Use Requirements in the United States for Foreign Applicants

The United States, unlike many other countries, requires proof of use before a trademark registration will be granted.  Applicants can still file an application before use commences, provided that the applicant has a bona fide intent to use a mark, but the trademark registration still will not issue until acceptable use evidence is submitted.  This …

New USPTO Rules for Foreign Applicants Ensure Compliance With U.S. Use Requirements

The impetus for the upcoming August 3, 2019 rule change requiring all foreign-domiciled trademark applicants and registrants to retain licensed counsel in the United States is an increase in foreign trademark applicants acting pro se and who are failing to comply with the rules of the United States Patent and Trademark Office (“USPTO”). Many countries …

The Federal Circuit Clamps Down on Broadening Reissues – Or Does It?

Last week, the Federal Circuit, in Forum US v. Flow Valve[i], affirmed the lower court’s ruling invalidating a reissue patent because the broadened claims added in the reissue failed to satisfy the original patent requirement under 35 U.S.C. § 251. As a brief refresher, the original patent requirement requires that a reissue patent shall only be …

SCOTUS Decision on “Immoral or Scandalous” Trademarks

What exactly is an “immoral” or “scandalous” trademark, and should the government be the arbiter of making such a determination? In the second landmark trademark decision in two years, the Supreme Court invalidated the Lanham Act’s prohibition on registering “immoral” or “scandalous” trademarks. Iancu v. Brunetti, 588 U.S. ___ (2019). The Court’s decision expands the …

Cap’n Crunch vs. Kap’n Kronik

Cap'n Crunch vs Kap'n Kronik

Intellectual Property attorney Drew Wilson details the difficulties of ongoing IP conflicts between major brands and somewhat underground edibles manufacturers. The article was originally published in the April edition of Los Angeles Lawyer Magazine. Read the full article by clicking here.

Federal Circuit Decision: Assignor Estoppel Has No Place in IPR Proceedings

On November 9, 2018, in Arista Networks, Inc. v. Cisco Systems, Inc., the Federal Circuit held that assignor estoppel does not apply in inter partes review (IPR) proceedings. In this case, a former employee of Cisco Systems, Inc. (“Cisco”), who had assigned his invention as patented (U.S. Patent No. 7,340,597 – “the ‘597 patent”) to Cisco, …

Are Photographs of Utilitarian Objects Copyrightable?

Pohl v. MH Sub I, LLC d/b/a Officite (N.D.Fla., June 20, 2018) U.S. District Judge Mark Walker of the Northern District of Florida determined that no reasonable jury could find that a plaintiff-dentist’s before-and-after photos of his patient’s teeth are sufficiently creative or original to warrant copyright protection. On summary judgment, the court acknowledged that …