Tag:United States

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Chanel Seeks Permanent Injunction Against WGACA
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HACKED! Regain Control of Your Social Media Identity
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New Accelerated Patent Grant (APG) Program Enhances Opportunities for U.S. Entities
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U.S. Copyright Review Board Affirms Rejection of Copyright Registration for Work Created With AI Application
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Supreme Court Limits Foreign Reach of U.S. Trademark Law
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U.S. Supreme Court Vacates Dog Toy Company’s Win in Jack Daniel’s Parody Trademark Dispute
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U.S. Supreme Court to Review “Trump Too Small” Trademark Refusal
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Proposed PTAB Rules up for Comment
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H2 Production: A Shift Towards Electrolysis
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False Advertising – Large Jury Verdicts in 2022 and the Likely Uptick in False Advertising Suits in 2023 – Part 1

Chanel Seeks Permanent Injunction Against WGACA

The public legal dispute between luxury brand Chanel and luxury reseller What Goes Around Comes Around (“WGACA”) continues with Chanel seeking a permanent injunction that WGACA argues is too broad. As previously reported, a New York jury previously awarded Chanel a US$4 million verdict against WGACA for sales of counterfeit Chanel-branded products Chanel, Inc. v. What Goes Around Comes Around, LLC, et al., 1:18-cv-02253 (SDNY). 

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HACKED! Regain Control of Your Social Media Identity

Imagine receiving a call from a friend asking about a new money-making opportunity you just posted on your social media account. Only, you did not post it. This is a story that many social media users face as the number of hacked social media accounts continues to rise. In a letter dated March 5 2024, 41 state Attorney Generals wrote Meta Platforms Inc. highlighting a significant rise in the number of hacked accounts being reported to their offices, (noting increases from 2022 to 2023: 730% increase in Vermont; 330% increase in North Carolina; 256% increase in Illinois; and 270% increase in Pennsylvania), and urging Meta to take immediate action. In a world where social media is engrained as a daily part of our lives, losing control of your social media identity can cause stress and have an impact on your professional and personal brand. Here are some suggested steps you can take to prevent having your account taken over and address it should hacking occur.

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New Accelerated Patent Grant (APG) Program Enhances Opportunities for U.S. Entities

On November 13 2023, the Mexican PTO (“IMPI”) released guidelines for the Accelerated Patent Grant (“APG”) Agreement. This is a patent work-sharing arrangement allowing qualifying USPTO patent holders the option of expediting prosecution for a corresponding Mexican patent application. The USPTO has been partners with Mexico through the Prosecution Highway (“PPH”) since 2010. PPHs are bilateral agreements among participating nations allowing qualifying patent applicants from one patent office to request expedited prosecution in a participating office. PPH programs have successfully reduced examination time and costs for clients by allowing examiners in later examining offices to utilize the search results from the earlier examiner. While the USPTO has a PPH partnership with IMPI, the APG Program is a new program giving USPTO applicants another opportunity to expedite a counterpart application in Mexico.

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U.S. Copyright Review Board Affirms Rejection of Copyright Registration for Work Created With AI Application

In a decision dated 11 December 2023, the Copyright Review Board of the United States Copyright Office affirmed the Office’s refusal to register an AI-generated artwork submitted by Ankit Sahni.

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Supreme Court Limits Foreign Reach of U.S. Trademark Law

In a fractured decision, the U.S. Supreme Court held on June 28, 2023 that two key provisions of the Lanham Act that prohibit trademark infringement do not extend to conduct that occurs outside the United States. Although all nine justices agreed that the Lanham Act does not apply extraterritorially, the Justices split five-to-four on the proper extraterritoriality framework. Writing for the majority, Justice Samuel Alito stated that extending the Lanham Act to conduct that occurs outside the United States is “wrong,” even if the conduct creates a likelihood of confusion in the United States, and that the contrary rule “would give the Lanham Act an untenably broad reach that undermines our extraterritoriality framework.” In contrast, Justice Sonia Sotomayor argued in an opinion concurring in the judgment that the majority decision “significantly waters down protections for U.S. trademark owners”, and called for “Congress to correct the Court’s limited reading of the Act.” Abitron Austria GmbH v. Hetronic Int’l, Inc., 600 U.S. _ (2023).

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U.S. Supreme Court Vacates Dog Toy Company’s Win in Jack Daniel’s Parody Trademark Dispute

By David J. Byer and Eric W. Lee

A unanimous U.S. Supreme Court held on June 8, 2023, that a dog toy company’s “parody” chew toy that mimics Jack Daniel’s widely recognized whiskey bottle does not escape trademark liability merely because the toy has “expressive content” or because it parodies Jack Daniel’s. Justice Kagan delivered the narrow opinion, writing that because the dog toy company, VIP Products LLC (“VIP”), used Jack Daniel’s trademarks as a designation of source for VIP’s own goods – i.e. using another’s trademark as a trademark – there is no special threshold First Amendment inquiry. The Supreme Court vacated the prior Ninth Circuit opinion that VIP’s use was protected under the First Amendment and the so-called Rogers test for “expressive” works, and remanded for consideration of whether VIP’s use is likely to cause consumer confusion. The Supreme Court expressly did not evaluate whether or how the well-known Rogers test may or may not apply in other contexts. Jack Daniel’s Properties, Inc. v. VIP Products LLC, 599 U.S. ___ (2023).

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U.S. Supreme Court to Review “Trump Too Small” Trademark Refusal

The U.S. Supreme Court will consider if the U.S. Patent and Trademark Office’s (USPTO) refusal to register the trademark “Trump too small” violates the Free Speech Clause of the First Amendment.

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Proposed PTAB Rules up for Comment

The USPTO on April 21, 2023 proposed a variety of changes to the pre-institution requirements and briefing process for post-grant proceedings, including both IPRs and PGRs. Among the proposed changes are broad amendments to the discretionary denial frameworks, which are intended to provide clarity, curb abusive litigation tactics, and generally align procedure with the objectives of the AIA. The deadline for submitting comments and suggestions related to these rules is June 20, 2023. The proposed rules provide valuable insight into the future of post-grant proceedings before the PTAB. An overview of these changes is outlined below, and additional details follow.

  • Parallel Proceedings – The USPTO is considering changes to the Fintiv framework, including the elimination of current factors 1, 2, and 5, a requirement for a Sotera stipulation, and a grace period that would exempt petitions filed within 6 months of service of the complaint from being discretionarily denied under this rule.
  • 325(d) Framework – The USPTO is considering a rule that would reign in the application of discretionary denial under 325(d) by limiting its application to art or arguments that had been “previously addressed,” or actually evaluated by the patent office as articulated on the record, such as in a rejection, notice of allowance, or examiner interview. Mere citation in an IDS will no longer meet the standard. Prior art will only be considered “substantially the same” where it contains the same teaching relied upon in the petition, and that teaching was addressed by the patent office. 
  • Serial Petitions – The USPTO is considering replacing the existing framework for serial petitions with a rule that will deny any serial or follow-on IPR petition filed by: (1) the same petitioner; (2) a real party in interest to that petitioner; (3) a party with a significant relationship to that  petitioner; or (4) a party who previously joined an instituted IPR filed by that petitioner. There will be an exception where the earlier petition was not resolved on the merits of the petition, or where exceptional circumstances are shown.
  • Prior Adjudications – The USPTO is contemplating stricter requirements where a prior final adjudication by a district court or in a post-grant proceeding upheld the validity of claims that substantially overlap the challenged claims, essentially requiring the petitioner (1) either has standing to challenge the validity of the patent in district court or intends to pursue commercialization, (2) was not a real party in interest to the party who unsuccessfully challenged the claims, and (3) meets the heightened burden of compelling merits.
  • Micro and Small Entities – The USPTO is mulling changes that would protect under-resourced entities by denying institution where the patent owner (1) claimed micro or small entity status at the time of filing; (2) did not exceed a gross income cap in the calendar year preceding filing of the petition; and (3) was commercializing a product covered by the challenged claim at the time of filing.
  • For-Profit Entities – The USPTO is contemplating a rule that would deny any IPR or PGR petition by a for-profit entity that has not been sued or threatened with infringement of the challenged patent, is not otherwise practicing in the field of the challenged patent, and is not in “substantial relationship” with an entity to which the rule would not apply.

The USPTO has also proposed changes to the disclosure requirements, what constitutes compelling merits, and termination by settlement filing requirements. An in-depth discussion of each suggested change is included below.

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H2 Production: A Shift Towards Electrolysis

Hydrogen production technology, according to the joint EPO-IEA report summarizing patent trends in the hydrogen economy (summarized here), accounts for the largest percentage of patenting activity since 2011 among the three primary stages of the hydrogen value chain (i.e., (i) production, (ii) storage, distribution, and transformation, and (iii) end-use industrial applications). Trends show a shift in hydrogen production from carbon-intensive methods to technologies that do not rely on fossil fuels. The bulk of recent increased patent activity is directed to electrolysis development, while patent activity related to production from biomass and waste has decreased.

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False Advertising – Large Jury Verdicts in 2022 and the Likely Uptick in False Advertising Suits in 2023 – Part 1

Some of the largest false advertising jury verdicts were recorded in 2022. This, coupled with increased inflationary pressures will likely lead to an uptick in false advertising suits given that such pressures will impact consumer spending habits, leading to increased scrutiny of competitor advertising practices—particularly in the social media space.

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