Archives: USPTO Litigation

USPTO Sanctions Chinese Law Firm for Fraud and Terminates More Than 15,000 US Trademark Applications

On Dec. 10, 2021, the U.S. Patent and Trademark Office (USPTO) issued a precedential Final Order for Sanctions against Chinese practitioner and law firm Yusha Zhang and Shenzhen Huanyee Intellectual Property Co., Ltd. for filing more than 15,000 applications and other submissions that were deemed fraudulent. The USPTO described the mass filings as “[a] scheme … Continue Reading

Thinking of Registering a Service Mark That Primarily Benefits Your Company? Think Again

By Robert Horowitz on November 15, 2021 Posted in Trademark, USPTO, USPTO Litigation

If you are contemplating registering a service mark that primarily benefits your company and not others, don’t bother; it will be refused registration. This issue was recently addressed by the Trademark Trial and Appeal Board (TTAB) in In re California Highway Patrol, SN 88796327 (TTAB Nov. 4, 2021) [not precedential] (CHiP). In CHiP, the TTAB … Continue Reading

Trademark Office Takes Tougher Stance on Registering Rights to Colors on Packaging

By Shannon McCue on October 12, 2018 Posted in Trademark, USPTO Litigation

Trademark law recognizes that a color can be used to identify the source of products and therefore, enjoys protection under trademark law. Let’s test your color brand awareness: • What can Brown do for you? – shipping services • The little Purple pill – gastrointestinal medicine If these colors brought UPS and Nexium to mind, … Continue Reading

“All Expenses Paid” Is No Trip to the E.D. Va. for Patent and Trademark Applicants

By BakerHostetler on July 18, 2017 Posted in Patent, USPTO Litigation

Authored by: Kristie Butler, Summer Associate On June 23, 2017, the Federal Circuit confirmed in Nantkwest, Inc. v. Matal (No. 2016-1794) that patent applicants facing rejection from the Patent Trial and Appeal Board (PTAB) may seek relief in the Eastern District of Virginia under 35 U.S.C. §145, but ruled that these litigants must pay the … Continue Reading

USPTO Memo re Enfish v. Microsoft

By Michael Stein on May 20, 2016 Posted in USPTO Litigation

This is an update to my recent article about the Federal Circuit’s decision in Enfish v. Microsoft. In a memo to the Patent Examining Corps dated May 19, 2016, Deputy Commissioner Robert Bahr said that the Enfish decision provides “additional information and clarification on the inquiry for identifying abstract ideas.” The gist of the memo … Continue Reading

USPTO Releases Next Iteration of Examiner Guidance on Patent Subject Matter Eligibility

By Michael Stein on May 6, 2016 Posted in Patent, USPTO Litigation

On May 5, 2016, the USPTO released an update to its examiner guidance on patent subject matter eligibility. The update includes a new set of life science examples, a memorandum to the patent examining corps with instructions on formulating subject matter eligibility rejections and responding to applicants’ replies, an index of eligibility examples, and an … Continue Reading