It was announced that the U.S. Drug Enforcement Administration (DEA), the federal agency responsible for enforcement of federal drug laws, will take up the recommendation from the U.S. Health and Human Services (HHS), and reschedule marijuana (cannabis) from the current Schedule I to Schedule III under the Controlled Substances Act (CSA). Rescheduling will have major …
Category: trademark
Limitations on Federal Trademark Law Reach: No Extraterritoriality Under Lanham Act
This posting reviews the last IP case decided by the U.S. Supreme Court in its 2022 term. As mentioned before, the keyword among these cases is “limitation.” The consensus of the Court is that there are limitations on the breadth of particular areas of IP law. These limitations will affect the IP holder’s rights, as …
Limitations of the 1st Amendment in Trademark Cases: the Dog Toy Case
Reviewing the last U.S. Supreme Court 2022 term, the highest court decided several high-profile cases involving intellectual property rights. The keyword among these cases – two trademark, one copyright, and one patent – is “limitation.” What does this mean? The various laws implicated by these opinions do not operate in a vacuum and work in …
8th Circuit Holds One Block Does Not Infringe Another
On January 24, 2023, the Court of Appeals for the Eighth Circuit held in H&R Block, Inc. v. Block, Inc.,[1] that defendant Block’s trademark was not likely to confuse consumers as to source of the registered service mark of plaintiff H&R Block. This was not a unanimous decision, and one dissent was lodged, noting that …
9th Circuit Expands Service of Process Against Foreign Defendant
On November 14, 2022, in San Antonio Winery, Inc. v. Jiaxing Micarose Trade Co., Ltd.,[1] the Court of Appeals for the 9th Circuit held that process may be effected on a nonappearing foreign defendant in a trademark infringement suit through service upon the Director of the USPTO. This was a case of first impression and …
9th Circuit Punches the First Amendment into the Bowl
The facts are as follows. The plaintiff, Punchbowl, Inc., is an online greeting card company, using and owning the PUNCHBOWL mark since 2006. The defendant AJ Press is the owner of PUNCHBOWL NEWS, an online subscription-based news blog focused on national politics and US government news. The “punchbowl” metaphor refers to an upside down Capitol …
New Response Deadline Rule Soon to Take Effect
As part of the implementation of the Trademark Modernization Act (TMA) of 2020, the new USPTO rule (formerly 37 C.F.R. §2.62(a)) to respond to trademark office actions will drop from the former six-month period to three months, with the option to file an extension of time to respond for an additional, and final, three months. …
USPTO Begins ID Verification for Trademark Applications
On June 30, 2022, the USPTO’s new Director, Kathi Vidal, discussed the new identity verification requirements for filing of new trademark applications, commencing on August 6, 2022 (just in five days from now). The new ID verification follows from the Trademark Modernization Act and the USPTO’s crackdown on fraudulent trademark applications and fraud-upon-the-office issues which …
USPTO Updates Exam Guide for Generic Marks
On May 23, 2022, the U.S. Patent and Trademark Office updated its exam guideline for examining generic marks, Examination Guide 1-22. The guideline clarifies that the establishment of a prima facie case of generic marks will be based on the reasonable basis standard, which is the same standard used for other substantive refusals of trademark …
Spotlight on I.P.: Geographical Indications
When asked to describe what is I.P., most people will reply with a generalized answer of patents, copyrights, or trademarks. However, the field of intellectual property encompasses more sub-categories than these “Big 3.” This blog posting will consider one of the many other I.P.s, specifically geographical indications. What is a Geographical Indication (GI)? A geographical …