On February 15, 2020, the United States Patent and Trademark Office’s (USPTO) new rules will go into effect (84 Fed. Reg. 37081) requiring applicants, registrants, and parties to a proceeding before the Trademark Trial and Appeal Board (TTAB) to provide their own email address to receive USPTO correspondence, and file all trademark submissions electronically using the Trademark Electronic Application System (TEAS), with limited exceptions. In addition, the new rule amends the requirements for specimens in accordance with the Trademark Act and precedential case law.
Requirement to Provide Applicant, Registrant and Party Email Address
As of February 15, 2020, applicants, registrants, and parties to a proceeding before the TTAB, will be required to provide and maintain their own valid email address for receipt of correspondence from the USPTO. This requirement is in addition to the attorney address that is already required. The applicant’s, registrant’s, or party’s email address will be publicly displayed along with other contact information already available in the USPTO’s public database. (more…)
The U.S. Patent and Trademark Office (USPTO) published a new rule on July 2, 2019, requiring trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings whose domicile is not located within the United States or its territories to be represented before the USPTO by a U.S.-licensed attorney as of August 3, 2019. Domicile is typically defined as the permanent legal place of residence of an individual or the headquarters of an entity. The rule does not retroactively apply to applications filed before August 3, 2019, but impacts such applications if an office action is issued on or after August 3, 2019, requiring the applicant to designate a U.S.-licensed attorney to respond. This rule is intended to streamline trademark registrations and reduce the potential of invalidations by providing the USPTO a more efficient way to enforce statutory and regulatory requirements.
On March 4, 2019, the Supreme Court issued a unanimous decision in Fourth Estate Public Benefit Corp. v. Wallstreet.com LLC holding that, under §411(a) of the Copyright Act, a copyright claimant may file an infringement suit only after the Copyright Office renders a final decision on a copyright application, subject to limited exceptions. Prior to this ruling, circuit courts were split on whether the text of §411(a) granted standing to sue based on the so-called “application approach” (adopted in the 5th, 6th and 8th circuits) or the “registration approach” (adopted in the 10th and 11th circuits). The “application approach” permitted a copyright claimant to commence a lawsuit once a completed application with all three elements (i.e., the application, fee and deposit copy) was properly filed with the Copyright Office. The “registration approach” requires the Copyright Office to render a final decision (either to register or deny a registration) before a claimant may file suit. Justice Ginsburg, writing for the Court, concluded that the plain text of §411(a) “permits only one sensible reading”: the “registration approach.”
The U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) has struck down the Lanham Act’s ban on the registration of “immoral” or “scandalous” trademarks as an unconstitutional restriction of free speech under the First Amendment. See In re: Erik Brunetti, No. 2015-1109 (Fed. Cir. Dec. 15, 2017). The ruling comes less than six months after the U.S. Supreme Court’s decision in Matal v. Tam, 137 S. Ct. 1744 (2017), in which it similarly struck down the Lanham Act’s ban on “disparaging” marks as unconstitutional under the First Amendment.
In an 8-0 decision in TC Heartland LLC v. Kraft Foods Group Brands LLC, No. 16-341, the U.S. Supreme Court placed tighter limits on where a patent owner may file a suit for patent infringement by holding that “a domestic corporation ‘resides’ only in its State of incorporation for purposes of the patent venue statute.” The Court’s decision reverses Federal Circuit precedent that allowed a patent owner to file suit anywhere a defendant made sales.
In TC Heartland LLC, Kraft Foods Group Brands LLC (“Kraft Foods”) brought a patent infringement suit against flavored drink mix maker TC Heartland LLC (“TC Heartland”) in the U.S. District Court for the District of Delaware. TC Heartland, organized under Indiana law and headquartered in Indiana, moved to transfer venue to the U.S. District Court for the Southern District of Indiana, arguing that under the patent venue statute, 28 U.S.C. § 1400(b), it did not “resid[e]” in Delaware and had no “regular and established place of business” in Delaware. TC Heartland based its arguments on the Supreme Court’s decision in Fourco Glass Co. v. Transmirra Products Corp., 353 U.S. 222, 226 (1957), where the Court concluded that for purposes of § 1400(b) a domestic corporation “resides” only in its State of incorporation.
It has been my experience that when many U.S. clients expand their businesses beyond national borders, they are unaware that their U.S. trademark registrations provide no protection in foreign jurisdictions.
Trademark ownership provides important commercial and legal benefits including the exclusive right to use the registered trademark and the right to sell or license it to another for profit. Further, trademark ownership gives one legal standing to prevent others from using or attempting to register similar or identical trademarks. Trademarks are considered to be tangible assets of the owner and add to the value of the shares of a company. If you are an exporter, or thinking about exporting in the future, you should seriously consider securing protection for your trademarks at the earliest possible date in those foreign markets which are or could be of interest. (more…)
Recently, there has been much discussion about the Superior Court of Pennsylvania’s ruling in Dittman v. UPMC, which affirmed a lower court’s order dismissing an employee class action against their employer over a data breach. While this was a significant victory for employers, non-Pennsylvania employers should temper their enthusiasm. As one recent federal court decision in California makes clear, the reasoning of Dittman may not extend far beyond, if at all, the borders of Pennsylvania. Moreover, regardless of their outcomes, both cases also reinforce the need for employers to maintain legally compliant, written policies for safeguarding private information and responding to data breaches.
In Dittman, a data breach resulted in the theft of the personal information (e.g., names, birth dates, social security numbers, banking information) of approximately 62,000 UMPC current and former employees. The information was used to file fraudulent tax returns and steal tax refunds from certain employees.
Ever wondered what will happen to your Facebook page when you die? The California Legislature has recently weighed in. Effective as of January 1, 2017, California will have its first law to specifically address the handling of your “digital assets” after your death. The Revised Fiduciary Access to Digital Assets Act will determine who, if anyone, can access your digital assets, such as social media accounts, online gaming accounts and music accounts after your death. Under the new law, the custodian of digital assets – such as Facebook, Google, or Apple – must provide a fiduciary access to a deceased individual’s digital assets as the decedent previously directed. The Act sets up a three-tiered approach, which works as follows: (more…)
Startups are increasingly vulnerable to demand letters and lawsuits from “patent trolls” looking for opportunities to extract quick settlements from small companies with limited resources to defend against claims of patent infringement. To protect your business, developing a thoughtful approach for responding to such non-practicing entities is essential. Here are 5 tips for moving forward:
1. Don’t Panic. When confronted with a patent demand letter or infringement lawsuit from a non-practicing entity, it is perfectly understandable to be upset. You have likely invested substantial sums of money into your business and/or product, and now feel that the investment is under attack. Maintaining your calm, however, will better enable you to think clearly and strategically about next steps. (more…)
The Copyright Office officially released an announcement Monday, October 31st, about new regulations affecting all online service providers who seek liability limitations under 17 U.S.C. § 512 (i.e., the DMCA). The regulations, which are effective as of December 1, 2016, require that all service providers (even those who have previously designated agents) file new forms prior to December 31, 2017 to (re)name their copyright designated agents, who are to receive takedown notices from copyright owners related to allegedly infringing content. This (re)designation process must be completed through the Copyright Office’s new online registration system. Paper forms will no longer be accepted. Moreover, companies must renew their agent designations every three years.