New USPTO Guidelines for Electronic Filings and Specimens

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By Alesha M. Dominique and Dima S. Budron

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. Continue reading “New USPTO Guidelines for Electronic Filings and Specimens”

New Executive Order Addresses E-Commerce and Counterfeit Goods

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By Susan Kohn Ross

 

On January 31, 2020, President Trump issued Executive Order 13904 (“EO”) entitled “Ensuring Safe & Lawful E-Commerce for U.S. Consumers, Businesses, Government Supply Chains, and Intellectual Property Rights.” It begins by stating that e-commerce is “being exploited by traffickers to introduce contraband into the United States, and by foreign exporters and United States importers to avoid applicable customs duties, taxes and fees.” The types of malfeasance cited are counterfeit goods, narcotics (specifically synthetic opioids, such as fentanyl), and other contraband, plus, of course, protection of the revenue. The focus of the EO is on express consignment operators, carriers, hub facilities, international posts, customs brokers and e-commerce platform operations (the “Regulated Parties”). Anyone who participates in the “introduction or attempted introduction” of parcels containing contraband can be held accountable with accountability taking the form of both civil and criminal consequences, as appropriate. The EO goes on to state that CBP’s suspension and debarment procedure will form the framework through which these actions will be carried out. Suspension and debarment apply in the context of doing business with the government, such as government contracts, subcontracts, grants, loans and other assistance programs.

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iWill or iWon’t

By Allan Cutrow and Emily Evitt

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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: Continue reading “iWill or iWon’t”

New Regulations Issued By The Copyright Office Affecting Thousands of Websites

By Eric Schwartz and Matthew Williams

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.

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Designing Successful Intellectual Property Protection

By Brionna Ned

When you start to think about protecting your business’s intellectual property, some things might immediately jump to mind – like trademarking your logo or filing a patent application for the functional invention that underlies your business. But other things, like the design or appearance of your product, may not be so obvious. In fact, it may not have occurred to you that you can and should consider seeking protection for the appearance or ornamental characteristics of your company’s product – whether that product is an actual article of manufacture, like the Apple iPhone, or the user interface of your mobile application. Intellectual property law offers protection for both via copyright and patent law.

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Intellectual Property Tips

By Emily F. Evitt

Here are 10 ways to build a rock-solid foundation for your new company and avoid constructing a masterpiece on top of quicksand:

  1. Make sure your company’s name isn’t already taken. As a starting point, search the name on Google and other Internet search engines. Then search the U.S. Patent and Trademark Office website (uspto.gov). Important: repeat this process each time you pick the name of a new product or service.
  2. Check if the domain name you want is available – if so, get it. Create Twitter, Facebook and Instagram accounts for your company, and start using them. Continue reading “Intellectual Property Tips”

Everyone Deserves To Have Secrets – Defend Trade Secrets Act of 2016

By Susan Kohn Ross and Brett Thomas

On May 11, 2016, President Obama signed into law the Defend Trade Secrets Act of 2016 (DTSA) which brought with it a new era of accountability and expediency in protecting employers’ intellectual property. Whether proprietary lines of code in a software program, the secret recipe for fried chicken or highly-valued customer lists, “trade secrets” provide a competitive advantage for businesses. While the DTSA provides new avenues for employers to protect their trade secrets, it also imposes additional burdens, creating new whistleblower protections and imposing new notice requirements. Continue reading “Everyone Deserves To Have Secrets – Defend Trade Secrets Act of 2016”