USPTO – IP Law Watch

If You Want It, You Should Have Done a Search On It: Why Trademark Searches are Essential Before Settling Down With a New Brand

Jan 13 2023

Have you chosen a brand only to learn months later that the U.S. Patent and Trademark Office is refusing to register it due to someone else’s prior trademark registration or pending application? The USPTO’s most recent Q4 2022 data indicates that it takes 8 months or more for a trademark application to be reviewed—and ideally approved—by an examiner. Given that prolonged timeline, any issues with the application, such as a similar third-party mark that could prevent your own registration, may not surface until you or your company has already invested heavily in the mark.

This raises the question: what can be done for brands eager to launch but that want some measure of comfort that their trademark will be valid?

The answer: Searching.

New Interim Guidance on Fintiv Factors

Jun 23 2022

On 21 June 2022, the United States Patent and Trademark office (USPTO) issued interim guidance on how the Patent Trial and Appeal Board (PTAB) should exercise its discretion when determining whether to institute a post-grant proceeding.

The Kremlin’s Intellectual Property Cold War: Legalizing Patent Theft with Decree 299

Mar 28 2022

Russia’s bold response to Western economic sanctions following its invasion of Ukraine now includes what amounts to legalizing patent theft against “unfriendly countries.” On March 5, 2022, the Kremlin issued Decree 299, which states that Russian companies and individuals can use inventions, utility models and industrial designs without owner permission or compensation, if the patent hails from a list of “unfriendly countries.”¹ Specifically, the decree sets compensation for patent infringement at “0%” if the patent holder is a citizen of, is registered in, or has a primary place of business or profit in any of the 48 countries Russia previously designated as “unfriendly.”² Unsurprisingly, the list includes the United States, Great Britain, European Union members, Australia, and other critics of Russia’s actions against Ukraine.

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

May 24 2021

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:

establish procedures and fees for ex parte expungement and reexamination proceedings
provide nonuse grounds for cancellation before the Trademark Trial and Appeal Board (TTAB)
establish flexible office action response periods, and
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.

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

Dec 28 2020

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.

PTAB Decisions Can Now Be Nominated Anonymously

Sep 24 2020

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.)

Are Valentino’s Rockstud® Shoes as Distinctive as the Red Soles?

Aug 18 2020

Has Valentino stepped up enough to show that their Rockstud® design has acquired distinctiveness similar to Christian Louboutin’s red soles? In a recent response to a USPTO office action, Valentino asserted similar notoriety in its Rockstud® design as Louboutin’s red soles.

PTAB’s Motion to Amend Patentability Powers

Jul 27 2020

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).)

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

Jun 30 2020

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.

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

Apr 29 2020

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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