In a crucial first-time judgement, the United States Court of Appeals for the Federal Circuit addresses how patent term adjustments (PTAs) interact with obviousness-type double patenting (ODP). The court concluded that, within a patent family encompassing different expiration dates owing to PTAs, the earlier expiring family members can be utilized as a basis for an…
In a fascinating recent development, US Patent & Trademark Office (PTO) Director Kathi Vidal vacated and remanded a Patent Trial & Appeal Board decision. This decision revolved around the denial of an institution of an inter partes review (IPR). The cause for this action was rooted in the fact that the Board failed to rightly…
In a significant decision, the US Court of Appeals for the Eleventh Circuit made a ruling that, under certain conditions, a licensee of a trademark can initiate a claim against a third party for unfair competition under the Lanham Act. This remains true even in scenarios where the licensing agreement does not explicitly authorize it….
In an era where the cannabis industry is rapidly expanding, protecting cannabis trademarks stands out as a significant challenge. Despite marked shifts in social and political attitudes, the legal landscape for cannabis is still fluctuating, making the process of securing trademarks particularly nuanced. According to a recent report by JDSupra, one of the pivotal steps…
The US Patent and Trademark Office (USPTO) has initiated a new trademark applicant address verification process. This development is part of a larger move by the USPTO aimed towards improving and maintaining the accuracy of the Trademark Register, and to safeguard against trademark scams and bot-filed trademark applications. The new procedures for reviewing domicile addresses…
September has brought some important updates from the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO). Their recently published Oral Hearing Guide on August 31, 2023, brings changes that could shift the way hearings are handled at this high-level litigation forum. The notable advancement comes in the form…
In a noteworthy legal events, the Federal Circuit has vacated and remanded a ruling by the Patent Trial and Appeal Board (PTAB) in the Volvo Penta patent case. The PTAB had previously found all claims of a Volvo Penta patent to be unpatentable due to perceived obviousness. The relevant patent, registered as US Patent 9,630,692,…
MarkIt to Market®’s latest edition reveals a forthcoming addition to the U.S. Patent and Trademark Office (USPTO) practice. In early August 2023, the USPTO disclosed its plan to issue a “Welcome Letter” to applicants or their legal representatives who have lodged new trademark applications. The reveal for the welcome letters came from Sterne, Kessler, Goldstein…
In a significant turn of events, the Federal Circuit recently upheld a decision from the United States Patent and Trademark Office (PTO) to invalidate four interconnected patents on obviousness-type double patenting grounds (OTDP). This decision is noteworthy on the premise that all analyses of OTDP for patents, which were awarded a patent term adjustment (PTA)…
In a significant procedural shift, it was reported that on July 24, 2023, the United States Patent and Trademark Office (PTO) altered their procedures for the PTO Director’s review of certain decisions by the Patent Trial and Appeal Board (PTAB). The decisions impacted are those of the PTAB to deny or grant petitions to institute…
In this month’s edition of MarkIt to Market®, we focus on the third part of our series: “How to Lose a Mark in 3 Ways”. This installments deep dives into the topic of Naked Licensing. Trademarks are integral tools for brand owners, offering a means to build and effectively communicate brand reputation and its perceived…
This August 2023, Sterne Kessler’s MarkIt to Market® has published its newsletter that wraps up their series regarding the potential ways a firm can lose its trademark rights. This edition, the highlight of the discourse centers around an investigation into ‘naked licensing’. Naked licensing happens when a trademark owner grants permission to another party to…
Recent developments in trademark law have highlighted the challenges associated with translating creative works into other languages and the legal implications this brings. In particular, a precedential opinion by the US Patent and Trademark Office’s Trademark Trial and Appeal Board emphasized the intricate nature of intellectual property rights and their limitations. The case, which involved…
In the world of Canadian trademark law, business owners often find themselves tangled up in the complexities of not only registering a trademark but also maintaining it. A previously published piece titled “This is How We Use It: The Importance of Use in Canadian Trademark Law.” discussed these challenges in-depth, shedding light on a subject…
Over the past decade, the landscape for recreational cannabis has seen a stark transformation, with many states opting for decriminalization or outright legalization. As these changes have unfolded, however, cannabis businesses find themselves continuing to grapple with protecting their brands. The root of the problem? Federal trademark protection remains elusive for those in the cannabis…
In a notable development on August 28, 2023, the US Securities and Exchange Commission (SEC) declared a settled enforcement action against Impact Theory LLC. The decision held that the unregistered sale of non-fungible tokens (NFTs) by Impact Theory were deemed securities. The delineation of NFTs as securities sets a precedent in the regulatory landscape of…
In a recent legal action that rings familiar to tech industry observers, X Corp., previously known as Twitter, has filed a lawsuit against Bright Data alleging web scraping activities. Reckoned as a data collection company, Bright Data offers – among several other services – its trademark “website scraping” solutions. The practice of data scraping, however…
The United States Patent and Trademark Office (USPTO) has issued a caution to trademark applicants against ‘spoofed’ calls that impersonate the Office. These calls are a technique employed by phone scammers who are aiming to fool the call recipients into disclosing personal identifying or payment information. The scammers impersonate employees of the USPTO in an…
In relation to recent requirements that the United States Patent and Trademark Office (USPTO) collect domicile information of all trademark applicants, some clarifications have been made. As required by the Lanham Act, this collection of domicile information is substantial evidence necessary to establish the applicant as a real person or corporation domiciled in the United…
During the recent court hearing, Judge Tanya Chutkan set a trial date of March 4, 2024, for Donald Trump’s federal charges of meddling with the 2020 presidential election. The date, while eight weeks later than the proposed date given by the government, is significantly earlier than Trump’s preferred date, which he initially suggested might be…
In a recent ruling, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) declared that Thomson Reuters Enterprise Centre GmbH failed to establish its patent analyzing law firm client leads as anything more than an unpatentable abstract idea. This statement came on Monday, dealing a blow to the company’s efforts to secure…
The increasing consumer demand for alternative animal products, colloquially known as “alt” animal products, has dramatically escalated the number of food tech companies committing to this market. As these entities continue to diversify and build their patent portfolios, they are also focusing on registering trademarks for their company names and alt-animal products across multiple jurisdictions….
In a strategic move to expand internationally, Lewis Silkin, a leading law firm in the U.K., has acquired the intellectual property firm, Miller Sturt Kenyon (MSK). Known for its prominence in patent and trademark services, MSK extends its services across multiple regions including Germany, France, Belgium, and England. By this purchase, Lewis Silkin, traditionally focusing…
The Federal Circuit has recently issued a decision that could potentially have significant implications for trademark law. The circuit, led by Judge Dyk, has partially challenged a long-standing belief that the burden of proving third-party marks were in use fell on the trademark applicant when determining the strength of the applicant’s mark. In the Spireon…
In a significant legal development in the realm of contract law and trademark infringement, the United States Court of Appeals for the Fourth Circuit confirmed that disgorgement of profits is a suitable remedy in such cases. The decision involved two real estate companies sharing the same name and resulted in almost $43 million in profit…