Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

BOOKING.COM Trademark Books a Federal Trademark Registration Courtesy of SCOTUS

By Laura K. Johnson

July 2, 2020

Trademarks pairing generic terms with top-level domains (i.e., BOOKING.COM) are not per se generic, the Supreme Court held earlier this week in U.S. Patent and Trademark Office v. Booking.com B.V. These “generic.com” marks can serve as source identifiers and are registerable at the USPTO. This decision protects hundreds, if not thousands, of existing federal trademark registrations for similar generic.com marks from cancellation on genericness grounds. It also provides clarity to future applicants regarding the evidence…

Incontestable Blog

Finding No Intent to Abandon, TTAB Holds Rights in CHICLETS Stick

By Samuel V. Eichner

July 1, 2020

In Retrobrands USA LLC v. Intercontinental Great Brands LLC, the Trademark Trial and Appeal Board (TTAB) found that Retrobrands failed to prove that the well-known trademark CHICLETS for chewing gum had been abandoned. The TTAB also found that Intercontinental affirmatively established intent to resume use. The non-precedential decision illustrates the challenges of proving nonuse abandonment, and specifically, a registrant’s intent not to resume use. It also serves as a guide for legacy brand owners to…

Prosecution First Blog

Prosecution Pointer 232

By Publisher

July 1, 2020

In the event that EFS-Web and EFS-Web Contingency are unavailable, applicants may file new patent applications, new international design applications and documents, and fees for national stage entry under 35 U.S.C. 371 via Priority Mail Express from the United States Postal Service (USPS) in accordance with 37 CFR 1.10. Applicants may file other documents or fee payments by any of the following ways: Facsimile transmission to the USPTO Central Facsimile (571) 273-8300; First-Class Mail with…

Incontestable Blog

Offers of Judgment in Copyright Disputes—FRCP 68 vs. Copyright Act Fee Shifting

By Brooke M. Wilner

June 29, 2020

If a copyright plaintiff declines a settlement offer, then later prevails and is awarded an amount lower than that offer, does Federal Rule of Civil Procedure 68 shift the defendant’s attorneys’ fees to the prevailing plaintiff? No, the Southern District of New York recently found, acknowledging a circuit split on the issue. Read more…

Prosecution First Blog

Assuring Quality U.S. Patents: Patent Owners’ Perspective Part 3 of a 3 Part Series

By Adriana L. Burgy Stacy Lewis

June 29, 2020

In the third and final part of this series, Assuring Quality U.S. Patents: Patent Owners’ Perspective, considerations for quality patent drafting are provided. The first part (interaction between attorney and inventor and preparing a quality patent) of the series can be found here and the second part (satisfying Section 112) of the series can be found here. Read more…

Incontestable Blog

S.D.N.Y Reconsiders Instagram Embedding By Mashable

By Rosie Norwood-Kelly

June 26, 2020

In an attempt to provide some clarity, or at least consistency, in the Southern District of New York over the use of embedded social media content obtained from Instagram, the SDNY reconsidered its recent ruling in Sinclair v. Ziff Davis, LLC. In doing so, the court revised its previous finding that Instagram granted a sublicense to Mashable to embed a photographer’s public post on its website. Read more…

AIA Blog

PTAB Designates Four Decisions Precedential or Informative

By Brooke M. Wilner

June 25, 2020

On June 11, 2020, the Patent Trial and Appeal Board designated as precedential a decision regarding when agreements collateral to settlement must be disclosed under 35 U.S.C. § 317(b). The Board also designated as informative three decisions: one instituting post-grant review of a design patent, one terminating a proceeding due to settlement without deciding the patent owner’s motion to amend, and one providing guidance on the use of confidential information during an oral hearing. Precedential decisions…

Prosecution First Blog

Prosecution Pointer 231

By Publisher

June 24, 2020

According to WIPO in 2019, with 58,990 applications filed, China was the biggest user of the PCT system. This ended the U.S.’s reign (57,840 applications in 2019) as the biggest user of the PCT system since the PCT began operations in 1978. International patent applications filed via the PCT grew by 5.2% (265,800 applications) in 2019, while international trademark applications via the Madrid System for the International Registration of Marks increased by 5.7% (64,400 applications).…

AIA Blog

IPR and CBM Statistics for Final Written Decisions Issued in April 2020

By Daniel F. Klodowski Michael R. Galgano Zachery D. Olah

June 24, 2020

The Patent Trial and Appeal Board issued 37 IPR and CBM Final Written Decisions in April, including decisions following remands from the Federal Circuit, cancelling 316 (69%) instituted claims while declining to cancel 142 (31%) instituted claims. Patent owners did not concede any instituted claims through motions to amend or disclaimer in cases reaching a final decision. For comparison, the cumulative average rate of instituted claims cancelled in IPR and CBM Final Written Decisions is…

Incontestable Blog

Pairing Unsuccessful: Bluetooth and Fiat Denied Summary Judgment in Suit over Unauthorized Use of BLUETOOTH Marks

By Rosie Norwood-Kelly

June 23, 2020

Whether it’s by tuning out the world with wireless headphones or counting steps with a fitness tracker, Bluetooth technology facilitates the connections between billions of devices that make everyday life a bit easier. Read more…

Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

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BOOKING.COM Trademark Books a Federal Trademark Registration Courtesy of SCOTUS

Finding No Intent to Abandon, TTAB Holds Rights in CHICLETS Stick

Prosecution Pointer 232

Offers of Judgment in Copyright Disputes—FRCP 68 vs. Copyright Act Fee Shifting

Assuring Quality U.S. Patents: Patent Owners’ Perspective Part 3 of a 3 Part Series

S.D.N.Y Reconsiders Instagram Embedding By Mashable

PTAB Designates Four Decisions Precedential or Informative

Prosecution Pointer 231

IPR and CBM Statistics for Final Written Decisions Issued in April 2020

Pairing Unsuccessful: Bluetooth and Fiat Denied Summary Judgment in Suit over Unauthorized Use of BLUETOOTH Marks

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