Tag Archives: USPTO

Trademark Fraud Sparks Rare Bipartisan Action

Photo of C. Dennis LoomisBy C. Dennis Loomis on Posted in Trademark
In a political environment in which even a global virus pandemic cannot seem to foster bipartisan legislative cooperation, the growing surge in fraudulent trademark applications – many of which are maturing into issued trademark registrations – has done just that. On March 11, 2020, House Judiciary Chairman Jerrold Nadler, D-N.Y., and Ranking Judiciary Member Doug … Continue Reading

USPTO Tightens Unintentional Delay Standards for Certain Petitions to Revive, Acceptances of Delayed Maintenance Fee Payments, and Delayed Priority or Benefit Claims

Photo of Fabian KoenigbauerBy Fabian Koenigbauer on Posted in USPTO
The United States Patent and Trademark Office (USPTO) allows for the revival of abandoned applications, acceptance of delayed maintenance fee payments, and acceptance of delayed priority or benefit claims by the filing of a petition.[1] Abandoned applications can be revived only if the abandonment was “unintentional.”[2] Delayed maintenance fee payments and priority or benefit claims … Continue Reading

PTAB by the numbers: A closer look at the most recent PTAB AIA trial statistics

Photo of Fabian KoenigbauerBy Fabian Koenigbauer on Posted in USPTO
The United States Patent and Trademark Office (USPTO) recently posted the Patent Trial and Appeal Board (PTAB) statistics for December 2019 (first quarter of FY2020).[1]  Despite some inconsistences in the data, the statistics reveal some trends: Inter partes reviews (IPRs) remain the most common type of America Invents Act (AIA) trial. Life science/chemical patents and … Continue Reading

Can the USPTO Recover the Salaries of its Legal Personnel in Challenges to Adverse Decisions?

Photo of John HiltenBy John Hilten on Posted in Patent
Can the U.S. Patent and Trademark Office (USPTO) recover the salaries of its legal personnel in challenges to adverse decisions? Not surprisingly, the answer was a quick and unanimous no. More specifically, on Wednesday, Dec. 11, the U.S. Supreme Court concluded that the USPTO cannot recover the pro rata salaries of its legal personnel. The … Continue Reading

IPO’s “Gender Diversity in Innovation Toolkit” Aims to Address Disparities in Inventorship

Photo of Lesley GrossbergBy Lesley Grossberg on Posted in Patent
While women are awarded 53% of PhDs, they accounted for only 12% of named inventors on U.S. patents granted in 2016. Fewer than 30% of Patent Cooperation Treaty applications name a woman inventor. After the U.S. Patent and Trademark Office issued a report, “Progress and Potential: A Profile of Women Inventors on U.S. Patents” in … Continue Reading

A Punctuation Mark: Off-White Files Trademark Application for “PRODUCT BAG”

By Savannah Merceus on Posted in Trademark
Last summer, streetwear brand Off-White filed an application with the United States Patent and Trademark Office (USPTO) to register the mark “PRODUCT BAG.” With other Off-White goods bearing logos such as “MAKE UP,” “GOODS,” and “SCULPTURE,” those familiar with the brand know that founder Virgil Abloh is no stranger to the use of quotation marks. … Continue Reading

USPTO Proposes New Fee Schedule

Photo of John MuellerBy John Mueller on Posted in Trademark
On August 29, 2019, the Director of the USPTO notified the Trademark Public Advisory Committee (TPAC) of the Office’s intent to set or adjust trademark related fees and submitted a preliminary trademark fee proposal for comment. There are multiple timelines for public debate and comment on the proposed new fees, with a tentative implementation date … Continue Reading

New USPTO Rule Will Require Foreign Trademark Owners Be Represented by U.S.-Licensed Attorney

Photo of Katina BanksBy Katina Banks on Posted in Trademark
On Aug. 3, a new regulation promulgated by the U.S. Patent and Trademark Office (USPTO) will take effect and require all trademark applicants, registrants and parties to trademark proceedings that are domiciled outside the United States to be represented by an attorney who has a license to practice law in the U.S. Consequently, individuals and … Continue Reading

The ‘Integrated Into a Practical Application’ Test of the 2019 Revised Patent Subject Matter Eligibility Guidance

By Michael Stein on Posted in USPTO
On Jan. 4, 2019, the USPTO announced revised guidance relevant to Section 101 rejections (“2019 Revised Patent Subject Matter Eligibility Guidance”). The 2019 Revised Patent Subject Matter Eligibility Guidance explains that a claim that recites a judicial exception is not “directed to” the judicial exception if the judicial exception is “integrated into a practical application” … 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

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

By Shannon McCue on 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

USPTO Report on Patent Eligible Subject Matter

By Michael Stein on Posted in Patent
  On July 25, the USPTO published a new report titled “Patent Eligible Subject Matter: Report on Views and Recommendations From the Public.” The report attempts to synthesize public comments on the appropriate boundaries of patent eligible subject matter. The report includes a section reviewing the historical development of patent subject matter eligibility in the … Continue Reading

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

Photo of BakerHostetlerBy BakerHostetler on 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

Living it up at the HOTEL CALIFORNIA

By Thomas Hartin on Posted in Trademark
Legendary rock band Eagles, Ltd. (The Eagles), filed suit on May 1 against the owners of the Hotel California Baja LLC in the U.S. District Court for the Central District of California. The suit alleges trademark infringement and common law unfair competition by the owners, Debbie and John Stewart (owners). The hotel originally opened in … Continue Reading

Proof of Life: USPTO Ushers in New Audit Power for Proof-of-Use

By Margaret Abernathy on Posted in Trademark
Effective earlier this year, recently amended 37 C.F.R. §§ 2.161(h) and 7.37(h) empower the USPTO to require a registrant to submit additional documentation as “reasonably necessary” to prove use of the mark in connection with each and every good or service identified in the registration.  This is to ensure that the register “accurately reflects marks … Continue Reading

New TTAB Rules of Practice

By Jessica Watkins on Posted in Trademark
On Jan. 14, 2017, the Trademark Trial and Appeal Board (TTAB) Rules of Practice were amended in what the United States Patent and Trademark Office described as an effort “to benefit the public by providing for more efficiency and clarity in inter partes and ex parte proceedings.” The first such amendment in roughly nine years, … Continue Reading

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

By Michael Stein on 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

Patent Office Updates Rules for Post-Grant Proceeding Duty of Candor

By Joshua Branson on Posted in Patent
The United States Patent and Trademark Office recently amended 37 C.F.R. § 42.11 to include a certification requirement similar to that of Rule 11. Section 42.11 prescribes the duty of candor owed to the Patent Office. As noted in the Federal Register, the Office sees the new rule as preventative in nature. Despite comments expressing … Continue Reading

The USPTO Global Dossier Service Is Scheduled to Go Live in Mid-November

Photo of Laura GordonBy Laura Gordon on Posted in Uncategorized
The Global Dossier is a project stemming from a collaboration between the European Patent Office (EPO), the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), the State Intellectual Property Office of the People’s Republic of China (SIPO), and the United States Patent and Trademark Office (USPTO) (collectively, the IP5 Offices). As envisioned by … Continue Reading

USPTO Pilot Program: Trademark Registrations May Now Be Broadened To Account For Evolving Technology

Photo of Kevin BovardBy Kevin Bovard on Posted in Uncategorized
Trademark Office rules generally prohibit the broadening of goods and services identified in existing trademark registrations. But on September 1, the USPTO announced a new pilot program that will create a limited exception to this rule. Beginning September 1, trademark owners may now petition to broaden their registrations’ identified goods and services where such changes … Continue Reading

Attorney Fees for Post-Grant Patent Challenge Proceedings Before the USPTO May Be Recoverable in Exceptional Cases Under 35 U.S.C. § 285

By Hans Smith on Posted in Uncategorized
Parties accused of patent infringement are turning more and more to post-grant challenge proceedings at the United States Patent and Trademark Office (“USPTO”) as a faster and cheaper means for invalidating the asserted claims. A recent federal district court order indicates that the fees and costs associated with such proceedings may be recoverable if the … Continue Reading

USPTO Updates Guidance on Subject Matter Eligibility

By Michael Stein on Posted in Uncategorized
[For background, see our prior posts on July 2, 2014, August 5, 2014, December 18, 2014, and March 23, 2015.] On July 30, 2015, the United States Patent & Trademark Office (USPTO) published an update to its 2014 Interim Guidance on Subject Matter Eligibility (2014 IEG) published on December 16, 2014.[1] Comments to the 2014 … Continue Reading
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