Nov 7, 2019

Six SGR Intellectual Property Attorneys Appointed to INTA Committees for the 2020-2021 Term

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Smith, Gambrell & Russell is proud to announce attorneys appointed to INTA Committees for the 2020–2021 term. The International Trademark Association appoints committee volunteers to carry out trademark-related initiatives and programs. Committee members fulfill their responsibilities by promptly and thoughtfully completing their committee’s mission statement. Smith, Gambrell & Russell’s appointments follow: Jim Bikoff was selected to be a member of the Data Protection Committee. The INTA Data Protection Committee develops and advocates the Association’s policy regarding the impact of data protection law on trademark rights. The committee monitors data protection cases, legislation and regulation in various jurisdictions, completes analyses and proposes… Read more


Oct 29, 2019

How to Overcome the Genericness Hurdle at the U.S. Trademark Trial and Appeal Board

Photo of a Lightbulb with a question mark

The Following Article is reprinted, with permission, from INTA Bulletin, Vol. 74, No.8 From 2013 through 2017, the U.S. Trademark Trial and Appeal Board (TTAB) issued 10 opinions in which it ruled on claims whose marks were generic for their goods or services. Of these opinions, nine resulted in a finding that the mark was unregistrable. A closer look at those opinions reveals what owners and practitioners should know when faced with the chance to argue genericness before the TTAB. Under U.S. trademark law, a mark is generic if its primary significance to the relevant public is the goods or… Read more


Oct 21, 2019

On Second Thought, Don’t Say My Name—Registering Surnames in the United States

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The Following Article is reprinted, with permission, from INTA Bulletin, Vol. 74, No.16 The Lanham Act prohibits registration on the Principal Register of marks that are primarily merely a surname. For many small businesses, this prohibition proves problematic because owners tend to want to include their own names in the business name to let customers know that they stand behind the quality of their goods or services. The United States Patent and Trademark Office applies a five-part test to determine whether registration should be denied on this basis. Its recent decisions, however, establish that some of these factors are weighted… Read more


Oct 17, 2019

Do “Expenses” Include the PTO’s Attorney’s Fees in a New Civil Action Filed to Challenge the PTO’s REfusal of an Application

Judge Gavel with Money

On October 7, 2019, the Supreme Court heard oral arguments in Peter v. Nantkwest, Inc., Case No. 18-801.  This case addresses the question of whether an applicant must pay the attorney’s fees incurred by the Patent and Trademark Office (“PTO”) in defending against a civil action to challenge the PTO’s refusal of an application to register a patent or trademark – whether the applicant prevails in the action or not.  The Fourth Circuit and the Federal Circuit decided this issue differently, thus creating a Circuit split which the Supreme Court needed to resolve. When an application for a trademark or… Read more


Sep 26, 2019

Can Unasserted Claims of Ameranth Patent be Invalidated Under Section 101?

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The Federal Circuit recently heard oral argument in Ameranth, Inc. v. Domino’s Pizza, LLC, Nos. 2019-1141, -1144, in which the Court grappled with the issue of determining whether unasserted claims of a patent can be invalidated under Section 101. In 2011, Ameranth filed patent infringement actions against several defendants, including Domino’s, alleging infringement of two patents.  In an amended complaint filed in 2013, Ameranth accused Domino’s of infringing thirteen claims – specifically, claims 1, 3, 6-9, 11-13, and 15-18 – of a third patent, U.S. Patent No. 8,146,077 (“the ’077 Patent”), which was directed to a system for generating and… Read more


Sep 12, 2019

Trademark Decisions at the ITC May Have Preclusive Effect at the District Court

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On May 18, 2016, Segway filed a Complaint with the International Trade Commission (ITC) alleging violations of 19 U.S.C. § 1337 based on the infringement of six patents and two trademarks. On March 21, 2017, Swagway, one of the Respondents, moved for partial termination of the investigation regarding the trademark infringement allegations by asking for a consent order stipulation to be entered where Swagway stipulated that it would not sell or import SWAGWAY-branded personal transporter products as well as all components thereof, packaging and manuals therefor. Before the Administrative Law Judge (“ALJ”) ruled on Swagway’s motion for consent order, the… Read more


Sep 4, 2019

SGR IP Attorneys Continue Service as Adjunct Professors at Various Law Schools

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SGR Partners Greg Kirsch and Matt Warenzak are continuing their service as adjunct professors of patent and intellectual property (IP) law, at various law schools. Kirsch will be teaching an intensive class on “Intellectual Property Protection for Computer Software”, at Washington University School of Law in St. Louis, during this coming weekend of September 6-8, 2019.  The class, which Kirsch has been teaching each Fall since 2011, focuses on how the various types of IP regimes (patents, copyrights, trade secrets, and trademarks) can be used to protect different aspects of computer software technology, the procedures used to protect such IP,… Read more


Aug 29, 2019

No Place To Hide – The Effect of a Data Breach on Brand Value

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This Blog is Co-Authored by James Bikoff, Smith, Gambrell & Russell, LLP; Nicole DelleDonne, Brandsight, Inc.; and Susan Natland, Knobbe Martens Almost every week, a brand owner discloses that a data breach has occurred. As trademark professionals and ambassadors of our organization’s and client’s brands, the effect of a data breach goes far beyond the concrete costs and resources in dealing with the breach. Studies have shown and common sense supports that a data breach can cause substantial damage to brand value due to harm to the goodwill in a brand and loss of consumer trust. Thus, data breaches are not… Read more


Aug 15, 2019

Trademark Owners, Watch Out! USPTO Getting Strict on Trademark Specimens

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In order to register a trademark based on use in commerce, or to renew a registration based on a foreign or international registration, trademark owners are required to verify that the mark is in use in U.S. commerce with all goods or services listed in the application or registration. In addition, the mark owner must file proof of use (a “specimen”) that demonstrates use of the mark in commerce in connection with at least one good or service in each International Class. The USPTO has announced that it will be rolling out new regulations in October 2019 that will tighten… Read more


Jul 25, 2019

Update: Scandalous Marks at the PTO

Surprised Teenager

On July 3, 2019, the PTO issued Examination Guide 2-19, entitled “Examination Guidance for Section 2(a)’s Scandalous Marks Provision after Iancu v. Brunetti.” By way of background, in December 2017 the CAFC held that the provision violates the First Amendment because it restricts free speech. In re Brunetti, 877 F.3d 1330, 125 USPQ2d 1072 (Fed. Cir. 2017). Since then, the PTO has been suspending action on pending applications refused under the “scandalousness” provision until final disposition of the matter. On June 24, 2019, SCOTUS affirmed the judgment of the Federal Circuit. 588 U.S. ___, 2019 USPQ2d 232043 (2019). In an… Read more