Jones Day Presents: LB&I Examination Strategies: Acknowledgement of Facts IDR
In response to reports that some registrants use fraudulent specimens to prove continued use in commerce, the US Patent & Trademark Office (PTO) proposed an update to its post-registration audit process. Changes in...more
In June 2020, the U.S. Supreme Court rejected a rule that the combination of a generic term and a generic top-level domain (“gTLD”) is per se generic. See USPTO v. Booking.com B.V., 140 S. Ct. 2298 (2020) (“Booking.com”). In...more
The US Patent & Trademark Office (PTO) recently issued Examination Guide 1-22, Clarification of Examination Evidentiary Standard for Marks Refused as Generic (Guide 1-22), which amends the PTO’s stance on the appropriate...more
For many years, companies and individuals filing applications to register trademarks at the U.S. Patent and Trademark Office enjoyed a rather quick examination process. Examining attorneys at the Trademark Office reviewed...more
If we have learned anything from the last six-and-a-half years of patent eligibility jurisprudence, it is that nobody knows what's going on. Subject matter eligibility is a fundamental requirement for an invention to be...more
The United States Patent and Trademark Office (“USPTO”) released new examination requirements that went into effect on February 15, 2020. One of the new requirements is to include an email address for the mark’s owner in the...more
The U.S. Patent and Trademark Office released Revised Patent Subject Matter Eligibility Guidance (PEG) in January 2019, then released an update (PEG Update) in October 2019 to clarify certain issues in the PEG. The PEG and...more
On October 17, 2019, the USPTO issued new patent subject matter eligibility guidance, the first such memo since the January 2019 guidance on 35 U.S.C. §101. The January 2019 memo described a three step, two prong procedure...more
A new bill introduced in Congress last week may limit the ability of branded pharmaceutical companies to extend the period of exclusivity products beyond the term of a single patent. The bill, titled “Terminating the...more
In January 2015, Pitney Bowes filed an intent-to-use trademark application for the logo shown here for use with mailing services, including postal delivery, parcel delivery, and delivery of mail to post offices for posting...more
Innovation and Traditional Patent Process - When you develop an innovation, its potential patentability is typically unknown, thus making it difficult to determine whether it is worth the significant expense involved if...more
It’s happened to the best of us -- the United States Patent and Trademark Office ("PTO") suspends action on an application based on a potential likelihood of confusion with a prior filed/pending application, essentially...more
The May 2016 issue of Sterne Kessler's MarkIt to MarketTM newsletter discusses the April 2016 revisions to the USPTO's Trademark Manual of Examining Procedure ("TMEP") and notes currently open gTLD Sunrise Periods. ...more