Aug 15, 2019

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

Trademark Photo

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

Jun 6, 2019

Will the Supreme Court Abrogate Sovereign Immunity for a State’s Infringement of Intellectual Property Rights?

Sign stating public private with arrows

In 1990, Congress passed the Copyright Remedy Clarification Act (“CRCA”), and in 1992 passed the Trademark Remedy Clarification Act (“TRCA”) and the Patent and Plant Variety Protection Remedy Clarification Act (“PCA”), all of which provided that states, state instrumentalities, and state employees acting in their official capacity, are not immune under the Eleventh Amendment, or other doctrine of sovereign immunity, from suit in federal court for copyright, trademark, and patent infringement.  In 1997, the Supreme Court held that Congress’ legislative power did not constitutionally authorize it to abrogate state sovereign immunity for patent infringement under the PCA.  Consistently since 1997,… Read more

May 30, 2019

Supreme Court Rules that Bankruptcy Does Not Revoke a Trademark License

Bankruptcy Court

On May 20, 2019, in deciding Mission Product Holdings, Inc. v. Tempnology, LLC, No. 17-1657, the U.S. Supreme Court settled a circuit split regarding an unresolved legal issue in trademark licensing, determining whether a licensee can continue to use a licensed mark once the licensor files for bankruptcy. Tempnology, LLC (“Tempnology”) manufactured clothing and accessories designed to stay cool during physical activity and marketed these products under the trademark “Coolcore.” In 2012, Tempnology entered into a license agreement with Mission Product Holdings, Inc. (“Mission”), granting Mission an exclusive license to distribute certain Coolcore products in the United States and a… Read more

May 2, 2019

Fourth Circuit Fixes Fair Use


On April 26, the Fourth Circuit Court of Appeals reversed a controversial ruling that caused significant concerns for visual artists. Brammer v. Violent Hues Productions, LLC, No. 18-1763 (4th Cir. Apr. 26, 2019). The lower court ruled that a festival promoter’s unlicensed use of a copyrighted photograph on its website in connection with advertising the festival was permitted as “fair use.” More information concerning the trial court’s ruling is contained in our earlier article, Is Fair Use Still Fair, available here. After analyzing the statutory fair use factors, the lower court found that they weighed in favor of permitting the… Read more

Apr 25, 2019

ICANN Updates: Access to Domain Name Registrant Data Post-Blackout

ICANN Definition

As stated previously, the implementation of the European Union (EU) General Data Protection Regulation (GDPR) has created significant issues for brand owners with regard to identifying counterfeiters and combatting infringement online, resulting in increasing enforcement costs. Under the GDPR, domain name registrars are prohibited from publishing the name and contact information for domain name registrants. Personal data may only be processed if the registrant consents, for the performance of a contract, or for a legitimate interest of the data controller or a third party. As a result, the Internet Corporation for Assigned Names and Numbers (ICANN) launched an Expedited Policy… Read more

Apr 11, 2019

Brunetti and the Tests of Tam

Courthouse: Iancu v. Brunetti

On Monday, April 15, 2019 arguments in the Brunetti case [Iancu v. Brunetti, No. 18-302] will be heard at the United States Supreme Court. Erik Brunetti seeks to register the mark FUCT for clothing. Brunetti’s application was rejected for registration by the United States Patent and Trademark Office on the basis that it violates the Lanham Act, 15. U.S.C. 1052(a) which prohibits the registration of marks comprised of “immoral” or “scandalous” matter. The arguments by the government and Brunetti are sure to echo some of the arguments made in the so-called SLANTS case, Matal v. Tam, 137 S. Ct. 1744… Read more

Apr 11, 2019

Federal Circuit Declines to Give Deference to the USPTO

USPTO - Patent Stamp

More patents directed to diagnostic methods were found to be invalid as directed to the ineligible subject matter in Cleveland Clinic Foundation v. True Health Diagnostics, LLC, Case No. 2018-1218 (Fed. Cir. April 1, 2018). The Court of Appeals for the Federal Circuit applied the “Alice two-step” test and found the claims in U.S. Patent Nos. 9,575,065 and 9,581,597 invalid under § 101. This holding may come as a surprise to some because Cleveland Clinic argued, among other things, that the claims at issue mirrored Example 29-Claim 1 in the USPTO guidance published on May 4, 2016 (“referred to as… Read more

Apr 4, 2019

Avoid Truthful But Misleading Advertising

Street Advertising - Misleading Advertising

Avoid truthful but misleading advertising. Be careful what you say, especially about your competitors. As expected, competitors are sensitive to any negative allegations made about their products or services, since it may likely have an effect on the business’s sales and reputation. Some competitors may even file a lawsuit to enjoin the use of such statements, even if the statements are technically true. On March 21, 2019, MillerCoors, LLC (“MillerCoors”), which sells Miller Lite and Coors Light, filed a complaint against Anheuser-Busch Companies, LLC (“AB”), which sells Bud Light, after the Bud Light commercials shown during Super Bowl LIII and… Read more

Mar 7, 2019

Using Inventorship Challenges to Facilitate the Resolution of Misappropriation of Trade Secrets Claims

Goodyear Tires & Inventorship Challenge

Coda Development S.R.O., v Goodyear Tire & Rubber Company (Fed. Cir. 2019), presents an interesting case: the use of an inventorship challenge to facilitate the resolution of an alleged misappropriation of trade secrets following unsuccessful negotiations. Coda sought inventorship correction in several patents filed by Goodyear involving self-inflating tire (“SIT”) technology, including US No. 8,042,586 (“ ‘586”), and compensation for the misappropriation of SIT trade secrets.  The District Court (N.D. Ohio) dismissed Coda’s complaint for failing to state a claim upon which relief could be granted and denied Plaintiffs’ leave to amend the complaint.  Plaintiffs appealed both the dismissal and… Read more