We celebrate World IP Day this year on April 26, commemorating 53 years of the World Intellectual Property Organization (WIPO) Convention’s implementation. This year’s theme is “Women and IP: Accelerating Innovation and Creativity.” Women inventors and creators have shaped our world, developing new drugs, medical devices, industrial chemicals and technology. While women make up nearly … Continue Reading
As the holiday season is now upon us, one may wonder: Are general sayings about Christmas, Hanukkah, and other holidays protectible as trademarks? Or are these sayings free for anyone to use on things like sweatshirts and coffee mugs? The answer is, of course, the classic, “It depends.” But a review of singer Mariah Carey’s … Continue Reading
When considering a likelihood of confusion, one might naturally think a mark is registrable that is an antonym (opposite) of a registered mark. This was not the result in In re Sugar Free Specialties, LLC, Serial No. 90706411 (TTAB Dec. 7, 2022) (not precedential). In Sugar Free Specialties, the applicant sought registration of “SMALL WINS” … Continue Reading
On August 5, 2022, the Federal Circuit in Thaler v. Vidal ruled that an artificial intelligence (AI) system cannot be listed as a named inventor on a patent application, affirming the United States Patent and Trademark Office (USPTO) and Eastern District of Virginia rulings. The Federal Circuit concluded that the Patent Act requires an “inventor,” … Continue Reading
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
Effective March 29, 2022, the United States Patent and Trademark Office (USPTO), the Japan Patent Office (JPO) and the Korean Intellectual Property Office (KIPO) will accept a new combined petition option to participate in the Expanded Collaborative Search Pilot (CSP) program. The Expanded CSP program is currently active through Oct. 31, 2022, with each intellectual … Continue Reading
If you desire to register a service mark asserting use that is preparatory for the rendering of your services, your application will fail in the U.S. Patent and Trademark Office (USPTO). Instead, the services must be actually rendered in connection with the mark for a registration to be granted. In In re Alessandra Suuberg, SN … Continue Reading
Earlier this month, certain regulations implementing the Trademark Modernization Act (TMA) went into effect. Per the final rule, the new tools are primarily to clear the “deadwood” – that is, unused registered trademarks – from the Registry and are now available for use. A summary of the changes follows:… Continue Reading
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
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
I recently received a call from a friend who expressed that his company is struggling with helping inventors identify a point of novelty for their ideas in their invention disclosure forms (IDFs), and as a result, it has been difficult to decide whether or not to move forward with their invention ideas. As my friend … Continue Reading
Design patents offer valuable protection in a patent portfolio, including conferring different strategic advantages compared to those of utility patents. For example, design patents allow for recovery of “total profits” — not just lost profits or reasonable royalties as provided for infringed utility patents.[1] Likewise, design patents are not subject to attacks under 35 U.S.C. … Continue Reading
On Sept. 2, 2021, the U.S. District Court for the Eastern District of Virginia addressed what it called a “core issue”—whether an artificial intelligence (AI) machine can be an “inventor” under the Patent Act. It ruled that the “clear answer” is no. The Patent Applications Plaintiff Stephen Thaler, Ph.D., is the owner of a Device … Continue Reading
On Sept. 17, 2021, the Third Circuit Court of Appeals became the latest Circuit Court to limit the preclusive effect of Trademark Trial & Appeal Board (“TTAB”) decisions. In 2015, the Supreme Court, in B&B Hardware,[1] decided in a 7-2 vote that issues decided in TTAB proceedings may have preclusive effect if the elements of … Continue Reading
This blog previously reported[1] that on June 21, 2021, the Supreme Court issued its landmark decision in United States v. Arthrex, Inc., holding – in Chief Justice Roberts’ 5-4 opinion – that “the unreviewable authority wielded by [administrative patent judges, or APJs] during inter partes review [IPR] is incompatible with their appointment by the Secretary … Continue Reading
On June 21, 2021, the Supreme Court issued its long-awaited decision in United States v. Arthrex, 19-1434, 19-1452, 19-1458. The issue in Arthrex was “whether the authority of Administrative Patent Judges (APJs) to issue decisions on behalf of the Executive Branch is consistent with the Appointments Clause of the Constitution.” The Supreme Court held that … Continue Reading
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
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
The USPTO recently launched the Fast-Track Appeal Pilot Program on July 2, 2020. The Pilot Program is slated to last one year, with a cap of 125 granted petitions per quarter – 500 total for the year. According to a Patent Trial and Appeal Board (PTAB) webinar hosted on Feb. 18, 2021, the PTAB may … Continue Reading
On June 30, 2020, the Supreme Court of the United States decided USPTO v. Booking.com B.V., rejecting a rule that a proposed mark consisting of the combination of a generic term and a generic top-level domain, like “.com,” is automatically generic.[1] Booking.com arose from the U.S. Patent and Trademark Office’s (USPTO) refusal to register the … Continue Reading
The USPTO’s Motion to Amend (MTA) Pilot Program has been in effect for nearly two years. The Pilot Program applies to all AIA trials instituted on or after March 15, 2019. Broadly, the Pilot Program’s objective is to provide patent owners with the additional options of requesting Preliminary Guidance from the Patent Trial and Appeal … Continue Reading
Briefing is complete in an appeal asking the Federal Circuit to find that the America Invents Act (AIA) post-grant reviews violate the due process clause of the Constitution based on “structural bias.” New Vision Gaming & Development, Inc. (New Vision) v. SG Gaming, Inc. (SG), f/k/a Bally Gaming Inc., and Andrei Lancu, undersecretary of commerce … Continue Reading
Recently, the United States Patent and Trademark Office (USPTO) issued a memorandum to the Patent Trial and Appeal Board (PTAB) requiring the PTAB to change the standard used to assess the definiteness requirement under 35 U.S.C. § 112 for AIA trials. The PTAB must now use the indefiniteness test set forth by the Supreme Court … Continue Reading
For a company rushing to bring a breakthrough product to a red-hot marketplace, the goal may be a speedy patent prosecution at the United States patent office – but for a “stealth mode” company, the goal may be a slower and quieter process that gives the company time to refine its own products and to … Continue Reading