? Before paying any trademark-related fees, verify that the document is from the only governmental entity that is authorized to contact you regarding your U.S. application or registration: the USPTO. Of course, if our firm has filed the trademark application on your behalf and/or is maintaining your registrations, all notifications regarding your applications and registrations will come from us, unless we have specifically worked out other arrangements. When in doubt, please feel free to contact us about documents of questionable authenticity or merit that are related to your trademarks.

Federal Circuit affirms PTAB in first IPR final written decision appeal

The Federal Circuit recently issued its first ruling on an appeal from an inter partes review (IPR) final written decision, In re Cuozzo Speed Technologies. In doing so, the court affirmed the USPTO’s Patent Trial and Appeal Board (PTAB) on two critical issues, offering further clarity for Patent Office litigants. Continue Reading

Will New IEEE Standards Policy Devalue Standards Essential Patents?

On February 8, 2015, the Institute of Electrical and Electronics Engineers (IEEE) adopted a new patent policy for standards-essential patents (SEPs) in IEEE standards. This comes in the midst of rapid developments in the high tech industry, where courts and other authorities have been attempting to define the rights of owners of SEPs. The new IEEE policy may reduce the licensing value of patents that are essential to implement a product compliant with future IEEE standards. However, there is reason to believe that the net effect on SEP patent valuation may be small.

By way of background, a SEP is a patent that covers a technical standard set by a standards setting organization such as the IEEE. Such technical standards define specifications by which companies can comply to produce products, or employ processes, that allow for uniformity in the marketplace. Screw thread sizes and railroad track spacing are two examples of early standards. Today, standards are directed to much more complex technologies, such as quality management (ISO 9001), WiFi (IEEE 802.11) and Bluetooth (IEEE 802.15.1). Read More >>

Does ‘Raging Bull’ Deliver Knockout to Patent Laches Defense?

Under Federal Circuit case law, patent-infringement defendants may assert the laches defense – an equitable defense barring claims brought after an unreasonable delay. But the doctrine will soon square off in the Federal Circuit against a heavy hitter: “Raging Bull.”

In 2014, the Supreme Court decided a copyright case about the popular boxing movie “Raging Bull.” There, the Court struck laches as an available copyright infringement defense. Now, the stage is set for the full Federal Circuit to revisit the laches doctrine in the patent arena. Continue Reading

Trademark “tacking” questions should go to a jury, SCOTUS rules

The Supreme Court issued its first substantive trademark decision of the current term yesterday in Hana Financial, Inc. v. Hana Bank. The district court had charged the jury with determining whether Hana Bank’s original mark, HANA OVERSEAS KOREAN CLUB, had the same commercial impression as its revised mark, HANA BANK. The jury found that it did, and the Ninth Circuit affirmed the district court’s decision to have the jury determine the question.

The Supreme Court affirmed in a unanimous opinion authored by Justice Sotomayor: “Application of a test that relies upon an ordinary consumer’s understanding of the impression that a mark conveys falls comfortably within the ken of a jury.” The decision overrules precedent in the Sixth and Federal Circuits that had treated tacking as a question of law. Hana Financial’s four arguments, and their disposition by the Supreme Court, were as follows: Continue Reading

Trademark practice tip: Request Interlocutory Attorney attendance at discovery/settlement conferences in opposition proceedings to avoid costs of motions to strike affirmative defenses

In trademark opposition proceedings the affirmative defense of failure to state a claim is commonly pleaded, yet it is often an inappropriate affirmative defense. Other affirmative defenses that are severely limited in opposition proceedings include laches (consideration of this affirmative defense is taken as of the time an application is published for opposition purposes, not from the time of knowledge of an applicant’s use), waiver and estoppel (which turn on the conduct of a plaintiff during the time of prosecution of the application and must have sufficient facts pled to support them), and fraud (which must have sufficient facts pled in support of that affirmative defense).

Instead of a motion to strike, an opposer in an opposition proceeding should consider the cost-effective method of requesting that the Interlocutory Attorney assigned to the case by the Trademark Trial and Appeal Board participate in the mandatory discovery/settlement conference, as the Interlocutory Attorney has the power to strike affirmative defenses. Continue Reading