In part one of this article, we discussed the challenges artists face as they seek to protect their intellectual property from generative AI using copyright law. In part two, we explore a legal approach that may be more...more
Yesterday, the U.S. Supreme Court issued a much-anticipated opinion in a trademark case directed toward what it means for a trademark to be generic, and hence not subject to registration, in United States Patent and Trademark...more
7/1/2020
/ Acquired Distinctiveness ,
Appeals ,
Booking.com ,
Domain Name Registration ,
Domain Names ,
Generic Marks ,
Lanham Act ,
SCOTUS ,
Trademark Registration ,
Trademarks ,
United States Patent and Trademark Office v Booking.com BV ,
USPTO
Yesterday, the U.S. Supreme Court issued a unanimous opinion in a long-running trademark dispute: Lucky Brand Dungarees, Inc., et al. v. Marcel Fashions Group, Inc., No. The question presented to the Court was whether Lucky...more
5/15/2020
/ Claim Preclusion ,
Collateral Estoppel ,
Counterclaims ,
Defense Preclusion ,
Fashion Branding ,
Issue Preclusion ,
Lucky Brand Dungarees v Marcel Fashion Group ,
Motion to Dismiss ,
Release Agreements ,
Res Judicata ,
SCOTUS ,
Split of Authority ,
Subsequent Litigation ,
Trademark Infringement ,
Trademark Litigation ,
Trademarks
On April 28, 2020, the U.S. Patent and Trademark Office announced that it was further extending the time to file certain patent and trademark-related documents and to pay certain required fees in a Notice posted on its...more
On April 27, 2020, the U.S. Supreme Court extended limits on the states’ ability to claim copyright protection over legislative materials and, specifically, over explanatory annotations added to legislative materials. The...more
4/30/2020
/ Annotated Case Law ,
Appeals ,
Copyright ,
Copyright Infringement ,
Copyrightable Subject Matter ,
Georgia v. Public.Resource.Org Inc ,
Government Edicts Doctrine ,
Judges ,
Legislative Duties ,
Reversal ,
SCOTUS ,
Statutory Code ,
The Copyright Act
Last week, the U.S. Supreme Court held that willful infringement of a trademark is not required for a plaintiff to recover defendant’s profits upon a showing of a likelihood of confusion. The Court focused on the language of...more
4/26/2020
/ § 1125(a) ,
§ 1125(c) ,
Appeals ,
Burden of Proof ,
Charge-Filing Preconditions ,
Compensatory Awards ,
Dilution ,
Lanham Act ,
Lost Profits ,
Remand ,
Remedies ,
Romag Fasteners v Fossil ,
SCOTUS ,
Trademark Infringement ,
Trademark Litigation ,
Trademarks ,
Vacated ,
Willful Infringement
On February 7, 2020, the U.S. Trademark Office issued long-anticipated guidelines governing electronic filing and electronic communications with attorneys and trademark owners. Effective February 15, 2020, these new rules...more
2/10/2020
/ Electronic Filing ,
Email ,
New Rules ,
Trademark Application ,
Trademark Electronic Application System (TEAS) ,
Trademark Examination ,
Trademark Examination Guide ,
Trademark Ownership ,
Trademark Registration ,
Trademark Specimen ,
Trademark Trial and Appeal Board ,
Trademarks ,
USPTO
Effective August 3, 2019, trademark applicants, registrants, and parties to Trademark Trial and Appeal Board (“TTAB”) proceedings domiciled outside of the United States (“foreign-domiciled”), must be represented before the...more
On Monday, the U.S. Supreme Court issued an opinion in Iancu v. Brunetti, No. 18-302, finding that the Lanham Act prohibition against registration of scandalous or immoral trademarks violates the First Amendment of the U.S....more
6/28/2019
/ Appeals ,
Constitutional Challenges ,
First Amendment ,
Free Speech ,
Iancu v. Brunetti ,
Lanham Act ,
Reaffirmation ,
Reversal ,
Scandalous/Immoral Marks ,
SCOTUS ,
Trademark Registration ,
Trademarks ,
USPTO ,
Viewpoint Discrimination
On June 24, 2019 the U.S. Supreme Court issued an opinion in Iancu v. Brunetti, No. 18-302, finding that the Lanham Act prohibition against registration of scandalous or immoral trademarks violates the First Amendment of the...more
6/24/2019
/ Constitutional Challenges ,
Corporate Counsel ,
First Amendment ,
Free Speech ,
Lanham Act ,
Matal v Tam ,
SCOTUS ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks ,
USPTO
USPTO Issues CBD Trademark Guidelines in Light of the 2018 Farm Bill: Key Takeaways -
On May 2, 2019, the USPTO released its new guidelines on how it will examine federal trademark applications for CBD products in light of...more
6/6/2019
/ Cannabidiol (CBD) oil ,
Controlled Substances Act ,
Copyright ,
Design Patent ,
Due Diligence ,
Farm Bill ,
Food and Drug Administration (FDA) ,
IP License ,
Lanham Act ,
Licenses ,
Licensing Rules ,
Open Source Software ,
Patent Ownership ,
Patent Validity ,
Patents ,
Software ,
Software Patents ,
Trademarks ,
USPTO
Last week, the U.S. Patent and Trademark Office released its new guidelines on how it will examine federal trademark applications for cannabidiol (CBD) products in light of the 2018 Farm Bill. While these new guidelines are...more
The U.S. Patent and Trademark Office (“USPTO”) currently offers a pilot program that provides parties the opportunity to engage in expedited non-use cancellation proceedings. Broadly speaking, cancellation proceedings allow...more
Today, March 4, 2019, the U.S. Supreme Court issued unanimous opinions in two important copyright cases: Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, et al., No. 17-571, and Rimini Street, Inc., et al. v....more
3/5/2019
/ Appeals ,
Copyright ,
Copyright Infringement ,
Copyright Registration ,
Fourth Estate Public Benefit Corp v Wall-Street.com LLC ,
Petition for Writ of Certiorari ,
Rimini Street Inc v Oracle USA Inc ,
SCOTUS ,
Solicitor General ,
Split of Authority ,
The Copyright Act ,
Uniformity
The U.S. Customs and Border Protection (“CBP”) agency can provide IP rights owners with powerful tools to stop infringing articles from entering the United States. According to CBP statistics, in fiscal year 2015, for...more
On October 11, 2018, President Donald Trump signed into law the Orrin G. Hatch–Bob Goodlatte Music Modernization Act (“the Act”), which will significantly modernize copyright law to account for the digital delivery of...more
Patent Exhaustion: Supreme Court Expands Patent-Limiting Doctrine -
The U.S. Supreme Court at the end of the past term handed down a decision, Impression Products, Inc. v. Lexmark International, Inc., that greatly expanded...more
Unlike other intellectual property rights, copyright automatically exists when an original work of authorship is fixed in a tangible form of expression. So, while copyright owners may choose to register a copyright claim with...more
In 2011, the Leahy-Smith America Invents Act (“AIA”) established new post-issuance procedures for challenging the validity of a granted patent before the Patent Trials and Appeal Board (“PTAB” or “Board”). Inter partes...more
3/22/2017
/ America Invents Act ,
Covered Business Method Patents ,
Covered Business Method Proceedings ,
Estoppel ,
Inter Partes Review (IPR) Proceeding ,
Jurisdiction ,
Patent Agent Privilege ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Trademark Registration ,
Trademarks ,
USPTO
Owners of U.S. trademark registrations need to know about a few recent rule changes and be mindful of the changes and U.S. Patent and Trademark Office requirements whenever a declaration of use is due....more
Supplemental Examination: Potential Benefits vs. Guaranteed Risks -
The America Invents Act of 2011 introduced supplemental examination of patents as a post-grant process intended to limit expensive and unpredictable...more
9/16/2016
/ 3D Printing ,
America Invents Act ,
Compulsory Licenses ,
Defend Trade Secrets Act (DTSA) ,
Digital Media ,
DMCA ,
EU ,
Indirect Infringement ,
Intellectual Property Protection ,
Music Streaming ,
Patents ,
Popular ,
Royalties ,
Startups ,
Supplemental Examination ,
Trade Secrets ,
Trademarks ,
UTSA ,
Venture Capital ,
Venture Funding
The America Invents Act of 2011 introduced supplemental examination of patents as a post-grant process intended to limit expensive and unpredictable inequitable conduct litigation and improve patent quality. As codified, 35...more
By now, everyone has likely heard about the United Kingdom’s vote last week to leave the European Union. Few things are certain at this time, as governments around the world are still making plans to deal with Brexit....more
6/28/2016
/ Community Designs ,
EU ,
European Patent Convention ,
European Patent Office ,
Intellectual Property Protection ,
Patents ,
Referendums ,
Trademark Registration ,
Trademarks ,
UK ,
UK Brexit
Pre-AIA and Post-AIA Issues Presented by the On-Sale Bar -
The “on-sale” bar to patentability refers to a sale or offer for sale of an invention that can invalidate the patent for that invention. The...more
6/7/2016
/ aBLA ,
Amended Regulation ,
America Invents Act ,
Amgen ,
Apotex ,
Appeals ,
Biosimilars ,
BPCIA ,
Commercial Marketing ,
Community Trademark ,
Declaratory Judgments ,
EU ,
Filing Fees ,
Food and Drug Administration (FDA) ,
Generic Drugs ,
Inventions ,
Notice Requirements ,
On-Sale Bar ,
Patent Dance ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patents ,
Pharmaceutical Patents ,
Popular ,
Preliminary Injunctions ,
Prior Art ,
Public Use ,
Renewal Fees ,
Sandoz ,
Sandoz v Amgen ,
Trademark Registration ,
Uniform Commercial Code (UCC) ,
USPTO
On March 23, 2016, new rules came into effect substantially amending the Community trademark system in the European Union (the “amended Regulations”). Below we discuss a number of points potentially relevant to U.S. brand...more