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Beach Buggy Battle: Stipulation Insufficient to Establish Trademark Distinctiveness

The US Court of Appeals for the Fourth Circuit found that a district court does not need to accept both parties’ stipulation that a mark is distinctive but instead is permitted to make an evidentiary inquiry in determining...more

Preliminary Injunction Upheld in Cancer Relapse Detection Case

The US Court of Appeals for the Federal Circuit affirmed the grant of a preliminary injunction (PI) in the biopharmaceutical space, concluding that the plaintiff satisfied the requirements for injunctive relief, including...more

No Fair Use for Photo Used Without Required Attribution

The US Court of Appeals for the Fourth Circuit concluded that the copyright on a photograph of an entertainment icon was the subject of a valid copyright registration and that use of the photograph in an article missing the...more

False Advertising: Verifiably False Versus Subjective Opinion

In a case originally based on a false advertising claim under § 43(a) of the Lanham Act, the US Court of Appeals for the Ninth Circuit affirmed in part, reversed in part and remanded the district court’s dismissal of the...more

Claim Duality: Multiple Dependent Claims Can Be Both Patentable and Unpatentable

Addressing, for the first time, the issue of patentability of multiple dependent claims under 35 U.S.C. § 112, fifth paragraph, the Director of the US Patent & Trademark Office (PTO) granted rehearing and modified the Patent...more

The Saddest Hour? Closing Time for Trademark Cancellation Petition

In a precedential decision, the Trademark Trial & Appeal Board (Board) denied a petition to cancel a trademark registration based on priority. The Board explained that the petitioner bears a higher burden of proof to show...more

If You Come for the Prince, You Best Not Miss

In a precedential decision, the Trademark Trial & Appeal Board (Board) granted two opposers’ motions for partial judgment on their claim of false suggestion of a connection under Section 2(a) of the Trademark Act based on a...more

Can’t Dismiss Lanham Act Claim Based on FDCA Preemption

The US Court of Appeals for the First Circuit affirmed-in-part and vacated-in-part a district court ruling dismissing claims under the Lanham Act and Massachusetts consumer protection law based on statements on a website...more

Argument Forfeit in Remand Notwithstanding Modified Claim Construction

In the second appeal arising from an inter partes review (IPR), the US Court of Appeals for the Federal Circuit found that its revised claim construction from the first appeal did not permit the patent challenger to raise a...more

Terms of Degree Not Always Indefinite

The US Court of Appeals for the Federal Circuit overturned a district court determination that the claim terms “resilient” and “pliable” were indefinite. The Federal Circuit found that the claims, while broad, were...more

What Preclusion? Post-IPR Reexam Moves Forward

The US Court of Appeals for the Federal Circuit revived a petitioner’s validity challenge seeking ex parte review at the US Patent & Trademark Office (PTO), reversing a district court decision dismissing its complaint seeking...more

2022 IP Outlook Report: The Developments Shaping Patent Law

KEY TAKEAWAYS AND OUTLOOK FOR 2022 - Tracking with this era’s continuation and uncertainty trends―global supply chain disruption, innovation outpacing legislation, the unstoppable internet of [all the] things (IoT)―2022 is...more

Party May Not Veil EU Individual’s Information under GDPR at the TTAB

In a rare precedential opinion, the Trademark Trial & Appeal Board (TTAB, Board) ruled that the EU General Data Protection Regulation (GDPR) does not apply in Board proceedings. Chicago Mercantile Exchange, Inc. v....more

A Tale of Two Authors: Determining Ownership Rights of Novels Adapted for Theatre

The US Court of Appeals for the First Circuit vacated the district court’s opinion and order that Roberto Ramos Perea, the playwright who adapted the novels of prominent Puerto Rican author Enrique Laguerre for theatre, was...more

3D Chess at the Federal Circuit: Can't Walk Back Arguments in Prior Appeal or Prosecution History

In the second appeal to the US Court of Appeals for the Federal Circuit, the preamble term “three-dimensional spreadsheet” was found to be a limitation in the context of claims directed to organizing and presenting...more

Triple Trouble: Unauthorized Trademark Use among Organizations with Nearly Identical Name

The US Court of Appeals for the District of Columbia Circuit affirmed a district court ruling that the use of nearly identical marks by a military order, a related foundation and a funding organization was likely to cause...more

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