Deborah A. Wilcox

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New Lower Trademark Examination Evidentiary Standard for Genericness Refusals at the USPTO

Photo of Deborah A. WilcoxPhoto of Megan MischlerBy Deborah A. Wilcox and Megan Mischler on Posted in Intellectual Property
The United States Patent and Trademark Office recently issued an Examination Guide clarifying the standard for refusing trademark applications on genericness grounds. Like other substantive refusals, to establish a prima facie case of genericness, the examining attorney must provide “sufficient evidence” to support a reasonable predicate for the refusal. Prior to this clarification, the Trademark … Continue Reading

Decentralized Domains: Metaverse Land Grab

Photo of Lisa Bollinger GehmanPhoto of Kevin WallacePhoto of Deborah A. WilcoxBy Lisa Bollinger Gehman, Kevin Wallace and Deborah A. Wilcox on Posted in Trademark
As the metaverse continues to become a more established marketplace, and consumers become more familiar with non-fungible tokens (NFTs), NFT marketplaces, decentralized domains, bitcoin, crypto wallets and the blockchain, it is no surprise that intellectual property (IP) owners are starting to see an increase in unauthorized uses of their trademarks and copyrights. There is a … Continue Reading

Tips for Benefitting from a U.S. Trademark Examiner’s Amendment

Photo of Deborah A. WilcoxPhoto of Gabrial MitchellBy Deborah A. Wilcox and Gabrial Mitchell on Posted in USPTO
Trademark examiners in the U.S. often will reach out to applicants to handle certain amendments to their applications, avoiding the issuance of formal office actions. There are many benefits to working with the examiners, even though the window of opportunity is usually quite short. Notably, prosecution will proceed much more quickly if applicants can take … Continue Reading

USPTO Implementing Trademark Modernization Act

Photo of Kevin WallacePhoto of Deborah A. WilcoxBy Kevin Wallace and Deborah A. Wilcox on Posted in Trademark
Earlier this month, the United States Patent and Trademark Office (USPTO) issued a notice of proposed rule-making[1] to implement provisions of the Trademark Modernization Act (TMA), which Congress passed in December 2020.[2] The public has until July 19, 2021, to comment on the proposed rule-making before implementation. The proposed rules create new nonuse cancellation procedures, … Continue Reading

Proposed Fast-Track Copyright Registration Option for Small Claims

Photo of Lisa Bollinger GehmanPhoto of Deborah A. WilcoxBy Lisa Bollinger Gehman and Deborah A. Wilcox on Posted in Copyright
The U.S. Copyright Office has proposed a fast-track copyright registration option[1] for small claims to be brought before the Copyright Claims Board (CCB). Congress recently created the CCB under the Copyright Alternative in Small-Claims Enforcement (CASE) Act[2] to address the challenges and costs of federal litigation. The CCB must be operational by December 27, 2021 … Continue Reading

Blacklist Complaints: A Novel Tool Against Bad-Faith Trademark Applicants in China

Photo of Lesley GrossbergPhoto of Deborah A. WilcoxBy Lesley Grossberg and Deborah A. Wilcox on Posted in Trademark
Bad-faith trademark filings can pose a painful obstacle to brand owners’ attempts to register and enforce trademark rights in China. Traditionally, trademark owners have needed to file a broad range of defensive applications, oppose dozens of bad-faith filings as they are published, and/or undertake massive invalidation campaigns against existing bad-faith registrations. These actions are resource-intensive … Continue Reading

Copyright Claims Board To Be Established; Criminal Streaming Law

Photo of Deborah A. WilcoxBy Deborah A. Wilcox on Posted in Copyright
Congress passed an act on Monday as part of the Consolidated Appropriations Act for 2021 that included the COVID-19 relief bill, expected to signed by President Trump, which will establish a voluntary dispute resolution process in the Copyright Office for infringement claims not exceeding $30,000. The Copyright Alternative in Small-Claims Enforcement Act of 2020 (the … Continue Reading

Congress Passes the Trademark Modernization Act

Photo of Deborah A. WilcoxBy Deborah A. Wilcox on Posted in Trademark
On Monday as part of the Consolidated Appropriations Act for 2021 that included the COVID-19 relief package, Congress passed the Trademark Modernization Act, which President Trump is expected to sign. With respect to trademark infringement litigation, the act restores the rebuttable presumption of irreparable harm to support injunctive relief on proof of trademark infringement. The … Continue Reading

SCOTUS Holds that ‘generic.com’ Trademarks Like Booking.com May Be Capable of Registration

Photo of Deborah A. WilcoxPhoto of Christina MoserBy Deborah A. Wilcox and Christina Moser on Posted in Trademark
Today, the Supreme Court issued its opinion in the trademark registration case United States Patent and Trademark Office v. Booking.com B.V., holding “A term styled ‘generic.com’ is a generic name for a class of goods or services only if the term has that meaning to consumers.” Justice Ginsburg delivered the majority opinion, in which justices … Continue Reading

SCOTUS Livestreams Oral Arguments on BOOKING.COM Trademark Registerability

Photo of Deborah A. WilcoxPhoto of Christina MoserBy Deborah A. Wilcox and Christina Moser on Posted in Trademark
On Monday, we listened in real time to the livestreamed Supreme Court oral arguments in the trademark registration case United States Patent and Trademark Office v. Booking.com B.V.  Because of COVID-19, the arguments were done telephonically, but with the added twist of a live broadcast. The event itself was remarkable, considering the impact of the … Continue Reading

What Does Brexit Mean for Your European Union Trademarks?

Photo of Deborah A. WilcoxBy Deborah A. Wilcox on Posted in Trademark
The United Kingdom withdraws from the European Union today. The implementation period runs for the next 11 months, through Dec. 31. During this time, European Union trademark filings (“EUTMs”) will continue in full force in the U.K. Unless the time is extended, beginning Jan. 1, 2021, EUTMs that have already registered will automatically be granted protection in … Continue Reading

Beware of Fraudulent Requests to USPTO to Change Official Trademark Registration Records

Photo of Deborah A. WilcoxBy Deborah A. Wilcox on Posted in Trademark, USPTO
We have been alerted by the United States Patent and Trademark Office (USPTO) of unauthorized attempts by unknown parties to amend our clients’ trademark registration records.  Filing Correspondents and Attorneys of Record must remain vigilant for notices from the USPTO and respond to them swiftly to verify whether the requested change was authorized.  We have … Continue Reading

Something’s phishy here … Addressing internet scams through intellectual property strategy

Photo of Deborah A. WilcoxBy Shannon McCue and Deborah A. Wilcox on Posted in Copyright, Cybercrime
This time of year, people often seek extra work opportunities to make some spare cash. Job applicants flock to websites to find employment. This also attracts scam artists who impersonate legitimate companies to hook victims. While a variety of phishing schemes use imitation to provide a look of legitimacy to the scam, one of the … Continue Reading
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