Tag: USPTO

1
USPTO Proposes Rulemaking to Implement Provisions of the Trademark Modernization Act of 2020
2
U.S. Spending Bill Includes Sweeping New Copyright and Trademark Measures
3
PTAB Decisions Can Now Be Nominated Anonymously
4
Are Valentino’s Rockstud® Shoes as Distinctive as the Red Soles?
5
PTAB’s Motion to Amend Patentability Powers
6
U.S. Supreme Court Allows Booking.com to Trademark Its Domain Name
7
COVID-19: USPTO further extends certain filing and payment deadlines to June 1, 2020 for those affected by COVID-19 outbreak
8
PTAB designates additional decisions precedential relating to its discretion to deny petitions
9
New workshare arrangement aims to reduce time to obtain Mexican counterpart patent protection
10
POP Provides Clarity Regarding Level of Proof for Printed Publications Before the PTAB

USPTO Proposes Rulemaking to Implement Provisions of the Trademark Modernization Act of 2020

On 18 May 2021, the U.S. Patent and Trademark Office (USPTO) published a notice of proposed rulemaking concerning the Trademark Modernization Act of 2020 (TMA). The USPTO proposed to amend the rules to implement certain provisions of the TMA, as detailed below. The proposed new and amended rules:

  1. establish procedures and fees for ex parte expungement and reexamination proceedings
  2. provide nonuse grounds for cancellation before the Trademark Trial and Appeal Board (TTAB)
  3. establish flexible office action response periods, and
  4. amend the existing letter-of-protest rule to indicate that letter-of-protest determinations are final and nonreviewable.

Amendments are also proposed for the rules concerning the suspension of USPTO proceedings and rules governing attorney recognition in trademark matters. Finally, a new rule is proposed to address procedures regarding court orders cancelling or affecting registrations. The USPTO must receive written comments regarding these proposed rules on or before 19 July 2021.

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U.S. Spending Bill Includes Sweeping New Copyright and Trademark Measures

On Monday, 21 December, U.S. Congressional leaders passed a spending bill that included government funding and folded in several controversial intellectual property provisions that will expand the rights of intellectual property owners. These provisions include the Copyright Alternative in Small-Claims Enforce (CASE) Act, the Trademark Modernization Act (TMA), and a law to make certain illegal streaming a felony. The bill was signed into law by President Trump on 27 December 2020.

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PTAB Decisions Can Now Be Nominated Anonymously

The Patent Trial and Appeal Board (“PTAB”) now allows “individuals to anonymously nominate any routine decision of the Board for designation as precedential or informative.” (Click here for PTAB Decision Nomination form.)

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PTAB’s Motion to Amend Patentability Powers

In a 2-1 split decision on Wednesday, July 22, 2020, the Federal Circuit confirmed that the Patent Trial and Appeal Board (“PTAB“) had the authority to reject substitute claims under 35 U.S.C. §§ 101 and 112, statutory grounds not available to the PTAB for evaluating patentability of granted patent claims in inter partes review (“IPR“). (Uniloc 2017 LLC, v. Hulu, LLC et al., Case No. 2019-1686, slip op. at 3 (Fed. Cir. July 22, 2020).)

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U.S. Supreme Court Allows Booking.com to Trademark Its Domain Name

On June 30, 2020, the U.S. Supreme Court held in U.S. Patent and Trademark Office v. Booking.com B.V., 591 U.S. ___ (2020) that “Booking.com” is eligible for trademark registration because consumers do not perceive “Booking.com” as a generic name.[1] The 8-1 decision written by Justice Ginsburg rejected the U.S. Patent and Trademark Office’s argument that when a generic term is combined with a generic Internet-domain-name suffix like “.com,” the resulting combination is necessarily generic, noting that such an unyielding legal rule that entirely disregards consumer perception is incompatible with the Lanham Act.

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COVID-19: USPTO further extends certain filing and payment deadlines to June 1, 2020 for those affected by COVID-19 outbreak

In a Notice issued April 28, 2020, the U.S. Patent and Trademark Office (USPTO) further extended certain filing and payment deadlines to June 1, 2020, provided that the filing is accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak. This Notice supersedes the prior March 31, 2020 Notice that offered 30-day extensions to certain deadlines through April 30, 2020.

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PTAB designates additional decisions precedential relating to its discretion to deny petitions

On Tuesday, the Patent Trial and Appeal Board (PTAB) designated two decisions precedential and one as informative explaining the circumstances under which the Board will exercise its discretion under 35 U.S.C. § 325(d) and 35 U.S.C. § 314(a) to deny petitions.  The cases analyzed situations where the prior art and invalidity arguments advanced by Petitioner were similar/identical to those previously considered by the examiner and where the timing of a final decision may coincide with another body’s findings (e.g., a district court trial) regarding validity.  These cases provide guidance to Petitioners and Patent Owners alike about how to construct discretionary denial arguments, in particular regarding the appropriate way to address art that may or may not be cumulative to already-considered references. 

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New workshare arrangement aims to reduce time to obtain Mexican counterpart patent protection

The USPTO and the Mexican Institute of Industrial Property (IMPI) have announced a new worksharing arrangement that aims to make it easier and faster to obtain a Mexican patent for those who have already obtained a corresponding U.S. patent. The agreement allows IMPI to leverage USPTO search and examination results in an effort to significantly reduce the review time of a Mexican patent application.

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POP Provides Clarity Regarding Level of Proof for Printed Publications Before the PTAB

The PTAB’s Precedential Opinion Panel (“POP”) issued a decision in Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, on Friday, December 20, 2019. The issue at hand: “What is required for a petitioner to establish that an asserted reference qualifies as ‘printed publication’ at the institution stage?” Hulu v. Sound View, IPR2018-01039, Paper 29 at *2 (P.T.A.B. December 20, 2019).

This decision provides clarity on an issue that was often addressed inconsistently across panels regarding the “requirements for institution involving issues of public accessibility of an asserted ‘printed publication.’” Id. at 2.

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