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Is Your Trademark Portfolio Brexit-Ready? Steps to Take Now to Ensure a Smooth Transition

By Lesley Grossberg

September 15, 2020

While the UK formally left the EU on January 31, 2020, “Exit Day” will occur on December 31, 2020. Are your trademarks ready? This article provides a brief checklist of considerations as we approach the hard exit date at the end of this year. For existing European Union Trade Mark (EUTM) registrations, each registration will be cloned out into a UK registration and given the prefix UK009 to signify that it is a comparable…

IP Intelligence

Landmark UK Supreme Court Decision Grants UK Courts Power to Set the Global Royalty Rate for Standard Essential Patents

By Fabian Koenigbauer

August 31, 2020

On Aug. 26, 2020, the United Kingdom Supreme Court issued a decision in Unwired Planet International Ltd & Anor v Huawei Technologies (UK) Co Ltd & Anor [2020] UKSC 37 that changes the landscape for patentees seeking to enforce standard essential patents, which are patents claiming inventions that must be used to comply with a technical standard. The U.K. Supreme Court held that U.K. courts have the jurisdiction to determine the terms of a global…

IP Intelligence

CAFC Holds the Lack of a Property Interest in a Trademark Does Not Prevent the Commencement of a Cancellation Proceeding

By Robert Horowitz

August 10, 2020

The Court of Appeals for the Federal Circuit (“CAFC”), in a 2-1 vote, held in Australian Therapeutic Supplies Pty., Ltd. v. Naked TM, LLC, Appeal No. 2019-1567 (Fed.Cir. July 27, 2020) (accessible at http://www.cafc.uscourts.gov/node/26425), that a property interest in a mark is unnecessary for a cancellation petitioner to establish a statutory right to commence a cancellation proceeding. Instead, all a petitioner must do is demonstrate “a real interest in the cancellation proceeding and a…

IP Intelligence

Booking.com Remand on USPTO Attorney Fee Issue Portends Closure on Circuit Split

By Lesley Grossberg

July 16, 2020

As followers of this blog may recall, in December 2019, the Supreme Court resolved a circuit split as to whether the United States Patent and Trademark Office (USPTO) may recover its “attorneys’ fees” (effectively, the pro rata salaries of its legal personnel) in appeals from the Patent Trial and Appeal Board (PTAB) and Trademark Trial and Appeal Board (TTAB) to the U.S. District Court. The Fourth Circuit had held that the USPTO could recover…

IP Intelligence

“Trump Too Small” is Too Personal for Trademark Registration

By C. Dennis Loomis

July 13, 2020

The Trademark Trial and Appeal Board (TTAB) – for the second time in the past six months – has decided that a proposed mark incorporating the name “Trump” may not be federally registered as a trademark. Relying on the Lanham Act prohibition against registration of any mark that identifies “a particular living individual” without that person’s consent,[1] the board refused to register “Trump Too Small” for use on T-shirts and other apparel. It is…

IP Intelligence

‘Something of an Experiment’: District of Delaware Prepares for Socially Distanced Patent Trial Tentatively Set for August 2020

By Andrew Samuels

July 6, 2020

In an earlier blog post, we commented on how the COVID-19 pandemic has affected and may continue to affect patent litigation. A recent order from one of the country’s busiest patent courts, the District of Delaware, reflects the ways in which the pandemic may affect patent trial practice. On July 2, in Sunoco Partners v. Powder Springs Logistics, Chief Judge Leonard P. Stark of the District of Delaware announced these procedures for a patent-infringement…

IP Intelligence

USPTO Grants Additional COVID-19-Related Relief to Patent Applicants

By Fabian Koenigbauer

July 1, 2020

On June 29, 2020, the United States Patent and Trademark Office (USPTO) issued another notice under the authority granted by the Coronavirus Aid, Relief, and Economic Security (CARES) Act to grant COVID-19-related relief to patent applicants. In issuing the notice, the USPTO recognized that some stakeholders, in particular small businesses and individuals, will require additional relief as the economy reopens. Therefore, the notice grants extensions for payments of certain fees by small and micro entities.…

IP Intelligence

SCOTUS Holds that ‘generic.com’ Trademarks Like Booking.com May Be Capable of Registration

By Deborah A. Wilcox & Christina Moser

June 30, 2020

Today, the Supreme Court issued its opinion in the trademark registration case United States Patent and Trademark Office v. Booking.com B.V., holding “A term styled ‘generic.com’ is a generic name for a class of goods or services only if the term has that meaning to consumers.” Justice Ginsburg delivered the majority opinion, in which justices Roberts, Thomas, Alito, Sotomayor, Kagan, Gorsuch and Kavanaugh joined. Sotomayor filed a concurring opinion. Breyer dissented, primarily over the role…

IP Intelligence

Patent-demic: How COVID-19 Has Affected Patent Litigation

By Harrison Rose

June 18, 2020

As it has almost every industry and business around the world, the COVID-19 pandemic has altered the practice of law. While these unprecedented times present myriad problems, patent attorneys are among the best equipped to adapt and embrace the changes. Because of the global nature of patent law, which often necessitates regular travel to appear in court, depose witnesses, meet with clients and/or engage in other face-to-face business endeavors, patent attorneys generally are accustomed to…

IP Intelligence

USPTO Grants Relief for Patent Applicants Who Failed to Timely File Patent Applications Due to the COVID-19 Outbreak

By Fabian Koenigbauer

June 18, 2020

The United States Patent and Trademark Office (USPTO) has again exercised its authority under the Coronavirus Aid, Relief, and Economic Security Act to grant patent applicants additional COVID-19 outbreak-related relief. In addition to the prior actions taken to help patent applicants, the USPTO has issued a notice granting relief also to applicants seeking to restore the right of priority to or benefit of a prior-filed foreign application. To claim priority to or benefit of…

IP Intelligence

Insight on Intellectual Property

Blog Authors

Is Your Trademark Portfolio Brexit-Ready? Steps to Take Now to Ensure a Smooth Transition

Landmark UK Supreme Court Decision Grants UK Courts Power to Set the Global Royalty Rate for Standard Essential Patents

CAFC Holds the Lack of a Property Interest in a Trademark Does Not Prevent the Commencement of a Cancellation Proceeding

Booking.com Remand on USPTO Attorney Fee Issue Portends Closure on Circuit Split

“Trump Too Small” is Too Personal for Trademark Registration

‘Something of an Experiment’: District of Delaware Prepares for Socially Distanced Patent Trial Tentatively Set for August 2020

USPTO Grants Additional COVID-19-Related Relief to Patent Applicants

SCOTUS Holds that ‘generic.com’ Trademarks Like Booking.com May Be Capable of Registration

Patent-demic: How COVID-19 Has Affected Patent Litigation

USPTO Grants Relief for Patent Applicants Who Failed to Timely File Patent Applications Due to the COVID-19 Outbreak

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